Louise Causon v Timothy John Scott

[2019] ATMO 166

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Louise Causon to registration of trade mark application number 1894891 (class 28) - ANAMALZ - in the name of Timothy John Scott.

Delegate:	M. Cooper
Representation:	Opponent: Georgina Douglas of counsel instructed by Carroll Goldsmith Lawyers Applicant: Wen Wu of counsel
Decision:	[2019] ATMO 166 Trade Marks Act 1995 (Cth) – s 52 opposition – ss 58, 60 and 62A grounds – s 58 ground established - registration refused.

Background

1.     This matter concerns an opposition by Louise Causon (‘the Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Timothy John Scott (‘the Applicant’):

Application Number: 1894891

Trade Mark: ANAMALZ (‘the Trade Mark’)

Filing Date: 14 December 2017

Goods

Class 28: Wooden toys (playthings); bath toys; plastic toys (playthings)

(‘the Goods’)

2.     The Trade Mark was examined and advertised as accepted for possible registration on 10 May 2018 in the Australian Official Journal of Trade Marks.

3.     On 23 May 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 18 June 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 16 August 2018.

4.     On 2 July 2019 the Applicant requested a hearing. I heard the matter in Canberra on 3 October 2019 as a delegate of the Registrar of Trade Marks. Georgina Douglas of counsel, instructed by Richard Goldsmith of Carroll Goldsmith Lawyers, appeared by telephone for the Opponent. The Applicant attended and was represented by Mr. Wen Wu of counsel.

Evidence

5.     Evidence in Support (‘EIS’) was filed by the Opponent on 20 November 2018. It comprised the statutory declaration of Louise Causon dated 20 November 2018 with Exhibits A to S (‘first Causon declaration’).

6.     The Applicant’s Evidence in Answer (‘EIA’) was filed on 11 March 2019 and comprised the statutory declaration of Timothy John Scott dated 11 March 2019 with Annexures A to T (‘Scott declaration’).

7.     The Opponent’s Evidence in Reply (‘EIR’), filed on 12 June 2019 following the grant of an extension of time, comprised a further declaration by Louise Causon, dated 12 June 2019 (‘second Causon declaration’) with Exhibits U to Z, AA to DD.

8.     The Opponent and Applicant filed written submissions on 20 September 2019 and 26 September 2019 respectively.

Evidence in Support

9.     In her EIS, Ms. Causon said she had commenced creating and selling small toy animal figures in 2005 and created the name ‘ANAMALZ’, registering the domain name in December 2005 and establishing the ANAMALZ Facebook page in February 2010. She registered the trade mark ‘anamalz’ in Australia in January 2006 (no. 1092319, ‘the prior mark’), owning it ultimately as Trustee for the ANAMALZ IP Trust, but inadvertently let it lapse. It was removed from the Register in 2016. She maintained that she had continued to use the prior mark in Australia and was using it when the Applicant applied to register the Trade Mark. She provided ANAMALZ product catalogues from 2006 to 2016, most recently under the name of the Natural Character Company (‘NCC’) of which her father was (then) the sole shareholder and director. She also provided the NCC Sales Report for the years 2016 to 2018 and a declaration from a long-term customer confirming her ongoing association with the Anamalz toy range and his understanding that she was the owner. She claimed that the application for this Trade Mark was made in bad faith by her former husband.

Evidence in Answer

10.     In his EIA, the Applicant, the Opponent’s ex-husband, claimed he is a toy designer by trade and is the true owner of the Trade Mark in his capacity either as Trustee of ANAMALZ IP Trust or the One Dog Two Monkeys (‘ODTM’) Designs Trust. He said during their marriage he had been responsible for designing and managing production of the ANAMALZ range while the Opponent had been responsible for sales and marketing. He stated that he and the Opponent decided to register the prior mark in 2006. He outlined the history of their business producing the ‘anamalz’ toy range, its many iterations and liquidations.

11.     After selling the business to Skansen Brands Pty Ltd in 2011, he claimed that ODTM Pty Ltd, of which he was sole director and shareholder, repurchased the business in 2012, including the prior mark which he said was assigned to him as Trustee for the ODTM Designs Trust. Noting the Opponent’s bankruptcy in September 2012, he also claimed that he replaced her as Trustee of the Anamalz IP Trust. He said that ODTM Pty Ltd had used the prior mark under licence from him as trustee for ANAMALZ IP Trust and the ODTM Designs Trust.

12.     Following his separation from the Opponent in 2015, he stated he was ‘shut out’ of the business and only discovered in 2017 that the prior mark had lapsed and was removed from the Register in July 2016.  He noted that, shortly after the separation, new companies Anamalz Pty Ltd and the Natural Character Company were incorporated in which he had no involvement. He said that any use of the Trade Mark[1] was without his permission as Trustee of ANAMALZ IP Trust and the ODTM Designs Trust, through which he asserted he had always remained its owner.

[1] Throughout their evidence both the Applicant and Opponent refer interchangeably to the prior mark and the Trade Mark as the ‘the trade mark’.

Evidence in Reply

13.     In her EIR, the Opponent maintained that the Applicant had only minor involvement in the business and the development of the intellectual property, and that she ‘alone’ developed the idea. She outlined her account of the history of the business and maintained that Skansen Brands had never owned the prior mark because it did not fulfil its contract and the assets never passed to it. Therefore, it had no capacity to assign or transfer assets to ODTM. She claimed the repurchase of the business was negotiated by her ex-husband without her consent and at all times the prior mark was held by her as Trustee of the ANAMALZ IP Trust. She denied she was removed as trustee. She maintained that there was an ‘implied licence agreement’ between herself as trustee and ODTM Pty Ltd, the ‘trading entity’, for it to use the prior mark. She noted that in August 2016 her ex-husband offered to purchase the business from her, including the ‘prior mark’, however she declined.

14.     The submissions of the parties are discussed further below.

Grounds of Opposition and Onus

15.     The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[2]

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6-26].

16. As noted above, the Opposition grounds claimed in the SGP are those under sections 58, 60 and 62A of the Act.

17.     The time at which a ground of opposition must be established is the date of filing of the application for registration[3]. In this case that date is 14 December 2017 (‘the relevant date’). 

Consideration and reasons

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at [595].

Section 58

18. Section 58 of the Act provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

19.     In the SGP the Opponent claimed as follows:

The applicant is the ex-husband of the opponent. The opponent has, since at least January 2006, owned the trade mark and used it in trade and commerce in the class of goods. You will note that the trade mark was first registered by the opponent under her married name of Scott. An acrimonious divorce around the time for renewal meant that trade mark no. 1092319 lapsed. Regardless, the opponent has continued to use the trade mark in trade and commerce in the class of goods since January 2006.

20.     As noted above, the Opponent has claimed that she devised the Trade Mark in around 2005 and has owned and used it, either personally or through corporate vehicles which she controlled, since that date. She said she continues to use it through the corporate entity NCC of which, as advised at the hearing, she became sole director and shareholder in 2019. It was submitted that, as first to use the Trade Mark, she is its owner[4]. In the alternative, even if the Applicant was the owner of the prior mark, he abandoned it and it was removed from the Register. It was contended that the Applicant’s email to the Opponent, dated 4 August 2016, in which he offered to buy her out ‘of anamalz ip and the natural character company’[5], constituted his acknowledgement that he did not own the Trade Mark. To the extent that the Applicant’s claim to ownership was based on his role as trustee of either the ANAMALZ IP Trust or the ODTM Designs Trust, the Opponent observed that he made this application in his personal capacity and had not applied to reinstate the ‘extinguished’ prior mark. In any event, it was submitted that there was no evidence, other than the unexecuted documents, that he was ever the trustee of either trust. Consequently, an inference should be drawn that there was no transfer or assignment of the Trade Mark to him in that capacity. In the absence of any use of the Trade Mark by the Applicant, the question of prior use was said to be resolved by the evidence of NCC’s use of ‘ANAMALZ’ up to and after the relevant date.

[4] Citing The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 and Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) (1984) 156 CLR 414.

[5] Attachment CC to the second Causon declaration. The Applicant submitted that this email was privileged on the basis it formed part of divorce property settlement negotiations and for this reason should be excluded from the evidence/not be considered. The Opponent contended it was simply a commercial offer to buy a business and nothing about it demonstrated privilege or indicated confidentiality. In the absence of any indication in the email that it was in any way intended to be confidential or that privilege attached to it, and in a context in which I am not bound by the rules of evidence in any event and the document is probative of the issues before me, I decline to exclude it from my considerations.

21.     The Applicant’s submissions contended that the Opponent had made inconsistent and contradictory claims in her statutory declarations and noted that they were not in the proper form. Noting the terms of the ANAMALZ IP Trust, the Opponent ceased to be its trustee when she became bankrupt in 2012 and it was submitted that the documentation the Applicant produced clearly demonstrated he became trustee of ANAMALZ IP Trust.  The Opponent had also acknowledged this in her correspondence with her accountant in which she stated on several occasions that the Applicant was trustee for ANAMALZ IP Trust or alternatively, the ODTM Designs Trust.

22.     The Applicant noted the chain of ownership in relation to the prior mark as recorded in the Register and submitted that at no time did the Opponent own or use it in her personal capacity. He maintained that he is the true owner of the Trade Mark by virtue of his role as Trustee for the ANAMALZ IP Trust or the ODTM Designs Trust.

Consideration

23. Having regard to s 58, the Full Federal Court in Pham Global identified the relevant principles.[6] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark, that this mark has been used in respect of goods and services that are ‘the same kind of thing’ as the trade mark and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it as a trade mark.

[6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (‘Pham Global’).

Substantially identical

24.     In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

[7] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [13].

25.     The Opponent relies on the prior mark, ‘anamalz’, and her continued use of it. The evidence shows slight variations in the appearance of the word, displaying variously in capitals or lower case or as slightly stylised. The comments of Jenkins LJ in Morny Ltd.’s Trade Marks [8] are pertinent in this regard:

[T]he registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals…on a side by side comparison, they are clearly identical.

[8] (1951) 68 RPC 55; (1951) 68 RPC 131, [149-150].

26.     Having regard to the essential (and only) feature of the Trade Mark and the use of ‘anamalz’ as it variously appears in the evidence, I am satisfied that there is a total impression of resemblance between them such that they are appropriately regarded as substantially identical.

Same kind of thing

27.     As also noted above, in order to establish ownership, it is necessary to establish that the use claimed was ‘in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration’.[9]

[9] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [49].

28.     What constitutes goods or services ‘of the same kind’ was considered by Allsop J in Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’):

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods ‘though not identical... yet substantially the same’ (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or ‘goods essentially the same... though they pass under a different name owing to slight variations in shape and size’ (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[10]

[10] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [88-9].

29.     The Goods are designated as ‘Wooden toys (playthings); Bath toys; Plastic toys (playthings)’. The evidence established that the Opponent has and also continues to use the prior mark in respect of the class 28 goods ‘Toys - educational.’ Notwithstanding slight variations they are self-evidently ‘essentially the same’ goods.

30.     It follows that I am satisfied there is a substantially identical mark that has been used in respect of goods that are the ‘same kind of thing’ as the Goods proposed to be sold under the Trade Mark.

Prior use

31.     In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2):

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[11]

[11] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd (No.2) [1984] HCA 73; 156 CLR 414, [432].

32.     The objective evidence establishes that the Trade Mark ‘anamalz’ was first registered by Bluefish Industries Pty Ltd, of which the Opponent was then the sole director, on 4 January 2006 (trade mark no. 1092319, the prior mark). The Register further records assignment of this prior mark in January 2008 to Anamalz Pty Ltd., of which she was also sole director and shareholder, and another assignment to Louise Scott[12] ATF Anamalz IP Trust in July 2010.

[12] The Opponent’s maiden name.

33.     On her bankruptcy on 12 September 2012 the Opponent ceased to be a trustee of the Anamalz IP Trust[13]. There is some evidence, including from the Opponent, that suggests that the Applicant succeeded her as trustee however there are no executed documents objectively establishing his appointment. There is insufficient evidence before me to find who, or if anyone, succeeded the Opponent as trustee for the ANAMALZ IP Trust.

[13] Clause 17 of the ANAMALZ IP Trust Deed, Attachment A to the first Causon declaration.

34.     In relation to the Applicant’s claim to ownership based on his role as trustee of the ODTM Designs Trust, sale documents[14] indicate that after selling and repurchasing the business from Skansen Brands in 2012, the prior mark passed to ODTM Pty Ltd, of which the Applicant was the sole director. Other than an email from the Opponent to her accountant, there is no persuasive evidence supporting either the establishment of the ODTM Designs Trust, that it owned or was assigned or otherwise authorised to use the Trade Mark or that the Applicant was its trustee. While I appreciate the difficulties the Applicant faced in accessing relevant documents, when I asked at the hearing about the status of the two trusts, that is, if they had any income, who was administering them, when or if they filed tax returns, whether there had been any distributions to beneficiaries, neither party was able to inform me. In the circumstances I am not satisfied, in the absence of any further persuasive evidence, that the ODTM Designs trust was ever properly created. I note further that none of these claimed transfers, assignments or authorisations to use the prior mark was ever notified to the Registrar. On 4 January 2016, the registration of the prior mark expired, and it was removed from the Register on 28 July 2016.

[14] Attachments AA and BB to second Causon declaration.

35.     Notwithstanding the failure to renew the registration of the prior mark, the following evidence indicates that, prior to the relevant date, someone other than the Applicant used ‘anamalz’ in relation to the Goods:

·a product catalogue clearly showing NCC’s use of the Trade Mark for anamalz toys in or around 2016[15];

·the NCC Sales Report for the period 1 January 2016 to 12 June 2018[16] which, while it contains only a solitary use of ‘Anamalz’, indicates ongoing sales of the product to a variety of buyers over that period;

·the Applicant’s acknowledgement that the Opponent ‘traded using the Natural Character Company from about 2016. I had no involvement in the business; by then Louise had shut me out from any involvement’[17];

·The statement of Trent Dean, owner of the largest purchaser[18], dated 18 November 2018, that he has been purchasing Anamalz products from the Opponent ‘since May 2012’ and understood her to be the owner and operator of the ANAMALZ business[19].

[15] Attachment P to the first Causon declaration. While the product catalogue was not dated, given the incorporation of the NCC on 26 Sep 2015, I accept the Opponent’s assertion that this was a 2016 catalogue.

[16] Attachment R to the first Causon declaration.

[17] Paragraph 61 of the Scott declaration - although in paragraph 62 he said he did not know if ANAMALZ was being used in this period.

[18] As reflected in the NCC Sales report at Attachment R to the first Causon declaration.

[19] Attachment S of the first Causon declaration.

36.     While I accept that the Applicant was engaged in many aspects of the business including developing new products for sale, such involvement does not necessarily amount to ownership of the Trade Mark. According to the Register the prior mark had been registered either in the name of a company of which the Opponent was sole director and shareholder or in her name as Trustee for the ANAMALZ IP Trust. While the Opponent acknowledged that ODTM Pty Ltd had an implied licence from the trust to use the prior mark, even if I accepted that ownership was assigned or otherwise passed to it, that entity (which was renamed ‘Anamalz IP (Aust) Pty Ltd’ in 16 May 2013 and ‘ACN 153 668 458 Pty Ltd’ on 5 June 2015) was wound up and deregistered in 2015[20].

[20] Annexure I of the Scott declaration.

37.     Furthermore, there is no claim or any evidence that the Applicant used the Trade Mark in his personal capacity prior to the relevant date. Conversely there is evidence that at the relevant date there had been ongoing use of ‘anamalz’ as a trade mark in relation to the toys by another entity, that is, the NCC, and that the Opponent had remained engaged in associated sales and promotion activities.

38.     On this basis I am satisfied that the Opponent has demonstrated, prior to the relevant date, use by a person other than the Applicant of another mark, substantially identical to the Trade Mark, in relation to the same kind of goods. Therefore, the Applicant was not relevantly the owner of the Trade Mark at the date he filed the application.

39. It follows that the Opponent has established the s 58 grounds of opposition.

40. Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP or the further submissions made by the parties in this regard. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.

Decision

41. Section 55 of the Act relevantly provides:

Decision

(1)   Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

42.     Subsection (3) does not apply to these proceedings. Accordingly, I refuse to register trade mark application 1894891.

Costs

43. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under section 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Mary-Ann Cooper

Hearing Officer

Oppositions and HearingsTrade Marks and Designs

22 November 2019