Lydia Brichta on Behalf of the Pet Vet Woodpark Animal Hospital v Torrag Pty Ltd

[2001] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Lydia Brichta on behalf of the Pet Vet Woodpark Animal Hospital to the registration of trade mark application number 786044 in the name of Torrag Pty Ltd for the trade mark comprising the words PET VETS and a dog and cat device, in Class 42.

Background
Application number 786044 was filed on 19 February 1999, in the name of Torrag Pty Ltd (the applicant).  The application was for the registration of the trade mark as shown below and covering the statement of services, "Veterinary hospital, pet boarding" in Class 42:

Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 15 July 1999.

Following a decision of a delegate of the Registrar of Trade Marks which allowed an extension of time within which to do so, a notice of opposition to the trade mark’s registration was filed by Lydia Brichta on behalf of the Pet Vet Woodpark Animal Hospital (the opponent), on 15 November 1999.  That notice listed two grounds of opposition.  These were based on allegations that the applicant is not the proprietor of the trade mark and also that the mark is not capable of distinguishing the applicant's services.

Evidence in support of the opposition and evidence in answer were duly served and filed by the respective parties.  There was no evidence in reply in the matter.  Neither party requested a hearing in relation to the opposition, nor did they make any written submissions in support of their respective interests.  This was despite their being invited to do so in Official Notices to both parties dated 6 October 2000.  Consequently, under the terms of subregulation 5.14(4), the Registrar has set the matter down for me to decide as his delegate, based upon the material on file.

The Evidence
The evidence comprises:

Declarant	Dated	Exhibits	Type
Lydia Francis Brichta	11 April 2000	nil	Support
Lydia Francis Brichta	9 May 2000	1 and 2	Support
Margaret McLachlan	26 May 2000	MM1 - MM21	Answer
John Thrift	23 May 2000	JT1 - JT3	Answer
Ian Steep	23 May 2000	IS1 - IS3	Answer
Beverley Ann Alderton	24 May 2000	nil	Answer
Terry J. Wescombe	18 May 2000	nil	Answer
Manuella Schuhmann	15 May 2000	nil	Answer

The applicant advised the Trade Marks Office, on 24 May 2000, that it had been served with the both of the Brichta declarations in an unsigned state and without the annexures referred to in the declaration dated 9 May 2000.  The opponent was advised of this in an Official letter dated 26 May 2000.  On 31 May 2000, after the due date for the service of evidence in support, the opponent advised that it had served the annexures on the applicant.

The Trade Mark regulations state, at para.5.7, that the opponent must serve a copy of the evidence in support on the applicant by the due date and file the original documents with the Registrar.  Both of the Brichta declarations served on the applicant were allegedly unsigned - and by definition, unwitnessed - and the annexures referred to in the evidence were not correctly served.  This has not been disputed by the opponent.  Therefore, it appears that the evidentiary material served on the applicant is not the same as the evidentiary material filed with the Registrar.  Notwithstanding this, I am willing to consider the Brichta declarations in coming to a decision in the matter.  However, I cannot allow them the same weight as I would have if the copies of the declarations served on the applicant had been properly signed and witnessed, in accordance with the legislation.  With respect to the annexures attached to the second Brichta declaration, this material was not served on the applicant within the time allowed and the opponent has not submitted a late application for an extension of time to rectify this.  Consequently, I must find that they are not admissible to these opposition proceedings.

Analysis
The opponent's notice of opposition listed only two grounds of opposition, which I have inferred as falling, respectively, under ss. 58 and 41 of the Act.  Accordingly, these grounds are the subject of this decision and the reasons for it.

The first ground listed in the notice of opposition is that the applicant is not the proprietor of the subject trade mark.

Section 58
This section reads:

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

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As is stated in s.27 of the Act:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and
           (b) one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Ownership of a trade mark depends on a combination of authorship and first use and, as per Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601, may be claimed either on being the first user of the trade mark in Australia, in relation to the nominated goods or services, or on the basis of the making of an application for registration. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods or services of a particular trader are being offered for sale, in this country, under the trade mark.

The applicant here was the first to apply for its trade mark in Class 42 in Australia and, from the evidence, appears to have used it in trade for a time before the date of application for its registration.  It has thus satisfied the onus upon it and that burden now shifts to the opponent to show that it is not the owner of the trade mark.

The dispute of a claim to ownership of a mark can only proceed to be considered where the opponent can also show that the word or words it relies upon as being owned by itself or another person is substantially identical with the mark, the subject of the application for registration.  It is not enough that the competing trade marks might be considered deceptively similar.  As Gummow J. said in Carnival Cruise Lines Inc v Sitmar Cruises Ltd. (1994) AIPC 91-049 at 38,114, when referring to the concept of proprietorship in the Trade Marks Act 1955, and to Shell Co. (Aust.) Ltd v Rohm and Haas, supra:

[Shell v Rohm and Haas] does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical"  was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407.

In relation to that term, Windeyer J said, in the latter case at 414-415:

(the marks should) 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,

Here, the opponents trade mark appears, from the Brichta declarations, to comprise the mark shown below left.  For convenience sake and in order to compare the marks, the trade mark, the subject of this application, is reproduced on the right.

Clearly, when the test propounded by Justice Windeyer is applied, the trade marks used by the respective parties are not substantially identical with each other - despite the common words PET and VET(S).  Therefore, the claim that the applicant is not the owner of its trade mark because the opponent had first used a mark which is so close as to be virtually the same, fails at the first hurdle.  Accordingly, I find that the opponent is not successful in showing that the applicant is not the owner of the trade mark which is the subject of this application.

The opponent has also alleged that the present trade mark is not capable of distinguishing the opponent's services.

Section 41
Trade mark not distinguishing applicant's goods or services

As it is relevant to the present application, this section reads:

(1)…

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

Justice Branson considered this section of the Act in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the Oregon case).  Her Honour observed, at 504, that, in applying the provisions of s.41 and in deciding whether a trade mark is capable of distinguishing, the Registrar has three options.  He or she may conclude:

(a)that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c)that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.

Her Honour continued, that:

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

Additionally, in the judgments of French and Tamberlin JJ in Registrar of Trade Marks v WoolworthsLtd (1999) 45 IPR 411 (the Woolworths Metro case), it was confirmed that a presumption of registrability underlies the policy of the new law.  This principle, in particular, guides examiners of trade marks in determining whether or not to raise substantive grounds of rejection - including those under s.41.

The situation in the present instance is that the examiner, in her initial consideration of the mark, decided that despite the presence of the descriptive words PET VETS, the mark as a whole was inherently adapted to distinguish.  However, I must now consider the matter, as the delegate of the Registrar of Trade Marks, in the context of an opposition to the registration of the mark, under s.41 of the Act.  I note that there is nothing in the evidence and certainly no submissions, which might go towards showing that the mark does not qualify for registration under this section.

Whether a trade mark is inherently adapted to distinguish depends on whether other traders are likely to want to use the words contained in it, without improper motive in the normal course of their business.  The test was set down by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511 (the Michigan case).  In that case, the relevant paragraph starts on page 513.  Dealing with the question of whether a trade mark is adapted to distinguish, his Honour says:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.  In Registrar of Trade Marks v W. & G. Du Cros Ltd (1913) 30 RPC 660, Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed markis or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present.  His Lordship said: “The applicant’s chance of success in respect [i.e. in distinguishing his goods by means of the mark apart from the effects of registration] must, I think, largely depend upon  whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.

I think that the words PET VETS are common to the trade and should be able to be used to describe veterinary services for household pets by all providing them.  However, in addition to those words, the present trade mark also contains other material, comprising the silhouettes of a dog and a cat, in a relatively unique getup.  I consider that, when the mark is regarded in its entirety, it is not one that other traders would be likely to wish to use, without an improper motive.  I find then that the trade mark is inherently adapted to distinguish the designated services of the applicant from those of other persons.

Accordingly, I dismiss the ground of opposition based on s.41.

Decision
I have found that the opponent has not succeeded on either of the grounds relied upon in its notice of opposition.  Accordingly the opposition as a whole must fail and I dismiss it.

Notwithstanding my finding here, this application has also been opposed by another party and that matter is progressing through the stages of evidence, as laid down in the regulations.  For that reason, until that matter is resolved, I can make no direction here in relation to the registration of the application.

Costs
In respect of costs, I can see no reason why they should not follow the result. Accordingly, I order that costs in the matter be awarded against the opponent, in accordance with the Official scale.

Ian Forno
Hearing Officer

16 February 2001