Mad Keen Pty Ltd v Jenkar Developments Pty Ltd

[2012] ATMO 99

TRADE MARKS ACT 1995

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

Re:Oppositions by Mad Keen Pty Ltd to applications under section 92 of the Act by Jenkar Developments Pty Ltd to remove trade mark numbers 735481(25) - MAD KEEN Logo, 784989(16, 28, 35) - MAD KEEN Logo and 958569(12, 16, 25, 28, 35) - MAD KEEN in the name of Mad Keen Pty Ltd

And

Oppositions by Mad Keen Pty Ltd to registration of trade mark applications 1298700(39, 43) Mad Keen and 1298177(39) Mad Keen Fishing Charters in the name of Jenkar Developments Pty Ltd

Delegate:

Iain Thompson

Representation:

Opponent: Did not appear or file written submissions

Applicant: Alex Lazarevich, Barrister, instructed by Greg Finlayson of Allen Burtt Legal Services

Decision:

2012 ATMO 99

s96 oppositions – s92: probative value of evidence – use of registered trade marks – applications for removal partially successful;

s52 oppositions – all available grounds of opposition nominated by Opponent, none of which were successful.

Costs – reduced costs ordered against the Opponent.

Background

1. These matters are cross-oppositions under sections 52 and 96 of the Trade Marks Act 1995 (‘the Act’) which are being decided together (both as they are interrelated and as a matter of procedural and administrative expediency).

2. The section 96 matters concern applications filed on 12 October 2011 by Jenkar Developments Pty Ltd (‘the Applicant’) under both subsections 92(4)(a) and 92(4)(b)[1] of the Act for the removal from the Register of Trade Marks of the registrations which appear immediately below:

[1] The subsection 92(4)(b) period (‘the relevant period’) of alleged non-use by the owner of the trade marks is a period of three years ending on 12 September 2011.

Registration No:              735481

Priority Date:  28 May 1997

Goods:  Class 25: Clothing, footwear, headgear

Trade Mark:  

Registration No:              784989

Priority Date:  10 February 1999

Goods/Services:              Class 16: Paper, photographs, stickers, stationery, labels, posters, pens, pencil cases, collector cards, printed material including magazines, boxes, greeting cards

Class 28: Sporting equipment, fishing rods, fishing reels, fishing tackle, lures, golf clubs, sports bags, board games, hand held computer games

Class 35: retailing, wholesaling and mail order retailing of the following items: clothing, stickers, fishing rods, reels and tackle, sporting goods, headwear (hats, caps, beanies), footwear, sunglasses, printed paper goods (including magazines and books), sports bags and cases, drink coolers, wallets, umbrellas, keyrings, watches, belt buckles, playing cards, computer games, board games, pocket knives, boats and boating equipment, tackle boxes, greeting cards, stationary, posters, labels, tents, portable cooling apparatus

Trade Mark:  

Registration No:              958569

Priority Date:  20 June 2003

Goods:Class 12: Vehicles and apparatus for locomotion by land, air or water

Class 16: Paper, cardboard and goods made from these materials, stationary, office requisites, including, but not limited to; photographs, stickers, stationery, labels, posters, pictures, collector cards, greeting cards, catalogues, brochures, books, boxes, bags, drink coasters, calendars, napkins, wrapping paper, newsletters, magazines, school supplies (except furniture), plastic materials for packaging (not included in other classes)

Class 25: Clothing, footwear, headgear, in addition to belts

Class 28: Games, playthings and sporting equipment including, but not limited to; fishing rods, fishing reels, fishing line, fishing tackle, artificial baits, nets for sport, golf equipment, surf boards, sports bags, board games, playing cards, hand held computer games

Class 35: Advertising, advertising material

Trade Mark:  MAD KEEN

3. The owner of the above trade marks, Mad Keen Pty Ltd (‘the Opponent’), has opposed removal of the above trade marks claiming to have intended in good faith to use the registered trade marks.

4. The Applicant has filed applications to register the trade marks which appear below:

Application No: 1298700

Priority Date:  13 May 2009

Services:  Class 39: Boating, fishing, hunting and sightseeing excursions

Class 43: Hospitality services (accommodation); provision of temporary accommodation; provision of tourist accommodation

Trade Mark:  Mad Keen

Application No: 1298177

Priority Date:  8 May 2009

Goods:  Class 39: Boating, fishing, hunting and sightseeing excursions

Trade Mark:  Mad Keen Fishing Charters

5. The applications were examined as prescribed by section 31 of the Act and advertised as accepted in the Australian Official Journal of Trade Marks on 1 October 2009.

6. On 1 January 2010 the Opponent served and filed Notices of Opposition (‘the Notices’) to the registration of the trade marks. The Notices contain all of the grounds of opposition available under the Act.

7. Both parties have served and filed evidence in support and evidence in answer to the respective oppositions under section 52 and 96 of the Act.

8. Both parties were informed of their right to be heard in the matters and the Applicant elected to be heard.  The Opponent did not appear or file written submissions.  As a delegate of the Registrar of Trade Marks, I heard the submissions of the Applicant at a hearing in Adelaide on 28 August 2012 made by Mr Alex Lazarevich, Barrister, instructed by Mr Greg Finlayson, solicitor, of Allen Burtt Legal Services.

Onus

9. In relation to the section 52 matters the Opponent bears the onus of establishing one or more grounds of opposition matters on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551; (2012) AIPC 92-436 per Dodds-Streeton J at [13].

1. In relation to the section 96 opposition, section 100 of the Act places the burden on the Opponent to establish the use of its registered trade marks and to establish its intention to use its registered trade marks in good faith and to rebut any allegations of non use during the relevant period. Again, these burdens are on the balance of probabilities.

The Evidence

1. The Opponent’s evidence, served and filed in support of its opposition to the section 96 matters, are three short declarations dated 24 April 2012 which are identical in material ways and which exhibit in common a number of catalogues. For convenience I will call this evidence ‘ADR1’. ADR1 is declared by Alexander David Rich who is a director of the Opponent. The Applicant has not served and filed evidence in answer to the section 96 matters.

2. The Opponent’s evidence in support of its section 52 oppositions to registration is a declaration (‘ADR2’) made by Alexander David Rich dated 25 October 2010. The Applicant has served and filed two declarations in answer – these being by:

   ·     Stephen Archer – Computer scientist

   ·     Glen Blacker – director of the Applicant.

3. The ADR1 materials each consist of declarations which state:

   I declare as applicant [sic] I have intention in good faith to use the trademark with respect to the entirety of the classes of goods for which registration was obtained.  We have submitted our evidence supporting this on this date.

4. The Opponent thus does not appear to have understood that the removal applications enliven subsection 92(4)(b) as well as subsection 92(4)(a).  The Applicant alleges the lack of any use of the trade marks in terms of subsection 92(4)(b) by the Opponent in the three year period ending on 20 September 2011 (which I have termed ‘the relevant period’).

5. ADR1 does not state the dates of the catalogues which are exhibited and these dates are not invariably contained in each of the catalogues themselves.  Where the date can be ascertained it is 2011 in one catalogue and in another a small copyright claim suggests that the catalogue in which it appears to be likely to be from the year 2008[2] which is within the relevant period.  A price list in ADR1 which bears the MAD KEEN Logo dates from 2010 which is also from within the relevant period.

   [2] This evidence was submitted both by email and by hard copy: although this is not corroborative, I note that several of the electronic file names of the catalogues contain the year 2010.

6. It is reasonable to surmise under these circumstances that Mr Rich has selected a range of several of the preceding years’ catalogues which date from before the removal applications were filed to support his allegations of intended use.

7. The goods depicted in the catalogues are predominantly sports-related clothing (such as caps, hats and apparel for fishermen and golfers) but also a range of goods and giftware including stubbie holders, car seat covers, festive cards, barbeque tools, poker (game) sets, drinking glasses, hip flasks, wrapping paper, bags, bar sets, umbrellas, coaster sets and so forth.

8. Both the registered trade marks MAD KEEEN and the MAD KEEN Logo (as well as a variant on the MAD KEEN Logo) appear in these catalogues and (as I have observed) on the price list.  Additionally, the MAD KEEN Logo appears on many of the goods depicted in the catalogues.

9. I further note that the ‘terms and conditions’ in the back of the catalogues specify a minimum order of $500 which suggests that the Opponent wholesales the goods that it sells although there are references elsewhere in the evidence to mail order and Internet sales.[3].

   [3] ADR2 Exhibit 8.

10. ADR2 exhibits the Opponent’s trade mark registration certificates and it refers to a number of Internet addresses which Mr Rich states are owned by the Opponent.  It also exhibits material which Mr Rich states shows the Opponent’s trade marks in use in relation to fishing charters.  This material is problematic from a probative viewpoint and some of the files on a CD-ROM in evidence are not accessible.  While a photograph has the MAD KEEN Logo on a sticker affixed to a window of the boat in the background of one of the photographs, it is not clear to me whether this boat is one owned by the Opponent and is emblazoned with the MAD KEEN Logo for promotional purposes or is one which might have been used for sponsorship of a fishing competition, is a boat chartered by the Opponent for its own use, or is indeed one which was used for fishing charter services offered under the MAD KEEN trade marks to the public at large by the Opponent.  Other photographs do not help to answer this question: for example, a number of photographs show the MAD KEEN Logo on t-shirts worn by sports fishermen apparently aboard this boat; but these t-shirts look very new and it is open to interpretation whether these people have either chartered the boat or are taking part in some kind of promotional event or alternatively a fishing competition sponsored by the Opponent and involving the trade marks.

11. A DVD in evidence which is very poor quality has footage of a fishing trip, possibly in Fiji, but neither of the Opponent’s trade marks is obviously apparent in this DVD.

12. Another DVD in evidence is a promotional video which promotes both of the Opponent’s registered trade marks and the goods sold in relation thereto.  A short commercial video also shows the Opponent’s registered trade marks.  Neither of these particular videos shows the use of the Opponent’s trade marks on fishing equipment or in relation to fishing charters.

13. ADR2 also exhibits a number of newspapers and magazine articles from the late 1990s through to 2006 which refer to the trade marks MAD KEEN and/or the MAD KEEN Logo used in relation to, predominantly, clothing and accessories for recreational fishers.

14. Exhibit 9 to ADR2 is a copy of a page downloaded and printed from the website on, apparently, 21 October 2010 which is within the relevant period.  This page announces the ‘re-launch’ of MAD KEEN FISHING CHARTERS in 2011.  This statement appears to constitute a concession that the Opponent’s trade marks were not used in relation to fishing charters at least for some period of time but it is not probative of the fact that the charters did in fact occur at an earlier time.  There is no evidence as to whether this re-launch ever took place, thus if I were to afford weight to the evidence which is said to establish use of the Opponent’s trade marks in relation to fishing charters before the relevant period, the Registrar’s discretion under the principle in Re Hermes Trade Mark [1982] RPC 425 cannot be beneficially applied.

15. The Applicant’s evidence in answer from Stephen Archer shows that a large number of the Internet domain names which Mr Rich states are owned by the Opponent are in fact owned by the third party Delgeo Pty Ltd.  This apparent discrepancy has not been addressed by the Opponent in evidence in reply and any relationship between Delgeo Pty Ltd and the Opponent is unexplained.

16. Glen Blacker declares that the Applicant began publicly trading its fishing charter business on 28 May 2008 under the name ‘Mad Keen Fishing Charters’.  The business name ‘Mad Keen Fishing Charters’ was registered with the South Australian Department of Consumer Affairs on 5 June 2008.  On 16 June 2008 the Applicant was issued a Charter Boat Fishery licence pursuant to the Fisheries Management Act 2007 (SA). “In the second half of 2008” the Applicant prepared a business plan for the calendar year 2009 and purchased the boat ‘Storm Eagle’ in November 2009.

17. On 27 December 2008, the Applicant leased accommodation for people going on fishing charters and in January 2009 it registered the Internet addresses ‘ and ‘ I note that none of the activities of the Applicant in relation to the opposed trade marks up to this date constitute a public use of the trade marks for the purposes of the Act.

Additionally, the Applicant registered the following trade mark in Australia:

Registration No:              1298698

Priority Date:  13 May 2009

Services:Class 43: Hospitality services (accommodation); provision of temporary accommodation; provision of tourist accommodation

Trade Mark:  Mad Keen Fishing Charters

1. Exhibit GB-17 is a copy of the York Peninsular Fishing Guide published in 2009 which carries an advertisement for the Applicant’s services offered under the above trade mark which was booked in March 2009.

2. Mr Blacker estimates that between 28 May 2008 and May 2009 approximately 270 people participated in fishing charters operated by the Applicant under the trade mark MAD KEEN FISHING CHARTERS.  I surmise that 28 May 2008 was the date on which the Applicant started charter operations under its trade mark.

The Section 92 Opposition

1. Section 92 of the Act provides

   Application for removal of trade mark from Register etc.

   92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

   (2) The application:

   (a) must be in accordance with the regulations; and
   (b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:  For prescribed court see section 190.

   (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv) has not used the trade mark in Australia; or
   (v) has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
   (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i) used the trade mark in Australia; or
   (ii) used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note:  For file see section 6.

   (5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

2. It is obvious, I consider, that the opposition to the applications for removal of the trade marks from the register under subsection 92(4)(a) must succeed.  The Opponent has used its trade mark on a range of goods and services subsequent to the date of the filing of the applications for registration and this use provides a positive inference that was not rebutted that the Opponent did, at the filing dates, have a bona fide intention to use its trade marks.

3. The situation under subsection 92(4)(b) is more complex – largely, I suspect, because the Opponent has not realized that subsection 92(4)(b) is a ground in these matters and consequently failed to appreciate the nature of the evidence required to rebut the allegations on non-use during the relevant period.

4. In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166; [2001] AIPC 91-713; (2001) 51 IPR 149 Drummond J said at [14]:

   If a single user of the mark during that period is sufficient to disentitle a person from making an application for removal based on s 92(4)(b), the opponent must be entitled by s 100(3)(a) to rebut the allegation on which such a removal application is based by proving a use (in good faith) on just one occasion during the three year period.

5. The High Court, citing the above decision, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 observed at [64]:

   Whilst a single act of sale may not be sufficient to prevent removal[5], in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine"[6] use judged by commercial standards. It has been recognised by the Court of Justice of the European Communities, dealing with the expression "genuine use" as used in Arts 10 and 12 of Directive 89/104 of the Council of the European Communities,[7] that use of a mark "need not ... always be quantitatively significant for it to be deemed genuine".[8] On the facts here, it is not necessary to decide whether a single use of the registered trade mark in good faith would have been sufficient to resist removal.

   [5] "Nodoz" Trade Mark [1962] RPC 1

   [6] Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 at 36 per Sir Raymond Evershed MR

   [7] These Articles can be found set out in Kerly's Law of Trade Marks and Trade Names, 14th ed (2005) at 934-935.

   [8] Ansul BV v Ajax Brandbeveiliging BV [2005] Ch 97 at 116 [39]

1. One of the brochures exhibited to ADR1 claims ‘over 1,000,000 units of sales last year’ but, problematically, this brochure is undated.

2. Accordingly, I will proceed on the basis that it is improbable that the Opponent would not have had at least some sales under its registered MAD KEEN and MAD KEEN Logo trade marks which appear in its catalogues and order form and that these sales have been spread out amongst all of the goods which appear therein and that the goods therein reflect the extent of the Opponent’s use of its trade marks.  At least some of these catalogues (and the order form) are from within the relevant period and can thus be held to support a claim for use of the registered trade marks on those goods and the sales services relating thereto.

3. Accordingly I find that there has been no use of the Opponent’s trade marks in relation to the goods or services during the relevant period which are shown as being struck out in the specifications of its registered trade marks which appear hereunder: those items do not correspond to any of the goods appearing in the catalogues or price list, or are services which could not be reasonably inferred to have been performed by the Opponent:

   Registration 735481

   Class 28: Sporting equipment, fishing rods, fishing reels, fishing tackle, lures, golf clubs, sports bags, board games, hand held computer games

   Class 35: retailing, wholesaling and mail order retailing of the following items: clothing, stickers, fishing rods, reels and tackle, sporting goods, headwear (hats, caps, beanies), footwear, sunglasses, printed paper goods (including magazines and books), sports bags and cases, drink coolers, wallets, umbrellas, keyrings, watches, belt buckles, playing cards, computer games, board games, pocket knives, boats and boating equipment, tackle boxes, greeting cards, stationary, posters, labels, tents, portable cooling apparatus[9]

   [9] While the Opponent’s catalogues do contain stubbie holders, these are not portable cooling apparatus: they do not cool the cans or bottles which they contain but slow the warming process.

   Registration 958569

   Class 12: Vehicles and apparatus for locomotion by land, air or water

   Class 16: Paper, cardboard and goods made from these materials, stationary, office requisites, including, but not limited to; photographs, stickers, stationery, labels, posters, pictures, collector cards, greeting cards, catalogues, brochures, books, boxes, bags, drink coasters, calendars, napkins, wrapping paper, newsletters, magazines, school supplies (except furniture), plastic materials for packaging (not included in other classes)

   Class 25: Clothing, footwear, headgear, in addition to belts

   Class 28: Games, playthings and sporting equipment including, but not limited to; fishing rods, fishing reels, fishing line, fishing tackle, artificial baits, nets for sport, golf equipment, surf boards, sports bags, board games, playing cards, hand held computer games

   Class 35: Advertising, advertising material

4. In respect of the Class 35 services immediately above, the Opponent has not shown that it accepts payment for advertising services on behalf of others or that it sells advertising material.

The Section 52 Oppositions

1. The section 52 oppositions rely on every available ground of opposition, none of which was abandoned before the hearing and none of which are established. I will explain this finding as briefly as possible.

2. Since two of the grounds relied on by the Opponent involve a comparison of the trade marks, it is convenient first to observe that the trade marks of the parties which consist only of words are substantially identical to each other.  Substantial identity was discussed by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [12]:

   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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered. […]

3. In assessing substantial identity the words in the Applicant’s trade mark which are wholly descriptive (FISHING CHARTERS) may be discounted for the purposes of comparison: PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47.[10]

   [10] And see, by analogy, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.

4. Accordingly, I find the Opponent’s registration 958569 MAD KEEN (words) to be substantially identical to the Applicant’s trade marks which consist of the words MAD KEEN and MAD KEEN FISHING CHARTERS.

Section 58

1. Section 58 of the Act provides:

   Applicant not owner of trade mark

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

   Note:  For applicant see section 6.

2. In order to establish a ground of opposition under the provisions of section 58, the Opponent needs to establish each of the following:

   ·   the respective trade marks of the Applicant and Opponent are either identical or substantially identical [11],

   ·   the respective services of both parties are the ‘same kind of thing’ [12]

   ·   the Opponent has the earlier claim to ownership based on authorship[13] and use prior to both the application to register and any actual use of the mark by the Applicant[14].

   [11] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

   [12] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

   [13] Shell Co (Aust) Ltd v Rohm and Haas Co [1948] HCA 27; (1948) 78 CLR 601 at 625 and 627

   [14] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

3. I have found that the Opponent’s MAD KEEN word trade mark is substantially identical to the Applicant’s trade marks. While this finding was with reference to the Opponent’s trade mark registration, section 58 looks in the main to the use of the Opponent’s trade mark and ownership at common law – in particular in relation to services which are ‘the same kind of thing’ as those for which the Applicant seeks registration.

4. As discussed above, the Opponent has served and filed evidence which it states supports its claim to have provided fishing charters under the trade mark MAD KEEN.  If this claim was indeed so, these services are the same kind of thing as the services for which the Applicant seeks registration of its trade mark MAD KEEN FISHING CHARTERS.  The evidence is, however, from the point of view of a decision maker, inconclusive.  At its most relevant, the photographic and video evidence shows people fishing from a boat and a person on a recreational fishing boat with a MAD KEEN sticker affixed in the window behind him; however, the particular photograph is undated and it is not clear that the event which is said to have taken place was a commercial fishing charter and not, for example, a promotional event for the giftware and clothing sold under the Opponent’s trade marks or a sponsored fishing competition.

5. In this instance, there is no evidence provided by the Opponent which on the balance of probabilities establishes its claim to authorship and prior use of the trade mark MAD KEEN in respect of fishing charter services.

6. The Opponent has not established its section 58 ground.

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:For applicant see section 6.

2. The onus is on an opponent to establish this ground – none of the Opponent’s evidence could be construed as being pertinent to this ground.  Further, the Applicant’s evidence, discussed above, shows a very firmly fixed intention to use the opposed trade marks and, as at the priority date of the applications, advanced preparations for doing so.

3. The Opponent has not established the ground under section 59.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

2. In order to found its ground under section 60, the Opponent must establish that its trade mark(s) had a reputation in Australia such that the use of the Applicant’s trade marks would deceive or cause confusion.

3. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the  McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

4. Her Honour went on to say at [86]:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

5. All that the Opponent has adduced by way of evidence to support a claim that its trade marks have a reputation is the catalogues[15] in evidence, one of which claims that a million units were sold in the last year (however the particular year that was cannot be readily ascertained).  This claim has no objective corroboration and it is not possible to ascertain what this claim means: for example, is the sale of a pack of four drinks coasters the sale of one unit, or of four?  Is the claim a piece of advertising puffery or is it realistically based?  There is a DVD, as discussed, which contains a short promotional film that features the Opponent’s trade marks; however, there is no information about how widely this material has been distributed.  Likewise, there is a short video advertisement for goods bearing the Opponent’s trade marks but there is no information as to whether this advertisement has ever been broadcast, or how widely.  Accordingly, it is impossible to ascribe a reputation to the Opponent’s trade marks ‘amongst Australians generally’, or amongst the more particular target ‘audience’ of recreational fishers, based on the evidence before me.

   [15] Albeit that these catalogues were served and filed in relation to the section 96 opposition.

6. The Opponent has not established its ground under section 60 of the Act.

Sections 61, 62, 39, 41 and 62A

1. The Opponent has not served and filed any evidence with could arguably be claimed to go to any of these grounds.  Indeed, in relation to the section 41 ground, it could be perceived that in pursuing this ground the Opponent would be in essence arguing against the validity of at least one of the registrations on which it relies which was accepted without the application of the provisions of either subsections 41(5) or (6).

Section 43

1. Section 43 of the Act provides:

   43Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The Opponent has not expressly pointed to a connotation inherent in the opposed trade marks.  It is thus to be presumed that this ground is nominated as the Opponent sees the connotation as referring to its own trade marks and arising because of the public’s knowledge thereof.

3. However, the ground under section 43 must arise because of a connotation in the opposed trade mark(s) not because of their comparison to some other trade mark: see Big Country Developments Pty Ltd v TGI Friday's Inc [2000] FCA 720; (2000) 100 FCR 358; 173 ALR 127; (2000) 48 IPR 513 at [43]:

   The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others.

4. Accordingly I find that the Opponent has not established its ground under section 43.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

2. In order to found this ground the Opponent must establish to my satisfaction the existence of a registered or pending trade mark owned by a person other than the Applicant and which:

   ·        Has an earlier priority date that those of the opposed trade marks, and

   ·Registered or pending in respect of similar services or closely related goods to the services for which registration is being sought, and is

   ·Substantially identical or deceptively similar to the opposed trade marks.

3. The Opponent has here nominated on the Notice its registration 784989(16, 25, 35) MAD KEEN Logo.  This registration has an earlier priority date than that of the opposed applications and is registered by a person other than the Applicant.

4. In Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499 [1999] FCA 1020, (‘Woolworths’) French J stated:

   Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second …

5. Therefore, two initial questions are to be addressed.  Are the goods in relation to which registration 784989(16, 25, 35) MAD KEEN Logo is registered closely related to the services in respect of which registration is sought?  Secondly, are the services in relation to which 784989 is registered closely related to the services in respect of which registration is sought?

6. In relation to the second question, above, in Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561 at 567, (‘Mid Sydney’) Burchett, Sackville and Lehane JJ said:

   Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered: s120(2)(c)? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120 (2) (c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (TM Act 1955), although the expression "services of the same description as [services in respect of which the trade mark is registered]'' was used in the earlier legislation: see TM Act 1955 ss 33 (2), 36 (1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592; at 606; 1A IPR 465 the High Court said this:

   There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the assistant-comptroller elaborated on the observations of Romer J in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade  ..."

1. The services ‘retailing, wholesaling and mail order retailing’ of various items of clothing and giftware are, in my consideration, entirely unrelated to both the services in Class 39: ‘Boating, fishing, hunting and sightseeing excursions’ and also those in Class 43: ‘Hospitality services (accommodation); provision of temporary accommodation; provision of tourist accommodation’.  It might be that traders involved the provision of accommodation or fishing charter might occasionally sell souvenirs or giftware but the selling of such goods is in no way integral to the provision of those accommodation or fishing charter services.  People involved in the accommodation and fishing charters trades are not generally regarded as being regarded as being in the same trade as retailers or wholesalers.

2. Accordingly, the services under consideration are not similar services.

3. In relation to the first question (as to whether the goods in relation to which registration 784989(16, 25, 35) MAD KEEN Logo is registered are closely related to the services in respect of which registration is sought) the above passage quoted from Mid Sydney offers, by analogy, some guidance as does the discussion by French J in Woolworths.

4. None of the goods in respect of which 784989(16)(25)(35) MAD KEEN Logo is registered appear to be intrinsic to the provision of ‘Boating, fishing, hunting and sightseeing excursions’ or ‘Hospitality services (accommodation); provision of temporary accommodation; provision of tourist accommodation’.  Traders who sell clothing and giftware do not usually provide such services and vice versa.  The nature and characteristics of these goods and services are quite different and they are not normally provided by the same trader to the same class of customers, nor are traders who supply such divergent goods and services normally regarded as being in the same trade.

5. Whatever the similarity between the parties’ trade marks, the Opponent has not established its ground under section 44 of the Act.

Sections 177 and 187

1. The opposed applications are not in respect of Certification or Defensive trade marks and the oppositions under these grounds cannot be established.

Sections 58A

1. Section 58A of the Act provides:

   58AOpponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)similar goods or closely related services; or

   (ii)similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:For predecessor in title see section 6.

2. As the Opposed trade marks were not accepted under the provisions of subsection 44(4) this ground of opposition is not enlivened.

Decisions

1. Subsection 55(1) of the Act provides:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, 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.

2. The opposition to registration of trade marks 1298700(39, 43) Mad Keen and 1298177(39) Mad Keen Fishing Charters is not established.

3. The trade mark applications may then proceed to registration one month from the date of this decision.  If the Registrar has been served with notices of appeal before that time, I direct that registration shall not occur until the appeals have been decided or discontinued and that the disposition of the applications be in accordance with the Court’s orders or directions.

4. In relation to the section 96 removal applications subsection 101(1) of the Act provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

5. I direct that the Opponent’s registrations be restricted by removing the following trade mark registrations from the register in respect of the goods and services shown as struck out in the specifications below:

   Registration 735481

   Class 28: Sporting equipment, fishing rods, fishing reels, fishing tackle, lures, golf clubs, sports bags, board games, hand held computer games

   Class 35: retailing, wholesaling and mail order retailing of the following items: clothing, stickers, fishing rods, reels and tackle, sporting goods, headwear (hats, caps, beanies), footwear, sunglasses, printed paper goods (including magazines and books), sports bags and cases, drink coolers, wallets, umbrellas, keyrings, watches, belt buckles, playing cards, computer games, board games, pocket knives, boats and boating equipment, tackle boxes, greeting cards, stationary, posters, labels, tents, portable cooling apparatus

   Registration 958569

   Class 12: Vehicles and apparatus for locomotion by land, air or water

   Class 16: Paper, cardboard and goods made from these materials, stationary, office requisites, including, but not limited to; photographs, stickers, stationery, labels, posters, pictures, collector cards, greeting cards, catalogues, brochures, books, boxes, bags, drink coasters, calendars, napkins, wrapping paper, newsletters, magazines, school supplies (except furniture), plastic materials for packaging (not included in other classes)

   Class 25: Clothing, footwear, headgear, in addition to belts

   Class 28: Games, playthings and sporting equipment including, but not limited to; fishing rods, fishing reels, fishing line, fishing tackle, artificial baits, nets for sport, golf equipment, surf boards, sports bags, board games, playing cards, hand held computer games

   Class 35: Advertising, advertising material

Costs

1. Section 202 provides:

   202Registrar’s powers

   The Registrar may, for the purposes of this Act:

   (a)summon witnesses; and

   (b)receive written or oral evidence on oath or affirmation; and

   (c)require the production of documents or articles; and

   (d)award costs against a party to proceedings brought before the Registrar; and

   (e)notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be brought to the person’s notice.

   Note:For the awarding of costs see section 221.

2. Additionally, section 221 provides:

   221Costs awarded by Registrar

   (1)The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

   (2)A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

   (3)If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

3. The Act makes it clear that the award of costs is a discretionary power of the Registrar and as her delegate I may accordingly have regard to the nature and conduct of the proceedings in assessing same.

4. Having reviewed the official files and taken regard of both the overly legalistic conduct of these proceedings by the Applicant and the nature of its procedural objections, and the limited success of its applications under section 96 of the Act, I direct that (should the Applicant apply for its costs) the Applicant is entitled to same at the rate of fifty percent (50%) of the Official Fees only in relation to its section 96 applications; and, further, the Applicant is entitled to only its Official Fees in relation to the section 52 matters, with the exception of its representation at the hearing which it may claim once, that is, its representation at the hearing may be claimed appropriately apportioned amongst these five matters (ie at the rate of one-fifth of the Official Scale per matter). I order these costs against the Opponent at the Official Scale as provided in Schedule 9 to the Trade Mark Regulations 1995.

Iain Thompson

Hearing Officer

Trade Marks Hearings

26 October 2012