Marion Nola Whiting v Australian Bowhunters Association Incorporated

[2000] ATMO 120

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Marion Nola Whiting to registration of trade mark application 785101(16 25 28 35 41) - BOWMAN DEVICE- filed in the name of Australian Bowhunters Association Incorporation.

On 10 February 1999 Australian Bowhunters Association Incorporation, of 25 Pie Street, Aspley, Queensland applied for the registration of the device depicted below. I shall refer to the applicant as Australian Bowhunters and to the device as the bowman device.

Australian Bowhunters sought registration for a broad range of goods and services and, on 1 July 1999, the Registrar advertised acceptance for registration of the bowman device for the following goods and services. 

Class: 16Paper, printed matter, instructional and teaching materials, letter heads, rule books, coaching and training manuals and other publications, membership and affiliation forms and stickers

Class: 25Clothing, headwear, competition and other uniforms, caps, T-shirts

Class: 28Games and sporting articles

Class: 35Advertising, magazine and film advertising

Class: 41Provision of online information regarding a sporting association

Marion Nola Whiting of Calen in Queensland (hereafter Ms Whiting) has opposed this trade mark application. Ms Whiting opposes the registration of trade mark number 785101 on the ground that Australian Bowhunters is not the owner of the bowman device. She therefore relies on section 58 of the Trade Marks Act1995.   

Evidence was duly served and filed by both parties.  Ms Whiting’s evidence in support of the opposition comprises one declaration by herself, dated 22 November 1999 (Ms Whiting’s 1^st declaration); and one by Judi Elizabeth Toon. 

Australian Bowhunters’ evidence in answer consists of three declarations, one by Sydney Thomas Green; one by Joannes Cornelis Ursem; and one by Richard Snape. 

Ms Whiting’s evidence in reply comprises a further declaration from Ms Whiting dated 31 May 2000 (Ms Whiting’s 2^nd declaration); and one each by Patricia Mary Whiting, David Britland, Peter Edward Kennedy and Bryan James Butson 

The matter came to a hearing in Brisbane on 4 September 2000, which was conducted before me. The opponent, Ms Whiting, was represented by Mr David M. Logan of Counsel instructed by Mr Harold Alan Littler of Rowell Gill & Brown, solicitors and notaries of Brisbane.  The applicant, Australian Bowhunters, was represented by Mr K Boulton of Counsel instructed by Mr Jeffrey McLaren, articled clerk of Watts & Company, Solicitors of Aspley, Queensland. 

Background

In or about September 1974, Ms Whiting and her husband Mr Kevin Frederick Whiting, together with Richard and Lorraine Snape, and John (Joannes) and Beverly Ursem, commenced publication of a magazine called The Australian Bowhunter.  This group formed an informal partnership to run the magazine and they were later joined by Allan Podlich and Sherrie Podlich.  Each partner then held a one eighth share.  I will refer to this group as the partnership.

In 1975, according to Ms Whiting’s evidence, Mr Whiting decided to design a logo for The Australian Bowhunter. Ms Whiting says (Ms Whiting’s 1^st declaration):

The logo prepared by him was a three dimensional looking representation of a hunter with a bow drawn standing in a map of Australia.  The design of the logo was developed by Kevin from a photograph taken by his daughter Patricia of Kevin himself standing in shin deep water. It is the logo that the Australian Bowhunters Association Incorporation now attempts to register as a trade mark.

Ms Whiting says that it was her husband’s intention to allow many organisations to use the bowman device and that was how things eventuated.  She says, that, in addition to use by The Australian Bowhunter magazine, the bowman device was used by the Townsville District Bowhunters Club, by Kev Whiting Sports (a business run by Mr and Ms Whiting) and by Trophy Bowhunters of Australia.  Exhibited to Ms Whiting’s 1^st declaration (exhibits ‘E’ to ‘J’) are a number of printed promotional items, of which the following feature a depiction of the bowman device: 

1983a flyer produced by the Townsville District Bowhunters Club announcing THE KEV WHITING MEMORIAL SHOOT     (exhibit E)

1978a flyer produced by the North Queensland Bowhunters announcing the FOURTH ANNUAL NORTH QUEENSLAND BOWHUNTERS BARE BOW ARCHERY CHAMPIONSHIP              (exhibit G)

1983Townsville District Bowhunters Club Calendar for January - June 1983           (exhibit I)

These examples, says Ms Whiting, demonstrate use of the bowman device for the general promotion of the sport of bow hunting, and bear out Mr Whiting's intention.

The applicant’s evidence gives a somewhat different version of these matters. That evidence is, in short, that it was the partnership which, in early 1976, decided to develop a new logo for The Australian Bowhunter magazine[1].  The Green declaration indicates that two designs were considered by the partnership; Mr Whiting’s design was selected and Mr Whiting then developed the bowman device on behalf of the partnership and for the benefit of The Australian Bowhunter magazine. The applicant’s evidence asserts that the partnership aimed to use the bowman device for the sole purpose of promoting the magazine and the sport of bowhunting on behalf of the partnership[2].  

[1] Green declaration - exhibit STG10 - and the Snape declaration.

[2] Green declaration paragraph 4(ii) and the Ursem declaration

Ms Whiting disputes this account. In her 2^nd declaration, she claims that any use of the bowman device during the course of Mr Whiting’s association with the partnership, was use in his own interest.  She claims that the bowman device was property that belonged to Mr Whiting.  He used it whenever he wanted to[3] and he encouraged bowhunter organisations to us it.  Ms Whiting's view of matters is supported to some extent by the Britland, Kennedy and Butson declarations.  Messrs Britland and Kennedy were prepared to cast their minds back some 25 years and recollect conversations with Mr Whiting.  Mr Britland recalls that Mr Whiting said he intended to use the bowman device in his business.  Mr Kennedy recalls that Mr Whiting intended the bowman device to stand as an emblem for the promotion of bowhunting and for the use of all bowhunters.   Mr Butson states that in 1984, as an official of the Australian Bowhunters Association, he sought permission from Ms.Whiting to use the bowman device, being under the impression that Ms.Whiting owned ‘the image’.  

[3] Ms.Whiting’s 2^nd declaration, paragraph 8.

In November 1976, Mr Whiting’s health was failing, and he and Ms Whiting resigned from the partnership. Mr Whiting’s letter of resignation (which is not appended to either of Ms Whiting’s declarations) is exhibit STG5 in the Green declaration.  It is a letter dated 9 September 1976 and is addressed to Dear Partners. This letter contains the following:

… Marion and I must withdraw from the magazine partnership.

I must emphasis that our withdrawal is complete and immediate.  That is, we will have no say in any arrangements which you, the remaining partners, may decide as to suitable readjustments. 

We will expect that our names be deleted from any listing of the partnership members.  We wish to make a contribution of our original capital, however, we are not prepared to leave our typewriter go with the partnership as we expect to have continuing use for it.

A letter of 4 November 1976[4] addressed to Mr and Ms Whiting from the remaining partners of The Australian Bowhunter magazine acknowledged Mr Whiting’s letter of resignation.  As a token of their thanks, the partners presented Mr and Ms Whiting with a life subscription to The Australian Bowhunter.   The letterhead here carries a representation of the bowman device.

[4] Ms.Whiting’s 1^st declaration - exhibit L: also the Green declaration exhibit STG6

Mr Whiting did not recover good health.  On 16 February 1977[5] he died.

[5] Ms.Whiting’s 1^st declaration - exhibit B

According to the Green declaration, in or about 1988 The Australian Bowhunter magazine was acquired from the partnership by The Australian Bowhunters Association on the understanding that the bowman device was part and parcel of the property.

I now turn to the ground of opposition, and to the representations and argument put forward at the hearing.

Section 58

This section of the Trade Marks Act 1995 reads

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.

Mr Logan has drawn my attention to the fact that the term ownership, as it applies under the provisions of the Trade Marks Act 1995, is equivalent to the term proprietorship as it applied under the provisions of the Trade Marks Act 1955.  The basic rule regarding ownership is that ownership resides with the first person to use the trade mark in connection with the relevant goods or services.   Aspects of ownership were recently reviewed by Justice Finkelstein in Malibu Boats West, Inc v Catanese (2000) AIPC 91-605. His Honour says - at 37,917:

25   What is the law that is to be applied to the facts as I have found them? The appellant is entitled to registration of the trade mark if, at the time of its application, it was the proprietor of the mark within the meaning of the 1955 Act. Proprietorship can arise in one of two ways. In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311, 319; Seven-Up Co v O T Ltd (1947) 75 CLR 203; Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601, 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia, at 625, 627. At common law that is the person who first used the mark.

Use in this context, however, is use in the course of trade, and in respect of the same kind of thing (Hicks’ case[6]) and I am obliged to consider whether the evidence put forward by Ms Whiting demonstrates that before the date on which Australian Bowhunters filed for the registration of trade mark number 785101, any person other than Australian Bowhunters had used the bowman device, in the course of trade, in respect of the goods and services specified – that is, the goods and services specified for 785101.  These are spelt out above and, broadly, can be described as paper and printed matter, clothing, games and sporting articles, advertising and information services.

[6] Hicks’ case (1897) 22 VLR 636 at 640

I think it is clear that the evidence relied on by Ms Whiting does not establish circumstances that satisfy these requirements. There is, in short, no material evidence that Mr Whiting ever used the bowman device to indicate the origin of goods or services that he dealt with in the course of trade. 

In coming to this point of view I have not disregarded a number of references to Kev Whiting Sports[7].  These references in themselves, however, are of little assistance.  There is no evidence of the goods or services dealt with by this business, no evidence of any sales and no evidence that the bowman device was applied to any of the goods traded, or used in relation to any services which Kev Whiting Sports may have proffered. I note the Britland declaration which indicates that Mr Whiting intended to use the bowman device in connection with his business.  An intention, however, does not establish a common law right.

[7] Ms.Whiting’s 2^nd declaration - paragraph 6; Britland declaration - paragraphs 4 and 5;

I have also taken note of the statement in Ms Whiting’s 2^nd declaration that the bowman device was used in association with Mr Whiting’s inventions.  Her paragraph 6 reads: 

The logo was used by Kevin and I for our own business “Kev Whiting Sports” as well as on his inventions and products such as the Spine Jig (the design for which appeared in issue N^o 9 of The Australian Bowhunter).

An extract from issue N^o 9 of The Australian Bowhunter is appended to Ms.Whiting’s 1^st declaration[8]. This extract is described by Ms Whiting as a:

[8] Ms.Whiting’s 1^st declaration - exhibit J

template for [a] Spine Jig distributed with The Australian Bowhunter Magazine Issue N^o 9

The spine jig is a device for gauging the suitable size of an arrow for a given bow weight.  The article includes the pattern for making such a jig.  The template is the shape of a segment of a circle with calibrations from 0 to 1100 ranged along the margin of the arc. There are accompanying instructions describing how to mount the template on card or a sheet of perspex acrylic or aluminium, drill a hole, attach a needle, and use the device for reading a shaft spine rating. These instructions include the following text.

A friction clip should be mounted on the back of the jig as shown to prevent the scale card from slipping.

In operation, the shaft to be spined is placed on the shaft supports.  The shaft will be resting at its centre on the bent portion of the needle.  The scale card is then slipped through its friction clip until the Zero position on the scale card is exactly opposite the pointed needle.

Next a two pound weight is suspended from the centre of the shaft.  The new reading on the scale shaft is the shaft’s spine rating registered in A.M.O. units or thousandths of an inch deflection.   

…

SUPPLEMENT

As a supplement to this issue we have included a Spine Selector, which is fairly comprehensive, covering synthetic shafts as well as wooden shafts.  The assembly and operation of the selector are quite simple, but the following notes might answer some question on spine selection which you could possibly ask.

The spine jig template carries a representation of the bowman device and the words Supplement to The Australian Bowhunter issue N^o 9.  These words are in the same stylised format used on the cover of the magazine. There is no indication that the spine jig is marketed by Mr Whiting, and no indication that the bowman device serves to denote a trade source beyond The Australian Bowhunter magazine. This exhibit is not evidence of use by Mr Whiting of a trade mark, nor is it evidence of advertising use. On the contrary, it is an item published as part of the February - March 1976 edition of The Australian Bowhunter[9]  The bowman device is not employed so as to establish a trade connection with Mr Whiting. It does, however, indicate a connection with the publication ¾  a connection which is significantly strengthened by a large representation of the bowman device featured on the front cover of this issue[10].   This exhibit, in my opinion, does not warrant any finding of common law rights accruing to Mr Whiting.

[9] see Green declaration exhibit 6

[10] Green declaration, exhibit STG1[10]

Furthermore, Ms Whiting’s evidence makes repeated reference to Mr Whiting’s declared intention to use the bowman device for the promotion of the sport of bow hunting, and to allow any bow hunting organisation to use it for that purpose ¾ evidence confirmed by the Kennedy declaration.   This intention is clearly at odds with any intention to use the bowman device as an indication of trade origin. 

Having found that the opponent, Ms Whiting, cannot point to any use that upsets the claim made with the filing of trade mark application number 785101, it is not necessary for me to deal with submissions which go to the continuity of title, and in particular, a submission put by Mr Logan, which questions the chain of title vesting ownership of the bowman device with Australian Bowhunters.  He says that it is not clear how the assets of the original eight person partnership were distributed to Australian Bowhunters or how, in 1988, the assets deriving from that entity were acquired by Australian Bowhunters.  In the circumstance, however, where there is no evidence that any remnant of the original partnership survives, and no evidence at all that, in the eleven years from 1988 to 10 February 1999, it continued to trade or to publish, I can only conclude that any interest in the trade mark was either passed with the business to the Australian Bowhunters ¾ or was otherwise abandoned.  In those circumstances it seems to me that there is nothing in the terms of the Trade Marks Act 1995 which operates to preclude Australian Bowhunters from applying for the registration of this trade mark.   

Section 42(b)

A question of copyright was not pressed at the hearing but it may be useful for me to make the following comments. Copyright is not an issue that can be determined by the Registrar of Trade Marks. It is outside his charter. It may be relied on if the opponent can demonstrate a direction or court order that places the trade mark application in breach of section 42(b) of the Trade Marks Act1995.  Ms Whiting,  however, has no such evidence.

Decision

As determined in Seven-Up Co v O T Ltd[11] and Shell Co of Australia Ltd v Rohm & Haas Co[12], and approved in numerous subsequent judgments including the malibu case (supra), authorship is not confined to the person who originated the mark.  A person may be the author even if it has copied a mark, and may be held to be the owner of that trade mark so long as there is no other person who, at the time of filing, can lay claim to a common law right in that mark.  I have not found that the opponent, or any other person, has established such a right, and I therefore dismiss this opposition.

[11] (1947) 75 CLR 203;

[12] (1949) 78 CLR 601, 626.

Unless, with one month, this matter is taken on appeal, I direct that trade mark application number 785101 may proceed to registration.

Costs

There is no reason to direct that costs should not follow the cause, and I therefore direct that the opponent, Ms Whiting, is to pay the applicant, Australian Bowhunters, its costs in accordance with schedule 8 of the Trade Marks Regulations.  If required, as per the provisions of regulation 21.13, a Trade Marks officer appointed by the Registrar, will tax and certify those costs.

Helen R Hardie

Deputy Registrar

3 November 2000