Mark Kaiser T/as Commercial Art & Industrial Design v Crooks Michell Peacock Stewart Pty Limited

[1994] ATMO 31

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

reOpposition by Crooks Michell Peacock Stewart Pty Limited  (now known as CMPS & F Pty Limited) to trade mark application number B535615, CMPS, a trade mark filed in the name of Mark Kaiser trading as Commercial Art & Industrial Design

Trade mark application number B535615 was filed on 5 June 1990 by Mr Mark Kaiser trading as Commercial Art & Industrial Design of South Strathfield, New South Wales.  The trade mark consists of the letters CMPS in the following form.

The application was filed in class 35 for a service described as creative design.  However, in the course of examination it was determined that this description was not correct, and the statement was amended to goods in class 16.  Class 16, broadly, comprises paper and printed articles, stationery, office requisites and teaching material.  The acceptance of this trade mark was advertised in the Official Journal  on 2 May 1991.  It was accepted in Part B.

In accordance with the provisions of section 49 of the Trade Marks Act, a notice of opposition which had been deposited with the Trade Marks Office in early April 1991, was accepted as lodged on the date of advertisement, 2 May 1991.  The opponent is Crooks Michell Peacock Stewart Pty Limited, of Chatswood, N.S.W..  According to later filed material, this company changed its name to CMPS & F Pty Limited. In view of these changes in name it seems most convenient if I refer to the opponent simply as 'the Opponent'.    The grounds of opposition are not lengthy, and as I was addressed on each one of them, it is convenient to quote them here in full.  They are:

(1)The applicant is not entitled to be registered as the proprietor of the trade mark: Section 40(1);

(2)The trade mark is not distinctive of the applicant's goods:  Sections 24, 25;

(3)The trade mark is not inherently adapted to distinguish the goods of the applicant from those of other traders;

(4)The use of the trade mark would be likely to deceive or cause confusion: Section 28(a);

(5)Any use of the trade mark would be contrary to law and therefore the trade mark should not be registered: Section 28;

(6)The trade mark would otherwise be not entitled to protection in a court of justice and therefore should not be registered:  Section 28;

(7)By reason of the matters set forth in any one or more of the foregoing paragraphs, the Registrar in the exercise of his discretion ought to refuse the application for registration.

On lodgment of a notice of opposition, regulation 43 comes into operation and sets three months in which the opponent may serve on the trade mark applicant evidence in support of its opposition grounds.  This time elapsed on 2 August 1991.  No evidence had been served and no extension of time had been requested.  The Office wrote to both parties in mid August 1991 pointing out that evidence in support had not been served and, as provided by regulation 49(2),  it was open to the applicant to ask for the matter of the opposition to be heard.  It appears that failure to meet the deadline was to some extent due to a misunderstanding about the position of Messrs Marshall Marks Kennedy as the Opponent's agent.  Their present representative,  Mr Ian Ronald Richardson, a partner of the firm of Marshall Marks Kennedy, sought a belated extension of time. Following submissions at a hearing, an extension to 7 May 1992 was ultimately allowed.  A further short extension was allowed to 29 May 1992 and on that day service of the evidence in support was completed. 

Following service of the evidence in support, regulation 44 sets three months for the applicant to serve evidence in answer. No evidence was served in the time allowed.  No extensions were sought or allowed.

In March 1993 the Registrar advised both parties that he intended to decide the matter on the basis of the material currently on file unless, within 14 days, either of the parties requested a hearing.  A hearing date was set for 9 July 1993 in Sydney.  Mr Kaiser indicated that he was suffering ill health, and would not be attending.  Mr Richardson for the Opponent applied for the hearing to be deferred.  He said that he wanted the opportunity to cross-examine Mr Kaiser.  The hearing was deferred and a quantity of correspondence was subsequently exchanged between the Office and both sides.  In the course of this correspondence Mr Richardson confirmed that Mr Kaiser had not served the Opponent with evidence in answer, and Mr Kaiser confirmed that he was not able, and in fact waived his right, to attend at hearing.

The hearing was finally achieved on 2 March 1994 in Sydney,  Mr Richardson appearing before me on behalf of the Opponent.  Mr Kaiser was not present and was not represented.

In the course of submissions Mr Richardson, I regret, made very little more than passing reference to the evidence in support.  However, it is of course, central to the opposition grounds, and it is convenient for me to provide a brief summary. There are eight statutory declarations as follows.

1. Janice Helen McIntyre                   (18 March 1992)         (McIntyre 1)

   
   

   Ms McIntyre is the manager of corporation communications for CMPS & F Pty Limited

2. Janice Helen McIntyre                   (25 May 1992)            (McIntyre 2)

3. Robert John Jackson  (26 May 1992)            Mr Jackson, from 1971 to 1991, was director of  CMPS & F Pty Limited

4. Raymond John Lloyd Wedgwood(19 May 1992)              Mr Wedgwood is chief bridge engineer for the Roads & Traffic Authority, an instrumentality of the New South Wales Government

5. Valma Gwenneth Steward             (14 May 1992)            Ms Steward is assistant general manager of the AGL Gas Companies in North Sydney

6. John Edward Lightfoot                   (21 May 1992)            Mr Lightfoot is general manager of the Australian Trade Commission, an instrumentality of the Australian Government

7. David Edward Snaith  (20 May 1992)            Mr Snaith is the tendering manager for GEC Alsthom Australia

8. David Alan Sprigge  (undated)  not properly executed

Although Mr Richardson's submissions were brief he did address each of the grounds and I think the most useful approach is for me to deal in turn and in full with each.

The first ground is that the applicant is not entitled to be registered as the proprietor of the trade mark: Section 40(1).  Section 40 reads:

40.(1)   A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

(2)       The application

(a)shall specify the goods or services in respect of which registration is sought; and

(b)shall be lodged by being left at, or delivered by post to, the Trade Marks Office.

(3)       An application shall not be made in respect of goods or services comprised in more than 1 class.

Mr Richardson said that this ground was on two footings.  First, is that Mr Kaiser's application does not specify either goods or services and therefore fails to meet the requirements of subsection 40(2).   Mr Richardson was under the mistaken impression that the trade mark was proceeding for the original statement of 'creative design'.  As I mentioned above, however, the trade mark examiner had already raised objection to the original statement and to overcome this objection the statement had been amended to goods in class 16.  Mr Richardson made no submissions with respect to the amendment action, nor did the evidence raise that question.  There is no question that the statement for which the mark is accepted meets subsection 40(2).  Further, paragraph 40(2) is not include as a ground in the Notice of Opposition.  

The second footing relied on is per subsection 40(1) and the claim that Mr Kaiser is not the proprietor of this trade mark.  Here Mr Richardson referred me to The Shell Company of Australia Ltd v Rhom and Haas and Another 78 CLR 601. In this famous case at 627 Justice Dixon says

An application to register a trade mark so far unused must, equally with a trade mark title which  depends on prior use, be founded on proprietorship.  The basis of a claim to  proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with goods and the applying for registration.

There is no proprietorship claim from Mr Kaiser other than that inherent in his making application to register the trade mark.  But as per Justice Fullagar,  Aston v Harlee Manufacturing Co, (1960) 103 CLR 391, at 401

the making of the application itself ... [is] .... to be regarded as prima facie evidence of intention to use.

In making the application, Mr Kaiser is thus assumed to have an intention to use and until it is shown to be otherwise he is credited with authorship.  In making application he therefore meets the test set down in Shell Company of Australia Ltd v Rhom and Haas (supra)  and establishes a prima facie claim to proprietorship.  To displace that claim, the Opponent needs to demonstrate a superior right.  As per Justice Deane in Moorgate Tobacco Co. Ltd v Philip Morris Ltd, (1984) 156 CLR 414 at 432

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 connection in the course of trade between those goods with respect to which  the mark is used and that person.

Transposing this test to the present case, for the Opponent to succeed on the subsection 40(1) ground,  it must be able to show that prior to 5 June 1990 (that is, the date on which Mr Kaiser applied to register the mark) and in the course of trade, this company used the trade mark CMPS in Australia in respect of class 16 goods.       

The evidence so far as it is directed to these criteria lies in the Jackson, McIntyre, Wedgwood, Steward, Lightfoot, Snaith and Sprigge declarations.  In view of the fact that Mr Sprigge's declaration is not fully executed, I do not intend to give it weight.  I shall, however, deal briefly with the other five.

Mr Jackson gives a limited history of the Opponent's adoption and use of the mark CMPS.  He says that in 1988 the Opponent decided to use the initials CMPS  'as the company logo'.   He annexes a representation of that  'logo',  (annexure A)  see below. Mr Jackson also mentions that in 1991 a  modified form of the mark  came into use.  That use however  post-dates  Mr Kaiser's application, so it is not relevant to this ground and I shall make no further reference to it.    Turning back then to the Opponent's earlier use of the mark :

Mr Jackson states that the Opponent carries on business as a consulting engineer and employs approximately 1,000 people.  It runs 20 or more offices across the country and maintains offices in Brunei, Indonesia, Malaysia, Papua New Guinea and New Zealand. Mr Jackson does not, however, indication that in the course of its activities, the company uses  the mark CMPS in respect of a trade in any of the paper, stationery, office and teaching goods which constitute class 16.

Ms McIntyre has provided 2 declarations.  McIntyre 1 gives some account of the Opponent's publishing activities.  First described is a newsletter and copies of the cover of some eight editions are annexed to the declaration.  These newsletters date from February 1988 and the covers prominently display the CMPS mark.  At paragraph 19 Ms McIntyre states  that from 1987 to 1990 some 2,000 and 850 copies of these newsletters were circulated for external and internal distribution respectively. On questioning this activity at the hearing, however, I was advised that this newsletter is circulated free. It is not a newsletter which is available through the market.  In the absence of any submissions or evidence to the contrary it would appear,  and indeed it was not submitted otherwise,  that as far as printed publications are concerned, this use of the mark CMPS  does not amount to use of a trade mark in the course of trade (Hospital World Trade Mark [1967] RPC 595, and Update Trade Mark [1979] RPC 166).  I do not consider that, standing alone, the Opponent's use of the trade mark CMPS in relation to these newsletters upsets Mr Kaiser's proprietorship claim.

Annexed to McIntyre 1, however, are another set of publications - they are catalogued under paragraph 20 and include the Opponent's Annual Report for 1990, 9 brochures, a 'booklet' entitled Statement of Capabilities and examples of company letterhead.  Each one of these items features use of the trade mark CMPS.  Again, however, it was not argued that the issue of these publications was for the purpose of trade in printed material.  Further -  the Annual Report is for 1990; the brochures (with the exception JHMcI-2 which shows a print date for June 1990) are undated;  Statement of Capabilities is not dated; Ms McIntyre gives no evidence of publication dates, nor of the dates on which the annexed examples of the company letter head came into use.  Therefore, although the mark CMPS is clearly displayed on these publications and stationery items, I have not been shown  that any of this material issued prior to Mr Kaiser's application date of 6 June 1990.  Consequently, on the two counts of trade use and priority,  I find that, on the face of it, this evidence too does not upset Mr Kaiser's proprietorship claims. 

The content of the Annual Report, of the booklet entitled Statement of Capabilities and of the brochures, however, does indicate the breadth and extent of the Opponent's activities.  Confirmation comes from the Wedgwood, Steward, Lightfoot and Snaith declarations.  On page B2 of Statement of Capabilities there is a general description of the Opponent's activities.  It says that the opponent is

A large diverse Australian company which provides a wide range of services in all branches of engineering and project management.
A company with over 50 years' experience
A company of international standing.
A company which undertakes projects ranging from feasibility studies for factory extensions to the design and construction management of multi-million dollar process plants and developments

Projects successfully undertaken and delivered by the Opponent and which are described in Statement of Capabilities include for example

1984: a six month project to survey and analyse communication and information systems for the new Parliament House, present a range of network philosophies and system options and examine and report on the physical components of the recommended systems together with an implementation and cost plan
1984: management of the Gateway Arterial road project for Main Roads of Queensland.  The project required management of the project in regard to quality, money and time; establishment and control of budgets, acquisition of land, selection, supervision and co-ordination of consultants; preparation of contracts; calling for and evaluation of tenders; and supervision and administration of contracts.

Of the brochures, and fairly typical of the many other activities described in these exhibits, Exhibit JHMcI-4 gives the following description of one of the Opponent's projects;

In the late 1970's  CMPS worked with a team from Aluminium Pechiney to prepare a study report on the feasibility and economics of construction and operation of a modern aluminium smelter in the Hunter Valley.  The report was to be suitable for presentation to investors, international financial institutions and banks. .... Subsequently CMPS was commissioned  ...... to provide conceptual and detailed design and documentation for the $600 million smelter....... CMPS also provided conceptual and detailed architectural design for the six main non-process office buildings and for the various process buildings and related amenities....

I was assured by Mr Richardson (who at the hearing had assistance from the Opponent's general commercial manager, Mr Nicholas R. Young) that in delivering these services it was necessary for the Opponent to produce large quantities of documentation comprising text, plans and drawings.  Again with Mr Young's  assistance, I was further assured that since 1988  documentation of this kind regularly bore the CMPS trade mark.  This use is indirectly confirmed by the Wedgwood, Steward, Lightfoot and Snaith declarations.  Mr Wedgwood says that he is aware that the trade mark  CMPS  was used by the Opponent from 1988 to 1991 and that it has achieved a high profile in the engineering and construction industries.  Ms Steward likewise attests to knowing that the trade mark was in use by the Opponent from 1988 to 1991 and, she says, that the mark has high prominence in the engineering profession.  Mr Lightfoot says, in 1992, that he has known the Opponent's use of CMPS for a number of years and agrees with Mr Wedgwood and Ms Steward that the Opponent has a a very high prominence in the engineering profession and in the engineering and construction industries.  Mr Snaith says that he has been aware of the Opponent's use of the trade mark CMPS  since 1988 and says that in his opinion there is no doubt that the mark readily identifies the Opponent.

For a section 40(1) ground to succeed on prior use,  the prior use required is of the same or nearly identical trade mark  in relation to the same goods ( Aston v Harlee Manufacturing Co, (1960) 103 CLR 391).

The sum of the evidence from Jackson through to Snaith,  is that the Opponent is shown to be a prominent and successful engineering consultant, which, since 1988, has used the trade mark CMPS in association with diverse engineering consultancy and project work.  Clearly then, the Opponent's adoption of CMPS preceded Mr Kaiser's 1990 application date and justifies the Opponent's claim under subsection 40(1) as far as the time factor is concerned.  The question however, of whether that use is use in relation to class 16 goods is not quite so straightforward.  I am assisted by the findings of Mr Justice Whitford in VISA Trade Mark, [1985] RPC 323 at p330.  In determining whether application of the trade mark VISA to a banks' stationery items was use in the course of trade, His Honour said

'The relevant question must I think be: "does this applicant trade in these goods?".   If he does and there is no other bar, he ought to be entitled to the protection of registration both in his own interest and the interest of the public.  The fact that he trades in the goods as part of a service is, in my judgment, wholly irrelevant.'

The production of a variety of printed material including for example analytical reports, newsletters, information leaflets, project designs, tendering documents, architectural specifications,  and engineering drawings, appears to me to be an integral part of the services performed by the Opponent.  In delivering project and consulting services, I think that the Opponent must therefore be said to trade in the associated documentation.   I am satisfied that the Opponent has used the mark CMPS on goods of this kind prior to June 1990 - and applying the findings of the VISA case I find that this use is use in the course of trade. 

In respect of the first ground, therefore, I find for the Opponent.  However, class 16 includes a wide variety of goods and I have only been shown prior use in respect of a narrow range within that class.   In relation to the section 40 ground the Opponent only succeeds therefore in respect of printed paper products namely reports, newsletters, brochures, plans, maps and architectural drawings all being goods in class 16.

The second and third grounds are that  the trade mark is not distinctive of the applicant's goods:  Section 24, 25; and that  the trade mark is not inherently adapted to distinguish the goods of the applicant from those of other traders. Mr Richardson addressed these grounds together. He said that the mark could not qualify under paragraphs 24(1)(a), (b), (c) or (d) and that because the goods or services were not properly identified, CMPS could not be found to come within the provisions of paragraph 24(1)(e) or to qualify under the terms of subsection 26(1).  These submissions amounted to nothing more, however, than unsupported and unfounded assertions.  Four letter marks, as long as they are not descriptive acronyms, are very often found to be distinctive marks.  Those that are easily pronounceable may well qualify as invented words. Four letter marks that are not pronounceable and which bear no reference to the goods or services, are expressions which other traders are not likely,

in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connection with their goods (see F.H.Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1964-65) 112 CLR 537 at 555)

That being the case,  in the absence of any direct reference or other failing, unpronounceable four- letter marks are judged accordingly to have sufficient inherent distinctiveness to qualify for  acceptance in Part B.   (see, Trade Mark Examiner's Manual at 2.12.11 and also EDPM case 1959 AOJP 2381).   CMPS has not been shown to have any reference to class 16 goods and I  hold that the mark is clearly capable of becoming distinctive and is quite properly accepted under the provisions of section 25. The provisions of  section 26(1) define the terms of section 24,  and as the mark has not been accepted in terms of section 24, that section is of no direct consequence.   Had the mark been accepted in Part A, however, I would be required to consider distinctiveness not in relation to the original specification of goods or services, but to those of the accepted specification.

I find that the Opponent has not made out its case in relation to grounds 2 and 3.

The fourth ground is that the use of the trade mark would be likely to deceive or cause confusion: Section 28(a).   Mr Richardson put it to me that if Mr Kaiser were to use his mark,  the public would be deceived and confused into believing that he did so with the approval or endorsement of the Opponent.  On the evidence, this is simply untenable.  I am prepared to accept that the Opponent's use of the trade mark CMPS on engineering and management services involves trade use on a limited range of class 16 goods to an extent that justifies a proprietorship claim. There is no evidence however that any consequent goodwill has been developed in those goods.  Much less is there evidence that the Opponent has such a substantial reputation in printed material  that Mr Kaiser's use of the CMPS mark on those goods would be likely to cause confusion or deception.   Not one of the supporting declarants refers even to knowledge of the Opponent's mark on paper, books, magazines, teaching material or office requisites let alone to any fame achieved by the Opponent  in respect of these goods.  I can find no evidence to support Mr Richardson's claim that the mark CMPS   has become distinctive of the Opponent's class 16 goods, and he certainly was not able to refer me to any.    Adapting the wording of Justice Richardson in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd ([1979] RPC 410 at 424), having regard to the failure to demonstrate an awareness of the Opponent's mark in the Australian market for class 16 goods, I do not think the use of the Mr Kaiser's mark is likely to deceive or cause confusion to persons in that market.  I therefore dismiss the opposition so far as it relies on subsection 28(a).

The fifth ground of the opposition is that any use of the trade mark would be contrary to law and therefore the trade mark should not be registered: Section 28.  Mr Richardson referred me to a passage from Intellectual Property in Australia - Patents Designs & Trade Marks Law, Lahore, Garnsey et al at 4.7.013

It may well amount to fraud for a person to apply for registration of a trademark which he knows to have been in use by another trader.

He then drew my attention to paragraphs 2, 4, 5, 6 and 17 of McIntyre I. In these paragraphs Ms McIntyre recounts exchanges with Mr Kaiser which indicate that he was employed by the Opponent to help with the design of its logo. The logo then under development is the mark since used by the Opponent, and the mark which is the subject of this application.  From what I gather is the import of Ms McIntyre's account, Mr Kaiser was employed to assist with graphics which he understood would be used by the Opponent on its own stationery and in its in-house newsletter.  I find nothing, however, to show that he would have been aware that the Opponent intended to use the mark in the course of trade in class 16 goods.  Even if he had, however, I do not think that the Opponent has shown due reason why Mr Kaiser's use of the mark would be contrary to law.  I have not found that the Opponent has developed goodwill in class 16 goods and so there seems to be no reason for me to contemplate breaches of the Trade Practices Act.  Mr Richardson has not referred me to any other law.  I find that the opposition so far as it depends on subsection 28(b) has no support, and dismiss it accordingly.

The sixth ground is that  the trade mark would otherwise be not entitled to protection in a court of justice and therefore should not be registered:  Section 28.  Mr Richardson's submissions in relation to this ground appear to hinge on principles of estoppel.  He said that the McIntyre declarations show that Mr Kaiser always knew that the Opponent was adopting the CMPS trade mark as its 'universal logo' and as part of its letterhead.  He knew these facts in 1988. He also knew that in 1988 the Opponent's intentions were realised, that use of the mark had then commenced and that in the process of adopting the mark the Opponent had incurred considerable expense. Mr Kaiser made no move to interfere.  Mr Richardson contended that on this history the applicant is estopped from proceeding with this trade mark application.  He referred me to the following words from Justice Brennan in Waltons Stores (Interstate) Limited v. Mahar and Another, (1987-88) 164 CLR 387 at 416.

An equitable estoppel is binding in conscience on the party estopped, and it is to be satisfied by that party doing or abstaining from doing something in order to prevent detriment to the party raising the estoppel which that party would otherwise suffer by having acted or abstained from acting in reliance on the assumption or expectation which he has been induced to adopt.

I regret that Mr Richardson was not able to lend me some greater assistance in determining just how, in the circumstance of this case, Mr Kaiser's actions justified estoppel and thereby renders his application in breach of paragraph 28(d).   The claim, as I understand it, is that the previous relationship which existed between the Opponent and Mr Kaiser, viz that Mr Kaiser was employed by the Opponent to assist with the design of a logo, prohibits Mr Kaiser from taking any action to register that logo as his own trade mark for goods in class 16.  This claim would appear to rely on equitable estoppel for which His Honour Justice Brennan relies at p421, on a definition enunciated by Lord Justice Denning, viz -

The principle, as I understand it, is that, where one party has, by his words or conduct, made to the other a promise or assurance which was intended to affect the legal relations between them and to be acted on accordingly, then, once the other party has taken him at his word and acted on it, the one who gave the promise or assurance cannot afterwards be allowed to revert to the previous legal relations as if no such promise or assurance had been made by him.....

Mr Richardson's submission, I assume, is that in Mr Kaiser's case the promise or assurance resides (as Ms McIntyre's reports) in his keen support for the Opponent's plans to use the CMPS mark as their 'universal logo' and to apply it to their letterhead.  It seems to me, however, that if this is Mr Kaiser's 'assurance',  it falls well short of an intention to affect the legal relations between the two.  On the submission made, and the material which is before me,  I cannot agree that Mr Kaiser is estopped from proceeding with this application.

Section 28(d) however raises a wider question. As per D.R.Shanahan,  Australian Law of Trade Marks and Passing Off, Law Book Company, 2nd edition, p146 -

.... a wider enquiry appears to be indicated by the origins and purpose of this provision as described since the "GE" case, and in particular by the concern of the original British provisions with the honesty with which the mark was adopted and used.

In the "GE" case, [1973] RPC 297 at 329, Lord Justice Diplock, examining development through the British legislation, states his view that the original intentions of the equivalent section of the British Act, was

clearly designed to prevent the proprietor obtaining by registration protection for a mark of such a character that a court of equity would have exercised its discretion to refuse to grant to its proprietor an injunction to restrain its being infringed by a usurper.

This view was taken up in respect of the 1905 Australian Act and section 114 per Radio Corporation Pty Ltd v Disney and others, (1937) 57 CLR 448 at 459 per Mr Justice Dixon.

If the circumstances are such that its adoption will give the applicants no right to protection by injunction or other remedy under the general law, then it should be kept off the register.

Mr Shanahan goes on to mention that in relation to honest adoption,  a plea of unclean hands connected with, for example, fraud or dishonesty can succeed under paragraph 28(d).  This was seen, in CASSON'S Trade Mark, (1910) 27 RPC 65, where it was found that a lack of good faith on the part of a partner or employee, will operate to disqualify a trade mark from the protection of the courts.  In considering the public interest inherent  in section 28, and the provisions of paragraph 50(2) I believe I should to take into account  the effect of these wider issues.

The evidence establishes without doubt that the Opponent is a large and successful company providing sophisticated managerial and technical services throughout the Commonwealth and into the Pacific region.  It has been operating for some 50 years.  It currently employs over 1000 people and has numerous offices across the country.  Its clients include State and Commonwealth government instrumentalities,  and major commercial corporations across the economy in mining and minerals, (B.H.P.), manufacturing (Dupont), power and energy (Mobil Oil), oil, gas and chemicals (ICI  Australia), forest industries (Australian Newsprint Mills), building (Civil & Civic Pty Ltd), communications and information technology ((Alcan Australia Limited) and infrastructure (Gladstone Harbour Board).   This company has provided evidence that in 1986 Mr Kaiser was employed by to assist in the design of a company logo.  That logo he assisted  in designing is, of course,  the subject of the present contested application.

Justice Eve in CASSON'S Trade Mark  (supra) found that where the behavior of a proprietor in adopting a trade mark, is inconstant with the good faith that ought to obtain between employee and employer, his trade mark is not entitled to the protection of a court.  I consider that the evidence here raises that very question.  In order to establish that his application to register the trade mark CMPS is made in good faith, I consider it incumbent upon Mr Kaiser to explain why, or at least to reply to the allegation that, when he had accepted a brief from his employer to design a company logo,  he subsequently applied to register that logo as his own trade mark and, moreover, did so in full knowledge that his former employer had already adopted the CMPS mark as its 'universal logo'.

As mentioned earlier,  Mr Kaiser served no evidence in answer to the opposition;   he waived his right to appear at the hearing and he did not file any written submissions.   But Mr Kaiser is the applicant, and the onus of establishing that the trade mark application is free from any disqualification lies with him. That onus he has not discharged.  

I have found therefore that the opposition succeeds on two grounds.  It succeeds in terms of paragraph 40(1) in respect of printed paper products namely reports, newsletters, brochures, plans, maps and architectural drawings all being goods in class 16.  If this were all, I would allow Mr Kaiser some time to delete these items from his specification.  However it is not all.  The evidence overall raises doubt  regarding Mr Kaiser's good faith.   The burden of freeing the application from this basic flaw has not been met.

I therefore refuse this trade mark application.

Mr Richardson sought costs, and as there is no reason for me to direct otherwise, the cost shall follow the action and accordingly I award them to  the Opponent. 

Helen R. Hardie

Assistant Registrar

21 April 1994