Matthew Wherrett v Holley Performance Products

[2004] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by Matthew Wherrett to registration of trade mark application 818736 - HOLLEY - filed in the name of Holley Performance Products Inc.

Delegate:	Terry Williams
Representation:	Opponent: Alfred Tatlock, patent attorney, Tatlock & Associates Applicant: Trevor Stevens, solicitor, Davies Collison Cave
Decision:	S 52 opposition: Evidence does not support ownership ground.  Use will not reasonably lead to deception or confusion.  Trade mark to be registered

Background

1. Holley Performance Products Inc. (Holley) is an American car-parts company, whose main product is carburettors.  Holley's predecessors have manufactured carburettors since 1905.and produced their 100 millionth unit in 1965.  Holley has now sought to register the trade mark HOLLEY in Australia for the following goods.

   Class 7: Automotive engine components, namely, alternators, carburetor repair kits comprising fuel needle valve and seat assemblies, accelerating pump pistons and diaphragms, power valves, secondary throttle valve actuator diaphragms, gaskets, seals and O-rings sold as a unit; remanufactured carburetors; fuel pumps; fuel filters; exhaust emission components comprising air pumps, exhaust gas recirculation valves, positive crankcase ventilation valves and filters; dashpots; choke diaphragms; water pumps; electric starter motor assemblies and parts thereof; intake manifolds; valve covers; air conditioning compressors; fuel injection parts, namely, throttle bodies, electrical fuel pumps, electronic control modules, fuel filters sold as a unit

   Class 9: Combustion engine fuel system and accessory components, namely, voltage regulators, solenoid assemblies for electric starter motors, electronic controls for engines, throttle valve idle stop solenoids, choke thermostat assemblies, sensors and parts thereof, and fast idle solenoids and parts therefor sold as a unit

2. The Trade Marks Office has accepted that application for possible registration but this is now opposed by Matthew Wherrett, the owner of a business that, at least to first appearance, seems to be a typical motor vehicle repair and accessories business.  This business trades as Holley Performance Parts.  Mr Wherrett has opposed registration because of the needs and activities of this business.  The opposition followed the steps set out in Part 5 of the Trade Mark Regulations 1995 and both parties have served evidence to support their positions.

3. Mr Wherrett relies on evidence in support, his own declaration with eight annexures.  Holley, for its part, has served and filed evidence in answer.  This consists of declarations by:

   ·    Trevor Stevens, a solicitor, who annexes a copy of the declaration of Jeff King, the applicant's Chief Executive Director; and

   ·    Jason Bruce, Holley's marketing director. 

4. Mr Wherrett has filed and served evidence in reply, a declaration by Barbara Van Meurs.  Her declaration is brief.  It goes only to statements of her own opinions as a lawyer, not to relevant facts, and is thus of little evidentiary value. 

5. Ultimately, the matter was set down for a hearing, which I conducted.  At that hearing, Trevor Stevens represented the trade mark applicant, Holley, and Alfred Tatlock represented Mr Wherrett.  I am now to decide the opposition under delegation from the Registrar of Trade Marks. 

   Respective positions of the parties

6. Mr Tatlock cast his client in the role of a trader who was perfectly entitled to adopt the trade mark Holley, of which he has already been registered as the owner under a subsequently-filed application, 917804, in classes 7 and 37.  That application was accepted under the prior continuous use provisions of s 44(4)[1].  Because of his use of the trade mark in Australia, Mr Wherrett had, Mr Tatlock argued, rendered the trade mark HOLLEY incapable of registration, now, in the hands of Holley.  His view was that the evidence showed that this was not a case of a distributor trying to misappropriate the trade mark of the principal.  This was a case where there was long use by his client, with no evidence of either prior use by Holley or of a conflicting Australian reputation.  On the latter count, he referred to the successful adoption of a trade mark in Australia in the face of an overseas reputation, see Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

   [1] Registration of that application was unopposed.  The present opposition matter is the first time that the claims of Mr Wherrett have been subjected to adversarial scrutiny by Holley.

7. Mr Wherrett, he asserted, is the owner of a comparatively small business with a long history.  The business was started in 1974 by Mr Wherrett's brother Stephen, now deceased, and then conducted by his parents until 1986.  While its operations are primarily in the repair of cars and the remanufacture of car parts, it manufactures manifolds under the trade mark MR HOLLEY.  The use had been over an extensive time and should not now be swept away, he argued.  Rather, to maintain the register in a good condition, the present application should be refused.

8. Mr Tatlock launched a number of attacks on the evidence of Holley.  This he categorised as lacking in detail.  Mr Bruce, he noted, had not been with the opponent for long.  His evidence was based partly on an apparent misinterpretation of the wording on the opponent's website.  Mr Tatlock therefore argued that it was open to me to reduce the weight I gave to his claims about certain trade mark matters.  He argued that the applicant's evidence leaves quite a lot of detail open to question, including, in particular, who was the first user of the trade mark in Australia.

9. Mr Stevens, for the applicant, replied that the onus to establish any ground of opposition lay with the opponent, Mr Wherrett.  It was for Mr Wherrett, therefore, to establish why the present application should not, on the basis of an allowable ground, be registered.  Having said that, Mr Stevens also cautioned that, just as the courts were quick to seize on a small amount of use in order to frustrate sharp business practice, I should not be quick to find that a ground of opposition was established in this case.  Just the opposite: given the history of the present matter I should be reluctant to frustrate the applicant, he said.  Overall, he argued that, despite what I will describe as a lack of detail in the applicant's evidence, the pattern appears to be that the applicant's trade mark has been quite well-known, in past times, in relation to carburettors in particular. 

   Grounds considered

10. Mr Tatlock initially attempted to argue that the trade mark Holley is not appropriate for registration because of the provisions of s 41, as being not able to distinguish the goods of Holley.  However, given that his client already holds a registration for just that trade mark in class 7, I think that the appropriate course is to say that the arguments he raised are better directed either to ownership or to a conflicting prior reputation.  In any case, I note that there is clear post-1995 evidence of extensive sales of goods by the applicant.  As Mr Stevens argued, those sales are not likely to have simply commenced in that year at the million dollar level without at least some levels of Australian sales in previous years.  To the extent that s 41 remains at issue I agree with Mr Stevens that the trade mark HOLLEY was, at the filing date, distinctive of the applicant, Holley.

11. I will therefore turn to the evidence in further detail, bringing into focus only those parts of it that are relevant to the other issues in hand.  In doing so, I note that it is Mr Wherrett who has an initial onus of showing some basis for a ground of opposition to the proposed registration.  Therefore it will not be necessary, in principle, to concern myself overly much with the paucity of evidence about the earlier Australian reputation of the applicant's trade mark.

    Ownership:

12. Mr Stevens argued that there is nothing to show that the opponent has used the trade mark HOLLEY on goods, and that even the position in relation to services is not clear-cut.  The trade marks used by Mr Wherrett, in Mr Stevens' view, are MR HOLLEY and HOLLEY PERFORMANCE PARTS.  He was also critical of the lack of distinction between use of a business name and use of a trade mark.  It was only, he said, when the business name HOLLEY PERFORMANCE PARTS was first used as a trade mark that trade mark rights accrued.  The opponent needed to rely, he argued, on a substantially identical trade mark[2] if it was to bring the applicant undone as the owner of the trade mark.  He noted that, while it was permissible to disregard peripheral matters that were variable and descriptive, the present case was outside the ambit of PB Foods v Malanda[3].  Having listened to the argument, I have to agree with him on that point.  I will explain why, and to do this it is necessary to look at just what business Mr Wherrett conducts

    [2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391

    [3] PB Foods Limited v Malanda Dairyfoods Limited (1999) 47 IPR 47

13. To quote Mr Wherrett:

    This business has from its inception to date been concerned with the sale of automotive spare parts, engine maintenance and engine tuning and in particular has specialised in the sale of new and rebuilt carburettors.

    Nowhere does Mr Wherrett declare that his firm has ever made a single new carburettor or contracted another firm to manufacture them.  Therefore, the only logical reading of the details of his evidence is that, when his business issued invoices headed:

    HOLLEY

    PERFORMANCE PARTS

    (followed by the address and by the description
    "American Performance Equipment, Sun Diagnostic Tuning")

    any reference therein to the sale of a HOLLEY carburettor[4] refers to the sale of a new or refurbished HOLLEY carburettor initially manufactured by someone else.  It appears more likely than not that the "someone else" that is the source of these carburettors is the applicant in the present matter, or its predecessors.  Holley's predecessors have manufactured carburettors since 1905.and, as I have already noted, produced their 100 millionth unit in 1965, while nothing in the evidence of either side suggests that a third party might be producing such goods under the trade mark in question.

    [4] Three, the earliest dated 1978, out of 30 such invoices

14. I note also the Yellow Pages entry to which Mr Stevens referred.  There, beside the business name and details of the opponent, and with the words "New and Reconditioned Carburettors and Spares", the word HOLLEY is used with what appears to be an ® symbol to indicate some sort of trade mark registration.  The opponent placed that advertisement in March 1999, at a time when it had not yet filed its own application.  Whatever trade mark registration it was acknowledging at that time was, quite clearly, neither its own nor an Australian one belonging to Holley.  The only potentially relevant trade mark registrations mentioned in the evidence are United States ones belonging to Holley.

15. Mr Tatlock argued that the extensive use by Holley was all overseas and that there is, in Holley's present evidence, not a single incontrovertible example of trade mark use, by Holley, in Australia prior to about 1995.  Even so, as Mr Stevens noted, some of the invoices the opponent, Mr Wherrett, has exhibited refer to the sale of HOLLEY carburettors.  This usage is clearly typical trade mark use, yet in relation to goods that the opponent does not, apparently, produce or cause to be produced.

16. Mr Stevens also noted that the style of lettering used by the opponent in rendering the words HOLLEY PERFORMANCE PARTS on its invoices is virtually identical to the lettering used by the applicant since, according to its US trade mark registration, 1976.  Mr King, as Mr Tatlock noted, refers to those registrations as establishing use of the font in question in that year.  1976 is also, he declares, the year of first use by the applicant of the trade mark HOLLEY in Australia.  The earliest example of an invoice from the opponent is also dated 1976.  I refuse to accept that this closeness of trade mark, and lettering style, and year, is the work of blind coincidence.

17. It might seem that the question of who first adopted a particular style of lettering is just peripheral to the larger debate about who owns the trade mark, the word to which that style of lettering is applied.  However, a better view is that the style of lettering is, like the usage of HOLLEY in the body of some of the opponent's HOLLEY PERFORMANCE PARTS invoices, illustrative of the respective roles of Mr Wherrett and Holley.  That in turn will establish a great deal about the context of the ownership claim made before me.

18. I think that the true picture, therefore, is that the style of lettering used on the invoices from 1976 onwards was adopted by Stephen Wherrett with the honest intention of indicating that some of the essence of the business was in repairing and selling rebuilt and new carburettors made by a predecessor of the present applicant and sold under the trade mark HOLLEY.  That is the context against which the business conducted by the opponent should be seen.  I believe that Mr Wherrett should be seen as using the trade mark HOLLEY PERFORMANCE PARTS to indicate the services he offers, including the sale of rebuilt HOLLEY carburettors.

19. Accordingly, while he is clearly using the trade mark HOLLEY PERFORMANCE PARTS and HOLLEY, I do not find that the opponent's evidence shows ownership, by Mr Wherrett, of the latter trade mark.  I also find that the trade mark used by Mr Wherrett in relation to inlet manifolds, MR HOLLEY, is not sufficiently close as to establish a ground of opposition.

    Section 60

20. This section provides for a ground of opposition based on the existence of a trade mark that is either substantially identical or deceptively similar to the applicant's and that, at the priority date, had a reputation such that use of the applicant's trade mark would be reasonably likely to lead to deception or confusion.

21. Typically, once the threshold question of (at least) deceptive similarity of marks is resolved, a case of this sort will hinge on the quantum of the opponent's reputation.  However, just as important is the character of that reputation.  In the present matter, the entire thrust of the reputation of the business of Mr Wherrett is that it is a seller, reconditioner and repairer, under the trade mark HOLLEY PERFORMANCE PARTS, of the goods of Holley.  Those who know of the opponent will be immunised, by the very character of their knowledge, against any deception or confusion about the connection with the applicant.

22. I am therefore not convinced that the reputation of the trade mark of the business conducted by Mr Wherrett will be such that there will be any deception or confusion vis a vis the use of the trade mark HOLLEY by the manufacturer of the carburettors that Mr Wherrett repairs, remanufactures or sells.  The opponent has not established the section 60 ground.

    Conclusion and costs

23. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

24. I order Mr Wherrett to pay to Holley its costs in terms of the official scale.

    Terry Williams
    Hearing Officer
    27 February 2004