Meyndert Bornman and Nicole Cronin v Seca Reptiles & Aquarium Pty Ltd

[2019] ATMO 138

TRADE MARKS ACT 1995

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

Re:Opposition by Meyndert Bornman and Nicole Cronin to application by SECA REPTILES & AQUARIUM PTY LTD for trade mark number 1818373 (class 35, 44)

– Seca reptiles logo (with Python device)

DELEGATE:

Kate Doherty

REPRESENTATION:

Opponent: Self-represented

Applicant: Self-represented

DECISION:

2019 ATMO 138

Trade Marks Act 1995 (Cth) – opposition to registration under s 52 of the Act – grounds of opposition under ss 42 (Copyright Act 1968, s 31), 60 and 62A

      pursued; none established; trade mark will proceed to registration.  

Background

1. This opposition is a proceeding on the written record in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No: 1818373

Trade Mark:  (‘Trade Mark’)

Filing date:        29 December 2016

Applicant:         SECA REPTILES & AQUARIUM PTY LTD

Specification of Goods: (at time of filing): Class 35: Pet sales services via pet shops

Class 44: Advisory services relating to the care of animals; Advisory services relating to the care of pet animals; Animal breeding; Animal care; Animal grooming; Animal semen extraction; Animal stud services; Animal welfare services; Breeding of animals; Care of animals; Grooming of animals; Hygienic and beauty care for animals; Providing information, including online, about hygienic and beauty care for human beings or animals; Services for the care of  pet animals

1. The Trade Mark was advertised accepted on 12 January 2017. A Notice of Opposition was filed on 10 May 2017 by Meyndert Bornman and Nicole Cronin (‘The Opponent’). The Statement of Grounds and Particulars (‘SGP’) nominates grounds of  opposition under ss 42, 60 and 62A.

Evidence

1. The evidence received from the Opponent consists of three declarations by Meyndert Bornman. Each one refers to a particular ground of opposition:

Item	Date	Reference	Ground
Declaration of Meyndert Bornman	27 January 2018	Bornman1	s 60
Declaration of Meyndert Bornman	27 January 2018	Bornman2	s 42B [sic]
Declaration of Meyndert Bornman	28 January 2018	Bornman3	s 62A

1. Bornman1, Bornman2 and Bornman3 refer to various annexures including: images, letters, photographs of advertising and merchandising collateral, as well as screenshots of websites, social media and associated analytical engagement dashboards.

1. The         Opponent’s  evidence shows various forms of the                   following  unregistered mark:

(‘Unregistered Mark’):

1. No Evidence in Answer has been filed, and no Evidence in Reply was filed. No written submissions were received from either party.

Onus and Standard of Proof

1. The relevant standard of proof is the civil standard, or “on the balance of probabilities”.1

1. The Opponent bears the onus of proof in an Opposition Hearing.2 The application will succeed if one or more of the nominated grounds are established. The rights of the parties are determined at the date of filing the application, the relevant date is 29 December  2016.

Grounds of Opposition

Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia

1. Section 60 of the Act provides:

60 Trade 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.

10.Section 60 is discussed in McCormick & Company Inc v McCormick per Kenny J:3

1 Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

2 Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

3 (2000) 51 IPR 102 [81].

Reputation is “the recognition of the [trade] marks by the public generally”.

However, for highly specialised products or products directed at particular markets the relevant assessment of reputation is made in relation to those markets and not the public generally. 4

11.The evidence supplied by the Opponent does not clearly state the nature of the business or products.5 Website and social media screenshots variously refer to: “information”, “blogs”, “knowledge”, “husbandry”, “breeding”, “collection”, and “facility”.6 Some snakes appear to be for direct sale on a website, but the class of goods nominated only covers sales of pets via pet shops.7 The material before me does not allow me to clearly determine either the nature of the business or products. I am therefore unable to  determine a specialised market that would be associated with that business, or the reputation in that market. However, it is not necessary to make inferences about the products or market characteristics because there is no evidence showing a high volume of sales, substantial advertising expenditure, promotions or consumer appreciation of the Unregistered Mark.8

12.For this ground to succeed the Opponent must show not only that the Unregistered Mark was well recognised by the Australian public generally before 29 December 2016, but that the Trade Mark would be likely to cause public confusion with the Unregistered Mark. In ConAgra Inc v McCain Food (Aust) Pty Ltd it was stated that reputation cannot be assumed and must be stablished as a question of fact:9

It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60.10

The Opponent’s SGP states that the business “CarpetPythons.com.au” has been “operating since 2010”, and that the business has “10000 followers on Facebook and have significant traffic to our website.” Evidence of website traffic hosted on the Wordpress platform was provided showing ranges of zero to approximately 9,800 followers per month between 2012

4 Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410 [436].

5 Bornman1, Bornman2, Bornman3 and SGP.
6 Ibid.
7 Letter to IP Australia amending the SGP dated 21 August 2017.
8 Ibid. 3.
9 ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.

10 Sara Lee Corp v Bali Blue Pty Ltd (2003) 59 IPR 619 [25].

to 2018, some of those dates correspond with some of the Way Back results provided.11 Evidence of engagement shows significantly lower rates than the stated follower numbers.12 Even where the market is specialised, in the sixteen consecutive months before the priority date, just 34 visits to the Wordpress site are recorded, it is also not clear if  these  are individual views.13

13.The extent of recognition is complicated by the fact that different versions of the Unregistered Mark are present and some of the marketing collateral does not contain the Unregistered Mark at all.14 Sponsorship of conferences assert very small maximum numbers of possible attendees.15 Advertising in one of the trade magazines does not include the Unregistered Mark, and no information is provided on the size or distribution of the readership. 16

14.Earlier use can result in an earlier priority date.17 Evidence provided by the Opponent in Bornman1 asserts use of the Unregistered Mark from 4 December 2010, six years before the filing date.18 As a sufficient reputation has not been established for a significant number of people at the relevant time, I am not required to consider whether the Trade Mark would cause confusion .19

15.The s 60 ground of opposition has not been established.

Section 42 – Trade mark is scandalous or contrary to law

16.Section 42 of the Act relevantly provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

11 Bornman1 (Image 11); (Image 3 and Image 4 – dated 15 January 2011), (Image 5 and Image 6 – dated 25 March 2012).

12 Bornman1 (Images 13 and 14).

13 Bornman1 (Image 11); Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410.

14 In particular, a similar mark with text located to the right of the image rather than below it at Bornman3  (Image 3, 4, 5, 6, 9, 18, and 23).

15 Bornman1 (Images 19 and 20).

16 Bornman1 (Images 25 and 26).
17 Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR [606].
18 Bornman1 (Image 2).

19 Bornman1 (Images 15 and 16).

(b)        its use would be contrary to law.

17.The Opponent’s SGP states they created both the mark and the unregistered mark “prior to being employed on a fulltime basis with SECA Reptiles”.20 Bornman2 provides 34 pages of various images and designs showing variations of the Trade Mark, the Unregistered Mark, as well as other marks. This evidence has not been controverted. Evidence shows a photograph of a snake which appears to strongly support the creative conception for the design of the Trade Mark by the Opponent.

18.Where copyright is found to subsist in a mark, unauthorised use of the copyright material would be contrary to law.21 Pursuant to Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd the Opponent must demonstrate that use of the Trade Mark would not could be contrary to law.22 The Opponent states in the letter of 21 August 2017 that an infringement of rights has occurred “under Section 31 of the Copyright Act 1968” [sic]. Copyrights could exist in the design of the Trade Mark in the application.23 The following matters are relevant:

a)     The Trade Mark can be an artistic work, and this has not been controverted.24

b)    The Opponent appears to have created the work based on evidence provided and this has not been controverted.25

c)     The Opponent appears to be a qualified person, appears to have expended effort, and has recorded the work in a material form. These facts have not been controverted. 26

Where copyright is found, the exclusive rights to reproduce or publish the work would  arise.27 However:

20 Bornman2 – SGP [1].

21 Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24.

22 Ibid. [28].
23 Hisense Corp v Zheng Shi [2005] ATMO 38.
24 Anbeuser-Busch Inc v Castlebrae Pty Ltd (1991) 32 FCR 64.
25 Copyright Act 1968 (Cth), s 10; Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58 [9].
26 Copyright Act 1968 (Cth), s 32.

27 Copyright Act 1968 (Cth), s 31.

d)    An employee would not own the rights of reproduction or publication for the copyrighted work created during their employment unless there is an agreement in writing.28

There is evidence including emails and a solicitor’s letter in relation to a verbal agreement about physical equipment.29 There is no evidence relating to any agreement in relation to intellectual property: that evidence would have been required to be in writing and has not been referred to in the evidence provided at any time. For this ground to succeed, the Opponent must have proven that they were not an employee at the relevant time or that there was a written agreement for the assignment of copyright.

19.The Opponent’s SGP asserts the employment contract with the Applicant began on 30 March 2016.30 The only material filed which depicts the Trade Mark is Bornman2, pp 10

– 18, these do not show publication.31 The date on these images is time stamped as 7 March 2016 which precedes the date which is asserted to be the start date for the contract of employment. The letter drafted by Danielle McCreddin of White Cleland Solicitors on of 11 January 2017 under instruction by the Applicant states:

That in or about late 2015 our client held certain equipment suitable for running a reptile wholesaling and retail business…

Our client approached you to determine whether you wished to use the equipment to operate a business from the Premises on the following basis:

·   The equipment could be used at no cost to the business, so long as our client continued to be employed by the business

On the balance of probabilities this evidence contradicts the claim that the Opponent was not an employee of the Applicant at the time the Trade Mark is claimed to have been created.  The termination of employment is  first raised by the Applicant on 30 January 2017.32  There is reference to the Opponent receiving workers compensation from the Applicant. Material

28 Ibid. s 35; s 196.

29 Bornman2 – email annexures dated 29 December 2016 to 30 January 2017, and letter of 11 January 2017.
30 Bornman2 – SGP [1].
31 Copyright Act 1968 (Cth), s 29.

32 Bornman2 – letter re Communication & equipment.

within the possession of the Opponent related to that claim may have established the employment status. This ground must fail as there is no conclusive evidence to show the Opponent has a valid ownership claim for the Trade Mark under copyright law.

20.Within the SGP the Opponent also states: “I have since retracted all permissions for  SECA to use my intellectual property and they have been served with a cease and desist letter that have been ignored.”33 Ownership rights must be assigned in writing to an employee. A complaint is made on 1 March 2017 in relation to alleged copyright infringement, but there is no reference in the letter to the Trade Mark. The letter refers to “images, logos and text on your website and Facebook page” the letter contains three separate logos on the header, none of the marks are the Trade Mark. 34

21.A trade mark opposition only considers the relevant trade mark and not any comparison  of other factors such as the look and feel of a website.

22.The use of the Trade Mark could be without authorisation, but a written agreement preventing assignment must be before the Registrar or conclusive evidence showing the Opponent was not an employee at the time the Trade Mark was created. I am not satisfied that the use of the Trade Mark was initially without authorisation and would be contrary to s 31 of the Copyright Act 1968 (Commonwealth), therefore this ground must fail.35

Section 62A – Application made in bad faith

23.Section 62A of the Act provides:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

33 Bornman2 – letter re Copyright Infringement, dated 1 March 2017.

34 Bornman3 – Letter of 1 March 2017 re Copyright Infringement.

35 Trade Marks Act 1995 (Commonwealth), s 8.

24.The subjective and objective elements of bad faith and their principles are discussed in

Fry Consulting Pty Ltd v Sports Warehouse (No 2) at [164]:36

Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

For s 62A to succeed it must be shown that at the time the mark was registered the Applicant registered the Trade Mark with the required mental state, and that the Applicant’s conduct falls short of the standards of acceptable commercial behavior as observed by reasonable and experienced persons. This ground is less concerned with the similarity of the marks.

25.The Trade Mark application was filed on 29 December 2016 at 15:42pm, the email sent to the Applicant by the Opponent requesting the return of assets was sent at 8.00am that same morning.37 The email does not mention intellectual property, and the letter also refers to an earlier request to return assets made on 9 November 2016. Taking the evidence at its highest when considering these dates impropriety in relation to the Trade Mark cannot be determined.

26.The Opponent was employed in the business for some time while the mark was in use, it  is not possible on the material which is available before me to be satisfied that any intentionally dishonest or deliberate attempt to register the mark in order to mislead the Registrar or defraud the Opponent was made by the Applicant.38

The Opponent has referred in evidence to disputes relating to real property.39  No consideration has been given to the matters which have been raised which are not directly relevant to the Trade Mark dispute.

27.Accordingly, the s 62A ground of opposition has not been established.

36 (2012) FCA 81.

37 Bornman3, “ATTACHMENT 3C”, [10].
38 Harrison v Teton Valley Trading Co Ltd (2005) FSR 10.

39 Bornman2 copy of emails dated 29 December 2016, 2 January 2017, 11 January 2017, 25 January 2017, 27 January 2017 (a,b and c), 30 January 2017 (a and b).

Decision

28.The Opponent has not established a ground of opposition. Pursuant to section 55(1), the mark will proceed to registration for a period of ten years to date from the filing date of 29 December 2016.

29.Trade Mark number 1818373 will proceed to registration one month from the date of this decision.

30.The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

Costs

31.Costs are only considered here in relation to this Trade Mark opposition application and not any of the other matters raised which may, or may not, have occurred between the parties.

32.Costs ordinarily follow the event for an Opposition Hearing. However, it is not apparent that either party has incurred costs for representation in preparing this application, and therefore no order for costs will be made.

Kate Doherty Hearing Officer

Oppositions and Hearings Trade Marks and Designs 19 September 2019