Michael Field Pty Ltd v Guns 4 Hire Pty Ltd
[2013] ATMO 65
•23 August 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Michael Field Pty Ltd to registration of trade mark application 1449575(35) - GUNS FOR HIRE - filed in the name of Guns 4 Hire Pty Ltd.
| Delegate: | Robert Wilson |
| Representation: | Opponent: Not present at hearing. Applicant: Matthew G Skewes of Lord and Company. |
| Decision: | 2013 ATMO 65 Section 52 opposition: ss 58 and 60 pressed – opponent not owner of trade mark – reputation in opponent’s trade mark not established – registration to proceed. |
Background
This is an opposition brought by Michael Field Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Guns 4 Hire Pty Ltd (‘the Applicant’).
Trade Mark: GUNS FOR HIRE (‘the Trade Mark’)
Priority Date: 21 September 2011 (‘the Priority Date’)
Services:Class 35: Marketing; provision of information relating to marketing; publicity; media representation, marketing and publicity
The Opponent filed its Notice of Opposition (‘the Notice’) on 6 March 2012 and it nominated grounds of opposition under ss 43, 44, 58, 58A, 60.
The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply as follows:
Evidence in Support
- Statutory Declaration by Michael Harold Field, director of the Opponent, (‘the First Field Declaration’) made 6 June 2012, with Annexures MF-1 to MF-24.
Evidence in Answer
- Statutory Declaration by Stephanie Elizabeth Fletcher, owner of the Applicant, (‘the Fletcher Declaration’) made 29 November 2012, with Annexures SEF-1 to SEF-15.
Evidence in Reply
- Statutory Declaration by Michael Harold Field (‘the Second Field Declaration’) made 28 March 2013, with Annexures ER-MF-1 to ER-MF-4.
Michael Field is the director of the Opponent, which he describes in the First Field Declaration as a company which was incorporated in 2008 ‘to provide strategy consultation and implementation, market research and segmentation, competitive analysis and product development, and digital strategy including social media’. Mr Field goes on to say that the Opponent ‘provided these services under three distinct brands: MICHAEL FIELD, GUNS FOR HIRE and STOLEN QUOTES’. The three brands are stated to be associated with three distinct aspects of the Opponent’s overall business; the GUNS FOR HIRE brand being used in connection with the ‘execution and implementation services delivering on the recommendations for website redevelopment, logo development, printing and design’.
In her declaration Stephanie Fletcher describes herself as the owner and director of the Applicant. Ms Fletcher describes the Applicant as a company established in 2009 by herself and a colleague ‘to provide multi-media marketing and publicity services to client companies with a particular focus in utilising the digital on-line environment’. Ms Fletcher goes on to say that since late 2009 the Applicant has offered services to the public and ‘has been known by the brand name “GUNS FOR HIRE” or “GUNS 4 HIRE” or “GUNS FOR HIRE MEDIA” in all company publications, promotional material and advertising’.
I heard the matter as a delegate of the Registrar of Trade Marks on 7 August 2013 in Canberra. The Opponent chose to rely on written submissions and did not appear at the hearing. The Opponent’s submissions were received by me and emailed to the Applicant’s representative on 11 July 2013. Mr Matthew Skewes of Lord and Company appeared by telephone for the Applicant. Mr Skewes’ oral submissions were supported by written submissions emailed to the Opponent’s representatives and to me on 31 July 2013.
Grounds of Opposition, Onus and Standard of Proof
The Notice nominates five grounds of opposition corresponding to various provisions of the Act. However, in their submissions the Opponents explicitly chose to address only those grounds based on ss 58 and 60. Without reference to a section of the Act the Opponent also made submissions suggesting that the Trade Mark had been applied for in bad faith. Bad faith is a ground of opposition under s 62A. Section 62A was not nominated in the Notice, nor was there a request from the Opponent to add this ground to the Notice. Consequently, I have not considered a ground of opposition under s 62A. I discuss the grounds under ss 58 and 60 below. I consider the remaining grounds as listed in the Notice to be abandoned.
To succeed, the Opponent bears the onus of establishing at least one of the grounds nominated in the Notice, with the relevant standard of proof being the ordinary civil standard based on the balance of probabilities.[1] The date at which the rights of the parties are to be determined is the Priority Date: this being the filing date of the application.[2]
Discussion
[1] Pfizer Products Inc v Karam (2006) 70 IPR 599 [6]-[26].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Section 58
Section 58 of the Act is reproduced below:
Section 58. Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
that the trade mark of the Applicant, and the trade mark of the party which it is claimed owns the trade mark, are either identical or substantially identical;[3] and
that the respective goods or services of the parties are the ‘same kind of thing’;[4] and
that there is use of the trade mark, as a trade mark, in Australia by someone other than the applicant or authorized user of the applicant. Such use need not be extensive but must be before the priority date or date of first use by the applicant, whichever is earlier.[5]
If the Opponent fails to establish but one of these factors then the ground is not made out.
[3] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
[4] Re Hick’s Trade Mark (1897) 22 VLR 636, 640.
[5] The Seven Up Co v O.T. Ltd (1947) 75 CLR 203, 211.
That the Opponent’s trade mark is at least substantially identical to the Trade Mark does not appear to be a contentious issue: neither party has suggested otherwise. Perusal of the evidence provided by both parties seems to support this view. The Trade Mark as applied for is simply the words GUNS FOR HIRE. In use, however, both the Applicant and the Opponent are almost exclusively using the trade mark in a remarkably similar, stylised fashion which includes a gun device. Notwithstanding the stylisation, the trade marks are likely to be seen and remembered as GUNS FOR HIRE, and are substantially identical to the Trade Mark. For the sake of simplicity I will refer to the various GUNS FOR HIRE trade marks whether used by the Applicant or the Opponent as ‘the Trade Mark’.
What is principally in contention in this matter is which of the Applicant or Opponent can demonstrate the earlier use. There is also a brief submission by the Opponent’s representative, Ms Delpopolo, which submits that in early 2010 the Applicant was not using the Trade Mark in respect of ‘advertising and marketing services’. I will consider briefly in respect of which services the Applicant has used the Trade Mark. I will then move on to consider the respective dates of first use of the Trade Mark.
There is a submission by the Opponent as to the particular services in respect of which the Applicant was using the Trade Mark in early 2010. Ms Delpopolo submitted that:
The Applicant’s website at the time presented itself as a music representation company (not a marketing company) for ‘Perth bands’ as seen in Annexure ‘MF-24’ of the [First Field Declaration], so it is clear that the Applicant used the term “Guns for Hire” as a purely descriptive way to represent this one particular music band in Perth (and not in the course of trade in provision [sic] advertising and marketing services under the term ‘Guns for Hire’, as Ms Fletcher asserts).
The Applicant has claimed the following services in Class 35:
Marketing; provision of information relating to marketing; publicity; media representation, marketing and publicity
This is a broad claim. Exhibit SEF-04 contains a number of invoices which include items such as:
1) ‘media representation retainer’;
2) ‘4 x Full Page Advertisements’; and
3) ‘Media representation’.
It is apparent to me that these services fall within, and cover the scope of, the claim in Class 35 by the Applicant. Further, Exhibit SEF-05 is a screen shot of Facebook pages, which includes a post on 3 May 2010 which seems to state explicitly that the services on offer by the Applicant are: media representation; marketing solutions; publicity and public relations. I am satisfied that where the Applicant has used the trade mark it is in respect of the services claimed in the Application.
In respect of first use, the evidence provided by both parties is of a somewhat similar nature and a somewhat similar standard: the probative value of the individual exhibits being not particularly high in either case. I suspect this is a reflection of the limited use that the respective parties have made of the Trade Mark, rather than any lack of effort or creativity on the part of the parties in the provision of their evidence. The Fletcher declaration states that the first use of the Trade Mark occurred in late 2009. Nevertheless, I am only able to be satisfied by its evidence that the Applicant’s first use of the trade mark was early in 2010. The Opponent asserts use of the Trade Mark from late 2008. I am, however, not persuaded by the Opponent’s evidence and submissions that its use of the Trade Mark is earlier than the first use by the Applicant.
Exhibit MF-2 of the First Field Declaration contains a number of letters. The Opponent describes these letters as supporting the proposition that ‘many of the Company’s clients are clear that when they see or hear GUNS FOR HIRE, they think of my company’. Many of the letters contain claims such as:
‘I have been aware of Michael Field’s Guns For Hire business since 2008.’ [undated letter from Kingston Vale Pty Ltd]; and
‘To my knowledge Guns for Hire has been trading since 2008. Lodestone Pty Ltd has been providing web and email hosting for Guns for Hire since August 2011.’ [letter from Lodestone Pty Ltd dated 31 May 2012].
Of themselves letters such as these have little probative value. There is no explanation as to the source of the knowledge contained within them. Such knowledge may simply have been provided by the Opponent. Exhibit MF-2 also contains a letter from Margaret Harrison, Managing Director, Our HR Company. In this letter Ms Harrison states:
We initially used Guns for Hire in 2008 to develop a marketing and advertising campaign … In 2009/2010 we used their services to revise our marketing strategy.
This letter, too, is of limited evidential value. This letter leaves unanswered questions such as ‘which Guns for Hire did the writer use?’ This letter is also unsupported by any other evidence such as invoices for the work done. There are other more or less similar letters which are also largely unsupported by other evidence.
Exhibit MF-4 is a Certificate of Registration of a Business Name. This shows that the Opponent registered the business name, GUNS FOR HIRE, on 8 December 2008. As suggested by the Applicant’s representative, mere registration of a business name having the same word elements as the subject mark does not constitute use as a trade mark. Mr Skewes drew my attention to Nintendo Co. Ltd v Care [2000] FCA 1538 in this regard. The law here is similar to that in respect of a domain name registration. Such a registration could form part of a complete picture but in this case there are far too many pieces of the puzzle missing for this evidence to be of much assistance.
Exhibits MF-6 to MF-10 are samples of business cards, postcards, official envelopes, letterhead paper, and window/car stickers respectively. Mr Field stated in his first declaration that ‘[t]he Company has been using the GUNS FOR HIRE Trade Mark for its promotion/advertising materials since 2008’. Mr Field then referred to exhibits MF-6 to MF-10 as examples of this use. The question of when an opponent first made use of a trade mark is one for the Hearing Officer. The Hearing Officer cannot rely on anything but actual evidence, as distinct from assertions that there has been such use, in answering it.[6] Ms Delpopolo, has made a similar submission in respect of evidence provided by the Applicant saying:
Evidence consisting of assertions of use of a trade mark must be backed up with appropriately dated examples of use, and undated pictorial evidence is generally given little or no weight.
Ms Delpopolo cited Steen Peterson v Daniel Baden and Garth Harris [2003] ATMO 83, to support this proposition. There is nothing beyond Mr Field’s assertion to show that the examples were used before the Priority Date. There are, for example, no dated invoices provided from the entities which supplied these items to the Opponent. As a consequence this evidence can be given little, if any, weight.
[6] Untell Pty Ltd v Manenti Holdings Pty Ltd (1992) 23 IPR 641, 645.
There is a dearth of evidence provided by the Opponent which is able to support a conclusion that the Opponent used the Trade Mark prior to the earliest use by the Applicant. What little evidence there is, is largely unsupported. Evidence such as copies of invoices dated before the first use by the Applicant which bore the Trade Mark and which were in connection with relevant services would have been helpful to the Opponent’s case. Ms Delpopolo stated in her submissions that no such evidence was provided due to ‘a computer crash in April 2011’. Mr Skewes, rather cynically, likened this explanation to the errant schoolboy’s excuse that, ‘[t]he dog ate my homework’. Whatever the explanation might be, the lack of supporting evidence in the form of, for example, dated invoices is a serious shortcoming of the Opponent’s evidence. I now turn to the evidence provided by the Applicant.
The evidence provided by the Applicant is quite varied: containing a relatively small number of exhibits which taken individually have only slight persuasive value as to the first use by the Applicant of its trade mark. Exhibit SEF-04 is a collection of some twenty-four invoices dated from 19 January 2010 to 22 September 2011. These invoices are all printed with a GUNS FOR HIRE logo device in the top left hand corner. The logo has the words GUNS FOR HIRE written one above the other with a drawing of a revolver and a line used to separate the three words. The services to which the invoices relate fall within the Class 35 services claimed by the Applicant. In her submissions on behalf of the Opponent, Ms Delpopolo was critical of the probative value of the invoices to the extent of suggesting that ‘the Applicant has simply made up these invoices for the purposes of asserting its prior use in this Opposition proceeding’. Ms Delpopolo based this rather serious accusation on some characteristics of a small number of the invoices. Ms Delpopolo pointed out that the first three invoices provided have the same invoice number and date, and no receiver’s address is included. Mr Skewes answered this accusation in his oral submissions by explaining that these invoices were issued very early in the days of Ms Fletcher setting up her first business and ‘to that extent it was a bit messy’. This seems a reasonable explanation. I suspect that if the invoices were simply ‘made up’ as Ms Delpopolo suggests that the Applicant might have done a better job of it. Ms Delpopolo also noted that there are two invoices: one to TSVET Productions Pty Ltd dated 10 December 2010, and a second to ‘THE PROJECTS’ dated 20 December 2010. These invoices both bear the same invoice number. Mr Skewes did not address this discrepancy.
Exhibit SEF-05 is a collection of screen shots from what is stated to be the Applicant’s Facebook account. The pages show listings of dated posts made to the account from 2 February 2010 to 25 October 2012. Each of these posts is headed by a similar GUNS FOR HIRE logo to that described above with respect to the invoices in SEF-04. One of the earliest of these entries dated 3 May 2010 is simply:
Media Representation - Marketing Solutions - Publicity and Public Relations
Other early entries (which are apparently typical for such posts) are short and to the point, and include such things as:
1) ‘and marketing for: (3 May 2010);
2) ‘In cahoots with … Toasted Designs’ (6 May 2010);
3) ‘ now under construction’ (1 June 2010); and
4) ‘Now representing … TSVET Productions’ (14 June 2010).
Exhibit SEF-06 is a tax invoice dated 18 March 2010 from an internet domain name registration company. This includes registration fees for four domain names:
1) gunsforhire.net.au;
2) guns4hire.net.au;
3) gunsforhiremedia.com.au; and
4) guns4hiremedia.com.au.
As stated in the Applicant’s submissions with respect to domain name registrations, ‘mere registration of a domain name having the same word elements as the subject mark does not constitute use as a trade mark’. Mr Skewes cited Matska v The Mind Gym (2006) 68 IPR 339 in support of this proposition. I do not take issue with this statement, however, a domain name registration when considered in conjunction with other evidence may assist in painting an overall picture of the history of use of a trade mark. It is to be noted that the registration of the domain name ‘gunsforhiremedia.com.au’ correlates with the Facebook post dated 1 June 2010.
Exhibit SEF-07 includes some ten pieces of correspondence which, according to the Applicant are from ‘past and present Company clientele’. Of these ten, two are worthy of particular mention. The first is from James Barrett, the General Manager of 973 Coast FM, dated 25 October 2012. This correspondence states, inter alia:
I’ve known of Stephanie Fletcher’s national media company called Guns for Hire since 2010, when they handled the marketing strategy and web training for our then new website second is from Carrie Barker, partner, ‘The Projects’, dated 22 October 2012. This correspondence states, inter alia:
I’ve known Stephanie Fletcher in a professional capacity in the media realm since 2007, and my company ‘the projects’ have [sic] worked with Guns for Hire since 2010.
(and)
My company ‘the projects’ based in Sydney have used Guns for Hire, on an Audi A1 execution in 2010 and continue to work with Guns for Hire.
Exhibit SEF-08 contains a number of screen shots of the Applicant’s web site, The pages each bear the annotation at the bottom of the pages ‘Copyright 2010’. There is no reason to assume that what is shown on these particular screenshots appeared on the website in 2010. This evidence does however support to a small extent the assertions made by the Applicant as to the existence of its website in 2010.
Exhibit SEF-10 is described by the Applicant as ‘a hand-over document dated 14 July 2012 [sic] for work done by the Company on behalf of for [sic] TSVET Productions’. The document is actually dated 14 July 2010. The document appears to detail approaches that the Applicant has made to a number of entities on behalf of their client, TSVET Productions over the period 18 June 2010 to 13 July 2010. This document supports both the Facebook post, dated 14 June 2010, and invoices included in Exhibit SEF‑04: those being to TSVET Production Pty Ltd dated 31 June 2010 and 6 July 2010.
While each of the exhibits discussed above is of limited probative value in itself, when considered overall they paint a picture sufficient to satisfy me that the Applicant’s first use of the Trade Mark occurred in early 2010.
In summary, the Opponent has failed to prove to the required standard that it used the Trade Mark earlier than the first use by the Applicant. I thus find the Opponent has not established its s 58 ground of opposition.
Section 60
Section 60 of the Act is reproduced below:
Section 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.
To establish a ground of opposition under section 60 an opponent must be able to demonstrate that at the relevant date (the priority date of the trade mark) there was another trade mark which had acquired a reputation in Australia amongst a significant section of the public such that use of the opposed trade mark would be likely to deceive or cause confusion. The Opponent has submitted that its trade mark – GUNS FOR HIRE – has such a reputation.
In McCormick & Co Inc v McCormick,[7] Kenny J considered what might be intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in section 60, reputation is ‘the recognition of the [trade mark] by the public generally.’ Her Honour quoted the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[8]
[7] (2000) 51 IPR 102.
[8] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has a very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[9]
[9] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
An important factor for deciding an opposition under the provisions of section 60 is the consideration of what should be regarded as a ‘significant section of the public’. In Le Cordon Bleu BV v Cordon Bleu International Ltee, Heerey J observed: [10]
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.
[10] (2000) 50 IPR 1, 20.
The Opponent’s evidence in respect of s 60 suffers from the same problems discussed in respect of s 58. The individual exhibits are very weak and almost entirely unsupported by other evidence.
Ms Delpopolo, in her submissions, has stated that her client’s evidence has clearly established ‘a pre-existing and substantial reputation’ and that:
This is particularly so considering that its successful stage of a flash mob campaign in Sydney attracted public attention and that its You Tube page generated 2,870 views (which has now increased to 5,349 views).
The Oxford English Dictionary defines a ‘flash mob’ as:
A large group of people organised by means of the Internet, or mobile phones or other wireless devices, who assemble in public to perform a prearranged action together and then quickly disperse.
According to the First Field Declaration, the ‘flash mob’ in evidence was staged on 20 September 2011 in Martin Place, Sydney. Mr Field describes the flash mob as consisting of:
[A] lone guitarist performing music followed by 26 dancers bursting moves to the track ‘Guns for Hire’ (ACDC) before disappearing into the crowd. All performers wore T-shirts with GUNS FOR HIRE Logo on the front and the website address <gunsforhire.com> on the back.
Exhibit MF-14 is a screen shot of a page from the popular video sharing website YouTube, which shows a video entitled Guns for Hire Flashmob Martin Place Sydney. Exhibit MF-15 is a USB stick which contains a copy of the video. It is to be noted that the flash mob was staged the day before the Priority Date.
The Opponent’s ‘flash mob’ evidence suffers from a number of issues. While the flash mob itself was held the day before the Priority Date, Exhibit MF-14 clearly shows that the date the video was uploaded to YouTube was October 25 2011: which is after the Priority Date. As it is necessary for the Opponent to demonstrate reputation before the Priority Date, the views of the YouTube video do not assist the Opponent. The number of people who viewed and took any particular notice of the flash mob as it was being performed is unclear. At best the number might be a few dozen. While the flash mob may have created some small amount of publicity for the Trade Mark it does not appear to be use in the course of trade as there were no services on offer or apparently linked with the flash mob itself.
Ms Delpopolo has also drawn my attention to Exhibits MF-20 and MF-21. These exhibits are references to the Trade Mark in a magazine and a Facebook post respectively. Both of these are use of the Trade Mark after the Priority Date. Ms Delpopolo appears to acknowledge this and I note her reference to Burchett J’s statement that:
[T]he evidence must relate to the position at the critical time, but it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.[11]
[11] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 509.
I am unable to agree with Ms Delpopolo’s submission that ‘the Opponent’s evidence shows substantial Australia-wide reputation in the marketing industry’. Each part of the Opponent’s evidence has little if any probative value. Even when considered as a whole and in the most favourable light, I am not able to be satisfied that the Opponent’s trade mark had, before the Priority Date, acquired a reputation in Australia, and because of that reputation the use of the Opponent’s trade mark would be likely to deceive or cause confusion.
I have found that the Opponent has not established either of the grounds it raised pursuant to ss 58 or 60. The Trade Mark may accordingly 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.
Costs
Both Parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Trade Marks Hearings
23 August 2013
0
7
0