Michael Hiscock & Others v Lee Wood & Others

[1999] ATMO 81

TRADE MARKS ACT 1995

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

Re:      Opposition by MICHAEL HISCOCK, ROBERT HAYES and JASON MARLER to the registration of trade mark application number 741837 in classes 9, 16, 25 and 41, in the name of LEE WOOD, LARRY LEACH, and CRAIG RODGER for the trade mark MYRIAD.

Lee Wood, Larry Leach and Craig Rodger (the applicants) filed application 741837 on 20 August 1997.  They were seeking to register the trade mark myriad in classes 9, 16, 25 and 41.  The only matters raised during examination were concerned with the specification of the goods and services.  The trade mark was advertised as accepted in the Australian Official Journal of Trade Marks on 7 May 1998 for the goods and services: -

Class 9Apparatus for the transmission or reproduction of sound or images,

photographic and cinematographic apparatus

Class 16          Printed matter, photographs, stationery

Class 25          Clothing, footwear and headgear

Class 41          Musical entertainment services provided by a rock band.

Michael Hiscock, Robert Hayes and Jason Marler, (the opponents) filed a Notice of Opposition on 17 July 1998. The opponents relied on section 59 (a) and section 60 (a) and (b) of the Trade Marks Act as grounds for opposition to the registration of the trade mark. Neither party requested to be heard and so this opposition has been directed to me for a decision on the material held on file in the Trade Marks Office.

The evidence

The opponents served their evidence in support on 27 August 1998.  The evidence consisted of a Statutory Declaration, with exhibits 1 -16, made by Michael Hiscock on 19 August 1998.  The applicants' evidence in answer was served on 27 October 1998.  This evidence was a Statutory Declaration made by all the applicants on 22 October 1998.  The Declaration was accompanied by copies of all relevant paperwork and a copy of the CD they had produced.  The opponents served their evidence in reply on 13 January 1999.  This comprised a Statutory Declaration by Michael Hiscock made on 11 January 1999 together with 55 exhibits.  Both parties in this opposition represented themselves, which led to difficulties in the procedures of serving evidence, and the Statutory Declarations were presented in point form, giving an overview of both bands' careers.  Neither party provided written submissions about this opposition.

Discussion

The opponents based their opposition on section 59 (a) and section 60 (a) and (b) of the Trade Marks Act. As I mentioned above, the evidence provided by both sides demonstrated their own use of the trade mark. As neither party had legal representation in this opposition, the evidence, in places, lacked key points of detail. Neither side gave any information about their decision to adopt the word myriad as the name of their rock band. That information might have helped me to decide the issue of ownership of the trade mark. Another problem with the evidence is that neither party appreciated the importance of the date of the application (the priority date). Both sides failed to understand that their use of the trade mark myriad before the priority date of the trade mark application was critical to the question of their reputation and ownership of the trade mark. Both the applicants and the opponents provided a large amount of information concerning their use of the trade mark after the priority date but the information on that later use cannot be considered in deciding this opposition, particularly when the opponents are relying on section 60 of the Trade Marks Act, by alleging they had a considerable reputation in the trade mark myriad at the date the applicants filed their trade mark application.

(a) Section 59 - Applicant not intending to use trade mark

This section of the Trade Marks Act reads: -

59.  The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia;
in relation to the goods and/or services specified in the application.

When the opponents formally filed a Notice of Opposition they stated their belief that the applicants "have not provided ANY details of their usage of the mark in Australia for performing, promoting or broadcasting purposes since applying for registration in August 1997, and as a result we are not convinced they intend to use the mark in Australia."  Other than this statement they did not provide any evidence showing that the applicants had not used the trade mark myriad in relation to their rock band.

Trade mark law and precedent establishes that the mere fact of applying for a trade mark is considered as an intention to use the trade mark.  In Aston v. Harlee Manufacturing Co., [(1960) 103 C.L.R. 391 at 401] Fullagar J said:

The making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent or the person aggrieved, of proving the absence of intention.

When I looked at the evidence provided by the applicants, it appeared that the applicants had used the trade mark before they applied for registration.  It is a very small amount of use, just the booking of a rehearsal room in the name of the band myriad, and they did not provide any physical evidence of the booking of that room. However that statement, the application for a trade mark, and the subsequent use of the trade mark, as shown in the applicants' evidence, refutes the opponents' claim that the applicants did not intend to use the trade mark in Australia.  The opposition based on this ground, section 59, therefore fails.

(b) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia.

The provisions of this section of the Act are: -

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

The Notice of Opposition stated that:

"Through our usage since 1994, we have developed a significant reputation in Australia through recorded material, promotion, performing and public broadcasting. The other party's trade mark is identical to our mark "MYRIAD", however, we had been operating as a band for more than three years before this application was lodged by the other party in August 1997. Along the grounds stated in SECTION 60(a), we believe we have proprietorship on the basis of first usage, (A number of years before the other party).

In addition, as stated in SECTION 60(b), the use of the mark by the other band would definitely cause confusion and deceive the public. It is obvious that having two bands of the same name in the marketplace that it would cause considerable confusion."

There is no doubt that both these bands have been using the word myriad as the name of their rock bands in a trade mark sense.  Therefore the only question to be decided is whether the opponents had developed such a reputation in myriad as the name of their band, that people who were interested in this style of music would be confused if another group of musicians used the word as the name of their band.

The opponents provided evidence which supported this ground for opposition.  The opponents had been practising as the band myriad since 1993.  They did not have proof of this date but they provided a copy of a receipt dated 5 April 1995 made out to myriad in relation to a rehearsal.  The opponents could also demonstrate that, using the name myriad, they had paid for a demonstration cassette to be made in 1995 and a second demonstration tape in 1996.  Similarly they provided evidence that they, as myriad, had entered a competition for bands at Ingleburn Hotel in 1996.  They showed that myriad won a prize in this competition on 16 November 1996, well before the applicants had applied for their trade mark registration.  It is also worth noting that the opponent's evidence shows that the various people who provided receipts for taping and other expenses were receiving money from myriad at the address of the opponents.

The opponents declared that they had played for a number of parties and had been the supporting act at various performances between 1995 and August 1997 but were unable to provide evidentiary proof of all these performances.  However, it is clear that the opponents were performing as a band named myriad long before the applicants applied for their trade mark.  The opponent had certainly developed more of a reputation for the band named myriad than the applicants who, according to their own evidence, had only practiced together prior to filing the application.  The applicants had not performed in public and only started to develop a public reputation in September 1997 when they recorded a compact disc which they then sent to various recording companies. 

The applicants stress that they had chosen a "professional" approach to developing their reputation as a rock band.  They chose to rehearse and to write music essentially in private until they had secured rights in the name as a trade mark.  The applicants have subsequently registered the business name MYRIAD (THE ROCK/POPULAR BAND).  The opponents had chosen a more public way to develop and display their music.  The opponents had appeared at a number of parties and shows so that a number of people would have been aware that the opponents played as the rock band myriad.  They had developed a reputation and rights in the name myriad in relation to rock bands before the date of filing of this application. 

I consider that it would be confusing to people who are interested in rock music if there were two bands, playing popular/rock music using the same name.  This opinion is supported by an article in a rock magazine, published in 1998, after the applicants had started to use the word myriad as the name of their rock band.  This article appeared in the magazine REVOLVER, which reports on rock music and musicians, showing that the editorial staff of that magazine were confused about the fact that there were two rock bands called myriad in Sydney.

In view of the reputation developed in the word myriad by the opponents in the field of rock/popular music, prior to the date of filing of this application, I find that the opposition succeeds under the provisions of section 60 of the Trade Marks Act in relation to the goods in class 9 and the services in class 41.

Decision

I have found that the opposition fails under the provisions of section 59 of the Act. However, the opponents were successful in their opposition in terms of section 60 of the Trade Marks Act in relation to the goods and services involving music apparatus and musical performances. Therefore the trade mark application, as a whole, must be refused. If, however, the applicants choose to delete class 9 and class 41 from their application, then the applicants' mark could be registered for the goods in class 16 and class 25. I allow the applicants one month from the date of this decision to amend the application accordingly, otherwise the application will be refused.

Coral Henry
A/Senior Examiner
16 August 1999