Michael Jackson v Redgrass Communications Pty Ltd

[2019] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Michael Jackson to registration of trade mark application 1772502 (35, 41) - CONVERGENCE - in the name of Redgrass Communications Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Axis Legal Applicant: Self represented
Decision:	2019 ATMO 47 Trade Marks Act 1995 Section 52 opposition to registration - grounds under sections 58 and 60 - no evidence led in support of the opposition - grounds not established

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Redgrass Communications Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

   Application No:         1772502

   Priority Date:             24 May 2016

   ServicesClass 35: Advisory services relating to business management; Advisory services relating to business organisation; Advisory services relating to business planning; Advisory services relating to business risk management; Arranging business shows; Arranging exhibitions for business purposes; Business advisory services; Business advocacy services; Business consultancy; Business consultancy relating to the administration of information technology; Business consultancy services relating to marketing; Business consultancy to firms; Business consultancy to individuals; Business consultation; Business expertise services; Business intelligence services; Business management advisory services; Consultancy relating to business efficiency; Consultancy relating to business management; Consultancy relating to business organisation; Consultancy relating to business planning; Consultancy relating to business promotion; Management advisory services for businesses; Outsourcing services (business assistance); Promotion (advertising) of business; Strategic business consultancy; Strategic business planning

   Class 41: Business educational services; Business training consultancy services; Business training services; Conducting of business conferences

   Trade Mark:               

   (‘the Trade Mark’)

2. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 13 October 2016 in the Australian Official Journal of Trade Marks.

3. On 13 December 2016, Michael Jackson (‘the Opponent’) filed a Notice of Intention to Defend followed, on 9 January 2017, by a Statement of Grounds and Particulars which, as amended, details grounds under sections 58 and 60 of the Act.

4. The Opponent has not filed Evidence in Support of the opposition and the Applicant has filed Evidence in Answer being a declaration made on 17 October 2017 by Sonja Rochel Irwin, the director of the Applicant.

5. Both parties have been informed of their right to be heard or to make written submissions. Neither party has availed themselves of these opportunities. Now, in order that the Registrar may discharge the obligation under section 55 to decide this matter, it has been passed to me, one of the Registrar’s delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

   Onus and Relevant Date

6. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

7. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application and I note that where section 60 specifies the “priority date” that is here the same as the filing date.

   Section 58

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

   Statement of Grounds and Particulars

8. In his Statement of Grounds and Particulars the Opponent asserts:

   The Opponent's trade mark (application no. 1791828) was used before the opposed trade mark application, for class 35 and 41 services.

   Section 58 - Framework

9. Section 58 of the Act provides:

   58Applicant 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.

   Note:For applicant see section 6.

10. In Polo/Lauren Co LP v Horse Australia Pty Ltd the Registrar’s delegate observed:[3]

    The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

    ◦that the Applicant’s Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent;[4] and

    ◦that the Applicant’s Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent was used;[5] and

    ◦that a person other than the Applicant has the earlier claim to ownership of the Applicant’s Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the trade mark by the Applicant.[6]

    [3] [2018] ATMO 150 at [55].

    [4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) 31 IPR 375.

    [5] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

    [6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

11. The Opponent has not filed evidence which addresses his asserted earlier use of a trade mark and accordingly the ground has no foundation.

12. The ground under section 58 of the Act has not been established.

    Section 60

    Statement of Grounds and Particulars

13. In the Statement of Grounds and Particulars the Opponent asserts:

    The Opponent's trade mark (application no. 1791828) has acquired a reputation in Australia for the specified class 35 and 41 services in Australia and his use of the mark was before the priority date of the opposed application.

    Section 60 - Framework

14. Section 60 of the Act provides:

    60Trade 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.

    Note:For priority date see section 12.

15. The Opponent must therefore establish that the trade mark upon which it relies:

    1. had, at the priority date, a reputation in Australia such that
    2. the use of the Trade Mark would be likely to deceive or cause confusion.

16. In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J said of “reputation”: ^[7]

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally.

    [7] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

17. Kenny J explained in McCormick how the reputation of a trade mark may be assessed by the decision-maker:[8]

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

    [8] Op cit at [81].

18. As the Opponent has not filed evidence of the reputation of his trade mark, this ground cannot be established.

19. The ground under section 60 of the Act is not established.

    Decision

20. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

21. The Opponent has not established a ground of opposition.

22. The trade mark application may then 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 and that the disposition of the application should be in accordance with the court’s order or direction.

    Iain Campbell Thompson
    Hearing Officer
    Trade Marks Hearings
    3 April 2019