Midmark Corporation v Ritter Concept GmbH

[2014] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Midmark Corporation to extension of protection to Australia of International Registration Designating Australia 1351244 (International Registration: 517295) - Ritter - (10, 11, 20) filed in the name of Ritter Concept GmbH.

Delegate:	Heath Wilson
Representation:	Opponent: Chris Burgess of Counsel instructed by Francesca Colubriale of Spruson & Ferguson Holder: Sean McGuire of Watermark Patent  & Trade Mark Attorneys
Decision:	2014 ATMO 106 Opposition under regulation 17A.29 of the Trade Marks Regulations 1995 - grounds pressed under sections 58, 60 and 42(b) of the Trade Marks Act 1995 – section 58 established – IRDA refused protection.

Background

1. On 15 October 2009, Ritter Concept GmbH (‘the Holder’) filed for extension of protection to Australia of a trade mark contained in the following International Registration Designating Australia (‘IRDA’):

   IRDA No. 1351244

   International Registration No: 517295

   Trade Mark: Ritter (‘the Trade Mark’)

   Specification of Goods:

   Class 10: Dental apparatus, equipment and instruments, infrared and ultraviolet ray lamps for dental purposes; special furniture for dentists, namely seats and chaise longues (sic) for patients; parts for the aforementioned goods

Class 11: Lighting apparatus, especially operating lamps, lamps for lighting treatment areas, lamps for lighting areas that are close by or areas that are further away, all the aforementioned goods for dentists; parts for the aforementioned goods

Class 20: Cupboards and tables for dental care instruments; parts for the aforementioned goods

Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. During examination of the IRDA under regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’), a ground for rejection was raised under section 44 of the Trade Marks Act 1995 (‘the Act’) citing two conflicting trade marks. The IRDA was accepted under the provisions of section 44(4) after the Holder established continuous use of the Trade Mark before the priority date of the cited trade marks.

2. The examiner of the Trade Mark informed the owners of the cited trade marks that it had been accepted under the abovementioned provisions.

3. On 30 June 2011 Midmark Corporation (‘the Opponent’ and owner of one of the trade marks cited during examination of the Trade Mark) filed a notice of opposition to the extension of protection to Australia of the IRDA. At the time of the opposition, 17A.31[1] of the Regulations provided, inter alia, that protection of an IRDA may be opposed on any of the grounds on which a domestic trade mark application may be rejected (s39 to 44) and also on the grounds of opposition set out under sections 58 to 61 and 62A of the Act.

   [1] Now Regulation 17A.34 following the amendments made by Item 16 of Schedule 3 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (Cth).

4. The notice of opposition filed by the Opponent nominated grounds under sections 42(b), 44, 58, 58A, 59, 60, 62(a), 62(b) and 62A of the Act.

5. The evidence subsequently produced for the purposes of the opposition comprises:

Evidence in Support

• Statutory declaration of Jean Hinker (Research Coordinator for the Opponent) dated 25 June 2012 (‘Hinker 1’).

• Statutory declaration of Robin Muller (Director of Midmed Pty Ltd) dated 19 September 2012 (‘Muller’).

• Statutory declaration of R.Gregoire Blackmore (Chief Operating Officer of the Opponent) dated 19 September 2012 with exhibits GB-1 and GB-2 (‘Blackmore’).

• Statutory declaration of Jean Hinker dated 19 September 2012 with exhibits JH-1 to JH-10 (‘Hinker 2’).

Evidence in Answer

• Declaration of Heinz Werner Schmitz (Chief Executive Officer of the Holder) dated 6 September 2013 with annexures A to K (‘Schmitz’).

  • Declaration of Leon Ferdinand Gritter (Director of Gritter Dental Pty Limited) dated 28 August 2013 with annexures LFG -1 to LFG-3 (‘Gritter’).
  • Declaration of Henry Forman Atkinson dated 28 August 2013. (‘Atkinson’).

Evidence in Reply

·   Statutory declaration of Francesca Colubriale dated 21 January 2013 with exhibit FGC-1.

·   Statutory declaration of Francesca Colubriale dated 3 April 2014 with exhibits FGC-1 to FGC-3. 

1. The written submissions filed by the Opponent pressed the grounds of opposition under sections 58, 60 and 42(b) of the Act. The remaining grounds nominated in the notice of opposition have not been pressed and I find that, for the purposes of this opposition, they have been abandoned. The Opponent bears the onus of establishing a ground of opposition and according to prevailing legal authority it must do so according to the civil standard of the balance of probabilities.[2]

   [2] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 at [16] to [36].

2. The opposition was set down for hearing and I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 25 August 2014. On behalf of the Holder, Sean McGuire of Watermark Patent and Trade Marks Attorneys attended via telephone. The Opponent was represented by Chris Burgess of counsel instructed by Francesca Colubriale of Spruson & Ferguson Patent and Trade Marks Attorneys. The main focus of the hearing was the consideration of the ground of opposition under section 58, to which I now turn.

3. 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.

1. In terms of defining the ownership of a trade mark, the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner in relation to the goods/services of the trade mark and also goods/services constituting the “the same kind of thing”.[3]

   [3] Re Hicks' Trade Mark (1897) 22 VLR 636.

2. An exception to the above general statement is if a trade mark has been used before the application was filed.  In that event (and in the absence of fraud) the owner of a trade mark in Australia is taken to be the first person to use it (“first user”) in the course of trade in relation to the goods/services. The first user need not have invented or first thought of the trade mark[4], but rather it is the first party to use it as a trade mark in Australia.

   [4] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399 per Fullagar J.

3. It is also a requirement that the trade mark is identical or at least substantially identical to the applied-for trade mark. That is, a: “total impression of similarity (emerges) from a comparison between the two marks” because “In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.”[5]

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 per Gummow J at [62].

4. On the facts of the matter before me, the trade marks in question are both identical, being the word “Ritter”. This issue was not contested by the Holder at the hearing and I agree, from my assessment of the evidence, that the trade marks are identical or at least substantially identical in all instances.

5. The issue of a shifting onus of proof under section 58 of the Act was debated at the hearing, and I will address that issue at the outset.

The Burden of Proof

1. Mr McGuire submitted that the Holder bore no responsibility in relation to the ground of opposition under section 58, and if it did, the evidence and assertions supplied rebutted the Opponent’s argument in any case.

2. Legal precedent in Australia (and sections 52 and 55 of the Act) makes it clear that the Opponent bears the onus of proof[6] and both parties agreed on that point. Further, while the standard of proof is the balance of probabilities, evidence that does not enable a finding of fact to be made will not satisfy the Registrar with regard to ownership of a trade mark. On this point, the Full Federal Court distinguished the approach to section 59 from section 58 of the Act in Food Channel Network Pty Ltd v Television Food Network GP[7]and said:

   The difficulties of showing intention to use do not attend an attempt by an opponent to establish ownership through prior user; the opponent either has a case or it does not. Thus there is no evident reason why a shift in the onus could arise in proceedings involving a ground of objection under s 58 of the Act.

And at paragraph [48]:

If the evidence was not sufficiently clear to enable a finding of fact to be made about the ownership of the mark at the time of registration then Television had to fail on that issue; it bore the onus of proof.

And at paragraph [64]:

[T]he Act provides for registration even without use. Further, what is being looked for is prior use such that it defeats the applicant’s claim to ownership. If, on the evidence there was no prior use of the mark in relation to goods in class 16, then Television’s opposition under section 58 must fail.

[6] See above at paragraph 7.

[7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [39].

1. Conversely, if the Opponent does establish prior use such that it defeats the Holder’s prima facie claim to ownership, that claim under section 27(1)(a) of the Act has been rebutted and the bare fact of the filing the trade mark application can no longer be relied upon. In other words, the presumption of ownership arising from the act of filing the Trade Mark is rebuttable. As was noted in Mediaquest Communications LLC v Registrar of Trade Marks[8]:

   [T]he scheme of the Act is not proprietorship by registration but registration of proprietorship. Registration under the Act is only prima facie evidence of ownership…

   [8] Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768; (2012) 205 FCR 205; (2012) 96 IPR 453 at [56].

2. Once the Opponent establishes, on the balance of probabilities, prior use of a trade mark in Australia that is at least substantially identical to the Trade Mark and in relation to goods/services that are the same kind of thing, it will have made out the ground of opposition. In those circumstances, the Holder cannot simply remain silent on the issue and hope to succeed. Neither can the Holder (or its representative) simply state (as it has) “it is not the Holder’s job to establish proprietorship of its own mark”.

3. The question before me becomes: Is it the Holder’s own trade mark? That question is answered by assessing whether or not the Opponent has established another person has acquired a prior right to use the Trade Mark in Australia for the goods. In the end, the outcome is dependent on the content of the evidence produced by the parties.

The Opponent’s First Use

1. Ms Hinker declares that the Opponent has manufactured, promoted and distributed ‘Ritter’ products since 1986. Both Hinker 1[9] and Blackmore[10] describe ‘Ritter’ products as medical examination tables, lighting, sterilizers and casework (cabinetry, storage units, countertops and sinks). Ritter products are marketed towards professionals in the healthcare industry via the Opponent’s Australian distributors.

   [9] At paragraph 4.

   [10] At paragraph 6.

2. One of the Opponent’s distributors in Australia was a company named Midmed Pty Ltd (which was incorporated on 4 October 1994) and Robin Muller is the director of that company. Ms Hinker declares that Midmed distributed Ritter products in Australia on behalf of the Opponent from 1994 to 2002 and continuing from 2008. Between 2003 and 2008, the Opponent’s Ritter products were distributed by another Australian company: Promotal (a subsidiary of the Opponent). Muller sets out the history of the relationship between Midmed and the Opponent but the bulk of the evidence of trade mark use is attached to and mentioned in Hinker 2 and Blackmore.

3. Mr Blackmore and Ms Hinker both assert use of the Opponent’s trade mark ‘Ritter’ by Australian subsidiaries dating from the late 1980s. However, demonstrated instances of the Opponent’s trade mark use prior to 1990 have not been provided.[11] Assertions on the basis of a declarant’s personal knowledge may be given some weight in proceedings before the Registrar, but by themselves they cannot establish prior ownership of a trade mark.

   [11] Hinker 2 at paragraph 6.

4. In the Opponent’s evidence, sales figures for the Opponent’s ‘Ritter’ products in Australia from 1990 to 2003 have been supplied. In addition, actual examples of the Opponent’s ‘Ritter’ trade mark in use on its products from 1990 to 2003 are demonstrated at exhibit JH-6 to Hinker 2. Relevantly, Ms Hinker declares:

   Now exhibited to me and marked “JH-6” are copies of brochures for various Ritter Products, which brochures were distributed by Midmark Corp to its appointed Australian distributors (for the purpose of distribution to customers and potential customers) in 1992, and during the period 1994 to 2005.

5. Exhibit JH-6 and Hinker 2 refers to use in Australia through the Opponent between 1990 and 2003, specifically on physician seating (since 1990), examination tables and surgery lights (since 1991), sterilizers (since 1994) and bio-waste receptacles (since 1995). The following examples of Trade Mark use are shown in the exhibit:[12]

   [12] Almost all of the product brochures are marked © Copyright Midmark Corporation with dates ranging from 1992 to 2005.

• Ritter M9 Ultraclave Automatic Sterilizer

• Ritter 100 Examination Table

• Ritter 106/107 Easi-Riser® Power Examination Table

• Ritter 119 Power Examination Table.

• Ritter 135 Biohazardous Waste Receptacle

• Ritter 355 Minor Surgery Light

• Ritter Modular Casework

• Ritter 193 Physician Stool

• Ritter 152 Halogen Light

• Ritter 420 Upholstered Side Chair

• Ritter 340 Treatment Cabinet

• Ritter 75e Universal Power Procedures Table

• Ritter Otolaryngology Chair

1. Exhibit JH-7 to Hinker 2 displays use of the Opponent’s ‘Ritter’ trade mark on its website from 1998, 1999, 2000 and 2002. The Opponent’s exhibit from ‘Google Analytics’ does not assist, as it only provides evidence of Australian hits to the Opponent’s website in 2011 (after the priority date of the Trade Mark). Such use on a website originating outside Australia is not sufficient by itself to demonstrate actual use of a trade mark in Australia.[13] Having said that, it is supportive of the other evidence provided by the Opponent that does establish early use of the ‘Ritter’ trade mark.  

   [13] See Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 at [43].

2. Regardless, there is further evidence of use of the Opponent’s ‘Ritter’ trade mark in relation to medical examination and treatment equipment appearing on the Australian distributor’s website at in 2001, 2002 and 2004.[14] After an assessment of the Opponent’s evidence, I am satisfied on the balance of probabilities that there has been demonstrated use of the Opponent’s ‘Ritter’ trade mark in Australia before 15 October 2009 in relation to goods claimed in the IRDA.

   [14] Exhibit JH-9 to Hinker 2.

‘Same Kind of Thing’

1. The expression ‘same kind of thing’ in the context of ownership arises from the decision of Holroyd J for the Full Court in In re Hicks’s Trade Mark.[15] Allsop J referred to that decision in Colorado Group Ltd v Strandbags Group Pty Ltd[16] and stated:

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size" (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).

   [15] In re Hicks’s Trade Mark (1897) 22 VLR 636.

   [16] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; [2008] AIPC 92-272; (2007) 74 IPR 246 at [89].

2. The question before me is whether the goods in relation to which the Opponent’s ‘Ritter’ trade mark has been applied are the same kind of thing as:

   Class 10: Dental apparatus, equipment and instruments, infrared and ultraviolet ray lamps for dental purposes; special furniture for dentists, namely seats and chaise longues (sic) for patients; parts for the aforementioned goods

   Class 11: Lighting apparatus, especially operating lamps, lamps for lighting treatment areas, lamps for lighting areas that are close by or areas that are further away, all the aforementioned goods for dentists; parts for the aforementioned goods

   Class 20: Cupboards and tables for dental care instruments; parts for the aforementioned goods

3. I refer to the broad specification in the IRDA of Dental apparatus, equipment and instruments and note the submissions from Mr Burgess that the Opponent’s ‘Ritter’ sterilizer products could fall under such a broad description. I further observe that the types of sterilisers currently sold by the parties are autoclaves for disinfecting either medical equipment (the Opponent’s) or dental equipment (the Holder’s). Those goods are correctly classified in class 11 of the NICE classification rather than class 10. Having made that observation, for the purposes of determining ownership of a trade mark, the category of goods in a specification “must be construed according to its description”[17]. Putting aside any insignificant differences in capacity and the fact that one machine sterilizes medical equipment and other sterilizes dental equipment, I find that the autoclaves of the Holder are substantially the same good as autoclaves for medical instruments. In addition, receptacles for biohazardous waste in a general practitioner’s surgery are the ‘same kind of thing’ as biohazardous waste receptacles in a dental surgery (and the latter would reside under dental equipment in class 10 of the IRDA).   

   [17] See Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at [43 -45].

4. I make a similar finding in relation to lamps for use in medical practice and those specifically for dental use. Those goods in classes 10 (infrared and ultraviolet ray lamps for dental purposes) and 11 (Lighting apparatus; lamps for lighting treatment areas…for dentists) of the IRDA are the same kind of thing as the surgery and halogen lights sold by the Opponent. Both sets of goods are intended to illuminate patient procedures whether the procedure is medical or dental in nature. One lamp is the equivalent of another in this context.

5. The nature of special furniture for dentists (seats and chaise lounges for patients) in class 10 received further analysis by the parties. I take the wording of the specification to mean patient seating rather than seating for dentists per se.   

6. I refer to Mr Atkinson’s evidence highlighting the fact that dentist patient chairs are typically fully adjustable and have services (such as water, waste and electricity attached). After reviewing the Opponent’s evidence its powered patient examination table is substantially the same kind of thing, being height and position adjustable, having a lounge-style with built-in headrests and is able to be fitted with a number of accessories depending on the medical procedure required.

7. If there were any doubt remaining over whether these particular goods were essentially the same – an additional consideration is that some of the Opponent’s products are specifically designed for examination and treatment inside the mouth (such as the Otolaryngology chair), which is precisely the function of a chair for dental patients.  

1. In relation to cupboards and tables for dental care instruments, it is evident that the Opponent’s ‘Ritter’ products are variously described as ‘examination room casework’ and ‘modular casework’ which essentially comprises treatment cabinets, tables, cupboards and drawers designed for storage of medical equipment and the like. Any possible distinction between cupboards and tables for dental instruments and those for medical instruments falls away with a brief inspection of the nature of these goods. I also find that they are the same kind of thing.   

2. Ultimately, I am satisfied that the goods of the IRDA are the same kind of thing as the goods to which the Opponent’s trade mark has been applied before the priority date.

The Holder’s use of the Trade Mark

1. Mr Schmitz (the CEO of the Holder) declares that the name “Ritter” originated from an American dental apparatus and equipment business founded in 1887 by Frank Ritter. Mr Ritter marketed the ‘Columbia Chair’, a new (at that time) maneuverable chair for dental patients. Following the passing of Mr Ritter, his daughters continued the apparatus and equipment business. The relationship of Mr Ritter and his daughters to the Holder is not clear to me but the Holder is said to have used ‘Ritter’ as a trade mark overseas since 1915 in relation to the claimed goods.

2. The Holder now develops and manufactures x-ray machines, autoclaves, dental compressors and suction equipment, dental cabinets, operating lights and stools. I also note that the Holder owns a trade mark for the word ‘Ritter’ (no. 1316422) registered from 20 August 2009 for a number of specific dental instruments in class 10.

3. Mr Schmitz declares that he is not sure when the Ritter trade mark was first used in Australia but attests to use of the Trade Mark “as least as early as September 2003”.[18] In the written submissions prepared on behalf of the Holder, the Holder’s representative appears to resile from Mr Schmitz’s date of first use (September 2003). The Holder’s written submissions make the point that the “statement was made in a declaration filed during prosecution of the IRDA so as to overcome a citation…This declaration was not made in contemplation of a challenge to ownership of the RITTER mark or intended to as a declaration of absolute first use in Australia. There is no basis for the Registrar to draw that inference.”

   [18] Schmitz at paragraph 12.

4. Mr Burgess did point out at the hearing that the earlier declaration was attached to Schmitz for the purposes of this opposition and in that declaration Mr Schmitz declares (emphasis added in italics):

   Attached as Annex A is a copy of my earlier Declaration dated 15 February 2011 (“the First Schmitz Declaration”) which was filed as evidence of use of Ritter Concept’s mark. For the purposes of this opposition, I refer to and rely on the contents of the First Schmitz Declaration.

5. The majority of the examples in Schmitz show how the Trade Mark is currently used as displayed in marketing materials and product brochures. However, some of that material in Annexure D to Schmitz is clearly for markets other than Australia including America, Germany and Italy (some of the Holder’s brochures are in fact presented in German and Italian).

6. The global sales figures of the Holder’s products from 2004 apparently include sales of those products made in Australia. Before 2008, the Holder’s Australian distributor was Gritter Instrument Mfg. Co Pty Limited. Leon Gritter worked for Gritter Instrument Mfg. from 1994 to 2008 and was the director of that company from 2001 until 2008. He became director of the new Australian distributor (Gritter Dental Pty Limited) from 2008. 

7. Two invoices have been provided for goods bearing the Trade Mark sold by the Holder to the Australian distributor Gritter Instrument Mfg. Those invoices are dated 13 February 2007 and 15 November 2010. Being later dates of use than the Opponent’s, that information is not sufficient to establish first use of the Trade Mark in Australia. 

8. As outlined earlier, the date of the first use is paramount for section 58 and Schmitz is either silent on the issue, or provides evidence of use that supports use from around 2004 via its Australian distributor.

9. Turning to the content of Gritter, Mr Gritter attests to his awareness of the Trade Mark in Australia from as early as 1988. He states that his awareness of the products arises from the Holder’s early Australian distributorship with Gunz Dental (or Rudolf Gunz and Company as it was then known), an arrangement that ended in 1983. Mr Gritter’s recollection was that the Trade Mark was being used in relation to dental treatment sets and products such as x-ray machines, instruments and hand pieces.

10. Despite the above assertions of use in the 1980s, evidence of use of the Trade Mark beyond recollections by third parties is in short supply.

11. Mr Gritter has provided approximations of retail revenue arising from the sales of ‘Ritter’ brand products in Australia from 2004, along with an estimation of advertising expenditure in Australia since 2010. The examples at annex LFG-3 are use of the Trade Mark in Australia on the relevant goods but they are either undated or dated November/December 2010 (well after the priority date).  I observe that the examples are of products distributed in Australia by Gritter Dental and therefore cannot be any earlier than 2008.

12. I note one reference in an article from Australasian Dentist that “Since 2000, Gritter Dental has represented Ritter equipment in Australia”[19] which appears to be at odds with Mr Gritter’s evidence that Gritter Dental was established in 2008. In any event, in terms of other evidence purporting to establish the date of first use by the Holder I turn to the contents of Atkinson.

    [19] Annex LFG-3 to Gritter.

13. Mr Atkinson is Professor Emeritus of the School of Dental Sciences at the University of Melbourne. It is evident from his declaration that he has had a long and illustrious career in the field of dental hygiene and higher education. The Henry Forman Atkinson Dental Museum at Melbourne University currently holds a number of items that bear or relate to the ‘Ritter’ brand including dental chairs with attachments, dental catalogues, a hard cover catalogue of ‘Ritter’ products and instruction booklets.

14. Mr Atkinson also has personal knowledge of the brand RITTER:[20]

    I first recall becoming aware of the RITTER brand from my early days as a clinical dental student during the period 1934 to 1936 in England.

    In 1936, I set up a part time dental practice and purchased from C.Ash and Co. a Ritter Dental chair and a Ritter dental unit complete with operating lights and electric dental engine (drill).

    It was in the early 1950s, during my professional career in Australia, that I learnt of Ritter dental chairs and units with associated equipment (including hand books, etc.) being in the collection of the Dental Museum, as it was then known. At this time, I was a member of the Council of The Dental Hospital of Melbourne.

    [20] Atkinson at paragraphs 13 to 15.

15. Mr Atkinson further declares that “To the best of my knowledge, all Ritter products held by the HFA Dental Museum were distributed in Australia for the use of dentists.”[21]

    [21] Atkinson at paragraph 23.

16. For a number of reasons, this evidence does not assist the Holder in relation to the specific issue under section 58.

17. Firstly, there is not sufficient information provided to support Mr Atkinson’s belief that these particular products had been distributed in Australia (as opposed to foreign jurisdictions).

18. Mr Atkinson does mention items in the museum that “bear or relate to the Ritter brand” (at paragraph 18) and refers to a metal plate on the dental units reading “Ritter Alternating Current Dental engine” (at paragraph 21). However, actual examples of the Trade Mark appearing on the product (such as photos of the museum pieces) have not been provided and it is therefore difficult to determine how the ‘Ritter’ brand may have been presented in the 1950s and whether it in fact amounts to use of the Trade Mark.

19. If the above declarations are sufficient to establish use in Australia as early as the 1950s (and I am not convinced in that regard) there is still the further issue of the chain of title between the owner of ‘Ritter’ brand as Mr Atkinson remembers it from sixty years ago and the Holder. In addition, there remains an unexplained gap of trade mark use for some thirty odd years in Australia from the 1950s.  

20. In other words, I am not satisfied that Australian use of the Trade Mark, by the Holder, from the 1950s (or from the late 1980s) has been established. With regard to the history of the ‘Ritter’ dental chair that the Holder apparently has links to, I refer to comments made by Fullagar J in Aston v Harlee Manufacturing Co[22] (my emphasis added):

    In the first place, I do not think that the requirement of "authorship" means that the applicant must be the true and first inventor: he has not to establish anything analogous to what an applicant for letters patent for an invention must establish. I do not think that an opponent of an application for registration of a trade mark could succeed by saying merely "I thought of it first", or even "I thought of it first, and communicated it to the applicant." It is otherwise if the opponent has used the mark in relation to goods.

    [22] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at [19] per Fullagar J.

21. In the matter before me it is the Opponent that has established the earliest use of the trade mark in Australia in relation to goods which are the same kind of thing as the goods in the IRDA. The ground of opposition under section 58 of the Act is therefore established.

22. As the Opponent has established a ground of opposition under the Act, I need not address the remaining grounds of opposition pressed by the Opponent (i.e. sections 42(b) and 60 of the Act). I note, however, that should this decision be appealed, those grounds of opposition under the Act (and any others that the Opponent sees fit to pursue) will be available to the Opponent in those proceedings.

Decision

1. As at the time of filing the notice of opposition to the IRDA, regulation 17A.34 stated: 

   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

   (2)The Registrar must tell the International Bureau of his or her decision.

2. I refuse extension of protection to Australia in respect of all the goods listed in the IRDA.

Costs

1. The Opponent has been successful in its opposition to the IRDA. I therefore award costs against the Holder in accordance with schedule 8 of the Regulations.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
24 October 2014