Mini Menus Australia Pty Ltd v Mini Menus Pty Ltd

[2006] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by MINI MENUS AUSTRALIA PTY LIMITED to registration of trade mark application 939149(35) - MINI MENUS - filed in the name of MINI MENUS PTY LIMITED.

Delegate:

Don Nancarrow

Representation:

Opponent: James Maxwell of Peter Maxwell and Associates, Patent and Trade Mark Attorneys of Sydney

Applicant: Alfred Tatlock of Alfred Tatlock & Associates, Patent & Trade Mark Attorneys of Melbourne

Decision:

s.52 opposition – grounds under ss. 41 and 58 established – registration refused. Costs awarded against applicant.

Background

1. Application 939149, filed on 2 January 2003 in the name of Mini Menus Pty Limited, (the applicant), in respect of “Advertising and business information for customers” in class 35, was advertised as accepted for registration on 29 May 2003. The trade mark is shown in typed font as Mini Menus.

2. A Notice of Opposition was filed on 29 August 2003 by Mini Menus Australia Pty Limited, (the opponent), which listed grounds under ss. 41, 42, 43, 44, 58, 59, 60 and 62 of the Trade Marks Act 1995, (the Act).

The Evidence

1. The evidence as filed and served is set out in the table below.

Declarant	Date Declared	Exhibits	Known As
Evidence in Support
Nicole Lethorn	27.07.04	NL-1 to NL-20	Lethorn 1
Evidence in Answer
William Wallace Lawler	28.01.05	None	Lawler
David William Hamilton	28.01.04 (sic) .05	DH-1 to DH-6	Hamilton
Evidence in Reply
Nicole Lethorn	29.09.05	NL-21 and NL-22	Lethorn 2

1. The evidence goes to show that the Mini Menus trade mark was used in the United Kingdom by MM (United Kingdom) Media Limited from some time in early 2001. Ms. Nicole Lethorn established a connection with that company and decided, together with Mr. Craig Davis, to launch a similar business venture under the mark MINI MENUS in Sydney. Mr. Davis began some groundwork in November 2001 when he approached a business, “Display by Design”, to provide a quotation for the manufacture of display stands for the opponent’s enterprise. Ms. Lethorn first ordered her business and promotional cards, in Australia, around March 2002. These business cards cited promotion of the trade mark on behalf of a company called “Mini Menus Australia”. This entity was not, at that point, incorporated in Australia and would not be until some months later. Ms. Lethorn made use of these cards to promote the business from April 2002. The evidence on this point shows that by late November 2002 Ms. Lethorn had done sufficient preparatory work to enter into contracts with 21 hotels, motels and accommodation venues for display stands offering the services under the opponent’s trade mark. There were a further 21 agreements in December and another seven in evidence for January 2003.

2. During this same period the applicant had begun use of its trade mark in provincial Victoria centred principally in the Geelong area but also on the Mornington Peninsula. The applicant supports its claim with a copy of a licensing agreement, dated 1 January 2002, between “Australian Homebuilders and Renovators Guide Pty Limited” and “Calvert House Publishing Pty Limited”. The Managing Director of the applicant, Mr. David Hamilton, states that he became aware of the business concept of “mini menus” in mid to late 2001 in various overseas jurisdictions. He conducted a number of searches in an effort to determine whether any party was active in Australia. When these searches produced no result he decided to launch such a business. To that end, he drew up the licensing agreement noted above and continued development of the concept from February to August 2002 by means of test marketing and discussions with motels and restaurants. From late July or early August 2002 Mr. Hamilton, together with Mr. William Lawler and Mr. John Perrot, began active use of the trade mark. Mr. Lawler states that he was active in promoting the applicant’s trade mark, from as early as August 2002, by his work of visiting some 30 restaurants to explain the applicant’s services and take orders for their promotional menus for delivery early in 2003.

3. The matter came before me, as a delegate of the Registrar in Canberra on 20 January 2006.

Grounds of Opposition

1. The opponent claimed grounds under eight sections of the Act but at the hearing only those under ss. 41, 42, 58, 60 and 62 were pressed. In relation to the other grounds, those under ss. 43, 44 and 59, listed in the Notice of Opposition I find that opposition has not been established.

Submissions, the Law and Comments

(a)Section 41

1. Justice Branson sets out a synopsis of the structure of this section of the Act in Blount Inc v Registrar of Trade Marks, 40 IPR 498 at 504 with the words:

   Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services ….. it is theoretically open to the registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

2. In the present circumstances, I note that when this application was examined in the Trade Marks Office the Examiner concluded that option (a) of Justice Branson’s summary applied. She found that the trade mark is inherently capable of distinguishing the applicant’s services from those of other traders in terms of s. 41. The trade mark is Mini Menus and the services claimed by the applicant are “Advertising and business information for customers”. No doubt some possible adverse scenarios crossed the Examiner’s mind but with the information available the possible formulation of a ground for rejection would have required some level of guesswork. Mr. Tatlock submitted that such a determination by the Examiner should be accepted as a clear indication that the mark is registrable without any further requirement. Mr. Maxwell, however, disagreed and added the comment that for advertising services by use of mini menus the application would require some evidence of use in order to gain acceptance.

3. Evidence has been filed for this hearing and I am now in a position to understand the exact nature of the applicant’s services. This evidence shows that the applicant provides advertising services by means of miniaturised menus obtained from a variety of establishments providing food services. Obviously, the applicant is not advertising the sale of the mini menus cards themselves (although this could be the case for actual menus purchased by the eating establishment for their own in-house use) but is advertising, for the general public, to purchase the meals that are listed on those menus.

4. The test to be applied, for me to reach a conclusion regarding one of the above options – (a), (b) or (c) – of Justice Branson, is found in the words of Kitto J. in ClarkEquipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

   …. whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

5. I think that the evidence here shows that option (c) of Justice Branson’s summary applies. That is:

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

6. The concept of this business is apparently new to Australia. It seems to me that many tourists or business travellers are placed in the situation where they would like to sample one or more local eating-houses but find difficulty in being able to compare their choices. To have the miniature menus of such establishments readily available, in either their hotel foyer or the nearest tourist information centre, provides an advertising service in a format that I can imagine will gain great popularity. Although, at present, competition may be minimal it is easy to imagine that other advertisers will wish to enter the field.

7. The clear meaning of the words Mini Menus in this trade mark is “small menus” or “miniature menus”. Given the role that the miniature menus play in this type of advertising venture (and replacing “goods” with “services” in Justice Kitto’s words above) I accept that it is a term “that other persons, trading in services of the relevant kind and being actuated only by proper motives …. will think of the word and want to use it in connexion with similar services in any manner which would infringe a registered trade mark granted in respect of it”.

8. The next factor that Justice Branson has identified for this situation is to consider the provisions of s. 41(5) to determine whether the application may still gain acceptance. However, neither the evidence filed by the applicant for this opposition action, nor the applicant’s submissions at the hearing, direct me to any material of significance for consideration under s. 41(5).

9. The applicant offered, at the hearing, to submit post-application evidence of use of the mark in terms of s. 41(5)(a)(ii) if I decided that the application required it. However, at this stage of proceedings, without a proper and timely application for serving further evidence in terms of Regulation 5.15(1)(b), such a request cannot assist.

10. Thus, I find that the opponent has established this ground of opposition.    

(b)Section 42

1. Here, the relevant legislation reads:

Trade mark scandalous or its use contrary to law

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

(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.

1. Mr. Maxwell submitted that by the time the application was made, on 2 January 2003, the opponent was very active in the market-place. He claimed that the menus that were on the applicant’s website on 7 January 2003 (when the opponent first became aware of the applicant) were copies of the menus used in the U. K., by MM (United Kingdom) Media Ltd., the foreign company that had backed the venture that the opponent now sought to expand in Australia.  Mr. Maxwell further submitted that such activity showed that the applicant did not make the application with “clean hands” (Radio Corporation PtyLimited v Disney (1937) 57 CLR 448 at 459 and Re: GE Trade Mark [1973] RPC 297 at 329) because it was aware that it was not the owner of the mark. The opponent also argued that the applicant is in breach of s. 51AA of the Trade Practices Act 1974 (TPA) because it was involved in conduct that “is unconscionable” by fraudulently representing itself as owner of the mark.

2. The opponent also claimed that use of the foreign company’s menus on the applicant’s website amounted to copyright infringement and that, in addition, the applicant was in contravention of ss. 52 and 53 of the TPA for conduct that would suggest a connection, sponsorship, licence or approval or a common origin with the opponent.

3. For its part the applicant claimed that the menus that had been used in overseas advertising were not owned by the opponent but by a third party and that the menus had only been on the applicant’s website for a matter of days. In addition, the foreign trader’s menus had actually been placed on the site by accident - the applicant stated that the material had been shown to the website designer as a sample and the designer had not realised that the menu material should not be used on the site.

4. I have little trouble accepting the applicant’s comments that it had no knowledge of the opponent’s business activity in the initial stages of the two parties activities. This may well have endured until the time of application or even a little beyond, the evidence on the issue is not clear. If this is the case, then the possible fraudulent, unconscionable or misleading conduct, that the opponent claimed to be probable on the part of the applicant, becomes nothing more than an unproved allegation. Given the quite unusual nature of this business venture it is understandable that an Australian trader might decide to use some of the ideas that it had gleaned from a foreign business if it believed that the foreign trader had no interest in the Australian market.

5. The applicant has given me a sufficient explanation here concerning how the U. K. company’s trade mark came to be temporarily on its website – although I can also see why the opponent would be upset that it was placed there. I accept that the applicant did involve itself with research, in Australia, in an attempt to find out if the trade mark was being used by another trader. When it found no evidence of another party from early 2002 it believed that it had the right to apply for the mark.

6. Thus, I find that this ground of opposition has not been made out.

(c)Section 58

1. In relation to ownership this section allows:

Applicant not owner of trade mark

58. 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. Four aspects are to be considered in relation to ownership of a trade mark for an opposition in respect of s.58. These are:

   (1) in applications for registration rights are to be determined as at the date of application (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594);

   (2) ownership rights in a trade mark resides in either the first use in trade in Australia on the relevant goods (Settef S.p.A. v Riv-Oland Marble Co. (Vic) Pty Ltd 10 IPR 402 at 413), or the making of the application to register (Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601 at 625 to 628);

   (3) a determination whether or not the respective goods or services are “the same kind of thing” (Re: Hicks’s Trade Mark (1897) 22 VLR 636); and

   (4) a determination whether or not the respective trade marks of the parties are substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 31 IPR 375 (FC)).

2. The first and third considerations above yield an application date of 2 January 2003 and a finding that the services of the respective parties are certainly the same kind of thing. Both parties are involved in the advertising of restaurant services of their customers by means of the placement of miniaturised menus in readily accessible locations, such as hotel foyers and tourist information centres.

3. On the fourth issue the trade marks of the respective parties are simply the words Mini Menus for the applicant and for the opponent, a group of three common law trade marks, one of which is the trade mark depicted below.

1. A side-by-side placement (as per the standard test for substantial identity of competing trade marks set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414) leads me to the conclusion that the respective marks are substantially identical. The heart of the mark of the opponent shown above is the words Mini Menus. The word AUSTRALIA and the broken oval device in that trade mark add very little by the way of memorable elements.

2. In some instances the opponent has also used the words MINI MENUS in upper-case script, or, at times “Mini Menus” in normal typed script.  The second mark of the opponent here is totally identical to the mark applied for whilst the first is certainly substantially identical. 

3. The ownership right in the trade mark Mini Menus in respect of these services is, therefore, reduced to a consideration of the date of either first commercial use in Australia, or the date of application – being, in this instance, 2 January 2003.

4. On the matter of first use the applicant makes the following claims: (i) Use by means of a licensing agreement between “Australian Homebuilders & Renovators Guide Pty Ltd” and “Calvert House Publishing Pty Ltd” (1 January 2002), (ii) use by means of test marketing discussions with restaurants (February 2002), (iii) use by means of actively visiting restaurants in parts of Victoria to market the concept and take orders (July/August 2002).

5. The opponent makes the following claims: (i) Use by Mr. Craig Davis in obtaining quotes from Australian companies for the production of display stands, business cards and stationery (November 2001), (ii) use by Ms. Nicole Lethorn in engaging a printer for production of business cards (March 2002), (iii) use by Ms. Nicole Lethorn in approaching Sydney restaurants (armed with the aforesaid business cards) for the purpose of setting up contracts to advertise those restaurants by means of miniature menus in the foyers of exclusive hotels (April 2002), (iv) use by means of the opponent’s mark on its website (July 2002), (v) use by Ms. Lethorn in approaching both restaurants and hotels in Sydney to sign contracts and arrange for the restaurant menus to be placed in the hotel foyers with greater focus in terms of Ms. Lethorn’s workload (September 2002).

6. Mr. Tatlock, for the applicant, submitted that Ms. Lethorn has never owned the trade mark (exhibit NL-21) and that the opponent company was not in existence prior to 27 November 2002. Such information, he asserted, meant that the applicant had to be the owner because it had used the trade mark prior to 27 November 2002. I make little of this claim, however, because exhibit NL-21 merely grants Ms. Lethorn rights to use the business concept that was already in operation in the U.K. and the right to use the same trade mark in Australia without interference from that foreign company. In fact, the foreign company states that it is prepared to stand aside from any ownership rights it may have in the mark in Australia (NL-21) and offer support to Ms. Lethorn to run her business. There is no evidence of any formal licensing agreement by the foreign company to govern Ms. Lethorn and the statement in NL-21 that “At all times this was authorised by me and MM (UK) Media Ltd” I take to mean nothing more than that the U.K. company gives its blessing to Ms. Lethorn’s venture.

7. The applicant claims use, as from 1 January 2002, by means of the licensing agreement attached to the Hamilton declaration (exhibit DH-2). The parties to this agreement are “Australian Homebuilders & Renovators Guide Pty Ltd” (the licensor) and “Calvert House Publishing Pty Ltd” (the licensee). Mr. Hamilton has signed the agreement on behalf of both parties as Director of the former and Director/Secretary of the latter. “Australian Homebuilders & Renovators Guide Pty Ltd” later became the applicant company. “Calvert House Publishing Pty Ltd” is described by Mr. Hamilton as “its associated company” which is generally involved in the printing operations for the applicant company. The licensing agreement does, however, raise some questions in my mind that were not addressed at the hearing.

8. These are: Why was such an agreement necessary between companies both apparently under Mr. Hamilton’s control? Why would there be a need for such an agreement, on 1 January 2002, given that even the research to develop the concept did not seriously start until February 2002? How does the statement within the agreement that “Whereas the Licensor …. was responsible for the initial format design advertising and business plan for the production of the aforementioned mini menus and menu guides” find consistency with paragraph 9 of the declaration, which nominates February 2002 as the starting time for conducting research and developing the Mini Menus concept? If “Australian Homebuilders & Renovators Guide Pty Ltd” felt entitled to license another company to use the trade mark, by what means did it claim the initial ownership on 1 January 2002?

1. It seems to me that the document is simply an “in-house” arrangement between Mr. Hamilton’s companies. I am not sure of the reason for its existence, and, I cannot be sure that anyone, apart from Mr. Hamilton, was actually aware of the existence of such an agreement. I find it difficult to accept that it goes to show any sort of commercial use of the trade mark and I do not accept that it supports the applicant’s claim for use of the trade mark in terms of s. 58.

2. It is a good deal easier to follow the applicant’s commercial plans in the description of the work outlined from February 2002 to August 2002. The Lawler declaration supports Mr. Hamilton’s claims of use from August 2002, when Messrs. Hamilton, Lawler and Perrot began their work of visiting restaurants, motels and hotels to promote the mark. Although I accept that some other activities took place in relation to the applicant’s trade mark from as early as February 2002, it is not clear from the evidence exactly when these occurred between February and August 2002. Exhibit DH-3 does not show any use of the trade mark and exhibit DH-4, which was filed to specifically show samples of the menus used between February and August 2002, provides miniaturised menus for six eating establishments. Four of these menus provide no mention of the trade mark Mini Menus whatsoever. The other two menus, which clearly identify the establishments on their front covers, state on the back “10% Discount of Total Food Bill on Presentation of this Mini Menu exp. 31/05/03”. It is arguable if the words “Mini Menu” in this context could support trade mark use, but, in any event, there is nothing to help me find that such menus were actually used before August 2002.

3. Thus, the earliest use that I am prepared to attribute to the applicant is August 2002.

4. I have little doubt that at the outset of operations in Australia, both the applicant and the opponent were unaware of the presence of the other in neighbouring Australian states. Although Mr. Hamilton freely comments that he was aware of overseas use of the trade mark and that it sparked his interest in a possible Australian venture, such a circumstance does not prevent his company’s application in Australia. As Williams J. observed in Re:Registered Trade Mark “Yanx”; Ex Parte Amalgamated Tobacco CorporationLimited, 82 CLR 199 at 202:

   To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law.

5. With the thoughts in mind that the application date is 2 January 2003 and that the earliest possible use of the mark that I am willing to consider by the applicant is August 2002 I now turn to the opponent’s claims.

6. The earliest claim here is use of the mark in November 2001 by Mr. Davis. Ms. Lethorn attests that Mr. Davis used the mark in Australia at that date by means of his approach to Mr. Grant Gossen of “Display by Design”. A letter from Mr. Gossen (exhibit NL-9 to Lethorn 1) supports the fact of the meeting and outlines the business dealings discussed. The opponent’s mark was clearly used in those dealings because it was to be affixed to the stands that “Display by Design” were to manufacture for the opponent.

7. I note that Williams J in Seven-Up Co v OT Limited, (1947) 75 CLR 203, said at 211:

In my opinion, the effect of these cases is that in the absence of fraud, it is not unlawful for a trader to become a registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration.  But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner.  The court frowns upon any attempt by one trader to appropriate the mark of another trader, although that trader is a foreign trader and the mark has only been used by him in a foreign country.  It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register.

1. The circumstances here are not that the foreign trader had a direct interest in the Australian market but that the foreign trader assisted Ms. Lethorn and Mr. Davis to establish such a business and allowed them use of the Mini Menus mark in Australia. So, in this case, we do not have a foreign trader as such, but merely two individuals (and later, just Ms. Lethorn) who acted with the assistance of that foreign trader.

2. I am inclined to the view that the activity by Mr. Davis in November 2001 does, indeed, qualify as relevant use of the mark in a manner similar to seizing “upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia”. However, if I am wrong in this then I also accept that the use by Ms. Lethorn documented in Lethorn 1 (and exhibits NL-11, NL-12, NL-13, NL-14 and NL-15) shows active use of the trade mark in Australia from at least April 2002 by Ms. Lethorn acting alone. I note that Mr. Tatlock asserted that some of the use claimed by the opponent (particularly as shown in NL-14) could only be attributed to the foreign company and not Ms. Lethorn. However, the use made, in Australia, of material willingly supplied by the foreign company to Ms. Lethorn for her to utilise in her business venture amounts to use by her in the course of trade. The U.K. producer of the material has stepped aside from any possible rights in Australia in favour of Ms. Lethorn as shown in the letter from Mr. Elliott Wise, the founder of MM (United Kingdom) Media Limited, at exhibit NL-21.

3. Thus, I find that the opponent has the earlier claim to ownership (from either November 2001 for Ms. Lethorn and Mr. Davis acting in partnership, or from at least April 2002 for Ms. Lethorn acting alone) of the Mini Menus trade mark, in respect of the type of advertising and business services discussed above, and I find that the ground of opposition under s. 58 has been established.

(d)Section 60

1. This section reads:

Trade mark similar to trade mark that has acquired  a reputation in Australia

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

1. In relation to this ground the opponent needs to nominate a trade mark that is either substantially identical with, or deceptively similar to, the mark applied for. It has done this, with its own Mini Menus trade mark.

2. This trade mark must then be shown to have acquired a reputation in Australia at the date on which the present application was made. Although Mr. Maxwell submitted that the hotel industry did not contain a great number of different entities and that word would soon spread concerning the opponent’s business leading to a significant reputation by 2 January 2003, I believe that this is the hurdle at which this ground of opposition stumbles.

3. Although I accept that some use had been made of the opponent’s trade mark, by the date of application, on 2 January 2003, it could hardly be said to have acquired a convincing reputation. The evidence shows that a number of contracts with hotels had been signed, and many more were ready for signing, but the general public may, at that stage, have been totally unaware of the trade mark. Even within the hospitality industry only a comparatively small area of Australia would have had the opportunity to be exposed to the opponent’s trade mark. There is also no evidence provided concerning the degree of awareness of the relevant restaurants in the Sydney area where Ms. Lethorn had concentrated her initial efforts. No sales figures for the trade mark had been quantified at the date either. The first figures provided detail sales for a time period ending on 30 June 2003 but no indication is given for the part of this, if any, attributable to a time prior to 2 January 2003.

4. Overall, this level of reputation cannot be considered to lead to any appreciable likelihood “to deceive or cause confusion” in the face of use of the mark by the applicant. I find that the ground of opposition under s. 60 has not been established.

(e)Section 62(b)

1. Legislation relevant to this ground of opposition states:

Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:

(a) ….
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Note:  For file see section 6.

1. The opponent argued here that the applicant was not entitled to claim ownership of the mark at the time that the application was made, on 2 January 2003. This followed, it was alleged, from the previously discussed grounds involving ss. 42 and 58. The opponent claimed that the applicant knew both that MM (United Kingdom) Media Limited was the original owner of the mark and that the opponent had already used the mark in Australia so the ground under s. 58 supported opposition under s. 62(b).

2. Firstly, concerning s. 58, even with full details of the use made of the mark in other jurisdictions the applicant would not be excluded from claiming Australian ownership (see Seven Up, supra, at 211).

3. As I have stated above, I believe that at the commencement of operations in both Sydney and rural Victoria by the opponent and applicant, respectively, neither knew of the activity of the other. Thus, it is not difficult to assume that when each party did find out about the existence of the other, that each party still believed it was the earlier user of the mark in Australia. Neither party had an accurate picture of the use the other had made of the trade mark until evidence began to emerge for the opposition process. I do not accept that the applicant knowingly made the application in the belief that it did not own the mark in terms of s. 58.

4. In relation to the opponent’s argument for a favourable finding under s. 62 flowing from a finding under s. 42 I note that the opponent did not establish that ground of opposition and, consequently, is not aided here.

5. Thus, I find that the ground of opposition taken under s. 62(b) is not made out.

Decision

1. From the foregoing, I have found that the opponent has established grounds of opposition under ss. 41 and 58 of the Act.

2. Accordingly, as a delegate of the Registrar I refuse registration of trade mark number 939149.

Costs

1. Both parties requested their costs in the matter. As there is nothing before me to indicate why costs should not follow the event I award costs against the applicant in accord with the Official scale under Schedule 8 of the Trade mark Regulations.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

22 February 2006