MIS Implants Technologies Ltd v More Group Pty Ltd
[2022] ATMO 215
•6 December 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MIS Implants Technologies Ltd to registration of trade mark application number 2103284 (class 10) - MGUIDE - in the name of More Group Pty Ltd.
Delegate: | Nicholas Butson |
Representation: | Opponent: Cornwalls Applicant: King & Wood Mallesons |
Decision: | 2022 ATMO 215 Trade Marks Act 1995 (Cth) – opposition under s 52 – s 58 considered – whether first user in Australia was manufacturer or distributor – s 58 established – registration refused |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] by MIS Implants Technologies Ltd (‘Opponent’) to the registration of the following trade mark:
Trade mark number: 2103284
Trade mark: MGUIDE (Trade Mark’)
Applicant: More Group Pty Ltd (‘Applicant’)
Filing Date: 14 July 2020
Specification: Class 10: Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Dental apparatus for paralleling; Dental drill bits; Dental implant apparatus; Dental instruments; Dental tools; Medical devices for dental surgery (‘Applicant’s Goods’)
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
The application for the Trade Mark was accepted for possible registration on the 12 October 2020, with acceptance advertised on 15 December 2020.
A Notice of Intention to Oppose was filed by the Opponent on 16 December 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 18 January 2021. A Notice of Intention to Defend was filed by the Applicant on 27 January 2021.
The Opponent filed Evidence in Support on 3 May 2021. Evidence in Answer was filed by the Applicant on 5 August 2021. The Opponent filed Evidence in Reply on 6 October 2021.
Following the evidence stages, the parties requested to be heard. Both parties filed an outline of submissions prior to the hearing. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 6 September 2022. Len Hickey from Cornwalls appeared on behalf of the Opponent. Craig Smith of Counsel and Bill Ladas, James Robb and Sarah Goddard from King & Wood Mallesons appeared on behalf of the Applicant.
I have decided this matter in my role as delegate of the Registrar of Trade Marks.
Evidence
Evidence in Support
The Opponent’s Evidence in Support is comprised of:
Declaration by Shlomi Magal (General Manager of the Opponent), made on 3 May 2021 with Exhibits 1-48 (‘First Magal Declaration’).
The First Magal Declaration details that the Opponent is an Israeli based research, development, manufacturing and sales company in the field of implant dentistry. It is stated that the Opponent supplies its goods through authorised distributors in different countries, who on-sell them to dentists. It is also stated that the Opponent does not manufacture ‘white-label’ goods for others to attach their own trade marks to, instead the goods are always marketed as being goods made by and associated with the Opponent. Mr Magal further declares that the Applicant is an authorised distributor of the Opponent’s products.
The declaration explains that the Opponent uses the trade mark MGUIDE, including in both plain word and stylised form, on a variety of dental implant goods that they manufacture and supply. These goods were developed in 2009 and sold into Australia in 2013 via the Applicant. Evidence is provided of a 2010 medical journal discussing the technology and a variety of other material showing use of the word MGUIDE including on goods, invoices, marketing and promotional material in Australia from 2013 and onward.
Mr Magal declares that he is not aware of any agreement relating to the Applicant having an ownership stake in the trade mark MGUIDE and that generally the Opponent’s distributors are only allowed to use it for the purpose of promoting and selling the goods made by the Opponent.
Evidence in Answer
The Removal Applicant’s Evidence in Answer comprises of:
Declaration by Jacob Gilmore (Director and Chief Executive Officer of the Applicant), made on 5 August 2021 with Exhibits JG-01 to JG-29 (‘Gilmore Declaration’).
Declaration by Ofra Stup (Principal Lawyer at Ofra Stup Adv & Notary), made on 4 August 2021 (‘Stup Declaration’).
The Gilmore Declaration sets out the Applicant’s history and details of its operations in the Australian marketplace, specialising in dental implants and related services, including a dental training academy and a production centre for templates and crowns.
The declaration states that in 2003, the Applicant was appointed as the exclusive distributor of the Opponent’s products in Australia pursuant to a verbal agreement between the parties. It is declared that the Applicant has distributed dental goods and services in Australia, including goods manufactured by the Opponent featuring trade marks such as MIS and MGUIDE from as early as 2004.
The declaration includes a variety of material stated to demonstrate use of the trade mark MGUIDE. The majority of the examples relied upon appear to be in relation or reference to the goods manufactured by the Opponent. Mr Gilmore declares that this is evidence of use by the Applicant who he states developed the brand in Australia. He further states that the Applicant differs from a mere distributor due to its actions, including the independent creation of marketing material, specific goods and associated support services.
Mr Gilmore states that due to the Applicant’s exclusive use of MGUIDE in Australia, the Applicant has acquired any reputation and goodwill associated with the trade mark. Due to these factors and the fact the Opponent has not operated or sold goods into Australia directly, Mr Gilmore states that the Applicant is the owner of MGUIDE in Australia.
Mr Gilmore also declares that at a meeting in 2003 a verbal agreement was reached between the parties. One of the terms was that the Applicant would establish ownership of the Opponent’s brands including MGUIDE in Australia. Mr Gilmore states that the Applicant was building the Opponent’s trade marks including MGUIDE up from scratch in Australia, taking on significant commercial risk and costs.
Mr Gilmore states that Mr Magal was not present at the 2003 meeting and due to changes in the ownership of the Opponent in 2016, may not have a clear understanding of the verbal agreement made between the parties at the 2003 meeting. In the Stup Declaration, Ms Stup, who was at the time acting as a lawyer for the Applicant and present with Mr Gilmore at the 2003 meeting, also provides an account of the terms of the verbal agreement.
Evidence in Reply
The Opponent’s Evidence in Reply is comprised of:
Declaration by Shlomi Magal made 5 October 2021 with Exhibits 49-59 (‘Second Magal Declaration’).
Declaration by Doron Peretz (Co-founder and previously Senior Vice President of the Opponent, currently retired), made on 6 October 2021 (‘Peretz Declaration’).
In the Peretz Declaration, Mr Peretz states that he attended a meeting in November 2003 with Mr Gilmore and Ms Stup. His recollection of that meeting is that commercial terms were discussed relating to the Applicant becoming an exclusive distributor of the Opponent's products, however at no point was it agreed that Mr Gilmore or the Applicant, would become the owner of Opponent’s trade marks in Australia.
The Second Magal Declaration further asserts that the existence of such an agreement is unlikely, as it is not akin to the business relationships the Opponent has with other distributors. In support of this, the Opponent has provided confidential examples of a variety of distribution agreements in other countries from as far back as 2002. The declaration also states that while the Opponent does allow some of its distributors the use of its trade marks on their products, under contract such use would cease if no longer appointed as a distributor.
Mr Magal also disputes the evidence put forward in the Gilmore Declaration such as that relating to the reputation and goodwill in MGUIDE being associated with the Applicant. This includes the creation of independent marketing by the Applicant, which Mr Magal refutes as featuring imagery or material made by the Opponent.
The declaration states that the Applicant has not used MGUIDE other than in relation to goods which have been manufactured and supplied to it by the Opponent, nor does the Applicant own the trade mark.
Grounds of Opposition, Onus and Relevant Date
The grounds of opposition nominated in the SGP were ss 42, 58, 60 and 62A. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 14 July 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.
Discussion and Reasons
Section 58
Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the original owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia (while holding an intention to use it), whichever is earlier. Once ownership in a trade mark is established, the mark becomes property and can be assigned or transferred to a subsequent owner.
To succeed under this ground of opposition, the Opponent must establish that:
the trade mark relied upon by the Opponent is identical or substantially identical with the Trade Mark;[4] and
the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used;[5] and
a person (other than the Applicant) has the earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[6]
[4] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[5] Re Hick’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[6] Settef SpA v Riv-Oland Marvle Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
My first consideration is whether the trade mark relied upon by the Opponent, is identical or substantial identical to the Trade Mark. I find the evidence provided by the Opponent demonstrates use of the identical trade mark, MGUIDE and/or a trade mark that has additions or alternations that do not substantially affect its identity (‘Common Law Trade Mark’).
My second consideration is whether the goods are the ‘same kind of thing’. The Applicant’s Goods include a variety of claims for broad dental goods. The Opponent’s evidence demonstrates use of the Common Law Trade Mark in relation to a variety of dental implant goods, including instruments and tools for such purposes (‘Dental Implant Goods’). In my opinion, these Dental Implant Goods fall within the wording of each and all of the broad claims in the Applicant’s Goods and would therefore include goods which are the ‘same kind of thing’. While the broad claims in the Applicant’s Goods may include other goods, any attempt by me to differentiate the Dental Implant Goods and the full range of goods covered in the Applicant’s broad claims would be arbitrary.[7]
[7] Body Tease v D & Y International [2002] ATMO 102 (Hearing Officer Skivington).
There is no dispute between the parties that an identical or substantially identical trade mark has been used in Australia prior to the Relevant Date in relation to goods which are the ‘same kind of thing’ as the Applicant’s Goods. There is clear evidence before me showing such use in the Australian marketplace from at least 2013. The question is whether the Opponent or Applicant has an earlier claim to ownership based on this use.
As set out in the evidence section above, the relationship between the parties is such that the Opponent creates the Dental Implant Goods bearing the Common Law Trade Mark overseas and provides or supplies them to the Applicant who is the sole source of those goods to third parties in Australia. With such use flowing through each party to some extent, the point of contention is who this earlier use is by and whether it demonstrates ownership by the Opponent or the Applicant. To this point:
The Opponent submits that it authored the Common Law Trade Mark and first used it in Australia by applying it to the Dental Implant Goods which they manufactured and sold into Australia via the Applicant as the distributor.
The Applicant submits the Opponent applied the Common Law Trade Mark to the Dental Implant Goods for them, which they sell in Australia. It is submitted that the Applicant is the owner due to being the sole source of goodwill and reputation in the Common Law Trade Mark in Australia. It is also submitted that the Applicant is the owner as there was a previous verbal agreement between the parties that the Applicant would take ownership of the Common Law Trade Mark in Australia.
Authorship and Use
Ownership of a trade mark can be established through authorship and use of a trade mark,[8] or, in the absence of use, a combination of authorship, the filing of an application with an intention to use the trade mark.[9] Authorship of a trade mark in respect of particular goods or services, depends not on conception of the trade mark, but on adoption of the mark with an intention to use it on relevant goods and services in Australia specifically.[10]
[8] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73, [21] (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).
[9] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[10] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
In the current matter, it does not appear to be disputed that the Opponent conceived of the Common Law Trade Mark independently of the Applicant. I find the evidence before me supports that the Opponent manufactures the goods and applies the Common Law Trade Mark to them, with the intention to sell them into the Australian market via the Applicant as an exclusive distributor. There is nothing to suggest that the Common Law Trade Mark was initially created or applied to the product at the behest of the Applicant. This conduct is further supported by the Opponent’s evidence of distribution agreements with companies in other countries, where it also operates and deals with other trade mark rights in this manner.
The Applicant submits that the authorship and use in Australia are instead its own because they are the exclusive source of the goods bearing the mark. However, in this respect I note the following observations by Windeyer J in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd:[11]
The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.
[11] [1967] HCA 51, [36].
I therefore find in both the sale of the Dental Implant Goods bearing the Common Law Trade Mark to the Applicant and in intentionally applying the mark to the goods with the intent of them being distributed in Australia via the Applicant, the Opponent has demonstrated evidence of first use and authorship in Australia.
Reputation and Goodwill
The Applicant submits it has a greater claim to ownership as it is the trader to whom the reputation and goodwill in the Common Law Trade Mark would be associated with in Australia. In doing so, the Applicant is relying upon Kraft Foods Groups Brands LLC v Bega Cheese Ltd (‘Kraft’),[12] where some factors from overseas jurisdictions were discussed relating to considerations of superior ownership in both unregistered trade marks and passing off actions. One consideration was the person to whom the buying public would associate the trade mark with and make complaints to.
[12] [Kraft Foods Group Brands LLC v Bega Cheese Ltd [2020] FCAFC 65, [131]-[132] (Foster, Moshinsky and O’Bryan JJ).
I agree that due to its sale of the goods, support, and related services provided, consumers may associate the Common Law Trade Mark with the Applicant to some extent. However, I would think this would be common and relatively similar with most exclusive distributors or retailers of highly specialist goods, and I do not think it follows that consumers would necessarily believe any products sold by such parties featuring a trade mark are owned by them. As such, I am not convinced this evidence establishes a clear dissociation from the Opponent’s established earlier authorship and use,[13] nor demonstrates the kind of positive evidence generally required to show that the Opponent has abandoned or parted with its title.[14]
[13] Bayer Pharma Pty Ltd v Farbenfabriken Bayer AG [1965] HCA 71, 23 (Barwick CJ).
[14] Aardwolf Industries LLC v Tayeh [2020] NSWSC 299, [45] (Rees J); Haddonstone Pty Ltd v Haddonstone Ltd [1994] ATMO 74 (Hearing Officer T.E. Williams); Martin Cellars Pty Ltd v Kies Pty Ltd [1993] ATMO 71 (Hearing Officer Thompson).
Regardless, this was just one of many factors briefly discussed in Kraft. Others include who first invented and affixed the trade mark to the product, as well as who maintained the quality and uniformity of the product. On the evidence before me, it is the Opponent who invented and affixed the Common Law Trade Mark to the Dental Implant Goods and would maintain the quality and uniformity of the product. These factors fall in favour of the Opponent.
I also note that the Applicant claims that it has without the involvement of the Opponent, manufactured and provided goods such as surgery drilling templates under the MGUIDE trade mark since 2016. The Opponent disputes this by submitting those templates are essentially a by-product of the Dental Implant Goods. Notwithstanding, any claimed manufacturing by the Applicant is after the initial 2013 date where first use in Australia has been demonstrated on goods of the ‘same kind of thing’ and as such, in my opinion, carries little weight in establishing a superior claim to ownership.
Verbal Agreement
The Applicant has also asserted that there was a verbal agreement in 2003 between the parties, which included a term that the Applicant would take ownership of the Common Law Trade Mark in Australia. The existence and terms of a verbal agreement are a question of fact, inferred from a combination of surrounding circumstances including conversations, documents and conduct.[15]
[15] County Securities Pty Limited v Challenger Group Holdings Pty Limited & Anor [2008] NSWCA 193, [7] (Spigelman CJ, Beazley JA, McColl JA).
In considering the personal accounts provided, it is important to note that human memory is often fallible and recollection self-serving.[16] This meeting occurred in 2003 over 17 years from the earliest declaration supplied by either party. Each person present, who has provided competing accounts, was either a founder or director of one of the parties or in Ms Stup’s case, under the employment of the Applicant.
[16] Watson v Foxman (1995) 49 NSWLR 315, 319 (McLelland CJ).
Even Ms Stup as a lawyer, has noted her account is only to the best of her recollection and merely recalls the substance of the agreement. Furthermore, her account includes a variety of terms which are conditional in nature, such as the Applicant taking ‘ownership of the brands’ after it has 'established and developed a local market for the Opponent’s goods in Australia’. In my opinion, even if there were sufficient evidence to establish such terms were agreed upon, it is unclear and uncertain whether the Applicant has met this rather vague and conditional criteria, as well as whether the terms relating to taking ‘ownership of brands’ included the transfer of ownership of any common law trade mark rights.
I have already made comment above on the conduct and relationship of the parties in relation to the use of the Common Law Trade Mark. While the Applicant may have created and invested in independent marketing material, provided training and more, I would not think these actions go so far above those of an exclusive distributor of a specialist product, who may gain substantially from the increased sales of such products due to these actions. Such actions and investment do not in my opinion, sufficiently infer the existence of the alleged terms of the verbal agreement, namely the Applicant’s ownership, or transfer of ownership to the Applicant, of the Common Law Trade Mark.
Considering the evidence before me including the accounts of the verbal agreement, as well as the relationship and conduct of the parties, I am not satisfied that the verbal agreement contained terms relating specifically to the ownership of the Common Law Trade Mark.
Conclusion
I am satisfied in intentionally applying the Common Law Trade Mark to the Dental Implant Goods with the intent and actual distribution of the goods in Australia through the Applicant, the Opponent has established an earlier claim to ownership of an identical or substantially identical trade mark on goods of ‘the same kind of thing’ as the Applicant’s Goods. The elements of the ground are therefore made out and s 58 is established.
Having found in favour of the Opponent under s 58 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all the grounds of opposition may be relied on in the event of an appeal from this decision.
Decision and Costs
Section 55(1) of the Act relevantly provides:
55 Decision
(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.
The Opponent has established the ground of opposition under s 58 of the Act.
As a delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. Should the Registrar be served with a notice of appeal before then, refusal of the Trade Mark shall not occur until the appeal has been decided or discontinued. Any disposition of the application should of course be in accordance with the court’s orders or direction.
Both parties have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant under s 221, in accordance with the amounts detailed in sch 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Butson
Hearing Officer
Delegate of the Registrar of Trade Marks
6 December 2022
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