Munns Lawn Company Pty Ltd

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1352823(1) - MUNNS BUFFALO GREEN - in the name of Munns Lawn Company Pty Ltd.

Delegate:	Iain Thompson
Representation:	Applicant:  Stephen Worthley of Madderns
Decision:	2012 ATMO 16 s33 proceedings, ss44(1) & 44(4) - prior use not established as to either date or trade mark. Application rejected

Background

1. These proceedings under section 33 of the Trade Marks Act 1995 (‘the Act’) concern a trade mark application by Munns Lawn Company Pty Ltd (‘the applicant’) details of which appear below.

   Application No:         1352823
   Priority Date:             25 March 2010
   Goods:  Class 1: Fertilisers; manures

   Trade Mark:               MUNNS BUFFALO GREEN

2. An examiner of trade marks has recited grounds for rejection under subsection 44(1) of the Act in relation, inter alia, to the trade mark registration which appears below:

   Registration No:         1337950
   Owner:  A. Richards Pty Ltd
   Priority Date:             22 December 2009

   Goods:Class 1: Soils; turf soils; soil improvers; prepared soils; soil conditioners; soil wetting agents; preparations for soil treatment; fertilisers; lawn and garden fertilisers; fertilising preparations; manures; mulches; potting mixes; potting soils; and gardening products in this class

   Trade Mark:               BUFFALO GREEN

   (‘the conflicting registration’)

3. The applicant adduced evidence of the use of its trade mark which purports to show continuous use before 22 December 2009 (the priority date of the conflicting registration) and thus enliven the provisions of subsection 44(4) of the Act. However, the examiner of trade marks did not accept the evidence as establishing the prior continuous use of the trade mark. In view of the trade mark examiner’s advice that she intended to formally reject the trade mark, the applicant requested to be heard.

4. As a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant via teleconference in Canberra on 8 December 2011.  Stephen Worthley of Madderns represented the applicant.

5. Before discussing Mr Worthley’s submissions, it is convenient to put these into context by first discussing the evidence.

   The Evidence

6. The evidence comprises statutory declarations by:

   ·Peter John Everton - owner - Products of Excellence Pty Ltd (undated)

   ·Dallas Julie Bratchell - General Manager - Munns Lawn Company Pty Ltd (dated 1 December 2011).

   ·Dallas Julie Bratchell - General Manager - Munns Lawn Company Pty Ltd (dated 4 May 2011)

7. The declarations all attest to similar circumstances and I will quote Ms Bratchell’s earlier declaration:

   In about March 2009, the Applicant agreed with Bunnings Building Supplies to supply them exclusively with product under the trade mark MUNNS BUFFALO BOOSTER. The product would no longer be sold under that mark to other customers. The Applicant would instead sell the product to other customers using a different mark. Accordingly, the Applicant decided to use the mark MUNNS BUFFALO GREEN for sales to all other customers.

   Accordingly, in approximately July 2009, the Applicant arranged for an art designer, namely Mr Peter Hoffman of Lightning Designs, to redesign the packaging for the product to…