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

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
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’)
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.
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.
Before discussing Mr Worthley’s submissions, it is convenient to put these into context by first discussing the evidence.
The Evidence
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)
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 feature the mark MUNNS BUFFALO GREEN. A copy of an email of 22 July 2009, from Peter Hoffman to me, is attached hereto and marked Exhibit DJB 1. A copy of a draft version of the artwork for the redesigned packaging attached to the email, and featuring the mark MUNNS BUFFALO GREEN, is attached hereto and marked Exhibit DJB2.
Attached hereto and marked Exhibit DJB3 is a copy of an email of 26 August 2009, from me to "Products of Excellence" (one of the Applicant's distributors in New South Wales). A copy of the updated version of the artwork for the redesigned packaging attached to the email, and featuring the mark MUNNS BUFFALO GREEN, is attached hereto and marked Exhibit DJB4.
In September 2009, the Applicant obtained quotes for the manufacturing of new packaging, featuring MUNNS BUFFALO GREEN, from packaging manufacturers. In October 2009, the Applicant placed orders for 5kg and 15kg bags for the product. Attached hereto and marked Exhibit DJB5 are copies of order forms of 12 October 2009 and 28 October 2009, placing an order for 10,000 x 15kg bags with Pope Packaging, and an order for 10,000 x 5kg bags with Vic Pac.
In December 2009, the Applicant formally notified all distributors of the change of mark from MUNNS BUFFALO BOOSTER to MUNNS BUFFALO GREEN. Attached hereto and marked confidential as Exhibit DJB6 are:
a)        an email I sent on 9 December 2009 to Brad Whittingham (an employee of Fairbanks, the Applicant's Victorian distributor)
b)        an email I sent on 9 December 2009 to Ala Slater (an employee of Confast, another of the Applicant's New South Wales distributors)
c)        an email I sent on 14 December 2009 to Cameron Macklin (an employee of John Danks, a national customer and distributor of the Applicant's products)
d)        an email I sent on 14 December 2009 to Ian Milne, Joanne Ingram and Calvin Ross (employees of Santosa, the Applicant's Western Australian distributor)
The other declarations confirm the above. The order forms for the packaging referred to by Ms Bratchell refer to the trade mark by the words BUFFALO GREEN. Two examples of the artwork from a brochure attached to Ms Bratchell’s declaration are shown in reduced size below:
(‘AW-1’)
(‘AW-2’)
A copy of a product sheet showing the proposed packaging was attached to the emails sent to the distributors by the applicant and appears in reduced size below:
(‘AW-3’)
Discussion
Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
[…]
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
The application for registration is:
·Made in respect of a trade mark deceptively similar to that of the conflicting registration; and
·made in respect of similar goods; and
·has a priority date later than that of the conflicting registration.
Therefore unless subsection 44(4) is established as applying I must reject the application. In this regard I note that subsection 44(4) relevantly requires me to be satisfied that the applicant has continuously used the trade mark MUNNS BUFFALO GREEN for a period beginning before and ending on the priority date of the conflicting registration: 22 December 2009. Whether the applicant has continuously used its trade mark is to be gauged from the evidence that it has filed which is claimed to support such use.
While Mr Worthley submitted otherwise, I do not consider that the provisions of subsection 44(4) as applicable to this matter are directly analogous to the principles which lie behind the ownership of a trade mark which are relevant to considerations under section 58 of the Act. In order to establish a ground of opposition under the provisions of section 58, the opponent needs to establish all of the following:
·That the respective trade marks of the applicant and opponent are either identical or substantially identical[1],
·That the respective goods of both parties are the ‘same kind of thing’,[2]
·An earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the applicant[3].
[1] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495
[2] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75
[3] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413
The above principles contrast sharply with the concerns that the provisions of subsection 44(4) address which may be that the goods in question are of the same description (rather than ‘the same kind of thing’), that the relevant trade marks are deceptively similar (rather than being at least substantially identical) and, additionally, the issues of the use of the conflicting trade mark before the priority date by its owner do not here arise. Further, and most significantly, while a single instance of use of a trade mark may be sufficient to establish its ownership, subsection 44(4) requires that the use of the trade mark be continuous which dictates that the trade mark must be actively in trade and the goods or services in question be available for order both immediately and on an ongoing basis.
Drawing analogues from ownership principles and applying them to an issue such as the one before me under subsection 44(4) is thus a fraught process and should be approached (if at all) with great caution.
Therefore, while Mr Worthley invited my attention to various cases which deal with ‘use’ in the context of ownership of trade marks,[4] I do not consider these to be of great applicability as the principles with which they are concerned are different to those which face me here. If it is the applicant’s submission that it is the owner of a trade mark, this is the wrong occasion on which to pursue such arguments.
[4] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105; (2003) 58 IPR 452, Angela Christou v Touch Pty Ltd [2008] ATMO 24, Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73; (1984) 156 CLR 414, Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 166; (2001) 51 IPR 149; [2001] AIPC 91-713, and several others.
The crux of Mr Worthley’s submissions relies on the emails sent by the applicant to its distributors on or around 9 and 14 December 2009 advising that, “from 1 January 2010, Munns Buffalo Green Lawn Fertiliser will be replacing Munns Buffalo Booster Lawn Fertiliser. [There follows confidential details of pricing]. I have attached a copy of the artwork so you can see the finished bag”. The attached artwork is that which appears above marked AW-3.
Mr Worthley’s submission is that the emails constitute offers by the applicant to distributors made under the trade mark MUNNS BUFFALO GREEN on or about 9 December 20009 before the priority date of the conflicting registration: 22 December 2009, and are therefore a use of the trade mark.
In one sense, it is immaterial if it transpires that this purported use of the trade mark was in fact a use as it is obviously not a use on a continuous basis. The goods were not on either 9 or 14 December 2009 available for order on an ongoing basis by reference to the trade mark and would not be so available for a period of some two or three weeks.
So, if the emails constituted offers, the offers expressly stated that the trade mark MUNNS BUFFALO GREEN would not come into use until 1 January 2010. No acceptance of the offer could have been possible until 1 January 2010 – this does not correlate with the necessity that the trade mark be actively in trade on an ongoing basis as is required by the word ‘continuously’ within subsection 44(4). At best, the emails both foreshadowed the applicant’s future ongoing use of the trade mark, identified therein as MUNNS BUFFALO GREEN, and also referred the addressees to the trade mark on the packaging. I do not consider that I can be satisfied, on this basis, that the emails constituted a continuous use of the trade mark before the priority date.
I consider that the fallacy of assuming that such an offer does constitute continuous use in the sense required by subsection 44(4) can also be illustrated by varying the timeframe referred to in the emails: If the emails had instead said, “We will be changing the trade mark to MUNNS BUFFALO GREEN on 1 January 2011,” (ie in just over a year’s time) would that have constituted a continuous use of the trade mark in the course of trade? The answer is, of course, ‘no’.
The email from the applicant to its distributors may alternatively be viewed as stating that ‘the trade mark is not in use and will not be in use until 1 January 2010.’
On the above basis, the applicant has not satisfied me that it used the trade mark continuously before the priority date of the conflicting registration.
Moreover, having reviewed all of the evidence, I consider that the practical application of subsection 44(4) has an additional complexity to that discussed above.
Section 7 of the Act relevantly provides:
Use of trade mark
7.(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
It is apparent that the references within the emails to the trade mark MUNNS BUFFALO GREEN are references to the trade marks which appear on the artwork of the bags which were sent as an attachments to the emails. These have been submitted to support the applicant’s claims to have used the trade mark before 22 December 2009. The trade marks on the bags also have a similarity to those shown at AW-1 and AW-2, above, albeit without the graphical device of a buffalo’s head.
I take the emails, therefore, to be a statement of the applicant’s intention to use the trade marks which appear on the bag, the artwork for which appears at AW-3, rather than a statement of its intention to use the unadorned words MUNNS BUFFALO GREEN. Further, the chain of correspondence between the applicant and the designer Mr Peter Hoffman of Lightning Designs suggests that the trade mark appearing on the bags and in the brochure is the one which is relevant for consideration under subsection 44(4).
I consider that the evidence shows that the applicant uses at least two trade marks on the bag and in the brochure which it has submitted. The first trade mark (‘MUNNS and graphic’) is the word MUNNS, with a stylized letter M behind it which appears to be formed out of rather widened grass leaves; the second trade mark is the words BUFFALO GREEN with the letters ‘TM’ appearing beside them. The impression that the words BUFFALO GREEN are a trade mark separate from the trade mark MUNNS and graphic is gained from the words BUFFALO GREEN being rendered in:[5]
·A greatly increased font size
·A different colour
·Lower case, as opposed to upper case
·Arcuate form, and,
·Having the symbol ‘tm’ appearing beside them.
[5] See Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; (2004) 61 IPR 242; [2004] AIPC 91-983.
This observation is supported by the other evidentiary material submitted by the applicant:
·An order to Pope Packaging for [a number of] “Buffalo Green” 15kg bags
·An order to Pope Packaging for [a number of] “Buffalo Green” 5kg bags
·An invoice dated 18 March 2010 which refers to ‘Buffalo Green Lawn Fert.’
·Several sales analyses dated 30 November 2011 which refer to ‘Buffalo Green Lawn Fert.’
Thus, (setting aside the issue of the date of first use) in answer to the question as to whether I am satisfied that the applicant has used the trade mark MUNNS BUFFALO GREEN, the answer is rather that (if the applicant has used any trade mark) the applicant has not used the single trade mark MUNNS BUFFALO GREEN, it has used the trade mark MUNNS and Graphic and it has used the trade mark BUFFALO GREEN. This falls well short of qualifying the trade mark as applied for under subsection 44(4) if the prior continuous user requirement had also been satisfied.
Moreover, if the view is taken that the trade mark appearing on the bag and in the brochure is one single trade mark, it is not a use of the trade mark MUNNS BUFFALO GREEN without alterations and additions which do not affect the identity of the trade mark. The graphical element of the alphabetical letter M appearing in the trade mark and the differences in font sizes, cases and colours, all give rise to an impression of dissimilar identities when the trade marks MUNNS BUFFALO GREEN and that/those appearing on the bag or brochures are compared side by side.[6]
[6] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 per Windeyer J at paragraph 12:
For the above reasons I am not satisfied, therefore, that the applicant has established that it has continuously used the trade mark as applied for before the priority date of the conflicting registration and the trade mark must be rejected under subsection 44(1) of the Act.
Decision
Section 33 of the Act provides:
Application accepted or rejected
33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.
Note: For the grounds on which an application may be rejected see Division 2.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;
the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I reject application 1352823.
Iain Thompson
Hearing Officer
Trade Marks Hearings
14 February 2012

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

[2012] ATMO 16

14 February 2012