Newcastle Permanent Building Society Ltd v Allan Crew

[2009] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Newcastle Permanent Building Society Ltd to registration of trade mark application 1132137 (41) & 1132161 (41) - OUR TOWN and OUR TOWN NEWCASTLE - filed in the name of Allan Crew

Delegate:	Heath Wilson
Representation:	Opponent: Rebekah Gay of Shelston IP, Patent and Trade Mark Attorneys Applicant: Self-represented
Decision:	2009 ATMO 55 Section 52 opposition – grounds under sections 41, 59, and 60 of the Trade Marks Act 1995; Trade marks are capable of distinguishing; Intention to use trade marks; Reputation not sufficient for section 60 to be established; Opposition dismissed; Costs awarded against the opponent.

Background

1. On 29 August 2006, Mr. Allan Crew (“the applicant”) applied to register the following trade marks:

TM No.	Trade Mark	Class / Statement of Services
1132137	Our Town	Class: 41 All television production and entertainment services within class 41
1132161	Our Town Newcastle	Class: 41 All television production and entertainment services within class 41

1. The trade marks were advertised for possible registration in the Australian Official Journal of Trade Marks on 11 January 2007. On 18 April 2007, Newcastle Permanent Building Society Ltd (“the opponent”) filed a notice of opposition (“the notice”) to both trade marks under section 52 of the Trade Marks Act 1995 (“the Act”).

   Evidence

2. The parties filed and served evidence as set out below:

   Evidence in Support

   ·Statutory Declaration of Jeff Franks made 11 February 2008.

   ·Statutory Declaration of Matthew Hingston made 18 February 2008 (Annexures “A-F”).

   ·Statutory Declaration of Glenn Walker made 11 February 2008 (Annexures “A-O”).

   Evidence in Answer

   ·Statutory Declaration of Norman Allan Crew made 17 July 2008 (Exhibits “AC1-4”).

   Evidence in Reply

   ·Statutory Declaration of Francesca Suters made 4 December 2008 (Annexures “A-D”).

   Opponent’s Further Evidence

   ·Statutory Declaration of Tim Clarke made 24 April 2009 (Exhibits “TC1-6”).

3. Prior to the filing of this application, the opponent hired a marketing company Igloo Marketing Pty Ltd (“Igloo”), to promote/market the opponent’s “Our Town” trade mark in relation to financial services. Mr. Crew was a creative director of Igloo at this time and was officially removed from the position as director in November 2006. The opponent was advised by Mr. Crew to pursue the advertising campaign emphasising the trade mark “Our Town”. However, the opponent instead pursued an advertising campaign entitled “Here for Good” for their financial services. The relationship between Igloo and the opponent ended in September 2006.

4. In mid 2006, Mr. Crew (in an individual capacity), presented a proposal for a television series to the opponent about the NSW town of Newcastle named “Our Town”, seeking their financial support and sponsorship. The opponent refused to be involved in the applicant’s project. Mr. Crew applied for the trade marks in Class 41 on 29 August 2006 and was subsequently opposed by Newcastle Permanent Building Society Ltd.

   Grounds of Opposition

5. The notice cites grounds under sections 41, 42(b), 43, 44, 58, 59, 60, 61, 62(a), 62(b) and 62A of the Act. At the hearing, the opponent only pressed grounds under sections 41, 59 and 60 of the Act. I will deal with those grounds in the following decision. For the sake of completeness, I find that the remaining grounds of opposition have not been established.

6. I heard this matter on 8 May 2009 in Sydney as a delegate of the Registrar of Trade Marks. At the hearing, Rebekah Gay of Shelston IP, Patent and Trade Mark Attorneys appeared for the opponent. The applicant represented himself.

7. To succeed, the opponent bears the onus of establishing a ground of opposition cited in the notice on the balance of probabilities (Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]).

   Reasons

   Section 41: Trade mark not distinguishing applicant’s goods or services

8. Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 summarised the test for determining whether a trade mark is inherently adapted to distinguish:

   The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

9. The opponent submits that the trade marks OUR TOWN and OUR TOWN NEWCASTLE lack an inherent adaptation to distinguish the television and entertainment production services of the applicant. The written submissions refer specifically to subsection 41(6) of the Act; that the trade mark is not to any extent inherently adapted to distinguish the designated services from those of other persons. The opponent relies on the proposition that the phrase “Our Town” would be recognised specifically in the Newcastle region in NSW, and that it is a term in common descriptive use for those services.

10. In Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 (at 424) it was stated that:

    Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks [(1964) 111 CLR 511 at 515] - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

11. The onus of establishing the section 41 ground of opposition lies with the opponent. In support of this ground, the opponent has referred to the applicant’s evidence in the statutory declaration of Mr. Crew which states that the opponent does not appear to exclusively own the term “Our Town”. However, the fact that other traders in the Newcastle region use the term “Our Town” in different fields of business, does not necessarily mean that the phrase is unable to function as a trade mark.

12. The phrase “Our Town” by itself is not, in my view, a term that other traders in Newcastle would desire to use (without improper motive) in connection with similar services. In addition, the trade mark OUR TOWN NEWCASTLE in relation to television production and entertainment services, while containing the name of a major town in NSW, is not a term that other providers of television production services are likely to use in the ordinary course of business.

13. The applicant’s evidence consisting of White Pages listings and the ASIC extracts of other traders in NSW using the term “Our Town” as part of their business names does not establish that it is a term which is unable to distinguish the applicant’s claimed services. A trade mark need not be absolutely unsuggestive of the goods/services for which registration is sought, provided it does not amount to a normal description (as in Re Burroughs Wellcome & Co's Trade Mark (1904) 21 RPC 217). The opponent’s evidence has not established that the terms OUR TOWN and OUR TOWN NEWCASTLE have particular meanings for ordinary Australians beyond the dictionary definitions of the respective words. Those phrases may mean something to certain Newcastle residents, but I am not satisfied that the meaning is inherently apparent or that it has been established as a phrase that other traders providing those services would need to use.

14. Balancing the above considerations and the evidence before me, I am not satisfied that the opponent has discharged the onus of establishing that the trade marks lack an inherent adaptation to distinguish the applicant’s services from those of other traders in the marketplace. Therefore, I find that the ground of opposition under section 41 has not been established.

    Section 59

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or

    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

15. Under section 59, the act of filing an application for registration is prima facie evidence of the requisite intention to use the trade mark (see Aston v Harlee Manufacturing Co (1960) 103 CLR 391). As a result, the opponent bears the heavy burden of establishing a prima facie case of the applicant’s lack of intention to use the trade marks under section 59 of the Act, or otherwise producing sufficient evidence to shift the onus to the applicant.

16. Section 59 was nominated in the notice of opposition along with most other available grounds. Even so, the mere nomination of the section 59 ground cannot (by itself) shift the onus to the applicant (Medley Distilling Co v Croakers Gully (Aust) Pty Ltd (2000) 53 IPR 430), nor can the fact that an opponent questions the applicant’s intention to use in its submissions. The presumption of intention can however, be shifted by the opponent where the evidence readily gives rise to the drawing of an adverse inference and that evidence remains unchallenged and unrebutted by the applicant (See Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft (2002) 55 IPR 638).

17. It has been discussed by the Hearing Officer in Americana International Ltd v Suyen Corporation (2008) 75 IPR 596 [at 605] that:

    …the presumption the applicant enjoys of an intention to use the trade mark deriving solely from the act of filing the application is a prima facie presumption which can be rebutted by slight evidence.

    However, this evidence must be more than a questioning of the applicant’s capacity and supposition about its intentions based on the fact that the trade marks have not been used since the filing date.

18. The opponent’s further evidence dated 24 April 2009 (two weeks before the hearing) put the applicant on notice for the first time that its intention to use the mark would be challenged in terms of section 59. The opponent’s prior evidence did not support this ground. At this stage of the proceedings, the applicant was not legally represented.

19. The further evidence included correspondence between the opponent’s and applicant’s attorneys, regarding the Registrar’s request at the opponent’s instigation that the applicant produce documents [via section 202 of the Act] of “correspondence between the Applicant and any third parties relating to the television series to be called OUR TOWN...”. On 17 April 2009, the applicant stated that he did not have any documents to produce.

20. It might be inferred from the absence of these documents that the applicant had not done anything further with the proposal (and therefore the trade marks) since the filing date. However, mere non-use on the part of the applicant does not in itself imply a lack of intention to use the trade mark (Aston v Harlee; Torrag Pty Ltd v Pah Pty Ltd (2006) 70 IPR 349). In any event, the fact that the applicant has not provided any further evidence of use does not become relevant unless the onus is found to have shifted to the applicant to establish his intention to use the trade marks.

21. Relevant prior actions between the parties can be a source of inference under section 59 (Phillip Morris; Sapient; Danjaq LLC v Resource Capital (Aust) Pty Ltd (2004) 61 IPR 651; [2004] ATMO 18). While the opponent has not agreed to participate in the applicant’s television proposal (Matthew Hingston Declaration: Annexure F), this fact does not necessarily mean that the applicant had abandoned his intention to use the marks, as the proposal does list other possible contributors. These facts differ from those in the case of Rolewa Rentals Pty Ltd v Champagne Moet et Chandon (1985) 5 IPR 171 in which a major consideration was:

    …the fact that the mark was applied for on the basis of a mere possibility that it might be used if circumstances permitted, and having regard also to the fact that the applicant actually offered to sell the mark immediately its right to registration was challenged.

22. As the applicant did not secure the opponent as a contributor and has not produced evidence of any further use of the trade mark, the opponent’s submission was that the trade mark applications were merely a “speculative” venture. The opponent also refers to the case of “Pussy Galore” Trade Mark [1967] RPC 265. The facts in that case and the current matter differ in an important aspect. The applicant in that case was seeking licensees who would eventually use the trade mark as registered users. Conversely, the applicant here is seeking financial support for one possible use of his own trade mark. These actions combined with the proposal document itself are, in my view, more than ‘speculative,’ and indicate a fixed intention to use the trade mark.

23. The opponent’s submission that the applicant lacks the financial capacity to produce a television series is supposition with no supporting evidence. It may be inferred from the evidence that no further steps have been taken to secure the financial support of third parties. However, as stated in Intel Corporation v Magnatex International Pty Ltd (1998) 41 IPR 406 (at 412): “Failure on the part of the applicant to establish its capacity to use the mark is in no sense evidence of lack of such capacity or intention.” As a result, this proposition is not sufficient to shift the onus to the applicant to establish that intention.

24. In summary, I am not convinced that an inference exists here which shifts the onus to the applicant. It is not uncommon for traders to delay use of a trade mark pending the outcome of an application for registration (see Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1915 at 1921 (Reg)), in order to avoid any lost expenditure on the marketing of the trade mark. I am not satisfied, on the balance of probabilities, that the opponent has successfully shifted the onus to the applicant to establish its intention to use the trade marks under this ground. Accordingly, the ground of opposition under section 59 has not been established.

    Section 60

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

    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.

25. Under section 60, the opponent bears the onus of establishing the existence of a reputation in their “Our Town” trade mark in Australia before the filing date of the applications, 29 August 2006, such that the use of the applicant’s trade marks on the claimed services would be likely to deceive or cause confusion in the marketplace.

26. As the opposed applications were filed before 23 October 2006, the unamended provisions of section 60 of the Act (as set out above) are applicable in this matter (Health World Ltd v Shin-Sun (Aust) Pty Ltd (2008) 75 IPR 478 at 112-116; Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40), and the opposed trade marks must be substantially identical with, or deceptively similar to the opponent’s trade mark.

27. The usual tests for the comparison of trade marks are outlined in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 414-415):

    [the trade marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison

    On a side by side comparison, the applicant’s trade marks OUR TOWN and OUR TOWN NEWCASTLE are substantially identical to the opponent’s trade mark “Our Town”. This finding is despite the addition of the word “Newcastle” to the second trade mark, as it is merely a geographical indication of the city/region in Australia to which the trade mark relates.  

28. Details of the opponent’s claims to its reputation in the trade marks are contained in the statutory declaration of Glenn Walker, the Chief Manager of Credit Policy and Assurance for Newcastle Permanent Building Society Limited. He declares that the opponent adopted the trade mark “Our Town” in relation to financial services in 1979, and as the opponent is based in the city of Newcastle, it has a particularly lengthy history in that area. 

29. The opponent’s annual reports (Annexures H-O) feature the use of their “Our Town” trade mark for financial services. Some of the examples include “Our Town” in a descriptive sense as a specific reference to the city of Newcastle, rather than as a trade mark owned by the opponent. While this does not constitute use as a trade mark to distinguish the services of the opponent, there are additional examples of trade mark use including its appearance alongside the company logo and in annual reports referring to “our unique ‘Our Town’ service.” In the later annual reports (2004 and 2005), the phrase “Our Town” is mentioned, but it is clearly not being used as the company trade mark and is less prevalent than in previous annual marketing campaigns.

30. In McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127, Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

31. The evidence establishes that the opponent is a successful building society in Newcastle, but does not indicate the volume of sales as a result of the marketing of the trade mark. While there are examples of advertising initiatives featuring the mark in the past, the opponent’s evidence does not indicate the advertising expenditure on the “Our Town” mark, or the revenue gained as a result of this trade mark’s promotion. The use of the trade mark by the opponent has diminished in recent years, however “it is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use…”- (per Burchett J in Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 (FC)). In any event, even where use of a trade mark has been discontinued, residual reputation may support a ground of opposition under section 60 of the Act. The evidence does establish that the opponent enjoyed a reputation in the “Our Town” mark for financial services between the 1980s and early 1990s, but is given less emphasis in promotions after 1992. The issue is whether this residual reputation is sufficient for the applicant’s trade mark to deceive or cause confusion.

32. The strength of the opponent’s reputation seems to predominately rely on the esteem of the image projected by their “Our Town” trade mark in the past. A major part of this is the appearance of the trade mark in the opponent’s 1979 television advertisement featuring the song “Hey, this is Our Town.” This advertisement continued in various updated forms over the years 1982, 1987, 1994 and 2001. It is not the song itself which adds much to the reputation in the trade mark as it is mainly used in a descriptive sense, but its combination with the opponent’s brand and logo incorporating the words “Our Town” as a trade mark. By 2005, this television advertisement did not emphasise the “Our Town” element and by 2007 it had been replaced altogether by a new campaign named “Here for Good”.

33. A consideration of the similarity of the services is not required for an opponent to be successful under section 60, but it may affect the likelihood of deception or confusion in the Australian marketplace. In this case, the services are quite different, with a notional use by the applicant on all television production and entertainment services and the opponent establishing actual use in relation to financial services. The fact that the opponent used the medium of television (via advertisements) to promote their financial services does not mean that the services are similar. In the case of MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236; 42 IPR 561 the full Federal Court held that particular incidental services take their character from the whole. The nature of the services in the trade marks is markedly different as the character of the opponent’s services remains financial.

1. I am not satisfied that the opponent’s residual reputation in its trade mark is extensive enough for the use of these substantially identical trade marks in the entertainment field to deceive or cause confusion in the Australian marketplace. The likelihood of deception or confusion in the marketplace is low. I find that the reputation in the opponent’s trade marks before the priority date is unlikely to result in the use of applicant’s trade marks deceiving or confusing the Australian public. The ground of opposition under section 60 of the Act has not been established.

   Decision

2. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, 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.

   Note:  For limitations see section 6.

3. The opponent has not established a ground of opposition in this matter in relation to either trade mark application no. 1132137 or 1132161. The trade mark applications may therefore then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration of these trade marks shall not occur unless the appeal has been decided in favour of registration or discontinued.

   Costs

4. An award of costs has been requested in this matter. The opposition has been unsuccessful, and the applicant is therefore entitled to costs. Accordingly, I award costs against the opponent to the extent allowed under the Official Scale contained in Schedule 8 of the Trade Mark Regulations 1995.

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   23 July 2009