O'Brien Glass Industries Limited v Graeme Leslie Cleary

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by O'Brien Glass Industries Limited, trading as Windscreens O’Brien, to registration of trade mark application 865723(37) - ANY CAR ANY GLASS ANY WHERE - filed in the name of Graeme Leslie Cleary.

Delegate: Claudia Murray

Representation: Opponent
Mr Brian Elkington, Special Counsel, of Blake Dawson Waldron, Sydney
Applicant
Ms Linda Ryan

Decision:
1. Section 52 Opposition: registration refused - s 55(a)

2. Costs awarded against applicant

Background

Graeme Leslie Cleary (the applicant) filed trade mark application number 865723 on 12 February 2001. The subject of the application is the word trade mark:
ANY CAR ANY GLASS ANY WHERE
The application was filed in class 37 of the International (Nice) Classification of Goods and Services, for the following services: “Repair and replace auto glass”. No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against it, and it was advertised accepted for registration in the Australian Official Journal of Trade Marks on 26 July 2001.
On 15 October 2001, O’Brien Glass Industries Limited, under its trading name Windscreens O’Brien, (the opponent) filed notice of opposition to registration of the trade mark. Ten grounds of opposition were listed in the notice.
The opponent's evidence in support was filed and served some seventeen months later, and the applicant promptly responded with its evidence in answer. The matter then came to a hearing before me, as a delegate of the Registrar, in Canberra, on 21 January 2004. Mr Brian Elkington, of Blake Dawson Waldron, Sydney, represented the opponent by video link. Ms Linda Ryan represented the applicant by telephone.
Evidence
Evidence in support
The opponent’s evidence in support comprises a statutory declaration dated 26 February 2003, by William John Stephenson, the opponent’s Company Secretary. The declaration is accompanied by exhibits A to K.
Mr Stephenson gives a brief history of his company and its predecessors, which he declares have been registered and trading throughout Australia since 1930. He explains that the opponent provides services of replacement of windscreens and side and rear car windows, and automotive glass repair including repairing chips and cracks in windscreens. It also wholesales automotive glass.
Mr Stephenson goes on to declare that his company provides services in larger metropolitan areas through its service centres. It has sixty-five such centres throughout Australia, including four in the applicant’s home state of Western Australia. The opponent also provides a mobile service, owning many mobile service vans, of which nineteen service customers in Western Australia. In country areas, the opponent’s services are provided via eighty-seven authorised dealers, fifteen of whom are in Western Australia. This network was established in 1997, prior to which, a less formal network operated.
Mr Stephenson then documents the history of his company’s adoption of the trade mark ANY CAR. ANY GLASS. ANYWHERE, which he attests has been used continuously in all states and territories of Australia since 1996. He annexes to his declaration a copy of a “Research Report on the Development of a Communication Strategy – Creative Development”, dated April 1995, which was prepared by an advertising company for the opponent. The report details the process by which the opponent’s “brand statement” ANY CAR. ANY GLASS. ANYWHERE was formulated. Also annexed to Mr Stephenson’s declaration are various examples of promotional material, showing the mark in use, albeit almost always in a subordinate position in relation to the opponent’s primary trade mark, WINDSCREENS O’BRIEN. Mr Stephenson also gives the opponent’s substantial sales and advertising figures for the years since 1996, a “large proportion” of which he says relate to its use of the trade mark ANY CAR. ANY GLASS. ANYWHERE.
The last part of the Stephenson declaration chronicles the relationship between the applicant and the opponent, the substantive details of which are not disputed by the applicant. Briefly, Mr Cleary held a number of positions in different Western Australian branches of the opponent company during the period 1982 until 1990. He went on to purchase a company by the name of Wayne’s Windscreens, which was a wholesale customer of a subsidiary company of the opponent, Australian Autoglass, responsible for manufacture, warehousing and distribution of automotive glass sold to the wholesale market. Mr Cleary became an agent for Australian Autoglass in 1994, and was offered the opportunity to become one of the opponent’s authorised dealers when its formalized network was established in 1997. He declined this offer. It is the opponent’s belief that Mr Cleary would have had ample exposure to its ANY CAR. ANY GLASS. ANYWHERE trade mark, from the time of its first adoption, both in his capacity as a wholesale customer, and also as a member of the general public.
Mr Stephenson concludes his declaration with an explanation of how the opponent first became aware of the applicant’s use of the phrase ANY CAR ANY GLASS ANY WHERE, when it appeared in an advertisement for Wayne’s Windscreens in the February 2001 Yellow Pages. He annexes a copy of a letter, dated 1 February 2001, sent by then Company Secretary, John Hester, to Mr Cleary and his partner Geoffrey Bingham. The letter asserts the opponent’s ownership of the ANY CAR. ANY GLASS. ANYWHERE trade mark. On 12 February, Mr Cleary and his partner responded that they were not aware that the phrase was a registered trade mark, and they had contacted IP Australia, who confirmed that it was not. The opponent then proceeded to file, on 27 February, an application for its trade mark. When an adverse examiner’s report was issued on that application, the opponent discovered that Mr Cleary had already filed a conflicting application of his own, dated 12 February 2001.
Evidence in answer
The applicant’s evidence in answer comprises a declaration by the applicant, Graeme Leslie Cleary, dated 21 May 2003. Exhibits A to N accompany his declaration. Mr Cleary declares himself to be Sole Proprietor and Trustee of Waylon/Cleary Family Trust, trading as Mandurah Wayne’s Windscreen & Glass, Boddington Glass, Precision Tinting, Mandurah Boat Windscreen and Pinjarra Glass. He explains that he has solely owned Mandurah Wayne’s Windscreens & Glass since April 2000, and prior to that, in 1999, in partnership with Geoffrey Bingham and John Underwood. Mr Cleary briefly outlines the services of Mandurah Wayne’s Windscreens & Glass, which include repair and replacement of vehicle windscreens, side and rear vehicle windows, tinting of glass in vehicles and building, manufacture and repair of boat windscreens. He says that these services are provided from one premise in Mandurah Western Australia, with a mobile service covering a significant surrounding area. Mr Cleary points out that these services are provided in “Country WA, not the Perth metropolitan area”.
Mr Cleary explains that the phrase ANY CAR ANY GLASS ANY WHERE was incorporated into an advertisement for the Perth 2001 Yellow Pages, which was “jointly compiled” by himself and Mr Bingham. At no time did either of the parties recall the phrase as being a trade mark owned by the opponent. Mr Cleary confirms the chronology of events relating to the exchange of correspondence between the parties already documented in the opponent’s evidence. In explaining his position, he relies upon advice received from IP Australia that the disputed phrase was not a registered trade mark at the time the opponent wrote to complain of his use of it in the Yellow Pages. He advises that, although he fully intends to use the phrase in the future, should this opposition be unsuccessful, he has not used it in any form since the 2001 Yellow Pages advertisement. He also advises that as a result of the reorganisation of company ownership between himself and his partners in April 2000, his company no longer advertises in the Perth Yellow Pages.
Grounds of opposition
Mr Elkington indicated at the hearing that the opponent would be pressing its case in terms of sections 42, 58, 60 and 62(b). I will deal with the grounds mostly in that except that, as my decision under section 42 is dependent upon some of my findings under other sections, I will conclude rather than begin with that section.
Section 58 - ownership of the trade mark
Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. Mr Elkington argued in terms of section 58 that, in line with the findings of Holroyd J in Re Hick's Trade Mark (1897) 22 VLR 636 (the Hick's case), the opponent, not the applicant, was the owner of the trade mark. He based this upon evidence of prior use by the opponent of the substantially identical trade mark ANY CAR. ANY GLASS. ANYWHERE. He further argued that the applicant's and opponent’s services were certainly "the same kind of thing" (in terms of the Hick's case) as they were in fact identical.
In response, Mr Cleary’s declaration indicated his understanding of the concept of trade mark ownership was that “once a trade mark application has received initial approval, the applicant is the ‘owner’ of the trade mark. The onus is then on the opponent to provide evidence to the contrary." He did not dispute Mr Elkington’s claim that the trade marks at issue were substantially identical, nor that the services of interest to the parties were also the same.
Mr Cleary’s basic understanding of the presumption of ownership present in the Act is correct and, under different circumstances, it would have favoured his position as applicant for the trade mark. The wording of section 27, which specifies that a person who "claims to be the owner" may apply for the registration of a trade mark, demonstrates how this presumption of ownership operates in practice. "Ownership" under the present Act has the same meaning as "proprietorship" under the previous Act, the Trade Marks Act 1955 (see the Reader's Guide, page iii, of the Trade Marks Act 1995). In The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, Dixon J said, at page 627:
The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration. (Emphasis added.)
However, the Act also provides a process whereby such claims may be challenged, and a trade mark applicant’s prima facie status as trade mark owner is highly vulnerable to an opponent’s prior claim to ownership under common law:
The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing". (Emphasis added.) (Elkington, Hall and Kell Trade Mark Law in Australia, 2000, page 77)
Here, the opponent has provided convincing documentary evidence of authorship of its trade mark, in the form of the consultant’s report commissioned for it in 1995. Mr Stephenson attests that first use of the mark then occurred in 1996, and that it was used in various forms of advertising, including 1998 and 1999 Yellow Pages advertisements, for services identical to those of this application. Taken as a whole, the opponent's evidence displaces the applicant’s claim to ownership, which is based solely on the making of his application for registration.
Mr Cleary’s declaration states that he was not aware that the slogan he had chosen for the year 2001 Perth Yellow Pages belonged to the opponent. He suggests that such a phrase could easily be arrived at by “persons involved in the trade with no formal advertising or market research qualifications”, as there was little difference between it and other phrases used commonly in the trade, such as “we come to you” or “we bill your insurer direct”. I find his explanation rather less than convincing. A possibly more plausible explanation proffered by Ms Ryan at the hearing was that, although the applicant believed he had honestly happened upon the trade mark, he had, in fact, “subconsciously” absorbed it at some point from the opponent’s advertising.
I find the opponent has established its ground of opposition under section 58.
Section 60 - trade mark with a reputation in Australia
To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, nor be used in relation to closely related goods or services, in order to be able to be relied upon under this section.
I have already found that the applicant and opponent’s trade marks are substantially identical, according to the threshold test for section 60. Mr Elkington has submitted the evidence clearly demonstrates that, at the time Mr Cleary filed his application, the opponent’s slogan already had a strong reputation in the marketplace, such that the applicant’s use of a substantially identical slogan would undoubtedly lead to deception and confusion of the public. Mr Cleary, for his part, has pointed out various inadequacies in the opponent’s case for reputation in the slogan. He suggests that the sales and advertising figures provided, which do not differentiate between the opponent’s use of the slogan and its use of its primary WINDSCREENS O’BRIEN trade mark, are by no means reliable indicators of such a reputation. He also claims that, amongst West Australians, there was a general lack of recognition of the slogan as a trade indicator for the opponent at the time he filed his application. The opponent had the opportunity to respond to these claims, but chose not to do so.
On the evidence before me, I am not satisfied that the opponent has met its considerable burden of proof under section 60 (Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 (27 August 2003)). I find this ground of opposition to be unsuccessful.
Subsection 62(b) – application false in material particulars
Mr Elkington based his submission relating to this ground of opposition upon the applicant and opponent’s shared history, clinched by the applicant’s filing of his trade mark application in the face of the opponent’s letter asserting ownership by virtue of prior use. He said:
The Applicant claims to have independently coined the slogan ANY CAR ANY GLASS ANYWHERE. However, it strains credulity to assert that 2 parties conducting exactly the same business and operating in a common geographical area could independently conceive of exactly the same slogan, using exactly the same words in the same sequence, particularly when (1) the first party has been using the slogan for 5 years prior to “coinage” of the slogan by the second party and (2) the second party is a former employee of the first.
The Opponent asserts that the Applicant was fully aware of the Opponent’s use of the trade mark in relation to automobile glass services. The Applicant thought the slogan was a good one and “borrowed” it for use in his own business.
Therefore, it is submitted that, at the time he filed the application, the Applicant knew his claim to the proprietorship of the trade mark was false Therefore, the application should be refused under section 62(b).
As I have already explored above, Mr Cleary’s explanation for his actions, especially in the face of the 1 February 2001 letter from the opponent, leaves much to be desired. At best, I must infer that his understanding of the actual function and purpose of trade mark registration was in the nature of “a little knowledge being a dangerous thing”. Weighing all the circumstances of this case, and particularly noting his own submissions upon the subject, I find that, at the time of filing his trade mark application on 12 February 2001, Mr Cleary's claim to being the owner of the trade mark, as required by section 27, was incorrect. By his own explanation, Mr Cleary clearly misunderstood the basis upon which a trade mark application is made, being under the unfortunate impression that he was going to be able to effectively “gazump” the opponent’s claim merely by virtue of filing his application.
Under section 33, the Registrar must, after examination, accept an application, unless he or she is satisfied that the application has not been made in accordance with the Act. In such a case, the Registrar must instead reject the application. Mr Cleary's application, being made in the name of someone not entitled to be entered as an applicant for that trade mark, was not made in accordance with the Act. The Registrar therefore accepted the application on the basis of a representation, the "claim to ownership" implicit in that application, that was “false in material particulars”.
I find the opponent’s ground of opposition in terms of subsection 62(b) to be successful. I would stress however, that this is an unusual finding, and would by no means naturally follow every opponent's successful claim to ownership in terms of section 58, which is, in any event, the most appropriate forum in which to argue such issues. In practice, the Registrar has no reason, in most cases, to question the veracity of an applicant's claim to be the owner of a trade mark, at the time he or she accepts it. Further, the course of an ownership finding for an opponent will not necessarily reveal, as were revealed in this instance, the circumstances under which the opposed trade mark application was made.
Section 42 - use of trade mark contrary to law
Section 42 of the Act relevantly provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. Mr Elkington submitted that the applicant's use of his trade mark on the services specified in his application would be contrary to law under section 42. This was because such use would contravene section 52 of the Trade Practices Act 1974 (the TPA), section 62(b) of the Trade Marks Act 1995 (the Act), and constitute passing off at common law.
Section 52 of the TPA provides:
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
The applicant in this case is not a corporation. Mr Elkington may therefore have been better to argue this point in terms of the equivalent provision of Western Australia's Fair Trading Act 1987, which provides that a person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive. However, for reasons discussed below, this point need not be explored further.
A finding under section 42 of the Trade Marks Act 1995 requires, in effect, two separate, consecutive findings to be made. In most cases, only the second of these is within the Registrar's actual jurisdiction. The first is, to quote Madgwick J in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, at paragraph 22, merely an "expression of an opinion upon a hypothesis". However, the threshold to be met under section 52 of the TPA, its state equivalents, and the tort of passing off, is higher than that set by section 60 of the Act. Shanahan's Australian Law of Trade Marks and Passing Off, 3rd Edition, 2003 at page 598 states:
"Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice".
In Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431, Hill J quotes at paragraph 77, an earlier summary by Lockhart J:
Section 52 is not concerned with conduct where the risk of infringement is remote. The risk must be a real risk in a practical sense and in all the circumstances.

I have found above that the opponent has not made its case in terms of section 60. It follows that its evidence does not go to a case required to meet a higher threshold of misleading or deceiving, and Mr Elkington's brief submissions have not convinced me. Under these circumstances, whether or not I might postulate that the applicant has engaged in conduct that could be contrary to law, I am not able to form a view that there has been conduct that would be so contrary. (Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd, supra, paragraph 28.)
The situation is somewhat different in relation to subsection 62(b), where I have already made a decision under my jurisdiction in the opponent’s favour. In this case, although the decision is somewhat redundant under the circumstances, I find that, by virtue of being refused under subsection 62(b), use of the applicant’s trade mark would also be contrary to law, in terms of section 42. I find the opponent’s case under that particular aspect of the section to have succeeded.
Decision
Section 55 of the Act provides that, unless the proceedings are discontinued or dismissed, the Registrar must, decide either to refuse to register the trade mark, or to register it, having regard to the extent to which any ground on which the application was opposed has been established.
For completeness, I find that I have no basis to be satisfied that any of the grounds raised in the notice of opposition, but not argued at the hearing, have been made out. However, I have found the opponent has succeeded on three of the four grounds argued at the hearing. Therefore, subject to any successful appeal from my decision, I refuse to register trade mark application number 865723.
Costs
The opponent has sought and is entitled to its costs in this matter. Accordingly, I award costs according to the official scale, (set out in Schedule 8 of the Trade Marks Regulations 1995), against the unsuccessful trade mark applicant, Graeme Leslie Cleary.
Claudia Murray
Acting Deputy Registrar
Trade Marks Hearings and Legislation
29 April 2004

[2004] ATMO 22

29 April 2004

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Commercial Law

Statutory Interpretation

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