OMS Investments Inc v Gone Enterprises Pty Limited

[2008] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by OMS INVESTMENTS INC. to registration of trade mark application 1029840(5) - GONE & Device - in the name of GONE ENTERPRISES PTY LIMITED.

Delegate:	Debrett Lyons
Representation:	Opponent:  Khajaque Kortian of Spruson & Ferguson, Patent & Trade Mark Attorneys Applicant: Not represented
Decision:	2008 ATMO 1 s. 52 opposition – s. 42(b) not established because no breach of ss. 52 or 53 of the Trade Practices Act ; no breach of the Copyright Act ; s. 43 not established because no secondary meaning implied by the trade mark; s. 44(1) not established because the opponent’s trade marks not deceptively similar to the trade mark under application; s. 58 not established because the evidence did not support a finding that a third party was the owner of the trade mark; s. 60 not established because the trade marks not deceptively similar; opposition failed. Costs : No order made.

Background

1. Gone Enterprises Pty Limited (‘the applicant’) applied to register a trade mark, details of which follow:

Application No.:	1029840
Priority Date:	15 November 2004
Goods :	Class: 5 Insect repelling devices including wearable insect repelling bands
Trade Mark :	(‘the trade mark’)

1. The trade mark was accepted for possible registration but a Notice of Opposition to registration of the application was lodged by OMS Investments Inc. (‘the opponent’).

2. The Notice listed grounds of opposition under sections 41, 42(b), 43, 44, 58, 59, 60 and 62 of the Trade Marks Act 1995 (‘the Act’).

3. Evidence was filed by the opponent in accordance with the Trade Marks Regulations 1995 (‘the Regulations’). The applicant did not file evidence and the matter was set down for a Hearing in Sydney on 15 August, 2007 before me, Debrett Lyons, a delegate of the Registrar of Trade Marks.

4. At the Hearing, the opponent was represented by Khajaque Kortian, legal practitioner, with Spruson & Ferguson, Patent & Trade Mark Attorneys. The applicant was not represented and did not make written submissions.

   Evidence 

5. The evidence in support of the opposition comprised:

   -Statutory Declaration of Martin Eric John Morgan made on 12 April 2006 and Exhibits;

   -Statutory Declaration of Khajaque Kortian made on 18 April 2006 and Exhibits;

   -Statutory Declaration of Khajaque Kortian made on 18 April 2007 and Exhibits;

   -Statutory Declaration of Duncan Raleigh Gilbert made on 2 May 2007 and annexures.

6. As I said, no evidence in answer was filed by the applicant.

   Submissions and Reasoning

7. At the Hearing, Mr Kortian indicated to me that he would only be making submissions in relation to sections 42(b), 43, 44(1), 58 and 60 of the Act. Having overall regard to the opponent’s submissions, it is logical to start with the ground of opposition under section 44.

Section 44

1. Section 44(1) of the Act states:

   44  Identical etc. trade marks

   (1)Subject to subsections (3) and (4), and 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.

1. To establish this ground the opponent must show to my satisfaction that it (or indeed, a third party) owns a registered or pending trade mark which:

   ·    has an earlier priority date than the application;

   ·    is substantially identical or deceptively similar to the trade mark of the application;  and which

   ·    has a specification of goods or services which is similar or closely related to that of the application.

2. The opponent relies upon the following trade mark registrations:

   -Registration No. 714542  BUG-B-GON

   -Registration No. 715154  BINDII-B-GON

   -Registration No. 714546  WEED-B-GON

   -Registration No. 714544  FLEA-B-GON

   -Registration No. 715153  SLUG-B-GON

   -Registration No. 927234  GRUB-B-GON

   (‘the –B-GON Trade Marks’)

3. Full details of the –B-GON Trade Marks follow:

MARK:	BUG-B-GON
NUMBER:	714542
DATE:	6 August 1996
CLASS:	5
GOODS:	Insecticides for home and garden use

MARK:	BINDII-B-GON
NUMBER:	715154
DATE:	14 August 1996
CLASS:	5
GOODS:	Pesticides

MARK:	FLEA-B-GON
NUMBER:	714544
DATE:	6 August 1996
CLASS:	5
GOODS:	Insecticides, including flea-killers

MARK:	SLUG-B-GON
NUMBER:	715153
DATE:	14 August 1996
CLASS:	5
GOODS:	Pesticides

MARK:	GRUB-B-GON
NUMBER:	927234
DATE:	16 September 2002
CLASS:	5
GOODS:	Preparations for destroying vermin; insecticides; fungicides; herbicides; insecticides for residential and agricultural use

1. The opponent did not argue that the trade mark of the application is substantially identical to any of the –B-GON Trade Marks.  Instead, it submitted that the trade mark is deceptively similar to each of the –B-GON Trade Marks, but emphasized the similarity with the BUG-B-GON trade mark.

2. The method of comparison of the trade marks to determine deceptive similarity was discussed by the Full Bench of the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at paragraphs 40–42 , as follows:

   There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

   "But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

   In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."

   Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

   "On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions."

   Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade.

3. The opponent submitted that the assessment of deceptive similarity entailed examination of the manner in which buyers of the relevant goods would behave and the course of business in which those goods are sold.  In particular, it argued that the target market included consumers seeking pesticides/and insecticides and pest/insect repellent bands; that the target market included hardware and department store customers; and that the goods are inexpensive and are purchased without serious consideration.  Within that context, the opponent submitted that the concept of “imperfect recollection” played a greater role and in that regard it was not without significance that the opponent had registered and used a family of –B-GON Trade Marks, the dominant feature of which was phonetically identical to the trade mark of the application.

4. I have taken those submissions into account.  I also observe that:

   -the trade mark of the application incorporates the device element of a cartoon mosquito;

   -the “O” of the word GONE has been replaced by the popularly recognized prohibition symbol , ;

   -the common element of the opponent’s trade marks is –B-GON ( “be gone”), not –GON (“gone”);

   -there is a level of distinction in the meaning of the word “gone”, compared with the expression “be gone”;

   -in relation to insecticides and similar goods, “be gone” and “gone” are words having a level of adaptation to describe the nature or quality of the goods (see Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA; Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261 at 269).

   I consider all these observations to mitigate against the likelihood of confusion or deception.  On balance I find that the trade marks in question are not deceptively similar.

5. Accordingly, the ground of opposition under section 44(1) of the Act has not been established.

Section 60

1. Section 60, in its unamended form relevant to this opposition, stated:

   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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

2. It is for the opponent to point to a trade mark, whether registered or in common law use, which:

   • is either substantially identical with, or deceptively similar to, the trade mark of the application

   ·before the priority date, had acquired a reputation in Australia

   • use of the applicant’s trade mark would lead to deception or confusion.

3. Since I have already found that none of the opponent’s trade marks is deceptively similar to the trade mark of the application, this ground of opposition is not established.

   Section 42

4. Section 42(b) of the Act provides:

   42  Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)…

   (b)its use would be contrary to law.

5. The opponent argued that use of the trade mark would breach, amongst other laws, sections 52 and 53 of the Trade Practices Act 1974.  It was the opponent’s submission that it enjoyed a significant reputation in the –B-GON Trade Marks in respect of insecticides and similar goods, with the consequence that a not insubstantial number of consumers confronted with the use of the trade mark would identify the origin of those goods to be the opponent or its licensees, or would be misled into thinking that there was an association or affiliation between the applicant’s goods and the opponent.

6. Section 52 of the Trade Practices Act 1974 states:

   Misleading or deceptive conduct

   (1)A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

7. The opponent’s submission, so far as it uses the language of section 53, is a muddled amalgam of subsections 53(c) and (d), but I am prepared to treat it as relying on one or other of those subsections.

8. Section 53 of the Trade Practices Act 1974 states in part:

   False or misleading representations

   A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

   … …

   (c)represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

   (d)represent that the corporation has a sponsorship, approval or affiliation it does not have;

9. To succeed under the section 42(b) ground of opposition, the opponent must show that the applicant’s use would breach one or more of sections 52, 53(c) or 53(d) of the Trade Practices Act (Advantage Rent-a-Car Inc v. Advantage Car Rentals Pty Limited (2001) 52 IPR 24).

   Section 52 TPA

10. In the case of S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd [(1998) 43 IPR 581 the Full Federal Court at 587–588 summarized the principles applied in determining a breach of section 52 in the following words:

    Section 52 creates what Fox J in Brown v Jam Factory Pty Limited (1981) 53 FLR 340 at 348 referred to as "a norm of conduct". Where that "norm" is not observed, a cause of action may arise under s 82 of the Act in a person who suffers loss or damage thereby.

    Section 52 operates in a variety of situations. It may not be limited to cases where the conduct complained of is a misrepresentation although that is the normal case which presents itself: Henjo Investments Pty Limited v Collins Marrickville Pty Limited (1988) 79 ALR 83 at 93 per Lockhart J.

    Where the conduct claimed to be misleading or deceptive involves what is said to be a misrepresentation a number of principles applicable are well established. These were summarised in Equity Access Pty Limited v Westpac Banking Corporation (1990) ATPR 40-994 at 50,950-1 in a passage which has been followed in many cases and which was applied by the learned primary judge. We would restate the applicable principles relevant to the present case as follows:

    1. There will be no contravention of s 52 unless the error or misconception which occurs results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 199-200 per Gibbs CJ and at 209-211 per Mason J; Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 at 91; Tobacco Institute of Australia v Australian Federation of Consumer Organisations (1993) ATPR 41-199 and cf Argy v Blunts & Lane Cove Real Estate Pty Limited (1990) 26 FCR 112 at 132.

    2. Conduct will be misleading and deceptive if it leads into error: Parkdale at 198.

    3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deceiving regardless of whether it is less or more than 50%: Global Sportsman at 87.

    4. Conduct causing confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products or services might have come from the same source is not necessarily misleading and deceptive conduct: Parkdale at 200; Bridge Stockbrokers Ltd v Bridges (1984) 57 ALR 401 at 413 per Lockhart J; Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177.

    5. In a case such as the present an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products: Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202; BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363.

    6. Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive: Parkdale at 197 per Gibbs CJ; Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 223 per Stephen J; Global Sportsman at 88. Logically, a finding that conduct had been intentionally engaged upon will be irrelevant in determining whether that conduct is misleading or deceptive. It may perhaps be imagined that conduct engaged upon with the intent to mislead or deceive may fail in its purpose and not be found misleading or deceptive. Nevertheless, where the intention to mislead or deceive is found, it logically would be likely that a court would more easily find that the conduct was misleading or deceptive: cf Australian Home Loans Ltd v Phillips (1998) ATPR 41-626 and New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549 at 558. It is unnecessary in the present case to consider the question whether a finding of intention to mislead or deceive can have relevance in other ways to issues such as remedies.

    7. In many cases it will be necessary to consider the class of persons to whom the representation was directed: Parkdale at 199 and Taco Bell at 202. To the extent that it is here necessary so to do that must be the class of persons interested in purchasing magazines concerned with triathlon sport.

    8. There is no proposition of law to the effect that intervention from erroneous assumption between conduct and misconception destroys the necessary chain of causation with the consequence that the conduct cannot be regarded as likely to mislead or deceive: Taco at 200; Campomar Sociedad Limitada v Nike International Ltd (1998) 156 ALR 316 at 344-5.

    9. The test of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective one for the Court to determine. It is ultimately a question of fact.

11. It is useful to first assess the reputation in Australia of the –B-GON Trade Marks. To engage the operation of section 52, that reputation must exist at the priority date of the application, 15 November, 2004. Martin Morgan is the General Manager of Scotts Australia Pty Limited, a wholly owned subsidiary of The Scotts Miracle Gro Company. Mr Morgan declares that he is authorised to make his declaration on behalf of Scotts Australia Pty Limited. The records to which he has access are those of Scotts Australia Pty Limited. Mr Morgan goes on to declare that the opponent is also a wholly owned subsidiary of The Scotts Miracle Gro Company. From this information it unfolds that Mr Morgan has no authority to make statements on behalf of the opponent, a sister company within the same group of companies. I remain mindful of that.

1. Mr Morgan declares that since “about January 2001 Scotts Australia Pty Limited has under license from the opponent exclusively manufactured, distributed and sold throughout Australia a pesticide product having a horticultural application in the form of a “ready‑to‑use” spray bottle under or by reference to the trade mark BUG-B-GON”.  He goes on to explain that from May 2001 to late 2004, Scotts Australia Pty Limited sold another pesticide having a horticultural application in the same format under the BINDII-B-GON trade mark.

2. Products bearing the BUG-B-GON and BINDII-B-GON trade marks have been sold throughout Australia on a wholesale basis to retailers of hardware suppliers including Bunnings, as well as to general retail stores such as Woolworths and Coles (Morgan, paragraphs 13 & 14).

3. Allowing that “late 2004” might mean 15 November 2004 or later in that year, the evidence of reputation of the –B-GON trade marks is  limited to slightly less than four years’ use of two of the opponent’s trade marks on pesticides for horticultural, rather than personal, use.  I baulk at the opponent’s claim to use of a “family” of trade marks in Australia at the priority date, but what concerns me more is the actual nature of the opponent’s goods which were in use in Australia up until 15 November 2004.  Exhibit MM-1 to Mr Morgan’s declaration includes a February 2002 media release entitled “Don’t let garden pests bug your plants” and refers to a new DEFENDER BUG-B-GON marked product.  It is a 750ml spray bottle containing an insecticide for dealing with aphids, mites, thrips and caterpillars which all affect indoor and outdoor plants. I note that the press release was not issued by Mr Morgan’s company but by “The Scotts Company”, however, I am willing to assume that the press release forms part of the records of Mr Morgan’s company.  Exhibit MM-1 includes a 2002-3 product catalogue from Mr Morgan’s company which shows use of two trade marks, DEFENDER, and BUG-B-GON, distinguished from each other by font, size and layout.  An image of the product is shown below:

4. Moreover, the same catalogue shows that the trade mark DEFENDER is shared by a range of products which all bear further material, either trade marks such as BINDII-B-GON or HOME DEFENCE, or more descriptive matter such as SNAIL & SLUG PELLETS or WEED CONTROL.

5. Exhibit MM-2 is described by Mr Morgan as “a redacted table setting out for each of the financial years 2001 - 2002 to 2004 – 2005 Scotts Australia’s approximate year-to-year gross wholesale sales in Australia of the Scotts Australia Products”.  Those goods he had previously defined in his declaration as the BUG-B-GON and BINDII-B-GON goods already described above.  Certain sensitive information has already been edited from the table so I understand that there is no issue of confidentiality in relation to the sales figures which remain.  In 2000, total sales were $207,204.  In 2001, sales exceeded $415,000.  Between 2001 and the priority date, sales then declined annually and dramatically, so that in 2004 total sales were $85,008.  Although outside the relevant period, sales in 2005 of BINDII-B-GON product was a mere $213.

6. It is difficult to reconcile Exhibits MM-1 and MM-2 in so far as the February 2002 media release heralds the BUG-B-GON product as “new”, whereas Exhibit MM-2 purports that in 2000 and 2001 there were sales of several hundreds of thousands of dollars.

7. Giving this evidence its appropriate weight, I am required to decide whether the use of the trade mark by the applicant is conduct likely to mislead or deceive –i.e. - is there a real or not remote chance or possibility of misleading or deceiving (per Global Sportsman case, supra) – having regard to the class of persons to whom the representation will be directed (per Parkdale and Taco Bell cases, supra).

8. Mr Morgan declares that in his experience he is not aware of any third party using trade marks bearing the suffix –B-GON or –GON or similar, in relation to insecticides.  He also states that in his experience “pesticides, insecticides as well as personal insect repellents are commonly offered for sale, sold and distributed by general retail stores, as well as hardware supply stores”.

9. I accept Mr Morgan’s evidence in both those respects, but I must balance it against the following countervailing factors:

   -my earlier finding that the trade mark of the application is not deceptively similar to, amongst others, the BUG-B-GON or BINDII-B-GON trade marks for the purposes of the Trade Marks Act, a finding of continuing influence under section 52 of the Trade Practices Act.

   -my previous observations about the manner in which the opponent’s trade marks are actually being used, not least the way in which the  –B-GON Trade Marks are used in connection with another  trade mark, DEFENDER, under which an extended line of goods are marketed and sold.

   -my observation that whilst the goods of the application are ‘insect repelling devices including wearable insect repelling bands’ - goods that repel or kill insects – and the opponent’s goods are largely for killing or repelling insects, their commonality is at this linguistic level. What matters for section 52 is the perception of the consumer to the goods before him and in that regard the evidence shows that the applicant’s goods are exclusively wrist bands to be worn as a personal mosquito repellent, whilst the opponent’s goods are for treating indoor and outdoor plants to keep them insect free.

   -the possibility of further diminution of confusion if consumers are aware of the DEFENDER line of goods since those goods can all be characterized as for use in and around the garden and home.  None are in the nature of personal insect repellents.

10. The finding I make is that the relevant member of the public might at most be given cause to wonder whether the two products could have come from the same source.  As noted in the Parkdale case, cited above, that is not necessarily misleading and deceptive conduct. With this in mind and having regard to the fact that section 42(b) of the Act requires proof that the applicant’s action would (rather than merely could)  breach the Trade Practices Act, the only conclusion open to me is to find that there is no breach of section 52.

    Section 53 TPA

11. So far as section 53 of the Trade Practices Act is concerned, there is no evidence before me that the applicant has positively represented that it enjoyed the sponsorship or approval of the opponent, or had some affiliation with it. That leaves open simply the enquiry as to whether by using the trade mark it was somehow implying a representation of that kind. Again, that implication could only arise if the consumer had a sufficient awareness of the opponent’s goods through their use before the priority date and I have already found against the opponent on that point. There is nothing to suggest the there would be a breach of section 53 of the Trade Practices Act.

    Copyright Act

12. The opponent made a rudimentary argument for breach of the Copyright Act 1968, premised on the assertion that another person was the owner of the artistic work in the trade mark. However, for reasons which are made clear under the section 58 analysis which follows directly below, I consider that argument unsustainable and requiring no further discussion.

13. Consequently the opponent has not established its ground of opposition under section 42(b) of the Act.

    Section 58

14. Section 58 of the Act provides:

    58        Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:    For applicant see section 6.

15. The opponent submitted that its evidence shows that the relationship of the applicant to the true trade mark owner was that of a local distributor or proposed distributor of the GONE insect repellent band. The opponent submitted that the true trade mark owner was a U.S. company by the name of GONE Ltd and that the applicant was not the owner of the trade mark for the purposes of section 58 of the Act.

16. Exhibit KK-1 to Mr Kortian’s second declaration shows a product bearing the trade mark of the application. The reverse side of the product packaging carries the statement: Manufactured by GONE Ltd.  Made in USA.  Imported by Scottken Pty Ltd Perth WA. 

17. Exhibit KK-2 to that declaration is said to be print-outs from the website at although I notice that only two of the four pages annexed are clearly shown to come from that website.  The other two pages I disregard since they are not introduced or explained in any way.  The admissible pages are the homepage and an enlarged version of the homepage, picking out the text.  The textual information there does not assist me in determining who is the owner of the trade mark.

18. Duncan Gilbert is a private enquiry agent who was engaged by the opponent’s representatives.  He declares that he was briefed to investigate the relationship between the applicant and Scottken Pty Ltd.  Mr Gilbert engaged a director of Scottken in conversation under a pretext to “get in contact with Gone Enterprises and its principal Mr Katsukous”.  Mr Gilbert was informed that Mr Katsukous “was previously associated with Scottken through the company known as ‘Gone Enterprises Pty Ltd’, but he wasn’t a good operator and we have subsequently severed ties with him … Scottken is the head licence owner of the GONE insect repellent wrist band and has the right to distribute those products in Australia and from Australia to seven other countries”.

19. In the evidence before me, there is only one other piece of information worthy of  mention.  Mr Gilbert states that for the purpose of his investigation, the opponent’s representatives provided him “with a copy of an application under the APVMA for approval of an insect repellent wrist band.  Now shown to me and marked Exhibit “DRG-1” is a print-out of that application for approval by Scottken”.

20. Exhibit DRG-1 shows what is described as an Application Summary for Application No. 37470 to the Australian Pesticides & Veterinary Medicines Authority (APVMA) for registration of a peppermint oil slow release plastic band to assist in repelling mosquitoes from the wearer.  The product name is given as “GONE INSECT REPELLENT BAND” and the applicant is Scottken Pty Ltd, trading as Blindforce Interior Designers.

21. At the Hearing, Mr Kortian sought to introduce additional evidence in the nature of further printouts from the website and historical company extract information for Gone Enterprises Pty Ltd available from the Australian Securities and Investments Commission (ASIC).  He petitioned me to accept that these were both pieces of publicly available information to which I could have recourse.

22. Regulation 21.17 states that “evidence that is given in writing in any proceedings before the Registrar must be in the form of a declaration”.  The additional evidence referred to the preceding paragraph was not in a declaration or other sworn form.  Under regulation 21.17 it is inadmissible.  The question is whether it is in this case an appropriate use of my discretion to consider matters of public record to which my attention has been drawn, or which might otherwise assist me in reaching my decision.

23. It is within the nature of this Tribunal’s powers to consider extrinsic, but relevant, evidence where the circumstances justify. The proper approach in my assessment is to make an assay of the evidence appurtenant to section 58 which was properly admitted to the record before considering any extrinsic evidence. The evidence of record was summarised in paragraphs 44 – 48.

24. The statement on the packaging, Manufactured by GONE Ltd.  Made in USA.  Imported by Scottken Pty Ltd Perth WA, tells us only so much.  The product is made in the United States.  It is manufactured by a company other than the applicant.  It is imported into Australia by a company other than the applicant.  The implication is that the manufacturer is an American company however “Ltd” or “Limited” are not incorporation styles under US law.  The packaging would seem to be printed locally since the importer appears from its incorporation style and address to be an Australian company.

25. As stated before, the text at the homepage for does not help me. The trade mark appearing at the homepage is identical to the trade mark of the application. The gTLD, “.com”,  of the domain name, goneinsectband.com, is so internationalised that its once US based connotation has been all but lost and nothing can be read into the location of the website operator or its products from the .com extension.

26. The investigator’s report, so far as it exhibits the Application Summary to APVMA, tells us that another company, Scottken Pty Ltd, has sought registration of a product which in name and description must reasonably be the wrist bands at issue, branded with the trade mark at issue.  It is undated.  Of itself, it tells us nothing of any connection (should one exist) between Scottken Pty Ltd and the applicant, or Scottken Pty Ltd and GONE Ltd.  The APVMA approval is pending and I must assume that at the date of Mr Gilbert’s declaration, 2 May, 2007, the product was not on the Australian market.  Statements made to Mr Gilbert in conversation with the director of Scottken Pty Ltd confirm that.

27. Mr Gilbert’s report, so far as it repeats the conversation between himself and that director, makes reference to a Mr Katsukous, purportedly the principal of the applicant.  I note that there is no reference anywhere else in the evidence on record to a person of that name, either directing the actions of the applicant, or in any other regard.  The reported statement the “he [Katsukous] was previously associated with Scottken through the company known as ‘Gone Enterprises Pty Ltd’ … and we subsequently severed all ties” is so vague as to not assist me either to understand any legal connection between the companies or their officers, or to better assess whether or not the applicant is the owner of the trade mark.

28. It might be noted that the claim that “Scottken is the head licence owner of the GONE insect repellent wrist band and has the right to distribute those products in Australia” stands uncontradicted by the applicant and might of itself suggest the existence of a third party owner of the trade mark located overseas who had an intention to use the trade mark in Australia on goods to be sold by a local distributor and licensee of the trade mark.

29. The next exercise before me is to test whether the law on section 58 can be adequately applied to these facts on their own. The principles governing a claim to ownership of a trade mark were established by Dixon J in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601, where his Honour stated at 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.”

30. Authorship in that context means the origination or first adoption of the sign as and for a trade mark (Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399). Accordingly, a person can be the author of a trade mark without necessarily being its creator. A person may also be the author even if the mark has been copied from another; again, the author need only be the first person to have applied the mark in Australia.

31. A person might also be the proprietor of a mark, if at the priority date of another’s application, they were entitled to the exclusive use of the trade mark under the common law.  At common law that is the person who first used the mark in Australia (Malibu Boats West, Inc v. Catanese 180 ALR 119; Shell case, supra) but, as noted already in paragraph 54, there had been no Australian sales at the priority date, 15 November, 2004.

32. Applying this law to the evidence of record does not in my view lead to a compelling conclusion.  Other, potentially cogent, evidence is open to me and for this reason I consider it right in this case to exercise my discretion in favour of the opponent and in the public interest by taking into account information publicly available and reasonably linked to the enquiry before me.

33. The ASIC company extract on the applicant company provided to me by Mr Kortian shows that the company is registered in Western Australia. It shows that it was incorporated on 1 October, 2004, six weeks before the priority date.  The director and company secretary is Nicholas Koutsoukas.  One of the principal shareholders is GONE ENTERPRISES NEW ZEALAND.

34. The additional print-out from provided to me by Mr Kortian is the “Company Info” drill-down page.  It states: “GONE Ltd. was developed in Long Island, New York, in 1994” and that the efficacy of the product was tested in Canada, the U.S. and Australia.

35. That completes and takes full cognizance of all the opponent’s evidence in support of its section 58 ground of opposition.

36. There remain serious deficiencies in the opponent’s case. There is no clear evidence that the owner of the trade mark is GONE Ltd, less still that it is a U.S. company.  The only evidence of a connection between GONE Ltd and Scottken Pty Ltd is packaging, which by use of the words Imported by Scottken Pty Ltd Perth WA, was most likely printed in Australia at Scottken’s request.  The existence of a distribution or agency agreement to sell the wrist bands in Australia for GONE Ltd, or the existence of a licence agreement to use the trade mark, is supported only by the hearsay claim of a director of Scottken delivered, to my mind, in the context of distancing himself and his company from any rights possibly held by the applicant.  The investigation agent refers to a Mr Katsukous as the principal of the applicant, but the ASIC records indicate a director of that company to be a Mr Koutsoukas.

37. The applicant company was incorporated in October 2004 under a name including the word GONE, being part of the opposed trade mark. One of its major shareholders was another company or trust, the name of which also included the word GONE.  In November 2004, a month after incorporation, it filed the trade mark application (an act which in the absence of evidence to the contrary evinces an intention to use the trade mark in Australia: Shell case, supra).  Against this, the only evidence in favour of another’s use of the trade mark is Scottken’s packaging which is of unknown vintage and in any event was not before the Australian public because regulatory approval was still pending in May 2007, well after the priority date.

38. My use of the publicly available online register held by APVMA shows that regulatory approval for the identical product went to another company, GOLDGRADE CORPORATION PTY LTD T/A WHATS NEXT.  The product image available there shows the trade mark and essentially the same product packaging as that in evidence here with the notable exception of the statement: Manufactured by GONE Ltd.  Made in the USA.  Imported by Goldgrade Corporation Pty Ltd.

39. My WHOIS search of the domain name goneinsectband.com shows it was registered on 23 January, 2007. The registrant of the domain name is “Lines Distributor, Ontario, Canada”.  There is no reference to GONE Ltd.

40. It follows that the website must have post-dated the registration of the domain name.  It is unknown whether members of the Australian public might have bought the wrist bands via the website. Regardless, any sales via the website could not have been made before the priority date of the application.

41. Mr Kortian referred me to a number of authorities including the High Court decisions in Thunderbird Products Corporation v. Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 and Moorgate Tobacco Co. Ltd v. Phillip Morris Ltd (1984) 156 CLR 414 but from my study of the evidence, the teaching of those cases is irrelevant to the facts before me in this matter.

1. The opponent bears the onus of proving its case, notwithstanding the lack of evidence from the applicant or its non-representation at the Hearing.  The standard of proof is the balance of probabilities.  The applicant’s failure to meet the opponent’s case can be damaging in those cases where the opponent has done enough to shift the burden of proof to the applicant.  In this case, all that might be said is that the evidence raises some doubt as to who is the rightful owner of the trade mark.  That is not enough to shift the onus.

2. I find that the opponent has failed to establish it ground of opposition under section 58 of the Act.

   Section 43

3. Section 43 of the Act provides:

   43        Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

4. I refer to what was said by Gyles J. in Pfizer Products Inc v Karam (2006) 237 ALR 787 (1 December 2006):

   ‘Connotation’ is a secondary meaning implied by the mark. The

   likelihood of deception or confusion must flow from the secondary

   meaning inherent in the mark itself. It is apparent that the underlying

   purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55

   of the Trade Practices Act 1974 (Cth). It is to prevent the public being

   deceived or confused as to the nature of the goods offered by reason of a

   secondary meaning connoted by the mark in question, rather than, for

   example, deception by reason of similarity with other marks (TGI

   Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000)

   100 FCR 358 at [43]; McCorquodale v Masterson [2004] FCA 1247;

   (2004) 63 IPR 582; at [25]–[26]).

1. This ground is not established since there is no evidence that there is any inherent secondary meaning implied by the trade mark.

   Decision

2. Since no ground of opposition is established, the opposition fails and I direct that the application be allowed onto the Register.

   Costs

3. The applicant made no representations regarding costs and so no award is made.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   3 January 2008