Opposition by Great Ocean Road Cycling Incorporated to registration of trade mark application 1803230 (41) – GORC GREAT OCEAN ROAD CYCLING CLASSIC and Device - in the name of Beaumont Management Services Pty Ltd

Case •

[2018] ATMO 197

•

11 December 2018

TRADEMARKSACT 1995

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

Re:Opposition by Great Ocean Road Cycling Incorporated to registration of trade mark application 1803230 (41) – GORC GREAT OCEAN ROAD CYCLING CLASSIC

and Device - in the name of Beaumont Management Services Pty Ltd

DELEGATE:  Nicholas Smith

REPRESENTATION:                 Opponent: Tony Elder of Counsel instructed by David Coombs and Therese Megens of Gadens

Applicant: Richard McDonnell, Director of the Applicant

DECISION:  2018 ATMO 197

Trade  Marks  Act  1995  (Cth) - Section 52 opposition: s 58

considered – ground established – registration refused               

Background

  1. This decision concerns an opposition brought by Great Ocean Road Cycling Incorporated (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Beaumont Management Services Pty Ltd (‘Applicant’):

    Application Number:         1803230

Filing Date:  17 October 2016

Services:Class  41:  Arranging  of  sporting  events;  Booking  of sports facilities; Instruction in sports; Organisation of

sporting competitions; Provision of information about sports; Sports club services; Sports consultancy; Sports education services; Sports information services; Sports instruction services; Sports officiating; Sports tuition; Timing of sports events (‘Applicant’s Services’)

Trade Mark:  (‘Trade Mark’)

  1. Following the advertisement on 9 March 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 4 May 2017. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 5 June 2017. The SGP raised the ground of opposition under ss 42(b), 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 6 July 2017.

Evidence

  1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 10-12 October 2017. This evidence consists of the following declarations:

    ·Jeremy  Clive  Whitelaw  Tatchell,  member  of  the  Opponent,  made  on  23 September 2017 together with exhibit JT-1 (‘Tatchell 1’);

    ·Anthony Elder, member of the Opponent, made on 11 October 2017 together with exhibit AE-1 (‘Elder 1’);

    ·Robert Anthony Seipolt, member of the Opponent, made on 11 October 2017 together with exhibit RAS-1 (‘Seipolt 1’);

    ·Garry Edward Smith, member of the Opponent, made on 11 October 2017 together with exhibit GS-1 (‘Smith 1’);

    ·Russell Peter Jenkins, member of the Opponent, made on 6 October 2017 together with exhibits RJ-1 to RJ-21 (‘Jenkins 1’);

    The Tatchell, Elder, Seipolt and Smith Declarations referred to above simply operate to support the version of events set out in Jenkins 1, which will be summarised later in the decision.

  1. The Applicant filed Evidence in Answer (‘EIA’) on 9-18 January 2018. This evidence consists of the following declarations:

·Richard Augustine McDonnell, director of the Applicant, made on 9 January 2018 together with exhibits RMcD-A to RMcD-K (‘McDonnell 1’);

·Richard Augustine McDonnell, director of the Applicant, made on 9 January 2018 together with exhibits RMcD-G and RMcD-A (‘McDonnell 2’);

·Richard Augustine McDonnell, director of the Applicant, made on 9 January 2018 (‘McDonnell 3’);

·Richard Augustine McDonnell, director of the Applicant, made on 18 January 2018 together with exhibits RMcD-L and RMcD-N (‘McDonnell 4’);

·Richard Augustine McDonnell, director of the Applicant, made on 18 January 2018 together with exhibits RMcD-A and RMcD-0 (‘McDonnell 5’);

·Paul  Dohrmann,  retired  mechanical  engineer,  made  on  17  January  2018 together with exhibits RMcD-A and RMcD-0 (‘Dohrmann declaration’);

The Dohrmann declaration simply rebuts a reference to Mr Dohrmann in Tatchell 1 and confirms that he supports the Applicant’s position in this matter.

  1. The Opponent filed Evidence in Reply (‘EIR’) on 23 March 2018. This evidence consists of the following declarations:

    ·Anthony Elder, made on 19 March 2018 together with exhibits AE-1 to AE-6 (‘Elder 2’);

    ·Jeremy Clive Whitelaw Tatchell, made on 21 March 2018 (‘Tatchell 2’);

    ·Robert Anthony Seipolt, made on 22 March 2018 together with exhibits RAS-2 to RAS-4 (‘Seipolt 2’);

    ·Garry Edward Smith, made on 22 March 2018 together with exhibits GS-2 to GS-5 (‘Smith 2’);

    ·Anthony Elder, made on 23 March 2018 together with exhibit AE-7 (‘Elder 3’);

    ·Russell Peter Jenkins made on 23 March 2018 together with exhibits RPJ-22 to RPJ-28 (‘Jenkins 2’);

  1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 26 March 2018 the Applicant made an informal request for an oral hearing with a more formal request being made on 1 May 2018. The matter was set down for a hearing in Canberra on 7 November 2018 and the matter was

allocated to me. In line with usual practice, an email was sent to the parties on 4 September 2018 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 23 October 2018 (‘Opponent’s Submissions’). The Applicant filed written submissions on 2 November 2018 (‘Applicant’s Submissions’). At the hearing Tony Elder of Counsel instructed by David Coombs and Therese Megens of Gadens represented the Opponent, appearing by video conference and Richard McDonnell, director of the Applicant, represented the Applicant, appearing in person.

  1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

The Opponent

  1. The Opponent is an incorporated association, with a registration date of 29 December 2014.

  1. Jenkins 1 contains the following claims/statements:

·     Starting in the 1990s a casual group of cyclists in the Lorne/Angelsea area would meet to cycle on the Great Ocean Road. The deponent joined this group in 2002. Between 2002 and 2006 this group became known as the Lorne Bunch and would communicate by e-mails. In 2006 Richard McDonnell (‘McDonnell’ – the director of the Applicant) commenced riding with this group during holidays.

·     In 2006/7 McDonnell offered to set up a Google account through which all members of the Lorne Bunch could send e-mails to each other. This was done and to make it less exclusive the term GORC, short for Great Ocean Road Cycling, was used on the Google group account set up by McDonnell.

·     In March/April 2007 a discussion took place among the members about the group, now renamed the GORCS/Gorcs, about running a cycling event.  This event was

scheduled to be held on 4 August 2007 and was promoted through the Google Groups account and GORC website, which was created by Robert Seipolt on 24 June 2007.

·     The GORCS, operating as an unincorporated association (and from 2015 as the incorporated Opponent), held the GORC Classic cycling event October every year from 2008 to 2016.

·     In September 2007 Tim Claeys, a creative designer, designed a logo for the GORCS and commissioned various cycling kit for members of the GORCS that featured that logo.

·     In    2009    McDonnell    applied    to    register     trade    mark     1309975,    being

. This trade mark has since been assigned to the Applicant. The other members of the GORCS were not aware of the details of the application, but they were aware that McDonnell had applied to register a trade mark featuring the words ‘Great Ocean Road cycling’. They understood that this mark was registered on behaf of the GORCS. Similarly McDonnell and Robert Seipolt registered various domain names on behalf of the group.

·     In 2013/14 Tim Claeys and Robert Seipolt created a new version of the GORCS cycling kit and Claeys developed a new logo (‘Second Logo’), which was featured on cycling kit and posters for the 2014 GORC Classic. The Second Logo is identical to the Trade Mark, save for the addition of the word ‘classic’ at the bottom of the Trade Mark. On the 2014 poster for the GORC Classic, the Second Logo is used with the word ‘classic’ directly beneath it.

·     Due to the popularity of the Great Ocean Road Classic event and concerns about the legal liability faced by individuals it was decided that responsibility for its organisation should pass to an incorporated organisation. On 17 December 2014 at a meeting of members of the GORCS, a resolution was passed for the incorporation of the Opponent. A further resolution was passed calling for all domains held by McDonnell on behalf of the GORCS be transferred to the Opponent. McDonnell was nominated and elected president of the Opponent. The above was confirmed by a meeting of the Opponent on 26 January 2015.

·     Due to bushfires in December 2015, a decision was made by various government authorities that the course of the Great Ocean Road Classic should be a different course. A dispute arose between the members of the Opponent as to whether it should be a race and by majority the Opponent’s executive voted against conducting the event as a race.

·     On 14 October 2016, by e-mail McDonnell resigned from his position with the Opponent stating that he considered the vote of the executive that the 2016 GORC

Classic not be held as a race to be “a vote of ‘no Confidence’ in my ability to organise the Event, despite 9 successful years of doing so”.

·     On 17 October 2016 McDonnell applied to register the Trade Mark and on 21 October 2017 McDonnell and the Opponent acted to transfer ownership of the Trade Mark application to the Opponent.

·     To the best of the deponent’s knowledge, as of February 2017, Tim Claeys, the creator of the Second Logo, has never granted any third party any right to use the Second Logo and on 4 April 2017 Claeys entered into an exclusive licence agreement with the Opponent.

·     In February 2017 the Opponent applied for a permit to conduct the Great Ocean Road Cycling Classic in October 2017. In May 2017 the Applicant applied to hold a similar event at a similar time under the same name.

  1. Elder 3 contains the following claims/statements:

·     The deponent was involved with the GORCS from 2011 onwards and in particular with the organisation of the GORCS Classic. As a result of concerns raised by the Victorian Police and VicRoads regarding traffic and other issues he became aware that these entities viewed GORCS as a legal entity that could be held accountable for the conduct of cyclists participating in the race. On 22 February 2014 he sent an e-mail putting a strong case that GORCS was not a legal entity, in order to give the members some ammunition to counter the argument by the Victorian Police and VicRoads.

  1. Smith 2 contains the following claims/statements:

·     The Applicant does not run a business relating to Great Ocean Road Cycling. Save for a single event ran in 2017, the Applicant has never conducted any commercial activity in the name of Great Ocean Road Cycling.

·     In the pre-incorporation meeting that took place on 17 December 2014, David Coombes tabled the model rules proposed for the Opponent and had circulated these rules to a number of members of the GORCS. McDonnell then proposed that the GORCS incorporate.

·     It was the deponent’s understanding that when McDonnell agreed, in the first meeting of the incorporated entity, to donate the domain name gorc.com to the new entity, that he was agreeing to donate any and all intellectual property he held to the Opponent.

·     The deponent participated in the GORC Classic from 2012-2016 and at all times understood that the event was of and conducted by the GORCS. At no time was there as suggestion that the event was owned by McDonnell or anyone else. McDonnell was the primary organiser of the GORC Classic event in the same way that Peter Williamson was the primary organiser of the GORC Swim, Matt Kirwan-Hamilton was the primary organiser of the GORC Triathlon and the deponent was the primary organiser of the GORC Masters Golf event.

·     After the 2013 GORC Triathlon, the Victorian Police requested a meeting to discuss certain aspects of the event and the upcoming 2014 GORC Classic that they were not happy with and indicated that they would not deal with McDonnell due to issues that had occurred in the past. Due to this issue, the deponent took over all administrative work required by the authorities in respect of the 2014 GORC Classic while McDonnell focused on the organisation of the event itself. There was never any suggestion that the event was conducted by McDonnell or the Applicant – all material filed in respect of the 2014 GORC Classic refers to the then unincorporated Opponent.

·     The Deponent continued to do all the administrative and liaison work for the GORC Classic events in 2015 and 2016. The paperwork for these events makes it clear that they were conducted by the incorporated Opponent. The insurance cover for the GORC Classic events was taken out in the name of the Opponent.

·     In summary, at all times until McDonnell resigned, the GORC Classic events were run by the Opponent and all intellectual property held by McDonnell or the Applicant in respect of the GORC Classic was held by them on behalf of the Opponent.

  1. Jenkins 2 contains the following claims/statements:

·     The deponent disputes that the Applicant conducts any business as Great Ocean Road Cycling and states that other than an event in 2017 the Applicant has not conducted any commercial activity in the name Great Ocean Road Cycling. In all the deponent’s years participating in the GORC Classic, he has never seen any reference to the Applicant’s involvement in the event. While McDonnell was the key organiser, the event was run by the many GORCS who contributed.

·     Tim Claeys is a director of Coretext Pty Ltd, however the work he did creating the various logos and posters for the GORCS event was not done as part of his work with Coretext. He created the work in his own time and allowed anyone in the collective group identified as the GORCS (i.e. the unincorporated association) to use the work. He then assigned any rights he had in the Trade Mark to the Opponent by was of license dated 4 April 2017.

·     At all times until he resigned on 14 October 2016, everything McDonnell did in connection with the GORC was done on behalf of the Opponent or its predecessor in title. There is no evidence that the Trade Mark was used by the Applicant prior to the filing date of 17 October 2016.

  1. Seipolt 2 contains the following claims/statements:

·     The deponent disputes that the Applicant conducts any business as Great Ocean Road Cycling and states that other than an event in 2017 the Applicant has not conducted any commercial activity in the name Great Ocean Road Cycling.

·     The deponent did a lot of general IT administration for the GORCS over the years and was repeatedly referred to as the IT Consultant/Manager for the group.

·     In 2016, due to fires in 2015 it was necessary to alter the route for the GORC Classic to a route that some members of the Committee believed dangerous. The deponent suggested that, for safety reasons, the event not be timed and no inducements offered. This approach was approved by the Opponent over the opposition of McDonnell. McDonnell then resigned from the Opponent and posted a number of items on the Opponent’s Facebook page that were slanderous of the deponent and others.

·     The deponent concedes that McDonnell was the GORC member mainly responsible for organising the GORC Classic in early years, but received significant input from other GORCS, which increased as the years went on. This input was provided because it was an event organised by the GORCS not to assist McDonnell and/or the Applicant in its business activities.

·     Tim Claeys was involved in the design business, however the work he did creating the various logos and posters for the GORCS event was not done as part of his work with Coretext. Mr Claeys created the work in his own time and allowed anyone in the collective group identified as the GORCS (i.e. the unincorporated association) to use the work. He then assigned any rights he had in the Trade Mark to the Opponent by was of license dated 4 April 2017.

·     At all times until he resigned on 14 October 2016, everything McDonnell did in connection with the GORC Classic was done on behalf of the Opponent or its predecessor in title. There is no evidence that the Trade Mark was used by the Applicant prior to the filing date of 17 October 2016.

The Applicant

  1. The EIA consists of 5 separate declarations by Mr McDonnell, each of them purporting to rebut the various declarations provided by the Opponent, however much of the material is repetitive or of limited relevance to the proceeding. Furthermore each of the declarations state that their purpose is to support the registration of trade mark 1309975, which is not the subject of the present opposition. Nevertheless, I will attempt to summarise the McDonnell declarations collectively below:

    ·     The Applicant was incorporated in 2001 and operates several small businesses including events as part of Great Ocean Road Cycling. Mr McDonnell is the director of the Applicant.

    ·     The deponent first used the terms ‘Great Ocean Road Cycling’ when he established the GORC Google Groups site in or around February 2007. The deponent registered various domain names that included ‘great ocean road’ and ‘gorc’ in 2007-09. The deponent came up with the name Great Ocean Road Cycling, and GORCS and paid for all the IT and hosting services. Robert Seipolt had no involvement in establishing the GORC website.

    ·     The deponent organised the first GORC Classic that took place in August 2007. None of the members of the ‘Lorne Bunch’ participated in any way. Rather it was 8 teams of 6 riders from various cycling groups.

·     The deponent ran the second GORC Classic in 2008. The deponent took full responsibility for the event and organised the photography, volunteers and catering as well as the website that entry was applied through.

·     Prior to the incorporation of the Opponent, there was no such unincorporated association as referred to in the EIS, rather a loose bunch of riders with no particular association or control. In 2014 barrister Tony Elder confirmed that GORC was not a club or incorporated entity, rather it was a group of people with an e-mail distribution list.

·     Tim Claeys later joined the group of riders and asked the deponent if the Applicant wanted him to design a logo. He produced a logo which the deponent ran past some other GORCS. The deponent then took the orders and produced the cycling kit.  Further kits were designed by another party.

·     The deponent then registered trade mark 1309975, a fact known by Tim Claeys and many other GORCS.

·     The Second Logo was not designed by Tim Claeys, rather it was designed by an overseas cycling company called Bernard Rides again and stolen by Robert Seipolt.

·     The Deponent/Applicant continued to organise the GORC Classic and was identified in 2014 as being responsible for organising the GORC Classic event.

·     The minutes attached to Jenkins 1 relating to the 17 December 2014 and 26 January 2015 meetings do not reflect what occurred at those meetings and are unsigned and incorrect. At all times all intellectual property in the GORC Classic event was owned by the Applicant.

·     Tim Claeys has admitted to the deponent that the logos he created were crafted in goodwill to give a more professional umbrella to the GORCS and he has never claimed any rights in them. Rather Tim Claeys has essentially licensed his copyright to any of the GORCS who want to use them. Furthermore it appears that copyright in the Second Logo is owned by Coretext, not Tim Claeys

·     The Applicant is the true owner of the Trade Mark as it is similar to its earlier registered trade mark 1309975 and has continuously used the Trade Mark or marks consisting of similar words since 2007 its creation in the organisation of races.  The Opponent did not exist prior to December 2014.

Grounds of Opposition, Onus and Standard of Proof

  1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 58. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

  1. The onus of proof in an opposition rests upon the Opponent.1 The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.2 The date at which the rights of the parties are to be determined is 17 October 2016 (‘relevant date’), being the priority date of the application in Australia.3

Discussion

Section 58 – Applicant not owner of trade mark

  1. Section 58 of the Act is reproduced below:4

Section 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.

  1. The owner of a trade mark is the person who first uses it in Australia, or who first files a trade mark application in Australia, whichever is the earlier. In Pham Global PL v Insight Clinical Imaging5 the Full Court of the Federal Court confirmed that the question of the proper owner of the Trade Mark is to be decided at the relevant date and cannot be satisfied at any later time. In the present case the original applicant for the Trade Mark was Mr McDonnell and the Applicant (‘Original Applicants’), as joint owners pursuant to s 28 of the Act, Mr

    McDonnell’s rights in the Trade Mark Application having subsequently been assigned to the Applicant.

  2. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

    ·     that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);6

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

2 Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1)

Trade Marks Act 1995 (Cth).

4 In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

5 [2017] FCAFC 93, [44].

6 Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

·     that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);7 and

·     that a person other than the Original Applicants has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by Original Applicants (‘the third factor’).8

  1. The ground based on s 58 of the Act was particularised in the SGP as follows:

The Applicant was not the first user of the opposed trade mark. The Opponent’s predecessor (an unincorporated association) first used the trade marks GREAT OCEAN ROAD CYCLING and GORC in January 2007, first used a GORC Logo trade mark (substantially identical or deceptively similar to trade mark registration 1309975) in October 2007, and first used a GORC Logo trade mark substantially identical or deceptively similar mark to the opposed mark in February 2014. The Opponent has continuously used these marks since its incorporation in December 2014.

The Opponent has been offering the services of organising of sports competitions, sports club services, sports consultancy, sports education and the provision of sports information services since that time by reference to the trade marks GREAT OCEAN ROAD CYCLING, GORC and the GORC Logo Marks.

The Opponent’s predecessor and the Opponent’s date of first use pre-dates the priority date of trade mark application 1803230, which is 17 October 2016. The Applicant is therefore not the true owner of trade mark application no. 1803230.

  1. Based on the evidence before me I have reached the following initial conclusions:

·     The Trade Mark is not substantially identical to any of GREAT OCEAN ROAD CYCLING, GORC or any logo mark used prior to 2014. The Trade Mark differs in its use of the gear device, and the manner in which the words GREAT OCEAN ROAD CYCLING and GORC are combined.

·     The Trade Mark is substantially identical to the Second Logo with the only difference being the addition of the word ‘classic’ at the bottom however each of the essential features of the Second Logo are reproduced in the Trade Mark.9

·     The first use of the Second Logo was in connection with the 2014 GORC Classic which is prior to the relevant date (or any undisputed date of use of the Trade Mark by the Original

7 Re Hicks’ Trade Mark (1897) 22 VLR 636.

8 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

9 See Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [12].

Applicants). The services provided in connection with the 2014 GORC Classic are the same kind of thing as the Applicant’s Services. Thus the first and the second factors are satisfied. The key question is whether a person other than Original Applicants has an earlier claim to ownership of the Trade Mark based on their use of the Trade Mark in connection with the 2014 GORC Classic.

  1. Therefore the matters that need to be decided are:

·     What is the entity that used the Trade Mark in connection with the 2014 GORC Classic; and

·     If the answer to the first question is not the Original Applicants, is there any evidence that at any point prior to the relevant date, any rights to the Trade Mark arising out of that use had been transferred to the Original Applicants?

·     If the answer to the first question is the Original Applicants, is there any evidence that at any point prior to the relevant date, any rights to the Trade Mark arising out of that use had been transferred to a separate entity, such as the Opponent?

  1. The respective cases of both parties can be summarised as follows: The Applicant argues that it, its director Mr McDonnell or the Original Applicants collectively were the sole organiser of the 2014 GORC Classic and subsequent GORC Classics and as such were the owner of the Trade Mark at the relevant date. The Opponent argues that the organisation of the 2014 GORC Classic was conducted by the Opponent’s predecessor, an unincorporated association (with the 2015 and 2016 GORC Classics conducted by the Opponent) and any use of the Trade Mark by the Applicant/McDonnell was use on behalf of the unincorporated association. Further or in the alternative the Applicant/McDonnell assigned any rights it had to the Trade Mark to the Opponent when it incorporated.

  1. There is insufficient evidence that the Applicant formally assigned any trade mark rights it had in the Trade Mark to the Opponent when it incorporated. The only evidence in support of this is a reference in the meeting minutes on 17 December 2014 to the assignment of a ‘domain name’ to the Opponent. I do not accept the Opponent’s submission that ‘domain name’ is a short form summary of ‘all intellectual property held by the Applicant relating to the GORC Classic’. Furthermore the subsequent course of conduct by McDonnell (failing to transfer the earlier trade mark registration 1309975 to the Opponent while transferring his

domain name registration), supports the Applicant’s contention that the minutes referred to the transfer of the domain name it held on behalf of the Opponent.

  1. The Applicant submits that no use (and hence ownership) of the Trade Mark could have taken place by the GORCS in 2014 since they were either an unrelated group of individuals or an unincorporated association. I do not accept the Applicant’s submission on this point as, for the reasons below, it is possible for a trade mark to be used and owned by an unincorporated association.

  1. Section 27(1)(a) provides that a person may apply to register a Trade Mark if they ‘claim to be the owner of the trade mark’. Section 6 defines a ‘person’ as including an unincorporated body of persons.

  1. The issue of whether an unincorporated association could be the owner of a trade mark was considered in Austbar Pty Ltd v ABA Australian Bar Association Limited,10 The Registrar’s Delegate concluded that an unincorporated association could be the owner of a trade mark.11 Of particular relevance are the submissions made by the then opponent in that case, extracted in the decision at [86].  They are:

    Throughout the common law world unincorporated associations have been found to have protectable common law trade mark rights: British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555; British Medical Association v Marsh (1931) 48 RPC 565; The Holy Apostolic and Catholic Church of the East (Assyrian) NSW Parish Association v Attorney General (1989) 16 IPR 619; Burge v Haycock [2001] EWCA Civ 900; [2002] RPC 28;

    Southern California Darts Association v Zaffina, Case No. 13-55780 (9th Cir, Aug 11, 2014). A representative action may be brought on behalf of the Association’s members to protect the goodwill in its trade marks: Artistic Upholstery Ltd v Art Forma (Furniture) Ltd [2000] RPC 31 [1999] All ER (D) 913 [2001] FSR 311 at [31]-[40].

    The facts in British Legion shed light on the touchstone issue of ownership in relation to unincorporated associations. In 1921 the British Legion was formed as an unincorporated association to promote the welfare of war veterans. In 1925 it was incorporated by Royal Charter and this body took over the association and its property. Many branches and clubs were formed and were authorised to use the name British Legion. In October 1922 the defendant British Legion Club (Street) Ltd, was registered as a social club in Street, Somerset. The British Legion sued for passing off and said that the use of British Legion in the defendant’s company name was not authorized and would inevitably cause confusion. The defendant claimed it was “first in the field” when it incorporated in 1922 because at that date there was no legal entity in existence which could have sued it in the name of the British

10 [2017] ATMO 29.

11 A similar conclusion was reached in Michael John Stafford v Automotive Distributors Limited [2015] ATMO 40.

Legion and restrain it from using that name. This was rejected and the plaintiff was granted an injunction restraining the Defendant’s use of British Legion.

  1. A related case to the decision referred to above is Selth v Australasian Barrister Chambers Pty Ltd (No 3),12 in which the issue was raised that the Australian Bar Association, being an unincorporated association, could not be the owner of a trade mark. The Federal Court found otherwise, stating at [219] that the Australian Bar Association, for the purposes of the Trade Marks Act, was the owner of the mark as first user.

  1. I am persuaded by the evidence before me and the Opponent’s Submissions that as of 2014 the GORCS existed as an unincorporated association. While I note the presence of the 22 February 2014 e-mail from barrister Tony Elder providing arguments that could be used to suggest that the GORCS were simply a group of individuals, I consider the detailed submissions in paragraphs 15-18 of the Opponent’s Submissions illustrating that as of 2014 the GORCS had all the legal characteristics of an unincorporated association to be more persuasive.

  1. Furthermore I conclude that, on the balance of probabilities, the organiser of the 2014 GORC Classic and hence the first user of the Second Logo was the GORCS unincorporated association, the predecessor in title of the Opponent. To the extent that any combination of McDonnell, the Applicant or the Original Applicants used the logo in connection with the 2014 GORC Classic they did so on behalf of the GORCS unincorporated association. I have reached this conclusion on the basis of the matters set out below:

-There is no documentary evidence before me of any role that the Applicant had in respect of the 2014 GORC Classic (or indeed the 2015 or 2016 GORC Classics). The evidence is that McDonnell had a significant role (indeed he is referred to by some witnesses as the primary organiser of the GORC Classics); however the Opponent submits that in this role he was acting on behalf of the GORCS and later the Opponent.

-Before and after the 2014 GORC Classic concerns were raised about the organisation of the event and in particular the legal liability of the organisers in the event of an accident.  In response to the concerns raised by police and members of the GORCS,

12 [2017] FCA 649.

the unincorporated association incorporated and the Opponent was established, with McDonnell as its inaugural president. This course of conduct is entirely consistent with the Opponent’s Submissions, namely that the 2014 GORC Classic was run by individuals that were part of and acting on behalf of the unincorporated association and as a result of concerns about the liability of individuals the Opponent was formed. It is inconsistent with the Applicant’s Submissions that the 2014 GORC Classic (and 2015 and 2016 GORC Classics) was solely run by the Original Applicants (or any one of them). If this were the case, there would have been no question of legal liability (all rights to and liability in the GORC Classic would be held by the Original Applicants and would continue to be held) and no need to incorporate to reduce such liability. I note that Mr McDonnell, as inaugural president of the Opponent, clearly supported incorporation.

-The evidence in Smith 2 is persuasive that the 2015 and 2016 GORC Classics were run by the Opponent. All insurance documentation in respect of these races is in the name of the Opponent. When a dispute over the organisation of the 2016 GORC Classic arose, the other committee members of the Opponent outvoted McDonnell. Again this course of events is entirely consistent with the Opponent’s case and inconsistent with the Applicant’s contention that the Original Applicants (or one of them) had been the sole organiser of the GORC Classics. Furthermore Mr Smith’s and Mr Seipolt have given evidence that they provided volunteer assistance to Mr McDonnell in the organisation of the 2014-2016 GORC Classics on the understanding that they were organising the event on behalf of the GORCS/Opponent, and not as a private business venture of the Original Applicants.

-Finally I note that the Mr McDonnell did register an earlier trade mark in his own name containing an earlier GORC Logo (trade mark registration 1309975). However as outlined in exhibit RPJ-11 to Jenkins 1, he then subsequently sought reimbursement for the costs of registering the earlier trade mark from the GORCS. Such conduct is again characteristic of a member acting on behalf of an unincorporated association, rather than an individual who is solely responsible for and holds all intellectual property in a particular event.

  1. In the absence of any evidence that the rights held in the Trade Mark were transferred from the GORCS unincorporated association to the Original Applicants (indeed any rights held by the GORCS would have transferred to the Opponent, its successor in title), I find that the Original Applicants (or any one of them) were not the owner of the Trade Mark at the relevant date and that the Opponent has established the ground of opposition under s 58 of the Act with respect to the Trade Mark.

Decision

  1. I have found the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

  1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith Hearing Officer

Oppositions and Hearings 11 December 2018

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