Opposition by Kevin Robinson to registration of trade mark application number 1964820 – LITTLE WINGS (Classes 36, 44) - in the name of Little Wings Limited.

[2021] ATMO 157

TRADE MARKS ACT 1995

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

Re:Opposition by Kevin Robinson to registration of trade mark application number 1964820 – LITTLE WINGS (Classes 36, 44) - in the name of Little Wings Limited.

Delegate:	Blake Knowles
Representation:	Opponent: One IP International Pty Ltd.  Applicant: Sparke Helmore Lawyers.
Decision:	2021 ATMO 157 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60, and 62A considered and not established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Kevin Robinson (‘Opponent’) to registration of trade mark application number 1964820 (‘Application’) filed on 25 October 2018 (‘Relevant Date’) by Little Wings Limited (‘Applicant’) for the trade mark LITTLE WINGS (‘Trade Mark’) for the following services:

   Class 36: Charitable collections; Charitable fundraising; Charitable services, namely financial services; Organising of charitable collections

   Class 44: Charitable services, namely providing medical services; Health care; Arranging of medical treatment; Complementary medical services; Consultancy and advisory services in relation to medical services; Health care consultancy services (medical); Medical care services; Medical services; Provision of medical facilities; Provision of medical information; Provision of medical treatment

   (‘Services’)

2. The Trade Mark was examined and accepted for possible registration. The Opponent filed a notice of intention to oppose on 11 July 2019, and a statement of grounds and particulars (‘SGP’) on 19 July 2019. The Applicant subsequently filed a notice of intention to defend the Trade Mark from opposition on 27 September 2019.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support on 11 January 2020, which was after the deadline of 2 January 2020. The Opponent was advised that the material would not be considered unless the Opponent provided compelling reasons why the Registrar should do so. No such submissions were filed by the Opponent. Subsequently, the Applicant filed Evidence in Answer (‘EIA’) on 14 April 2020. The Opponent filed Evidence in Reply (‘EIR’) on 29 April 2020.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section or regulation in the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. At the conclusion of the evidence stage, both parties were given the opportunity to request a hearing or file written submissions. The Opponent did not request a hearing or file written submissions. The Applicant elected to file written submissions only.

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60, and 62A.

6. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

7. The following evidence was validly filed:

   EIA

   Declaration of Vienna Jones, solicitor for the Applicant, made on 10 April 2020, with Annexures VJ-A to VJ-O.

   EIR

   Declaration of Olaf Kretzschmar, IP consultant for the Opponent, made on 23 April 2020, with Exhibits TP-1 to TP-21.

8. Both the EIA and EIR consist of declarations by external advisors of the parties. The evidence relevant to the grounds of opposition in the SGP includes personal recollections of events and the intentions and motives of individuals, particularly the Opponent and officers of the Applicant. Such evidence should be given directly by the relevant individuals. While I may consider evidence given by representatives who have no direct personal knowledge of relevant events or the recollections, motivations, or intentions of individuals, such evidence may lack sufficient weight to establish a fact upon which a party seeks to rely.    

   EIA

9. Ms Jones declares that the Applicant was incorporated in November 2011, and provides free flight and ground transport services for sick children. The initial directors of the Applicant were the Opponent and two other individuals. Ms Jones declares that the Applicant conducted its first flight on 3 September 2012 and use of the Trade Mark commenced at that time. The Applicant was subsequently registered as a charity in December 2012.

10. Ms Jones states that in 2012 a logo version of the trade mark was designed for the Applicant, namely:

    (‘Little Wings Logo’)

11. Ms Jones annexes to the declaration an invoice dated 5 October 2012 issued by KR Creative to ‘Little Wings’ for brochure design, business cards, website design, and stationery design (‘2012 Invoice’). The addressee is ‘[email protected]’ with the job title ‘Marketing’.

12. Ms Jones declares that the Applicant operated a website from 10 December 2012. Ms Jones annexes a domain name report for the website, Internet Archive Wayback Machine screenshots, and more recent printouts from the website dated 14 August 2019. The domain name report and screenshots indicate that the Applicant is the registrant of the domain name, and that there has been consistent use of the Trade Mark and the Little Wings Logo (or minor variants of that logo) on the website since 2012.

13. Ms Jones declares that the Applicant has also operated social media accounts on Facebook, Twitter, YouTube, and Instagram featuring the Trade Mark, with operation of those accounts first commencing at various times between 2012-2015.

14. Ms Jones declares that that the Opponent obtained trade mark registration number 1846646 in 2017 for the Little Wings Logo (‘Opponent’s Registration’) without the knowledge of the Applicant. The Applicant subsequently applied to remove the Opponent’s Registration from the register under s 92(4)(a).

15. Ms Jones declares that the Opponent was an employee of another company, PKC Management Services Pty Ltd (‘PKC’) and that PKC was engaged by the Applicant to perform administrative tasks and was paid a management fee by the Applicant.

16. Ms Jones states that the Opponent’s employment with the Applicant was terminated on 1 June 2015. In March 2016, the Opponent emailed the Applicant revoking permission to use his name or image. Ms Jones annexes a copy of a blog post by the Opponent dated 5 December 2018 which details the Opponent’s view on the acrimonious breakdown of the relationship between the Opponent and the Applicant in 2015. The breakdown resulted from allegations made against the Opponent by a third party which were strenuously denied.

17. Ms Jones annexes a redacted declaration of 14 August 2019 by Richelle Koller, CEO of the Applicant, which was filed in related non-use proceedings against the Opponent’s Registration. Ms Koller declared that the Applicant had acquired a significant reputation in the Trade Mark as a result of continuous use since 2012. Ms Koller also declared that use by the Applicant of the Trade Mark or the Little Wings Logo had at no time been under the control of any one individual or third party, and that dealings between the Opponent and KR Creative relevant to the Trade Mark and the Little Wings Logo were done on behalf of the Applicant.

    EIR

18. Mr Kretzschmar declares that the Opponent developed the name ‘Little Wings’ for the proposed charity after brainstorming during 2010. Mr Kretzschmar states that the charity started in February 2011. Mr Kretzschmar annexes email correspondence from the Opponent to a third party which confirms that the name Little Wings was in existence by 30 March 2011, in addition to other email correspondence detailing preliminary discussions about setting up the charity. Mr Kretzschmar also annexes a copy of the ASIC company information for the Applicant, which confirms that the Applicant was registered on 23 November 2011, and that the Opponent and two other individuals were its directors at that time. Mr Kretzschmar states that the Opponent was also appointed as CEO but was not remunerated for this position until 2014/2015.

19. Mr Kretzschmar declares that as CEO, the Opponent gave the Applicant an implied licence to use the Little Wings Logo as a trade mark. Mr Kretzschmar also rejects the Applicant’s claim to reputation in the Trade Mark, stating that the entire reputation of the Trade Mark “is a result of direct efforts of the Opponent, and not Applicant” and the “skills, experience and dedication of its founder i.e. the Opponent…”. Mr Kretzschmar also refers to significant revenue generated by the Applicant because of the Opponent’s efforts, and that the Opponent was in a position to commence hiring staff by 2013 to build up the charity.

20. Mr Kretzschmar declares that the Applicant’s social media accounts were created by the Opponent or his delegates, and that the 2012 Invoice was sent to another person, Ms Tanya Jones at Little Wings, merely for administrative reasons.

21. Mr Kretzschmar annexes various other exhibits to the declaration, including a copy of an email dated 5 June 2012 from KR Creative to the Opponent at the email address ‘[email protected]’ relating to design of letterhead and business cards featuring the Trade Mark, website extracts for littlewings.org.au, various financial statements of the Applicant, awards recognising the Opponent for his contribution to the community, Facebook page extracts from the Opponent’s new venture, Wings4Kidz, and legal correspondence between the Opponent and the Applicant, and the Opponent and third parties.

22. Mr Kretzschmar refers to the acrimonious breakdown of the relationship between the Opponent and the Applicant, and states that various allegations made against the Opponent were false, unfounded, and unproven. Mr Kretzschmar declares that the Opponent’s decision to revoke all rights to use the Opponent’s name and image was due to failure of the Applicant’s board to maintain the standard of service of the charity.

23. Mr Kretzschmar states that “There is no dispute that the business and brand was the Opponent’s conception and successfully built by the Opponent as the creator and founder”.

    Discussion

24. Most of the nominated grounds of opposition rely on the Opponent’s claim to ownership of the Trade Mark, and characterisation that any use of the Trade Mark by the Applicant was under an implied licence granted by the Opponent. As such, the Opponent is claiming that the benefit of such use inures to him, and that the Applicant is not entitled to register the Trade Mark. The Opponent also claims to be the owner of the Little Wings Logo.

25. The use and ownership of the Little Wings Logo was considered by a delegate of the Registrar in Kevin Robinson v Little Wings Limited.[4] That decision concerned an application to remove the Opponent’s Registration under the provisions of 92(4)(a), on the basis that the Little Wings Logo had not been used by the Opponent and the Opponent also did not have a intention in good faith to use the Little Wings Logo at the time of applying for registration. In deciding to remove the Opponent’s Registration, Hearing Officer Barbey held that the evidence did not substantiate the Opponent’s claim to ownership of the Little Wings Logo, stating ‘whatever involvement the Opponent had in the creation and subsequent use of the [Little Wings Logo], it is more probable than not that it was undertaken in his capacity as a director of the Applicant. Consequently, I am satisfied that the Opponent did not personally own the [Little Wings Logo] based on the evidence before me. In this context, the Opponent lacks the underlying capacity to authorise the use of the [Little Wings Logo]and thus the benefit of the Applicant’s use would not inure to the Opponent’.[5]

    [4] [2021] ATMO 11.

    [5] Ibid, [31].

26. The present opposition falls to be decided on very similar facts, although the Opponent’s present case is further weakened as the Opponent did not provide direct evidence.

27. Consistently with the earlier decision of Hearing Officer Barbey, I am not satisfied based on the evidence that the Opponent is the owner of the Trade Mark, or any substantially identical or deceptively similar mark. I consider it is more likely that the Applicant is the entity that first used, and at all times continued to use, the Trade Mark in the course of trade.

28. While I accept as likely that the Opponent developed the name ‘Little Wings’ prior to incorporation of the Applicant and was the Applicant’s guiding mind and driving force between 2012-2015, use of the Trade Mark in the course of trade commenced after the incorporation of the Applicant and the Opponent’s evidence does not support the claim that the Opponent used the Trade Mark in the course of trade in his personal capacity.

29. Given that a company can only act via its directors, mere control of a company by a director alone does not give the director, by reliance on the principle of authorised use, a claim to ownership of an unregistered trade mark used by a company. When a company operates a business under an unregistered trade mark, such use should be considered use by and under the control of the company unless there is evidence that some other arrangement exists. Further, given an unregistered trade mark is intrinsically linked to the goodwill of the business that uses it, there is also continuing doubt following the decisions of the Federal Court in Kraft Foods Group Brands LLC v Bega Cheese Limited and Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8)[6] as to whether the purported licensing of an unregistered trade mark would have any relevant legal effect and result in any benefit inuring to the purported licensor. As such, claims by parties that they have licensed unregistered trade marks (in the sense required to establish authorised use under the Act) must be treated with significant caution.

    [6] [2020] FCAFC 65, [129] (Foster, Moshinsky, and O’Bryan JJ) and [2019] FCA 593, [169] (O’Callaghan J).

30. Based on these findings, I will now address each of the grounds relied on by the Opponent.

    Section 58

31. To establish this ground, the Opponent must show earlier use in Australia by some person other than the Applicant of a trade mark that is substantially identical to the Trade Mark[7] and which has been used in relation to services that are the ‘same kind of thing’ as the Services of the Application.[8]

    [7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

    [8] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

32. The Opponent has not established that he, or some person other than the Applicant, has earlier use of a substantially identical trade mark. As such, the ground under s 58 is not made out.

    Section 60

33. To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of this reputation, use of the opposed Trade Mark is likely to deceive or cause confusion.

34. The Opponent has not established that he or another person has acquired reputation in a relevant trade mark, and I consider it likely that any reputation that exists in the Trade Mark inures to the Applicant. As such, the s 60 ground is not made out.

    Section 43

35. To establish this ground, the Opponent must show that there is a connotation inherent to the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.

36. Section 43 is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion arising from similarities between the Trade Mark and another trade mark. [9] 

    [9] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).

37. The Opponent bases this ground on the likelihood of confusion arising from the fact that the Opponent is the owner of, and has reputation in, the Trade Mark. These claims do not relate to a connotation in the Trade Mark itself, and as such, cannot form the basis of the ground under s 43. In any event, the Opponent has also not established that he is the owner of the Trade Mark, or that any reputation in the Trade Mark inures to him.

38. The Opponent has not established a likelihood of deception or confusion based on a connotation in the Trade Mark. As such, the s 43 ground is not made out.

    Section 62A

39. To establish the s 62A ground, the Opponent must establish that the Application was made in bad faith. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[10]

    [10] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).

40. The Opponent has not established that the Applicant is not the owner of the Trade Mark. To the contrary, the evidence indicates that the Applicant is probably the owner of the Trade Mark at common law and has acquired a significant reputation in the Trade Mark since 2012 (albeit with a significant contribution by the Opponent as the Applicant’s Director and CEO).

41. In these circumstances, I cannot conclude that filing of the Application fell short of standards of acceptable commercial behaviour, because the Applicant is merely seeking registration of a Trade Mark for which it has a strong claim to proprietorship. There are also no other circumstances that I consider render the filing of the Application as being in bad faith.  As such, the ground under s 62A is not made out.

    Section 42(b)

42. The Opponent under s 42(b) alleges in the SGP that the Trade Mark constitutes a literary work under the Copyright Act 1968 (Cth), and registration of the Trade Mark by the Applicant is ‘contrary to law’ (impliedly on the basis that use of the Trade Mark would constitute an infringement of the Opponent’s copyright).

43. Under s 10 of the Copyright Act 1968 (Cth), a literary work includes a compilation expressed in words. However, generally, single words or two-word phrases would not fall within the definition of a literary work, as they do not provide ‘information and instruction, or pleasure in the form of literary enjoyment’.[11]

    [11] Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] Ch 119, 143 (Stephenson L.J.); see also L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44.

44. The Opponent does not provide any authority or submissions supporting the proposition that the phrase constituting the Trade Mark qualifies as a literary work under the Copyright Act 1968 (Cth). The Trade Mark to my mind is not a compilation, but merely a short and unremarkable combination of two common English words. As I do not consider that the Trade Mark provides any relevant information and instruction, or pleasure in the form of literary enjoyment, I am not satisfied that it is a literary work.

45. As the Opponent has not established that the Trade Mark is a literary work which qualifies for copyright protection, the ground under s 42(b) is not made out.

    Section 44

46. To establish grounds of opposition under s 44, the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of either services that are similar to the Services of the Application, or goods that are closely related to the Services of the Application.

1. The Opponent relies on the Opponent’s Registration as the basis for the s 44 ground. However, the Opponent’s Registration was removed from the register on 18 February 2021. While registrability of a trade mark is generally determined as at the Relevant Date, it is appropriate to determine grounds under s 44 based on the status of the trade mark relied on by the Opponent as it currently stands.[12]

   [12] Omega SA v Robinson [2012] ATMO 92, [11] (Hearing Officer Lyons).

2. As the Opponent can no longer rely on an earlier pending or registered trade mark, the ground under s 44 cannot be made out.

   Section 58A

3. To establish grounds of opposition under s 58A, the Opponent must have first established prima facie grounds of opposition under s 44, to which the Applicant has responded by providing evidence of prior and continuous use of the Trade Mark pursuant to s 44(4).

4. The Opponent has not established prima facie grounds of opposition under s 44. As such, the ground under s 58A is not relevant and is not made out.

   Decision and costs

5. The Opponent has not established any of the grounds of opposition. As such, the Trade Mark should proceed to registration one month from the date of this decision. But if the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

6. The Applicant has sought an award of costs. Costs generally follow the event. There being no reason to depart from the general rule, I award costs against the Opponent in accordance with Schedule 8 of the Regulations.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   16 December 2021