Oppositions by Alexandros Christou to registration of trade mark applications 1934814 Orchid Excellence (class 1) and 1956221 Orchid Excellence Fertiliser (class 1) both in the name of Withiell Investments Pty Ltd

[2021] ATMO 10

TRADE MARKS ACT 1995

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

Re:Oppositions by Alexandros Christou to registration of trade mark applications 1934814 Orchid Excellence (class 1) and 1956221 Orchid Excellence Fertiliser (class 1) both in the name of Withiell Investments Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: did not attend Applicant: Karen Mak of Counsel instructed by Mintoo Ananpreet of Hutchison Legal
Decision:	2021 ATMO 10 Trade Marks Act 1995 (Cth) – opposition under section 52 – sole ground of opposition raised under section 62A (application made in bad faith) – ground of opposition not established – trade marks to proceed to registration

Background

1. These reasons consider oppositions to registration of two trade marks filed under the Trade Marks Act 1995 (Cth).[1] Both were filed by Withiell Investments Pty Ltd in its capacity as trustee for the Wain Orchid Trust (‘Applicant’). Although they were filed around three months apart, each covers very similar subject matter. The earlier was filed on 19 June 2018 and seeks registration for the words Orchid Excellence for fertilisers and liquid fertilisers in Class 1. The later was filed on 18 September 2018, seeking registration for Orchid Excellence Fertiliser for liquid fertilisers in Class 1. Throughout these reasons I refer to these marks together as the ‘Trade Marks’.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

2. The Trade Marks were examined by this office and accepted for possible registration. They were advertised for opposition purposes, again about three months apart. In each case Alexandros Christou (‘Opponent’) filed documents with this office indicating and outlining his opposition to their registration.

3. The Applicant filed notices signalling its intention to defend the Trade Marks from opposition, and the parties exchanged evidence. Once the evidence stages were completed, the Applicant sought a hearing of the oppositions. The oppositions were heard together on 6 November 2020 by me, a delegate of the Registrar of Trade Marks. The Opponent elected not to attend the hearing but instead filed written submissions beforehand. Appearing for the Applicant was Karen Mak of Counsel instructed by Mintoo Amanpreet of Hutchison Legal. Also in attendance was David Wain of the Applicant.

Grounds and onus

1. The Opponent nominates just one ground of opposition under s 62A. The Opponent carries the burden of establishing this ground on the balance of probabilities.[2] The rights of the parties are assessed as at the filing date of each of the marks.[3] Though the filing dates of the Trade Marks do not align, given the nature of the evidence, nothing turns on this.

   [2] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (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

1. While duplicated across the two files, substantially the same evidence was filed in both oppositions. Below is a list of the documents filed as evidence in these oppositions:

   Evidence in support

   Declaration of Alexandros Christou made 5 August 2019 with annexures.

   Evidence in answer

   Declaration of Cameron Bruce Dickson, Lawyer at Hutchinson Legal, made 5 December 2019 with annexures A to I.

   Statutory declaration of Wilma Carlesso, customer of David Wain, made 18 November 2019.

   Affidavit of Lachlan James Wain, son of David Wain, made 4 December 2019.

   Statutory declaration of Felix Spiteri, customer of David Wain, made 18 November 2019.

   Evidence in reply

   Declaration of Alexandros Christou made 4 February 2020 with annexures.

   Statutory declaration of Simone Christou, Publishing Operator at The Herald and Weekly Times and wife of the Opponent, made 30 January 2020.

   Statutory declaration of Mathew Christou, Trades Assistant and son of the Opponent, made 26 January 2020.

   Statutory declaration of Darren Ross Howard, Public Servant, made 3 February 2020.

   Statutory declaration of Wayne Kevin Garner, Avionics Training Instructor, made 3 February 2020.

2. The parties are largely in agreement as to the events leading up to the present oppositions. I outline this narrative below, leaving to one side immaterial inconsistencies in the parties’ accounts.

3. David Wain is described in the Applicant’s evidence as ‘a beneficiary with effective control of the trademark applicant’. He and the Opponent are the main actors in the background to these oppositions.

4. David Wain is a chemistry teacher who, in 1998, opened a plant nursery focused on orchids. He set about growing award-winning orchids. The evidence includes copies of awards conferred on Mr Wain for several Cymbidium orchid species at the state and national level in 2000, 2004, 2010, 2016, 2017 and 2018. Shortly after commencing the business Mr Wain harnessed his chemical knowledge to develop the orchid fertiliser that is at the heart of these oppositions. At first, he used it only on his own orchids. Later he began to circulate it to friends, family and to fellow orchid club members. Mr Wain also sold this fertiliser to customers of his nursery from at least 2003. According to the Applicant, the fertiliser was unnamed, but ‘closely associated’ with Mr Wain. Supporting this characterisation are the declarations of Wilma Carlesso, who says it was ‘David’s own brand’ and Felix Spiteri, who calls it ‘David Wain’s Fertilizer’.

5. The Opponent and David Wain first met socially in 2012. Soon after, the Opponent began volunteering at Mr Wain’s orchid nursery. There the Opponent became aware of the fertiliser. He struck a deal with Mr Wain to increase the fertiliser’s customer base. Mr Wain would supply the Opponent bulk quantities of fertiliser and the Opponent would package it up[4] and market it to a broader audience, with the parties dividing the profits.

   [4] There is disagreement between the parties as to whether the Opponent needed to filter the product before bottling. Within the bounds of these oppositions, it is unnecessary to make a finding either way.

6. By 2013-14, the fertiliser had been dubbed Orchid Excellence. There is significant disagreement between the parties as to who came up with the name, but for reasons I go into in my discussion of the sole ground of opposition, exactly who thought of it is not crucial to decide here.

7. It seems all went well for about three years. The Opponent went about marketing and selling Orchid Excellence online, at orchid club meetings, orchid shows and the like. Mr Wain continued to sell the newly named fertiliser to customers attending his nursery and at orchid shows. There is no evidence that the parties had worked out, let alone formalised, how they would divide these efforts. The difference between their approaches might be characterised as active and passive—the Opponent seeking out new custom, while Mr Wain was content selling the goods to customers that approached his shop and trade show stalls. During these halcyon days both were engaged in putting this fertiliser, now named Orchid Excellence, to market.

8. The Opponent registered Orchid Excellence Fertiliser as a business name on 27 October 2016. By about late 2017 or early 2018 the relationship between the parties had begun to deteriorate. This resulted in the Opponent seeking an alternative supplier for orchid fertiliser, which he had found by at least late 2018. He also called this new supply Orchid Excellence. All the while David Wain continued to sell his fertiliser. As such there were now two fertilisers from different trade sources bearing the same name. So far as trade mark registration goes, David Wain, through the Applicant, moved first.[5]

   [5] The Opponent filed application 1966549 on 1 November 2018. It is currently deferred, presumably pending the outcome of the present matters.

Section 62A

1. Against this backdrop the Opponent raised one ground of opposition. The sole question for me to decide is whether these applications were filed by the Applicant in bad faith. It is not necessary for me to decide, for example, whether the Applicant ought to have been listed as co-owner of the Trade Marks. Nor must I consider whether, due to a reputation in the Opponent’s unregistered Orchid Excellence trade mark, use of the Trade Marks might deceive or cause confusion. I make no suggestion that either might be the case. I only mention this here because much of the Opponent’s efforts were expended on pursuing such issues.

2. 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 these applications were filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing these applications as being in bad faith? This is to be assessed by finding whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in this industry.[6] I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

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

3. The Applicant, being controlled by David Wain, will have known what he knew. That is, he and the Opponent had both sold fertiliser made by him as Orchid Excellence to third parties for a few years. Then the Opponent started selling someone else’s fertiliser as Orchid Excellence. At the respective dates of filing for each of the Trade Marks he was selling his own fertiliser as Orchid Excellence, and presumably intended to continue.

4. Neither party had sought to register a trade mark before the Applicant filed these applications. (Unlike a trade mark, the Opponent’s registered business name did not confer exclusive rights to use that name in commerce.) As such, both parties were exposed, not only to each other but also to the world at large. That is, to protect any proprietary rights in their unregistered trade mark(s) they would have to prove unfair trading. At least in this respect, by filing these applications, the Applicant has moved to protect its legitimate interests—the goodwill it had fostered in the Trade Marks since 2013 or 2014. As such, the Applicant filing the trade marks is unlikely to have been in bad faith. But it is the Opponent that carries the onus to establish this ground of opposition on the balance of probabilities. I address below aspects of the Opponents case that, while argued stridently, were either not relevant or were not supported by the evidence.

5. The Opponent submits that he ‘came up with the name Orchid Excellence’. As I have mentioned earlier, just who came up with this name was both hotly contested and a red herring. Rightful ownership of a trade mark might on rare occasion bring into question who first thought of it. But by proceeding straight to use without first seeking registration, an argument based on ‘I thought of it first’ falls by the wayside. In that situation, whoever used it first will typically have the better claim to proprietorship. In this case, it seems both parties adopted and used the mark at around the same time.

6. The Opponent also submits that he ‘did all the groundwork of getting the business up and running to where it can be a viable business, only to have someone else use my registered business name in a trademark for their benefit’. While I have little doubt the Opponent expended significant effort in promoting and distributing this fertiliser named Orchid Excellence, some of the early success of the product was likely due to David Wain’s existing reputation as a propagator of prize orchids.

7. The arrangements between the parties between 2013-14 and 2017-18 are decidedly vague. If, as the Applicant submits, the Opponent took the goods from the Applicant on consignment, it would be probable the Opponent was under an informal license arrangement with the Applicant. It could then follow that the Opponent was an authorised user. If so, no rights to the Trade Marks could have accrued to the Opponent at the time—any of the Opponent’s use back then would have flowed to the Applicant.[7] However if, as the Opponent submits, he purchased goods in bulk from Mr Wain this might have been used to indicate some other arrangement. However, there is nothing in evidence that would allow me to conclude on this either way.

   [7] Trade Marks Act 1995 (Cth) s 8.

8. The Opponent has not discharged his onus in relation to this ground of opposition, and I find that it is not established.

Decision and costs

1. Since the Opponent has not established a ground of opposition in relation to either of the Trade Marks, I have decided that they should proceed to registration. Given the law provides time within which to appeal my decisions, the Trade Marks should not be registered until one month from today. If the Registrar is served with a notice of appeal in respect of one or both of the Trade Marks before that time, the relevant mark shall not be registered until the appeal has been withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

2. The Applicant sought an award of costs. The general rule is that costs follow the event, and I see no reason to depart from that here. In matters where the prosecution of more than one opposition has gone ahead in parallel with substantially the same documents and evidence filed, it has previously been decided that normal costs can be awarded in the first matter and reduced costs for all others.[8] Accordingly, for 1934814 I award costs against the Opponent to be taxed in the normal way. For 1956221 I award reduced costs against the Opponent in the same manner as in Hume.

   [8] Hume Industries (Malaysia) Berhad v Hardie & Coy Pty Ltd [2001] ATMO 78 (Hearing Officer Williams) (‘Hume’).

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
4 February 2021