Oxygen Learning Pty Limited v Oxygen Learning Limited

[2006] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Oxygen Learning Pty Limited to registration of trade mark application 978239(9, 35, 41) - OXYGEN LEARNING STRIPPING AWAY CONVENTION - filed in the name of Oxygen Learning Limited.

Delegate:

Jock McDonagh

Representation:

Opponent:  Stephen Burley of counsel, instructed by Henry Davis York

Applicant: Ben Fitzpatrick of counsel, instructed by Davies Collison Cave

Decision:

Section 52 opposition – ground under sections 58, 59 & 60 not established; registration allowed.  Costs awarded against the opponent.

Background

1. The applicant, Oxygen Learning Limited, an English company, applied to register the following trade mark:

Application Number:

978239

Trade Mark:

Priority date:

 14 November 2003

Goods & services:

Class  9:   Training materials (apparatus), visual display apparatus for     use in training personnel)

Class 35:  Advice relating to business organisations, advice relating to personnel management

Class 41:  Adult training, adult education services, arrangement of conferences for educational purposes, arrangement of  seminars for educational purposes, arranging of festivals for training purposes, arranging of presentations for educational purposes, arranging and conducting of            conferences, arranging and conducting of workshops           (training), arranging of conferences, arranging of courses           of instruction, arranging of conferences relating to           business, arranging of conferences relating to training,           arranging of conventions for training purposes, arranging of           demonstrations for training purposes, arranging of displays           for training purposes, arranging of exhibitions for training            purposes, arranging of presentations for training purposes,            arranging of seminars relating to training, arranging of            seminars relating to business, business training consultancy            services, business training provided through a game, business training provided through a simulation structure, business training services, business educational services, commercial training services, conducting instructional courses, conducting of business conferences, conducting of instructional seminars, conducting training seminars, conducting training seminars for clients, consultancy services relating to the analysis of training requirements, consultancy services relating to the designing of training courses, consultancy services relating to the training of employees, consultancy services relating to training, courses for the development of consulting skills, courses of instruction (provision of-), conferences (arranging and conducting of-), employment training, management training consultancy services, management training services, organisation of courses using self-tuition methods, organisation of courses using open learning methods, organisation of courses using programmed learning methods, organisation of conferences relating to training, organisation of conferences relating to vocational training, organisation of seminars relating to training, organisation of training courses, organisation of training seminars,  organisation of recreational activities, organising of commercial training, organising of business training, personal development courses, personal development training,  provision of skill assessment courses, provision of training facilities, professional training services, production of training films, production of training videos, production of video tapes for corporate use in corporate educational  raining, production of video tapes for corporate use in management educational training, personnel training,  providing training courses on business management, provision of training, provision of training courses in personal development, provision of training courses, provision of training services for business, provision of training services for industry, providing courses of training,  provision of courses of instruction in self awareness,  provision of courses of instruction relating to personal time management, provision of instruction relating to communications techniques, provision of facilities for employment skills training, provision of information relating  to training, publication of training manuals, sales personnel training services, sales training services, staff training services, training, training (practical-) (demonstration), training courses (provision of-), training in communication  techniques, training services for personnel, training  consultancy, training in business management, training in business skills, training relating to employment skills, training services related to business, training services relating to business management, workshops (arranging and conducting of-) (training)

Advertised:

 8 January 2004

1. The opponent, Oxygen Learning Pty Limited, an Australian company, filed notice of opposition to the trade mark's registration on 6 April 2004.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The parties duly served and filed evidence in support, evidence in answer and evidence in reply.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 13 March 2006. Mr Stephen Burley of counsel instructed by Henry Davis York, Lawyers, represented the opponent. Mr Ben Fitzpatrick of counsel instructed by Davies Collison Cave, Attorneys, represented the applicant.

Evidence

1. The evidence relating to this opposition consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Gavin Dunn	3.09.04	GD-1 to GD-33	First Dunn
Benedict James Larkey	4.09.06	BJL-1 to BJL-8	First Benedict Larkey
Melanie Larkey	7.09.06	ML-1	Melanie Larkey
Evidence in Answer
Kevin Downey	1.06.05	KD1 & KD2	Downey
Brad Waldron	31.05.05	BW1 to BW6	Waldron
Evidence in Reply
Benedict James Larkey	1.09.05	Second Benedict Larkey
Gavin Dunn	1.09.05	Second Dunn

Chronology

1. Much of the evidence in these proceedings confirms a chronology of events that is not in dispute. I shall recite these in order to understand the factual matrix from which I am to decide the opposition.

2. The applicant was incorporated in the United Kingdom in February 2000. It was owned by a holding company, TLP International Ltd (TLPI).

3. TLPI had the following shareholding:  44% each to Brad Waldron and Kevin Downey, 10% to Benedict Larkey, and 2% to John Whitehouse.

4. Benedict Larkey had been an employee of TLPI during the period February 1996 to October 2000. In November 2000, with the knowledge and approval of the applicant and its shareholders, Benedict and his wife Melanie returned to Australia and established a company called Oxygen Learning (Australia) Pty Ltd (OLA).

5. OLA has the following shareholding:  60% to Benedict Larkey, and 20% each to Brad Waldron and Kevin Downey.  OLA adopted the applicant’s logo, which is identical to the applicant’s applied-for trade mark, and some training materials of the applicant that had been prepared by Benedict Larkey.

6. In August 2001, OLA merged with Speakers International Corporate Development Pty Ltd (SICD), whose General Manager was Gavin Dunn.  The merged company changed its corporate name to that of the opponent. The opponent allocated an 8% shareholding each to Brad Waldron and Kevin Downey.

7. In late 2003, Messrs Downey and Waldron sold their shareholding in the opponent to the opponent. However, they retain their shareholding in OLA as shown in paragraph 10 above.  OLA is still in existence, although it does not trade. 

Commentary

1. It is important to note that the onus is on the opponent to satisfy me on the balance of probabilities that a ground opposition has been established.

2. There is little material adduced by either party that details the intentions of them with respect to the property of the logo that now forms the applicant’s trade mark. Additionally, the circumstances leading to the opponent's leaving the applicant and setting up OLA in Australia are not agreed between the parties. However, the applicant apparently consented to Mr Larkey setting up OLA in Australia and using the trade mark and training materials originated in UK by the applicant (albeit drafted by Mr Larkey).

3. It seems to me that a starting point for considering the ownership of the mark is that the copyright in the artwork that constitutes the mark would subsist with the applicant and there is no evidence to suggest that the applicant intended to pass the copyright to anyone else.

4. Mr Larkey, in both of his declarations, insists that OLA was intended to be a separate stand-alone business that was not part of a group headed by the applicant.  However, the appearances are to the contrary.  The name, with ‘Australia’ in parentheses, suggests being the Australian arm of a larger entity, and the large minority shareholding by directors of the applicant suggests the contrary.

5. I note also that the opponent’s web page, exhibited by the opponent in the first Dunn declaration at GD-26 shows on the “contact us” page the applicant’s UK address above that of  OLA in Sydney.

6. Counsel for the applicant submitted that the first use of the trade mark in Australia, while it was by OLA, was by virtue of sections 7 and 8 of the Act use by an ‘authorised user’ under the control of the applicant.

7. In C.A. Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561, at [168], Finn J stated:

   When one turns to the concept of control in section 8, while subsections (3) and (4) exemplify the Act's conception of control through "quality control" and "financial control" respectively, subsection (5) makes plain that these subsections do not limit the meaning of the expression "under the control of" in subsections (1) and (2).

1. While the evidence does not support the proposition that the applicant exercised financial control or quality control over OLA, I am not satisfied that the opponent has established that the applicant has relinquished any of its property rights in the trade mark. These property rights are such as to constitute control for the purposes of the Act.

2. The directors of the applicant have retained their shareholding in OLA, and while divesting themselves of their shareholding in the opponent company, the evidence makes it clear that the consideration they received for their shares was only for the shares and nothing else.

3. I find that any use of the trade mark in Australia by OLA or the opponent, or both of them, was authorised use of the trade mark and that the owner was at all relevant times the applicant.  Consequently I dismiss this ground of opposition.

4. Having so concluded, neither the section 59 ground nor section 60 ground can stand and I dismiss them.

Decision

1. The opponent has not made out any of its grounds of opposition, thus the opposition fails.

2. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

2. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 June 2006