Palmlake Investments Pty Ltd v Mister Rollershutter Pty Ltd

[2008] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by Palmlake Investments Pty Ltd to registration of 1058177(6) MISTER ROLLERSHUTTER (Logo) filed by Mister Rollershutter Pty Ltd.

Delegate:

Iain Thompson

Representation:

Applicant.  Did not appear or file written submissions.

Opponent:  Brendan Peachey and Todd Shand of Wray & Associates

Decision:

2008 ATMO 05

1.          Section 52 proceedings – section 58 – ownership of trade mark – purchase of business name, phone number and logo from owner by opponent – transfer of goodwill – prior use – opposition established.

2.          Costs awarded against applicant.

Background

1. Mr Rollershutter Pty Ltd (‘the applicant’) of Welshpool, Western Australia, filed an application to register a trade mark, current details of which appear below:

   App No:  1058177

   Filing Date:  1 June 2005

   Goods:Class: 7 Aluminium rollershutter for windows, doors, shopfronts, domestic, commercial and industrial; operated by manual, electric motor and/or automated with power failure back up.

   Trade Mark:  

2. The application was advertised as accepted for possible registration on 29 September 2005 and on 15 December 2005, Palmlake Investments Pty Ltd, (‘the opponent’) of Madeley, Western Australia, filed Notice of Opposition to the registration of the trade mark.  The Notice cites several grounds of which section 58 (ownership) was primarily argued at the hearing and is the ground under which this opposition is most conveniently decided.  Other grounds, such as those under sections 42 and 60 fall away if the opponent does not establish its ownership of the trade mark.

3. I heard this matter in Perth on 19 July 2005 as a delegate of the Registrar of Trade Marks.  Brendan Peachey and Todd Shand of Wray & Associates represented the opponents.  The applicant did not appear or file written submissions.  Ms Bernadette Jane Russie and Mr Rodney Stroud of the opponent attended at the hearing to observe proceedings.

   Evidence

4. The evidence comprises the following statutory declarations:

   ·Bernadette Jane Russie dated 14 July 2006 (Leading declaration);

   ·Mark Klashorst dated 14 July 2006 (Supporting declaration); and,

   ·John Allen Lano Gibbs dated 14 July 2006 (Supporting declaration).

5. In brief, the evidence establishes to my satisfaction that a company called Allenswood Holdings Pty Ltd (‘Allenswood’) used the trade mark appearing below from about 1989 until about three months before it was deregistered in July 1999:

6. On 9 March 1999, the opponent purchased, “the trading name MR ROLLERSHUTTER, the Logo MR ROLLERSHUTTER and the Telstra phone line [phone]” from Allenswood for the sum of $100.[1]  A business names extract in evidence shows that the business name ‘Mr Rollershutter’ has been owned by the opponent since 8 March 1999.[2]

   [1] Receipt at BJR-11 of Russie declaration

   [2] BJR-3 of Russie declaration.

7. The evidence also establishes to my satisfaction, via documentation appended to Ms Russo’s declaration and the supporting declarations, that the opponent has used the trade mark from the date of its purported purchase, explained above, until the date that the opposed application was filed.

8. There is no evidence served and filed by the applicant and no obvious defect in the evidence of the opponent.

   Section 58

9. 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.

10. The principles concerning the establishment of ownership of trade marks are well settled.[3]  Absent use of the trade mark by the applicant, to establish this ground the opponent must demonstrate to my satisfaction that, before the priority date of the opposed application, or date of first use of the trade mark by the applicant, it has used a trade mark which is at least substantially identical[4] to the trade mark on or in relation to goods or services which are the same kind of thing.[5]

    [3] Shell Co Of Australia Ltd v Rohm And Haas Co (1949) 78 CLR 601

    [4] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) AIPC 91-049; (1994) 120 ALR 495

    [5] Re Hicks' Trade Mark (1897) 22 VLR 636

11. There is no evidence from the applicant as to the date of its first use (if any) of the trade mark; thus the relevant date is the date that the opposed application was filed – 1 June 2005.

12. The trade mark was first used by Allenswood in 1989 in relation to roller doors and directly related goods such as motors.  When Allenswood ran into problems – presumably related to its solvency – in March 1999, the opponent purchased, “the trading name MR ROLLERSHUTTER, the Logo MR ROLLERSHUTTER and the Telstra phone line [phone]” from Allenswood for the sum of $100.  Effectively, the opponent argues that it purchased the business name, ‘logo’ and goodwill that subsisted in the logo-form trade mark MR ROLLERSHUTTER.  I agree.  The term ‘goodwill’ is an elusive one: as observed by Pullin J in JWH Group Pty Ltd & Anor v Kimpura Pty Ltd & Anor [2004] WASC 39; (2004) 61 IPR 295:

    The word "goodwill" is a word which is notoriously difficult to define: Hepples v Federal Commissioner of Taxation (No 2) (1992) 173 CLR 492 at 519. In its ordinary meaning, it is an intangible, saleable asset, arising from the reputation of a business and its relation with its customers, distinct from the value of its stock: see "Macquarie Dictionary". It is necessary to take care in referring to cases which deal with the meaning of the word "goodwill". This is because the context in which the case was decided may focus on the different aspects of goodwill and whether goodwill constitutes property, whether something is a source of goodwill, or whether the case was concerned with valuation issues: see Federal Commissioner of Taxation v Murry (1998) 193 CLR 605 at [12]. Having said that, it is clear that goodwill is the attractive force which brings in custom to a business. It is the one thing which distinguishes an old established business from a new business at its first start. The goodwill of a business may emanate from many different sources: see Murry's case (supra) [17] and [24]; Inland Revenue Commissioners v Muller & Co's Margarine Ltd [1901] AC 217 at 223-224.

13. Importantly, the opponent then used the trade mark, continued to receive orders over the telephone number it had purchased, and used the business name after the registration was transferred to it.  I would conclude that the opponent bought the common-law trade mark MR ROLLERSHUTTER in its logo-form, and its goodwill, and thus has the first use of the trade mark.

14. If I be wrong in this analysis, the opponent has established use (whether it validly acquired the trade mark or not) before the priority date of the opposed application between March 1999 and 1 June 2005 when the application was filed.  The applicant has not provided any evidence of its use of the opposed trade mark and the rights on which it must rely thus arise at the priority date.  Absent any evidence from the applicant, the opponent thus has the better claim to be the owner of the trade mark.  The opponent thus, on the evidence before me, has the necessary use of the trade mark antecedent to the priority date to establish this leg of the ground under section 58.

15. The next question I will address is whether the trade marks are, as a minimum, substantially identical.  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391, Gummow J said, "It requires a total impression of similarity to emerge from a comparison between the two marks". In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 Windeyer J said at 414:

    "In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison":

16. It is not, however, merely a matter of adding up and comparing the points of resemblance and dissimilarity: Re William Bailey (Birmingham) Ltd's Trade Mark Application (1935) 52 RPC 136 at 153 – it is the general effect of "the respective wholes": Clark v Sharp (1898) 15 RPC 141 at 146.

17. The major differences between the trade marks of the parties are that the opposed trade mark contains the company designator “Pty Ltd” and the words MISTER ROLLERSHUTTER, rather than the expression MR ROLLERSHUTTER – the graphical device of the caped hero common to both trade marks is the same graphical device.  There is a minor difference in the underlining of the words in the opposed trade mark.

18. So the question which confronts me is whether in view of, or despite of, these differences the trade marks are, as a minimum, substantially identical.  In AMW Projects Pty Limited v Ray Mullins & Sons Pty Limited [2000] ATMO 17, I observed:

    Cases where substantial identity has been found include: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be 'substantially the same mark' to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, 'substantially identical' in Carnival Cruise Lines, supra.

    To contrast the above decisions, the following trade marks have been found to be neither 'substantially the same mark' or 'substantially identical': "Otrivin" Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the Deputy Registrar observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.

19. In the context of the trade marks which both contain the same graphical device of a man dressed in a caped hero outfit with the alphabetical letter R emblazoned on the man’s chest, and the same stylisation of lettering of the words within the trade marks, I do not think that the addition of the company designator “Pty Ltd” in minor but identical font affects the identity of the trade marks.  Neither do I consider that, in this context, the abbreviation of the word MISTER to MR impacts significantly on the identity of the trade marks.  The abbreviation is a difference which, in the context of these trade marks, constitutes an equivalent.  Neither do I think that the combined effect of these alterations or additions affects the identity of the trade mark.

20. I do not think that the issue sustains prolonged analysis as it relies on a “total impression of resemblance or dissimilarity”[6] and not an assessment of the totality of the resemblances or differences.[7]  The trade marks are to my eye substantially identical.  The trade marks share an identity when compared side by side – they are, in essence, the same trade mark.

    [6] Per Shell, above.

    [7] Per Clark v Sharp, above.

21. And the goods in respect of which the opponent has used its trade mark are apparently identical to those of the opposed application and are thus ‘the same kind of thing’.

22. The legs that form the ‘tripod’ that the opponent must establish in terms of section 58 are thus all present: the use by the opponent is the earlier use of the trade mark; the trade marks share an identity; and, the goods are the same kind of thing.

23. Accordingly, the opponent has established its opposition in terms of section 58 of the Act to my satisfaction.

    Decision

24. Section 55 of the Act provides:

    55  Decision

    Unless the proceedings are discontinued or dismissed, 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.

    Note:For limitations see section 6.

25. Having regard to the complete establishment by the opponent of its ground under section 58 of the Act, I refuse to register application 1058177.

    Costs

26. As the opponent has been successful in these proceedings, I award costs against the applicant at the scale set out in the regulations.

    Ian Thompson

    Hearing Officer

    Trade Marks Hearings

    14 January 2008