Pastime & Sport International Pty Ltd v Brett Francis Barker

[2005] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Pastime & Sport International Pty Ltd to registration of trade mark application 799223(14) - ICON - filed in the name of Brett Francis Barker.

Delegate:

Terry Williams

Representation:

Opponent: David Kell of counsel, instructed by Mallesons Stephen Jacques, solicitors

Applicant: Neil Holliday, patent attorney, of Lord & Co, patent attorneys.

Decision:

S 52 opposition: S 58: opponent was first user – other grounds not established – registration refused

Background

1. This is an opposition dispute concerning the trade mark ICON JEWELLERY, with an oval border:
   
   
   
   which Brett Francis Barker applied to register on 5 July 1999 in respect of gold and silver jewellery.  Such registration is now opposed by Pastime & Sport International Pty Ltd (the opponent), whose own trade mark is registered as number 842572. 

2. Both parties have filed evidence to support their positions, this being a process governed by Part 5 of the Trade Mark Regulations.  In the interests of brevity I will not list the declarations and the many exhibits, though if it becomes necessary I will refer to the relevant particulars in what follows.

3. I heard the arguments put to me by the parties’ advocates and am now to decide the opposition, under delegation from the Registrar of Trade Marks.

Grounds of opposition

1. At the hearing, the opponent was represented by David Kell of counsel, instructed by Mallesons Stephen Jacques solicitors.  Mr Kell indicated that the only grounds on which the opponent relied would be those relevant to sections 58 (ownership), 60 (conflicting prior reputation), 42 (contrary to law) and 43 (inherently likely to cause confusion).  Neil Holliday, patent attorney of the attorney firm of Lord and Co, represented the applicant.

2. The evidence was the subject of detailed analysis and submissions, to which I will come in due course.  For the moment, let me say only that the applicant and the opponent both commenced to use the trade mark ICON at roughly the same time.  The applicant produces more expensive jewellery items, of gold and silver.  The opponent’s goods tend to have more of a costume jewellery orientation.  However, the evidence shows that, while affordable when compared to the applicant’s, the goods made by the opponent contain some that are part of the same spectrum.

Ownership, s 58

1. In essence, the opponent, if it is to establish this ground, must show that it was the first user of the trade mark prior to the filing of the application by Mr Barker.  See Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375. I regard at least some of the goods in question as being sufficiently overlapping, and clearly the marks in question are substantially identical.

2. The evidence is, as I have said, not absolutely clear as to the details of first user.  Mr Barker, the applicant, trades from his own store in Fremantle and via the Internet.  He originally traded under his own name at the Subiaco markets in Perth but registered Icon Jewellery as a business name under the relevant Western Australian legislation in 1994.  Exhibit BFB-2 is a photo of the external signage to the applicant’s shop (then at Subiaco) as at the date of registration of the business name.  It shows the words ICON JEWELLERY, with the word Australia below it in smaller capital letters. However, the first actual trade in goods, as opposed to what might otherwise be the services of a retail jeweler, conducted using the trade mark, is somewhat harder to identify.  The applicant relies on various exhibits: catalogues that are dated 2000, invoices for the printing of tags in 1999 and on photographs of the shop front and store displays at Fremantle.  It is quite clear that the trade mark was being used in relation to goods at the Fremantle premises.  I accept, also, Mr Barker’s statement that an updated design, first displayed on the earlier Subiaco premises, was applied to “product labels, display stands and other material used within the shop”.  The updated version has an elliptical border, with ICON very prominent in the centre and with the words Australian Jewellery in smaller upper case letters above and below the word ICON.  I take these, in the circumstances, as being instances of trade mark use in relation to goods, but, quite obviously, the use can be no earlier than the date on which the signage was updated, “late 1995”. 

3. However, I think it would be unwarranted for me to take the manner of use prior to then as being in any way different.  Therefore, the Barker declaration and its exhibits support my finding that Mr Barker, the applicant, has been using the trade mark ICON JEWELLERY in respect of gold and silver jewellery since September 1994.

4. The opponent, for its part, has traded in costume jewellery for some time.  The opponent originally used a number of trade marks such as HARMONY, RAINBOW, SEVENTH SENSE and SKOOL JOOLS.  In 1995 Mr Lazarus, the Managing Director of the opponent, made the decision to bring these products together under the single trade mark ICON, apparently in January 1995.  Consistently, in its evidence in support, the opponent asserted first use in 1995.  However, on reviewing this matter in the light of Mr Barker’s declaration, Mr Lazaraus has been able to improve on this.  In his evidence in reply he has declared that the ICON trade mark was trialed at some trade shows in 1994. 

5. The evidence supporting this was, not surprisingly, subjected to close review at the hearing.  The opponent relies on a second declaration by Mr Lazarus to set out the specifics of this trade show usage.  Mr Lazarus declares:

   Annexed to this statutory declaration and marked “WPL-27” is a photograph which is date stamped 20 January 1994.  The photograph shows the Opponent’s use of ICON at a Gift and Jewellery Fair in January 1994.  Orders were taken for items sold under the trade mark ICON at this fair.  However, as the business has moved at least 5 times since that period those records have been discarded.

6. Mr Lazarus then similarly explains the import of the photos at WPL-28, date-stamped 10 February 1994 and said to be of the “Toy Fair and Hobby Fair” of February 1994. 

7. At the hearing, Mr Holliday, for the applicant, pointed out that the date claimed for this fair is at odds with Mr Lazarus’s earlier declaration, where he refers to ongoing promotion of the opponent’s goods at particular recurrent trade shows.  No such relevant trade show is specified for January, and a trade show in Melbourne called “Toy & Hobby Fair”, approximately the title attributed to WPL-28, occurs not in February but in March.  Therefore, Mr Holliday’s points are legitimate.  Mr Lazarus is mistaken about some aspect of the photographs.  However, I am very reluctant to assume that Mr Lazarus has made a completely false statement in either declaration.  Just as I have adopted a favourable reading of Mr Barker’s statements about his earliest use of the trade mark, I will not be quick to find gaps in the statements of Mr Lazarus.

8. Mr Holliday argued that the evidence of use by the opponent, in 1994, goes to, at most, rings of some indeterminate nature.  He argues that these are not “the same kind of thing”[1] as “gold and silver jewellery”.  I do not accept this argument:  it puts too much strain on the word “kind” to read it as “precisely the same sort”.  

   [1] Re Hicks’s Trade Mark (1897) 22 VLR 636 at 640)

9. To come to the point, I find that the first user, and therefore the owner, was the opponent.

10. Mr Holliday went on to argue that, were such a ground established under s 58, I would still be able to register the application, in recognition of the honest continuous use of the applicant.  However, it is not clear that I do have a discretion to register a mere honest common law user of the mark as an owner.  The decision to do so in the face of an established ground of opposition would be at odds with the reasoning of Kenny J when a similar issue arose under s 60 in McCormick & Company Inc v McCormick [2000] FCA 1335. Equally, if I had the discretion to do so, I would refuse to exercise it, on the bases that:

    • the extent of Mr Barker’s use has not been particularly high in dollar terms, and
    • Mr Barker, while aware that the internet trade that he has conducted may be the source of some confusion, has at no stage sought to disclaim any connection with the opponent.

11. At the hearing, Mr Holliday argued that no question has been raised at any stage as to the honesty of the adoption or use of the trade mark by the applicant.  This is true, albeit that Mr Lazarus has made declared statements impugning the use by the applicant in more recent times, ie post adoption.  Mr Lazarus is of the view that the applicant is a free rider on the most recent and extensive advertising of the opponent.  Again, he criticizes the applicant for “the printing of tags the use of the word ICON Jewellery Australia which is not what he started with”.  I am not sure what the actual offence is said to be in this, because the opponent, too, uses a proliferation of versions of its trade marks, some with oval borders, some squared.  I presume that Mr Lazarus refers to the updating of the applicant’s trade mark in 1995.  At that time, the opponent’s own use was very slight and I think it scarcely arguable that the applicant had, at that time, any possible motive as a free rider.

12. Mr Lazarus also makes another assertion, about the applicant changing his web site to resemble the opponent, but I give the latter claim no credence as Mr Barker has denied that there has been any change in the look of the site.

13. There does remain, as I have said, room for doubt about conflict via the internet.  This is, by Mr Barker’s own evidence, where he sees the conflict arising.  Mr Holliday, for his part, suggested that the confusion was simply a consequence of the opponent’s customers looking to make contact with the opponent.  The implication of this, of course, is that Mr Barker is entirely blameless and that his small and honest trade as a crafter of gold and silver jewellery has simply been inundated by the opponent’s bigger marketing presence.

14. Mr Barker, for his part, declares he has been aware of the opponent since “1997/8”.  There is no suggestion at any stage that he has done anything to preclude those who mistakenly find his web site from being confused.  Mr Holliday noted that the website clearly indicates the applicant’s business in Perth-based, and that this should make it clear to the opponent’s would-be customers that they have the wrong web page.  I find this unconvincing.  While I am satisfied that Mr Barker has been honest in his trade, his attitude to deception or confusion seems to be that it is somebody else’s problem.  I do not consider that this is a proper basis from which to argue that, as a discretionary exercise, his trade mark ought to be put onto the register.

15. Finally, as to the possibility of deception or confusion over time, I think there is additional potential for future conflict as both businesses continue to grow. 

Remaining grounds not established

1. I do not find the other grounds established because of a lack of detail and clarity about the extent of the opponent’s trade and advertising in the time before Mr Barker filed the opposed application.  As at the priority date, the other grounds are mere matters for speculation, not for a reliable finding.  My conclusion under s 58 will in any case resolve the matter.

Conclusion

1. A ground of opposition has been established under s 58.  Accordingly, my decision is that registration should be refused.  

2. I direct that the applicant pay the costs of the opponent in terms of the official scale.

Terry Williams

Hearing Officer

Trade Marks Hearings

15 March 2005