Peter John Wilkshire v Bombala Council

[2006] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Peter John Wilkshire to registration of trade mark application 942740(35) Platypus Country Logo, proceeding in the name of Bombala Council.

Delegate:

Ian Thompson

Representation:

Opponent

Peter John Wilkshire.

Applicant

Mr N Murray of counsel instructed by Mallesons Stephen Jaques of Canberra.

Decision:

1. sections 41, 43, 44 58 and 60 – opposition not established

2.  costs ordered against opponent

Background

1. Bombala Council (a shire in the south of the State of New South Wales) ('the applicant') of Caveat Street, Bombala, NSW, has filed an application to register a trade mark, current details of which are:

App No:  942740

Filing Date:  7 February 2003

Acceptance Advert:  26 June 2003

Services:Class: 35  Tourism promotions, advertising

Trade mark:  

1. On 18 July 2003 Peter John Wilkshire ('the opponent') of Granny’s Well, Bendoc, in the North East of Victoria, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cited three grounds, subsequently amended, to include those under sections 41, 43, 44 58 and 60 of the Trade Marks Act 1995 (‘the Act’), which were apparently pursued at the hearing.

2. Evidence in support, evidence in answer, evidence in reply and the applicant’s further evidence was duly served and filed according the Act and regulations thereto.

3. The hearing was held before me, as a delegate of the Registrar of Trade Marks, in Canberra, on 19 December 2005.  Mr Wilkshire represented himself at the hearing and Mr N Murray of counsel instructed by Mallesons Stephen Jaques of Canberra represented the Bombala Council.

Evidence

1. In summary, the evidence comprises:

Declarant	Position Known As	Date made	Exhibits
Evidence in Support
Opponent	Opponent	24 March 2005	1 – 39
Evidence in Answer
Greg Roberts	Recent Tourist Promotions Manager Cooma Visitors’ Information Centre ‘Roberts’	16 June 2005	1 – 2
Murray Fleming	Bombala Councillor, President Bombala Motorcycle Association ‘Fleming’	17 June 2005	1 – 3
June Cash	Project Officer For applicant ‘Cash’	9 June 2005	1 – 2
Franz Peters	Manager, Bombala National Parks & Wildlife Service ‘Peters’	21 June 2005	1 – 2
Robert John Stewart	Mayor of applicant ‘Stewart’	21 June 2005
Evidence in Reply
Opponent	Opponent	20 August 2005	1 – 15
Applicant’s Further Evidence
Robert John Stewart	See above ‘Stewart 2’	6 October 2005	1 – 6

1. The following synopsis is my understanding of the most salient points of the evidence and I will refer further to the declarations if it is necessary in my discussion of the issues.

2. The applicant is a New South Wales shire council whose southern borders are adjacent to the south eastern border of New South Wales with Victoria.  This shire is active in tourist promotion and assists in promotions and events which bring visitors to the shire, for example, in the running of a motorcycle event which is annually attended by many hundreds of people.

3. On 12 May 1995, the applicant previously applied to register a trade mark. in respect of the same or similar services to those presently applied for; this trade mark appears below:

1. The opponent alleges, and it is not disputed by the applicant, that the above image was created as the result of a competition run by the applicant for a new logo to use in respect of tourism advertising and promotions.

2. Registration of this earlier trade mark was opposed by Australian Geographic Pty Limited – presumably on the basis of a trade mark which is the representation of a platypus which appears on the front cover of the Australian Geographic magazine cover, thus:

1. As settlement of the dispute between the applicant and Australian Geographic Pty Limited, a designer from the magazine redesigned the platypus in the logo so that it appears as it presently does in paragraph 1, above, and a copyright assignment in favour of the applicant was executed by Australian Geographic Pty Limited.  Both the opposition and application to register were withdrawn and this application was filed.

2. The distance between Bombala, the main town in the shire, and Bendoc, the nearest centre of any consequence to the opponent, is about 50 kilometres by road across the Victorian border.

3. The opponent runs gold fossicking tours in and around Bendoc in North Eastern Victoria in the mountainous region adjacent to the New South Wales border.  On 18 August 2000, the opponent filed application to register the trade mark, below, which was subsequently registered:

Reg Number  847229

Priority date:  18 August 2000

Goods/Services:  Class 41: Education; providing of training; entertainment, sporting and cultural activities for people who are interested in fossicking for gold

Trade Mark:  

1. The opponent traces the genesis of this trade mark to 1989 when on a fishing trip with his son when he thought of the word ‘platypus’ to use in relation to gold fossicking tours’.  This evolved, the opponent says, into the words ‘platypus country’  The representation of the platypus, he says, is “developed” from a picture in an “old” children’s book called Shy the Platypus[1].  The opponent says that soon after the image of the platypus was developed by him (in 1989), he posted a handwritten advertisement in the Bendoc general store with a trade mark similar to the registered trade mark, but hand drawn – thus:

[1] By Leslie Rees & Walter Cunningham, HarperCollins Publishers (Australia) Pty Ltd (January 1, 1977).  The book was first published by John Sands in 1944; the author, Leslie Rees, died in the year 2000; the illustrator, Walter Cunningham, died in 1988.  It is thus likely that copyright in the artistic work of the illustrations expires in 2038.

1. The design for the trade mark which was registered in August 2000 under 847229 was computer drafted by Daniel Wilkshire, the opponent’s son, and there is in evidence a receipt which purports to be from a commercial stamp maker dated 14 June 1996 for the making of a stamp identical to the registered trade mark.  This, I infer, should place Daniel Wilkshire’s stated creation of the computer image at some time before 14 June 1996.

2. It is unclear to me why both the opponent and his son appear to state that the computer drafting (which I would infer occurred before 14 June 1996, if the receipt is to be accepted) was for the trade mark application made on 18 August 2000 over four years later. 

3. The opponent has made some use of his trade mark.  This use has, in my assessment, been slight.  He has taken some tour groups on tours but this, he states, includes friends and family.  It is not clear how the trade mark has been used to promote or advertise his services although the opponent has an Internet site; it is not clear how much has been expended on advertising services performed under the trade mark; and, it is not clear how much revenue has been generated under the trade mark. 

4. The opponent’s evidence is not, I consider, of high weight.  This is partly because the accompanying documentation, rather than supporting the opponent’s claims, introduces questions.  For example exhibit 6 to the opponent’s first declaration is a declaration by Michelle Barnes who was the owner of the Bendoc general store between 1992 and 1998.  She states that the advertising sign (with a hand-sketched version of the opponent’s trade mark) was on the wall in this time.  But what does she mean?  Does Ms Barnes mean to say that the sign was on the wall for the whole of this time?  Or, maybe just a small portion of it – for example, from 1996?  And I have also mentioned problems with the receipt which purports to be from a stamp-maker and which, oddly from one in that trade, bears no identification of the trader.

5. This lack of precision in the opponent’s evidence tends to confound rational analysis of its import and substance and, consequently, the weight that should be afforded to it – however, I have no set view as to whether this imprecision is obfuscation or, alternatively, poor expression and organization.

Issues

1. To my mind, it defies belief and credulity that two unconnected parties could arrive at such similar designs for trade marks by co-incidence.  It is very apparent that one of the parties, at least, is mistaken as to happenings and has – perhaps inadvertently – painted a misleading picture of events which have led to this matter being heard before the Registrar of Trade Marks.  I am fortunate that I do not, on the grounds that were pursued before me, have to decide which of the parties’ accounts of events is to be preferred.

2. Further, the opponent appears[2] to found his opposition in large part on his perceptions of his copyright (which he repeatedly asserts) in the drawing of the platypus which appears in his trade mark.  This is despite grounds under section 42 not being listed on the Notice of Opposition and notwithstanding the opponent’s sworn statement that he ‘developed’ the picture from one which ought itself to be subject to copyright. 

   [2] My considerations are not assisted by the fact that, during his peroration, the opponent did not (despite my invitation to do so) specifically address any of the nominated grounds of opposition or tie the evidence to them.

3. None-the-less, and as the opponent’s claims are not here under challenge, I will regard the opponent as being the author of his trade mark for the purposes of section 58 of the Act.

Section 58

1. 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.

2. To establish grounds under section 58 of the Act an opponent must establish to my satisfaction that it had:

   ·     A trade mark at least substantially identical[3] to the opposed trade mark

   ·     In use before the priority date or first use of the opposed trade mark;[4] whichever is the earlier, and that,

   ·     The goods or services in relation to which the opponent trade mark has been used are the ‘same kind of thing’[5] as those for which registration is sought.

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

   [4] Blackadder v. Good Roads Machinery Co. Incorporated (1926) 38 CLR 332; Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Ltd. (1974) 131 CLR 592

   [5] re Hicks' Case (1897) 22 VLR 63

3. Considerations could be complicated here by the fact that the Bombala Council made an earlier application to register a trade mark which is at least substantially identical to the one which is here opposed.  There are also problems in gauging the weight I should put on the opponent’s evidence (as regards when, exactly, use of his trade mark commenced) because, generally speaking, this material is not of high probative weight.

4. It is, perhaps, simplest to state that, whatever the opponent’s claims as to his use of the trade mark – and whatever the uncertainties introduced by the evidence relied on by the opponent – the services performed by the opponent are not ‘the same kind of thing’ as those for which the applicant seeks registration. On the one hand, there are the ‘Tourism promotions and advertising’ of the kinds commonly carried out by councils. This is the promotion of attractions and events within a council’s boundaries for the purpose of attracting people to that region. It is an activity for the wider benefit of all ratepayers in the shire. It is an office-based activity. On the other hand, there is the service of taking people, by the opponent, on guided tours. The intrinsic nature of the services – about which I will say more, below, under the heading Section 44 – is quite different. It is not enough in finding that the services are the same kind of thing, to observe that the services both involve tourism – if this was all that were necessary to find that services are ‘the same kind of thing’ one would conclude that both architectural and building services are the same kind of thing as they both concern, ultimately, the construction of buildings.

5. The opponent has not established his ground of opposition under section 58.

Section 41

1. Section 41 of the Act looks at the innate fitness of a trade mark for registration. What is to be assessed in terms of section 41 is the inherent capacity of the trade mark to distinguish the goods or services in relation to which the trade mark is, or is proposed to be, used from the similar goods or services of other traders at large – not the goods or services, specifically, of an opponent. (Comparisons to other trade marks may occur under sections 42, 44, 58 and 60). It is, of course, for an opponent to establish its grounds of grounds of opposition and there is no evidence which obviously goes to support this ground under section 41, nor was this ground addressed by the opponent in his submissions.

2. The opponent has not establish his ground under section 41 of the Act

Section 43

1. Section 43 of the Act provides:

   43  Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. In Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521 the Full Bench of the Federal Court observed:

   The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

1. As with my observations under section 41, section 43 looks at the inherent nature of the trade mark and prohibits the registration of trade marks the use of which would confusing or deceptive because of their inherent nature: that what they connote is confusing or deceptive – for example, the use of the trade mark ORLWOOLA[6] on clothing made of synthetic cloth or cotton.  Here, again, the opponent has not adduced evidence as to why the use of the opposed trade mark would be confusing or deceptive because of a connotation inherent within the opposed trade mark rather than because of its similarity to his own trade mark. 

   [6] Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.)

2. The opponent has not established this ground of opposition.

Section 44

1. Section 44 of the Act relevantly provides:

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)       the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. To establish this ground, the opponent must establish:

   ·     a trade mark application or registration

   ·     in the name of a person other than the applicant

   ·      which has an earlier priority date, and

   ·     is substantially identical or deceptively similar to the opposed trade mark

   ·     and is in respect of respect of similar services or closely related goods

3. In relation to the last ‘dot point’, above, the Act provides:

14  Definition of … similar services

…

(2)For the purposes of this Act, services are similar to other services:

(a)if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

1. In The Ritz Hotel Limited v Institut Hotelier Cesar Ritz SA [2003] ATMO 28, after quoting the decision of Burchett, Sackville and Lehane JJ in Australian Tourism Company Ltd and others v Mid Sydney Pty Ltd 42 IPR 561 at 567, I said:

   Thus, what I am to consider is the intrinsic nature of the services and the trade channels through which they are delivered, and, I am not to be distracted by the fact that the services of the parties might have some features in common which are incidental to their essential nature.  For example, pertinent to these oppositions, both plumbers and boilermakers might have, and train, apprentices but this circumstance does not make plumbing or boilermaking in their intrinsic natures 'education services'.[7]

   [7] And see Chiropractors' Association of Australia (National) Ltd v Kincare (Holdings) Pty Ltd [2005] ATMO 10

2. I do not consider that the services of the parties are the same or similar services.  What the applicant is seeking to register in respect of (‘Tourism promotions, advertising’) is, in effect, an advertising and promotional service, albeit with tourism advancement in the Bombala region as an object.

3. What the opponent is registered in respect of is, ‘Education; providing of training; entertainment, sporting and cultural activities for people who are interested in fossicking for gold conducting tours.’  In other words, the conducting of gold fossicking tours and training people how to fossick for gold.

4. The conducting of tours on the one hand as against advertising and promotional services, on the other hand, are quite different and distinct from each other, with differently trained people involved in their delivery, different ‘customers’ and an entirely different work method.  One is delivered from an office, the other in the field.  So, although the services appear, at first flush, to have something in common, the intrinsic nature of the services of conducting tours (on the one hand) and advertising and promotional activities (on the other) are essentially quite distinct from each other.

5. The opponent has not established his ground of opposition under section 44.

Section 60

1. Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

1. The opponent must, to establish the section 60 ground, satisfy me that:

   ·     It has a trade mark

   ·     which is at least deceptively similar to the opposed trade mark

   ·     and because of the reputation of the opponent’s trade mark

   ·     at the priority date of the opposed application

   ·     the use of the opposed trade mark would deceive or confuse.

2. The ‘reputation’ of a trade mark was discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 13 at paragraph 81:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

1. Kenny J went on to state at paragraph 86:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. The opponent’s trade mark seems to be one which has been used within and around the locality of Bendoc and its environs in north eastern Victoria and may have been noticed by a few visitors to that region.  It appears (or appeared) on the opponent’s Internet site but there are no figures supplied as to the number of visitors to this site.  There is no mention in evidence of the amounts of money spent on advertising the services in relation to which the opponent’s trade mark is used; there is no mention of the amounts of revenue generated under the trade mark.  There is no mention of the number of people who have been on these tours or how much these tours cost.

2. In short, there is no mention of the sorts of evidence required to enable an assessment of the reputation of the opponent’s trade mark although I would infer from the evidence a limited use and that the opponent’s trade mark does not have a reputation in the sense referred to by Kenny J in McCormick, above.

3. It follows that, no matter what the similarity of the trade marks might be, or whatever nexus might exist between the services, the opponent cannot establish this ground of opposition as he has not demonstrated to my satisfaction that his trade mark had a reputation at the priority date of the opposed application.

Decision

1. Section 55 of the Act provides:

   55. 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.

2. Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

Costs

1. Having been successful, the applicant is entitled to its costs, at the official scale, which I order against the opponent.

Ian Thompson

Hearing Officer

Trade Marks Hearings

27 February 2006