Pewter Products Pty Ltd v Kirra Collectables Pty Ltd

[1995] ATMO 25

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,
WITH REASONS

Re:Opposition by Kirra Collectables Pty Ltd to the registration of application 584742 in the name of Pewter Products Pty Ltd.

Background

On 19.11.92, the above trade mark application was advertised as having been accepted for registration.  The application is in the name of Pewter Products Pty Ltd ("the applicant").  The trade mark the subject of the application, which was lodged on 19.8.92, is the word KIRRA.

The application was accepted in respect of goods specified as:

Pewter ware, including beer tankards, goblets and other drinking vessels, wine coolers and buckets, jugs, trophies, plates, plaques, hip flasks, place mats, coasters and pewter articles including animal, reptile and bird shaped gift and tourist articles, and all other articles in this class made from pewter or materials resembling or substituting pewter.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Kirra Collectables Pty Ltd ("the opponent"), on grounds which are generalised and which I will not recite at length. Let it be said, however, that there was no specific mention of conflict with any pending application in the name of the opponent.

The opponent has not served any evidence in support of its opposition.  It has had every opportunity to do so, having requested extensions of time for that purpose, the last of these being granted only after a hearing into that question.

After the end of the time allowed for service of evidence in support, the matter was set down for hearing on 17.11.93.  The applicant elected not to appear.  However, at the appointed time Mr Brian McKean, an officer of the opponent company, appeared. 

Mr McKean began to make submissions on matters which were outside the scope of the Notice of Opposition.  In particular, Mr McKean drew my attention to a pending application, number 568153, in the name of the opponent.  Mr McKean also argued that the word KIRRA is not a registrable trade mark, being a geographical name.

Section 50 of the Trade Marks Act stipulates:

(1) The Registrar shall, after giving to the applicant and the opponent an opportunity of being heard, decide-
(a) to refuse to register the trade mark;
(b) to register the trade mark subject to such conditions or limitations as he thinks fit; or
(c) to register the trade mark without conditions or limitations.
(2) In determining the opposition the Registrar may take into account a ground of objection whether relied upon by the opponent or not.

Thus the matters which Mr McKean raised were matters which it may well be appropriate to consider, even though they are unsupported by any evidence or are outside the specifics of the Notice of Opposition.  However, the raising of unexpected allegations, which are either entirely new or have not been supported in the evidence, will inevitably put the applicant in a difficult position.  It is sometimes appropriate for the Registrar to withdraw acceptance and allow the matter to be looked at afresh by an examiner of trade marks, but this also has its difficulties in that the application is again exposed to opposition, with both its risks and its delays, if it is eventually re-accepted.  In view of the history of this particular matter, that was not appropriate and I therefore adjourned the hearing to allow the opponent's own pending application to be examined and finalised. 

That has now been done and the opponent's application has been accepted in respect of "gold and silver plated photo frames".  It is common ground that the marks in question, those of the opponent and applicant, are deceptively similar but not substantially identical.  Accordingly, having heard Mr McKean's submissions, the issues to be resolved in deciding the present opposition are:

are the goods the subject of the present application "goods of the same description" as those specified in application 568153? In such a case, the application is caught by s 33 of the Trade Marks Act.

The relevant provision here is s 33(1), which provides:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

if it is caught by s 33, are the provisions of s 34 available to allow the present application to be registered, in view of honest concurrent use in the face of the earlier trade mark?

is the subject of the application a registrable trade mark, having regard to the fact that it consists only of the word KIRRA, which the opponent argues is a geographical name?

The relevant provisions here are Ss 24 and 26.  Among other things these two, taken together, provide that a geographical name shall not be registered unless it is both factually distinctive and endowed, in itself, with sufficient inherent adaptation to distinguish the applicant's goods.  These principles were not in dispute and I rely on the authorities and formulation set out in Australian Law of Trade Marks and Passing Off by D. R. Shanahan.  The authorities show that the latter issue is to be tested against the needs of other traders who act without improper motives. 

The trade mark applicant has now lodged evidence in support of its case and in answer to the matters first raised at the hearing.  A copy of that evidence has been served on the opponent and the hearing was resumed on the terms I have set out.  This time neither side attended.  I turn, therefore, to the applicant's evidence.

The evidence relied on by the applicant shows that the trade mark has been continuously used, by the applicant and by its predecessors in business, since early 1977.  The goods on which it has been used are pewter items, mostly for domestic use:  plates, goblets, place mats, hip flasks and so forth.  The applicant and its predecessors also produce "cast Australiana, such as small Australian native animals".

Sales figures for the years 89-90 to 92-93 are quoted, and range from a high of $483,000 in 1989-90 to a low of $273,000 in 91-92.  Such sales may amount to some 14,000 items per year if I take $20 per item as a possible wholesale price.  Sales for earlier years, in the hands of predecessor companies, are asserted to have been higher than these figures. 

The evidence is suggestive, but not absolutely clear, about the goods on which the trade mark has actually been used.  The copies of brochures are all of apparently recent origin - the sizes are all metric and one of the brochures displays the Australian Bicentennial logo - so they do not relate to the situation much before the date of application.  It is this date which is relevant for deciding if the mark was distinctive and if the provisions of section 34 can be applied.

Against this, it appears that Kirra is the name of small region in Queensland.  It does not seem to be a town or a village so much as a district, taking its name from that of the beach, which is near Coolangatta.  It has a Postcode but apparently no industry.

Kirra also appears to have a meaning as an Aboriginal word, meaning either "leaf" or "cloud with a silver lining".

Decision

I have already written to the parties and foreshadowed to them my intention in resolving the application.  That which follows is thus not new to the parties but is set down at this point, at which the opposition itself will be finalised, for the record, as it were.

KIRRA as a geographical name.
The geographical significance of the word KIRRA does not appear to be major, nor was the name adopted, by either the applicant or the opponent, to indicate the origin of the goods.  Moreover, the mark has been in use for fifteen years prior to lodgement.  I think, therefore, that I can properly apply the provisions of s 24(2) and deem the mark to be distinctive in relation to the goods for which it has actually been used.  Nor is there any reason why that provision cannot be applied after the application has been accepted.  It is sufficient that it is applied before the mark is registered.

Conflict with an earlier application.
With regard to the conflict with the earlier application, I must determine if any of the goods covered by application 584742 are goods of the same description as the gold and silver plated photo frames specified in 568153.  In brief terms, this will depend on the natures, uses and trade channels of the goods in question, with no single one of those three factors being decisive either way.

In general, the pewter domestic ware in the present application is not of the same nature or used for the same purposes as gold or silver plated photo frames.  Domestic ware may include novelty items or souvenirs but essentially it consists of items meant, or able, to be used in the home.  I am satisfied that such items, when intended for domestic use, are not goods of the same description as those specified in the opponent's application.

However, the application includes trophies, plaques and various tourist articles including animal-shaped ornaments, as well as the general catch-all of "all other articles in this class made from pewter or materials resembling or substituting pewter".  There is some doubt about just what the application includes, let alone when any of those miscellaneous items may or may not incorporate a photo-frame.

The class notes show that Class 21:

includes mainly small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain.

Includes, in particular:
 utensils and containers for household and kitchen use, for example: kitchen utensils, pails, and pans of iron, aluminium, plastics and other materials, small hand-operated apparatus for mincing, grinding, pressing, etc.: candle extinguishers, not of precious metal; electric combs;
electric toothbrushes; dish stands and decanter stands.

Does not include, in particular:
small apparatus for mincing, grinding, pressing, etc., driven by electricity (Cl. 7), cooking utensils, electric (Cl. 11); razors and shaving apparatus, clippers (hand instruments), metal implements and utensils for manicure and pedicure (Cl. 8); cleaning preparations, soaps, etc (Cl. 3); certain goods made of glass, porcelain and earthenware (consult the Alphabetical List of Goods); toilet mirrors (Cl. 20).

The alphabetical list of goods shows, for instance, that "figurines (statuettes)" fall in class 6 if of common metal.  They fall in class 21 only if of glass, terra cotta or similar and the same distinction is applied to busts and to works of art, all of which are classified according to their component material; precious metals into 14, common metals, such as pewter into class 6, wood, wax, plaster or plastic in 20 and so forth. 

There is thus some doubt that the goods specified in this application were all correctly classified.  None the less, the application was accepted as it stands, and I must approach it as including, in particular, the animal figures.

There is no reason why the animal figures may not incorporate a photo frame as part of the base, or as part of the animal itself, or why the figures could not incorporate holders for name cards, business cards or other notices.  If described as "menu card holders", for instance, the classification index shows that they would certainly fall into class 21.

Conversely, the opponent's application would include all manner of gold or silver plated photo frames.  These can range from simple and elegant items to those, embellished with Australiana, which are souvenir items first and photo frames second.  My own observation is that picture frames are common souvenir items.  If that is so, then the applicant's goods included, at the extreme, pewter souvenir Australiana menu holders, and animal castings incorporating a photo holder.  The opponent's goods are, at the extreme, souvenir Australiana photo frames with gold or silver plate.

On balance, therefore, I found that the application covered an unidentifiable scope which would almost certainly include goods having the same natures or uses, or both, as well as the same trade channels, as the opponent's.

As to the second question, the availability of s 34, the evidence relied on by the applicant suggests that the first use in respect of figures was consistent with the later brochures:  the cast animals in question are scale replicas and do not incorporate any adaptations for uses such as card or photo holders.

On the face of it, the statement of goods specified at the time was broader than what the applicant has actually traded in.  In particular, it did not stretch to the goods which are, in their natures and potential uses, closest to the photo frames covered by the opponent's application.  I do not see how the applicant's honest use of its mark for a restricted set of goods can be used to defend a wider claim.

On the other hand, if the applicant's goods were restricted fairly tightly to domestic-use items and to animal figurines, none being or incorporating photo frames or menu or card holders of any description, the section 33 objection would have been overcome. That restriction would also allow me to apply s 24(2), deeming the mark to have been distinctive at the date of lodgement.

Accordingly, I allowed the applicant to amend its application to specify:

Pewter ware in this class for table or kitchen use, beer tankards, goblets and other drinking vessels, wine coolers and buckets, jugs, trophies, plates, plaques, hip flasks, place mats, coasters, none of the foregoing being or incorporating photo frames or menu or card holders of any description; pewter animal, bird and reptile figurines, none of the foregoing incorporating photo frames or menu or card holders of any description.

This the applicant has done.  I therefore dismiss the opposition and award costs in accord with the official scale to the applicant.

T. Williams

Hearing Officer
18 May 1995