Phillip Morris Products SA v Sean Ngu

[2002] ATMO 96

TRADE MARKS ACT 1995

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

Re:Opposition by Philip Morris Products SA to registration of trade mark 817137 (34) – LONGFIELD – in the name of Sean Ngu.

Date of Decision:	23 October 2002
Delegate:	Hearing Officer Jock McDonagh
Representation:	Opponent - Mr Simon Williams of Spruson & Ferguson Applicant - ( no appearance)
Decision:	Application refused - s.59 ground allowed Costs awarded to the Opponent

Background

This issue arises out of the filing, on 13 December 1999, by Sean Ngu, (‘the applicant’) of Enmore, New South Wales, of application 817137 in Class 34 of the International (Nice) Classification of Goods and Services to register the word longfield in plain script in respect of the goods, ‘All types of tobacco and cigarette products’.

Following examination of the application, it was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 21 September 2000.

On 19 March 2001, within the time allowed in which to do so, Philip Morris Products S.A. (‘the opponent’, previously Fabriques de Tabac Reunies S.A.), filed Notice of Opposition (‘Notice’) to the registration of the trade mark. The Notice states several grounds of opposition: those relied on at the hearing were under sections 44, 60 and 59 of the Trade Marks Act 1995 (‘the Act’).  The hearing was in Sydney on 25 July 2002 before me as a delegate of the Registrar of Trade Marks.  The opponent was represented by Simon Williams of Spruson & Ferguson; the applicant did not appear or put in written submissions.

The Evidence

The evidence comprises two declarations – the first by Gunther Jahnke of (‘Mr Jahnke’) who is Value Market Manager of Philip Morris Limited, an authorised user of the opponent’s trade marks in Australia.  Mr Jahnke attests to the reputation of the opponent’s trade mark longbeach in Australia and to several of the opponent’s registrations which incorporate the trade mark longbeach in respect of tobacco and related products.

The second declaration is by Simon Williams (‘Mr Williams’) of Spruson & Ferguson.  Mr Williams brings into evidence other proceedings involving the same opposed trade mark and this applicant in British American Tobacco Australasia Limited v Sean Ngu [2002] ATMO 15 (18 February 2002) (‘BATA v Ngu’).  Appended to Mr Williams’ declaration is a copy of a letter that he sent to the applicant on 8 July 2002 by both courier and AR Registered Mail.  This letter refers to Mr Williams’ declaration and appends a copy of it, stating that the opponent intended to rely on it at the hearing.  Mr Williams declaration also exhibits a copy of a letter that the applicant sent by facsimile transmission to Spruson & Ferguson in which the applicant refers to:

·    Design for the packaging of Longfield tobacco products

·    Market research to ensure that packaging does not create any false imitation of current products sold in the Australian market

·    Meetings with the Australian Taxation Office applying for import, manufacturing and distribution licenses to wholesale and produce tobacco products in Australia

·    Negotiations to produce plant and machinery

·    Locating a suitable warehouse

In Mr Williams’ letter he requests that the applicant produce documentation at the hearing substantiating the above claims and states that if such documentation is not produced that his client would accordingly make submissions at the hearing in that connection.

Observation

Although this matter bears marked similarities to BATA v Ngu, it may readily be distinguished on the basis of evidence that goes to section 59 of the Act and I will accordingly decide this matter with reference to that section only.

Section 59

Section 59 of the Act provides:

59  Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)       to use, or authorise the use of, the trade mark in Australia; or

(b)       to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:   For applicant see section 6.

I consider that the evidence of Mr Williams goes very much to section 59 of the Act and should have put the applicant on notice that section 59 was an issue that would be addressed by the opponent at the hearing. The applicant, in his letter to Spruson & Ferguson, above, made various allegations that he was preparing for use of the opposed trade mark. The purported preparations are ones which would be easy to substantiate via documentation of negotiations with the Australian Taxation Office, substantiation of the referred to market research and so on. For whatever reason, the applicant has, when pressed, not provided evidence to support his claims.

In Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 51 (20 June 2002, Hearing Officer Williams said:

I do not say that Sapient has proved its case - it does not have the unenviable job of "proving a negative" - but if "slight evidence will suffice[1]" then it has done sufficient to shift the onus onto SAP Ag, requiring it to validate its intention.

[1] Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited, 116 CLR 254 at 258

The situation here is very much the same as that in Sapient, above, and may be distinguished from that in BATA v Ngu, where evidence impugning the applicant’s intention to use the trade mark was not only very slight but also oblique. Here the challenge concerning the applicant’s intention to use the trade mark is significant. As I have stated, the applicant has not responded to the opponent’s evidence and thus the opponent has established its ground under section 59.

Decision

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.

The opponent has established its ground under section 59 and I refuse to register the opposed trade mark.

Costs

The opponent has requested its costs and I order that the applicant pay the opponent’s costs in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh
Hearing Officer

23 October 2002