Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd
[2011] ATMO 46
•31 May 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Pritchard Pacific Pty Ltd AND Baltimore Aircoil (Australia) Pty Ltd to registration of trade mark application 1228482 (11, 37) – PRITCHARD COOLING & Device – filed in the name of Brendon McCarrison and Breezewater Pty Ltd.
AND
Re:Opposition by Breezewater Pty Ltd to registration of trade mark applications 1231089 and 1232074 (11, 37 and 42) - PRITCHARD & Device - filed in the name of Pritchard Pacific Pty Ltd.
Delegate:
Heath Wilson
Representation:
Brendon McCarrison and Breezewater Pty Ltd: Claude Anese of Cullens Patent and Trade Mark Attorneys
Pritchard Pacific Pty Ltd: Written submissions of Dominique Grigg of Counsel instructed by IP Wealth, Patent & Trade Mark Attorneys
Baltimore Aircoil (Australia) Pty Ltd: No appearance or submissions.
Decision:
2011 ATMO 46
1228482: s52 oppositions – s43, 58, 59 60, and 62A. Bad faith established on the balance of probabilities – trade mark refused. Costs awarded against applicant.
1231089 and 1232074: s52 oppositions – grounds under section 62(b), 44 and 58 - oppositions unsuccessful – trade marks to proceed to registration.
Background
1. On 7 March 2008, Pritchard Cooling Pty Ltd and Brendon McCarrison (later changed to Breezewater Pty Ltd and Brendon McCarrison - hereafter collectively referred to as ‘Breezewater’) applied to register the following trade mark 1228482 (‘the PC Logo’):
Class 11:
Evaporating apparatus and cooling tower apparatus
Class 37:Specialist cooling tower services for installations, repairs, rebuilds and replacements
2. The PC Logo was advertised as accepted in the Australian Official Journal of Trade Marks on 7 May 2009. On 20 March 2008 Pritchard Pacific Pty Ltd (‘Pritchard’) applied to register a trade mark (‘the Pritchard Logo’) which is shown below. That application, number 1231089, specifies the following goods and services:
Class 11: Cooling towers; open cooling towers; closed circuit cooling towers; process cooling equipment and apparatus; evaporative apparatus; evaporative condensers; cooling apparatus; air delivery apparatus for cooling commercial and industrial buildings; air conditioners; air conditioning apparatus for commercial and industrial buildings; electrically powered air blowers for air-conditioning purposes; air conditioning fans; axial fans; air conditioning installations for commercial and industrial use; air filters; air filter installations; heat transfer apparatus (other than parts of machines); heat exchangers (not parts of machines); air heaters; air heater installations; including instructional materials sold together with the aforesaid goods, accessories, parts and fittings for all the aforesaid goods allowed in this class
Class 37: Installation, maintenance and repair services, including but not limited to the installation, maintenance and repair of cooling towers, open cooling towers, closed circuit cooling towers, process cooling equipment and apparatus, evaporative apparatus, evaporative condensers, cooling apparatus, air delivery apparatus, air conditioners, electrically powered air blowers for air-conditioning purposes, air conditioning fans, axial fans, air conditioning installations, air filters, air filter installations, heat transfer apparatus (other than parts of machines), heat exchangers (not parts of machines), air heaters, air heater installations, providing information, including by electronic means and via a global computer network, about all of the aforesaid services
Pritchard also filed application 1232074, on 28 March 2008, for registration of the Pritchard Logo in respect of the following services:
Class 42: Engineering; engineering consultancy; engineering services; structural engineering services; engineering research; engineering design; civil engineering; design services relating to civil engineering; research, engineering and technical consultancy for industry; engineering surveys and inspections; engineering feasibility studies; building inspection services (surveying); engineering surveying; quantity surveying; land surveying; research and preparation of architectural and engineering reports and drawings; architectural consultation and advisory services; engineering project studies; engineering project management services; off site building project management; process cooling and evaporative apparatus resource planning and management services in this class; quality testing and monitoring services; performance monitoring and quality control services in relation to cooling towers; analysis of building engineering; industrial research; research and development (for others); scientific and technical analysis; technical testing services; technical survey services; design research; industrial product design; design project management; design and development services in process cooling and evaporative apparatus; industrial process development; design of electrical systems; air flow consulting services; energy use and conservation consultancy; preparation of technical projects, technical research and consultancy services in the field of carbon offsetting; consultancy in the field of energy-saving; providing information, including by electronic means and via a global computer network, about all of the aforesaid services
3. Both applications were accepted under the provisions of section 41(5) of the Trade Marks Act 1995 (‘the Act’). However, in view of the PC Logo, which constituted a prior and conflicting application, the provisions of 44(4) were also applied.
4. On 12 August and 27 August 2009, Baltimore Aircoil Australia Pty Ltd (‘BAC Aus’) and Pritchard both filed notices of opposition to the registration of application 1228482 nominating sections 41, 43, 44, 58, 58A, 60, 62, and 62A of the Act as the grounds of opposition.
5. On 9 October 2009, Breezewater filed notices of opposition to trade mark applications 1231089 and 1232074, nominating sections 39, 41, 43, 44, 58, 58A, 59, 60, 62 and 62A of the Act.
Evidence
6. By prior agreement with the parties, I have considered, as a whole, all of the evidence filed and served for any of the above oppositions for the purposes of deciding each of the oppositions. However, the evidence was originally filed and served in the following manner:
Evidence for 1228482 (Opposition by Pritchard)
· Statutory declaration of Gregory Wilcox with exhibits A to T dated 7 December 2009 (‘Wilcox 1’).
· Statutory declaration of Brendon Jeffrey McCarrison with exhibits BJM-1 to BJM-6 dated 6 April 2010 (‘McCarrison 1’).
· Statutory declaration of Gregory Wilcox with exhibits 1 to 6 dated 8 July 2010 (‘Wilcox 2’).
Evidence for 1228482 (Opposition by BAC Aus)
· Statutory declaration of Danielle Jepson with exhibits A to K dated 25 January 2010 (‘Jepson’).
· Statutory declaration of Brendon Jeffrey McCarrison with exhibits BJM-1 to BJM-6 dated 6 April 2010 (‘McCarrison 1’).
· Statutory declaration of Craig Johnson with exhibits 1-2 dated 8 July 2010 (‘Johnson’).
Evidence for 1231089 and 1232074 (Opposition by Breezewater)
· Statutory declaration of Brendon Jeffrey McCarrison with exhibits BJM-1 to BJM-6 dated 6 April 2010 (‘McCarrison 1’).
· Statutory declaration of Gregory Wilcox with exhibits 1 to 6 dated 8 July 2010 (‘Wilcox 2’).
· Statutory declaration of Brendon Jeffery McCarrison dated 23 September 2010. (‘McCarrison 2’).
7. Despite certain discrepancies highlighted by the parties in their evidence, a history of the use of the word “Pritchard” may be discerned. I have supplied a chronology of the relevant events as described by the parties:
· In 1920, the word PRITCHARD was established as a trade mark in the United States by a company named J.F Pritchard & Co. In 1975 Baltimore Aircoil Company (‘BAC US’) purchased the assets, including the trade mark, of J.F Pritchard & Co.
· Between 1960 and 1975, Evans Deakin Industries Pty Ltd sells PRITCHARD products in Australia on behalf of J.F Pritchard & Co and BAC US.
· In 1978, BAC Aus first used the trade mark BAC PRITCHARD in relation to its cooling towers sold in Australia.
· Pritchard Pacific Pty Ltd (‘PP1’) operated from 1983 until 1988 (after which its name was changed to PP Engineering Pty Ltd) with Gregory Wilcox as a director. Also in 1983, Mr Wilcox became an ‘Independent Factory Authorised Representative’ for BAC US and acted as an agent for BAC Aus purportedly providing goods and services under the word trade mark PRITCHARD[1].
· In 1993, Pritchard Cooling Towers Services Pty Ltd (later renamed Pritchard Cooling Towers Pty Ltd – but referred to hereafter as ‘PCT’) was incorporated and run by directors Mr Wilcox and Brendon McCarrison. This company “supplied installed, repaired, rebuilt and serviced heat transfer equipment in Australia”[2] and purportedly used the Pritchard Logo and the expression ‘Pritchard Cooling Towers’ as trade marks.
· Pritchard Pacific Pty Ltd (‘PP2’) operated from 1993 separately from and concurrently with PCT also using the Pritchard Logo and (according to Wilcox) the word ‘Pritchard’. Mr Wilcox was also director of this company and renamed it Wilcox Pacific Pty Ltd in 2006.
· Pritchard, as defined above (i.e. the company that has applied to register the Pritchard Logo), is the third company to be named Pritchard Pacific Pty Ltd. It was incorporated in March 2006 and has continued to use the Pritchard Logo to date under an arrangement with BAC Aus.
· On 20 February 2008, PCT ceased trading but the company remained registered. The property, plant and equipment held by PCT were divided between directors Wilcox and McCarrison. However, there was no agreement as to any intellectual property or trade marks that PCT may have owned.
· Once PCT ceased trading, Mr McCarrison incorporated his own company named Pritchard Cooling Pty Ltd (‘PC’) in 2008 and applied for and commenced using the PC Logo as his trade mark in relation to cooling towers.
· Mr Wilcox also incorporated a new company in 2009, Pritchard Cooling Tower Services Pty Ltd. This name is identical to the final name of the company previously operated by Messrs Wilcox and McCarrison.
[1] Wilcox 1, paragraphs 14 and 16.
[2] McCarrison 1, paragraph 12.
8. I heard all three oppositions on 10 February 2011 in Canberra as a delegate of the Registrar of Trade Marks. Claude Anese of Cullens, Patent and Trade Mark Attorneys appeared on behalf of Breezewater. Pritchard did not appear; relying instead on written submissions prepared by Dominique Grigg of Counsel, instructed by IP Wealth, Patent & Trade Mark Attorneys. Pritchard pressed the grounds of opposition under sections 43, 58, 59, 60 and 62A in relation to trade mark 1228482. For the oppositions to trade marks 1231089 and 1232074, Breezewater pressed only sections 62(b), 44 and 58 of the Act.
Onus and Reasons
9. For convenience, I will address the opposition matters separately in the following reasons. It was not disputed that the opponent(s) bear the onus of establishing at least one of the nominated grounds of opposition on the balance of probabilities.[3] I proceed on that basis.
[3] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891at [22] to [26].
Oppositions to Breezewater’s application Trade Mark 1228482
10. Both Pritchard and BAC Aus have relied on s 43, as follows.
Section 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.
11. Pritchard alleges that the PC Logo connotes a connection or association specifically with Pritchard Pacific Pty Ltd and the reputation built around its trade marks. Accordingly, (it argues) the trade mark should be refused on that ground. However, Breezewater has referred to relevant precedent in this regard, namely Big Country Developments Pty Ltd v TGI Friday’s Inc.[4], and Winton Shire Council v Lomas.[5] In the latter, Justice Spender found:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under section 60.
[4] Big Country Developments Pty Ltd v TGI Friday’s Inc (2000) 48 IPR 513 at 521 (later affirmed in Pfizer Products Inc v Karam at [53]).
[5] Winton Shire Council v Lomas (2002) 56 IPR 72 at 77.
12. Therefore, the submission that there is a connection to Pritchard due to its reputation in a similar trade mark cannot be a relevant consideration for this ground. Neither Pritchard nor BAC Aus have highlighted any other connotation that the PC Logo may contain, and no connotation is evident from the sum of the material filed. As a consequence, the ground of opposition under section 43 of the Act has not been established.
Section 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.
13. Pritchard argues that Breezewater is not the owner of the PC Logo. In order to establish this ground a successful opponent must point to a trade mark which is at least “substantially identical”[6] to the PC Logo and which has been used in relation to goods or services that are “the same kind of thing”[7] as the goods and services specified in Breezewater’s application.
[6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495
[7] Re Hicks’ Trade Mark (1897) 22 VLR 636.
14. While Mr McCarrison has declared that the PC Logo has been used since 27 February 2008, there is no dated evidence to support this assertion. To the extent that it is relevant for the outcome, Breezewater has not established use prior to 7 March 2008 and therefore Pritchard or BAC Aus need only establish use prior to that date.
15. From the Wilcox declarations and Pritchard’s submissions, it is evident that Pritchard is relying on its use of the Pritchard Logo to establish that Breezewater is not the owner of the PC Logo. While the word “Pritchard” is a major element in both marks, the question of substantial identity must be arrived at after comparing the trade marks:
…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.[8]
[8] Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415.
16. In the PC Logo, the word “Cooling” is not capable of distinguishing the goods and services. While its presence in the mark cannot be completely disregarded, the word does not serve to significantly differentiate the two trade marks. However, both trade marks feature prominent device elements and the presence of differing devices in composite trade marks can be sufficient to preclude a finding of substantial identity.
17. Apart from the fact that the respective devices both contain or consist of wavy lines, the devices are significantly different. Taking the overall effect of the words and devices as a whole, I find that the trade marks are not substantially identical. The section 58 ground cannot be made out in relation to the Pritchard Logo.
18. There were no written submissions made on behalf of BAC Aus, so it is unclear whether that company, in its role as opponent, is relying on use of the Pritchard Logo or on the use of some other trade mark. However, under the heading “Similarities of the Trade Marks and Prior Use, Jepson declares[9]:
Section 58 of the Australian Trade Marks Act 1995 Commonwealth states that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The Pritchard Pacific Pty Ltd’s trade mark consists of the word PRITCHARD and two wavy lines in the colours blue and green.
[9] Jepson declaration, paragraphs 29, 30.
19. If BAC Aus is relying on the Pritchard Logos to establish this ground, I have already found those trade marks are not substantially identical to the PC Logo, and section 58 cannot be established. There are also statements referring to prior use of “Pritchard” by itself. Jepson declares:
The trade mark PRITCHARD has been in use by the Opponent (BAC Aus), their predecessors in title and their authorised users for approximately 80 years.
And, later:
The abovementioned Logo (the Pritchard Logo) was recently filed under Australian trade mark application numbers 1231089 and 1232074 however Mr Gregory Wilcox’s common law rights and evidence of use extend back to 1983.
The Opponent’s evidence of use and common law rights extends back to the 1920s where their predecessors in title first used the trade mark PRITCHARD in relation the goods and services relating to cooling towers and heat transfer equipment (sic).
20. Bald assertions of use by BAC Aus of the Pritchard “name” or trade mark have not been supported by material that I can accept as objective evidence demonstrating that the word PRITCHARD has been used as a trade mark in the Australia marketplace. Apart from some use of the Pritchard Logo the only other evidence is contained in marketing brochures. These brochures establish use of the name “BAC-Pritchard” or “BAC-Pritchard, Inc” from the 1980s, but only by BAC US, and therefore presumably in the US. Jepson indicates that these brochures were distributed worldwide but there is no indication that the distribution extended to Australia. Even if it did, on a side-by side comparison, I find that neither “BAC-Pritchard” nor “BAC-Pritchard Inc” is substantially identical to the PC Logo.
21. As I am unable to identify a prior instance of use in Australia of a trade mark that is substantially identical to the PC Logo, I am not satisfied that this ground has been established.
Section 59: Applicant not intending to use trade mark
22. Section 59 was not nominated as a ground in the notices of opposition filed by either Pritchard or BAC Aus. At no point did either opponent seek to amend its notice of opposition and include this ground. However, Ms Grigg of Counsel sought to introduce it via the written submissions to be considered at the hearing. Breezewater has had inadequate time to either address the allegations or prepare any evidence in response. It would be inequitable for me to allow any further consideration of this ground at such a late stage in the proceedings. I find that section 59 is not an available ground of opposition here.
Section 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)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.
23. Section 60 requires the opponent (either Pritchard or BAC Aus) to establish an Australian reputation in another trade mark which was in existence on 7 March 2008. That reputation must be sufficient for the use of the PC Logo to deceive or cause confusion in the marketplace. As with a section 58 ground, the opponent need not be the owner of the conflicting trade mark. It is no longer a requirement under section 60 for the conflicting trade marks to be substantially identical or deceptively similar. A consideration of the similarity between the trade marks is still crucial to determine the likelihood of deception or confusion arising from the opponent’s reputation in its trade mark.
24. Pritchard relies on the reputation it claims has been established for the Pritchard Logo in Australia and again refers to use of the name ‘Pritchard’. Mr Anese, for Breezewater argues that the failure to differentiate between the two undermines the opponent’s argument. In this case, there is no reason that the opponent cannot rely on the reputation of both in establishing this ground. With the simple addition of two wavy vertical lines, I find that the Pritchard Logo is substantially identical to the plain word ‘Pritchard’ and both are at least deceptively similar to the PC Logo. Pritchard’s lack of differentiation will therefore have little bearing on the outcome.
25. The Wilcox declarations outline the history of the name PRITCHARD since the 1920’s in the United States, and states that BAC PRITCHARD cooling towers had been sold in Australia since 1978. Those declarations also represent the bulk of Pritchard’s evidence in relation to the reputation of the Pritchard Logo, which was first conceived in around 1998.
26. Wilcox 1 and 2 focus predominantly on the history of the companies and alleged instances of confusion between the trade marks, rather than specifically on the reputation of the Pritchard Logo in Australia. In addition, any sales and advertising figures which would be of assistance in establishing a reputation are absent from these declarations. In ConAgra Inc v McCain Foods[10], Lockhart J commented:
But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum.
[10] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 [at 234].
27. At one point, Wilcox 1 asserts:
The Opponent has already proven to the Registrar of Trade Marks that they have significant prior use of their PRITCHARD trade mark in Australia by way of the Declarations submitted in order to gain acceptance of the trade mark application numbers 1231089 and 1232074.
28. Presumably, this statement refers to the two statutory declarations of Cassandra Voller submitted during the examination stage to enable the Pritchard Logo to proceed to acceptance under the provisions of sections 41(5) and 44(4) of the Act. These declarations have not been served in these proceedings. If evidence submitted during examination has not been officially served on Breezewater, it cannot be considered in the determination of this matter.
29. Elements of the Voller declarations have been requested under Freedom of Information and included by Breezewater in McCarrison 1, but sales figures and advertising expenditure were omitted from their contents. The material that remains in those declarations consists of correspondence, quotations and company registration certificates. It is insufficient to establish the required reputation in the Pritchard Logo.
30. Instances of actual confusion may strengthen an argument that the use of the PC Logo would be likely to deceive or cause confusion in Australia. However, any confusion will not suffice. The deception or confusion must occur between the trade marks as a result of the demonstrated reputation in the Pritchard Logo.
31. Breezewater’s attorney submits that the history of trade marks legislation contemplates a degree of potential confusion between trade marks. While relevant for honest concurrent user provisions, it is debatable whether such a proposition is also relevant to section 60 given that section is not subject to s44(3)[11]. Leaving aside the contentious notion that any concurrent use between the parties has been honest, I find that section 60 does not contemplate more than a mere possibility of confusion between the trade marks stemming from the opponent’s reputation.
[11] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 [at 93].
32. Numerous exhibited instances of confusion are included in exhibits F-K of Wilcox 1 and comprise incorrect addresses on orders or invoices (e.g. Pritchard Cooling Pty Ltd instead of Pritchard Pacific Pty Ltd) and general correspondence being sent to the wrong companies. Given the history of companies, I find it unsurprising that such confusion has occurred here. Once the directors of PCT (Wilcox and McCarrison) commenced trade under new company names that were similar not only to each other’s, but also to their dissolved jointly owned company - confusion was inevitable, particularly amongst their former customers. In addition, the myriad of companies operating with similar names and the use of similar trade marks over the years would likely have contributed to the confusion.
33. As previously outlined, I am not satisfied that an Australian reputation in the trade mark has been sufficiently demonstrated by the evidence. Neither has Pritchard established that the confusion which has resulted is due to the renown of the Pritchard Logo.
34. In relation to the opposition by BAC Aus, I briefly addressed the contents of Jepson under the section 58 ground. For completeness, and with respect to section 60, BAC Aus’ declarations evidence use of ‘BAC-Pritchard’ but not of a significant reputation existing on 7 March 2008 such that the use of the PC Logo would be likely to deceive or cause confusion in the marketplace. I find that the ground of opposition under section 60 of the Act has not been established by either opponent.
Section 62A: Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
35. The general approach to trade mark applications made in bad faith as contemplated under section 62A of the Act can be summarised via analogy to the UK case of Harrison’s Trade Mark[12]:
The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However, the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as bad faith by persons adopting proper standards.
[12] Harrison’s Trade Mark Application [2005] FSR 10 [at 26]
36. The limited numbers of decisions from the Registrar of Trade Marks making positive determinations of bad faith have dealt with quite unambiguous circumstances[13]. However, it should not be concluded, either from these or from first principles, that the bad faith need be established beyond doubt for the ground to be made out.
[13] See Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26; Bombala Council v Peter Wilkshire [2009] ATMO 33.
37. It is true that bad faith is a serious allegation, one which should not be made lightly and may be akin to a finding of commercial fraud[14], but I am of the view that the relevant test is still on the balance of probabilities. As the Registrar’s delegate, if I am satisfied that it is more probable than not the trade mark application before me was applied for in bad faith, that is sufficient for the ground to be made out.
[14] See Eicher Ltd Royal Enfield Motor Units v Matthew Scott Holder (BL O-363-01).
38. Breezewater’s attorney submitted that bad faith involved an “ulterior motive for seeking registration, absent a genuine intention to use coupled with a genuine belief in that right.” I consider this interpretation of bad faith to be narrow in scope. For example, an applicant may have a genuine intention to use a trade mark applied for in bad faith. Conversely, by itself, a lack of intention to use a trade mark would not necessarily lead to a finding of bad faith.
39. The Hearing Officer in Hard Coffee[15] found that in most circumstances an element of intentional dishonesty was necessary to establish section 62A, but failing that, the ‘reasonable man’ test may apply:
…In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the ‘reasonable man’ standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.
[15] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited (Supra).
40. Therefore, it may be the case that an applicant has some belief in its right to a trade mark but a ‘reasonable man’ still ought to be aware that he should not apply for its registration. Relevant to the current facts, the UK case of William Leith New Century Marquees[16] indicated:
…Counsel also pointed to UK cases that indicate that bad faith will be established where someone has applied to register a mark which he has previously recognized as the property of another with whom that person has a course of dealing or some other relationship.
[16] William Leith New Century Marquees (SRISO/018/00, UK Registry) p.9
41. Mr McCarrison clearly had a prior business connection with Pritchard by virtue of his being a previous director of the company PCT with Mr Wilcox. It is evident from the contents of McCarrison 1, that prior to filing the current application; he had knowledge of the Pritchard company history, its connection with BAC Aus, and the extent of use of the Pritchard Logo.
42. Knowledge of the applicant’s business and the existence of a prior relationship are not sufficient by themselves to ground a finding of bad faith. These factors are relevant in determining whether a person standing in Breezewater’s shoes ought to have been aware that he should not apply for the registration of a deceptively similar trade mark to that used by his former business partner.
43. After the meeting concerning the cessation of PCT’s trading activities on 20 February 2008, Mr Wilcox (and thus Pritchard) was aware that McCarrison intended to continue in the cooling tower business but not that he was going to use the name “Pritchard” in his trade mark. While the minutes of the meeting[17] do not mention the division of intellectual property, the fact that there was nothing preventing Mr McCarrison from applying for the trade mark does not mean that he did so in good faith. Further, it is likely that Mr McCarrison was aware that Mr Wilcox intended to continue using the Pritchard Logo which had been used concurrently by PP2 and Pritchard during PCT’s operation.
[17] Wilcox 1, exhibit E.
44. Shortly after the meeting, the Pritchard Logo was still being used on the letterhead for Mr McCarrison’s newly incorporated company (PC). With regard to correspondence between Mr McCarrison and a client on 5 March 2008, Mr McCarrison explains:
In the hectic period when Pritchard Cooling Pty Ltd first started trading, stationery was prepared quickly. I acknowledge that the wrong trade mark was used on that letter, and I sought to advise [the customer] of that error.
45. In McCarrison 2, he indicates that Breezewater did not intend to mislead customers into thinking they were dealing with Pritchard. However, the consequence of Breezewater’s conduct (including the adoption of the PC Logo) has been confusion amongst former clients and I note that there is lack of correspondence from Breezewater to these clients clarifying the situation.
46. There is another incident supporting a possible inference of bad faith on Breezewater’s part. Pritchard refers to emails that were sent to the Cooling Technology Institute (‘CTI’) regarding membership details (purporting to be on behalf of PCT).[18] Mr Wilcox declares that the applicant advised CTI that Pritchard Cooling Towers Pty Ltd had simply changed its name to Pritchard Cooling Pty Ltd, in an attempt to mislead the CTI as to the true state of affairs. The first email dated 14 May 2008 is from an employee of PC:
Please note Brendon McCarrison of Pritchard Cooling Towers has changed the company name to Pritchard Cooling Pty Ltd.
[18] Wilcox 1 paragraphs 56-61.
47. This statement is misleading. Nor did it happen in isolation. On 17 June 2008, Helen McCarrison on behalf of PC requested that the phone number, web address and email address be changed from the contact details of PCT to those of PC.[19] On 4 August, Pritchard requested that CTI correct these details.
[19] Wilcox 1, exhibit G.
48. In response to the allegations surrounding these events, Mr McCarrison declares:
I advise that the email was sent by an employee of PC, and when the error was subsequently discovered by PC, it was addressed immediately. CTI also acknowledged that an error was made at its end.
49. Mr McCarrison comments further (in McCarrison 2):
I say that Pritchard Cooling Pty Ltd did rectify the mistake in the CTI listing, by way of various phone calls and emails to Virginia Manser at CTI.
50. No evidence from Breezewater has been provided to support the above assertions, and they appear to be at odds with the emails exhibited to Wilcox 1, which indicate that it was Pritchard who took steps to rectify the error. Breezewater also does not appear to have provided an explanation for the second email sent by Ms McCarrison. While there may have been a delay on CTI’s part in correcting the information, it was Breezewater that provided the incorrect information in the first place.
51. The attorney for Breezewater submits that Breezewater applied for the PC Logo in the genuine belief that it had a right to its use and registration. The only explanation provided for Breezewater’s use of “Pritchard” in its new trade mark is contained in McCarrison 2[20]:
…However, there was no agreement in relation to trade marks. In particular, there was no restriction on my use of the name ‘Pritchard Cooling’. Through my long association with Pritchard Cooling Towers Pty Ltd, that name had become associated as much with me as with Wilcox, if not more so.
[20] At paragraph 9
52. The comment from Mr McCarrison appears to lay some claim to an association with the name ‘Pritchard Cooling’ but does not go so far as to state his belief in a right to the ownership of a trade mark.
53. Breezewater has repeatedly stated that Pritchard (or its predecessors in title) were authorised to use the Pritchard Logo by BAC US or BAC Aus. So regardless of which of those companies had rights in the trade mark, Breezewater has acknowledged a belief that it (Breezewater) does not. Therefore, Breezewater should have known that applying for the registration of a deceptively similar trade mark would not be in good faith without the authorisation of one of the companies. A reasonable person standing in the shoes of Breezewater ought to have been aware that he should not have applied for the PC Logo.
54. While it is not determinative of bad faith at the time of filing, I further note that the applicant subsequently changed its name from Pritchard Cooling Pty Ltd to Breezewater Pty Ltd, its website address now redirects to and it has ceased using the PC Logo on the website since filing. I note that Breezewater’s website now incorporates the water drop device featured in the PC Logo along with the name Breezewater and the words “formerly Pritchard Cooling”.[21]
[21] As evidenced in Wilcox 2, paragraph 42 and exhibit 3.
55. In deciding this ground, I must be satisfied on the balance of probabilities that the application was made in bad faith. Only the parties themselves know the true state of affairs here, and there is an element of doubt on both sides. However, I find that Breezewater ought to have been aware that it should not have applied to register the PC Logo. On the balance of probabilities, I find that the ground of opposition under section 62A of the Act has been established.
Opposition to Trade Marks 1231089 and 1232074:
56. The three grounds (s62(b), 44 and 58) relied upon by Breezewater are all based around a similar premise. During the course of these proceedings Breezewater highlighted that Pritchard Pacific Pty Ltd has been the name of three separate legal entities consecutively operating since 1983. Mr Wilcox has been a director of each of those companies which have purportedly been using the Pritchard Logo and/or the word ‘Pritchard’ since that time. Pritchard submits that use by PP2 is that of a predecessor in title but there is no evidence of any trade mark(s) assignments between the respective entities. In the absence of evidence to the contrary, the transfer of the goodwill of a business impliedly includes a trade mark. I will address the grounds of opposition taking into account the following definition of a predecessor in title contained in section 6 of the Act:
… in relation to a person who claims to be the owner of a trade mark, means:
(a)if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first‑mentioned person—that other person or any one of those other persons; or
(b)if paragraph (a) does not apply—the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first‑mentioned person.
Note: In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business.
57. Section 62: Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
(a)that the application, or a document filed in support of the application, was amended contrary to this Act;
(b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
Note:For file see section 6.
58. The attorney for Breezewater submits that Pritchard misled the Registrar at the examination stage and argues that the Pritchard Logo was accepted under s41(5) and s44(4) of the Act on the basis of statements and representations that were false in material particulars.
59. The Pritchard Logo was originally accepted on the basis of two statutory declarations made by Cassandra Voller (Pritchard’s representative), parts of which are in evidence and attached to McCarrison 1. An ordinary reading of a number of statements in the Voller declarations would have led the examiner to mistakenly believe that there had been only one entity named Pritchard Pacific Pty Ltd operating from 1983, that entity being the applicant. Any distinction between the entities PP1, PP2 and Pritchard is not immediately evident from that material.
60. Ms Voller has now indicated (via written submissions in response to assertions by Breezewater’s attorney) that the inaccurate statements within her declarations were not made with the intention to mislead the Registrar. She also submits those statements would not have been critical to the fate of the trade mark applications in any event. For s62(b) to be established the applicant need not have had the intention to deliberately mislead the Registrar.[22] If the representations are proven to be false and thus mislead the Registrar in relation to material particulars so that acceptance results, then the ground is made out.
[22] As in Link Recruitment Pty Limited v Link Employment and Training Inc (2006) 69 IPR 614.
61. I will firstly address whether the representations regarding Pritchard are false, and secondly, whether they would amount to material particulars. Unhelpfully, Breezewater’s submissions do not distinguish between disputed facts in the Voller declarations and statements which may constitute material particulars for sections 41 and 44. The second Voller declaration contains one of these disputed facts: “…Mr Brendan McCarrison is an ex-business partner/employee of the Applicant and has filed the application in bad faith” While inaccurate in terms of who the applicant is, such a statement does not bear on the consideration of prior trade mark use (s44(4)) or the ability of a trade mark to distinguish (s41). Accordingly, it should not have affected the examiner’s decision to accept.
62. In McCarrison 1, the authenticity of photographic images exhibited to the declaration is questioned. Certain elements of those images are questionable, and the defect is likely to have been evident to the examiner. Regardless, I am not satisfied that it is a false representation of a material particular.
63. The majority of the remaining alleged misrepresentations within the Voller declarations imply that the first use of the trade marks in Australia was by the applicant and not by its apparent predecessor(s) in title (PP1 and PP2). The effect is that Pritchard, PP1 and PP2 would all be seen as the same entity. Examples referring to Pritchard as the applicant include:
The Applicant commenced trading under the trade mark PRITCHARD PACIFIC PTY LTD on 8 April 1983.
And, at paragraph 11B:
Copy of certificate of Incorporation of Proprietary Company, dated 8 April 1983, clearly showing the PRITCHARD trade mark. This is the date of first use of the trade mark by the Applicant.
64. Pritchard was incorporated in 2006, not 1983. While the above representations are false, the applicant also attaches an ASIC Certificate of registration for Pritchard dated 14 March 2006 and an ASIC extract clearly showing the registration date. The presence of these exhibits indicates that Pritchard provided enough material to allow the true situation to be assessed. The majority of trade mark use shown elsewhere in the declarations is that of PP2.
65. The examiner did not accept the application under the provisions of prior use simply on the basis of a company registration date or unsupported statements of use. The examiner agreed that the applications could be accepted under section 41(5) on the first declaration, but requested further evidence for the Pritchard Logos to be accepted under prior use. In her second report, the examiner was critical of such bald statements of use. She additionally pointed to the need for the evidence showing use of the applied-for trade mark.
66. Section 44(4) stipulates that the applicant or the predecessor in title must have continuously used the trade mark before the priority date for the conflicting trade marks. If the examiner had been aware that use of the trade marks may have been by a predecessor in title, I find it unlikely that this would have altered the examiner’s decision to accept the applications. The declaration would have been taken at face value. In relation to the finer points of ownership and chain of title, the Hearing Officer observed in MB Holdings (Australia)[23]:
[23] MB Holdings (Australia) Pty Ltd v B2 Import & Export SA CC [2001] ATMO 100.
…prior to acceptance, issues of ownership cannot normally be dealt with by the Trade Marks Office. No ground of rejection on such a basis exists in Part 4 of the Act.
67. While the statements regarding the company are misrepresentations, I am not satisfied that they are material particulars, since they should not have affected the outcome. Neither am I convinced by the passionate submissions from Mr Anese that the false representations are as serious as to possibly amount to a fraud on the Register. Examination may have proceeded on an erroneous assumption, but if the declarations had been amended to reflect the true position, I am of the belief that the application would have been accepted regardless.[24]
[24] See, similarly, Time Warner Entertainment Company, LP v Stepsam Investments Pty Ltd [2002] ATMO 93.
68. I find the ground of opposition under section 62(b) has not been established on the balance of probabilities.
69. Section 44: Identical etc. trade marks
The relevant provisions of section 44 of the Act state (with underlining added):
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(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.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(c)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
70. In pursuance of this ground Breezewater relied on the PC Logo:
This trade mark was accepted in classes 11 and 37 with the earlier priority date of 7 March 2008. Again for the purposes of comparison, Pritchard’s trade mark is reproduced below:
71. It is obvious, and was not disputed at the hearing, that the provisions of s 44(1) and (2) have been triggered. The above trade marks are deceptively similar and the other requisite matters are clearly established.
72. In examination, the two Voller declarations allowed the acceptance of the applications under the provisions of s44(4). Breezewater argues that since it has highlighted falsities in the declarations I should disregard that evidence. However, as addressed previously I am not convinced that the false representations were material particulars. In any event, the applicant has now explained the inaccuracies in its previous declarations and I have the benefit of further declarations from Pritchard that attempt to clarify the ownership issue.
73. Referring to the earlier discussions regarding the contents of Wilcox 1 and 2, I am satisfied that the Pritchard Logo has been used by Pritchard, or its predecessor in title (PP2) in relation to the conflicting goods and services. The use of the Pritchard Logo has evidently occurred prior to March 2008 and has been continuous since then. The provisions of subsection 44(4) of the Act are therefore applicable to both trade marks. The ground of opposition under section 44 has not been made out.
Section 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.
74. The final ground pressed by Breezewater is that Pritchard is not the owner of the Pritchard Logo. Breezewater highlights contradictions and inconsistencies within the Wilcox, Johnson and Jepson declarations concerning who the declarants believe to be the owner; the lack of documentation evidencing an assignment, and whether Pritchard was authorised to use the trade marks.
75. For Breezewater, Mr Anese argues that due to inconsistent statements regarding the ownership of the trade marks, while I cannot be satisfied who the owner is, I can be satisfied that it is not Pritchard.
76. The essential starting point is that, in the absence of prior use or some impediment such as fraud, Pritchard enjoys a presumption of statutory ownership arising from the filing date of these applications.[25] This presumption can be overridden by evidence of prior use by another trader of a substantially identical trade mark on goods and services that are the “same kind of thing”[26] as those of the application. Thus, the onus is on Breezewater to establish it as ‘more probable than not’ that Pritchard is not the owner. If I cannot be satisfied that there has been prior use of the Pritchard Logo or a substantially identical trade mark (such as the word ‘Pritchard’ by another trader) the ownership must fall to the applicant.
[25] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601.
[26] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.
77. Breezewater is relying on the use of the word ‘Pritchard’ by another company and the use of the Pritchard Logo by either PP2 or PCT. The evidence of such use would need to arise from declarations that Breezewater previously submitted were flawed and should be disregarded. In any event, there is no evidence of use of the name ‘Pritchard’ as a trade mark, as opposed to part of a company name.
78. Further, both Wilcox 2 and Johnson profess the belief that Pritchard has been given authorisation to the rights and monopoly ownership of “the Pritchard name” in Australia. For BAC Aus, the Johnson declaration states:[27]
[27] Johnson declaration, paragraph 5a.
By authorisation of Baltimore Aircoil Company, BAC has therefore had use of the PRITCHARD name in Australia since 1975. Through its obvious affiliation with its US parent company, the Opponent is the first user of the Pritchard name in Australia. The Opponent has provided Pritchard Pacific Pty Ltd ACN 118797989 the rights and monopoly ownership of this name in Australia.
79. The final sentence is a reference to a letter from BAC Aus to Pritchard dated 9 November 2009 which reads:
As the original equipment manufacturers of the ‘BAC-Pritchard’ range of evaporative cooling towers in Australia and the registered owner of the trading name BAC Pritchard Australia, we hereby acknowledge and authorize the lodgement and registration of your Australian trade mark application numbers 1231089 and 1232074 for PRITCHARD (Composite).
80. BAC Aus clearly considers itself to be the first user of “the Pritchard name” in Australia and Pritchard to be the authorised user of the Pritchard Logo.
81. Neither the fact that BAC Aus has used ‘BAC-Pritchard’ as a trade mark, nor the fact that it is the registered owner of a trading name ‘BAC Pritchard Australia’ means that BAC Aus has rights in the Pritchard Logo. There is little evidence to show that BAC Aus has ever used a trade mark other ‘BAC-Pritchard’. The wording of the letter indicates that BAC Aus is simply acknowledging and “authorising” (to the extent that it has the power to do so) the registration of the trade marks. Lastly, there is nothing to indicate that BAC Aus has exercised quality control over Pritchard’s use of the Logo sufficient to satisfy the requirements of ‘authorised use’ under the Act. In fact, Wilcox specifically denies that BAC Aus has any control over its business activities.[28]
[28] Wilcox 2, paragraph 14.
82. As a result, and in spite of the assertions made by Pritchard and BAC Aus, I am not convinced that Pritchard is simply an authorised user and not the owner of the trade marks.
83. Turning to the Pritchard Logo, it is clear that no intellectual property rights were explicitly transferred on the winding up of PCT. There are many unsupported statements regarding use of the trade mark by PCT but it appears that when preparing evidence neither party saw fit to demonstrate use of a trade mark by this particular entity. Consequently, I am not in a position to make findings on what rights (if any) PCT had in relation to the Pritchard Logo.
84. In relation to the company PP2, it is undisputed that it used the Pritchard Logo in the period 1999 to 2006. This demonstrated trade mark use is contained in company advertisements from December 1999 and business quotes from 1999 to 2002.
85. There is dispute, however, over the chain of title from PP2 to Pritchard. Breezewater does not introduce evidence to show that PP2 is not a predecessor in title – it merely points to the lack of evidence establishing Pritchard’s title. While there are no documents indicating assignment of title between the companies regarding the use of the word ‘Pritchard’ as a trade mark, Pritchard submits that rights in ‘Pritchard’ have been transmitted by implication to its company. Pritchard’s attorney explains that:
[U]p until March of 2008, the director of the Applicant, Greg Wilcox, was unaware of the importance of trade mark assignment agreements, and he did not attend to assignment of the IP rights of his companies prior to this date…. There was an implied transmission of the trade mark rights and goodwill of the name between each of Wilcox’s companies, and also Baltimore Aircoil (Australia) Pty Ltd since this date.
86. In Shanahan’s Australian Law of Trade Marks and Passing Off[29] it is stated that:
[29] Davison M, Berger T and Freeman A. Shanahan’s Australian Law of Trade Marks and Passing Off (4th edition) Lawbook Co, 2008 [at 75.505 and 75.1505].
[U]nless agreed otherwise, a transfer of goodwill carried with it the trade marks and trade name of the business and this is still the case.
…
An unregistered trade mark may be assigned with the business in which it is used and, in the absence of an agreement to the contrary, will pass by implication on a transfer of the goodwill of the business. (Emphasis added)
87. Wilcox affirmatively states on a number of occasions that PP2 is a predecessor in title to Pritchard.[30] On 9 March 2006, PP2 changed its name to Wilcox Pacific Pty Ltd. In the interim between that change of company name and the incorporation of Pritchard on 14 March 2006, Wilcox Pacific apparently acted as a holding company for all assets associated with Pritchard.[31] In addition, the evidence indicates that use of the Pritchard logos by Pritchard continued after this transition period.
[30] Wilcox 2, paragraph 31.
[31] Wilcox 2, paragraphs 6 and 8(d).
88. Despite Pritchard’s lack of documentation, I am therefore satisfied that intellectual property rights owned by PP2 were transferred to Pritchard when it was incorporated on 14 March 2006. I can find no reason to suppose that this is not the case. Any use that has been demonstrated for the predecessor in title PP2 would then amount to use by the applicant Pritchard.
89. Breezewater submits that because Pritchard has not definitively demonstrated the chain of title it is not possible to determine the owner(s) of the Pritchard Logos with the required degree of confidence to enable the Registrar to make a finding. However, it is Breezewater that must establish that a legal entity other than Pritchard owns the trade marks. Breezewater, for all that its criticisms of the chain of title have some validity, has not done enough to shift the onus to Pritchard. Therefore, on the balance of probabilities, the ground of opposition under section 58 of the Act has not been established in respect of the Pritchard Logo.
90. While the attorney for Breezewater did not abandon any grounds of opposition, the remaining nominated grounds were not pressed. Accordingly, I do not find that they have been established.
Decisions
91. Section 55(1) of the Act provides:
(1) 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.
92. Pritchard and BAC Aus, the opponents to the registration of the PC Logo have established a ground of opposition under the Act. I therefore refuse to register trade mark application 1228482.
93. For the second opposition, Breezewater has not established a ground of opposition for either of Pritchard’s trade marks. I therefore direct that trade mark application nos. 1231089 and 1232074 may proceed to registration after one month from the date of this decision.
94. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.
Costs
95. Pritchard and BAC Aus have been successful in these matters and are both entitled to costs. The second opponent BAC Aus did not incur any costs beyond the evidence stages.
96. As the evidence for all matters was considered as a whole, I will treat the entire proceeding as one opposition for costs purposes. Taking the above into consideration, I therefore award costs against Breezewater as per Schedule 8 of the Trade Mark Regulations 1995.
Heath Wilson
Hearing Officer
Trade Marks Hearings
31 May 2011
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