Rainer Werner Angerer v Angelo Di Labio

[1999] ATMO 100

TRADE MARKS ACT 1995

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

RE:Opposition by Rainer Werner Angerer to registration of trade mark application 751496(25) - DI LABIO and FLOWER device - in the name of Angelo Di Labio.

Background

On 22 December 1997, Angelo Di Labio (the applicant), filed the above numbered application for the composite trade mark represented below, in class 25 in respect of 'clothing, footwear, headgear'.

Acceptance of the application for registration occurred without impediment and it was advertised in the Australian Official Journal of Trade Marks of 23 April 1998. Rainer Werner Angerer (the opponent) filed a notice of opposition on 30 June 1998.

The opposition passed through the evidence in support and evidence in answer stages by 29 December 1998 without incident. The time allowed, therefore, for the service of the opponent's evidence in reply was 29 March 1999. On 25 May 1999 this Office received an application from the opponent for a late extension of time in which to serve its evidence in reply. Following submissions from both parties relating to the extension of time matter, an Acting Senior Examiner informed the opponent that he intended to refuse the extension of time application, unless the opponent sought to be heard in that matter. Although the opponent initially indicated that it did want to be heard, this request was later withdrawn and the extension of time application was refused.

The applicant then requested to be heard in the substantive matter. The hearing was held in Canberra on 17 September 1999. The applicant was represented by Dr Ron Taylor via telephone, whilst the opponent chose not to be represented but to rely on its filed and served evidence in support and written submissions presented prior to the hearing.

The Evidence

The opponent nominated a ground under s.58 of the Act on which opposition was said to be based.

The opponent's evidence in support consisted of a Statutory Declaration from Rainer Werner Angerer dated 24 September 1998 (the Angerer declaration). Attached to this declaration were four exhibits. The first of these exhibits provided a history, through the Australian Securities Commission, of DL (Australia) Pty Limited (hereafter DL), a company once jointly operated by the applicant and the opponent. Other exhibits detailed 'Di Labio' labels used by that company, invoices with information about the printing of those labels and a copy of a Deed of Assignment, dated 6 February 1998, purportedly transferring ownership of the trade mark from DL to the opponent.

The evidence in answer consisted of a Statutory Declaration declared on 19 November 1998, with exhibits 'A' to 'Z' and 'AA' to 'HH' inclusive, from Giovanni Angelo Di Labio (the Di Labio declaration).

The exhibits provided much advertising material and many newspaper articles to support the applicant's claimed use of the DI LABIO trade mark from November 1986. Also included in these exhibits were various letters, from individuals and bodies organising fashion shows or similar marketing spectacles, which also showed use of the mark by the applicant. In evidence was a copy of an earlier application to register the present mark made by the present applicant on 31 March 1994. The 34 exhibits to the Di Labio declaration also provided information concerning Mr Di Labio's later business dealings while in partnership with Mr Angerer.

Submissions

As mentioned above, the opponent chose not to attend the hearing. Dr Taylor opened the applicant's submissions with an attack on the veracity of the opponent's evidence. He said that point '4' of the Angerer declaration clearly indicated that DL was set up to distribute clothing manufactured in Hong Kong. This was done, however, by trading on the applicant's name and goodwill in the DI LABIO label. Dr Taylor also criticised the opponent's statements at points '6' and '8' of the Angerer declaration. He said that it was simply untrue that the artwork done in connection with the present trade mark was carried out in August or September 1995. Dr Taylor directed my attention to several of the applicant's exhibits to show use of the mark by the applicant prior to that date. He also said that he agreed with point '7' of the Angerer declaration concerning payment by DL for the production of labels in Hong Kong. These labels he said were, however, designed by the applicant at an earlier time. Dr Taylor submitted that at no time did the applicant ever assign his trade mark to the jointly run company or to anyone else. Mr Di Labio simply allowed DL to use his trade mark, he added. Dr Taylor then made reference to point '13' in the Angerer declaration, which dealt with a copy of an assignment of the mark to the opponent by the liquidators of DL. Dr Taylor said that this assignment was invalid because DL was not the owner of the mark at any time.

Dr Taylor then focused particularly on the applicant's evidence in answer. He directed my attention to the applicant's previous application for the registration of a trade mark - number 626170. This trade mark application was lodged under the Trade Marks Act 1955 (the 1955 Act) on 31 March 1994. A representation appears in the Discussion section below. Throughout the hearing, Dr Taylor made several references to the applicant's evidence. I intend to make reference to this material as appropriate in the Discussion below.

Discussion

The opponent nominated one ground for opposition to registration of the present mark. This ground is under s.58 of the Act - that the applicant is not the owner of the trade mark.

Section 58 - Applicant not owner of the trade mark

The relevant legislation concerning this ground of opposition reads as follows:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

In addition, s.58 bears a close relationship to s.27(1)(a) for this analysis. The paragraph at s.27(1)(a) reads as follows:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; …

In essence, the combination of these sections produces the following result. If the opponent successfully proves that the applicant is not the owner of the mark, in terms of s.58, then the applicant is not entitled to make the application in terms of s.27.

On the issue of ownership of a trade mark, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark YANX, Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No2) (1984) 59 ALJR 77 at 83.

….

In considering who, within s.40(1) of the Act, was at the time of Settef’s application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co. of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627.

The reference to s.40(1) here is, of course, in relation to the repealed 1955 Act. The provision was, however, carried over to s.27(1)(a) of the present legislation, as I have quoted above.

Further to this discussion, as established in Re Hicks' Trade Mark (1897) 22 VLR 636, to succeed in such a ground of opposition, the opponent would need to show that it has used the trade mark on 'the same kind of thing' prior to the applicant filing its application. Additionally, it would need to show that the trade marks involved are either identical or substantially identical. This final requirement has been clearly set out in such cases as  Carnival Cruise Lines, Inc. v Sitmar Cruises Ltd (1994) AIPC ¶91-049 and Karu Pty Ltd v Jose (1994) AIPC ¶91-101.

Some of the issues raised above are not disputed. For instance, the similarity of the marks involved is not an issue because both parties are claiming the same mark - that used by DL when the applicant and opponent were in a joint business venture from some time in 1995. This is the mark for which application for registration has presently been made and a representation of which is shown above, in the Background section of this decision.

From the evidence submitted by the applicant, I believe that it is beyond doubt that the applicant used a DI LABIO mark for many years prior to the applicant and opponent setting up DL during 1995. The applicant's exhibits to the Di Labio declaration from 'C' to 'X' in its evidence show use from as early as 1988 of the mark 'Di Labio' in that particular format. This use, however, does not directly support the applicant's case, because I do not believe that it qualifies as use of an identical or substantially identical trade mark to the mark for which the present application has been made. The present application contains a device which, among other things, could be seen as a representation of a flower with eight petals.

Exhibits 'Y' and 'Z' attached to the Di Labio declaration show a representation of a Sicilian coin from around 390 BC. Stamped on one side of the coin is the 'flower' device that appears in the applicant's trade mark. The applicant alleges that these exhibits support the statement that the applicant developed the present trade mark during 1994. I accept this proposition based particularly on exhibit 'AA'. Exhibit 'AA' is a copy of an earlier application made by the present applicant on 31 March 1994 to this Office for registration of the trade mark represented below. It is numbered 626170.

A comparison between this mark and the present application indicates identical elements. The only minor difference being that the space between the device and the word elements differs slightly. I find, however, that this mark is substantially identical with the present mark.

Further exhibits to the Di Labio declaration show that the applicant continued use of the mark containing the device element in 1994 and 1995 (exhibits 'CC' and 'DD'). Although a new Business Name was registered on 31 January 1995 and another version of the Di Labio mark was designed, it is apparent that the device had already been used by the applicant, as shown, for example, on the samples of the business letterheads included as exhibit 'GG' to the Di Labio declaration. I find then that the applicant has used the present mark from some time in 1994, at least as early as the application date for trade mark number 626170, being 31 March 1994.

The opponent has attempted to displace this right by claiming an assignment of the trade mark from DL. The copy of the assignment document in evidence, exhibit 'D' to the Angerer declaration, is signed by Ivor Worrell and Raj Khatri as liquidators for DL. The date of the purported assignment of the mark from DL to the present opponent is 6 February 1998. If notice can be taken of this assignment, then an earlier assignment (or assignments) of the mark would also have to be in evidence, transferring ownership from Angelo Di Labio sometime after 31 March 1994, ultimately to DL sometime before 6 February 1998. The applicant claims no such assignment(s) took place. I cannot conclude whether or not any such assignment(s) did take place, because there is no evidence of such before me. I find, then, that the claimed assignment of the mark from DL, to the present opponent, has not been shown to be validly made on 6 February 1998, because DL was not the owner of the mark.

As a result of this finding, I also find that the applicant's claim to ownership of the mark has not been displaced. This being the case, the opposition is not successful under s.58.

Conclusion

From the foregoing, I have found that the opposition fails on the only ground claimed in the notice of opposition, under s.58. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I dismiss this opposition.

Costs

Following a request from the opponent, I make no award of costs at this time. That matter will be dealt with at a later date.

Don Nancarrow
Acting Hearing Officer
29 September 1999.