Raymond Hoser v Mark Pelley
[2022] ATMO 109
•4 July 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Raymond Hoser to registration of trade mark application number 2074739 (classes 41 and 44) – THE SNAKE HUNTER 24/7 SNAKE CATCHER & Device - in the name of Mark Pelley
Delegate:
Tracey Berger
Representation:
Opponent: Self-represented
Applicant: Self-represented
Decision:
2022 ATMO 109
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 41, 42(b), 43, 44, 58, 58A, 59, 60 and 62A considered – none established – trade mark to proceed to registration
Background
1. This is a decision on the opposition by Raymond Hoser (‘Opponent’) to the registration of trade mark application number 2074739 (‘Application’) in the name of Mark Pelley (‘Applicant’) filed on 11 March 2020 (‘Relevant Date’) in classes 41 and 44 for:
Trade Mark: (‘Trade Mark’)
Specification: Class 41: Snake education; education services being in relation to snake awareness
Class 44: Snake catcher services; reptile removal
(‘Services’)
2. The Application was examined, accepted for possible registration, and subsequently advertised for opposition on 12 August 2020. The Opponent filed a Notice of Intention to Oppose on 7 October 2020 and Statement of Grounds and Particulars (‘SGP’) on 1 November 2020. The Applicant filed a Notice of Intention to Defend on 19 February 2021.
3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14 of the Trade Marks Regulations 1995 (Cth).[1] The Opponent did not file any evidence. The Applicant filed Evidence in Answer (‘EIA’) on 12 September 2021. The Opponent did not file Evidence in Reply.
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
4. The parties were given the opportunity to request a hearing by video conference or written submissions. Neither party requested to be heard. The Applicant requested that a decision be made based on the materials filed and paid the relevant fees. I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars in the SGP and the EIA.
Grounds and Onus
5. The SGP nominates grounds of opposition under ss 41, 42(b), 43, 44, 58A, 58, 59, 60 and 62A.
6. The Opponent carries the onus of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
7. The EIA consists of a declaration of Mark Pelley made on 12 September 2021 with Attachments 1-5.
8. Mr Pelley’s declaration annexes other decisions involving the Opponent, refers to marks on the Register containing the term ‘snake catcher’ in the name of third parties and attests that this term is in common use in Australia by people who catch snakes, and makes submissions in response to the grounds of opposition.
Discussion
Section 62A
9. The SGP indicates that this is the primary ground of opposition on which the Opponent relies (although s 44 is also claimed as a main ground) and hence, I will address this ground first.
10. Section 62A provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith.
11. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element, I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then requires me to determine whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[4]
[4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J) (‘Fry Consulting’).
12. Bad faith is a serious allegation that ‘impugns the character of an individual or collective character of a business’ and requires correspondingly cogent evidence in order to be established.[5]
[5] Fry Consulting (n 4) [145].
13. The Opponent alleges in the SGP:
The applicant knew at all materially relevant times that they were trying to steal and dilute the registered trademark already owned and used by the opponent already operating in their business space. He had been told in writing not to and then improperly filed this pending trademark application. The applicant has engaged in a campaign of deliberately using the opponents word trademarks including "snakeman, "snake man", snakebusters, reptile party", etc, in breach of court orders, disobeys these orders and has been chastised by a magistrate for doing so. Applicant has engaged in other behaviour establishing his bad faith.
14. Under other grounds in the SGP, the Opponent refers to registration number 1436529 (‘Hoser Registration’)[6] which, in summary, covers education, training and entertainment services including those relating to wildlife in class 41 and pest control, removal of snakes, reptiles and wildlife in class 44 (‘Hoser Services’) for:
[6] In the absence of any evidence from the Opponent, I assume that the owner of this registered mark is the Opponent’s spouse or otherwise related to the Opponent.
Trade Mark: (‘Hoser Mark’)
Priority Date: 13 July 2011
Registered Owner: Adelyn Kimberley Hoser
15. The Opponent has not filed any evidence to corroborate its assertion that the Applicant was “trying to steal or dilute” any rights that the Opponent may have in the Hoser Registration.
16. The Applicant relies in its EIA on the decision in Raymond Hoser v Stewart Gatt[7] which held that the term ‘snake catcher’ is descriptive of the services claimed in the Hoser Registration and permitted registration of trade mark number 1897631 for STEWY THE SNAKE CATCHER & Cartoon Snake Device for the services claimed by the Applicant. The Applicant also refers to registration number 2046837 for Snake Catcher Victoria & Device in classes 37 and 44 in the name of Barry Goldsmith and attests that the term ‘snake catcher’ is commonly used in Australia.
[7] [2019] ATMO 119 (Hearing Officer N. Barbey).
17. Even if the Applicant was aware of the Hoser Registration at the time of filing the Application, this is not sufficient to conclude that the Application was filed in bad faith,[8] particularly when the only common element between the Trade Mark and the mark relied on by the Opponent is a descriptive term.
[8] Fry Consulting (n 4) [167].
18. The s 62A ground is not established.
Section 44
19. The relevant portions of s 44 state:
44 Identical etc. trade marks
…
(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.
To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is in respect of goods and/or services which are similar or closely related to the Services (‘the second requirement’); and
· is substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).
21. This ground is specified in the SGP as set out below:
In the first instance, this is the main ground of opposition. Registered TM Number: 1436529, Snake catcher, is for material including the same goods and services. And the common law trademarks for the same in the exact form as the logo go back to 2005 and as words "snake catcher" by the applicant to 1969 or 1982 as Australia's first government licensed wildlife controller for snakes. TM Number: 1436529 MUST be treated as a "word only" trademark based on case law (e.g. Organic Marketing V Woolworths or the "lift Shop case), and therefore the new application lacking priority in any way must be rejected.
22. The Opponent is essentially relying on the Hoser Registration which is a mark in the name of someone other than the Applicant and has an earlier priority date. Hence the first requirement is satisfied.
23. The Services are encompassed by the Hoser Services and therefore, the second requirement is met.
24. To satisfy the third requirement, the Hoser Mark must be substantially identical with, or deceptively similar to, the Trade Mark. The relevant comparison is below:
Substantially Identical
The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:
In considering whether marks are substantially identical they should, I think, be compared 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.[9]
[9] [1963] HCA 66; (1963) 109 CLR 407, 415 (‘Shell’).
25. Both marks contain the descriptive term ‘snake catcher’ and include a photograph of a man holding a snake(s). The photo in each mark is obviously different and the Trade Mark includes the additional phrase “THE SNAKE HUNTER” and the element ‘24/7’ preceding the common descriptive term. The visual impression of each mark is distinct. There are significant differences between the Trade Mark and Hoser Mark on a side by side comparison such that there is not a total impression of similarity.
Deceptive Similarity
26. Section 10 provides:
10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
27. The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[10]
[10] Ibid [13].
28. Neither of the decisions referred to by the Opponent in the SGP are authority for the proposition that composite trade marks should be treated as word marks. In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd,[11] the Federal Court considered whether use of ‘Lift Shop’ infringed a trade mark registration for LIFTSHOP & Device but found that the respondent had not used “Lift Shop” as a trade mark. The other decision, Organic Marketing Australia Pty Ltd v Woolworths,[12] concerned an application for an interlocutory injunction to restrain use of HONEST TO GOODNESS by Woolworths on the basis of alleged infringement of Organic Marketing’s registration[13] for HONEST TO GOODNESS & Device. Although the court considered that there was a serious question to be tried and the injunction was granted, this decision did not conclusively determine the issue of deceptive similarity. Further, there are significant differences between the comparison of marks in that case and this instance including that Woolworths had given prominence to the words HONEST TO GOODNESS and the device element of the registered mark HONEST TO GOODNESS & Device was not a significant part of the mark. In the present comparison, the words ‘snake catcher’ are not given any prominence over other words and the device element of the Hoser Mark forms a significant part of the mark.
[11] [2014] 311 ALR 419 (Besanko, Yates, Mortimer JJ).
[12] [2011] FCA 279 (Katzmann J).
[13] Australian trade mark number 956076.
29. As the first part of the Trade Mark, the element “THE SNAKE HUNTER” is an integral element which is at least as memorable as, if not more memorable than, “24/7 SNAKE CATCHER” in the Trade Mark. The term ‘snake catcher’ is descriptive and this descriptive reference is reinforced in the Trade Mark by use of ‘snake catcher’ as part of the phrase “24/7 SNAKE CATCHER”. Whilst it is not appropriate to disregard the descriptive term ‘snake catcher’, it should be discounted to some extent.[14]
[14] Cooper Engineering Pty Limited v Sigmund Pumps Limited [1952] HCA 15.
30. Both the Trade Mark and Hoser Mark contain device elements consisting of a photograph of a man holding a snake(s). Given the services of interest to the parties, it is unsurprising that each would feature snakes or even the particular ‘snake catcher’ offering the services. The impression created by each of the device elements and their position in relation to the word elements is disparate in the marks. The man in the Trade Mark holds a single snake as compared to the bundle of snakes the man in the Hoser Mark appears to be struggling to hold.
31. In my opinion, ordinary consumers with an imperfect recollection are unlikely to be confused between the Trade Mark and the Hoser Mark. Assessing the marks in their entirety, I am not satisfied that the Trade Mark is deceptively similar to the Hoser Mark. Accordingly, the s 44 ground is not established.
Section 58A
32. Section 58A applies only when an application has been accepted under s 44(4) or a similar provision of the Regulations made for the purposes of Part 17A.
33. The Application was not accepted under s 44(4) or a similar provision of the Regulations made for the purposes of Part 17 and therefore, s 58A is not an available ground of opposition.
34. Consequently, the s 58A ground of opposition fails.
Section 58
35. Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.
36. To succeed on this ground, the mark on which the Opponent relies must be substantially identical to, if not the same as, the Trade Mark. The Opponent relies on the same particulars as for the s 58A ground.
37. As noted above, I do not regard the Trade Mark as being substantially identical to the Hoser Mark and hence this ground of opposition is not successful.
Section 60
38. To succeed under s 60, the Opponent must establish that a reputation exists in a trade mark in Australia at the Priority Date. If reputation is established, the Opponent must then prove that because of the reputation in the trade mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.
39. This ground is particularised in the SGP as follows:
Registered TM Number: 1436529 , Snake Catcher, is for material including the same goods and services. And the common law trademarks for the same that predate both and run continuously as far back as 2005 (in exact form) and prior, predating this application. The recognition of these registered and common-law trademarks and their reputation is Australia-wide and complete within the relevant industry. All relevant trademarks and application are for education/ entertainment with wildlife type things. The applicant has only called himself "the snake catcher" (unlawfully) as a trademark continuously for less than 2 yrs.
40. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[15]
[15] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] 33 FCR 302, [1992] FCA 159, [77] (Lockhart J).
41. No documentary evidence has been provided to support the Opponent’s assertion that it has used a relevant mark since at least 2005 or had a reputation in the Hoser Mark or any other trade mark at the Relevant Date.
42. As a result, the s 60 ground of opposition has not been established.
Section 42(b)
43. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent bears the onus of establishing that use of the Trade Mark would be, rather than could be, contrary to law.[16]
[16] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, 32 [28] (Madgwick J).
44. In the SGP, the Opponent particularises this ground as follows:
The use of the trademark as applied for would be misleading and deceptive conduct under s18 of the Australian Consumer Law (“ACL”) and liable for claim under the tort of passing off and in breach of 42(b) of the Trademarks Act. Registered TM Number: 1436529 , Snake Catcher is for material including the same goods and services. And the common law trademarks for the same that predate both and run continuously as far back as 2005 in exact form and prior. The recognition of these registered and common-law trademarks and their reputation is Australia-wide. The applicant assets making a Federal Court action remedy unviable for me.
45. The requirement to mislead or deceive the relevant consumer is one of the key differences between s 18 of the ACL and s 60. Unlike s 60, s 18 of the ACL cannot be established by demonstrating use of the Trade Mark would merely give consumers cause to wonder whether the Applicant’s business or goods are connected to the Opponent. Several cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60.[17]
[17] For example, Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 209-10 (Mason J).
46. Conduct will be misleading or deceptive only if it leads or is capable of leading someone into error[18] which must be determined objectively in the context of all the surrounding circumstances.[19] Conduct may be misleading or deceptive regardless of the intention of the alleged wrongdoer[20] but where an intention to deceive is established, a court may more readily infer that the intention has been realised.[21]
[18] Ibid, 198–199 (Gibbs CJ).
[19] Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, 199 and 202 (Deane and Fitzgerald JJ).
[20] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82, 88 (Bowen CJ, Lockhart and Fitzgerald JJ).
[21] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [33] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
47. Passing off involves similar considerations to misleading and deceptive conduct in that there must be:
·reputation in the relevant mark or indicia;
·misrepresentation leading to deception; and
·damage to goodwill, or the likelihood thereof.
48. For the same reasons given under s 60, I am not satisfied that consumers would be misled or deceived by use of the Trade Mark. The s 42(b) ground is not established.
Section 41
49. Section 41 relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
50. The inherent adaption of a mark to distinguish a trader’s goods or services is to be assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[22]
[22] Clark Equipment Co. v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
51. The Opponent particularises this ground of opposition in the SGP as follows:
Main ground is BAD FAITH - see below. ... The trademark application uses another common law trademark owned by the applicant ("Snake Hunter") and includes as an element "snake catcher", a term used as a descriptor, which the applicant will then seek to claim monopoly rights over, by virtue of the application. Other reasons under S41 include that the applied for logo is too complex to be merely a "badge of origin" to function as a trademark. It is akin to registering a whole book as a trademark. The image itself is a standard image of man holding a common snake (carpet), the most commonly seen snake in Australia and most common pet snake in Australia and other traders should be allowed to post similar images without risk of being breached for it.
52. The Opponent appears to be arguing that on the one hand, the Trade Mark consists of non-distinctive elements but on the other hand, the mark is too complex.
53. In deciding the inherent distinctiveness of a trade mark, the mark should be considered as a whole rather than determining whether the individual elements comprising the mark are separately registrable.[23] The presence of one or more descriptive elements is not determinative of the registrability of the combination. Indeed, combining a number of descriptive elements to create a more complex mark that is inherently distinctive is acceptable.
[23] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J).
54. The Trade Mark is a composite mark comprised of multiple word and image elements. There is no need for other traders to desire to use the same or similar mark without improper motive for the Services, closely related goods or similar services.
55. I am satisfied that the Trade Mark is inherently capable of distinguishing the Services from the goods or services of other traders. Accordingly, the s 41 ground is not established.
Section 43
56. Section 43 requires the Opponent to demonstrate that there is a connotation in the Trade Mark, or a part of it, and that because of the connotation use of the Trade Mark would be likely to deceive or cause confusion.
57. In the SGP, the Opponent again relies on the Hoser Registration and unspecified common law marks referred to under the other grounds of opposition in which the Opponent claims a reputation. The Opponent also alleges that the inclusion of the words ‘snake catcher’ in the Trade Mark will cause consumers to associate that Trade Mark with the Opponent.
58. The ‘connotation’ must be inherent in the trade mark itself. The connotation must arise from the Trade Mark[24] and not from any comparison with another trade mark.[25] As Spender J noted in Winton Shire Council v Lomas:
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 s 60.[26]
[24] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).
[25] Ibid; Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J).
[26] [2002] FCA 288, [19].
59. The existence of the Hoser Mark or any unspecified common law mark is not relevant to the s 43 ground of opposition. The Opponent has not identified or provided any evidence of an intrinsic connotation in the Trade Mark.
60. I am not satisfied that the Trade Mark has an inherent connotation which is likely to cause confusion or deception. The s 43 ground is unsuccessful.
Section 59
61. Section 59 provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.
62. It is well established that applying for registration of a trade mark carries a presumption that an applicant intends to use the mark.[27] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[28] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[29]
[27] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).
[28] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).
[29] Suyen Corp v Americana International Ltd (n 27), [190].
63. The Opponent alleges in the SGP that the Applicant has not used the Trade Mark before the Relevant Date. However, it is not uncommon for an applicant to delay commencing use of a mark until an application has been filed or even until registration is obtained.
64. The Opponent has not made out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. Consequently, the s 59 ground of opposition is not made out.
Decision
65. Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
66. The Opponent has not established a ground of opposition. Accordingly, trade mark application number 2074739 may proceed to registration one month from the date of this decision.
67. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
68. The Applicant has requested an award of costs and hence I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
4 July 2022
0
13
3