Raynbell Pty Ltd v Guiseppe Manconi and Lanisa Pty Limited

[1996] ATMO 31

TRADE MARKS ACT 1955

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

Re:Opposition by GUISEPPE MANCONI and LANISA PTY LIMITED to registration of trade mark application number 554525 in the name of RAYNBELL PTY LTD

Background
Application number 554525 was lodged, on 29 April 1991, in the name of RAYNBELL PTY LTD (the applicant).  The application was for registration of the mark as shown below, for a statement of goods subsequently amended to read, "Pasta", in Class 30.  The mark was advertised as accepted in the Official Journal of 4 February 1993.

Notice of opposition to the mark's registration was lodged, on 30 April 1993, by GUISEPPE (sic) MANCONI and LANISA PTY LIMITED (the opponents). The primary grounds of the opposition, which were pursued at the hearing, were primarily based on s.40 of the Trade Marks Act 1955 that the applicant was not the proprietor and first user of the trade mark. The opponents also relied upon s.28 of the Act that use of the mark by the applicant would be likely to cause deception and confusion, and that the applicant had committed blameworthy actions in relation to the mark. Finally, the opponents relied upon s.24 that the mark was not distinctive, or capable of becoming distinctive, of the applicant’s goods.

The evidence

The service and lodgment of evidence in support, evidence in answer and evidence in reply in the matter were completed by 29 March 1995.  The evidence comprised:

Evidence in support

*Statutory declaration by Guiseppe Manconi dated 15 November 1993 and exhibits GM-I to GM-11 (first Manconi declaration)

Evidence in answer

*Statutory declaration by Garth Rae Bell dated 2 May 1994 and appendices A and B

*Statutory declaration by Vince Zaccheo dated 22 December 1994 and exhibits VZ-1 to VZ-4

Evidence in reply

*Statutory declaration by Guiseppe Manconi dated 27 March 1995 and annexure A (second Manconi declaration)

In his first declaration forming the evidence in support, Mr Manconi outlined the history of the portion of the present mark which comprised the depiction of an Italian serving woman, and his adoption of it for use in his restaurant and on pasta.  He included details of sales generated under the mark for restaurant services and the sale of pasta since 1977 to 1992.  Attached as exhibits to his declaration were copies of a menu, stationery, photographs, advertising material and a T-shirt, all showing trade marks which included the serving woman logo.

The applicant's evidence in answer comprised two declarations.  In the first declaration, Mr Bell, the managing director of a company manufacturing packaging material, said that his company had produced packaging including the logo for Sardinia Import Export Pty Ltd (Sardinia) until Sardinia sold its pasta making business to the applicant in November 1989.  His company had retained the dies for printing the mark and continued to produce the packaging, this time for the applicant, during the period January 1990 to April 1990.  Included as exhibits to the declaration were copies of a sample of packaging and an invoice showing sales of the packaging to the applicant.

In the second declaration forming the evidence in answer, Mr Zaccheo, the principal director of the applicant, gave details of his purchase of the business of PINO’S FRESH PASTA, together with packaging showing the logo.  He said that he had understood that the purchase included, as part of the goodwill of the business, the trading name and the serving woman logo.  He said that Sardinia, and Mr and Mrs Manconi, had continued to use the name PINO’S FRESH PASTA and the logo after the sale, and he had taken court proceedings to prevent this.  He said that he had ceased using the logo because of the present opposition and had used an entirely different mark.  This mark included the words, “manufactured by Pino’s Fresh Pasta”.  Attached as exhibits to his declaration were copies of an agreement of sale of the business of PINO’S FRESH PASTA, packaging bearing the logo, packaging showing the mark which he now uses and a certificate of registration of the business name, PINO’S FRESH PASTA, in the name of the applicant.

The evidence in reply comprised Mr Manconi’s second declaration.  In his declaration, Mr Manconi confirmed Mr Zaccheo’s advice that the applicant had purchased the business of PINO’S FRESH PASTA.  However, he said that, although he agreed that the applicant had rights to the name, PINO’S FRESH PASTA, the sale did not assign rights in the serving woman logo, or to bags and rewinding film used for packaging which included the disputed logo.  He said that he personally owned the logo and that Sardinia could not therefore assign rights in it.  He said that the printing plates, which included the logo, had been given to the applicant without his permission.  He declared further that he continued to use the logo, in connection with the sale of pasta products, through his companies Sardinia and Lanisa Pty Limited.

The matter was set down before me, as the Registrar's delegate, for hearing in Sydney on 11 March 1996.  The opponents were represented at the hearing by Ms Kate Johnston, of Spruson & Ferguson.  Appearing on behalf of the applicant was Mr Alex Clout of Counsel, instructed by Pelosi & Associates.

Submissions

Ms Johnston commenced her submissions by referring to the notice of opposition made by the opponents through a firm of solicitors. She said that, while that notice was very brief with respect to the grounds of opposition relied upon, it could at least be understood from it that the opponents were relying upon proprietorship under s.40 of the Trade Marks Act 1955. She said that it could further be inferred that the opponents were alleging that possible deception and confusion could arise from the use of the mark by the applicant and that, therefore, s.28 was also a ground. Further, given the previous grounds, it was obvious that an objection would also exist under s.24 that the mark was not distinctive of the applicant’s goods. She submitted that, in any case, it was accepted that the general terms of opposition could be expanded at a hearing, referring for support to p.64 of Australian Law of Trade Marks and Passing Off (Second Edition) by D.R.Shanahan.  She said that, in the alternative, the opponent had raised matters of public interest which the Registrar was bound to consider, making objections under ss.24 and 28 valid to be considered by way of sub-s.50(2).  She said that each of the related issues would be addressed in turn.

Ms Johnston first addressed the proprietorship ground of the opposition.  She said that the mark consisted of the serving woman logo and the disclaimed words, PINO’S and NATURAL FOOD PRODUCTS, and. FRESH PASTA, which was totally descriptive.  She said that the opponents had established first use of the logo portion of the mark.  She said that the logo was substantially identical to the present mark, given its prominence as the only distinctive feature, and the non-distinctive nature of the other material included in it.  Ms Johnston submitted that it was.  She said that the test for substantial identity was the total impression of similarity emerging when the logo, on one hand, was compared to the mark applied for, on the other - Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 at 414 and Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 375 at 391. She said that, given the foregoing, the applicant should have to show first use of the mark, as applied for, on the subject goods to claim proprietorship. She referred here to Mr Zaccheo’s declaration. There he had attached an exhibit of packaging, initially used by the applicant in 1990, which he said was included in the sale of the business, PINO’S FRESH PASTA. This packaging bore essentially the same mark which had been used by Sardinia prior to the sale. She said that Sardinia did not own any rights in the logo. Mr Manconi had allowed that company to use the mark, with his permission and under his control, and it was not included in the transaction. She said that there was no mention of the mark being transferred as part of the goodwill of the business in the agreement for sale. However, the business name, PINO’S FRESH PASTA, had been included at the time of the sale of the business. She said that the printing plates and packaging showing the logo may have been acquired by Mr Zaccheo at the time of the sale without Mr Manconi’s knowledge, but this did not imply that they were included in the transaction. She said that the Registrar was not qualified, or required, to consider contract law. This would include questions as to what things were, or were not, included in the sale if no mention was specifically made of them. She said that, unless the trade mark was listed in the agreement, the Registrar could not decide that it was.

Ms Johnston submitted that the opponents had also used, and continued to use, the logo since 1973, solus, and variously with the words PINO’S PIZZERIA and DA PINO PASTA, on restaurant services and on pasta made by them.  She said that, apart from establishing first use of the mark, the applicant should also show that the applicant had the right to use it - Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601. She said that, from all of the evidence, Mr Manconi owned rights in the logo in question - both for restaurant services and also for pasta. The applicant could not therefore claim to be the proprietor of a mark which it had no legal right to use.

In relation to the ground of opposition under s28, Ms Johnston said that the test had been laid down in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594. This was that, having regard to the reputation acquired by Mr Manconi in the logo, what was the likelihood of deception and confusion occurring amongst a substantial number of people if the applicant was to use the mark in a normal and fair manner on pasta. She said that the evidence clearly showed the substantial reputation generated by Mr Manconi’s use of the logo for pasta and for restaurant services. Given that the present mark was substantially identical to that logo, there was a real risk that people would be confused as to the source of the goods covered by the present application. She said that there was an initial onus on the opponents to set out the basis on which they contended that use of the mark would lead to deception and confusion. This onus had been discharged and it had now shifted to the applicant to satisfy the Registrar to the contrary. This had not been done. Any charges by the applicant that actual instances of deception and confusion had not been reported could be explained by the fact that the applicant had discontinued use of the mark in mid-1990, three years before the present opposition had been lodged.

Ms Johnston disputed the Registrar’s present practice of requiring that the opponents needed to show, in addition to the likelihood of deception and confusion occurring, that the applicant had, in some way, been guilty of blameworthy conduct, in order for an opposition under s.28 to be successful. She alleged that the authorities relied upon were inconclusive as to whether this added requirement needed to be shown at the application stage. She said that subsequent decisions in the Federal Court had been silent on the matter when finding for the opponent on this ground, including those in Johnson and Johnson Australia Pty Ltd v Kalnin (1993) 26 IPR 435 and Carnival Cruise Lines Inc v Sitmar Cruises Ltd, supra.  However, she said, if blameworthy conduct needed to be shown, then it resided in the applicant knowingly choosing and using a logo in its mark which it knew it did not own.  The use of that mark by the applicant would constitute passing off.

Ms Johnston further said that, because Mr Manconi was the owner of copyright in the logo, its adoption by the applicant in the present mark was contrary to law.  Such copyright was claimed by Mr Manconi because the logo was a created work and was substantial enough to qualify for protection.  She said that the Registrar, although not being an expert on copyright law, should be able to say that copyright existed in the logo.  Thus, the logo’s use offended sub-sect.28(b) of the Trade Marks Act 1955, which contemplated any law, whether statutory or otherwise - p.144 of Shanahan’s book. She said that an applicant for registration should be in a position to claim it was the proprietor of a mark - Karo Step case 1977 RPC 255 at 274. She further said that, despite in the past being reluctant to find that blameworthy conduct resided in alleged breaches in copyright, in the present case the Registrar could do so because a strong prima facie case of such conduct had been made by the opponents. The onus was now on the applicant to displace such a claim and this it had failed to do.

On the matter of the opposition under s.24, Ms Johnston said that the mark was not registrable as it was not distinctive of the applicant, nor was it capable of being so.  She said that Mr Manconi had declared as to his extensive use and association with the mark, which rendered it distinctive of him.  The present applicant could not possibly make such a claim.

In reply, Mr Clout said that the basis upon which the applicant claimed ownership of the mark was the agreement for sale of the business, PINO’S FRESH PASTA, between Sardinia and itself.  A great deal of money had changed hands to purchase the goodwill of the business.  He said that Mr Manconi must have realised that the applicant had believed that the logo was included with that goodwill.  It could only be inferred that the logo, intertwined as it was with the words associated with the business, was included in the sale.  He said that the applicant had applied for registration of the trade mark, fully believing that it was entitled to do so.  On the other hand, Mr Manconi, despite claiming rights in the trade mark since 1973, had never applied to register it as a trade mark.  Included in the stock at the time of the sale had been a pasta packaging machine and numerous bags for packaging the product - all of which included the subject logo.  Mr Zaccheo had also declared that he had access to the printing plates used to imprint the logo on the bags.  Mr Clout said that at no time did Mr Manconi make any attempt to recover the plates, despite being aware that they were in the applicant’s possession.

Mr Clout submitted that a trade mark could be transferred with the goodwill of the business and that this transfer of ownership did not need to be done in writing.  In the present case, the reason that the logo was not mentioned as being part of the sale was that its inclusion in the goodwill was understood as being part of the transaction.  He said that Mr Manconi had said that, although the words PINO’S FRESH PASTA were intended to be included in the sale, the logo was not.  Mr Clout said that this admission had been made despite neither element being explicitly mentioned in the agreement for sale.  However, whenever pasta had been sold by Sardinia, the name PINO’S FRESH PASTA and the logo had always appeared together on the packaging.  Mr Clout said that it was inconceivable that they should be dealt with separately.  He said that, subsequent to the sale, Mr Manconi had used the representation of the serving woman in different ways in conjunction with his restaurant and pizzeria.  However, now the woman was sometimes seen carrying a plate and at other times with a pizza.

In relation to the opponents’ case under s.28, that deception or confusion could occur if the mark was registered, Mr Clout said that the opponents had done nothing to shift the onus to the applicant to show that such was not the case. He said that the only confusion that could be pointed to, stemmed from the opponents’ own use of the words DA PINO PASTA in relation to their present activities and not from any application by the applicant which included the logo in question. The present mark was only to be used by the applicant on pasta intended for food outlets, whilst the opponents were using the logo on their restaurant and pizzeria. He submitted that, because the sales figures given by the opponents said to be in relation to the logo did not differentiate between restaurant services, drinks, pizza or pasta, then no weight should be given to them.

With respect to any suggestion of blameworthy conduct on behalf of the applicant in relation to the mark, Mr Clout said that, on no interpretation of the matter, could any such charges be established. The applicant had paid a considerable sum, in good faith, for the goodwill of the business, the packaging bearing the logo and the printing plates. There could be no suggestion of passing off in its dealings. As far as any allegations of breach of copyright were concerned, Mr Clout submitted that the logo was so simplistic that copyright could not subsist in it and it was therefore not possible to substantiate such a claim. He said that merely claiming copyright was not sufficient, in itself, to authenticate such an assertion. It was only under the Copyright Act that such a claim could be made.

On the matter of the opponents’ claim that the mark failed to qualify for registration under s.24, in that it did not distinguish the applicant’s goods, Mr Clout said that the mark did, in fact, do so.  He said the mark was included in the sale and the applicant was the rightful owner of any reputation which resided in it.  The logo was not specifically excluded from the sale and therefore must have been included.  Mr Manconi had been a director of Sardinia at the time of the transaction and after, and he had acquiesced in the logo’s use by not previously objecting to the mark’s use.  He said that the conduct of both sides to the present dispute was consistent with the logo having being transferred at the time of the transaction.  It was open to the Registrar to consider this, given that he should be able to consider all circumstances in the matter.  In this regard, the Registrar was not bound by the same rules of evidence as a court and he could consider whether material before him was bona fide evidence or open to inquiry.  He submitted that the latter question should be asked about the alleged deed of assignment of the artistic work residing in the logo dated 12 November 1993.  This was supposedly to confirm the transfer of the rights in the serving woman logo from Mr Salmi - the owner of the chain of MAMMA MARIA restaurants in Sydney in the sixties and seventies, and who had allegedly devised the logo - to Mr Manconi.  This was alleged to have taken place in 1973.  Mr Clout said that this deed of transfer smacked of being brought into existence to shore up the opponents’ case.  In any event, the trade mark applied for was not just the logo but a combination of it and the words PINO’S FRESH PASTA, the whole of which was distinctive of the applicant.

Discussion

Section 24 - Distinctiveness

Section 24 (1) of the Act reads:

A trade mark is registrable in Part A of the Register if it contains or consists of-

(a) the name of a person represented in a special or particular manner;
           (b) the signature of the applicant for registration or of some predecessor in his   business;
           (c) an invented word;
           (d) a word not having direct reference to the character or quality of the goods   or services in respect of which registration is sought and not being, according   to its ordinary meaning, a geographical name or a surname; or
           (e) any other distinctive mark.

The basic requirement for the registration of any trade mark in Part A is that it is distinctive, i.e. adapted to distinguish the goods of its owner from the similar goods of other traders.  The test as to whether, or not, a mark is adapted to distinguish is well established.  If the mark is one which other traders would desire to use, without improper motive, upon or in connection with their own goods, then registration will generally be denied - Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511.

The mark applied for here is a composite one comprising the distinctive features of the serving woman logo and, to a lesser extent, the word PINO’S, and the non-distinctive phrases FRESH PASTA and NATURAL FOOD PRODUCTS.  The mark is not one which another trader is likely to wish to use without an improper motive - unless disputing ownership, which is another matter.  Consequently, I think that the mark, as a whole, is prima facie distinctive and qualifies for registration under s.24 of the Act.  I therefore find that the opponents have failed to establish this ground of opposition

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

As submitted by Ms Johnston, the test to be applied under paragraph (a) of these provisions, on which the opponents partly rely, has been well established by cases such as Southern Cross, supra, where it was said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

However, that risk must extend to a substantial number of people likely to be concerned in the purchasing of the goods: Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

In assessing the reputation of the opponents' mark in Australia, the relevant date is the date of lodgment of the opposed application, 29 April 1991 - Southern Cross, supra.  In order to ascertain its reputation at that time, I have considered the submissions and the evidence from both sides to the dispute.  The sum of the opponents’ submissions was that, given the renown in respect of the serving woman logo relating to the opponents, then deception or confusion would be likely to result from its use by the applicant.  The applicant’s main argument in response is that, although it agrees that the opponents enjoyed a reputation for the logo and words PINO’S FRESH PASTA up until about 21 December 1989, the time of the sale of the business to the applicant, it gained the right to that combination, along with the business and the goodwill, at the time of the sale.  I am not convinced that it did.  It is common ground that the words in the mark passed to the applicant at the time of sale.  Mr Manconi has declared that he is not concerned with the applicant’s use of the words PINO’S FRESH PASTA in conjunction with the aforesaid business.  Mr Clout made the point that the opponents must have known that the applicant believed that the logo was included in the purchase.  This was because of the considerable amount of money paid for the goodwill, which he said indicated that the logo was part of the deal.  There was also the matter of the packaging and printing plates bearing the logo, which Mr Zaccheo had said he understood had been also included.  However, the Registrar has no competence in company law, or in the defining of contracts.  I can only, as his delegate, look at that contract to determine whether the logo was specifically mentioned as part of the goodwill which was included in the sale.  It was not.  In any case, it is uncertain whether the logo in question was, in fact, the property of Sardinia to dispose of in the transaction.

Mr Clout said that it was up to the Registrar to look at all of the circumstances in coming to a decision in the matter.  He said that both sides’ actions, following the sale, were consistent with the logo having changed hands.  With respect, in relation to the applicant, this does not appear to have been the case.  Mr Manconi continued to use the logo in relation to his new pasta manufacturing business, DA PINO PASTA, from 1989 onwards.  This is hardly the action of someone who believed that he had just sold the logo in question.  Mr Zaccheo recognised that Mr Manconi’s use was continuing because he has declared that his customers and suppliers were confused by Mr Manconi’s continued use of the logo and name PINO’S FRESH PASTA in relation to his new business.  Mr Zaccheo accordingly commenced proceedings against Mr Manconi in the Supreme Court to restrain him from using the latter words - but not, apparently, the logo.  Mr Clout further submitted at the hearing that Mr Manconi had acquiesced in the matter of the logo’s transfer by allowing the transfer of the packaging and the printing plates bearing the logo at the time of sale.  However, once again, the packaging and plates were not mentioned in the agreement as being part of the sale and Mr Manconi has alleged, in his second declaration, that these items were given to Mr Zaccheo’s company without his knowledge or consent.  The pages submitted showing stock in hand, said to be part of the agreement, were not initialled - as the other pages were.  I therefore cannot decide, with any certainty, whether Mr Manconi intended the packaging or plates to be transferred to the applicant, or not.  Certainly, Mr Manconi’s continued use of the logo in connection with the businesses, PINO’S PIZZERIA and DA PINO PASTA indicates that the opponents have built up a considerable reputation in the logo, unbroken since 1973 to the present date in relation to restaurant services and pasta.  Consequently, I feel that the use of the subject mark by the applicant on pasta would be likely to lead to deception or confusion amongst a considerable number of people.

However, following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, the Moo/Moove case, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - i.e., that all paras of s.28 should be read together. This means that, now I have found that use of the mark will be likely to deceive or cause confusion, then it will also be necessary to find that the mark is not entitled to protection in a court of law before an opposition can succeed under s.28. I note Ms Johnston's comments regarding blameworthy conduct not being, in her estimation, required to successfully make out a case under s.28. However, in the cases she has cited to support this view, the court did not make any comment on the Registrar’s practice in the matter of requiring a conjunctive reading of s.28 and those decisions cannot be relied on for precedent as indicating the negative. Despite the inconvenience that the Office practice might have for opponents relying upon s.28, the need to show some blameworthy conduct by the applicant has been included for some time in Office decisions without adverse judicial comment, or having being overruled in an appeal situation. I therefore can see no reason to break with such a requirement in this decision.

In the present case, I note that there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant, nor any other circumstance which would disentitle the mark to protection in a court of justice.  I cannot agree with Ms Johnston that, by applying for the present mark while allegedly aware of Mr Manconi’s ownership of the serving woman logo, the applicant has committed a blameworthy act.  Mr Zaccheo has declared that he believed that he had purchased the logo, along with the goodwill of the pasta making business.  He was therefore, prima facie, acting in good faith by applying for the mark.  With respect to Ms Johnston’s allegations that the applicant breached copyright by using the logo in the mark as applied for, I note that the Karo Step Trade Mark 1977 RPC 255 and the Oscar Trade Mark 1979 RPC 173, both indicate that the Registrar can only have regard to alleged breaches of copyright, as they apply to matters raised under s.28, if there had already been a ruling of the court on an action taken under the Copyright Act. Similarly, any allegations of passing off are, in my estimation, unfounded. I find, therefore, that the requirements of paragraph 28(d) have not been made out. The opponents' case, in terms of their objection under s.28, must therefore fail.

Section 40 - Proprietorship

The provisions of s.40, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for registration of that trade mark in Part A or Part B of the Register

On that subject, McGarvie J said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402:

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(No 2) 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 (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia - for the relevant goods and prior to the date of application - becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", as per Holroyd J in Hick's trade mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale in Australia. This has been affirmed in later cases such as in Seven Up Co v O.T. Ltd (1947) 75 CLR 203

There can be no doubt, I think, that the logo of the serving woman has remained essentially the same since it was first used by Mr Salmi in conjunction with the MAMMA MARIA restaurants in the 1960s, and later by Mr Manconi in relation to his business, PINO’S PIZZERIA.  I think that I can infer from the evidence that Mr Salmi devised and was the first to use the logo, and that he agreed to transfer rights in it to Mr Manconi in June 1973.  Mr Manconi then used it in conjunction with restaurant services and on pasta products from a date prior to the applicant acquiring the business, PINO’S FRESH PASTA, from Sardinia.  Mr Manconi has claimed that Sardinia was using the logo with his permission and could not therefore sell it to the applicant.  This is a claim which the applicant has not been able to invalidate to my satisfaction.  This is notwithstanding any inferences which might be drawn as to whether the logo was, or was not, intended to be included in the sale of the business.  I am therefore of the opinion that Mr Manconi is the proprietor of the logo for the relevant goods.

However, that logo is only one segment of a composite mark which has been applied for and which must be considered as a whole. The mark comprises the distinctive features of the logo itself and the word, PINO’S, and also the non-distinctive words FRESH PASTA and NATURAL FOOD PRODUCTS. What needs to be answered is whether, as at the date of application, the applicant was the first user of the particular mark, as applied for. I believe, in deciding the issue of proprietorship, that s.40 only applies when the marks are identical or so similar as to be virtually the same mark - Carnival Cruise Lines Inc v Sitmar Cruises Ltd, supra, and Karu Pty Ltd v Jose (1994) AIPC 91-101.

The opponents have shown in their evidence that, up until 1989, Mr Manconi had used several trade marks in conjunction with his businesses, PINO’S PIZZERIA and PINO’S FRESH PASTA on menus, newspaper advertisements, business cards, stationery, promotional fliers and on the building occupied by the restaurant.  They all share the common distinctive elements of the logo and the word PINO’S.  The variations used on the stationery and flier are essentially the same as the present mark.  However, there are some differences in relation to the versions of the mark used on the menu, newspaper advertisements and business card.  These include the position of the serving woman, the inclusion of non-distinctive elements comprising the words “Pasta”, Pizzeria” and “Restaurant” and the use of the letter P to combine the words PINO’S and PIZZERIA.  Despite this, I am of the opinion that the marks (which are reproduced below) are virtually the same as the mark applied for.

Promotional flier  Stationery

Business card  Newspaper advertisement

Menu

I therefore believe that the applicant was not the first user, and therefore proprietor, of the mark applied for in the present instance.  Given the foregoing, I find that the opponents are successful on this ground of opposition.

Decision
In summary then, I have decided that the opponents have failed in their opposition under s.24, that the mark is not distinctive of the applicant, and on s.28, that although deception or confusion would be likely to ensue if the mark was registered, the opponents have not shown that the applicant has committed any blameworthy actions, necessary for an opposition to succeed under a conjunctive reading of that section. However, I have found that the opponents have been successful under s.40 by showing that the applicant was not the first user of the mark. It therefore cannot be considered the proprietor of the mark in Australia. There is a strong public interest in establishing the true proprietorship of a mark for which registration is sought and the applicant has not, to my satisfaction, discharged its initial onus of showing that it is entitled to registration. I accordingly refuse this application. Both sides sought costs in the matter but I can see no reason why they should not follow the result. I therefore award costs to the opponents.

Ian Forno
Hearing Officer

22 May 1996