Rebecca Serena Boe v Johnny Trayes Pty Ltd

[2022] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Rebecca Serena Boe to registration of trade mark application number 2061548 (Classes 20, 24, and 40) – RIVAGE - in the name of Johnny Trayes Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Self-represented. Applicant: One IP International Pty Ltd.
Decision:	2022 ATMO 100 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 43, 59, 60, and 62A – s 62A considered and established – registration refused.

Background

1. This is a decision on the opposition by Rebecca Serena Boe (‘Opponent’) to registration of trade mark number 2061548 (‘Application’) filed by Johnny Trayes Pty Ltd (‘Applicant’).

2. The Application was filed on 15 January 2020 (‘Relevant Date’) for the trade mark RIVAGE (‘Trade Mark’) for the following goods and services:

   Class 20: Tie back hooks made of metal (curtain); hooks for curtains; tie backs (curtain); tie backs for curtains; fittings for curtains; curtain hooks; tie back hooks of brass (curtain); curtain tracks; window blinds made of wood (indoor); rails for curtains; indoor window blinds (venetian blinds) (furniture); blinds (indoor); window blinds (slatted indoor); blackout blinds (indoor); window blinds (indoor); venetian indoor blinds; blackout blinds (slatted, indoor); roller blinds (indoor); roller blinds for use indoors; indoor window blinds [furniture]; indoor blinds (of all materials); indoor window blinds of textile; curtain rollers; indoor blinds (roller); vertical blinds (indoor); horizontal venetian blinds (indoor) for windows; venetian blinds (indoor); indoor window blinds (insulating blinds) (furniture); indoor window blinds (holland blinds) (furniture); indoor window blinds (roller blinds) (furniture); window shades (blinds); curtain tie-backs; rings for curtains; curtain rails; curtain pins; curtain runners; indoor window shades of textile; fittings of plastics for curtains; support rods for curtain

   Class 24: Curtains; curtain fabrics; curtains for windows; curtains for showers; curtains made of textile materials; curtain material; curtain linings; shower curtains; textile fabrics for use in the manufacture of curtains; textile fabrics for making into blankets; ready made curtains; fabrics for making curtains; materials for making curtains; window furnishing fabrics; draperies; pleated curtains; textile piece goods for making curtains; door curtains; roller curtains; net curtains; curtain valences; valances (textile draperies); curtains of textile or plastic

   Class 40: Curtain making

3. The Trade Mark was examined, accepted for registration, and subsequently advertised for opposition purposes on 16 June 2020. On that date, the Opponent filed notice of her intention to oppose registration and a statement of grounds and particulars (‘SGP’). The Applicant filed a notice of intention to defend the opposition on 5 August 2020.

4. The parties had the opportunity to file evidence under the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 5 November 2020. The Applicant filed Evidence in Answer (‘EIA’) on 9 February 2021.  The Opponent filed Evidence in Reply (‘EIR’) on 12 May 2021.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5. The parties were given an opportunity to be heard by videoconference or by written submissions only. The Applicant requested to be heard by written submissions, which were filed on its behalf by Olaf Kretzschmar of One IP International Pty Ltd. The Opponent did not request to be heard. As a delegate of the Registrar, I have decided the matter based on the particulars detailed in the SGP, the evidence, and the written submissions of the Applicant.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 43, 59, 60, and 62A.

7. The Opponent carries the burden of establishing a ground 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

8. The following evidence was filed:

   EIS

   Declaration of Ms Rebecca Boe (‘Ms R. Boe’), Opponent, made on 5 November 2020, with Annexures A to L.

   EIA
   Declaration of Mr Steven John Trayes (‘Mr Trayes’), director of Applicant, made on 8 February 2021 with Annexures JT-01 to JT-14.

   EIR
   Declaration of Ms Norma Boe (‘Ms N. Boe’), employee of Applicant, made on 12 May 2021.

9. The matter concerns a dispute between family members over a window furnishing business that operated for approximately fifteen years prior to the Relevant Date. The evidence contains personal information and various opinions regarding the family members that are stated to have contributed to the dispute. It is not necessary that I repeat much of the personal information and opinions, and I have not done so, unless the information has some bearing on my decision.  

   EIS

10. Ms R. Boe declares that she has been a director of Rivage Pty Ltd t/as Rivage Curtains & Blinds (‘RPL’) since that company was registered in June 2013. An Australian Securities & Investments Commission (‘ASIC’) extract providing relevant information for RPL is annexed.

11. Ms R. Boe declares that Ms N. Boe is the mother of both herself and Mr Steven ‘Johnny’ Trayes. Ms R. Boe declares that Ms N. Boe created a curtains and blinds business, Rivage Softfurnishings, in 2004 (‘Rivage business’). An ASIC extract is annexed indicating that the business name Rivage Softfurnishings was registered in September 2004 and cancelled on 4 June 2015. The extract also indicates that the holder of the business name was Ms N. Boe between 1 September 2004 and 21 December 2005, and the subsequent holder from 21 December 2005 to 4 June 2015 was a company, Rivage Management Pty Ltd (‘RMPL’).    

12. Ms R. Boe declares that the Rivage business has been in operation since 2004 and that RPL has been operating under the same business name, address and identity for 7 years. The address of RPL is 22/19 Warehouse Road, Southport, Queensland (‘RPL Address’). The Rivage business has over time employed 15-20 staff and continues to operate as a medium sized local business with six current employees and multiple contractors.

13. Ms R. Boe declares that her mother initially employed the ‘Applicant’ (by which I infer she means Mr Trayes) to work in the Rivage business in 2004, and that Mr Trayes’ employment with RPL ceased on or around October 2019.

14. Ms R. Boe declares that the Applicant trades under various names, being Rivage Interiors, Rivage Blinds, Rivage Curtains, Rivage Curtains and Blinds, and Rivage Media, and that it falsely identifies as a commercial and residential curtain retailer located at the RPL Address.

15. Ms R. Boe declares that the Applicant advertises products on the website which are produced at the RPL Address under the RIVAGE brand, and that the Applicant has repeatedly altered the Rivage business contact number on Google to its own number which she was required to correct on each occasion.

16. Ms R. Boe declares that the domain (‘Rivage domain’) is registered to Ms N. Boe, but that “with malice, the Applicant transferred all Rivage information to a new domain, without allowing access to Rivage employees or Directors”. A WHOIS Record for the Rivage domain indicates that the Registrant is Ms N. Boe, and that the Registrant contact is Johnny Trayes.

17. Ms R. Boe declares that the “Rivage trade mark has been used to such an extent for particular goods or services (curtain and blinds) that if another party were to use the mark for even quite different goods or services, the public could be misled. We believe that the Applicant is attempting to mislead the public, as he has no intention to provide a good or service in relation to Rivage”.

    EIA

18. Mr Trayes confirms that he is the brother of the Opponent and son of Ms N. Boe, and that he started his career as a curtain and blind apprentice in 1992. Mr Trayes declares “I have personally created, used and developed the Trade Mark and it is the result of my sole efforts that the Trade Mark has reputation in the marketplace. The Opponent or Opponent’s and my mother, Norma Ofa Boe, has no contribution in creating, using and developing the Trade Mark. I have founded several businesses related to installations, curtains, blind making and in course of developing those businesses, I have used and developed the Trade Mark. I have been solely responsible for all the dealings, contracts, and day-to-day operations for all the businesses”.

19. Mr Trayes declares that on 7 September 2004 he registered the business name ‘Rivage Softfurnishings’, but it was decided that his mother would be appointed as the ABN holder. Mr Trayes states that on 8 August 2005, he founded RMPL as its only director and shareholder.

20. Mr Trayes declares that in August 2005, RMPL entered a lease agreement for 22/19 Brolga Avenue Southport Queensland. A copy of the executed three-year lease dated 1 August 2005 is annexed.

21. Mr Trayes declares that he has been responsible for all payments regarding the Rivage domain and encloses correspondence from 2008-2010 with GC Web, including a tax invoice addressed to him dated 15 January 2009 for hosting of the Rivage domain.

22. Mr Trayes declares that on 1 April 2006, RMPL was registered as ‘The Trustee for The Pacific Trust’ trading as ‘Rivage Softfurnishings’, and that on 5 May 2010, RMPL registered another business name ‘Rivage Curtains and Blinds’. An ASIC extract is annexed confirming the registration of the business name ‘Rivage Curtains and Blinds’ to RMPL as Trustee for The Pacific Trust on 5 May 2010. Also annexed is an ABN Lookup printout which confirms that the business name Rivage Softfurnishings has been registered to ‘The Trustee for The Pacific Trust’ since 1 April 2006.  

23. Mr Trayes declares that from 2006-2013 he continued working as the sole director and owner of RMPL trading as ‘Rivage Softfurnishings’ and ‘Rivage Curtains and Blinds’ and that he singlehandedly developed and promoted the ‘Rivage’ brand by offering services as a specialist in yachts, luxury homes, and hotels. Since 2004, he has been the “sole creator, owner, developer and user of the intellectual property related to ‘Rivage’ brand. The Opponent and our mother have assumed management roles for different entities from time to time. However, the consumers of services have always associated ‘Rivage’ with me”.

24. Mr Trayes annexes a profit and loss statement for FYE 2012 for Rivage Curtains & Blinds which indicates a healthy revenue for the Rivage business for that year. Mr Trayes also annexes various documents sent to and by the Rivage business between 2008 and 2011 under the names ‘Rivage Softfurnishings’ and ‘Rivage Curtains and Blinds’. The documents issued by the Rivage business include invoices, quotations, purchase orders, and emails, and documents sent to the Rivage business include invoices for advertising and signwriting, and a telephone bill.

25. Mr Trayes declares that until 2019, customers have only communicated to RPL via himself. In support of this claim, Mr Trayes annexes an invoice dated 9 September 2013 which bears the Rivage Curtains & Blinds letterhead and requests payment to the account of RPL. The invoice contains Mr Trayes’ phone number. A similarly marked quotation from 2018 contains Mr Trayes’ email address.

26. Mr Trayes declares that the Opponent was only 13 years old in 2006 and was not involved in the creation, development and use of the ‘Rivage’ brand. On 6 June 2013, due to liquidation of RMPL (and another company, Silentgliss), Mr Trayes decided to ‘restructure’ the company and registered another entity, RPL. The Opponent was nominated as the director of RPL, and Mr Trayes acted as a shadow director and worked ‘singlehandedly’ for RPL from 2013 to 2018.

27. Mr Trayes declares that the Opponent has not demonstrated any use of the Trade Mark personally by her, rather, the Opponent’s evidence shows use of the Trade Mark by various entities under his implied license.

28. Mr Trayes declares that in 2019, the Opponent with ill intention blocked his access to the premises, bank accounts, and other activities of RPL. Subsequently, he has been trading under the Applicant and has granted the “implied license of Trade Mark and common law rights related to RIVAGE to the Applicant”. Mr Trayes goes on to state that “Consequently, on 15 January 2020, basis my implied license of intellectual property to the Applicant, the Applicant filed for the present Trade Mark Application” and “The Applicant submits that the Applicant is the true, correct and prior user and owner of the Trade Mark”.

    EIR

29. Ms N. Boe declares that she started the Rivage business in 2004, and that ‘Rivage’ originated from ‘Rivage Royal’, the name of the building in which her family lived. A position was created for Mr Trayes to work in the business. In or around 2005, the Rivage business moved to the RPL Address and Mr Trayes asked for the Rivage Softfurnishings business to be transferred into his name.    

30. Ms N. Boe declares that in 2013, for various reasons, the Opponent was asked to take on ownership of the business, although Mr Trayes was to continue managing the administrative and financial affairs of RPL during this time. Mr Trayes employment was subsequently terminated for various reasons in 2019.  

    Discussion

    Section 62A

31. 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 asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[4]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

    [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J).

32. In submissions, Mr Kretzchmar states:

    The Applicant is the Soul [sic] founder and creator of Rivage Curtains and Blinds, established in 2004. Rivage Pty Ltd was a legal sound company restructured by the Applicant from Rivage Management Pty Ltd. All the copyrights and intellectual property rights belong to the Applicant. This is not limited to the physical property of the showroom, fit tools and machinery built and paid for by the Applicant.

33. The evidence of both parties is consistent in that it indicates that a business for supplying and installing window furnishings was carried on under the Trade Mark (including the Trade Mark with alterations or additions not substantially affecting its identity) since 2004. The business was run between 2004-2005 under the business name ‘Rivage Softfurnishings’ which was initially registered to Ms N Boe. However, the operational activities of that business appear (on the limited evidence before me) to have been carried on primarily by Mr Trayes. From 2005-2013, the Rivage business was run by RMPL (which took over the business name Rivage Softfurnishings), an entity controlled by Mr Trayes. From 2013-2019, the Rivage business was carried on by RPL after what Mr Trayes describes as a ‘restructure’. The Opponent was the sole listed director and shareholder of RPL, although Mr Trayes claims to have been a shadow director. Mr Trayes claims that since 2019, the Applicant operates a business under the Trade Mark with his ‘implied licence’.

34. The proprietor of an unregistered trade mark at common law is the party that first uses the trade mark in relation to particular goods or services. It is debatable based on the limited evidence available which individual/s or entities would have the best claim to proprietorship of the Trade Mark at common law. Ms N. Boe would seem to have a strong claim to proprietorship given that the Rivage business was registered under her name when it first commenced trading. However, Mr Trayes would argue that the business was in reality operated by him, and as such, he has a superior claim to sole proprietorship or at least a claim to joint proprietorship. The subsequent use of the Trade Mark by both RMPL and RPL might also have some bearing on the question of proprietorship, for example, if it was determined that the original or subsequent proprietors effectively abandoned the Trade Mark, allowing it to be adopted by later entities RMPL and/or RPL in turn.  Further, while it is possible for an unregistered trade mark to be assigned (but only with the goodwill of the business),[5] the evidence in this case does not demonstrate that any assignment of the Trade Mark and goodwill in the Rivage business took place.

    [5] Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65, [128] (Foster, Moshinsky, O’Bryan JJ).

35. Although it is unclear who is the proprietor of the Trade Mark at common law, what is clear is that the Applicant, being an entity incorporated in 2019, has no apparent claim to proprietorship which is supported by the evidence. The Applicant also cannot claim the benefit of any goodwill that accrued to the Rivage business between 2004-2019. Mr Trayes states that he granted an ‘implied licence’ to the Trade Mark and related common law rights to the Applicant, and it was based on this implied licence that the Application was filed. However, the grant of a licence would not suffice to assign to the Applicant any proprietary rights purportedly held by Mr Trayes. Further, Mr Kretzschmar in his submissions also seems to conflate the Applicant and Mr Trayes, stating the ‘the Applicant is the [sole] founder and creator of Rivage Curtains and Blinds, established in 2004’. This either overlooks the fact that the Applicant and Mr Trayes are different legal persons or assumes that the Applicant is a successor in title to rights held by Mr Trayes where no evidence of any assignment of rights has been produced.  

36. Any claim to proprietorship of the Trade Mark that Mr Trayes may have in his personal capacity cannot automatically be assumed by the Applicant merely because Mr Trayes is the sole shareholder and director of the Applicant, or because Mr Trayes considers that the Applicant uses and applied to register the Trade Mark under an implied licence. For the Applicant to have any claim to proprietorship, any rights that Mr Trayes claims he holds in the Trade Mark would have first needed to be assigned to the Applicant, together with the associated business goodwill. There is no evidence that any such assignment occurred prior to the Relevant Date.

37. Had the Opponent nominated grounds of opposition under s 58 (i.e. that the Applicant is not the proprietor of the Trade Mark), I consider that ground of opposition would have been successful. However, as s 58 was not nominated, I must consider whether the filing of the Application on the facts rises to the level of ‘bad faith’. Sections 58 and 62A should not be conflated and evidence which establishes the former may not necessarily establish the latter. I also note that in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J said:

    … mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character. [6]

    [6] [2012] FCA 81, [166].

1. I consider that the Applicant, being an entity incorporated in 2019, knew at the Relevant Date that it was not the owner of the Trade Mark at common law and also knew that any goodwill relating to the Trade Mark had accrued to a person other than itself. This is because the Applicant’s director, Mr Trayes, considered himself to be the owner of the Trade Mark and beneficiary of any associated goodwill due to his personal involvement in the Rivage business since 2004. Mr Trayes expressly states that he considers the Applicant to merely be a licensee. The question is, whether this subjective knowledge is sufficient, in the context of filing the Application, to constitute underhand or unconscientious behaviour, or whether it should be characterised as something else, for example, negligence, incompetence, or a lack of prudence.   

2. On balance, I am satisfied that while Mr Trayes may not have understood the distinction between a claim to ownership of property by himself as an individual and a claim to ownership of property by a company controlled by him, he well understood (and proclaimed in his evidence) that any claim he had to the Trade Mark was in his personal capacity. It follows that the Applicant knew it had no claim to proprietorship of the Trade Mark. The subjective knowledge of the Applicant that it only held a licence to use the Trade Mark, and had no claim to proprietorship, is sufficient in my view to form the basis of a finding of bad faith.  

3. I am also satisfied that it falls short of acceptable standards of commercial behaviour for an entity that knows it has no claim to proprietorship of a trade mark to apply for registration of that trade mark. Such actions have the potential to adversely affect the integrity of the Register as a true reflection of the ownership of trade mark rights.

4. I am satisfied that a ground of opposition under s 62A has been established. As such, there is no need for me to consider the remaining grounds of opposition nominated in the SGP.

   Decision

5. The Opponent has established a ground of opposition. As such, I have decided to refuse the Application. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   17 June 2022