Repsol Petroleo SA v Bob Jane T-Marts Pty Ltd

[2000] ATMO 115

TRADE MARKS ACT 1995

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

Re:Opposition by Repsol Petroleo SA to the registration of trade mark application number 747147 in the name of Bob Jane T-Marts Pty Ltd for a trade mark comprising the word REPSOL in Classes 4 and 12.

Background
Application number 747147 was filed on 27 October 1997, in the name of Bob Jane T-Marts Pty Ltd (the applicant).  The application was for the registration of the trade mark REPSOL and covered the respective statements of goods, "Automotive oils and lubricants" in Class 4, and "Automotive vehicle parts, fittings and accessories included in class 12".  Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 26 February 1998.

Following the grant of an extension of time to do so, a notice of opposition to the trade mark’s registration was filed by Repsol Petroleo SA (the opponent), on 12 August 1998.  The notice of opposition listed a number of grounds.  However, those which the opponent pursued at the hearing were confirmed by its attorney at that time as being founded on ss.58 and 60.  Another ground, that based on the provisions s.42, was listed in the notice of opposition and is, in my opinion, also relevant - although no submissions were made on it at the hearing.  Accordingly, those grounds are the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Melbourne.  At the hearing, the opponent was represented by Mr Ben Fitzpatrick of Counsel, instructed by Griffith Hack.  The applicant's attorney, Mr Stephen Plymin of Watermark, had sent written submissions on its behalf, in lieu of appearing at the hearing.

The Evidence
The evidence in support comprises a declaration by Juan Ambrona, the Secretary General of the opponent.  Mr Ambrona declares that the opponent company is a "leading international oil and gas company engaged in all aspects of the petroleum business".  He says that the opponent is the worldwide proprietor of the trade mark REPSOL, which has been used in Spain since the fifties and internationally since 1987 in relation to its products.  He says that the opponent's goods have been sold in Australia since 1996 through various distributors and he gives details of the value of goods bearing the mark from 1996 to 1998, and also of its expenditure on advertising and promotion of the mark from 1997.  Mr Ambrona further lists various print media which have published promotional articles, and press releases, all from 1998, and also promotional items - all of the foregoing featuring the opponent's trade mark.  He says that the opponent has sponsored several motor vehicle related events around Australia, in 1998 and 1999, has invested in international sponsorships, such as that of Australian 500cc motorcycle champion, Mick Doohan, and of various other individuals and teams, and also sponsored motorcycle rider training programmes, where the opponent's mark is featured.  It is unclear when the sponsorships and programmes date from.  He additionally lists the opponent's Internet site, where it advertises and promotes its goods under its trade mark.  He also says that the opponent's goods bearing the mark are sold in association with SEAT motor vehicles.  He finally declares that the opponent's trade mark has been registered in respect of the same or similar goods in many overseas countries and that it has also been promoted heavily in Australia.

Attached, as exhibits to Mr Ambrona's declaration, are examples of the opponent's labels, copies of media articles, various press releases, a promotional t-shirt, a copy of a motor vehicle rally programme, a motorbike training pamphlet and a copy of the opponent's trade mark registration portfolio.

The applicant did not serve any evidence in answer in relation to the matter.

Submissions
Mr Fitzpatrick, on behalf of the opponent, said that the applicant was not entitled to claim ownership of the trade mark, with respect to motor vehicle lubricants and oils.  He said that, instead, the opponent was the owner of the mark REPSOL for its goods because it had shown, in its evidence, some use by its distributor in relation to them in Australia prior to the present application.  This claim, he said, which had not been disputed by evidence from the applicant, was supported by the opponent's evidence.  He submitted that this material showed the opponent's association with and consequent ownership of the mark overseas through its use, promotion and registration in many countries, and because of the knowledge that many Australians would have of this and the mark's reputation.  He said that this was especially so, given the association of the mark with the well-known Australian world 500cc motorcycle champion, Michael Doohan.

With respect to the opponent's claim that the registration of the mark by the applicant would be likely to lead to deception and confusion, Mr Fitzpatrick said that the respective parties' trade marks were identical.  He said that the opponent's uncontroverted evidence showed that its mark had been well known as a trade mark in Australia, since 1985, in relation to motor cycle lubricants.  This notoriety for the opponent's mark would have been well established in the target market because of Michael Doohan's connection with it, he said.  Mr Fitzpatrick submitted that the opponent's reputation for its mark, in respect of motorcycle lubricants, meant that its claim of deception and confusion ensuing from the applicant's use on Class 12 goods was also valid.  This would mean that ordinary consumers would be caused to wonder as to the origin of the goods, he said.

He submitted finally that the opponent should have its costs paid in the matter.

Mr Plymin, in his written submissions on behalf of the applicant, said that the onus was on the opponent to prove its case and that it had not done so on the grounds relied upon.  He said that, in relation to the grounds relied upon, that the opponent's evidence was deficient in many respects.  He discussed Mr Ambrona's declaration, pointing to what he said were many unsupported and vague claims by the declarant.  He also criticised many of the attachments to the declaration, intended to establish the opponent's reputation in its mark, saying that they mainly seem connected to press releases issued by one of the opponent's distributors since 1997.  Other material, he said, only referred to motor oils and not Class 12 goods, was undated, or was after the critical date here.

He said that the applicant had a prima facie claim as to ownership of the trade mark through its authorship, intention to use it and by making application for its registration.  He disputed that the opponent had shown first use of the mark in Australia on Class 4 goods and certainly not on Class 12 goods, given the unclear and unspecific evidence purporting to show this.

With respect to the opponent's ground of possible deception and confusion occurring, Mr Plymin said that there had to be a real and tangible danger of this happening, and that there had not been shown any actual or potential confusion in the market place.  He said that the evidence failed to clearly show that the opponent had a sufficient reputation in the mark in this country at the time that the present application had been made.  He said that it did not matter to what degree the opponent promoted its mark after that date.

He closed his submissions by seeking costs in the matter in favour of the applicant.

Analysis
As I have previously stated, in giving the reasons for my decision in this opposition matter, I will only deal with the grounds pursued by Mr Fitzpatrick at the hearing - those under ss.58 and 60, and that under s.42, which I believe should be considered in coming to a decision here.

Section 58
This section reads:

Applicant not owner of trade mark

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

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As is stated in s.27 of the Act:

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; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Ownership depends on a combination of authorship and first use and, as per Shell Co. (Aust.) Ltd v Rohm and Haas Co. (1949) 78 CLR 601. Such ownership may be claimed either on being the first user of the trade mark in Australia, in relation to the nominated goods, or on the basis of the making of an application for registration.

However, that ownership is limited to "the same kind of thing" - as per Holroyd J in Hicks’ case (1897) 22 VLR 636. The present application covers the goods, "Automotive oils and lubricants" and "Automotive vehicle parts, fittings and accessories included in class 12", while the opponent's goods comprise automotive lubricants for light and heavy commercial vehicles, cars and motorcycles. Therefore, there is no doubt that the oils and lubricants sold by both parties here are the same kind of thing. However, this is not the case in relation to Class 12 and the opponent is not seeking to dispute ownership in relation to that class. Therefore, I will only consider this ground of opposition as it applies to Class 4 goods.

The dispute of a claim to ownership of a mark can only proceed to be considered, where the opponent can also show that the trade mark it relies upon as being owned by itself or another person is substantially identical with the mark, the subject of the application for registration.  In Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) AIPC 91-049; (1994) 120 ALR 495, Gummow J, referring to The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, said:

... it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase "substantially identical"  was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414.

Windeyer J said, in the above case:

…(the marks should) 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.

Here, the applied-for trade mark and that shown to be used by the opponent are obviously the same.  That being the case, to determine who is the owner of that mark at common law, I must now consider when their respective first uses took place.

In relation to a claim of first use of a mark in Australia, any small amount of activity 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 the goods of a particular trader are being offered for sale, in this country, under the trade mark.  There is authority that a court will regard slight use, in Australia, by an overseas owner as sufficient to give it ownership of the trade mark in Australia: The Seven Up Co v OT Ltd ( 1947) 75 CLR 203 at 211; Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 400; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), 59 ALJR 77 at 83.

The applicant here has submitted no evidence of use of the subject mark.  Accordingly, the first date that it can lay claim to ownership of that mark must be when it applied for the registration of it - 27 October 1997.  Against this is the declaration of first use by the opponent.  Mr Fitzpatrick has pointed to Mr Ambrona's statement regarding actual use of the mark on automotive lubricants in Australia since 1996.  However, this assertion is not supported by any other material at all in the evidence which might show use in Australia from that year.  Accordingly I cannot afford Mr Ambrona's uncorroborated claim of earlier use much weight against that of the applicant's application for registration and its implicit claims of use, or intended use, since the date of filing.  Any confirmed use of the mark by the opponent in Australia was after the critical date here.  Therefore, I cannot agree that the opponent has convincingly shown that it first used the subject mark on the relevant goods in Australia and can accordingly claim to be the owner of the mark in this country.

I therefore dismiss this ground of opposition.

Section 60
This section reads:
Trade mark similar to trade mark that has acquired a reputation in Australia

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b)  because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

I have already found that the subject trade mark is substantially identical with the opponent's mark.  That being the case, it now remains to be determined whether deception or confusion would be caused if the presently applied for mark is used on the goods in the specification, in the light of the opponent's reputation in the trade mark.  In assessing that reputation, the relevant date to be considered is that of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - here 27 October 1997. A mere possibility of confusion is not enough. There must be a real and tangible danger of its occurring. It is accepted law that the risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

In assessing whether the opponent possessed sufficient reputation in its mark, I have had regard to Mr Fitzpatrick's submissions made at the hearing and the opponent's evidence in support.  As I have said, in relation to the ownership ground, despite Mr Ambrona's claim of use of the opponent's trade mark since 1996 in Australia, there is no material to substantiate this.  Therefore, his statement appears to be merely unsupported assertion.  The earliest date that I can see in Mr Ambrona's declaration from which the opponent used its mark in this country, which is verified by other material, is August 1998 - after the date of filing here.  Mr Fitzpatrick has argued that the involvement of Australian motorcycle champion Mick Doohan with the opponent and it's mark since 1995 would have raised awareness in Australia of the association.  However, again, there is nothing in the evidence which supports this claim - particularly in relation to a date which is earlier than the relevant one here.  I am personally aware of Mick Doohan's reputation and achievements.  However, I cannot easily recall any particular sponsorships which he might have had - other than his membership of the Honda team - or the dates from which he started wearing particular sponsors' logos on his protective clothing, or on his machine.  I doubt if anyone but the most ardent of motorcycle racing fans could do more.

Therefore, in my opinion, nothing has been shown to me in the opponent's evidence, with respect to a reputation in this country for the opponent's trade mark, as at the critical date here, sufficient to cause deception and confusion amongst a significant proportion of the relevant market.  Accordingly, I dismiss this ground of opposition.

Section 42
This section reads:

Trade mark scandalous or its use contrary to law

42.      An application for the registration of a trade mark must be rejected

(a)       the trade mark contains or consists of scandalous matter; or

(b)       its use would be contrary to law.

Mr Fitzpatrick did not pursue this ground at the hearing.  However, it was included in the original notice of opposition and I will make comment on it.  This is because the opponent might wish it to be now considered, given the failure of the ss.58 and 60 grounds of opposition.  Despite any inferences which might be drawn from the applicant's adoption of an identical trade mark to that owned by the opponent for the same goods, I have not been presented with any evidence which might show me that anything unlawful has occurred in relation to the present application for registration of the opposed mark.  In regard to such situations, I refer to the words of Fullagar J. from Aston v. Harlee Manufacturing Co., supra, where, at p.404, he said:

When once it is conceded, as a matter of law, that a person may apply for and obtain in Australia a valid registration of a trade mark registered and used in a foreign country but not used in Australia, I do not think that exceptions and qualifications should be introduced which are based merely on conceptions of commercial ethics.

Also pertinent here are the words of Latham CJ in Seven Up Co v OT Ltd, supra, where he said, at p.216:

The desire to use in Australia a successful trade mark in competition in trade with a person who may come here and who uses that trade mark in another country cannot be described as fraud or as involving any breach of the law.

The Chief Justice then went on to quote with approval the earlier decision of Williams J. where that party had said, at 211:

...(I)n the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration.

I think that the most that can be said of the applicant's adoption of the mark here is that it might be accused of sharp business practices - c.f. the situation in the Yanx case - Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199, where Williams J. said, at 202:

To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice.  But it is not in itself fraudulent or a breach of the law."

I therefore find that the opponent is also not successful on this ground of its opposition.

Registrar's discretion
The opponent has submitted that the present trade mark should not be registered because of the grounds relied upon in its notice of opposition.  I think that, under the Act, the onus is on the opponent to convince the Registrar of the validity of those grounds.  It will be obvious from my earlier findings that the opponent has not done enough to meet that onus because it did not present sufficient convincing evidence in order to make a case in terms of sections 58 and 60, the grounds upon which it relies in seeking the Registrar's discretion to refuse registration of the subject mark.

Conclusion

Given all of the above, I find that the opponent has not succeeded on any of the grounds set out in the notice of opposition, or relied upon by its representative at the hearing.  Accordingly, as the delegate of the Registrar in this matter, I dismiss the opposition as a whole.  It follows that, providing that the relevant fee is paid, the application should proceed to registration.

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that costs in the matter be awarded against the opponent.

Ian Forno
Hearing Officer

26 October 2000