Richard Wright and Barbara Wright v Roche Group Pty Ltd

[2003] ATMO 20

TRADE MARKS ACT 1995

DECISION OF A DEPUTY REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Richard and Barbara Wright to registration of trade mark application 846659(31) - V1V HEREFORD BEEFMAKERS and device - filed in the name of Roche Group Pty Ltd.

Date of Decision:

11 April 2003

Delegate:

Helen R. Hardie

Representation:

Opponent:
Richard Wright on behalf of himself and joint opponent, Barbara Wright

Applicant:
Khajaque Kortian, Legal Practitioner of Spruson & Ferguson

Decision:

s52 opposition - ss58, 60 and 62 grounds fail - opposition dismissed

1. Trade mark application number 846659 was filed on 16 August 2000, in the name of Roche Group Pty Ltd t/a Jeogla Pastoral Company.  The applicant is described as an Australian company of 50 Bay Street, Double Bay, NSW.  It was formerly known as Peakhurst Properties Pty Ltd.  I refer to the applicant as the Roche Group.

2. With this application the Roche Group endeavours to register the following trade mark for the goods live animals; cattle in class 31[1].

   [1] Goods and services classes are listed in Schedule 1 of the Trade Marks Regulations 1995

3. Application number 846659 is substantially identical to trade mark number 795107.  This is a registered trade mark that stands in the names of joint owners, Richard B Wright and Barbara A Wright, both of Abbotsford, The Old Coach House, Wingen, NSW.  The registration and priority date of 795107 is 26 May 1999.  It is registered for meat in classe 29 and for cattle in class 31[2].   I shall refer to Richard B Wright and Barbara A Wright as Mr and Mrs Wright.  A representation of their trade mark is below.

   From here on I refer to the trade mark, which is the subject of both 846659 and 795107, as the V1V mark.

   [2] Schedule 1 of the Trade Marks Regulations 1995

4. The trade mark owned by Mr and Mrs Wright, 795107, being a live registration with the priority date of 26 May 1999, constituted a bar to acceptance of the Roche Group's application, 846659 with its later filing date of 16 August 2000. The examiner therefore, under the terms of section 44 of the Trade Marks Act 1995, cited 795107 as grounds for rejecting 846659. In response, however, the attorneys who act on behalf of the Roche Group filed evidence to show that, through prior and continuous use, the Roche Group's application trade mark was entitled to acceptance under the provisions of paragraph 44(4) of the Act. This supporting declaratory evidence indicated to the examiner's satisfaction that:

   ·     the Roche Group had acquired the V1V mark through purchase of property;

   ·     

   the Roche Group’s acquisition of the V1V mark pre-dated filing, by

   
   

   Mr and Mrs Wright, for registration of 795107;

   ·     since date of purchase, the Roche Group had continually used the V1V mark;   and

   · by virtue of the provisions of paragraph 44(4) the grounds for rejecting the Roche Group's application, 846659, had been overcome.

   Thus the present application, number 846659, was accepted and advertised for opposition in the Australian Official Journal of Trade Marks of 8 February 2001. 

5. The Trade Marks Office has a standard practice when applications proceed to acceptance under the provision of section 44(4). It directly advises owners of any cited trade mark, that a mark, substantially identical or deceptively similar to theirs, has been accepted for registration. Mr and Mrs Wright were therefore told that pursuant to section 44(4), 846659 had been accepted despite a conflict with their registered trade mark, 795107. This notice also drew attention to the statutory provisions for opposing registration.

6. I think it is useful to mention here that, at the time of the registration of 795107, the uncommon possibility of a future restriction to the exclusive use of their newly registered trade mark was conveyed to Mr and Mrs Wright. A copy of a pamphlet entitled You now own a registered trade mark (Annexure 3 to the Wright declaration) accompanied the registration notice.  Information about honest or prior use is included in this publication and sits under a bright red heading - Possible limitations.   It reads:

   Whilst uncommon, there are some circumstances which may limit your exclusive rights.  For example:

   If another person is using an unregistered trade mark which is the same, or very similar to your mark, and their use of the trade mark started before you registered or started using your mark, they could possibly claim ownership of the trade mark under common law.  They might rely on this as a defence against an infringement action and might in some situations be able to register their mark as well.  ....

   As it has emerged, consequent upon the provisions for prior use, Mr and Mrs Wright’s registration 795107 is now subject to one such limit on its exclusivity.

7. It should be said that the prior use provisions are designed to protect innocent parties from loss of rightfully acquired common law rights. Through the operation of paragraph 44(4) of the Trade Marks Act 1995, Parliament maintained and enlarged upon the prior use provisions of the old law - section 34(2) of the Trade Marks Act 1955.  The new law gives force to the Recommended Changes to the Australian Trade Marks Legislation[3]- including 7C p46: which states:

   To establish prior use, a proprietor should only have to prove use prior to the priority date of the cited mark.  This type of prior use will allow the acceptance of the application and registration will proceed if the opposition period produces nothing to the contrary.

   In accordance with the provisions resulting from these recommendations, now made manifest in paragraph 44(4) of the current Act, the Roche Group’s trade mark application 846659 proceeded to acceptance. It now, however, confronts the opposition action brought by Mr and Mrs Wright.

   [3] A report by the Working Party to Review the Trade Marks Legislation, to the Hon Ross Free MP, Minister for Science and Technology, July 1992

8. Opposition to registration is governed by Parts 5 of the Trade Marks Act 1995 and Trade Marks Regulations 1995.  Mr and Mrs Wright achieved thereby a three month extension and, on 23 July 2001, served and filed notice of their opposition.  The evidence phases followed routinely.  Mr and Mrs Wright filed a single declaration to support their opposition. This is a declaration by:

   ·     Richard Bruce Arundell Wright - made on 12 September 2001 (the same Mr Wright who jointly opposes 846659 and jointly owns 795107).

   The applicant, the Roche Group, responded with three declarations which it relies on as evidence in answer.  These are all dated 9 July 2002 and are by:

   ·     David Capp Hall, a managing director of the Roche Group;

   ·     Damian Roche, also of the Roche Group;    and

   ·     Keith William Skinner, appointed receiver and manager of Jeogla Pty Ltd.

9. With the close of the time allowed for evidence[4], the applicant, through its attorneys Spruson and Ferguson, asked the Registrar to hear the parties to the opposition and a hearing time was appointed for Sydney on 14 March 2003. This hearing took place before me. The joint opponents, Mr and Mrs Wright, were both present in person and Mr Wright made representation on their behalf. Mrs Wright assisted him. The applicant, the Roche Group, was represented by Mr Khajaque Kortian, legal practitioner of Spruson & Ferguson, Patent and Trade Mark Attorneys of Sydney.

   [4] Mr and Mrs Wright served no evidence in reply.

   Grounds of opposition

10. The grounds for opposing registration are exhaustively listed under sections 57 to 62 of the Act.   Mr and Mrs Wright cite and rely on three of these sections.

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

    Section 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.

    Section 62       The registration of a trade mark may be opposed on any of the following grounds:

    (a)that the application, or a document filed in support of the application, was amended contrary to this Act;

    (b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

11. I will deal with each of these grounds in order.

    The Section 58 ground of opposition - ownership

12. In the present circumstance the question of ownership goes somewhat further than ownership at date of application. As discussed, 846659 proceeded to acceptance on the claim that the Roche Group had acquired the V1V mark, that this acquisition pre-dated Mr and Mrs Wright’s filing for 795107, and on those facts (inter alia) the provisions of paragraph 44(4) of the Act operated to allow 846659 to be accepted.

13. Mr and Mrs Wright challenge this claim. They contend that the Roche Group did not purchase the V1V mark and are not the current owners of that mark. 

14. The facts of the Roche Group’s acquisition appear in the evidence of the Hall, Roche and Skinner declarations.  Broadly, the acquisition relates to the disposal of property subsequent to the appointment of Mr Skinner as receiver and manager of the assets of Jeogla Pty Ltd in its own capacity and as trustee of the BA Wright Family Trust.  The assets of Jeogla Pty Ltd, at that time, says Mr Skinner,

    ... included a cattle property located near Armidale, New South Wales which (together with another property in Armidale owned by a related entity, Bald Hills Pty Ltd (Receiver Appointed)...) was known as “Jeogla Station”.    

    Details of the sale are recounted in the Hall declaration. At Annexure B are copies of:

    ·     Contract for Sale of Land ...  “JEOGLA STATION” - and

    ·     Contract for Sale of Land ...  “BALD HILLS STATION”

    Both contracts are dated 22 September 1998, with a completion date specified as 23 November 1998 - I shall at times be referring to them jointly as the September 1998 Contracts.  The property in both contracts is described as:

    The land, the improvements, all fixtures and the inclusions, but not the exclusions.

    The vendor is Jeogla Pty Ltd in its own capacity and as Trustee for BA Wright Family Trust (Receiver & Manager Appointed).  The purchaser is Peakhurst Properties Pty Ltd which company later became the Roche Group.

15. Inclusions in the Jeogla Station contract are shown as dishwasher, fixed floor coverings and swimming pool equipment. Exclusions from this contract read:

    All Plant & Equipment upon the land is excluded from the sale of the Property

    In the contract for Bald Hills Station neither inclusions nor exclusions are listed.

16. Mr Kortian, however, directs my attention to the Contract for Sale of Land for “Jeogla Station”[5] and in particular to page 7 of the Additional Provisions which form a part of that contract.   Here it is stated:

    43.1     The Vendor will, at the request of the Purchaser take all reasonable steps to procure the transfer of the following on or before completion:

    (a)      Stock Identification Cattle Brand “VIV”[6] - Armidale Rural Lands Protection District Board Identifier 3034369

    (b)      ....

    (c)       ....

    [5] Hall declaration - Annexure B

    [6] The trade marks 795107 and 846659 comprise the letters VV and the numeral 1 as per V1V. Reference at various points in evidence is to the three-letter combination VIV and sometimes VIV.  In my view this is nothing more than an inconsistency in the reading of V1V and is of no material consequence.  Although I attempt a faithful presentation of the versions as they appear in evidence, I give no weight to the fact of the variations.

17. The evidence of Mr Hall’s Annexure K indicates that the transfer of this cattle brand was duly accomplished.  Annexure K is headed Certificate of Registration Particulars of Stock Identification[7].  It certifies that as of 22 November 1999 (that is, some 12 months after the sale of Jeogla Station) Jeogla Pastoral Co (the Roche Group’s business name) stands as the name in which Armidale Rural Lands Protection District Board Identifier 3034369 (depicted as VIV) is registered. This clearly supplants an earlier certification, a copy of which is at Annexure 16 of the Wright declaration.  Mr Wright describes this annexure as registration of stock brand V1V in the name of B.A. & R.B. Wright [&] Partners, and so it is.  It is, however, dated 30 June 1991.  I can only conclude that, as per the terms of the September 1998 Contracts, the Stock

    
    

    Identification Cattle Brand “VIV” referred to in clause 43.1 of the Additional Provisions, was transferred to the purchaser - and is now held by the Roche Group through ownership of the business Jeogla Pastoral Co[8].

    [7] Rural lands Protection Act 1989 Sections 181, 182, 183, 190 - Regulations Clauses 110-129

    [8] Hall declaration, Annexure  B

18. The question for me to decide in terms of the section 58 ground is whether, at a date prior to the filing of Mr and Mrs Wright’s trade mark 795107 - 26 May 1999 - the Roche Group was entitled to claim ownership of the V1V mark.

19. It seems common ground that Mr and Mrs Wright, by virtue of their involvement with Jeogla and Bald Hills Stations, and the various Wright family businesses, have a long association with the V1V stock brand. Mr Wright vigorously asserts that to be so. He claims in his submissions at hearing that the V1V trade mark and V1V cattle brand are, and have always been, jointly owned by Richard B. Wright and Barbara Wright. He has, however, provided scant evidence and that evidence does not successfully support this claim. In sum, the Wright declaration fails to show that the cattle brand or the V1V mark was used as a trade mark. There is no material evidence of any sales and, perforce, no evidence of any sales associated with the V1V brand of the V1V mark. There is independent reference to the cattle brand in Annexure 12 to the Wright declaration. Mr Wright says this is from a publication entitled “Beef Australia” published in 1990.  The article is entitled Jeogla - A force for change, and deep within the article is reference to the famous V1V Jeogla and V2V Wallamumbi herds. The article itself bears no date; there is no indication of Beef Australia’s circulation; the authority of the author, Bruce Mills, is unstated; and 1990 is some time ago. All told, in terms of assessing the standing of the cattle brand, or the trade mark, prior to the sale of Jeogla Station, all this carries little weight.  I find the opponents’ evidence does not uphold the use alluded to by Mr Wright or his claim that the V1V cattle brand and the V1V trade mark have always been owned by Mr and Mrs Wright.

20. I do however, note the applicant’s evidence in answer and the exhibits to the Hall declaration which I will again come to below[9].   Briefly, exhibits G and H are sale advertisements.  They feature the V1V mark, they refer to cattle auctions, they date from 1985, and they are clearly offers for sale under a representation of the subject trade mark.  However, while B.A. & R.B.Wright & Partners are identified with some of these offers, no offer sits in the name of Mr or Mrs Wright.  Further, the evidence of the Hall declaration (Annexure P) is that B.A. & R.B.Wright & Partners ceased to operate on 22 March 1993 and the owners (Mr and Mrs Wright) thenceforth carried on business as Jeogla Pty Ltd.  Mr Kortian submits that any ownership vested in the partnership by way of this use of the V1V trade mark passed to Jeogla Pty Ltd and,  with the dispersal of the assets of that company, to the subsequent purchaser - Peakhurst Properties Pty Ltd.  I find no grounds in Mr and Mrs Wright’s evidence or submissions to hold otherwise.

    [9] I deal with this material in more detail under the section 60 ground

21. In the course of the hearing Mr Wright claimed that stock identification no 3034369 cattle brand “V1V” was not specifically nominated in the sale contract and was not sold. This claim has no support and the evidence is clearly against it. Transfer of the brand is included in the Additional Provisions of the Contract for Sale “Jeogla Station”[10] and the record shows that the terms of those provisions have now been executed.

    [10] Hall declaration Annexure  B, Additional Provisions 43.1(a)

22. What the facts do show then, is that before Mr and Mrs Wright applied to register V1V as a trade mark, Jeogla Pty Ltd was in receivership, its assets including the Jeogla Station were sold and, along with that sale, went the undertaking to transfer that cattle brand to the new owners of the Station.  Claims to the cattle brand were thus specifically relinquished by Jeogla Pty Ltd as of September 1998.

23. In terms of 795107, any legal rights accruing to Mr and Mrs Wright with the registration of that mark only come into force as of 26 May 1999 and some eight months after Jeogla Station was sold and the Roche Group (under its previous name Peakhurst Property Pty Ltd) acquired a right to the transfer of the Stock Identification Cattle Brand “VIV”... Identifier 3034369.  Rights attached to Mr and Mrs Wright’s trade mark registration cannot therefore interfere with the rights acquired by the Roche Group by the terms of the September 1998 Contracts.

24. Mr and Mrs Wright however, strenuously submit that the administrator acting to dispose of the assets of Jeogla Pty Ltd acted wrongfully. To support this argument, Mr Wright directed my attention to matters in the New South Wales Supreme Court, particularly Jeogla Pty Limited and others v Australia and New Zealand Banking Group Limited and anor, [1999] NSWSC 563 (11 June 1999).  Here Justice Einstein finds for the plaintiffs and the plaintiffs include Mr and Mrs Wright.  However, that finding concerns not the Roche Group, but the ANZ Bank, the administrator, and the failure to achieve a satisfactory price for particular assets.  It is a long judgment, but the nub is dealt with by his Honour in paragraphs 478 to 480.

    478    In the result, for the reasons set out above, the plaintiffs have succeeded in establishing that in exercising the subject power of sale in respect of the cattle running on Hernani and Jeogla, the receiver failed to take all reasonable care to sell the cattle for not less than its market value. Hence, a breach of section 420A(1)(a) has been established. The particular matters which evidence the receiver's failure to take reasonable care to sell the cattle for not less than its market value have earlier been set out. Without seeking to repeat all of those matters or to be exhaustive, of particular significance amongst those matters are the receiver's failures:

    (a) To take reasonable care to ensure that the property had been properly advertised, promoted or marketed in accordance with the advice which he had received.

    (b) To give sufficiently early notice of critical matters concerning the Jeogla auction as would attract to the auction prospective buyers whose presence is likely to have materially altered the course of events which took place at and immediately after the auction and as would have stimulated the necessary competition.

    (c) To address the correct market in seeking to identify and realise the market value of both the Hernani and Jeogla cattle.

    479    In further amplification of the matter referred to in (b), in my judgment, the receiver failed in the general promotion of the Jeogla property to cause to be sufficiently brought to the attention of those reading the promotional materials, either the fact that there was clearly to be an option to purchase the cattle at an agreed price or as to what that price was to be. Such communication to prospective purchasers of these matters as in due course did occur, took place too late to permit the market value of the cattle to be procured at an effective and properly promoted auction.

    480    The receiver's claim to have discharged his statutory duty by delegating the duty to the agents retained to advise in relation to and to act on the sale of the cattle is rejected. The obligation imposed by section 420A(1)(a) is one which, in the circumstances of this case, was not discharged by the receiver, who involved himself in analysing the advice which he received and who in important respects, failed to ensure that the advice was carried out.

1. The Court finds then that the sale of Jeogla cattle was not properly handled and, in relation to that sale, the administrator did not properly discharge his duties. The findings do not bring into question the Roche Group’s standing as purchaser of Jeogla Station or Bald Hills Station.  Nor, so far as I can see, does the judgment of Justice Einstein throw any doubt on the ability of the Roche Group to claim, by reason of the Additional Provisions to the 1998 Contract for Sale of Jeogla Station, entitlement to the transfer of Stock Identification Cattle Brand “VIV”- Armidale Rural Lands Protection District Board Identifier 3034369 and, as the new owner of the Jeogla properties, the right to apply for the registration of that brand as a trade mark.

2. By virtue of the terms of the September 1998 Contract for Sale of Jeogla Station, I find that prior to 26 May 1999 and Mr and Mrs Wright’s filing of application 795107, the Roche Group acquired Jeogla Station and right to the V1V cattle brand. I am not satisfied that Mr and Mrs Wright’s evidence upsets that standing or shows the Roche Group to be disentitled to ownership of the V1V mark, to its right to seek registration of the V1V mark or (as it happens) to its right to benefit from the provisions of paragraph 44(4) of the Act.

3. I therefore dismiss opposition to registration of 846659 so far as the section 58 ground of ownership is concerned.

   The Section 60 Ground of opposition - deception or confusion

4. To succeed under the provisions of the section 60 of the Act Mr and Mrs Wright need to show that as the result of a reputation in another trade mark, the use of 846659 would be likely to deceive or cause confusion.  The trade mark that they rely on for this purpose is their own registered trade mark, 795107.

5. The critical tests for this ground, and which I will next address, are:

   ·846659 must be either substantially identical with or deceptively similar to 795107

   ·evidence needs to show that 795107 acquired a reputation before 16 August 2000 (that is, the priority date of subject application, 846659);

   ·because of the reputation attached to 795107, use by the Roche Group of the trade mark 846659 in respect of live animals: cattle would be likely to lead to deception and confusion.

   Substantial Identity or deceptive similarity

6. The first criterion is met. The trade marks 795107 and 846659 are substantially identical. On a side by side comparison I find it difficult to see any difference at all.

   Reputation in the trade mark 795107

7. In respect of the second test, I first turn to the evidence of the Wright declaration. So far as probative evidence and relevant fact are concerned, I agree with Mr Kortian that Mr Wright’s declaration contains very little of either. It is in the main, simply assertion, opinion and unsupported allegation.  I do find evidence, per Annexure 5, that Mr and Mrs Wright and their family properties were involved in cattle breeding, and by dint of hard work and selective breeding, developed new and successful strains. I also note Annexure 6, a promotional brochure published apparently in 1996 or 1997.  It gives brief history of the Wright family’s experience in the New England district since the 1890s, the development of a beef breeding program, reference to and some technical detail of various family properties, particularly Jeogla Station, and some comment on future prospects. The V1V mark is featured prominently on the cover page, and is seen to be painted on the roof of one Jeogla Station building.  Mr Wright does not say whether this brochure is in the public domain or, if it is, how widely it is distributed. Further, standing alone, it is a matter of some conjecture whether, or how, this brochure would generate reputation in the 795107 trade mark. I noted Mr Wright’s Annexure 12 in respect of the section 58 ground, together with the following shortcomings. In this extract from Beef Australia (which I take to be a trade journal) the V1V mark is mentioned but once, and that in the body of the article. The issue is quite old ¾ 1990.  Mr Wright does not give any circulation figures (either for 1990 or later) nor does he given any account of the author’s standing or expertise.   Likewise, I note that the author[11] gives no explanation for using the term famous in respect of the V1V Jeogla herds.  As I found in respect of the section 58 ground, the evidence of Annexure 12 warrants little weight so far as reputation in the V1V trade mark is concerned. And the same must be said for Annexures 5 and 6.  

   [11] Mr Bruce Mills

8. In terms of public use, I do, however, have regard to evidence filed in answer to the opposition.  In particular, I note the Hall declaration at Annexures G, H, I and J.   These Mr Hall described, respectively, as:

   Gcopies of extracts from sale catalogues from 1985 and 1990 to 1998 being prior to the Jeogla Purchase, which ... prominently feature the Jeogla Trade mark;

   Hcopies of extracts of various sale advertisements for the period 1986 to 1997 being prior to the Jeogla Purchase, which ... prominently feature the Jeogla Trade Mark;

   Icopies of extracts from sale catalogues from 1999 to 2000 being after the date of the Jeogla Purchase which ... prominently feature the Jeogla Trade Mark;

   Jcopies of various sale advertisements from 1999 to 2000 being after the date of the Jeogla Purchases which ... prominently feature the Jeogla Trade Mark;

   Mr Hall uses the terms Jeogla Trade mark to refers to the V1V mark, and Jeogla Purchase  to refer to the September 1998 Contract for Sale of Jeogla Station.

9. Under Annexure G are 13 advertisements for the sale of cattle dating from 1990 through to 1998.  All feature the V1V mark and proclaim a history of breeding of 158 years or more. The V1V mark, in all but the earliest advertisement, is clearly associated with “JEOGLA”. This word is the most prominent feature of the advertisements.  There is minor but fairly regular reference to B.A. & R.B.Wright and Partners.  

10. Under Annexure H are another 11 advertisements dating from 1986 to 1997 - that is, before the 1998 Contract for the sale of Jeogla Station.  Again, each advertisement is for the sale of cattle, features the V1V mark, and (here) a reference to 159 or more years of cattle breeding.  Each advertisements refers to B.A. & R.B.Wright & Partners as well as to Jeogla or Jeogla Station.  Generally there is reference to the V1V Jeogla Annual Production Sale.  This points to a reputation developing in respect of B.A. & R.B.Wright & Partners. But generally Jeogla or Jeogla Station is given prominence.

11. The advertisements under Annexures I and J all post-date the September 1998 contract for Jeogla Station and, as may be expected, they make no reference to either Mr and Mrs Wright or the Wright partnership. They continue to feature the V1V mark and (here) to 172 [or more] years of hereford breeding experience. The word Jeogla is always either strongly present or dominant in these advertisements.

12. In common with the shortfalls in the Wright declaration, Mr Hall gives no indication of the volume or distribution of the catalogues and advertisements constituting the above mentioned annexures.  However, I acknowledged some history associated with the V1V mark as put in Mr Wright’s declaration and his Annexures 5 and 6 and I now give some weight to the evidence of pre-1998 trade under the trade mark V1V as it is disclosed in the Hall Annexures G and H.  This use points to a reputation in the V1V mark existing within the cattle industry, and to some reputation accruing to B.A. & R.B.Wright & Partners prior to the September 1998 Contract for Sale and before the Roche Group’s purchase of Jeogla Station and acquisition of the right to the transfer of the cattle brand. 

    Whether reputation in the V1V mark is likely to lead to deception or confusion

13. I am satisfied, thus far, that in respect of cattle, B.A. & R.B.Wright & Partners  developed some reputation which attached to the V1V mark and that reputation existed prior to the Roche Group’s purchase of Jeogla Station and its right to the transfer of the V1V cattle brand.  The final and critical question of the section 60 ground, however, is whether, in the face of that reputation, use of 846659, the V1V mark, by the Roche Group, is likely to give rise to either deception or confusion. 

14. I turn back to the Hall declaration, and its Annexures G and H. As noted above, these extracts from sale catalogues and sale advertisements all date from before the sale of Jeogla Station. They sometimes include a reference to B.A. & R.B.Wright & Partners.  They all, however, without fail, conspicuously refer to one or more of the following:

    “JEOGLA”
    The V1V Jeogla Reputation Steer Sale
    The V1V Jeogla Annual Production Sale
    The V1V Jeogla Annual Female Production Sale
    Jeogla Station
    Jeogla Station, Armidale 2350

15. In short, the consistent feature in the advertising carried out in respect of cattle sales from Jeogla Station, is the prominence of reference to Jeogla ¾ and invariably, hand in hand with that reference, and central to all advertisements, is a representation of the V1V mark.  In the advertisements in evidence it is very clear that, both before and after the sale of Jeogla Station to the Roche Group, use of the V1V mark was firmly tied to sales of cattle from Jeogla Station. 

16. In the Wright declaration, and in submissions made at the hearing, Mr Wright asserts his continued use of the V1V mark in respect of cattle on properties known as Hernani Station and Warrabah Station.  He says at page 5 of his declaration, that his business consisted of a network of properties (not just Jeogla station) operating under the one brand.  However these claims are not supported by any material evidence and accordingly I can give that alleged use no weight at all.  On the evidence before me I cannot find that either Mr and Mrs Wright, or any of the Wright family concerns, or the Roche Group, have (or has) used the trade mark for any purpose other than the sale of cattle from Jeogla Station. 

17. This leads me to the conclusion that the reputation residing in the trade mark V1V is closely tied to the entity known as Jeogla Station or “Jeogla”. 

18. Taking into account

    ·     the finding, on the evidence, that the reputation demonstrated in respect of the V1V mark connects with Jeogla Station

    ·     the evidence that the Roche Group now owns  Jeogla Station,  and

    ·     the evidence that the Certificate of Stock Identification 3034369, the stock brand V1V is now held in the name of  the Roche Group’s trade name, Jeogla Pastoral Co

    I do not find that use of the V1V trade mark by the Roche Group is likely to lead to deception or confusion.  

19. Accordingly, I find that the section 60 ground of opposition has failed.

    Section 62 ground of opposition - false material particulars

20. The notice of opposition states

    62        application etc defective etc

    Section 62 provides two separate grounds - the first, that the application, or a document filed in support of the application, was amended contrary to the Act; and the second, that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.  There are no allegations, in either the evidence or the submissions, that support the ground of wrongful amendment.  There are, however, a number of allegations in both the opponents’ evidence and submissions that bear on false representation.

21. These allegations centre on the disposal of the assets of the Jeogla Station and derive from Justice Einstein’s finding in Jeogla Pty Limited and others v Australia and New Zealand Banking Group Limited and anor  (see above, paragraph 24).  As I have mentioned, the Court there criticised the conduct of the administrator in arranging for the sale of cattle.  Mr Wright would wish me to deduce from this failing that behaviour on the part of various parties is blameworthy. In his own declaration, and further in the course of his submissions at hearing, he cites a range of alleged misdemeanours including the illegitimate use of trade mark number 795107, misappropriation of intellectual property, breach of Corporation Law, illegitimate appointment of a receiver, false declarations, collusions, and breaches of the Crimes Act.  I find none of these allegations are substantiated.  Further, in the event that there had been substance, most are matters beyond my competence. 

22. Mr Wright’s complaints were here very strongly directed to the evidence of the Skinner Declaration.  At the outset of the hearing he submitted that it should be struck from the record.   This I declined to do.  Mr Skinner states that unless indicated to the contrary, the contents of his declaration are based upon his knowledge and nothing that Mr Wright has put before me gives me reason to doubt the reliability of this material.  As it happens, I have come to my decision largely without the need to cite Mr Skinner’s declaration.  I put on record, however, that I regard Mr Skinner’s declaration as untarnished and would have treated his evidence accordingly if I had found need to refer to it more widely than in fact I have done.

23. I find the third ground of opposition - the claim that the application, in terms of section 62, is defective - unsubstantiated.  Accordingly this ground is dismissed.

    Decision

24. I have found that each of the three grounds supporting this opposition have failed.  The trade mark application therefore is in order and may proceed one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until that appeal has been decided or discontinued.

    Costs

25. In accordance with normal practice, the costs will follow the event.  Mr and Mrs Wright have argued their case and they have not succeeded.  The Roche Group however has successfully defended its right to seek registration of the V1V mark. It is entitled to costs and, by Mr Kortian’s submissions, it seeks an award. 

26. Under the authority of section 202 of the Trade Marks Act 1995, I therefore award costs against the opponents, Mr and Mrs Wright. The applicant, the Roche Group, will be entitled to claim in the amounts set down in Schedule 8 of the Trade Marks Regulations 1995.

    Helen R. Hardie

    Deputy Registrar

    Trade Marks Hearings

    11 April 2003