Robert Graeme Bradley v the Goodyear Tire & Rubber Company
[2010] ATMO 116
•26 November 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Robert Graeme Bradley to registration of trade mark application 1194002(12) - DIAMONDBACK (Word Mark) - filed in the name of The Goodyear Tire & Rubber Company.
Delegate: John Spence Representation: Opponent: Mr. Robert Graeme Bradley (self-represented)
Applicant: Ms. Felicity Marks of Counsel instructed by Mr. Liam Nankervis, Solicitor, of Blake Dawson, Lawyers (Melbourne office)Decision: 2010 ATMO 116
Section 52 opposition – grounds under Sections 43, 44, 58, 58A and 60 pressed – registration refused under Section 58 – the issue of ownership considered – costs awarded in favour of the Opponent.Background
On 20 August 2007 (“the priority date”) the U.S. company The Goodyear Tire & Rubber Company (“the Applicant”) of Akron, Ohio filed an application for registration of the trade mark “DIAMONDBACK” as a word mark in Class 12 of the International Classification of Goods and Services (Nice) and in respect of the goods “Tyres, excluding tyres for bicycles”. This application was accepted for possible registration and the advertisement of same appeared in the Official Journal of Trade Marks dated 10 January 2008.
The granting of registration in respect of the “DIAMONDBACK” application is opposed by Mr. Robert Graeme Bradley (“the Opponent”) who commenced these proceedings by means of a Notice of Opposition filed on 9 April 2008 pursuant to the provisions of section 52 of the Trade Marks Act 1995 (“the Act”).
In due course, the Opponent filed and served his evidence in support on 9 July 2008. In turn, the Applicant filed and served its evidence in answer on 15 April 2009. Evidence in reply was duly filed and served by the Opponent on 23 July 2009.
The matter came before me, as a delegate of the Registrar of Trade Marks, for a hearing in Canberra on 1 June 2010. On that occasion Mr. Bradley as the Opponent represented himself while the Applicant was represented by Ms. Felicity Marks of Counsel instructed by Mr. Liam Nankervis, Solicitor, of the Melbourne office of Blake Dawson, Lawyers. Shortly prior to the hearing, Ms. Marks forwarded by e-mail the detailed written submissions of the Applicant. For his part, the opponent did not provide written submissions, and he relied on those submissions which he put at the hearing.
Subsequent to the hearing, and in addition to the formal evidence and submissions, by covering e-mail dated 8 June 2010 Mr. Bradley forwarded a further written document which he expressed to be by way of the exercise of a “right of reply”. This material and the admissibility of same has been the subject of objection by the Applicant’s legal advisors and the acceptability of same has been disputed and challenged by them. While an unusual step, in the context of the hearing and in particular having regard to the manner in which the proceedings concluded (prematurely, as the Opponent would argue) there was some justification for the taking of this course on the part of the Opponent. However, in considering this issue, I have essentially disregarded the contents of that material for the purpose of making my decision and I have placed no evidentiary or probative weight or significance on it. Generally, I note that the contents of that document are in any event substantially repetitive of submissions which had earlier been made and that it is of little additional assistance to me.
Grounds of Opposition
In the Notice of Opposition, the Opponent has raised five grounds of opposition (pursuant to sections 43, 44, 58, 58A and 60 of the Act respectively) and each of those grounds was pressed at the hearing. However, on a preliminary basis, it is readily apparent that at least two of those grounds have no possible application or relevance to the present proceedings. Section 44 has as a threshold criterion the requirement that as at the priority date (that is, 20 August 2007 in this instance) the Opponent must be able to point to the existence of an earlier registration or application for registration in respect of a deceptively similar trade mark and in relation to corresponding goods. Simply put, the Opponent is unable to point to any such registration or application for registration. Similarly, the Section 58A ground can only be relied upon if the Applicant’s trade mark was accepted for registration on the basis of section 44(4) of the Act. Such is not the situation in relation to the present application.
Accordingly, in this instance sections 44 and 58A have no scope or effect. In this regard, I concur with the Applicant’s written submissions (at paragraphs 3 to 5 inclusive). I find that neither of those two grounds has been established and I now dismiss the opposition so far as they are concerned. The only issues which then remain for determination relate respectively to each of the three remaining sections of the Act (namely, Sections 43, 58 and 60) on which the Opponent relies.
The Evidence
The evidence in support comprises the Statutory Declaration of Robert Graeme Bradley (the Opponent) made on 8 July 2008 together with two exhibits comprising severally a compact disc and a section of rubber purporting to be taken from the shoulder or wall of a tyre. The exhibited compact disc contains a document in the nature of a statement of facts together with a copy of some fifty-four separate items of evidence.
The Applicant’s evidence in answer comprises the principal Statutory Declaration of Luigi Mandanici made on 6 March 2009 (together with the bundle of exhibits marked “LM’ comprising eleven exhibits which are expressed to be confidential in nature and six exhibits which are “open” and not so restricted) as well as the supporting Statutory Declarations of Scott Raymond Battin made on 5 March 2009, John Phillip Bowe made on 5 March 2009 and Damian Michael Trumino made on 13 March 2009.
The Opponent’s evidence in reply comprises a second Statutory Declaration of Robert Graeme Bradley made on 21 July 2009 together with the supporting Statutory Declarations of Bradley John McClure (made on 7 July 2009), Graham James Jackson (made on 7 July 2009) and Mark Jonathan Wilcox (made on 26 June 2009).
The Facts
By way of definition, the word “diamondback” has significance and an established dictionary meaning, namely “having diamond-shaped markings on the back: as, a diamondback rattlesnake” (Webster’s New World Dictionary). The expression “Diamond Back” as used in relation to the goods of the Opponent serves to indicate that particular two-ply radial cord steel belted tyre range (that is, radial tyres) produced by the Opponent as a retread on passenger radial tyres and as distributed and offered for sale by him (see the Statutory Declaration of Robert Graeme Bradley made on 21 July 2009, Part A paragraph 2.1 and the Statutory Declaration of Bradley John McClure made on 7 July 2009 at paragraph 4). The term “DIAMONDBACK” as used in relation to the goods of the Applicant indicates that particular range of radial tyres which is manufactured on behalf of the Applicant for the purpose of being distributed exclusively through the outlets of Kmart Tyre and Auto Service in Australia.
The Opponent has a long history of involvement in and association with motor sport and in particular in relation to speedway racing. Mr. Bradley’s evidence is that during 1993 he made business trips to the U.S.A. on three occasions. The purpose of those visits was to look for a suitable new business venture that was motor-racing related and in particular that involved speedway racing (evidence in support, document identified as “Goodyear Diamond Back trademark challenge With links.doc” and entitled “The Continued Use of Diamond Back Tyres as a Trade mark: 1994-2008” at page 15, point 2.1, first paragraph). In the course of those trips, Mr. Bradley visited speedway tracks in the U.S.A. and he saw at first hand various types of tyres under performance conditions. He identified the business of the company Tread Systems, Inc. of Anderson, South Carolina as being of potential interest and he held discussions with its Chief Executive Officer Mr. Bill Chapman. Tread Systems was involved in the production and marketing of a range of retreaded radial tyres which were distributed and sold in the U.S.A. under the trade mark “Diamond Back”. The Opponent’s intention was to import the U.S. “Diamond Back” tyres into Australia at a favourable price and to act as a supplier of those tyres to the speedway racing industry in this country. Mr. Bradley returned to the U.S.A. in 1994 and he purchased a container of “Diamond Back” tyres. That shipment arrived in Australia on 28 September 1994. Throughout the month of September 1994 Mr. Bradley conducted a statewide marketing exercise in Queensland. From October 1994 Mr. Bradley, trading as R.G. Bradley, sole trader, commenced distributing and offering for sale the imported tyres which were identified and described to members of the public as “Diamond Back” tyres. By correspondence dated 2 November 1994, Mr. Chapman of Tread Systems wrote to Mr. Bradley acknowledging his interest and enclosing information pertaining to the U.S. Department of Transport Standard 109 (for new tyres) and Standard 117 (for retreaded tyres) as well as test results from Standard Testing Laboratories.
Prior to the shipment of “Diamond Back” tyres to Australia, there arose a dispute with officialdom when on 23 September 1994 the Queensland Saloon Car Association Inc. (“QSCA”) issued a notice to club secretaries and scrutineers banning the “Diamond Back” tyres from use in street sedan and super street sedan speedway racing in Australia. Similar difficulties were encountered with the national body the Australian Saloon Car Federation Inc. (“the ASCF”). The bans arose from the perceived lack of compliance of the “Diamond Back “ tyres with the relevant Australian Standard AS 1973-1993 and the Australian Design Rule 23/00 (Passenger Car Tyres) and the need for retreaded tyres to bear appropriate markings. The absence of such markings resulted in the “Diamond Back” tyres failing to comply with the then-current specifications and requirements of the relevant motor racing bodies. Essentially, the objection was that the “Diamond Back” tyres were not street legal (that is, able to be used on ordinary passenger cars travelling on public roads).
Thereafter Mr. Bradley faced an ongoing battle with motor racing officials and the governing bodies of the sport of speedway racing, a dispute which took considerable time and effort on his part to overcome and which included the need for him to commence litigation against the QSCA. Eventually the dispute was resolved in Mr. Bradley’s favour. On 26 February 1996 the QSCA issued a notice to all drivers and scrutineers lifting the ban on the American “Diamond Back” tyres provided that such tyres were properly marked according to the requirements of the Queensland Department of Transport. Similarly, on 11 October 1996 the ASCF wrote to Mr. Bradley stating that members of the National Technical Committee had agreed that the “Diamond Back” tyres fitted the criteria of the Street Stock Specification Manual. During the two-year period from 1994 to 1996 there were imposed considerable constraints on the business of Mr. Bradley which nonetheless proceeded.
Notwithstanding the withdrawal of the official bans on the “Diamond Back” tyres, Mr. Bradley has continued to face serious opposition and there have been occasions where individual race stewards have not permitted those tyres to be used in competition events, with offending drivers facing the sanction of potential suspension. Indeed, in a letter dated 27 May 2005, Mr. Tim McAvaney wrote as General Manager of the National Association of Speedway Racing (NASR) stating that “Diamond Back” tyres are not approved for street use and therefore they would not be permitted in certain racing divisions. However, since 26 February 1996 no official bans have been placed on the “Diamond Back” tyres.
In the meantime, because of the bans imposed by the ASCF and the QSCA on the U.S.-made tyres, Mr. Bradley decided to make his own tyres in Australia using rubber imported from the U.S.A. . This task was accomplished by subcontracting the retreading operation to local plant operators and by using their existing moulds. The first commercial batch of Australian-made “Diamond Back” tyres was manufactured in June 1995 and they were ready for market shortly thereafter. While they were sold as “No-Name” tyres, these items became known and referred to as “the Australian Diamond Backs” and Mr. Bradley was able to build up a “small but flourishing business” based on the sales of same. Although these tyres gained popular support from competitors and persons involved in speedway racing, the extent of sales was restricted as the result of the bans which were then in place.
Since October 1995 when the ASCF ban was lifted, Mr. Bradley has continued to manufacture and sell his reconditioned radial tyres under the trade mark “Diamond Back”. As well he has proceeded to conduct research and development activities in developing what he terms his “New Life Tyre Technology”. In October 2004 and as part of that development programme he filed a provisional patent application relating to a tyre compound. On 21 February 2008 Mr. Bradley attended at the Brisbane Sub-Office of IP Australia for the purpose of filing applications for registration of the trade marks “Diamond Back” and “NOSMO KING” (No. 1225656). It was at that time, on conducting an availability search, that he first became aware of the interest of the Applicant in the “DIAMONDBACK” application No. 1194002. As the result of that prior conflicting entry, he made the decision not to proceed with the filing of an application in respect of his “Diamond Back” trade mark and to commence opposition proceedings in relation to the “DIAMONDBACK” mark of the Applicant. The Opponent claims to have had continuous and ongoing use of his “Diamond Back” trade mark in Australia since at least June 1995. That mark is presently unregistered.
On behalf of the Applicant, the evidence of Mr. Mandanici (who holds the position of Director of Sales with the company South Pacific Tyres) indicates that the planning of the introduction by his company (“SPT”) of the “DIAMONDBACK” range of tyres to the Australian market commenced in early to mid-2007. That planning followed preliminary business discussions with Kmart Australia Limited (“Kmart”) after that company had called for tenders for the supply of a new range of tyres to its Kmart Tyre and Auto Service (“KTAS”) business. As an initial step, SPT had to locate a suitable tyre manufacturer that could reliably supply inexpensive tyres and in sufficient volume to meet Kmart’s requirements. The Applicant’s Chinese sourcing group recommended the Triangle Tyre Co., Limited of Shanghai (“TTC”) as a manufacturer that produced an appropriate budget price range product. Mr. Mandanici contacted TTC in or about June 2007 and he was able to confirm their capacity to supply large volumes of tyres.
One of the tyre ranges made by TTC which appeared to meet Kmart’s requirements and the relevant Australian standards was named “DIAMONDBACK”. That expression was seen as an appealing choice of brand name for the proposed tyre range because it consists of natural English words and it appeared likely to be easy for Australian consumers to recall. Mr. Mandanici put the proposed “DIAMONDBACK” brand name to Kmart staff members none of whom indicated that he had ever heard of that brand being used in relation to tyres in Australia. Moreover TTC provided the assurance that it had not distributed or sold any “DIAMONDBACK” tyres in this country. The legal team of SPT then negotiated a commercial arrangement with TTC whereby it was agreed that TTC would supply “DIAMONDBACK” tyres in Australia exclusively through SPT and that the Applicant would hold that trade mark in its own name and would apply for that mark to be registered.
As a standard procedure, trade mark searches for the expression “DIAMONDBACK” were carried out in approximately mid-July 2007. Those searches did not reveal any adverse results. Subsequently the Applicant filed the present application No. 1194002 “DIAMONDBACK. Around the same time, Mr. Mandanici commissioned the design of a suitable logo or device mark a copy of which was forwarded to Kmart by e-mail dated 14 September 2007.
In January 2008 SPT received initial orders from individual Kmart stores confirming the quantities of “DIAMONDBACK” tyres which were required, and SPT first supplied “DIAMONDBACK” tyres to Kmart in January 2008. During the period from its first shipment from TTC in late 2007 to the end of January 2009, SPT claims to have imported and sold to Kmart a significant number of units (well in excess of 100,000) of “DIAMONDBACK” tyres in varying sizes. Use of the “DIAMONDBACK” trade mark has occurred in several different ways: verbally by sales staff, in documentation and correspondence between SPT and Kmart, in advertising and promotional materials (such as catalogues and newspapers) directed towards retail consumers, and online via the web site of Kmart.
The Opponent filed an application for registration of the “DIAMONDBACK” trade mark under No. 1234463 in Class 12. The said application has the priority date of 9 April 2008. Apart from the trade mark which is the subject of the present proceedings, the Applicant has filed a separate application for registration of the “DIAMONDBACK” trade mark in the form of a device mark or logo. That application, which is numbered 1268962 and which has the priority date of 24 October 2008, is also the subject of separate opposition proceedings commenced by the Opponent.
The Law
Of the three provisions of the Act which remain relevant, Section 43 provides as follows:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Section 58 states:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
Section 60 is worded as follows:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.
Note: For priority date see section 12.
Discussion
Preliminary Matters
There are several general issues of an underlying and fundamental nature which can be dealt with on a preliminary footing, namely:
(a) Onus
In Opposition proceedings, the onus is on an opponent to establish the grounds of opposition upon which reliance is placed (Section 55 of the Act; Medley Distilling Company v. Croakers Gully (Australia) Pty. Limited (2000) 53 IPR 430; Kowa Co Limited v. NV Organon (2005) 66 IPR 131 at paragraph 141; Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at paragraph 26). It is sufficient for only one ground to be made out in order for an opponent to succeed in Opposition proceedings (section 55 of the Act).
(b) Standard of Proof
In its submissions, the Applicant has raised the issue as to how the onus is to be judged. In this regard, the currently-prevailing view (as expressed by Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599) is that the ordinary test of the civil standard of proof (that is, on the balance of probabilities) should be applied. Submissions to that effect were accepted in the decision of Justice Jagot in Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 (but in the absence of argument to the contrary). More recently, the finding of Justice Gyles has been discussed with approval by Justice Sundberg in Chocolaterie Guylian NV v. Registrar of Trade Marks [2009] FCA 891. The practice of the Registrar is to follow the current approach which is taken by the Federal Court of Australia, namely that a ground of opposition is required to be established on the balance of probabilities, and I propose to adopt that approach.
(c) Relevant Time
In relation to the present matter, the time at which each of the grounds of opposition must be established is the date of filing of the application for registration, that date being the priority date of the said application (see Sections 12 and 72 of the Act and Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 595). In this instance, the relevant priority date (and the date at which each ground of opposition must be made out) is 20 August 2007 being the filing date of the “DIAMONDBACK” application No. 1194002.
By virtue of Section 55 of the Act, I am required to decide whether to refuse to register the “DIAMONDBACK” application or whether to register that mark having regard to the extent (if any) to which any ground of opposition has been established. In so doing, I propose to consider separately each of the three grounds of opposition which are maintained by the Opponent.
Section 43
This ground may be dealt with in simple terms. Section 43 requires that the Applicant’s trade mark “DIAMONDBACK” must be rejected if it contains “some connotation” as the result of which the use of same would be likely to deceive or cause confusion. The “connotation” must be in the mark itself and cannot be determined as the result of external considerations, such as reputation (see TGI Friday’s Australia Pty. Limited v. TGI Friday’s Inc. (2000) 48 IPR 513; Estate of Diana, Princess of Wales (Deceased) v. Masterson (2001) 52 IPR 264 at 271). As pointed out by Justice Spender (at first instance) in Winton Shire Council v. Lomas (2002) AIPC 91-794 at paragraph 19:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.”
Further, it is said that the expression “connotation” appearing in section 43 is equated with the existence of a secondary meaning or special significance. In the present instance, I consider that the word “DIAMONDBACK” does not necessarily connote an association or connection with the Opponent. If anything, such connotation as that expression might be said to possess presumably relates to a particular type of snake. In this regard, I concur with the submissions of the Applicant. In the present instance, there is no evidence before me which serves to establish the existence of a “connotation” in the requisite sense. Accordingly, I find that this ground is not made out.
Section 60
The elements of Section 60 which the Opponent needs to demonstrate are:
·there was another trade mark;
·which as at the priority date had acquired a reputation in Australia;
·amongst a significant section of the public;
and
·such that use of the opposed trade mark would be likely to cause instances of deception or confusion to occur amongst a significant section of the public
(see Shanahan, op. cit., at page 390). The requirement which formerly existed of establishing that the Applicant’s trade mark is substantially identical with or deceptively similar to the “Diamond Back” trade mark of the Opponent is no longer applicable since the adoption of the Trade MarksAmendment Act2006 which removed this element as from 23 October 2006.
34. In relation to the present instance, clearly there is another trade mark (namely, the Opponent’s unregistered “Diamond Back” mark) and arguably (although in dispute) that trade mark may be said to have acquired a reputation in Australia. However the extent of that reputation, at least as presently established by the Opponent, is not sufficient as to be likely to cause instances of deception or confusion to occur. In this regard, either intentionally or through inexperience, the Opponent at his choice and election has not led any evidence as to the existence of a reputation in respect of the “Diamond Back” trade mark. None of the evidence which has been put before me by the Opponent can be said to address this issue in any adequate manner. The existence of a reputation for the purposes of Section 60 cannot simply be inferred, and it has not been sufficiently made out in this instance. I would, however, stress that merely because there is no adequate evidence of reputation for present purposes does not mean that such evidence does not exist but rather reflects upon the inability of the Opponent (being self-represented) to appreciate the importance of such evidence or the appropriate manner in which such evidence should have been introduced.
In short, there is insufficient material presently before me on which I can gauge, assess or determine the extent of the Opponent’s reputation. The need to consider the likelihood that instances of deception or confusion might occur therefore does not arise. On the basis that the threshold requirement of reputation has not adequately been established, the Opponent fails under Section 60. I find that the ground of opposition pursuant to Section 60 has not been made out.
Section 58
The elements which need to be established in order to satisfy this ground are:
·that the respective trade marks of the applicant and the opponent must be either identical or substantially identical (see Carnival Cruise Lines Inc. v. Sitmar Cruises Limited (1994) 31 IPR 375;
·that the respective goods of both parties must be “the same kind of thing” (see Re Hicks’ Trade Mark (1897) 22 VLR 636;
and
·that the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the applicant (see Settef SpA v. Riv-Oland Marble Company (Vic.) Pty. Limited (1987) 10 IPR 402 at 413).
Substantially Identical
In relation to the first point, a comparison of the respective trade marks “DIAMONDBACK” and “Diamond Back” shows that those marks are substantially identical. In this regard, the relevant test which is generally accepted is as set out by Justice Windeyer in Shell Company of Australia Limited v. Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414-415, namely:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
While there are slight differences between the appearance of the respective marks (with the Opponent’s trade mark appearing predominantly in lower case and as two separate words), those differences are relatively insignificant. Both marks are pronounced identically, both marks impart the same essential appeal and significance to the beholder, and both marks are seen as conveying the same impression and meaning. I am in no doubt that the respective trade marks can properly be said to be substantially identical in this instance.
Similar Goods
With regard to the second point, I consider the respective goods (namely, tyres in each instance) to be “the same kind of thing” and goods of the same description for the purpose of satisfying the requirements of Section 58. However considerable argument has been put on behalf of the Applicant, both in evidence and in the course of submissions, that the respective parties are engaged in different segments of the market and that the goods which they manufacture, distribute and sell are essentially dissimilar in nature. In the words of Counsel for the Applicant:
Use in respect of speedway racing tyres and/or retread or recap tyres used exclusively in a limited class or division of speedway racing (in this case the Australian Saloon Car Street stock and production class) is not enough to disallow a registration in relation to non-racing passenger segment tyres and non-retread or recap tyres used in the consumer segment or passenger segment market” (see written Submissions, paragraph 24).
The argument which is put is that the Opponent’s goods are restricted to motor racing or speedway use whereas the Applicant (through the activities of Kmart) distributes and sells tyres under the “DIAMONDBACK” trade mark for use with passenger cars only, and it does not supply racing tyres. The respective market segments being entirely different, it is said that instances of deception or confusion will be unlikely to occur. In support of this view, the Applicant draws support from the evidence of John Bowe (a well-known racing driver and technical consultant to the automotive industry) as an expert witness.
I reject that argument. To my mind, the respective goods are of the same general description and nature. A racing tyre is still a tyre, and it would be generally perceived in that way. Because there may be said to be different segments of the market for tyres, and because the tyre industry may utilise different trade channels, it does not necessarily follow that the tyres for each segment are goods of a different nature. The respective goods each continues to bear the same general features and characteristics. By analogy, shoes and slippers are different but they are still items of footwear; mints and toffees while different are still confectionery. Moreover, for his part, the Opponent has argued that his “Diamond Back” tyres while used in budget motor racing are normal H or V rated segment radial tyres and that as such they could be used for “consumer” or passenger tyre purposes. The Opponent claims that his tyres are no different than road tyres and that they satisfy the requirements for road use. Both types of tyres are passenger radial tyres and both are capable of competing for a market share of the “passenger segment”. Both tyres can be said to fit the general description of “road tyres”. That being so, the Opponent’s tyres could also be said to compete with the “DIAMONDBACK” tyre range as sold by Kmart. Indeed it is the expressed intention and aim of the Opponent to expand his business to include the selling of tyres for passenger vehicles.
Further, it seems to me that there is at least one segment of the general public who would be likely to be directly affected, namely speedway drivers. When they are not participating in motor sports, those persons are ordinary motorists and drivers of ordinary motor vehicles and on ordinary roads. They are also consumers and purchasers of tyres. At the very least that group, upon encountering the “DIAMONDBACK” trade mark in use in relation to tyres being sold by Kmart, might well be likely to perceive the relevant goods to be of the same kind as the tyres of the Opponent and to assume a connection with the Opponent when no such connection exists.
In further support of the position which I take in finding the respective goods in this instance to be sufficiently similar for the purpose of Section 58, I refer to the decision of Justice Kenny (on appeal) in Colorado Group Limited v. Strandbags Group Pty. Limited (2008) AIPC 92-272 at paragraph 14 where she stated:
Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v. Napper (1886) 35 Ch D 162 where Sterling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v. Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
In my view, in this instance the respective goods are “the same kind of thing”.
Ownership
In order to satisfy the third requirement of Section 58, it is necessary for the Opponent to establish that the Applicant is not the owner of the “Diamond Back” trade mark. In relation to the issue of ownership, it is well-recognised that the basic legal principle in relation to trade marks is that the first person to adopt and use a trade mark of an appropriate type within a country becomes the owner of the mark there (see, for example, Justice McGarvie in Settef SpA v. Riv-Oland Marble Company (Victoria) Pty. Limited (1987) 10 IPR 402 at 413). A person who becomes the owner of a trade mark in this way is entitled at common law to restrain a person who later commences to use that trade mark. As Justice Dixon stated in Shell Company of Australia Limited v. Rohm and Haas Company (1949) 78 CLR 601 at 628:
A man cannot be said to have adopted a name if someone else has done so before him.
The corollary is that prior use by another party displaces the entitlement of an applicant to statutory proprietorship, so that the claim to ownership in respect of an application may be upset by another party if that opposing party succeeds in establishing that it has an earlier use of the relevant trade mark (see Hearing Officer Hardie in Durkan v. Twentieth Century Fox Film Corporation (2000) AIPC 91-567 at 37,476-7).
Under the Act, the notion of “ownership” (or “proprietorship” as it was referred to in the previous Trade Marks Act 1955) and the meaning of this concept is considered by Justice Dixon in Shell Company of Australia Limited v. Rohm and Haas Company, op. cit., at 625 et seq., by Justice Fullagar in Aston v. Harlee Manufacturing Company (1960) 103 CLR 391 at 398-399, by Justice Spender (at first instance) in Winton Shire Council v. Lomas (2002) 56 IPR 72 at pages 79-82 and by Justices Kenny and Allsop in Colorado Group Limited v. Strandbags Group Pty. Limited (2008) AIPC 92-272 at paragraphs 4-6 and 84-87 respectively. More recently, the notion of “ownership” has been considered by Justice Collier (at first instance) in Television Food Network, GP v. Food Channel Network Pty. Limited (No. 2) (2009) AIPC 92-339 where (at paragraph 39) her Honour succinctly stated as follows:
It is settled law in Australia that “ownership” of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user (Colorado Group Limited v. Strandbags Group Pty Ltd (2008) AIPC 92-272; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co. 2008) ).
In relation to use, it is well-established that the Courts are prepared to recognise and give effect to a broad interpretation of that range of prior transactions which can be described as providing evidence of “trade mark use” (see, for example, Blackadder v. Good Roads Machinery Company Inc. (1926) 38 CLR 332, Re Registered Trade Mark “Yanx”; ex parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199 and Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Limited (1974) 131 CLR 592 ). Moreover, as to the extent of use which is required before the priority date, it is clearly established that a very small amount of use will suffice (see the Thunderbird Products Corporation case, op. cit.). The nature of such use has subsequently received further consideration in Moorgate Tobacco Company Limited v. Philip Morris Limited (No. 2) where Justice Deane observed:
The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person. The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act [1995].
The concept of “use” generally was the subject of consideration in Lomas v. Winton Shire Council (2003) AIPC 91-839 at paragraph 39 where the Full Court (Justices Cooper, Kiefel and Emmett), on appeal from Justice Spender at first instance, observed:
The question of substance that is raised by the proceeding is what constitutes a use or user of a trade mark for the purposes of the statutory concept of ownership of the mark prior to registration. It is not necessary that there be an actual dealing in goods bearing a trade mark before there can be said to be use of that mark as a trade mark in Australia. For example, there may be use where goods intended to be imported into Australia have not actually reached Australia but have been offered for sale in Australia under the mark. It may even be possible to establish use where the mark has been used in an advertisement of goods in the course of trade in circumstances where there is an existing intention to offer or supply goods bearing the mark in trade or there is an actual trade or offer to trade in the goods bearing the mark – Moorgate Tobacco Co Limited v. Philip Morris Limited and Anor [No. 2] (1984) AIPC 90-141 at 38,996-38,997; 156 CLR 414 at 433-434. However, where there is no actual trade or offer to trade in goods bearing the relevant mark in Australia or any existing intention to offer or supply such goods in trade, but merely preliminary discussions and negotiations about whether the mark would be so used, there is no use so as to constitute ownership of the mark (see Moorgate Tobacco (No. 2) at 434). In reaching his conclusion, the primary judge clearly had regard to those principles.
The Moorgate Tobacco decision clearly envisages that either of an alternative will suffice: either actual trade; or preparatory steps coupled with an existing intention to offer or supply goods in trade. The latter requirement was accepted by Justice Gummow in Buying Systems (Australia) Pty. Limited v. Studio Srl (1995) 30 IPR 517 as constituting a prior use. In that case the opponent had taken preparatory steps towards launching a new magazine, including offering advertising space, but had made no sales or offers to sell magazines. His Honour said (at 520):
These steps amount to sufficient activity by the opponent to produce the result that the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade.
(See also the decision of Justice Spender in Winton Shire Council v. Lomas (2002) 56 IPR 72 at 81 paragraph 38.)
Where a trade mark is so far unused, the situation gives rise to somewhat different considerations and in that event the basis of a claim to ownership is said to be founded in the combined effect of authorship of the mark, the intention to use it upon or in connection with the relevant goods or services, and the applying for registration (per Justice Dixon in the Rohm and Haas case (op. cit. at 627). As distinct from ownership (which is established by use), “authorship” is said to involve “the origination or first adoption of the word or design as and for a trade mark” (per Justice Dixon in the Rohm and Haas case, op. cit., at 628). As explained by Justice Fullagar in Aston v. Harlee Manufacturing Company (op. cit., at 399), the authorship of a trade mark does not mean that the applicant must have been “the true and first inventor” or have “thought of it first”. An applicant may yet be the author of a trade mark even though he has deliberately copied or adopted a mark registered in a foreign country in respect of goods or services of the same description. For this purpose, “local authorship” will suffice. However the essential requirement to a valid claim to authorship of a trade mark in Australia is that no other party can be said to have acquired a prior right to use that mark in this country in respect of the goods or services in question.
Turning to the matter which is presently before me, I make the following determination of fact. The evidence of the Opponent is that he has adopted and used the expression “Diamond Back” as a trade mark since at least October 1996 (when the last of the official bans against him was lifted) and possibly as early as September 1994. The Opponent asserts that he has had continuous and ongoing use since that date. On the other hand, the Applicant’s evidence does not establish use of the “DIAMONDBACK” trade mark in Australia by SPT, Kmart or itself earlier than late January 2008. The priority date of the present application is 20 August 2007. Both of those dates are preceded by the Opponent’s claimed use. There is no way of ascertaining from the evidence or with any precision the nature of such use by the Opponent as may have occurred or the extent and volume of same, but equally there exists the strong likelihood that such use has indeed occurred. For the purposes of Section 58 (as distinct from the Section 60 ground of opposition) the precise manner and extent of such use does not need to be established, and a very small amount of use will suffice.
For its part, the Applicant has argued that there is no evidence of use by the Opponent and that “all the evidence of alleged prior use is irrelevant because none of it establishes relevant trade mark use by the opponent of the trade mark in respect of the relevant goods before 20 August 2007” (written Submissions at paragraph 21). I disagree with that contention. I am satisfied that use in the requisite sense as required for the purposes of Section 58 is indeed made out by the Opponent. In reaching that view, I am particularly mindful of the following salient indicia:
·The ongoing dispute with speedway officials in relation to the attempted use of the “Diamond Back” tyres by the Opponent is a significant factor. The fact that for an extensive period of time of more than two years the Opponent entered into and maintained that dispute with officials, even to the point of commencing litigation against them, does carry weight in indicating the intentions of the Opponent and the level of his commitment and involvement. Moreover that dispute and the documentation pertaining to it (which makes specific references to the “Diamond Back” trade mark) serves to establish that between 1994 and 1996 (and presumably thereafter) there existed a significant number of persons who were aware of the Opponent and his “Diamond Back” mark. I accept that the usual forms of use which are typically relied upon relate to evidence of sales figures, expenditure on promotion and advertising, and the like. However the categories of use are not closed or exhaustive This category of use, while an unconventional one and while certainly not conclusive in itself, is nonetheless valid and relevant in the context of Section 58 as lending support to the Opponent’s contention that use of his mark has occurred;
·The exhibit to the Statutory Declaration of Robert Graeme Bradley made on 8 July 2008, being a piece of rubber taken from the shoulder or side wall of a tyre and showing the words “DIAMOND BACK” in raised or moulded form, provides a tangible example of the Opponent’s trade mark in actual use. Obviously, a tyre must have existed for this sample to have been provided and a mould must have been created for that tyre to have been made. It is improbable that the Opponent would have gone to the elaborate length of preparing a sample purely for the purpose of the hearing. Likewise, it would be reasonable to assume that more than one tyre would have been manufactured and that those tyres which have been produced have also been made available in the market-place by the Opponent. At the same time, this exhibit is limited and inconclusive in itself since no evidence is provided as to the date when that tyre was brought into existence;
·The letter dated 9 December 2002 from Mr. Greg Wraight (on EPM letterhead) to the State Technical Officer of the ASCF (evidence in support, Exhibit 27, Reference 39) is forwarded by the author “as a driver of one of the largest divisions in Australia” and it includes the statement “I as many other drivers use the Diamond Back tyres as they are a good tyre for the cost.” That document, written at a time prior to the present trade mark issue having arisen, is evidence that well before the priority date the “Diamond Back” trade mark was in use and that there existed a number of drivers who were aware of and familiar with that use;
·The inclusion in the Opponent’s evidence of advertisements which have appeared in the Sunday Times (W.A.) newspaper and in the Mothar Mountain speedway programme (evidence in support, Exhibit 22, Reference 33), while undated and unverified and therefore of limited weight, when taken in conjunction with other indicia corroborate the likelihood that use of the “Diamond Back” trade mark by the Opponent has occurred and that actual sales have taken place;
·The letter dated 2 November 1994 from Mr. Bill Chapman of Tread Systems, Inc. (evidence in support, Exhibit 3 Reference 3), while arguably in the nature of preliminary discussion and negotiation and therefore of limited weight, confirms that the Opponent conducted business pertaining to the “Diamond Back” tyres with that company and earlier than the priority date of the Applicant’s mark;
·The supporting Statutory Declarations of Bradley McClure, Graham Jackson and Mark Wilcox, while challenged by Counsel for the Applicant both on the basis that they attempt to introduce fresh evidentiary material rather than responding to the evidence in answer and also as to the extent to which those declarants may be said to have been influenced by the Opponent, serve to indicate the existence of third parties who are involved in the sport of speedway racing either as drivers or as stockists and who state their familiarity since 1995 both with the tyre range of the Opponent and with his “Diamond Back” trade mark;
and
·The evidence makes clear the stated intention of the Opponent to continue marketing the “Diamond Back” tyre range in Australia and to extend that range. That intention is, at least in part, borne out by the Opponent’s conduct in seeking patent protection and in engaging the services of Gilmore Engineers.
Collectively the evidence indicates, at the very least, the existence before the priority date of an intention to use on the part of the Opponent combined with the conduct of business activities and preparations in relation to the “Diamond Back” trade mark at a level of involvement which is sufficient in my view to satisfy the threshold requirements of Section 58. I am satisfied that the requirements necessary in order to make out the ground of opposition pursuant to section 58 have been met by the opponent in this instance.
Decision
Section 55 of the Act provides:
55 Decision
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
I find that the Opponent has established a ground of opposition in terms of Section 58 of the Act and that therefore he is successful in these proceedings. Accordingly, I refuse registration of the “DIAMONDBACK” application No. 1194002 in the name of the Applicant.
Costs
At the hearing, both parties sought costs. In this instance, I see no reason to depart from the usual practice that the costs go with the cause. The Opponent, having been successful, is entitled to his costs (calculated according to the official scale as provided in Schedule 8 of the Regulations) which I award against the Applicant.
John Spence
Hearing Officer
Trade Marks Hearings
26 November 2010
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Commercial Law
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Intellectual Property
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