Roman Kovac T/a Church of London Handbags and Outback Leather v Oroton Pty Limited

[1994] ATMO 78

TRADE MARKS ACT 1955

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

Re:Opposition by OROTON PTY LIMITED to registration of trade mark application number B544714 in the name of ROMAN KOVAC t/a CHURCH OF LONDON HANDBAGS and OUTBACK LEATHER

Background
Application number 544714 was lodged, on 26 October 1990, in the name of ROMAN KOVAC t/a CHURCH OF LONDON HANDBAGS and OUTBACK LEATHER (the applicant).  The application was for registration of the mark as depicted below, and was advertised as accepted in the Official Journal of 24 September 1992 for a statement of goods subsequently amended to read, " Leathergoods in this class being handbags, travelbags, wallets, keyholders, purses, golf accessories" in Class 18.

Notice of opposition to the mark's registration was lodged on 23 December 1992 by OROTON PTY LIMITED (the opponent).  There were various grounds stated in the notice but those which the supporting evidence went towards, and which were later pursued in depth at the hearing, can be summarised as relating to: s.40 of the Act, that the applicant was not the proprietor of the trade mark; s.28, that the mark's use by the applicant would be likely to deceive or cause confusion, and that its use would be contrary to law and not be entitled to protection in a court of justice; and under ss.24 and 25, that the application was not distinctive, nor capable of becoming distinctive, of the applicant's goods.

The evidence
The service and lodgment of the opponent's and applicant's respective evidence in support, answer and reply in the matter was completed by 21 February 1994.  This evidence comprised:

Evidence in support

Statutory declaration by Ian Murdoch Browne dated 22 March 1993 and Exhibits 1 to 21 (first Browne declaration).

Statutory declaration by Ian Murdoch Browne dated 20 April 1993 and Exhibits A to G (second Browne declaration).

Evidence in answer

Statutory declaration by Roman Kovac dated 19 October 1993 and Exhibits RK1 to 23

Evidence in reply

Statutory declaration by Ian Murdoch Browne dated 18 February 1994 and Exhibit 22 to 31 (third Browne declaration)

In its evidence in support, the opponent company, through the first Browne declaration, states that, since early 1984, it had used the words AUSTRALIAN COLLECTION on leathergoods in Australia, using these in conjunction with the OROTON "railway" logo, which is shown below, since 1988.

The opponent claims to have used that mark on handbags since February 1990.  These goods are sold in duty-free stores, major department stores and smaller speciality shops.  The exhibits attached to the declaration include catalogues and price lists showing use of the opponent's mark, and samples of packaging and swing cards.  The evidence is completed by the second Browne declaration, which gives more information as to the mode of use, marketing and advertising of the opponent's mark, and comments on the applicant's evidence, together with comments regarding the marketing practices of the applicant.  Attached to the declaration are a sample of a leather patch bearing the opponent's mark, a company profile of the opponent, examples of the opponent's advertising in magazines and at the point of sale, and copies of letters which passed between the parties.

In his evidence in answer, the applicant, Roman Kovac, declares that he has used the mark THE AUSTRALIAN BUSH COLLECTION since April 1990 on leather goods, with some changes in the range of goods sold since that time.  He says that the goods bearing the mark are sold through approximately 80 retailers in Australia; he also supplied sales and advertising details.  Included as exhibits to the declaration are invoices, catalogues, samples of goods bearing the subject mark, advertisements and copies of questionnaires completed by retailers relating to their knowledge of the use of the mark.

The opponent's evidence in reply comprises the third Browne declaration.  Mr Browne comments on specific paragraphs of the Kovac declaration, including the alleged similarity in style of the applicant's goods to the opponent's own goods and comments on the respective marketing strategies.  Exhibits to the declaration include price and style lists, and photographs of the opponent's products at the point of sale and at trade displays.

On 11 April 1994, the applicant sought a hearing and the matter was set down before me, as the Registrar's delegate, in Sydney on 7 July 1994.  Appearing on behalf of the opponent was Mr A. Chrysiliou of Chrysiliou Moore Chrysiliou, Trade Mark Attorneys.  The applicant was represented at the hearing by Mr G.M. Gregg of Counsel, instructed by Tzovaras & Company, Solicitors.  Prior to the hearing, Tzovaras & Company requested that the Registrar require Mr Ian Browne to attend the hearing so that he could be cross-examined on his declarations.  Comment was sought on the matter from the opponent's attorney, Chrysiliou Moore Chrysiliou, and the matter was then considered by the Registrar's delegate.  She advised that such a course was not considered necessary, given the circumstances, as any disputed questions of fact contained in the Statutory Declaration by Mr Browne lodged as evidence in support of the opposition had not been identified and, if they existed, they could have quite properly been addressed in the applicant's evidence in answer.  There was no evidence to doubt the veracity of any statements of fact made by Mr Browne in his declaration.  She said that the applicant's Counsel would be given ample opportunity at the hearing to comment on the opponent's assertions contained in the evidence and the Hearing Officer would consider the evidence on both sides in the light of the respective submissions.

The hearing went ahead on the day and date appointed and, before discussing the matter and giving my final decision, I will attempt to summarise the main points made in the quite extensive submissions by both parties .

Submissions

Mr Chrysiliou, representing the opponent, submitted that the applicant was not the proprietor of the mark at issue.  In support, he cited the decision of the High Court in Seven Up Co v O.T. Ltd (1947) 75 CLR 203. He said that the significant point there was that the marks owned by the respective parties were not identical. Further, in the Seven Up case, supra, Williams J said that the Court seizes upon a small amount of use to establish proprietorship of a mark and, in the present case, such use had taken place by the opponent when it had used the Oroton "railway" logo - a device very similar to that in the device forming part of the mark being opposed - in conjunction with the words THE AUSTRALIAN COLLECTION which functioned as a trade mark in its own right.  Mr Chrysiliou then cited a number of cases including Seven Up, the Thunderbird Trade Mark 131 CLR 592, Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300, Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 and Sundream Pty Ltd v Hartland Investments Pty Ltd (1988) 13 IPR 302 in support of his contention that the question of proprietorship was not limited to identical marks but could concern variations of them. This, he said, was the case in the present instance and he maintained that the opponent's rights would be interfered with if the present mark was registered. He said that the applicant had threatened the opponent with Court proceedings and pointed to a letter to this effect exhibited to the second Browne declaration. Mr Chrysiliou made several comments regarding the validity of certain exhibits purporting to show when the applicant's mark was first used and disputed whether any weight should be given to such claims. He said that, conversely, any criticism of the opponent's evidence showing when use of its own combination of marks commenced was unfounded. He maintained that the examples given were merely quoted to support his contention of use by the opponent of its marks prior to the applicant's use of the subject mark. He said that sales of the opponent's goods under its marks were significant, notwithstanding whether wholesale or retail figures were considered. He queried whether the reference to "development and sampling work" in 1989 in the Kovac declaration equated to use of the mark in question by the applicant, and whether the invoice alleged to be for the artwork included in the mark showed that its use of the mark commenced in April or May 1990. He said that the first Browne declaration stated that, in early 1984, the opponent had manufactured a collection of goods from kangaroo hide and marketed them under the Oroton "railway" logo in conjunction with the words THE AUSTRALIAN COLLECTION. This use was therefore prior to the applicant's use of its mark. He said that the question of proprietorship should be considered on the joint grounds of the opponent's undoubted first use of those words with the Oroton "railway" logo. Any claims that there were differences between the respective logos should be given little weight. He said that the two marks owned by the opponent were used together, if not on the goods, certainly on the packaging, in advertising at point of sale and in magazines. Thus it was the opponent's marks together versus the applicant's mark which should be considered when assessing the matter of proprietorship.

With respect to the opposition as it was based on s.28, that registration of the mark would lead to deception and confusion, Mr Chrysiliou said that, per Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, the onus was on the applicant to show that there was no reasonable possibility of deception and confusion if the mark was registered, that it not necessary to prove that there was an actual probability of such deception leading to passing off, and that all the surrounding circumstances should be taken into consideration in determining the matter. Although the applicant had said that there was no evidence of confusion, this was essentially a matter for the Registrar to decide, given all the surrounding circumstances. This was reflected in leading case law and many of the Registrar's own decisions. Pointing to some of the questionnaires lodged as part of the evidence in answer, he said that the applicant's own evidence had established a case of the probability of deception and confusion, . A significant number of respondents had said that, when the goods of both parties were available side by side, purchasers were confused, "sometimes but not often" as to the ownership of the mark . In the letter threatening legal action against the opponent, the applicant itself had admitted that its goods and the opponent's were "similar in design and quality" and this went towards showing the possibility of deception and confusion. He said that having regard to the public awareness of an opponent's mark, which was similar to a mark for which registration had been sought, the applicant bore a greater onus to show that confusion would not occur. He said that here, given the similarity of the applicant's and opponent's marks where the words THE AUSTRALIAN COLLECTION were common, and also the "bush" flavour and character both were trying to convey, the doctrine of "imperfect recollection" was an important consideration - see Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65. He said it was significant that the word BUSH forming part of the applicant's mark was disclaimed, as it was considered by the Registrar not to be an essential particular. This had been recognised during examination when several marks containing that word for the same goods had not been cited as a bar to registration.

Mr Chrysiliou said that, given the above, the mark should be refused under ss.28(a).  However, he recognised that the Office currently followed the practice of requiring that blameworthy conduct should also be shown to establish a case under s.28.  He said that, in the present case, such conduct was evident in the applicant's adoption of its mark and in its manner of application of that mark to its goods.  These were extremely similar to the opponent's mark and manner of use.  He said that the applicant knew of the opponent's mark, which enjoyed a wide reputation, and there was more than just an element of copying by the applicant of that mark and of the general "Australian" atmosphere generated by the opponent's sales promotion.  He said the situation here was similar to that in the case of Kremenz & Co v La Francaise D'Horlogerie 25 IPR 663 where the Hearing Officer had decided that the establishment of a case under s.33 in an opposition was sufficient to qualify as blameworthy conduct by an opponent, consequently satisfying the provisions of ss.28(d). Mr Chrysiliou also said that a further reason that the applicant did not have clean hands in the present matter was that it had used the symbol â in its advertising to indicate that the mark had been registered. This was a misrepresentation which constituted an offence under the provisions of s146. He claimed that the Office had turned a blind eye in such cases where the applicant was an American company, where use of that symbol was common, but the applicant here was Australian. In the present case, where the public had been deceived, the Office would be assisting the applicant to complete its fraud by registering the mark. In a further attempt to show blameworthy conduct by the applicant, Mr Chrysiliou said that Mr Browne, in his second declaration, had claimed that representatives of the applicant had approached several of the opponent's customers requesting the opponent's price lists and offering to undercut the prices of similar goods for sale by the opponent. The applicant's goods, which were then offered in its collection, were almost identical to those of the opponent. This, he said, indicated an element of imitation. He alleged that these actions went towards showing blameworthy conduct as countenanced by ss.28(d) of the Act.

In relation to the opposition as it is based on ss.24 and 25, Mr Chrysiliou said that the present mark was incapable of being distinctive or of becoming distinctive of the applicant.  He referred for support here to Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511 (the Michigan case) where the question was discussed as to the inherent fitness of a mark to distinguish an applicant's goods from those of others.  He said that the present mark was incapable of doing so and the applicant should not be allowed to register material which others might wish to use.  As the opponent wished to continue using its own mark, and the words THE AUSTRALIAN COLLECTION, registration in the present instance should be denied.  He concluded his submissions by seeking costs in favour of the opponent.

Mr Gregg, in reply, submitted that the opponent had failed to establish a case on all of the grounds relied upon in the opposition.  He said that the Kovac declaration showed that the applicant had marketed an extensive range of the relevant goods in a variety of colours since April or May 1990.  In comparison, he said that the first Browne declaration only shows sales by the opponent of accessories restricted to purses, wallets and key cases from August 1989 and January 1990. He said that the respective marks were differently applied to the goods.  The applicant's AUSTRALIAN BUSH COLLECTION mark was embossed into the goods and swing tags, whilst the applicant's OROTON "railway" logo was separate and "proud" of the goods.  He said that the latter mark featured the word OROTON which was central to the mark and it was much larger than the other words present.  The "railway" device of that mark was different to anything in the applicant's mark and, in any case, the words BUSH and OROTON, which were the centrepieces of the respective marks, were very different and were easily distinguished.  He said that the evidence showed that the applicant's market share under its own mark exceeded that of the goods sold under the combined marks of the opponent.  The promotion of the opponent's goods was predominantly under the OROTON "railway" mark with the impact being mainly of that word.  The words THE AUSTRALIAN COLLECTION were incidental and not easy to find in much of the advertising.  Mr Gregg discussed the questionnaire type evidence exhibited to the Kovac declaration saying that, despite the opponent's speculative claims to the contrary, these showed that there was no reasonable prospect of deception and confusion in the market place.

Mr Gregg said that the word OROTON was unquestionably distinctive and, because of this, it would be difficult to confuse that mark with the applicant's mark.  The company profile and brand portfolio lodged as evidence by the opponent showed that the primary promotion of its goods revolved around that word.  In these publications there was little or no mention made of the words THE AUSTRALIAN COLLECTION.  Those words' main use was on packaging, some physical distance from the word OROTON.  In the samples of packaging exhibited to the first Browne declaration, the marks only appeared together on the front of the box, with the "railway" logo separately displayed on each side.  He said that, because of this, the two elements appeared to be separate and distinct marks.  The term THE AUSTRALIAN COLLECTION was, on its own, not distinctive.  Despite this, the opponent was trying to combine it with its house mark and claim that there was some ownership in the whole. He disputed some of the claims made in the opponent's evidence with regard to when certain goods were included in its range and when use commenced of the opponent's alleged "combined" mark.  He said that this contrasted with the applicant's adoption and use of its undisputed combination mark THE AUSTRALIAN BUSH COLLECTION on a wide range of goods.

Mr Gregg said that the opponent, in such instances, bears an evidentiary onus to show that the applicant is responsible for deception and confusion - Arthur Fairest Ltd's App'n (1951) 68 RPC 197. However, the opponent had not produced any direct evidence to back up its claims that anyone had been misled, save hearsay, double hearsay and statements of principle which did not substitute for convincing evidence. This was despite the fact that some retailers sold both sets of goods. He said that there was also no evidence that the words THE AUSTRALIAN COLLECTION were used in the marketing of the opponent's goods. Various claims had been made regarding the use of those words in conjunction with the OROTON mark, but the evidence was far from convincing on that point and seemed to indicate that the latter word was the dominant market image. He said that much of the opponent's evidence was mere assertion and contained attempts to besmirch the reputation of the applicant. He went through the declarations comprising the opponent's evidence, disputing various claims made in them, including any allegations that the applicant's and opponent's marks were essentially the same. He said that, to the contrary, they were separate marks which were each distinctive. The opponent's claims of possible cases of "imperfect recollection" were also not supported by any evidence, especially in relation to allegations of similarity between the respective swing tags. He said that all leather manufacturers used identical tags which contained similar claims about the merits and information on their respective goods.

Mr Gregg disputed the opponent's claims that the applicant's mark was disentitled to protection in a court of law.  He said that there was simply no evidence to support this.  The opponent had also claimed that the applicant had offended the provisions of s.146 of the Act by falsely claiming that its mark was registered.  However, the applicant had complied with a request by the Registrar to remove material from the mark which might have implied this.  Nevertheless, this did not impact upon the merits of the present application for registration. With respect to the letter from the applicant to the opponent on the 24 April 1991 alleging "passing off" by that party, he said that this was merely puffery and did not extend beyond that letter and the opponent's response.

Comment on the hearing

After the conclusion of the hearing, Mr Chrysiliou made some complaints to me regarding what he said was a lack of opportunity to fully present his case.  He said that he had wanted to go further through the evidence of both sides to pick up inconsistencies in the applicant's evidence and highlight some of the opponent's points.  Immediately after the hearing, he followed up his verbal complaint with a letter to me where he made an allegation that he was denied the opportunity of making observations on the evidence in his reply to the applicant's submissions.  I have replayed the transcript of the proceedings and, while I can confirm that he did say that it would be more convenient to go through some of the evidence in his submissions in reply, he later said that he would confine himself to some essential points when replying to Mr Gregg.  The tape further shows that I asked both sides at the conclusion of the proceedings if they were "all done".  Both parties agreed that they had and I closed the hearing at 3.35pm.  I consider that Mr Chrysiliou was given adequate opportunity to present his case in a hearing which lasted for almost five hours.  I am most concerned if he feels that I, as the Registrar's delegate, cut him short in any way and am confident that the tape of the proceedings shows that I did not.  I have given what I consider to be due weight to the submissions and evidence on both sides in deciding the matter.  What I have tried to do in listing the submissions in the previous pages is to summarise the major points made by both parties.  These submissions were, I believe, sufficient for me to make an informed decision in the matter.

Discussion

Section 28 - Deception and confusion

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

A mark -

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

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

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross, supra, where it was said:

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

That risk must extend to a substantial number of people: Kendall Co v Muslyn Paint, supra.

Following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 (the Moo/Moove case) the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is, that all paras of s.28 should be read together. This means that, should I find that the marks are likely to deceive or cause confusion, then it will also be necessary to find that the mark would not be entitled to protection in a court of justice.

In assessing the reputation of the applicant and the opponent in relation to the mark in Australia, the relevant date is the date of lodgment of the opposed application, 26 October 1990 - Southern Cross, supra.  I accept from the applicant's evidence that, at the relevant date, it had an established reputation in its particular market place, albeit of relatively short duration, for its mark.  For its part, the opponent has produced very convincing evidence to show that it had a wide public reputation itself in Australia for the OROTON "railway" mark as at the relevant date.  I am of the opinion that the questions for my consideration here are whether the opponent had established, as at 26 October 1990, a reputation for the words THE AUSTRALIAN COLLECTION and, if it had, whether the combination of that phrase with its house mark, the OROTON "railway" logo, created a situation where the purchasers of the both sets of goods could be deceived or confused as to their respective sources.

There is no question as to whether both sets of goods are of the same description.  Although argument was put to me regarding whether or not certain sizes of bags and accessories were offered for sale by the respective parties as at the date of the present mark's lodgment date, I think that the fact that both sets of goods are leather, are used for carrying things, are promoted as being "naturally" Australian in colour and origin, and are specifically aimed at the visitor from overseas, means that any alleged differences or misinformation about ranges and availability are minimal.  I do not think that there is anything sinister or unusual in both parties promoting the "Australian" character of their goods and the "outback" colour of the goods.  The majority of both sets of goods would be bought by tourists as gifts or as souvenirs of a visit to this country because the goods reminded them of Australia.  Both the applicant and the opponent had similar goods bearing their respective marks for sale as at the date of application.  Both parties concentrated on duty-free outlets and it is obvious that the intended customers were the same.

Section 28(a) is essentially concerned with the public interest and precludes registration where the opponent's mark is so well known in the market place that use of the applicant's mark is likely to deceive or cause confusion.  Thus that provision is concerned not so much with the prior use of the mark as a trade mark but with its market reputation.  Mr Chrysiliou and Mr Gregg disagreed about the significance of the questionnaires annexed to the Kovac declaration.  However, I am of the opinion that the small percentage of customers who were alleged to be "sometimes but not often" confused between the marks is not significant.  I think that such confusion could be easily wrongly inferred by shopkeepers.  Shoppers may initially appear confused when selecting expensive items but that is soon dispelled when matters of guarantees and warranties are considered.  I consider that the words, THE AUSTRALIAN COLLECTION, are totally devoid of any inherent adaptability to distinguish and are, solus, unregistrable.  Even if one comes to the conclusion that the opponent used those words so often with its house mark in relation to its goods so that they formed a whole in the mind of purchasers, I think that the former words would not be seen as trade mark material, the retained factor being the word OROTON.  I consider that the two sets of marks are so distinct that only the foolish, or someone in a desperate haste, could confuse the two.  I would suggest that, in general, purchasers of the respective sets of goods are neither, and they would make a careful and unhurried selection of what are quite expensive goods.  The applicant's mark is firstly the word BUSH, which is the primary and most memorable feature, with the surrounding words, THE AUSTRALIAN COLLECTION.  Those words are contained in an oval shape with stud-like devices at either end which is, to stretch a point, the same general shape as the OROTON "railway" logo.  However, during examination, the latter words were obviously considered so totally and inherently non-distinctive that a disclaimer was not required.  On the other hand, the opponent's mark is one which I would contend is so well known that it makes the likelihood of deception and confusion with the present mark unlikely.  The primary feature of the opponent's mark is the word OROTON, inside what looks like a nameplate with a screw at either end and the words ORIGINAL HANDCRAFTED AUSTRALIAN LEATHER.  I agree that the words AUSTRALIAN COLLECTION - sometimes, but not often, preceded by the definite article - occasionally appears on some of the packaging and advertising material.  Mr Chrysiliou asked me to find that use of these words in conjunction with the OROTON house mark creates some sort of trade mark "aggregate" in which the opponent has rights.  However, I am of the opinion that, in the context of their use, those words would be seen as a descriptor denoting a range, eg OUTBACK WEAR, or SWIMWEAR SELECTION, and not as part of the trade mark "whole".  I must agree here with Mr Gregg that the opponent has not shown that it has established a reputation for the words THE AUSTRALIAN COLLECTION either separately, or combined with, the OROTON mark in this country.

For the foregoing reasons, I find that use of the applicant's mark will not lead to deception or confusion.  I am therefore satisfied that the requirements of paragraph 28(a) have not been made out.

Given the above, I need not proceed further in relation to the s.28 objection.  However, for the record, I note that there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant nor any other circumstance which would disentitle the mark to protection in a court of justice.  Mr Chrysiliou claimed that such conduct occurred because the applicant allegedly copied the applicant's mark and the "getup" of its goods.  However, I feel that such an observation is a subjective one and no evidence to this effect has been put before me.  As I have already said, I think that any alleged similarity of the marks is tenuous and I consider it likely that most rational observers would not regard the subject mark as being copied from the opponent's mark .  With respect to the promotion of the goods, I cannot agree that this is so unique as to be deliberately imitated.  I think that, given the intended market for such goods, it would be a foolish trader indeed who did not try to appeal to the overseas visitor, keen to purchase an Australian gift, by highlighting the rugged outback character of its leatherware.  I also do not think that the applicant has engaged in blameworthy conduct in using the â symbol in its advertising.  It may have done this unwittingly in the first instance and, when asked to remove this symbol from its mark during examination, the applicant did so without demur.  I have no evidence before me at this time to show that the applicant has continued to claim that its mark is registered and that it is now engaging in blameworthy conduct of this nature.  Mr Chrysiliou also claimed that the applicant had engaged in such conduct by having its agents approach retailers seeking to undercut the opponent's prices.  With respect, although this is merely hearsay and unsupported by evidence, I would have thought that this sort of thing was a usual business tactic - perhaps "sharp" but nevertheless the normal course of events in the trade.  I must therefore find that the requirements of paragraph 28(d) have also not been made out.  The opponent's case in terms of s.28 must accordingly be dismissed.

Section 40 - Proprietorship

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

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

On that subject, McGarvie J said in Settef, supra, at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
            ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", per Holroyd J in Re Hick's trade mark (1897) 22 VLR 636 at 639. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation in the minds of those concerned of an impression that goods of a particular trader are being offered for sale in Australia. This has been affirmed in later cases such as the Seven Up case, supra, where Williams J. said at 211, "But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner."

I am not concerned, in deciding the issue of proprietorship, with the question of whether the opponent's and applicant's marks are so alike as to lead to the deception or confusion of customers.  That question is relevant in relation ss.33 and 28, but not to s.40 which only applies when the marks are identical or so similar as to be virtually the same mark - The Kendall Co v Mulsyn Paint and Chemicals, supra.  In the present case, the goods of both parties are undoubtedly the same.  However, as I have already said, this cannot be said about the respective marks.  On one hand, the applicant's mark is as depicted on the first page of this decision and is comprised of the words THE AUSTRALIAN BUSH COLLECTION.  On the other hand, the opponent's house mark is the word OROTON in the "railway" logo, as shown on page two and does not, in my opinion, have enough common features to bear any resemblance to the subject mark.  It is true that the opponent has used the words THE AUSTRALIAN COLLECTION in its advertising and on its packaging.  However, as I have already said, those words do not always appear with the OROTON mark and would be regarded by observers as being a descriptive term.  It is a nonsense to suggest that anyone could claim any rights in that phrase.  I think that, although the term does appear in the applicant's mark, it is merely a non-distinctive part of the "totality" of the mark's getup.  This is not something which I think can be claimed by the opponent in relation to its own mark.

The question of when the respective marks were first used - something which occupied a great deal of time during the hearing is, because of the foregoing, redundant in my estimation.  The marks are not the same and so it matters not when each first made an appearance in the market place.  I do not think that the average person would think that the applicant's mark is a variation of the opponent's mark and I think, although I am not competent to deal with matters of passing off, that it should have been perfectly obvious that the applicant's letter of the 24 April 1991, which threatened legal action for such behaviour by the opponent, was a feeble and highly optimistic act of bluffing.

For the foregoing reasons, I find that the opponent cannot claim to be the proprietor of the mark and so the objection, as it is based upon s.40 must fail.

Section 24 and 25

Section 24 (1) of the Act reads:

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

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

Section 25(1) of the Act reads:

A trade mark is registrable in Part B of the Register if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods or services in respect of which registration of the trade mark is sought and with which the applicant for registration is or may be connected in the course of trade.

Mr Chrysiliou asserted that the subject mark does not distinguish the goods of the applicant.  He said that, if the applicant was allowed to register its mark which included the words THE AUSTRALIAN COLLECTION, then the opponent would be denied the right to use those words in relation to its own goods.  With respect, that is simply not true.  The words in question are, in my opinion, totally and inherently non-distinctive, and no amount of evidence can alter that.  Those are words which should remain in the public arena for any trader in like goods to describe their goods.  However, the applicant's mark is more than that.  It includes the word BUSH and an oval device, the total effect, in my opinion, being more than the sum of its parts.  Although I agree that the majority of the mark comprises non-distinctive elements and fails to meet the strict criteria of s.24, I agree with the examiner that the mark, as a whole, has the capacity to become distinctive and qualifies to gain registration under s.25 of the Act.  I therefore find that the opposition fails on this ground.

Decision

In summary then, I have decided that the opposition has failed on all of the grounds relied upon.  Accordingly, subject to any appeal from this decision, I dismiss the opposition.  Having so found, I can see no reason why costs in the matter should not follow the result.  I therefore award costs to the applicant.

Ian Forno
Hearing Officer

12 October 1994