Royal Doulton (UK) Ltd v Anthony Ghosen

[2004] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by Royal Doulton (UK) Ltd to registration of trade mark application 901124(9) - ROYAL DOULTON - filed in the name of Anthony Ghosen.

Delegate:	Jock McDonagh
Representation:	Opponent: Russell Waters, Phillips Ormonde Fitzpatrick, Attorneys Applicant: No appearance
Decision:	1. Application Refused 2. Costs awarded against applicant

Background

1. Anthony Ghosen (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:	901124
Priority date:	23 January 2002
Goods:	Class 9: Spectacles, spectacles frames, spectacle cases, sunglasses, spectacle glasses, eyeshades in the nature of sunglasses, protective goggles
Trade Mark:	royal doulton
Advertised:	23 May 2002

1. On 22 November 2002, Royal Doulton (UK) Ltd (“the opponent”) filed notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified 14 grounds of opposition, in effect all grounds of opposition provided in the Act.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 1 March 2004.  Mr Russell Waters, of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys of Melbourne, represented the opponent.  The applicant was not represented and relied on evidence filed in the proceedings.

   Evidence

   4.   The evidence filed in this opposition can be summarized as:

Declarant	Referred to as	Date made	Exhibits
Evidence in Support
1.	Deborah Jane Bates	Bates 1	4.3.03	1 to 5
2.	Clive Donald Mackay	Mackay	28.3.03	A to F
Evidence in Answer
3	Anthony Ghosen	Ghosen	28.6.03	A
Evidence in Reply
4	Rusell John Waters	Waters	18.9.03	RJW 1
5.	Deborah Jane Bates	Bates 2	16.12.03	A

1. Although the opponent did not formally abandon any grounds of opposition, the only grounds argued at the hearing were those pursuant to s43 (Ground 5), s58 (Ground 10) and s60 (Ground 12).

   Ground 1 - Section 43: a connotation within the trade mark

   6.   Section 43 provides:

   Trade mark likely to deceive or cause confusion

   43. 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.

2. This section does not depend on the existence of a conflicting trade mark.  Connotation refers to that which is implied within the mark itself, as a secondary implied or associated meaning: Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644 and confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72.

3. The opponent submitted that the secondary meaning connoted by the applicant’s mark was that it was in receipt of some sort of royal patronage or authority.  To establish this, the opponent  referred to the New Zealand Flags, Emblems, Names Protection Act 1981 (NZ) s14, which relevantly provides:

   14.Unauthorised use of words suggesting Royal or government patronage—

   (1)Subject to subsection (4) of this section, every person commits an offence against this Act who— 

   (a)...; or 
    (b)Publicly uses in connection with any business, trade, or occupation any word or statement to which this subsection applies. 

   (2)Every association (whether incorporated or unincorporated) commits an offence against this Act which carries on its activities under any name, title, style, or designation that includes any word or statement to which subsection (1) of this section applies. 
   (3)Subsection (1) of this section applies to the following: 

   (a)The word ``Royal'': 
   (b)The word ``Government'': 
   (c)Any other word or statement that claims or implies the patronage of— 

   (i)Her Majesty or any other member of the Royal Family; or 
   (ii)The Governor-General; or 
   (iii)The House of Representatives; or 
   (iv)The Government; or 
   (v)Any Minister of the Crown; or 
   (vi)Any Government department: 

   (d)Any word or statement that claims or implies connection with any society or body incorporated by Royal Charter.  

4. It was suggested that this was an example of recognition that use of the word “Royal” could cause people to think that the mark was indicating such royal patronage or warrant. I note also that a similar prohibition was included in s29 of the Trade Marks Act 1955.

5. The Bates declaration states that the opponent was granted a royal warrant by King Edward VII in 1901, and thus the opponent is entitled to use the title “Royal”. 

6. There is no evidence in these proceedings to suggest that any deception or confusion had occurred in Australia.  While the word “Royal” does often denote some form of Royal warrant or charter, I do not think that can be assumed that the relevant segment of the market would be likely to be so informed by the presence of the word “royal” itself. 

7. I am not satisfied that there is a real and tangible danger that ordinary members of the public would consider that the goods bearing the applicant’s mark would were in some way endorsed by the Royal family, or that the applicant were in receipt of some Royal warrant.  Accordingly, I dismiss this ground of opposition

   Ground 2: s58 - Applicant not owner of Trade Mark

8. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

9. The opponent provided evidence that the opponent’s royal doulton mark had been used in relation to eye glasses in the United States of America since 1999.  These goods are advertised for sale by a US optical supplier on an internet web-site.  The web-site allows for purchase “on-line” and includes options for international air delivery of the goods. 

10. The opponent submitted that the ability of Australian consumers to purchase its eye glasses on-line satisfied the requirement for public use in Australia of the mark as a trade mark.  The opponent relied on the principles stated in Moorgate Tobacco Co Ltd v Philip Morris Ltd & Anor (1984) 3 IPR 545, and  Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 204

11. It is true that “[M]oorgate Tobacco clearly envisages that either of an alternative will suffice: preparatory steps coupled with an actual trade or offer to trade; or preparatory steps coupled with an existing intention to offer or supply goods in trade. The second of these was accepted by Gummow J in Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517 as constituting a prior use.”: Winton Shire Council v Lomas [2002] FCA 288 at para 38

12. In the "Yanx" case it was found that a trade mark is used in Australia if the goods are offered for sale in Australia but at the time they are offered for sale are actually only in transit to Australia - the course of trade in this instance involved the importation of the goods into Australia.

13. The evidence does establish that the same mark has been used in relation to the same kind of goods in the United States before the applicant’s priority date. The evidence shows substantial sales of eye wear in the US. 

14. However, the evidence does not state when the internet web-site was created, when the option of international delivery commenced, or whether in fact any sales of the goods had been made to Australian purchasers.  Nor is there any evidence to show if any form of publicity had been used to direct Australian consumers to the US web-site, for example advertising in trade magazines such Eye Talk Reference Guide (declared by the applicant to be the industry guide to eyewear in Australia).

15. I am not satisfied that the opponent has established this ground of opposition and, accordingly, I dismiss it.

    Ground 3: s 60 Ground - Reputation

16. To satisfy section 60 of the Act, the opponent has the burden of establishing the following elements:

    (a)       a pre-existing trade mark;

    (b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

    (c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

    (d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

17. The evidence shows that the opponent has used the trade mark royal doulton in Australia for over 40 years, originally on ceramic tableware but also on figurines, vases, glassware, candlesticks, clocks and moneyboxes.   Thus I am satisfied that (a) and (b), above, have been demonstrated.

18. Reputation can be inferred from a high volume of sales along with substantial advertising and promotional expenditures: McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 127. The reputation must be more than minimal, and a substantial or significant number of persons must be likely to be deceived or confused: Re Smith Hayden & Co Ltd’s Appn (1946) 63 RPC 97 (Ch D).

19. The confidential evidence provided by the opponent details a very high volume of sales of goods bearing the opponent’s mark.  The evidence also demonstrates that the mark is widely promoted throughout Australia.  I am satisfied that the opponent’s trade mark possesses the requisite reputation.

20. As to the likelihood of deception or confusion, a formulation of the test could be: having regard to the reputation acquired by the opponent in the name royal doulton, is the Registrar satisfied that the applicant’s mark used in a normal and fair manner in connection with spectacles, spectacles frames, spectacle cases, sunglasses, spectacle glasses, eyeshades in the nature of sunglasses, protective goggles will be reasonably likely to cause deception or confusion amongst a substantial numbers of persons? See, for example, Le Cordon Bleu BV v. Cordon Bleu International Ltee [2000] FCA 1587 at paragraph 84 (per Heerey J).

21. I am satisfied that the words royal doulton are only associated with the opponent, and they are to this extent arbitrary.  The evidence shows that the trade mark is used and licensed by the opponent on a range of goods in Australia (as well as elsewhere in the world). 

22. I am also satisfied that the public is well used to the licensing of trade marks such as that of the opponent on a range of goods.  “Brand extension” is a common commercial phenomenon.  The fact that sunglasses (etc) might be expected to be such goods by the public is supported by the fact that the opponent in fact uses its trade mark on such goods in the USA.

23. I am satisfied that because of the opponent’s reputation, there is a real and tangible chance that a substantial number of persons finding the applicant’s mark used on the relevant goods would be confused or deceived.  I find that the opponent has established this ground of opposition.

    Decision and Costs

24. The opponent has established grounds of opposition on which it relied so that the opposition as a whole has been successful.  Pursuant to section 55, I refuse to register Application No. 901124 royal doulton.

    30.  The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    18 June 2004