Sally Paynter v Trellini Pty Ltd

[2006] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by Sally Paynter to registration of trade mark application 932317(25) - ROB PAYNTER - filed in the name of Trellini Pty Ltd.

Delegate:	Deirdre O'Brien
Representation:	Opponent Ben Fitzpatrick of counsel instructed by Griffith Hack, patent and trade mark attorneys Applicant Not represented
Decision:	Section 52 opposition Ground under s58 made out. Registration refused. Costs awarded against applicant.

Background

1. Trade mark application 932317 was filed by Trellini Pty Ltd (‘the applicant’) on 29 October 2002 and was subsequently accepted for possible registration.  Relevant details of the application are as follows:

   Trade Mark:     ROB PAYNTER

   Class:25

   Goods:Clothing including knitwear

2. Registration has been opposed by Mrs Sally Paynter (‘the opponent’).  Both parties have filed and served evidence pursuant to the Trade Mark Regulations 1995.  I was delegated by the Registrar to hear the matter in Melbourne on 17 February 2006. The opponent was represented by Mr Ben Fitzpatrick of counsel, instructed by Griffith Hack, patent and trade mark attorneys. The applicant was not represented at the hearing and did not file any written submissions. The grounds pressed by the opponent at the hearing were those pursuant to sections 42(b), 43, 58, 59 and 60 of the Trade Marks Act 1995.  The onus is on the opponent to make out at least one of these grounds[1]. 

   [1] as recently confirmed in Kowa Co v NV Organon (2005) 66 IPR 131 at 153

   Evidence

3. The evidence filed and served by both parties is as follows.

Declarant	Date	Exhibits	Known as
Evidence in support	Sally Paynter	03.05.2004	SP1 & 2	Paynter 1
Evidence in answer	Helen Kearney	18.04.2005	Kearney
Evidence in reply	Sally Paynter	15.07.2005	Paynter 2

Ground under section 58

1. Section 58 provides:

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

   The opponent says her late husband, Mr Robert Paynter, used the present trade mark in relation to women’s clothing from 1985 until his death[2].  The applicant acknowledges Mr Paynter’s use of the trade mark in the 1980s and 90s but says that by December 2000 it believed the trade mark to have been abandoned by Mr Paynter.  That belief was derived from the fact, the applicant says, that one of its associated companies had been the major clothing supplier to Mr Paynter until Mr Paynter was unable to pay for the garments ordered.  The applicant said this occurred in about 1999 or 2000[3]. 

   [2] According to paragraph 10 of Kearney this was in April 2003.

   [3] Paragraph 4 of Kearney

2. By December 2000, according to the applicant, Mr Paynter was no longer working in the clothing business and all his companies were in liquidation or deregistered[4].  The applicant says its belief the trade mark had been abandoned was shared by others in the trade but it has not filed or served any declarations from such persons.  The present application was filed on 29 October 2002. 

   [4] Paragraph 5 of Kearney

3. The opponent disputes the applicant’s claim that the trade mark had been abandoned.  She says the company the applicant says was the clothing supplier for her husband was actually a minor supplier to an authorized user of her husband’s trade mark, Marketing Manoeuvres Pty Ltd.  She says that Marketing Manoeuvres Pty Ltd traded as Rob Paynter, that it sourced most of its clothing from China[5] and that it continued to trade strongly ‘until within three months of it ceasing to trade’[6].  (The applicant says Marketing Manoeuvres Pty Ltd was deregistered in March 2003[7].)  The opponent disagrees with the applicant that others in the trade believed the trade mark to have been abandoned but she, too, has not provided any declarations from third parties.

   [5] Paragraphs 2 and 3 of Paynter 2

   [6] Paragraph 6 of Paynter 2

   [7] Paragraph 7 of Kearney

4. Both parties are in agreement that the opponent’s husband was the first user[8] of the present trade mark in Australia in relation to women’s clothing.  The applicant says the trade mark was subsequently abandoned by Mr Paynter.  The opponent argues that abandonment is not be inferred from mere non-use[9] nor by a company going into liquidation[10].  She points to Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA[11] as authority for the requirement that there be evidence of an actual intention to abandon.  There is no such evidence before me. 

   [8] Section 7(3) provides that authorised use of a trade mark is taken to be use by the owner of the trade mark.

   [9] Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266

   [10] Malibu Boats West Inc v Catanese (2001) 51 IPR 134 at 137

   [11] (1988) 12 IPR 321 at 324

5. I find the applicant’s belief the trade mark had been abandoned is merely that, a belief, with no facts in evidence to substantiate it.  I am satisfied the first user of the present trade mark in Australia, the opponent’s husband, was the owner of the trade mark at the date on which this application was filed[12]. Accordingly, the section 58 ground of opposition has been made out.

   [12] which was approximately six months before Mr Paynter’s death.

   Other grounds of opposition

6. The opposition succeeds on the basis of the section 58 ground. I therefore do not need to decide whether or not the other grounds have also been made out.

   Decision

7. As the opponent has shown the applicant is not the owner of the present trade mark, my decision is to refuse to register trade mark application 932317. 

   Costs

8. I award costs against the applicant according to the official scale.

   Deirdre O'Brien
   Hearing Officer
   Trade Marks Hearings
   07 March 2006