Sanico Pty Ltd v Garrin Services Pty Ltd

[2002] ATMO 44

TRADE MARKS ACT 1995

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

Re:      Opposition by Sanico Pty Ltd to registration of trade mark application 763817(3, 5, 9, 11, 21, 37, 42) - SANICO - filed in the name of Garrin Services Pty Ltd.

Background

Trade mark application number 763817 is an application to register the word sanico in respect of the goods and services appearing below in classes 3, 5, 9, 11, 21, 37, and 42 of the International (Nice) Classification of Goods and Services:

Class 3: Cleaning, scouring, polishing and abrasive compounds for laundry, washroom and toilet use; all types of soaps including soaps in cream or liquid form; cosmetics, perfumery, shampoos and conditioners, nail polish, hair lotions, anti-perspirants, deodorants for personal use, dentrifices, talcum powder; stain and colour removing preparations

Class 5: Adhesive bands and tapes, adhesive plaster, bandages, dressings, gauze for dressings, antiseptic cotton, first aid boxes and cabinets (filled); analgesics, antiseptics, adhesive for dentures, disinfectants for hygiene purposes, eye-wash, contact lens solutions, fly destroying preparations, insect repellents, skin preparations (pharmaceutical preparations for); contraceptives (chemical); sanitary pads, towels and panties

Class 9: Vending machines including coin operated vending machines, television sets and telephones

Class 11: Complete air purifying, air deodorising and air sterilising units; complete sanitary and sanitising apparatus and installations including germicidal purifiers; complete units of disinfectant apparatus for toilets; hair dryers (fixed); automatic hand drying apparatus for washrooms including air dryers; complete water flushing installations with disinfectant dispensers for sanitary purposes; babies bath tubs and babies bath tubs attached to a changing table; ice chests; all being goods included in this class

Class 21: Paper towel and toilet paper holders; liquid soap dispensers; toilet brushes; toothbrushes; toilet utensils; hair combs and brushes and cases therefore; cleaning cloths; chamber pots; bowls and receptacles in this class for sanitary waste

Class 37: Providing and servicing of sanitary disposal installations; provision of services for the cleaning of toilet, shower and washroom fixtures and fittings; installation and repair of air conditioning installations; clothing repair; laundry and ironing services

Class 42: Children's day nursery services; vending machine rental; day nurseries beauty salons; administration for houses, business and property (housekeeping); snack bars

The application was filed on 3 June 1998 ("the relevant date") by Garrin Services Pty Ltd of Braeside Victoria ("the applicant"). 763817 was duly examined and, on 7 January 1999, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 7 April 1999, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Sanico Pty Ltd of Blacktown New South Wales ("the opponent") filed opposition to the registration of 763817.

The opponent listed 23 grounds of opposition in its notice of opposition. However, at the hearing it relied on one ground of opposition under section 58 of the Act, namely that the applicant is not the owner of the trade mark in Australia.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Melbourne on 7 February 2002. The opponent was represented by Mr Graham Smith of counsel instructed by Callinen Lawrie Patent & Trade Mark Attorneys of Kew, Victoria. The applicant was represented by Mr John Keogh and Ms Wendy Shannon of Sandercock and Cowie, Patent, Trade Mark & Design Attorneys, of Dandenong, Victoria.

Evidence

The opponent served on the applicant, and filed with the Trade Marks Office, a statutory declaration by Mervyn Hobden ("Hobden 1") dated 6 July 2000 as evidence in support of its opposition.

The applicant served on the opponent, and filed with the Trade Marks Office, the following statutory declarations:

Anne Elizabeth Morrison ("Morrison A1") dated 8 November 2000,
Ian Morrison ("Morrison I2") dated 7 June 2001,
James F. Shea ("Shea") dated 2001,
Richard Kurland ("Kurland") dated 18 June 2001, and
Tom O'Bryan ("O'Bryan") dated 3 July 2001

as evidence in answer.

The opponent served on the applicant, and filed with the Trade Marks Office, a statutory declaration by Mervyn Hobden ("Hobden 2") as evidence in reply.

During the hearing, the opponent submitted that the Shea declaration was undated and, therefore, did not confirm with Regulation 21.6 of the Trade Mark Regulations 1995 and accordingly should not be relied upon. The applicant submitted that since the O'Bryan and Shea declarations went to reputation, which was not in issue, these declarations need not be relied upon.

Submissions, Considerations and Findings

Section 58 of the Act states:

Applicant not owner of trade mark

58. 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.

Ownership of a trade mark may be established by showing who had first use in Australia, with respect to those particular goods or services, of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application: Re Hicks' Trade Mark[1]; Carnival Cruise Lines Inc v Sitmar Cruises Ltd[2].

[1] (1897) 22 VLR 636

[2] (1994) 31 IPR 375 at 391 ("Carnival Cruise Lines")

The opponent submitted that it had used the mark sanico in relation to the provision of sanitary, hygiene and washroom devices since 1995. Counsel for the opponent referred to the Hobson 1 declaration, in particular to the incorporation of the business name Sanico Pty Ltd in May 1995 and the use of the name as a trade mark in advertising, on brochures, stationery, business cards, letterhead and in the Yellow Pages. The Hobson 2 declaration further stated that labelling, stickers, signage, cards had displayed a distinctive green sanico mark for six years (thus since 1995).

The opponent further submitted that the evidence showed that the applicant's trade mark use prior to the relevant date was for garrin sanico, rather than sanico. It was submitted these two words were used in conjunction on all correspondence and materials before the relevant date. Further, the applicant's business name was registered as garrin sanico. Use of the mark sanico solus, it was submitted, did not occur until after the relevant date.

The opponent argued that garrin sanico was not substantially identical to sanico and thus not sufficient for a claim of prior ownership. In Carnival Cruise Lines, supra, funship was found not to be substantially identical to sitmars funship and fairstar the funship.

The applicant submitted that garrin is a "house" mark used in relation to a variety of aspects of the applicant's business, whilst sanico is a brand mark specific to the application goods and services. It was further submitted that the fact that sanico was used in combination with garrin does not indicate that sanico was not itself being used as a trade mark. The applicant cited Hearing Officer Nancarrow in Re Application by Woolworths Ltd (1988) 42 IPR 49, who at 53 had stated that "[t]he modern practice of the use of house marks and individual product marks on some lines of goods ... is... extremely common".

The applicant relied on the Morrison A1 and Morrison I2 declarations, which demonstrated that the mark was used as early as May 1992 in respect of services and August 1992 in respect of goods.

Both parties sought their costs in the matter, on the basis that costs should follow the event.

It appears to be common ground between the parties that their marks are in respect of the same kind of goods and services. In so far as the application related to sanitary or sanitation apparatus and installations, the contentious issue was whether or not the applicant had been using the trade mark sanico, rather than garrin sanico, since 1992.

I am satisfied that the applicant has used the trade mark sanico since 1992, and is the owner of it. My reasons follow.

In my opinion, the evidence of the applicant demonstrates that since 1992 the applicant has used two trade marks. The first is a "house mark", garrin. The house mark is a device comprising the word garrin written in a cursive script across a circular device. The evidence demonstrates to my satisfaction that this is the trade mark of the entire operations of the applicant.

I am also satisfied that the evidence shows that sanico is a division of the applicant's operation. Its trade mark is a simple word mark. It may be situated close to the house mark on the various items exhibited in evidence; however, I am satisfied that it is a separate mark. The typescript used for the sanico word mark is a plain sans serif font. The word mark is separated sufficiently to avoid appearing linked to the device. The themes of the two marks are distinctly different.

The use of the sanico mark by the applicant in respect of the contentious goods and services predates that of the opponent. The applicant is the owner of the mark in respect of those goods and services and I therefore dismiss the section 58 ground of opposition.

There being no evidence or submissions supporting the remaining grounds listed in the notice of opposition, I dismiss them.

Decision

The opponent has not established any of its grounds of opposition. I therefore direct that the applicant's trade mark be registered unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

Costs

As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh
Hearing Officer

27 May 2002