Sanstat Pty Ltd T/A Pacific Hi-Fi v the Muir Electrical Company Pty Ltd

[2004] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Sanstat Pty Ltd T/A Pacifice Hi-Fi to registration of trade mark application 786609(35) - THE GOOD GUYS DISCOUNT WAREHOUSES - filed in the name of The Muir Electrical Company Pty Ltd.

Delegate:

Mary Skivington

Representation:

Opponent:  Martin Pollock of Spruson & Ferguson, Patent and Trade Mark Attorneys.

Applicant: Colin Oberin, of Allens Arthur Robinson, Patent and Trade Mark Attorneys.

Decision:

Section 52 opposition - grounds of opposition under sections 44, 60 and 62 not established - opposition unsuccessful. Costs awarded against the opponent.

Background

1. The Muir Electrical Company Pty Ltd, ('the applicant'), filed trade mark application number 786609, on 25 February 1999, to register the trade mark shown below.

 

1. On 4 May 2000 acceptance of the application, under the provisions of subsection 44 (4) of the Trade Marks Act 1995, ('the Act'), was advertised in the Australian Official Journal of Trade Marks. The services, as described below, are in class 35:

Retailing household electrical appliances, gas appliances, electrical products including televisions, stereos and videos, computers, bathroom products, furniture, bedding, mattresses, hot water systems, garden sheds, gardening equipment, mowers and spas.

1. Sanstat Pty Ltd, trading as Pacific Hi-Fi, ('the opponent'), filed a notice of opposition on 3 August 2000. After numerous extensions of time within which to do so, the opponent completed the filing and serving of its evidence in support, on 3 January 2003. The applicant's evidence in answer was filed and served three months later and the evidentiary stages of the opposition proceedings were completed when the opponent served its evidence in reply on 25 August 2003.

2. Both parties requested that the matter be set down for a hearing and on 11 November 2003, as a delegate of the Registrar of Trade Marks, I heard the matter in Canberra. The opponent was represented by Mr Martin Pollock, a legal practitioner with Spruson & Ferguson, Patent and Trade Mark Attorneys. The applicant was represented by Mr Colin Oberin, a partner in Allens Arthur Robinson, Patent and Trade Mark Attorneys.

The Evidence

1. Evidence in support

Date	Declarant	Exhibits	Known as
2 May 2002	Martin Pollock, legal practitioner with Spruson & Ferguson	'A'	Pollock-1
2 August 2002	Martin Pollock, legal practitioner with Spruson & Ferguson	MHP-1 MHP-2	Pollock-2
16 October 2002	Martin Pollock, legal practitioner with Spruson & Ferguson	MHP1	Pollock-3
2 January 2003	Martin Pollock, legal practitioner with Spruson & Ferguson	MP1	Pollock-4

1. Evidence in answer

Date	Declarant	Exhibits	Known as
18 March 2003	Roderick William Harding, Chief Executive Officer of The Muir Electrical Company Pty Ltd	RWH-AA	Harding-1
1 April 2003	Garen Holopikian,  Patent and Trade Mark Attorney,Allens Arthur Robinson.	GH-1 to GH-8	Holopikian
17 October 2002	Roderick William Harding, Chief Executive Officer of The Muir Electrical Company Pty Ltd	RWH-A to RWH-G and RWH-1 to RWH-11	Harding-2
1 February 2002	Craig Raymond Douglas, Managing Director of Nationwide Investigation Services Pty Ltd.	CRD-1 to CRD-2	Douglas
23 April 2002	Clarence Edwin Palmer-Burton, Company Secretary of Sony Australia Ltd.	-	Palmer-Burton
5 June 2002	Robert Hayes, National Sales Manager of LG Electronics Australia Pty Ltd.	-	Hayes
22 April 2002	Michael John Richardson, National Sales Manager of Philips Consumer Electronics.	-	Richardson
26 April 2002	Roland Julian Tudor, General Manager Administration of Panasonic Australia Pty Limited.	-	Tudor
12 April 2002	Douglas Roger Walter, Associate Director, General Manager Finance and Company Secretary of Sharp Corporation of Australia Pty Ltd.	-	Walter
3 July 2002	Michael Wilson, National Sales Manager of QualiFi Pty Ltd.	-	Wilson

1. The final eight statutory declarations noted in the above table are Exhibits GH-1 to GH-8 to the Holopikian statutory declaration. The originals of these were filed as evidence in support of opposition to registration of pending trade marks numbered 765898 and 765900 both of which are in the name of the opponent to registration of the subject application.

2. Evidence in reply

Date	Declaramt	Exhibits	Known as
17 July 2003	Martin Pollock, a legal practitioner with Spruson & Ferguson	MP-1 to MP-3	Pollock-5
10 June 2003	Vince Di Bartolo, Managing Director of Sanstat Pty Ltd.	VDB-1 to VDB-6	Di Bartolo
10 June 2003	John Johnson, former Marketing Manager of Pacific Hi-Fi Limited	JJ1	Johnson
13 June 2003	Joe Salamanca, NSW Manager of International Dynamics Pty Ltd	-	Salamanca
10 June 2003	Paul Touzell, former Insurance Replacement Manager for Pacific  Hi-Fi Pty Ltd.	PT1	Touzell
31 July 2003	Martin Pollock, legal practitioner with Spruson & Ferguson	MHP-A	Pollock-6
25 August 2003	Martin Pollock, legal practitioner with Spruson & Ferguson	MHP-1	Pollock-7
13 August 2003	James Chen, former sales person with Simon Finch Muirs.	_	Chen
13 August 2003	Rodney Stanton, proprietor of Adman Signs.	RS1 to RS3	Stanton

1. The Di Bartolo, Johnson, Salamanca, Touzell and Pollock-5 statutory declarations are copies of originals that were also filed as evidence in the oppositions to registration of trade marks 765898 and 765900.

2. These applications are in respect of retailing, servicing and repair services in respect of hi-fi equipment that generally includes DVD machines and software, compact disc players, cassette recorders, mini disc players, portable audio players and recorders, amplifiers, tuners, turntables and speakers, televisions including projection televisions and videos. They too were accepted under the prior use provisions of subsection 44 (4) of the Act.

  

765898  765900               

1. The applicant is the owner of trade mark registration number 601969, shown below, for the same services as those specified in the subject application. It was accepted in Part B of the old Register, on the basis of evidence of use, as a trade mark that was capable of becoming distinctive, under the provisions of the Trade Marks Act 1955. Registration was limited to the state of Victoria and a disclaimer of the right to the exclusive use of the words THE GOOD GUYS, except as represented in the trade mark was also entered on the Register.

 

The statutory declarations in support

Di Bartolo

1. Mr Di Bartolo, who is the Director of Sanstat Pty Ltd, the opponent, attests to use by the opponent and its predecessors in trade, of the trade marks, THE GOOD GUYS and THE GOOD GUYS OF HI-FI, since July 1989 to the present. He declares that the trade marks are used in respect of retail and repair services of hi-fi apparatus, videos, televisions and other electrical apparatus. Mr Di Bartolo reports that since 1992 the trade marks have been promoted in Sydney and the surrounding regions in the Yellowpages™ as well as in advertisements in regional newspapers. Exhibits 'I' to 'M' are copies of directory entries from 1993 onwards of trade mark number 765898 which includes the words 'THE GOOD GUYS'. Mr Di Bartolo declares that the opponent's reputation has been enhanced by a number of business awards, which have been reported in the local press. I note, however, that these reports refer to Pacific Hi-Fi and not to 'THE GOOD GUYS'. Exhibit 'O' includes an advertisement from The Liverpool Leader of 29 July 1998 where 'THE GOOD GUYS of Hi-Fi is prominently displayed alongside the words PACIFIC Hi-FI and reference to Community Choice Awards for 1997 and 1998 and Liverpool Business Awards for 1996 and 1997. Exhibits of advertisements that precede the subject application's priority date show 'THE GOOD GUYS OF HI-FI' is generally as prominent as 'PACIFIC HI-FI'. Exhibit 'G' is an advertising jingle that is displayed on the shop front. It begins 'We're the good guys of hi-fi at Pacific Hi-Fi', however, it is not readily apparent here, that 'the good guys of hi-fi is being promoted as a trade mark.

2. Exhibit E, (filed as exhibit MHP-1 to the Pollock declaration of 2 January 2003), is a video tape of the launch of the business Pacific Hi-Fi Pty Ltd in 1989 and a number of television commercials shown at various times from 1989 to 1991. The launch video includes a video clip in which Paul Touzell, then the business Project Manager, talks about the challenges for the company in the home entertainment market and its philosophy for success that focuses on price, products, promotion and people. This talk concludes with a singing of the 'good guys' advertising jingle. A speech by Frank Di Bartolo, a brother of the declarant, at the launch also notes that they will be known as the 'good guys in hi-fi'. All but one of the television commercials concludes with the singing of the 'good guys' advertising jingle.

Pollock

1. Mr Martin Pollock, a solicitor and employee of Spruson and Ferguson, attached to his declaration, dated 2 May 2002, a statutory declaration made by Dominic Vince Di Bartolo on 6 October 1999 which was filed to overcome citations in respect of trade mark applications 765898 and 765900. The provisions of subsection 44 (4) of the Act were applied to these two applications. The Pollock-2 declaration, dated 2 August 2002, contains as an exhibit, a statutory declaration dated 29 March 2000, made by Roderick William Harding, the Managing Director of the applicant, which was filed as evidence in respect the subject application prior to its acceptance, also under the prior use provisions of subsection 44 (4) of the Act. Mr Pollock refers in particular to paragraph 17 and Exhibit RWH-6 of the Harding declaration. This exhibit comprises business cards and letterheads used by the applicant. Exhibit MHP-2 contains copies of extracts from the Australian Securities & Investment Commission relating to the various companies listed on the letterheads and business cards contained within Exhibit RWH-6.

2. Exhibits MHP 1 referred to in the Pollock-3 statutory declaration and MP1 referred to in the Pollock-4 statutory declaration are video tapes.

The statutory declarations in answer

Harding-1

1. In this declaration Mr Harding declares that he does not believe that paragraph 17 and exhibit RWH-6 of his statutory declaration, filed in order to overcome the section 44 grounds for rejection of the subject application, suggest that all of the companies listed on the letterheads and business cards that comprise the exhibit were incorporated before the priority date. He claims that the purpose of paragraph 17 and the exhibit RWH-6 was to show that the same style of the trade mark had been used on a continuous basis before and after the priority date.           

1. Exhibit RWH-AA comprises copies of pages from catalogues of the applicant and the applicant's authorised users, dated from 1995 to 1997, showing use of the subject trade mark.

Holopikian

1. Mr Garen Holopikian, a Patent and Trade Mark Attorney with Allens Arthur Robinson, declares that the exhibits accompanying his declaration dated 1 April 2003, GH-1 to GH-8, constitute part of the evidence in support of the opposition to registration of the opponent's trade marks, 765898 and 765900. He reports that it is the applicant's wish that these exhibits shall form part of the evidence in answer.

Harding-2 (GH-1)

1. In this declaration, dated 17 October 2002, Mr Harding declares that the applicant has twelve authorised users of its trade mark in New South Wales. He declares that the applicant first acquired a presence in New South Wales when it bought two outlets from the Brashs Group in May 1998. Exhibit RWH-A is a copy of a statutory declaration by Mr Harding on 29 March 2002 filed as evidence of prior use of the applicant's now opposed trade mark number 786609. Exhibits RWH-10 and RWH-11 comprise the retail sales and advertising figures for the years 1995 to 1999. I regard these as substantial.

Douglas (GH-2)

1. Mr Douglas, who is the Managing Director of Nationwide Investigation Services Pty Ltd, declares that he has over twenty years experience in conducting investigations and that for the last ten years his investigations have focussed mainly on intellectual property matters, particularly trade mark matters. He reports that he was employed by the applicant to conduct an investigation into the use by the opponent's of the words 'The Good Guys' including the date of first use.  He reports that the investigator did not locate the words on external signage at the opponent's premises. Exhibit CRD-1 is a brochure collected by the investigator which uses the expression 'The Good Guys of Hi-Fi.' The declaration does not include a date of first use by the opponent of the words, 'The Good Guys.'

Palmer-Burton (GH-3)

1. Mr Palmer-Burton, who is the Company Secretary of Sony Australia Ltd, declares that he has been in the employ of Sony Australia Ltd since 1976 and that he has been the company secretary for the past fourteen years. He declares that he has a reasonably extensive knowledge of the retail industry for audio, video, and information technology products in New South Wales. He reports that in connection with retailing of electrical and electronic products, he associates the phrase 'The Good Guys', only with the applicant.

Hayes (GH-4)

1. Mr Hayes, who is the National Sales Manager of LG Electronics Australia Pty Ltd, declares that he has had twenty-five years in the consumer electronics industry and that he has had a business relationship with the applicant for over four years. He reports that he has known of the opponent for three to five years and that he is not aware of any material that indicates that the opponent has used the words, 'The Good Guys'.

Richardson (GH-5)

1. Mr Richardson, who is the National Sales Manager of Philips Consumer Electronics, declares that he has had thirteen years in the consumer electronics industry.  He reports that he has had  a business relationship with the applicant for seven years. Mr Richardson declares that he had a brief contact with the opponent some nine or ten years ago and that he does not associate the phrase  'The Good Guys' with the opponent.

Tudor (GH-6)

1. Mr Tudor declares that he is the General Manager Administration of Panasonic Australia Pty Limited and that he has had about fifteen years experience in the consumer electrical and electronics industry. He reports that his company has had a business relationship with the applicant for some years. He also declares that his company has had a business relationship with the opponent for about five years. Mr Tudor declares that he does not associate the expression 'The Good Guys' with the opponent.

Walter (GH-7)

1. Mr Walter, who is Associate Director, General Manager Finance and Company Secretary of Sharp Corporation of Australia Pty Ltd, declares that he has an extensive knowledge of the Australian consumer electrical and electronics market. He declares that he has no prior knowledge of the opponent and that from his company's  business relationship with the applicant and from his own experience he is aware of the applicant's use of The Good Guys' trade marks.  

Wilson (GH-8)

1. Mr Wilson, who is the National Sales Manager of QualiFi Pty Ltd, declares that he has twelve to fifteen years experience in the electrical and electronics industry. He reports that he has known of the opponent through its business, Pacific Hi-fi Liverpool for almost ten years and that he has no knowledge of the business using the words, 'The Good Guys'. He also declares that he has had business dealings with the applicant for a number of years and associates the words 'The Good Guys' with the applicant.

The statutory declarations in reply

Pollock-5

1. Exhibit MHP-A, that accompanies this declaration made by Martin Pollock, on 31 July 2003, comprises statutory declarations made by Vince Di Bartolo and John Johnson and Paul Touzell on 10 June 2003, a statutory declaration made by Joe Salamanca on 13 June 2003 and another by Mr Pollock on 17 July 2003.

Di Bartoli

1. Mr Di Bartoli declares that his company generally caters for the high quality end of the market. He asserts that his company has never supplied hi-fi or electrical goods under the brand names PHILIPS, SONY, SHARP or LG.  However his company supplies goods under other trade marks such as PANASONIC, JAMO, MARANTZ, TOSHIBA, LOEWE, TEAC and AKAI. Mr Di Bartoli declares that his company has continuously used and promoted its GOOD GUYS IN HI-FI trade mark since 1992. He declares that the company's premises carried a shop front  awning from at least 1995 to 2002  on which the words 'The Good Guys in Hi-Fi' are displayed. This awning was subsequently removed to the customer car park.

Johnson

1. Mr John Johnson, who is the former Marketing Manager of Pacific Hi-Fi Limited, declares that as Marketing Manager he attended a meeting in or about April 1989 at which Pacific Hi-Fi Limited adopted the phrase, 'Good Guys of Hi-Fi'. He declares that the trade mark was used by Pacific Hi-Fi Limited from that time until it went into liquidation in 1992 and that he is aware that the opponent has been using the trade mark since 1992.

Salamanca

1. Mr Joe Salamanca who is NSW Manager of International Dynamics Pty Ltd, declares that he is a supplier of hi-fi equipment including MARANTZ hi-fi equipment to the opponent. He asserts that he is aware of the opponent's use of the trade marks GOOD GUYS and GOOD GUYS in Hi-Fi on signage at its premises since at least November 1998. He further declares that he was employed by Myers Limited in Melbourne from 1990 to 1995 and during that time was aware of the applicant but was not aware of any use by the applicant of the GOOD GUYS trade marks.

Touzell

1. Mr Paul Touzell, who was the Insurance Replacement Manager for Pacific  Hi-Fi Pty Ltd from 1989 to 1991, declares that GOOD GUYS was in use during his employment with that company. He declares that the company ceased operating in 1992 and that since 1992 the opponent has used its trade marks GOOD GUYS and GOOD GUYS in Hi-Fi.

Chen

1. Mr James Chen declares that he was employed as a sales person during the 1990's at Simon Finch Muirs and that he recalls that his employer first used the trade mark THE GOOD GUYS around 1995.

Stanton

1. Mr Rodney Stanton declares that he is the proprietor of Adman Signs, a sign writing business,  and that between 1991 and 1992 his business prepared the sign which begins 'We're the good guys of hi-fi at Pacific Hi-Fi'. He declares that since 1992 his business has prepared signs on the shop front awning and in the car park of the opponent's Liverpool premises. He reports that the most recent sign was made in 1995 or 1996. Exhibits RS2 and RS3 are  photocopies of  various signs.

Grounds of opposition

1. At the hearing, the opponent relied on grounds of opposition under sections 44, 60 and 62 (b) of the Act. For the sake of completeness I now  formally state that the remaining grounds of opposition identified in the notice of opposition have not been established.

Submissions and the law

Section 62(b)

1. So far as it concerns this opposition section 62 of the Act provides that registration of a trade mark may be opposed on the grounds that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars. Mr Pollock argued that the statutory declaration made by Mr Harding on 29 March 2000 and filed as evidence of prior use of the applicant's trade mark led the examiner into a wrong belief that the trade mark had been more extensively used than it had in fact been used. He contended that had the evidence been clearer the application would only have been accepted with a geographic limitation.

2. Mr Oberin contended that the evidence 'was not so much wrong as perhaps imprecise.'  I am inclined to agree with Mr Pollock, that the evidence does create an impression, that the applicant had, before the priority date of the opponent's trade marks, 26 June 1998, widely used its trade mark in Victoria, Queensland, New South Wales and South Australia. For example, of the twenty-two business cards provided, eight each relate to Victorian and New South Wales businesses and three each to Queensland and South Australian businesses.  However, the evidence in answer to the opposition shows that the trade mark had only been used in Victoria and Queensland, before the priority date.

1. I note that the applicant purchased premises in New South Wales from the Brashs Group in May 1998 just before the priority date of the cited trade marks but the evidence does not show when goods were first offered for sale in New South Wales under the applicant's trade mark. I think it is probable that the examination of the application proceeded on the basis of an incorrect belief that the trade mark had been continuously used in four states of Australia since 1995.

2. In his declaration Mr Harding declares that the trade mark was first used by the applicant and by authorised users in 1995 and that it has been used continuously used since that date. This statement is not a false. At paragraph 17 he declares that Exhibit RWH-6 comprises examples of advertisement and promotion of the trade mark on letterheads and business cards which show the style which has been used continuously used since prior to the priority date. Mr Harding's statements do show the style that has been used and are not false although they also tend to paint picture of wider use, before the priority  date, than is true. However, I am not convinced that his statements were intended to mislead. Had the examiner known of the actual situation I am not satisfied that the outcome would have been different. Given that first use of the applicant's trade mark preceded the priority date of the cited trade marks and that the applicant's business proceeded along a path of continued expansion I am satisfied that the provisions of prior continuous use were satisfied. In these circumstances a geographic limitation would not have been appropriate. On this basis I am not satisfied that the requirements of section 62 have been established.
   Section 44

Subsections 44 (1) and (2) provide that a trade mark application must be rejected if the applied for trade mark is substantially identical with or deceptively similar to a trade mark which has an earlier priority date, and which is in respect of similar or closely related goods or services.

1. However section 44 also contemplates situations where although one trade mark is in conflict with another it may yet achieve acceptance. Where there has been honest concurrent use or where there are other circumstances that make it proper to do so the Registrar may accept an application under the provisions of subsection 44 (3).

2. Where an applicant can establish that its trade mark, the subject of a later filed application for registration, has been used continuously from a date earlier than the priority date of an otherwise conflicting application for registration, or registration, for similar goods or services, the later application may be accepted under the prior use provisions of subsection 44 (4).

3. Mr Pollock submitted that the applicant's and the opponent's trade marks are deceptively similar and referred to the various authorities in support of his submission.. However, it is not in dispute that the essential feature of each trade mark is the expression 'THE GOOD GUYS'. Clearly the trade marks are deceptively similar and they are used in respect of the same services. The provisions of subsection 44 (4) were applied because the evidence shows that the applicant used its trade mark continuously from a date prior to the priority date of the cited trade marks.

4. Section 44 (4) of the Act deals with use of an applied for trade mark before the priority date of an earlier filed trade mark. It does not deal with first use of a trade mark. Despite the declarations in answer to the opposition I am satisfied that the opponent and its predecessors in business have used their trade mark since 1989 and thus were the first to use the trade mark. The evidence shows that the opponent's primary trade mark is PACIFIC HI-FI but THE GOOD GUYS IN HI-HI is used as a trade mark in conjunction with it. The words are clearly displayed on signage and in advertisements in the local press and are heard on television commercials. Additionally the Yellowpages™ advertisements show use of trade mark number 765898 well in advance of the priority date of the subject application and date of first use of any of the applicant's trade marks.

5. I think it is common knowledge that from childhood games one recognizes 'the good guys' as the 'goodies' or the heroes and 'the bad guys' as the 'baddies' or villains. Everyone wants to be a 'Good Guy' because the 'Good Guys' are the winners. For this reason it is an expression that other traders are likely to independently think of and decide to use in respect of their services. I think that in this case two separate entities have honestly thought of these words and decided to incorporate them into their trade marks because positive feelings are generated by these words. The likelihood of deception and confusion between the trade marks is to some extent lessened by the differences in the marks. The applicant's trade mark incorporates a distinctive device and one of the opponent's trade marks incorporates a portrait of two of the Di Bartolo brothers the other combines the words  'THE GOOD GUYS' with the words 'IN HI-FI' to form a catchy and memorable expression. The ground of opposition under section 44 has not been established.

Section 60

1. In order to establish a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark or trade marks that have acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark/s on which the opponent relies to be registered or the subject of application/s for registration.

2. The applicant's trade mark is deceptively similar to the opponent's trade marks and the services claimed encompass those of the opponent's trade marks. It is only necessary for me now to decide if the opponent's reputation is such that a significant section of the public would be likely to be deceived or confused if the applicant uses its trade mark.

3. Mr Pollock submitted that the trade marks have been strongly promoted within the Sydney metropolitan and regional areas particularly in major shopping centres such as that in Liverpool. Mr Pollock claimed that the various awards won by the opponent support a claim that the opponent has acquired the requisite reputation within this area of use.

4. Mr Oberin submitted that to establish the section 60 ground the opponent must establish that there is a 'real risk' that a 'substantial number' of people would be deceived or confused relative to the size of the market. He argued that the underlying policy of the presumption of registrability must be considered per Registrar of Trade Marks v Woolworths Ltd, 45 IPR 411. He conceded that trade mark number 765898 was in use before the priority date of the subject application but submitted that the evidence does not show the extent of the reputation of the trade mark at the priority date of 25 February 1999.

5. Mr Oberin noted that Kenny J  in McCormick & Co v Mary McCormick (2001) 51 IPR 102 said,

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

6. I have no evidence before me of the volume of sales or the amounts spent on advertising the opponent's trade marks. The opponent advertises in the local press of regional districts in New South Wales but I do not know how widely these papers are distributed. Nor do I know from the evidence if the opponent has placed television commercials since 1991. The reports of business and community awards won by the opponent indicate that they have been won by Pacific Hi-Fi so that it would appear that any reputation acquired by the winning of these awards would accrue more to that entity than to 'THE GOOD GUYS'. The opponent's advertisements for PACIFIC HI-FI subsequent to the winning of awards include the expression, THE GOOD GUYS IN HI-FI', along with details of the awards, so that it is possible that a measure of the reputation also attaches to these words.

7. It was held by Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302, that reputation in Australia cannot be assumed - it must still be established as a question of fact. On the basis of the evidence filed I am not satisfied that the opponent had acquired the requisite reputation at the relevant date and as a consequence I find that the section 60 ground has not been established.

Decision

1. The opponent has failed to establish any of  the grounds of opposition  on which it relied so the opposition is unsuccessful. I therefore direct, that trade mark application number 786609 may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Both parties have sought an award of costs. As the opponent has been unsuccessful in its opposition I direct that the opponent pay the applicant's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Mary Skivington

Hearing Officer

Trade Marks Hearings

29 February 2004