Scott Park Homes Pty Ltd v Scott James Park

[2009] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by SCOTT PARK HOMES PTY LTD to registration of trade mark application 1100731(36, 37) - SCOTT PARK - filed in the name of SCOTT JAMES PARK and Opposition by SCOTT JAMES PARK to registration of trade mark applications 1110870 and 1110871(36, 37) - SCOTT PARK HOMES and device and SCOTT PARK - filed in the name of SCOTT PARK HOMES PTY LTD

Delegate:

Claudia Murray

Representation:

Opponent 1100731 (and Applicant 1110870 and 110871): Ben Fitzpatrick of Counsel, instructed by Griffith Hack, Patents, Trade Mark Attorneys, Lawyers, Perth.

Applicant 1100731 (and Opponent 110870 and 110871): Minter Ellison Lawyers, Melbourne (written submissions only).

Decision:

2009 ATMO 34

1100731 - Section 52 opposition - opposition successful under sections 58 and 60 – application refused - costs awarded against applicant.

1110870 and 110871 - Section 52 oppositions - sections 44, 58 and 60 – oppositions unsuccessful - applications to proceed to registration - costs awarded against opponent.

Background

1. This is a decision relating to cross oppositions between Scott Park Homes Pty Ltd and Scott James Park. It is convenient to issue a single written opposition decision relating to all three applications, numbered 1100731, 1110870 and 1110871, as the evidence is either the same or very closely related, and the matters were argued before me during a single hearing on 24 February 2009.

2. Trade mark application number 1100731 was filed by Remrose Pty Ltd (‘Remrose’) on 24 February 2006, for the plain word trade mark SCOTT PARK. The application as it now stands covers the following services in classes 36 and 37 of the Nice Classification of Goods and Services:

   Class: 36 Real estate services

   Class: 37 Building and construction services

3. After the successful resolution of a formality issue of misclassification raised by the examiner, the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks dated 29 June 2006. On 29 September 2006, Scott Park Homes Pty Ltd (‘SP Homes’) filed notice of opposition to registration of the trade mark. Ten grounds of opposition under the Trade Marks Act 1995 (‘the Act’) were listed in the notice.

4. On 10 July 2007, ownership of application number 1100731 was assigned from Remrose, to Scott James Park (‘Scott Park’ or ‘Mr Park’). Mr Park is sole Director of Remrose.

5. Trade marks applications numbered 1110870 and 1110871 were filed by SP Homes on 3 May 2006. Application number 1110871 is for the plain words SCOTT PARK, and 1110870 is for the word and device trade mark:

1. The applications cover the following services in classes 36 and 37 of the Nice Classification of Goods and Services:

   Class: 36 Real estate services leasing

   Class: 37 Building and construction services.

1. The applications were examined, and the examiner raised the earlier trade mark application for SCOTT PARK (number 1100731) as a barrier to acceptance of both applications. Evidence of prior use of the trade marks was provided by SP Homes, and on 7 September 2006, the applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks. The following endorsement was applied to the applications: ‘Provisions of sub-section 44(4) applied’. On 11 October 2006, Remrose filed notices of opposition to registration of the trade marks. Seven grounds of opposition were listed in the notice.

2. On 7 August 2007, this Office recorded that Remrose’s interests in opposing the applications, in terms of section 53 of the Act (‘Circumstances in which opposition may proceed in name of a person other than the person who filed the notice’) had been transferred to Scott Park.

3. Evidence in support, evidence in answer and evidence in reply was duly served and filed in relation to the 1100731 opposition, as was evidence in support and evidence in answer on the oppositions to 1110870 and 1110871. By letter of 20 December 2008, SP Homes requested that a hearing on 1100731 be deferred until the oppositions on 1110871 and 1110871 were also ready for hearing, and that all matters then be heard together. This was agreed to, and on 24 February 2009, the three oppositions came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Canberra. Mr Benjamin Fitzpatrick of Counsel, instructed by Griffith Hack, Perth, represented SP Homes by telephone. Scott Park was not represented at the hearing, but Minter Ellison Lawyers provided brief written submissions on his behalf.

Evidence

1. The evidence in relation to the 1100731 opposition comprises:

Evidence in Support

ØStatutory declaration of Paul Silvestro, with Exhibits PS-1 to PS-16, declared 28 March 2007

Evidence in Answer

ØStatutory declaration of Scott James Park, with Exhibits SJP-1 to SJP-5, declared 27 July 2007

Evidence in Reply

ØStatutory declaration of Paul Silvestro, with Exhibits PS-1 to PS-7, declared 8 November 2007

ØStatutory declaration of Giuseppe Marchese, with Exhibits GM1 to GM-4, declared 8 November 2007

ØStatutory declaration of Neil Anthony Alessandrino, with Exhibits NA-1 to NA-4, declared 8 November 2007.

1. The evidence in relation to the 1110870 and 1110871 oppositions comprises:

Evidence in Support

ØStatutory declaration of Scott James Park, with Exhibits SJP-1 to SJP-7, declared 11 July 2007 (in respect of 1110870)

ØStatutory declaration of Scott James Park, with Exhibits SJP-1 to SJP-5, declared 11 July 2007 (in respect of 1110871)

Evidence in Answer

ØStatutory declaration of Paul Silvestro, with Exhibits PS-1 to PS-20, declared 8 November 2007 (in respect of 1110870)

ØStatutory declaration of Paul Silvestro, with Exhibits PS-1 to PS-21, declared 8 November 2007 (in respect of 1110871)

ØStatutory declaration of Giuseppe Marchese, with Exhibits GM1 to GM-4, declared 8 November 2007declared 8 November 2007 (in respect of 1110870)

ØStatutory declaration of Giuseppe Marchese, with Exhibits GM1 to GM-4, declared 8 November 2007declared 8 November 2007 (in respect of 1110871)

ØStatutory declaration of Neil Anthony Alessandrino, with Exhibits NA-1 to NA-4, declared 8 November 2007 (in respect of 1110870)

ØStatutory declaration of Neil Anthony Alessandrino, with Exhibits NA-1 to NA-4, declared 8 November 2007 (in respect of 1110871).

1. The early declarations of Mr Silvestro and Mr Park give a history of the establishment of SP Homes. Briefly, SP Homes was registered as a company in November 1997. It was established as a joint venture between Mr Silvestro and Mr Park, a registered builder, to design and build residential project homes in metropolitan Perth. This venture enjoyed considerable popularity and business success.

2. From November 1997 to December 2005 Mr Park was the Managing Director and Secretary of SP Homes, and Executive Director of five other closely related companies. His responsibilities included overseeing sales, marketing, branding and construction. In December 2005 Mr Park resigned from all six companies, and no longer has any association with them. While Mr Park indicated that he ultimately consented to the termination of his relationship with those companies, many of which still bear his name; from all accounts the process of separation generated considerable acrimony within SP Homes, and especially between Mr Silvestro and Mr Park. The evidence reflects that their dispute spilled into the courts, and thence to the media, before a settlement which appeared (at the time) to satisfy both parties could be reached.

3. It is regrettable that the basis for these current oppositions appears to lie squarely upon a fundamental misunderstanding between the parties about where a person’s inalienable rights to use his or her own name[1] end, and the rights of an honest user of that name as a trade mark begin.

   [1] See subsection 122(1), ‘When is a trade mark not infringed?’:

   ‘In spite of section 120, a person does not infringe a registered trade mark when: (a) the person uses in good faith: (i) the person’s name or the name of the person’s place of business”.

Grounds of opposition: 1100731

1. Prior to the hearing, Mr Fitzpatrick indicated that, from those grounds listed in the notice of opposition, the grounds which would be pressed in relation to trade mark number 1100731 were in terms of sections 58, 59 and 60. An opponent’s success in a single ground of opposition is often sufficient to prevent registration of a trade mark. For the sake of brevity, I will limit my discussion here to the sections 58 and 60 grounds of opposition, which are most pertinent in the particular circumstances of this dispute.

Section 58

1. Section 58 of the Act provides:

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

2. To succeed on this ground, absent any evidence of use by an applicant before the priority date of its application, (as is the case here), an opponent must be able to demonstrate use prior to that date, of the same or a substantially identical trade mark, in relation to the same services.[2]

   [2] Re Hicks Trade Mark (1897) 22 VLR 636.

3. In this case, Mr Park has provided no independent evidence of his own use on the services specified, of his own name as a trade mark, prior to the date of filing his application. Indeed, he has provided no evidence of such use at all, relying instead on his claim that the evidence provided by SP Homes should all properly be attributed to him personally, as ‘the name and face behind the business’, and the registered builder whose registration was the basis upon which [SP Homes] operated. He declares:

   Over the past ten years, I have built a substantial reputation in the Western Australian building industry. My name and image are well known to people in the industry and consumers in that State. The reputation I have built over the past decade is distinct from the reputation of the Opponent.

   I believe that consumers associate me personally with providing superior customer service and quality built homes. Clients, trade people and suppliers alike rely on my personal commitment to the business for peace of mind.[3]

   [3] Scott 1, paras 16 to 18.

4. By contrast, SP Homes has provided comprehensive evidence which supports its claim to trade mark use of the words SCOTT PARK on the relevant services, dating from 1998, when the company co-founded by Mr Silvestro and Mr Park first began trading. There is no dispute between the parties that their respective services of interest are ‘the same’. Indeed, for the reasons I have given above, in this case they are exactly the same services. The identity of the services being thus agreed, the remaining issues for determination are whether SP Homes has used an identical, or substantially identical, trade mark on those services, prior to the filing date of the SCOTT PARK application.

5. The accepted test for substantial identity involves side-by-side visual comparison of the relevant trade marks[4]. A finding of substantial identity means that ‘in a real sense a claim to proprietorship of the one [trade mark] extends to the other.’[5]

   [4] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414-5.

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd, 31 IPR 375, at 391.

6. The evidence shows very early (1998) use of a device trade mark showing the words ‘SCOTT PARK The Home Builder’, followed by use of the plain words SCOTT PARK HOMES and also the word and device SCOTT PARK HOMES trade mark pictured earlier. Applying the tests I have referred to above, I am satisfied that SP Homes has demonstrated prior use of the latter, substantially identical, trade marks, which supports its claim to ownership of the applied-for trade mark.

7. Mr Park has argued in his evidence, and in his submissions for the hearing, that he did not agree to sell or assign any goodwill in his name to SP Homes. He supports this with the observation that SP Homes has not put on any evidence demonstrating that he did assign rights to the SCOTT PARK trade mark to SP Homes, following his resignation as director. However, as Mr Fitzpatrick pointed out at the hearing, Mr Park himself has not supported his own claim to common law rights in the SCOTT PARK trade mark with any evidence that he has ever used the term as a trade mark in relation to the claimed services. Neither has he supported his alternative claim that SP Homes agreed to transfer its common law rights in the trade mark.

8. Mr Fitzpatrick continued:

   Mr Park’s assertion misunderstands the true legal nature of this goodwill, and the ability for it to be disassociated from any business built up by Scott Park Homes. It is not possible to assign or transfer in any way, goodwill in a common law mark unless such transfer is accompanied by a sale of the business itself.  See Federal Commissioner of Taxation vJust JeansPty Ltd (1987) AIPC 90-388. Accordingly, even if the evidence suggested that there was any such arrangement between the two parties, as a matter of law the only means by which the trade mark could have been assigned would have been with the transfer of the business itself. This plainly has not occurred.

   …

   Mr Park’s evidences also suggests a misunderstanding of the true nature of a trade mark. Scott Park Homes accepts that the name of the company and the trade mark was chosen because of Mr Park’s name. Scott Park Homes also understands and accepts that Mr Park is entitled to use his name to indicate his involvement in any future endeavours. However, Mr Park is not entitled to ownership and use of the trade mark rights in SCOTT PARK in relation to the claimed services. These rights are properly owned by Scott Park Homes.

9. I agree with Mr Fitzpatrick’s assessment of the situation here. I find SP Homes’ claim to ownership of the SCOTT PARK trade mark has been established. Its ground of opposition under section 58 has succeeded.

Section 60

1. The subject trade mark application was filed before a significant amendment to section 60 came into force on 23 October 2006. Accordingly, the pre-amendment version of the section applies.[6] At that time, section 60 read:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)      it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

   (b)      because of the reputation of that other trade mark the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   [6] Apple Computer Inc. v Todaytech Group Pty Ltd, 2007 ATMO 40

2. The comparison is between an existing substantially identical or deceptively similar trade mark that ‘had acquired a reputation in Australia’, and the opposed trade mark. The relevant date for assessing the reputation of the opponent’s mark is the filing date of the applicant’s trade mark, 24 February 2006. It is not a requirement of section 60 that the trade mark relied upon by an opponent is either an applied-for or registered trade mark, merely that it has acquired a reputation as at the priority date of the opposed trade mark.

3. In relation to this ground, the SP Homes relied upon its use of the common law trade marks described above. I have already found those trade marks to be substantially identical to the applied-for trade mark. Reputation in a trade mark can be demonstrated in a variety of ways, some less obvious than others, as Kenny J discussed in McCormick & Co v Mary McCormick (2001) 51 IPR 102. After exploring some such possible options, she commented:

   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.[7]

   [7] McCormick & Co v Mary McCormick (2001) 51 IPR 102, at 129

4. In this case, as Mr Fitzpatrick pointed out at the hearing, SP Homes’ evidence clearly demonstrates that, over the ten years immediately prior to the relevant date, it had indeed achieved the requisite high volume of sales and substantial advertising expenditure envisaged by Kenny J. I find that, at the time the opposed trade mark was filed, SP Homes’ reputation in its substantially identical trade marks was such that use of the opposed SCOTT PARK trade mark on the relevant services was likely to result in deception and confusion of the public. I find the ground of opposition under section 60 to have succeeded.

Decision and costs: 1100731

1. Subsection 55(1) of the Act provides:

   (1)      Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)      to refuse to register the trade mark; or

   (b)      to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has recently referred to the standard of proof required in terms of a ‘balance of probabilities’.[8] I find that the opponent has met the onus upon it, in terms of the grounds of opposition under sections 58 and 60 argued at the hearing. Accordingly, and subject to a successful appeal from my decision, I refuse to register trade mark application number 1100731.

   [8] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599

3. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Mr Scott Park.

Grounds of opposition: 1110870 and 1110871

1. Mr Park’s notice of opposition listed seven grounds of opposition. However, the brief written submissions provided on his behalf did not specify the grounds to be considered at the hearing, where he was not represented. Rather, the submissions re-iterated Mr Park’s basic claims relating to his ownership of the trade marks and entitlement to any reputation they had accrued. These arguments relate to sections 58 and 60, the provisions of which are described above.

2. As I have also discussed above, Mr Park has provided no evidence of trade mark use or reputation in support of his claims. I have found in relation to trade mark number 1100731, that both ownership and reputation in the disputed SCOTT PARK trade marks lies with SP Homes. Accordingly, I find Mr Park’s opposition under sections 58 and 60 to be unsuccessful. For completeness, I also find that Mr Park’s evidence was also insufficient for any of the other grounds of opposition raised in the notice (with the exception of section 44, which I will discuss briefly below) to be made out.

Section 44

1. In his submissions, Mr Fitzpatrick made some observations regarding Mr Park’s prior application number 1100731 which, it will be remembered, originally posed a barrier to acceptance of the later SP Homes applications, but was overcome as a citation by the provision of evidence of prior use. Of course, as Mr Fitzpatrick rightly pointed out, should SP Homes be successful in preventing registration of Mr Park’s earlier application, the citation would no longer apply. However, to the extent that it might prove necessary, Mr Fitzpatrick wished me to note that SP Homes’ evidence would support an opposition finding that registration could proceed in terms of both prior (subsection 44(4)), honest concurrent use (44(3)(a)), and other circumstances (44(3)(b)).

2. It appeared that Mr Park’s lawyers had expected the findings I have now made in relation to his earlier application, as they did not raise the issue of section 44 at all in their submissions. However, for completeness here, I should take into account the possibility that an appeal from my decision on trade mark number 1100731 may otherwise delay the progress of the later SP Homes applications to registration. I therefore find that, in the event of an appeal in relation to 1100731, perpetuating for the time being the ground of opposition under section 44 in relation to trade marks numbered 1110870 and 1110871, they would be entitled to proceed to registration in terms of subsections 44(3) and (4) of the Act.

Decision and costs: 1110870 and 1110871

1. I find that none of the grounds of opposition to the SP Homes applications have been established. Accordingly, the applications 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 unless the appeal is decided in favour of registration, or discontinued.

2. I award costs, according to the official scale, against the unsuccessful trade mark opponent in this matter, Mr Scott Park.

Claudia Murray

Hearing Officer

Trade Marks Hearings

28 May 2009