Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation

[2004] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by Shahin Enterprises Pty Ltd to registration of trade mark application 797721(4, 25 & 32) - ON THE RUN - filed in the name of Exxonmobil Oil Corporation.

Delegate:	Jock McDonagh
Representation:	Opponent:  No appearance (submissions filed by Madderns Patent & Trade Mark Attorneys) Applicant:  Gregory Chambers, of Phillips Ormond Fitzpatrick Patent & Trade Mark Attorneys
Decision:	1. Opposition dismissed, application to proceed to registration 2. Costs awarded against the opponent

Background

1. Exxonmobil Oil Corporation, a New York Corporation, (“the applicant”) has filed application to register the following trade mark:

Application Number:	797721
Priority date:	18 June 1999
Goods:	Class 4: Oils and greases and other lubricants, fuels, including petrol, kerosene, liquified natural gas, petroleum gas and other petroleum products in this class, illuminants Class 25: Clothing, footwear and headgear Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages
Trade Mark:	on the run
Advertised:	28 June 2001

1. On 26 September 2001, Shahin Enterprises Pty Ltd (“the opponent”) filed a notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified seven grounds of opposition, pursuant to ss 41, 42, 43, 44, 58, and 59 of the Act, and on the ground that registration of the mark would prejudice the opponent in the conduct of its business.

   Evidence

2. The opponent filed and served the following evidence in support of the opposition:

Date	Declarant	Description	Exhibits	Known As
Evidence in	Support
25.03.2002	Yasser SHAHIN	Company director and general manager.	First to Fourth Schedule	Shahin
20.03.2002	Alun William THOMAS	Patent attorney	AWT1	Thomas

1. The applicant did not file any evidence.

   Grounds of Opposition

2. The opponent did not appear at the hearing.  According to its Trade Mark Attorneys, it elected to rely on written submissions that specifically relied only upon the section 58 ground.  The onus is on the opponent to make out its grounds of opposition.  I dismiss the remaining grounds of opposition.

3. 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, in the time before filing, 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.

4. The prior use must be public use in Australia of the mark as a trade mark: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, at 432-4.

5. The parties substantially agreed on the relevant tests to be applied in establishing the ground, which I have summarized above.  Where the parties did not agree was on the issue of authorship, and what constituted prior public use of the mark.

6. The opponent submitted that between January 1999 and the priority date, the opponent market-tested business names including on the run, registered business names in New South Wales and South Australia that included or comprised the words on the run and arranged for signage to be designed that incorporated the words on the run.  These steps were submitted to be public use of the trade mark. Such signage commenced use in July 1999: the exact date is not specified in the opponent’s evidence. However, in its submissions it states that public use commenced “since at least 19 July 1999”.  The opponent was also relying on its authorship in the sense that it was first to adopt the mark with an intention to use it as a badge of origin. 

7. The applicant’s response can be summarized as stating that the actions before the priority date did not amount to public trade mark use, but in the event that I should find that the opponent’s actions constituted trade mark use then it was not use in respect of the same kind of goods as those of the applicant.

8. Authorship and intention, without actual prior use, are not enough to establish a greater claim to ownership than that of an applicant for the same mark.  As pointed out in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 1) (1980) 145 CLR 457, at 477, “It is settled that proprietorship … is demonstrated by prior public user of a distinctive mark or authorship and the making of an application”.

9. The registration of a business name does not of itself constitute use as a trade mark.  A business name may or may not be used as a trade mark in relation to goods depending on the nature of the use to which the business name is ultimately put.  The Registrar has consistently held that business name registration falls short of establishing trade mark use.  See, for example, Active Concepts Pty Ltd v True North Consulting Pty Ltd (2003) 58 IPR 572 at 574 and Republic Home Loans Pty Ltd v The CIA Pty Ltd (2001) AIPC ¶91-683 at 39,293.

10. The opponent submitted that the business name registrations and arranging of signage demonstrated that it had clear intentions and was committed to trade in the sense found to be trade mark use in Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517. In that case, steps included obtaining business cards, printing of letterheads, and approaching and soliciting potential advertisers for placing advertisements. The opponent also referred to Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331 as demonstration of the same principles.

11. I do not consider that the opponent’s preparatory actions were use in a public sense as were those demonstrated in the cases cited above.  None of the opponent’s preparatory activities were of a public, commercial nature that were establishing the business and committing it to trade.  In Buying Systems, letterhead and business cards were being used to establish advertisers in the yet to be published magazine.  In Sizzler, there were business dealings regarding franchise arrangements and the purchase and conversion of existing restaurants. 

12. I am not satisfied that the opponent has established prior use of its mark.. Accordingly, I dismiss this ground of opposition.

    Conclusion

13. The opponent has not established any of its grounds of opposition.  Accordingly, I dismiss the opposition.

14. The trade mark application may therefore 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

15. The applicant sought its costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    16 August 2004