Simpla Plastics Australia Pty Ltd v John Anthony Neville Bromberger

[1999] ATMO 69

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF
TRADE MARKS, WITH REASONS

Re:Opposition by Simpla Plastics Australia Pty Ltd to the registration of trade mark application number 714515 in the name of John Anthony Neville Bromberger.

Background:
The Trade Marks Office has examined application 714515 and accepted it for registration.  The applicant is John Anthony Neville Bromberger, whom I will refer to simply as “the applicant” from this point.

The application was filed on 18 December 1995.  The mark in question is the word PELICAN and the class 10 goods for which registration is sought are:

Medical apparatus, devices and articles especially aids used in the lifting, transfer and re-positioning of patients such as belts, slings, harnesses, specially designed bed sheets; physiotherapy apparatus including back braces, lumber supports; patient pressure care aids such as air cushions; safety restraints used for medical purposes". 

Simpla Plastics Australia Pty Ltd ("the opponent") opposed registration of the application, on a wide range of grounds.  However, in the lack of any submission from the opponent, I believe the only ground that is arguable is the allegation that the applicant is not the owner of the trade mark for all of the goods specified.

The opponent conducts a business selling specialised medical supplies, in particular vaginal speculums, PVC mattress covers and stoma appliances.  The opponent claims to have used the trade mark PELICAN on these goods, for sale in Australia, before the applicant either used its trade mark or filed the opposed application.

The opposition process has followed the course set out in the regulations.  The applicant and opponent have filed evidence in support of, and in answer to, the opposition.  The evidence can be summarised as follows:

The opponent's evidence in support consists of a declaration by Geoffrey Holman.  Mr Holman is a director of the opponent and his declaration goes to the ordering, delivery to Australia and subsequent sale of relevant goods.

In answer to the opposition, the applicant relied on his own declaration.  That declaration goes into the sale of PELICAN products, initially in Perth, by the company of which he is the principal and managing director.  It is supported by eight declarations made by medical consultants or those working in the fields of nursing or hospital supplies.  In general terms, all of those declarants are familiar with the applicant's use of the PELICAN trade mark but, if they know of the opponent, do not know it to be using the same mark.

I heard the opposition, under delegation from the Registrar of Trade Marks.  At that hearing, the applicant appeared, represented by its patent attorney, Kelvin Lord of the attorney firm of Kelvin Lord & Co.  Mr Lord made his submissions by telephone.  The opponent did not appear.

The issue:
As I have said, the opponent has an arguable case for only one ground of opposition, ownership.  Here, s 58 provides:  "The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark".

Where use is asserted before the filing date, the question of ownership comes down to first user of the same mark for the same kind of thing.  This comes, originally, from Hicks's Case (1897) VLR 636. See, for further detail, Aston v Harlee (1960) 103 CLR at 398-399, and D.R. Shanahan's Australian Law of Trade Marks and Passing Off, pp 157-159.  I reject Mr Lord's attempt to limit this to situations where I am able to infer that the applicant has deliberately appropriated another trader's mark.  The question is simply one of first use.  Motivation, provided that the use is trading use, does not enter into the picture.

The opponent has asserted that its use on some relevant goods can be documented for years from 1991 onwards, clearly prior to the filing date of the opposed application.

With this in mind, Mr Lord made detailed submissions to undermine the specifics of the opponent's claim.  In essence, he argued that there was always, in the opponent's case, a sufficient level of ambiguity about either where the mark was used, or what trade mark was actually in use.  He argued that any of the goods to which the opponent refers, for all that their manufacture may be in evidence, or their importation established, could have been sold or offered for sale under the trade mark SIMPLA. 

That is not, of course, to doubt the honesty of Mr Holman's declaration.  Mr Lord did not suggest such a thing.  None the less, if I am to decide that someone other than the applicant has a claim to first use before the filing date of this application, I need to see evidence of this.  Assertion can be given some weight, but not the same weight as clear visible evidence of the actual use of a trade mark, an indication of the offering for sale of goods from a particular trader.

Decision:
In my opinion, the applicant has not established that it had used the trade mark PELICAN prior to the date it filed the application for registration of that trade mark.  This applies to all three disputed lines, vaginal speculums, mattress covers and stoma appliances.

That is not to dispute the applicant's claim that he has been in business, as the principal of a company operating under the company name Pelican Manufacturing Pty Ltd, since 26 March 1990.  An accurate picture emerges from the catalogue in evidence as exhibit JANB 4.  Clearly, Pelican Manufacturing Pty Ltd sells a wide variety of goods under the PELICAN trade mark but there is no reference in the catalogue to the three lines of goods on which the opponent claims to be the prior user.

Therefore, the applicant's claim to ownership is, in respect of the three lines of goods in question, a claim to ownership of an apparently unused mark.  Any use of the PELICAN trade mark by the opponent, or anyone else for that matter, in Australia, for specific goods prior to the filing date of the application, can defeat such a claim in relation to those specific goods. 

At the hearing, Mr Lord's submissions dealt with each item of the opponent's evidence.  I do not intend to repeat all of the criticisms of the various pieces of evidence.  Some of them are well-founded.  What is critical is the instances where, despite the criticisms of the applicant, the opponent's claim has been established on the balance of probabilities.

I note that Mr Holman has declared:

On some occasions these were goods bearing the address details of the UK company, Pelican Healthcare.  On other occasions the goods were branded Pelican but had the address details and ordering codes used by Simpla Plastics Australia Pty Ltd.

Mr Lord argued that the opponent's case suffered from a lack of clarity of the relationship between the Australian and UK companies called Simpla Plastics.

He noted exhibits GLH 1 and 2.  The first of these is headed with the company name Simpla Plastics Ltd, and with the trade mark SIMPLA, and originates in the UK.  The second is a comparable-looking document, from the same address and with the same fax number, albeit different phone numbers.  The second document is headed Pelican Healthcare Ltd, with both the word and the device of a pelican, as shown below.  The word PELICAN, where it appears in the oval border, is clearly marked ™.

Both of the invoices include a reference to vaginal speculums, among other items.  As Mr Lord noted, the product code for the invoiced items appearing on the PELICAN invoice matched a product code appearing in a SIMPLA catalogue that the opponent had brought into evidence.  On the other hand, the packaging for relevant PELICAN-brand goods is in evidence as exhibit KJH 4.  The trade mark PELICAN is very clear, as is a product code that matches the invoice.  I take it from this that, for whatever reason, the source of supply in the UK finds it convenient to offer both SIMPLA and PELICAN products; different brands that, product by product, are ordered by the same codes.  This is an adequate explanation and defeats the applicant's attempt to undermine the prima facie case.

With respect to mattress covers, a similar conclusion applies.  Prima facie, exhibits GLH 2 and FMH 4 to 9, taken together, satisfy me that the opponent has imported mattress covers under the trade mark PELICAN.

FMH 4 is a letter from Pelican Healthcare Ltd, referring to "the consignment of mattress covers" sent to the opponent.  It relates to a 1995 consignment, the invoice for which is in evidence as FMH 5.  This latter is headed as per the example I have reproduced above.  Like GLH 2, it shows no reference to a brand on the mattress covers but does refer to "Pelican carrier single matt cover". 

In view of submissions made by Mr Lord about the lack of evidence of the application of the trade mark directly to the goods, it is necessary to consider what evidence there is about these carrier bags because of the light this aspect sheds on the branding of the contents.  Exhibit FMH6 is a letter from Geoff Holman to Paul Hale, another director of the opponent company and also "the major shareholder and a director of Pelican Healthcare Ltd".  In this letter, Mr Holman notes that "your poly carrier bag is printed Pelican 'a division of Simpla'".  He asks if these are now redundant and available free. 

The reply from Pelican Healthcare is in evidence as exhibit FMH7.  It says:

In answer to your question, we are still using the "division of Simpla" carriers and are over-labelling that part with a Pelican label.  Today we have bulk stock what can be packed into carriers without over-labelling, and packed stock which cannot be unlabelled, if you get my gist. 

Prices for bulk stock and packaged stock are quoted.

Mr Lord was particularly critical of FMH 7, saying that the quotation of prices was not in itself a use in trade as it was not an actual order.  That would be correct if the applicant was not a middle-man in a commercial channel that was already operating in Australia. As McGarvie J put it in Settef V Riv-Oland Marble 10 IPR 402, at 417:

it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia.

With that in mind, I note exhibit FMH 8.  It is a fax transmission from Pelican Healthcare Ltd to the applicant.  It says simply "thanks for your prompt response and order of covers" but, given what follows, this "order" may not have been a direct response to FMH 7.  Pelican Healthcare Ltd also offers to supply carrier bags "at cost". 

What is equally important is the comments added to the faxed letter by Geoff Holman.  Mr Holman notes, my emphasis added:

This is now a bit too expensive for us.  We will revert to the packed type, despite the fact that they might look a bit naff with the over-labelling. 

Mr Holman then details an order for what, according to the product codes, was "packed stock which cannot be unlabelled" and which therefore presumably required over-labelling, at the penalty of looking "naf".  It is not clear exactly what happened to the document after this, though FMH9 confirms that the order had been received, and the goods packed for shipment.  The dispatch details of this were settled by June 1996.

Also in evidence is an example of a PELICAN mattress cover carrier.  Mr Holman, in his declaration, describes it as a "wrapper showing that Pelican Healthcare was originally a division of Simpla Plastics Ltd."  This is a simple carrier bag with a formed-in handle and plastic press-stud type closures.  The source details have been overprinted, apparently similarly to those referred to above.  The original details were: Pelican Healthcare Ltd, a division of Simpla Plastics Ltd, followed by an address in Cardiff.  The overprinting has the same address details but refers simply to Pelican Healthcare Ltd.

Additionally, there is a wrapping for a waterproof mattress cover.  It is simply a plastic bag and bears the PELICAN trade mark and a re-order code identical to one on an invoice from Pelican Healthcare Ltd, the UK company.  However, the address on the back of the wrapping is that of the opponent.  It is unclear at what point in the history of the trade mark that development occurred.

Without further belabouring the matter, the most likely meaning of these exhibits, taken together, is that, over time, a trade has been conducted under and by reference to the trade mark PELICAN in relation to mattress covers.  That happened before the applicant filed its application.

I do not agree with an assertion of the applicant, in its evidence in answer to the opposition.  Contrary to the view put by Mr Bromberger in his evidence, it appears to me that it would be sufficient to show that the conflicting goods were branded Pelican but that the opponent "may at the most have been acting as a distributor of products originating from the United Kingdom".  I am satisfied that there has been a realistic and commercial offer, under the trade mark, of stock for sale.  The commercial use of a trade mark in the importing of goods to Australia for resale here is clearly sufficient to found a claim that the source of those goods is the owner of the trade mark. See Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd, 116 CLR 254 at 271-2. If on the other hand the owner and user is actually the opponent, rather than the UK supplier, that must still be fatal to the application.

I do not, however, find any evidence that the opponent has used the trade mark PELICAN in relation to stoma appliances before the date of the opposed application.

Conclusion:
The opponent is the demonstrated first user in respect of mattress covers and vaginal speculums.  The applicant is not entitled to be registered as the owner for those goods.  Unless they are specifically excluded from the statement of goods, I will refuse the application 21 days after the date of this decision.

I note that Mr Lord anticipated my conclusion and has submitted that taking such a course invites future deception or confusion if two owners continue to use their trade marks for goods between which there is what Mr Lord calls a very close nexus.  However, much will now depend on the obtaining, by another party, of a similar registration.  That will have to be determined after future examination and any subsequent opposition.

If within the next 21 days the application is amended to my satisfaction, I will direct that registration proceed.  In that case, I will make no award of costs.

T. E. Williams
Hearing Officer
30 June 1999