SJM Developments Pty Ltd v S J M Property Developments Pty Ltd
[2024] ATMO 82
•30 April 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by SJM Developments Pty Ltd to registration of trade mark application number 2078464 (class 37) - SJM Property Developments (fancy) - in the name of S J M Property Developments Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Macpherson Kelley Lawyers Applicant: Cooper IP Pty Ltd |
Decision: | 2024 ATMO 82 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 58A, 58, 60 and 62A grounds of opposition – s 58 ground of opposition established in respect of some services – s 44 established for remaining services – trade mark refused. |
Background
On 27 March 2020 (‘Relevant Date’), an application for a trade mark was filed under the Trade Marks Act 1995 (Cth)[1] in the name of SJM Capital Group Pty Ltd (‘SJM Capital’) with the following details:
Trade mark number: 2078464
Trade mark:
(‘Trade Mark’)
Services: Class 37: Building of houses; Building construction; Building of commercial properties; Excavating; Construction; Concrete pumping services (‘Applicant’s Services’)
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
On 23 August 2021, this office received a request for full assignment of the application for the Trade Mark to S J M Property Developments Pty Ltd (‘Applicant’), which this office processed on 25 August 2021.
The acceptance of the Trade Mark was advertised on 15 December 2021. On 15 February 2022, SJM Developments Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose. On 10 March 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed its Notice of Intention to Defend on 9 May 2022.
On 15 August 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of a statutory declaration of Simon Peter Madden, Director and Secretary of the Opponent, dated 15 August 2022, with Exhibits SM-1 to SM-25 (‘Madden-1’).
On 17 November 2022, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Samuel John Morse, Director of the Applicant, dated 16 November 2022, with Annexures A to C (‘Morse-1’).[2]
[2] Whilst Morse-1 is titled as a statutory declaration, it does not meet the formal requirements for these documents. Nevertheless, Morse-1 does comply with the requirements for a declaration made under the Act.
On 23 January 2023, the Opponent filed its Evidence in Reply (‘EIR’) consisting of a statutory declaration of Simon Peter Madden, dated 18 January 2023 with Exhibits SM-1 and SM-2 (‘Madden-2’).
On 23 February 2023, the Applicant requested to be heard by way of written submissions. On 1 March 2023, the Opponent also requested to be heard by way of written submissions.
On 6 July 2023, the Opponent filed an additional statutory declaration of Simon Peter Madden, dated 5 July 2023, with Exhibits SM-1 to SM-4 (‘Madden-3’).
The Opponent filed written submissions on 15 January 2024. The Applicant filed written submissions on 25 January 2024. I am to decide the matter as a delegate of the Registrar of Trade Marks.
Onus and grounds
The SGP nominates grounds of opposition under ss 42(b), 44, 58A, 58, 60 and 62A. The Opponent has the onus to prove at least one ground of opposition[3] and the standard of proof is that of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
As a preliminary matter, Madden-1 and the declarations of Mr Morse contain blanket statements that their contents or parts of their contents are confidential. Such statements are difficult to reconcile with the discussion of publicly available records and information that occurs within the declarations. Plainly, the parties each have an interest in preserving its confidential information. However, I must provide reasons for my findings and in discharging my duty some information claimed to be confidential may require discussion. This is particularly notable where the declarations do not identify the allegedly confidential information. Accordingly, where such discussion is unavoidable, I use broad statements to minimise the risk of divulging commercially sensitive information.
EIS
Madden-1 provides the history of the Opponent and its trade marks. This includes Australian registered trade mark 1739909 for the word trade mark ‘SJM Developments’ (‘Opponent’s Trade Mark’) for various services in classes 36 and 37 (‘Opponent’s Services’).[5] The priority date of the Opponent’s Trade Mark is 8 December 2015. The Opponent claims to have used the Opponent’s Trade Mark since October 2012 for property development, building design, construction and property development related services.
[5] I reproduce the Opponent’s Services at Schedule 1 to these written reasons.
Madden-1 states that ‘the [website (‘Opponent’s Website’)] bearing the Opponent’s [Trade] Mark went live to the public on or around 17 October 2012’.[6] Exhibit SM-6 to Madden-1 shows screen captures of the Opponent's Website dated from 20 August 2013 to 2 March 2022. Screen captures of the Opponent’s Website dated in 2013 and 2014 show the words ‘Copyright SJM Developments’ and the year at the bottom and following trade mark in relation to property developments of residential apartments in Northcote and Hampton, Victoria:
(‘SJM’)
[6] Madden-1, [26].
Much of the other material in Exhibits to Madden-1 is dated well after the Relevant Date. Invoices issued by the Opponent are also exhibited and are dated in the years 2016, 2018 and 2022. The services that attach to these invoices are vague or redacted. Other Exhibits to Madden-1 include a business card, employee biography, screen captures of an employee’s Linkedin account and photographs of uniforms, all of which feature SJM.
EIA
Morse-1 provides the history of the Applicant and the Trade Mark. The Applicant claims it has used the Trade Mark since mid-2013 for building and construction services. Annexures to Morse-1 include two declarations[7] which were filed during examination of the application to secure acceptance under the provisions of s 44(4). Annexure B to Morse-1 is a declaration of Mr Morse, dated 13 August 2021 (‘Morse-2’). Morse-2 states that Mr Morse is the sole director of SJM Capital and the Applicant. Morse-2 declares that Mr Morse ‘intended to apply for the trademark under the entity [SJM Capital], however upon reflection I have now decided to submit a Request for a Full Assignment to [the Applicant] because this is the entity which has controlled this trademark since 2013 until now’.[8] Photographs of signs and banners on property developments are also present though undated at Annexure B to Morse-2, showing the Trade Mark. Morse-1 also annexes another declaration of Mr Morse dated 4 November 2021 (‘Morse-3’) which mentions the annual turnover for the Applicant and annexes various examples of apparent use of the Trade Mark.
[7] Rather than refer to these as exhibits to Morse-1 I have referred to them and their contents directly throughout these reasons.
[8] Morse-2, [4].
An email at Annexure B to Morse-3, dated 15 August 2014, shows preparations for marketing by a printed corflute sign which relevantly includes the following:
(‘2014 Trade Mark’)
Many other examples of apparent use of the Trade Mark in Annexures to Morse-3 are undated or dated after the Relevant Date.
EIR
Madden-2 makes various factual assertions about the application for the Trade Mark and intentions of the Applicant. I need not summarise the EIR further than this.
Preliminary matter
Madden-3 was filed after the period for evidence had ended and was not accompanied by any submissions explaining its relevance. Therefore, Madden-3 was filed out of time. Material filed out of time may be considered by the hearing officer pursuant to reg 21.15(4). A party must make a compelling case for giving such material weight when deciding the opposition.[9] The Opponent has provided no reasons for why I should give any weight to Madden-3. Regardless, the content of Madden-3 would not change the outcome in this matter. I confirm that I have not given weight to Madden-3.
Consideration
[9] Trade Marks Office Manual of Practice and Procedure, Part 51.2.5.
Section 58
Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark is established either by authorship and prior use, or by the combination of authorship, the filing of the application and an intention to use or authorise use.[10] Authorship refers to an applicant’s adoption of a trade mark with the intention of using it in Australia.[11] The requirement of ownership must be satisfied at the time the trade mark application was filed.[12] Importantly, a flaw in the ownership cannot be cured at a later date, after filing of the application of the trade mark.[13]
[10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham’).
[11] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
[12] Pham (n 10) [14].
[13] Pham (n 10) [44] and [47].
SJM Capital applied to register the Trade Mark on 27 March 2020. By doing so, it claimed to be the owner of the Trade Mark at the Relevant Date.[14] Mr Morse states that he ‘intended to apply for the trademark under the entity [SJM Capital], however upon reflection I have now decided to submit a Request for a Full Assignment to [the Applicant] because this is the entity which has controlled this trademark since 2013 until now’.[15] I note that no evidence establishes that there has been use of the Trade Mark, or a substantially identical trade mark, by the SJM Capital.
[14] Section 27.
[15] Morse-2, [4].
I summarise the relevant events shown in the evidence as follows:
- The Applicant was incorporated on 19 July 2013.
- The Applicant chose the Trade Mark in July 2013. The Applicant claims it commenced use of the Trade Mark at that time.
- On 27 March 2020 an application for the Trade Mark was filed in the name of SJM Capital.
- On 25 August 2021 this office processed the assignment of the application for the Trade Mark to the Applicant.
Morse-1 claims that the Applicant chose the Trade Mark.[16] As the director of the Applicant, Mr Morse is effectively the author of the Trade Mark and chose the mark using his initials. The evidence also confirms that it was Mr Morse or the Applicant, not SJM Capital, who has used the Trade Mark or a substantially identical trade mark. This conclusion is supported where Mr Morse states that it was always the Applicant who used and controlled the Trade Mark in relation to the Applicant’s Services since 2013 leading up to the Relevant Date. It is also supported by Mr Morse’s statements regarding the examples of use of the Trade Mark or substantially identical trade marks as having been by the Applicant.
[16] Morse-1, [3].
The evidence shows that Mr Morse, or the Applicant, used the Trade Mark in relation to building of houses which plainly is notionally included in the claimed services building construction, building of commercial properties and construction. An example of this is at Annexure C to Morse-3 which includes screen extracts of the Applicant’s website showing the Trade Mark in relation to building services, each dated 14 September 2018 and 8 October 2017.
Other examples are at Annexure B to Morse-3 in the emails which contain trade marks, such as the 2014 Trade Mark, which I consider to be substantially identical with the Trade Mark in relation to property development and building of houses. These emails appear to be from Mr Morse’s personal email address. Based on all of the evidence, I do not view any use of the trade marks to be by SJM Capital. Whether the use of these trade marks is that of Mr Morse or the Applicant, it is use by a person other than SJM Capital.
The Applicant’s evidence and submissions acknowledge that after further reflection the Trade Mark was assigned to the Applicant. The court in Pham outlined the relevant principles in these circumstances. In particular that, once the application for a trade mark is filed in the name of a party who is not the owner, there is nothing that can be done to cure the flaw in terms of ownership.
To the extent that the evidence suggests Mr Morse as having a role in the authorship, or ownership, of the Trade Mark is implicit due to a ‘unity of purpose’ between the Applicant, SJM Capital and Mr Morse, this does not assist the Applicant. On this point, I note the observation of Markovic J in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd:
Nexus or “unity of purpose” is not an answer to identification of the owner of a mark at the time an application for registration is made and does not answer a ground of opposition under s 58 of the … Act.[17]
[17] [2020] FCA 1078, [334].
I am satisfied on the evidence that a person other than SJM Capital was the owner of the Trade Mark at the Relevant Date by its authorship of, prior use or an intention to use, the Trade Mark in respect of the Applicant’s building of houses, building construction, building of commercial properties and construction.
Accordingly, the s 58 ground of opposition has been established in respect of building of houses, building construction, building of commercial properties and construction.
I note that none of the evidence establishes use of a trade mark in relation to excavating and concrete pumping services (‘Applicant’s Remaining Services’). Accordingly, the s 58 ground of opposition fails in relation to those services. I now must address whether a ground of opposition exists in respect of the Applicant’s Remaining Services.
Section 44
Section 44 relevantly provides:
44 Identical etc. trade marks
…
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
The Opponent relies on the Opponent’s Trade Mark which has a priority date of 8 December 2015, which is before the Relevant Date. The Opponent’s Trade Mark is in the name of a person other than the Applicant.
I now compare the trade marks. In order to find that that the trade marks are substantially identical, ‘it is necessary to find that a total impression of similarity emerges from a comparison between the two marks’.[18] I must compare the trade marks side by side, note the similarities and differences and assess the importance of these having regard to the essential features of the trade marks.[19] The only differences between the Trade Mark and the Opponent’s Trade Mark are font differences, the inclusion of the word ‘property’ and the stacking of the words forming the Trade Mark. These minor differences do not disturb the total impression of resemblance that emerges on a side by side comparison of the trade marks. I consider the Trade Mark to be substantially identical to the Opponent’s Trade Mark.
[18] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [256] (Yates J).
[19] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
I must next consider whether the Applicant’s Remaining Services are ‘similar’ to the Opponent’s Services. In this regard, s 14 relevantly provides that ‘services are similar to other services… (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services’.
Plainly all the Applicant’s Remaining Services are either the same as or are notionally included in the Opponent’s Services. I note that the Applicant’s Remaining Services would be provided by the same traders as the Opponent’s Services. The services are directed at the same consumers and they have a similar nature and purpose. I consider the Opponent’s Services to be of the same description as Applicant’s Remaining Services. Therefore, there is an earlier registered trade mark in the name of a person other than the Applicant, with which the Trade Mark is substantially identical in relation to similar services.
For completeness I note that the evidence does not show prior use or honest concurrent of the Trade Mark in relation to the Applicant’s Remaining Services such that ss 44(3) or 44(4) are applicable. There is no documentary evidence showing use of the Trade Mark for these services. Further, none of the Applicant’s evidence of turnover figures identifies what value could be attributed to the Applicant’s Remaining Services.
Accordingly, the Opponent has established the s 44 ground of opposition in relation to the Applicant’s Remaining Services.
Decision
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has established grounds of opposition under ss 44 and 58. I refuse to register trade mark 2078464.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or discretion.
Costs
The Opponent has sought its costs, which generally follow the event. I award costs against the Applicant pursuant to s 221 in accordance with schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 April 2024
Schedule 1
Class 36: Real property management; management of property; property portfolio management; real estate services relating to property development; advisory services relating to property management
Class 37: Advisory services relating to property development (building and construction services); advisory services relating to building and construction materials; advisory services relating to the alteration of buildings; advisory services relating to the construction of buildings; advisory services relating to the renovation of property; development of land (construction); housing development (building and construction services); building of houses and multiple dwelling buildings; building of commercial properties; building project management; project management (building and construction supervision); on site building project management; real estate development (building and construction services); property development services; development of property (building and construction services); services relating to the renovation of property; project preparation relating to building renovation
(‘Opponent’s Services’)
0
6
4