Societe Guy Laroche v Uniopt GmbH - [2005] ATMO 54

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by Societe Guy Laroche to registration of trade mark application 925452(9) - ROBERT LA ROCHE - filed in the name of Uniopt GmbH.

Delegate: Terry Williams

Representation: Opponent: Michael O’Donnell, Phillips Ormonde & Fitzpatrick, patent attorneys
Applicant: written submissions by Adrina Chia, solicitor, Schweizer Kobras

Decision: S 52 opposition: ROBERT LA ROCHE not deceptively similar to GUY LAROCHE – S 44: spectacles and sunglasses not of same description as ‘fashion goods’ in classes 25, 18 14 – s 60: overseas reputation not shown to be extensive, nor to have extended to Australia – no grounds established, registration to proceed.
Background

Uniopt GmbH (“the applicant”) has applied to register the trade mark ROBERT LA ROCHE in respect of spectacle frames, spectacle cases, optical glasses and sunglasses.
The Trade Marks Office has examined the application and advertised it for possible registration. However, Societe Guy Laroche (“the opponent”) has filed a notice opposing registration of the trade mark.
Very briefly, the opponent is a company that now constitutes the clothing design business started by Guy Laroche in the 1950s. More recently M. Laroche was awarded the Knight of Legion of Honour, in 1987, in recognition of his “outstanding works and contribution to the French economy”.
Evidence
The opposition has involved the service and filing of evidence in terms of the scheme set out in part 5 of the Trade Mark regulations, with evidence in support of the opposition, in answer to it and in reply. I also granted permission to the opponent to serve and rely on further evidence.
Opponent’s evidence in support

Declaration by Annexures

Jena Francois Ferrandiz 1-10
Applicant’s evidence in answer

Statement by Annexures

Michael Pachleitner A - W

David Wymond A
Opponent’s evidence in reply

Declaration by Annexures

Saskia Jahn SJ-1
Opponent’s further evidence

Declaration by Annexures

Michael O’Donnell MOD 1-4

I note that Mr O’Donnell may well have raised a valid procedural point with regard to the applicant’s evidence. This is not in the form of a declaration, despite the express requirement of reg 21.17(1). The format, including making of the declaration before an authorized person, is controlled by reg 21.6 and 21.7. Ordinarily, staff at the Trade Marks Office would raise this matter with a party that filed such non-declaratory material by way of evidence. However, this is a courtesy only. I think that the recipient, if it wishes to dispute the matter, also has some responsibility to bring the failing to light, rather than to leap from ambush at the hearing. I will give weight to the statements; to allow the opponent to strike out the applicant’s entire filing of material so late in the day would be completely unjust in the present case. It will be observed that, in the matters that follow, very little hangs on the applicant’s material. Additionally, the opponent itself relies on the material when it is convenient to do so, in order to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] ATMO 54
Decision Date: 30 September 2005

CaseChat Overview and Summary

Societe Guy Laroche (the opponent) opposed an application by Uniopt GmbH (the applicant) to register a trade mark. The dispute concerned the ownership of the trade mark and whether the applicant was entitled to registration. The decision was made by Terry Williams, a Hearing Officer, under delegation from the Registrar of Trade Marks.

The legal issues before the court were whether the applicant was the owner of the trade mark under section 58 of the relevant legislation, and whether the applicant's proposed mark was deceptively similar to existing marks under sections 44 and 60. The opponent argued that the trade mark was actually owned by Dr. Micheal Pachleitner, the Chief Executive Officer and majority shareholder of the applicant, rather than the applicant company itself.

The Hearing Officer considered the evidence presented, including statements from Dr. Pachleitner indicating an informal licence agreement between himself and the applicant. While acknowledging a procedural irregularity in the applicant's evidence, the Hearing Officer decided to give it weight, deeming it unjust to strike out the entire filing at a late stage, particularly as little of the applicant's evidence was critical to the decision. The Hearing Officer found that no ground of opposition had been established, noting that evidence of use of the trade mark in Australia was minimal and some documentary evidence was of insufficient date.

Consequently, the Hearing Officer ordered that the trade mark application could proceed to registration one month from the date of the decision, unless an appeal was filed. The opponent was also ordered to pay the applicant's costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Very briefly, the opponent is a company that now constitutes the clothing design business started by Guy Laroche in the 1950s. More recently M. Laroche was awarded the Knight of Legion of Honour, in 1987, in recognition of his “outstanding works and contribution to the French economy”. Evidence The opposition has involved the service and filing of evidence in terms of the scheme set out in part 5 of the Trade Mark regulations, with evidence in support of the opposition, in answer to it and in reply. I also granted permission to the opponent to serve and rely on further evidence. Opponent’s evidence in support I note that Mr O’Donnell may well have raised a valid procedural point with regard to the applicant’s evidence. This is not in the form of a declaration, despite the express requirement of reg 21.17(1). The format, including making of the declaration before an authorized person, is controlled by reg 21.6 and 21.7. Ordinarily, staff at the Trade Marks Office would raise this matter with a party that filed such non-declaratory material by way of evidence. However, this is a courtesy only. I think that the recipient, if it wishes to dispute the matter, also has some responsibility to bring the failing to light, rather than to leap from ambush at the hearing. I will give weight to the statements; to allow the opponent to strike out the applicant’s entire filing of material so late in the day would be completely unjust in the present case. It will be observed that, in the matters that follow, very little hangs on the applicant’s material. Additionally, the opponent itself relies on the material when it is convenient to do so, in order to use the unsworn statement to bring the applicant’s claim of ownership into question. I would not want to put a premium on such strategies. In general, however, were the applicant needing to establish, for instance, a critical act of first user or the honesty of its adoption, reliance on unsworn statements would be risky.Grounds argued at hearing Ultimately, the matter was set down for me to hear and decide under delegation from the Registrar of Trade Marks. At the hearing, the opponent was represented by Michael O’Donnell, who made submissions by telephone. The applicant, having been served with the relevant evidence and given the opportunity to be heard, has made written submissions, prepared by Adrina Chia of the solicitor firm Schweizer Kobras.At the hearing, Mr O’Donnell relied on grounds under s 58, and under s 44 and 60. The latter pair have a common issue, for present purposes, of deceptive similarity.Section 58 This provision goes to lack of ownership. It is normally used to press a claim by another firm to the earlier use of the same trade mark for the same goods. However, it is also broad enough to deal with, as here, claims about a defect in the circumstances attending the filing of the application by the applicant itself. In the present matter, the defect is said to lie in the fact that the actual owner of the trade mark is, in the opponent’s view, Dr Micheal Pachleitner. Dr Pachleitner is the Chief Executive Officer of the applicant, and owns 90% of the shares of the applicant, which is an Austrian company. The opponent relies on statements by Dr Pachleitner that he, rather than the applicant company, is the registered owner of certain European and international (Madrid Protocol) registrations. Dr Pachleitner received those registrations by assignment from Robert Steinko La Roche. Dr Pachleitner declares that there is “an informal licence agreement” between himself and the applicant company.

Decision

Reasons for decision

There is some evidence of use of GUY LAROCHE in respect of spectacles or sunglasses in Australia, as Mr O’Donnell noted, as far back as May 2000. Apparently an Australian company obtained samples of these, some during the Mido fair. Mr O’Donnell’s written submissions stress the prominence of this as a trade fair. Be that as it may, the quantities set out in exhibit JFF 10 are small, and I can give no weight at all to invoices or similar documents where the date is either incomplete – the majority of the exhibit – or clearly post that of the filing of the opposed application. Conclusion No ground of opposition has been established. The trade mark application 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. I direct that the opponent pay the costs of the applicant to the extent set out in the scale in the regulations.Terry WilliamsHearing OfficerTrade Marks Hearings30 September 2005

Ratio Decidendi

Legal Principle Established

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Delegate:	Terry Williams
Representation:	Opponent: Michael O’Donnell, Phillips Ormonde & Fitzpatrick, patent attorneys Applicant: written submissions by Adrina Chia, solicitor, Schweizer Kobras
Decision:	S 52 opposition: ROBERT LA ROCHE not deceptively similar to GUY LAROCHE – S 44: spectacles and sunglasses not of same description as ‘fashion goods’ in classes 25, 18 14 – s 60: overseas reputation not shown to be extensive, nor to have extended to Australia – no grounds established, registration to proceed.

Statement by	Annexures
Michael Pachleitner	A - W
David Wymond	A