Sports Warehouse Inc v Fry Consulting Pty Ltd - [2009] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Sport Warehouse, Inc to registration of trade mark application 1153714(35) - TENNIS WAREHOUSE AUSTRALIA - filed in the name of Fry Consulting Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Tom Cordiner of Counsel, instructed by Jurgen Bebber of Griffith Hack

Applicant: Sam Ricketson, instructed by Tony Watson of Middletons

Decision:

2009 ATMO 100

S52 opposition: opposition successful under ss 44(4) and 58A.

Background

1. In this matter, Fry Consulting Pty Ltd of Fitzroy, Victoria, (‘the applicant’) has applied to register a trade mark, current details of which appear below:

Application No: 1153714

Priority Date: 22 December 2006

Services: Class: 35 Retailing of goods (by any means)

Trade Mark:

(‘the opposed trade mark’)

Endorsements: Provisions of subsection 41(5) applied.

Provisions of subsection 44(4) applied.[1]
[1] This subsection was applied because of the opponent’s application 1070835.

2. Following examination the application was accepted for possible registration and advertised in the Australian Official Journal of Trade Marks on 3 May 2007.

3. On 3 August 2007, Sports Warehouse, Inc. filed Notice of Opposition (‘the Notice’) to the registration of the application. The Notice cites many grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Amongst these the opponent relied on sections 44 and 58A at a hearing of the matter I conducted as a delegate of the Registrar of Trade Marks. Tom Cordiner of counsel represented the opponent, instructed by Jurgen Bebber of Griffith Hack. Sam Ricketson, instructed by Tony Watson of Middletons, represented the applicant.

4. Before discussing the evidence and issues involved in this matter, it is pertinent to note that on 14 March 2008 Hearing Officer Mr Lyons refused to register trade mark application 1070835 (TENNIS WAREHOUSE, with a filing date of 18 August 2005 and convention date of 23 February 2005 based on a USA application) in the name of the current opponent. That decision[2] has been appealed to the Federal Court, Sports Warehouse, Inc v Fry Consulting Pty Ltd, No VID 197 of 2008, (‘the appeal matter’) which is part heard. Application 1070835 thus remains a pending application in terms of subsection 11(1) of the Act.

[2] Fry Consulting Pty Ltd v Sports Warehouse Inc [2008] ATMO 21

Evidence

5. The service and filing of evidence was as prescribed by the Act and regulations thereto and comprises the following:

6. Evidence in support consists of a declaration by Mark Sczbecki, Chief Operating Officer of the opponent. Evidence in answer comprises a declaration by Wesley Fry, director of the opponent. Evidence in reply comprises statutory declarations by Don Hightower, Mark Sczbecki, Claude Balestrat, Rod Cross and Robert Gordon Jackson which bring into evidence their affidavits filed in the Victorian District Registry of the Federal Court of Australia in the appeal matter.

Summary of the Applicant’s Evidence

7. Mr Fry, who is a director of the applicant, cites the first use of the opposed trade mark as being 10 September 2004: Mr Fry says that on this date the applicant registered the Victorian Business Name “Tennis Warehouse” and it has used the trade mark since this time.

8. Mr Fry says that the applicant operates a wholesale and retail store from its premises in Fitzroy and operates a website located at the domain name Mr Fry avers that the trade mark was selected as an appropriate mark for marketing the applicant’s business in 2004.

9. Mr Fry states that the first use of the opposed trade mark in relation to services by the applicant was in relation to the online business of selling tennis products. There is no copy of the applicant’s website as it then was in evidence.

Mr Fry exhibits to his declaration advertisements from The Age, Australian Tennis Magazine and Australian Tennis as well as tax invoices and the version of the applicant’s internet site which existed on 20 March 2008, when the declaration was prepared. The earliest alleged use of the opposed trade mark (other than the assertion above) appears to be within the tax invoices on invoice number 71 dated 29 March 2005. On the invoice, the opposed trade mark appears with the tag-line ‘Your online tennis shop!’ immediately below the words ‘Tennis Warehouse Australia’.

The opponent’s evidence

The opponent’s evidence shows that it is the applicant for registration for pending application 1070835 (the plain words TENNIS WAREHOUSE) mentioned above and that it has used trade marks incorporating the words TENNIS WAREHOUSE on an internet sales site, based in the USA, since 1998. These trade marks include (prior to the date of the opposed application):

The above trade mark was in use on the opponent’s internet site until about 2003. The evidence of Mr Sczbecki shows that this trade mark appeared on the tops of receipts for goods sold into Australia from November 1996 until at least 21 September 2005.
The other main trade mark of the opponent is that, below:

(‘the opponent’s TW trade mark’)

The above trade mark has been in use by the opponent on its internet site from around 2003 and also appears on a plain background. More recent webpages in evidence show the symbol ™ appearing next to both the letters TW and the words TENNIS WAREHOUSE in the above trade mark.
Mr Sczbecki includes in his evidence representative receipts for sales to Australia under the above trade marks – predominantly the former one – but including the latter from 2003 until the service and filing of his declaration.
The opponent has, since 2003, included promotional items such as drinks mugs, sports bags and t-shirts bearing the trade mark TENNIS WAREHOUSE with shipments of goods sold into Australia. The trade mark has appeared in plain print and in italics on these items.
At the time that the opposed application was filed these sales by the opponent totaled several hundreds of thousands of dollars to Australia annually and many millions more in worldwide sales.

Dealings between the parties

Don Hightower, President of the opponent, avers that he wrote to Mr Fry of the applicant on 21 December 2004 claiming to have ‘a worldwide trade mark,’ complaining about the similarity in the trade marks and internet domain names, as well as use of copyright images from the opponent’s website on the applicant’s website. On 22 December 2004 Mr Fry responded, stating that he had registered the business name ‘Tennis Warehouse’ and that as part of the business name registration had searched for conflicting trade marks in Australia and that the name “had passed”.
Mr Fry asked for evidence of the opponent’s worldwide trade mark registration and implicitly agreed to change his trade mark if such evidence was provided. Mr Fry also agreed to add the word ‘AUSTRALIA’ to his trade mark to thus change the words to TENNIS WAREHOUSE AUSTRALIA.
Obviously, there is no such thing as a single worldwide trade mark registration. However, ownership of a trade mark may arise in Australia independent of the trade mark registration process through the use of a trade mark in relation to goods or services sold or provided in Australia.[3] On this basis, it can be dangerous to search the trade marks register and assume, only on the basis of the absence of a trade mark, that no person owns that trade mark in Australia.
[3] See Hicks 's Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936; (1994) AIPC 91-049 (1994) 120 ALR 495; Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; (1951) 82 CLR 199.

Section 44

Section 44 relevantly provides:
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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
To establish its grounds under section 44, the opponent must, in the present circumstances, provide evidence of:
·     a registered or pending trade mark
·     in the name of a person other than the applicant
·     in respect of similar services
·     and which is substantially identical or deceptively similar to that registered on pending trade mark and
·     with a priority date earlier that of the opposed application
I do not think that it is in serious doubt that the trade marks of the parties are in respect of similar services and the opponent’s application (which is currently before the Federal Court on appeal) has an earlier priority date than that of the opposed trade mark.
It remains to be decided whether the trade marks are substantially identical or deceptively similar, or neither.
While Mr Cordiner argued strongly that the word ‘Australia’ and graphical element of a tennis ball within the opposed trade mark are common to the trade and should be discounted for the purposes of comparison, I do not agree, particularly as far as the graphical element is concerned. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, Windeyer J observed that the test for substantial identity is by the eye alone on a side by side comparison:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.
On a side by side visual comparison, the graphical element cannot be overlooked and strikes the eye as something different about the opposed trade mark. However, the word AUSTRALIA arguably adds nothing to the opposed trade mark and is, in the context of the opposed trade mark, of the same genus of minor additions to trade marks referred to in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 by Carr J. It is also true, of course, that the elements other than the words TENNIS WAREHOUSE in the opposed trade mark cannot be individually considered and separately discounted from the comparison – on any side by side comparison, the elements other than the word TENNIS WAREHOUSE also have a cumulative effect; this is consonant with the decision in In re Diamond T. Motor Car Co. (1921) 2 Ch 583. I would hasten to add that there are circumstances where the presence or absence of the word AUSTRALIA would affect the identity of a trade mark – such as if a trade mark was the words CRISPS AUSTRALIA used on or in relation to potato crisps. Obviously the presence or absence of the word AUSTRALIA in the example makes a huge difference to the identity of the trade mark – such considerations are thus, in part, contextual.
The trade marks of the parties are not, in my estimation, substantially identical.
Deceptive similarity is also to be assessed according to the tests in Shell, above. At page 416, Windeyer J said:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.
And in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50, French J discussed the issues governing the comparison in the following way:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
At the hearing of the matter, I mentioned that I was concerned how the comparative lack of inherent capacity to distinguish within the words TENNIS WAREHOUSE might affect the comparison of trade marks and asked counsel for further written submissions to assist me in this regard.
It is without doubt that the words TENNIS WAREHOUSE are weak trade mark material – I have a concern (particularly where a decision that the words lack inherent capacity to distinguish as a trade mark has been made by another delegate of the registrar) that any discussion of deceptive similarity will be seen as inferring that the words are inherently adapted to distinguish the services of either party. In composite trade marks such words are normally discounted, to some extent at least, for the purposes of comparison. Suppose, for example, two different traders had both put the word GARDEN onto their wheelbarrows and sought trade mark registration for that word in respect of wheelbarrows. In that situation, where the word apparently refers only to the purpose or use of the goods, would any member of the public be confused as to the origin of the goods? Before the word has developed a secondary meaning as indicating the goods of a trader, there could be no confusion.
Here the words TENNIS WAREHOUSE form the whole of the opponent’s trade mark and are the major feature of the opposed trade mark. Both applications have proceeded on the basis that those words are, or are predominantly, where the parties seek rights in the trade marks and are where the nascent rights might lie.
Accordingly, while I bear the nature of the trade marks in mind, I consider that the inherent capacity of the trade marks to distinguish can largely be overlooked in the comparison. The situation is not one where there is some other inherently distinctive element in the trade mark and the common element is obviously purely descriptive and can therefore be discounted.

The trade marks are, in my opinion, deceptively similar. The words TENNIS WAREHOUSE form the whole of the opponent’s trade mark and are the sole dominant element in the opposed trade mark by which it is going to be known and referred to.
The ground under subsection 44(2) is established; however, the applicant argues the opposed trade is qualified for registration under subsection 44(4).[4]
[4] It is not argued that the opposed trade mark is qualified for registration under the provisions of subsection 44(3).
Once grounds either for the establishment of an opposition, or the rejection of an application, in terms of subsections 44(1) or 44(2) have been established, the onus transfers to the applicant to satisfy the registrar that its trade mark is qualified to have the provisions of subsection 44(4) applied.
The requisite evidence must be incontrovertible and have good corroborating evidence of the facts claimed by the declarant. In the words of Hearing Officer Mr Williams in Challenge Cancer Support Network Inc v Leukaemia Foundation of Queensland [2002] ATMO 29:
I note that the provisions of s 44(4) were applied in the examination stages. At that stage, full force was given to the assertions of Mr Desbrow, and I think that this is generally appropriate in an ex parte situation. However, section 44(4) is a provision that leaves the registrar no discretion once it is triggered. I think that, if the application of that provision is challenged in the opposition forum, the alleged triggering facts should be required to be clearly demonstrated, and this requires a correspondingly high evidentiary threshold. If the applicant, once opposed, intends to rely on this provision, it needs to establish the date of first use positively, by way of facts and not simply by assertion.
The relevant date here is the convention date of the opponent’s application, 23 February 2005, based on its application filed on 18 August 2005. The question is whether I should be satisfied by the applicant’s evidence, which purports to show that it has continuously used the opposed trade mark for a period beginning before the priority date of the opponent’s application until the priority date of the opposed application (22 December 2006).
The applicant argues that it has used the opposed trade mark since 10 September 2004: it was on this date that the applicant registered the Victorian Business Name “Tennis Warehouse” and says it has used the trade mark since this time.
However, registration of a business name is not use of a trade mark. And, the use of a business name is not necessarily use of a trade mark: Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278. By registering the business name “Tennis Warehouse” in Victoria the applicant complied with section 5 of the Business Names Act (Vic). But, the business name registration did not give the applicant a right to the name, a right to use it, or give rise to trade mark rights. See Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29.
Of course, both the graphical device of the tennis ball and the word AUSTRALIA were not a part of the business name and thus, even if the business name was used then as a trade mark, it was not a use of the opposed trade mark.
There are other reasons for concluding that, if there was trade mark use by the applicant at that time, it was probably not a use of the trade mark which is here opposed. Mr Fry undertook in his letter of 22 December 2004, responding to the cease and desist letter of the opponent, to add the word AUSTRALIA to the words TENNIS WAREHOUSE and, as discussed, the graphical element is, of course, missing from the words which are the subject of the business name registration. There are no examples in evidence of what the trade mark was prior to 22 December 2004 and the first receipt/tax invoice in evidence (which carries the trade mark in close association with the words ‘Your online tennis shop!’) is invoice number 71 dated 29 March 2005.
While it is clearly unhelpful to have this degree of uncertainty and misconception explicit within the sworn statements of a party concerning its first use of a trade mark within its evidence, it is apparent that from 29 March 2005 the applicant’s use of the trade mark (at least on receipt/invoices) settled on the form that incorporates the opposed trade mark closely accompanied by the words ‘Your online tennis shop!’ appearing underneath in proximity as shown below:

(’the online trade mark’)

Mr Cordiner submitted that the words ‘Your online tennis shop’ form a part of the trade mark which the applicant uses – thus, he argues, the trade mark, as filed, has not been used by the applicant and the use of the online trade mark is not relevant to subsection 44(4).
Subsection 7(1) allows:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
The different elements of the applicant’s online trade mark each lack inherent capacity to distinguish. As such, the online trade mark draws its capacity to distinguish from each of its components: see In re Diamond T. Motor Car Co. (1921) 2 Ch 583. If a trade mark with low inherent capacity to distinguish draws its capacity to distinguish from all of its components, the presence of absence of one of those components is going to affect its identity to greater or lesser extent.
This contrasts with situations where it is obvious from the evidence that two trade marks are being used together: Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438 and the two trade marks are obviously capable of standing on their own as inherently distinctive trade marks.
Bearing the foregoing in mind, it is difficult to accept that the words ‘Your online tennis shop!’ are an addition which does not substantially affect the identity of the trade mark in terms of subsection 7(1). If the effect of this subsection is that the online trade mark appearing above which includes the words ‘Your online tennis shop!’ must be at least substantially identical to the opposed trade mark in order for me to be satisfied that it is a use of the opposed trade mark, the obvious answer is that guidance such as Diamond T strongly suggests it is not. And thus, in terms of the test outlined in Shell, above, the trade marks are different to the eye, an impression of dissimilarity emerges in the comparison and they are not substantially identical.
This is an issue in which I may be wrong and is very much one of impression, but, in the end, this does not affect the outcome of these proceedings.
Additionally, the date of this use, 29 March 2005, is after the date claimed by convention based on the date of the opponent’s USA application – 23 February 2005.
When the applicant’s evidence is further considered for examples of the earliest examples of the opposed trade mark in use, an advertisement in the November 2006 publication of Australian Tennis Magazine is the earliest objective corroboration for the use of the opposed trade mark in Australia.
This date is also after the relevant date and thus does not establish the prior use of the opposed trade mark which is requisite under subsection 44(4).
Taken as a whole, the evidence suggests that the applicant might have used the opposed trade mark in the way required for the application of subsection 44(4). However, I am required by the Act to be satisfied that applicant has used the opposed trade mark in that way – the evidence lacks the corroborative material and detail necessary for me to be satisfied as to the use of the trade mark before the priority date of the opponent’s application.
Thus, the applicant’s evidence does not establish to my satisfaction that the applicant has used the opposed trade mark continuously since before the priority date of the opposed application.
Lest I be wrong in my assessment of the applicant’s evidence and the date at which it first used its trade mark, I turn to section 58A of the Act.

Section 58A

Section 58A of the Act provides:
58AOpponent’s earlier use of similar trade mark
(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a)subsection 44(4); or
(b)a similar provision of the regulations made for the purposes of Part 17A.
Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a)first used the similar trade mark in respect of:
(i)similar goods or closely related services; or
(ii)similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b)has continuously used the similar trade mark in respect of those goods or services since that first use.
Note:For predecessor in title see section 6.
In Southern Training Employment & Placement Solutions Inc v STEPS Disability QLD Inc [2009] ATMO 67, Hearing Officer Ms Murray observed at paragraph 31:
The new ground of opposition under section 58A was intended by the drafters to complement the ground available to common law owners under section 58. It attempts to address an apparent anomaly which previously existed within the opposition framework. This allowed a party to achieve acceptance of their deceptively similar trade mark in the face of an earlier trade mark , based on prior use, which then became immune to an opponent’s claim to ownership in terms of section 58, because it did not fall into that provision’s strict parameters of substantial identity which I have described above. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 puts it thus:
A person may obtain acceptance and registration for a trade mark under section 44(4) even though an earlier similar trade mark has been registered for similar goods and services. The person must be able to show that they have used the trade mark before the filing date of the earlier trade mark on those particular goods or services.
However the owner of the earlier trade mark may have used their trade mark before applying for trade mark registration and accrued common law rights. As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.
The new section will provide a basis for the Registrar to give consideration to these issues in opposition proceedings.
As mentioned, the opponent used its trade mark TENNIS WAREHOUSE in respect of the retail of tennis related goods sold into Australia via the internet since late 1996, before the date on which the applicant claims to have first used its trade mark – 10 September 2004.
The opponent’s trade mark TENNIS WAREHOUSE has appeared on its website at least until 2003 when the opponent’s TW trade mark was adopted. I am not satisfied that use of the TW trade mark by the opponent, at least between the years 2003 and 2005 has been a use of the trade mark TENNIS WAREHOUSE in terms of subsection 7(1) of the Act, discussed above. Since 2006, the letters TW and the words TENNIS WAREHOUSE have both had the symbol ^tm appear beside them which stresses that they are two trade marks – but, between 2003 and 2006, it was not obvious that what I have called the TW trade mark was, in fact, two trade marks.
The trade mark TENNIS WAREHOUSE has, however, appeared on promotional items which have been included with goods sold into Australia throughout the relevant period.
The use of the opponent’s trade mark thus has been continuous, albeit at times quite slight.
On balance, I am satisfied that the opponent has used its trade mark continuously in Australia from a date before the first use of the opposed trade mark (whether the date be the earlier one of 10 September 2004 which is claimed by the applicant, or the later one of November 2006 which appears to be established in the applicant’s evidence).
The opponent has thus (if it is needed) established its opposition under section 58A of the Act.

Section 55

Section 55 of the Act provides:
Decision
55. 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.
Note: For limitations see section 6.
I refuse to register application 1153714.
The opponent is entitled to its costs which I award against the applicant at the official scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

02 December 2009