Surf Shirt Designs Pty Limited v Lidgerwood Investments Pty Ltd

[1991] ATMO 40

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by LIDGERWOOD INVESTMENTS PTY LIMITED to Registration of Trade Mark No. 393404 in the Name of SURF SHIRT DESIGNS PTY LIMITED

Application No. 393404 was lodged on 29 June 1983 in the name of SURF SHIRT DESIGNS PTY LIMITED of 394-396 Lonsdale St, Melbourne, Vic, 3000 (the applicant).  The application was for the registration of the trade mark HIGH ENERGY and, following examination, it was advertised as accepted on 16 November 1989 in respect of "Shirts, jumpers and shorts".
          On 15 February 1989 notice of opposition to the registration of the mark pursuant to s.49 of the Act was lodged in the name of LIDGERWOOD INVESTMENTS PTY LIMITED of 30-42 Mater St, Collingwood, Vic, 3066 (the opponent).
          The grounds of opposition are as follows:

1. That the Applicant is not entitled to be registered as the Proprietor of the opposed trade mark in respect of "Shirts, jumpers and shorts" (being the goods for which registration is sought and hereinafter called "said goods").

1. That the opposed trade mark is not qualified for registration in relation to any or all of said goods under the provisions of the Trade Marks Act.

1. That the opposed trade mark is not distinctive of the goods of the Applicant when used in relation to said goods.

1. That registration of the opposed trade mark in the name of the Applicant would be contrary to the provisions of Sections 28 and/or 33 of the Trade Marks Act.

1. That use of the opposed trade mark by the Applicant upon or in relation to said goods would be likely to deceive or cause confusion having regard to the use of ENERGIE as a trade mark or otherwise by the Opponent upon or in

relation to the same or similar goods or services closely related to said goods or alternatively it is not clear that deception and confusion would not result from such use of the opposed trade mark by the Applicant.

1. That the opposed trade mark is substantially identical with or deceptively similar to one or more Australian trade marks, including Trade Mark 474191.

1. That the Opponent is the Proprietor of the trade mark ENERGIE in Australia and elsewhere and the trade mark ENERGIE is recognized in Australia and elsewhere as identifying the goods of the Opponent.

1. That the Applicant does not use or propose to use presently the opposed trade mark in or throughout Australia upon or in relation to all or any of said goods or in the event that the trade mark has been so used such unauthorized use has been unknown to the Opponent and in contravention of the Opponent's rights.

1. That the Applicant has not established that it should be registered as the proprietor of the opposed trade mark in relation to said goods.

1. That the Rejgistrar should, having regard to matter in any one or more of the foregoing paragraphs or otherwise and in the exercise of his discretion refuse the opposed application.

   Evidence in support of the opposition in accordance with regulation 43 was served on the agents for the applicant on 16 July 1990.  It consisted of a Statutory Declaration by Brian Lidgerwood, the joint Managing Director of the opponent, made on 18 June 1990 and exhibits BL1, BL2, BL3, BL4 and BL5 thereto.  The agents for the applicant, Nyhof & Vinci, Barristers and Solicitors of Geelong, advised the Office and the opponent, respectively, in letters dated 16 August 1990 that their client did not intend to contest the objection.  The opponent's attorney sought advice on 5 December 1990 as to whether any evidence in answer had been lodged and stated that the applicant had been asked for the application to be withdrawn.  When advised by the Office that no evidence in answer had been lodged, the opponent sought a hearing in the matter.

The matter came before me in Melbourne on 5 February 1991.  The applicant did not appear at the hearing and the opponent was represented by Mr John Gibbs of Phillips Ormonde & Fitzpatrick of Melbourne.
          Mr Gibbs indicated that, while the notice of opposition sets out various grounds on which the opposition is based, the essential grounds are based on the provisions of sections 28 and 40 of the Act, and claim that use of the subject mark would be likely to deceive or confuse and that the applicant is not entitled to claim to be proprietor of the mark.  I shall deal with these grounds in turn.
Proprietorship
          Section 40(1) of the Act provides as follows:

40.(1) A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

Mr Justice McGarvie at first instance in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 423 explained what is meant by proprietorship of a mark in the following way:

"The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203: Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

...

In considering who, within s40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of
Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia."

A successful claim to proprietorship in a mark (except where there has been no use at all of the mark) thus depends on the ability of the person to demonstrate first use in Australia.  Further, the use relied on must be shown to be for the purpose of indicating or so as to indicate a connection in the course of trade between the specified goods and that person: see section 6 of the Act and W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191; Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271.
          The opponent in the present proceedings claims proprietorship in the mark ENERGY in Australia in respect to "items of clothing" which would include the applicant's goods of "Shirts, jumpers and shorts".  Mr Gibbs referred me to the opponent's evidence as establishing the necessary circumstances to substantiate this claim.  I will now summarise this material.
          In his declaration, Mr Lidgerwood stated that his company is the proprietor of the business known as IN-JEAN-IOUS which is a major manufacturer and retailer of clothing.  IN-JEAN-IOUS coined the trade mark ENERGY for use on clothing in 1979.  Sales under the mark commenced in 1980 and have continued since then.  The opponent applied to register the mark ENERGY with a stick figure device in applications 340243 and 340244.  The sales of goods under the marks commenced in 1980 and continued until 1983 when the opponent decided to "up-date" the trade mark by changing the spelling to ENERGIE.  The applications 340243 and 340244 were allowed to lapse but sales under the mark continued for some time.  He asserted that the garments sold under the mark ENERGY would have lasted for two to four years and the public, when seeking replacements, would purchase them under the modified mark ENERGIE, recognizing them as the same brand because of the renown and reputation of the original mark.  Sales commenced in 1985 under the mark ENERGIE and continued under the new mark, and various examples of the mark in use were annexed.  Mr Gibbs in his submission said that, although sales under ENERGY had ceased in 1982 and recommenced under ENERGIE in 1985, the mark had never been abandoned.  The marks were essentially the same and were being used in the same marketplace.  This "updating" of marks was common practice in the trade.  He referred to the case of Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 12 IPR 321 at 324 where it was held that non-use of a mark between 1972 to 1978 did not constitute abandonment to support his argument that there would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost. He further argued that these rights had been vigorously pursued by the opponent as evidenced by a threat of s.23 removal action against the proprietor of trade mark registration No. 286959 for the mark SHEER ENERGY which caused a restriction of the goods of that mark under s.19 to "Hosiery, pantyhose, stockings and socks". Indeed it was only this restriction which had allowed the removal of that mark as a citation against the present mark. He also said that it was as a result of action by the opponent that trade mark application 462390 for the mark ENERGIE was withdrawn. He said that the earliest date which could be claimed by the applicant was the application date of 29 June 1983, and further pointed to a letter from the applicant's solicitors dated 3 December 1985 where it was stated that the mark
was not presently being used but would be used from June 1985 for the 1985/86 Summer.
          Although the marks are not identical, the present mark being for the words HIGH ENERGY and the opponent laying claim to the marks ENERGY and latterly ENERGIE, I am of the opinion that there could be some deception or confusion if both were allowed to co-exist on the Register.  The word HIGH is reasonably common in Class 25 marks, occurring at the date of this decision, in eleven registered marks and five pending applications.  I think therefore that the main emphasis in the mark is on the word ENERGY and I am of the opinion that Mr Lidgerwood has demonstrated by his declaratory evidence that, for items of clothing, he has some rights in the words ENERGY and ENERGIE, and that these rights existed prior to the subject application.  Registration of the subject mark could be expected to interfere with these rights.  Having established these facts, an onus falls on the applicant to rebut the evidence of the opposition.  No evidence to the contrary, either at the hearing or in declaratory form has been proffered by the applicant.  Indeed, the only advice from the applicant's solicitors has been the rather ambiguous statement in their letter of 16 August 1990 that, "... our client does not intend to contest the objection".
          I am therefore forced to the conclusion that this onus has not been discharged and I find that the opposition based on section 40 of the Act, succeeds.
Deception or confusion
          Section 28 of the Act so far as is relevant to the present issue states, under paragraph (a), that a mark the use of which would be likely to deceive or cause confusion or, under paragraph (d), which would otherwise be not entitled to protection in a court of justice, shall not be registered as a trade mark.  The findings of the Federal Court in Murray Goulburn Co-operative Co Limited v The New South Wales Dairy Corporation, [1990] AIPC 90-664 establish that paragraph (a) of section 28 must be read in conjunction with paragraph (d) and thus, before a mark can be found to contravene the provisions of paragraph (a), it must also be found to be otherwise not entitled to protection in a court of justice.
          Whilst I have previously indicated that I believe that co-existence of the marks could lead to deception or confusion, there has been no evidence put before me to indicate that the mark is in conflict with paragraph 28(d).
          I therefore find that the opposition based on section 28 does not succeed.
Conclusion
          I find that, as at the date of lodgement of its application to register the trade mark HIGH ENERGY, the applicant was not the proprietor of the word ENERGY.  I find that, on the authorities cited above, the opponent had become the proprietor of the mark by virtue of its first use on clothing.  In my opinion, the addition of the word HIGH is of no assistance to the applicant.  It follows that the opposition is allowed.  There have been no submissions as to costs but there is no reason why the costs should not follow the cause.  I therefore award costs to the opponent to be taxed, allowed and certified by an officer of the Trade Marks Office appointed by the Registrar for that purpose.

(I.M. FORNO)
Hearing Officer
11 June 1991