T Tree Pty Ltd and Bryant's Holdings Pty Limited and TBP Baking Pty Limited v Shane Hobbs
[2009] ATMO 50
•3 July 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Shane Hobbs to register trade mark application 1177308(30, 43) – Bryants Bread Pies H device (Logoform) and oppositions by T Tree Pty Ltd and Bryant’s Holdings Pty Limited
- and -
Opposition by TBP Baking Pty Limited.
Delegate: | Iain Thompson |
Representation: | Opponent: Carmen Champion of Counsel instructed by Clarissa Huegill & Associates, Lawyers Applicant: Was not represented, did not appear or put in written submissions |
Decision: | 2009 ATMO 50 s52 opposition – section 58 – trade mark is not substantially identical to those relied on by opponents; section 62A whether application was made in bad faith; Prior contractual agreement between related parties acknowledging one of the opponents’ ownership of trade marks including the word BRYANTS – application in bad faith established – registration refused. |
Background
In this matter Shane Hobbs (‘the applicant’) of Goulbourn, New South Wales, has applied to register a trade mark, details of which appear below:
Application No: 1177308
Priority Date: 21 May 2007
Goods:Class: 30 Pastries; bread; pies; sausage rolls; pastry products; bakery products; filled sandwiches
Class: 43 Food and drink catering; providing food and drink; restaurant services for the provision of fast food; takeaway food and drink services
Trade Mark:
(‘the opposed trade mark’)
Following examination, the application was advertised as accepted in the Australian Official Journal of Trade Marks on 20 September 2007.
On 20 December 2007 T Tree Pty Ltd and Bryant’s Holdings Pty Limited (Opposition One) and also TBP Baking Pty Limited (Opposition Two), who I will collectively term “the opponents,” filed Notices of Opposition to the registration of the opposed trade mark. The Notices are couched in broad terms and nominate all available grounds of opposition under the Trade Marks Act 1995 (‘the Act’).
As a delegate of the Registrar of Trade Marks, I heard the arguments of the opponent put to me by Carmen Champion of Counsel instructed by Clarissa Huegill & Associates, Lawyers. The applicant did not appear, was not represented at the hearing, and did not put in written submissions.
Evidence
There are two statutory declarations filed in support of the oppositions. These are by Anthony Stuart Neate of Goulburn and by Peter John Bryant of Lennox Head. There are two identical declarations in answer served and filed by the applicant – one to meet each of the oppositions.
Mr Bryant states that he is managing director of Bryant's Holdings Pty Ltd A.C.N. 001720088 and T Tree Pty Ltd A.C.N. 001704749 (the "Bryant partnership"). The two companies have traded in partnership since 3 May 1979.
Mr Bryant avers:
Prior to 2000, the name and mark "Bryant's" had been used in relation to various bakery businesses owned by me, and before me by my father and before him by his father.
My grandfather, Sydney Bryant commenced a business of making and selling meat and fruit pies in the Nyngan Dubbo area of NSW in the early 1930's under the name "Bryant's Pies". My grandfather delivered his pies to his customers in a 1929 Nash which had blinds attached to the windows which when pulled down had the sign "Bryants Pies" written on them.
I am aware of the truck as, after my father died, I came across a photo with the truck in it. I have misplaced the original photograph however in about 1984 I had the photos superimposed onto large timber mountings for display in the store I was running at that time in Woden plaza in the Australian Capital Territory. The timber mounted photographs are still displayed in the shop at 170 Auburn Street, Goulburn which store is currently owned by Hobbs Holdings Pty Ltd A.C.N. 091642670 ("Hobbs Holdings") and a photograph showing them is attached hereto as exhibit A.
Exhibit A is a photograph of a person standing behind the counter in a café – behind this person on the rear wall is a large photograph of a big vintage car or truck with the words BRYANTS PIES visible on window blinds within the vehicle.
Mr Bryant says:
In about 1985 I also undertook reconstruction of a "Mother's Choice Flour" promotional vehicle, using the photograph of my grandfather's vehicle as a model. We used photographs of the reconstructed vehicle for promotional material, an example of which is attached hereto and marked "B". We also used the reconstructed vehicle itself for promotions in parades and for special events such as "Lilac Time" which is a city wide promotional event for Goulburn and the opening of a shop in Bowral in about 1993.
In 1938 my father Sydney Keith Bryant and grandfather together opened a shop in the main street of Orange called "Bryants Pies" which name was displayed on the front window of the shop. At the same time as I found the photograph of the car as referred to in paragraph 5, I also found a second photograph showing this shop and I also had that timber mounted at the same time. The photograph can be seen in the attachment marked "A". My family and I lived above the premises and I am aware it was a bakery which was a wholesale and retail bakery making and selling fruit and meat pies. That is, pies would be delivered to other distributors and also people would come into the bakery to buy the products.
In about 1951 the Orange store closed and in about 1954 my father and mother, Hope Isabelle Bryant (known also as Isabelle Hope Bryant) in partnership known as SK & HI Bryant opened a store called "Bryants Pies" at 237 Auburn Street Goulburn. This was a wholesale and retail store with baking conducted on the premises to supply both the retail store at the front and other stores in the Goulburn area.
Attached hereto and marked "C" is a photograph of the store at 237 Auburn Street Goulburn taken in about 1980. The photograph does not show the original signage which had been changed in appearance but I clearly remember that from the time it started operating it had the "Bryants Pies" name printed on the glass shop front in white printing the same as the Orange store had been.
The photograph of the store at 237 Auburn Street is reproduced below:
Mr Bryant also declares:
My father died on 29 April 1969 and in accordance with his will my sister, Janice Dorothy Bryant and I took over the company to which my sister was appointed director on 16 September 1969. As far as I can remember my mother remained a shareholder. I was then solely responsible for the running of the Bryant's Pies bakery business in Goulburn .
From the early 1970's I developed recipes for meat and fruit pies which continue to be used by the manufacturer of Bryants Pies products, namely TBP Baking. My recipes have won awards at the "Great Aussie Meat Pie Competition" certificates for which are attached and marked "D".
In about April 1975, the Bryant's Pies bakery business in Goulburn was transferred to an unnamed Trust settled on 24 April 1975 ("the first trust") of which the trustee was Bryant's Pies Holdings Pty Ltd. I was a director of this company and a beneficiary of the first trust.
In about 1979, the first trust opened under my sole direction another Bryant's Pies store in Akuna Street in Canberra, Australian Capital Territory. The pies for this store were produced at the Goulburn store then transported by refrigerated truck marked with "Bryant's Pies" on the side of the truck to the Canberra store which sold the products on a retail basis from the store and wholesale distributions were also managed from the Canberra store to various outlets (shops and schools) in the A.C.T. This shop had a shop front sign saying "Bryants Pies'.
On 4 April 1979 a company known as Nylama Pty Ltd was incorporated of which my sister and I were the office bearers and which on 14 May 1979 changed its name to "Bryants Pies and Bread Co Ltd". This company was made the trustee of the Bryants Pies and Bread Co Trust on 3 May 1979 and on the same day went into partnership known as "Bryants Pies and Bread Co" with the first trust in respect of all operations at that time namely both the Canberra and Goulburn Bryant's Pies stores ("the partnership").
On 2 October 1979 the partnership registered the business name "Bryants Pies and Hot Bread".
In about 1980 the Bryant's Pies Goulburn store was moved from 237 Auburn Street, Goulburn to new premises at 241 Auburn Street, Goulburn and commenced trading as "Bryants Pies and Hot Bread". This store became the bakery from which all Bryant's Pies shops and other wholesale customers were supplied and it also had a small retail outlet at the front and was known as "Bryants Pies & Breads".
It was at the Bryant's Pies store referred to in paragraph 18 that the partnership started to bake bread as well as pies and I was personally responsible for development of the recipes. The orders for other wholesale customer's shops were packed with pies into unmarked boxes, bread rolls into large poly bags and other bread into pre-printed poly bags marked with the name "Bryants Bread". These are the bags still being used by TBP Baking Pty Ltd and an example is attached as attachment "C" to the Declaration by Anthony Neate filed with this Declaration. They were delivered by vans marked with the name "Bryants Pies" on one side of the van and the name "Bryants Bread" on the other side. The wholesale customers were also supplied with pre-printed "Bryants Pies" paper pie bags. Initially this store distributed products throughout an area known as "the southern tablelands" of NSW being from about Moss Vale in the north to Crookwell in the west to Braidwood in the east and Wagga in the south.
By 1980 all products in the Bryant's Pies Goulburn store were sold in pre¬printed packaging (white paper pie bags for the pies, yellow paper bread bags for crusty bread and green poly bags for other bread) marked with either the name "Bryant's Pies" or the name "Bryant's Bread", as appropriate to the product. The Canberra Bryant's Pies store continued to be known as "Bryants Pies' and had deliveries of pies from Goulburn in the truck marked "Bryants Pies'. It too by this time had been using the pre¬printed "Bryants Pies" marked white paper pie bags. For wholesaling we would provide the pies and the bundles of the marked bags.
In about 1981 the partnership then also opened another retail Bryant's Pie store in the Argyle Mall, Goulburn. A photograph of the sign for the store is attached and marked "E". The store had three different locations in the Argyle Mall for the period 1981 to 1999. Some time in the mid 1990's we changed the name of the Argyle Mall shop to "Bryants". Packaging used was the same as for the other store however our stationary referred to the name "Bryants" an example of which is attached and marked "F".
In 1982 the partnership opened another shop in Woden Plaza in the A.C.T. called "Bryants Pies". This too was a retail pie shop supplied by Goulburn with the truck marked "Bryants Pies'. Very little wholesaling was done from this shop. It too used the pre-printed "Bryants Pies" marked white paper pie bags.
In about 1984 the partnership opened another Bryant's Pie store in Northborne Avenue, Canberra which was a retail pie shop suppliea by Goulburn with the truck marked "Bryants Pies'. More wholesaling was done from this shop as it was bigger and we were finding the Akuna Street shop was not big enough. It too used the pre-printed "Bryants Pies" marked white paper pie bags.
In about 1987 the partnership sold all three Bryant's Pies Canberra shops but it did not sell the Bryant's Pies name. It was a requirement of the sale that the name "Bryant's Pies" no longer be used at the shops and the purchaser in fact traded from then on as "VIP Pies".
In about 1993 the partnership opened a shop in Bowral and traded under the name "Bryants". Packaging used was pre printed "Bryant's Pies" and "Bryant's Bread". This store was sold in about 1997. The name "Bryant's" was not sold with the business and the purchaser changed the shop name to "Pollies Pies".
In about 1993, my wife and I moved to the north coast of NSW and the partnership purchased land and commenced tea tree farming. On 25 October 1993, Bryants Pies Holdings Pty Ltd changed its name to Bryants Holdings Pty Ltd and on 20 January 1994 Bryants Pies & Bread Co Pty Ltd changed its name to Bryants & Associates Pty Ltd. It then changed its name again on 13 March 1996 from Bryants & Associates Pty Ltd to T.Tree Pty Ltd.
In or about 1995 the partnership also took over by default "The Bread Shop" at 126 Auburn Street Goulburn and traded as "Bryants Pies and Hot Bread" from those premises Packaging used in that business was pre printed "Bryant's Pies" and "Bryant's Bread".
In 1997 I had a new oval "Bryants" logo designed by Fineline Design in the A.C.T. which I intended to use on all packaging and promotional material used in the Bryant's pies and bread business.
In early 1997, the partnership closed the Bryant's Pies shop at 126 Auburn Street, Goulburn and the retail shop portion of 241 Auburn Street, Goulburn and opened a new shop at 183 Auburn Street, Goulburn known as "Bryant's Bakery Café". The Bryant's shop at Argyle Mall continued to trade. During the fitout of the new shop at 183 Auburn Street, Goulburn, Tom Kofod the sign writer designed the scrolling "B" for use on the shop front. A photograph of this shop showing the sign is attached and marked "G". From that time the scrolling "B" was also included in the oval logo and from then on was used as our logo on all printed material including but not limited to signs, bags, manuals, labels and all advertising. Attached hereto and marked "H" is an example of our labels. It was also used on the Employee Manual which is attached and marked "B".
Also attached hereto and marked "I" is an example of our pie bags.
Bryant's Bakery Café was supplied with bakery products produced in the baking section of 241 Auburn Street, Goulburn ("the manufacturing premises") which continued to supply Bryant's Argyle Mall shop and other outlets on a wholesale basis. The partnership had an informal agreement with the key staff running the manufacturing premises, namely Anthony Neate, Philip Sykes and Robert Thompson, where we trialled the concept that they would independently run the manufacturing business from the manufacturing premises.
On 31 July 1997 TBP Baking Pty Ltd A.C.N.079546724 ("TBP Baking") was incorporated by Anthony Neate, Philip Sykes and Robert Thompson.
On 13 November 1998, the partnership entered into a contract with TBP Baking ("the TBP Baking Contract") pursuant to which it granted TBP Baking the right to use the name "Bryant's Wholesale" in respect to bakery items manufactured by it and, further, the partnership agreed to use TBP Baking as their exclusive supplier of bakery items for sale in all its retail Bryant's bakery shop businesses. A copy of that agreement is attached hereto and marked "J". Bryants Pies Pty Ltd also leased to TBP Baking the whole of shop 241 Auburn Street, Goulburn which expanded the manufacturing premises, a copy of the front page of which is attached and marked "K".4i
TBP continued the same delivery and packaging system as is detailed in paragraph 20, other than in about 2003 they bought a pie wrapping machine which wrapped pies into pre-printed perforated film pie bags marked "Bryants Pies". An example is attached as attachment "E" to the Declaration by Anthony Neate filed with this Declaration.
By the time TBP Baking took over manufacture of the Bryants products, Robert Thompson had worked with me in manufacturing pies and bread for many years and Anthony Neate and Philip Sykes has also had lengthy experience baking with me. I had disclosed my recipes to them over the course of their employment and it was agreed they would continue to use my recipes.
On 26 June 1999, the premises at 183 Auburn Street, Goulburn were totally destroyed by fire and we moved the Bryant's shop to 170 Auburn Street, Goulburn.
On 11 May 2000, the partnership entered into a contract with Hobbs Holdings Pty Ltd A.C.N. 091642670 ("Hobbs Holdings") for the sale of the retail Bryant's shops owned by the partnership namely Bryant's Bakery Café at 170 Auburn Street, Goulburn and Bryants in the Argyle Mall. These shops were only for retailing and had no capacity for baking products as all pies and bread products were contracted to be supplied by TBP. A copy of that contract is attached hereto and marked "L" (the "Hobbs Holdings Contract").
The Hobbs Holdings Contract did not assign to Hobbs Holdings any proprietary rights to the name "Bryant's". Pursuant to the Hobbs Holdings Contract, Hobbs Holdings was licenced to use the name "Bryant's Pies and Hot Bread" or any other name using the word "Bryant's" only within the city of Goulburn but not the name "Bryant's Wholesale Pies".
Shane Hobbs is and was at all relevant times one of the directors of Hobbs Holdings. A copy of a company search of Hobbs Holdings is attached and marked "M". To the best of my knowledge, from detailed conversations I had with Shane, he was personally involved in all negotiations and in finalisation of the Hobbs Holdings Contract.
From the date of completion of the Hobbs Holdings Contract, Hobbs Holdings paid the annual licence fee for the use of the name "Bryant's" on a quarterly basis for the period to the quarter ending 30 September 2006. To that date, it paid a total of $19,727.27. Since then, however, only one further payment of $900.00 has been paid on 20 July 2007.
At no time have either Bryant's Holdings Pty Ltd, T Tree Pty Ltd or myself granted Hobbs Holdings or any person connected with that company the right to use the name "Bryant's" or the Opposed Mark in respect of any business or product offered for sale and sold outside the City of Goulburn.
On 5 March 2007 I received an email from Shane Hobbs, a copy of which is attached and marked "N". Subsequent enquiries disclosed that Shane Hobbs had registered the following trade mark:
The above trade mark (number 1106874) was registered by Mr Hobbs in respect of pastries, breads, pies, sausage rolls and other pastry and bakery products and the provision of food and non-alcoholic beverages in Classes 30 and 43 of the International (Nice) Classification of Goods and Services.
I will mention now that Mr Hobbs’s email, referred to above, says in part:
I wish to advise that since 3rd April 2006 that I have been the holder of trademark registration 1106874 covering the Bryants Logo and its use under class 30 which covers baked goods etc and class 43 which covers services providing food and drink (ie retail outlets).
I undertook this step after researching our position when the issue of the Crookwell shop come up. It was quite a shock to realise that anyone could register our business name as a trading name so close to our current operation. The only way to prevent any third partying from benefiting from this name was to go through the lengthy registration process. It was a valuable learning process which I am grateful for as I feel that without the security of this that the value of our business was being eroded by allowing other stores to trade under this name.
I have registered the name to insure the security of our business into the future and as I mentioned to prevent any third party from cashing in on the name of Bryants. It amazed me the number of local businesses locally that trade strongly on their own name and yet have no security when it comes to their trading name outside of the local area.
This trademark registration in no way restricts TBP's ability to trade utilising it whilst they maintain a trading relationship with us. It does now require our authority for its use anywhere within Australia for operations/product covered by the two classes. The use of the name at the end of this contract period will then be at our discretion.
Any use of the name, template or similar display would be considered a breach of the trademark.
I return now to Mr Bryant’s account of the history of this matter. He says in conclusion:
The receipt of the email referred to in paragraph 41 was followed by an exchange of correspondence that resulted in Shane Hobbs taking steps to cancel Trade Mark Registration 1106874 as of 21 June 2007. Attached hereto and marked "0" is a copy of that correspondence.
It was at about the time of the cancellation of Trade Mark Registration 1106874, namely 20 July 2007, Hobbs Holdings paid $900.00 towards the outstanding licence fees referred to in paragraph 38 above.
On 21 May 2007 Shane Hobbs filed, without the consent or knowledge of myself, Bryant's Holdings Pty Ltd and T Tree Pty Ltd, Trade mark Application No. 1177308 for the Opposed Mark.
Mr Neate is a director of TBP Baking Pty Ltd (‘TBP Baking’) and he avers:
TBP Baking entered into an agreement with Bryants Holdings Pty Ltd A.C.N. 001720088 and T Tree Pty Ltd A.C.N. 001704749 (together called "Bryants") on 13 November 1998 which, among other things, provided for the licensed use of the name "Bryant's Wholesale" by TBP Baking in respect of bakery products. A copy of that agreement is annexed hereto and marked "A". Thereafter, TBP Baking engaged in the wholesale production and sale of bread and pies under and by reference to the name Bryant's Wholesale" (the "Business").
TBP Baking continues to operate the Business from the wholesale premises using the same delivery and packaging system as Bryants did prior to TBP Baking taking over the wholesale side of the Bryant's bakery business.
On 11 May 2000 on the sale by Bryants of the two Goulburn Bryant's retail bakeries to Hobbs Holdings Pty Ltd A.C.N. 091642670 ("Hobbs Holdings"), TBP Baking entered into an exclusive supply agreement with Hobbs Holdings dated 11 May, 2000 for bakery products.
In about December 2004, the principals of TBP Baking namely myself, Phil Sykes and Bob Thompson and my father-in-law Garry Dyson ("the Crookwell partnership") requested permission from Bryants to use the name "Bryant's Bakery" for a retail bakery in Crookwell ("the Crookwell shop"), which is 30 kilometers from Goulburn. .
Between 2004 and June 2006, the Crookwell partnership traded under the name "Bryant's Bakery" in Crookwell under licence from Bryants. When we opened the store, we painted a sign on the front window which said "Bryant's Bakery". This was a retail shop selling bread and pies made by TBP Baking in the wholesale premises and transported to Crookwell in vans marked "TBP Bakers of Bryants Pies and Bread!" photographs of which are attached and marked "B". The pies were not wrapped but were sold in unmarked paper bags. The bread bags used were the same ones we used for distribution from the wholesale premises examples of which are attached and marked "C".
I have reviewed the sales records of TBP Baking and say that since TBP first became involved in the Business, it has expanded its supply area beyond the southern tablelands and now supplies pies and bread to the Australian Capital Territory and various outlets in Sydney. I estimate that Business had originally approximately 50 regular customers. Most if not all those customers remain and we would now have a regular customer base of about 100 customers ranging from retail pie and bread stores, to hotels, schools, corner stores and supermarkets. Attached hereto and marked "D1" – D7" are various invoices to customers in the southern tablelands, Sydney and surrounds and the Australian Capital Territory.
All goods sent from the manufacturing premises were packaged as in the examples attached and marked "C" until 2003 when we bought a wrapping machine for pies and sausage rolls, since when pies and sausage rolls have been sent in the bags attached and marked "E". Whilst some deliveries are made by courier where delivery by us is not viable, most deliveries from the wholesale premises are made in the vans as shown in the attachment marked "B". We do not do any advertising as we have never had to.
The evidence in answer is a short declaration by Mr Hobbs who says:
Trade mark application 1177308 has no similarity with any other trade mark other than the —opponent's Trade Mark Application 1179116, which has a filing date after the applicant's Trade Mark Application and has no similar features other than the use of the surname "Bryant".
The name "Bryant" is a common surname and the opponent's claim of sole use of the name is unreasonable due to the name being common in Australia. Exhibit BL- I indicates 182 matches just with initials "A" and "B" in NSW alone.
The applicant intends on using the trade mark on the goods and services applied for and is justified in seeking protection of his trade mark rights.
The applicant seeks an award of costs in its favour.
I will add that a search of SFAS – the Trade Marks Office’s on-line record of the frequency of Australian surnames, shows that BRYANT is a surname which occurs 5730 times on the Australian Electoral Roll.
The Agreement
The agreement between Bryant Holdings Pty Limited and Hobbs Holdings Pty Limited provides (as far as it relates to these proceedings):
The vendors hereby grant to the purchaser the right to use the name "Bryants Pies & Hot Bread" or any other name using the word "Bryants" other than the name "Bryants Wholesale Pies" for such lawful purposes the purchaser shall desire subject to the purchaser not using such name for any offensive purposes or doing anything that would damage the goodwill attaching to such name. For the right to use the name the purchaser agrees to pay to the vendors:
a. The sum of One thousand five hundred ($1,500.00) per annum for each retail site operated by the purchaser within the City of Goulburn.
b. The amount due shall be paid by quarterly instalments, the first of such instalment to be paid three (3) months from the date of completion of this Agreement and each three (3) months thereafter.
c. The amount so payable shall be reviewed on each anniversary of the date of completion of this agreement by reference to the Consumer Price Index.
Submissions
Ms Champion made submissions couched in terms of section 58, 62A, 42 and section 60. Although Mrs Champion did argued that the application was defective, etc in terms of section 62 on the ground that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars, I gather that this was in a whisper. Mrs Champion submits that it is common ground between the parties that the facts in this matter can be summarized as being:
(a) Bryants was the first user of the name and mark “Bryant’s” (in various formats) in respect of bakery services and bakery products (“Bryants Marks”): PJ Bryant/14.05.09/#3 – 36;
(b) Bryants’ first use related to the use of the name “Bryant’s” in various formats: PJ Bryant/14.05.09/Annexures B, E, F, G;
(c) Bryants’ use of the Bryant’s name and mark was continuous in Goulbourn since 1954: PJ Bryant/14.05.09/#8 – 14, 18 – 21, 27 – 36;
(d) Bryants’ use of the Bryant’s name and mark included geographical areas other than Goulburn: PJ Bryant/14.05.09/#15, 22, 23, 24, 25;
(e) TBP was granted a licence by Bryants in 1998 to use the Bryant’s mark on bakery products produced by it for Bryants for sale in the Bryants stores of Bryants;
(f) the applicant is a director and shareholder of Hobbs Holdings Pty Ltd (“Hobbs”);
(g) Bryants granted Hobbs a licence in 2000 to use the name “Bryants Pies & Hot Bread” and any other name using the word “Bryants” other than Bryants Wholesale Pies” (“Bryants Licence”): PJ Bryant/14.05.09/#36 & Annexure “L”;
(h) Hobbs paid Bryants an annual licence fee for the Bryants Licence to the end of the 30 September 2006: PJ Bryant/14.05.09/# 36 – 41;
(i) the applicant obtained, without the consent of Bryants, registration of the Bryant’s Logo (Annexure “G”) which the applicant caused to be cancelled after complaint from Peter Bryant: PJ Bryant/14.05.09/# 40 -42;
(j) the applicant applied for the registration of the Opposed Mark without the consent of Bryants; PJ Bryant/14.05.09/# 44;
(k) the licence to use the Bryants mark granted to Hobbs was terminated on or about August 2007: PJ Bryant/14.05.09/# 46;
(l) despite the termination of the Bryants Licence, the applicant, through Hobbs, is continuing to use “Bryants Pies” and “Bryant’s Bakery Café”.
I agree to the extent that this accords with my own view of the evidence and the applicant has not put in any evidence of its own which challenges the opponent’s assertions.
I will enlarge on Mrs Champion’s specific submissions under each of the grounds discussed in my decision, below.
Section 58
Section 58 of the Act provides:
58Applicant 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.
Note:For applicant see section 6.
In order to establish its opposition under this ground, the opponent needs to evidence earlier use (or the earlier filing of an application for registration in Australia) of a trade mark before the priority date of the opposed trade mark and which is (as a minimum) substantially identical to the opposed trade mark and which use etc of the trade mark on which the opponent relies is in respect of ‘the same kind of thing’ as the goods or services of the opposed trade mark,
Ms Champion argued that:
The first user of a mark in Australia (prior to the Priority Date) becomes the owner of the mark at common law, and the proprietor under the Trade Marks Act 1995: Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601, at 625 and 627. To be relevant the use must be a use of the mark in Australia as a trade mark: Mooregate Tobacco Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77.
The evidence establishes that Bryants was the first user of the Bryants mark in respect of the Goods and Services in Australia. The word “Bryants” should be treated as the essential feature of the Bryants Marks as it is that word that gives meaning to these marks. It is the word “Bryants” which points to the origin of the goods and services: PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47, at [31]; Carnival Cruise Lines Inc v Sitmar Cruise Ltd 31 IPR 375 at 383.
The Opposed Mark is substantially identical to the Bryants Marks previously used by Bryants and it incorporates the essential component of each of the Bryants Marks. In particular, the word “Bryants” has retained its identity in the Opposed Mark in the trade mark sense as the distinguishing feature, or the essential feature.
However, it was stressed in Carnival, by Gummow J that in order to establish a ground under section 58, the complained-of trade mark must, at a minimum be substantially identical to that of the opponent. After quoting from The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, Gummow J said:
When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75; (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p. 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s. 33) or prior public recognition built up by user (para. 28 (a)).
In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural. However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship".
Thus, while Mrs Champion’s submission is correct in as far as it goes, the current trade marks must be assessed in the light of what the Courts have otherwise said and what both the Courts and the Trade Marks Office have found to be substantially identical.
In Palmlake Investments Pty Ltd v Mister Rollershutter Pty Ltd [2008] ATMO 5, I observed:
Cases where substantial identity has been found include: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd [1947] HCA 59; (1947) 75 CLR 203 (‘7UP in a circle’ and ‘8UP in a square’); Pelican Trade Mark [1978] RPC 424 ( PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 ( PELICAN and PELIKAN ); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison [1993] ATMO 81; (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be ‘substantially the same mark ’ to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, ‘substantially identical’ in Carnival Cruise Lines, supra.
To contrast the above decisions, the following trade marks have been found to be neither ‘substantially the same mark ’ or ‘substantially identical’: “Otrivin” Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson and Another (1998) 42 IPR 473 (‘PHOTO-DISK’ - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the delegate observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.
I do not consider that the opposed trade mark, when compared side-by-side (in the context of the particular goods and services) with any of the various trade marks used by the opponents are substantially identical or are the same trade mark – there are major visual differences between the trade marks.
Accordingly, the ground under section 58 is not established.
Section 62A
Section 62A of the Act provides:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Mrs Champion submitted:
The applicant filed the Opposed Application while his company, Hobbs, was still using the Bryants Marks under the Bryants Licence which was not terminated until August 2007.
The filing of the Opposed Application by the applicant should be seen for what it is, an attempt to misappropriate the rights of Bryants in the name and mark “Bryants” for the Goods and Services.
The conduct of the applicant in filing the Opposed Application is similar in nature to the conduct of a distributor who seeks to register in its own name or the name of a person closely associated with it, the trade mark of a product it has been distributing on behalf of a manufacturer. Such an application is considered as one made in bad faith: Shanahan’s Australian Law of Trade Marks and Passing Off” 4th ed. at p.411, [50.2685].
The issue of bad faith is also relevant to the issue whether the use by the applicant of the Opposed Mark would result in either misleading or deceptive conduct, or the use of a deceptively similar trade mark: Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 at 657.
Bad faith goes strongly to the questions of substantial identity, deceptive similarity and deception and confusion. In Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641, in an action involving claims of infringement of a trade mark and passing off, Dixon and McTiernan JJ said at 657:
"The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency."
Wilcox and Einfeld referred to this passage in Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362; 89 ALR 48 at IPR 383; ALR 69 where their Honours said:
"As [we] have already observed, proof of the fact that a trader has deliberately copied the name or "get-up" of a rival does not itself establish a contravention of s 52 [of the Trade Practices Act] or a passing off of goods. The proof has evidentiary value only. But the evidentiary value is significant. The courts have long recognised that traders best know their trade."
The applicant adopted the Bryants mark as part of the Opposed Mark because of its secondary signification in the Australian market place, especially in Goulburn. It is a clear attempt to misappropriate to himself the reputation in the Bryants name and mark and prevent Bryants from commercially exploiting the same in Goulburn and elsewhere in Australia.
In light of the above, and the absence of an explanation from the applicant as to his reason for adopting the Opposed Mark with knowledge of Bryants’ extensive prior use thereof in the same or similar market, the Hearing Officer should exercise his/her discretion and refuse to allow the Opposed Application to proceed to registration.
This is a relatively new ground of opposition and has been applied in Bombala Council v Peter Wilkshire [2009] ATMO 33 by Hearing Officer Jock McDonagh who observed:
This ground of opposition came into force on 23 October 2006 following amendments to the Act. At the time of this hearing, there had been no published decision from this office based on the ground. However, the opponent directed my attention to the Explanatory memorandum to the Trade Marks Amendment Bill 2006 and to UK case law relating to similar provisions and discussed by Paul Sumpter in his article Section 62A: Pandora’s box for trade mark practitioners? (2007) 18 AIPJ 110.
Counsel for the opponent submitted that in the UK the similar “bad faith” provision does not require the application to have been made dishonestly because that word is not used: Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028; [2005] FSR 10 at [20]. Sir William Aldous held “No doubt an application made dishonestly will be made in bad faith, but it does not follow that if dishonesty is not established, bad faith cannot have existed.” His Lordship reasoned that bad faith required knowledge by the defendant that what he was doing would be regarded as bad faith by persons adopting proper standards.
Counsel also pointed to UK cases that indicate that bad faith will be established where someone has applied to register a mark which he has previously recognized as the property of another with whom that person has a course of dealing or some other relationship: William Leith New Century Marquees (SRISO/018/00, UK Registry) p.9.
Here the company of which the applicant is a director has previously explicitly acknowledged that trade marks which incorporate the word BRYANT as being the property of one of the opponents by licensing its use from one of the opponents and signing an agreement to that effect. The applicant’s company acquired “the right to the right to use the name "Bryants Pies & Hot Bread" or any other name using the word "Bryants" other than the name "Bryants Wholesale Pies" for such lawful purposes the purchaser shall desire.” This right was, by implication, (the payment of “The sum of One thousand five hundred ($1,500.00) per annum for each retail site operated by the purchaser within the City of Goulburn”) restricted to the city of Goulburn. The applicant does not appear to dispute this.
The person who executed the agreement to purchase the business from Bryant Holdings and to license the use of the BRYANT trade marks was Shane Hobbs, the applicant in these proceedings.
Mr Hobbs’s stated rationale in previously applying to register one of the BRYANTS trade marks (his upset at the licensed use of BRYANTS trade marks in Crookwell) appears to be dissonant or inconsistent with his knowledge (as the executor of the agreement referred to above) that his own company’s licensed use of the trade marks was restricted to Goulburn.
Be that as it may, his application to register the opposed trade mark (which contains the word BRYANTS iterated three times), was filed whilst his company was a non-exclusive licensed user of trade marks that include the word BRYANTS.
Whilst (as Mr Hobbs observes) the word BRYANTS is a relatively common surname, the right of persons to register those surnames as trade marks is circumscribed by any contractual arrangements that they have made concerning its use and the public effects of the use of those surnames such as deception and confusion. More obvious examples of common surnames whose use is because of their reputation (apart from the registration of such surnames as trade marks) abound – such as SMITHS for ‘potato crisps’, FOSTERS for ‘beer’ or HOOVER for ‘vacuum cleaners’.
This matter is, I consider, squarely amongst those referred to by Hearing Officer Jock McDonagh as falling in the ambit of William Leith, above, as the applicant has applied to register a trade mark which prominently features a word which he has previously acknowledged as the property of another with whom the applicant has a course of dealing or been the director of a company with whom one of the opponents has had a contractual relationship.
The opponent has established its ground under section 62A.
It is unnecessary for me to further discuss the grounds under sections 42 and 60 as the opposition has been established.
Decision
Section 55 of the Act provides:
55Decision
(1)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.
(2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.
Note:For examine and this Act see section 6.
I refuse to register application 1177308.
Costs
The opponent is entitled to its costs which I order at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
3 July 2009
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