| JUDGMENT | No. | ...s~,k...~ 2%,., |
No. Q652 of 1994
| BETWEEN: -SUM | PRODUCTS CO m |
Applicant
| AND | r | W I N G AND GILLOW PTY LIMITED
ACN 008 034 651 |
First Respondent
Second Reapondent
J U O G E N G ORDER: Spender J
| 8 | - | 11 July 1994 |
| WHERE: | Brisbane |
Pursuant to 0. 21 r. 1 of the Federal Court Rules,
that the applicant is the proprietor of the trademark Thai Gypsumboard and the logo contained in the Schedule to the reasons for judgment of SpenJer J of 11 July 1994.
(i) that the first respondent forthwith withdraw trademark
application 624952 dated 15 March 1994; and
(ii) that costs be reserved.
| Settlement and entry of | orders is dealt with in 0. 36 |
1 No. 4652 of 1994
1
| BETWEEN: | GYPSUM PRODUCTS CO kTp |
Applicant
ACN 008 034 651
First Respondent
Second Respondent
Thie is the Schedule referred to in the reasons for judgment of the Honourable Mr Justice Spender dated 11 July 1994.
Applicant
ACN 008 034 651
Second Respondent
| cQ6AMr | Spender J |
| z x d u c | Brisbane |
| M: | 11 Ju ly 1994 |
| By | a not ice of | motion | f i l e d on 1 7 June 1994 , | t h e appl icant |
| seeks a dec la ra t ion pursuant t o 0 . 20 r. | 1 of | t h e F | - |
- ( ' t h e Rules ') t h a t it is the proprietor of t h e trademark "Thai Gypsumboard" and a logo which is ca l l ed t h e TG logo ( ' t h e logo ' ) , a copy of which logo i s contained i n t h e schedule t o
| these reasons, | and an order t h a t t he f i r s t respondent withdraw |
| trademark appl ica t ion 624952 dated 15 March 1994 . | I t a l s o seeks |
| t h e c o s t s of | t he motion. |
Order 20 r. 1 provides t ha t :
| " | (1) Where, | i n r e l a t i o n t o the whole o r any p a r t o f |
| the appl icant 'S | cl aim f o r relief, | there is evidence |
| o f t he f a c t s on | which | the claim o r p a r t is based, |
| and - |
| (a) | the re is evidence given by the app l ican t o r by some responsib le person t ha t , i n t he belief o f t he person giving the evidence, t h e respondent has no defence t o t he claim o r |
| |
| (b) | to the applicant's claim or part; |
the respondent's defence discloses no answer the applicant may move on notice for such judgment for the applicant on that claim or part and the Court may pronounce such judgment and make such orders as the nature of the case requires.
(2) Where the Court pronounces judgment against a
party under this rule, and that party claims relief against the party obtaining the judgment, the Court may stay execution on, or other enforcement of, the judgment until determination of the claim by the party against whom the judgment is directed to be entered.
(3) The Court in any application under this rule
may give such directions, whether for amendment of the pleadings or otherwise, as may be thought fit. "
According to Mr Pelert Suthapakt, who is the assistant
managing director of the applicant, the applicant was
incorporated as a company according to the laws of Thailand in
1967. Since its incorporation, it has manufactured gypsum
products, including Gypsumboard, which is atype of plasterboard. The applicant has two large Gypsumboard manufacturing plants in Thailand which at full capacity are capable of producing 50 million square metres of Gypsumboard each year. The applicant
| exports its Gypsumboard to many countries throughout the world. Mr Suthapakt states that an employee of the applicant designed a logo, a copy of which is a schedule to these reasons ('the logo'), in the course of his employment by the applicant. | In 1979 the applicant commenced to use that logo as a trademark |
| for its Gypsumboard products. Neither of these assertions is disputed. There is, however, a factual dispute as to the extent to which that mark has been used on products of the applicant. |
| Mr Suthapakt also says that in addition to the use of the logo |
| on its Gypsumboard products, the applicant has marketed its plasterboard as 'Thai Gypsumboard'. There is exhibited to Mr Suthapakt's affidavit a copy of a brochure produced by the applicant and distributed by it since 1982. The contents of that brochure tend to support Mr Suthapakt's assertions in relation to the logo and trademark. |
| Mr Suthapakt says that in 1989, the applicant commenced to export its Gypsumboard to Australia and a reference is made to the sale of Gypsumboard to a West Australian company, Sherlock Holdings Pty Ltd. The precise nature of the Gypsumboard t1.e subject of that sale, and the marks, if any, on the Gypsumboard itself, is a subject of some factual dispute. There is no doubt that some Gypsumboard of the applicant was sold to the first respondent in 1993. There is, however, a serious factual dispute as to whether that Gypsumboard was marked with the TG logo. |
In respect of the West Australian sale, Mr Suthapakt says
that the applicant supplied the West Australian company a |
| distribution since 1982. Mr Dennis Barron, swears also that that | quantity of brochures of the applicant which had been in | |
| was the case. More importantly for present purposes, &W |
| Suthapakt swears (and it is not disputed) that: |
" The applicant also gave a quantity of the said brochure to the first respondent at the same time or before forwarding the first consignment of plasterboard to the first respondent. "
He further swears that copies of the applicant's current
brochure, which is exhibit I to Mr Suthapakt's affidavit, were
also provided to the first respondent. Again this is not
disputed.
Both the brochures which are exhibited to Mr Suthapakt's affidavit bear a geometrically styled logo consisting of the letters "T" and "G" in the shape shown in the logo. I t is clear that each of those brochures is a technical bulletin or trade brochure describing, and giving technical details of, the plasterboard produced by the applicant. Each brochure also uses the words "Thai Gypsumboard" in the same connection.
On 7 April, McCullough Robertson, solicitors for the first respondent, wrote to the directors of a Queensland company which proposed, apparently, to distribute some of the products of the applicant. The letter relevantly stated:
" We act for Waring and Gillow Pty Ltd.
Our client is the importer and distributor of the plasterboard building product known as ' Thai Gypsunboard' into Australia. It owns the trademarks 'Thai Gypsumboard' and 'TG*.
| and money over the past two years developing the | Our client has spent a substantial amount of time |
| 'Thai Gypsumboard' plasterboard product to Australian Standards Specifications. It has also developed the method of freighting the product so as to minimize damage to the product in transit. Our client has promoted the product under the name 'Thai Gypsumboard' in the Australian market and, over that period of time, has acquired a significant goodwill in the product and the name 'Thai Gypsumboard'. The market associates that product with our client. Further, as we have noted above, it also owns the trademark in that name. |
| We are instructed by our client that you intend to start importing 'Thai Gypsumboard' into Australia with the intention of marketing the product in Australia. Mr Btchells of our client instructs us that you told him on 6 April that a shipment would |
| be a r r i v i n g i n e a r l y May 1994. According to the |
| Nedlloyd | sh ipping schedule, | the s h i p which | a r r i v e s | |
| on 3 May 1994 depar ts Thailand on 17 Apr i l 1994. |
| There i s st i l l | tinre | t o s t o p t h a t shipment. | " | |
Ae a result of the sending of that letter, a letter was sent
by Messrs Bennett h Philp, solicitors for the applicant, dated
21 April 1994 which is in the following terms:
| " | W e a re a c t i n g for | Thai Gypsum Products CO Ltd . |
| Our | c l i e n t | i s a | publ ic | company | incorporated |
according to t h e laws o f Thailand.
Our i n s t r u c t i o n s a r e t h a t our c l i e n t manufactures plarrterboard which i t sells throughout the world under the trademarks, Thai Gypsurnboard and u s i n g the
| !lG | l ogo a s dep ic t ed below. |
| [ d e p i c t i o n o f | logo] |
| Our c l i e n t has j u s t | become aware | t h a t on 15 March |
| 1994 | your | company | appl ied | t o r e g i s t e r | these |
trademarks under t h e Trademarks Act 1955 for a l l o f
| the goods | inc luded i n c l a s s 19. |
| Quite | s imply , | o u r client | i s astounded | t h a t your |
| company could | a s s e r t | t h a t | i t | i s the propr ie tor | o f |
| t h e s e trademarks. | These trademarks have been used |
| by our c l i e n t throughout | t h e world | for many p a r s . |
| Indeed, | our c l i e n t was | the | first | u s e r o f the |
| trademarks | i n Aus t ra l ia . | There | i s , | on | our |
| i n s t r u c t i o n s , | s i m p l y | no | b a s i s | upon | which | your |
| company can a s s e r t any c la im to ownership o f the | trademarks. |
| Furthermore, | it i s apparent | t h a t the !lG l ogo i s an | |
| a r t i s t i c work | w i t h i n | t h e meaning | o f | the | Copyright | |
| Act | 1968. | To | the e x t e n t | t h a t your | company has | |
| reproduced | t h e l o g o i n the course o f the trademark | |
| app l i ca t ion , | your | company | has | i n f r i n g e d | the | |
| copyright i n the work. |
On 15 March 1994 the first respondent lodged an application
for registration of a trademark or trademarks in respect of all
goods included in class 19. The application is curious in at
least one respect in that it purports to be an application to register a trademark but it purports in the schedule to claim what I take to be two separate trademarks. The first of them is the TG logo in a circular field with the words Thai Gypsumboard underneath it; and the second is the logo without the words Thai Gypsumboard. I accept for the moment that the application is an application in respect of both such marks.
These proceedings have continued on the basis that the
application has not yet been granted. Under S. 40(1) of the
Trade A c t 1965 (Cth) ('the Act'), it is the person who
claims to be the proprietor of a trademark who is entitled to apply for registration of that mark. I accept that the test in this case for establishing who the proprietor of the trademark is, is the first person who used the trademark within Australia.
| In | v mrlee Manufacturina CQ 103 CLR 391 Fullagar J |
considered the comment of Williams J in WReaistered Trade m
I.
| -ated | Tobacco Cor~ | Ltd 82 CLR 199 that: |
| " To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law. |
Pullagar J observed in relation to that passage (at p. 400):
" (I would think, myself, that it may or may not,
according to circumstances, constitute a "sharp business practice". ) Again, it is otherwise if the opponent or person aggrieved has used the mark, for prior user by the foreign proprietor negatives the claim of the Australian applicant to 'authorship'. But the user must be user in Australia: the most extensive ueer by another person in foreign countries will not avail by itself to defeat the applicant for registration in this country. It has
| been s a i d , however, | t h a t the Courts from on | these |
| borrowings from abroad and | very s l i g h t ev idence i n |
| Aus tra l ia | has | been | he ld | s u f f i c i e n t t o n r o t e c t | the |
-
| Q. T . Ltd (1947) 75 CLR 203, a t p. 211. A good | proprietor o f a fore ign markr B e Seven Uv Co. v |
| example i s Blackaddef | v. m o d Road Machinerv Co . | |
| I;ac; (1926) 38 CLR 332. " |
| In the &ygn | U D CaeQ, Will iame J | eaid a t 2 1 1 : |
| " | In my opinion the e f fec t o f these cases i s t h a t i n the absence o f fraud i t i s n o t unlawful f o r a t r a d e r | t o become | the r e g i s t e r e d propr ie tor | under | the |
o f a mark which has been used, however
| e x t e n s i v e l y , by another t rader a s a mark | for | s i m i l a r |
| goods | i n a | fore ign | country , | provided | the f o r e i g n |
| mark has not been used a t a l l i n Aus t ra l ia | a t the |
| date o f the | a p p l i c a t i o n for | r e g i s t r a t i o n . | But | t're |
| pos i t ion | i s d i f f e r e n t i f a t | t h a t | da te | the mark | has |
| become i d e n t i f i e d w i t h the goods o f the f o r e i g n | t rader i n Aus t ra l ia because those goods have been |
| brought i n t o Aus t ra l ia by the foreign t r a d e r h i m s e l f |
| or by some impor ter or i n some other manner. | The | |
| court frowns upon any at tempt by one t r a d e r to |
| appropriate the mark o f another t rader although t h a t |
| t rader i s a fore ign t rader and the mark has o n l y |
| been used by him i n a fore ign country. | I t therefore | |
| s e i z e s upon a very small | amount | o f use o f the | |
| foreign mark i n Aus t ra l ia | t o hold | t h a t i t has become | |
| i d e n t i f i e d w i th and | d i s t i n c t i v e o f the | goods | o f the | |
| foreign | t rader i n Aus t ra l ia . | I t i s n o t t hen a mark | |
| which | another | t r a d e r | i s | e n t i t l e d | t o | a p p l y | to | |
| r e g i s t e r under | the Trade Marks Act because i t i s n o t | |
| his property b u t the proper ty o f the fore ign | t r a d e r . | |
| The r e g i s t r a r i s e n t i t l e d | t o r e f u s e to r e g i s t e r | the | |
| mark for such goods. | I f i t has been r e g i s t e r e d the |
| court may rect i fy the r e g i s t e r on | the | ground | t h a t |
| the mark | i s wrongly entered on the r e g i s t e r . |
| And | i n the Blacks- Caee, Isaac J | eaid a t 3 4 0 : |
| " ... | the appel lant knew from | h i s former | connec t ion |
| wi th the Br i t i sh -Aus t ra l ian | Company t h a t some | o f the |
| American company's | productions had reached A u s t r a l i a |
| under the name o f the 'Winner', | and t h a t name had, |
| f o r the i n t e r n a l t rade o f Aus t ra l ia , been discarded | i n favour o f the American company's other name, | 'Champion'. H e , so to speak, picked up and |
| appropriated f o r his own t rade purposes | the | |
| discarded name | 'Winner'. | But | t h a t he in tended t o | |
| defraud anybody I | am n o t a t a l l s a t i s f i e d . | I | assume | |
| i t was an innocent appropriat ion, | and | t h a t apar t | |
| from | the American | company his r e g i s t r a t i o n would be | |
| unassai lable . | S t i l l | there | i s the | f a c t | t h a t | the | |
| American | goods | d i d come | in to the A u s t r a l i a n marke t , | |
| and a t the time o f their a r r i v a l they bore | the | |
| manufacturer ' s | t r a d e name | 'Winner'. | " | |
It is important in the present case to have regard to the undisputed connection between the mark of the applicant and the goods of the applicant, being that use associated with the two brochures to which I have already referred.
In the m Case, Williams J said at 205:
| " | Under o u r A c t , the mark need not be used upon the po4ds- I t i s s u f f i c i e n t i f i t i s used i n |
| connect ion w i t h the goods. | I f the mark had t o be | |
| used upon the goods it migh t be | d i f f i c u l t t o s a y , | |
| a8 | i n the | E n g l i s h | c a s e s a l r e a d y c i t e d , | t h a t | there | |
| had been a n y u s e r i n A u s t r a l i a | u n l e s s the | goods | on | |
| which | it | was | used | were | i n A u s t r a l i a . | S i n c e , | |
| howver, | the mark need o n l y be | used i n connec t i on | |
| wi th the goods, | it seems to me t h a t a mark i s so | |
| used | i f the | goods | t h a t | a r e | o f f e r e d for | s a l e | i n | |
| Aus t ra l i a | under the mark | whether they a r e a c t u a l l y | |
| i n A u s t r a l i a or not. | A manufac turer o f such goods | |
| has a r i g h t | t o a p p l y the mark | t o the goods | when | |
| they a r e s o l d and despa tched | to A u s t r a l i a , | and | t h a t | |
| r i g h t o f the a p p l i c a n t | would | be | i n t e r f e r e d w i t h by | |
| the respondent ' S r e g i s t r a t i o n . | " | |
| Those cases which deal with the amount of user which is necessary before a foreign proprietor will be entitled to trade mark protection here, are consistent with the judgment of Kitto |
| J in The | v mslvn Paint and C h e m i c u (1962-63) 109 |
CLR 300 at 304 where his Honour said:
| " | I f , i n the p r e s e n t | c a s e , it were proved | t h a t before |
| October 1956 | the a p p e l l a n t had | used | the mark |
| 'Polyken' | a t a l l i n the A u s t r a l i a n market i n r e s p e c t |
| o f r e l e v a n t goods, | the c l a i m o f the respondent | t o be |
| the | p r o p r i e t o r | o f | 'Polykin' | would | have | been |
| de f ea t ed , | a s the c a s e s c i t e d show, | even | though the |
| appe l lan t ' S u s e o f | 'Polyken ' | had n o t been s u f f i c i e n t |
| t o c r e a t e a r e p u t a t i o n for | t h a t word; | f o r the n o t i o n |
| i n S . | 32 | o f propr ie tor sh ip | o f a mark | before |
| r e g i s t r a t i o n , | t h a t i s t o s a y the no t ion o f be ing the |
| person | e n t i t l e d | t o | be | r e g i s t e r e d | a s | propr ie tor |
| (-v | on Trade Mar&, | 8 t h ed. | (1960) p. | 3 4 , i s |
| s a t i s f i e d by user even without | the es tabl ishment | o f |
| a repu ta t ion , c f . | v. | Barrow@ (1863) 8 L.T. |
| (N.S.) | 227, a t p. | 229. | But there i s no ev idence |
| here t h a t 'Polyken' | was ever used a s a mark i n |
| Aus t ra l ia b e f o r e October | 1956.. . | " |
| - | v Settef 12 IPR 321 at 353, where |
So also in S v o l u Marbk
Lockhart J said:
| " | The proprietor | o f a | t r a d e mark a t common law i s |
| o r d i n a r i l y the first person | to use i t . | Where the |
| mark | i s unused | i n A u s t r a l i a | a | person | can | o b t a i n |
| propr ie torsh ip o f the mark | i n Aus tra l ia | by i n t e n d i n g |
to use i t , applying to r e g i s t e r i t and be ing the person who coined i t for use a s a mark: see m o f v. v. Haas CQ (1949) 7.9 CLR
601 per Dixon J a t 623-8. The respondent first
invented the mark i n this case and first used i t
| Aus t ra l ia ; and i t was the first person t o o b t a i n | overseas; it was the first person t o use the mark i n |
| r e g i s t r a t i o n o f the mark | i n Aus tra l ia . | The repor ted | |
| cases general ly concern s i t u a t i o n s where | these | three | |
| elements are n o t cormnon | t o the one person. | Here | |
| they are a l l common | t o the respondent. | O f course , | |
| i t must be remembered | t h a t use overseas o f a t r a d e | |
| mark | i s not | i t s e l f s u f f i c i e n t t o g ive propr ie torsh ip | |
| o f | the mark | i n A u s t r a l i a ; | see | v. | &Q$ | |
| w e r v CO I= (1926) 38 CLR 332; Seven Up |
| & v. Q T Ltd (1947) 75 CLR 203 per Latham CJ a t |
| 215. | Howwver, | where an Aus tra l ian t rader seeks | |
| r e g i s t r a t i o n | i n | A u s t r a l i a | o f | an | overseas | mark | |
| belonging | t o another person | and | a d i spu te a r i s e s | |
| between the Aus tra l ian | t r a d e r and | the overseas owner | |
| o f the mark, | the c o u r t s a r e n o t s low t o f i nd | t h a t a | |
| small amount o f use i n Aus t ra l ia by the overseas |
| propr ie tor i s s u f f i c i e n t t o e s t a b l i s h propr ie torsh ip | o f the mark i n A u s t r a l i a . The c o u r t s a re susp ic ious | | o f at tempts by one t r a d e r t o appropriate | the mark o f | |
| another t rader notwi ths tanding t h a t the l a t t e r i s a |
| predominantly i n a fo re ign country , and a s a | foreign t rader and the mark has been used by him | |
| c o r o l l a r y o f | t h a t | susp ic ion | requ i re | l i t t l e | use | t o | |
| support | the | f i n d i n g | t h a t | the mark | has become | |
| i d e n t i f i e d wi th and | d i s t i n c t i v e o f the goods | o f the | |
| foreign t rader i n Aus t ra l ia : see v. parrows (1863) 8 LT ( N S ) 227; Seven UD CQ v. Q T Ltcj per |
| Wil l iams J a t 211; m Reais tered Trade Mark ' Y u |