The Rack'N Stack Warehouse (ADMIN) Pty Ltd v the Rack'N Stack Warehouse SEQLD Pty Ltd

[2014] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by The Rack'N Stack Warehouse (ADMIN) Pty Ltd to registration of trade mark application 1480150 (6, 7, 12, 19, 20, 35 37) - THE RACK'NSTACK WAREHOUSE - filed in the name of The Rack'N Stack Warehouse SEQLD Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Benjamin Fitzpatrick of counsel, instructed by Wynnes Patent and Trade Mark Attorneys

Applicant: Ben Gardiner of counsel instructed by Fisher Adams Kelly Patent and Trade Mark Attorneys

Decision:

2014 ATMO 122

Section 52 opposition – s58 established; applicant not the owner of the trade mark.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by The Rack'n Stack Warehouse SEQLD Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

   Trade mark:  

   Trade mark application:              1480150

   Filing Date:  14 March 2012

   Specification:  Class 6: Racks and racking systems; shelves and shelving systems; mezzanines and mezzanine systems; active carton shelving; American style shelving; archive shelving; beams for racks or shelves; bins; bins for use with hanger boards or hanging storage racks; boxes for storage; cantilever racks; cool room shelving; fixings for racks or shelves; frames for racks or shelves; hanger boards; hanger board accessories including screw driver holders, saw holders, belt hooks, hooks and shelves; hanging storage racks; joints for racks or shelves; long span shelving; louver panels; mobile storage racks; mountable containers; pallet racks; portable pallet racks; pallet rack accessories including bolts, bolt bases, coil support bars, floor entry guides, forklift clearance bars, "J" locks, post protectors, row to row separators, safety locks, standard levelling plates, base plates and row spars; rack bars; racks or shelves made to order; racks or shelves sold as kits; reel racks; safety signs; selective pallet racks for product picking; self-assembly shelving; small items of metal hardware; stackable containers; storage installations; storage shelves; wire mesh shelving; parts and fittings for all of the foregoing; all of the foregoing goods being made mostly of metal; none of the foregoing being vegetable racks or wine racks

   Class 7: Cranes; cranes for lifting drums; drum handling apparatus; drum hoists; fork lift attachments for front end loaders; fork lift extenders; lift tables; mechanisms for use in adjusting the position of racks or shelves; pallet jacks; powered mobile racking; rack hoists; tilting drum handlers; and parts and fittings for all of the foregoing

   Class 12: Dollies including steel drum dollies; mobile carriers for drums; shifting skates; stacking machines; trolleys; hand held trolleys; platform trolleys; trolleys with shelves; trolleys with trays; trolleys with tubs; tri-wheel trolleys; trolleys incorporating lifting apparatus; strapping trolleys; wire mesh trolleys; casters for trolleys; and parts and fittings for all of the foregoing

   Class 19: Racks and racking systems; shelves and shelving systems; mezzanines and mezzanine systems; American style shelving; archive shelving; beams for racks or shelves; bins; bins with attached lids; cantilever racks; cool room shelving; fixings for racks or shelves; floor entry guides; forklift clearance bars; frames for racks or shelves; hanger boards; hanger board accessories including screw driver holders, saw holders, belt hooks, hooks and shelves; hanging storage racks;"J" locks; joints for racks or shelves; long span shelving; louver panels; mobile storage racks; mountable bins for use with louver panels; pallet racks; pallet rack accessories; plastic racks or shelves; portable pallet racks; post protectors; racks or shelves made to order; reel racks; row to row separators; safety signs; selective pallet racks for product picking; self-assembly shelving; stackable bins; storage installations; storage shelves; wooden racks or shelves; parts and fittings for all of the foregoing; none of the foregoing being made mostly of metal; and not including wine racks or vegetable racks

   Class 20: Racks and racking systems; shelves and shelving systems; active carton shelving; mezzanines and mezzanine systems; American style shelving; archive shelving; beams for racks or shelves; fixings for racks or shelves; frames for racks or shelves; hanging storage racks; long span shelving; mobile storage racks; pallet racking; plastic racks or shelves; rack bars; racks used for storage; selective pallet racks for product picking; self-assembly shelves or racks; racks or shelves of combined metal, plastic or glass; shelves or racks sold in kit form; storage shelves; wooden racks or shelves; workbenches; boxes for storage; plastic bins; parts and fittings for all of the foregoing; none of the foregoing being wine racks or vegetable racks

   Class 35: Wholesale, retail and distribution (not being transport) services including wholesaling, retailing and distribution (not being transport services) of racks and racking systems, shelving and shelving systems, mezzanine and mezzanine systems, workbenches, cranes, forklifts, pallets, bins, containers, storage boxes, tools; wholesaling, retailing and distribution (not being transport services) of parts and accessories for all of the foregoing

   Class 37: Installation, maintenance and repair services including installation, maintenance and repair of racks and racking systems, shelving and shelving systems, mezzanines and mezzanine systems, storage systems, workbenches, machinery, trolleys

   Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 April 2013. The Rack'n Stack Warehouse (ADMIN) Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose  the registration of the application on 9 July 2013. Thereafter the Opponent and Applicant filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) and a Notice of Intention to Defend and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Brisbane on 15 September 2014 as a delegate of the Registrar of Trade Marks. Benjamin Fitzpatrick of counsel, instructed by Wynnes Patent and Trade Mark Attorneys represented the Opponent. The Applicant was represented by Ben Gardiner of counsel instructed by Fisher Adams Kelly Patent and Trade Mark Attorneys.

   Grounds of Opposition

4. The Opponent nominated grounds of opposition under sections 42, 44, 58, 60, 62 and 62A the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27]. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

5. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

6. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Christopher Thomas Bentley (“Bentley 1”)	Director of Opponent	31.12.13	CTB-1 to CTB-16
Evidence in Answer
Christopher James Carroll (“Carroll”)	Director of Applicant	8.04.13	1 to 14
Evidence in Reply
Christopher Thomas Bentley (“Bentley 2”)	Director of Opponent	10.06.14	CTB2-1 to CTB2-2

1. Prior to the hearing, the Opponent sought permission to file further evidence pursuant to regulation 5.15 of the Regulations. I directed that this would be dealt with at the hearing as a preliminary matter.

2. At the hearing, counsel for the Opponent amended the request, submitting that I should take the late evidence into account under the general discretionary power of Regulation 21.19. I directed that the substantive hearing should proceed without the evidence but parties were to make representations regarding my exercising the discretion after the hearing, and I would include my decision on the request in this decision.

3. I have decided not to take the material into consideration. The material is not relevant or helpful to my coming to my decision and, as submitted by counsel for the Applicant, Parliament did not intend that the provisions of Regulation 21.19 to be used as a substitute for the repealed further evidence provisions.

   Discussion

4. The Opponent nominated the following trade mark registration in support of its ground of opposition under section 44, and as relevant to the remaining grounds:

   Trade mark:  

   Trade mark application:              1371118

   Filing Date:  8 July 2010

   Specification:  Class 6: Racks; shelves; active carton shelving; American style shelving; archive shelving; beams for racks or shelves; bins; bins for use with hanger boards or hanging storage racks; boxes for storage; cantilever racks; cool room shelving; fixings for racks or shelves; frames for racks or shelves; hanger boards; hanger board accessories including screw driver holders, saw holders, belt hooks, hooks and shelves; hanging storage racks; joints for racks or shelves; long span shelving; louvre panels; mobile storage racks; mountable containers; pallet racks; portable pallet racks; pallet rack accessories including bolts, bolt bases, coil support bars, floor entry guides, forklift clearance bars, "j" locks, post protectors, row to row separators, safety locks, standard levelling plates, base plates and row spars; rack bars; racks or shelves made to order; racks or shelves sold as kits; reel racks; safety signs; selective pallet racks for product picking; self-assembly shelving; small items of metal hardware; stackable containers; storage installations; storage shelves; wire mesh shelving; parts and fittings for any of the foregoing; all of the foregoing goods being made mostly of metal; and not including vegetable racks or wine racks

   Class 7: Cranes; cranes for lifting drums; drum handling apparatus; drum hoists; fork lift attachments for front end loaders; fork lift extenders; lift tables; mechanisms for use in adjusting the position of racks or shelves; pallet jacks; powered mobile racking; rack hoists; tilting drum handlers; and parts and fittings for any of the foregoing; all being goods in this class

   Class 12: Dollies; including steel drum dollies; mobile carriers for drums; shifting skates; stacking machines; trolleys; hand held trolleys; platform trolleys; trolleys with shelves; trolleys with trays; trolleys with tubs; tri-wheel trolleys; trolleys incorporating lifting apparatus; strapping trolleys; wire mesh trolleys; casters for trolleys; and parts and fittings for any of the foregoing

   Class 19: Racks; shelves; American style shelving; archive shelving; beams for racks or shelves; bins; bins with attached lids; cantilever racks; cool room shelving; fixings for racks or shelves; floor entry guides; forklift clearance bars; frames for racks or shelves; hanger boards; hanger board accessories including screw driver holders, saw holders, belt hooks, hooks and shelves; hanging storage racks; "j" locks; joints for racks or shelves; long span shelving; louvre panels; mobile storage racks; mountable bins for use with louvre panels; pallet racks; pallet rack accessories; plastic racks or shelves; portable pallet racks; post protectors; racks or shelves made to order; reel racks; row to row separators; safety signs; selective pallet racks for product picking; self-assembly shelving; stackable bins; storage installations; storage shelves; wooden racks or shelves; parts and fittings for any of the foregoing; none of the foregoing being made mostly of metal; and not including wine racks or vegetable racks

   Class 20: Racks; shelves; active carton shelving; American style shelving; archive shelving; beams for racks or shelves; fixings for racks or shelves; frames for racks or shelves; hanging storage racks; long span shelving; mobile storage racks; pallet racking; plastic racks or shelves; rack bars; racks used for storage; selective pallet racks for product picking; self-assembly shelves or racks; racks or shelves of combined metal, plastic or glass; shelves or racks sold in kit form; storage shelves; wooden racks or shelves; workbenches; boxes for storage; plastic bins; parts and fittings for any of the foregoing; all being goods in this class; and not including wine racks or vegetable racks

5. It should be noted that the above trade mark registration was cited against the Applicant’s trade mark during the course of examination. The Applicant’s mark was substantially identical with the Opponent’s registration under section 44 of the Act. The citation was overcome by the provisions of section 44(4), as indicated in the endorsement.

6. The evidence provided in Bentley 1 and Carroll provides an outline of the uncontroversial aspects of the history of the business entities and their successors that have led to these proceedings.

7. In about 2005, Robert and Pamela Griffiths started a business called Rack’nStack Warehouse, which operated in Queensland, including Brisbane, Townsville and Cairns. The business was incorporated as The Rack'n Stack Warehouse (ADMIN) Pty Ltd on 13 February 2007.

8. On 31 January 2008, the Griffiths sold 100% of their shareholding of The Rack'n Stack Warehouse (ADMIN) Pty Ltd to purchasers who now control the Opponent. The sale agreement allowed the Griffiths to trade as Rack’nStack Warehouse outside a defined area (essentially outside North Queensland and the Northern Territory).

9. The Griffiths continued to trade in Brisbane and in 2008 granted permission for Christopher Carroll to trade as Rack’n Stack Warehouse in the Northern Rivers to Coffs Harbour region of New South Wales.

10. In 2009 the Griffiths sold their business interests in Rack’n Stack Warehouse to Mr Carroll, who incorporated the Applicant on 10 June 2009.

11. CTB-15 of Bentley 1 indicates that the trade mark was designed by Conceptual Graphic Design, of Cairns, and sold to the Opponent (then owned by the Griffiths) on 26 March 2007. After that date the Opponent has continued to use the trade mark in the course of its business. It was registered as a trade mark (1371118) in 2010.

12. It is apparent that the Griffiths continued to use the trade mark as it carried out its business in Brisbane, and the Applicant has used the trade mark since 2009, and applied to register it (1480150) as detailed above.

    Section 58 – applicant not the owner of the trade mark

13. Section 58 of the Act provides that:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

14. It is well established law that, in order to succeed under this ground, the Opponent must identify a trade mark that:

    ·     is identical or substantially identical to the applied-for trade mark (Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 120 ALR 495);

    ·     has been used in respect of goods or services being the ‘same kind of thing’ as those in relation to which the applied-for trade mark has been filed or used (Re:Hicks’s Trade Mark (1897) 3 ALR 75); and

    ·     has been used by a person other than the applicant and that other person has the earlier claim to ownership based on use before the priority date or first use date of the applied-for trade mark (Settef SpA v Riv-Oland Marble Co (Vic.) Pty Limited (1987) 10 IPR 402 at 413 and Re:Hicks’s Trade Mark, supra.).

15. Therefore, to establish its section 58 ground the Opponent must show that it or some party other than the Applicant first used the trade mark (or one ‘substantially identical’ thereto) in Australia in connection with the ‘same kind of thing’ as the applied-for goods and services before 14 March 2012 or before the Applicant’s first use of the trade mark for those goods or services, whichever is the earlier.

16. There is no argument that the competing trade marks in this opposition are exactly the same, and are being used for exactly the same goods. While the Applicant seeks registration also for Classes 35 and 37 services, it is clear from the evidence that these services have also been provided by the Opponent since 2007.

17. As well as the implication that the artwork provided by Conceptual Graphic Design in 2007 includes the trade mark, Carroll (exhibits 3 and 4) and Bentley (exhibit CTB-6) clearly demonstrate relevant trade mark use of the mark from 29 January 2008.

18. I note that the Applicant was not incorporated until 10 June 2009 (Carroll at [16]). Therefore the Applicant could not use the mark prior to the first use by the Opponent.

19. The Applicant has claimed that it was granted permission to use the trade mark by the Griffiths in 2008 and it was effectively transferred to the Applicant by the Griffiths when they ceased trading in 2009.

20. Although the ‘Share Sale Agreement’ exhibited at CTB-1 of Bentley 1 is silent on the question of the trade mark, I am satisfied that the sale by the Griffiths on 31 January 2008 of all of the Opponent’s shares, property and goodwill in the business effectively transferred rights in the trade mark from the vendor to the purchasers.

21. The agreement allowed the vendors (the Griffiths) to continue to trade as Rack N Stack Warehouse anywhere other than the specified areas (in Queensland and the Northern Territory). The purchasers agreed not to compete with the vendors outside of the specified areas.

22. Thus it seems to me that the Griffiths only possessed a licence to use what then became the Opponent’s trade marks. It is not clear from the evidence, but it would seem that the Opponent was content to allow the Applicant to use the trade mark under some sort of licence; however, it is clear that the Opponent did not intend that the Applicant retain any proprietary rights.

23. Section 58 is not subject to issues of concurrent use, or any proviso contained within section 44.

24. I find that the Opponent has established its section 58 ground of opposition.

25. Having found in favour of the Opponent in terms of section 58 there is no need for me to discuss the other grounds set out in the Statement although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

26. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, 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.

27. The Opponent has established a ground of opposition under the Act. As a result, the Applicant is unsuccessful in this matter and I refuse to register trade mark application no. 1480150.

    Costs

28. As it has been successful, the Opponent is entitled to its costs to be assessed at the official scale and I award costs accordingly against the Applicant.

    Jock McDonagh

    Hearings Officer

    Trade Marks Hearings

    22 December 2014