The Titan Manufacturing Company Pty Ltd v John Terence Coyne

[1991] ATMO 17

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by JOHN TERENCE COYNE to Application No. 395092 in the Name of THE TITAN MANUFACTURING COMPANY PTY LTD.

Application No. 395092 was lodged on 4 August 1983 in the name of THE TITAN MANUFACTURING COMPANY PTY LTD., a Victorian company of "Underwood House", 37‑49 Pitt Street, Sydney (referred to herein as "the applicant").  It sought the registration of the word TITAN in plain block capital letters in respect of all goods included in International Class 6.  Following examination the acceptance of the application was advertised in the Official Journal of 9 February 1989 in respect of the following specification of goods:

All goods in this class excluding strongrooms, vaults, safes, locks and locking devices and parts and fittings for those excluded goods.

The class referred to is International Class 6.
         On 8 May 1989 notice of opposition to the registration of the applicant's mark was lodged pursuant to the provisions of s.49 of the Act in the name of JOHN TERENCE COYNE, of 82 Juers Road, Kingston, Queensland.  The grounds of opposition specified in the notice were as follows:

1. That the opposed trade mark is not a registrable trade mark within the meaning of the Trade Marks Act 1955.

2.That the Applicant is not entitled to be registered as the proprietor of the said trade mark for all of the goods specified in the opposed application.

3.That the opposed trade mark is not distinctive of the goods  of the Applicant specified in the opposed application.

4.That the opposed trade mark is not adapted to distinguish the goods of the Applicant from those of other traders.

5.That the opposed trade mark is incapable of acquiring distinctiveness in respect of the goods specified in the opposed application.

6.That the Applicant does not intend to use the opposed trade mark in relation to all of the goods specified in the opposed application and at the date of the application for registration it had no real intention of doing so.

7.That the opposed trade mark is deceptively similar to the Opponent's trade marks shown below, which have been used in respect of the same goods or goods of the same description as those of the opposed application prior to the date of the opposed application and/or in which the Opponent has developed a substantial reputation.

TITAN

8.That use of the opposed trade mark by the Applicant on the goods specified in the opposed application would be an infraction of the rights of the Opponent.

9.That use of the opposed trade mark by the Applicant on the goods specified in the opposed application would be likely to deceive or cause confusion.

10.That use of the opposed trade mark by the Applicant on the goods specified in the opposed application would be contrary to law.

11.That the opposed trade mark would otherwise be not entitled to protection in a Court of Justice.

12.That by reason of the grounds set forth in the preceding paragraphs, or any other ground which the Registrar considers fit and proper, the Registrar in the exercise of his discretion ought to refuse the opposed application.

Evidence in support of the opposition consisting of a statutory declaration of the opponent John Terence Coyne together with Exhibits JTC1 ‑ JTC7 and declarations of Ross John Nicholl, Vernon Brian Griffiths and Terry John Lynam were served on the applicant on 7 March 1990.  The latter three declarants are persons of standing and experience in the relevant industry.  Further declarations by Vincent Allen Wonersley, Jeffery Francis Attewell, Keith James Batten and Maxwell Thomas Simondson were served on 6 April 1990.  These four declarants are also engaged in the metal building and associated trades.  On 28 June the applicant advised the Trade Marks Office and the opponent that it did not propose to serve any evidence‑in‑answer.  At the same time a request was made that the matter be set down for hearing and it came on before me on 8 August 1990 in Canberra.  Mr Claude Anese of Cullen & Co, patent attorneys of Brisbane, appeared for the opponent and the applicant was represented by Mr Geoffrey Mansfield of Griffith Hack & Co., patent attorneys of Melbourne.
         Mr Anese's submissions fell into five broad categories:  that the applicant's mark is not distinctive or capable of becoming distinctive, that is, that it offends against ss 24 and 25 of the Act (grounds 1 ‑ 5 of the notice of opposition);  that the applicant did not have at the date of application and does not have a real intention to use the mark on all the goods specified in the application (ground 6);  that the applicant's mark is substantially identical with or deceptively similar to certain trade marks registered for the same goods or goods of the same description as those for which the applicant seeks registration, that is, that it offends against s 33 of the Act; that because of the reputation of the opponent's trade mark registration of the applicant's mark would be contrary to s 28 of the Act (grounds 7 ‑ 11); that as a matter of public interest the Registrar's discretion should be exercised adversely to the applicant.  It will be convenient to deal with these issues in turn.
Section 24
         Mr Anese submitted that the applicant's mark offends against para 24 (1)(d) of the Act because it has a direct reference to the character or quality of the goods specified in the application and because it is a geographical name.  In support of this proposition he gave the following reasons:

(A)The opposed mark has direct reference to the character or quality of the goods in respect of which registration is sought.

1. The Macquarie Dictionary defines "titan" as meaning "a person or thing of enormous size, strength, etc."; "of gigantic size and strength" and in Chambers Twentieth Century Dictionary as meaning "anything gigantic".  Thus, the opposed mark describes the goods as being of enormous size or strength.  See also Webster's Third International Dictionary (1971) where "titan" is defined as "one gigantic in size or power".  There is no evidence of use to show that the opposed mark has developed a secondary meaning as a trade mark rather than as simply a laudatory epithet to the size and strength of the goods.

1. Webster's Third New International Dictionary also lists "titan" as being an adjective, meaning "titantic".  The word "titanic" is defined in the Macquarie Dictionary as "of enormous size, strength, etc.; gigantic"; in Webster's Third New International Dictionary as meaning "marked by very great size; of enormous magnitude, power, scope, strength, or influence"; and in the 1988 edition of Webster's Dictionary as meaning "having great size or strength".  The mark is therefore descriptive of the goods.  No evidence of use of the opposed mark has been adduced to show that it has developed a secondary meaning as a trade mark.  (Further, where the adjectival form of the trade mark is unregistrable, the trade mark represented as a noun is also not registrable).

1. The word "titanic" is also defined as meaning "of or containing titanium" in the Macquarie Dictionary, the shorter Oxford English Dictionary, and Webster's Third New International Dictionary.  As the goods of the opposed application include titanium, titanium iron and many other goods which may ordinarily contain titanium, the mark is descriptive of the goods.  A person purchasing a "TITAN" nail or screw could ordinarily expect the nail or screw to be coated with titanium or contain titanium alloy.

1. The word "titan" is also the descriptive name of a type of crane, dredge or the like;  see Dictionary of Mechanical Engineering Terms, the Shorter Oxford English Dictionary and Webster's Third New International Dictionary.  Since the goods of the opposed application include crane hooks, cables, chains, pulleys, steel rail, slings of metal for handling loads, and other items suitable for use with titan cranes, the opposed mark is descriptive of such goods as being suitable for use with titan cranes.

1. Titan is the name of a rocket‑powered ICBM [see Websters Dictionary (1988)].  As the goods of the opposed application include "rocket launching platforms", the opposed mark is descriptive of such goods i.e. it describes them as being launching platforms for Titan rockets.

(B)    The opposed mark is a geographical name, being the name of an island in the Whitsunday group of islands off the cost of Queensland.  The applicant has not shown that the opposed mark would not be used to describe goods in Class 6 originating from that island, or having some connection therewith.

Mr Mansfield replied that the word TITAN is not directly descriptive but at best is emotive or evocative, (the Tub Happy case 95 CLR 190) that direct reference is equivalent to aptness for normal description of the goods (the Torq‑set case [1959] RPC 344), the test being whether other traders would require the use of the word in the normal course of trade without improper motive (the W & G case (1913) 30 RPC 660). He said that "titanic" as containing titanium was not required for normal description and would not be understood in that sense by ordinary purchasers. With regard to the reference to cranes and dredges Mr Mansfield said that those goods were not included in the class of goods for which registration is sought, Class 6, but fell into Class 7. As to the word TITAN being the name of a rocket‑powered ICBM Mr Mansfield submitted that being the name of an American product that use had no relevance to the use of the word as a trade mark in Australia. With regard to the alleged geographical significance of the word he claimed that a small island could not be the seat of a manufacturing industry where the goods in question would be produced and that TITAN was not therefore a geographical name for the purposes of the Act and did not come within the prohibition of para 24 (1)(d).
         In my opinion the primary meaning of the word "titan" to ordinary purchasers of goods would be one of a number of mythological beings of superhuman size and strength although they might not be able to identify them more precisely as the race of giants fathered by Uranus on Gaia, or Mother Earth.  The other meanings suggested by Mr Anese are all secondary or derivative.  No doubt as applied to goods the word does carry some laudatory suggestion of power, size and strength but this has never been considered a bar to registration as the state of the Register, on which there are some 37 marks consisting of or containing the word TITAN, bears out.  As the name of certain types of machines or an American missile which may have some indirect connection with the goods for which the applicant seeks registration I believe also that the word is used only in this secondary, suggestive sense.  I do not consider that the word contains a direct reference to any of the goods specified in the application and therefore in my view there is no basis for an objection to the mark in terms of s 24 of the Act.
Intention to use
Mr Anese alleged that in the seven years since the lodgement of the application on 4 August 1983 there had been no use of the mark in relation to small buildings, which are the goods of interest to the opponent, or most of the other goods for which registration is sought. This was shown, he said, by the declarations from persons in the trade lodged in support of the opposition. The use of the words "trade mark" in s 40(1) necessarily implies by virtue of the definition of "trade mark" in s 6, that an application may only be made under the former section by a person who either uses or proposes presently to use the mark applied for in respect of the goods specified in the application. In support of this submission he referred me to Ducker's Trade Mark 45 RPC 397, at 402:

"I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods.  I think that the words "proposed to be used" mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered."

The applicant's stated intention to use the mark, said Mr Anese, fell far short of the "resolve and settled purpose" there stipulated.  Mr Anese further submitted that the statement of intended use filed by the applicant on 15 July 1985 was of low probative value for the following reasons:

1. It was made in respect of the goods in the application as filed, and the statement is impugned by the subsequent amendment of those goods.

1. The long period of time which has elapsed since the statement was made renders the statement of little, if any, probative value.  The intent has not been reaffirmed even though the applicant had the opportunity to do so.  (Consider FUDDRUCKERS case).

1. The Statement of Use is vague as it purports to be made in respect of all goods in Class 6.  However, classification and reclassification of goods is ongoing.  Goods have been added to Class 6 since the statement was made.  It is therefore unclear whether the statement covers goods added to Class 6 after the application was filed or after the statement was made or at any subsequent time.  On the one hand, the registration, if granted for the statement of goods as presently worded, would cover goods not classified in Class 6 at the time when the application was made or the Statement of Use made.  The class is not closed.  New items are likely to be added to the class in the future.  The applicant can not make a statement of proposed use in relation to such new classifications or reclassifications for the simple reason that such goods were not classified in Class 6 at the time of the application or the time when the statement was made (nor could the person making the statement know beforehand what goods would subsequently be added to Class 6).  Thus the registration should not be granted, and if the registration is granted, it will be invalid, as it would cover goods subsequently added to the class which were not, in fact, covered by the Statement of Use.  It is likely that the person making the statement did not even know what goods were classified in Class 6.  The fact that goods are classified in the same class does not mean that they are similar, as a perusal of Class 6 will show.  The classification of goods is, in fact, an artificial categorisation, and any statement purporting to cover all goods in a class must similarly be tainted with such artificiality.  As the Statement of Use is therefore vague and imprecise, it should be given little, if any, value.

The fact that there had been no demonstrated use of the mark in the seven years since the application was made, on the other hand, led to an inference, said Mr Anese, that there was no intention to use the mark on the goods, or at least in relation to small buildings. The applicant could have produced evidence to show that it had used the mark but had chosen not to do so. Because Class 6 included such disparate goods it was not unreasonable to presume that the use of the mark on all such goods would be beyond the capacity of the applicant and yet it had filed no file evidence whatever to support its alleged intention to use the mark in relation to all such goods. Such lack of evidence was relevant to the issue whether the applicant had the requisite intention to use the trade mark. In this regard Mr Anese referred me to Dom Perignon Trade Mark (1985 AIPC 90 ‑ 238 and Fuddruckers Trade Mark (1989) AIPC 90 ‑ 596. Although the making of a trade mark application is to be regarded as prima facie evidence of intention to use (Aston v Harlee Manufacturing Company (1960 103 CLR 391) it is only prima facie evidence. In the present case the opponent, said Mr Anese, had rebutted the prima facie evidence of intention to use and the onus had therefore shifted to the applicant to justify registration: Dunn's Trade Mark (1890 7 RPC 311 at 315 ‑ 316.
Mr Mansfield submitted that the law to be applied in the present case is as stated in Aston v Harlee (supra). In that case Fullagar J. referred to the words of Dixon J, as he then was, in the earlier case of Shell Co. of Australia Ltd v Rohm and Haas Co. (1949) 78 CLR 601, at 625:

"[I]t is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship.  The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.

His Honour said: "authorship ... involves the origination or first adoption of the word or design as and for a trade mark."  (at 628)

Taking that judgment as a basis he relied on Paintmaster Products v Lewis Berger & Sons (1925) 25 AOJP 1915 in which the Registrar expressed the view that the applicant might properly elect to delay use pending the outcome of the application for registration.  In that case it was said (at 1921) that:

The first of the three real issues which the opponent has raised against the applicants' mark with which I propose to deal relates to the fact that the applicants can claim no user for their proposed trade mark.

It is true that the applicants do not make any claim to have ever used "Paintmaster" as a trade mark for paints and varnishes, but the fact remains that application 106,606 has been made. While there is a definite onus on the applicants to show that their mark should proceed to registration, the lodging of an application for registration of a trade mark gives an inchoate right to its exclusive use. (Shell Company of Australia Limited v Rohm and Haas and Company Limited (Ditrene case), 78 CLR 601).

I think that the applicants have shown that they have an honest intention to use their trade mark and that the fact that they have not yet used the mark (although a period of four years has passed since they lodged their application) does not in my opinion establish that they have been dilatory in exploiting their inchoate rights.  In his evidence before what is well‑known as the Herschell Committee, Edmund Johnson showed that many applicants prefer not to use a mark practically in trade until it is registered.  When I take into account the applicants' claim that they intended to use the mark on new types of paints and varnishes and that much time and preparation would be involved in ensuring that their venture would be successfully effected on the scale an enterprise of their kind would launch, I am satisfied that their rights arising from the fact of the lodgement of their application cannot be extinguished at this stage on the grounds that they have shown no intention to use the mark.  The applicants obviously trade on a grand scale.  There is every reason to accept their claims that they are actually preparing to place new types of paints and varnishes on the market and that those goods will bear "Paintmaster" as their trade mark if their application is registered.

Mr Mansfield then referred me to a number of cases in which registration had been refused or a mark expunged on the ground that the applicant or registered proprietor had no bona fide intention to use the mark. These were Re Registered Trade Marks of John Batt & Co 15 RPC 534; In the Matter of Ducker's Trade Mark 45 RPC 397; Rolewa Rentals Pty Ltd v Champagne Moet et Chandon (1985 AIPC 90 ‑ 238 and Sharwood v Fuddruckers 15 IPR 188. In all of these cases, he said, there was clear evidence that the proprietor of a registered mark or the applicant for registration could not have had a bona fide intention to use the mark either because they had trafficked in the marks or because they did not have the capacity in a business sense to carry out such an intention or because the application for registration was merely speculative. In each case the application was refused or the mark expunged in respect of all of the goods or servcies.  He submitted that it was not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and that the lodgment of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use.  The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.   He said that in contrast to the above cases the present applicant was at the date of application a major manufacturer and a dealer in goods within the class for which registration is sought, namely, Class 6.  The evidence led by the opponent did nothing to cast doubt on the intention of the applicant to deal in a wide range of Class 6 goods throughout Australia.

         In relation to these latter submissions I must say at once that there is no evidence at all before me as to the nature of the applicant or its business activities.  No evidence as to these matters was led by the applicant.  At the same time I must also say that there was no obligation on the applicant to do so.  Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.  It was common ground that the onus was on the opponent to make out a prima facie case of lack of bona fides.  This had to be so in view of the words of Fullagar J. in Aston v Harlee (supra), at 401:

"There is another element mention by Dixon J in the Shell Co's Case*, which is stated as essential to the proprietorship of an unused trade mark.  That element is the intention of the applicant for registration to use it upon or in connexion with goods.  As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it.  There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.  Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.  A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use.  If he in fact does not use any of them for the period specified in s 72, the mark or marks may be expunged under that section.  On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars:  the effect of In re Registered Trade Marks of John Batt & Co.+, is I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal."

* (1949) 78 CLR 627

+ (1898) 2 Ch 432; 1899 AC 428

(The statement referred to from Batt's case reads: "A Trade Mark cannot properly be registered for goods in which the Applicant does not deal or intend to deal.")  Whether this is a case of a manufacturer of confectionery attempting to register a mark in respect of motor cars I have no means of knowing given the lack of evidence.  Nevertheless, in my opinion the opponent has not discharged the onus on it of displacing the prima facie evidence of the applicant's intention to use the mark.  I would only add, in accepting Mr Mansfield's submission, that I cannot think the Registrar is called upon in opposition proceedings to institute an enquiry as to the intention of any applicant with respect to each and every item of goods or services included in one of the prescribed classes.  In contrast to other systems where the law requires that the goods or services in respect of which registration is sought must be individually enumerated it has been a longstanding practice of the Registrar to allow applications for registration in respect of all the goods included in one of the prescribed classes.  Section 40 of the Act only requires that the application "shall specify the goods or services in respect of which registration is sought" (sub‑section 40(2)) and that the application "shall not be made in respect of goods or services comprised in more than 1 class" (sub‑section 40(3)).  There is no express prohibition of registration in respect of all the goods or services comprised in one class.  Indeed the practice is recognised in regulation 8(1) of the Trade Mark Regulations which by virtue of s 6 of the Act are part of the Act.  Reg 8(1) is in the following terms:

(1)An applicant for the registration of a trade mark in respect of two or more different goods, or all the goods included in one of the prescribed classes of goods, shall furnish in support of his application a written statement indicating that the applicant uses or proposes to use presently the trade mark in relation to all the goods specified in the application or the goods included in the class of goods specified in the application.

I cannot therefore accept Mr Anese's submission that the applicant's statememnt of user is impugned because the nominated class contains disparate goods or because the content of that class of goods may change over time.  If it can be shown that the mark has not been used on certain goods within the specified period the proper course is to take proceedings for the removal of the mark from the Register under the non‑use provisions of the Act.  I also cannot accept Mr Anese's argument that the applicant's statement of use is of extremely low probative value because on all the relevant authority the onus was not on the applicant to prove anything.  In Fullagar J.'s words in Aston v Harlee (supra) the applicant is not required to "establish affirmatively" that he intends to use the mark.  On the contrary, the onus is on the opponent to prove the lack of such an intention.
         Mr Anese fastened on the word "presently" in reg.8 stating that that word is defined in The Macquarie Dictionary as meaning "in a little while or soon, at this time, currently; immediately".  According to any of these definitions, he said, the mark was not used "presently".  But Fullagar J. said in the passage already cited supra that he did not think that intention "ought to be regarded as meaning an intention to use immediately or within any limited time".  Mr Anese claimed that seven years had elapsed since the filing of the opposed application with no demonstrated use of the opposed mark, at least in relation to small buildings.  The evidence for this is the statement of the opponent himself in his leading declaration that at the time when he first adopted and used the trade mark he was not aware of the mark TITAN having been used in Australia by any other person or company in relation to "metal buildings and structures, particularly garages, carports, patio covers, sheds including garden and tool sheds and worksheds, farm buildings and light industrial buildings", and the statement of the seven trade declarants, all from the State of Queensland, that at the date of making the declaration they were not aware of any person other than the opponent having used the word TITAN in relation to those same goods.  This evidence falls short of establishing the absence of use by the applicant.  Also, the Paintmaster case (supra) in which it was found as a matter of fact that there had been no use at all of the mark in suit by the applicant for a period of four years, appears to countenance a delay in the use of the mark pending the resolution of opposition proceedings.  In summary, then, I find that the opponent has not succeeded in shifting the onus onto the applicant of establishing affirmatively its bona fide intention to use the mark.
Section 33
         Section 33(1) of the Act provides as follows:

33.(1)Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, or goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first‑mentioned trade mark is, or will be earlier than the date of registration of the second‑mentioned trade mark.

Mr Anese claimed that in terms of that sub‑section the applicant's mark was not capable of registration because of the existence of a number of registered marks the dates of registration of which were earlier than the date of lodgement of the application which should the mark become registered would be its date of registration by virtue of sub‑section 53(2).  Details of those marks are as follows:

No.              Mark   Goods      Date of

____________________________________________________________________

1. 6   TITAN         The Titan       Nails,brads,      2. 7.06  
     Manufacturing    spikes,staples,
     Co Pty Ltd      tacks,pins,
     barbed wire and
     wire             

1. 6   R.MUSHETS     Samuel Osborn    Steel            11. 1.08
                TITANIC STEEL  & Co Ltd

1. 6   TYTON         United States    Fluid conduction  13.7.60
     Pipe and        pipes and cast
     Foundry         iron pressure
     Company         pipes and
     specials or
     fittings used
     with such pipes  

1. 6   HIGH‑TITAN     Unbrako Ltd     Screw wrenches    12. 4.61

1. 9   TITRON        Titron Instru‑   Scientific and    28. 8.62
     ments Pty Ltd    electrical
     apparatus and
     instruments      

B277860   6   TITA          Tita Fittings    Metal pipes and   24. 4.74
  Pty Ltd         metal pipe and
  plumbers' fittings
  including valves,
  float valves, non‑
  return valves,
  pressure relief
  valves, foot valves,
  control valves;
No.              Mark   Goods      Date of

____________________________________________________________________
  connectors, couplings,
  unions, tees, elbows,
  bends, nipples,
  hexagon nipples, bushes,
  sockets, crosses,
  locknuts, backnuts,
  reducing bushes,
  extension pieces,
  reducers, returns,
  adaptors, plugs, caps,
  branch pipes, pipe
  clips, and pipe joints
  all being of metal
  and being included
  in this class.

1. 6   TITAN         Chubb Australia  Strongrooms,     26. 4.83
     Ltd             security vaults,
     and safes, doors,
     door frames,
     locks and other
     locking devices
     included in Class 6
     for strongrooms,
     security vaults and
     safes; and fittings
     included in Class 6
     for all the
     aforesaid goods.

Mr Anese claimed that trade mark No. 443 although registered in the same name as that of the present applicant belonged to a New South Wales company whereas the present applicant is a Victorian company.  Mr Mansfield denied this saying that the mark belonged to the present applicant.   As Mr Anese adduced no evidence to support this charge and as the Register shows that the mark is registered in the name of a Victorian company I need say no more about the supposed objection under s 33.
         With respect to trade mark No. 5507 Mr Anese referred me to the dictionary definitions which give the word "titan" as an adjective with the meaning of "titanic".  On the basis of this he submitted that use of the applicant's mark would cause confusion and deception of the public because of the existence of that registered mark.  However, I consider that overall the two marks are quite different and that there would be little likelihood of deception or confusion in view of the nature of the goods for which the mark is registered.
         Trade mark No. 161194 is registered for the word TYTON in respect of goods in Class 6 which are therefore the same goods as some of the goods comprised in the present application.  Mr Anese submitted that TYTON is identical phonetically to TITAN and that therefore confusion would result from the use of the two marks in respect of the same goods especially in, for example, radio or television advertising.  Mr Mansfield naturally stressed the visual differences between the marks.  There is no evidence as to the actual or likely pronunciation of the word TYTON, in particular whether the vowel of the second syllable is distinctly pronounced or reduced to a neutral vowel or schwa as in the word TITAN.  In any case the words are quite distinct visually and once again in view of the nature of the goods I consider the possibility of deception or confusion of potential purchasers of such goods to be fairly remote.  I also think that radio or television advertising of such non‑consumer goods would be relatively rare.
         Trade mark No. 166192 is the word HIGH‑TITAN and is registered in respect of "screw wrenches".  These goods are included in Class 8 and although this is not conclusive of the matter I do not think that these goods can be considered goods of the same description as goods included in Class 6.  Therefore no objection exists in terms of s 33.
         Trade mark No. 175737 is registered in respect of "scientific and electrical apparatus and instruments" which are goods included in Class 9.  The mark consists of the word TITRON.  Although there is some similarity between that word and the word TITAN once again the goods in my view are of quite a different description from those of the present application.  That together with the difference between the marks makes an objection under s 33 quite untenable.
         Trade mark No. 390475 consists of the word TITAN, which is identical to the applicant's mark, and although removed from the Register is capable of restoration pursuant to the provisions of s 71.  It is registered in respect of goods which fall within Class 6 for all of which goods the applicant originally sought registration.  The mark therefore constituted an objection to the registration of the applicant's mark and in the course of examination the examiner duly raised such an objection.  The applicant sought the amendment of its application to exclude the goods of the registered mark from the ambit of the proposed specification.  The examiner considered this sufficient to overcome the objection which was then withdrawn.  I see no reason to disagree with the examiner's conclusion that such an exclusion would obviate the possibility of confusion and deception, the goods of interest to the proprietor of the cited mark being of a quite specialized nature.
         There remains one mark of those raised by Mr Anese as constituting objections to the applicant's mark in terms of s 33.  This is No. B277860 consisting of the word TITA and registered in respect of metal pipes and various plumbers' fittings which are goods which fall within Class 6 and are therefore included in the applicant's proposed specification of goods.  Although there is a slight difference between the words TITA and TITAN I consider that overall the marks are so alike both aurally and visually as to be deceptively similar within the meaning of sub‑section 33(1).  This is particularly so in view of the nature of the goods in respect of which the trade mark is registered.  Many of those goods would be sold through retail hardware stores to tradesmen or even to the ordinary home handyman.  The potential for confusion or deception would thus be extremely high.  I therefore find that trade mark B277860 stands as an objection in terms of sub‑section 33(1) to the registration of the applicant's mark.
Section 28
         I come now to the heart of Mr Anese's case on behalf of the opponent, that registration of the applicant's mark would be contrary to the provisions of s 28 which is in the following terms:

A mark ‑

(a) the use of which would be likely to deceive or cause confusion;

(b)the use of which would be contrary to law;

(c)which comprises or contains scandalous matter;  or

(d)which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

Simply stated Mr Anese's position is that the opponent has acquired such a reputation in the trade mark TITAN that use by the applicant of its mark would be likely to deceive or cause confusion within the meaning of para (a) of s 28.
         The evidence for the reputation of the opponent's mark is contained in the leading declaration of the opponent, John Terence Coyne, and in the supporting declarations already mentioned.  In his declaration Mr Coyne states that he trades as TITAN INDUSTRIES and that he is the owner of a registered business name in Queensland in respect of those words.  He has applied to register the word TITAN in respect of goods in Class 6, namely: "metal buildings and structures, particularly garages, carports, patio covers, sheds including garden and tool sheds and worksheds, farm buildings and light industrial buildings".  He claims to be the proprietor of the trade mark in Australia in relation to those goods.  He states that he commenced to use the goods in January, 1985 and that he has used the mark continuously since then both by himself and by a company, Titan Constructions Pty Ltd., of which he is a director and shareholder, under licence from him.  The mark has been used in the States of Queensland, New South Wales and Victoria.  Sales of goods under the mark have risen dramatically over several years reaching approximately $7 500 000 in the year 1988/89.  The mark has been advertised extensively in brochures, pamphlets, television, radio and press, yellow pages listings and special displays, on signs at product displays and building display centres.  For the year 1989/90 approximately $154 700 was expended on advertising the mark.  The mark is also featured prominently on the stationery of TITAN INDUSTRIES and Titan Constructions Pty Ltd.   Mr Coyne further states that at the time of adopting and first using the trade mark TITAN he was not aware of the use by any other person of that mark in relation to the particular goods and that he is not aware of any use of the mark on those goods by any other person at present.  At the time of lodging the notice of opposition he had not received any complaint by any person regarding his use of the mark nor was he aware of any instances of confusion arising out of his use of the mark in relation to the goods.   Exhibited to Mr Coyne's declaration are brochures and photographs illustrating some of the goods sold under the trade mark, labels applied to the goods, representative samples of advertisements for goods sold under the trade mark and samples of stationery and order forms bearing the mark.
         The seven supporting declarations are from persons of considerable standing in companies engaged in the manufacture of the goods here in question or in related industries.  Their experience ranges from five to 24 years.  The declarations are in questionnaire form and are designed to elicit from the respondents without leading their knowledge of the mark, their length of familiarity with the mark, with whom the mark is associated and the geographical area within which familiarity with the mark is claimed.  All seven declarants associate the mark TITAN with the applicant and with the manufacture of at least garages, more generally with garages, carports and sheds.  Four declarants have known of the mark for a period of five years and three declarants for four years.  Four declarants know of the mark in both Queensland and Victoria while three know of it only in Queensland.  On the whole the evidence shows that the mark is well known in the trade in Queensland at least in relation to metal garages, carports and sheds and to a lesser extent in Victoria.  On the basis of this evidence it may be accepted that use by the applicant of its mark, now, at least in relation to metal garages, carports and sheds and at least in the States of Queensland and Victoria may lead to confusion amongst a substantial number of persons.  The test to be applied under s 28 is the well established one of Evershed J. in Smith Hayden & Co's Application (1945) 63 RPC in relation to s 11 of the U.K. Act.  Adapted to the case in suit that test may be stated thus:

"Having regard to the opponent's use of his mark TITAN, is the tribunal satisfied that the mark applied for, TITAN, if used in a normal and fair manner in connection with any goods covered by the registration proposed will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?"

On the basis of this test, as I have said, I could not be satisfied that the applicant's use of its mark used in a normal and fair manner in connection with metal garages, carports and sheds would not be reasonably likely to cause deception and confusion amongst a substantial number of persons.

However, this finding is not conclusive. Section 28 has been the subject of recent consideration by the Courts and, in particular, by the High Court in New South Wales Dairy Corporation v Murray Goulburn Co‑operative Company Ltd 18 IPR 385 (the Moo case). In that case the Court held, by a majority, that the operation of para 28(a) is limited by a requirement of blameworthy conduct on the part of the proprietor of the mark, that is, that the likelihood of deception and confusion has been brought about by the actions of the proprietor himself. This is so whether as a result of reading para 28(a) conjuctively with para 28(d) or of construing 28(a) in the context of the Act as a whole together with general policy considerations. The Federal Court had earlier reached the same conclusion in Riv‑Oland Marble Co (Vic) Pty Ltd v Settef SpA, also a majority decision. At the time of the hearing of this matter the High Court decision in the Moo case had not been handed down but the Federal Court had decided unanimously in Murray Goulburn Cooperative Co Ltd v NSW Dairy Corporation 16 IPR 289 that para 28(a) was limited by para 28(d). Mr Anese sought to distinguish the earlier Federal Court decisions in the Moo and Riv‑Oland cases and also that of HTX International Pty Ltd v Semco Pty Ltd 1 IPR 403 to similar effect on the following grounds:

1. the earlier cases related to expungement of registered marks, not the initial registration of a mark;

1. there has been no wrongdoing by the opponent in the present case.  The opponent's use of his mark has been honest and not in breach of any of the applicant's rights, since:

(a)the applicant's mark is not registered (and cannot be registered validly in respect of small buildings); and

(b)the applicant has not used its trade mark in relation to small buildings and has no common law rights or proprietary rights of any kind in the trade mark in relation to such goods.

As the applicant's mark is unregistered, it is clearly wrong to proceed on the basis that it will be registered and the opponent is in breach of the applicant's rights.  The issue is whether the mark should be registered at all.  It is illogical to adopt as a premise, the issue which is to be proved;

1. the marks under attack in the earlier cases had been used on the goods in question, or closely related goods by the registered proprietor.  In this case, there has been no use by the applicant on most of the goods to justify any entitlement to the mark for those goods;

1. there has been blameworthy conduct on the part of the applicant, namely no use or bona fide intention to use on all goods applied for, particularly small buildings;

1. the applicant's mark is not entitled to protection in a court of law, at least insofar as small buildings are concerned, as its use on small buildings would amount to passing off and a breach of the Trade Practices Act (ss 52, 53); and

1. the applicant's mark cannot possibly be distinctive of its goods, at least in relation to small buildings, for the simple reason that it has been used by the opponent on such small buildings but not by the applicant!

It is true that the cases mentioned above all relate to applications for the expungement of registered marks.  It is also true that of the judges of the High Court in the Moo case (supra) only Brennan J. expressly adverted to the question of applications for registration when he said, at 404:

"Paragraph (a) of s 28 prohibits the original registration of a mark the use of which would be likely to deceive or cause confusion (albeit the prohibition is qualified by the concurrent use provisions: s 34) but, after registration, para (a) operates in a different regime. Upon registration, the proprietor acquires the statutory right to the exclusive use of the mark "subject to any conditions or limitations to which the registration is subject": s 58(2). In that regime, to hold that a registered trade mark is "wrongly .... remaining in the Register" whenever the use of the mark becomes likely to deceive or to cause confusion would be to expose the registered proprietor's statutory right to destruction at the hands of any person who creates the likelihood of deception or confusion. A premium would be placed on what Windeyer J. called "the assiduous efforts of an infringer": Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's Application (1968) 118 CLR 128 at 133. On the other hand, to hold that a trade mark, validly registered, can never be expunged if its use becomes likely to deceive or cause confusion by reason of circumstances occurring since registration would empower the registered proprietor himself to create that likelihood with impunity. Neither of these constructions accords with the objects of the Act which seeks both to give some protection to the public against the deceptive or confusing use of trade marks (Eno v Dunn (1890) 15 APP Cas 252 at 263‑4; Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 at 458‑9) and to confer on a registered proprietor for the time being a species of property in a trade mark (see ss 57,82) entitling him to the rights conferred by s 58 and allowing permitted users the derivative benefits to which s 77 refers.

In an application for original registration, there is only one object to which effect must be given but, in an application after registration, effect must be given to both objects.  The operation of s 28(a) therefore depends on whether it is applied to an application for original registration or to an application for expunction of an entry which is attacked in s 22 proceedings as wrongly remaining in the register."

How s 28(a) is to be applied differently before and after registration is not clear.  On the other hand Bowen C.J. in the Federal Court decision in the Moo case said, at 327:

"I am, I think, conscious of leaning against a construction of s 28 in regard to blameworthy conduct on the part of a proprietor which would lead to a situation described by Windeyer J. where the proprietor of a mark might be denied or lose registration by reason of 'the assiduous efforts of an infringer'.... or to adapt the words to cover the period before registration 'the assiduous efforts of a misappropriating user'."

The references to "might be denied .... registration" and "the period before registration" clearly imply that the interpretation of s 28 favoured by the Court applies just as much to applications for registration as to applications for expungement.
         In the same case, Lockhart J. said, at 350

"If ... s 28(a) has an operation which is not restricted by reference to s 28(d), then a trader who uses the registered trade mark of another trader may exploit that infringing use of the mark in the market‑place to the point where it can be said that the use of the registered mark by the proprietor of the mark would be likely to deceive or cause confusion.  ....  It would be an extraordinary result if this conduct, which constituted infringing conduct, could produce either the invalidity of the mark or its liability to expungement.  It is no answer to say that a court has a residual discretion to decline to order expungement even where a mark is shown to be invalid.  The fact that the infringing conduct of a rival trader, in the circumstances to which I have referred, could produce the consequence that a registered mark becomes invalid is itself so extraordinary a result that its correctness could only be accepted as a last resort."

It would be equally extraordinary if the proprietor of the mark at law should be deprived of his rights and denied registration because use by him of his own mark would cause deception and confusion as a result of the "assiduous efforts of a misappropriating user".  That the applicant is the proprietor of the mark at law is clear from the authorities.  As Fullagar J. said in Aston v Harlee (supra) at 398‑399:

"Section 32 of the Act provides that any person claiming to be the proprietor of a trade mark may apply to the Registrar for the registration of his trade mark.  The right to registration depends, therefore, on proprietorship of a mark.  The conception of proprietorship, other than proprietorship acquired by a user which has made the mark distinctive of the applicant's goods, is a difficult conception, but it has been explained by Dixon J. in Shell Co. of Australia Ltd v Rohm and Haas Co (1), where his Honour refers to the history of the English legislation.  His Honour quotes Cotton L.J. as saying in In re Hudson's Trade Marks (2): "The difficulty is this:  Is a man to be considered as entitled to the use of any trade mark when he has never used it at all?  That is a difficulty, but I think the meaning is this.  If a man has designed and first printed or formed any of those particular and distinctive devices which are referred to in the first part of s 10, he is then looked upon as the proprietor of that which is under that Act a trade mark, which will give him the right so soon as he registers it." (3).  Dixon J. then sums up the position by saying:  "It is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship.  The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration" (4).  "Authorship", says his Honour a little later, "involves the origination or first adoption of the word or design as and for a trade mark." (5).

(1) (1949) 78 CLR 601, at pp.625 (4) (1949) 78 CLR at p. 627

et seq. (5) (1949) 78 CLR at p. 628

(2)(1886) 32 Ch.D., at p.329,320.

(3)(1949) 78 CLR at p. 626.

The use of the mark by the opponent subsequent to the date of the application was therefore a misappropriating use.  At that date the applicant became the proprietor of the mark and acquired the right to the registration of the mark in its name.  It is not to the point that the misappropriation by the opponent was entirely innocent.  I have no reason to doubt Mr Coyne's statement that he was not aware of the mark TITAN having been used by any other person in Australia in relation to the goods in question.  Even though the applicant's mark was not registered and had not been used, nevertheless according to the authorities it was the proprietor of the mark in Australia in relation to the goods.
         In relation to point (iv) of Mr Anese's submissions I have already found that the opponent has failed to make out a case of lack of bona fide intention to use the mark in relation to the goods applied for.  It follows that there is no evidence of blameworthy conduct on the part of the applicant which would disentitle it to protection in a court of justice.
         Whether use by the applicant of its mark would constitute passing off or a breach of the Trade Practices Act so as to disentitle the mark to the protection of a court of law is a matter for the decision of a court of competent jurisdiction and not a matter on which the Registrar is empowered to pronounce.  It is also not within the jurisdiction of the Registrar to decide whether the applicant's mark if registered would be invalid and liable to be expunged under s 22 as an entry wrongly remaining on the Register.
In relation to the latter point Mr Anese contested the finding of the Registrar's delegates in a number of issued decisions dealing with opposition proceedings that the relevant date for the determination of rights in such matters is the date of lodgement of the opposed application. In reaching this finding the Registrar's delegates have relied on the statement of Kitto J. in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (the Southern Cross case) (1954) 91 CLR 592. In that case Kitto J. said, at 595: "In applications for registration, the rights of the parties are to be determined as at the date of application." But, said Mr Anese, the Southern Cross case was concerned principally with whether goods were of the same description, not section 28 matters. And yet Kitto J. had said, at 594, immediately before the quoted words:

"I shall put s 25 out of the way at once, because I agree with the Law Officer in thinking that it is quite inapplicable to this case.  It was relied upon for its provision that, subject to the Act, the Registrar shall not register in respect of goods a trade mark so nearly resembling one belonging to a different proprietor which is already on the register in respect of the same description of goods as to be likely to deceive.  The appellant has trade marks on the register consisting of the words "Southern Cross" in respect only of (i) well‑drilling and boring machinery hand or power; (ii) milking machines; (iii) engines and windmills.  It has trade marks on the register consisting of the device "S" over a cross in respect only of (iv) windmills, engines, well‑drilling machinery, pumps, pumping machinery, pump rods, pump rod joints, crab winches, saw benches, motor pull‑out winches, belt‑driven or gear‑driven pumpheads; (v) all kinds of tubing and valve cocks and fittings for same (of metal); and (vi) milking machines.  None of these goods can be said to be of the same description as refrigerators.

I am concerned, therefore, to consider only s.114, the material provision of which is that no mark, the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice shall be registered as a trade mark."

(Sections 25 and 114 were the then equivalents of ss 33 and 28 of the present Act.)
         In relation to s 28 then I find, firstly, that as at the date of the lodgment of the application there was no possibility of deception or confusion with the opponent's mark which it had not yet begun to use.  Secondly, I consider that even if deception and confusion would be caused at present by the applicant's use of its mark in relation to small buildings, that likelihood has not been caused by any blameworthy conduct on the part of the applicant.  In this regard I am bound by the decision of the High Court in the Moo case (supra) that the operation of para 28(a) is limited by a requirement of blameworthy conduct on the part of the proprietor of the mark.  As there is no evidence of such conduct by the applicant the rights acquired by the lodgment of the application are not extinguished by the operation of para 28(a).
Public Interest
         Mr Anese submitted that the paramount consideration is the public interest and that it is not in the public interest that marks whose use would be likely to deceive or cause confusion should be allowed to be registered.  While this may be true as a general proposition several members of the High Court in the Moo case expressed the view that while the predominance of the public interest over private interests was the essential feature of earlier Trade Marks Acts the existence of certain provisions in the present Act which are designed to protect private interests of traders had restricted that predominance.  Such provisions are s 34(1), s 34(2), s 56, s 58(3), Part IX and s 82.  It was this consideration which led Mason C.J. and Brennan J. to the conclusion that para 28(a) should be read so as to import a requirement of blameworthy conduct on the part of the proprietor of the mark.
         In any case, while a court may have a discretion to refuse expungement under s 22, in view of the mandatory language of s 28 and the decision of the High Court in the Moo case I do not think the Registrar has any such discretion under s 28 and s 50 to refuse to register a mark in the circumstances of this case.
Conclusion
         In the result I have found against the opponent on the issues of intention to use, distinctiveness of the mark and Section 28.  However, I have found that an objection to the registration of the applicant's mark exists within the meaning of s 33(1) of the Act because of the existence of registered trade mark No. B277860.  The applicant may remove this objection by amending the specification of goods for which it seeks registration so as to exclude the following goods:

Metal pipes and metal pipe and plumbers fittings including valves, float valves, non‑return valves, pressure relief valves, foot valves, control valves, connectors, couplings, unions, tees, elbows, bends, nipples, hexagon nipples, bushes, sockets, crosses, locknuts, backnuts, reducing bushes, extension pieces, reducers, returns, adaptors, plugs, caps, branch pipes, pipe clips and pipe joints all being of metal and being included in this class.

This amendment should be sought within two (2) months of the date of this decision or the application will be refused.
         Both parties made submissions as to costs but I reserve my decision until the fate of the application is finally determined.

(M.A. HOMANN)
Hearing Officer
5 March 1991