The Waltzing Matilda Centre Limited v Jolly Swagmen Pty Ltd

[2002] ATMO 9

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:      Opposition by The Waltzing Matilda Centre Limited to registration of trade mark application 768214 (9, 41) - WALTZING MATILDA - filed in the name of Jolly Swagmen Pty Ltd.

Trade mark application number 768214 was filed on 23 July 1998 by Jolly Swagmen Pty Ltd (hereafter Jolly Swagmen).   Jolly Swagmen apply to register the trade mark waltzing matilda in respect of class 9 goods, namely:

Cinematographic goods in this class, films, motion pictures, slides, videos, videotapes, cassettes, recording discs, CDs, audio/visual tapes, cassettes, and discs; computer programs;

and in respect of class 41 services, namely:

Film production, production of motion pictures, videotapes, CDs, cassettes, records, radio and television programmes, production of shows; publication of books, texts; movie studios; rental of motion pictures, videos, cinema-films; entertainment services.

On 12 August 1999, in the Australian Official Journal of Trade Marks, the Registrar of Trade Marks advertised acceptance of application number 768214 for registration. 

On 11 November 1999, in accordance with the provisions of section 52 of the Trade Marks Act 1995 (hereafter the Act), The Waltzing Matilda Centre Limited (hereafter Waltzing Matilda Centre) filed notice that it opposed the registration of 768214. 

The grounds of opposition are stated as follows:

(a)     use of the opposed trade mark in relation to the specified goods and/or services would be likely to deceive or cause confusion;

(b)     the Applicant is not the owner of the opposed trade mark;

(c)     by reason of the reputation and rights acquired by the Opponent, the use of the opposed trade mark by the Applicant in relation to the goods and/or services specified in the application would be misleading or confusing and an infraction of the Opponent’s said rights;

(d)     registration of the opposed trade mark would prejudice the Opponent in the conduct of the Opponent’s business;

(e)     by reason of the matters set forth in any one or more of the foregoing paragraphs the Registrar in the exercise of his discretion ought to refuse registration of the opposed trade mark.

Waltzing Matilda Centre served and filed a declaration from Ian Jempson (dated 8 February 2000) in support of its opposition. Jolly Swagmen served and filed two declarations as evidence in answer, the first from Dennis Michael O’Keeffe (dated 28 November 2000) and the second from Robert Eric Michael Raymond (dated 7 December 2000).  Waltzing Matilda Centre did not serve any evidence in reply.

The matter came to a hearing before me in Canberra on Tuesday 11 December 2001.  Waltzing Matilda Centre was represented by Mr Andrew Musgrave of Counsel, assisted by Mr Matthew Hall of Phillips Fox, Lawyers, of Sydney. Jolly Swagmen was represented by Mr Peter Fisher of Fisher Adams Kelly, patent attorneys of Brisbane. 

Before turning to the facts as they emerge from the evidence, it is appropriate to make a preliminary assessment of the grounds.  I agree with Mr Musgrave that grounds (a), (b) and (c) respectively establish claims per the provisions of sections 43, 58 and 60 of the Act.  Ground (d) claims that registration of 768214 would prejudice the Opponent in the conduct of the Opponent’s business. Mr Musgrave asks me treat this as notice that Waltzing Matilda Centre opposes on grounds that the registration of 768214 would be contrary to law, that is, section 42(b). Grounds of opposition, however, must be clear and must be specific and statement (d) is neither. It is unclear, it is general and it is wide open to interpretation. I do not accept that this broad and unspecified claim of prejudice to the Waltzing Matilda Centre’s business, asserts paragraph 42(b) of the Act as a ground of opposition. Ground (e), as pointed out by Mr Fisher, is not a ground, but a pleading.  Inasmuch as they are stated in the notice of opposition to be grounds, I therefore dismiss grounds (d) and (e).

The Background

The opponent, Waltzing Matilda Centre, operates an establishment called The Waltzing Matilda Centre in Winton, a town in central Queensland. Mr Jempson has been with this organisation since December 1998.  At the time of his declaration, February 2000, he was the manager. He describes the Centre as a “themed complex”.   The principal feature appears to be a collection of exhibits concerning the history of the song Waltzing Matilda, and honouring its author, the poet A.B.Patterson.  The complex also includes the Qantilda Museum, which presents a history of Qantas and the Winton district; the Outback Regional Gallery, which hosts a program of art and photography exhibitions; a retail outlet named the Station Store; and the Coolibah Country Kitchen Restaurant.      

The complex appears to be the culmination of activities that commenced in the Winton district in the early 1960s when re-enactments of the Cobb and Co coach mail runs were conducted[1].  In 1970 the Winton and District Historical Society was formed[2] and participated in conducting the 1970 joint celebrations of the 75^th anniversary of the writing of the song Waltzing Matilda and the 50^th anniversary of Qantas.  In 1972 bush poetry competitions were inaugurated[3].  By the 1990s, plans were developing for a centenary celebration of the song, and for building a permanent cultural centre in Winton. The Winton Shire Counsel was closely involved and encouraged a public committee to foster these ventures.

[1] Jempson clause 13

[2] Jempson clause 14

[3] The Bronze Swagman Bush Poetry Award, Jempson clause 15

Many people contributed to organising and promoting the 1995 centenary celebrations and to developing the cultural complex. Numerous dignitaries were invited to participate in celebrations and to support the project. There was a good deal of media coverage, particularly in the Queensland rural press.  Australia Post issued a commemorative stamp. Education kits were produced for distribution in schools.  Wide community interest was generated.  Mr Slim Dusty, of country music fame, was patron and the centenary celebrations were launched on 12 December 1994 by Mr Paul Keating then Prime Minister, at the National Gallery in Canberra[4].  A host of associated poetry and performance events followed, and again, there were a number of reports in the media. 

[4] Jempson clause 33

In 1998 the plans for the cultural complex came to fruition, and in April of 1998, the Premier of Queensland opened the Waltzing Matilda Centre in Winton[5]. In February of that year, Mr Jempson records, the business name Waltzing Matilda Centre was registered[6] and in January 1999, the Waltzing Matilda Centre Limited, the present opponent, was incorporated and took over management of the complex[7].

[5] Jempson, clause 40

[6] Jempson clause 43

[7] Jempson clause 45

Advertising and marketing, says Mr Jempson, began in 1997[8]. Some $430,000 was initially outlayed for marketing and advertising. Promotional events and displays took place in Brisbane, Townsville, Sydney and Melbourne.  After April 1998, a further $35,000 was directed to advertising.  $8,000 was expended on brochures. $500 per month is now budgeted for regular advertising in newspapers, magazines, guides, directories, and radio, and in cinemas in Longreach, Charters Towers, Maryborough, Yamba, Forbes and Cowra.  None of these brochures and no examples of other advertising are in evidence. In December 1998, the Internet web site was set up.  Here, says Mr Jempson, Waltzing Matilda Centre advertises its Centre world wide[9].

[8] Jempson, clause 47

[9] Jempson, clause 44 - Mr Jempson says that by February 2000, there were 22,000 visitors to the site

In May 1999 Waltzing Matilda Centre produced a documentary video intended for retail sales[10]. It shows interviews with singers, and a performance of Waltzing Matilda at a large football match.  There is no evidence that any videos were in fact sold. The Waltzing Matilda Centre now uses this film in its exhibits to paying visitors[11].  Again there is no evidence of any turnover relating to this service. Nor is there any clear statement of dates on which the services was provided, how it is paid for, and what (if any) trade marks were in use in the provision and promotion of that service. I do note Mr Jempson’s statement that he oversees promotion and sales of Waltzing Matilda Centre’s goods and services “marketed under the name waltzing matilda” and his record that from 30 October 1999 the Coolibah Country Kitchen Restaurant has sold bakery products “under the trade mark waltzing matilda centre winton”[12].  I also note that the Station Store, now operating as a shopping centre, has sold a range of souvenirs and memorabilia by reference to the mark waltzing matilda centre winton[13].  Again, however, there is no material evidence of sales and no indication of what goods constitute the Centre’s souvenirs and memorabilia, to back these statements.

[10] Jempson, exhibit IJ16

[11] Jempson ,clause 60

[12] Jempson clause 10

[13] Jempson clause 11

I turn now to the applicant, Jolly Swagmen, and its history.

Jolly Swagmen was incorporated in 1998. The company emerged from a “loose partnership” between Mr Robert Raymond and Mr Dennis O’Keeffe and was dedicated to the creation of an “epic film” to be entitled Waltzing Matilda[14].  Mr O’Keeffe became a director.  Mr Raymond deposes that he and Iris Sabine Raymond are the beneficial owners of Jolly Swagmen[15].  Mr O’Keeffe, according to Mr Raymond’s evidence,[16] has since assigned to Jolly Swagmen, all rights he possessed in connection with and arising from use of the name waltzing matilda.  

[14] O’Keeffe clause 19

[15] Raymond clause 1

[16] Raymond clause 16

The proposed Waltzing Matilda film represents an alternative version of the origins of the words of the Waltzing Matilda song.  Mr Raymond says his interest was ignited by learning about the shearers’ strikes of the 1890s and from this interest there emerged an idea for a film.  With some encouragement from the author Thomas Keneally and the assistance of the late Dr Clement Semmler, a biographer of A B Patterson, Mr Raymond further researched the 1890s strikes. By 1995, the year of the centenary of the song, he was searching for a scriptwriter and, he says, had firmly decided to name the film Waltzing Matilda[17].  At the end of 1996 the screenplay was prepared, a copy was in the hands of the Australian Writers’ Guild, and the movie title Waltzing Matilda was registered with the Motion Picture Association of America Inc in California, USA[18].

[17] Raymond clause 5

[18] ibid

In the early 1990s Mr O’Keeffe, doing parallel research to Mr Raymond, produced a paper which he named Eight Days in 1894: the Events Surrounding the Writing of Waltzing Matilda[19]. 

[19] Raymond clause 15

Mr Raymond gives a broad brush account of the finances involved in pulling together a film project of the kind he intends.  He estimates costs at one hundred million dollars[20].  He has engaged a John McGuire as head of merchandising and licensing and together they have developed a business plan and strategies for commercialising the name Waltzing Matilda. As of December 2000, Mr Raymond deposes, financial support is secured[21], and various deals exist with “industry leaders and export companies with a view to realising this merchandising and licensing plan for the brand Waltzing Matilda”. Mr Raymond then instructed Fisher Adams Kelly to file for registration of the trade mark waltzing matilda, and thus the subject application came into being.

[20] Raymond clause 11

[21] ibid

It is apparent from the evidence that the plot for the Waltzing Matilda film is a very live issue for the parties, and for some communities in and around Winton. One way or another it comprises perhaps the best part of the paper and video evidence put forward by both Waltzing Matilda Centre and Jolly Swagmen.  On that account it may be worth observing that the plot is based on history as it unfolds in Mr O’Keeffe’s paper[22] (see above). In short ¾ instead of the tradition that holds A B Patterson was impulsively moved to jot down a few verses about a swagman who chose drowning in preference to arrest for sheep stealing ¾ the film would characterise the poet as a mediator in the shearers’ conflict[23] and, per the words of Mr Tony Hammill in a letter to the editor of the Weekend Australian, 15-16 April 1995[24], the “swagman” would be taken as a reference to “the suiciding arsonist shearer Samuel ‘French’ Hoffmeister”. However the research and plot development for the Waltzing Matilda film seem to me to have no relevance to the opposition grounds, and I have little need, I think, to say more either about A B Patterson or the story line of the proposed film.

[22] Raymond clause 14

[23] Raymond exhibit REMR-2, p4 column2

[24] Jempson exhibit IJ11

Standing

Before turning to the grounds of this opposition, there is an issue in respect of Fisher Adams Kelly’s standing and, in particular, Mr Fisher’s right to make representations.  Mr Fisher made it clear that he was not party to proceedings as an agent of Jolly Swagmen, but as an agent of a company called WM Productions Pty Ltd.   This company came to light in the course of an earlier hearing conducted in respect of this same opposition on 30 August 2001.  The issue then centred on a request from Jolly Swagmen to suspend the opposition. Waltzing Matilda Centre wished the opposition to proceed to a hearing and Jolly Swagmen sought a delay.  Jolly Swagmen there succeeded and a delay of some months was achieved.  The reasons for that finding are set down in my separate decision issued 3 October 2001.  The facts, briefly, were that in June 2001, Cole Downey, chartered accountants and insolvency specialists, advised Fisher Adams Kelly of the appointment of administrators for Jolly Swagmen. In July, Cole Downey notified the proposed disposition of Jolly Swagmen’s assets to a creditor, namely WM Productions Pty Ltd and in August 2001, Fisher Adams Kelly was told that WM Productions Pty Ltd, had purchased all of the assets and undertakings belonging to Jolly Swagmen.   Fisher Adams Kelly has since acted for WM Productions Pty Ltd. 

The issue of ownership of the Jolly Swagmen assets and undertakings is now before the Court.  For this reason, says Mr Fisher, assignment documents in favour of WM Productions Pty Ltd have not yet been filed.

Mr Musgrave contends, as he contended at the 30 August 2001 hearing, that WM Productions Pty Ltd has no standing and no right to be represented in this matter.  My view, however, remains as it was in October 2001, and I quote from that decision[25], at p7:

[25] not yet published

I agree with Mr Musgrave that, on the face of it, Jolly Swagmen is the person in whose name the application is for the time being proceeding and therefore it must be regarded as the applicant. I think that he is also right in that, so long as this remains the case, Jolly Swagmen is the only entity entitled to be represented as the applicant in respect of the section 52 opposition proceedings. However, in a departure from the terms of the old law, the Trade Marks Act 1995 provides for the assignment of pending trade mark applications. Subject to the Court’s affirmation of ownership, the evidence of the Fisher declaration is that, in compliance with the mandatory terms of section 107 of the Act, this transfer of title in trade mark application 768214 will promptly be recorded.  

These circumstances, I think, allow me to take into account, not just Jolly Swagmen, the person in whose name the application is for the time being proceeding, but any party who lays claim to the application, and is intent, once ownership is confirmed, on being recorded as assignee.   I therefore reject Mr Musgrave’s claim that in order to consider WM Productions Pty Ltd’s right to any standing, a gloss must be applied to the section 6 definition of applicant.   In view of the fact that the ownership issue is already before the Court, I also reject Mr Musgrave’s contention that failure to file an assignment application indicates a lack of urgency in the resolution of ownership.   Moreover, in light of the appointment of the Administrator, and of the number of parties whose interests are involved in the property and business of Jolly Swagmen, the Court is unquestionably the appropriate place for these matters to be dealt with. 

Accordingly, I agree with Mr Fisher, that it is appropriate to hear him as the agent for WM Productions Pty Ltd, in the matter of Waltzing Matilda Centre’s opposition to the registration of trade mark application number 768214.

I now turn to the grounds, and as mentioned above, there are three - first, under section 43, that use of the trade mark waltzing matilda  would be likely to deceive or cause confusion; second, under section 58, that Jolly Swagmen is not the owner of the trade mark waltzing matilda;  and third, under section 60, that the trade mark waltzing matilda  is similar to a trade mark in which Waltzing Matilda Centre has acquired a reputation in Australia, and use of the waltzing matilda  trade mark would therefore lead to deception or confusion.

Section 43 

This section reads:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Mr Musgrave submits that the words waltzing matilda communicate a message and when applied to the goods and services claimed, that message would be likely to lead to deception or confusion.   He points to the Jempson declaration and cites the body of exhibits associated with Winton’s 75^th and centenary celebrations of the Waltzing Matilda song.  This publicity, he says, substantiates the widespread knowledge of the song, and the strong historical connections it has with the Winton district.  The applicant, he says, seeks to appropriate this “communicative freight” and the connection with the Winton area.  The trade mark waltzing matilda, he says, represents the song, the history and the area of Winton and thereby, on application to Jolly Swagmen’s goods and services, will give rise to both deception and  confusion.

It is useful here to recollect that the goods and services Mr Musgrave speaks of  are:

Cinematographic goods ...  films, motion pictures, slides, videos, videotapes, cassettes, recording discs, CDs, audio/visual tapes, cassettes, and discs; computer programs ;  and

Film production, production of motion pictures, videotapes, CDs, cassettes, records, radio and television programmes, production of shows; publication of books, texts; movie studios; rental of motion pictures, videos, cinema-films; entertainment services.

The question is: does the trade mark waltzing matilda convey a connotation which is likely to lead to deception or confusion if it is used in connection with any of these goods or services?

Clearly, across the nation, the words waltzing matilda are very widely recognised and understood.  It is common knowledge, that as from primary school, children are taught about the Waltzing Matilda  song.  They learn to sing it, they are introduced to its colloquial terminology (waltzing matilda, jumbuck, billabong, tuckerbag...) and they learn about AB Patterson. 

Whether the Australian public in general is similarly familiar with the Winton connection, however I think is very doubtful.  In its attempt to show otherwise, Waltzing Matilda Centre rely on the evidence of the Jempson declaration and in particular on the large swag of press cuttings exhibited under IJ11.  This is a mixed bag of some 300 press items from over 50 different newspapers, starting in February 1994 and running through to the end of April 1995. The bulk of these cuttings are contemporaneous reports of the Winton centenary celebrations in April 1995 and reported particularly across country Queensland.  Newspapers include the Caboolture Shire Herald, Gympie Times, Central Queensland News, Gladstone Observer, Townsville Bulletin  and Longreach Leader.  There are also articles in principal national newspapers per the Brisbane Courier Mail, The Age, The Weekend Australian and The Sydney Morning Herald. These articles, however, are generally short pieces, they are few in number and merely report the centenary celebrations.  A large representation within exhibit IJ11 comes from the Longreach Leader.  It reports items from the appointment of a general manager for next year’s Waltzing Matilda Centenary at Winton (14 October 1994) to an eight page report, on 21 April 1995, on the success of the centenary celebrations.

Taken as a whole these press reports go to show that Winton’s centenary celebrations were reported briefly in the national press, and more widely in the Queensland rural press.  The reporting was very largely limited to the centenary celebrations, and with the end of the 1995 festivities, the reporting similarly comes to an end. While the bulk of exhibit IJ11 is impressive, it represents, in fact, only brief and limited publicity  quite thinly spread across some 50 different publications.  Like many different stories that fleetingly appear in the daily press, the reports of the Winton centenary celebrations would, in my view, have been largely forgotten by lunchtime. 

The publicity associated with the staging of the anniversary events in Winton, cannot in my view be held to have affected the public at large. It shows that events in Winton were reported but it does not show that ordinary purchasers would have been significantly affected by the coverage. In particular, it does not show that, as a result of media coverage, prospective buyers of cinematographic goods, recording equipment, and computer programs; or prospective clients for services such as the production of films, recordings, radio and television programmes; or the publication of books; the provision of movie studios; or the renting of films or entertainment services,  would perceive a connection between the words waltzing matilda and Winton.  The Jempson evidence does not convince me that, as applied to the broad range of consumer goods and services nominated, the trade mark waltzing matilda will, in the minds of ordinary people, generally give rise to any connotation of Winton or the Winton district.

However, the question then, is whether the fact that Waltzing Matilda is a famous and very widely sung song, gives rise to a connotation that is likely to cause to deception or confusion.  In particular, in respect of recorded items, such as compact discs and audio tapes, would an ordinary customer wonder whether a disc or  tape bearing the trade mark waltzing matilda  was a recording of the famous song.

Justice French in Registrar of Trade Marks v Woolworths Ltd[26] re-states a number of tests concerning deception and confusion in terms of the new law - the Trade Marks Act 1995. He says, inter alia, in relation to section 44 tests :

[26] 45 IPR 411

(ii)  A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder ..... It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt .

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

His Honour confirms that the rights of the parties are to be determined as at the date of the application, and the prospect of deception or confusion is to be considered in respect of all goods or services coming within the subject specification.  Further:

[t]he question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

Considering the trade mark in these terms, it seems to me that the connotation of a famous song that does arise with the name waltzing matilda, is a connation which is likely to give rise to deception or confusion when that trade mark is applied to compact discs and audio tapes.  These are not expensive items, and moreover, they are frequently seen in ordinary suburban shopping centres being sold off at cut-price rates.  They are also popular market wares.  There is, further, no particular restriction on how Jolly Swagmen is to depict the words waltzing matilda in use.  The mark is not, for example, confined to a style that betokens trade mark use.  If registration is obtained the owner may use waltzing matilda in various ways, and many of these could be perceived as a reference to the title of the recorded material rather than to trade origin. Given that compact music discs and audio music tapes are directed to the broad-stream of the Australian consuming public, that they are not costly items, and that purchases may be made in busy venues with little forethought, I conclude that the trade mark waltzing matilda, used as the owner would be entitled to do, is likely to cause buyers to wonder, and be left in doubt as to the relevance of those words.  I am satisfied that there is also a real danger that buyers would be deceived or confused. 

In relation to some of the goods within the scope of this application ¾  namely: videos, videotapes, cassettes, recording discs, CDs, audio/visual tapes, cassettes, and discs ¾  I find that the section 43 ground is made out.   

Section 58

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

As confirmed by Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Limited[27],  and Stephen, Mason, Aickin and Wilson JJ  in Moorgate Tobacco Company Ltd v Philip Morris Ltd (No. 1)[28], the filing of an application for registration of a trade mark expresses the notion of ownership of that mark.  That claim may be upset, however, by an opponent who demonstrates a prior public use of that mark.  Relevant use, however, is confined to commercial use. As per his Honour Justice Deane  in Moorgate Tobacco Company Ltd v Philip Morris Ltd (No. 2)[29] at 432

[27] 31 IPR 375 at 384

[28] (1980) 145 CLR 457 at 477

[29] (1984)156 CLR 414 at 432-4

... prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of 'proprietor' of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person: see, generally, Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 423-424; Re Registered Trade Mark 'Yanx'; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199 at 204-5; and the definition of 'trade mark' in s. 6 (1) of the Trade Marks Act [1995]. The requisite use of the mark need not be sufficient to establish a local reputation ... The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark 'Yanx'; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR at 204-205) or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co. of Australia v Esso Standard Oil (Australia) Ltd (1963) 109 CLR at 422. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.

Mr Musgrave acknowledges that Waltzing Matilda Centre can only rely on commercial use of the trade mark waltzing matilda.  That use must be before 23 July 1998 (the date on which 768214 was filed) and in respect of the subject goods and services.  He says the Waltzing Matilda Centre has that use in respect of those goods and services prior to 23 July 1998.

I do not agree. I do not think from Waltzing Matilda Centre’s evidence it is possible to identify any actual trade or offer to trade in the goods bearing the trade mark waltzing matilda  or any existing intention to offer or supply goods bearing the mark prior to 23 July 1998.

There is, in short, no material evidence of any sales, or any offer for sale. Certainly the words Waltzing Matilda form part of its corporate name, and feature in the name of the themed complex operating in Winton since April 1998.  But that in itself is not trade mark use.  Offers for sale could reasonably have been a part of the advertising that, according to Mr Jempson took place from 1997 onwards. There are however only broad statements about the cost of this advertising and nothing at all to identify any goods or any trade mark used in the association with them.  While the complex opened in April 1998, four months before Jolly Swagmen’s priority date, there is no evidence of any offers to trade prior to 23 July 1998.  The Centre’s Internet site was not running till December of that year;  its documentary videos were not made till mid 1999 and only subsequently played to a paying audience; and the Coolibah Country Kitchen Restaurant and the Station Store only commenced operating post 23 July 1998.  Moreover, in all of the evidence, there is no example of unequivocal use, by Waltzing Matilda Centre, of any trade mark.

Mr Musgrave would want me to consider the various logos that appear in the news print reports[30].  He points me to the Bundaberg News Mail of 7 April 1995 (p7).  Here, under the headline Waltzing Winton hosts the party of the century is a depiction of  man sitting in front the following sign[31].   I will call  this mark the centenary logo.

[30] exhibit IJ11

[31] This sign has been subject of two trade mark applications filed by Winton Shire Council in December 1994. Those applications have since lapsed. 

There are similar examples in the Courier Mail  of 11 April 1995 (p5) ¾ Birthday bash an outback beauty and 10 April 1995 (p2) ¾ Wild Western Women mix it with the best;  the Sunday Mail of 9 April 1995 (p12/13) ¾ Essie’s[32] wild about Winton; and the Longreach Leader of 22 July 1994 (p9) ¾  No-one promotes the other bloke: Burns.  This last item shows the sign on a bill board proclaiming the proposed site of the Waltzing Matilda Cultural Centre. None of this is trade mark use.  It is newspaper reporting.  Waltzing Matilda Centre is the subject of the report, not the instigator.  Waltzing Matilda Centre makes no offer to sell, it promotes neither goods nor services, it quotes no terms or prices, and it undertakes no trade mark use.

[32] “Essie Browning, 27, is clerk of the course at Winton’s historic Western Picnic Race Club ...”

I find that Waltzing Matilda Centre has not demonstrated any superior right to ownership and I dismiss this ground of opposition.

Section 60

This section reads:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion

To succeed in terms of section 60, the opponent is required to cite a trade mark.  This may or may not be a trade mark owned by the opponent, and it may or may not be registered or pending.  It may be a common law mark.  The application trade mark must be either substantially identical or deceptively similar to that cited mark.  The cited trade mark must, before the priority date (23 July 1998) have acquired a reputation; and that reputation must be so extensive that use of the subject mark would be likely to cause deception or confusion

As discussed above, the evidence filed in respect of this opposition has not satisfied me that as at July 1998, Waltzing Matilda Centre can claim to be the owner of any trade mark.  Commercial activity has been undertaken from the time that the cultural complex came into operation but evidence of reputation is scant, and there is nothing to show that in all the relevant time it ever manifested its reputation in a trade mark.

Mr Musgrave pointed me to a string of failed applications for registration of the trade mark Waltzing Matilda in one form or another.  Many were filed by the Winton Shire Council and are catalogued in the Jempson declaration.  All of these marks have expired prior to registration. A number of other Waltzing Matilda trade marks are currently pending in the name of Waltzing Matilda Centre but these have a priority date later than 23 July 1998 and are not marks that fit the criteria for the s60 ground.

Mr Musgrave again referred me to the appearance of the centenary logo in the various press reports mentioned above. As per my previous findings, these reports do not constitute trade mark use and I cannot find that any goodwill they may have generated in respect of Waltzing Matilda Centre is attached to any other mark used in the course of trade.

I find therefore the section 60 ground cannot succeed because the evidence fails to establish that there is any trade mark which, prior to 23 July 1998,  had acquired a reputation and was substantially identical or deceptively similar to 768214.

Decision

I find that the opposition does not succeed on either the section 58 or the section 60 ground. 

I find in respect of the section 43 ground, however, that the opposition is successful, so far as videos, videotapes, cassettes, recording discs, CDs, audio/visual tapes, cassettes, and discs are concerned.  In respect of these goods, the opposition is made out.

I will allow one month from the date of these reasons, for the applicant, Jolly Swagmen, to delete these items from the statement of goods and services of 768214.  If that amendment is done within the time allowed, then unless the Registrar is served with a copy of notice of appeal, trade mark application number 768214 may proceed to registration. 

If the amendment is not undertaken in the time I have allowed,  then, in accordance with the provisions of section 55 of the Act, I refuse to register trade mark application number 768214.  

Costs

Both parties submitted that costs should follow the event. 

Taking into account the full circumstances of this opposition, and the fact that both sides, to a degree, have some success, I consider it appropriate to make no award.    Accordingly I have decided not to award costs to either side. 

Helen R. Hardie
Deputy Registrar

24 January 2002