Thomas Peacock & Sons Pty Limited v Bramley Gardens Pty Limited

[2000] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Thomas Peacock & Sons Pty Limited to registration of trade mark application 785381(20) - Contour Coil - filed in the name of Bramley Gardens Pty Limited.

Background

This issue arises out of the filing on 12 February 1999 ('the relevant date') of an application to register the trade mark CONTOUR COIL ('the trade mark') in Class 20 in respect of 'bedding'.  The applicant is Bramley Gardens Pty Limited ('Bramley') of Perth, Western Australia.

Following examination, the application was accepted for registration and advertised in the Australian Official Journal of Trade Marks on 10 June 1999.

On 6 September 1999, within the time allowed to do so, Thomas Peacock & Sons Pty Ltd ('Peacock') filed notice of opposition to the registration of the trade mark.  Subsequently, after seeking, and receiving, an extension of time in which to do so, Peacock filed its evidence in support of the opposition.

Bramley has not filed any evidence in answer; neither has either party requested a hearing.  Accordingly, the issue has come to me as a delegate of the Registrar of Trade Marks for my reasons and decision on the official record.

Evidence

The evidence consists of a statutory declaration by Michael Van der Wielen, State Manager (Western Australia) of Peacock.  The evidence shows that Peacock is the successor in business to Silent Night Pty Limited ('Silent Night').  The directors of Peacock are also directors of Valhurst Pty Limited ("Valhurst').  Valhurst filed application to register the trade mark on 14 June 1994 and exhibited to the declaration is correspondence from a firm of Patent and Trade Mark Attorneys to a Mr Stuart Gardner of Silent Night.

Prima facie, the evidence also shows that Mr Stuart Gardner, now an officer of Bramley, the applicant, left the employ of Silent Night, predecessor of the opponent, around August 1995.  Correspondence on the official file and exhibited to the declaration shows that Mr Gardner has been involved in the prosecution of this application.

The declaration attests to the first use of the trade mark by Peacock in November 1997 and exhibited to the declaration are annual sales figures from 1997, retail catalogues showing the trade mark in use and correspondence from printers and label makers.

Reasons

Section 58 of the Trade Marks Act 1995 provides:

Applicant not owner of trade mark

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

Note:  For applicant see section 6.

In Hicks's Trade Mark, (1897) 22 VLR 636 (at 640) Holroyd J stated:

In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark".

The relevant date in this instance, without any evidence of prior use by Bramley, is the date of filing of the application: 12 February 1999.  The expression "the same word in application to the same kind of thing" (in the above quote) has come to mean 'a substantially identical trade mark' used in relation to the same kinds of goods or services.  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, Gummow J (at 513) explained the decision in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 thus:

“When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s 33) or prior public recognition built up by user: s 28 (a).

It is apparent that Peacock had prior use and authorship of the identical trade mark CONTOUR COIL from 1997, before the relevant date in respect of, inter alia, goods including 'bedding' which are the same goods as those of this application.  The test in Hick's case, above, is therefore satisfied.

Accordingly, the opposition to registration of this trade mark succeeds on this ground.

Section 62

It is possible that the evidence in this case may have also supported a decision affirmative to Peacock's opposition under the provisions of section 62 of the Act. However, in view of my reasons in terms of section 58, this is not necessary.

Decision

As the opposition by Peacock has been successful, I refuse to register this trade mark.

Costs

The opponent, having been successful, is entitled to its costs which I award against Bramley.

Ian Thompson
Hearing Officer

5 August 2000