Truline (Australia) Pty Ltd v Malcolm Walter Atwell

[1997] ATMO 57

TRADE MARKS ACT 1955

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

Re:      Opposition by MALCOLM WALTER ATWELL to the registration of trade         mark application number 611542 in the name of TRULINE (AUSTRALIA)
           PTY. LTD.

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

This matter concerns trade mark application number 611542 which was lodged on 14th September 1993 in the name of Truline (Australia) Pty Ltd (the applicant).

The application seeks registration of the trade mark TRULINE in respect of a statement of goods in class 28, subsequently amended to read:

“Equipment in this class for athletics, badminton, baseball, softball, netball, basketball, football, cricket, lacrosse, korfball, hockey, tennis, volleyball, European handball, grid iron, rugby league/union, soccer and water polo”.

The application was accepted under the provisions of sub-section 34(2) of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks of 27th October 1994.

Notice of opposition to the mark’s registration, in terms of section 49 of the Act, was lodged on 27th January 1995 by Malcolm Walter Atwell (the opponent).  The grounds of the opposition are various.  The primary grounds supported by the evidence and argued at the hearing, however, are as follows:

• that the applicant was not entitled to claim to be the proprietor of the mark, and therefore it is not a person entitled under section 40 of the Act to apply for registration;

• that, in terms of section 33 of the Act, the opposed trade mark is substantially identical to or deceptively similar to the opponent’s trade marks of registrations numbers B472784, B508240 and A573659;

• that the applicant does not use or propose to use the opposed trade mark in respect of all the goods in or throughout Australia;

• that the applicant has not continuously used the opposed trade mark before use, or before the date of the registration of the opponent’s trade mark TRUELINE in respect of all of the goods in or throughout Australia; and

• that the onus is upon the applicant to show that it is entitled to registration of the trade mark. 

The evidence
The evidence stages were completed on 18th September 1996.  The evidence consists of the following:
Evidence in support

*     Statutory declaration by Malcolm Walter Atwell, dated 15th August 1995,           with exhibit MWA1 (Atwell’s first declaration).  

Evidence in answer

*     Statutory declaration by Peter Gadd, dated 11th November 1995, with      exhibit PG-1
*     Statutory declaration by Ian Palmer, dated 15th November 1995, with
      exhibit IP-1
*     Statutory declaration by Boris Ponomarenko, dated 7th February 1996,
      together with exhibits BP-A to BP-J.

Evidence in reply

*     Statutory declaration by Malcolm Walter Atwell, dated 9th September 1996,
      (Atwell’s second declaration).

In his first declaration, Mr Atwell states that he is the registered proprietor of two registrations in class 28 for the trade marks TRUELINE and TRUELINE and a device, respectively, and one registration in class 41 for the trade mark TRUELINE.  His company has been engaged in the manufacture and sale of a diverse range of sporting goods since 1987. With reference to Mr Boris Ponomarenko’s statutory declaration, which had been lodged in support of the provisions of sub-section 34(2) on the present application, he criticises some alleged deficiencies in Mr Ponomarenko’s statements.  He says that he has made enquiries as to the goods traded by the applicant and has attached the earliest documentation he has been able to find which would support such trade, a price list dated 1st June 1991.  Based on that price list, he sets out a list of the applicant’s goods, commenting that even in relation to those goods there was no available evidence to support the requirements of sub-section 34(2) of the Act. 

Mr Gadd, whose declaration forms part of the evidence in answer, is an owner of a sports store.  He specifies six products under the trade mark TRULINE which have been supplied to his business by the applicant.  A copy of the January 1994 price list of the goods is appended to his declaration. 

Mr Palmer is also an owner of a sports store and has been obtaining sporting goods from the applicant company bearing the subject trade mark since 1983.  He too has attached to his declaration a copy of the January 1994 price list from which, he says, he has extracted orders of the applicant’s goods. 

Mr Ponomarenko is a director of the applicant company.  One of the exhibits appended to his declaration is a copy of a statutory declaration which was lodged in support of the section 34 claim.  There are exhibits of notarised copies of documents which, he says, detail the range of goods offered for sale under the mark since 1986.  According to Mr Ponomarenko, earlier catalogues and price lists dating back to 1980 are not available. 

In Mr Atwell’s second declaration, which constitutes evidence in reply, the declarant comments on the range of goods listed in the notarised copies of exhibits attached to Mr Ponomarenko’s declaration and notes that they are substantially restricted to what is known in the trade as sporting hardware, e.g. goals, posts, backboards and rings.  

The hearing on the matter was held in Canberra.  Mr Kelvin Lord of Lord & Company, patent and trade mark attorneys of Perth, represented the opponent.  Mr Mark Wakeham of Carter Smith & Beadle, patent and trade mark attorneys of Melbourne appeared for the applicant.

Submissions
In turning to Mr Ponomarenko’s declaration in the evidence in answer, Mr Lord directed my attention to the dates in the exhibits, Interim Catalogue and Interim Price List of November 1986, which, he submitted, appeared to have been typed in and did not form an integral part of the document.  In relation to this remark, I am satisfied with Mr Wakeham’s response, who pointed out that the Interim Catalogue itself was typed in the same typescript throughout and the Price List of 1987 was a printed document

Even if one accepted that the sporting goods listed in the catalogue and the price list had been offered for sale in 1986 and 1987, Mr Lord continued, those goods were the type of goods known as sporting hardware set out in Mr Atwell’s first declaration.  He drew the conclusion that, at best, the applicant had established use of the mark on sporting hardware since 1986, not on a wider range of goods as claimed by the applicant. 

Mr Palmer, Mr Lord said, simply exhibited a price list and did not specify the goods which he had actually purchased from the applicant.  As Mr Palmer’s and Mr Gadd’s declarations were simply a proforma declaration, it could be argued that the words were not really those of the declarants.  In relation to Mr Gadd’s declaration, Mr Lord said that four of the items mentioned as those of the applicant were sporting hardware, whereas the other two probably did not fall in class 28.  He noted that the exhibit attached to Mr Palmer’s declaration was a quite recent document, dated January 1994.

Mr Wakeham replied that it was unlikely that a customer sourcing the goods would keep the price lists and catalogues since 1980.  Copies of the Price List of 1994 annexed to both Mr Gadd’s and Mr Palmer’s declarations were supplied only by way of an example.  Mr Palmer had been in the business for a long period of time and therefore was in a position to have a sound understanding and familiarity of class 28 goods available in the market place.  Moreover, being the applicant’s biggest client, Mr Palmer would have sourced a considerable range of the products.  As to the comment on the proforma nature of the two declarations, Mr Wakeham stated that those declarations provided open questions, and that he did not think the declarations in that form in any way diminished the quality and integrity of the declarants’ information.

In continuing his submission, Mr Lord stated that, despite most strenuous evidence the applicant could show that use of its mark occurred only on sporting hardware, yet the applicant’s existing statement contained a large range of other goods.  Since the application was accepted under the provisions of section 34, the statement of goods should be closely tied to the goods on which continuous use had taken place before the date of registrations obtained by the opponent, otherwise there was clearly a risk of the public being misled or deceived.  In general terms, Mr Lord said, the present statement included goods in which the applicant intended to trade, hence the provisions of sub-section 34(2) could not apply to all the goods claimed.  In support, he cited cases where the goods had been restricted: Harrods Ltd’s Appn (1935) 52 RPC 65; Bass, Ratcliffe and Gretton Ltd v Nicholson & Son Ltd (1932) 49 RPC 88; Roberts v Cougar Marine Ltd (1993) AIPC 90-997 and Rundles Pty Ltd v Trussardi SpA (1993) AIPC 90-958.

The opponent sought costs in the matter.

Responding to criticism expressed in Mr Atwell’s first declaration on some deficiencies in Mr Ponomarenko’s declaration, Mr Wakeham stressed the existence of the Interim Catalogue of 1986 and the Price List of March 1987 to which the examiner did not have access during prosecution of the application.  Clearly, Mr Wakeham said, the issue of a catalogue was evidence of nation-wide promotion and offers for sale of the applicant’s goods.  Mr Ponomarenko’s undated exhibits could be explained by the fact that they were available samples.  The applicant would not have kept an enormous record of paper advertisements and magazines to demonstrate its products, Mr Wakeham remarked.  Mr Atwell’s reference to the examiner being uneasy about accepting the application with the present broad statement of goods was not quite correct, as the examiner had commented about the gaps in the information, for example, in relation to the advertising figures.

Mr Wakeham further stated that various approaches had been made to the opponent in an attempt to settle the matter relating to the statement of goods.  Here Mr Lord concurred and commented that the two parties could carry on trading in their goods once the statement was amended, because in its present form it would encourage extension of the range of products to include soccer balls and other items of that nature, which, as he had observed earlier, would likely result in a substantial risk of conflict.  Mr Wakeham responded by saying that the applicant would consider excising any goods which, in the opponent’s view, might cause conflict.  However, the suggestion that the present statement of goods encouraged the applicant to extend the range of goods was not credible in the commercial world.  The applicant was entitled to a range of goods which would accommodate goods that would respond to the market pressures.  The applicant was, however, more than willing to negotiate with a view to avoiding any potential conflict that might arise in the future. 

Responding to the grounds of opposition, as far as those grounds relate to the opponent’s evidence and submissions, Mr Wakeham stated that the applicant’s claim to proprietorship was based on use of its mark since 1980, which predated the opponent’s registrations or any opponent’s interest whatsoever.  

Concerning substantial identity or deceptive similarity of trade marks, Mr Wakeham referred to the tests of comparison of the marks outlined in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407. In his opinion, the device in the opponent’s mark of registration number 508240 was highly distinctive and left a certain impact in the eyes of the public.

On the question of the alleged absence of use or intention to use the mark on the part of the applicant in respect of all the goods of the subject application throughout Australia, Mr Wakeham referred to the Interim Catalogue of 1986, the Price List of March 1987 and the contents of the declarations by Messrs Gadd and Palmer.  Concerning an intention to use the mark, Mr Wakeham submitted that the very act of lodging the application amounted to that intention and the onus rested on the opponent to prove any absence of intention (Aston v Harlee Manufacturing [1960] 103 CLR 39). The applicant’s evidence, he said, established use of the subject mark on a wide range of goods throughout Australia.

Contrary to the opponent’s allegations, in Mr Wakeham’s opinion, the applicant’s mark was entitled to registration, in terms of sub-section 34(2), as use of the mark had started before the date of registration of the opponent’s marks or before their use, whichever was the earlier.  In addition, the applicant had also demonstrated continuous user which was more than an occasional user - Canon Kabushiki Kaisha v Brook and Another (t/a Cannon Watch Company) 36 IPR 88.

Mr Wakeham expressed the applicant’s proposal to claim costs above the taxed rate on the grounds that all efforts had been made by the applicant from the outset to avoid having to come to a hearing.  To this Mr Lord responded that the opponent would seek costs if successful, but if the applicant decided to claim costs as indicated, then the opponent would take up the matter at a later date.  Finally, both parties agreed to claim for taxed costs and leave the other matter open for further negotiations.        

Subsequent developments
Following the hearing, I informed the applicant’s attorneys that the applicant’s evidence did not satisfy the requirements of sub-section 34(2) of the Act.  I explained that, in the absence of more conclusive evidence, the applicant could claim use of its mark, pursuant to those provisions, only in respect of the items listed in the Interim Catalogue of November 1986 and the Price List of March 1987.  Accordingly, I requested the applicant, upon consultation with the opponent, to propose a suitable amendment to the statement of goods based on those items.  The applicant’s attorneys replied that the applicant did not wish to consult with the opponent.  On 27th August 1997, the attorneys submitted an amended statement upon which the opponent’s attorneys subsequently submitted some comments.  Those comments, together with my view, were communicated to the applicant, who has agreed to modify the proposed statement of goods.  

Discussion
Sections 33 and 34
Sub-section 33(1) of the Act provides that

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, of goods of the same description as those goods or 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.

The particulars of the allegedly conflicting marks owned by the opponent are as follows:

the mark TRUELINE of registration number 472784
in respect of :

“all tables in this class including pool tables, snooker tables and billiard tables, and parts and accessories therefor included in this class”;

the mark:
                  

of registration number 508240  
in respect of :

“all goods in this class including, dart boards, and tables including pool tables, snooker tables and billiard tables, and parts and accessories for all of the aforementioned goods”; and

the mark TRUELINE of registration number 573659
in respect of:

“Education and entertainment services in this class namely the establishment, promotion, control, management and conduct of a league for playing of pool, billiards and similar games between competing teams; and promotion, control, holding and arrangement of competitions between teams playing pool, billiards and similar games”.

Applying the directives enunciated in Jellinek’s Appn (1946) 63 RPC 59, namely: the consideration of the nature of the goods, their uses and trade outlets through which the goods in question normally pass, I find the respective goods and services of the opponent’s registrations to be the same, of the same description, or to be closely related services to the goods of the present application.

Judged in light of the principles on substantial identity or deceptively similarity of trade marks considered in Shell v Esso, supra, and Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, while the opponent’s marks may not be substantially identical with the applicant’s mark, those marks are certainly deceptively similar to the mark under consideration. Even though on the side by side comparison the marks TRUELINE of the opponent’s registrations numbers 472784 and 573659 differ from the applicant’s mark TRULINE only by the letter ‘E’, given the combination of the recognizable words ‘true’ and ‘line” as opposed to the meaningless prefix ‘tru’ and the word ‘line’, in my estimation, the total impression of dissimilarity exceeds in importance to their resemblance. More significant differences emerge when comparing the subject mark with the mark of registration number 508240 which, in addition to the word TRUELINE, also contains devices such as the chevrons and a billiard ball with number ‘8’.

Since the applicant’s mark TRULINE is similar in sound and appearance to the word TRUELINE of registrations numbers 472784 and 573659 and constitutes the essential element in the mark of registration number 508240, it is likely to result in being impressed on one’s mind and recalled to such an extent that it would be mistaken for the opponent’s marks, resulting in a strong possibility of deception or confusion amongst a substantial number of persons interested in the goods and services now being considered.  Consequently, the principle of “imperfect recollection” discussed in Rysta Ltd’s Appn (1943) 60 RPC 87 and Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65 applies here to the marks.

For the foregoing reasons, I find that the applicant’s mark offends under the provisions of section 33 of the Act. 

Sub-section 34(2) provides:

34(2)  Where a person has, by himself or his predecessors in business, continuously used a trade mark before the use, or before the date of registration, whichever is the earlier, of another registered trade mark by the registered proprietor of that other trade mark, by his predecessors in business or by a registered user of that other trade mark, the Registrar shall not refuse to register the first-mentioned trade mark by reason of the registration of that other trade mark.

In support of its contention that the applicant’s mark has been used before the earliest registration date of the opponent’s mark of registration 472784, the applicant has primarily relied on the statements and annexures of the declarations by Mr Gadd and Mr Palmer.  Both of these declarants are owners of sports stores and, having been involved in the provision and supply of various sporting goods since 1974 and 1944, respectively, they ought to be well acquainted with the trade marks associated with the relevant goods.  They have operated their current business since 1974.  In para 5, where each of the declarants has indicated the products obtained from the applicant, Mr Gadd states:

“The products sourced from Truline (Australia) Pty Ltd include the following: basketball backboards, basketball rings, hockey goals, football goal posts, linemarking machines, universal trolley which are listed in the TRULINE Sports Equipment Catalogue and bear the TRULINE trade mark.  I have sourced the above listed products and/or other selections from the TRULINE Sports Equipment Catalogue on a continuous basis since at least 1980 in accordance with the demands of my current business.”

It should be noted that the goods identified as “linemarking machines” and “universal trolley” do not fall in class 28 and therefore were not included in the accepted statement of goods of the present application. 

Mr Gadd states further that he has come to recognise TRULINE as the applicant’s trade mark in respect of products listed in the applicant’s catalogue and price list and attaches to his declaration a copy of the January 1994 price list. 

For the products sourced from the applicant by Mr Palmer’s business, the declarant, Mr Palmer, refers to products “as extracted from exhibit IP-1” which is a copy of the January 1994 price list.  A range of products selected from the TRULINE Sports Equipment Catalogue, according to Mr Palmer, have been continuously sourced by his company from at least 1983. 

For the term “continuously used” within the meaning of sub-section 34(2), I have  sought directive from Smith Barlet and Co v The British Pure Oil Grease and Carbide Co Ltd (1934) 51 RPC 157, where Maugham J held that [T]the word “continuous” is not one which is capable of strict definition. It does not mean, in the case of a sale of goods, a sale every week or even every month”, but it must be more than an occasional user. In light of this criterion I find that, while Messrs Gadd and Palmer may support the applicant’s contention of continuous use of the mark since 1980, with the exception of the four items listed by Mr Gadd as being supplied by the applicant, it is impossible to reach any conclusion as to what other goods bearing the subject trade mark were sourced from the applicant before 16th September 1987, which is the earliest date of registrations of the three marks in conflict with the applicant’s mark. No evidence has been produced by the opponent that its mark was used before that date.

More detailed information in this regard emerges from Mr Ponomarenko’s declaration, particularly exhibits displaying Interim Catalogue of November 1986 and Wholesale Price List of March 1987 listing a range of goods under the mark TRULINE offered for sale by the applicant.  Such evidence offering to trade the goods would constitute use of the mark, as there is no need for any actual dealings in the goods bearing the mark - Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414. In any event, some sales of the goods have occurred before 1987 as illustrated by sales figures provided in Mr Ponomarenko’s declaration, dated 6th July 1994, which was presented during the examination of the present application and appears as annexure to his declaration, which forms part of the evidence in answer.

Having considered the goods set out in the statement proposed by the applicant, which resulted in correspondence subsequent to the hearing, as stated earlier, in light of the goods made available for the purpose of soliciting trade in the products contained in the said catalogue and price list, I am satisfied that the mark TRULINE has been used in the period before 16th September 1987 in respect of the following goods:

Goals; nets; net adjusters and winders; posts; rings; backboards; baskets; targets; towers; fillable athletic stands; crossbars; high jump stands, spares and accessories therefor including uprights, crossbar rests and measuring sticks; hurdles; batons; shotput accessories including stopboards; discus accessories including discus circles; boxes; batting tees; cricket stumps; stands for officials and observers; bat tennis accessories, being stands and rails; ball storage and holding equipment; plastic court lines; court divider curtains; ground anchors; court line sweepers; court drag mats; rebound fences; all the foregoing being goods included in class 28. 

In the present proceedings for the purpose of sub-section 34(2), it is for the applicant to show that use of its mark started before the date of registration of the opponent’s marks, or before their use, whichever is the earlier.  While the mark may have been used continuously since its adoption on a wide range of goods encompassed in the statement of goods at the time of accepting the mark for registration, from the available evidence I cannot find support for the contention that, in the relevant period, use of the subject mark extended to all the equipment of the different categories of goods presently appearing in the application.  

Proprietorship
Sub-section 40(1) of the Act provides:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

Under that sub-section, a mark would be precluded registration if another trader had acquired proprietorship rights through actual use of a trade mark.  The nature of proprietorship has been considered by the High Court in Shell Co of Australia v Rohm & Haas Co (1949) 78 CLR 601 where, at p 628, Dixon J quoted with approval the words of Holroyd J form Re Hicks Trade Mark (1897) 22 VLR 636:

“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 of the word ‘Empress’ 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.”

In order to determine proprietorship in a mark (except in cases where there has not been any use of the mark), a person must therefore demonstrate first use in Australia.  The use of the mark must be shown to be for the purpose of indicating, or so as to indicate, a connection in the course of trade between the services specified in the application and the person concerned - s 6 of the Act and W D & H O Wills (Australia) Pty Ltd v Rothmans Ltd [1956] 94 CLR 182 and Estex Clothing Manufacturing Pty Ltd v Ellis & Goldstein Ltd [1967] 116 CLR 254).

It must be remembered, however, that in deciding the issue of proprietorship where the opponent may be claiming proprietorship rights in a mark in respect of certain goods by virtue of first use of its mark for particular goods, the provisions of section 40 apply only to instances where the marks concerned are identical or virtually the same mark, as established in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049 and Karu Pty Ltd v Jose (1994) AIPC 91-101. I have already determined that the opponent’s and the applicant’s marks are not substantially identical.

Concerning the question of prior use of the mark, as discussed previously in relation to sections 33 and 34, the applicant has established that the subject mark was used earlier than the registration of the opponent’s mark number 472784 in respect of a number of specific goods.  

Having regard to my comments on this issue, the opponent’s case fails in terms of section 40 of the Act. 

Conclusion
The opponent has not succeeded in upsetting the applicant’s claim to proprietorship. 
However, I find that this application only qualifies for registration under the provisions of sub-section 34(2) of the Act in respect of the goods I have set out under the heading “Sections 33 and 34”.  I allow the applicant one month from the date of this decision to amend the statement of goods to accord with those goods.  Should the applicant fail to do so, I will have no option but to refuse the application.

The opponent having partially succeeded in these opposition proceedings, I order that each party should bear its own costs.

Vija Zars
Hearing Officer
24th October 1997