Tuskbury Pty Limited v Broken Wood Enterprises

[2001] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by Tuskbury Pty Limited to registration of trade mark application 798776(25) - ELIZA'S and device - filed in the name of Broken Wood Enterprises.

Background

Broken Wood Enterprises (the applicant) filed the above numbered application on 30 June 1999, in respect of 'Clothing, women's clothing' in class 25 of the International Classification of Goods and Services. A representation of the mark is shown below.

The application proceeded without objection by the examination section of the Trade Marks Office (TMO) and was duly advertised as accepted in the Australian Official Journal of Trade Marks of 11 May 2000.

Tuskbury Pty Limited (the opponent) opposed registration of the application on 8 August 2000. The notice of opposition listed grounds under the Act in terms of s.57 in relation to ss.39, 41, 42(b), 43, and 44 and also under ss. 58, 59, 60 and 62.

The opponent effectively served and filed the evidence in support, which comprised a declaration with 27 exhibits from Elizabeth Anne Green, by 8 November 2000. I use the word 'effectively' advisedly here, because the address for service supplied by the applicant has ceased to operate as such. Despite the best efforts by the TMO to contact the applicant by means of any possible contact number on file and also by use of Telstra's telephone number data bases, the applicant has not been located since the time of acceptance of this application. Letters and notices have been returned to the TMO and the opponent's correspondence with the applicant has similarly been returned.

Ms Green is a Director of the opponent company since its inception in 1994. The opponent has been trading as Eliza's Boutique since 21 August 1998. Shortly after the opponent began trading, around February 1999, it entered a business relationship with the present applicant whereby the applicant was contracted to produce garments for the opponent's business. The opponent provided labels to the applicant to attach to these garments but within two months some dispute arose between the parties.

The Evidence

Although there is no claim for any activity of the opponent company from 1994 until the date of registration of the Eliza's Boutique Business Name, on 21 August 1998, Ms Green attests to ordering business cards (in August 1998) and clothing labels (in September 1998) showing the mark. The evidence shows (at exhibits 'EAG5' and 'EAG6') that the mark designed for the opponent's clothing labels is identical with the mark for which the present application has been made. The marks have been on public display, Ms Green claims - on the garments sold in its shop and on sign boards prominently displayed at the shop - from as early as 7 November 1998. Samples of the mark in use on letterhead, with compliments slips, business cards and sales dockets are shown in the exhibits and Ms Green also claims that garments purchased at the shop were placed in carry bags that prominently display the mark.

Figures that detail the evidence of use of the mark, from initial sales made on 18 November 1998, are also submitted. Payments made to advertisers are found at exhibit 'EAG11' to the Green declaration and show that the first payment occurred on 12 November 1998. Samples of both actual newspaper advertising and of instances of news items displaying the mark show that the first documented use occurred in the Sunshine Coast Daily on 3 January 1999.

Exhibits 'EAG23' to 'EAG27', inclusive, to the Green declaration provide information concerning a failed business relationship between the opponent and the applicant. These exhibits contain material that shows legal action being brought through the courts by the present opponent against the present applicant. These proceedings, however, have not been concluded and so do not directly impact on the present matter before the Registrar.

Discussion

Neither party provided me with any written submissions to assist in deciding this case. The opponent's evidence is uncontroverted. The claims made by the deponent, that I have set out in the Background section above, are supported by the evidence of the 27 exhibits attached to the Green declaration and I do not intend to spend excessive time in the remainder of these reasons to further validate them.

The opponent's evidence does not support grounds of opposition taken under ss.39, 41, 42(b), 43, 44, 59 or 62 and I find that the opponent does not succeed in respect of them. The remaining two grounds, those taken under ss.58 and 60, therefore become the focus of the remainder of these reasons.

(a) Section 58 - Applicant not owner of trade mark

The legislation allows:

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.

It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

• that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

• that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

• that the opponent has the earliest claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

The mark used by the opponent is shown in exhibits 'EAG2', 'EAG3', 'EAG5', 'EAG6', 'EAG8', 'EAG9', 'EAG10' and also 'EAG17' to 'EAG22' inclusive. It is identical to the mark applied for by the applicant. The evidence shows that the opponent has used its mark in respect of a range of women's fashion clothing. The applicant has claimed 'Clothing, women's clothing'. These goods are clearly 'the same kind of thing'.

The applicant has not submitted any evidence showing that it has actually used the mark. The date of the present application is 30 June 1999. It is clear from the opponent's evidence that the mark was in use, in the sense that goods were offered for sale, by 3 January 1999. It may well have been in use before that date (as claimed by Ms. Green in her declaration with sales figures supplied) but certainly by 3 January this is independently documented in a newspaper article.

Thus, the opponent has established all three legs of the requirements under s.58 and succeeds under this ground of opposition.

(b) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

For this section the legislation reads:

60. 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

The competing mark must have acquired a reputation in Australia, by the date of the present application, to trigger this ground of opposition. In this regard the opponent claims first use of its mark in relation to actual commercial sales from 18 November 1998 with paid advertising beginning some six days earlier. The date of application is 30 June 1999. I also note that the actual sales figures given by the opponent is submitted with the qualification that 'of those sales, almost half relates to goods sold with the Eliza's label'. Given this time period of only some seven months, the qualification that effectively halves the sales figures and the limited level of advertising in just one part of Australia, I find that the opponent has not established a sufficient reputation to be likely to cause deception or confusion for a substantial number of prospective purchasers.

Thus, the opposition under this ground is not successful.

Conclusion

From the foregoing, I have found that the opponent has succeeded in respect of the ground of opposition taken under s.58, but under no other grounds. The opposition in total, therefore, succeeds and I refuse to register this trade mark application.

Don Nancarrow
Hearing Officer

22 June 2001.