Unidrive Pty Limited v Dana Corporation

[1995] ATMO 22

TRADE MARKS ACT 1955

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

Re:Opposition by DANA CORPORATION to registration of trade mark application numbers 492110, 492111, 492112, 492114, 535116 and 535117 in the name of UNIDRIVE PTY LIMITED for the mark HARDY SPICER

Background

Application numbers 492110, 492111, 492112, 492114, 535116 and 535117 were lodged, on 28 July 1988, in the case of the first four applications and on 25 May 1990 for the last two, in the name of UNIDRIVE PTY LIMITED (Unidrive).  The applications were for registration of the word mark HARDY SPICER for the respective statements of goods and services,

"Agricultural machinery components being gearboxes other than for land vehicles; power take-off shafts, universal joints and components for driving agricultural implements from a tractor; clutches other than for land vehicles; shaft couplings, flexible drive couplings; universal joints, constant velocity joints, transmission shafts, all included in class 7; hydraulic engines, motors and turbines and drive shafts all included in class 7; parts and components for mechanically driven fixed plant machinery, paper mills, steel mills, mining machinery included in class 7", in Class 7 (492110),

"Automotive components and parts all included in class 12; transmission shafts, drive shafts, clutches and couplings, all for land vehicles; components and parts for vehicles, land vehicle engines, vehicle transmissions, and/or for apparatus for locomotion by land, air or water", in Class 12 (492111),

"Rubber couplings; prop shaft tubing; hosepipes; hydraulic hose; rubber sleeves", in Class 17 (492112)

"Automotive repair and maintenance services in this class being repair, maintenance and conditioning services for engines, land vehicles, agricultural machines and implements, power transmission apparatus, joints, couplings and shafts and other parts and fittings for automotive vehicles", in Class 37 (492114)

"Valves, couplings all for use with pipes, tubes and hoses; tubes and pipes; elbows, nuts, plugs and ferrules; all the aforesaid goods made wholly or predominantly of metallic materials", in Class 6 (535116)

"Wholesaling services in respect of automotive components and agricultural machinery components", in Class 42 (535117)

The marks were advertised as accepted in the Official Journal of 23 September 1993 for the first three applications, on 29 July 1993 in the case of 492114 and on 29 October 1992 for the last two applications.

Notices of opposition to registration of the mark were lodged on 14 January 1993, for 535117, and on 29 October 1993 for the remaining applications, by DANA CORPORATION (Dana).

The oppositions were based on multiple factors but the main grounds, as stated in the notices and as pursued at the hearing in the matter, may be summarised as relating to s.40, that Unidrive was not the proprietor of the trade mark and therefore not entitled to apply for registration; on s.24, that the trade mark was not distinctive of Unidrive's goods and services; and also on s33, that two of Dana's applications for registration of its own mark, SPICER predated the present applications which closely resembled that mark.

The evidence

The service and lodgment of Dana's and Unidrive's respective evidence in support and answer in the matter was completed by 22 April 1994.  Dana did not lodge any evidence in reply.  The evidence comprised:

Evidence in support

*Statutory declaration by Kate Johnston dated 6 August 1992 and Exhibits KJ-1 to 12

Evidence in answer

*Statutory declaration by Christine Faye Lowe dated 2 September 1993 (second Lowe declaration)

*Statutory declaration by Gary Leslie Tempany dated 28 April 1993 and Exhibits A to N

In her declaration forming the evidence in support, Ms Johnston, a solicitor from Spruson & Ferguson, gave the history of Dana's use of the mark SPICER.  Attached as exhibits to her declaration were copies of declarations lodged by Dana in support of various applications for registration of its mark and an agreement regarding use of that mark between Dana and Sonnerdale Limited.

Ms Lowe, in her declaration forming part of the evidence in answer, said that she had been advised that settlement negotiations between the parties had broken down and that she had arranged for searches to be made regarding the trading activities of Dana's distributors in Australia.  Mr Tempany, in his declaration completing the evidence in answer, gave details of the history and business details associated with use of the mark HARDY SPICER.  Attached as exhibits to his declaration were brochures showing the history and background of use of that mark.

Both sides during the hearing referred to a declaration by Mr Geoffrey Norcott dated 15 April 1991, together with Exhibits A to D, which had been lodged by Unidrive as part of evidence in support to its opposition to application numbers 358776, 358777 and 358778 in the name of DANA CORPORATION.  Those applications were for registration of the word mark SPICER.  As both sides relied upon references to this document in their submissions, I am prepared, on the basis of the Registrar having regard to all relevant material, to accept references to it as being germane to these proceedings.  In that document, the declarant, Mr Norcott, the General Manager of Unidrive, described the history of Unidrive's mark HARDY SPICER, and the various business agreements and changes in business structures of Unidrive and predecessors in title involved with that mark.  He listed the value of goods and services sold under the mark and the annual amounts spent on advertising under it.  Attached as exhibits to his declaration were samples of advertisements showing the mark, stationery showing the mark and a letter from Dana to Hardy Spicer Limited.

The matter was set down before me, as the Registrar's delegate, for hearing in Sydney on 28 February 1995.  At that hearing, Dana was represented by Ms Kate Johnston of Spruson & Ferguson.  Appearing on behalf of Unidrive was Mr Martin Pollock of Davies Collison Cave.

Submissions

Ms Johnston said that, as far as the opposition was based on the proprietorship of the mark HARDY SPICER, claims of first use of that mark by Unidrive were not valid, as the evidence said to relate to such use referred to another party and that there was also no proof of the proper transfer of title for the mark to the present applicant.  She said that, if a trade mark was associated with another entity in the mind of the public, then an applicant for a mark could not claim to be the proprietor of that mark - Williams J in Seven Up Co v O.T. Ltd (1947) 75 CLR 203. Ms Johnston then referred to the declaration made by Mr Norcott, lodged as evidence in support of Unidrive's related opposition to Dana's mark SPICER. She said that it was claimed in that document that the present mark was first used in this country by Repco Limited but then said that the chain of title to Unidrive was far from clear. This was particularly so where there appeared to be a break in the chain of common law transfer when the ownership of the mark devolved to Borg-Warner. There was nothing then apparent to support a clear transfer of the mark to Unidrive. Ms Johnston said that this meant that Unidrive could therefore not claim to be the proprietor of the mark in question prior to 1987. She further questioned whether Mr Tempany had access to Repco's records and his consequent ability to comment on the history of the mark.

In relation to the opposition as it was based on the alleged non-distinctiveness of the mark, Ms Johnston said that, as at the date of lodgment of the present applications, the reputation in the mark lay with Repco Limited and not Unidrive due to the lack of proper evidence of use of transfer of title to Unidrive, or actual use by that entity as at the dates of lodgment.  The majority of the brochures and catalogues showing use of the mark were from UK companies and nothing had been shown regarding a link between those companies and Unidrive.  She said that it followed that the mark HARDY SPICER was not distinctive of Unidrive.

Ms Johnston further said that, as the applications by Dana for the mark SPICER all predated the present applications for the mark HARDY SPICER, it was open to the Registrar to apply the provisions of s.33(1) and refuse the mark on the grounds that the latter mark was deceptively similar to Dana's earlier mark.

In reply, Mr Pollock said that, on the question of the transfer of the proprietorship of the mark, Mr Norcott had stated that he had direct access to his company's records.  He had therefore examined them to ascertain how title in the HARDY SPICER marks had devolved to Unidrive.  In contrast, there appeared to be some ambiguity as to whether Ms Griffin had complete access to Dana's records so that she could ascertain proprietorship of Dana's own mark.  In 1987, the present mark was transferred from Repco Limited to Borg-Warner (Australia) Limited and then to Unidrive.  Nothing had been submitted by Dana to undermine this claim.  Mr Pollock said that the Registrar was not an expert on company law or the assignment of goodwill and must accept the evidence of such transfers, such as was contained in the declarations, which was put before him.  Therefore, Unidrive could legitimately claim use and consequent proprietorship of its trade mark on all of the goods claimed from the early 1950s.

Mr Pollock said that, if I found that Unidrive's mark, HARDY SPICER, and Dana's mark, SPICER, had independent rights as trade marks which distinguished their owners, then he was prepared to concede that honest concurrent use had taken place of the marks in the Australian market place.  There had certainly been substantial use of the present mark in this country and there had been no evidence shown of any confusion ensuing from use of the marks.

He said that the continued use of the HARDY SPICER mark would not prevent Dana from using its mark SPICER.  He submitted that the balance of convenience weighed in favour of allowing the marks to proceed to registration, as refusal would be tantamount to the loss of a statutory right of a trade mark which it had established it had used for over forty years.

Discussion

Section 40 - Proprietorship

The provisions of s.40, so far as is relevant here, are that:

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

On that subject, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", as per Holroyd J in Hick's trade mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale in Australia. This has been affirmed in later cases such as in the Seven Up case, supra, where Williams J. said at 211,

But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner.

Both the present mark and Dana's mark SPICER contain a common surname which would be called to mind by purchasers of similar products.  However, Unidrive's mark also contains another word, the surname HARDY, and I think that it is an equally memorable portion of the mark which cannot be ignored.  I am not concerned, in deciding the issue of proprietorship, with the question of whether the opponent's and applicant's marks are so alike as to lead to the deception or confusion of customers.  That question is relevant in relation ss.33 and 28, but not to s.40 which only applies when the marks are identical or so similar as to be virtually the same mark - Kendall Co v Mulsyn Paint and Chemicals 109 CLR 300, and Tavefar Pty Ltd v Life Savers (A'asia) Ltd, (1988)12 IPR 159 . In the present case, the marks of the respective parties are clearly different.

Ms Johnston raised questions regarding the transfer of title of the mark HARDY SPICER to Unidrive, citing alleged shortcomings in the declarations submitted to show this.  However, Unidrive appears to have been the only party using that mark in this country since 1985.  This is supported by the declaration from Mr Norcott regarding sales and advertising figures for goods and services sold under it in Australia by that entity.  Dana has not disputed this claim.  Additionally, Mr Norcott's explanation of the complex transfer of title of the mark, although somewhat deficient regarding a logical sequence of transmission, is sufficient to convince me that Unidrive alone has exploited the mark for some years before lodgment of the present applications which were made on 28 July 1988 and 25 May 1990, respectively.  This is, I think, prima facie evidence of proprietorship since that time.  Thus, Unidrive was the proprietor as at the relevant date - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

For the foregoing reasons, I find that the opponent is not successful on this ground of its opposition.

Section 24 - Distinctiveness

Section 24 (1) of the Act reads:

A trade mark is registrable in Part A of the Register if it contains or consists of-

(a) the name of a person represented in a special or particular manner;
           (b) the signature of the applicant for registration or of some predecessor in his   business;
           (c) an invented word;
           (d) a word not having direct reference to the character or quality of the goods   or services in respect of which registration is sought and not being, according   to its ordinary meaning, a geographical name or a surname; or
           (e) any other distinctive mark.

Ms Johnston said that, because there were alleged deficiencies in the transfer of title of the mark from Repco Limited to Unidrive, then the mark was distinctive of Repco Limited and not Unidrive.  However, Unidrive has submitted evidence to show acquired distinctiveness for the mark in all of the classes applied for and the applications were accepted in accordance with the provisions of 24(2).  Dana has done nothing to convince me that these acceptances were in error.  Accordingly, I am satisfied that the mark applied for satisfies the requirements of s.24 in that it is distinctive of Unidrive and I therefore dismiss this ground of the opposition.

Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

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 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.

In considering the question of whether the mark in question is caught by the provisions of s.33, I must firstly determine whether it is substantially identical with, or deceptively similar to, the mark owned by Dana.

To judge whether the subject mark is substantially identical to the opponent's mark, it is necessary to carry out a straight comparison of the two marks.  In the case of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd, supra, the words of Windeyer J. are pertinent:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or similarity that emerges from the comparison ...

When the marks in question here are compared side by side, they have distinct differences which are readily observed.  Unidrive's mark comprises the words HARDY SPICER.  On the other hand, Dana's mark is simply the word SPICER.  I therefore find that the marks are not substantially identical and move on to decide if the marks are deceptively similar.

Sub-section 6(3) defines a mark as deceptively similar if it is likely to deceive or cause confusion.  Here, the marks should not be placed side by side but consideration should be given to any common net impression inferred from the two marks.  I refer here to the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ. said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

It is true that the marks both contain the common element of the surname SPICER.  Thus, there may be some grounds for a claim that the marks are deceptively similar.  This is exacerbated when consideration is given to the fact that the added element HARDY, in Unidrive's mark, is not only a surname but could also be interpreted as meaning "something very durable".  However, this should be balanced against the very long side-by-side use which the marks have enjoyed in this country on the same goods with no apparent problems for either party.  I think that this co-existence of the marks for several decades in the Australian market place for competing goods, with no apparent problems occurring, is an extremely compelling circumstance in drawing the inference that the marks are not deceptively similar.  I am also of the opinion that the word HARDY would be more likely seen as a surname and its addition to the word SPICER in Unidrive's mark is a major factor in distinguishing it from Dana's mark, SPICER, alone.  I believe that it would not be usual for a person requesting HARDY SPICER goods to shorten the request to SPICER alone or, if presented with goods bearing the former mark, would make the incorrect assumption they had received those bearing the latter.  I am therefore of the opinion that the present marks are not deceptively similar.

For the foregoing reasons, I find that the opponent's objection, as it is based on s.33, must fail.

Conclusion

I find that Dana has failed on all of the grounds relied upon in the notices of opposition.  I therefore dismiss the oppositions and, subject to any appeal from this decision, the applications for the mark should proceed to registration.

I can see no reason why costs should not follow the result and I accordingly award costs in the matter to Unidrive.

Ian Forno
Hearing Officer

10 May 1995