Vesudi v Supacenta Pty Limited

[1996] ATMO 46

TRADE MARKS ACT 1955



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

Opposition by SUPACENTA PTY LIMITED to Application No 578119 in the Name of VESUDI PTY LIMITED

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.

The application

VESUDI PTY LIMITED (“Vesudi”), of 50 Miller Street, North Sydney, on 12 May 1992 lodged an application, numbered 578119, to register a trade mark, a representation of which is shown hereunder:

It sought to register this trade mark in respect of the services “shopping centres for bulky goods”, a description which it was later allowed to amend to “rental of commercial property, being a shopping centre”, which are services included in Class 42 of the International Classification of Goods and Services.  The application was accepted subject to the endorsement that “Registration gives no right to the exclusive use of the words SUPA CENTA”.  The acceptance of the application was advertised in the Official Journal of 25 August 1994.

Grounds of opposition

On 25 November 1994 a notice of opposition to the registration of the trade mark was lodged by SUPACENTA PTY LIMITED (hereafter referred to as SPL) of William Street, Sydney, in accordance with s49 of the Act.  The grounds set out in the notice are as follows:

1. The Applicant (VESUDI PTY LIMITED) is no longer the proprietor of the trade mark, the right and title to use the trade mark having been acquired by us as the result of acquisition of the business conducted under the trade mark THE RETAIL SUPACENTA & GRAPHICS.

1. As a result of the said acquisition the trade mark offends against the provisions of Section 28(a) and any use of the trade mark by any person other than the applicant [sic] would be likely to deceive or cause confusion and the trade mark should not be registered.

1. As a result of the said acquisition the trade mark offends against s28(b) and any use of the trade mark by any person other than the applicant [sic] would be contrary to law and the trade mark should not be registered.

1. Having regard to the said acquisition of the trade mark by the opponent the trade mark is otherwise not entitled to protection in a court of justice in the name of the applicant.  The application therefore offends against the provisions of s28(d) and should not be registered.

1. Having regard to the acquisition of the trade mark by the opponent the applicant is no longer the proprietor of the trade mark and the application therefore offends against the provisions of Section 40 and the trade mark should not be registered in the name of the application [sic].

The evidence

SPL completed the service of its evidence in support of the opposition on 13 September 1995.  It consists of:

• Declaration by David Ian Dinte, Group General Manager of SPL, dated 18 July 1995, with Exhibits DID1 to DID7;

• Declaration by Michael John Harvey, a director of LESANDU PTY LIMITED, dated 27 July 1995, with Exhibit 1;

• Declaration of Jonathan Solomon Pinshaw, Managing Director of FREEDOM FURNITURE PTY LIMITED, dated 26 July 1995, with Exhibit 1;

• Declaration of Peter Frank Davey, National Operations Manager of BARBEQUES GALORE PTY LIMITED, dated 7 August 1995, with Exhibit 1;

• Declaration of Michael John O’Callaghan, Company Secretary of AUST SCAN PTY LIMITED, dated 29 August 1995, with Exhibit 1.

Vesudi chose not to serve evidence in answer to the opposition and the matter was eventually set down for hearing before me on 12 July 1996.  Ms Sophie Goddard of counsel appeared on behalf of SPL and Mr David Studdy of counsel for Vesudi.

Submissions

Ms Goddard began by pointing out that by reason of s241(2)(a) of the Trade Marks Act 1995, the Trade Marks Act 1955 applies in relation to this opposition  She then proceeded to address the provisions of s28(a) of the latter Act which, she said, contains two elements:

a)        that the mark is likely to deceive or cause confusion; and
b)        the question of whether it is necessary to show that the mark would not be entitled to     protection in a court of justice as a result of blameworthy or disentitling conduct on      the part of the applicant for the mark.

She argued that the test for whether a mark is likely to deceive or cause confusion is articulated in Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, and is, whether a number of persons will be caused to wonder whether it might not be the case that the two products (or in this case the services) might come from the same source (at 608). She added that the likelihood of confusion is to be answered not by reference to the manner in which the applicant has used its mark in the past, but by reference to the use to which it can be properly put the mark if it becomes registered: Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362. Furthermore, it is the applicant who bears the onus of satisfying the Registrar that “there is no reasonable probability of confusion” or that “there is no serious risk of deception or confusion”: Southern Cross case.  In this regard, she said, as Vesudi had chosen not to put on any evidence at all in the opposition proceedings its application for registration should fail.

Ms Goddard pointed out that the evidence showed that Vesudi was incorporated on 15 June 1990 and deregistered on 13 August 1993.  Its registration was restored on 25 August 1995.  There was no evidence, she suggested, that Vesudi had used the mark in respect of the specified services during the period that it was a registered company, including the date of application (12 May 1992).  Rather, she said, the evidence appeared to show that the mark had been used by another company, Primesec Limited (Primesec).  The applicant had not adduced any evidence of use of the mark.  The evidence also showed that SPL acquired from Primesec the site of the SupaCenta as well as the rights to use the name “SupaCenta” including the elephant’s head logo in July 1993 (EX DID2).  The acquisition included the signage (the name and logo) which had remained prominently displayed on the building since at least August 1991 (Dinte declaration).  She said there was clear evidence that the name and logo had continued to be used in association with the site and the business conducted there from 1991 by Primesec and from 1993 by SPL.

Ms Goddard submitted that the question for the Registrar’s decision was whether having regard to the reputation acquired since 1991 in the name SupaCenta in connection with the logo he could be satisfied that the mark applied for, if used in a normal and fair manner in connection with any of the services covered by the proposed registration, would not be likely to cause deception or confusion amongst a substantial number of persons : Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 438; Smith Hayden  Co Limited’s Application (1946) 63 RPC 97 at 101.

She further submitted that it was not necessary, at the time of application, to show disentitling conduct on the part of the applicant: Johnson & Johnson (supra) and Carnival Cruise Lines v Sitmar Cruises Limited (1994) 31 IPR 375. She submitted that the majority decision of the High Court in NSW Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363 supported that proposition while recognising that decisions of this Office had not supported such a view: Sporoptic Pouilleux SA v Arnet Optic Illusions Inc (1995) 32 IPR 430 and Titan Manufacturing Pty Limited v Coyne (1991) 22 IPR 613. She argued, however, that even so, the conduct of Vesudi had been blameworthy inasmuch as Vesudi knew that the company Primesec and not it had, since 1991, provided services of renting commercial property being a shopping centre referred to in its leases as “The RetailCenta” and under signage including the logo. Furthermore, Vesudi had been deregistered since the date of application without notice to the Registrar. As to the issue of proprietorship Ms Goddard submitted that prior use by a person of a trade mark combined with local “authorship” was a proper basis for asserting that that person was the proprietor of the mark in Australia for the purposes of s40: Moorgate Tobacco Company Limited v Philip Morris (1984) 156 CLR 414, 432. She said that that was sufficient even where there was no evidence of use but simply an intention to use the mark: Shell Co (Aust) Limited v Rohm & Haas Co (1980) 78 CLR 601 at 627-8. She submitted that Vesudi had not established the essential element of “authorship” in the sense that it had to establish that no other person had acquired a prior right to use the mark in Australia for the relevant services. She said that the evidence suggested that the company, if any, who had as at the date of application the right to use the mark was Primesec Limited and that the leasing of retail premises at the SupaCenta in 1991 under the signage constituted use of the mark in relation to the specified services. She added that the evidence further cast doubt on whether Vesudi had any real intention to use the mark in support of its application and that in the absence of evidence of such intention the application should be refused.

Ms Goddard then referred to the contract of sale and submitted that on that basis SPL had a superior claim to proprietorship of the mark by reason of the acquisition from Primesec.  She said that the clear intention of the contract was that the land and the construction described as “the Retail SupaCenta” was to be the subject of the sale.  That construction included the signage which remained on the property.  She said that the contract of sale referred in particular to the acquisition of the business name “The Retail SupaCenta” and that it was clear that the parties contemplated acquisition of the use and ownership of the name as depicted on the building including the logo and all rights therein.  In any case, she said, Primesec was the proprietor of the mark and not Vesudi.  There was no evidence of any assignment of the mark from Primesec to Vesudi.  She reiterated that the onus of establishing proprietorship of the mark was on the applicant for registration which had failed to lead any evidence to support its position.  She submitted further that it was a reasonable assumption that Vesudi was aware both of the leases from Primesec to the leaseholders of premises at the SupaCenta and the sale of the SupaCenta (including the name) to SPL.  In particular, the directors of Vesudi were also directors of Primesec.

In conclusion Ms Goddard submitted that Vesudi should have notified the Registrar of its deregistration and that acceptance of the application should then have been withdrawn pursuant to s44(3).  In those circumstances, she said, the present application was misconceived and a fresh application ought to be made by Vesudi under the 1995 Act.

Ms Goddard went on to question Vesudi’s intention to use the trade mark, referring in this connection to Michael Sharwood & Partners Pty Ltd and Others v Fuddruckers Inc (1989) 15 IPR 188. In that case the delegate of the Registrar found that the applicant companies did not have the capacity to carry on business in relation to the specified services. She mentioned among other matters that copies of company records showed that the companies were listed as “trustee” companies or “trustee and investment” companies. Ms Goddard tendered, with the consent of Mr Studdy, a copy of a computer produced extract from the records of the Australian Securities Commission (ASC) dated 10 July 1996 in relation to Vesudi Pty Ltd which showed that its principal activity at that date was “trustee company”. This, she submitted, cast considerable doubt on Vesudi’s ability to provide the services as specified in the application for registration and, although this was not a ground relied on in the notice of opposition, she said that by virtue of s50(2) of the Act the Registrar could take into account a ground of objection whether relied on by the opponent or not. She submitted, moreover, that the discretion to consider such a ground should favour the opponent because of the public interest in the activities of public companies.

Mr Studdy replied that the sole basis of SPL’s opposition was the supposed acquisition by it of the business conducted under the name THE RETAIL SUPACENTA together with the graphic element.  He pointed to the use of the words “the said acquisition” in each of the five grounds set out in the notice of opposition and said that there was no mention there of some supposed right of proprietorship in Primesec, a ground which had been raised for the first time at the hearing and therefore which he not been given sufficient opportunity to consider, as he had not known that he would have to respond to such an argument at the hearing.  He said it would therefore be contrary to s50 of the Act for me to consider that submission since it was not a ground relied on in the notice of opposition.  He said further that grounds 2 to 5 of the notice of opposition were contingent upon SPL’s making out ground 1 and that therefore if SPL failed to make out that ground then the other grounds must fail.  Mr Studdy therefore directed his submissions to the contract of sale which is Exhibit DID2 to the Dinte declaration.  He said it was a standard contract for the sale of land at a nominated address, the building on the land and furnishings and chattels listed in Schedule 3 to the contract.  He said there was no reference in the contract to SPL’s purchasing Vesudi’s trade mark nor could there be as Vesudi was not a party to the contract.

Mr Studdy further submitted that in order to succeed under s28(a) the opponent must prove blameworthy conduct on the part of Vesudi: New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd; Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 570, 12 IPR 321; Titan Manufacturing Co Pty Ltd v Coyne (1991) 22 IPR 613; Chanel Ltd v Produits Ella Bache Laboratoire Suzy (1993) 27 IPR 245. In reference to statements made in the Dinte declaration he contended that there was no probative evidence as to what discussions might or might not have taken place between Vesudi and the receiver and manager of Primesec Limited.

Mr Studdy further submitted that it would be inappropriate for the Registrar to investigate whether Vesudi’s trade mark would be contrary to law under s28(b).  His argument was that the absence of such a finding by a court precluded such a finding now being made: Triple Three Leisure Ltd v Turkovic (1993) 27 IPR 430.

Ms Goddard responded that Vesudi had not been taken by surprise by her submission as to the proprietorship of Primesec because Vesudi had at all times been aware of the situation; the two companies had common directors.  The issue of proprietorship must be able to be relied on.  The notice of opposition made it clear that SPL relied on the acquisition of property and it made no difference from whom the property was acquired.  The sale of the land clearly carried the right to grant leases and the sign had been on the building since 1991; it was plainly therefore part of the sale.  She reiterated that Vesudi had not shown the Registrar that it was the proprietor of the trade mark or that it intended to use the mark.  There was simply no evidence on the matter.  But Vesudi well knew that SPL had acquired the trade mark from Primesec since it had directors in common with that company.  The Register should reflect the real situation: that Primesec was in fact the proprietor of the trade mark

Decision

It will be convenient to deal first with the alleged transfer of title of the trade mark in issue.  The leading declaration is that of David Ian Dinte who is the Group General Manager of SPL.  The other declarations, of Harvey, Pinshaw, Davey and O’Callaghan, are from officers of companies which traded in the Supacenta outlet and recite that they commenced business at the premises in various dates in 1991 at which time a sign depicting the trade mark was prominently displayed on the building and at the time of making their declarations in July or August of 1995 the sign - a copy of a photograph of the sign is exhibited to each declaration - was still so displayed.  Mr Dinte declares as to the contract of sale of the property, a copy of which is at Exhibit 2, between Primsec [sic] Limited and Dalmaud Pty Ltd, a predecessor of SPL- a copy of the Certificate of Incorporation on Change of Name is at Exhibit 1.  Mr Dinte states that:

1. The said trade mark was on the property at the time of purchase by SPL and is still      [July 1995] on the property and is a symbol under which SPL conducts its business.

1. It is SPL’s belief that at the time of purchase, it also acquired right and title to the said    trade mark and that at the date of purchase the goodwill associated with the said trade      mark passed to SPL and as a result of the continued use of the said trade mark by SPL      it is now associated with such company and none other.

...

1. It is SPL’s contention that at the time of acquisition by it of the business that the title      to the said trade mark application No. A578119 passed to it, and at the time of the     transfer the said:

IAN GREGORY LONDISH
PETER GREGORY LONDISH
SIDNEY LONDISH

who at the date of sale to SPL were Directors of both PRIMSEC [sic] LIMITED and VESUDI PTY LIMITED, failed to inform the Receiver of PRIMSEC LIMITED, that       a significant asset of PRIMSEC LIMITED inseparably associated with the said           business which should have been included in the sale.

The last paragraph is not entirely clear but Mr Dinte seems to be saying both that the trade mark was included in the sale and that the application for registration of it should have been so included but for the failure of the directors to inform the receiver of its existence.

The contract in evidence is the first page only of the six-page form of the standard Contract for the Sale of Land of the Law Society of New South Wales, 1992 edition, duly stamped by the Office of State Revenue.  The parties are named as Primesec Limited (Receivers and Managers Appointed) and Dalmaud Pty Limited.  The property is nominated as “The Retail Supacenta, cnr Dacey Avenue, South Dowling Street & Todman Avenue, Moore Park”, the Improvements as “Commercial Building” and the Furnishings & Fittings as “listed in Schedule 3”.  The other five pages of the standard form contract are not in evidence, nor is Schedule 3.  There is a copy of an Annexure to the contract containing some amendments to the printed form and the following clause:

23.      Purchaser’s acknowledgments

23.1     The purchaser agrees that no reliance has been made on any warranty or   representation by the vendor or any person on behalf of the vendor except as               expressly provided in this contract, that this contract constitutes the whole   contract between the parties and that the purchaser has relied entirely on the   purchaser’s own enquiries relating to, and inspection of, the property, all   improvements and any item of furnishings and chattels referred to on the front               page of this contract and in relation to the use to which the property may be             put.

There is a further Annexure detailing the contents of a number of Schedules to the contract.  Nowhere, however, is there any mention of the trade mark, of any goodwill associated with the business or even of the sign itself.  Ms Goddard specifically relied on clause 51 which is as follows:

51.      Business Name

On completion, the vendor must deliver to the purchaser a Statement of   Change in relation to the business name “the Retail Supacenta” (“Name”)   signed by or on behalf of the proprietors of the Name to enable the purchaser to                obtain registration of the Name.  Following completion the purchaser must   lodge with the Department of Business and Consumer Affairs the Statement of             Change in respect of the Name and must pay any fees relating to the lodgment                  of such form.

It is clear that this is a reference to the registration of a business name and has no bearing on the transfer of any trade mark.  There is no evidence that the business name has been or is registered by Primesec, SPL or any other person.

In the absence of any evidence whatever in the contract of the transfer of any trade mark or goodwill I cannot find that the present trade mark was in fact transferred to SPL so as to render it the proprietor of the trade mark here in issue.

Section 28

With respect to Ms Goddard’s submissions as to s28(a) of the Act I accept that the test is as stated by paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

(a) (Under s.28) "Having regard to the reputation acquired by the mark SUPACENTA and device, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?"; ...

In accordance with this test I am to have regard to the reputation acquired by the trade mark in the hands of SPL or another person and to decide on the basis of that reputation whether the use of the mark by Vesudi would be reasonably likely to cause deception and confusion amongst a substantial number of persons.  Here again I am faced with a complete lack of evidence.  There is nothing before me to show what reputation SPL or any other person may have acquired in the mark or the extent of the use of the mark by it or another.  What is more, I am obliged to consider that reputation as at the date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. That date is 12 May 1992, at which SPL had not as yet acquired the business, the date of the contract for sale of the property being 7 July 1993. It follows that at the relevant date SPL could not have acquired any reputation in the trade mark. This ground of opposition must therefore fail at the threshold and it is not necessary for me to consider Ms Goddard’s further submissions on the question of blameworthy conduct on the part of Vesudi.

Intention to use

Regulation 8(2) of the Trade Marks Regulations provides that:

(2) An applicant for the registration of a trade mark in respect of a service or services    included in a prescribed class of services shall furnish in support of his    application a written statement indicating that the applicant uses or proposes to                    use presently the trade mark in relation to the service or services specified in      the application and the geographical area in which he uses or proposes to use   the trade mark in relation to the service or services.

Vesudi furnished the required written statement by means of a tick in the appropriate box on the application form indicating that the trade mark “is now used, or is intended to be used, by the owner throughout Australia on all of the goods or services listed”.  In the Fuddruckers case, supra, the Principal Assistant Registrar of Trade Marks accepted the submission that the word “or” between “uses” and “proposes to use” in the regulation must be read in a disjunctive sense, not conjunctive, and thus applicants are required to state either that they are using the mark, or that they propose presently to use it, not both.  She went on to agree that as a matter of statutory interpretation, whether generally or specifically in relation to reg 8, the word “or” is to be read in a disjunctive sense, and that one cannot, at one and the same time, be both proposing to use ( ie at some future date), and currently using, a mark in relation to some specific product or service.  In the present instance the box-ticking exercise, whether or not it constitutes a “written statement”, certainly does not allow the applicant to state one alternative or the other, in respect of the use of the mark, or to state the geographical area in which he proposes to use the mark if this is less than the whole of Australia.  Be that as it may, there is no evidence before me as to either actual use of the mark by Vesudi or of its intention to use the mark.  However, it is well established that the onus is not on an applicant for registration to prove affirmatively the intention to use the mark applied for.  As Fullagar J observed in Aston v Harlee Manufacturing Company (1960) 103 CLR 391:

There is another element mentioned by Dixon J in the Shell Co's case*, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s 72,[ie of the Trade Marks Act 1905] the mark or marks may be expunged under that section.  On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars:  the effect of In re Registered Trade Marks of John Batt & Co +, is I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal.

* (1949) 78 CLR 627

+ [1898] 2 Ch 432; [1899] AC 428

(The statement referred to from Batt's case reads: "A Trade Mark cannot properly be registered for goods in which the Applicant does not deal or intend to deal.”)

In the Fuddruckers case there was clear evidence that the nominee companies did not have the capacity in a business sense to carry out the stated intention to use the mark in respect of the specified services.  The only evidence in relation to Vesudi is the ASC report tendered by Ms Goddard at the hearing, already mentioned above, and a copy of an earlier ASC extract at Exhibit DID7 and dated 23 March 1995.  This shows that Vesudi was registered on 15 June 1990 and that its principal activity at that date was “shelf company”.  The only evidence as to the business activities of Vesudi therefore are a description of its principal activity as a shelf company some two years prior to the date of application for registration, its dissolution on 13 August 1993 and its restoration to the register on 25 August 1995 with its principal activity then being described as that of “trustee company”.  I think this falls well short of discharging the onus on the opponent of establishing that at the date of application Vesudi was not capable of carrying on a business of the “rental of commercial property, being a shopping centre”.  I am of course concerned with the services as specified in the application and not with the particular shopping centre to which the contract in evidence relates.

Proprietorship

There is one further matter which was pursued by Ms Goddard at the hearing and which I need to consider and that is the position of Primesec in relation to the question of the proprietorship of the mark in suit.  At the hearing Ms Goddard tendered, with the consent of Mr Studdy, copies of lease agreements entered into by Primesec Limited with three different lessees.  The property leased is identified by reference to a plan annexed to each of the agreements as Annexure A.  Each copy of the annexure bears the legend “THE RETAIL SUPACENTA” immediately beneath the plan of the complex.  Two of the leases are said to commence on 1 August 1991, the third on 12 December 1991.  A fourth lease in which the lessor is said to be Comrealty Prime (no. 2) Limited has no plan annexed and no reference to THE RETAIL SUPACENTA and may therefore be discounted.  Each of these lease agreements predates the application for registration.  This use is not of course use of the trade mark applied for, which consists of the words SUPA and CENTA and the elephant’s head device rendered in a particular manner.  Taken together with the declarations of Harvey, Pinshaw, Davey and O’Callaghan, however, I think that they make out a good case for the use of the trade mark in connection with the services of “rental of commercial property, being a shopping centre”.  Three of those declarants state that they have carried on business at a property known as The Retail Supacenta since a date in 1991 - the date in the O’Callaghan declaration has been left blank and may be discounted to that extent.  All the declarants state that at the date of their occupation the premises prominently displayed a sign  THE RETAIL SUPACENTA & LOGO.  Annexed to each of the declarations is a copy of a photograph of the sign which each declarant says is the sign referred to in the declaration.  This photograph shows the trade mark together with the words the retail in much smaller lettering above the words SupaCenta, the word the above Supa and the word retail above Centa, ie, separated by the elephant’s head device.  The bars above and below the letters upa and enta are also not present in the sign.  Nevertheless, although the mark as depicted in the sign and the mark as applied for are not identical I think that they are substantially identical, which is sufficient for proprietorship of the mark to become an issue.

In Carnival Cruise Lines v Sitmar Cruises Limited (1994) AIPC 91-049 Gummow J, then of the Federal Court, in considering the disputed claims to proprietorship of the marks FUNSHIP or FUN SHIP, posed the following questions:

Will substantial identity suffice? Or may questions of deceptive similarity be      considered? Or is visual identity essential?

Then, having considered a submission based on The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, His Honour continued:

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 s62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (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.

...

In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural. However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship".

In Karu Pty Ltd v Robert Leon Jose (1994) 30 IPR 407 Drummond J, while noting that the comments of Gummow J were obiter, applied them directly to the matter before him.

I think that a total impression of similarity does emerge from a comparison of the two versions of the mark so that it can be said that Primesec Limited was providing the service of the rental of commercial property within a shopping centre and providing that service in connection with a trade mark which is substantially identical with the mark sought to be registered by Vesudi.

The concept of proprietorship of a trade mark was explained by McGarvie J in Settef v Riv-Oland Marble 10 IPR 402 at 413:

"Acquiring proprietorship

At common law (which in the present context is treated as including the principles of equity), property in a trade mark could only be acquired by public use of the mark as a trade mark.  The right of the proprietor of a trade mark was to prevent its use as a trade mark by other persons.  The original remedy for the protection of this right was an injunction to restrain infringement.  Principles as to the way in which the discretion should be exercised to protect a trade mark by injunction were settled by the Court of Chancery.  The cases which settled these principles established the types of trade marks in which a person would be recognised as having a right of property which would be protected by injunction: G E Trade Mark [1973] RPC 297 at 324-7 per Lord Diplock.

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. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

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. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.

The right to claim proprietorship of a mark within the meaning of s.40(1) therefore depends on first use of the mark in Australia.  I think it is clear from the evidence that Vesudi was not the first user of the trade mark in Australia and is not therefore entitled to be considered the proprietor at common law of the mark since there had been at least one earlier user of the mark in relation to the specified services, Primesec Limited.  I find therefore that the opposition succeeds on that ground.

Mr Studdy objected, however, that the question of Primesec’s proprietorship was raised for the first time at the hearing and had not been a ground included in the notice of opposition.  He submitted that it would be contrary to s50 of the Act for me to take it into consideration.  Subsection 50(2) enables the Registrar to take into account a ground of objection whether relied on by the opponent or not.  Although the issue of Primesec’s proprietorship was not explicitly raised in the notice of opposition I think it was implicit in SPL’s claim in ground 1 that Vesudi was no longer the proprietor of the trade mark because of its (SPL’s) acquisition of “the business conducted under the trade mark THE RETAIL SUPACENTA & GRAPHICS”.  That SPL claimed to be the proprietor of the trade mark by virtue of a transfer from Primesec clearly implies that Primesec in its view was the rightful owner of the mark.  It seems to me therefore that it was always open to SPL to argue that Primesec was the proprietor of the mark and such a submission should hardly have come as a surprise to Vesudi.

Conclusion

In summary my findings are:

• that there is insufficient evidence to support the contention that SPL is the proprietor of the trade mark by virtue of a transfer to it of the business and goodwill of Primesec Limited;

• that there is no evidence to make out a case under s28 of the Act that use of the mark by Vesudi would lead to the deception or confusion of a substantial number of persons;

• that SPL has failed to discharge the onus on it of proving a lack of intention or capacity to use the mark on the part of Vesudi;

• that Vesudi is not entitled to be considered the proprietor of the trade mark under s40 because of prior use of the mark by Primesec Limited.

The opposition is therefore successful and the registration of the trade mark the subject of application 578119 is refused.  The opponent has been successful and is entitled to its costs in the matter and I so award them.

Michael Homann
Hearing Officer

16 September 1996