Water Corporation v Watercorp Pty Ltd
[2003] ATMO 23
•22 April 2003
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by WATER CORPORATION to registration of trade mark application 835702 (7, 11, 35) - WATERCORP YOUR PARTNERS IN GROWTH - filed in the name of WATERCORP PTY LTD.
Date of Decision: | 22 April 2003 |
Delegate: | Claudia Murray |
Representation: | Opponent Barry Newman, of Lord & Company, Patent and Trade Marks Attorneys Applicant Mark Kirtland, Managing Director of Applicant (written submissions) |
Decision: | 1. Section 52 Opposition: s 55(b) registration allowed, subject to a geographical limitation excluding Western Australia 2. Costs awarded against applicant |
Background
WaterCorp Pty Ltd (the applicant) filed trade mark application no. 835702 on 15 May 2000. The subject of the application is the word and device trade mark:
The application was originally filed in classes 7 and 35 of the International (Nice) Classification of Goods and Services. During the course of examination, an extra class (class 11) was added. The statements of goods and services became:
Class 7 Pump components and systems
Class 11 Irrigation systems
Class 35Franchise business system for use specifically in the pump, irrigation industry.
No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against the application. Therefore, once the matter of correct classification of the applicant's goods had been resolved, the application was accepted for registration. Advertisement of acceptance was advertised in the Australian Official Journal of Trade Marks on 1 March 2001.
On 31 May 2001, Water Corporation (the opponent) filed notice of opposition to registration of the trade mark. Ten grounds of opposition were listed in the notice.
The opponent's evidence in support was filed and served just under twelve months later. The applicant did not respond with any evidence in answer. The matter then came to a hearing before me, as a delegate of the Registrar, in Canberra.
Mr Barry Newman, of Lord & Company, Perth, represented the opponent by telephone. Mr Mark Kirtland, Managing Director of the applicant, tendered written submissions to be considered at the hearing.
Evidence
The opponent's evidence in support of the opposition comprises four declarations, with details as follows:
| Date | Name | Description | Exhibits |
| 24 May 2002 | Keith Cadee | General Manager, Bulkwater and Wastewater of Water Corporation | KC-1 to KC-21 |
| 25 Feb 2002 | Alexander Walker | Managing Director, Sydney Water Corporation | AW-1 |
| 22 Feb 2002 | Donald Bruce Bursill | Chief Executive Officer, Cooperative Research Centre for Water Quality and Treatment | DBB-1 |
| 20 Feb 2002 | Keith David Jones | Senior Advisor-Community, Woodside Energy Limited | KDJ-1 |
Mr Cadee's declaration gives a brief history of the opponent, Water Corporation. He explains that it was incorporated on 1 January 1996, and its primary function is to provide water, wastewater, drainage and irrigation services to both residential and business customers throughout metropolitan and regional Western Australia. Prior to 1 January 1996, the opponent was known as the Water Authority of Western Australia. Mr Cadee gives substantial figures for the opponent's total yearly revenue since its incorporation as Water Corporation, as well as figures for its plant, property and equipment, number of pumps and residential and business accounts.
Mr Cadee also explains in his declaration that, at the time of its incorporation in 1996, Water Corporation undertook an extensive advertising campaign to inform the public of the change of name and corporate identity of the organisation. He says at that point the abbreviation "Water Corp" was "immediately applied by the public at large, and Water Corporation is known as Water Corp throughout Western Australia". In support of this claim, Mr Cadee declares that a recent survey of the opponent's call centre suggested the name most commonly used to refer to Water Corporation by the 500,000 or so callers to the centre every year is "Water Corp".
Mr Cadee contends that, due to the opponent's active participation in the water supply, wastewater and irrigation industries throughout Australia, including licensing of its technology, involvement in planning, research and advisory bodies, etc, the name "Water Corp" has become "extremely well known throughout the industry in Australia". Mr Cadee concludes his declaration with these comments:
Water Corporation has developed an extensive reputation in the name "Water Corp" throughout Western Australia and the remainder of Australia. Any use of the name "Water Corp" by other parties will inevitably lead to a loss of reputation for Water Corporation, and a dilution of its trade mark rights. Where the name is used in areas such as irrigation systems and pump components and systems, it is my view inevitable that the result will be a deception of the consuming public, in addition to a loss of valuable business for Water Corporation.
Twenty-one exhibits, being mostly in the nature of advertising material and copies of newspaper articles, accompany Mr Cadee's declaration.
The remaining three declarations provided by the opponent support the comments made by Mr Cadee. The declarants are senior, experienced members of the Sydney Water Corporation, the Cooperative Research Centre for Water Quality and Treatment (in South Australia) and Woodside Energy (in Western Australia), respectively. They declare their knowledge of wide recognition of the words "Water Corp" as an exclusive identifier of the opponent, in their companies, throughout fellow members of their field in their home state and generally, throughout the whole of the "Australian water supply industry". They also support Mr Cadee's statement that the applicant's use of its trade mark on similar goods and services to those used by the opponent would cause them, and their colleagues in the industry, to be deceived and confused as to the origin of those goods or services.
Grounds of opposition
Mr Newman indicated at the hearing that the opponent would be pressing its case in terms of sections 43, 58, 59 and 60. I will deal with the grounds in that order below. However, firstly I will briefly cover the applicant's written submissions.
Applicant's submissions
Mr Kirtland's written submissions did not address any specific grounds of opposition. Instead, they provided the kind of explanation of the applicant's adoption and use of its trade mark usually included in evidence in reply. Mr Newman rightly pointed out at the hearing that, as this information is not in declaratory form, I am able to give it no weight as evidence. However, for practical purposes, I have no reason to doubt the veracity of Mr Kirtland's comments, and they provide in these reasons some background information on the applicant, complementary to that already provided about the opponent. Mr Kirtland explains that his business is a small irrigation business, which he founded in March 1997. He is the sole director of the business, which he manages "remotely" from Adelaide. The business operates out of leased premises in Mount Gambier, South Australia, and employs three people. The company is "solely focused on the supply and installation of irrigation systems" and "its target market and clientele are the farming community of South East of South Australia".
Mr Kirtland says that, prior to the current opposition proceedings, he had never heard of the Water Corporation of WA. He chose the name WATERCORP as it was reminiscent of the name of his previous employer, defunct South Australian company AQUACORP.
Section 43 - Trade mark likely to deceive or cause confusion
Section 43 of the Act provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Submissions
Mr Newman argued that his client's circumstances were similar, in terms of section 43, to those reported in the decision by Hearing Officer Forno, Amalgamated TV v Clissold (2000) 52 IPR 207 (the Home and Away case). Drawing on earlier Office decisions, Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, Amalagamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999), and Durkan v 20th Century Fox Film Corporation (2000) 47 IPR 651,
Mr Forno said, at page 218:
The operation of s.43 does not depend upon the existence of a conflicting trade mark. The word "connotation", in this context, refers to that which is implied within a trade mark itself - in addition to its essential or primary meaning. It is possible ... that evidence can reveal such a connotation. This can occur when it is convincingly shown that there is a perception, among people in an intended market, that a mark is so related to one party that use of the same mark by another will be deceptive and confusing because purchasers might incorrectly infer some sort of endorsement or relationship.
Mr Newman quoted from the declarations of Professor Bursill and Mr Jones, saying they had clearly described their automatic assumption, when faced with the applicant's trade mark used in relation to irrigation components, that it was connected in some way with the opponent. Mr Newman said, "the conclusion must inevitably be that the application contravenes section 43".
Discussion
The word "connotation" in section 43 refers to a message which a person might infer from a trade mark, deriving from an inherent signification in a word or device, as opposed to any trade mark signification that may be attached to it. Section 43 is intended to protect the public from the registration of trade marks with connotations that might lead purchasers to make a reasonable, but incorrect, assumption about a product, which could not easily be confirmed or discounted by even close inspection of that product. (For example, see the VITAMIN and ORLWOOLA cases, J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg.), and Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).)
The Trade Marks Office Manual of Practice and Procedure (the Manual) says, at Part 29, paragraph 1.4, that deception and confusion of the public within the scope of section 43 might arise in relation to:
Character of the goods and/or services including their composition, nature or other properties
Quality or quantity of the goods and/or services
Geographical origin of the goods and/or services
Intended use or purpose of the goods and/or services
The endorsement or licence of a product or service by a person or organisation.
The cases cited by Mr Newman all dealt with deception and confusion that might have occurred because of the circumstances described in the last dot point above. That is, deception resulting from the creation, by way of a connotation present in an opposed trade mark, of an erroneous public perception that a product bearing that mark has been endorsed by what is actually a completely unrelated party. That party being strongly associated with the word(s) comprising the trade mark, though having little or no trade mark use itself.
The trade marks featured in these earlier cases, in the order I have listed the citations above, are: HOME AND AWAY, EARTHAVEN CONFEST, SUMMER BAY and BRAVEHEART THE MUSICAL. It is clear that any connotations to be found in such trade marks are at least once removed from the kind of connotations to be drawn from trade marks such as VITAMIN or ORLWOOLA, which would be apparent to most prospective consumers. The question here is whether the applicant's WATERCORP trade mark carries the same kind of connotation, which has been "revealed by the evidence" (to quote Mr Forno).
I do not believe this to be the case. It is true that there is something of a parallel in that the opponent's evidence does not demonstrate its own trade mark use of the words WATER CORP. As Mr Newman observed, it always uses its full name, WATER CORPORATION, in its own advertising. Instead, the evidence shows use of the abbreviation by the Western Australian press and recognition of it also by three members of the water supply industry in Western Australia, South Australia and New South Wales. There is also the brief reference by Mr Cadee to the frequent use of WATER CORP by callers to the opponent's call centre.
However, unlike the cases cited by Mr Newman, the expression WATER CORP does not, in my opinion, have as its primary Australian signification an association with the opponent. Quite independent of the opponent's newly-adopted name, the words "water corp" are a natural abbreviation of the phrase "water corporation", which in turn is an obvious title for a business enterprise dealing with the provision of water. This is far removed from, for example, the circumstances under which the connotation attributed to the word BRAVEHEART developed, as described by Deputy Registrar Hardie supra, at page 5:
The facts in evidence are, however, that the term braveheart was coined as a fictional sobriquet for the historical figure of William Wallace. The expression brave heart is an ordinarily descriptive term used as a salute to an heroic attitude. The “coining” claimed by Fox Corporation is therefore nothing more than the conjunction of two ordinary words which, in their normal usage, constitute a laudatory and well recognised expression. Nevertheless, before Fox Corporation merged these two words into one, there is no evidence that the word braveheart had any currency, any presence in English dictionaries, or any attachment to the Scottish hero, William Wallace. [Who was the subject of the opponent's film.]
Instead, the present case harks back to the ORLWOOLA and VITAMIN examples cited above, where the connotation within the trade mark does not need to be revealed by the evidence, but is readily apparent to most prospective consumers. The applicant, like the opponent, is a water corporation, and so its use of its WATERCORP trade mark is entirely consistent with the connotation inherent within that trade mark.
The Full Federal Court recently discussed the function of section 43, in Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521. Wilcox, Kiefel and Emmett JJ said:
The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.
Similarly, the opponent's case for deception and confusion under section 43 seeks to rely upon the similarity of the applicant's trade mark to a shortened form of the name used by the opponent, not upon the true connotation within the mark itself. The opponent's case under section 43 has therefore not been made out.
Section 58 - ownership of the trade mark
Section 58 of the Act provides:
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.
Submissions
Mr Newman argued that, in terms of section 58, the opponent was the rightful owner of the applicant's trade mark. He said, following the reasoning applied in PB Foods Ltd v Malanda Dairy Foods Ltd 47 IPR 47, Mahogany Designs v Charles 50 IPR 111 and Virgin Enterprises Ltd v Bowes 51 IPR 615, the test for substantial identity between the trade marks set out in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 was satisfied. That is, a total impression of similarity emerged from a comparison between the applicant's trade mark and the opponent's claimed trade mark WATER CORP. Further, Mr Newman submitted that the opponent's evidence shows continuous use of the words WATER CORP in relation to irrigation services and pump systems since January 1996.
Discussion
In Trade Mark Law in Australia (2000), Elkington, Hall and Kell say of ownership disputes, at page 77:
The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing".
It is usual to begin an assessment of an opponent's case under section 58 with an enquiry into whether the trade marks in question are substantially identical, taking into account case law such as that quoted by Mr Newman. However, such comparisons rely upon the assumption that there are trade marks to be compared. Here, the first question to be settled is whether there are indeed two trade marks to compare. The definition of a trade mark in Section 17 of the Act reads:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
Despite Mr Newman's claims in respect of the opponent's continuous use of WATER CORP, for the purposes of section 58, he had observed earlier in his submissions that the opponent always uses its full name in its advertising. Indeed, the evidence clearly shows that the opponent conducts its business exclusively under the trade mark WATER CORPORATION. Members of the public and the media may have adopted the nickname WATER CORP in referring to the opponent, as is also demonstrated by the evidence, but this does not represent commercial use of those words, as a trade mark, by the opponent. The opponent's claim to ownership of the trade mark WATER CORP is therefore invalid, and fails to displace the applicant's claim to its trade mark. The ground of opposition under section 58 has not been made out.
Section 59 - applicant not intending to use its trade mark
Section 59 provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Submissions
Mr Newman pointed to the applicant's submissions as "freely admitting" that it has no intention to use its trade mark in respect of the class 7 "Pump components and systems" and the class 35 services of "Franchise business systems for use specifically in the pump, irrigation industry". His argument was based on Mr Kirtland's comments that his company is solely focused on the supply and installation of irrigation systems for rural crop production, and that its target market and clientele are the farming community of South East of South Australia. Mr Newman submitted that, under section 59, registration of the applicant's trade mark should at least be refused in respect of classes 7 and 35, regardless of any determination in relation to other matters.
Discussion
The making of a trade mark application is a prima facie indication of intention to use that trade mark. (Aston v Harlee Manufacturing Company (1960) 103 CLR 391 (Aston v Harlee). In Intel Corporation v Magnatex International Pty Ltd (1998) 41 IPR 406, Hearing Officer Homann said:
It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgment of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.
As Mr Newman himself has observed, the applicant's written submissions do not constitute evidence and cannot be given weight as such. In any event, they represent an explanation of the position of the applicant at the present time, not a concrete commitment that it has now positively varied its original intention to use its trade mark expressed by way of its application. The opponent itself has not discharged the onus upon it to displace that indication of the applicant's original intention with evidence demonstrating any change to that intention. Under these circumstances, I find the opponent has not made its case for opposition under section 59.
Section 60 - trade mark with a reputation in Australia
Section 60 provides:
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.
Submissions
Mr Newman returned to his arguments made under section 58, except that on this occasion he based his arguments on the words WATER CORP and also WATER CORPORATION. He said that, given his previous submissions that the applicant's trade mark was substantially identical to the opponent's trade mark WATER CORP, I should, at the very least, concede that they were deceptively similar. I should also accept that the applicant's trade mark was deceptively similar to the opponent's WATER CORPORATION trade mark. The differences in the applicant's trade mark, argued Mr Newman, comprised merely an impeller device that was "common to the trade", and an "almost immaterial slogan". Mr Newman then cited the opponent's evidence as clearly demonstrating that, at the filing date of the applicant's trade mark, (15 May 2000), the opponent had a reputation in the trade marks WATER CORP and WATER CORPORATION, particularly in Western Australia, but throughout the rest of the country as well.
Discussion
To satisfy section 60, an opponent must demonstrate that at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. I have already found that the opponent's evidence shows no use of the words WATER CORP as a trade mark, so it follows that any reputation it might have does not accrue to those words. However, the opponent has demonstrated considerable trade mark use of its name, WATER CORPORATION. Mr Newman did not press the question of whether these words were substantially identical to the applicant's trade mark. Applying the well known principles set out in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601, I agree with his decision not to argue this point. However, there is a question of whether the trade marks are deceptively similar. Applying the well-known tests in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, and Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592, I am prepared to accept Mr Newman's proposition that they are deceptively similar. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at page 658 say:
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.
In Photo Disc Inc v Gibson and Another 42 IPR 473, Deputy Registrar Hardie found the trade marks and PHOTODISC to be deceptively similar. She went on to consider the effect of the descriptive nature of the opponent's trade mark, which she found to be of relevance to the question of deception, but not necessarily fatal to her finding upon the opponent's reputation. She observed, at page 478:
The applicants' submissions that "Photodisc" is a purely descriptive term has relevance to the question of deception. It is clear from the opponent's evidence that their compact discs are used to carry photographic images. The word `photo' therefore appropriately identifies the content of the disc in just the same way as `education' `games' and `language' identifies the contents of an `education disc', `games disc' or `language disc'. `Photo' has long operated successfully to describe the contents of an album - and it is equally apt to describe the contents of a compact disc. From this point, I think the applicants' submission is that in respect of such a descriptive word, there can be no trade reputation. The provisions of sub-section 41(6) of the Act, now however, recognise that purely descriptive marks may become distinctive through use. But, for the purposes of a section 60 ground, it is not necessary to show that the trade mark is distinctive. It is necessary only to show that, at the priority date, in the face of some established reputation in the opponent's trade mark, the application mark would cause consumers to wonder whether there was a connection between the application trade mark and the opponent (see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592).
Kenny J in McCormick &Co v Mary McCormick (2001) 51 IPR 102, at page 129, quoted with approval the following discussion, by Hearing Officer Iain Thompson, of how reputation can be developed. (See Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436):
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
Clearly, an opponent's reputation can accrue from a variety of sources. However, as Kenny J continues (supra):
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.
Here, I have been presented with a composite impression of the opponent's reputation in its name, WATER CORPORATION. That impression is solidly based upon the general, but significant, sales and advertising figures for use in Western Australia, prior to the relevant date, that is given in evidence. The evidence also shows, to echo Mr Thompson's words, that the opponent takes an active role in a variety of promotional, sponsorship, research, educational and advisory capacities, across all aspects of water provision, including rural irrigation. The opponent's position is then strengthened by the evidence describing the opponent's monopolistic position as the water utility of Western Australia, nicknamed in the state's press and known to many of its public as WATER CORP. In all, I am prepared to accept the opponent's contentions that its reputation in the trade mark WATER CORPORATION its home state would result in deception and confusion of the public, were the applicant to ply its goods or services under its own WATER CORP trade mark there.
However, the evidence has not convinced me that this reputation extends to the whole of Australia. While I have noted the arguments put forward by Mr Cadee and his three colleagues in the Australian water industry upon this matter, I do not find their declarations alone to be compelling evidence of such a broad reputation. Only two of the declarants are located outside of Western Australia, and therefore in a position to make reliable observations upon the situation in other states. Then, in relation to these two declarants, experienced though they may be, it would take a considerable leap of faith to accept that they are truly able to attest to, not only their own possible level of deception and confusion, but also that of hundreds of their colleagues. This is hearsay evidence, indeed.
I have discussed above the obvious connotation present in the names WATER CORPORATION and the shortened form, WATER CORP, that is equally applicable to the goods and services of any water provider. Given this, it is unlikely "a substantial number of persons" (Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97), from Australian locations that do not share a public water utility operating under the name WATER CORPORATION, would automatically assume a connection between the applicant's and the opponent's trade marks. The opponent has not discharged the evidentiary onus upon it to convince me otherwise. The connotation present in both the relevant trade marks may be credited here with diluting into improbability the possibility of confusion in areas where the provision of water is not monopolised by the opponent.
The opponent has made its ground of opposition under section 60, in respect of the State of Western Australia.
Decision
Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
I have found that the opponent has been unsuccessful under all its grounds of opposition pressed at the hearing, save for that under section 60. For completeness, and as I have no basis to be satisfied that any of the other grounds of opposition raised in the notice of opposition, but not argued at the hearing have been made out, I find each of those grounds unsuccessful. Under the circumstances, my decision upon the application as it stands is that I refuse to register it. However, given the limited geographical area within which I have found the opponent's single successful ground of opposition to apply, I will be prepared to register the application, if, within fourteen days of the date of this decision, the applicant consents to the following endorsement being applied:
Registration of this trade mark does not extend to the State of Western Australia.
Subject to the applicant's agreement to the above endorsement within the time I have allowed, and payment of the registration fee, the application may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
The opponent has sought its costs in this matter. It is usual for costs to follow the event and, depending upon the applicant's response to the condition I have imposed above, the opponent has been either wholly or at least significantly successful in this matter. Unlike the applicant, it has incurred costs in the preparation of its evidence and presentation of its case at the hearing. Accordingly, I award costs, within the terms of the official scale set in Schedule 8 of the Trade Marks Regulations 1995, against the applicant, WaterCorp Pty Ltd.
Claudia Murray
Hearing Officer
Trade Marks Hearings
22 April 2003
Key Legal Topics
Areas of Law
-
Commercial Law
-
Intellectual Property
Legal Concepts
-
Statutory Construction
1
14
0