Wayne Blundell and Geoffrey Bennett v Kolmat Pty Ltd

[2003] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Wayne John Blundell & Geoffrey Stephen Bennett to registration of trade mark application 843982(25) - TRAKKA AUSTRALIA & DEVICE - filed in the name of Kolmat Pty Ltd.

Date of Decision:

28 November 2003

Delegate:

Jock McDonagh

Representation:

Opponent: Mr Stephen English of counsel instructed by the opponents

Applicant: Mr Stephen Royce as agent for the applicant

Decision:

Section 52 opposition - section 58 ground established -registration refused. Costs awarded against the applicant.

Background

1. The applicant, Kolmat Pty Ltd, filed trade mark application number 834982 on 15 May 2000 for the trade mark trakka australia and device as shown below:

1. The application is in respect of the following Class 25 goods: Clothing, footwear, headgear, for men, women, children and infants.

2. The application was advertised as accepted for registration in the Official Journal of Trade Marks on 10 January 2002.

3. On 8 April 2001 a notice of opposition was filed at the Trade Marks Office by the solicitors for the opponents Wayne John Blundell & Geoffrey Stephen Bennett.

4. Evidence in support was duly filed with the Trade Marks Office and served on the applicant.  Similarly, evidence in answer was duly filed with the Trade Marks Office and served on the opponent.  Additionally, evidence in reply was duly filed with the Trade Marks Office and served on the applicant

5. The matter was heard in Brisbane on 28 August 2003 before me as a delegate of the Registrar of Trade Marks. The opponent was represented by Mr Stephen English of counsel. Mr Stephen Royce represented the applicant as its agent.

6. The opponent listed four grounds of opposition in its notice of opposition.

The Evidence

1. The evidence consists of the following declarations.

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Murray Lester CASS	7 October 2002	Annexures A to C	Cass
Evidence in Answer
Stephen ROYCE	6 January 2003	Appendix 1	Royce Junior
John ROYCE	5 January 2003	Royce Senior
Evidence in Reply
Dennis Newton LEE	8 April 2003	Annexures A to K	LEE 1
Dennis Newton LEE	8 April 2003	LEE 2

1. Much of the evidence filed in these proceedings is irrelevant, especially as it relates to the interpretation of the terms of a contract for sale of a business that was executed after the filing date of the application.  The evidence does document the disintegration of a personal and business relationship between the major actors in these proceedings.

2. The facts shown in the following paragraphs can be determined from the evidence filed from both parties, and are uncontroverted.

3. At some time in mid to late 1999, Stephen Royce and Wayne Blundell formed a business partnership known as Trakka Clothing (“Trakka”). The business sold fishing clothing, which was manufactured in Thailand to the Trakka’s specifications.

4. The clothing bore labels including ones that were essentially the applicant’s trade mark with the addition of the word “clothing” after the word “Trakka” in the scroll under the triangular device.  Additionally “swing tickets”, identical to the applicant’s trade mark save for the additional word “clothing” as mentioned above, were used in connection with Trakka’s goods. I note, as allowed by Trade Mark Regulations 1995 reg 21.15(8), that the application form for application 834982 includes a photocopy of what appears to be a Trakka swing ticket with the word “clothing” obliterated by correction fluid.

5. From January 2000, Trakka used business cards bearing the business name “Trakka Clothing”, the names Stephen Royce and Wayne Blundell and the device that I have described as being used for labels and swing tickets

6. Stephen Royce’s father John Royce, a director of Kolmat Pty Ltd, initially assisted Trakka in setting up and obtaining overseas contacts for importing clothing.  Stephen Royce has never been an officer or employee of Kolmat.  I am satisfied that there is no business connection between Stephen Royce and Kolmat, or with John Royce.  Kolmat has not been given authority to act on behalf of Trakka, save for assisting in importing clothing.

7. At some stage in early 2000, the personal and professional relationships between Stephen Royce and Wayne Blundell deteriorated.  The business partnership was severed by a sale of business executed on 28 May 2000 and completed 4 June 2000.

Grounds of opposition

1. The opponent relied on sections 43, 58, 60 and 62(b) of the Trade Marks Act 1995 (“the Act”) to oppose registration of the mark. The sections 43, 60 and 62(b) grounds are not supported by the evidence, and I dismiss them.

2. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

3. I am satisfied that the applicant’s trakka australia trade mark is substantially identical to the trakka clothing australia mark used by Trakka.  The device elements of the marks are identical, with the applicant merely deleting the descriptive word “clothing” from the text element of the trakka clothing australia mark to create its own.  The goods specified in application 834982 are the same as those manufactured and sold by Trakka.

4. I am satisfied that the use of the Trakka clothing labels, swing tickets and business cards was use as a trade mark.  The trakka clothing australia mark is a sign used to distinguish Trakka goods from those of others.  I am satisfied that use as a trade mark occurred from the end of 1999 until some time in 2000 and, therefore, prior to the application date.

5. I am satisfied neither John Royce nor the applicant used the trakka clothing australia mark in a trade mark sense prior to the application date for 834982.  The assistance in effecting the importation of goods bearing the trakka clothing australia mark does not amount to trade mark use by either John Royce or the applicant.

6. Section 58 does not require the prior user of the opposed mark to be the opponent. I am satisfied that the business partnership between Stephen Royce and Wayne Blundell, known as Trakka Clothing, and trading as such until after the filing date of application 834982, first used the trade mark in Australia. I uphold this ground of opposition.

Conclusion and Decisions

1. The opponent has established a ground of opposition on which it relied so that the opposition as a whole has been successful.  Pursuant to section 55, I refuse to register application 834982.

Costs

1. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 November 2003