Wendy Lister (555421 in the Name of Dion Michael Brown) v Stingray Surf Company Pty Ltd

[1994] ATMO 7

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:      Opposition by Stingray Surf Company Pty Ltd to the registration of applications 545593, in the name of Wendy Lister, and 555421, in the name of Dion Michael Brown.

Background
Trade mark application 545593 is in the name of Wendy Lister and the goods specified in the application are T-shirts.  The trade mark the subject of the application, which was lodged on 13.11.90, is the word STINGRAY with the device of a stingray.

Application 555421 is for the word STINGRAY alone, and seeks registration in relation to clothing excluding footwear.  It was lodged by Dion Michael Brown on 8.5.91.  On the file is an application by Wendy Lister to be recorded as the successor in title immediately on registration.  I note however that the purported deed of assignment has not been signed by Ms Lister.

From this point on I will refer to the two applications together, and a reference to "the applicant" should be taken in its appropriate context.

Registration of the applications has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Stingray Surf Company Pty Ltd ("the opponent"). The opponent argues that neither applicant is the proprietor of the mark.

After the evidence stages provided in the regulations, the matter was set down for hearing on 17.8.93.  The opponent relied on written submissions prepared by John Gardner, its patent attorney, while the applicants were represented by Ken Niblett, patent attorney of the firm of Spruson and Ferguson.  Having heard the parties, I turn to the evidence.

Opponent's Evidence in Support
This consists of declarations by Kim Butler, Darlene Hendry and Debra Thompson. 

Ms Butler is a clothing designer who, in 1980, decided to manufacture some clothing and coined the name STINGRAY.  Ms Butler obtained, in Bali, fabric and labels for the making of those clothes, said to be beachwear including ladies wear, swimwear, board shorts and other casual clothing.  Labels bearing the mark STINGRAY in a form as exhibited to the declaration are asserted to have been sold to "some retail outlets", but primarily direct to the general public at markets in Sydney from 1980 onwards.  These sales are said to have continued in the summer of each year from 1980 to 1985, when Ms Butler moved to Queensland. 

No indication of the numbers of items sold is given, and no invoices are exhibited.  Thus, while the declaration clearly shows that Ms Butler bought and paid for some STINGRAY labels, and for some cotton and patterns, there is no supporting evidence in her declaration to confirm the nature or extent of any sales, or offers for sale, under the trade mark - either in markets or to the unidentified retail outlets.  Some measure of the quantities involved may be taken, however, from the fact that no more than one thousand labels are said to have been ordered, with no mention of a subsequent purchase.

After the move to Queensland Ms Butler opened a retail shop in early 1986.  This shop sold various brands of clothing and jewellery, but it is not suggested that they included the STINGRAY brand.  There was clearly some interruption in the use of the STINGRAY label, as Ms Butler declares (italics added) that "at the rear of the shop ... I established (when, she does not say) a small factory and recommenced manufacturing a beachwear range of clothing." 

Ms Butler declares that, in 1988, she had some dealings with Michael Beatty, who had purchased 100 t-shirts and who requested Ms Lister to put her STINGRAY mark on them.  However, there is no confirmation of this transaction, and no evidence that the mark was necessarily used, in that transaction or subsequently, as a trade mark.

I turn to the declaration made, in October 1992, by Darlene Hendry.  Ms Hendry was employed at that time in "sales" at T.J.'s Originals, a firm said to be "associated with the clothing industry", as were the others with which Ms Hendry has been formerly involved over the past 9 years.  Ms Hendry declares that she knows of the trade mark STINGRAY in relation to clothing, specifically ladies fashion, swimwear, t-shirts.  She associates the trade mark with her employer, T.J.'s Originals, and has known of the mark "in Queensland (for) 7 years.  Since 1986".  The association of the label with her employer would be unusual but Ms Hendry goes on to add, in her own words, that "To my knowledge Ms Butler has been using the "Stingray" label for 6 - 7 years that I am aware of, as I sold this label for her."

The remaining declaration is by Debra Thompson, a dressmaker, who says, "I have been sewing the STINGRAY cloths on and off for the past 6 years".  The declarant, who says she knows of the trade mark in question, associates it with Kim Butler and with a firm called TJ's Limited Editions.  She was not asked if the clothing she was employed to make was offered for sale.

Applicant's Evidence in Answer
The applicants have relied on a declaration by Wendy Lister.  It is clear from her declaration that Ms Lister has used the STINGRAY trade mark, selling a range of casual clothing made from special fabrics that are designed to block out the majority of ultra-violet light.  It is not clear when the first sales of the applicant's goods were made but no use is even suggested before March 1991.  Nor is there any suggestion of use by Dion Brown at any time.

Having reviewed the applicant's evidence, I find nothing that will allow me to say when the applicant first commenced use of the mark.  It was clearly in use as a trade mark in the Spring/Summer catalogue of the Anti-Cancer Council of Victoria, and that catalogue was apparently in circulation before 11th December 1992, the date given as the cut-off for Christmas delivery.  A date given as "May 1990" has been asserted, without challenge, in relation to another advertisement which I accept as being use in trade.  I would accept the date as being accurate except that the applicant's own declaration makes it clear that Ms Lister did not even commence research into suitable methods of manufacture until June 1990.

Ms Lister has quoted sales for the period "from March 1991 to date", but that is not sufficient for me to make a positive finding that the mark was in use in March 1991.  While a declared assertion may suffice for the purposes of ex parte examination, once a competing claim emerges there is an evidentiary onus to be met.  Such a question must turn on hard evidence, not inference.  For reasons which I will come to below, there is an evidentiary onus on the applicant to demonstrate when the mark went into use and there is no evidence that either mark was in use at either date of application.

Sales since the indeterminate date when the mark went into use have been extensive, some $835,000 to date.  Ms Lister's goods have apparently come to attention through sales via the Cancer Councils in each State, and through sales and in-store promotion, since August 1991, to Myer Grace Bros.

Discussion
It is the opponent's single argument that it is the proprietor of the mark, and that it has demonstrated use of the mark now in suit at a date before the applicant's first use and before the date of the application.

On that subject McGarvie J said, in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd (10 IPR 402 at 413):

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.

Put simply, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the proprietor at common law. 

Mr Niblett did not dispute this.  He questioned the extent of use by others, and I agree that this has been minimal.  He also argued that the involvement of Mr Beatty muddied the water.  With this I do not agree.  It is not clear that the transaction involving Mr Beatty was one where the STINGRAY mark was used as, in simple terms, a badge of origin for clothing.  However, I do not see that this unresolved question is of any positive assistance to the applicant.

Mr Niblett submitted that, in such a case of minimal use by the opponent, the applicant is entitled to its registration under the honest concurrent user provisions of section 34.

Mr Niblett argued that s 34 can operate even where there has been prior use by another.  How else, he asked, may there be honest concurrent use?  Therefore, he argued, the applicant in the present instance is entitled to a registration not so much as a proprietor but as an honest concurrent user in the face of proprietorship by another.   That is consistent with the wording of S 34(1) itself, which provides that:

In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks which are substantially identical or deceptively similar, or, but for the honest concurrent use or other special circumstances would be deceptively similar, for the same goods or services or other goods or services, by more than one proprietor subject to such conditions and limitations (if any) as the Registrar imposes.

Thus the Act itself envisages that there may be more than one proprietor.  If Section 34 is to apply, however, the matter must be determined as at the date of application.  It is at this date that the rights of the parties are to be determined; see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

In some cases, it may be regarded as a special circumstance for the purpose of s 34(1) that there has been considerable use of the mark by the applicant since the date of application.  Examples of this are Dinning v New Balance Athletic Shoe Inc (1992) AIPC 90-931 and Olin Corp v Pacemaker Pool Supplies 4 IPR 526. However, in both of those cases the applicant had been able to show use prior to lodgement. In the present instance, use did not necessarily commence until after the application was lodged.

Otherwise, the factors to be assessed in deciding the sufficiency of a case under the honest concurrent user provisions of section 34(1) are conveniently set out at page 202 of Shanahan's Australian Law of Trade Marks and Passing Off.  One of those factors is "the extent of use in duration area and volume", and for reasons which follow it is a critical one in this instance. 

Mr Niblett referred me to an unreported case where, in deciding a similar matter, Principal Assistant Registrar Quinn said: "The critical question appears to be the comparatively short period of use by the applicant of its mark in respect of the goods claimed before the date of application." Mr Quinn relied on the BULER case 1975 RPC 275, and noted p 288 of that report. At that page, Graham J said:

To my mind, in considering whether concurrent user is sufficient to justify registration, attention must be paid not only to the length of the period over which it has taken place but also to the relative figures of the parties concerned; and if, as here, it is found that an applicant's user is many times greater than that of the opponent then even if by the standards of some previous reported cases the period over which such user has taken place is comparatively short, prima facie such applicant should be just as entitled as the opponent to be on the register.

On the facts before Mr Quinn, the applicant relied successfully on only 16 months of use before lodgement.  However, I do not see that any applicant can rely on the provisions of s 34(1), even with the assistance of the special circumstance found in extensive use since that time, when there is no clear evidence of use before lodgement. 

I note that, in Dinning v New Balance Athletic Shoe Inc, supra, the Hearing Officer gave weight to the extent of use and absence of confusion at times since lodgement.  He also noted the inconvenience to the applicant of refusing an application and making the applicant re-apply at some later date when use before lodgement of the (later) application would be more extensive.  However, in that case the applicant was relying on more than the making of an application to secure its claim to registration. 

In the present instance, the applicants have nothing but assertions of proprietorship to rely on at the date on which its rights are to be determined.  However, the claim to title has been displaced, at least prima facie, by evidence of the use of the mark in question by a third party.  In the lack of any submissions on the question, I do not see that the claim to proprietorship can be rehabilitated by circumstances which all came into being at some later date.  That is particularly so in the case of Mr Brown's application, 555421.  There is no evidence of any use at any stage by Mr Brown and his claim to proprietorship at the date of application appears to be undefended.

If they wish to rely on common law rights, built up since the dates of their respective applications, Ms Lister and or Mr Brown will simply have to reapply.

Decision:
I refuse to register applications 545593 and 555421.  Neither party made submissions on the subject of costs, so I make no award.

T. Williams

Hearing Officer

25 January 1994