Western Australian Rangers Association ( WARA), (Formerly Municipal Law Enforcement Association) v Alan Neil Snow and Becky Jane Snow

[2000] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Western Australian Rangers Association (WARA), (formerly Municipal Law Enforcement Association) to registration of trade mark application number 775729(42) - device trade mark - filed in the names of Alan Neil Snow and Becky Jane Snow

Background
This matter concerns trade mark application number 775729 filed on 15 October 1998 in the names of Alan Neil Snow and Becky Jane Snow (the applicants).  The applicants applied to register the device mark as represented below:

 

The services claimed in the application were amended before acceptance of the application and now read: "Providing ranger services to Local Government", in class 42.  The acceptance of the mark was advertised in the Australian Official Journal of Trade Marks of 18 February 1999.   On 2 June 1999, Municipal Law Enforcement Association filed a notice of opposition to registration of the applicants' mark.  Since the filing of the notice of opposition, the name of the association has been changed, as recently advised by its solicitors, to Western Australian Rangers Association (WARA), henceforth to be identified as "the opponent".   In the notice of opposition, the opponent lists four grounds of opposition, being the grounds based on sections 58, 60, 41 and 43 of the Act.  Following the completion of the evidence stages, despite being allowed one month in which to do so, neither party requested to be heard in the matter.  I have, therefore, been directed to decide the matter on the basis of any evidence that has been properly served and any written submissions on the file. 

The evidence
The evidence in support consists of affidavits by the following deponents:

Mervyn Scally, with two annexures, dated 27 August 1999
           Colin James Woollams, dated 30 August 1999

Raymond Frederick Patrick Sousa, with annexures 1-11, dated 29 August 1999
Brian Watkins, with annexures 1-4, dated 1 August 1999 (Mr Watkins' first affidavit).

The evidence in answer comprises affidavits by:

Alan Neil Snow, with annexures 1-31, dated 28 January 2000
           Anna Elizabeth Snow, dated 27 January 2000
           Anthony Francis Taylor, dated 23 January 2000
           Robert Charles Fitzpatrick, dated 25 January 2000

Michael Scott, dated 15 November 1999

Julie Anne Cottam, dated 23 November 1999.

The evidence in reply is one affidavit by:

Brian Leonard Watkins, dated 1 May 2000 (Mr Watkins' second affidavit).     

Both the opponent and the applicants filed written submissions together with the evidence in support and evidence in answer, respectively. Reference to these submissions, as far as they are relevant to each of the issues, will be made under the headings which follow. 

Submissions and discussion
S.58 - applicants are not the owners of the mark
The opponent states that in around 1981, it developed a trade mark for use by it and the local government rangers in Western Australia.  This trade mark, as will be noted by me below, is not identical with the mark of the present application.  Whilst conceding that one of the applicants had made an input into the design or the production of the mark, the opponent submits that the mark was developed through the co-operative effort of members of the opponent organization.  Two members in particular, Merv Scally and Colin Woollams, had been involved in the designing of the mark.  No application had been made to register the opponent's mark on the advice of Alan Snow, one of the present applicants, who had informed the opponent that after a period of time, common law rights in the trade mark would subsist with the opponent.  It submits that the mark has been consistently used by the opponent and the local government rangers throughout Western Australia since 1981.   With reference to case law based on the principle that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of that mark, the opponent claims to be the rightful owner of the mark.  The cases cited by the opponent are: 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 and Moorgate Tobacco Co Ltd v Philip Morris Ltd (No2) (1984) 59 ALJR 77 at 83.

These opponent's submissions are vigorously disputed by the applicants in their written submissions, arguing that one of the applicants, Alan Neil Snow, while a member of the opponent organization, was the principal designer of the mark which was adopted by the opponent.  This fact, they state, has been supported by Raymond Sousa in the opponent's evidence and also in the affidavit by Anna Elizabeth Snow in the evidence in answer.  There had been some input by other members of the organization in designing the mark, but only to the extent of changing the design a little to resemble that of the Western Australian Police badge.  The original design, it is further submitted, had been intended for a uniform badge, so as to recognise the rangers.  Although the design was later adopted by the opponent for its own use, that had not been the purpose for devising the mark.    

The relevant section 58 reads: 

58.   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.

The term 'owner' under the current Act should be read in the same sense as "the proprietor" in terms of the Trade Marks Act 1955.

To upset the applicant's claim to ownership of a mark, the opponent needs to show that it had authorship and use in Australia, in the course of trade, of a substantially identical mark with the mark the subject of the application for registration - Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) AIPC¶91-049.  Additionally, the goods or services involved must be the 'same kind of thing' - Re Hicks' Trade  Mark (1897) 22 VLR 636 at 640 - and use of the mark or application to register the mark must pre-date the applicant's claim to ownership. An applicant can claim its ownership rights based on the date of its application, or the first use of the mark, whichever is the earlier date.

The format of the trade mark adopted and used by the opponent (as per Mr Sousa's and Mr Watkins' first affidavits) is shown here:               

Concerning substantial identity of trade marks, Gummow J, having referred to proprietorship as considered in The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, said, in Carnival Cruise v Sitmar, supra, at 38,114:

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 s.62 (which is concerned with infringement) was discussed by Windeyer J. in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 C.L.R. 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.

The criterion as to "substantially identical" marks, as set out by Windeyer J in  Shell v Esso, reads:

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

In comparing the marks in question in the manner directed by his Honour, on a cursory glance, I believe there is no doubt that the marks are similar in appearance.  Certainly the basic  device components in the marks are almost  identical.  It is in the letters WA under the crown  and the word RANGER under the crest, each inserted in a border device, and the word obliterating the lowest point of the star, where the major differences between the marks are discernible. The inclusion of the obvious abbreviation 'WA' for the State of Western Australia and the word RANGER not only alters the overall visual impact of the opponent's mark but it also identifies the mark with a person in a certain vocation, thus adding a particular significance to the mark which is absent from the applicant's mark.  Having regard to these elements appearing in the opponent's mark, the two marks cannot be regarded as substantially identical.

The services specified in the subject application are "providing ranger services to Local Government". On perusal of the opponent's evidence, these services do not appear to be the same, or even similar, to those of the opponent. The opponent's written submissions characterise its services as being conducted in the same field as the applicant's, "namely, offering services to Rangers within the State of Western Australia". However, the nature of those services is not clear. According to Mr Sousa's affidavit, inter alia, the mark identifies the opponent's organization, which has permitted a number of local government bodies to use the mark, to identify the local government rangers authorised to exercise various powers pursuant to the Act of Parliament and local laws. He says that these powers are used under the close supervision of senior rangers and administrators within local governments. Mr Watkins, in his first affidavit, states that the opponent has permitted rangers throughout Western Australia to use the mark to identify rangers and their vehicles in the exercise of their lawful statutory duties. Both the above deponents also attest to use of the mark in relation to items, such as correspondence, letters, certificates, training material, newsletters and magazines, stationery, awards and plagues, t-shirts and other material as used by the opponent in the course of its business. I have also perused the objectives of the opponent's organization, included in its Constitution, a copy of which is annexed to Mr Sousa's affidavit. From the objectives, which primarily focus on the successful operation of the organization, the interests and training of its members and the education of the public in understanding the relevant statutes and by-laws, I am not left with an inference that the scope of the services offered by the opponent involves services of the kind provided by the applicant. The evidence presented by the opponent appears to indicate that the organization is functioning for the benefit of, and in the interests of, its members, its mark being used in relation to the activities of the organization. With the permission of the opponent, its use also extends to the local government rangers in relation to their uniforms and vehicles, for the purpose of the rangers being easily identified. I have found no evidence, however, that the opponent is responsible for actually providing any ranger services. From the foregoing, I can only conclude that, in challenging the applicants' rights as owners of the mark, the opponent has failed to satisfy, by evidence, the tests outlined earlier which would establish its alleged ownership. In this regard, I will refer to the words of Fullagar J in Aston v. Harlee Manufacturing Co.(1960) 103 CLR 391 at 399:

I do not think that an opponent of an application for registration of a trade mark could succeed by saying merely "I thought of it first", or even "I thought of it first, and communicated it to the applicant."  It is otherwise if the opponent has used the mark in relation to goods [or services].  In Re Hick's Trade Mark, Holroyd J., speaking for a Full Court, said:  "In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word 'proprietor' must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration of the word 'Empress' in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark …".

Having determined that neither the opponent's mark is substantially identical with the opposed mark, nor any evidence has been made available to the effect that the services in respect of which the mark has been used by the opponent and the applicant could be described as the 'same kind of thing', I must find that the opponent has not displaced the applicants' claim to ownership of the mark.  Accordingly, the ground of opposition in terms of s.58 is dismissed.                     

S.60 - trade mark similar to mark that has acquired a reputation in Australia
With reference to the Shell v Esso case, supra, in its written submissions, the opponent expresses the view that its mark, apart from some differences in colour, is substantially identical with, or deceptively similar to, the applicant's mark.  It asserts that the mark has developed a reputation synonymous with the opponent, as it has been used on items of correspondence, training material, newsletters, clothing badges, certificates and other items produced by the opponent.  The mark has been used, it states, by the majority of local government rangers in Western Australia with the approval of the opponent.  Use of the subject mark would, the opponent submits, cause local government authorities, government agencies and members of the public to believe that the applicants' business was associated with the opponent's organization - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

S.60 provides that -

60.   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.

For the opponent to succeed on this ground, first, the applicants' trade mark must be either substantially identical with, or deceptively similar to, the opponent's trade mark that has established a reputation in Australia before the date on which the applicants applied to register their trade mark, here being 15 October 1998.  Second, it must be shown that, in view of the reputation of the opponent's mark, the presence of the applicants' mark would be likely to be responsible for deception or confusion between the marks under consideration.  There is no requirement that the earlier mark is registered or pending registration, nor that the goods or services be similar. 

In dealing with the s.58 issue, I found the two marks under consideration not to be substantially identical.  In order to assist me in deciding whether the marks are deceptively similar, I turn to the criteria outlined in this regard in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ pronounced at 658:

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.

The dominant feature in both the applicants' and the opponent's marks is a similar  composite device.  As noted earlier, the only elements that differentiate the marks are the letters WA and the word RANGER, both in the opponent's mark.   The sample of the opponent's mark displayed above shows the crown, the disc and the star elements in the device integer to be represented in a yellow colour.  However, for the purpose of distinguishing the marks, this factor is not relevant, as no limitation as to colour applied to the applicants' mark at the time of its acceptance.  If the mark proceeds to registration, in terms of s.70 of the Act, the mark will be deemed to be registered for all colours.  Disregarding any colour differences between the marks then, it is the composite device constituting the applicants' mark and featuring as a visually similar striking element in the opponent's mark that would, in my opinion, leave an impression in the minds of the persons concerned that the origins of the marks might be connected.  The applicants' mark, for example, could be taken for the representation of the opponent's mark without the WA and RANGER elements.   From the above, I believe that the respective marks are deceptively similar. 

Having decided that the marks under discussion are deceptively similar, I turn to the opponent's evidence to assess the reputation in its mark and whether, because of that reputation, deception or confusion could occur if the applicants' mark was used in relation to the services claimed.   

The evidence concerning the extent to which the opponent's mark has been used is  rather vague and sketchy.   According to Mr Sousa's affidavit, the duration of its use  has been 17 years.  "Approximately 50% of Local Governments" are said to be using the mark, enabling the general public to identify the local government rangers (in Western Australia), but no details have been given as to the total number of these governments, nor any supporting evidence that the members in the respective community recognise the trade mark.  Similarly, Mr Watkins, in his first affidavit, states that about 70% of local government rangers in Western Australia use the mark for identification purposes.  However, no further relevant details follow that would demonstrate awareness of the opponent's mark by the public in that state.  Reference is made to the sale of items under the mark without providing any indication as to what the sales value of those items might be.  Mr Sousa and Mr Watkins stress reputation of the mark, which, they maintain, is synonymous with the opponent's organization through the mark having been used continuously on a number of items, which are listed and some shown in the exhibits to their respective affidavits. These statements are unsubstantiated, there being no information as to the value of the goods, if in fact any of them were offered for sale on the market.  I consider the evidence on use and recognition of the opponent's mark to be insufficient in establishing a degree of reputation in respect of any goods or services before the relevant date.  Such reputation is essential in order to decide whether deception or confusion might result on account of the applicants' mark being used in the market place for the designated services.                 

In view of the foregoing, I must dismiss the opposition as it relates to the s.60 ground.

S.41 - trade mark is not capable of distinguishing
The opponent has submitted that the applicants and the opponent operate in the same field by providing services to rangers in the state of Western Australia.  It asserts that the mark sought to be registered does not distinguish in any way the services of the applicants from the goods and services of the opponent.

In relation to this matter, I refer to subsections 41(2) and 41(3) of the Act:

41.(2)   An application of the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3)   In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. 

The terms of s.41 require one to look at the mark applied for, so as to determine its capability to distinguish the goods or services as being those of a particular trader.  The provisions do not apply to considerations where another trader makes a claim that the mark distinguishes its goods or services.  Issues of that nature are considered under other provisions of the Act, such as s.60.                 

The applicants' trade mark consists of a combination of various device elements, i.e. a shield with two swans in a disc, a five-pointed star, a wreath and a crown (castellated).   A device mark would not be considered capable of distinguishing one trader's goods or services from those of another trader if it was common to the trade, unless that device was depicted in a an unusual or fanciful manner.  Devices such as crests, wreaths, stars and crowns are frequently adopted for use in trade marks for various goods or services.  However, their presence in the marks does not necessarily render the marks incapable of distinguishing, because it is the mark as a whole that must satisfy the requirement for it to be registrable in terms of s.41.  I view the manner in which the number of different components comprising the applicants' mark is depicted and  arranged to create its distinctive character.  In the absence of any arguments supported by evidence to convince me otherwise, I agree with the examiner in considering the mark to be one that qualifies for registration as a mark capable of distinguishing the applicants' services, within the meaning of s.41(3).  Accordingly, the ground of opposition based on s.41 fails. 

S.43 - mark likely to deceive or cause confusion
Under this ground, the opponent has submitted that the opponent's mark is so similar to the mark the subject of this application that members of the public, who have come to recognise the rangers throughout the state of Western Australia by the trade mark, would be "at best confused and at worst deceived".   The use of the applicants' mark  could give the impression that the business of the applicants carries with it the force and effect of the opponent's organization, or of a ranger exercising statutory authority under the legislation the local government rangers enforce.   The opponent submits further that it would not be in the public interest to have a similar mark to the opponent's used by a private business. 

Section 43 provides that -

43.   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.

In view of the opponent's submissions in relation to this ground, it appears that the opponent is under a misapprehension that this section involves a potential conflict between its mark and the mark of the present application.  The provisions of the section do not apply to deception or confusion that might result from similar marks.  The deception or confusion must arise from the applicants' trade mark itself.   In this regard, the principle of 'connotation' in s.43 was discussed by the hearing officer at some length in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632, where he said at 643-644:

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary:

1.  the act or fact of connoting.  2.  that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary:

The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

In the above statements, the hearing officer reinforces the rationale behind s.43, i.e. that it is the nature of the mark itself that must be considered, so as to determine whether the provisions stipulated in that section apply to the mark sought to be registered.  Having assessed the applicants' mark in this light, I do not think the mark in total or any sign appearing within the mark, when used in the context of the applicants' services, may be regarded as having a connotation which would prevent registration of the mark as one likely to lead to deception or confusion.  I find no support for any contrary contention either in the opponent's submissions, or in its filed  evidence.  For these reasons, I consider the s.43 ground not to be valid in the present case.

Conclusion
I have found that none of the four grounds listed in the opposition and argued by the opponent in the written submissions have been established.  I therefore dismiss the opposition, and direct that, on payment of the registration fee, this trade mark may proceed to registration.    

Vija Zars
Hearing Officer

29 September 2000