FEDERAL COURT OF AUSTRALIA
Winton Shire Council v Lomas [2002] FCA 288
TRADE MARKS – appeal pursuant to s 56 Trade Marks Act 1995 (Cth) from the Delegate of the Registrar of Trade Marks whereby the Delegate dismissed the applicants’ opposition to registration of the respondent’s trade mark – whether the respondent is the owner of the mark the subject of the opposed application – whether there was a use prior to the Priority Date of the mark “Waltzing Matilda” in respect of the goods and services identified in the opposed application – whether use of the opposed mark is likely to deceive or cause confusion – whether opposed application is substantially identical or similar to two other trade marks the Priority Date for which is earlier than the Priority Date for the mark in question – due weight to be given to the opinion of the Delegate as that of a skilled and experienced person – the relationship between goods and closely related services is defined by the function of the services with respect to the goods.
Trade Marks Act 1995 (Cth), ss 56, 58, 43, 60, 44, 14(1)
Trade Marks Act 1955 (Cth), s 40Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR 592, applied
Blount v Registrar of Trade Marks (1998) 40 IPR 498, applied
Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, applied
The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, cited
Aston v Harlee Manufacturing Company (1960) 103 CLR 391, cited
Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] (1983-1984) 156 CLR 414, distinguished
Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, applied
Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517, cited
In Re Hicks’s Trademark (1897) 22 VLR 636, applied
Eclipse Sleep Products Inc v The Registrar of Trade Marks (1957) 99 CLR 300, applied
Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, appliedElkington, B., Hall, M. and D. Kell (2000) Trade Mark Law In Australia, Sydney: Butterworths
WINTON SHIRE COUNCIL and THE WALTZING MATILDA CENTRE LIMITED v BRENDA MAURICEEN LOMAS
No. Q 92 of 2000
SPENDER J
BRISBANE
20 MARCH 2002
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
Q 92 OF 2000
BETWEEN:
WINTON SHIRE COUNCIL
FIRST APPLICANTTHE WALTZING MATILDA CENTRE LIMITED
SECOND APPLICANTAND:
BRENDA MAURICEEN LOMAS
RESPONDENT
JUDGE:
SPENDER J
DATE:
20 MARCH 2002
PLACE:
BRISBANE
REASONS FOR JUDGMENT
This is an appeal pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Act) from an unsuccessful opposition to the registration of the trade mark “Waltzing Matilda” in respect of various goods and services, as follows:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils…
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- Case
- [2002] FCA 288
- Decision Date
CaseChat Overview and Summary
The central legal issue before the Court was the extent of use required to establish proprietorship in Australia prior to the priority date. The Court had to consider whether the respondent's actions, which included offering advertising space for a new magazine, constituted a sufficient use of the trade mark to deny the applicant the right to claim authorship and registration. This involved examining the balance between preparatory steps and actual use or an existing intention to offer or supply goods in trade.
The Court found that the respondent's preparatory steps, including offering advertising space for a new magazine, coupled with an existing intention to offer or supply the magazine in trade, constituted a sufficient use of the trade mark in Australia. This finding was based on the principle that either preparatory steps coupled with an actual trade or offer to trade, or preparatory steps coupled with an existing intention to offer or supply goods in trade, can establish proprietorship. The Court held that the respondent's actions were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between the mark and the new magazine.
The Court's decision resulted in the respondent being recognised as the proprietor of the trade mark in Australia prior to the priority date, thereby disqualifying the applicant from claiming authorship and registration. The Court's reasoning was grounded in the established principle that any use of the trade mark in Australia prior to the priority date can deny the applicant the right to claim authorship and consequent registration.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
Established by: SPENDER J
As to the extent of use prior to the Priority Date, a very small amount of use will suffice. In Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, an overseas company had sold a single prototype boat to a proposed Australian licensed manufacturer, and used its “Thunderbird” trade mark in correspondence relating to that sale. Jacobs J held that that sale established proprietorship in Australia and stated (at 600): “The first question which arises is as follows: Since American Marine Distributors Pty. Ltd. did not use the trade mark in Australia prior to 1st December 1965, the date of the application, was it the proprietor of the mark at that date so as to entitle it to make application to the Registrar under s. 40 for the registration of that mark? It was only the claim that it was the ‘author’ of the trade mark in Australia which could sustain the right to registration: Blackadder v. Good Roads Machinery Co. Incorporated (1926) 38 CLR 332; Shell Co. of Australia Ltd. V. Rohm and Haas Co. (1949) 78 CLR 601, at pp. 625, 627-629 esp. per Dixon J. It was not the ‘author’ of the trade mark if that trade mark had been used by a person in Australia before the date of the application ‘in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods’ and that person. See the definition of ‘trade mark’ in s. 6. Such a use has been described as a use on the Australian market. It has been held that any use at all on the Australian market will suffice to deny to the applicant the right to claim authorship and consequent registration: Seven Up Co. v. O.T. Ltd. per Williams J. (1947) 75 CLR 203, at p. 211 in a passage adopted by Latham C.J. on appeal (1947) 75 CLR, at p. 216.” (Emphasis added) The passage quoted from Moorgate Tobacco clearly envisages that either of an alternative will suffice: preparatory steps coupled with an actual trade or offer to trade; or preparatory steps coupled with an existing intention to offer or supply goods in trade. The second of these was accepted by Gummow J in Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517 as constituting a prior use. In that case the opponent had taken preparatory steps towards launching a new magazine, including offering advertising space, but had made no sales or offers to sell magazines. His Honour said at 520:“These steps amount to sufficient activity by the opponent to produce the result that the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade.” [emphasis added]