Wizard Automotive Systems Pty Ltd v Smart Repair Australia Pty Ltd
[2013] ATMO 33
•24 May 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Wizard Automotive Systems Pty Ltd to registration of trade mark application 1215534 (37) - Dent Wizard - filed in the name of Smart Repair Australia Pty Ltd
Delegate: Michael Kirov Representation: Opponent: Barry Eager of B. Eager, Patent & Trade Mark Attorney
Applicant: Norman Donato of Bartier PerryDecision: 2013 ATMO 33
Section 52 opposition: ss 44(2) and (4) considered – trade mark substantially identical to earlier pending trade mark covering similar services – insufficient evidence of prior continuous use to rely on s 44(4) – application refused. Costs awarded against Applicant.Background
1. This is an opposition brought by Wizard Automotive Systems Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark Dent Wizard subject of the application detailed below in the name of Smart Repair Australia Pty Ltd (“the Applicant”):
Application Number: 1215534 (“the Application”)
Priority Date: 14 December 2007
Services:Class 37: The maintenance and repair of motor vehicles being paint and dent repair; advisory services relating to the foregoing
Trade Mark: Dent Wizard
Endorsement: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.
2. I refer hereafter to the opposed trade mark as “the Trade Mark” and to the services covered by the Application as “the Services”.
3. Acceptance of the Application for registration was advertised on 20 August 2009 and the Opponent filed its Notice of Opposition (“the Notice”) on 22 October 2009.
4. The parties lodged Evidence in Support, Evidence in Answer, Evidence in Reply and Further Evidence (by the Applicant only) as set out below:
Evidence in Support
▪Statutory Declaration by Michael John Lund made 21 July 2010, with Exhibits A to W and Exhibits Y and Z (“Lund 1”)
▪Statutory Declaration by Anthony Henderson made 21 July 2010
▪Statutory Declaration by Marilyn Thomas made 21 July 2010 with Exhibits A to L
▪Statutory Declaration by Neale Stuart White made 19 July 2010 with Exhibits A to D
▪Statutory Declaration by Wendy Louise Ashfield made 19 July 2010 with Exhibits A to C
▪Statutory Declaration by Michael John Lund made 20 August 2010 with Exhibits A to D (“Lund 2”)
▪Statutory Declaration by Berwick David Lynton made 23 August 2010 with Exhibit A
▪Statutory Declaration by Rodney Shayne Daniel made 17 August 2010 with Exhibits A to C
▪Statutory Declaration by Christopher Joseph Head made 23 August 2010 with Exhibit A
Evidence in Answer
▪Statutory Declaration by Norman Donato (the Applicant’s attorney) made 10 January 2011 with Exhibit ND1 (being a copy of a Statutory Declaration by Michael Cross made 19 June 2009 with Annexures A to G)
▪Statutory Declaration by Norman Donato made 11 July 2011 with Exhibit ND2 (being a copy of a letter dated 13 July 2009 to IP Australia from Makinson & d’Apice Lawyers (Mr Donato’s former firm), which letter attaches a further copy of the Statutory Declaration by Michael Cross made 19 June 2009 with Annexures A to G)
[As Mr Donato himself confirmed at the hearing, other than the date on which they were made and the inclusion of the 13 July 2009 letter from Makinson & d’Apice Lawyers, his above-mentioned two declarations are identical, the later declaration having apparently been re-executed (and then served and filed) inadvertently. The earlier declaration is thus redundant and I do not refer to it again in this decision. I will accordingly refer to the later declaration hereafter as “Donato 1”.
The original Cross declaration (and its Annexures A-G), a copy of which is exhibited with Donato 1, was filed with IP Australia under cover of Makinson & d’Apice Lawyers’ original letter of 13 July 2009 in support of acceptance of the Application under s 44(4) of the Act. I refer to it hereafter as “Cross 1”.]
▪Statutory Declaration by Russell Chapman made 7 November 2011 with Exhibit RC1 (Exhibit RC1 is unmarked as such and is unsigned, although as I indicated at the hearing I confirm I will nevertheless take it into account.)
▪Statutory Declaration by Craig Barnes made 7 November 2011
▪Statutory Declaration by Michael Cross made 8 November 2011, with Exhibits MC-1 to MC-13 (“Cross 2”)
▪Statutory Declaration by Michael Cossetto made 9 November 2011, with Exhibit MEC1
Evidence in Reply
▪Statutory Declaration by Barry Blennerhasset Eager made 9 May 2012 with Exhibit A (“Eager 1”)
▪Statutory Declaration by Barry Blennerhasset Eager made 9 May 2012 with Exhibits A to C (“Eager 2”)
[Exhibit C is a copy of a faxed copy of a Statutory Declaration by Christopher John O’Brien made on 24 July 2010 with Exhibits A and B.]
▪Statutory Declaration by Barry Blennerhasset Eager made 12 June 2012 with Exhibits A and B (“Eager 3”)
[Exhibit A to Eager 3 includes copies of the following Statutory Declarations, the originals of which were filed with IP Australia on or about 29 March 2011 in connection with the Opponent’s (subsequently settled) applications for removal for non-use of trade mark registrations 793290 DENT WIZARD & Device and 793291 DENT WIZARD in the name of an American company called Dent Wizard International Corporation (hereafter “Dent Wizard USA”):
▪Statutory Declaration by Peter John Hancock made 23 February 2011
▪Statutory Declaration by Stephen William Kelly made 25 February 2011
▪Statutory Declaration by Michael John Lund made 25 February 2011 (“Lund 3”)
▪Statutory Declaration by Gregory Roland Leahy made 23 February 2011
▪Statutory Declaration by Anthony Brian Henderson made 23 February 2011.]
(Applicant’s) Further Evidence
▪A copy of a Statutory Declaration by Anthony Brooke Watson made 9 June 2010 with Exhibits ABW-1 to ABW-8
[Mr Watson is a lawyer who was then acting for Dent Wizard USA and his original declaration was filed with IP Australia in or about June 2010 in connection with a subsequently withdrawn opposition by Dent Wizard USA to the Application.]
▪Statutory Declaration by Glen Cahill made 6 February 2013
[The Cahill declaration refers to an “Exhibit GC1” which was not however served or filed, as to which see paragraph 6 below.]
5. I heard the matter as a delegate of the Registrar of Trade Marks on 15 February 2013 in Sydney. Barry Eager, Patent & Trade Mark Attorney, appeared for the Opponent. Norman Donato of Bartier Perry Lawyers appeared for the Applicant. The attorneys’ oral submissions were supplemented by written submissions exchanged via email prior to the hearing.
6. I mention that a copy of the Cahill declaration (albeit minus its Exhibit) was not served on the Opponent until 7 February 2013. It was only on the eve of the hearing itself that Mr Donato’s firm informed Mr Eager (and me) by email that:
…we have been chasing Mr Glen Cahill for the missing Exhibit. Despite our best efforts we have so far been unable to obtain it. We will continue to pursue the missing [E]xhibit. If we are unable to produce the Exhibit tomorrow at the hearing then we ask that only paragraph 9 of Mr Cahill’s declaration be disregarded and that the remainder of Mr Cahill’s declaration still be considered.
7. The Exhibit was not produced at the hearing and Mr Donato confirmed that the Applicant did wish to rely on the incomplete declaration with its paragraph 9 excised. Mr Eager indicated that the Opponent did not object to admission of the Applicant’s further evidence, but he did seek time for the Opponent to consider it and, if thought necessary, to prepare, serve and file evidence in response. I confirmed my intention to admit the Applicant’s further evidence and that in the circumstances I would allow the Opponent one month from the date of the hearing to serve any evidence in response. I nevertheless proposed we proceed forthwith with the substantive hearing and, with the agreement of both Mr Donato and Mr Eager, we did so. In the event, the Opponent did not deem it necessary to serve any further evidence.
8. I will refer to the parties’ evidence in detail, as necessary, in the “Discussion” section which follows. In a nutshell, however, each of them appears to have adopted the name and/or trade mark “Dent Wizard” independently, with the evidence showing that Michael Cross, a director and the “controlling mind”, as it were, of the Applicant, first registered these words as a business name in New South Wales in 1993. Mr Cross says that the Applicant, which was incorporated in 2005, is the successor in title to the rights that accrued to him between 1993 and 2005 through his business’ use of the name in relation to “car repair services” (which includes, as I understand it, what the parties refer to as either “paintless dent removal” or “paintless dent repair” services, and to which I refer hereafter as “PDR” services).
9. The Opponent was incorporated on 11 March 2003 as Dent Wizard Group Australia Pty Ltd before changing to its current name on 7 April 2003. Its managing director and “controlling mind” is Michael Lund. While it is not necessary for me to decide the issue one way or the other, Mr Lund says that the Opponent is the successor in title to Dent Wizard USA, which the evidence indicates commenced providing PDR services under the Trade Mark in the United States in around 1983. Dent Wizard USA no longer has any presence in Australia but was the owner of the (now removed) Class 37 registrations 793291 DENT WIZARD and 793290 DENT WIZARD & Device mentioned in paragraph 4, which date from 1999 and which were cited against the Application when it was first examined by IP Australia. According to Mr Lund, Dent Wizard USA first provided PDR services in Australia through a company named Dents & Dings of Australia Pty Ltd (“D&D”), which was incorporated on 6 February 1995. The records of the Australian Securities and Investments Commission indicate D&D’s name changed to Dent Wizard International Pty Ltd on 14 July 1999 and then to Dent Wizard Australia Pty Ltd on 20 October 1999, before the company was deregistered on 28 April 2005 following its winding up.
10. As between the parties themselves, the Opponent first applied to register the trade mark Dent Wizard Australia some three months before the Application was filed. Details of this application (“the Opponent’s Application”) are set out below: [1]
Application Number: 1203300
Priority Date: 9 October 2007
Services:Class 37: The repair of motor vehicles and boats
[1] The application was opposed by the Applicant following its acceptance for registration but, as discussed in paragraphs 21 to 23, it seems the Applicant did not file any evidence in support of its opposition (or request a hearing) and the matter has been allocated for a decision on the written record.
Trade Mark: Dent Wizard Australia
11. The Opponent’s Application was also cited along with Dent Wizard USA’s two (then current) registrations when the Application was initially examined, but the Applicant relied on s 44(4) of the Act to overcome all three citations. In the present opposition the Opponent now challenges whether the Applicant’s successful reliance on s 44(4) to overcome, in particular, the Opponent’s Application[2] was justified.
[2] It is accordingly not necessary to discuss Dent Wizard USA’s two removed registrations further in this decision, although given they were in force when the Application was accepted I note that they arguably remain relevant as far as s 44 is concerned–see Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No 1) [2012] FCA 1184 (1 October 2012).
12. In addition to Dent Wizard USA’s registrations and the Opponent’s Application the Notice also identifies the Opponent’s registration 1171782 as underpinning its s 44(2) ground. Although covering the same services and, on the face of it, for a similar mark to the Trade Mark, registration 1171782 was for some reason not cited against the Application during examination. For the sake of completeness particulars of the registration are set out below, although I have not found it necessary to discuss it further in this decision:
Application Number: 1171782
Priority Date: 17 April 2007
Services:Class 37: The repair of motor vehicles and boats
Trade Mark:
The Law
13. As will be apparent, ss 44(2) and (4) are of principal relevance to the opposition and these subsections are accordingly reproduced below:
Identical etc. trade marks
44(1) …
44(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.44(3) …
44(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Grounds of Opposition and Onus
14. The Notice nominated grounds corresponding to ss 41, 44, 58, 58A, 59, 60 and 62A of the Act, although the Opponent confirmed via Mr Eager’s emailed submissions of 11 February 2013 that it would only be pressing the grounds based on s 44 and s 60. The basis of the Opponent’s s 44 ground was outlined above. In addition, the Opponent submits that the Applicant’s use of the Trade Mark would in any event be likely to deceive or cause confusion in terms of s 60 of the Act in light of the mark’s reputation in connection with provision of PDR services from around 1999 onwards by the Opponent and/or by Dent Wizard USA. I have not considered the Opponent’s s 60 ground in this decision, but note that if the Applicant were to appeal it would be open to the Opponent to plead any ground(s) before the Court that it thought fit.
15. To succeed in its opposition the Opponent would, generally speaking, bear the onus of establishing at least one relevant ground. As indicated, however, I have only found it necessary in this decision to consider the Opponent’s s 44 ground, and only then insofar as it is based on the Opponent’s application 1203300. In this regard I consider it is apparent on the face of it both that the Application covers “similar services”[3] to those covered by the Opponent’s Application and that the Trade Mark is substantially identical to the Opponent’s Dent Wizard Australia trade mark[4]. I am accordingly satisfied that, prima facie, s 44(2) applies to the Application and thus that the Opponent’s onus under s 44 has effectively been discharged.
[3] As defined by s 14(2) of the Act.
[4] In line with the reasoning of, for example, Hearing Officer Worth in Doteasy Technology Inc v Dot Easy Australia Pty Ltd [2011] ATMO 88 (6 September 2011) at [28] to [30] comparing the trade marks DOTEASY and DotEasyAustralia (stylised).
16. While s 44(2) dictates that an application “must be rejected” once paragraphs 44(2)(a) and (b) are satisfied, the subsection is expressly stated to be “subject to subsections (3) and (4).” Section 44(4), on which the Applicant relies, would accordingly provide an exception to rejection if the Registrar “is satisfied” that the Applicant continuously used the Trade Mark for the Services from a time prior to the 9 October 2007 priority date of the Opponent’s Application until (at least) the 14 December 2007 priority date of the Application (“the Relevant Period”). In this regard the onus is on the Applicant to so satisfy the Registrar.
Standard of Proof
17. I confirm I am proceeding on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[5]
Discussion
[5] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].
Applicant’s submissions
18. Mr Donato’s written submissions in relation to the s 44 ground based on the Opponent’s Application were brief and are set out in full below:
The [Opponent’s Application] is the subject of opposition proceedings brought by the Applicant. One of the grounds of that opposition is that the Applicant has earlier use of the same or similar trade mark –under section 58A.
If the Hearing Officer and IP Australia take the view that the [Trade Mark] is identical (sic) or deceptively similar to [the Opponent’s Application], the evidence provided in these proceedings clearly shows that the Applicant has earlier use of the [Trade Mark] and accordingly [the Opponent’s Application] should be refused.
We submit that:
(a)the Opponent has not made out the ground of opposition under section 44;
(b)the examiner correctly accepted the subject Trade Mark under section 44.
19. I note that section 58A(1) of the Act states:
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
20. The Opponent’s Application was not accepted under subsection 44(4) or under any similar provision of the regulations and thus the application cannot be opposed pursuant to s 58A. Possibly Mr Donato intended to refer to s 58 of the Act rather than s 58A. It is, in addition, unclear to me which opposition Mr Donato is referring to when he uses the words “the evidence provided in these proceedings” in the above-quoted submission. Be that as it may, since none of the evidence from the opposition to the Opponent’s Application is before me it is obviously not material I could take into account in deciding the present opposition. In the normal course of events, moreover, it would not in any case be appropriate for me to speculate here on the possible outcome of the Applicant’s opposition to the Opponent’s Application based only on the evidence served and filed in the present opposition.
21. That said, at the time of writing, the publicly available details of the Opponent’s Application on IP Australia’s website give the “Status” of the opposition as “Full Evidence not Lodged (reminder sent)”. I did accordingly check IP Australia’s (electronic) file in order to ascertain what stage the Applicant’s opposition had reached. This indicates that the Applicant did not serve or file any evidence at all in the matter. Indeed, the last correspondence on the file from either party’s representative is a letter dated 15 October 2012 from Mr Eager to IP Australia, which is reproduced below:
22. I am accordingly somewhat mystified by Mr Donato’s above-quoted submission. I mention that IP Australia’s (electronic) file further indicates that following receipt of Mr Eager’s above letter the Registrar wrote on 22 October 2012 to Mr Donato’s firm and to Mr Eager stating, inter alia, that:
A notice stating that the above applicant [that is, the Opponent in the present matter] does not intend to rely on evidence in answer was filed on 15 October 2012, (regulation 5.11).
The Registrar has been advised that a copy of the notice was served on the opponent [that is, the Applicant in the present matter] on 15 October 2012.
It is now open to either party to the opposition to request a hearing to decide the matter. If no response is received within one month from the date of this notice, the Registrar will presume that neither party to the opposition is to be heard and will proceed to decide the matter by reference to relevant information about the matter at the Trade Marks Office.
The deadline for filing written submissions is one month from the date of this notice.
23. I understand that neither party’s representative responded to the Registrar’s letter and that the Applicant’s opposition has recently been allocated for what is known as a “decision on the written record”. As mentioned, in the normal course of events I would be unable to speculate on what that decision might eventually be. However, the fact that neither party has filed any evidence does indicate on the face of it that an opposition apparently based on first use, (that is, merely claiming “ownership” under s 58 in the Notice of Opposition itself), must necessarily fail.[6] That being the case, the Opponent’s Application is on the face of it more likely than not eventually to proceed to registration. I do not believe that I have any option but to proceed on that understanding in the present opposition.
[6] See, for example, Quiksilver International Pty Ltd v s.Oliver Bernd GmbH & Co. KG [2008] ATMO 14, particularly at [13] and the decisions there cited.
24. The issue for determination, then, is whether I am satisfied on the evidence now before me that the Applicant continuously used the Trade Mark for the Services prior to, and including, the Relevant Period.
Applicant’s evidence
25. The Relevant Period, being just over three months, is relatively short and I have found it necessary to look closely at the Applicant’s claimed use in the 14 years or so leading up to the 9 October 2007 priority date of the Opponent’s Application.
26. As mentioned, Cross 1 was originally filed with IP Australia as the basis for acceptance of the Application under s 44(4) of the Act. Although the Applicant was not incorporated until 10 March 2005, in Cross 1 it was said a predecessor in title, Michael Cross, first used the Trade Mark for “car repair services” in or about 1992. Mr Cross is a director and shareholder of the Applicant and, since my decision with respect to the Opponent’s s 44(4) ground turns mainly on his testimony, it is necessary to look at this in some detail. In Cross 1 he says that:
The Trade Mark was first used by me in connection with my car repair business of the same name (Business) in about 1992 and has been used in connection with car repair services continuously since then. I used the Trade Mark as a brand and trade mark in the following ways:
(a)from about 1992, the Trade Mark was used as the name of the Business and was used to distinguish the provision of my car repair services from those of other car repair services provided by other repairers;
(b)from about 1992, the Trade Mark was used and displayed on the letterhead of the Business and was used in the course of conducting the day to day operations of the Business;
(c)from about 1992, the Business’ invoices and quotations displayed the Trade Mark prominently;
(d)from about 1992, [the] Trade Mark was prominently displayed on the Business’ business cards;
(e)from about 1993 in addition to the uses referred to in paragraphs (a) to (d), I actively promoted and distinguished my services as a car repairer under the Trade Mark by:
(i)placing advertisements in the yellow pages using the Trade Mark;
(ii)distributing flyers promoting my services as a car repairer prominently displaying the Trade Mark on the top of the flyer; and
(iii)making phone calls and calling on, under “Dent Wizard”, to (sic) car dealerships, smash repair companies car insurance companies and car rental companies offering my services as a car repairer;
(f)from about 2001, the Trade Mark was displayed prominently as a signage (sic) outside the place the Business has been conducted from;
(g)from about 1993, the Trade Mark was, and continues to be, displayed on employee uniforms; and
(h)from about 1993, the Business distributed to its clients and/or general public guarantee booklets, information brochures and advertisements all using and displaying the Trade Mark.
27. Mr Cross goes on to say that he incorporated the Applicant in 2005 “to continue to provide the services and carry on the Business, as trustee of my family trust” and that since 24 May 2005 “the Trade Mark continues to be used by the [Applicant] in the conduct of the Business and the provision of the Services” (sic).[7] He continues:
In about late 2007, the [Applicant] resolved to register the Trade Mark as significant time and resources had been spent by the [Applicant] and me, as the predecessor of the Business promoting the Trade Mark and building a reputation under the name “Dent Wizard”.
[7] I note the word “services” is rendered as “Services” here, but that the word is not defined anywhere in Cross 1. Indeed, as a general matter I observe that in several respects insufficient care appears to have been taken in the drafting or settling of this and others of the declarations relied on by the Applicant, with this having an inevitable effect on the weight I am able to give to parts of them.
28. I mention that it is apparent from the Trade Marks Register that between them Mr Cross or the Applicant have applied to register, inter alia, some 40 trade marks covering “panel beating” and/or related services in Class 37 since early December 2007. They include eleven by Mr Cross and one by the Applicant (being the Application) which feature the element WIZARD.[8] Of the eleven “WIZARD applications” by Mr Cross, the mark DING WIZARD is currently registered but his other ten applications were either “discontinued” prior to publication or were successfully opposed by Dent Wizard USA.[9]
[8] They also include eleven constructed around the element SMART, such as application 1215535 Smart Repair Cosmetic Car Centre (filed on the same day as the Application), SMART FIX, FIX SMART, SMART REPAIR, CAPITALS.M.A.R.TREPAIRS & Device, S.M.A.R.T, and similar.
[9] See Dent Wizard International Corporation v Michael Cross [2011] ATMO 55, refusing applications 1289878 CHIP WIZARD, 1289880 PINSTRIPE WIZARD and 1289884 DETAIL WIZARD.
29. Returning to Cross 1, (declared in June 2009), Mr Cross says that “I have now been advised” of the three Class 37 trade marks cited by IP Australia, being the Opponent’s Application and (now removed)[10] registrations 793291 and 793290 owned by Dent Wizard USA for the (word) mark DENT WIZARD and the mark:
[10] Some 20 months after the Application was accepted for registration pursuant to s 44(4) in August 2009, the Applicant filed applications under s 92(4)(b) of the Act for removal of registrations 793291 and 793290, which Dent Wizard USA did not oppose.
30. Noting that Dent Wizard USA’s two registrations dated from 6 May 1999, Mr Cross says that, “Most of the records of the Business and evidence of use of the Trade Mark prior to 2001 had (sic) been destroyed.” He was however able to locate two pieces of evidence pre-dating May 1999, being “the Business’ advertisement[s] in the Yellow Pages” for 1993 and 1995, copies of which he annexes to Cross 1. Since several of the characters on the annexed copies are almost illegible, I have reproduced mock ups below in order to show the actual (and relative) sizes of the relevant “advertisements”, with the (boxed) 1993 listing shown at top and the (single line) 1995 listing at bottom:
Dent Wizard 26 Leonora Pde Nrvlle 96 6688
31. It is convenient here to observe that I consider these Yellow Pages® listings to be significant in terms of corroborating Mr Cross’ claim to have used the words “Dent Wizard” as a business name as early as 1993. As highlighted further below, there are several other aspects of the Applicant’s evidence which establish to my satisfaction that Mr Cross adopted “Dent Wizard” as the name of one of his businesses at about this time.
32. However, whether either Yellow Pages® listing, (particularly the 1995 listing), constitutes use of the “Dent Wizard” business name as a trade mark might well be questioned. Indeed it is unclear from his evidence whether Mr Cross makes any distinction between use as a business name and use as a trade mark, although curiously, as can be seen in the passage quoted at paragraph 26 above, he does say that he “used the Trade Mark as a brand and trade mark” without indicating what he understands to be the significance of this distinction. Mr Cross’ subjective intention is in any event not determinative. As Hill and Lindgren JJ said (in separate judgments) in Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 54 IPR 344 at [30] and [78] respectively:
[30] … In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.
…
[78] … A subjective intention to use a sign as a trade mark is not probative of the objective fact of use of it as a trade mark use (compare Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 129; 28 IPR 193 at 231 per Gummow J), just as a subjective intention not to use a sign as a trade mark is not probative of the objective fact of non-use of it as a trade mark (compare Sports Break Travel Pty Ltd v P & O Holidays Ltd (2000) 50 IPR 51 per Burchett J at [14]).
33. In similar vein the Full Federal Court (Heerey, Allsop and Young JJ) said in their joint judgment in Woolworths Ltd v BP plc (No 2) (2006) 70 IPR 25 at [77]:
[77] Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…
34. Beyond Mr Cross’ own statements there is virtually no evidence before me in the present matter as to how the words “Dent Wizard” may have actually been used, apart from their use in the abovementioned Yellow Pages® listings.[11] Nor is the significance of the distinction between use as a business name and use as a trade mark necessarily moot. As Shanahan notes:[12]
In Colorado Group Ltd v Strandbags Group Pty Ltd (No 2),[13] Finkelstein J rejected the view that use of the word “Colorado” on the front of a Colorado theme store amounted to trade mark use. Similarly, in Shahin Enterprises Pty Ltd v ExxonMobil Oil Corp [2005] FCA 1278 Lander J found that Shahin’s use of the words “On the Run Coming Soon” on flyers and an A-frame sign were not use of the phrase “On the Run” as a trade mark.
[11] What other evidence is before me is explicitly discussed below.
[12] Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed) Lawbook Co. 2008 at [5.2010].
[13] (2006) 69 IPR 281 at [12], (overturned on appeal to the Full Federal Court but not on this issue).
35. Indeed, in Shahin Lander J explicitly said at [73]:
There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.
36. Moreover, as Mr Eager pointed out, it is also apparent from the copies of the telephone directory listings annexed to Cross 1, (which include copies of the entire directory pages on which the relevant listings appear), that they were both placed in the “Central Coast District” edition of the Yellow Pages®. This is consistent with the address of the business shown in the two listings, “26 Leonora Pde, Noraville”, [14] which is in the Central Coast area of NSW just north of Sydney (“the Central Coast”). As can be seen from the excerpts from Cross 1 quoted in paragraph 26 above, Mr Cross does not ever say where his business is located, nor where he may have advertised other than the Central Coast District Yellow Pages®. Nor, for that matter, does Mr Cross say where or in what quantities he distributed flyers, nor where the car dealerships, smash repair companies, car insurance companies or car rental companies to whom he says he offered his services are located. Based not only on these (and other) apparent deficiencies in Cross 1, but indeed on the Applicant’s evidence as a whole in these proceedings, I mention at this point that I agree with Mr Eager’s submission that the only reasonable inference to draw is that neither Mr Cross nor the Applicant continuously used the words “Dent Wizard” (as a business name or trade mark) to any significant degree outside the Central Coast before the Relevant Period.
[14] The address is just legible with the aid of a magnifying glass on the copies annexed to Cross 1.
37. Nor, I might add, does Mr Cross explain why he is unable to produce or show photographs of the signage, or uniforms, or business cards, or guarantee booklets, or other items to which he refers and destruction of which would, on the face of it, be unusual. If all of these items too were destroyed some time prior to 2001 along with all of the records of his relevant business then I would have thought some explanation of the nature of the apparent catastrophe was in order. Be that as it may, Mr Cross does appear to have an excellent memory, since despite the destruction of the business’ records he goes on to say in Cross 1:
To the best of my recollections, prior to 1999, the following turnovers were achieved from sale of car repair services under the Trade Mark:
(a)1992/93 financial year, approximately $12,000.00;
(b)1993/94 financial year, approximately $18,000.00;
(c)1994/95 financial year, approximately $25,000.00;
(d)1995/96 financial year, approximately $35,000.00;
(e)1996/97 financial year, approximately $52,000.00;
(f)1997/98 financial year, approximately $65,000.00; and
(g)1998/99 financial year, approximately $84,000.00.
38. Mr Cross does not however mention how much on average an individual customer was charged for provision of the relevant “car repair services”.[15] It is accordingly not possible to say how many customers actually purchased the services, although I do infer that the number must have been modest. If, for example, one assumed an average charge of, say, $1,000 per customer over the seven year period indicated,[16] then the business only serviced around 12 customers in the 1992/93 financial year (or one customer a month on average), increasing to around 84 customers (or around seven a month) some six years later. On the face of it this, too, appears to be consistent with the “car repair services” referred to having only been provided on the Central Coast rather than also extending to any significant extent to, say, the relatively nearby Sydney or Newcastle metropolitan areas, or indeed any further afield.
[15] As discussed in paragraph 40(c) below, the sole quotation in evidence is for a sum in excess of $2,000 in respect of hail damage to a single vehicle in 2006. See also the (undated) “Schedule of Costs” shown in paragraph 72, which was exhibited with the Chapman declaration.
[16] This may be a conservative estimate –see above footnote.
39. As for corroborating evidence of the nature and extent of use after the destruction in 2001 of the records and other materials related to his business, Mr Cross continues:
Evidence of continue (sic) use post 6 May 1999
Since 6 May 1999, the Trade Mark has continued to be used to promote the car repair services and I was able to locate the following evidenced (sic) of use of the Trade Mark from that date:
(a)a true copy of photograph (sic) of the Business’ t-shirt for the sponsorship of the Coast Care Classic 2001 annexed and marked…C
(b)a true copy of advertisement (sic) for the Business used sometime between 2002 to 2005 annexed and marked…D
(c)a true copy of the Business’ customer statement (sic) annexed and marked…E
(d)a true copy the (sic) Business’ advertisement in the Yellow Pages in 2007 annexed and marked…F
40. Based on Mr Eager’s submissions and on my own observations I comment as follows on these four Annexures:
(a)Apart from the (capitalised) words “DENT WIZARD”, which can only just be made out, any other letters or numbers on the copy of the photograph of the t-shirt in evidence are illegible. Mr Cross does not in any event say whether more than one such t-shirt was ever produced or, if so, how, where, or in what quantities they may have been distributed. I infer, moreover, that the “Coast Care Classic 2001” refers to a local event on the Central Coast, although I was unable to locate any reference at all to such an event on the Internet using the Google® search facility.
(b)A scanned copy of the annexure in question is shown below:
I presume this to be a flyer distributed by hand following hail storms and accordingly distributed on a relatively infrequent basis. Mr Cross does not provide any information in this regard, nor does he mention how many flyers he had printed, nor where and in what quantities they were distributed. I note too that the only use of the words “Dent Wizard” (in the phrase “…call ‘Dent Wizard’”) appears to be use as a business name rather than trade mark use in relation to the Services.
(c) While it is not entirely clear to me, this Annexure appears to be a copy of a quotation addressed to NRMA Insurance in Sydney for “PDR” services in relation to a particular vehicle damaged in what is referred to as “Newcastle Storm #1”. The quotation was apparently “created 26/11/2006 2:42:15AM”, refers to a “Date of Loss” of 31 October 2006 and is for a total sum of $2,044.64. The words “Dent Wizard” appear three times on the document, in each case obviously referring to, or identifying, the otherwise unnamed quoter’s business (indicated to be located at Tuggerah on the Central Coast) rather than being, in my estimation, trade mark use in relation to the Services.
(d) Annexure F is a copy of a page from the 2007 Central Coast District Yellow Pages® showing listings under the heading “Panel Beaters &/or Painters”. The relevant listing (showing its approximate actual size) is reproduced below:[17]
Dent Wizard 26 Leonora Pde Nrvlle
Mobile Telephone 0419 213 2xx
The 2007 listing is essentially identical to the single line 1995 Yellow Pages® listing shown and discussed in paragraphs 30 to 36 above, except that instead of a landline telephone number a mobile number is provided. I would make the same observations in relation to it as I did regarding the 1995 listing and, in particular, I would not characterise the words “Dent Wizard” appearing in the listing as other than use as a business name.
[17] The final two digits of the telephone number are illegible on the Annexure to Cross 1 before me.
41. While there is no further documentation in Cross 1 showing use of either the business name “Dent Wizard” or the Trade Mark, it does appear that business increased impressively after the year 2000 for some reason, since Mr Cross goes on to say:
To this day the Trade Mark is still used by the [Applicant] to promote and distinguish the provision of car repair services by the [Applicant] and has generated the following turnover:
[He then lists amounts for each of the nine financial years from 1999/00 to 2007/08, ranging from a low of $76,362.00 in 1999/00 to a high of $2,123,001.00 in 2004/05, with the total amount generated for the nine year period exceeding $13,000,000.00.]
42. Mr Cross then concludes his declaration as follows:
True copies of Profit and Loss Statement (sic) of the [Cross Family] Trust for financial years ended 30 June 2007 and 30 June 2008 are annexed and marked “G”. Other than a small amount of interest, the Trust’s only income is revenue generated by provision of car repair services under the Trade Mark.
The [Applicant] currently employs 7 permanent full time employees in the conduct of the Business, and has employed up to 25 people during hail season.
In 1992, the Trade Mark was initially used by the Business to promote and distinguish car repair services provided in the Central Coast area, Sydney metropolitan area and Newcastle area. The use of the Trade Mark has grown substantially since 1992 and is now used throughout Australia and internationally in the United States, Germany and Holland.
43. I highlight the fact that Mr Cross nowhere provides any information as to where, or when, “hail season” takes place. Nor is there any information in the Applicant’s evidence as to how many people the relevant business of Mr Cross or the Applicant may have employed in Australia at any specific time before the Relevant Period (or otherwise).
44. It should perhaps go without saying that the turnover figures for the period July 1999 to June 2008 indicated by Mr Cross are on the face of it extraordinary for a business whose documented use filed with IP Australia in support of the Application is of the calibre just described. Indeed, there is no corroborating evidence at all showing use of either the Trade Mark or the “Dent Wizard” business name in the entire thirteen year period ending 30 June 2008 other than the four items mentioned and discussed above in paragraphs 39 and 40.
45. It is also worth highlighting that in addition to showing “Income”, the Profit and Loss Statements for the financial years ending 30 June 2007 and 30 June 2008 annexed to Cross 1 also provide amounts for, inter alia, “Advertising and promotion”, “Computer Expenses”, Material & supplies” and “Staff training” for the 2006, 2007 and 2008 financial years. During this three year period the Statements indicate “Income” totaling precisely $4,767,612 was generated, although I note around half of this amount relates to the 2008 financial year and it is thus impossible to say what proportion was in fact generated prior to the Relevant Period commencing on 9 October 2007. That issue aside, the Statements also indicate that the amounts spent on “Advertising and promotion” during those same three financial years were zero, $18,911 and $5,498 respectively. Mr Cross does not explain why the amounts spent actually fluctuated as much as they apparently did, but even if the sums are averaged out this would only amount to around $156 per week over the three years in question. It does indeed seem extraordinary that income of the size indicated might be generated when such a modest sum is spent on advertising and promotion, including income calculated at a very precise $1,327,446.00 in the 2005/06 financial year when not a single dollar was apparently spent on advertising or promotion. That said, one is left to speculate on what actual advertising or promotion may have ever been undertaken in any event.
46. The Statements further indicate that in generating the above-mentioned income in the 2005/06 financial year, for example, the business spent a mere $867 on “Computer Expenses”, $454 on “Materials & supplies” and $143 on “Staff training” (with the sum spent on staff training apparently falling to zero in the 2007 and 2008 financial years).
47. It is all the more extraordinary when one considers that neither Cross 1 nor any of the other evidence relied on by the Applicant suggests the business had a website before the Relevant Period (or at all), that its “advertised” address in the 1993, 1995 and 2007 Central Coast District Yellow Pages® appears from my own observations on Google® Maps “Street View” to be an ordinary suburban house in an ordinary suburban street in Noraville on the Central Coast and that its “advertised” telephone number in 2007 was that of a mobile phone.
48. It is not, of course, incumbent upon the Registrar to conduct enquiries aimed at verifying what appear to be extraordinary claims by an applicant, particularly in opposition proceedings where the opponent itself may do so.[18] Be that as it may, reg. 21.15(8) of the Trade Mark Regulations 1995 explicitly states that, “The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate.” Bearing this in mind I mention that on the eve of the hearing I checked the Australian Government’s online “Australian Business Number Lookup” facility in relation to the three parties Cross 1 indicates were trading under the “Dent Wizard” business name since 2000,[19] namely “Michael Cross” (also recorded on the ABN database as “Michael Raymond Cross”), “Smart Repair Australia Pty Ltd” (that is, the Applicant) and “The trustee for The Cross Family Trust”. In all three cases the ABN online records state that the “main business location” of the business trading under the name “Dent Wizard” had either the postcode 2261 or 2263, both of which relate to the Central Coast area.
[18] Although in this case there is no obligation on the Opponent to do so given the onus is on an applicant to make out a case for coexistence under ss 44(3) or (4) once a relevant earlier application or registration is identified as a prima facie obstacle to its application.
[19] Being the year the Federal Government first introduced the Australian Business Number.
49. I also looked up “Dent Wizard” in the 2008, 2009 and 2010 Sydney White Pages® directory.[20] None contained a listing for the Applicant’s business, although all three did contain a listing for the Opponent’s business, all essentially similar to that reproduced below from the 2008 White Pages® directory:
Dent Wizard
[20] Being the “Business & Government” telephone directories produced and distributed in Sydney by Telstra Corporation Limited and/or an associated company.
Head Office 1800 500 065
Albeit after the Relevant Period, the absence of a Sydney listing for the Applicant’s business over these years strikes me as significant, given Mr Cross goes on to say in Cross 2 (without, incidentally, ever explaining why turnover increased so rapidly):
The Applicant has generated the following turnover using the Dent Wizard trade mark:
(a)2008/09 financial year, $1,282,047.00; and
(b)2009/10 financial year, $4,285,461.00.
51. I mention in passing that according to Lund 3 (at paragraph 18) the “toll free” 1800-number indicated above has operated Australia-wide since 1999, initially linking to the business of Dent Wizard USA and, since around 2002, to that of the Opponent. Mr Lund says that Dent Wizard USA also assigned “all of the mobile phone numbers” it operated and the < URL to the Opponent at this time.
52. Turning now to Cross 2 in detail, this declaration was made by Mr Cross in November 2011 specifically in connection with the current opposition. Mr Cross begins by explaining the circumstances in which he originally adopted the name “Dent Wizard” for his new PDR business in or about February 1993. As mentioned earlier, I am satisfied Mr Cross did use the words “Dent Wizard” as a business name on the Central Coast in 1993. I note that the Opponent does not suggest otherwise.
53. Mr Cross says that in 1992 he underwent training in the PDR technique with a company called Just Dents Pty Ltd, that he then decided to start his own business and that he “registered the business name ‘Dent Wizard’ [in NSW] on 8 February 1993”. He annexes a copy of the relevant NSW business name extract which specifies the nature of the business as “Mobile minor dent repairs to cars”. The “Principal Place of Business” is specified as 26 Leonora Drive, Noraville between 16 August 1995 and the end of the Relevant Period, with another Noraville address named in the period from 8 February 1993 to 16 August 1995. The extract also specifies another address, at Tuggerah on the Central Coast, as the sole “Other Place(s) Of Business” in the period from 8 February 1993 to 4 November 2011, but this address was only current after the Relevant Period.
54. Mr Cross goes on to say that the “three main sources of [his] work [are] (a) Motorcar dealers and wholesalers; (b) Insurance companies; and (c) Smash repair shops.” As (the sole) apparent corroboration of this, he refers to two Exhibits, being:
· “a copy of a letter that I received from NRMA dated 22 October 1996 confirming that my business known as Dent Wizard had been added to the NRMA’s list of repairers”; and
· “a copy of a letter that I received from P&A Auto Repairs dated 22 August 2996 [sic] confirming that my business known as Dent Wizard had been working with GIO, NRMA, FAI and NZI, which were the major insurance companies at that time.”
55. It is convenient at this point to comment on these two Exhibits. The October 1996 letter is from an NRMA “Assessing Manager” located in Gosford on the Central Coast. It is addressed to “Mr M Cross, Proprietor, Dent Wizard, 26 Eleonora (sic) Parade, Noraville NSW 2263”, (this reference to the name of Mr Cross’ business being the only time the words “Dent Wizard” occur in the exhibited letter), and commences with the sentences, “Your application to carry out work on behalf of NRMA Insurance Limited was recently received at this office. Before this application is processed and your company added to our list of ‘Known Repairers’ we request your cooperation in respect of our standard procedures…”. The letter then goes on to detail certain requirements, amongst which that repairers must quote jobs using “the NRMA Compuquote quoting and invoice system”. There is however no evidence as to whether Mr Cross ever responded to this letter or whether his business ever became one of the NRMA’s “Known Repairers”. If it did, then presumably records from the NRMA’s Compuquote system could confirm this and other relevant matters. Alas, there is no evidence of this kind before me.
56. The “August 2296” (presumably “1996” was intended) letter is from “P&A Auto Repairs” of East Maitland (in the Hunter district, just north of the Central Coast) and is reproduced in full below:
TO WHOM IT MAY CONCERN
this is to certify Michael Cross Trading as The Dent Wizard has carried out work for us on a sub contracting basis from February 1996 to this date.
During that time carried out Paintless Dent Repair to our satisfaction. (sic) He has worked for GIO NRMA NZI and MMI Insurance Companies.
57. Contrary to Mr Cross’ apparent understanding, this letter is not on the face of it evidence of provision of the Services under the Trade Mark to any of the named insurance companies. It is at best confirmation that for a short period during 1996 Mr Cross, trading as “The Dent Wizard”, worked as a subcontractor providing PDR services just north of the Central Coast.
58. I note, too, that Mr Cross does not explain how both of these 1996 letters came to be found despite destruction of the business’ pre-2001 records, nor why no significant evidence of use of the Trade Mark between 2001 and the Priority Date is exhibited with Cross 2.
59. With no corroborating evidence at all, Mr Cross then continues:
Because the repairs that we are requested to undertake mainly arises (sic) from hail storm damage to motor vehicles the places that we undertake our business will depend on where hail storms occur. While our home base is on the Central Coast of New South Wales, the locations where we have conducted our business extend throughout Australia. We have fixed Dent Wizard locations in Charmhaven NSW, Penrith NSW, Hornsby NSW, Campbelltown, NSW and Ballina NSW.
60. Once again, Mr Cross nowhere provides any information as to where, or how frequently, hail storms occur. Nor does he say when his business “extended throughout Australia” (or where, other than to the named “fixed locations” in the greater Sydney region, Ballina on the NSW North Coast and Charmhaven on the Central Coast). I am accordingly unable to say where, or to what extent, any of the claimed use of the Trade Mark occurred before or during the Relevant Period. I note also that, in principle, if Mr Cross, or the Applicant, or the Cross Family Trust, did trade outside New South Wales under the name “Dent Wizard” at any time then he, the company and/or the Trust would have been obliged to register a relevant business name in each of the States and Territories concerned, or to register a company with a relevant name, and that there is no evidence before me that such business name or company registrations were ever obtained.
61. That said, based on the Applicant’s evidence as a whole and the total lack of any significant supporting documentation showing use of the Trade Mark, I am compelled to conclude that most of the income for the nine financial years from 1999/00 to 2007/08 mentioned in paragraph 41 above was most likely to have been generated by Mr Cross’ activities outside Australia. In this regard Mr Cross goes on to claim in Cross 2, with no other apparent relevance to the current opposition, that:
We have also been engaged to provide our PDR services by each of the following:
(a)Quikway in the USA;
(b)Hailmaster in the Netherlands;
(c)Paschke in Germany;
(d)UR Form in Germany.
62. I note in passing that I find support for this conclusion in the declaration of Michael Cossetto made on 9 November 2011 and also relied on by the Applicant as part of its Evidence in Answer. Mr Cossetto is a lawyer with the firm acting for the Applicant and the sole purpose of his declaration is to exhibit:
…a copy of the front page of the Dandenong Leader dated 5 April 2010. This document was provided to me by Michael Cross, a director of [the Applicant] with the intention that it be an exhibit in the subject opposition proceedings and referred to in his Statutory Declaration dated 8 November 2011 [that is Cross 2], but it was inadvertently omitted.
63. The exhibit obviously post-dates the Relevant Period by some two and a half years and its presentation via Mr Cossetto’s declaration is further confirmation, on the face of it, of the apparent paucity of any significant evidence of use of the Trade Mark prior to the Relevant Period (or at all). That aside, I highlight the fact that the article, (which is reproduced below but which, like much of the Applicant’s supporting evidence is only barely legible), only uses the words “Dent Wizard” twice (both times referring to the name of the Applicant’s business) and begins:
They are the storm chasers.
They travel the world following hail storms from city to city, cleaning up in the aftermath of the devastation and now they’ve landed in Noble Park.
If your car has suffered hail damage then there is a chance your insurance company might refer you to Dent Wizard.
Dent Wizard is dealing with thousands of battered cars that copped the brunt of one of Melbourne’s worst storms.
Director Michael Cross said the freak storm had created three to four years permanent work for the Noble Park workshop.
The team are working 18-hour days.
Mr Cross and his team have been travelling the world since 1992, spending months in Europe and the US fixing cars after hail storms.
64. Returning to Cross 2, I firstly note that Mr Cross indicated in Cross 1 (declared in June 2009) that he had “now been advised” of the three trade marks originally cited against the Application in 2008. It will be recalled that the earliest of these were Dent Wizard USA’s two registrations which were filed in 5 May 1999. I note this sits oddly with Mr Cross’ next statement in Cross 2 that:
In approximately 1999 I became aware of an internet entry for a business known as “Dent Wizard International” in America. On enquiry I became aware of a company “Dent Wizard Australia Pty Ltd ACN 085 317 255” which had its registered office in Queensland. On or about 19 May 1999 I instructed my solicitor, David Roe to write to that company advising them of my prior use of the business name “Dent Wizard”.
65. While not necessarily of particular relevance to the current opposition, it is apparent from the parties’ evidence that “Dent Wizard Australia Pty Ltd ACN 085 317 255” (to which I refer hereafter as “DW Australia No 1”) was indeed related to Dent Wizard USA and/or to the Opponent in some manner. I note that the 19 May 1999 letter of David Roe, who is indicated to be a solicitor practicing on the Central Coast, nowhere claims the words “Dent Wizard” as a trade mark, nor does it claim any use of the “Dent Wizard” business name outside NSW. The letter is headed “RE: MICHAEL CROSS AND THE BUSINESS NAME ‘DENT WIZARD’” and, for the sake of completeness, its contents are set out in full below:
I act for Michael Cross who is the proprietor of the business name “Dent Wizard” which is registered in New South Wales under the Business Names Act 1962 and has been registered since February 1993. My client has since that time throughout New South Wales carried on business using this trade name in respect of the business of effecting body repairs to motor vehicles and particularly specialising in minor dent removal without the need for painting or use of body fillers. In the course of this business, my client has established a substantial reputation, as a result of which he regards the use of the name “Dent Wizard” to be substantial intellectual property (sic) and essential to his business.
The records of the Australian Securities & Investments Commission show that you (sic) company was registered on 25 November 1998 in Queensland.
My client is concerned that it may be your intention to operate in New South Wales using the name or title “Just Dents”. (sic) If that is the case, the purpose of this letter is to inform you of my clients (sic) prior claim to the name in this state, to caution you against using that name for trading purposes or in any advertising material and requiring (sic) that you do not do anything that adversely effects (sic) my clients (sic) rights to use that name in this state.
I point out that this letter is written to you as a matter of caution. My client does not at this time have any knowledge of your business intentions, but wishes to make you aware of his prior rights in respect of that name.
66. For obvious reasons, (albeit one month later), Mr Roe sent a second letter to DW Australia No 1 dated 18 June 1999 with the same subject heading, stating:
I refer to my letter of the 19th May, 1999. In the third paragraph of that letter, second line, I have incorrectly referred to the name or title as “Just Dents”. That is incorrect. The name or title which my client cautions you against using is “Dent Wizard”.
67. Mr Cross does not say if a response to these letters was ever received, although he does exhibit a copy of a document obtained from ASIC’s records which shows DW Australia No 1 changed its name to “Dent Magic Australia Pty Ltd” on or about 21 September 1999.
68. Mr Cross also exhibits copies of documents obtained from ASIC’s records showing that a second company, incorporated on 6 February 1995 in Victoria under the name “Dents & Dings of Australia Pty Ltd”, changed its name to “Dent Wizard International Pty Ltd” on or about 14 July 1999 and then to “Dent Wizard Australia Pty Ltd” on or about 20 October 1999. This is the company I mentioned above at paragraph 9 and I will refer to it hereafter as “DW Australia No 2”. It is apparent from both parties’ evidence that it was originally incorporated with three American born men closely connected with Dent Wizard USA as its sole Directors. Mr Cross exhibits the letter of 9 December 1999 he had his solicitor David Roe write to DW Australia No 2. The letter bears the subject heading “RE: MICHAEL CROSS – BUSINESS KNOWN AS DENT WIZARD” and continues:
I act for Michael Cross who instructs me that your company is either conducting or has authorised the conduct of businesses using the trading name “Dent Wizard” in Sydney and surrounding areas.
From search made with (sic) the records of the Australian Securities and Investments Commission, it appears that your company changed its name to Dent Wizard Australia Pty Limited on 20 October 1999, presumably with the consent of the company formerly known as Dent Wizard Australia Pty Limited which was registered in Queensland and had its principal place of business at 39 Eggerton Street, South Port (sic), Queensland.
I enclose copy of letter (sic) which I wrote to that company on 19 May 1999 and a further letter written to them (sic) on 16 June. These letters advise of my client (sic) prior registration and use of the name “Dent Wizard” throughout New South Wales.
The conduct of your business using the name “Dent Wizard” seriously infringes my clients (sic) rights to that name. I am instructed to require that you cease the use of the name forthwith and confirm to me that you have done so.
69. Again, Mr Cross does not say if a response to this letter was ever received, nor whether Mr Roe was instructed to follow up the matter, merely mentioning that the company was deregistered some five plus years later on 28 April 2005. I would only add that, given Mr Cross’ apparent interest in seeking legal advice and protecting his perceived rights in the business name “Dent Wizard” in New South Wales in 1999, it seems all the more extraordinary that he did not make more effort to preserve from destruction a short time later evidence of his claimed use from 1993 to 2001 (and beyond) and would wait a further eight years before filing an application to register the Trade Mark.
70. Cross 2 concludes with Mr Cross exhibiting printouts from the Opponent’s website (at < as at 8 November 2011. What relevance this has to the Application is unclear, with Mr Cross merely commenting (somewhat ironically):
The Opponent does not indicate any where (sic) on the [exhibited web page] that the use of the words “Dent Wizard” is a registered or unregistered trade mark of the Opponent.
71. The balance of the Applicant’s evidence in answer consists of the Chapman and Barnes declarations. Both are brief and, as explained below, I do not consider that either advances the Applicant’s position significantly as far as s 44(4) is concerned.
72. Russell Chapman, of Glendale just north of the Central Coast, says that he is “currently employed with NRMA in the position of motor assessor” and that he has “held this position since 1994”. He appears to contradict this in his next statement, however, saying that “Prior to my current employment, I held the following positions (a) FAI Insurance, motor assessor –from 1989 to 1993, (b) NZI, motor assessor –from 1993 to 1999 and (c) CGU, motor assessor –from 1999 to 2001”. Be that as it may, the declaration concludes as follows:
6. In or about mid-1993, I was employed by NZI as a motor vehicle repair assessor. At the time I recall being asked by my then supervisor, Tom Turner, to contact Michael Cross in order to obtain a quote to conduct a PDR on several hail damaged vehicles that I was assessing at the time following a hail storm on the Central Coast.
7. I recall that Tom Turner handed me a business card for a business which I understood was conducted by Michael Cross under the name of Dent Wizard.
8. I used the number on the card to contact Michael Cross to provide the quote requested. The quote provided by Dent Wizard was accepted and Dent Wizard repaired the vehicles.
…
10. Since that first introduction to Michael Cross and his business Dent Wizard, I am aware, through my various roles in the insurance industry, that he has, either as a sole proprietor or through his company Smart Repair Australia Pty Ltd (Applicant), continuously traded under the name Dent Wizard for the purpose of conducting repairs using the PDR technique.
11. Based on the engagements with the Applicant that I have personally initiated and those that I am aware of through my day to day conversations with work colleagues, I would estimate that the number of motor vehicles that the Applicant has been engaged to repair throughout Australia N.S.W (sic) using the PDR technique by insurance companies that I have been employed by since mid-1993 to be in the thousands.
12. The first time that I became aware of any other person or entity trading under or using the name of Dent Wizard in the conduct of motor vehicles repairs (sic) or using the PDR technique was when I was informed by Michael Cross of such other parties shortly before the date of this statutory declaration [being 7 November 2011].
13. I am aware that my current employer, NRMA, engages only the following companies in relation to the repair of any motor vehicles using PDR techniques: (a) Dent Wizard [and] (b) Dent Extractors.
14. The only other PDR repairers that I have heard of prior to the time mentioned in paragraph 12 are Dent Extractors and Hail Busters.
15. Exhibited…and marked “RC1” is a copy of a Schedule of Costs, which is dated 1992, which I received from Dent Wizard in or about 1993. I have retained this Schedule of Costs since then and used it because it contains the telephone number of the business which I have continuously used to contact the Applicant to provide quotes and engage for the repair of motor vehicles using the PDR technique.
73. Contrary to Mr Chapman’s apparent belief, the exhibited document is not “dated 1992”, nor could he have “received [it] from Dent Wizard in or about 1993”, given it bears, inter alia, an eight digit fax number and an Australian Business Number (ABN) (which were not introduced on the Central Coast and in Australia until around 1998 and 2000 respectively[21]) and an “iinet” email address.[22] It is in any event somewhat remarkable that Mr Chapman would retain the (presumably) out of date Schedule of Costs for some 20 years “because it contains the telephone number of the business which I have continuously used to contact the Applicant”. To the extent that his statements at paragraphs 10 to 14 above are more reliable, I think it more likely than not Mr Chapman is confusing the business of Mr Cross and the Applicant with that of the Opponent and/or Dent Wizard USA. In this regard, as discussed, there is essentially no corroborating evidence before me of any significant, relevant activity by Mr Cross or the Applicant. On the other hand the Opponent’s evidence, (which it is not necessary to detail in this decision), does disclose widespread use by it and/or by Dent Wizard USA going back to at least 1999, either directly or through franchisees and licensees. Indeed, areas where use is documented in the Opponent’s evidence include, inter alia, NSW (Coffs Harbour and the Clarence Coast, the Tweed area, Wollongong, Kiama Downs and Sydney), Queensland (Ipswich, the Sunshine Coast, Southport, Ashmore, the Gold Coast and Brisbane), Victoria (Nunawading and Moorabbin), Western Australia (Perth) and Tasmania (Hobart).
[21] In fact the Federal Government’s online “ABN Lookup” facility indicates that Michael Raymond Cross’ ABN 85344290593 was not registered until 10 March 2000.
[22] Email addresses were not in common use in Australia in 1993.
74. I accordingly do not consider the Chapman declaration significantly assists the Applicant in discharging its onus under s 44(4).
75. Craig Barnes is the owner of a motor vehicle smash repair business on the Central Coast and has been employed in the motor vehicle repair and insurance industries for around 21 years. He says that:
Soon after my appointment in or about 1994-1995 as the Loss Assessor for FAI [Insurance] for the Newcastle/Hunter area, I remember that I was asked to assess a hail damaged Toyota Camry, which had been taken to Raymond Terrace Smash Repairs.
Another FAI assessor suggested that I call Dent Wizard and speak to Michael Cross, because Michael used a PDR technique to repair motor vehicles in his Dent Wizard business. I called Dent Wizard and requested a quote for the repair of the hail damaged vehicle. FAI accepted the quote and Dent Wizard repaired the vehicle.
At the time I understood that the business which Michael owned and which used a PDR technique was branded “Dent Wizard”.
76. Mr Barnes goes on to say that since then he has continued to use, and to refer others to, Michael Cross’ business for PDR repairs to motor vehicles and he then concludes:
I recall that on at least 6 occasions I visited the premises at which Michael Cross conducted his PDR business and recall seeing the words “Dent Wizard” used on business cards, brochures, stationery and invoices.
In or about 1994-1995 I was only aware of two companies which used PDR techniques to repair motor vehicles, one of which was the Dent Wizard business of Michael Cross, the other company was Pro Dent. (sic)
At all times, my colleagues and I associate (sic) the brand “Dent Wizard” with the business that is owned and conducted by Michael Cross or one of his companies.
Until Michael Cross told me about another business in Queensland that used the name “Dent Wizard”, I was not aware of any other business or entity which used or traded under that name.
77. I accept Mr Barnes’ above quoted statements as further confirmation that Michael Cross traded under the name “Dent Wizard” in the supply of PDR services in around 1994 or 1995. However Mr Barnes’ testimony does not assist me in assessing where, to what extent, and indeed whether, Mr Cross and/or the Applicant continuously used the Trade Mark for the Services to any significant degree prior to the Relevant Period.
78. Turning finally to the Applicant’s “Further Evidence”, this consisted of the declaration of Glen Cahill (minus its sole Exhibit) made some nine days before the hearing and the declaration of Anthony Brooke Watson made on 9 June 2010 in connection with a subsequently withdrawn opposition to the Application by Dent Wizard USA. Again, in my view neither declaration advances the Applicant’s position significantly as far as s 44(4) is concerned.
79. Mr Cahill has owned a “Body Repair” business in Coledale, just south of Sydney, since 2000 and says:
During the period from about 1 February 2004 to about 1 February 2008 I engaged a company called Smart Repair Australia Pty Ltd trading as “Dent Wizard” [that is, the Applicant], which I know to be owned by Mr Michael Cross, to provide paintless dent repair (PDR) services to my business.
I know that [the Applicant] has its Head Office based on the Central Coast, NSW.
My understanding is that Michael Cross has been the owner of “Dent Wizard” since the early 1990’s and that Michael’s business was one of the first businesses in Australia to provide PDR services.
I used Michael Cross’ “Dent Wizard” business to repair hail damaged vehicles because they have a good reputation established over many years of service to my company.
In or about 2007 an employee of my business, called Craig Clarke, resigned from my business and bought a paintless dent repair franchise from a Queensland company, [the Opponent], and started trading as “Dent Wizard” (Dent Wizard Franchise).
I believe that Craig Clarke, through his employment in my business, must have known of the existence of Michael Cross’ “Dent Wizard” business long before he bought the Dent Wizard Franchise.
80. I would firstly note that Mr Cahill could not have engaged the Applicant “from about 1 February 2004” because the Applicant was not incorporated until 10 March 2005. Nor does Mr Cahill say why he apparently ceased using the Applicant’s services “on about 1 February 2008” (being five years before his declaration was made). Moreover, as Mr Eager pointed out, Mr Cahill’s recollection as to when his former employee became a franchisee of the Opponent appears to be wrong. In this regard Mr Eager points to copies of a number of invoices issued by “Craig Clark Enterprises P/L T/A Dent Wizard Wollongong” exhibited with his own declaration, Eager 1.[23] The invoices prominently display the trade mark DENT WIZARD alongside a Wizard Device subject of several registrations owned by the Opponent which date back to 2003. On the face of it they relate to dent removal services “completed by Craig Clark” for motor vehicle dealers in various locations to Sydney’s south including Nowra, Albion Park, Wollongong and Narellan and they are dated between 15 August 2005 and 13 September 2006. I note too that the online ASIC and ABN registers record that both Craig Clark Enterprises Pty Ltd and the associated ABN indicated on the invoices were registered from 20 July 2005. As Mr Eager put it:
…the declaration by Mr Cahill sets out that Craig Clark resigned from the business of Mr Cahill and purchased a paintless dent repair business (sic) from the Opponent “in or about 2007”. While I appreciate some inaccuracy in recollection, I would submit that two years is an overly large leeway for such inaccuracy. This date is relevant, since the priority date of the [Application] is 14 December 2007. This calls into question Mr Cahill’s accuracy as to when he engaged the Applicant. I submit that this evidence should be disregarded.
[23] Although the surname “Clark” is spelt as “Clarke” in the Barnes declaration, I am satisfied this is the “Dent Wizard Franchise” to which Mr Barnes is referring.
81. I agree with Mr Eager’s submission.
82. As indicated in paragraph 4, Anthony Brooke Watson is a lawyer who formerly acted for Dent Wizard USA. His original declaration was filed with IP Australia in or about June 2010 in support of Dent Wizard USA’s subsequently withdrawn opposition to the Application and it sets out in some detail the history of Dent Wizard USA and its connection with the Opponent. After explaining that Dent Wizard USA “was established in 1983 in Bridgetown Missouri, in the United States” and that it subsequently expanded to embrace franchisees across the United States and beyond, Mr Watson says:
In the early 1990s Bill Buckley and Mark Miravella, the directors of the San Francisco “Dent Wizard” franchisee established a dent removal business in Australia trading through a company called Dents & Dings of Australia Pty Ltd. … Following negotiations with [Dent Wizard USA] in 1998, with the licence and approval of [Dent Wizard USA], Dents & Dings of Australia Pty Ltd changed its name to Dent Wizard Australia Pty Ltd in August 1999.
…
In 2001 Dent Wizard Australia [Pty Ltd] combined its business with the business of Pro Dent Repairs (Gold Coast) Pty Ltd, another paintless dent removal service provider operating in Australia which was owned and operated by Michael Lund.
83. As mentioned at the beginning of this decision, Michael Lund is a director of, and the “controlling mind” of, the Opponent. It is unnecessary to detail Mr Watson’s evidence further because it has no bearing on the s 44 ground of opposition under discussion. For the same reason it is unnecessary to discuss any of the evidence served and filed by the Opponent in the current opposition. I accordingly turn now to Mr Eager’s submissions in relation to the s 44 ground.
Opponent’s submissions
84. In his written submissions Mr Eager highlighted several of the deficiencies in the Applicant’s evidence and said the following relevant to s 44(4):
I submit that the use by the Applicant has not been continuous from before about 2006.
In the event that it is found that such use has been continuous, I submit that that use has been limited to the Central Coast.
…
As set out in Smith Bartlet & Co v British Pure Oil Grease & Carbide Co Ltd (1934) 51 RPC 157 (Ch D) [“Bartlet”], it was held that there must be an occasional user. In that case, it was held that use on three occasions in 6 years was not continuous.
…
Furthermore, the evidence submitted by the Applicant does not show use anywhere outside of the Central Coast of N.S.W. For example, both Craig Barnes and Russell Chapman appear to be based on the Central Coast of N.S.W.
In view of the above it is submitted that even if the Registrar correctly decided to accept the [Application], the ensuing registration should be limited geographically to the Central Coast of N.S.W.
Conclusion
85. I mention that Mr Donato responded to Mr Eager’s above-quoted submission in his own written submissions as follows:
The Opponent has pointed out in its submissions that the Applicant has failed to present any evidence of use in the form of advertising and invoices from about 1996 to 2006. The Applicant has not been able to present this type of evidence because most of its “business records and evidence of use of the Trade Mark that relate to the period before 2001 have been destroyed” (Cross 1 at paragraph 11). It is common practice for this to occur, especially when the statutory requirement imposed on companies to keep financial records is seven (7) years (Section 286 Corporations Act 2001).
86. Mr Donato’s response does not however shed any light on why the Applicant has not produced any significant evidence of use of the Trade Mark for the Services after 2001. Section 286 of the Corporations Act 2001 may not oblige the Applicant to keep financial records beyond seven years, but the section certainly does not oblige it to destroy them, along with all other items showing use of its trade marks such as business cards, stationery, uniforms, signage, advertising and promotional materials and the like. Moreover, Mr Cross and his then attorneys, Makinson & d’Apice Lawyers (Mr Donato’s former firm), have known about the Opponent’s Application since at least March 2009 (when IP Australia issued its initial adverse report on the Application). Indeed, Cross 1 was specifically prepared and lodged with IP Australia in July 2009 in order to invoke s 44(4) and yet, as detailed earlier, the declaration contains no significant documentation showing use of the Trade Mark in the preceding seven year period.
87. In summary, I agree in essence with Mr Eager’s above-quoted submission, although I would go further. In particular, I cannot be satisfied on the evidence before me that the Applicant “continuously” used the Trade Mark to any significant degree in Australia for the Services at any time prior to the Relevant Period. In this regard the facts in Bartlet, the English (infringement) case to which Mr Eager referred, were somewhat similar to the current matter, in that Maugham J thought it:
…singular that the Defendants have not, in an endeavour to show the use by them of the word “Firrophit”, disclosed any documents whatever, either in the way of an order, or an invoice, or a cash book or a ledger, other than and except the documents that I am now proceeding to mention. The Company appears to trade in a number of articles, and the amount subscribed by the debenture holder or debenture holders is substantial; it is not a very small business, apparently. I am not satisfied with this paucity of documents produced by the Defendants, and I would add that Mr Collings struck me as an inaccurate witness who was very desirous of doing the best he could to assist his own side.
88. Observing that section 41 of the relevant legislation with which he was concerned, (which provided a defence, contingent on prior continuous use, to infringement of a registered mark), “requires the continuous use of the trade mark from a date anterior to the user or registration of the first-mentioned mark”, Maugham J concluded:
It is quite true that, if the Defendants had owned this mark, the fact that they had occasion to use it only on three occasions in some six years would not suffice to show an abandonment, or anything like it. You do not abandon a mark merely by non-user, but the continuous user under Section 41 is directed to something very different. The Act has, I think with great clearness, put the owner of a registered trade mark in a very exceptional position, whether he has used the mark or not, and he is entitled to the exclusive use of it unless under the proviso to Section 41 somebody else is able to show, not an occasional user from a date anterior to the user by the owner of the registered trade mark, but a continuous user by him. The word “continuous” is not one which is capable of strict definition. It does not mean, in the case of a sale of goods, a sale every week or even every month; but in the absence of any documents other than those which I have specified, and of any sales other than those I have mentioned, I should come to the conclusion that there has not been continuous user by the Defendants prior to the date of the Plaintiff’s registration, even if that were sufficient to establish a defence to the Plaintiffs’ action.
89. As Mr Eager noted at the hearing, there appears not to have been much consideration by the Australian courts of what would suffice to establish “prior continuous use” in this country. However, I am aware that in Canon Kabushiki Kaisha v Brook and Another (t/a Cannon Watch Company) (1996) 36 IPR 88 Tamberlin J referred with approval to Maugham J’s above-quoted discussion in Bartlet. There, in opposition proceedings under the Trade Marks Act 1955, Tamberlin J was considering whether s 34(2), (being essentially equivalent to s 44(4) of the 1995 Act), might be invoked to get around s 33(1) of the repealed Act (which was the analogue of s 44(1) of the 1995 Act). At IPR page 98 his Honour said:
[Section 34(2)] prohibits refusal by the registrar and provides a bar to an objection based on s 33(1). As Shanahan, [Australian Law of Trade Marks and Passing Off, 2nd ed], points out at pp 209–10, the section applies only to objections arising from the earlier registration and does not preclude objections under s 28 based on the use of the registered mark.
The use required must be more than that which might suffice to avoid showing abandonment. There must also be a continuous user which is more than an occasional user. In Smith Bartlett & Co v British Pure Oil Grease & Carbide Co Ltd (1934) 51 RPC 157, Maugham J held that a use on three occasions in 6 years was not continuous.
90. The fact that Bartlet was an infringement case (and accordingly that the prior user had already registered the trade mark in question) aside, the rationale underpinning Maugham J’s view in relation to “prior continuous use” appears to me to be just as applicable in the present opposition. As discussed above, the Applicant’s evidence is simply inadequate for me to be satisfied, on balance, that it continuously used the Trade Mark for the Services to any significant extent in Australia prior to and during the Relevant Period. There is in fact no evidence at all before me that it has ever used the Trade Mark in relation to “advisory services relating to [the maintenance and repair of motor vehicles being paint and dent repair]. As for PDR services per se, I agree with Mr Eager that the Applicant appears not to have provided such services on anything like a “continuous” basis beyond, at most, the Central Coast. That said, neither does the evidence satisfy me that the Applicant has provided such services under the Trade Mark continuously prior to and during the Relevant Period even in that particular region. I accordingly do not consider this to be an appropriate case for application of the Registrar’s discretion under s 55(1)(b) of the Act, which might otherwise allow registration of the Trade Mark with its use limited to within the Central Coast area.
91. The Opponent’s s 44 ground is accordingly established.
Decision
92. Section 55(1) of the Act relevantly provides that, 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.
93. I have found the opposition to be successful on the ground raised pursuant to s 44 of the Act. I accordingly refuse to register trade mark application number 1215534.
Costs
94. Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the Applicant in accord with Schedule 8 of the Trade Mark Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
24 May 2013
16
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