WM Productions Pty Ltd v Brenda Mauriceen Lomas

[2003] ATMO 6

TRADE MARKS ACT 1995

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

Re:Oppositions by WM Productions Pty Ltd to applications under section 92 of the Act by BRENDA MAURICEEN LOMAS to remove trade mark numbers 218783 (32) & 228232 (33) - WALTZING MATILDA - in the name of WM Productions Pty Ltd

Date of Decision:	30 January 2003
Delegate:	Hearing Officer Geoff Purvis-Smith
Representation:	Opponent - Mr Peter Fisher of Fisher Adams Kelly. Applicant - Ms Angela Bowne of counsel, instructed by John Spence & Associates
Decision:	s.92 removal applications Applicant not a person aggrieved - application dismissed Costs awarded to the opponent

Background

This is an opposition to applications for removal of trade mark registrations 281783 and 228232. The applications for removal are dated 28 June 2000, filed in the name of Brenda Mauriceen Lomas, and brought pursuant to s.92(4)(b) of the Trade Marks Act 1995 (the Act). Each application is supported by statutory declarations which satisfy the requirements set down by Reg. 9.1 of the Trade Marks Regulations 1995. 

In her applications for removal, Ms Lomas submitted that she is a person aggrieved within the meaning of s.92(1) and that the relevant trade marks have not been used in Australia by their registered owner/s in the three years and one month prior to the filing of the applications.  In the normal course, this would be sufficient to make out the requirements of s.92(4).  However, notices of opposition to the applications were lodged by Jolly Swagmen Pty Limited on 16 November 2000 pursuant to s.96 of the Act.  For its part, Jolly Swagmen Pty Ltd disputed the standing of Ms Lomas as a person aggrieved and alleged that trade marks had been used during the relevant period. 

As a result, the applications for removal and the assertions on which they are based are now in dispute.  The matter has come before me, as a delegate of the Registrar of Trade Marks, for determination.  To this end, a hearing was conducted on 17 December 2002, in Canberra.  Ms Lomas was represented at the hearing by Ms Angela Bowne of counsel, instructed by John Spence & Associates.  WM Productions was represented by Mr Peter Fisher of Fisher Adams Kelly.

History of the trade marks

The trade marks in question have had a complicated history.  Initially, the trade marks were registered in 1968 and 1969, respectively, in the name of Millers Hotels Pty Limited.  In 1978, the trade marks were assigned to Tooth & Co Ltd.  They were then assigned, in 1987, to Lindemans Wines Pty Ltd and then, in 1995, they were assigned to Winton Shire Council.  In turn, the Council assigned the trade marks to Southcorp Wines Pty Limited and the assignment was recorded in the register on 30 July 1996.  The trade marks were then assigned to Jolly Swagmen Pty Ltd by way of deed of assignment dated 25 February 2000.  The assignment was recorded in the register in April 2000. On 18 December 2001, the trade mark registrations were assigned to WM Productions Pty Ltd.  The assignment was recorded on the official Australian trade marks register on 20 March 2002.  As the registered assignee, WM Productions is authorised to take over conduct of the opposition proceedings

Evidence

On 14 February 2001, the opponent lodged its evidence in support - a statutory declaration by Mr Robert Raymond of the same date.

Under normal circumstances, the applicant for removal is permitted to rely on evidence in answer.  A period of three months is allowed for this.  The time period can be extended at the discretion of a delegate of the Registrar of Trade Marks.  In the present case, extensions were sought for a total of 11 additional months.  The first six additional months were allowed by various delegates.  However, on 16 August 2002, Mr Williams, an authorised delegate, refused to grant the additional five months.  No applications for further evidence have been lodged.  As a result, there is no evidence in answer or further evidence before me.

Submissions and Findings

In the statutory declarations which were filed in support of the applications for removal, Ms Lomas' legal representative, Mr Spence, set out the basis on which Ms Lomas alleged that she is a person aggrieved.  Mr Spence also set out the inquiries and investigations that were undertaken to ascertain whether the trade marks had been used by the registered owners during the relevant period.

On the question of standing, Mr Lomas asserts through the evidence and the submissions of her legal representative that:

• she applied for registration of the trade mark WALTZING MATILDA in classes 29, 30, 31, 32, 35 and 42 on 20 November 1997;

• when the applications were examined by the Trade Marks Office, trade mark registrations 218783 and 228232 were cited against her application;

• 218783 and 228232 are respectively registered in relation to classes 32 and 33;

• as a result of the citations, Ms Lomas requested that class 32 be deleted from her application;

• the deletion was allowed by the Trade Marks Office and the application was then accepted for registration;

• following acceptance, her application was twice opposed - first by Winton Shire Council and the Waltzing Matilda Centre Ltd and then by Jolly Swagmen Pty Ltd;

• following the opposition processes and Court appeals, the application has been confirmed as capable of proceeding to registration;

• as a result of the confirmation, Ms Lomas has re-applied for registration of the trade mark in class 32, as well as classes 33 and 43; and, therefore

• Ms Lomas' abandonment of the class 32 claim, together with her intention to re-apply for the trade mark in classes 32, 33 and 43 means that she is a "person aggrieved" within the meaning of s.92(1). 

At this stage, it is important to note that, at the date of Ms Lomas' removal application, the oppositions commenced by Winton Shire and the Waltzing Matilda Centre and Jolly Swagmen had yet to be heard, and there was no indication that Ms Lomas would seek to re-apply for the class 32 goods or lodge additional applications for classes 33 and 43.  Further, the information relating to the outcome of the proceedings and the intention to apply for further trade marks in additional classes was provided by way of submissions, rather than any evidence which had been properly served and filed.

For its part, the opponent states that the evidence is insufficient to find that the applicant is a "person aggrieved".  It bases its argument on recent case law and its having put the applicant on notice that her standing as a "person aggrieved" was a disputed issue. 

In Woolly Bull Enterprises Pty Limited & Anor v Reynolds (2001) IPR 149, Justice Drummond discussed the meaning of "person aggrieved" in s.92, and its application in removal matters. His Honour cited with approval the following passage from The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158; 88 ALR 217; 12 IPR 417 at 454:

[a "person aggrieved" in the present context] would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified...

Justice Drummond then stated at 151:

It would be contrary to [the] object of the 1995 Act to accord standing to a person to attack a registered trade mark on the ground that the person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods.  Such as person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark which he wishes to attack remaining on the register, though he might wish to traffick in marks as distinct from to trade in marked goods.

Accordingly, it is for the applicant for removal to show that is has a trade in goods marked with the relevant trade mark, or a bona fide intention to trade in such goods. 

Ms Lomas argues that the mere filing of an application constitutes prima facie evidence of intention to use the trade mark: Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401. I do not disagree with the finding in Aston v Harlee, nor am I in a position to dispute its accuracy.  However, it must be read in context.  The fact that an application is prima facie evidence of an intention does not mean that the evidence, or the assertion which is based on that evidence, cannot be disputed.  Where the intention of the trade mark applicant is disputed in s.92 proceedings, the disputation and the decision of Drummond J have the combined effect of displacing the prima facie presumption. This means that the removal/trade mark applicant will have an obligation to answer the allegation.   She will have to show that not only did she have the requisite bona fide intention to use the trade mark at the relevant time, but that she would be appreciably disadvantaged in a legal or practical sense as well.

In the present case, Ms Lomas was put on notice that her person aggrieved status was disputed.  This was the first ground specified in the notice of opposition.  However, and despite being given the opportunity, there is no evidence before me of any intention to use the trade mark in relation to class 32 goods. Whether this lack of evidence results from deliberate decision or the refusal of extension of time is not a matter that I can take into account at this stage. Similarly, I cannot take into account the outcome of the various oppositions and appeals, nor Ms Lomas' current intentions.  These are matters that are, firstly, irrelevant to her intention at the date of application for removal, and secondly, in relation to the proposed applications, not in evidence.

In the circumstances, I am satisfied that Ms Lomas was aware that her standing was disputed.  This had the effect of displacing the prima facie presumption of intention.  There being no other evidence before me as to her intention or trade activities, I am obliged to apply Drummond J's test and determine that Mr Lomas is not a person aggrieved within the meaning of s.92(1).  As such, she had no standing to bring this application for removal, and it must be dismissed.

Costs

I see no reason why costs should not follow the event.  I direct that Ms Lomas pay the costs of WM Productions Pty Ltd in accordance with Schedule 8 of the Regulations.

Geoff Purvis-Smith
Hearing Officer
Trade Marks Hearings
30 January 2003