Wolter Joose on Behalf of Joose Apparel Pty Ltd v Great White Shark Enterprises Inc

[1999] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by WOLTER JOOSSE on behalf of JOOSSE APPAREL PTY LTD to registration of trade mark application numbers 562440 and 562442 in the name of GREAT WHITE SHARK ENTERPRISES INC for SHARK device trade marks in Class 25

Background
Application numbers 562440 and 562442 were filed on 28 August 1991 in the name of GREAT WHITE SHARK ENTERPRISES INC (the applicant).  The applications were for the registration of the following device trade marks and, after amendment to the statement of goods, covered "Clothing, footwear and headgear " in Class 25.

562440  562442

Following a prolonged examination period, the applications for the trade marks were advertised as accepted in the Australian Official Journal of Trade Marks (the Journal) of 28 May 1998.  Notices of opposition to the trade marks' registration were then filed by WOLTER JOOSSE on behalf of JOOSSE APPAREL PTY LTD (the opponent) on 28 August 1998.

The notices of opposition listed several grounds. These matters were said to be under sections 57, 58, 60 and 62 of the Trade Marks Act 1995 (the Act). However, while the opponent did make some submissions in relation to the last three grounds, it was unclear what, specifically, was intended in relation to the s.57 ground - that the application may be opposed on the same grounds for rejection under Division 2 of Part 4 of the Act. The opponent's spokesman did make some submissions which referred to an earlier registration which the opponent owns. I have inferred that these submissions relate to s.44 of the Act. Since s.44 is a ground under which a mark may be rejected during examination, I think that I can consider this as being a legitimate ground relied on, although it was not expressly referred to in the notice of opposition. On 15 February 1999, two days before the hearing in the matter, the opponent sent a facsimile of a letter and other material to the Trade Marks Office in an attempt to add another ground to the opposition - this time under s.59 of the Act.

The applicant requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra on 17 February 1999.  The opponent was represented on the telephone by Mr Wolter Joosse himself.  Appearing for the applicant, also by telephone, was Mr Brett Doyle of Baker & McKenzie, Solicitors, of Sydney.

The opponent did not serve any evidence to support the grounds of opposition.

Request to add an additional ground to the notice of opposition
At the hearing, I sought answers from Mr Joosse on the matter of the late request to add the additional ground - that under s.59 of the Act, that the applicant did not intend to use, or authorise the use of the subject trade marks.  I asked him if the applicant had been served with a copy of the letter seeking to add the objection - which had only been received in the Office by facsimile on 15 February 1999.  He said that he had asked a member of the Hearings Section on 16 February to add the request to the Office file and, if it had not been received by the other side, he had no answer as to why his "instructions" had not been carried out.  Mr Doyle confirmed that the applicant had not received a copy of the letter.  Mr Joosse also referred to a copy of letter, dated 2 October 1998, allegedly sent to the Trade Marks Office and copied to Baker & McKenzie.  This document, which included submissions on the substantive matter and also whether the applicant had the legal status to make application for registration, had been included as an exhibit with the facsimile letter requesting an alteration to the notice of opposition.  I have checked the Official file but no such correspondence appears to have been received by the Office until it was included with the subject facsimile received on 15 February 1999.  Mr Doyle said that Baker & McKenzie had never received a copy of the letter.

As the additional ground was said to be supported by the contents of a letter from Baker & McKenzie, allegedly sent to Mr Joosse in 1996 - the copy of which was almost indecipherable - I asked him why he had left it until now to introduce it to the proceedings.  He said that there had been some problems in finding the letter because of his company's shift of operations and that it had only just been found.  This, he said after further questioning, constituted an error under the Act which prevented it being filed within the required time.

I adjourned proceedings for a short time to consider the matter and then verbally delivered the following decision on the amendment request - which I now put in written form - before proceeding to deal with the substantive opposition.

Decision on request to add an additional ground
The letter and attachments, sent to the Office by facsimile 15 February 1999, was presumably a request for the Registrar to amend documents under s.66 of the Act.  As such, it was a request for a favourable exercise of the Registrar's discretion.  Section 66 reads:

Amendment of other documents

66. The Registrar may, at the written request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the written request of the person's agent, amend the application, notice or document:

(a)to correct a clerical error or an obvious mistake; or

(b)if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

Regulation 6.3, which relates to such requests, reads:

Filing of declarations

6.3   If a person requests an amendment under section 64 of the Act (which deals with amendments before publication) or paragraph 66 (a) of the Act (which deals with amendment of other documents), the Registrar may require the applicant to file a declaration stating:

(a)that a clerical error or obvious mistake was made in the application; and

(b)the circumstances in which the error or mistake was made.

The amendment requested was that a new ground of opposition should be added to those included in the original notices of opposition filed.  The ground was said to be based on a letter from the applicant's attorney to the opponent, allegedly dated in 1996 - although, as I have said, this is illegible on the copy sent by facsimile with the letter requesting amendment - and also on a letter from the opponent, said to be sent to the Registrar and copied to Baker & McKenzie, on 2 October 1998 - which had apparently not been received by either the Registrar or the applicant.  Considering the basis on which it was made, I believe that the ground should have been included in the original notices of opposition dated 28 August 1998.  On considering why it was not, I have taken into account the claim by Mr Joosse that Baker & McKenzie's letter was only recently discovered because of some changes in his company's location.  He did not explain why, if it had been received in 1996, it had not been a consideration when drawing up the original notices of opposition, or when the letter had disappeared.  Nothing has been produced to support this claim in the form of a statutory declaration, or otherwise, and the timing of the request - just before the hearing - is interesting.  I have also looked at the material, said to be the basis of the opponent's case on this point, in an attempt to ascertain its relevance to the proceedings.  So far as I can tell, all that is said in Baker & McKenzie's letter, submitted as supporting material, is that the applicant was not using or intending to use a mark, "the subject of your company's (Mr Joosse's) registration".  No specific mention was made of the trade marks for which registration is sought here.  The opponent's letter dated 2 October 1998 - which was apparently not received by any party to which it was addressed - does not add anything to the proceedings, other than to include an allegation that the Trade Marks Act 1995 had not received valid Royal assent because of some doubt over the legality of the appointment of the present Governor General.

I am of the opinion that, if the amendment to the notices of opposition was allowed at this late hour, there would be a clear denial of natural justice to the applicant in the matter because it had not been aware of the application, and had not been given time to produce any submissions, or evidence in rebuttal.  Further, the application, being made two days before the substantive hearing in the matter, was arguably an attempt to ambush the other side and gain an unfair advantage in the case.  I also think that it would be against the public interest to allow an amendment which would then delay proceedings, set down with the requisite notice, to resolve the opposition to registration of the marks.

In any case, as noted before, the notices of opposition were due to be filed on 28 August 1998, three months after the date of advertisement of acceptance in the Journal.  The original notices were correctly filed within the time allowed.  Any amendments to those documents would necessitate late applications for an extension of time to file them.  No such applications have been made, nor has any been made for extensions of time to serve the accompanying material as evidence in the case.

Having given all of this material due consideration, as the delegate of the Registrar, I am of the opinion that no error or obvious mistake was made, and that it is not fair and reasonable in all circumstances of the case, as intended by s.66 of the Act, to allow the amendment to the notices of opposition.

Therefore, I refuse to allow the amendment to the notices of opposition.  The matter should now proceed, as it is based on the original notices of opposition.

Submissions on the substantive matter
Mr Joosse said, in relation to the s.58 ground, that the applicant here was not the owner of the trade marks because the opponent had owned its own mark for 17 years and that it was substantially the same as the marks here.

He said that the opposition should be upheld on the s.60 ground because the present marks were substantially identical with, or deceptively similar to the opponent's marks of the device of a shark and the words GREAT WHITE SHARK, which had acquired a reputation in Australia. He said that the latter mark, the subject of registration number 368661, had been registered since November 1981 and its presence on the Register should provide protection for it. He contended that this registration would give an implicit right to the opponent to graphically depict the shape of a shark in promoting its goods. He said that, accordingly, registration should be denied because the use of the applied for marks would lead to deception and confusion. This situation, he submitted, was exacerbated by the fact that the principal of the applicant was Mr Greg Norman, the well known Australian golfer, who allowed himself to be known by the nickname, "The Great White Shark".

On the s.62 ground, Mr Joosse said that a search with the Securities Commission had not revealed any evidence at all that the applicant was a legal entity in Australia. He alleged that the application was therefore not made in the name of a person, in accordance with the requirements of the Act.

Mr Joosse also raised the issue of the validity of the Trade Marks Act 1995, because he said that it had not received valid Royal assent.  At this point, I interrupted him to point out that this argument had been dismissed by his Honour Justice Hayne in a High Court case, on another matter involving Mr Joosse.  He said that a writ had been issued against Justice Hayne with respect to that decision, and he then made further allegations regarding the legality of the Letters Patent of the Governor General, Sir William Deane, who had signed the present Act into existence.

In his submissions in response, Mr Doyle said that, notwithstanding my previous ruling disallowing the opponent's attempt to add another ground to the those contained in the original notices of opposition, the relevant date to be considered here is the date of the lodgment of the present applications, 28 August 1991.  Therefore, any letter which may, or may not have been sent by the applicant to the opponent in 1996 had no bearing on the present proceedings.

Mr Doyle said that the s.58 ground, relating to disputed ownership of the marks, was not supported by any evidence and was merely an assertion on behalf of the opponent. He said that Mr Joosse's reference to the opponent's registration 368661, which covered the trade mark GREAT WHITE SHARK, would seem intended to support a ground under s.44 of the Act but that this section was definitely not included in the notices of opposition. He said that, in any case, there were many instances of registrations of the word SHARK and of shark devices in Class 25, and any allegations that some of these marks might form a barrier to registration would need to be separately disputed. This, he said, was not the case in the present instance.

With respect to the s.60 ground, Mr Doyle said that there was no evidence at all of the opponent's reputation in its marks. He said that merely owning a registration which might include the word SHARK, was not sufficient under this section of the Act to show that the mark had been used by its owner - merely that it had intended to use it. In any event, he said that owning a registration, which included such a word, did not give rights to its proprietor in relation to other marks, which might include the device of a shark.

On the ground under s.62, that the applicant had wrongly claimed to be a "person", as defined by the Act, and was therefore ineligible to apply for registration, Mr Doyle said that a foreign corporation only needed to be registered with the Australian Industries and Securities Commission if it was itself conducting business in Australia and that there was no prohibition on such a body owning property, including intellectual property. He said that such an allegation was equivalent to saying that an individual, who was not an Australian citizen, could not own an Australian trade mark. This he said was clearly untrue and was unsupported by any precedent case law.

Mr Doyle closed his submissions by seeking costs in the matter on behalf of the applicant.

Analysis
I will now consider the matter, in relation to the four grounds contained in the original notice of opposition, filed on 28 August 1998, viz. ss.57, 58, 60 and 62.

Section 57

This section reads:

Registration may be opposed on same grounds as for rejection

57. The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4, except the ground that the trade mark cannot be represented graphically.

Nothing has been submitted in the form of evidence to support this ground. As it stands, it would appear somewhat ambit in nature as an objection to registration and I cannot determine accurately on what part of Division 2 of Part 4 of the Act the opponent meant to rely. However, Mr Joosse did make reference to the opponent's registration number 368661 during his submissions. I will make the assumption here that this might have been intended to be in relation to s.44 of the Act, and that this was the focus of the opponent's s.57 ground of opposition. Mr Doyle contended that a ground under s.44 of the Act was not mentioned in the notice of opposition and therefore should not form part of the proceedings.

However, as I have said, despite the ambiguity of a ground being based generally under s.57, Mr Joosse did make submissions regarding the opponent's previous registration for the words GREAT WHITE SHARK and Mr Doyle responded briefly in relation to whether such a mark should be considered a bar to the present marks' registration. I think that it is also in the public interest to explore claims of the presence on the Register of a substantially identical or deceptively similar trade mark. Therefore, I will discuss the issue, as it relates to a ground under s.44.

Section 44, as it is relevant here, reads:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)the applicant's trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

There is no doubt that the goods contained in the specifications of the respective trade marks of both parties are the same.  They all cover clothing in Class 25.  The applicant's registered mark, number 368661, for the words GREAT WHITE SHARK, is registered from 26 November 1981 in Class 25 and, quite obviously has an earlier priority date than the present applications.  Mr Joosse said that this should preclude the registration of the present marks because they comprise shark devices.

When deciding whether or not competing trade marks are substantially identical, or deceptively similar in relation to each other, the tests are conveniently laid out in such cases as Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, and Shell Co of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, where, in the latter case, Windeyer J said, at 414-415: (in relation to substantial identity)

...(the marks should) be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison,

and, (in relation to deceptive similarity)

The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

I have compared the marks in question side by side, as per the tests expounded by Justice Windeyer in the Shell case, supra.  They are, on one hand, the opponent's mark, the words GREAT WHITE SHARK, and on the other, the shark devices pictured on page one of this decision.  The latter devices are definitely depictions of sharks but there is nothing to say that they are Great White sharks.  Therefore, I cannot agree that they are substantially identical with opponent's word mark.

With respect to deceptive similarity, I must now consider whether a person of normal intelligence and memory would retain the same impression based on the recollection of both the respective parties' marks.  As I have said above, I have not been presented with any evidence that the sharks, pictured in the present applications, are Great Whites, or whether they even resemble such fish.  In any case, the registration of the name of a particular fish, bird or animal does not necessarily preclude other applicants from registering their own depictions of such creatures - unless it is shown conclusively that they are substantially identical with, or deceptively similar to the earlier marks - c.f. the plethora of KANGAROO trade marks grazing peacefully together on the Register.  As Mr Doyle said, there are many trade marks which include shark devices and the word SHARK, already coexisting on the Register.  Taking this into consideration, there is nothing before me to show that the applied-for trade marks are any more deceptively similar to the applicant's earlier mark than those extant registrations.  Accordingly, I think that someone who knew of the opponent's trade mark would not carry away the same impression when confronted with the present marks.  I therefore cannot agree that the subject device trade marks are deceptively similar to the opponent's word trade mark.

Consequently, I must find that the opponent is not successful on the s.44 ground and, it follows, the s.57 ground of its opposition.

Section 58
This section reads:

Applicant not owner of trade mark

58.  The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The term "owner" in the Trade Marks Act 1995 equates to that of " proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)the person claims to be the owner of the trade mark; and

(b)one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

The basis of a claim to proprietorship (ownership) of a trade mark was explained by McGarvie J who said in Settef S.p.A. v Riv-Oland Marble Co ( Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83.

...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia (for relevant services and prior to the date of application) becomes the owner at common law.  That ownership, however, is limited to "the same kind of thing", as per Holroyd J in Hicks’ case (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that services of a particular trader are being offered for sale, in Australia, under the trade mark.

In short, the ownership of a trade mark, so far unused, has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and by applying for its registration.  Once again, there is simply no evidence before me to show that the applicant is not the author of the trade marks applied for, did not, at the time of filing, have an intention to use or license the marks when it made its application for registration.  Equally, there is nothing to show that the opponent had made prior use of a substantially identical trade mark to the marks applied for here, and on the same kind of goods, before the applicant did so, sufficient to establish common law rights in that mark - as per the Settef S.p.A. v Riv-Oland Marble Co ( Vic) Pty Ltd case, supra.  Mr Joosse did claim that his company had used a mark which was substantially the same as the applicant's marks for 17 years but this, as Mr Doyle submitted, is without corroboration, and can only be regarded as an assertion.

I can only find, given such a situation, that the opponent fails on this ground of its opposition.

Section 60
This section reads:
Trade mark similar to trade mark that has acquired a reputation in Australia

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

I have previously discussed, in relation to the s.44 ground of opposition, the tests laid down in the case law in relation to whether competing trade marks are substantially identical, or deceptively similar in relation to each other.  I have already found, in considering the s.44 matter, that the words THE GREAT WHITE SHARK and the applicant's shark devices are neither substantially identical with, nor deceptively similar to each other.  Notwithstanding this, I have nothing before me in evidence to show what the opponent's other mark, the "shark device", looks like and I therefore have no basis for alternatively finding that it is either substantially identical with or deceptively similar to the applicant's marks.

In any case, s.60 of the Act is essentially concerned with two elements: whether the competing trade marks are substantially identical, or deceptively similar; and then whether, because of a reputation residing in the opponent's mark, the use of the applicant's mark would be likely to lead to deception and confusion. In assessing that reputation, the relevant date referred to is the date of filing of the present application - as per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

The initial onus is indeed on the applicant to satisfy the Registrar that there is no reasonable probability of confusion - as per Kitto J in the Southern Cross decision, supra, at pp.594-5. However, common sense should be utilised when applying this rule. It is accepted law that the risk of that deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

Simply asserting that there is sufficient reputation to cause deception and confusion is not enough. It must be shown to be the case. However, there is no evidence whatever before me to show that the opponent had such an established reputation, as at the relevant date, in its marks sufficient to deceive or confuse, as contemplated by s.60.

Taking all the above into consideration, I find that the opponent has not been successful in opposing the present trade marks' registration under the s.60 ground of opposition.

Section 62 (specifically s.62(b))

This section reads:

Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:

(a)that the application, or a document filed in support of the application, was amended contrary to this Act;

(b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

The opponent has not put in any evidence to support any of its assertions with respect to this ground.  Mr Joosse has said that he made investigations with the Australian Industries and Securities Commission and could not find any references to the applicant.  He said that, on that basis, the applicant's claim to be a person, in terms of the Trade Marks Act 1995, meant that it had made a false claim, in applying for its trade marks, as being such an entity.  However, s.6 of the Act simply says that a person includes a body of persons, "whether incorporated or not".  What is important here is that an application must be made by a person in a position to claim ownership of the mark.  Nothing has been produced here to show that the present applicant is not such a person .  That entity may not, itself, have used the mark in Australia but could well have come to a licensing agreement with some other party, who may have used the mark locally.  As Mr Doyle said, a foreign corporation may own property in Australia; it is only when it seeks to carry on trade or commerce in its own right, does it need to seek registration with the Australian Industries and Securities Commission.

I find that it is therefore the case that the applications here were not made on the basis of a false claim and I therefore dismiss this ground of opposition.

Conclusion
I have found that the opponent has not been successful on any of the grounds on which it relied upon in the notices of opposition.  I therefore dismiss the oppositions in total.  It follows that, subject to any appeal from the decision, the applications should now proceed to registration.

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that the opponent pay the applicant's costs in the matter, in accordance with the Official scale.

Ian Forno
Hearing Officer

11 June 1999