Zhejiang Cereals, Oils & Foodstuffs Import & Export Company Limited v Oriental Merchant Pty. Limited
[2010] ATMO 68
•30 July 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Zhejiang Cereals, Oils & Foodstuffs Import & Export Company Limited to registration of trade mark application 1092240(29) - DALI BRAND - filed in the name of Oriental Merchant Pty. Limited.
Delegate: John Spence Representation: Opponent: Mr. Scott Vile of Wrays, Patent and Trade Mark Attorneys
Applicant: Mr. Toby Yiu of Holding Redlich, Lawyers (Melbourne office)Decision: 2010 ATMO 68
Section 52 Opposition – Section 58 ground of opposition pressed and considered – competing interests of overseas supplier and local distributor considered – the nature of ownership discussed – ground of opposition allowed – registration refused – no costs awarded.Background
By way of summary, the relevant background to this matter is as follows. On 22 December 2005 Oriental Merchant Pty. Limited (“the Applicant”) filed an application for registration in respect of the following trade mark, namely:
This application is numbered 1092240 and it is located in Class 29. Initially the relevant specification of goods was worded “Mushrooms including dried mushrooms”. The examiner’s first report issued on 8 January 2006 and an objection was raised based on the resemblance of the trade mark to the prior conflicting registration No. 776471 “DALI OIL” AND DEVICE (held by the company Oleicola de Lebre, S.A. which is not a party to these proceedings). The response of the Applicant to that objection led to the issuing of a second examiner’s report following which the Applicant made further sub missions including evidence of honest concurrent use together with the requesting of an amendment to the specification of goods to read “Dried mushrooms”. Following those submissions, the “DALI BRAND” application was advertised in the Official Journal of Trade Marks dated 19 July 2007 as having been accepted for possible registration. As a condition of acceptance, No. 1092240 was made subject to the entry of an endorsement to the effect that the Chines characters appearing in the mark may be transliterated as DALI and translated into English as “Achieve Profit”.
Subsequently Zhejiang Cereals, Oils & Foodstuffs Import & Export Company Limited (“the Opponent”) proceeded to oppose the granting of registration and the Notice of Opposition was filed on 11 October 2007 pursuant to the provisions of Section 52 of the Trade Marks Act 1995 (“the Act”). The procedural steps of filing evidence in support and evidence in answer were taken by each party but no evidence in reply was provided by the Opponent within the prescribed period. In due course, by official notices dated 26 October and 9 December 2009, the parties were informed that since the evidence in reply was overdue and since neither party had requested that the matter be set down for hearing within the requisite time which had been allowed, the matter was being given to a Delegate for the issuing of a decision based on the written record. Accordingly, I have been delegated to determine this opposition and without a formal hearing taking place. My decision in this matter now follows.
The Written Record
In this instance, the written record and the materials on which I have reached this decision comprise:
·Notice of Opposition filed on 11 October 2007;
·Evidence in support filed on 11 July 2008 and comprising the Statutory Declaration of Zhu Ge Yuan made on 2 July 2008;
and
·Evidence in answer filed on 14 April 2009 and comprising the Statutory Declarations of Bernard Tat-Kin Yiu (made on 8 April 2009), Gordon Wu (made on 14 April 2009) and Michael Halliwell (made on 14 April 2009).
The Opponent is represented by Mr. Scott Vile of Wrays, Patent and Trade Mark Attorneys, while the Applicant is represented by Mr. Toby Yiu of Holding Redlich, Lawyers (Melbourne office). No written submissions were received from either party.
The Evidence
Turning attention to the facts of the matter, the evidence establishes the following.
The Opponent is described as “the largest foreign trade enterprise in China’s Zhejiang Province”. That enterprise is engaged in the export of more than four hundred items or product lines which are offered for sale under a multiplicity of brands including a trade mark rendered in corresponding form to the “DALI BRAND” mark of the Applicant (including the same Chinese characters),, and it generates revenue (presumably turnover) of a significant order in respect of all sales which are made by it. The Opponent is a global exporter with trade ties in approximately ninety countries including Australia. In relation to mushrooms, the Opponent purchases the raw produce from farmers and suppliers, it processes and packages the mushrooms, it brands the finished product with the “DALI BRAND” trade mark, and it then exports the goods to distributors under the “DALI BRAND” mark.
The “DALI BRAND” trade mark was adopted by the Opponent around 1987 and it has been used continuously since that date both in The Peoples Republic of China and in overseas countries. In Australia the initial use of the “DALI BRAND” mark commenced in 1990 and the Opponent claims to be the first party to have used that mark in relation to mushrooms in this country. By way of supporting evidence, the Opponent has annexed copies of Sales Contract documents between the Opponent and distributors pertaining to transactions which took place during the period from 5 October 2004 to 10 November 2005. It is not made clear whether those Sales Contracts are exhaustive in nature in indicating the only such sales which have occurred in Australia or whether there exist other and additional documents referring to sales in this country. In any event, the Opponent’s evidence is to the effect that the “DALI BRAND” trade mark has been used by it on goods which the Opponent has produced and supplied into the Australian market-place in respect of a range of goods including mushrooms.
The majority of those Sales Contracts have been entered into between the Opponent and the Applicant so that there is evidence of the existence of a supply arrangement between the Opponent (as supplier) and the Applicant (as distributor). There is no evidence before me of any formal Distribution Agreement or Licensing Agreement (that is, in writing) between those parties. However there is sufficient evidence that an established business relationship has existed between the Opponent and the Applicant over an extended period of time. As well, the evidence indicates the existence in Australia of at least one other customer or importer of the Opponent in respect of mushrooms bearing the Opponent’s “DALI BRAND” trade mark, namely the company HOA Australia Pty. Limited of Mulgrave, Victoria. Specifically, the Sales Contract dated 8 June 2005 establishes the supply to that party by the Opponent of forty cartons of “DALI BRAND” mushrooms at a cost of $US4,400.00, a transaction which took place at a point in time earlier than the priority date of the present application.
In its evidence, the Opponent indicates that it holds registrations of the “DALI BRAND” trade mark in Canada, the U.S.A. and the United Kingdom, that it intends to continue using that mark extensively throughout the world including Australia “to promote an assortment of goods including mushrooms”, and that it is the rightful owner of the “DALI BRAND” trade mark. The Opponent has its own web site on which the “DALI BRAND” trade mark appears, and that mark also features on the web sites of other parties as indicating the goods of the Opponent.
For its part, the Applicant has provided the following evidence. The Declaration of Bernard Yiu states that the Applicant is a leading importer and distributor of Asian grocery products in the South Pacific region and that it has a significant reputation in Australia both within the grocery industry and with consumers as the result of supplying over 2,500 Australian supermarkets nationally for retailers (including Woolworths, Coles, Safeway, IGA and Franklins) as well as 95% of independent retailers of Asian groceries. The Applicant claims to have pioneered the concept of the “Asian Food Section” (being dedicated specifically to the sale of Asian food products) in Australian supermarkets and it is currently the category leader in supplying 62% of Asian foods to supermarkets.
The evidence of Mr. Yiu is that the “DALI BRAND” trade mark was not used in the Australian market prior to the rollout of the “Asian Food Section” concept. The Applicant does not deny that the relevant goods bearing the “DALI BRAND” trade mark are supplied to it by the Opponent and that payment for those goods is made by the Applicant to the Opponent (paragraphs 24-26 of the Yiu Declaration). However the Applicant places reliance on the fact that the Applicant “designed the Product’s packaging” and provided “all instructions regarding the packing of the Product under the Trade Mark” (paragraph 14 of the Yiu Declaration). The Applicant has made available for sale the relevant products “under and by reference to the Trade Mark” and it has conducted advertising and promotional activities in respect of same. The essential argument of the Applicant is that members of the general public in Australia exclusively associate the “DALI” BRAND trade mark with the Applicant so that the substantial goodwill and reputation which has been established in respect of that mark has accrued in favour of the Applicant.
At paragraphs 18–23 of the Yiu Declaration, a challenge is mounted to the credibility of the annexure “ZGY-01” of the Opponent’s evidence and the several Sales Contract documents which are therein provided. In particular the assertion is made that those endorsements or signatures appearing on each of the Sales Contracts, and purportedly being the signatures of an authorised representative of the Applicant, are not the handwriting or signature of any such person. The suggestion or inference which follows is that the Sales Contract documents on which the Opponent relies are forgeries and that they should be disregarded. There is an obvious answer which refutes this allegation and which follows from the evidence itself. My perusal of the evidence leads to the observation that each of the Sales Contracts as provided by the Opponent in the Annexure “ZGY-01” matches up with one of the corresponding or counterpart Invoices which are made available by the Applicant in the Annexure “BY-04”. In this regard, I note that each Invoice has an identifying Contract Number (located in the top right-hand corner) and that in each instance the Contract Number of an Invoice (as well as the information shown and provided in that document) matches the Contract Number which appears in each corresponding Sales Contract document as provided by the Opponent.
In short, it may well be that the actual signatures appearing on each Sales Contract document and the veracity of same are in dispute and open to question. However, as a factual matter, the existence of that transaction which is referred to and identified in each Sales Contract and the terms and substance of same, and of which the Sales Contracts provide evidence, would seem to be agreed and common ground between the respective parties. The Invoices which are contained to in Annexure “BY-04” as part of the Applicant’s evidence serve to provide confirmation, verification and corroboration of those Sales Contract documents which constitute the Annexure “ZGY-01” of the Opponent and of the information which is contained in them. Moreover each relevant Sales Contract (and each corresponding Invoice) establishes the Applicant as a buyer or customer of the Opponent, and each relevant transaction falls within the period before the priority date of the present application.
The remaining evidence on which the Applicant relies (being the Statutory Declarations of Gordon Wu and Michael Halliwell) does not extend beyond considering the issue of the authenticity or otherwise of the signatories to the sales Contract documents, and as such that evidence is of limited assistance.
Much of the contents of the evidence upon which the Applicant relies is of limited relevance to the matter which is presently before me, including:
·The reputation and standing of the Applicant within the grocery industry as an importer and distributor of Asian grocery products, its standing as an importer of a number of household brands (other than “DALI BRAND” products), and its role in developing the “Asian Food Section” concept as adopted by supermarkets around Australia;
·The issue as to whether or not the use of the “DALI BRAND” trade mark in Australia commenced with the roll-out of the “Asian Food Section” concept and occurred in conjunction with that concept (such use not being determinative of the issue of the ownership or title in respect of the “DALI BRAND” trade mark);
·Those costs and expenses which have been incurred by the Applicant in advertising and promoting the “DALI BRAND” trade mark;
·The negotiating of special “deals” with supermarket retailers;
and
·The fact that the relevant packaging does not specifically identify the Opponent (although that packaging does bear the statement “Imported and distributed by . . .” thereby making it clear that the relevant products have their origin elsewhere).
In relation to the evidence generally, there is no apparent argument or dispute by the Applicant that it was supplied by the Opponent with goods (being mushrooms) bearing the “DALI BRAND” trade mark. Indeed the materials which comprise the Annexure “BY-04” attest to that fact. By its own admission (see paragraph 13 of the Yiu Declaration), the Applicant acknowledges that the supply of the relevant mushroom products was obtained by means of the engaging of a “middle man” to source appropriate suppliers (such suppliers including, apparently on a non-exclusive basis, the Opponent and the “DALI BRAND” trade mark). The arrangement is described by Mr. Yiu as one of “contract packing”, with the Opponent supplying the relevant goods pursuant to directions provided by the Applicant. However the Applicant does not go so far as to provide materials which substantiate that the “DALI BRAND” trade mark was devised by it and applied to the relevant goods pursuant to its instruction or that the said mark did not belong to the Opponent. In particular, the Applicant offers no satisfactory explanation as to the origin, derivation, authorship, significance and meaning of the “DALI BRAND” trade mark. There is nothing in the evidence which establishes the proper entitlement of the Applicant in respect of the “DALI BRAND” trade mark either in Australia or elsewhere or which substantiates that the Applicant can properly claim to be the owner of same.
In passing, I express the observation that there are points of inconsistency between the evidence of the Opponent and that of the Applicant. Where such inconsistencies occur, and as a general statement, I find the explanation given by the Opponent to be the more probable, credible and preferred account of the situation.
Reasons
Being by way of a decision on the written record (and as distinct from a formal hearing), I would not ordinarily set out detailed reasons for my decision. Moreover I need only find that one ground of opposition has been satisfied in order for the Opponent to be successful. Nonetheless, because of the particular situation in this instance and the business relationship which exists between them, the parties are entitled to an explanation as to the position which I have reached.
For its part, the Opponent bears the onus of establishing at least one of the grounds as stated in the notice of opposition and on the balance of probabilities (see Pfizer Products Inc. v. Karam (2006) 70 IPR 599 per Justice Gyles at paragraphs [6] to [26].
The Opponent has included grounds of opposition pursuant to Sections 41(20, 42(b), 43, 44, 58, 58A, 59, 60, 62(a), 62(b) and 62A of the Act. I propose to direct attention specifically to the most obviously applicable ground (namely, Section 58) and in so doing I would advance the following reasoning.
Section 58
The wording of this Section of the Act provides as follows:
58. Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
In order for the Section 58 ground to be successfully made out the Opponent must establish the necessary elements, namely that before the priority date of the opposed application (that is, 22 December 2005 in this instance) or the first date of actual use of the mark in question by the Applicant (whichever is earlier), there has occurred the use in Australia of a “substantially identical” trade mark (see Carnival Cruise Lines v. Sitmar Cruises Limited (1994) 31 IPR 375. The requisite use must be in respect of goods or services which are considered to be the “same kind of thing” (Re Hicks’ Trade Mark (1897) 22 VLR 636) as those items which are claimed in the Applicant’s specification of goods or services.
In the present instance, those elements are indeed satisfied. The respective trade marks appear to me to be identical. Both marks feature the words “DALI BRAND” (rendered in corresponding stylised script) and the same Chinese lettering (which translates as “Achieve Profit” or equivalent). As well, the relevant marks are adopted and used in respect of the same goods (namely, mushrooms). So, those elements which are required to be made out in order to invoke the application of Section 58 are in place.
The law in this instance is clear and decided, and those legal principles which are relevant are well-established and certain[1]. A useful starting-point is provided by the now-familiar statement of Justice Williams (at first instance) in The Seven Up Company v. O.T. Limited (1947) 75 CLR 203 at 211, namely:
[I]n the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act [1995] of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act [1995] because it is not his property but the property of the foreign trader.
To similar effect in the United Kingdom, in The New Atlas Rubber Company Limited’s Trade Mark (1918) 35 RPC 269 at 275 Justice Astbury observed:
It was contended on behalf of the Respondents, that if territorial, the same mark may exist in different countries, registered in different people’s names. That is quite true as a bald statement. There may be cases, of course, where a man in this country may innocently register a mark which happens to be a Trade Mark of some foreigner in some foreign country. It certainly is not a practice to be encouraged, and very little is required to prevent such a registration, if the facts are known to the Registrar, from being permitted. But it is perfectly plain that, if there has been user in this country by, or on behalf of, the foreign owner of the mark, then the person who has so used that mark, as agent for and on behalf of the foreign owner, cannot appropriate it as his property by registration. An importer cannot register the foreign manufacturer’s foreign mark. (See the Apollinaris Case (1891) 2 Ch. 186 at 226.)[2]
[1] In this regard, for Court cases involving the competing interests of an overseas trade mark owner and a local distributor see Blackadder v. The Good Roads Machinery Company Inc. (1926) 38 CLR 332, Farley (Australia) Pty. Limited v. J.R. Alexander & Sons (Q) Pty. Limited (1946) 75 CLR 487 at 492, The Seven Up Company v. O.T. Limited (1947) 75 CLR 203, The Shell Company of Australia Limited v. Rohm & Haas (1949) 78 CLR 601, Re Registered Trade Mark “Yanx” (1951) CLR 199, WD & HO Wills (Australia) Limited v. Rothmans Limited (1956) 94 CLR 182, Aston v. Harlee Manufacturing Company (1960) 103 CLR 391, Kendall Company v. Mulsyn Paint & Chemicals (1962) 109 CLR 300, Estex Clothing Manufacturers Pty. Limited v. Ellis & Goldstein Limited (1967) 116 CLR 254, Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Limited (19740 131 CLR 592, James North Australia v. Blundstone Pty. Limited (1978) 48 AOJP 2419, Moorgate Tobacco Company Limited v. Philip Morris Limited (No. 2) (1984) AIPC 90-141; 31 IPR 545; 59 ALJR 77, Settef SpA v. Riv-Oland Marble Company (Vic.) Pty. Limited (1988) AIPC 90-516 (at first instance); (1988) AIPC 517 (on appeal), Malibu Boats West Inc. v. Catanese (2000) 51 IPR 134, Winton Shire Council v. Lomas (2002) AIPC 91-794 (at 37,575-7) and Colorado Group Limited v. Strandbag Group Pty. Limited (2008) AIPC 92-272 at paragraphs 87-90. In addition, decisions of the Trade Marks Office on this point include Big Spielwarenfabrik v. Kenbrite Corporation Pty. Limited (1979) 49 AOJP 2419, Hermes S.A. v. E.T. Swift & Company Pty. Limited (1984) 2 IPR 432, Rolewa Rentals Pty. Limited v. Champagne Moet et Chandon (1985) 5 IPR 171, Re Application by Boundy Insulations Pty. Limited (1987) AIPC 90-415, Kronberg Isager v. Boboli International Inc. (1990) 18 IPR 526, Sizzler Restaurants International Inc. v. Sabra International Pty. Limited (1990) 20 IPR 331, Agricultural Dairy Industry Authority of Epirus Dodoni S.A. v. Dimtsis (1991) 22 IPR 643, Freighter (Aust.) Pty. Limited v. Freightliner Corporation (1992) AIPC 90-862, Olympic Amusements Pty. Limited v. Kabushiki Kaisha Sigma (1995) AIPC 91-155, Associated Retailers Limited v. Red/Green A/S (1997) AIPC 91-380, Challenge Engineering Limited v. Fitzroy Milk Tanks Pty. Limited (1998) AIPC 91-418, Chrysler Corporation v. Grundy (2000) 53 IPR 448, Eastern Suburbs Timber Pty. Limited v. Interlock Industries Limited (2000) AIPC 91-558, Geoffrey Inc. v. MHS Engineering Pty. Limited (2005) AIPC 92-108, Marco Polo Foods Pty. Limited v. Benino Fine Foods (Australia) Pty. Limited (2005) AIPC 92-108 and Estate of Vince Maloney v. Vince Maloney (Hayman) Pty. Limited (2006) AIPC 92-148.
[2] The relevant British authorities in this regard include In re Apollinaris Company’s Trade Marks (1891) 8 RPC 137, New Atlas Rubber Company Limited’s Trade Mark (1918) 35 RPC 269, Impex Electrical Limited v. Weinbaum (1927) 44 RPC 405, Re Inescourt’s Trade Mark (1928) 46 RPC 13, AB Manus v. Fullwood & Bland (1946) 66 RPC 71, Vitamin Limited’s Application (1956) RPC 1, “Gynomin” Trade Mark (1961) RPC 408, “Zoppas” Trade Mark (1965) RPC 381, “Quiet May” Trade Mark [1967] FSR 27 and Re Diehl Trade Mark (19700 RPC 435. In addition, passing reference is made to the New Zealand case of North Shore Toy Company Limited v. Charles L. Stevenson Limited [1973] 1 NZLR 562 and the Singapore decision of Tai Muk Kwai v. Luen Hup Medical Company (1988) 14 IPR 484.
In relation to those decided cases which involve the purported registration by Australian traders of the trade marks of foreign parties, the Courts in this country have adopted a consistent approach in confirming that a local trader could deliberately and successfully appropriate a foreign trade mark which has not yet been used in Australia. That outcome comes about because neither the existence of foreign registration nor foreign use of a mark serves to create proprietary rights in Australia. As stated by Justice Williams in Re Registered Trade Mark “Yanx”: ex parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199 at 202:
To try to register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law.
So, at least in theory, it could well be open for the Applicant to succeed in obtaining registration of the “DALI BRAND” mark.
At the same time, the Courts in this country have evinced a readiness to identify some defect, shortcoming or flaw in such a claim to ownership. As stated in Aston v. Harlee Manufacturing Company (1960) 103 CLR 391 at 400, “the courts frown on these borrowings from abroad” (see also Riv-Oland Marble Company (Victoria) Pty. Limited v. Settef SpA (1988) 12 IPR 321 at 354). The presence of factors such as fraud, breach of confidence, breach of a fiduciary duty owed to the foreign owner, or breach of contract have provided grounds for successful objection.
In addition, there have been occasions where the Courts have considered the extent to which the intention of an applicant to use a trade mark can be said to demonstrate a failure to act in good faith. Of particular relevance in this context is the statement of Justice Williams in the Seven Up case (and as earlier quoted) that the Courts will seize upon “a very small amount” of prior use in Australia by the foreign owner. The nature of such use has subsequently received further consideration in Moorgate Tobacco Company Limited v. Philip Morris Limited (No. 2) (1984) AIPC 90-141 where Justice Deane observed:
The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person. The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act
It is well-established that the Courts are prepared to recognise and give effect to a broad interpretation of that range of prior transactions which can be described as providing evidence of “trade mark use” (see, for example, Blackadder v. Good Roads Machinery company Inc. (1926) 38 CLR 332, Re Registered Trade Mark “Yanx”; ex parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199 and Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Limited (1974) 131 CLR 592 ).[3]
[3] For a useful summary of the broad position under Australian law, see the decision of Hearing Officer Homann in Associated Retailers Limited v. Red/Green A/S (1997) AIPC 91-380 at 39,946.
There is a further aspect of this issue. Under the Act, the notion of “ownership” (or “proprietorship” as it was in the previous Trade Marks Act 1955) is embodied in the wording of Section 58. The meaning of this concept is considered by Justice Dixon in Shell Company of Australia Limited v. Rohm and Haas Company (1949) 78 CLR 601 at 625 et seq., by Justice Fullagar in Aston v. Harlee Manufacturing Company (19600 103 CLR 391 at 398-399 and by Justice Allsop in Colorado Group Limited v. Strandbags Group Pty. Limited (2008) AIPC 92-272 at paragraphs 84-87. More recently, the notion of “ownership” has been considered by Justice Collier (at first instance) in Television Food Network, GP v. Food Channel Network Pty. Limited (No. 2) (2009) AIPC 92-339 where (at paragraph 39) her Honour stated as follows:
It is settled law in Australia that “ownership” of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user (Colorado Group Limited v. Strandbags Group Pty Ltd (2008) AIPC 92-272; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co. 2008) ).
Summarising the statements made in those decisions, the relevant principles may be expressed as follows. The right to registration depends upon ownership of a mark. The concept of “ownership” is a difficult one. Ownership may be established by use. In other words, an applicant may establish its entitlement to be recorded as the registered owner of a trade mark by virtue of the reputation which the applicant claims in respect of that mark and which has been acquired through actual use. Where a trade mark is so far unused, the situation gives rise to somewhat different considerations and in that event the basis of a claim to ownership is said to be founded in the combined effect of authorship of the mark, the intention to use it upon or in connection with the relevant goods or services, and the applying for registration (per Justice Dixon in the Rohm and Haas case (op. cit. at 627).
“Authorship” is said to involve “the origination or first adoption of the word or design as and for a trade mark” (per Justice Dixon in the Rohm and Haas case, op. cit., at 628). As explained by Justice Fullagar in Aston v. Harlee Manufacturing Company (op. cit., at 399), the authorship of a trade mark does not mean that the applicant must have been “the true and first inventor” or have “thought of it first”. An applicant may yet be the author of a trade mark even though he has deliberately copied or adopted a mark registered in a foreign country in respect of goods or services of the same description. For this purpose, “local authorship” will suffice. However the essential requirement to a valid claim to ownership of a trade mark in Australia is that no other party can be said to have acquired a prior right to use that mark in this country in respect of the goods or services in question.
The notion of ownership (or proprietorship as it was formerly referred to) received consideration in the early decision of In re Hicks’s Trade Mark (1897) 22 VLR 636 where Justice Holroyd observed:
. . . In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed. . . .
It is well-recognised that the basic legal principle in relation to trade marks is that the first person to adopt and use a trade mark of an appropriate type within a country becomes the owner of the mark there (see, for example, Justice McGarvie in Settef SpA v. Riv-Oland Marble Company (Victoria) Pty. Limited (1987) 10 IPR 402 at 413). A person who becomes the owner of a trade mark in this way is entitled at common law to restrain a person who later commences to use that trade mark. As Justice Dixon stated in the Rohm and Haas case (op. cit., at page 628):
A man cannot be said to have adopted a name if someone else has done so before him.
In this regard, reference is also made to Justice Spender at first instance in Winton Shire Council v. Lomas (2002) AIPC 91-794 at paragraph 43. As to the extent of use which is required prior to the priority date, it is clearly established that a very small amount of use will suffice (see Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Limited (1974) 131 CLR 592).
Turning to the matter which is presently before me, from my understanding of the state of the existing authorities it is clear that if the Applicant as an uninvolved third party had encountered the “DALI BRAND” trade mark in use overseas and had sought to obtain registration of that mark in its own name in Australia and in the absence of anything further, then it would have been open to the Applicant to obtain and hold registration of that mark in this country. However such is not the situation in this instance. Rather, the Opponent has established its ground of opposition in at least three ways. The Opponent has established use of the “DALI BRAND” trade mark in Australia (by virtue of sales made by the Opponent both to the Applicant and to the entity HOA Australia Pty. Limited) at a point in time which precedes the priority date of the present application. Moreover the Applicant is neither the author nor the owner of the “DALI BRAND” trade mark. Rather, the available evidence indicates that the Opponent is the author of the mark. In addition, there has been an existing relationship and an established history of business dealings and commercial transactions between the respective parties and over an extended period of time. As such, the Applicant was familiar with the Opponent and with the Opponent’s interest in the trade mark and at all times the Applicant was well-aware of the realities of the situation. In this regard, I refer to the quotation of Justice Astbury in the decision of In the Matter of Trade Mark of the New Atlas Rubber Company Limited (1918) 35 RPC 269 at 275 which has earlier been stated (see above at page 8). In addition I draw support from the words of Justice Windeyer in Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited (1966) 116 CLR 254 at 267, namely:
The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.[4]
[4] This extract is quoted in the decision of the High Court in E & J Gallo Winery v. Lion Nathan Australia Pty. Limited (2010) AIPC 92-381 at 36,790 (paragraph 46) in the joint judgment of Chief Justice French and Justices Gummow, Crennan and Bell.
Decision
Such entitlement as may be said to exist on the part of the Applicant to seek, obtain and hold registration of the “DALI BRAND” trade mark must be based on a claim to ownership. The Opponent bears the onus of establishing that under Section 58 the Applicant is not the owner of the mark. I am satisfied that in this instance the onus is met and that the Opponent has established the ground of opposition pursuant to Section 58. In this instance the Applicant, not being properly entitled to be regarded as the owner of the “DALI BRAND” trade mark, is unsuccessful. Nothing established by the evidence serves to substantiate the claim on the part of the Applicant to be entitled to hold registration in respect of the pending application No. 1092240 and in its own name.
On this occasion the elements of Section 58 are made out, and the Opponent is successful in these proceedings. Accordingly, I refuse to register Application No. 1092240 “DALI BRAND”.
The grounds of opposition pursuant to Section 58 having been established, I do not need to consider or determine the remaining grounds.
John Spence
Hearing Officer
Trade Marks Hearings
30 July 2010
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