Case: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402
Outcome: cited
is not in contention that s 27 of the Act requires that there be, inter alia , use of the trade mark "in relation to the goods and/or services." As Mansfield J observed in Philmac Pty Ltd [2002] FCA 1551 ; (2002) 126 FCR 525 at 539-540 it is necessary that the trade mark applicant was using or intended to use the trade mark as a trade mark. Whether a trade mark is used as a trade mark is judged objectively ( Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438 ; (2004) 61 IPR 242 at 248-249). Thus, for example, there is authority that preliminary discussions and negotiations about whether the mark should be used ( Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414) , forwarding of samples or brochures in order ascertain whether there is a market for the relevant goods or services (cf Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 417-418), and distribution of a product free of charge (cf re Ferodo Ltd's Application (1945) 62 RPC 111) do not constitute "use" of a trade mark as contemplated by the legislation. The respondent submitted that giving away recipes could constitute use of a trade mark in trade or commerce and relied on findings of Drummond J in Oakley, Inc v Franchise China Pty Ltd ACN 080 032 604 (2003) 58 IPR 452 , in particular at [30] where his Honour said: That marked goods are supplied free of charge does not necessarily mean that the mark is not being used in the course of trade. That is shown by the free sample cases, such as Settef . The Irish Supreme Court, in Golden Pages Trade Mark [1985] FSR 27 , held that marked classified telephone directories distributed by the Post Office free of charge to telephone subscribers involved use of the mark by the directory publisher "in the course of trade": the publisher engaged in this activity to earn income from the sale to traders of advertising in the directory... Golden Pages was referred to with approval by Whitford J in "Visa" Trade Mark (1985) 102 RPC 323. I consider it correctly states the law. While it is not in contention that use of a trade mark on free trade samples may be trade mark use in relation to those goods, the applicant submits that the evidence does not disclose use of the trade mark in relation to goods and services within class 16 and that the respondent's reliance upon Oakley (2003) 58 IPR 452 in this context is misplaced. I agree. "Use" of trade mark 967804 by the original trade mark applicant, The Food Channel Pty Ltd, in the sense that the trade mark has been applied to written documents such as menus or recipes used in relation to catering services (which would be registrable in class 43) or free gifts in the promotion of, for example, meat (which are goods registrable in class 29), is not use in the sense of trade or dealing in relation to these documents. None of these uses appear to be with respect to "printed publications" within class 16 in relation to which application for registration of the trade mark was made. I do not consider that the respondent has demonstrated use by The Food Channel Pty Ltd, which was the trade mark applicant of trade mark 967804, as a trade mark so as to establish ownership through use. The respondent's case - relationship of Mr Lawrence, the respondent and The Food Channel Pty Ltd In addition to the contention that, on the face of the application, the respondent is the owner of the trade mark and there is no evidence that anyone other than the respondent was ever the owner of the trade mark, the respondent also submits, in summary: At the time of the application on 28 August 2003 the owner of the trade mark was The Food Channel Pty Ltd. The applicant can apply for a trade mark even if it does not intend to use it provided it has authorised or intends to authorise another person to use it, or if it intends to assign it to another. On 15 January 2004 the application for the trade mark was formally assigned by The Food Channel Pty Ltd to the respondent (cf respondent's written submissions p 17). Mr Lawrence as the sole shareholder and managing director of The Food Channel Pty Ltd and the respondent and author of the trade mark properly authorised his companies first The Food Channel Pty Ltd and then upon assignment the respondent to use the trade mark with a licence back to The Food Channel Pty Ltd from the respondent after the assignment with the intention to use the mark on the goods being printed matter in this case printed recipes (cf respondent's written submissions p 19). "It may be fair to say Mr Lawrence sees the business as his own and sometimes confuses the distinction between himself and his companies, as might be seen from the nature of his affidavits where he defines the Respondent as the 'Food Channel' and (sic) then talks generally about the business of Food Channel meaning his business generally being himself and both of his companies. This is understandable as he is not a lawyer and it appears on the face of the affidavit that he did not have legal representation or advice at the time of drawing and filing of his main affidavit. As the sole shareholder and director of both companies he looks upon them both as his business. He did however obtain legal advice at the time of the assignment and formally transferred the trade mark application from The Food Channel Pty Ltd to Food Network Pty Ltd and formally lodged the assignment with the Trade Marks Office where the assignment was formally recorded, with Food Channel network as the new owner" (respondent's written submissions pp 19-20). In order to establish its opposition under s 58 an opponent must show that: the respective trade marks of applicant and opponent be either identical or substantially identical ( Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 ; (1994) 31 IPR 375) ; and the respective goods or services of the parties be the "same kind of thing" ( Re Hicks' Trade Mark (1897) 22 VLR 636 ; and a person other than the applicant has the earlier claim to ownership based on use prior to both the present application to register and actual use of the trade mark by the applicant ( Settef SpA (1987) 10 IPR 402 at 413 and Re Hicks' Trade Mark (1897) 22 VLR 636) ; the respondent contends that the applicant cannot show any of these elements and therefore must fail under s 58.