mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Malibu Boats West, Inc v Catanese (2000) 180 ALR 119
Outcome: cited
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 [2007] FCAFC 184 ; (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)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm &amp; Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.
Case: McCormick &amp; Company Inc v McCormick (2000) 15 IPR 102
Outcome: cited
respondent submitted in summary that, because there was no evidence from the Australian licensees of the applicant, there is no evidence of any reputation of the applicant or its trade marks in Australia; further, no other evidence was given as to the applicant's reputation in Australia prior to the priority date of trade mark 967804. The respondent also referred to McCormick &amp; Company Inc v McCormick (2000) 15 IPR 102, and, in what appears to be a confused submission, another of the respondent's trade marks. In order to successfully oppose registration of a trade mark pursuant to s 60 the applicant must satisfy the Court that: Its trade marks had acquired a reputation in Australia in relation to goods or services before the priority date of trade mark 967804; and Because of the reputation of the applicant's trade marks, the use of trade mark 967804 would be likely to deceive or cause confusion. The current form of s 60 of the Act follows amendments to the Act by the Trade Marks Amendment Act 2006 ( Cth). The most significant amendment to s 60 effected in 2006 was the removal of the reference to the opposed trade mark being "substantially identical with, or deceptively similar to" a relevant trade mark. First, in McCormick [2000] FCA 1335 ; (2000) 51 IPR 102 at [81] Kenny J said: What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows: reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Case: Mobileworld Communications Pty Ltd v Q &amp; Q Global Enterprise [2003] FCA 1404 ; (2003) 61 IPR 98
Outcome: distinguished
has been observed elsewhere, s 58 is conventionally used as a ground of opposition where disputing parties have had a business or contractual relationship, and are in dispute as to which of those parties is the true owner of the mark ( Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008) p 380, cf Elkington B, Hall M, Kell D, Trade Mark Law in Australia (Butterworths, 2000) p 77). However s 58 does not confine opposition to registration of a trade mark to a party itself claiming ownership of that trade mark. Examples of cases in which claims albeit unsuccessful were made by a third party against the registered owner of a trade mark pursuant to s 58 are Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 ; (2008) 76 IPR 161 and Mobileworld Communications Pty Ltd v Q &amp; Q Global Enterprise [2003] FCA 1404 ; (2003) 61 IPR 98. Indeed in this case the respondent has not disputed the standing of the applicant to oppose registration of trade mark 967804 on the ground of s 58. I shall return to these cases later in this judgment. Onus Whether the act of making an application to register a trade mark in the name of a party other than the owner is a fatal defect in that application was given some consideration in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161. The decision in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 was delivered after my judgment in this case was reserved. The Court in Global Brand Marketing [2008] FCA 605 ; 2008) 76 IPR 161 also considered the decision in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98. The trial judge in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 referred to Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 where the trial judge had noted the innocent error in registering the wrong applicant. Further, in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 the trial judge was satisfied that the company to which the application for registration was eventually assigned was the owner of the trade mark in question (at [135]-[136]). Both Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 are distinguishable from this case because in both cases the ownership position was clear. In contrast, I do not accept that the Act sanctions a position in which an application can be made where ownership of a trade mark is not capable of identification during the application process, and a finding cannot be made that the applicant was the owner, as is the case in these proceedings.
Case: Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D)
Outcome: cited
key issue in considering s 7(1) in this context is whether, notwithstanding the similarities between the two marks, the additions or alterations are such as to "substantially affect the identity" of trade mark 967804. This is clearly a question of fact in each case. Although there are decisions in which the court or relevant administrative body has considered whether, in the particular circumstances, alterations or embellishments have affected the identity of a trade mark (for example Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D), 131 (CA); Levi Strauss &amp; Co v Shah [1985] RPC 371 ; QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553) I do not find these decisions of assistance in the present proceedings.
Case: Pfizer Products Inc v Karam [2006] FCA 1663 ; [2006] 237 ALR 787
Outcome: cited
applicant has submitted that there is nothing contradictory or incompatible between the two decisions. I agree. So far as relevant in the context of this case, Gyles J observed in Pfizer [2006] FCA 1663 ; [2006] 237 ALR 787 that: The principles articulated in Pfizer [2006] FCA 1663 ; [2006] 237 ALR 787 are not in issue in these proceedings. Contrary to the submission of the respondent, I find that there is no inconsistency between these principles and the concept of shift of the evidentiary onus of proof referred to by Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478. I note in passing that an appeal against the decision of Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478 was recently dismissed by the Full Court ( Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14) , although the Full Court did not consider the evidentiary issue raised by the respondent in this case. I accept the submission of the applicant that, once the opposer to registration makes a prima facie case, the evidentiary onus as to ownership shifts to the applicant for registration.
Case: Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525
Outcome: cited
is well-established that applications of this kind, which involve an exercise of the original jurisdiction of the Court and are subject to the powers of the Court under s 197 of the Act, are conducted as re-hearings and are not strictly "appeals": Blount v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 ; Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525. It 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.
Case: Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227
Outcome: cited
the respondent relies in its written submissions on Revlon Inc v Cripps &amp; Lee Ltd [1980] FSR 85 , Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227 , Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes [2003] FCA 901 ; (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii). Was there implied authorisation to use? Further, the cases cited by the respondent support the proposition that a trade mark may be a "house mark" of a corporate group, and that members of a corporate group other than the registered proprietor may have implied authority to use it (see in particular Revlon [1980] FSR 85 at 106 per Buckley LJ and Templeman LJ at 114-115 and Polo Textiles [1993] FCA 203 ; (1993) 42 FCR 227 at 239). In this respect these cases do not consider issues of ownership, only authorised use of a trade mark.
Case: QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553
Outcome: cited
key issue in considering s 7(1) in this context is whether, notwithstanding the similarities between the two marks, the additions or alterations are such as to "substantially affect the identity" of trade mark 967804. This is clearly a question of fact in each case. Although there are decisions in which the court or relevant administrative body has considered whether, in the particular circumstances, alterations or embellishments have affected the identity of a trade mark (for example Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D), 131 (CA); Levi Strauss &amp; Co v Shah [1985] RPC 371 ; QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553) I do not find these decisions of assistance in the present proceedings.
Case: Rael Marcus v Sabra International Pty Ltd [1995] FCA 1059 ; (1995) 30 IPR 261
Outcome: cited
is clear from the cases that the date on which it is necessary for the applicant to show that it is the owner of the relevant trade mark is the date of filing the application (in this case, a date which is also the priority date as defined by s 12) , because it is based on the state of facts existing at that date that the title of a trade mark to registration is determined: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203 at 211, The Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 at 624, Rael Marcus v Sabra International Pty Ltd [1995] FCA 1059 ; (1995) 30 IPR 261 at 266.
Case: Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: cited
order to substantiate a claim in passing off the applicant must show: A misrepresentation Made by a trader in the course of trade To its prospective customers or ultimate consumers of goods or services supplied Which is calculated to injure the business or goodwill of the applicant (in the sense that this is a reasonably foreseeable consequence) and Which causes actual damage to a business or goodwill of the applicant or will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742, cf re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.)
Case: Re Hicks' Trade Mark (1897) 22 VLR 636
Outcome: cited
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.
Case: Renaud Cointreau v Cordon Bleu International Ltee (2001) 193 ALR 657
Outcome: cited
in Renaud Cointreau v Cordon Bleu International Ltee (2001) 193 ALR 657 at [74] the Full Court, approving the observation of the primary judge in those proceedings, said that the reputation which the applicant is required to demonstrate pursuant to the equivalent of s 60 is: one of which a significant or substantial number of persons were aware... What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
Case: Revlon Inc v Cripps &amp; Lee Ltd [1980] FSR 85
Outcome: cited
the respondent relies in its written submissions on Revlon Inc v Cripps &amp; Lee Ltd [1980] FSR 85 , Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227 , Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes [2003] FCA 901 ; (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii). Was there implied authorisation to use? Further, the cases cited by the respondent support the proposition that a trade mark may be a "house mark" of a corporate group, and that members of a corporate group other than the registered proprietor may have implied authority to use it (see in particular Revlon [1980] FSR 85 at 106 per Buckley LJ and Templeman LJ at 114-115 and Polo Textiles [1993] FCA 203 ; (1993) 42 FCR 227 at 239). In this respect these cases do not consider issues of ownership, only authorised use of a trade mark.
Case: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Outcome: followed
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 [2007] FCAFC 184 ; (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)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm &amp; Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.
Case: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203
Outcome: cited
is clear from the cases that the date on which it is necessary for the applicant to show that it is the owner of the relevant trade mark is the date of filing the application (in this case, a date which is also the priority date as defined by s 12) , because it is based on the state of facts existing at that date that the title of a trade mark to registration is determined: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203 at 211, The Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 at 624, Rael Marcus v Sabra International Pty Ltd [1995] FCA 1059 ; (1995) 30 IPR 261 at 266.
Case: The Shell Company of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601
Outcome: cited
is clear from the cases that the date on which it is necessary for the applicant to show that it is the owner of the relevant trade mark is the date of filing the application (in this case, a date which is also the priority date as defined by s 12) , because it is based on the state of facts existing at that date that the title of a trade mark to registration is determined: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203 at 211, The Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 at 624, Rael Marcus v Sabra International Pty Ltd [1995] FCA 1059 ; (1995) 30 IPR 261 at 266. As a general proposition, it may be inferred that, by the act of filing an application for registration of a trade mark, the applicant claims "ownership" of the trade mark for the purposes of s 58. As Dixon J observed in The Shell Company of Australia Ltd [1948] HCA 27 ; (1949) 78 CLR 601 at 627-628: But, however that may be, it is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in 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 the applying for registration. 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 [2007] FCAFC 184 ; (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)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm &amp; Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.