The first group of issues: proprietorship
66 The primary judge expressed the view at [25] of his first judgment that:
…proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis (1885) 30 Ch D 454.
67 Neither side argued that this was an incorrect approach.
68 On this appeal, both sides argued that the issues on proprietorship were: Who had first used the word "Colorado" on backpacks, bags, purses and wallets? And, depending on the answer to this question, what were the consequences in terms of authorship by reference to goods "of the same kind"?
69 The primary judge posed the question in [26] of his reasons:
With this background in mind the first question to be resolved on proprietorship is whether as at 16 February 2001, Colorado Group was the proprietor of the mark "Colorado" in respect of backpacks, bags, wallets, purses and belts and for services in respect of those articles. In looking at this question I will assume for the time being, though it is a matter in dispute, that the mark was capable of being distinctive of Colorado Group's goods and services. The answer to the first question requires consideration of three issues, viz (1) Was Colorado Group or its predecessor the first user of the Colorado mark on a backpack, being the article in respect of which first use is claimed? (For this purpose it is conceded that Williams the Shoemen was the predecessor of Colorado Group. It is also conceded that Williams the Shoemen was the first user of the word "Colorado" in combination with the "simple mountain motif"); (2) If the word was applied to backpacks not alone but in combination with the "simple mountain motif" can Colorado Group (or its predecessor) nevertheless claim to be the first user of the Colorado mark?; (3) If Colorado Group (or its predecessor) was the first user of the Colorado mark on backpacks, is a bag, wallet, purse or belt the same kind of article? Unless each pair of questions (1) and (3), or (2) and (3), are answered affirmatively, the registration has gone too far and either Colorado Group is not the proprietor of the Colorado mark or is not the proprietor in respect of bags, wallets, purses and belts. It may be that Edgarlodge first used the word "Colorado" on those goods, albeit in combination with the Indian head logo.
(The parties were agreed that one can ignore the reference to belts.)
70 The evidence disclosed that the word "Colorado" had been used on backpacks from 1982. The evidence was not clear, however, that the word was used alone rather than in association with the mountain motif logo, in effect as a combination mark. The finding of the primary judge about this was at [31] of his first judgment, in which he agreed with the submissions put on behalf of CGL (which submissions were repeated on appeal), that it was unclear whether the word "Colorado" on backpacks was accompanied by the mountain motif logo. It was not put on the appeal by CGL that his Honour erred in failing to find positively that the word "Colorado" alone was placed on backpacks from 1982. However, in the notice of contention it was put that the evidence was sufficient to find that the word had been used alone on backpacks from 1982.
71 In answer, Strandbags said that on the evidence it could be concluded that the word "Colorado" alone was not placed on backpacks from 1982.
72 Both sides also relied on onus. In this respect, CGL had the benefit of the primary judge's view, expressed at [31] of his first judgment, that the lack of clarity was necessarily fatal to Strandbags which carried the onus on the cross-claim. Strandbags challenged this. It submitted that having proven positively a use, by it, in 1994 of the word alone on backpacks, an evidentiary onus shifted to CGL to prove that its use of the word alone on backpacks pre-dated 1994.
73 In my view, the primary judge was correct in this respect on onus, assuming that the position on the evidence was unclear. Strandbags was seeking to have a registered mark removed from the Register, on the basis being dealt with here that its predecessor (Edgarlodge) not CGL's predecessor (WtS P/L) was the first user of the mark on backpacks. It failed to prove that.
74 The appellants also pressed the Court with the evidence that they said was sufficient to found a conclusion that between 1982 and 1985 WtS P/L used the word mark "Colorado" alone in relation to backpacks. The evidence in relation to this was as follows:
(a) First, Mr Darren John Williams, who commenced work in the "Williams the Shoemen" business in 1982 (then conducted by WtS P/L) swore in his affidavit that during his training in 1982 and 1983 he observed that the "Williams the Shoemen" stores were selling a style of backpack which he would describe as a small day pack with the name "Colorado" embroidered on the front, without any logo, in lower case and plain font.
(b) Mr Williams was cross-examined on this issue. The cross-examination began by the cross-examiner (without objection) raising with Mr Williams that "one of the other witnesses [had] a slightly different recollection than [his]." He was then told, in effect, that the other witness said that there was a possibility that there was a logo used with the word. To this suggestion Mr Williams said, "I know they came packaged in the cartons where (sic) they were in cellophane bags with a cardboard top saying Colorado. I'm sure that there was Colorado across the top flap of the backpack. A recollection of the logo I cannot recollect. (sic)" When asked whether he could "rule it out", he said that he could not.
(c) The "other witnesses" were Messrs Ainsworth and Beagley. Mr Ainsworth was a trainee manager at the Frankston "Williams the Shoemen" store from 1978 to 1980, a store manager at "Williams the Shoemen" Stores at various locations in Victoria and New South Wales from 1980 to 1988, a district manager and later buyer until 1999, a product developer, merchandising manager until 2003, when he became general manager of the "Williams the Shoemen" division. He said that from the mid-1980s to the late 1980s "Williams the Shoemen" sold backpacks "under the name 'Colorado' and using a three or four mountain peak logo". His evidence was silent on his recollection of use of the word "Colorado" before the mid 1980s. The inference is that he had no recollection. He was not cross-examined on this point. Mr Beagley, who no longer worked for the appellants, began work for CGL in 1988 as general manager buying and marketing for, amongst other divisions, "Williams the Shoemen". In his affidavit he recalls seeing in 1988 the word "Colorado" used in conjunction with a mountain top log.
(d) Also, it should not be forgotten that the evidence disclosed that from the mid-1980s the use of the word was with a mountain device. Further, there was no explanation as to why the word alone would be used and then a change made to the word plus device.
(e) The respondent emphasised that the evidence put before the Registrar (a declaration by a Ms Kubils and a statement by (the same) Mr Williams) did not (as did the affidavit of Mr Williams referred to at (a) above) state unequivocally that the word "Colorado" was used on backpacks without the logo.
75 The primary judge dealt with this evidence in [31] of his first judgment as follows:
There is another basis for this conclusion. As regards backpacks (being the only article in respect of which there is a possibility of establishing first use of the word mark) I agree with Mr Ryan that it is unclear whether the word "Colorado" was accompanied by the logo, at least in the early years. There were only two witnesses called who were with Williams the Shoemen in 1982 and onwards, Mr Williams and Mr Ainsworth. In his affidavit Mr Williams said that the backpacks were packaged in a cellophane bag which bore the printed word "Colorado". He also said the word "Colorado" was embroidered on the front of the backpack without the "simple mountain motif". In oral evidence he said he was "sure that there was [the mark] across the top flap of the backpack. A recollection of the logo I cannot recollect." When pressed he said: "[I] couldn't rule it [the mountain logo] out." Mr Ainsworth's recollection went back only to the mid-1980s. He said that at that time the mark on the backpacks comprised the word "Colorado" and the mountain logo. Given this state of the evidence it is not possible to reach any conclusion about the nature of the mark on backpacks between 1982 and, say, 1985. In particular, one cannot say with any confidence that the mark comprised both the word and logo. This conclusion is necessarily adverse to Strandbags Group which carries the onus on the cross-claim.
76 It is important to recall that the so-called inconsistency with the evidence of other witnesses mentioned by the cross-examiner was not by any means direct. Neither Mr Ainsworth nor Mr Beagley dealt with the period 1982 to the mid-1980s. In substance Mr Williams accepted that he could not "rule out" what had been put to him as a possibility: that there was use of the word in conjunction with the logo. The cross-examiner did not, however, seek to have Mr Williams withdraw what was evidence stated otherwise with some clarity: that the word was used without the logo. The events were nearly 25 years before. The primary judge concluded as he did. It was not a conclusion based on credit. Though I am extremely reluctant to depart from the primary judge's conclusion, I do not think that it is a question in which judgment or impression affects the task of the appeal court: Branir Pty Limited v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at 437-438 [29]-[30]. Kovan Engineering (Aust) Pty Limited v Gold Peg Engineering (2006) 234 ALR 241 at 263 [118]; Builders Licensing Board v Sperway Constructions (Sydney) Pty Limited (1976) 135 CLR 616; Fox v Percy (2003) 214 CLR 118; CSR Limited v Della Maddalena (2006) 224 ALR 1. I agree with the second last sentence of [31] in the primary judge's first judgment, but not the third last. On the balance of the evidence before the primary judge, given the unwillingness of the cross-examiner to challenge the recollection of Mr Williams any further than he did, it was open to find and indeed, on the evidence, in my view, should be found that WtS P/L used the word "Colorado" on backpacks from 1982 other than in conjunction with a logo. On the evidence, it was plain that that was use as a trade mark.
77 Thus, not only do I agree with the last sentence of the primary judge's reasons in [31], on the hypothesis that the evidence was equivocal, but also I would conclude that, in light of the limited attack in the cross-examination upon Mr Williams' evidence in chief and the terms of that sworn evidence, it can be concluded that there was use of the word as a trade mark on backpacks from 1982.
78 I do not think that the respondent can say that it discharged some evidential onus by proving when it used the word alone on backpacks, thereby requiring the appellants or prove unequivocally their earlier first use. The fact is that Mr Williams said when that first use was. His evidence was qualified to an extent in cross-examination, but the cross-examiner did not seek from him an answer that would negate his sworn evidence. In these circumstances, at the very least the respondent has not discharged its onus on the cross-claim (based on a claim derived from s 58 of the 1995 Act). The better view is, as I see it, that the failure to neutralise the evidence of Mr Williams permits a finding, notwithstanding the passage of time and the other surrounding objective circumstances, that WtS P/L did use the word "Colorado" alone on backpacks in about 1982.
79 The next issue requires consideration as to what flows from these conclusions about the evidence of use of the word "Colorado" on backpacks from 1982.
80 The primary judge posed the question in [25] and [26] of his first judgment as follows:
It follows that proprietorship by first use is proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis (1885) 30 Ch D 454.
With this background in mind the first question to be resolved on proprietorship is whether as at 16 February 2001, Colorado Group was the proprietor of the mark "Colorado" in respect of backpacks, bags, wallets, purses and belts and for services in respect of those articles. In looking at this question I will assume for the time being, though it is a matter in dispute, that the mark was capable of being distinctive of Colorado Group's goods and services. The answer to the first question requires consideration of three issues, viz (1) Was Colorado Group or its predecessor the first user of the Colorado mark on a backpack, being the article in respect of which first use is claimed? (For this purpose it is conceded that Williams the Shoemen was the predecessor of Colorado Group. It is also conceded that Williams the Shoemen was the first user of the word "Colorado" in combination with the "simple mountain motif"); (2) If the word was applied to backpacks not alone but in combination with the "simple mountain motif" can Colorado Group (or its predecessor) nevertheless claim to be the first user of the Colorado mark?; (3) If Colorado Group (or its predecessor) was the first user of the Colorado mark on backpacks, is a bag, wallet, purse or belt the same kind of article? Unless each pair of questions (1) and (3), or (2) and (3), are answered affirmatively, the registration has gone too far and either Colorado Group is not the proprietor of the Colorado mark or is not the proprietor in respect of bags, wallets, purses and belts. It may be that Edgarlodge first used the word "Colorado" on those goods, albeit in combination with the Indian head logo
81 The appellants agreed with the test put forward by the primary judge that first use of the word in relation to backpacks would entitle CGL to registration of the mark in respect of backpacks and other goods which might be described as "things of the same kind" or "like articles of production" or "kindred articles". Nor did the respondent disagree with the test. Rather, each saw its application differently.
82 The appellants attack the primary judge's conclusions in [32] of his first judgment which were as follows:
On the last of the three questions - Are bags, wallets, purses and belts the "same kind" of goods as a backpack? - the answer in my view is in the negative. First it must be recalled that the style of backpack in respect of which the mark was used (and in respect of which it could be registered) was designed and promoted principally for use by schoolchildren for carrying stationery, books and other school items. There are other styles of backpack, for example fashion backpacks or those used for mountain-climbing and hiking, but they are not the type with which the comparison must be made. Broadly speaking, a "bag" is a receptacle made of some flexible material closed in on all sides except at the top: see Oxford English Dictionary vol 1 (2nd ed, 1989) 880. There are, however, many different types of bags. They are as varied as plastic bags, bodybags, laundry bags etc. Thus, not every bag can be the "same kind of thing" as a schoolboy's backpack. In particular, a schoolboy's backpack is not akin to a ladies handbag. Those are usually intended as a fashion item for the female consumer (albeit for an everyday use). Articles such as wallets, purses and belts are even more dissimilar to the schoolboy's backpack given their respective, and different, uses. This is not a case where the proprietor of a mark which has been applied to different kinds of articles that fall within a class or category of goods seeks to register that mark in respect of other articles within the class or category. Such a proprietor would be entitled to register his mark not only for each article in the class to which the mark has been applied but also for such other articles in the class which a consumer would reasonably believe are likely to originate from the same source.
83 The appellants submitted that his Honour's approach involved an over-dissection of the goods in question and that a backpack was simply a type of bag, as were handbags, wallets and purses. The respondent supported his Honour's approach.
84 The notion of ownership ("proprietorship" under the Trade Marks Act 1955 (Cth), the "1955 Act") is reflected in the 1995 Act, ss 27 and 58. Ownership is not restricted by prior actual use. A claimto ownership under s 28(a) may be based on use or intended use: s 27(1)(b). Thus, in this statutory context the rights that arise from use are most usually examined from the perspective of opposition. The context often is: to what extent the claim to ownership based on use and intended use is cut back by the ownership by an opponent of the trade mark by its previous use: see the 1995 Act, s 58.
85 Here, for the reasons that I have given, it can be accepted that WtS P/L used the word mark "Colorado" on backpacks from 1982. I will come shortly to the evidence about use on handbags, purses and wallets. The claim to ownership that was accepted by the Registrar was for "bags, wallets, purses, backpacks and belts" in class 18. If the respondent had sought to become registered in the way CGL was, that application could have been opposed by WtS P/L on the ground that it was the owner of the trade mark, in that, by use in 1982, it had used a sign to distinguish backpacks in the course of trade: the 1995 Act, ss 17 and 58.
86 This enquiry about proprietorship is not directed by the 1995 Act to notions of deceptive similarity or close relationship, as may be the subject of enquiry in other contexts: see the 1995 Act, ss 14, 44, 120(2) and 124(1). Indeed, this is reinforced by s 124(1).
87 The notion of ownership (or proprietorship) was discussed in In re Hicks's Trade Mark (1897) 22 VLR 636; Blackadder v Good Road Machinery Co Inc (1926) 38 CLR 332; Moorgate Tobacco Co Ltd v Philip Morris Ltd (1980) 145 CLR 457 at 477-78; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432-34; Shell Co of Australia v Rohm and Haas Co (1949) 78 CLR 601 at 626-629; Re The Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199; Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399-401; Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 413-414; and Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 505-514. Few of these cases discussed what might be said to be the width or scope of the right gained by use by reference to the similarity or closeness of the goods on which the mark was used to other goods. The case most usually cited in this respect is In re Hicks's Trade Mark 22 VLR 636. That case concerned a clear earlier user of the identical mark ("Empress") on identical goods (stoves) and was under a statute (the Trade Marks Act 1890 (Vic)) in which the word "proprietor" was defined as meaning "the person entitled to the trade mark by reason of his exclusive user of it." It was in this context that Holroyd J said the following, speaking for the Full Court:
…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 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…
[emphasis added]
88 In Carnival Cruises v Sitmar Cruises 120 ALR at 514, Gummow J referred to there being no differences of "character or quality" of the services in that case to gainsay that they were the "same kind of thing".
89 There is a certain difficulty in fixing upon the proper frame of reference for the enquiry identified by the words used by Holroyd J, "same kind of thing". Assistance is gained from the statutory context in which the question arises (see above), the common law notion of the right to registration from use, when that was the defining requirement: see Edwards v Dennis (1885) 30 Ch D 454 and Jackson & Co v Napper (1886) 35 Ch D 160 and the notion of the ownership of a common law trade mark: see the cases referred to by the primary judge at [25] of his first judgment (set out at [66] above). The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical… yet substantially the same" (Hemming HB, Sebastian's Law of Trade Marks (4th Ed) p 91) or "goods essentially the same… though they pass under a different name owing to slight variations in shape and size" (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.
90 That backpacks are a type or style of bag does not answer the question as to whether they should be viewed as essentially the same goods as any bag or receptacle. The backpack is a bag with straps to be worn on the back. It is not essentially the same or the same kind of thing as other bags, handbags, purses or wallets. The task is not to identify the genus into which the goods upon which the mark was used fall, but to identify the goods.
91 This approach conforms with a tolerably settled approach in the Trade Marks Office to the same question as it arises in opposition proceedings based on prior use by the opponent. In Daimer Industries Pty Ltd v Kabushiki Kaisha Daimaru (1993) 27 IPR 124, the goods used by the opponent which were excluded from the registration of the applicant were identified as cricket balls; in Gayl Porter v Victoria's Secret (1993) 28 IPR 143, they were lingerie; in Crooks Michell Peacock Stewart v Kaiser (1994) 29 IPR 225, they were printed paper products namely reports, newsletters, brochures, plans, maps and architectural drawings being some of the goods in class 16; in Vamuta Pty Ltd v Sogo Pty Ltd (1995) 31 IPR 557, they were opal jewellery; in Pressware International Inc v Julzar Pty Ltd (1995) 33 IPR 53, they were pressed paper food containers; in King v Hayward (1997) 39 IPR 431, they were long and short sleeve T-shirts and shorts; in First Quality Products v Dawyn Import & Export Pty Ltd (2000) 49 IPR 199 they were tampons (distinguished from women's disposable underwear). This approach also reflects the views of the authors of Shanahan's Australian Law of Trade Marks and Passing Off (3rd Ed) p 58 [3.40].
92 For these reasons, I find no error in the primary judge's conclusions in [32] of his first judgment (see [82] above).
93 The issue of proprietorship also arises in relation to wallets and purses. The appellants concede that if they are wrong (as I think they are) about the consequences of the use by WtS P/L of the word on backpacks from 1982, then the respondent's predecessor, Edgarlodge, made first use of the word mark in respect of handbags. The appellants assert, however, that CGL made first use of the word mark on wallets and purses. If one were to treat handbags as different in kind to wallets and purses, then to resolve this contest it is once again necessary to return to the minutiae of the facts. Before doing so, however, it is necessary to note that at [30]-[31] of his second judgment, the primary judge came to the conclusion that purses and wallets were goods of the same kind as handbags for the purposes of proprietorship, thus making the first use of the mark (the word "Colorado" alone) by Edgarlodge in 1991 in respect not only of handbags, but also wallets and purses. In this regard, the primary judge said the following:
On the facts as I have found them, Edgarlodge was, and its successor Strandbags Group is, unambiguously the proprietor of the Colorado mark in respect of handbags because of first use. There was a contest about its first use in relation to wallets and purses. Even if that contest had been resolved differently it would not have affected the outcome. In my earlier judgment I explained that a person is entitled to registration of a mark not only in respect of goods to which the mark has been applied but also to goods or classes of goods that are "of the same kind": Jackson & Co v Napper (1886) 35 Ch D 160. This is because it is assumed that a consumer is likely to believe that the other goods originate from the same source as the goods in respect of which the mark has been used.
In my view purses and wallets are goods of the same kind as handbags. Both are intended as fashion items and are used to carry small, everyday items such as money, credit cards, keys and like objects. True, handbags are usually larger than both wallets and purses but I do not think this affects the kind of goods they are. At any rate, it is often very difficult to tell the difference between what is a purse and what is a handbag these days, with many handbags being quite small in size. A consumer would expect a handbag and a purse or wallet bearing the same mark to come from the same source. Some are even matching in design. Indeed, many leading fashion houses sell lines of handbags, purses and wallets.
94 Whilst these are questions of some judgment, about which minds could reasonably differ, using the approach discussed above, I cannot agree that handbags are the same kind of thing as wallets and purses. All three items are receptacles, but wallets and purses tend to be the same object (generally for men and women respectively) used for the same purpose - to carry money, cards (mainly credit cards), receipts and the like. Handbags often fulfil a wider purpose. I accept that wallets and purses are the same kind of thing and, indeed, both sides approached the appeal on this basis. Therefore, I think that handbags, on the one hand, and wallets and purses on the other, should be dealt with separately.
95 From the mid-1980s WtS P/L sold backpacks bearing the word "Colorado" and a multiple peak mountain device. An example of a four or five peak device used with the word "Colorado" on shoe boxes sold as at 1988 is as follows:
96 Mr Beagley drew a logo that he recalled seeing when he began at WtS P/L in 1988 as follows:
97 There was also evidence of the use of something like this device in the advertising and promotion of shoes in the following form:
98 It was agreed that from 1987, WtS P/L sold shoes bearing the word "Colorado" and the simple mountain motif, and that the word "Colorado" appeared by itself on the outside of the shoe near the heel.
99 It was agreed that in the early 1990s, the "Williams the Shoemen" stores displayed products with signage bearing the word "Colorado" and a mountain peak device.
100 Mr Ainsworth gave evidence that from at least early 1994 WtS P/L sold wallets branded using a peaked logo as set out below, with the word "Colorado" in an unspecified relationship. The logo was:
101 From the early 1990s, "Williams the Shoemen" stores displayed products with signage bearing the word "Colorado" and a mountain peak device as follows:
102 Photographs in evidence revealed the use of "Colorado" and this peak logo, by the placement of the peak logo prominently above the printed words "Colorado". This was a common use by CGL in the 1990s, an example being:
103 The signage in the "Colorado" shops sometimes used the word alone, and sometimes used the word with a logo.
104 It was agreed that from 1991 Edgarlodge sold handbags bearing the word "Colorado" and the Indian head device (as to which, see [58] above). From about 1992, a metal plate bearing the word "Colorado" was affixed inside the handbags and a swing tag was attached to the handbag with the following appearing on it:
BE A
COLORADO
COLLECTOR
105 The issue between the parties about the first use of "Colorado" on wallets and purses concerned both use by CGL and by Edgarlodge. I will deal first with the asserted use by CGL. The "Colorado" retail stores run by CGL opened in mid-1993. Mr Beagley's evidence was that these stores provided a complete range of clothing, footwear and accessories and that wallets bore the word "Colorado" plus the multi-peak device. The appellants contend that this use was substantially identical to the mark applied for, the word being "Colorado" simpliciter. The primary judge dealt with this issue in two places: [30] of his first judgment and [7]-[9] of his second judgment. In the first judgment, the primary judge said that his "impression" was that at least the word component served a distinct function as a trade mark. In his second judgment, the primary judge referred to this as "toying with" the argument. After referring to cases under the Trade Marks Registration Act 1875 (UK), s 10, his Honour concluded that one could not disentangle the word "Colorado" from the use in combination with the device and one could not conclude that there had been use of the word alone as a trademark.
106 In Carnival Cruises Lines v Sitmar Cruises 120 ALR 495 at 512-513, Gummow J discussed the need for identity of prior use and the claim to registration. He first explained the statutory context of, and reasoning in, Shell Co of Australia v Rohm and Haas 78 CLR 601 in rebutting the suggestion made by counsel that something less than substantial identity between the two marks will suffice. Gummow J referred to the phrase "substantially identical" in the infringement context (there, the 1955 Act, s 62) and the discussion by Windeyer J of that concept in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Gummow J said at 513:
…It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.…
107 Though it is potentially dangerous to reason from other facts, it is worth noting that in that case, whilst Gummow J said that there was no material distinction to be drawn between FUN SHIP and FUNSHIP, and that neither the use of the definite article nor of the plural created a material distinction, he concluded that FUN SHIP was for this purpose a different trade mark to SITMAR'S FUNSHIP and FAIRSTAR THE FUNSHIP.
108 This approach is consistent with the cases in the nineteenth century about what could be registered based on prior use: In re J B Palmer's Trade Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis & Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company Limited [1894] AC 8; Re Chorlton and Dugdale's Trade Mark (1885) LT NS 337.
109 The appellants relied on various infringement cases in order to support the proposition that the overwhelming or essential element or feature in the use of the word with the multiple peak device (in whatever form) was the word. After referring to Carnival Cruise Lines v Sitmar Cruises 120 ALR 495 and Shell Co v Esso 109 CLR 407, the appellants referred to P B Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47. There, Malanda had used "CHILL" in relation to flavoured milk before PB Foods. PB Foods applied to register "CHOC CHILL", subject to a claim to vary the first word to indicate a different flavour. Malanda lodged an objection to PB Foods' application. The delegate and Carr J on appeal both came to the view that Malanda's prior use of "CHILL" was substantially identical to "CHOC CHILL". The delegate then exercised a discretion under the honest concurrent user provision (the 1995 Act, s 34(1)). The reasoning of Carr J (at 47 IPR at 52-55) was that the first word "CHOC", or a word or abbreviation indicating some other flavour, was not distinctive, but was descriptive. He concluded that the essential feature of the trade mark sought to be registered as "CHOC CHILL" was "CHILL". It was the word "CHILL", his Honour said "which serves to denote the trade origin of the goods". Thus the trade mark use was found in the word "CHILL". The word "CHOC" had, his Honour said, different work to do - describing the flavour. Carr J then discussed other examples from the authorities in which weight had been placed on the existence of another word in one of the marks to destroy the conclusion of substantial identity. Important to his distinguishing of these cases was the descriptive function of the first word "CHOC" or any replacement word or abbreviation to show flavour.
110 Here, though the evidence was less than precise as to what the mark plus device use was by CGL, the examples in evidence reveal an important, perhaps even dominant, effect of the word "Colorado", but always with a device. That device was part of the trade mark use; it had a capacity to distinguish. It did not, in my view, operate as a separate mark, nor as a mere descriptor. It operated as part of a combination with the word "Colorado", in part reinforcing it. In these circumstances, I agree with the primary judge's concluded view that though the word "Colorado" is important in the impression, it cannot be said to have been used alone, rather than as part of a composite mark (with the device) to show origin.
111 Thus, I reject the argument of the appellants that they used the mark "Colorado", being the registered mark, on wallets from mid-1993.
112 The respondent accepted that its use of the "Indian head" composite mark (see [58] above) was not use of the word "Colorado" alone.
113 Mr Ryan conceded in argument that, leaving the mutual combined use of word and motif or device to one side, Edgarlodge was the first to use the word "Colorado" on wallets some time after 1995. The evidence disclosed that from 1995 Edgarlodge, began to insert a mock credit card into each wallet which bore the word "Colorado". There was a dispute as to whether swing tags were used on wallets before mid-1993 by Edgarlodge. The parties were also agreed in the approach to the appeal that wallets and purses could be dealt with together and the references in the evidence to wallets encompassed purses.
114 The appellants argued that the primary judge mistakenly found in [18] of his second judgment that the word "Colorado" on the swing tag (see [104] above) was attached to wallets (and purses) in the early 1990s. The primary judge having found this, then concluded at [19] and [20] that this was a trade mark use of the word (a conclusion that was not challenged). Thus, his Honour concluded at [21] of the second judgment that Edgarlodge's use of the word "Colorado" on handbags, wallets and purses predated the use by WtS P/L and CGL of the word on those goods.
115 This debate about whether the evidence was sufficient to permit the primary judge to conclude that swing tags bearing the word "Colorado" were used on wallets (and purses) from before mid-1993 falls away if one concludes, as I do, that the use by CGL from mid-1993 of the word "Colorado" with the motif or device was not use of the word alone.
116 For the sake of completeness, lest the matter go further, I will deal with the disputed issue as to what the evidence shows about the use of swing tags on wallets (and purses) before 1995.
117 Ms Malouf-Evans who, with her husband, Mr Evans, was involved in the running of the Edgarlodge business said clearly in cross-examination in a discussion about the use of the swing tags that swing tags were not used on wallets (and, inferentially, purses). She explained that "there was never really anything to attach it to". Mr Evans in his affidavit in chief said something similar: "For wallets, where it was often not practical to attach swing tags, a credit card shaped card bearing the word 'Colorado' was placed inside the wallets." In cross-examination, however, he divided the period up between the later period of putting the mock credit card in the wallet and an earlier period in which a swing tag was used with wallets. He then said in description of the swing tag that it was the tag which had the Indian head device. He was cross-examined as to the content of this mark by Mr Ryan who gave Mr Evans an opportunity to describe any use of the word "Colorado" alone. Mr Evans only referred to the Indian head device. So, Mr Ryan submitted before us, without recollection from Mr Evans as to the use of the word "Colorado" on the swing tag, it must have been a swing tag with only the Indian head device with the word. The difficulty with this submission is that the only swing tag referred to in the evidence of Mr Evans was one which had the Indian head device and word on one side and the words "Be a Colorado Collector" (as at [104] above) on the other. Mr Evans in fact exhibited an example of such a swing tag. Further, the cross-examination can be seen to have been conducted on the basis of an assumption that there was only one swing tag. Such a factor is one aspect of the advantage of the trial judge: Branir 117 FCR 424 at 437-38 [29].
118 In my view, there was evidence to found the conclusion of the primary judge that swing tags with the word "Colorado" were used on wallets and purses before 1993. I see no error in the conclusion of the primary judge.