USE OF THE TRADE MARK BY WINTON
34 It is clear that the Company has never used the Trade Mark in any sense. The question is whether, by causing the Advertisement to be published in the RACQ guide, Winton used the Trade Mark in such a way as to become the owner of it within the meaning of the Act.
35 On questions of fact and degree involving matters of judgment and impression, minds may differ. Thus, in a doubtful case, respect and weight should be given to the views of a primary judge. That approach should not, however, be a fetter on an appellate court in giving effect to its own conclusion where it is definitely of a contrary view to that taken by a primary judge - see SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 at [38].
36 The legislative scheme relating to opposition proceedings set out above indicates that an opponent has the onus of establishing the ground of opposition relied on. In the present context, that means that Winton and the Company must establish that Ms Lomas was not the owner of the Trade Mark as at the Priority date, at least on the balance of probabilities. On one view, they may be required to establish that she was clearly not the owner see para [17] above.
37 The basis of any claim to ownership of a trade mark so far unused is to be found in the combined effect of authorship of the mark, the intention to use it upon or in connection with goods or services and applying for registration of the mark -Shell Company of Australia Ltd v Rohm and Haas Company & Anor (1949) 78 CLR 601 at 627 ("Shell Company Case"). Authorship in that sense involves the origination or first adoption of the word as and for a trade mark - Aston v Harlee Manufacturing Company (1960) 103 CLR 391 at 399.
38 Thus, if the Trade Mark had not been used prior to the Priority Date in connection with the goods and services specified in the Application, Ms Lomas should be treated as the owner of the Trade Mark. On the other hand, if Winton is able to establish that, as at the Priority Date, it was the owner of the Trade Mark and not Ms Lomas, the opposition based on s 58 would succeed. The only basis advanced by Winton in support of its opposition is that it became the owner of the Trade Mark by reason of the publication of the Advertisement and the inferences that can be drawn from such publication.
39 The question of substance that is raised by the proceeding is what constitutes a use or user of a trade mark for the purposes of the statutory concept of ownership of the mark prior to registration. It is not necessary that there be an actual dealing in goods bearing a trade mark before there can be said to be use of that mark as a trade mark in Australia. For example, there may be use where goods intended to be imported into Australia have not actually reached Australia but have been offered for sale in Australia under the mark. It may even be possible to establish use where the mark has been used in an advertisement of goods in the course of trade in circumstances where there is an existing intention to offer or supply goods bearing the mark in trade or there is an actual trade or offer to trade in the goods bearing the mark - Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] (1984) 156 CLR 414 at 433-4. However, where there is no actual trade or offer to trade in goods bearing the relevant mark in Australia or any existing intention to offer or supply such goods in trade, but merely preliminary discussions and negotiations about whether the mark would be so used, there is no use so as to constitute ownership of the mark (see Moorgate Tobacco (No.2) at 434). In reaching his conclusion, the primary judge clearly had regard to those principles.
40 The evidence indicates that there have been three uses by Winton of the expression "Country Kitchen": first on its own in the brochure of October 1997, then in conjunction with "Waltzing Matilda" in the Advertisement and finally in conjunction with "Coolibah" in the operation of the Centre. That tends to suggest that the expression may be descriptive of a kind of service, being an outlet, venue or facility for the supply and provision of meals and refreshments that can be characterised as a "country kitchen". On the other hand, the use of capital letters is more indicative of a trade name.
41 The Advertisement was headed "THE WALTZING MATILDA CENTRE" and invited tourists to visit "the outback's exciting new attraction - the Waltzing Matilda Centre". It referred twice to "the Waltzing Matilda Legend". It also invited tourists to visit "the Waltzing Matilda General Store for unique souvenirs". Thus, the Advertisement was drawing attention to the proposed facilities of the Centre, which were to include a general store, for unique souvenirs, and a country kitchen, for traditional homestead meals.
42 The absence of any reference in the brochure to "Waltzing Matilda" in mentioning of the country kitchen, and the fact that, when it commenced operation in April 1998, the country kitchen was called the "Coolibah Country Kitchen", suggests that the reference to "Waltzing Matilda" in connection with a country kitchen in the Advertisement was no more than a reference to the proposed facility within the Centre. The lack of constancy in the usage by Winton of the expression "Country Kitchen" gives rise to an inference that Winton took some time in forming a settled intention as to the name under which the proposed country kitchen facility would trade.
43 The Court should not hasten to find that a name given to a centre or business superstructure is automatically given to every actual or proposed facility within it. The fact that Winton, in the Advertisement, separated the proposed facilities such as the "country kitchen" and the "souvenir shop" and then subsequently named the country kitchen the "Coolibah Country Kitchen" suggests that the "Waltzing Matilda" name applied to the Centre rather than to every component within it.
44 The Advertisement does not signify that Winton was intending, in November 1997, to offer services using the Trade Mark. Nor does it signify that Winton was, in November 1997, offering to provide country kitchen services at some later time under the Trade Mark. Winton had no intention of providing country kitchen services in November 1997, whether in connection with the Trade Mark or otherwise. It did not intend to provide any such services before April 1998.
45 We are not persuaded, on the balance of probabilities, that the Advertisement by itself can be characterised as a use of the Trade Mark in relation to country kitchen services in the course of trade, such that it is possible to identify an intention, existing before the Priority Date, to offer or supply country kitchen services using the Trade Mark. That is the only basis advanced by Winton and the Company in support of the contention that Winton and not Mrs Lomas was the owner of the Trade Mark as at the Priority Date within the principles of the Shell Company Case. Further, we are certainly not persuaded that the Application should clearly be rejected on the ground that Ms Lomas was not the owner of the Trade Mark as at the Priority Date.