Lomas v Winton Shire Council

3 On 7 September 1999 notices of opposition were lodged by the respondents to the application for leave to appeal, Winton Shire Council ("Winton") and The Waltzing Matilda Centre Limited ("the Company"). Winton is a local governmental authority. The Company was established under the auspices of Winton and two of its directors are representatives of Winton. 4 On 17 August 2000, a delegate of the Registrar of Trade Marks ("the Registrar") determined that the oppositions by Winton and the Company failed on all grounds. The delegate decided that the Application should be registered and directed that registration proceed unless, within 30 days, the Registrar was served with a copy of a notice of appeal. The delegate directed that, in the event of such an appeal, registration not occur before the appeal was decided or discontinued. 5 Winton and the Company appealed to the Federal Court from the decision of the delegate. The grounds of appeal, as specified by Winton and the Company in their particulars, were as follows: (i) Ms Lomas is not the owner of the Trade Mark as she is not the first user of the Trade Mark in Australia on or in connection with the goods and/or services specified in the Application; (ii) Use of the Trade Mark by Ms Lomas on the goods and/or services specified in the Application would be likely to deceive or cause confusion because of the reputation and rights acquired by Winton and the Company in the Trade Mark; (iii) Because of a connotation contained in the Trade Mark, use of the Trade Mark in relation to the goods and/or services specified in the Application would be likely to deceive or cause confusion; (iv) The Trade Mark is substantially identical or deceptively similar to Australian Registered trade marks Numbers 218783 and 228232 ("the Registered Trade Marks"). For reasons published on 20 March 2002, the primary judge concluded that only ground (i), which is based on s 58 of the Act, had been made out. Winton and the Company no longer pursue grounds (ii), (iii) or (iv). 6 His Honour ordered that the delegate's direction that the Application proceed to registration be affirmed but that · the specification of goods in Classes 29 and 30 be amended by deleting reference to the goods referred to above; and · the specification of services in Class 42 be deleted. His Honour also made orders for the costs of the appeal.

STATUTORY FRAMEWORK 7 Section 27(1) of the Act provides that a person may apply for the registration of a trade mark in respect of goods or services if the person claims to be the owner of the trade mark and one of the circumstances in s 27(1)(b) applies. Those circumstances are when the person intends to use the trade mark, to authorise another person to use the trade mark or to assign the trade mark to a body corporate with a view to use by the body corporate. Section 31 of the Act requires that, once an application has been made, the Registrar must examine and report on whether the application has been made in accordance with the Act and whether there are grounds for rejecting it. 8 After examination, the Registrar must, by reason of s 33, accept the application unless satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it under Division 2 of Part 4. The Registrar is required under s 34 to advertise the decision in the Official Journal. 9 The grounds for rejecting an application that are provided for in Division 2 of Part 4 may be summarised as follows: · the Trade Mark contains or consists of certain signs that are not to be used as a trade mark (s 39); · the Trade Mark cannot be represented graphically (s 40); · the Trade Mark does not distinguish the applicant's goods or services (s 41); · the Trade Mark is scandalous or its use is contrary to law (s 42); · the Trade Mark is likely to deceive or cause confusion (s 43); · the Trade Mark is substantially identical with or deceptively similar to a registered trade mark (s 44). 10 Section 52(1) provides that, if the Registrar has accepted an application for the registration of a trade mark, any person may oppose the registration by filing a notice of opposition. Section 52(4) permits the registration to be opposed on any of the grounds specified in Division 2 of Part 5 but on no other grounds. Those grounds may be summarised as follows: · the grounds upon which an application may be rejected (s 57); · the applicant is not the owner of the trade mark (s 58); · the applicant does not intend to use the trade mark (s 59); · the trade mark is similar to a trade mark that has acquired a reputation in Australia (s 60); · the trade mark contains or consists of a false geographical indication (s 61); · the application was amended contrary to the Act (s 62(a)); · the Registrar accepted the application on the basis of false evidence or representations (s 62(b)). 11 Relevantly for the purposes of this proceeding, s 58, is in the following terms: "The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark." 12 Under s 54(1) the Registrar must give the opponent and the applicant an opportunity of being heard on the opposition and, under s 55, the Registrar must decide either to refuse to register the trade mark or to register the trade mark, with or without conditions or limitations, in respect of the goods and services then specified in the application, having regard to the extent, if any, to which any ground on which the application was opposed has been established. Under s 56 the applicant or the opponent may appeal to the Federal Court from the decision of the Registrar under s 55. 13 Section 191(1) of the Act provides that the Federal Court has jurisdiction with respect to matters arising under the Act and, under s 191(2), the jurisdiction of the Federal Court to hear and to determine appeals against decisions of the Registrar is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under s 75 of the Constitution. Under s 193, the jurisdiction under s 191 is to be exercised by a single judge. 14 Under s 197, on hearing an appeal against a decision of the Registrar, the Federal Court may, among other things, do any one or more of the following: · admit further evidence orally or on affidavit or otherwise; · permit the examination and cross examination of witnesses; · affirm, reverse or vary the Registrar's decision; · give any judgment or make any order that, in all the circumstances, it thinks fit. Under s 195(2), except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions of the Registrar. As we have said, this is an application for leave under s 195(2).

considerations relevant to LEAVE TO APPEAL 15 By reason of s 24(1A) of the Federal Court of Australia Act 1976 (Cth), leave is required for any appeal against an interlocutory decision of a single judge of the Court. However, the requirement for leave to appeal is not a requirement that a particular test be satisfied. The jurisdiction to grant leave to appeal is discretionary and it is inappropriate to formulate rigid rules that could constrain the exercise of that discretion. Each application for leave under s 24(1A) should be dealt with in accordance with its own special circumstances. 16 Similar considerations apply in relation to an application for leave to appeal under s 195(2) of the Act. Nevertheless, the Court should be studious in its examination of the questions likely to arise on appeal, before refusing leave to appeal from an order of a single judge where an opponent has been successful. The Court should be slow to shut out an applicant for a trade mark who has had only one judicial consideration of entitlement to the grant of the trade mark. Before refusing leave, the Court should be satisfied that it is clear beyond doubt that there has been no error and that any trade mark, if granted, should be expunged - see Imperial Chemical Industries PLC v EI Dupont De Nemours & Co [2002] FCAFC 264 paragraphs [7] to [10]. 17 No submissions were addressed to the Court concerning the standard to be applied by a single judge in considering an appeal under s 56 of the Act. The presence of s 195(2) suggests that a parallel should be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth). On that basis, on appeal under s 56, the Court should consider whether the trade mark should clearly not be registered. Only if so satisfied should the Court decide to uphold an opposition. 18 The fact that leave to appeal from the decision of a single judge is required indicates the quasi summary nature of an opposition proceeding. An unsuccessful opponent would always have the opportunity to bring an expungement proceeding if the opposition proceeding fails. In an expungement proceeding, the validity of a trade mark can be fully explored. That is a reason for concluding that there should not be a full exploration of the prospective validity of a trade mark on an appeal in an opposition proceeding. 19 Thus, it would be inappropriate for there to be a full exploration of the validity of the trade mark in two separate proceedings in the Court, first in an appeal in an opposition proceeding and then, subsequently, if the opposition proceeding failed, in an expungement proceeding. Those considerations emphasise the need for the Full Court, before refusing leave to appeal pursuant to s 195(2) of the Act, to be satisfied that a decision by a single judge upholding an opposition is undoubtedly correct.

THE FACTUAL BACKGROUND 20 In April 1895 the song "Waltzing Matilda" ("the Song"), the words of which were written by A.B. "Banjo" Patterson, was first performed in the town of Winton. The words to the Song had been composed at Dagworth Station, about 100 kilometres from the town of Winton. In April 1995 Winton hosted celebrations, in the town of Winton, of the centenary of the first performance of the Song. The celebrations consisted of a programme of special events, entertainment, historical displays and exhibitions over twelve days. The programme featured different elements of the themes of the Song, its history and the connection between the Song and the town of Winton. 21 A central feature of the marketing and publicity campaign for the celebration was the use of a logo as follows: The logo shows a figure of a swagman with an animal over his shoulder in a swag, with the words "1895 Waltzing Matilda Centenary 1995" in a scroll across the figure of the swagman, the words "Waltzing Matilda Centenary" above the logo and the words "Winton Queensland" and the date "6 April 1995" below it. Food and beverages provided during the celebrations included damper, billy tea and food cooked in camp ovens by a person employed by Winton dressed in the character costuming of a swagman. 22 From about March 1995 to April 1995, a store was established in the main street of Winton offering a range of products, brochures and material promoting the celebrations and the town of Winton. Products available for sale included stubby holders, pannikin or tin cups, tea towels, T-shirts, teaspoons, postcards and caps. The tin cup, for instance, had "Waltzing Matilda Centenary Winton Queensland 1895-1995" printed on the outside of it, and the tea towel had a stylized swagman set against a depiction of the Southern Cross constellation under which the words "Waltzing Matilda Centenary Winton Queensland 1895" appeared. 23 In March 1995 plans for the design and development of a permanent attraction in the town of Winton celebrating the Song, to be known as the Waltzing Matilda Centre ("the Centre"), were prepared. In October 1996 Winton decided to construct and operate the Centre. In February 1997 the foundation stone for the Centre was laid. On 28 August 1997 a logo for the Centre was finalised and it has been used since then. From October 1997 Winton conducted pre-opening advertising and publicity for the Centre. 24 In particular, in October 1997, Winton circulated a brochure calling attention to "The Waltzing Matilda Centre". The brochure contains the following reference to an aspect of the proposed activities of Winton at the Centre: "Savour old fashioned, home baked bush fare at the Country Kitchen" 25 Winton also caused an advertisement ("the Advertisement") to be published in the 1 November 1997 edition of the Accommodation and Touring Guide of the Royal Automobile Club of Queensland ("the RACQ Guide"). The Advertisement was headed "The Waltzing Matilda Centre". Next to a representation of a rural scene the words "Outback Qld's Newest Attraction Open Easter 1998" appear in a starburst. 26 The following text then appears: "Travel the Matilda Highway to Winton, the home of the Waltzing Matilda legend then visit the outback's exciting new attraction - the Waltzing Matilda Centre. This national centre combines history and creative technology to present the Waltzing Matilda legend, life in the bush, interactive displays with exhibitions which capture the true spirit of the Australian character as well as the famous Qantilda Museum collection. Visit the Waltzing Matilda General Store for unique souvenirs and the Waltzing Matilda Country Kitchen for a traditional homestead meal. Open 7 days - 9.00 am - 5.00 pm. For information: Winton Shire Council. PO Box 228 Winton QLD 4730" 27 Immediately under the Advertisement in the RACQ Guide, the following entry appears: "WALTZING MATILDA CENTRE, WALTZING MATILDA CENTRE AND QANTILDA MUSEUM. [Telephone Number] Winton, the home of WALTZING MATILDA, will open the WALTZING MATILDA CENTRE based upon our national song during Easter 1998. Plan to be part of the opening celebrations from 9-13 April 1998. Include the WALTZING MATILDA CENTRE and QANTILDA MUSEUM in your next outback trip." 28 In March 1998 Winton began operating the Centre. Despite the suggestion in the Advertisement, at no time since the publication of the Advertisement has there been any use of the name "Waltzing Matilda Country Kitchen", whether in connection with the Centre or otherwise. On the other hand, from the time when the Centre began operating, there has been an eating establishment conducted in the Centre under the name "Coolibah Country Kitchen". 29 The Company was formed in January 1999. Since its formation, it has operated the Centre, including the eating establishment called the "Coolibah Country Kitchen".

the decision of the primary judge 30 The primary judge considered that the publication of the Advertisement was evidence of "an existing intention to offer or supply goods bearing the mark in trade" and concluded that there was, in November 1997, a genuine intention to offer to supply food stuffs and restaurant services bearing the mark "Waltzing Matilda". His Honour considered that the use of the words "Country Kitchen" did not defeat that conclusion, in the same way that the description "Waltzing Matilda Restaurant" or "Waltzing Matilda Cafe" would be a use by Ms Lomas of the Trade Mark in relation to goods or services within the classes in respect of which the application was made. 31 His Honour found that Winton used the Trade Mark in relation to the Centre and rejected the contention of Ms Lomas that the relevant marks were "The Waltzing Matilda Centre" and "Waltzing Matilda Centenary Celebrations". Consistently with that conclusion, his Honour considered that, in the Advertisement, the Trade Mark was used rather than the mark "Waltzing Matilda Country Kitchen". 32 His Honour concluded that the goods and services of that prior use of the Trade Mark by Winton were the same as those in the Application, or were at least "the same kind of thing", referring to In Re Hicks' Trademark (1897) 22 VLR 636 at 640. Accordingly, his Honour found that, since Winton had used the Trade Mark before the Priority Date, Winton was the owner of the Trade Mark as at the Priority Date and that, therefore, Ms Lomas was not the owner of the Trade Mark. Accordingly, his Honour held that the opposition should succeed in so far as it was based on s 58 of the Act.

GROUNDS OF APPEAL 33 The questions that would be raised on appeal are limited to the operation of s 58 of the Act. Ms Lomas formulated four so-called errors on the part of the primary judge as follows: (1) His Honour erred in concluding that there was use of the Trade Mark in relation to country kitchen services since, if there was use of a trade mark by Winton before the Priority Date, the trade mark used was "Waltzing Matilda Country Kitchen". (2) Any such use as was made of the Trade Mark in the Advertisement was not use of the Trade Mark such as would give ownership of that trade mark to Winton. (3) Contrary to his Honour's conclusion, an inference should not be drawn that there was an intention to use the Trade Mark as at the Priority Date since Winton's intention as at the date of publication of the Advertisement had changed by the time of commencement of the operation of the Centre in March 1998. (4) The only services in Class 42 in respect of which there was prior use of the Trade Mark in relation to country kitchen services were:

"The establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments, including restaurants, cafes, food outlets, meal rooms, dining venues, eateries, cafeterias, canteens, snack bars, take away stores and fast food outlets." Accordingly, any prior use by Winton found by the primary judge was not such as to extend to the following services in Class 42:

"Providing food stuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services."

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.

specification of goods and services 46 In any event, while the services of a country kitchen may be characterised as "the establishment, operation and conduct of an outlet, venue or facility for the supplying and provision of meals and refreshments", conducting an outlet, venue or facility, which can properly be characterised as a country kitchen providing traditional homestead meals, does not involve: · providing foodstuffs and beverages to outlets, venues and facilities for the supplying of meals and refreshments; · catering services; or · advisory and consultancy services pertaining to the establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments.

It follows that, even if the opposition based on s 58 succeeded, the primary judge erred insofar as his Honour directed that the specification of services in Class 42 be deleted entirely. 47 The orders made by the primary judge for the amendment of the specification of goods in Classes 29 and 30 were based on his Honour's conclusion that Winton and the Company had succeeded in their opposition to registration of the Trade Mark in relation to the services of a country kitchen. If the opposition succeeds, there is no question concerning the correctness of the order for amendment by deleting reference to "prepared foods". However, amendment to the specification of goods in Classes 29 and 30 to delete the reference to "prepared foods" would not be necessary if the opposition fails.

conclusion 48 In the light of the conclusion that Winton had not used the Trade Mark so as to deprive Ms Lomas of ownership as at the Priority Date, the opposition should fail. That is the conclusion reached by the delegate. No amendment to the specification of goods and services in the Application is justified. Accordingly, leave to appeal should be granted and the appeal should be upheld. In lieu of the orders made by the primary judge, there should be orders that the appeal from the Registrar be dismissed with costs. I certify that the preceding forty-eight (48) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper, the Honourable Justice Kiefel and the Honourable Justice Emmett.

Counsel for the Appellant: D M Yates SC and A H Bowne

Solicitor for the Appellant: John Spence & Associates

Counsel for the First and Second Respondents: J V Nicholas SC and A M Musgrave

Solicitor for the First and Second Respondents: Phillips Fox

Date of Hearing: 11 November 2002

Date of Judgment: 11 December 2002