FEDERAL COURT OF AUSTRALIA

Winton Shire Council v Lomas [2002] FCA 288

TRADE MARKS – appeal pursuant to s 56 Trade Marks Act 1995 (Cth) from the Delegate of the Registrar of Trade Marks whereby the Delegate dismissed the applicants’ opposition to registration of the respondent’s trade mark – whether the respondent is the owner of the mark the subject of the opposed application – whether there was a use prior to the Priority Date of the mark “Waltzing Matilda” in respect of the goods and services identified in the opposed application – whether use of the opposed mark is likely to deceive or cause confusion – whether opposed application is substantially identical or similar to two other trade marks the Priority Date for which is earlier than the Priority Date for the mark in question – due weight to be given to the opinion of the Delegate as that of a skilled and experienced person – the relationship between goods and closely related services is defined by the function of the services with respect to the goods.

Trade Marks Act 1995 (Cth), ss 56, 58, 43, 60, 44, 14(1)

Trade Marks Act 1955 (Cth), s 40

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR 592, applied

Blount v Registrar of Trade Marks (1998) 40 IPR 498, applied

Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, applied

The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, cited

Aston v Harlee Manufacturing Company (1960) 103 CLR 391, cited

Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] (1983-1984) 156 CLR 414, distinguished

Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, applied

Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517, cited

In Re Hicks’s Trademark (1897) 22 VLR 636, applied

Eclipse Sleep Products Inc v The Registrar of Trade Marks (1957) 99 CLR 300, applied

Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, applied

Elkington, B., Hall, M. and D. Kell (2000) Trade Mark Law In Australia, Sydney: Butterworths

WINTON SHIRE COUNCIL and THE WALTZING MATILDA CENTRE LIMITED v BRENDA MAURICEEN LOMAS

No. Q 92 of 2000

SPENDER J

BRISBANE

20 MARCH 2002

REASONS FOR JUDGMENT

1                     This is an appeal pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Act) from an unsuccessful opposition to the registration of the trade mark “Waltzing Matilda” in respect of various goods and services, as follows:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; foodstuffs and prepared foods included in this class

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; biscuits and cakes; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; foodstuffs and prepared foods included in this class

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt

Class 35: Services in class 35 namely, advertising; business management and administration; accountancy; franchising and licensing services including the appointment of franchises and licensees and the conduct and management of same; retail and wholesale services relating to acquisition, supply and sale of foodstuffs, beverages and groceries; statistical analysis; information surveys and marketing research; publicity press releases and supervision of promotional campaigns; consultancy services in regard to the above services

Class 42: Services in class 42 namely, 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, takeaway stores and fast-food outlets; providing foodstuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services.”

2                     The application registration by Mrs Brenda Lomas (the respondent) was opposed by the present applicants, the Winton Shire Council and the Waltzing Matilda Centre Limited (WMC). WMC is the operator of a tourist centre and major tourist attraction in Winton called “The Waltzing Matilda Centre”. I will, as did the Delegate, use WMC to indicate both the company and the centre it operates, unless the contrary appears.

3                     WMC was established under the auspices of the Winton Shire Council, and two of the directors of WMC are representatives of the Shire Council.

4                     The Delegate of the Registrar of Trade Marks dismissed the applicants’ opposition to the registration of the respondent’s Australian Trade Mark Application Number 749100 in classes 29, 30, 31, 35 and 42 for the mark “Waltzing Matilda”, and determined that the opposed application proceed to registration. He ordered each applicant to pay one half of the respondent’s costs of the opposition proceedings.

5                     The applicants seek orders that the opposition to the opposed trade mark be allowed; that the application for registration of Australian Trade Mark Application Number 749100 be dismissed; and that the respondent pay the applicants’ costs of and incidental to the opposition and the appeal.

6                     The grounds and particulars of the notice of appeal indicate that the applicants rely on s 58 of the Act for the first ground, s 43 of the Act for the second ground, s 60 of the Act for the third ground and s 44 of the Act for the fourth ground. The first and the fourth are the grounds of most concern.

7                     In the context of an application for registration of a trade mark, the rights of the parties are to be determined as at the date of application, that is, the Priority Date: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR 592 per Kitto J at 595. The Registrar must accept the application unless satisfied that there are grounds for rejecting it: Blount v Registrar of Trade Marks (1998) 40 IPR 498 at 503. However, the nature of an appeal to the Federal Court was referred to by French J in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 422 where his Honour said:

“The jurisdiction conferred upon this court to entertain an appeal from the registrar is of the same character as that formerly conferred upon the High Court under s 45 of the Trade Marks Act 1905 and s 51 of the Trade Marks Act 1955. Being an ‘appeal’ from an administrative decision it is an exercise of the original jurisdiction of the court: Jafferjee v Scarlett, above. Dixon J said of the jurisdiction of the High Court in that case at 126:

‘…the nature of the jurisdiction under s 76 of the Constitution and the terms of the subsection alike show that the court is to determine judicially whether the application should succeed on the merits, and not whether an administrative officer has lawfully discharged his duties. Of course weight will be given to the registrar’s opinion as that of a skilled and experienced person.’

…

The approach adopted in Jafferjee v Scarlett, above, was reiterated in the joint judgment of Dixon CJ, Williams and Kitto JJ in Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 308. Again in that case the court which was exercising, albeit with three justices, its original jurisdiction on appeal from the registrar under the 1905 Act, said that (at 308):

‘…due weight will of course be given to the opinion of the deputy registrar as that of a skilled and experienced person.’”

8                     French J referred to the observation of Branson J in Blount v Registrar of Trade Marks (1998) 40 IPR 498 at 506 where her Honour said:

“Section 197 of the Act, like s 115A of the 1955 Act, discloses, in my view, a clear intention that the established practice of an appeal of this kind being conducted as a rehearing is to be maintained.”

French J then said:

“There is therefore no presumption in favour of the correctness of the registrar’s decision save that weight will be given to the registrar’s opinion as that of a skilled and experienced person. But the court on appeal from the registrar must, in determining the question of acceptance of the application, apply to it the same legal criteria that the registrar is required to adopt. That is to say the application must be accepted unless the court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it.”

9                     So far as it is presently relevant, the evidence establishes that in April 1895 the song “Waltzing Matilda”, the words of which were written by Banjo Patterson, was first performed in Winton. The words to “Waltzing Matilda” had been composed at Dagworth Station, about 100 kilometres from Winton. In March 1995 architectural construction plans for the design and development of WMC were submitted. In April 1995 the Winton Shire Council hosted the Waltzing Matilda Centenary Celebrations of the first performance of the song “Waltzing Matilda”. Those celebrations were held in Winton. Evidence from Nicole Reeve, who was the General Manager of the Waltzing Matilda Centenary Celebrations, is that the Celebrations were a twelve day programme of special events, entertainment, historical displays and exhibitions designed to feature different elements of the themes of the song “Waltzing Matilda”, its history and the connection between the song and the town of Winton. The central feature of the marketing and publicity campaign was the use of a logo:

Waltzing Matilda Centenary

1895 Waltzing Matilda 1995

Centenary

Winton Queensland

6 APRIL 1995

10                  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 and 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 the Winton Shire Council dressed in “swagman” character costuming.

11                  From about March 1995 to April 1995, a Waltzing Matilda store was established in the main street of Winton offering a range of products, brochures and material promoting the celebrations and the town. 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 under which the words “Waltzing Matilda Centenary Winton Queensland 1895” appeared.

12                  In October 1996 the Winton Shire Council decided to construct and operate a permanent and central attraction in Winton celebrating the song “Waltzing Matilda”. In February 1997 the foundation stone for the WMC was laid. On 28 August 1997 the WMC logo was finalised and it was used thereafter. From October 1997 the Winton Shire Council conducted pre-opening advertising and publicity of WMC. On 20 November 1997 the present application for registration of the mark “Waltzing Matilda” was made for Classes 29, 30, 31, 35 and 42. In March 1998 the WMC opened for trade.

13                  The respondent accepts that the town of Winton was associated with the song “Waltzing Matilda” and Banjo Patterson prior to the Priority Date, and the town of Winton organised the 1995 celebration commemorating the 100^th anniversary of the writing and public performance of Banjo Patterson’s “Waltzing Matilda” song. She accepts that the applicants were involved in discussions and negotiations relating to the building of a centre in Winton to be known as “The Waltzing Matilda Centre” in celebration and memory of the fact that the song “Waltzing Matilda” was written near Winton and first publicly performed in Winton.

14                  The respondent contends that in respect of those activities the applicants used five marks, namely:

(i) The Waltzing Matilda Centenary Celebrations;

(ii)               A particular logo being the Waltzing Matilda Centenary logo which is annexed as ‘B’ to the affidavit of N.P. Reeve and which has been described earlier above;

(iii)              A particular logo being a Waltzing Matilda Centenary logo depicted as annexure ‘C’ to the affidavit of N.P. Reeve and which is similar to what appears on the tea towel described earlier;

(iv)            A particular logo being the Waltzing Matilda logo depicted in annexures ‘B’ and ‘E’ to an affidavit of J. Atkin which shows a stylized slouch hat with three corks hanging from the brim, a stylized Southern Cross above and on the hat, and the words “Waltzing Matilda” in a stylized writing with the printed word “Centre” immediately underneath; and

(v)               Waltzing Matilda Centre.

15                  These are the marks which the respondent says the applicants used prior to the Priority Date. The contention by the respondent is that any reputation the applicants may jointly or severally have had prior to the Priority Date was limited to those five marks in the context of the 1995 celebrations commemorating the 100^th anniversary of the writing and public performance of Banjo Patterson’s “Waltzing Matilda” song, with the town of Winton being the potential location of the WMC.

16                  The applicants dispute that the marks which they used were the five identified by the respondent. The claim by the applicants is that the first applicant used the mark “Waltzing Matilda” in April 1995 at the Waltzing Matilda Centenary Celebrations held in Winton, and that prior to the Priority Date of the opposed application, the second applicant used the mark “Waltzing Matilda” in taking preparatory steps to use this trade mark in relation to the licensed restaurant and bakery operated by the second applicant at its tourist centre and museum in Winton from about 1996 to the opening of the Centre in April 1998.

17                  Mr Musgrave, counsel for the applicants, made plain that the applicants’ case is that, when one uses the phrase “The Waltzing Matilda Centre”, that is a use of the mark “Waltzing Matilda”, a mark identical to the opposed mark. Mr Musgrave submitted:

“…when one says Waltzing Matilda Centre the mark which is used is the words Waltzing Matilda in the same way that one would say Waltzing Matilda Restaurant in the way that my learned friend’s application intends to use it or the way that Malvern Star bicycle describes a bicycle, not part of a trade mark, by reference to the trade mark Malvern Star.”

If that be accepted, however, the question becomes whether there was a use prior to the Priority Date of the mark “Waltzing Matilda” in respect of the goods and services identified in the opposed application.

18                  It is convenient to consider the ground based on s 43 of the Act and the ground based on s 60 of the Act before considering the objections based on s 58 and s 44 of the Act.

19                  Section 43 of the Act provides:

“An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.”

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

20                  The applicants contend, on this ground, that consumers are likely to be deceived or confused on the basis that use of the mark “Waltzing Matilda” in respect of the goods and services for which application for registration was made suggests a connection with the song or with the town of Winton or an endorsement or approval by the town or its representatives that it does not have. It was submitted that the strong association between the Winton area and the song and story of “Waltzing Matilda” meant that the opposed application and the use of the words “Waltzing Matilda” mean that the respondent is attempting to generate an association in terms of geographic origin between the goods and services the subject of the opposed application, and the applicants. Further, it was submitted that the respondent, by the opposed application, is seeking to make a suggestion that there is some sponsorship, approval or affiliation between the applicants, the Winton area and the respondent.

21                  I reject these contentions. The proposed use by the respondent of the mark “Waltzing Matilda” on or in respect of any of the goods or services sought in the application in my opinion brings to mind no more than the “Waltzing Matilda” song or, at the most, is likely to convey to the reasonable member of the public the Australian nature of those goods and services. There would not be a connotation of a connection with the WMC at Winton, the town of Winton or the Shire Council of the town of Winton.

22                  Section 60 of the Act provides:

“The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)              it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)              because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.”

23                  The applicants contend that the opposed mark is likely to deceive or cause confusion. It was submitted that the mark is likely to deceive or confuse because it is so similar to the trade mark that, on a proper comparison between the ordinary person’s possibly imperfect recollection of the trade mark and the opposed application, the impression which is gained from the opposed application is that of the song, the story behind the song and, as a consequence, the Winton district. It is claimed that, as a result of the extensive promotion and marketing, the town of Winton has a strong connection with the story and the song “Waltzing Matilda”.

24                  As I see the matter, the position is that the mark “Waltzing Matilda” has been used as a trade mark in respect of the Celebrations and in respect of the Centre established in the town of Winton to celebrate the song and the town of Winton’s connection with it. The use of the mark in connection with the tourist centre or in respect of the Centenary Celebrations is not such as to cause confusion as provided for by s 60.

25                  It seems to me that there are only a very small number of instances where the phrase “Waltzing Matilda” has been used by one or other of the applicants in connection with any of the goods or services in respect of which the opposed application is made. [That small use, before the Priority Date, is, as these reasons later attempt to show, good enough to get the applicants home on the s 58 ground.]

26                  The evidence establishes that there is a coffee shop in the WMC that trades under and by reference to the name and trade mark “Coolibah Country Kitchen”. The name “Waltzing Matilda Centre”, when used in conjunction with the Coolibah Country Kitchen restaurant, is, in my opinion, used as an indicator of the physical location of the coffee shop, which is an integral part of WMC, which opened on 20 March 1998. So, too, in respect of the use of labels on bakery products produced by the Coolibah Country Kitchen as part of WMC. The labels which are affixed to those bakery products read: “Baked fresh and local at: Coolibah Country Kitchen Winton”, and adjoining that statement is the slouch hat Waltzing Matilda Centre logo.

27                  It is therefore necessary to turn to the question of s 58 of the Act. Section 58 provides:

“The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.”

28                  The respondent contends that the applicants have used the five marks earlier indicated and have not used the mark “Waltzing Matilda”. I disagree. In my opinion, the applicants have established a use of the mark “Waltzing Matilda” in relation to the tourist centre in Winton opened in March 1998 and in respect of the Centenary Celebrations in 1995. The question, it seems to me, is not whether there has been use of the mark “Waltzing Matilda” by the applicants, but whether there has been any use prior to the Priority Date of that mark in respect of any of the goods or services the subject of the opposed application.

29                  “Ownership” in s 58 of the 1995 Act in my view has the same meaning as proprietorship under s 40 of the 1955 Act. In The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, Dixon J (as he then was) said at 627:

“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…”

Insofar as the first element is concerned, that of authorship, authorship does not mean invention and a trader who uses another’s mark as yet unused in Australia or for particular goods and services can claim to be its author. Fullegar J in Aston v Harlee Manufacturing Company (1960) 103 CLR 391 at 399 referred to the observations of Dixon J in the Rohm case at 628 that:

“Authorship involves the origination or first adoption of the word or design as and for a trade mark.”

30                  A ground of opposition to the registration of the mark, being that there was no intention in the applicant for registration to use it upon or in connection with all of the goods in respect of which the mark was sought, was suggested in the course of argument: cf s 59 of the Act. In this respect, Fullegar J in Aston said at 401:

“There is another element mentioned by Dixon J. in the Shell Co’s Case (1949) 78 CLR at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.”

31                  This point was not raised before the Delegate of the Registrar, nor in the notice of appeal to this court. Being a matter where the opponent bears the onus, and the intention of the application for registration at the Priority Date being a matter on which evidence might have been led, it is not open to the present applicant to take the point. Even if it were competent, it would fail on the present state of the evidence and the prima facie intention to use that arises on the making of the application referred to by Fullager J above.

32                  The contest in this case is between the respondent who was first to file and the applicants who claim to have been the first to use. The learned authors in Trade Mark Law in Australia, Elkington, Hall and Kell say at p 77 in par 58.05:

“In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or ‘the same type of thing’.”

33                  Use of the marks “The Waltzing Matilda Centre” or “Waltzing Matilda Centenary Celebrations” is not a use of the mark applied for or “one extremely close to it”. If those had been the trade marks used, then the owner of those trade marks is not the owner of the trade mark “Waltzing Matilda”. In my opinion, however, the applicants have variously used the trade mark ”Waltzing Matilda”. That use has certainly been in the context of a trade mark for a tourist centre, and as a trade mark for an event celebration. The question is whether, before the Priority Date, there was a use by the applicants of “Waltzing Matilda” as a trade mark in commerce for the goods or services of the application or “the same type of thing”.

34                  I do not consider that the use of WMC as an indicator of the location of the Coolibah Country Kitchen was such a use, nor was any use of the words “Waltzing Matilda” when those words are used in connection with “Centenary Celebrations”. There are, however, two instances where there may have been a use by one or other of the applicants of “Waltzing Matilda” as a commercial trade mark in respect of the goods or services of the application or “the same type of thing”. I should say, before considering those instances, that there is no question here of whether the requirement that the marks be “identical or substantially identical” is different from the requirement under the 1995 Act. The question in this case is whether there has been, by the applicants, commercial use of the words “Waltzing Matilda” as a trade mark for the goods and services of the application “or the same type of thing”.

35                  I am not here concerned with the problem that has arisen in cases such as Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] (1983-1984) 156 CLR 414 where the opponent had taken preparatory steps towards commencing use but not yet sold goods in Australia. In that case, Deane J said at 433-434:

“The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark ‘Yanx’; Ex parte Amalgamated Tobacco Corporation Ltd. (1951) 82 CLR 199 at pp. 204-5); or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co. of Australia v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR at p. 422. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.”

36                  If it is possible to identify an actual trade or offer to trade in the goods (or services) bearing the mark, or an existing intention to offer or supply goods (or services) bearing the mark in trade, that is sufficient.

37                  As to the extent of use prior to the Priority Date, a very small amount of use will suffice. In Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, an overseas company had sold a single prototype boat to a proposed Australian licensed manufacturer, and used its “Thunderbird” trade mark in correspondence relating to that sale. Jacobs J held that that sale established proprietorship in Australia and stated (at 600):

“The first question which arises is as follows: Since American Marine Distributors Pty. Ltd. did not use the trade mark in Australia prior to 1^st December 1965, the date of the application, was it the proprietor of the mark at that date so as to entitle it to make application to the Registrar under s. 40 for the registration of that mark? It was only the claim that it was the ‘author’ of the trade mark in Australia which could sustain the right to registration: Blackadder v. Good Roads Machinery Co. Incorporated (1926) 38 CLR 332; Shell Co. of Australia Ltd. V. Rohm and Haas Co. (1949) 78 CLR 601, at pp. 625, 627-629 esp. per Dixon J. It was not the ‘author’ of the trade mark if that trade mark had been used by a person in Australia before the date of the application ‘in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods’ and that person. See the definition of ‘trade mark’ in s. 6. Such a use has been described as a use on the Australian market. It has been held that any use at all on the Australian market will suffice to deny to the applicant the right to claim authorship and consequent registration: Seven Up Co. v. O.T. Ltd. per Williams J. (1947) 75 CLR 203, at p. 211 in a passage adopted by Latham C.J. on appeal (1947) 75 CLR, at p. 216.” (Emphasis added)

38                  The passage quoted from Moorgate Tobacco clearly envisages that either of an alternative will suffice: preparatory steps coupled with an actual trade or offer to trade; or preparatory steps coupled with an existing intention to offer or supply goods in trade. The second of these was accepted by Gummow J in Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517 as constituting a prior use. In that case the opponent had taken preparatory steps towards launching a new magazine, including offering advertising space, but had made no sales or offers to sell magazines. His Honour said at 520:

“These steps amount to sufficient activity by the opponent to produce the result that the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade.” [emphasis added]

39                  Exhibit I to the affidavit of John Aitken filed 8 December 2000 is a copy of the RACQ Queensland Accommodation and Touring Guide dated 1 November 1997. At page 304 of that guide, under the heading “Winton”, appears the following:

“Waltzing Matilda Centre. Waltzing Matilda Centre and Qantilda Museum. 07-46571188 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.”

40                  An advertisement at that page of the guide of approximately one quarter of a page is headed “The Waltzing Matilda Centre”. That advertisement says, in part: “Travel the Matilda Highway to Winton, the home of the exciting Waltzing Matilda legend and visit the outback’s exciting new attraction – the Waltzing Matilda Centre.” The star next to a photograph of the complex has the statement: “Outback Qld’s Newest Attraction Opening Easter 1998” and the last paragraph before the foot of the advertisement which says “For more information: Winton Shire Council PO BOX 228 WINTON QLD 4730” reads:

“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.”

41                  As it turned out, the restaurant or café in WMC at Winton was called “The Coolibah Country Kitchen”.

42                  I regard this as evidence of “an existing intention to offer or supply goods bearing the mark in trade”. There was, in November 1997, a genuine intention to offer to supply foodstuffs and restaurant services bearing the mark “Waltzing Matilda”. The use of the words “Country Kitchen” do not defeat this conclusion, in the same way that the description “Waltzing Matilda Restaurant” or “Waltzing Matilda Café” would be a use by the respondent of the trade mark applied for in relation to goods or services within the classes of goods and services in respect of which the application for a mark was sought. In my opinion, the goods or services of the prior user are the same as those of the opposed application, or at least “the same kind of thing”, adopting the phrase from In Re Hicks’s Trademark (1897) 22 VLR 636 at 640.

43                  As Dixon J said in the Rohm case at 628:

“A man cannot be said to have adopted a name if someone else has done so before him.”

44                  One other use of the words “Waltzing Matilda” as a trade mark in connection with foodstuffs should be mentioned. John Aitken is the event producer and director of John Aitken Productions Pty Ltd, and in about October 1996 that company was engaged by the Winton Shire Council to consult and assist in developing the conceptual model and thematic guidelines for the construction and marketing of a permanent tourist facility in Winton to celebrate “Waltzing Matilda” and its history and connection with the town (the “Waltzing Matilda Centre (or WMC) project”). Mr Aitken swears (in his affidavit filed 8 December 2000 at par 17):

“I envisaged that the souvenir and merchandising outlet in the WALTZING MATILDA Centre would feature a range of products including a variety of food products, footwear, clothing and other items that were styled to reflect a uniquely Australian character and promote the WALTZING MATILDA brand and tourist centre.”

He says that he commenced negotiations with a number of manufacturers and suppliers of promotional and souvenir products in order to develop and produce that product range in about September 1997. Some of those manufacturers included Arnott’s of Australia, Zest Ice Creams, Sorbets, Ice Cream Cakes and Frozen Delicacies and Country Harvest Australia Pty Ltd. Mr Aitken says (at par 18):

“In or about October 1997 I engaged Dot Dash to design packaging for the proposed food products to be sold at the retail outlet at the Centre.”

Exhibit K to Mr Aitken’s affidavit is the revised proposal received from Dot Dash dated 23 October 1997 for the design of a number of items including food packaging. This was in response to an engagement of Dot Dash by Mr Aitken to design packaging for the proposed food products to be sold at the retail outlet at the centre. That response by Dot Dash commenced:

“RE: Revised proposal for Waltzing Matilda Merchandise

Please find a revised proposal for Waltzing Matilda Merchandise following.”

Included with that letter was a document headed “Revised Proposal” dated 23 October 1997 and under the heading “Graphic Design Services” the following appeared:

“Waltzing Matilda Merchandise

Design and Design Development of current concepts for

a) Polo Shirt, b) Swagman T-shirt Design, c) Dog T-shirt Design,

d) Crow T Shirt Design, e) Windmill T Shirt Design, f) Cap, g) Spoon,

h) Tea Towel, i) Magnet, j) Placemat, k) Food Packaging”

45                  In respect of this use of the words “Waltzing Matilda” there was, in my opinion, no existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all. In this case there were merely preliminary discussions and negotiations about whether the mark would be so used. The discussions and negotiations outlined in pars 17, 18 and 19 of Mr Aitken’s affidavit were not a use of the mark “Waltzing Matilda” as a trade mark.

46                  The final matter concerns s 44 of the Act, which relevantly provides:

“(1) … an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)            a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)          a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)              the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.”

47                  Section 44(2) is in similar terms, in connection with an application for the registration of a trade mark in respect of “services”.

48                  The Priority Date for registration in respect of the name “Waltzing Matilda” held by Jolly Swagman Pty Ltd for mark 218783 in respect of Class 32 is 29 April 1968, and for mark 228232 in respect of Class 33, 23 April 1969. The Priority Date for those registrations therefore pre-date the opposed application. The marks in this case are identical. The questions therefore are whether the goods of the registered proprietor Jolly Swagman Pty Ltd are similar to the goods covered by the application: s 44(1) of the Act; or whether the goods of the registered proprietor are closely related to the services covered by the application: s 44(2) of the Act.

49                  The goods covered by trade mark registration 218783 are: “All goods in Class 32”, that is “beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.”

50                  The goods covered by trade mark registration 228232 are: “Wines, spirits and liqueurs”.

51                  Section 14(1) of the Act defines goods as being similar to other goods if they are the same as those other goods or if they are of the same description as those other goods. The phrase “goods of the same description” (used in the 1955 Act) implies a relationship between the goods such that they would be taken as having the same trade origin if sold under deceptively similar marks.

52                  The factors to be taken into account, at least in relation to goods, are the nature of the goods, their uses and the trade channels through which they are sold, although no single consideration is conclusive on its own: Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR 592 at 606.

53                  In exercising the jurisdiction of the Court, due weight will of course be given to the opinion of the Delegate as that of a skilled and experienced person: Eclipse Sleep Products Inc v The Registrar of Trade Marks (1957) 99 CLR 300 at 308. However, no submission was made to the Delegate of the Registrar based on s 44 of the Act. It is therefore drawing a long bow to submit, as the respondent did, that the goods the subject of application 749100 were not goods similar to the goods the subject of the registrations, because the Delegate allowed the application to proceed to acceptance.

54                  In my opinion, the Registered Goods are not the same as, or of the same description as, the goods the subject of the application. The Registered Goods are beverages, while the goods the subject of the opposed application are edible commodities, notwithstanding the reference to coffee, tea, cocoa and artificial coffee in Class 30. I regard all of Class 29 and Class 30 as not referring to beverages. Classes 35 and 42 related to services.

55                  On the question of closely related services, the relationship should be defined by the function of the services with respect to the goods: Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 424 par 38. There, French J said:

“Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods… Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 1 IPR 265; 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks ‘…of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone’.”

The only services of relevance in this context are those relating to the conduct of outlets for the supply and provision of meals and refreshments. The registered goods are beverages, purchased for domestic or restaurant use. Outlets for the supply of meals and refreshments are a catering service where food is prepared and beverages are made available to be consumed on the premises of the outlet. Are beverages goods which are “closely related” to a catering service, where food and beverages are made available to be consumed on the premises? The goods and the relevant services have different trade channels.

56                  The question is not without difficulty but, on balance, I am not satisfied that the operational outlets for the supply and provision of meals and refreshments should be considered as being “closely related” to the Registered Goods, namely beverages.

57                  I should note also that the only submission on s 44 of the Act in the written submissions of the applicants is “The goods sought to be registered under the opposed application are similar or closely related goods to the goods sought to be registered under the opposed application”. In my opinion, the goods sought to be registered under the opposed application being those set out in classes 29 and 30 are not similar or closely related to the goods in the “Jolly Swagman” marks, being goods in class 33, and class 36.

58                  For the above reasons, only the ground of opposition based on s 58 of the Act has been made out.

59                  I will hear from the parties as to the form of orders I should make in the light of these reasons, and on costs.

Associate:

Dated: 20 March 2002