FEDERAL COURT OF AUSTRALIA

Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278

TRADE MARKS – appeal from decision of the Registrar of Trade Marks that dismissed applicant’s opposition to registration of respondent’s trade mark – whether respondent true owner of the trade mark – relevant tests in determining ownership and ‘use’ of trade mark – whether applicant used trade mark in the course of trade.

Trade Marks Act 1995 (Cth), ss 17, 27, 58

Shell Company of Australia Limited v Rohm and Hass and Anor (1949) 78 CLR 601 cited

Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 cited

Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149 applied

Setteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 cited

The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 applied

SHAHIN ENTERPRISES PTY LTD ACN 008 150 543 v EXXONMOBIL OIL CORPORATION

SAD 197 of 2004

LANDER J

13 SEPTEMBER 2005

ADELAIDE

THE COURT ORDERS THAT:

1.         The appeal be dismissed.

2.         The applicant to pay the respondent’s costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     This is an appeal from the decision of the Registrar of Trade Marks (by her delegate Hearing Officer Jock McDonagh) given on 16 August 2004 whereby the applicant’s opposition to the respondent’s application for the registration of Australian Trade Mark Application No. 797721 for the words ‘ON THE RUN’ was dismissed and it was directed that the trade mark may proceed to registration.

HISTORY

2                     The applicant is a family company, owned by Fathi Shahin (who is known as ‘Fred’ Shahin), his wife Salwa Shahin and his son Khalil Shahin (who is known as ‘Charlie’ Shahin). The applicant belongs to the ‘Peregrine Corporation’, which is an umbrella name given to the group of companies controlled by the Shahin family.

3                     The applicant was incorporated in 1987 and carries on a variety of businesses including ‘Smokemart’ tobacconists, petrol filling stations, convenience stores and food outlets such as ‘Subway’, ‘Wok in A Box’ and ‘Brumbys’. The business is controlled by Fred and Salwa Shahin, and their three sons, Charlie, Samer and Yasser.

4                     The applicant presently operates 36 ‘On The Run’ convenience stores throughout the Adelaide metropolitan area. It employs around 800 full-time and casual staff in its convenience store outlets.

5                     As at January 1999, the applicant owned and operated four ‘drive-thru’ convenience stores in the Adelaide metropolitan area. The ‘drive-thru’ stores were situated at:

1.      138 Salisbury Highway, Salisbury;

2.      693 Port Road, Woodville Park;

3.      Corner of West Terrace and Currie Street, Adelaide; and

4.       471 Tapleys Hill Road, Fulham Gardens.

6                     Each of the applicant’s ‘drive-thru’ stores sold, tobacco and convenience merchandise.

7                     In addition to the convenience stores, in January 1999, the applicant also operated approximately thirteen petrol filling stations in the Adelaide metropolitan area.

8                     In his affidavit, Fred Shahin deposed that since the commencement of Mr Yasser Shahin’s involvement in the applicant’s business in 1996 he has met with his two sons Yasser and Charlie on a daily basis to discuss ideas for the development of the applicant’s convenience, food and petrol businesses. Fred, Charlie and Yasser Shahin all deposed that in January and February 1999 they considered a variety of brand names for their ‘drive-thru’ convenience stores. Fred and Yasser Shahin said that they wanted a name that conveyed the nature of their ‘drive-thru’ convenience store concept, which was to provide a quick and convenient service for motorists who were too busy to get out of their cars at a supermarket but needed to buy cigarettes or a few items of merchandise.

9                     On or about 18 January 1999 the applicant appointed a marketing firm, McGregor Marketing Pty Ltd (McGregor Marketing) to conduct surveys and prepare a report relating to the applicant’s ‘drive-thru’ convenience stores.  Yasser Shahin on behalf of the applicant met with Ian McGregor on behalf of McGregor Marketing for that purpose.

10                  There was no evidence as to who first thought of the name ‘On the Run’ or the circumstances in which the name was developed. Fred, Yasser and Charlie Shahin all deposed that they could not recall who first suggested the name. Fred Shahin deposed in his affidavit that he thought the name ‘On The Run’ reflected the ‘quick drive thru convenience store concept that we were trying to achieve’. Yasser deposed that he liked the name as soon as he heard it because it ‘fitted with our concept of a fast drive thru convenience store for busy people’.

11                  On 25 February 1999 the applicant applied for registration of the business names ‘On The Run’ and ‘On The Run Convenience Store’ at the Office of Consumer and Business Affairs in South Australia.

12                  That application stated that the nature of the business was to be a convenience store and fuel retailer; that the physical place of business in South Australia was to be 701 Port Road Woodville Park SA 5011; and that the date of commencement of the business was to be 1 May 1999.  The applicant became the registered proprietor of the business name ‘On The Run Convenience Store’ in South Australia on 1 March 1999.

13                  On that same day, Yasser Shahin received a facsimile from McGregor Marketing which included a list of possible names for the applicant’s ‘drive-thru’ convenience store concept.

14                  On or about 8 March 1999 the applicant applied for registration of the business names ‘On The Run’ and ‘On The Run Convenience Store’ at the Department of Fair Trading in New South Wales. The Application for Registration of a Business Name in New South Wales disclosed that the nature of the business was to be a convenience store and fuel retailer; that the principal place of business in New South Wales was to be Shop B18 Merrylands Shopping Centre, McFarlane Street, Merrylands NSW; and that the date of commencement of the business was to be 1 May 1999.  The applicant became registered in respect of the business name ‘On The Run’ in New South Wales on 15 March 1999.

15                  In his affidavit, Fred Shahin deposed that he, Yasser and Charlie decided to go ahead with the ‘On The Run’ convenience store concept as soon as the applicant had become the registered proprietor of the ‘On The Run Convenience Store’ business name in South Australia on 1 March 1999.

16                  On 24 March 1999 the applicant’s solicitor wrote to Fred Shahin in the following terms:

‘…it is important that Shahin Enterprises Pty Ltd commences to use the name in South Australia and New South Wales. If it does not do so within two months after registration, then the Business Names Office may de-register Shahin Enterprises Pty Ltd as the owner of the name, if anyone else applies for registration of that name.’

17                  Fred Shahin said that he took the advice in his solicitor’s letter ‘very seriously’ as he did not want to lose the registration of the business names. He deposed to meetings with Yasser to discuss possible signage for a convenience store bearing the ‘On The Run’ logo. He also stated that in April 1999 he met with Desmond Kelly of Winkle Shopfitters to discuss a shop fit for a convenience store bearing an ‘On The Run’ logo. Fred Shahin said that some time after the applicant became the registered proprietor of the ‘On The Run Convenience Store’, he had a series of meetings with a builder named Dominic Scutella. He instructed Mr Scutella to apply, on behalf of the applicant, to the City of West Torrens for approval to develop a retail outlet and take away food premises at the applicant’s petrol filling station at Mile End. He also informed Mr Scutella of the ‘On The Run’ concept and instructed Mr Scutella to draw the plans for the ‘drive-thru’ convenience store. Fred Shahin could not recall the precise date that he instructed Mr Scutella to draw the plans. However, he said that after 1 March 1999 he would meet with Mr Scutella several times per week to discuss the plans.

18                  On 20 April 1999 the City of West Torrens granted Provisional Development Plan Consent for the development of the Mile End outlet.

19                  On or about 18 May 1999 Mr Scutella showed Fred Shahin two plans for the Mile End outlet. One of the plans showed a pylon with the applicant’s ‘On The Run’ sign on it.

20                  Fred Shahin approved the plans on 18 or 19 May 1999. He instructed Mr Scutella to lodge the plans at the City of West Torrens, save for the removal of the words ‘On The Run’ from the sign on one of the plans. Fred Shahin deposed that he instructed the removal of the words because Mr Scutella had recommended that signage should be dealt with in a separate application. On 2 June 1999 the City of West Torrens granted development approval for the Mile End outlet in accordance with those plans.

21                  As the General Manager of the applicant, Yasser Shahin was responsible for the running and development of the convenience stores, food offers and petrol filling stations retail outlets. Between January 1999 and September 1999 he liaised with various people in converting the ‘On The Run’ concept into retail outlets.

22                  He said that some time in March 1999 he instructed Neil Uppington of Russell Signs to prepare some graphic designs for a convenience store concept using a logo bearing the words ‘On The Run’. He told Mr Uppington that the ‘On The Run’ logo was to be used for the applicant’s convenience stores and not limited to a single store or location. Some time prior to 13 April 1999 Yasser Shahin received some sketches and designs showing the ‘On The Run’ logo from Mr Uppington.

23                  On 13 April 1999 Russell Signs sent Yasser Shahin an invoice ‘for the preparation of colour visuals and concepts for “ON THE RUN as confirmed by Mr Yasser Shahin”’.

24                  On 22 April 1999 Yasser Shahin received artwork from Russell Signs which featured ‘On The Run’ signage.

25                  On 27 May 1999 Mr Uppington sent Yasser Shahin a letter that referred to Russell Signs’ revised quotation for the ‘On The Run’ signage at the Woodville Drive Thru convenience store. On 28 May 1999 Yasser Shahin received a revised quotation for a pylon sign at the Woodville outlet, including the words ‘On The Run Convenience Store’.

26                  Between 31 May 1999 and 8 June 1999 Mr Uppington produced a series of further artwork showing signage featuring the ‘On The Run’ mark for the Woodville outlet and the applicant’s head office. On 9 June 1999 Yasser Shahin signed an Acceptance of Quotation for signage featuring the ‘On The Run’ logo and arranged for the applicant’s accounts office to send to Russell Signs a cheque for a deposit. On 17 June 1999 he signed a further Acceptance of Quotation for further ‘On The Run’ signage work.

27                  On 12 April 1999 a meeting took place between Fred, Yasser and Charlie Shahin to discuss the results of the surveys conducted by McGregor Marketing. Yasser deposed that the survey results indicated that ‘On The Run’ was the leading name which ‘vindicated the decision that Fred Shahin, Charlie Shahin and I had made to go ahead with the “On The Run” drive thru concept’.

28                  Yasser Shahin said that on 27 April 1999 he met with Michael Antrobus on behalf of Avem Pty Ltd (Avem), a company that carries on a food service equipment and service business. At that meeting, he told Mr Antrobus about the re-branding of the applicant’s ‘drive thru’ convenience stores using the ‘On The Run’ concept and sought advice in relation to food service equipment and a floor plan for the Salisbury store. Some time after that meeting, Mr Antrobus provided him with a report called ‘Smokemart Drive-Thru, Salisbury ‘On The Run’’ that detailed the objectives discussed at the meeting.

29                  On 12 May 1999 Mr Antrobus sent the applicant a letter which included quotations to purchase convenience food equipment. The subject of the letter was stated to be ‘On The Run, Salisbury’.

30                  By facsimile dated 25 May 1999 Mr Antrobus sent Yasser Shahin two layout plans for ‘On The Run’ at Salisbury. On 7 June 1999 Yasser and Mr Antrobus met and discussed the ‘On The Run’ concept generally. They discussed the idea of having ten primary offers under the ‘On The Run’ umbrella, which could include Subway, Smokemart, coffee, slushies, hot chickens and other offers. They discussed mixing and matching those offers to suit the demographics of each ‘On The Run’ store. At a subsequent meeting on 18 June 1999 Mr Antrobus and Yasser Shahin met and discussed a ‘dine in’ concept for the ‘On The Run’ stores. Yasser Shahin and Mr Antrobus met again on 13 August 1999 to discuss the shop fit for the stores and further develop the feature food concepts and operational procedures for the ‘On The Run’ stores.

31                  In April or early May 1999 Fred Shahin instructed Desmond Kelly of Winkle Shopfitters to prepare some designs using the ‘On The Run’ logo. In May 1999 the applicant received from Winkle Shopfitters a concept drawing called ‘‘On The Run’ Drive Thru Convenience Store Andrea Stone 5.99’ depicting shelving with the ‘On The Run’ logo on the pelmet.

32                  A few days after the applicant received that drawing from Winkle Shopfitters, Yasser and Fred Shahin met with Desmond Kelly and Andrea Farrell (then known as Andrea Stone). At that meeting they reviewed the ‘On The Run’ concept drawing and Yasser and Fred Shahin instructed Winkle Shopfitters to go ahead with a floor plan for the Woodville Drive Thru.

33                  On 19 May 1999 Yasser Shahin inspected a floor plan produced by Winkle Shopfitters, which showed the layout of the Woodville Drive Thru. The floor plan was entitled: ‘On The Run – Drive Through 693 Port Road Woodville Park’. Yasser Shahin wrote some notes on the floor plan, including the words ‘On The Run Pamphlet’. He said that those words evidenced an intention to organise a pamphlet drop advertising the applicant’s ‘On The Run’ store at the Woodville Drive Thru. Yasser Shahin said that he could not remember when he wrote those notes.

34                  By letter dated 26 May 1999 Mr Kelly submitted a quote to the applicant for ‘On The Run’ shop-fit items and signage for the ‘On The Run’ Woodville outlet.

35                  On 29 June 1999 Winkle Shopfitters rendered an invoice in the sum of $12,790 for ‘On The Run’ to the applicant.

36                  On or about 15 July 1999 Yasser received a floor plan from Mr Kelly showing the layout of the applicant’s ‘drive-thru’ convenience store at South Road, Mile End.

37                  On 19 May 1999 Yasser Shahin also met with an advertising and marketing adviser, Kim Baker to discuss Subway marketing. Yasser Shain said that he had told Mr Baker about the ‘On The Run’ concept prior to this meeting. At the meeting, they discussed how to publicly launch the ‘On The Run’ ‘drive thru’ convenience stores.

38                  Yasser Shahin met with Kim Baker again on 2 June 1999. At that meeting, Mr Baker submitted a proposal from Radio 5AA for ‘On The Run’ advertising for the period 18 August 1999 to 1 September 1999. Mr Baker also presented Yasser Shahin with a document entitled ‘Cost Schedule for Subway Woodville Opening’. That document set out the anticipated costs for an advertising campaign for ‘On The Run’ in the weeks commencing 16 August 1999 and 23 August 1999. It included quotations for advertising in the Messenger Press; a distribution of over 31,000 leaflets in Woodville and Arndale areas; production of 85,000 ‘On The Run’ colour leaflets; and Radio 5AA advertising. Kim Baker and Yasser Shahin also discussed one additional radio campaign on the SA-FM radio station. 

39                  Between the two meetings on 19 May and 2 June, Yasser Shahin and Mr Baker discussed the idea of a flyer that could be handed to customers of the Woodville Drive Thru to promote awareness of the forthcoming ‘On The Run’ convenience store. Yasser Shahin said that he wanted customers of the Woodville Drive Thru to know that the ‘On The Run’ convenience store would be opening soon and would offer an Automatic Teller Machine, food, magazines, groceries and other offers. Yasser Shahin instructed Kim Baker to include an offer of a discount on Coca Cola and Farmer’s Union Iced Coffee.

40                  At the 2 June 1999 meeting, Mr Baker provided Yasser Shahin with a flyer called ‘Opening Soon On The Run’. The flyer advertised Coca Cola and Farmer’s Union Iced Coffee as ‘Specials!’. The discounted prices were stated to be available until Friday 18 June 1999 or until sold out.

41                  On that same day, Yasser Shahin showed the flyer to the store manager of the Woodville Drive Thru, Mr Hilmi El Youssef. He and Hilmi El Youssef photocopied and guillotined more than 1000 flyers and put them in boxes for distribution from the Woodville Drive Thru. At that time, Yasser Shahin explained the ‘On The Run’ concept to Hilmi El Youssef and instructed him to give one flyer to every customer of the Woodville Drive Thru regardless of whether the customer purchased anything.

42                  Hilmi El Youssef took the flyers to the Woodville Drive Thru and instructed all staff members of the store to hand a flyer to each customer. Saadi El Mina, a full time employee at the Woodville Drive Thru store deposed:

‘I did what Hilmi El Youssef instructed me to do. Every time a customer came to the Woodville Drive-Thru from early June 1999, I handed that customer one flyer. If the customer had bought something I gave them the flyer at the same time as I gave them back their receipt and change. Otherwise I would just give the customer a flyer.’

43                  Saadi El Mina also deposed to having seen the other employees at the Woodville Drive Thru handing the flyers to customers. Hilmi El Youssef said he handed out flyers to customers of the Woodville Drive Thru during each of his shifts until the offer expired on 18 June 1999.

44                  Hilmi El Youssef said that the leaflets were distributed prior to Saturday 5 June 1999. He said that he recalls that date as he had a celebration for his wife’s birthday at his house on that day. He said that during the afternoon he received a telephone call from a staff member of the Woodville Drive Thru telling him that the promotion had made them very busy and that the store was running out of Coca Cola because of customers taking advantage of the discounted price advertised in the flyer. Hilmi El Yousself said that he drove to the applicant’s petrol station at Woodville Park and loaded six or seven cases of Coca Cola into the car and delivered them to the Woodville Drive Thru.

45                  Hilmi El Youssef and Saadi El Mina both deposed that in early June there was an A-frame sign with the words ‘On The Run’ on the footpath near the Woodville Drive Thru building.

46                  The respondent’s application for registration of its trade mark was filed on 18 June 1999.  The priority date is 18 June 1999.

47                  The applicant offered further evidence relating to events after the priority date.  That evidence was contained in the various affidavits read by the applicant.  It was objected to by the respondent as being irrelevant to the matters raised on this appeal.  I agree with the respondent’ s submission that this further evidence is irrelevant and I decline to receive it.

THE APPLICATION

48                  As I have said, on 18 June 1999 the respondent lodged Trade Mark Application No 797721 under the Trade Marks Act 1995 (Cth) (the Act) for the words ‘ON THE RUN’ in respect of the following goods:

‘Class 4: Oils and greases and other lubricants, fuels, including petrol, kerosene, liquefied natural gas, petroleum gas and other petroleum products in this class, illuminants.

Class 16: Paper; cardboard; greeting cards, stationary, photographs, adhesives, paint brushes, plastic materials for packaging, writing instruments, magazines, newspapers, playing cards.

Class 25: Clothing, footwear and headgear.

Class 29: Meat, fish, poultry, meat extracts, preserved, dried and cooked fruits and vegetables, jams, preserves, eggs, dairy products including milk, cheese, yoghurt and cream, edible oils and fats, salad dressings and other foodstuffs in this class.

Class 30: Coffee, tea, cocoa, sugar, rice, flour and preparations made from cereals, bread, pastry and confectionary, ice cream and ices, honey, treacle, baking powder, salt, mustard, vinegar, sauces of all kinds, spices, crushed and other ice.

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

Class 37: Service station services for vehicles, repair and maintenance of vehicles, vehicle washing, driveway service and self services for vehicles, dry cleaning and laundry services.

Class 40: Photographic film development and processing.

Class 42: Café, buffet, restaurant, self service food, food and bar and other services related to the sale or supply of prepared food, snack food, food to be prepared, beverages and confectionary, grocery services, green grocery services, retailing and wholesaling of grocery, foodstuffs, sunglasses and eyewear, convenience stores, newsagency services, lottery sales, ticket sales, music store services including sales of compact discs and CD Roms, travel agency and advice.’

49                  On 7 February 2001 the applicant lodged Trade Mark Application No 865053 for the mark ‘On The Run’.

50                  On 28 June 2001 the Registrar of Trade Marks accepted the respondent’s application and on that same date, the acceptance was advertised in the Australian Official Journal of Trade Marks.

51                  On 26 September 2001 the applicant filed a Notice of Opposition to Registration pursuant to s 52 of the Act with the Registrar of Trade Marks. The Notice of Opposition disclosed the following grounds:

‘1.        The opposed trade mark is incapable of distinguishing the applicant’s goods in respect of which the opposed trade mark is sought to be registered from the goods of other persons.

2.                  The registration or use of the opposed trade mark would be contrary to law.

3.                  The registration or use of the opposed trade mark would be likely to deceive or cause confusion because of a connotation of the trade mark, or of a sign contained in the trade mark.

4.                  The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks whose registration in respect of similar goods or closely related services is being sought by another person, in particular Trade Mark Application No 865053.

5.                  The applicant is not the owner of the opposed trade mark.

6.                  The applicant neither intends to use, or authorise the use of, the trade mark, in Australia in relation to all the goods referred to in the application, nor intends to assign the trade mark to a body corporate for use by the body corporate in Australia.

7.                  Registration of the opposed trade mark would prejudice the opponent in the conduct of their business.’

52                  Although the notice raised a number of grounds of opposition, the only ground relied on by the applicant at the hearing before the delegate was that the respondent was not the owner of the trade mark ‘On the Run’.

53                  It was the case before the delegate, and indeed on appeal, that the applicant, not the respondent, is the true owner of the trade mark.

54                  On 18 December 2001 the applicant sought an extension of time to file evidence. On or about 4 January 2002 the respondent opposed the application for the extension of time and requested a hearing to be conducted to decide whether an extension ought be granted. The hearing took place on 20 February 2002. On 25 March 2002 the Trade Marks Office refused the applicant’s application for an extension of time within which to file statutory declarations.

55                  On 26 March 2002, prior to it receiving the decision, the applicant lodged statutory declarations with the Registrar of the Trade Marks Office, being the evidence upon which it intended to rely. The applicant said that it was served with the Registrar’s decision on 28 March 2002.

56                  On or about 22 April 2002 the applicant applied to the AAT for a review of the decision of the Registrar to refuse the extension of time.  On 26 August 2002 the AAT heard argument as to whether it had jurisdiction to entertain the application for review. Nearly one year later, on 7 August 2003, the AAT published its decision that it did have jurisdiction to entertain the application for review.

57                  The substantive hearing was conducted by the AAT on 12 November 2003. Whilst the respondent opposed the application for review, it did not appear at the hearing. At the conclusion of the hearing, the AAT published a decision setting aside the order of the Registrar and allowing an extension of time.

58                  On 16 August 2004 the Registrar dismissed the opposition filed by the applicant to the registration of the respondent as owner of the trade mark.

59                  On 6 September 2004 the applicant filed its Notice of Appeal in these proceedings, in which it sought the following orders:

‘(a)      That the said decision be set aside or reversed.

(b)               An order that the registration of the trade mark the subject of Application No. 797721 be refused.

(c)               An order that the Respondent pay the Applicant’s costs of the said opposition and of this Appeal.

(d)               Such further or other orders, directions and relief as this Honourable Court may deem fit.’

60                  The Notice of Appeal set out the following grounds of appeal:

‘(a)      The said decision was wrong in law.

(c)               The said decision was contrary to and against the weight of the evidence and/or not supported by the evidence.

(d)               The Hearing Officer should have allowed the opposition and refuse registration of the mark the subject of the said application.

(e)               The Respondent was not as at 18 June 1999, the date of application for the registration of the said trade mark (“the priority date”) or at any material time the owner of the said trade mark within the meaning of section 58 of the Trade Marks Act 1995 (Cth)and the Hearing Officer should have so held.

(f)                The Hearing Officer should have held that as at the priority date:

(i)                 the Applicant was the author of the said trade mark;

(ii)               the Applicant was the first to adopt the said trade mark with the intention to use it as a trade mark;

(iii)             the Applicant not the Respondent was the first user of the said trade mark in Australia.

(g)               The decision of the Hearing Officer was wrong in law and contrary to the evidence and the weight of the evidence in finding that:

(ii)               the Applicant’s activities before the priority date were not prior public use of the said trade mark;

(iii)               none of the Applicant’s activities before the priority date were of a public commercial nature in the course of establishing the Applicant’s business and committing it to trade.’

REASONS

61                  Section 27 of the Act provides for applications for the registration of trade marks.  Section 27(1) of the Act provides that a person may apply for the registration of a trade mark in respect of goods and/or services if the person claims to be the owner of the trade mark and one of the three circumstances in s 27(1)(b) exists.  Division 1 of Part 4 of the Act directs how that application should be dealt with by the Registrar.  Division 2 of Part 4 provides for the grounds for rejecting an application for the registration of a trade mark.  Part 5 provides for the grounds of opposition to registration.

62                  Section 58 of the Act provides that the registration may be opposed on the ground that the applicant is not the owner of the trade mark.  It was that section which was relied upon by the applicant before the Registrar and which is relied upon on this appeal.  As I have already said, it says that it is the owner of the trade mark.

63                  Ownership of a trade mark can arise in two ways.  If a person is the author of the mark and the mark has never been used, that person can apply for registration with the intention of using the mark.  Alternatively, a person will be the owner of a mark if at the time of application for registration that person is entitled to the exclusive use of that mark under common law.

64                  Therefore, in considering whether a person is the owner of the mark for the purposes of s 27 of the Act and registration of the mark, the inquiry must be whether that person is the owner of the mark at common law.  The owner of a mark at common law is the first person who uses the mark: Shell Company of Australia Limited v Rohm and Hass and Anor (1949) 78 CLR 601.

65                  A trade mark is defined in s 17 of the Act:

‘A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’

66                  Section 7 of the Act deals with ‘use of trade mark’.  Section 7 provides:

‘(4)      In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5)       In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.’

67                  Trade mark use is not any use.  It must be public use in the course of trade so as to distinguish one trader’s goods from another.  In Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432 (‘Moorgate’), Deane J said:

‘The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.’

68                  As s 7 shows, the use must be physical in relation to goods or services.

69                  It is not necessary to establish an actual dealing of in the goods to which is attached the mark.  There must, however, be more than a subjective intention to use a mark in the course of trade in the future.  There must be goods to which the mark can attach.  In Moorgate, Deane J said at 433:

‘The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be 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 at 204-205 or that the mark has been used in an advertisement of the goods in the course of trade: Shell Company of Australia v Esso Standard Oil Australia Ltd (1963) 109 CLR at 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.’

70                  However, the subjective intention must be accompanied by some evidence of objective proof of that intent.  In Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149, Drummond J said at 155, speaking of dicta of Deane J in Moorgate:

‘Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark.  What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country. 

[21]     McGarvie J understood Deane J’s dictum as being to this effect in Settef.  One issue there was whether an Italian company, Settef, had used its “Riv-Oland” word mark in Australia before 1978 so as to become the proprietor of the mark here and thus entitled to the registration of the mark which it obtained in 1978.  McGarvie J said at 417–18:

     I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia.  The mark must be used for the purpose of trade …  The forwarding of samples and brochures [in 1967] is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia.  The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here.  Use of the mark in such preliminary activities would not be a use in the course of trade: Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432–3; 56 ALR 193; 3 IPR 545 at 556.’

71                  Drummond J’s explanation is consistent with the passage which I have cited above.  A mere claim of intention to use a mark could never be enough.  It would mean an intention by itself could give rise to personal property: s 21.  In Moorgate and Setteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (the authority to which Drummond J referred), there was evidence that the mark had been applied to the goods.  There is no such evidence in this case.

72                  The applicant contended that the flyer which was handed to customers in early June 1999 was evidence of the public use of the mark.  It also said that the A-frame which had the words ‘On the Run Coming Soon’ was also evidence of the public use of the mark.  I reject that contention.  In my opinion, the flyer and the A-frame are both evidence of an intention of the applicant to conduct a business under the name of ‘On the Run’ in the future.  That is consistent with the application to register the business names at that time.  There is no evidence that there was ever any intention to use that ‘sign’ to distinguish goods or services dealt with or provided by the applicant in the course of trade for goods or services dealt with or provided by any other person.  The other dealings with the marketing firm, the shopfitters, the builder and the graphic designer are not evidence of the public use of a mark. 

73                  The applicant has established that it intended to use the title ‘On the Run Convenience Store’ in its various stores.  The applicant has established, in my opinion, an intention to conduct a business under the name ‘On the Run’ or ‘On the Run Convenience Store’.  That intention has been established by the registration of the business names both in South Australia and in New South Wales.  It has not, however, established any intention it intended to deal with or provide goods using the ‘On the Run’ mark.  There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services.  The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person.  Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade. 

74                  The applicant contended that it had used a sign in the course of its trade and therefore it had used a mark.  I reject that argument.  I think the applicant has used a sign to brand its business and has proved, as I have said, that it was its intention for the future.  But that is not what is envisaged in s 17 when that section speaks of using the sign in the course of trade.  Section 17 is concerned with a sign that is used in the course of trade for a specific purpose.  The purpose that must be established is to distinguish the applicant’s goods or services from any other traders, goods or services.

75                  There is no proof that the sign has been used or intended to be used to distinguish goods or services provided by the applicant in the course of trade from goods or services provided by any other.  Even if it might be said that the use was in the course of trade that does not establish that the description ‘On the Run’ or ‘On the Run Convenience Store’ is a mark.  That is not enough by itself.

76                  In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426, Taylor J said:

‘I have had the advantage of considering the reasons prepared by Kitto J and I agree that the appeal must be allowed.  In particular, I agree that in order for the respondent to succeed in the suit it was necessary that it should appear that the use by the appellant of the animated figure or device which it employed was used by it as a trade mark.  It was not, in my view, sufficient merely to show that, in the language of s 62, it was used “in the course of trade”.’

77                  It will only be a mark if the intention is to use the mark to distinguish goods or services dealt with or provided by the applicant from those dealt with or provided by any other person.  There was never any intention to brand any goods with the mark.

78                  In its opening the applicant said:

‘53.      Shahin’s activities before the priority date show clearly that it had used the name “ON THE RUN” and committed itself to continued use of the name “ON THE RUN” as a trade mark in the course of trade.  Its conduct demonstrates an established intention to trade under the “ON THE RUN” mark.  Its activities went well beyond merely investigating whether to use the mark and beyond merely planning to use the mark.  The strength of Shahin’s commercial commitment to the mark is confirmed by its continued use of the mark after the priority date.  Indeed, Shahin currently operates 36 “ON THE RUN” convenience stores throughout the Adelaide metropolitan area.  Shahin employs around 900 full-time, part time and casual staff in those “ON THE RUN” convenience stores.’

79                  In my opinion, the opening demonstrates the weakness in the applicant’s case.  The applicant sought to prove its case by establishing that it used the sign in the course of trade without also establishing that its use was in relation to goods or services.  Even if it established what it opened its case on, that would not establish use of a trade mark.

80                  In my opinion, the applicant has failed to show that it has used the words referred to as a mark during the period under review.

81                  For those reasons, I agree with the decision of the delegate of the Registrar of Trade Marks to dismiss the applicant’s opposition to the respondent’s application for the registration of Australian Trade Mark Application No. 797721 for the words ‘On the Run’.

82                  The appeal will be dismissed.  The applicant must pay the respondent’s costs.

Associate:

Dated:              13 September 2005