Ruralco Holdings Limited v Robert and Alison Kerr [2007] ATMO 61

Background

1. Robert and Alison Kerr have filed application 999724, for the following trade mark:

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2. Their application has been examined at the Trade Marks Office and accepted for possible registration in respect of “Lawn and garden maintenance”.
3. Ruralco Holdings Limited (“the opponent”) has opposed registration of the trade mark. Both parties have followed the process in the regulations to serve and file evidence to support their positions. At the conclusion of this, I was assigned to hear and decide the opposition under delegation from the Registrar of Trade Marks.
4. At the hearing, the opponent was represented by Stephen Burley of counsel, accompanied by Katrina Osgerby, solicitor. The applicants were represented by Carmen Champion, also of counsel.

Preliminary matters

5. At the hearing, Mr Burley indicated that the opponent would rely on grounds of opposition under sections 60, 44, and 43, which I will come to in order in what follows. Mr Burley also submitted that the threshold question for all of these grounds required the opponent to do no more than establish a ground on the balance of probabilities. He relied here on the decision of Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599. As I said in McDonald’s Corporation v Future Enterprises Pte Ltd, (2006) 70 IPR 409, this is also the view of delegates of the Registrar while still being a matter of debate in the lack of resolution in the Full Court of the Federal Court.
6. Mr Burley noted that the opponent’s primary grounds were those under sections 60 and 44. Before dealing with them it will be necessary to consider what Mr Burley said was the amending effect of the Trade Marks Amendment Act 2006. However, Mr Burley made a similar submission to Hearing Officer Lyons in the matter of Apple Computer Inc. v Todaytech Group Ltd[1], at about the same time as I heard the present matter. Mr Lyons has already dealt with that issue very thoroughly and I will simply adopt, without attempting to summarise, his analysis. The result is that, since the present application was filed in 2004, s 60 operates in the present matter in its unamended form.

Grounds considered

7. Both s 60 (in unamended form) and s44, the opponent’s primary grounds, involve allegations about the alleged deceptive similarity as between the trade mark the applicants seek to register and any one of various trade marks used or registered by the opponent. Mr Burley noted that the opponent had registered trade marks that incorporated the words “your local bloke”, and which I will reproduce and consider in greater detail below. Of the variations made over time, the opponent’s trade mark, current since 1989, is as follows:

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8. The words “your local bloke” were adopted in about 1984 when they apparently first began to be used in conjunction with an earlier version of the CRT logo.
9. Mr Burley pointed to evidence which he said showed that, in addition, the opponent has used a number of “local bloke” word marks, independently of the usage of the initials CRT. The usage of trade marks, registered or otherwise, is relevant to s 60. If the opponent can establish that it has usage of these words, solus, as a trade mark, I would need to apply the test of deceptive similarity to the marks as used, a comparison that would not be fettered by the presence of the initials CRT.

Section 60

10. The relevant provision, excluding any effect of the provisions of the Trade Marks Amendment Act 2006, reads...
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