TRADE MARKS ACT 1955
DECISION OF THE DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:	Opposition by CRICKET HOSIERY, INC to registration of trade mark application No A438074 in the name of DUNLOP OLYMPIC LIMITED

		Application No A438074 was lodged on 13 December 1985 in the name of Dunlop Olympic Limited, a company incorporated pursuant to the laws of the State of Victoria, of 500 Bourke Street, Melbourne, State of Victoria ("the applicant").  It sought registration of the words TIC TAC TOE in respect of "men's and women's socks and hosiery and all other goods included in this class", being goods included in class 25.  The application was accepted on 19 September 1988 and advertised as such in the Official Journal of 6 October 1988.
		On 6 April 1989 a notice of opposition to registration of the mark pursuant to section 49 of the Act was lodged in the name of Cricket Hosiery, Inc., incorporated in Delaware, of 112 West 34th Street, New York, New York, 10120, United States of America, ("the opponent").
		The grounds of opposition set out in the notice were as follows:

	(a)	By reason of the reputation and rights acquired by the opponent, the use of the opposed trade mark by the applicant in relation to the goods in respect of which registration is sought would be misleading or confusing and an infraction of the opponent's said rights.

	(b)	Use or registration of the opposed trade mark by the applicant would be contrary to law or morality and/or contrary to public interest.

	(c)	The opposed trade mark would be disentitled to protection in a Court of Justice.

	(d)	By reason of the matters set forth in any one or more of the foregoing paragraphs the Registrar in the exercise of his discretion ought to refuse registration of the opposed trade mark.

	(e)	The applicant is not the proprietor of the opposed trade mark.

	(f)	The opposed trade mark is not distinctive of the applicant's goods.
	
	(g)	The registration or use of the opposed trade mark is likely to cause deception or confusion by reason of its close resemblance to one or more trade marks of the opponent used for the same or similar goods or description of goods.

	(h)	The applicant does not manufacture, sell or otherwise deal in all of the goods for which registration is sought and at the date of the application for registration, the applicant has no real intention of doing so.

	(i)	The applicant did not at the date of the application have an intention to use the mark in respect of all the goods referred to in the application.

	(j)	Registration of the opposed trade mark would prejudice the opponent in the conduct of its business.
		Evidence in support of the opposition was served on the applicant in accordance with regulation 43 on 8 March 1990.  It consists of a statutory declaration by Simon de Winter, director of SDW Holdings Pty Ltd.  On 28 March 1990 the applicant served its evidence in answer under the provisions of regulation 44 comprising statutory declarations by Mark Barnett, general manager of Red Red Robin Industries Pty Ltd, a wholly owned subsidiary of Pacific Dunlop Ltd and Ian Cordner, general manager of the Financial Services Group of SAI Financial Services Pty Ltd.  The opponent served evidence in reply on the applicant in terms of regulation 45 on 9 July 1990.  It consists of an affidavit by Jae Kwon, president of Hosiery Concepts Inc.
		The matter of the opposition was the subject of a hearing conducted before me on 4 December 1990.  The opponent was not represented at the hearing.  Mr Alan Duncan of Davies & Collison, patent and trade mark attorneys of Canberra represented the applicant on behalf of Freehill Hollingdale & Page, solicitors of Melbourne.
		In determining the current opposition it is proposed first to consider briefly the claims stated under paragraphs (a), (b), (c), (d), (f), (g) and (j) in the notice of opposition in light of the evidence lodged by the opponent and the applicant as well as the submissions advanced by Mr Duncan at the hearing.
		The opponent's claims under paragraph (a) `as to alleged rights acquired by virtue of reputation have not been supported by any evidence.  Brief but vague references to the opponent's use of the mark TIC TAC TOE appear in Mr de Winter's declaration and Mr Kwon's affidavit.  In the former at para 4 Mr de Winter states that at an informal meeting on unspecified date in November 1985 either Mr Cordner, who at that time was employed by the applicant as the divisional manager of the Holeproof Sock Division, or Mr Barnett, who held the position of the general manager of the applicant's Holeproof Sock Division, presented a catalogue or promotional material showing the mark TIC TAC TOE as the product of the opponent, whereas Mr Kwon in his affidavit deposes that at a meeting in late 1985 or early 1986 with Mr Cordner he gave Mr Cordner one or more catalogues containing TIC TAC TOE brand socks for the purpose of showing the opponent's marketing expertise.  However, as no copies of the relevant catalogues accompanied the documents and no other proof was produced of the trade mark TIC TAC TOE being used by the opponent in Australia or anywhere else, I have no option but to dismiss the opponent's claim.
		As to the assertions expressed in paragraphs (b) and (c) of the notice of opposition, the opponent has failed to provide any submissions or evidence to substantiate objections embracing the provisions of section 28 of the Act.  No objections based on these provisions were raised during examination of this application.  I am in agreement with the examiner's approach, and in the absence of any material to prove that registration of the applicant's mark would contravene the respective section of the Act, I find nothing that requires me to reconsider the examiner's conclusion.
		In paragraphs (f), (g) and (j) the opponent has raised objections to distinctiveness of the applicant's mark, allegation of the likelihood of deception or confusion of the marks and the claim that registration of the applicant's mark would prejudice the opponent in its business activities, but none of these grounds have been substantiated by any evidence.  Registrability of the subject mark in terms of sections 24 and 26 of the Act was not found wanting at examination and I do not see any reason for questioning the examiner's judgment.  No earlier conflicting trade marks in respect of the same or similar goods of this application have been filed by the opponent, nor has the opponent identified its marks which are purported to closely resemble the subject mark to such an extent that use of the subject mark would be responsible for deception or confusion in the trade.  These allegations remain unsubstantiated.  It is not enough for the opponent to merely allege the possibility of deception or confusion and in this regard I refer to Arthur Fairest Ld's Application, 1951 RPC	197 where the Assistant Comptroller observed at page 200 (which was affirmed by Lloyd-Jacob, J.):

		"Although in opposition proceedings the onus lies upon an applicant to satisfy the Registrar that there is no reasonable likelihood of deception or confusion arising if his mark should be used in a normal and fair manner, nevertheless where an opponent relies upon the provisions of Sec. 11 and the reputation established by his alleged conflicting mark, I consider that the onus lies upon such opponent to adduce evidence from which such reputation invoked can reasonably be inferred."
Lack of evidence or access to other material supporting the claim concerning deception or confusion of the marks denies me the opportunity to assess this claim.  Similarly, I am unable to assess ground (j), the last ground of opposition, since apart from the opponent's assertion of being prejudiced, it has not endeavoured to demonstrate how registration of the applicant's mark would harm its business.
		In view of the above comments, it is obvious that the opponent has failed to substantiate the grounds for opposition indicated earlier.  There remain to be considered the grounds contained in paragraphs (e), (h) and (i) of the notice of opposition.
		In paras 6 and 7 of his declaration lodged as evidence in answer Mr Barnett explains that he became aware of the trade mark TIC TAC TOE in 1985 on an overseas trip when visiting a licensee of the applicant in Toronto, Canada where in a speciality store he saw children's socks bearing the mark.  As the name appealed to him, he purchased several samples of the TIC TAC TOE socks with a view to considering the mark as an alternative for the applicant's RIO brand.  On his return to Australia he shared the idea with Messrs Cordner and de Winter.  "In the course of canvassing my idea with them", he continues "I raised the possibility of Holeproof Socks [a division of the applicant company] either investigating who owned the trade mark overseas and obtaining a licence from the foreign owner or of Holeproof Socks developing the trade name itself.  I then rejected the former possibility as to the best of my knowledge the trade mark "TIC TAC TOE" had not been used in Australia by any person.  Nor was the trade mark known in Australia" and in para 11 he declares "... at the time I discussed the "TIC TAC TOE" trade mark with de Winter and Cordner I was not even aware that Cricket [the opponent] was the company which had manufactured the "TIC TAC TOE" socks I had purchased in Canada".
		With reference to these statements in the declaration, Mr Duncan submitted that Mr Barnett's purchase of the socks constituted the only evidence in the current proceedings concerning use of the subject mark by any person other than the applicant anywhere in the world.  He emphasized, however, that it does not indicate the extent to which the mark was used, nor does it demonstrate reputation acquired in Canada and it certainly does not establish use of the mark by the opponent in Canada.  He also directed my attention to Mr Barnett's statements to the effect that he had no knowledge as to the mark's user overseas, but had intended to seek the relevant information.  In support of his contentions Mr Duncan referred to Stylesetter International Co Pty Ltd v Le Sportsac Inc. (1990) AIPC 90-655.
		He further argued that in Mr Barnett's declaration there was no suggestion that the applicant should become a distributor in Australia of socks bearing the trade mark TIC TAC TOE, nor that there was likely to be any purchase or use of the goods in a resale sense.  And he added that the samples purchased by Mr Barnett did not constitute use of the subject mark in Australia by the person who had applied that trade mark to the socks (for authority on this point he mentioned Moorgate Tobacco Co Ltd v Philip Morris Ltd & Anor (1984) AIPC 90-141).
		He also noted that Mr de Winter's allegations concerning an informal meeting in either November or December 1985 when Mr Barnett and Mr Cordner in the presence of the declarant had indicated that negotiations were proceeding to obtain a licence from the opponent for Holeproof Socks, have been refuted by both Mr Barnett and Mr Cordner in their respective declarations.
		As pointed out by Mr Duncan the matter regarding proprietorship, use and adoption of trade marks in Australia has been explicitly summarised by Hearing Officer H.R. Hardie in Stylesetter International, supra, at page 36,166:

		"It is established law that the making of an application, together with authorship of the mark and an intention to use it, may confer proprietorship (refer for example The Shell Co of Australia Ltd v Rohm and Haas Co. (1949) 78 CLR 601).  Moreover, it is also established law that a mark which has been extensively used in countries other than Australia, may be adopted for use in Australia and the making of an application to register that mark can confer proprietorship on the Australian applicant.  However, proprietorship claims which are based on such foundations, only succeed so long as no prior public use of the mark is demonstrated to have taken place 	in this country."
The position is put plainly by Williams J. in The Seven Up Co v O.T. Ltd. (1947) 75 CLR 203 at p.211:

		"... in the absence of fraud, it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration.  But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because these goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner.  The court frowns upon any attempt by one trader to appropriate the mark of another trader, although that trader is a foreign trader and the mark has only been used by him in a foreign country.  It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold tht it has become identified with and distinctive of the goods of the foreign trader in Australia."
		It is clear from these authorities that even if the subject mark had been adopted by the applicant in full knowledge of the mark being used overseas by a foreign trader, such circumstances do not debar the applicant from claiming proprietorship rights as neither foreign registration nor foreign use creates such rights in Australia.  The applicant may be the author of a trade mark without having invented it or thought of it first and even if the mark in respect of the same description of goods has been deliberately copied from an overseas country.  It is essential, however, to ensure that no other person has acquired the right to use the mark in Australia for the same kind of goods (see D.R. Shanahan's Australian Trade Mark Law and Practice, pages 35-36).  In Settef v Riv-Oland Marble 10 IPR 402 at p.413 McGarvie J explained the question of proprietorship of trade marks as:

		"Acquiring proprietorship

		... The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 204; 

		Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83.  A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

		... In considering who, within s 40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627.  Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.

		Use of the trade mark by Settef overseas gave it no right to proprietorship in Australia.  Any use at all in Australia gave it that proprietorship: the Thunderbird case (1974) 131 CLR 592 at 600."
		I can find no reference in the evidence of any other person than the applicant having used the mark in Australia, and the only evidence of the mark's use in a foreign country is Mr Barnett's statement that he has seen some socks under the trade mark TIC TAC TOE in Toronto.  In a statement of use under the provisions of regulation 8, however, the applicant has indicated its intention to use the mark TIC TAC TOE at the date of this application in respect of all the goods specified in the application throughout Australia.  The applicant therefore is entitled to claim proprietorship of the mark by virtue of the combined effect of authorship of the mark, the intention to use it and by applying for its registration.  The opposition as per grounds (e), (h) and (i) of the notice of opposition, has not been established.  The opponent has failed to demonstrate prior use of the mark in Australia or any association of the mark in the minds of the purchasing public with the goods of itself as a foreign trader and has not discharged the burden of proving absence of intention to use the mark on the part of the applicant.  Accordingly, I dismiss the opposition and direct that, subject to any appeal from this decision, the mark proceed to registration.
		I direct that the opponent pay the costs of the applicant in this matter which costs shall be taxed, allowed and certified by an officer of the Trade Marks Office appointed by the Registrar for this purpose.

(V. ZARS)
Senior Examiner
14 January 1991