FEDERAL COURT OF AUSTRALIA

King Par, LLC v Brosnan Golf Pty Ltd [2014] FCA 795

Citation: King Par, LLC v Brosnan Golf Pty Ltd [2014] FCA 795

Parties: KING PAR, LLC v BROSNAN GOLF PTY LTD ACN 010 033 155

File number(s): QUD 80 of 2013

Judge(s): GREENWOOD J

Date of judgment: 30 July 2014

Catchwords: INTELLECTUAL PROPERTY – consideration of an application under s 31A of the Federal Court of Australia Act 1976 (Cth) that judgment be entered for the applicant in an action for cancellation of the registration of the trade mark ORLIMAR, under s 88(1) of the Trade Marks Act 1995 (Cth) in reliance upon s 88(2)(a) having regard to the question under s 58 of that Act of whether registration of the trade mark could have been opposed on the ground that the applicant for the mark was not the owner of the mark – consideration of the issue of ownership of a trade mark – consideration of authorship and first use – consideration of abandonment of a trade mark and loss of ownership

Legislation: Evidence Act 1995 (Cth), ss 75, 136Federal Court of Australia Act 1976 (Cth), ss 24, 31ATrade Marks Act 1995 (Cth), ss 27, 58, 88, 89

Cases cited: Carr v Finance Corporation of Australia Ltd (No 1) (1981) 147 CLR 246 - citedSanofi v Parke Davis Pty Ltd (1982) 149 CLR 147 - citedCubillo v Commonwealth (2001) 112 FCR 455 - citedPham v Secretary, Department of Employment and Workplace Relations [2007] FCAFC 179 - citedSimundic v University of Newcastle [2007] FCAFC 144 - citedZoia v Commonwealth Ombudsman Department (2007) 240 ALR 624 - citedWills v Australian Broadcasting Corporation (2009) 173 FCR 284 - citedJefferson Ford Pty Ltd v Ford Motor Company of Australia Ltd (2008) 167 FCR 372 - citedDent v Australian Electoral Commissioner (2008) 249 ALR 523 - citedSpencer v The Commonwealth (2010) 241 CLR 118 - cited

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and quotedAdnunat Pty Ltd v ITW Construction Systems Australia Pty Ltd [2009] FCA 499 - citedDeckers Outdoor Corporation Inc v Farley (No 2) (2009) 176 FCR 33 - citedEdwards v Santos Ltd (2011) 242 CLR 421 - cited and quotedFood Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 - citedHealth World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 - citedSouthern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - citedColorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 - citedShell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601 - citedSettef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 - citedAston v Harlee Manufacturing Co (1960) 103 CLR 391 - citedMoorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 - cited and quotedMalibu Boats West Inc v Catanese (2000) 180 ALR 119 - citedSeven Up Co v OT Ltd (1947) 75 CLR 203 - cited and quotedMouson & Co v Boehm (1884) 26 Ch D 398 - citedRiv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 - cited and quoted

Other materials:

Shanahan’s Australian Law of Trademarks and Passing Off, 5th Ed, Law Book Co

Date of hearing: 17 October 2013

Date of last submissions: 8 November 2013

Place: Brisbane

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 208

Counsel for the Applicant: D Logan

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Solicitor for the Applicant: Griffith Hack

Counsel for the Respondent: J S Cooke

Solicitor for the Respondent: Bennett & Philp Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION QUD 80 of 2013 BETWEEN: KING PAR, LLC

Applicant

AND: BROSNAN GOLF PTY LTD ACN 010 033 155Respondent

JUDGE: GREENWOOD J

DATE OF ORDER: 30 JULY 2014

WHERE MADE: BRISBANE

THE COURT ORDERS THAT:

1. Paragraphs 2 to 7 of the applicant’s interlocutory application are dismissed.

2. The applicant has leave nunc pro tunc to make the further amendments to the

Statement of Claim identified in paras 7 to 9A and 29 of the Further Amended

Statement of Claim filed on 6 September 2013.

3. The costs of and incidental to the application are reserved.

4. The parties are directed to confer with a view to submitting to the Court within seven

days a proposed timetable for the completion of interlocutory steps leading to a trial

of the proceeding.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION QUD 80 OF 2013

BETWEEN:

KING PAR, LLCAND:

BROSNAN GOLF PTY LTD ACN 010 033 155

JUDGE: GREENWOOD J

DATE: 30 JULY 2014

PLACE: BRISBANE

REASONS FOR JUDGMENT

Background and preliminary matters

1 In these proceedings the applicant (“King Par”) seeks an order in reliance upon s 31A of the

Federal Court of Australia Act 1976 (Cth) (the “FCA Act”) and r 26.01(1)(e) of the Federal

Court Rules 2011 that judgment be given against the respondent (“BGPL”), for what King

Par describes as at least part of its claim in the principal proceeding, on the footing that

having regard to the pleadings and the affidavit material read by the parties on the

interlocutory application, the Court ought be satisfied that the respondent has “no reasonable

prospect of successfully defending … [at least] that part of the proceeding”:  s 31A(1)(b).

2 As s 31A(3) makes plain, a defence to a proceeding or the relevant part of a proceeding need

not be “hopeless” or “bound to fail” for it to have no reasonable prospect of success, for the

purposes of s 31A.

3 By one of the claims in the principal proceeding, the applicant seeks an order under s 88(1) of

the Trade Marks Act 1995 (Cth) (the “Act”) that the Register of Trade Marks be rectified by

cancelling the registration of the “Orlimar” trade mark, registered number 1402087, in

respect of all or some of the goods for which it is registered, on the footing that “registration”

of the trade mark, which ultimately occurred on 22 August 2011, could have been opposed, in

reliance upon s 58 of the Act, “on the ground that the [respondent] is not the owner of the

trade mark”.

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4 Section 88(2)(a) of the Act provides that an application under s 88(1) for rectification of the

Register by cancelling a registered trade mark, may be made on any of the grounds on which

the registration of the trade mark could have been opposed under the Act. King Par contends

that under s 58 of the Act registration of the trade mark Orlimar could have been opposed on

the ground that BGPL was not the owner of the trade mark Orlimar on 24 December 2010

when it applied for registration of the trade mark, claiming to be the owner, in respect of the

following classes of goods:

Class:  25  Clothing, footwear, headgear

Class:  28  Sporting equipment, including golf clubs, golf balls, golf bags, hand-propelled golf buggies, golf tees, golf gloves, and all other golf equipment and accessories in this class.

5 King Par says that its predecessor in title “invented”, that is, as author, made up the word

Orlimar and, many years before BGPL adopted use of Orlimar as a trade mark the applicant’s

predecessor in title was the “first user” of the trade mark, as a trade mark, in Australia in

trade in the same kind of goods for which the respondent sought, on 24 December 2010, and

obtained on 22 August 2011, registration of the trade mark Orlimar.

6 Moreover, it is common ground between the parties on the pleadings that a predecessor in

title to King Par, Orlimar Golf Equipment Company LLC (“Orlimar GEC”) was the registered

proprietor of the trade mark Orlimar under the Act (Registered No. 765892) and that the trade

mark was registered from 26 June 1998 in Class 28 in respect of “sporting equipment

including golf equipment and golf clubs”.

7 It is also common ground on the pleadings that the Orlimar trade mark (No. 765892) was not

renewed and was removed from the Register on 29 January 2009.

8 It is also common ground on the pleadings that Orlimar GEC was the registered proprietor

under the Act of another Australian trade mark incorporating the word “Orlimar”

(No. 772833), for the trade mark “Orlimar Trimetal” (for, particularly, a golf club), which

was registered from 10 September 1998 in Class 28 in respect of “sporting equipment

including golf equipment and golf clubs”.

9 There is also no issue between the parties that the Orlimar Trimetal trade mark (No. 772833)

was not renewed and was removed from the Register on 23 April 2009.

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10 In the principal proceeding, apart from the s 88(2)(a) and s 58 matter, the applicant contends

that registration of the trade mark Orlimar could have been opposed on the further ground

that at the time BGPL applied for registration of the trade mark, the application was made “in

bad faith” for the purposes of s 88(2)(a) and s 62A of the Act, having regard to the factual

matters pleaded at paras 29 and 30 of the Further Amended Statement of Claim.

11 No aspect of that matter is agitated in the present application.

12 The essential rhetorical question asked by the applicant in this application having regard to all

the affidavit material read on the application, is this. Since King Par’s predecessor in title

made up and invented the trade mark Orlimar, and King Par’s predecessor was the first user

of Orlimar in Australia as a trade mark for goods of the same kind as those the subject of

BGPL’s present registration (well before 24 December 2010), and King Par’s predecessor

secured registration of Orlimar as a trade mark under the Act as early as 26 June 1998, on

what possible basis can it be said that BGPL, at the moment in time when it applied for

registration of the Orlimar trade mark under the Act, was the “owner” of the trade mark

having regard to the well-established Australian authorities on the legal issue of ownership

and proprietorship of a trade mark for the purposes of the Act?

13 It will, of course, be necessary to examine each of the integers of the present application and

the material. The respondent puts a number of the applicant’s contentions in issue and further

contends that the applicant abandoned ownership of the Orlimar trade mark in Australia prior

to the respondent’s application on 24 December 2010.

14 Fundamentally, abandonment is the factual matter the respondent wants to test at a trial of the

action having had the benefit of interlocutory forensic steps about that issue such as discovery

and inspection of documents. Nevertheless, the respondent contends that it has a reasonable

prospect of defending the proceedings by establishing the following matters which it says

involve mixed contentions of fact and law:

(a) It cannot be established that the respondent was not the owner of the trade mark ORLIMAR as at the filing date of the Respondent’s Registered ORLIMAR Trade Mark registered within the meaning of s 58 of the Act on the basis that any proprietorship of the mark ORLIMAR by a different person before that time had been abandoned and no common law rights in that mark existed as at the date of filing the Respondent’s Registered ORLIMAR Trade Mark;

(b) In any event, it cannot be established that the respondent was not the owner of the trade mark ORLIMAR as at the filing date of the Respondent’s

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Registered ORLIMAR Trade Mark within the meaning of s 58 of the Act in respect of the Respondent’s Designated Goods other than golf clubs;

(c) It cannot be established that as at the date of the applicant’s application for rectification (being, 12 February 2013), that the applicant was an “aggrieved person” within the meaning of s 88 of the Act in respect of the Respondent’s Registered ORLIMAR Trade Mark;

(d) Even if the ground for rectification of the Register to remove Respondent’s Registered ORLIMAR Trade Mark in respect of all or some of the Respondent’s Designated Goods has been established under s 88(2) and 58 of the Act, then, the Court should exercise its discretion under s 88 of the Act to refuse cancellation of the Respondent’s Registered ORLIMAR Trade Mark.

15 These matters will be examined later in these reasons.

16 The respondent also contends that the present application is not an application which would

give rise to an interlocutory judgment and that became a relevant question for the following

reason.

17 The respondent contends that the practical effect of making the order sought by the applicant

on this application is final judgment in the proceeding. It follows for the respondent, quite

apart from any later question which might arise for the purposes of s 24 of the FCA Act, that

in determining the admissibility of material on this application the applicant is not entitled to

rely upon affidavit material by deponents relying upon information sourced from others and

which the deponents believe to be true.

18 As to the question of the character of the application and the nature of the relief arising out of

a determination of the application, I am satisfied that the interlocutory application gives rise

to an interlocutory judgment and that the applicant is entitled to rely upon affidavit material

which might otherwise be described as based upon information and belief. Section 75 of the

Evidence Act 1995 (Cth) provides that in an interlocutory proceeding, the hearsay rule does

not apply to evidence if the party who adduces it also adduces evidence of its source.

19 Plainly enough, the test for determining whether a judgment is final or interlocutory is

whether the judgment finally determines the substantive rights of the parties: Carr v Finance

Corporation of Australia Ltd (No 1) (1981) 147 CLR 246 at 248, Gibbs CJ, at 253-254,

Mason J; Sanofi v Parke Davis Pty Ltd (1982) 149 CLR 147 at 153, Gibbs CJ, and Stephen

and Mason JJ; Cubillo v Commonwealth (2001) 112 FCR 455 at [182], Sackville, Weinberg

and Hely JJ.

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20 I am bound, however, by a number of decisions of the Full Court of this Court which hold

that an application under s 31A of the FCA Act gives rise to an interlocutory judgment:

Pham v Secretary, Department of Employment and Workplace Relations [2007] FCAFC 179

at [15], French, Lindgren and Jacobson JJ; Simundic v University of Newcastle [2007]

FCAFC 144, Allsop, Lander and Siopis JJ at [12], [14]; Zoia v Commonwealth Ombudsman

Department (2007) 240 ALR 624 at [19], Spender J, with Gilmour J agreeing at [28], and

French J agreeing in principle at [26]; Wills v Australian Broadcasting Corporation (2009)

173 FCR 284 at [23] to [30], Emmett J agreeing at [15] (Wills).

21 It is also true that this question was addressed extensively by their Honours, Finkelstein J,

Rares J and Gordon J, in separate judgments in Jefferson Ford Pty Ltd v Ford Motor

Company of Australia Ltd (2008) 167 FCR 372. Each of their Honours expressed different

views about the question either as to matters of principle or emphasis. The views adopted by

Finkelstein J and, for different reasons, Gordon J to the effect that a determination under

s 31A of the FCA Act gives rise to a final judgment do not reflect the prevailing view of

appellate authority by which I am bound, although, of course, the relief sought under s 31A in

each application in the context of the relief sought in the principal proceeding overall must be

examined individually.

22 In the context of the authorities, it should be noted, as Rares J has observed in Wills, that in

Dent v Australian Electoral Commissioner (2008) 249 ALR 523, French, Tamberlin and

Mansfield JJ discussed the nature of an appeal from an order made under s 31A of the

FCA Act and although the parties had agreed that if leave to appeal were necessary, leave

ought to be given, their Honours at [28] observed that they ought not be taken as endorsing

the views of Finkelstein J and Gordon J, noting that Zoia and Pham were to the contrary as

were the views of Rares J in Jefferson Ford at [42] to [56].

23 Further, the applicant does not necessarily seek final orders for the full scope of the relief

sought in the principal proceeding.

24 It should also be noted that the FCA Act expressly treats a decision granting or refusing

summary judgment under s 31A as an interlocutory judgment at least for the purposes of s 24

of the FCA Act:  see s 24(1D)(b) of the FCA Act.

25 There seems little point in treating such an application in any different way for other purposes

under the FCA Act.

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The elements of s 31A of the FCA Act

26 There are many authorities of this Court which contain an exposition of the integers or the

“metes and bounds” of the power given by s 31A of the FCA Act.

27 Two things presently can be said about the approach to the construction of s 31A and the

exercise of the power conferred by the section. The first is that the proper construction and

application of the section begins and ends with the language of the section. The second is

that their Honours Hayne, Crennan, Kiefel and Bell JJ, in Spencer v The Commonwealth

(2010) 241 CLR 118 (“Spencer”) at [55] to [60], make plain the approach to the construction

and application of the section and the features of the exercise of the power conferred upon the

Federal Court by it. In particular, there is little to be gained in seeking to attribute meaning to

the phrase “no reasonable prospect of successfully defending the proceeding or that part of

the proceeding” by reference to what has been said in earlier cases applying a different rule,

or by reference to analogues or various paraphrases of the expression which would seek to

identify categories of differentiated circumstances in which the power ought not be exercised

or the field of circumstances in which the power ought be exercised.

28 Having made observations of that kind, Hayne, Crennan, Kiefel and Bell JJ said this at [60]:

Rather, full weight must be given to the expression as a whole. The Federal Court may exercise power under s 31A if, and only if, satisfied that there is “no reasonable prospect” of success. Of course, it may readily be accepted that the power to dismiss an action summarily is not to be exercised lightly. But the elucidation of what amounts to “no reasonable prospect” can best proceed in the same way as content has been given, through a succession of decided cases, to other generally expressed statutory phrases, such as the phrase “just and equitable” when it is used to identify a ground for winding up a company. At this point in the development of the understanding of the expression and its application, it is sufficient, but important, to emphasise that the evident legislative purpose revealed by the text of the provision will be defeated if its application is read as confined to cases of a kind which fell within earlier, different, procedural regimes.

29 Accordingly, full weight must be given to the expression as a whole. Full weight must be

attributed to the notion of whether the respondent has no reasonable prospect of successfully

defending the proceeding or the relevant part of the proceeding. It should also be

remembered that the Court’s power to give judgment under the section turns upon the Court’s

state of satisfaction as to whether the respondent has no reasonable prospect of successfully

defending the proceeding or the relevant part of the proceeding.

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30 In reaching that state of satisfaction (or not), it is necessary for the Court to assess the

strength of the allegations made in the proceeding by reference to the pleadings, affidavits

and other evidence adduced on the application in order to determine whether there is a real

question of fact or law to be determined at a trial of the action.

31 In addition to the guiding statements of principle in Spencer, I generally adopt, in addressing

the material in this application, the approach reflected in the observations of Sundberg J in

Adnunat Pty Ltd v ITW Construction Systems Australia Pty Ltd [2009] FCA 499 at [37] and

[38] and Tracey J in Deckers Outdoor Corporation Inc v Farley (No 2) (2009) 176 FCR 33 at

[11]–[13] and in determining the state of satisfaction (or not), I also accept that a respondent

simply denying factual elements of the applicant’s case so as to put matters formally “in

controversy” is, generally, not likely to raise a sufficient question (in the face of a strong case

on the part of the applicant) such that the Court would likely be satisfied that there is a real

question of fact or law to be determined at a trial of the action, remembering, of course, that

the test is whether the Court can be satisfied that the respondent has no reasonable prospect

of successfully defending the proceeding or the relevant part of it, at a trial of the action. In

other words, the totality of the phrase must be taken into account as a whole.

32 In addition, the observations of Heydon J in Edwards v Santos Ltd (2011) 242 CLR 421 at

440 [52], French CJ, Gummow, Crennan, Kiefel and Bell JJ agreeing at [1] should be kept in

mind:

The function of [s 31A] is not to substitute for the resolution of real controversies at a trial a premature termination of them by summary means.

33 I also proceed on the footing that the applicant must discharge the burden of demonstrating

that the respondent has no reasonable prospect of successfully defending the proceeding or

the relevant part of the proceeding, at a trial. Section 31A invites an assessment or prediction

to be made of the prospects of the defendant successfully defending the proceeding or the

relevant part of the proceeding, and an assessment of whether those predictive prospects can

properly be characterised as “no reasonable prospect of successfully defending the

proceeding”, taken as a whole. The applicant bears the onus under s 31A of the Act just as it

bears the onus of demonstrating that the trade mark could have been successfully opposed

under s 58 of the Act: Food Channel Network Pty Ltd v Television Food Network GP (“Food

Channel v Television Food”) (2010) 185 FCR 9 at [26], [32] and [34], Keane CJ, Stone and

Jagot JJ.

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34 In conducting an assessment of the material, I do so, obviously enough, not with a view to

making any findings of fact about any question, but rather so as to form a view about the

strengths and weaknesses of the applicant’s case on the material and the strengths and

weaknesses of the respondent’s case so as to be satisfied (or not) whether the respondent has

no reasonable prospect of successfully defending that part of the proceeding about which the

applicant now seeks summary judgment.

An assessment of the material – Mr Ortiz’s affidavit

35 By his affidavit sworn 5 September 2013, Mr Jesse Ortiz says this.

36 Mr Ortiz is a Master Craftsman and Vice-President of Design at “Bobby Jones Golf

Equipment”. Orlimar Golf Company was established by his father, Mr Lou Ortiz, and his

father’s two colleagues, Mr Pedro Liendo and Mr Emilio Martinez.

37 The word ORLIMAR was created from the first initials of each of their names (OR, LI,

MAR).

38 From about the 1970s, Mr Jesse Ortiz and his father conducted the business of Orlimar Golf

Company.

39 In 1996, Mr Jesse Ortiz and his father established Orlimar Golf Equipment Company LLC

(earlier described as Orlimar GEC) to develop and sell a fairway wood called the Orlimar

Trimetal. Orlimar Golf Company and Orlimar GEC (the “trading company”) merged their

assets in 1999.

40 The Certificate of Merger of Orlimar Golf Company (a Delaware corporation) and Orlimar

GEC (a Californian corporation), filed under the laws of the State of California in the Office

of the Secretary of State of California, is dated 15 November 1999 (see the affidavit of

Mr MacFarlane sworn 25 September 2013).

41 Mr Ortiz says that the Orlimar Trimetal fairway wood was extremely popular. Mr Ortiz was

the designer of the club. Mr Ortiz says that the Orlimar Trimetal fairway wood was the

number one played fairway wood on the “PGA tour” for four years from 1998 to 2001.

Mr Ortiz says that the merged company experienced rapid growth and suffered financial

difficulty in 2002 and 2003. Mr Ortiz says the lenders to the continuing entity took over the

assets of the entity in March 2003 and at that time Mr Ortiz ceased any continuing

engagement with the company.

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Mr Coffell’s affidavits

42 Mr Ryan Coffell is the Chief Financial Officer (“CFO”) of King Par. Apart from any other

matters mentioned later in these reasons, Mr Coffell puts in evidence documents in relation to

the financial matters that Mr Ortiz gave evidence about, and the later acquisition of the

relevant assets by the present applicant, on 4 February 2009.

43 Mr Coffell has held the position of CFO of the applicant since 2009.

44 He was also the CFO of the applicant’s predecessor, an entity called King Par Corporation,

from 2005.

45 Mr Coffell says, based on documents on the files of the applicant, that on 15 August 2003,

the banker to Orlimar Golf Company took steps under securities it held to sell the assets of

those entities with associated goodwill. The buyer was King Par Corporation under an

instrument called a Foreclosure and Sale Agreement (the “Agreement”). It acquired, under

the Agreement, all of the trade marks of Orlimar Golf Company which included five trade

marks in Australia including the Orlimar trade mark No. 765892 and the Orlimar Trimetal

trade mark No. 772833. Those marks had been registered in Australia from 26 June 1998 and

10 September 1998 respectively in Class 28 for sporting equipment including golf equipment

and golf clubs.

46 On 12 April 2006, an amendment to the Agreement was entered into (the “Amendment

Agreement”) so as to give specificity, by way of a schedule, to each of the trade marks and

other intellectual property assigned to King Par Corporation under the Foreclosure and Sale

Agreement.

47 Exhibit 2 to the Amendment Agreement is a schedule identifying five Australian trade marks

including the two registered trade marks in Australia mentioned at [45] of these reasons.

48 On 4 June 2009, an Asset Purchase Agreement was entered into by which KP Acquisition

Company LLC acquired the assets of King Par Corporation.

49 On 9 June 2009, KP Acquisition Company LLC changed its name to the name of the present

applicant in these proceedings, King Par LLC (otherwise described in these reasons as “King

Par”).

50 Recital B of the Asset Purchase Agreement recites that the seller is engaged in the business of

designing, manufacturing, importing, distributing and selling golf equipment, bags, balls and

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accessories sold, using various brand names and registered trade marks owned by the seller

“(including … the … “Orlimar” brand nam[e])”, to “mass merchant and other golf speciality

store customers located in the United States and internationally”, which, among other related

activities, is described as the “Company Business” of the seller. Clause 1.1(e) of the Asset

Purchase Agreement taken together with Sch 1.1(e) make plain that the rights assigned to the

applicant include the seller’s interest in the name or mark Orlimar and all other

non-registered and registered trade marks and trade names used by the seller in connection

with the company business.

51 King Par thus became the proprietor of all of the trade marks of the seller.

52 As earlier mentioned, it is common ground that the Orlimar trade mark in Australia

(No. 765892) was not renewed by King Par Corporation, the seller, and was removed from

the Register on 29 January 2009. It is also common ground that King Par Corporation also

failed to renew the Orlimar Trimetal trade mark which was removed from the Register on

23 April 2009.

53 These sale and transfer instruments, however, identify the chain of title of the applicant to the

trade mark Orlimar which was registered in Australia but due to non-renewal became a

non-registered trade mark in Australia.

54 Although ultimately the Agreement is to be construed according to its terms, Mr Coffell says

in his affidavit sworn 3 May 2013, that as part of the 15 August 2003 Agreement, King Par

Corporation acquired all right, title and interest in the Orlimar trade mark including trade

mark registration No. 765892 for Orlimar in Class 28 filed on 21 June 1998. Mr Coffell says

that King Par, through King Par Corporation, acquired rights in the trade marks including the

Orlimar trade mark in Australia. As CFO of the applicant and CFO of the predecessor in title

to the applicant, Mr Coffell says (having regard to his further affidavit sworn 6 September

2013 and particularly paras 6 and 9 of that affidavit), that in 2008, King Par Corporation did

not receive notification that its Australian trade mark registration for the Orlimar trade mark

was due to expire. This lack of notification was principally due, says Mr Coffell, to the

proprietor not having updated the Australian Trade Marks Register with the result that

notifications concerning renewals of the trade mark were sent to the former trade mark

owner’s address for service and were not transmitted to King Par Corporation. Having regard

to his position as CFO from 2005, Mr Coffell says that there was, however, continuity of all

business operations in the changeover between King Par Corporation and the present

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applicant, King Par. Mr Coffell says that he often thinks of the prior entity and the successor

company in 2009 as one “King Par” business, although there are actually two distinct legal

entities.

55 As Mr Adams, the patent and trade mark attorney for the respondent, observes in his affidavit

of 8 October 2013, the “Orlimar” and “Orlimar Trimetal” marks were filed in Australia in

1998 by Spruson & Ferguson, Patent and Trade Mark Attorneys, on behalf of Orlimar GEC.

Each mark fell due for renewal in 2008 and the normal administrative practice of IP Australia

is to send a document called “Registered Trade Mark Renewal Notice” for each mark to the

trade mark owner at the address for service recorded in the Trade Marks Register advising the

registered owner of the need to renew each mark, and the due date for renewal. For each of

the removed Orlimar marks the address for service is shown as Spruson & Ferguson and the

owner is shown as Orlimar GEC. I will return to further aspects of Mr Adams’s affidavit

later in these reasons.

56 Mr Coffell says that King Par’s predecessor in title, King Par Corporation, did not abandon

the Orlimar trade mark in Australia. He says that King Par’s predecessor and King Par have

continued to use the Orlimar trade mark in Australia since acquiring the mark. He says that

the applicant has never intended to abandon the Orlimar trade mark in Australia and, in fact,

continues to use the trade mark in Australia and worldwide.

57 Mr Coffell says that King Par is a well-established manufacturer and distributor of golf

products worldwide including in the United States, Europe, Canada, Japan and Australia and

has been operating since 1976. It has a “Super Store” in Michigan, operates a Golf Academy

in Michigan, employs more than 60 people at its International Sales Office in Michigan,

operates four retail websites, has 20 licensed distributors outside the United States and is

ranked the seventh largest golf speciality store in the Midwest of the United States.

58 As to Australia, Mr Coffell says that King Par has “authorised distributors” for the sale of

Orlimar products. In the period from June 2005 to July 2006, the distributor for King Par

Corporation in Australia was Power Sports International Pty Ltd (“Power Sports”). From

October 2006 to October 2008, the distributor in Australia for King Par Corporation was

Champion Sports Pty Ltd (“Champion Sports”).

59 Mr Coffell says that from October 2008 to the entry of King Par in about 2009 (see [48] and

[49] of these reasons), Champion Sports remained a stockist of Orlimar products which it

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acquired from King Par Corporation. From June 2009 to early 2011, Champion Sports

remained a stockist of Orlimar products which it acquired from King Par.

60 Mr Coffell says that on 22 June 2012, King Par entered into an exclusive distribution

arrangement with SJC Golf Pty Ltd trading as “The Golf Clearance Outlet” (“SJC”) for the

distribution of Orlimar products throughout Australia. Mr Coffell says that in reliance on that

arrangement, SJC placed orders with King Par for Orlimar products on or about 29 June 2012

to the value of US$29,399.00. Mr Coffell says that on or about 2 August 2012, SJC brought

to King Par’s attention the use of the Orlimar trade mark by the respondent. Mr Coffell also

says that once SJC became aware of the respondent’s use of the Orlimar trade mark, SJC

placed on hold sales of the applicant’s Orlimar products. Mr Coffell says that as at February

2013 those orders remained on hold. Mr Coffell also says that at the date of the hearing of

the present application, King Par remained obliged to provide exclusivity in Australia to SJC

in relation to Orlimar products.

61 Mr Coffell says that outside Australia, the applicant has other licensed distributors such as

TGIB Marketing Incorporated which operates a website at “rockbottomgolf.com”. That

website offers goods for sale and delivery to Australia in connection with the trade mark

Orlimar.

62 As to the applicant’s own website, Mr Coffell says this:

21. From about December 1, 2009, the applicant has had an option on its kingparsuperstore.com and orlimar.com websites for consumers to register and login. The applicant’s records are that approximately twenty consumers from Australia are registered with the applicant.

22. Since December 1, 2009, the applicant has distributed promotional material by email to consumers on its distribution list, which list includes consumers who have registered via the applicant’s websites.

[emphasis added]

63 Mr Coffell also says this at para 13 of his affidavit of 6 September 2013:

On 6 August 2012, the Applicant filed an application for an Australian trade mark for ORLIMAR in class 28 for “golf equipment, namely, golf clubs, golf club head covers, golf bags”, being application number 1515358. The trade mark application was examined on 6 January 2013 and an adverse report was issued that cited the Respondent’s trade mark registration number 1402087. Exhibited to this affidavit and marked RC-6 is a copy of the adverse report from IP Australia dated 6 January 2013 received under cover of a letter from WIPO dated 9 January 2013.

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64 On 17 February 2013, the applicant’s Orlimar trade mark application was accepted for

registration by IP Australia after the applicant’s solicitors responded to an adverse report.

65 On 21 May 2013, the respondent opposed registration of the applicant’s Orlimar trade mark,

in reliance upon prior registration 1402087 for the same word mark in favour of the

respondent.

Mr Brosnan’s affidavit

66 It is convenient at this point to mention some aspects of the evidence of Mr Denis Brosnan.

67 Mr Brosnan is the Managing Director of BGPL. Mr Brosnan commenced playing golf at the

age of 12 and turned professional in 1963 aged 18. He resigned from full time professional

golf in 1991 to concentrate on a business career (through the activities of BGPL), although he

continues to play golf professionally on the “seniors’ circuit” in Australia. Mr Brosnan’s

professional golf career was predominantly based in Australia although he has played major

tournaments in the United Kingdom, New Zealand and throughout Asia.

68 BGPL is a designer, assembler, manufacturer and distributor of golf equipment initially made

in Australia but now made in the People’s Republic of China (“PRC”). BGPL supplies its

golf products and equipment to its own retail outlets, golf shops, golf professionals and

sporting goods retailers. Its main product brands under which it sells golf equipment are

BROSNAN and PROSIMMON. Of the Australian owned golf equipment companies,

Mr Brosnan says that BGPL is ranked within the top five by sales volume.

69 Mr Brosnan says that he has been involved in the Australian golf industry for the whole of his

working life and has always made sure that he is fully informed about developments in the

Australian golf industry and, in particular, in relation to golf equipment. He keeps informed

about these things by regularly attending trade fairs and similar events within the golf

industry, reading golf publications such as the main golf magazines, regularly talking to

people in the golf industry such as club professionals, visiting club professionals and their

shops, attending tournaments and other golf events, listening to information from staff within

BGPL and talking to competitors.

70 Mr Brosnan says that he first became aware of the Orlimar brand about 15 years ago through

reading United States golf magazines. He says that about 15 years ago the Orlimar Trimetal

golf wood became very popular and thus Orlimar Golf Company generated some interest in

the golf industry for its product. Mr Brosnan says he lost sight of “Orlimar” by the earlier

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2000s. Mr Brosnan says that discussions occurring within the golf industry suggested to him

that the Orlimar business had become insolvent and had closed. He says that by no later than

2003, he did not hear or see any references to the Orlimar brand name being used in Australia

and that by the end of the decade he believed that “Orlimar” was no longer being used as a

brand in Australia for golf equipment.

71 Mr Brosnan says this in his affidavit of 30 September 2013:

31. In late 2010, in the course of reviewing possible brands, a Brosnan Golf staff member suggested to me that Brosnan golf could adopt ORLIMAR as a brand.

32. At that time (late 2010) I did not believe that the ORLIMAR brand was being used in Australia for golf equipment or, for that matter, for other products. I did not believe that ORLIMAR was represented in Australia. By “represented” I mean that there was no company or person appointed as distributor or agent for ORLIMAR products here in Australia. I believed that this had been the case for some years and at least since the early 2000s.

33. Because of these matters I did not believe, in late 2010, that the ORLIMAR brand had any continuing reputation or goodwill within the Australian golf market. Specifically I believed that Australian golfers and other people in the golf market here would not have any knowledge of the ORLIMAR brand and that they did not relate to or identify with the brand.

34. Accordingly in late 2010 I gave approval for Brosnan Golf to adopt the ORLIMAR brand. I did not intend that ORLIMAR would be a major or mainstream brand within Brosnan Golf (such as BROSNAN or PROSIMMON). Rather I believed that Brosnan Golf could develop ORLIMAR as a specialist brand used in the mid to high end part of the market.

[emphasis added]

72 Mr Brosnan says that his decision to adopt ORLIMAR as a brand for golf equipment sold by

BGPL was subject to the company obtaining an Australian trade mark registration for

Orlimar. Mr Brosnan says that BGPL has designed, manufactured and sold a series of golf

bags and putters under the Orlimar brand. Orlimar golf bags and putters are sold through

BGPL’s own retail outlets. In terms of trading in the goods, Mr Brosnan says that the

recommended retail price “for the putters of $119.99 is higher than the price for a standard or

ordinary putter” and similarly “the golf bags are offered for $199.99, which is also higher

than the usual price for an equivalent item”. These products, however, were to be the first

products to which the Orlimar trade mark would be applied by BGPL. Mr Brosnan had in

mind that the Orlimar brand would be applied to a range of other products. However, on

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7 August 2012, BGPL received a letter from the advisers to the applicant asserting that King

Par is the owner of the Orlimar trade mark in Australia and asserting that use of the trade

mark by BGPL would infringe King Par’s rights.

73 Mr Brosnan says that a company owned by his family and related to BGPL operates 16 “Golf

World” stores in Queensland, Victoria and South Australia and five retail stores in New

South Wales operating under a different brand name.

74 Mr Brosnan says that the evidence of golf bags being offered for sale at the Golf World store

at Virginia, using the trade mark Orlimar, at Exhibit CG-1 to the affidavit of Ms Crystal Gore

of 12 September 2013, is evidence of the yellow and red golf bags manufactured in the PRC

for BGPL for sale through its various retail outlets. Mr Brosnan says that the affidavit of

Ms Gore also shows evidence of the sale of Orlimar putters also produced in the PRC for

BGPL for sale in the various retail outlets.

75 The evidence of Mr Brosnan concerning his election to adopt the Orlimar trade mark is

essentially consistent with the evidence of Ms Kellie Stonier (of Griffith Hack, Lawyers), the

solicitor for the applicant, at para 4 of her affidavit of 3 May 2013 filed on 6 May 2013 in

which she deposes to a conversation with Mr Bennett. Mr Bennett is a principal of Bennett &

Philp, the solicitors for BGPL. In that conversation, Mr Bennett observed that BGPL does

not contend that it invented the Orlimar mark. Rather, BGPL saw the Orlimar mark used

overseas and thought that the mark was not used in Australia and thus BGPL would apply for

registration of the mark for use in Australia.

76 At paras 19 to 20 of the Further Amended Statement of Claim filed on 6 September 2013, the

applicant asserts that prior to filing the Orlimar trade mark application, BGPL was aware of

the Orlimar trade mark registration (No. 765892) in Class 28 for sporting equipment

including golf equipment and golf clubs and the Orlimar Trimetal trade mark registration

(No. 772833) in Class 28 for goods described in the same terms.

77 BGPL was said to have that knowledge by reason of the state of knowledge of Mr Brosnan.

78 Relevantly for present purposes, however, at para 14 of the Amended Defence filed

4 October 2013, BGPL says that, through Mr Brosnan, it was aware that Orlimar had been

“used as a trade mark in the United States of America and in Australia prior to 2003”

[emphasis added] in relation to golf clubs but was not aware that Orlimar had been used as a

trade mark in respect of these products in Australia in the period after that date or that

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Orlimar had any continuing reputation in Australia, when BGPL applied for registration of

the mark.

Ms Stonier’s affidavits

79 As earlier mentioned, Ms Stonier is the solicitor for the applicant. In her affidavit sworn

3 May 2013, Ms Stonier sets out contended use of “Orlimar” as a trade mark in Australia by

King Par and by King Par’s predecessors in title.

80 Five periods of use are identified.

81 For the period 1998 to 2000, Ms Stonier annexes at “KAS-2” three examples of printouts of

promotional material one of which prominently displays ORLIMAR above the name Orlimar

Golf Company in promoting the company’s Trimetal fairway wood. The other two examples

also promote the Trimetal golf club. Also at “KAS-2”, Ms Stonier annexes 19 examples of

advertisements promoting the Trimetal golf club by Orlimar. All the advertisements

prominently display “Orlimar” in connection with the promotion of the Trimetal golf club.

Each advertisement is drawn from a golf magazine called “Australian Golf Digest” and each

example displays a copy of the front page of the magazine which, in most instances, carries

the endorsement “Australia’s Largest Selling Golf Magazine” as well as the advertisement.

The advertisements are generally full page advertisements. The 19 examples from the

magazine range from January 1999 to November 2000. Importantly, in 16 of the

advertisements promoting the sale of golf clubs in connection with the “Orlimar” trade mark,

the advertisements carry the name of a distributor in Australia (for example, a distributor in

South Australia) which might be contacted by anyone wishing to purchase the goods. The

advertisements also carry the name of an agent (for example, in Queensland) in addition to

the distributor.

82 For the purposes of this application, I am willing to infer that the magazine, as suggested by

the material, is a monthly magazine sold in Australia during the relevant period.

83 For the period 2001 to 2003, Ms Stonier annexes at “KAS-3”, 10 further examples of

advertisements drawn from Australian Golf Digest ranging from June 2001 to March 2003.

Each advertisement either prominently or very prominently displays ORLIMAR in connection

with the promotion of golf clubs, and in one example (at p 73 of Ms Stonier’s affidavit of

3 May 2013), the advertisement displays ORLIMAR in connection with the promotion of golf

bags. Each of the three displayed golf bags prominently show Orlimar on the bag and the

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advertisement refers readers to a Victorian telephone number (and a website) for “stockist

details”. Importantly, in five of the advertisements promoting the sale of golf clubs in

connection with the “Orlimar” trade mark, the advertisements carry the name of a distributor

in Australia which might be contacted by anyone wishing to purchase the goods. The

advertisements in two cases carry the name of a stockist in Australia which might be

contacted by anyone wishing to purchase the goods.

84 For the period 2004 to 2006, Ms Stonier annexes at “KAS-4” material described as “printouts

extracted from webarchives of one of the applicant’s overseas licensed distributor’s website,

printouts extracted from webarchives of the applicant’s Australian distributor’s website,

extracts of the applicant’s website in respect of Australia and sample invoices”. The

respondent challenges the webarchive material produced by Ms Stonier interrogating an

internet archive site called the “waybackmachine” (at web.archive.org). I will leave out the

prefix “www” when identifying relevant websites. The web.archive.org website purports to

identify a webpage from a nominated website on a nominated date (for example, 5 June 2004

at p 90 of Ms Stonier’s affidavit and 1 October 2005 at p 92). That challenge is made on the

footing that the results of the archive searches are merely hearsay; the search protocols are

neither described nor disclosed by Ms Stonier in her affidavit; in any event, the material does

not disclose use of Orlimar as a trade mark in Australia; and, if relevant, the material ought to

be excluded in the exercise of the discretion arising under s 136 of the Evidence Act 1995

(Cth).

85 I will address that challenge and other challenges to evidence of the content of contended

webpages at particular dates obtained by using the waybackmachine archive site later in these

reasons.

86 For present purposes I propose to simply identify the relevant material referred to by

Ms Stonier.

87 As to the invoices, the invoice at p 91 of Ms Stonier’s affidavit shows a sale by TGIB

Marketing Incorporated (of Rochester, New York, United States) of at least “1 [unit] Orlimar

Hipsteel Gap Wedge Reg graph” (among other golf items such as clubs, gloves and balls

although none of these other items are described on the invoice by reference to Orlimar or as

Orlimar goods). The invoice shows a sale to Draygo Krajina of AAPT Ltd of Avondale

Heights, Victoria, with a cash sale date of 14 December 2004 and an invoice number of

139042. The goods were sent to the addressee by ship.

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88 “KAS-4” at p 94 is an invoice dated 30 November 2005 (No. 2333886) by which the

applicant’s predecessor sold and shipped on that date five grades of Trimetal golf clubs (in

various unit numbers) to Power Sports in Queensland. The total price of the goods shown on

the invoice is $47,815.50.

89 “KAS-4” at p 95 is another example of such an invoice, dated 21 August 2006, being Invoice

No. 2383481 which also displays the ORLIMAR mark on the sales invoice for, on this

occasion, goods described as “Orlimar Golf Ball 12 pk [pack]” supplied to Power Sports and

shipped, according to the invoice, to a South Australian North Adelaide address for Power

Sports on 21 August 2006. The total price of the goods shown on the invoice is $52,320.00.

90 For the period 2007 to 2009, Ms Stonier annexes at “KAS-5” a webpage from the applicant’s

predecessor’s website “Orlimar.com” for 10 October 2007 obtained by interrogating the

waybackmachine internet archive site. That page shows the ORLIMAR mark and depicts golf

clubs endorsed with the Orlimar mark. Ms Stonier also annexes a “dealer locator” webpage

from the same site for 28 August 2007 also obtained through interrogating the

waybackmachine archive site. For Australia, the dealer is shown as Champion Sports of

272 Melbourne Street, North Adelaide with contact details for Mr Greg Tucker of Champion

Sports. Each page prominently displays the Orlimar trade mark.

91 “KAS-5” at pp 101 to 103 is an invoice dated 27 June 2007 (No. 2434983) by which the

applicant’s predecessor sold, and shipped on that date, a range of golf clubs and other goods

to Champion Sports. The goods were shipped to the attention of Mr Tucker at an address for

Champion Sports in Alexandra, New South Wales. The total price of the goods shown on the

invoice is $21,314.60.

92 For the period 2010 to 2013, Ms Stonier annexes at “KAS-6” further printouts of webpages

obtained through use of the waybackmachine internet archive site for the

“championsports.com.au” website for the period 11 February 2010 to 4 March 2011. One

webpage describes Champion Sports as:

Champion Sports is the official Australian distributor for the following leading Golf product brands:

…

Orlimar www.orlimar.com

Kingpar www.kingpar.com

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93 Another similar page concerning Champion Sports bearing the same endorsement, from

4 March 2011, also sets out the Adelaide address and contact details for Champion Sports.

94 One of the archive webpages (for 30 March 2010) is a webpage from the

“RockBottomGolf.com” site which says that the supplier ships golf products (complete sets

of clubs with bag, standard bag and golf balls) to Australia. A webpage obtained through the

same archive site for 17 August 2011 for the “Orlimar.com” site prominently displays the

Orlimar mark in connection with the promotion of sales of a three wheel golf cart. That page

invites the reader to “shop now” for the goods and displays King Par’s name. The webpage

recites: “More Great Products By Orlimar”.

95 “KAS-6” at pp 117 to 120 is a printout by Ms Stonier of webpages from the applicant’s

international licensed distributor’s website, rockbottomgolf.com. Those pages display text

and images of golf products (in addition to “Chippers” and “Complete sets of clubs”),

described in this way:

Orlimar Golf – All-Purpose Club BrushOrlimar Golf – 5-in-1 All-Purpose ToolOrlimar Golf – Bead CounterOrlimar Golf – Razorback Spray BrushOrlimar Golf – Divot Tool 3-PackOrlimar Golf – Pro Count Score KeeperOrlimar Golf – Dual Head Brush With Wire TeethOrlimar Golf – ATS White DriverOrlimar Golf – Ladies ATS White DriverOrlimar Golf – LH ATS White Driver (Left Handed)Orlimar Golf – ATS White Fairway WoodOrlimar Golf – LH ATS White Fairway Wood (Left Handed)Orlimar Golf – 18’ Hinged Cup Ball RetrieverOrlimar Golf – 6’ Compact Cup Ball RetrieverOrlimar Golf – ATS White HybridOrlimar Golf – LH ATS White Hybrid (Left Handed)Orlimar Golf – CS Mirror Chrome WedgeOrlimar Golf – CS Black Satin WedgeOrlimar Golf – Trimetal ZXP Progressive Irons 4, 5 Hybrids/6–PW SteelOrlimar Golf – Optis PutterOrlimar Golf – Trophy PutterOrlimar Golf – Plastic Putting Cup

96 The site also says:

Hey AustraliaClick Here and Check OutAustralian Shipping Rates…

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97 At “KAS-6”, p 120, this text appears on the annexed rockbottomgolf.com webpage:

“Australia in particular has emerged as a major market, where golf equipment sells for far

more than Rock Bottom’s retail prices including shipping and tax, Rath says. ‘Australia is a

huge market for us’, he says. ‘It’s great because it plays after our season in the U.S. – they’re

just heading into their summer now – and we can ship them entire sets of clubs priced

cheaper than Australians can buy in their own country”. The webpages at pp 117 to 119 and

p 120 bear, at the base, the dates 3 May 2013 and 19 March 2013 respectively, which are

dates after the date of use adopted by BGPL. The annexures show, however, the range of

golf equipment King Par was offering for sale at that date by reference to the mark Orlimar.

Some of those items of golf equipment (golf clubs, golf bags and other goods) were, plainly

enough, offered for sale by King Par’s predecessors in title prior to BGPL’s use of the mark,

on the present evidence. At “KAS-9”, Ms Stonier annexes “screenshots and printouts”

obtained from the applicant’s website “Kingpar.com”. One screenshot shows six icons a

consumer might click on so as to link to the content on the page for the relevant icon. One

such link is to ORLIMAR. A page from that link prominently displays the Orlimar trade mark

and the Orlimar Trimetal golf club. A printout for the page “Orlimar Golf Equipment” from

1 May 2013 by Ms Stonier extolls the virtues of Orlimar golf products and depicts four

particular Orlimar golf products.

98 As mentioned earlier, Mr Bennett is the solicitor for BGPL.

99 Mr Bennett annexes to his affidavit sworn 12 April 2013 at “AJB-7” a copy of a statutory

declaration sworn by Mr Coffell on 4 February 2013 and filed by King Par in its trade mark

application (Application No. 1515358). The document was provided to Mr Bennett for the

purposes of this proceeding by the solicitors for King Par, Griffith Hack, and contains trade

sensitive information. The document has been treated as confidential in these proceedings.

Mr Coffell annexes to his declaration an extract of a sales report (which he calls RC-1)

showing Orlimar branded products sold to former Australian distributors of the applicant’s

predecessor, for sale in Australia as early as 2005. The branded products are golf clubs, golf

balls, golf head covers, golf bags, caps, umbrellas and towels. Mr Coffell also annexes to his

declaration a collection of invoices (which he calls RC-3) showing sales of Orlimar branded

golf products to the former Australian distributors of the applicant’s predecessor, for sale in

Australia.

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100 The emphasis, no doubt, in Mr Coffell’s declaration and annexures is to demonstrate, for the

purposes of the applicant’s trade mark application in Australia, early use of the Orlimar mark

as a trade mark in Australia by the applicant’s predecessors. Nevertheless, the transactions

referred to in the attachments to Mr Coffell’s declaration show sales of Orlimar branded golf

products in 2005, 2006 and 2007 to Australian distributors for sale of the products in

Australia. At para 12 of her affidavit of 3 May 2013, Ms Stonier says this:

… The declaration of Ryan Coffell provided only a sample of prior use. However, a calculation of the sales in the schedule marked “RC-1” reveals:

(a) sales in relation to an Australian distributor in 2005 amounting to $108,272.70;

(b) sales in relation to two Australian distributors in 2006 amounting to $219,505.88 (being $54,678 and $164,827.88); and

(c) sales in relation to an Australian distributor in 2007 amounting to $53,678.55.

101 Examples are these.

102 “AJB-7” at p 91 is Invoice No. 2333886 dated 30 November 2005 (also at “KAS-4”, p 94)

showing sales of Trimetal golf clubs by King Par’s predecessor to its distributor Power

Sports, in Queensland ($47,815.50). The corresponding entry in the sales report is at

“AJB-7”, p 77.

103 “AJB-7” at p 92 is Invoice No. 2383481 dated 21 August 2006 (also at “KAS-4”, p 95)

showing a sale of packs of Orlimar golf balls ($52,320.00). The invoice describes the goods

sold as Orlimar goods. The corresponding entry in the sales report is at “AJB-7”, p 86.

104 Other invoices for sales of Orlimar golf products into Queensland are recorded at p 86 in the

sales report with sales and shipping dates in July 2006 and one item on 10 March 2005.

105 “AJB-7” at pp 93 to 95 is Invoice No. 2434983 dated 27 June 2007 (also at “KAS-5”, pp 101

to 103) for the sale of a range of golf clubs and other goods to Champion Sports of Adelaide

with shipping of the goods to Mr Tucker of Champion Sports in New South Wales. The

corresponding entry in the sales report is at “AJB-7” at p 75.

106 “AJB-7” at p 76 (the sales report) shows other sales to Power Sports into Queensland in 2005

of Orlimar golf products, described by reference to the word Orlimar (Tour Towels and Tour

Umbrellas).

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107 The applicant also relies upon a further affidavit of Ms Stonier sworn 13 September 2013.

108 At “KAS-17” of that affidavit, Ms Stonier annexes a copy of the order for golf products

described by Mr Coffell at para 18 of his affidavit of 3 May 2013, placed by SJC with King

Par on or about 22 June 2012. The order is made up of Orlimar golf clubs and golf products

comprising 32 separate Orlimar product codes. The order was placed with King Par after it

entered into an exclusive distribution arrangement for its golf products with SJC. SJC trades

under the name “The Golf Clearance Outlet” and has a domain name

“golfclearanceoutlet.com.au”.

109 Ms Stonier says that she examined that website on 10 September 2013 and printed pages (the

“home” page, the “About us” tab and the “Shop in-store” tab) and screenshots from the site

which are annexed at “KAS-19” to her affidavit.

110 In those pages, SJC describes its business in this way:

Golf Clearance Outlet is a leading golf equipment retailer. We sell golf clubs and all the other golf accessories you could want from our golf stores throughout Australia and also through this easy to use online golf store.

… Some of our most popular lines are golf clubs, golf buggies, golf balls, golf bags, golf clothing and golf shoes. …

111 “KAS-20” is a copy of an invoice (No. 2489131) dated 18 February 2009 (for $404.54)

issued by King Par Corporation to Champion Sports of Adelaide for golf products shipped to

Mr Mark Robertson, General Manager, “Leading Edge Golf Gro” of Gordon in New South

Wales, on 18 February 2009. The goods are described by reference to 13 different Orlimar

product codes commencing with the identifier “OR” and in six cases the golf products are

described in the invoice using the full Orlimar word as well as the “OR” product code. The

golf products recited in the invoice include golf clubs, a golf cart and a bag.

112 On 12 September 2013, Ms Stonier conducted a domain name search of

rockbottomgolf.com using a search “lookup” internet site called “whois.net”. The search

shows that the domain name is administered by TGIB Marketing.

113 On 10 September 2013 Ms Stonier sought to inspect webpages on the rockbottomgolf.com

website for 2 August 2010 by entering the web address into the waybackmachine archive site.

114 The method Ms Stonier adopted was this.

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115 Ms Stonier says that she brought up the webpage at “KAS-23”, p 45, for rockbottomgolf and

then clicked on the “clubs” icon on the website. That icon linked to and displayed the

webpage at “KAS-23”, p 46, which displays five groups of golf clubs including “Fairway

Woods”. Ms Stonier clicked on “Fairway Woods” which linked to and displayed the

webpage at “KAS-23”, p 47 as at 29 July 2009. That webpage lists a range of Fairway

Woods for sale (and the price) including the “Orlimar Golf-X3 Fairway Wood Graphite” at a

price of $69.99. Ms Stonier says she clicked on that product which linked to and displayed

details about the particular golf club as shown at “KAS-23”, p 49 (as at 7 September 2009),

under the same description but this time displaying a price of $59.99 (or a lower “coupon

price”) with 24 hour shipping.

116 Ms Stonier then clicked on the tab “shipping and payment info” which linked to and

displayed details about international delivery as shown at “KAS-23”, p 50, and by clicking on

a further link, Ms Stonier was able to inspect the postage rates to Australia at pp 51 and 52 of

“KAS-23” (as at 17 September 2009).

117 Ms Stonier says that she then returned to the web archive search site and sought to examine

webpages from the rockbottomgolf website as it existed on 30 March 2010. That search

displayed the webpage at “KAS-23”, p 53, which displays many small tabs at the foot of the

page identifying various brands of golf clubs including the tab “Orlimar Golf”. Ms Stonier

says she clicked on that tab which linked to and displayed at “KAS-23”, pp 54 and 55 (as at

17 April 2010), information about Orlimar golf products and equipment, and which provides

19 links to Orlimar Golf products including “Orlimar Drivers”, “Orlimar Fairway Woods”,

“Orlimar Irons” and “Orlimar Golf Bags” among other Orlimar golf products.

118 From that page, Ms Stonier says that she was able to click on an “International” tab under an

image of an Australian flag which linked to “International Feedback” from a person in

Australia and also linked to international shipping rates including the shipping of products to

Australia, as displayed at “KAS-23”, at pp 56 and 57 (as at 30 March 2010).

119 Ms Stonier says that by using the waybackmachine archive site on 10 September 2013 she

sought to identify webpages from King Par’s website kingpar.com as at 25 September 2010.

120 The method she adopted was this.

121 Ms Stonier entered the kingpar.com web address into the archive search site and clicked on

29 October 2010 which was the nearest available date to 25 September 2010 stored in the

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archive. She then inspected webpages from the kingpar.com website. At the foot of the

“home” page at “KAS-24”, pp 59 and 60, there are three large logo tabs including a tab

marked ORLIMAR (p 60). Ms Stonier clicked on the ORLIMAR logo tab which directed her

to a website orlimar.com as it was at 2 September 2010, and a printout of a webpage at that

date is annexed at “KAS-24”, p 63. That webpage displays the ORLIMAR mark and a

number of golf club heads. The webpage displays these tabs: “home, clubs, combos, wedges

& chippers, putters, cart bags, stand bags, push carts, golf balls, gloves”, all displayed

immediately under the prominently displayed ORLIMAR mark.

122 Ms Stonier clicked on the “clubs” tab and inspected the webpage at “KAS-24”, pp 64 and 65

(as at 14 September 2010). That webpage prominently displays the ORLIMAR mark and 14

golf club heads. In almost all of those images, the ORLIMAR mark can be seen on each golf

club head.

123 Ms Stonier clicked on the “combos” tab and inspected the webpage at “KAS-24”, pp 66 and

67 (as at 16 August 2010). That webpage prominently displays the ORLIMAR mark and

displays images of golf club heads and golf bags. Again, the ORLIMAR mark can be seen on

the golf club heads and some of the bags.

124 Ms Stonier then clicked on the “wedges & chippers” tab and inspected the webpage at

“KAS-24”, p 68 which also prominently displays the ORLIMAR mark and three golf club

heads two of which are endorsed with the ORLIMAR mark.

125 Ms Stonier also clicked on the “putters” tab and inspected the webpage at “KAS-24”, p 69

which prominently displays the ORLIMAR mark and 12 putter golf club heads three of which

show faces of the club head endorsed with the mark ORLIMAR. Ms Stonier clicked on the

“cart bags” tab and inspected the webpage at pp 70 and 71 which prominently displays the

ORLIMAR mark and a range of cart bags for golf clubs.

126 Ms Stonier also clicked on the tabs “stand bags”, “push carts”, “golf balls” and “gloves” and

inspected the webpages shown at “KAS-24”, pp 72, 73, 74 and 75 respectively. Each of

those webpages displays the ORLIMAR mark under which the relevant golf products are also

displayed and in many cases the golf products are endorsed with the ORLIMAR mark (for

example, the golf ball packaging and gloves).

127 Ms Stonier also says that by hovering the cursor over the “home” tab at “KAS-24”, p 63, a

number of links were displayed one of which is a tab “About Us” (webpage at “KAS-24”,

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p 76 (as at 16 April 2010)) and by clicking on that link the webpage at “KAS-24”, p 77 was

displayed which prominently displays the ORLIMAR mark and has text extolling the virtues

of Orlimar’s golf products, their design, the expansion in 2010 of the Tri-metal XR Series

offerings of “drivers, fairways [woods], hybrids and irons”, the ZX Series of clubs, and other

putters and wedges and “a wide range of … combo sets, cart and stand bags, push carts,

performance balls, and Cabretta leather gloves”.

128 The “home” webpage at “KAS-24”, p 76 also displays a link to “Shop Online” and by

clicking on that link, Ms Stonier says she was directed to the webpage at “KAS-24”, pp 78

and 79 for a site described as kingparsuperstore.com said to reflect the state of that

webpage as at 16 April 2010.

129 “KAS-24”, pp 78 and 79, list 24 Orlimar golf products for sale and their respective prices.

130 Ms Stonier says she then returned to the webpage at “KAS-24”, p 63 for the orlimar.com

website as at 2 September 2010 which she had retrieved through using the internet archive

search website (see [121] of these reasons). She then clicked on the “catalogs” tab at the

bottom of the webpage at p 63. That directed Ms Stonier to a webpage at “KAS-24”, p 80

which prominently displays the ORLIMAR mark and a number of Orlimar golf club heads

endorsed with the ORLIMAR mark, and by clicking on a link on that page, she was able to

print out the “2010 Product Catalogue” marked ORLIMAR Sport, at “KAS-24”, pp 81 to 88,

showing the range of golf clubs, bags, carts, travel case covers, balls and gloves offered by

the applicant.

131 Ms Stonier says that she then returned to the orlimar.com website “home” page (at

“KAS-24”, p 63) as it was at 2 September 2010 using the waybackmachine site and clicked

on the tab “dealer locator” at the foot of the webpage which directed her to a webpage at

“KAS-24”, p 89 which displays a map of the United States showing each State. Under that

map there is another tab “Back to World Map”. Ms Stonier clicked on that tab and was

directed to the webpage at “KAS-24”, p 90 with Australia highlighted in orange. Ms Stonier

clicked on that part of the map showing Australia and was directed to the webpage at

“KAS-24” at p 91, which identifies the full name, address and contact details in Australia for

Orlimar’s dealer in Australia, namely, Champion Sports, of North Adelaide with reference to

Mr Greg Tucker as the person to contact. However, “KAS-24” at p 91 does not show that

page as at September 2010, but rather, as at 5 July 2008.

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132 Ms Stonier says that she then returned to the webpage at “KAS-24”, p 63 (for 2 September

2010) through the archive site and clicked on the “combos” tab (see [121] and [123] of these

reasons) which directed her to the webpage at “KAS-24”, p 66 which prominently displays

the ORLIMAR mark and images of golf club sets or combinations of golf clubs and bags for

those clubs. Ms Stonier then clicked on the “More Info” tab for the “Black Ice” product on

that page and was directed to the webpage at “KAS-24”, p 92 which describes in text the

virtues of those clubs. Ms Stonier then clicked on the “Buy Now” tab on that webpage and

was taken to the webpage at “KAS-24”, p 93 which contains protocols for online purchase of

the sets of clubs and a bag at $299.99. It also contains a call number for placing orders for

Orlimar golf products.

The functionality of the waybackmachine archive site

133 Ms Stonier gives this evidence at para 23 of her 13 September 2013 affidavit concerning the

waybackmachine archive site. Ms Stonier says she has examined the information pages on

the archive site archive.org and the sub-page web.archive.org and has identified the

following statements on these webpages about the archive website and its functionality.

134 The internet archive site is a website that provides access to a digital library of internet sites

and other cultural artefacts in digital form. The search engine called the “Wayback Machine”

(which I will refer to as the “W M search engine” for present purposes) makes it possible to

“surf” more than 240 billion webpages stored in the website’s web archive. Visitors to the

website (users) seeking to search an archived website using the W M search engine can do so

by “web address”, that is, by the URL for the site. If the archive contains webpages for the

nominated web address being searched, the user will be presented with a list of dates for that

website held within the archive. The user can then select one of those dates for retrieval and

the W M search engine will display the website at that date as contained within the archive.

The user can then access that website and its webpages according to the tabs and links and

protocols adopted on that website, that is to say, the user can “then begin surfing on the

archived version of [the nominated] web[site]” (para 23(c) of Ms Stonier’s affidavit of

13 September 2013).

135 However, the links on an archived file, when served by the W M search engine, also point to

other archived files (whether HTML pages or images). If a user clicks on a tab or link

displayed on an archived webpage, the W M search engine will retrieve or serve the archived

file with the linked page as at a date which is the closest available date in the archive to the

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date of the webpage being examined by the user on which the link appeared, and upon which

the user has clicked.

136 The archived data made viewable and browseable by the W M search engine is compiled by

software programs known as “crawlers” that “surf”, that is, travel across, the World Wide

Web and automatically store copies of website files, preserving those stored files as they

existed at the moment in time of storage.

137 The internet archive site assigns a URL on its site to the archived file in a particular format

described by Ms Stonier at para 23(f) of her affidavit of 13 September 2013, in this way:

http://web.archive.org/web/[Year in yyyy][Month in mm][Day in dd][Time code in hh:mm:ss]/[Archived URL]. Thus, the Internet Archive URL http://web.archive.org/web/19970126045828/http://www.archive.org/ would be the URL for the record of the Internet Archive home page HTML file (http://www.archive.org/) archived on January 26, 1997 at 4:58 a.m. and 28 seconds (1997/01/26 at 04:58:28).

138 In addition, the date assigned by the archive website to the particular website stored in the

archive, is a date applicable to the HTML file, that is, the hyper text markup language, but not

to image files linked to the HTML file.

139 Thus, images that appear on a particular page may not have been archived as at the same date

as the HTML file.

140 On 10 September 2013, Ms Stonier inspected the respondent’s website brosnangolf.com.au

and at “KAS-15”, p 8, Ms Stonier annexes a printout of the “home” page, and at pp 9 and 10

she annexes the “Our Gear” webpage and the “contact” webpage she inspected by clicking on

those two tabs. The “home” page is branded BROSNAN Golf together with a logo and

displays three golf club heads and a style of golf glove. Page 9 is branded in the same way

and depicts products comprising a package or combination of golf clubs and bag, clubs, bags,

footwear, gloves, buggies, accessories and balls. On 10 September 2013, Ms Stonier also

inspected the respondent’s website brosnangolf.com and at “KAS-16”, p 12, Ms Stonier

annexes a printout of the “home” page for that website. At p 13, Ms Stonier annexes a

printout of the “Our Gear” webpage from that site. Each webpage is branded in the same

way as the Australian domain name site. The “Our Gear” webpage extolls the virtues of

BGPL products including clubs, bags, buggies, gloves and shoes, and balls and accessories.

BROSNAN Golf is described as “The No. 1 Australian in golf”.

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141 On 11 September 2013, Ms Stonier made the enquiries at the “Golf Factory Outlet” at

Virginia in Brisbane (described by her at para 12 of her 13 September 2013 affidavit), of the

person she identifies in her affidavit using the contact details identified by Ms Gore at

“CG-4” of Ms Gore’s affidavit. On 12 September 2013, Ms Stonier attended a shopping

complex at 1804 Sandgate Road, Virginia, Brisbane and visited BGPL’s “Golf World” store

which, relevantly for present purposes, is a seller whose ownership is connected with BGPL’s

ownership interests according to Mr Brosnan’s affidavit. Ms Stonier also visited that day the

“Golf Factory Outlet” site within the same complex. These sites trade, in every practical

sense, alongside each other.

142 In the Golf Factory Outlet store Ms Stonier saw Orlimar golf clubs for sale marked with the

ORLIMAR mark.

143 In BGPL’s Golf World store, Ms Stonier saw a blue golf bag marked with the ORLIMAR

mark, a photograph of which is at “KAS-21” at p 40.

Ms Gore’s affidavit

144 On 30 November 2012, Ms Crystal Gore attended the Golf World Store at Virginia and saw

golf bags for sale branded “Orlimar” (a photograph of these golf bags is annexed at “CG-1”).

Ms Gore says that Golf World’s representative (“Sam”) did not know whether these goods

were goods of the applicant or BGPL. Ms Gore also went to the Golf Factory Outlet store at

Virginia and saw 17 “units on display” bearing the “Orlimar” brand and a photograph of

some of those goods is annexed at “CG-4”. Those photographs at “CG-4”, pp 19 and 20, are

unclear although “CG-4”, p 20 is a blurred depiction of a number of golf clubs with a sign

that seems to say “GFO, Golf Factory Outlet, Orlimar, ZX hybrids, $596”. Ms Gore was told

(by a person called “Jason”) that the store had one or two “Orlimar” golf bags in the

storeroom and a few drivers on the display racks. Ms Gore says the mark branded on the

goods that she saw at the Golf Factory Outlet store was of the same appearance as the

applicant’s Orlimar mark as she saw it on the applicant’s website. The Orlimar mark she saw

on the Golf World goods was different to the applicant’s mark both as to the “font” and the

overall “device” of the mark.

Other affidavits

145 I have had regard to a range of other affidavit material filed on the application including all of

the affidavits of Mr Bennett and the affidavits of Mr Adams, Mr Smedley, Mr Linskey,

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Mr Johnson and related material. I do not propose to canvas in any detail the content of all of

these affidavits. I have taken into account the content of all of the material read on the

application.

The legislative regime

146 Section 88 of the Act is, relevantly, in these terms:

88 Amendment or cancellation – other specified grounds

(1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a) cancelling the registration of a trade mark; or

(b) removing or amending an entry wrongly made or remaining on the Register; or

…

(2) An application may be made on any of the following grounds, and on no other grounds:

(a) any of the grounds on which the registration of the trade mark could have been opposed under this Act;

…[emphasis added]

147 The power conferred by s 88(1) of the Act to effect rectification of the Register by ordering

the cancellation of the registration of a trade mark on the s 88(2) grounds only, is subject to

s 89 of the Act which is in these terms:

89 Rectification may not be granted in certain cases if registered owner not at fault etc.

(1) The court may decide not to grant an application for rectification made:

(a) under section 87; or

(b) on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or

(c) on the ground referred to in paragraph 88(2)(c);

if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or

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fault of the registered owner.

(2) In making a decision under subsection (1), the court:

(a) must also take into account any matter that is prescribed; and

(b) may take into account any other matter that the court considers relevant.

[emphasis added]

148 In this case, King Par seeks rectification of the Register by an order cancelling registration of

the Orlimar trade mark (No. 1402087) on the s 88(2)(a) ground that registration of that mark

could have been opposed under s 58 of the Act. Section 58 provides that registration of a

trade mark may be opposed on the ground that the applicant for the mark (BGPL) is not the

owner of the trade mark.

149 King Par’s application for rectification is not made under s 87 of the Act.

150 Nor is the application made on the ground that the trade mark is liable to deceive or confuse.

151 Nor is the application made on the ground referred to in s 88(2)(c) as contemplated by s 89(1)

(c) of the Act.

152 The only ground relied upon by King Par is s 88(2)(a) having regard to s 58 of the Act. Thus,

although the s 88(1) power of rectification is subject to s 89 of the Act, s 89 is simply not

engaged in this case.

153 The next question then is what is the strength of King Par’s case concerning the integers it

needs to satisfy having regard to s 88(1)(a), s 88(2)(a) and s 58 of the Act.

154 As to whether King Par is an “aggrieved person” in the broad enabling and liberally

construed, yet filtering sense in which that term is used in s 88(1) of the Act having regard to

the observations of their Honours in Health World Ltd v Shin-Sun Australia Pty Ltd (“Health

World v Shin-Sun”) (2010) 240 CLR 590 at [22] to [26], French CJ, Gummow, Heydon and

Bell JJ, the position is, in my view, clear, for the following reasons.

155 At the moment in time when King Par commenced its rectification proceeding, it was (and

for some time had been) engaged in a field of trade rivalry with BGPL for the custom of

buyers of goods within the field of goods described in the registration of the impugned trade

mark. King Par sells directly, through its website, and through distributors, golf clubs, bags,

balls, carts, gloves and other golf equipment.

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156 The respondent is also in the business of selling golf equipment and particularly clubs, bags,

balls, gloves and other golf equipment.

157 Moreover, King Par correctly contends, as to standing, that its legal rights are being

“adversely affected” by the presence on the Register of trade mark No. 1402087. On

6 August 2012, consistent with its contention that it is the owner of the trade mark Orlimar as

successor to the inventor and first user of the mark, King Par filed an application under the

Act for registration of the Orlimar mark in Class 28 in respect of “golf equipment, namely,

golf clubs, golf head covers and golf bags”. BGPL’s registered trade mark was cited by

IP Australia as a basis of objection to the acceptance (and registration) of King Par’s Orlimar

trade mark the subject of Application 1515358, and on 21 May 2013, BGPL filed opposition

proceedings in that application.

158 King Par seeks to supply golf equipment to its exclusive Australian distributor SJC (and see

those goods sold in Australia) pursuant to orders placed by SJC which have been placed “on

hold” and remain so, due to BGPL’s use of the Orlimar mark on its goods in Australia thus

giving rise to competing contentions as to the right of each trader to badge rivalrous goods of

a similar kind with the trade mark, Orlimar.

159 In addition, King Par, by assignment and transfer under the instruments earlier described in

these reasons, is the legal successor to the rights enjoyed by the original Orlimar entity as

author and inventor of the made-up trade mark word, Orlimar, and contended first user of the

mark in Australia. The Orlimar entity as King Par’s predecessor, was a registered owner

under the Act of the Orlimar trade mark as early as 1998 and remained so until 29 January

2009 when that mark was removed due to a failure of the registered proprietor to renew the

mark.

160 Having regard to the considerations at [154] to [158], I am satisfied that the material filed on

this application shows that King Par has a very strong case of demonstrating that at the date it

filed its rectification proceeding, it was an “aggrieved person” and thus had standing to make

the application for a rectification order under s 88(1) of the Act.

161 The next question goes to the s 58 ground upon which registration of the trade mark could

have been opposed for the purposes of s 88(2)(a) of the Act.

162 Subject to the question of contended abandonment of the Orlimar trade mark in Australia by

King Par’s predecessor and for that matter by King Par (thus leaving open the contended

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entitlement in BGPL to adopt, in the way described by Mr Brosnan in his affidavit, use, as

owner, of the Orlimar mark as a trade mark in Australia) one aspect of the matter on all of the

evidence is absolutely clear, namely, that as between King Par and BGPL, BGPL cannot be

the owner of the mark.

163 These propositions are clear on the material.

164 First, King Par’s predecessor made up and thus invented the word mark in the way described

by Mr Ortiz in his affidavit. That step had nothing to do with Mr Brosnan or BGPL.

165 Second, Mr Brosnan accepts, on the pleading and affidavit material, that King Par’s

predecessor was using the Orlimar trade mark as a trade mark in Australia prior to 2003 in

relation to “golf clubs”. That use pre-dates any use at all by BGPL by approximately eight

years.

166 Third, King Par’s predecessor in title became registered as the registered proprietor under the

Act of the Orlimar mark in 1998 and that mark remained on the Register in the name of King

Par’s predecessor in title until January 2009.

167 Fourth, King Par is the demonstrated successor in title to the registered proprietor through the

various instruments earlier described.

168 Fifth, the affidavit material shows a long history of use of the Orlimar mark continuously

from at least 1998 (and conceded use prior to 2003) as a trade mark, that is, use in connection

with trade or the promotion of trade in or into Australia in the sale of goods generally

described as golf equipment and golf clubs, by King Par’s predecessors and by King Par. I

will return to the particular character and composition of the goods shortly. The evidence of

that continuous use is contained in the evidence of Mr Coffell and Ms Stonier. I have

extensively set out the detailed content of that evidence in these reasons and I do not propose

to repeat that evidence here. However, the significant examples of such conduct are the

matters at [58] to [63], [81], [83], [87] to [91], [91], [99] to [111] of these reasons. Apart

from these matters, Ms Stonier has conducted a number of searches using the

waybackmachine archive site. I do not rely upon any of the images Ms Stonier refers to as I

cannot be satisfied as to the accuracy of the dates of archive of those images on any of the

websites to which they are attributed by the W M search engine.

169 However, having regard to the other evidence and, in particular, the evidence as to the

invoices, I am satisfied that all of the textual references in the form of HTML pages, which

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refer to Orlimar and the ORLIMAR trade mark on the websites searched using the WM search

engine are consistent with a pattern of other conduct of use and thus represent reliable

indications, in addition to, importantly, the invoices and other conduct described at [167] of

the way in which the particular archived HTML webpages appeared on the nominated dates.

170 Sixth, as earlier mentioned, the word mark used by King Par and its predecessors in title in its

trading activities in golf equipment was the word “Orlimar”, which is precisely the same

made-up word mark adopted by Mr Brosnan in “late 2010” (see [71] of these reasons) and

then used by BGPL on “golf bags” and “putters”, in its trading activities, once BGPL had

secured registration of the trade mark “Orlimar” in 2011 (see paras 40 and 41 of

Mr Brosnan’s affidavit sworn 30 September 2013).

171 Seventh, the use by King Par (including use by its predecessors in title) of the Orlimar mark

earlier in time to BGPL’s use of the mark in 2011 was use, according to the Coffell and

Stonier affidavits in connection with trade or the promotion of trade in golf clubs, golf

bags/golf stand bag, golf club covers, golf balls, caps (including visors), golf gloves and golf

carts. Some of the references to that material are these:

Golf Equipment ReferencesGolf Clubs [81], [83], [87], [88], [91], [99], [102], [105], [111], A, B, C, D, E, F,

G, H and IGolf Bags/Golf Stand Bag [83], [99], [111], A, B, C, D, E, F, G, H and IGolf Club Covers [99], “AJB-7”, para 6, “RC-1”Golf Balls [89], [99], [103], A, B, C, D, E, F and GCaps (including Visors) [99]Golf Gloves B, C, D, E, F, G and HUmbrellas [99], [106]Towels [99], [106]Golf Carts [111], B, G and H

Legend:

A = Text Search, “KAS-23”, p 54 [117] B = Text Tabs at “KAS-24”, pp 63 [121]C = Text Tabs at “KAS-24”, p 64 [122]D = Text Tabs at “KAS-24”, p 66 [123]E = Text Tabs at “KAS-24”, p 68 [124]F = Text Tabs at “KAS-24”, p 70 [125]G = Text Tabs at “KAS-24”, pp 72, 73, 74 and 75 [126]H = Text Tabs and Text Search at “KAS-24”, pp 76, 77 [127]I = Text Tabs at “KAS-24”, pp 7, 79 [128]

172 Eighth, the goods the subject of BGPL’s impugned registration are Class 25 goods described

in the registration as “clothing, footwear, headgear” and Class 28 goods described as

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“sporting equipment, including golf clubs, golf balls, golf bags, hand-propelled golf buggies,

golf tees, golf gloves, and all other golf equipment and accessories in this class” (see [4] of

these reasons). It follows that having regard to the nature of the goods, the uses for these

goods by those engaged in the sport of golf, the uses to which each of the golf items and golf

accessories are put, and the evidence of the distribution and trade channels through which the

goods are bought and sold, King Par’s prior use (and that of its predecessors in title) is use in

respect of goods of the same class, character, kind and description as the goods the subject of

the registration for the impugned mark. As to the relevant tests on this question see Southern

Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606-607; and

the discussion in Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at

[14] to [16], Kenny J.

173 Apart from the examples of prior use in Australia of the Orlimar mark in connection with the

same kind of goods in respect of which the Orlimar mark is now registered in favour of

BGPL, Ms Stonier deposes to “screenshots and printouts” obtained by her from King Par’s

website at the date of her affidavit in May 2013, which link to the applicant’s “King Par

SuperStore”. The kingpar.com page prominently identifies Orlimar as one of six major links

which, when clicked, takes the user to the King Par SuperStore and the opportunity to “shop

online” for Orlimar golf equipment. Those pages also link to a webpage bearing the

description “ORLIMAR Shop Now!” which depict “Orlimar Golf/Orlimar Golf Equipment”

including ball markers, ball pickup, golf shoe spike wrench, golf clubs, golf shoes, golf balls,

bags and carts and accessories. The webpage at “KAS-9”, p 144 says that King Par will ship

its goods to international locations within 48 hours of placement of the order. See also the

remarks at [95] of these reasons.

Ownership

174 As to ownership of the trade mark, the statutory scheme as construed according to the

authorities, reflects relevantly for this case, these principles.

175 Under the Act, a person is entitled to apply for the registration of the trade mark Orlimar in

respect of particular goods if the person claims to be the owner of the trade mark and it

intends to use the trade mark in relation to those goods the subject of the proposed

registration: s 27(1)(a) and (b) of the Act. That was Mr Brosnan’s position adopted for

BGPL as the applicant for the trade mark, according to his affidavit.

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176 The basis of a claim to ownership in a trade mark, unused in Australia at the date of the

application lies in the combined effect of authorship of the mark, an intention to use it on

the subject goods and the act of applying for registration under the legislation: Shell Co of

Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601 at 630, Dixon J.

177 Authorship as an element of a claim to ownership involves the notion of either origination

or first adoption of the trade mark, as a trade mark. Although authorship is not dependent

upon invention, and “local” authorship in Australia (that is, origination or first adoption) will

be sufficient (even if the trade mark the subject of the application is a deliberate copy of a

foreign mark for the same goods), “what is essential to a valid claim to ownership is that no

other person has acquired a prior right to use the trade mark in Australia for the goods or

services in question” [original emphasis]: Shanahan’s Australian Law of Trademarks and

Passing Off (“Shanahan”), 5th Ed, para 10.510 at 63.

178 Section 58 provides that registration of a trade mark (once accepted by the Registrar) may be

opposed, notwithstanding that the applicant claims to be the owner and asserts an intention to

use the trade mark (in the course of trade in connection with the relevant goods the subject of

the registration), on the ground that the applicant for the mark is not the owner of the mark.

179 Section 88(1) provides a statutory opportunity, described in Health World v Shin-Sun as a

third opportunity (in addition to the first two opportunities afforded under s 31 and s 52 of the

Act respectively, although on this occasion an opportunity afforded to an “aggrieved person”)

to ensure the purity and integrity of the Register by seeking cancellation of the registration

of the trade mark so as to avoid the public mischief of the Register not being an accurate

record of marks which perform the statutory function of indicating, to consumers, the trade

origins of the goods to which it is intended to apply the mark: Health World v Shin-Sun,

French CJ, Gummow, Heydon and Bell JJ at [22] to [26].

180 For the purposes of s 58 of the Act, the term owner derives its content and meaning from its

common law origins concerning prior use and thus the first user of the trade mark, as a trade

mark, in Australia, is entitled to claim to be the owner (whether or not that user is the author

or inventor of the trade mark by origination). Moreover, if the applicant, BGPL, is shown

not to be the first user of the trade mark in Australia, as a trade mark, the ground of

opposition will be established. This proposition was accepted as a correct statement of the

law in Food Channel Television v Food at [55], Keane CJ, Stone and Jagot JJ. As the editors

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of Shanahan, 5th Ed, observe at para 10.1505, p 73, “[e]ven a small amount of prior use

should defeat a directly competing claim to statutory ownership”.

181 In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 433-434,

Deane J said this:

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 204-205)] 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 407 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.

182 In order to establish use, it is not necessary that the goods themselves be “in Australia”:

Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402. Moreover, the Courts

will regard a small amount of use, or slight use, of a mark in Australia by an overseas

proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v

Harlee Manufacturing Co (1960) 103 CLR 391 at 400; Moorgate Tobacco Co Ltd v Philip

Morris Ltd (No 2) at 432; Malibu Boats West Inc v Catanese (2000) 180 ALR 119 at 129

[28], Finkelstein J. In Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211, Williams J said this:

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 that it has become identified with and distinctive of the goods of the foreign trader in Australia.

183 In this case, the two competing marks are the identical word mark Orlimar, for the same kind

of goods. Mr Brosnan concedes use of the trade mark Orlimar by King Par’s predecessor in

title prior to 2003 (which is use as a trade mark in the course of trade in goods at least

consisting of golf clubs) and there is no challenge to the proposition that King Par’s

predecessor was also the originator of the invented word mark.

184 In this case, there is actual use of the trade mark Orlimar in the course of trade in a range of

the same kind of goods by King Par’s predecessors in title prior to BGPL’s application, and

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by King Par. This is not merely a case of bare advertisements by King Par’s predecessors or

simply the expression of an intention to use the trade mark by King Par’s predecessors in

some ill-defined way as a mere possibility, prior to BGPL’s application. Here, there is

extensive actual use of the trade mark in the course of trade in goods of the same kind as the

subject of BGPL’s application. As to that use, see particularly [81], [83], [87], [88], [91],

[99], [102], [103], [105], [106] and [111] of these reasons. See also King Par’s conduct of

engaging with 20 consumers from Australia through its own website, at [62] (at para 21 of

Mr Coffell’s affidavit) of these reasons.

Abandonment

185 BGPL contends that King Par either by itself or more relevantly by its predecessor in title

abandoned any proprietorship of the Orlimar trade mark which may have subsisted by reason

of origination of the invented word and first use of the mark as a trade mark in Australia in

connection with “golf clubs” prior to 2003. It is important to recall that in the principal

proceeding, King Par contends that BGPL is not the owner of the Orlimar trade mark and

registration could have been opposed on that ground under s 58 of the Act. BGPL is not the

owner of the mark because BGPL, on the material, is plainly not the first user of the trade

mark in Australia as a trade mark. Thus, the ground of opposition could have been made out.

Even a small amount of prior use is sufficient to defeat BGPL’s claim to “statutory

ownership” of the Orlimar trade mark (see [179] to [181] of these reasons). Thus, the

integrity of the Register is compromised as an accurate record of marks identifying the trade

origin of goods to which it is intended to apply the registered trade mark.

186 BGPL contends, however, as an answer to the material which strongly demonstrates that it is

not the owner of the trade mark that King Par’s predecessor abandoned “any proprietorship in

the trade mark”. Notwithstanding that BGPL was neither the inventor nor the first user of the

mark in Australia as a trade mark, it says it is now free to adopt use of the Orlimar mark as a

trade mark in Australia in connection with the identified goods, as King Par is no longer the

owner.

187 Leaving aside the question of whether circumstances which show that BGPL is not the owner

of the trade mark (for the purposes of s 58 of the Act) can be overcome (so as to sustain the

registration of the trade mark), by identifying contended loss of proprietorship in another

(thus giving rise to a principle of ownership by secondary adoption), the relevant principles

concerning abandonment are these.

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188 Abandonment is not to be inferred merely from non-use: Shanahan, 5th Ed, [10.1510] at

p 75, and the authorities noted at fn 77. On the other hand, a mere intention not to abandon is

not enough: Shanahan, 5th Ed, [10.1510] at p 75, fn 76, and the authorities cited at fn 76. In

Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, McGarvie J accepted

that in reliance upon the principles in Mouson & Co v Boehm (1884) 26 Ch D 398, Chitty J,

that mere non-use of the trade mark is not enough to give rise to abandonment; there has to be

an intention to abandon; abandonment is a question of fact; and, inferences as to fact

(concerning an intention to abandon) might be capable of being drawn from primary facts.

189 In Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 at 571-572, Bowen CJ

in the Full Court of the Federal Court said this:

Once having acquired proprietorship it can only be lost upon some established general law basis such as estoppel, acquiescence or abandonment … Counsel for the Marble Co did argue that Settef had abandoned its trade mark through disuse … However, in my opinion, to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost. …

190 Northrop J and Lockhart J held that no abandonment of proprietorship arose on the facts

before McGarvie J.

191 The respondent contends that there was “intentional abandonment” of King Par’s

proprietorship for four principal reasons.

192 Before examining those reasons, it should be noted that by para 23(b) of the respondent’s

Amended Defence, BGPL contends that to the extent that any other person was the owner of

the mark Orlimar prior to BGPL filing its application No. 1402087 on 24 December 2010,

those rights (if they existed at all) existed only in relation to “golf clubs”, and had been

abandoned. That follows, it is said, because no goodwill existed in Australia in any business

using the mark Orlimar; the failure to renew the registered trade marks Orlimar and Orlimar

Trimetal is evidence of intentional abandonment; there was lengthy absence of use of the two

marks in Australia; and, the registered proprietor failed to assign the rights in the two marks

to any other person.

193 As to the submissions, BGPL’s first contention is that the failure to renew the registration of

the Orlimar and Orlimar Trimetal marks is a “decision not to renew and to remove from the

Register [those marks] in 2009” [emphasis added]. That inference is said to be open on the

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footing that the applicant for the trade marks was represented in Australia by experienced

trade mark and patent attorneys, Spruson & Ferguson, and that firm would have had systems

and processes that would have ensured that notice of the need to renew the marks came to the

attention of the registered proprietor at the relevant time. Thus, an inference is open, it is

said, that King Par Corporation decided not to renew the registration of each trade mark.

194 The respondent says that such an inference of intentional abandonment of King Par

Corporation’s rights as owner is at least open on the material and ought be tested by access to

the documents of Spruson & Ferguson, IP Australia and King Par Corporation.

195 As a matter of further non-renewal, intentional abandonment of the Orlimar trade mark (and

“related trade marks”) in Australia is also said to be inferred from the “fact” that the

European Orlimar registered trade mark (000865949) was also “allowed to expire” but that

the United States and Canadian registrations were renewed. Those matters are said to support

an inference of “a conscious commercial decision to continue trading only under the

ORLIMAR trade marks in American and Canadian markets but to abandon proprietorship of

those marks elsewhere”. The respondent contends that Mr Coffell’s evidence as CFO of

King Par Corporation at the relevant time, to the effect that King Par Corporation did not

receive notification of the renewal of the Orlimar mark, and that King Par Corporation did

not intend to abandon the trade mark Orlimar in Australia, should be given no weight (and, in

any event, is inadmissible).

196 A second contention is that intentional abandonment is evidenced by the lengthy period of

“non-use” for the Orlimar trade mark in Australia from approximately the early 2000s.

BGPL says there is no evidence of actual trade in the applicant’s “Orlimar-branded goods”.

In particular, BGPL says the fact that Champion Sports remained a stockist says nothing

about products “on-sold” in Australia; the entry into the SJC exclusive distribution

arrangement says nothing about actual trade in goods in Australia, and the SJC 26 June 2012

order is nothing more than an intended order for “clubs and bags”; and, the circumstance that

King Par has United States based distributors that sell products over the internet does not

establish actual sales to Australian consumers.

197 The third contention is that intentional abandonment is open, as a matter of inference, on the

footing of “no evidence of assignment of any proprietorship in Australia of the Orlimar trade

mark”, having regard to the agreements earlier described. In particular, it is said that the

schedules to the Asset Purchase Agreement of 4 June 2009 listing the assigned trade marks

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are not in evidence. Since that agreement post-dates removal of the Orlimar and Orlimar

Trimetal marks in Australia, it would make no sense, it is said, for the former Australian trade

marks to be in the schedules to the agreement.

198 The fourth contention, put simply, is that when the trade mark was abandoned and removed

from the Register, it reverted to a common law trade mark and any proprietorship rights were

lost when the goodwill subsisting in the business to which the Orlimar mark was attached,

owned by King Par’s predecessors, was lost or dissipated.

199 As to these submissions, I am satisfied of the following matters in the context of all of the

evidence read on the application.

200 The failure to renew the Orlimar and Orlimar Trimetal trade marks in Australia coupled with

the owner’s representation in Australia by Spruson & Ferguson, are not facts that support an

inference that an affirmative intentional decision was reached by the registered proprietor

“not to renew and to remove from the Register” those marks. I accept, in principle, that

BGPL might want to test the reason for the failure to renew those trade marks and see

whether a hypothesis of conscious informed non-renewal occurred. However, factors

counter-balancing an opportunity to test such a hypothesis are these. Mr Coffell was the

Chief Financial Officer of King Par Corporation at the time of the events and he has given the

explanation earlier described concerning non-renewal and the non-receipt of the renewal

notice for the reasons he identifies. His evidence is admissible on this application. Plainly

enough, I make no findings about any of these matters.

201 Moreover, the evidence does suggest continuous use of the trade mark Orlimar from 1998 to

2013 by King Par’s predecessors and later by King Par, of use of the trade mark as a trade

mark in the sense described in the authorities. Also, the Orlimar mark was on the Register

from 1998 to 2009 throughout the periods of use. After 2009, King Par continued to offer a

range of golfing equipment goods in connection with use of the Orlimar trade mark. The

question then is whether a party should be given an opportunity to test at a trial of an action a

postulation about inferential conclusions of intentional abandonment in the face of actual

facts of use in the sense contemplated by the authorities and the other matters already

mentioned.

202 A further consideration is this.

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203 BGPL chose to adopt the Orlimar trade mark as its own notwithstanding a long period of

association and prior use by King Par’s predecessor and later by King Par. Notwithstanding

Mr Brosnan’s evidence that he believed that he was entitled, on behalf of BGPL, to adopt the

Orlimar mark as his own, the material suggests that as the mark was removed from the

Register in January 2009, and BGPL made its application in 2010 for the use of the mark for

a premium line of golf equipment goods, BGPL must have regarded the trade mark as having

attractive commercial force associated with the business of selling golf equipment.

204 There is no doubt that the website textual material and the contemporary searches in 2013 of

both the King Par website and the Rockbottom Golf website show continuing engagement by

King Par and its distributor in the promotion and offering for sale of a range of golf

equipment. One issue, however, is that Mr Coffell talks about Power Sports being an

Australian distributor in the period from June 2005 to July 2006 and Champion Sports having

been a distributor in the period October 2006 to October 2008. Mr Coffell then says that

Champion Sports remained a “stockist” of Orlimar products “which it acquired from the

applicant”. It is not clear whether Mr Coffell is seeking to contend that Champion Sports

remained a distributor acquiring, and presumably re-supplying, Orlimar products or whether

it simply remained “a stockist” of Orlimar products it had acquired in the earlier period.

Then, in or about 1 May 2012, King Par “commenced discussions” with SJC which led in or

about June 2012 to King Par entering into an exclusive distribution arrangement with SJC for

distribution of ORLIMAR products. That arrangement ultimately led to the placement of

orders on 29 June 2012 to the value of US$29,399.00.

205 There does not seem to be any material which expressly deals with actual transactions in the

period October 2008 to the placing of the order on 29 June 2012. There is evidence that a

buyer could interrogate the two websites earlier mentioned and purchase goods. However, it

is a little surprising that there is no evidence of a sequence of transactions between

approximately 2008 and 29 June 2012 of actual sales to a re-supplier in Australia or directly

to consumers in Australia showing particulars of the transactions and core examples of

documents supporting those transactions.

206 Recognising that the question of intentional abandonment is a question of fact which might be

determined either by reference to primary facts or by inferences as to the fact in issue, open

on findings of primary fact, it seems to me that in the context of s 31A of the Act, BGPL

ought not be denied a forensic opportunity to test the fact in issue on the pleadings and test

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the character of the applicant’s engagement between 2008 and 2012. For this reason, I am

not satisfied, for the purposes of s 31A of the Act, that BGPL has, as matters presently stand,

“no reasonable prospect of successfully defending the proceeding”, taking that phrase as a

whole, so as to warrant judgment being given against the respondent in the proceeding.

207 The proper course to resolve the issues between these parties is to set the proceeding down

for trial in an expedited way. There is no good reason why the proceeding cannot be heard

and determined in a final sense in this Court quite quickly. I propose to make orders to that

effect.

208 Having regard to the above matters, it is not necessary to consider the question of the scope

and nature of the discretion contained in s 88(1) of the Act.

I certify that the preceding two hundred and eight (208) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.

Associate:

Dated: 30 July 2014