Sunrise House Limited v Wood Electronics Manufacturing Limited [1988] NZIPOTM 1 (27 July 1988)

	Home \| Databases \| WorldLII \| Search \| Feedback Intellectual Property Office of New Zealand - Trade Marks Decisions

Date of Hearing: 26 May 1988
For the Applicant: Mr J.B. Hackett
Mr P.C. Dengate Thrush
For the Opponent: Mr J.D. Hardie

The present opposition concerns a dispute as to the registrability of the trade mark ROADSTAR in relation to radio equipment and other goods in class 9.

The opposed application is No. 131539 filed on 3 March 1980 in the name of Sunrise House Limited, a Japanese company. By change of name the applicant became Roadstar Corporation. While the application was pending the applicant became insolvent and was declared bankrupt by a Japanese Court.

The application is defended in the opposition proceedings by Seah Siak How, a Singapore citizen who claims to be successor in title to the application by virtue of various assignments, which he claims were made in his favour first by the applicant before it became bankrupt, and after bankruptcy by an assignment purporting to be made by the Trustee in Bankruptcy of the applicant company.

The opponent has challenged the validity of the assignments by which Seah Siak How claims to be successor in title to the pending trade mark application.

The opponent Wood Electronics Manufacturing Limited filed an application No. 142888 to register the trade mark ROADSTAR in Class 9 on 25 June 1982.

Before application No. 131539 was examined an application was received on 13 May 1982 to register Seah Siak How as subsequent proprietor of the trade mark application.

Application No. 131539 was examined on 10 August 1982 and two other pending applications for the trade mark ROADSTAR in Class 9 were cited against it: These were the opponent's application No. 142888 and application No. 130702 filed on 13 December 1979 by Atlas Majestic Industries Limited, of Auckland.

After some correspondence the Attorneys for the applicant were advised that application No. 131539 would proceed to advertisement before acceptance in the Patent Office Journal subject to Notice being given to the applicant of application No. 142888. By this stage the Attorneys acting for the applicant of application No. 130702 had advised that that application was to be withdrawn.

Application No. 131539 was advertised in Journal No. 1256 which issued on 30 March 1984 and the three months allowed for opposing the application expired on 30 June 1984. The opponent was allowed an extension of time of seven months for filing notice of opposition and this was filed on 7 January 1985.

After a four months extension of time a counterstatement was filed on 5 July 1985 naming Roadstar Singapore Pte. Limited as applicant and claiming that this was by virtue of a legally executed deed of assignment dated 14 July 1983 by the former proprietor.

By letter of 10 December 1985 the Attorneys for the opponent drew attention to what they considered were material inaccuracies in the counterstatement. When this was referred to the attorneys for the applicant they expressed surprise that the attorneys for the opponent had waited five months before raising the matter.

By letter of 9 January 1986 the Patent Office pointed out to the applicant in some detail what needed to be done in order to make the counterstatement satisfactory.

In paragraph 1 of the amended counterstatement the applicant sets out the chain by which it claims the applicant as named in the counterstatement has attained title to the trade mark from the applicant as stated in the trade mark application form.

"1. The applicant is the successor in title of the ROADSTAR trade mark by virtue of it having obtained title of the mark-through the following chain of events:

(i) Sunrise House Limited changed its name to Roadstar Corporation on 14th July 1980;

(iii) The Tokyo District Court appointed Saiji Tanaka on 9th June 1982 as Trustee in Bankruptcy for Roadstar Corporation;

(iv) Saiji Tanaka assigned the trade mark ROADSTAR to Seah Siak How on 14th July 1983.

(v) Seah Siak How incorporated Roadstar Singapore Pte Ltd, the successor in title of the ROADSTAR trade mark both in New Zealand and at least 23 other countries.

Evidence proving the validity of the assignment will be filed together with the applicant's evidence in these proceedings."

Because certain matters still needed clarification the applicant on 28 May 1986 filed a supplementary counterstatement dealing with these points.

"1. That the application for subsequent proprietor filed at the New Zealand Trade Marks Office on 13 May 1982 should be withdrawn;

2. The assignment dated 26th March 1982 was in fact executed in anticipation of the purported assignment which later took place between Mr Tanaka, the Trustee in Bankruptcy for Roadstar Corporation and Seah Siak How on the 14th July 1983;

3. The applicant therefore denies each and every ground contained in paragraph 7 of the notice of opposition and reiterates the denials and claims contained in paragraph (g) of the earlier counterstatement in relation to ground 7 of the opponent's notice of opposition."

The attorneys for the opponent still continued to query matters in the amended and supplementary counterstatements and because of this they took the view that time was not running against them for the filing of their evidence.

The Patent Office by letter dated 1 September 1986 advised the parties that it was considered that the applicant had sufficiently stated its case in the amended and supplementary counterstatements. It was pointed out that extensions of time would be required if the opponent wished to proceed to file evidence and that if no further action was taken by 8th September 1986 then the opposition would be deemed abandoned under reg. 39(3).

On the 30th September 1986 the opponent filed an application for an extension of time of two months.

The Attorneys for the opponent took the view that if the office did not review the position it had taken on the counterstatement then it wished to be heard.

The attorneys for the applicant pressed for the opposition to be deemed abandoned as no evidence was filed within the time specified and asked that the certificate of registration issue immediately.

On 30 September 1986 a hearing was held on the question as to whether or not the opposition should be deemed abandoned pursuant to reg. 39(3).

On 10 October 1986 I gave my decision allowing the opponent a further opportunity to file its evidence and granted an extension of time of two months from the 8 September 1986.

The opponents evidence was filed on 7 November 1986 but they filed it under protest that they should have been allowed a hearing on the question of the adequacy of the counterstatements filed.

The opponent objected to certain paragraphs and exhibits annexed to the applicant's declaration on the basis that they were privileged communications between the parties.

Following a hearing I ordered that certain parts of the applicant's evidence should be excised and this was complied with.

In my decision ordering that certain parts of the declaration evidence of the applicant be excised I ruled that the remainder of the evidence in the declaration could continue as the evidence of the applicant in the opposition proceedings.

On the 24 March 1988 an application was made for Seah Siak How to be registered as subsequent proprietor of trade mark No. 131539.

In the counterstatement the present applicant is stated as Roadstar Singapore Pte Limited, a company organised under the laws of Singapore, whose address is Unit D-09-01 9th Floor, Yi Xiu Factory Building, 65 Sims Ave. Singapore 1438 manufacturers and merchants. The various agreements that have been put forward seeking to show who should now be regarded as the successor in title to the original applicant in respect of trade mark application 131539 identify Seah Siak How of 38-C, Pine Lodge, Nassim Mansion, Nassim Hill Road, Singapore 1025, as proprietor of this application.

"(v) Seah Siak How incorporated Roadstar Singapore Pte Ltd the successors in title of the ROADSTAR trade mark both in New Zealand and at least 23 other countries."

"I am the managing director of Roadstar Singapore Pte. Ltd, a company organised and existing under the laws of Singapore (hereinafter referred to as "my company")."

As founder of and managing director of Roadstar Singapore Pte Limited it appears that Seah Siak How has so equated himself with this company that the company has been named in the counterstatement as the successor in title of the original applicant.

Mr Dengate Thrush on behalf of the applicant on whom the onus lay in these proceedings commenced by dealing in turn with each of the grounds of opposition.

He first pointed out that the notice of opposition did not appear to be in the prescribed trade mark Form No.8, but he advised that it was not a matter he wished to take any further.

Probably this passing comment was made in view of the emphasis that the opponent had placed on documents being in proper order. The document has been treated as the opponent's notice of opposition up to this stage and I see no reason to raise any objection to it now.

" 1. The Opponent, LA WOOD TELEVISION LIMITED, is a New Zealand company of 74 Princess Street, Onehunga, Auckland, New Zealand.

Mr Dengate Thrush had no objections to these 3 grounds but merely commented that he could not deny that the opponent is claiming to be the proprietor of the trade mark.

Obviously he did not accept that the opponent was the proprietor of the trade mark.

“4. ATLAS MAJESTIC INDUSTRIES LIMITED applied to register ROADSTAR under No. 130702 dated 13 December 1979 in Class 9 in respect of sound recording and reproducing apparatus and instruments, including recordings but abandoned that application on 9 December 1983."

Mr Dengate Thrush submitted that this is not a ground of opposition at all, as the mere fact that somebody unrelated to the opponent has applied to register the same mark has no bearing on whether or not the mark in the present application should be registered.

Atlas Majestic Industries Limited abandoned application No. 130702 in December 1983 and have not opposed the present application, so obviously they are not asserting any rights in respect of the ROADSTAR trade mark.

"5. At the time of making application for Registration No. 131539, SUNRISE HOUSE LIMITED was not entitled to claim proprietorship:

(a) By virtue of the prior claim to proprietorship by ATLAS MAJESTIC INDUSTRIES LIMITED as only on withdrawal of Application No. 130702 was anybody in New Zealand entitled to file a valid trade mark application in respect of the trade mark ROADSTAR in Class 9 for goods covered by the ATLAS MAJESTIC INDUSTRIES LIMITED application (apart from the Opponent). This is because registration dates from the date of application but it cannot legally be back-dated to cover a period where no valid claim to proprietorship could be established or asserted.

(b) Because prior to 13 December 1979, the Opponent commenced to use the trade mark ROADSTAR in New Zealand upon the goods in which it subsequently applied to rest of the trade mark, with the acquiescence of ATLAS MAJESTIC INDUSTRIES LIMITED, and thereby gained common law rights in the trade mark against all other parties."

Ground 5(b) was withdrawn so it need not be considered.
Mr Dengate Thrush admitted to having some difficulty as to just what 5(a) does say. He pointed out that just because ATLAS MAJESTIC INDUSTRIES LIMITED had filed an application to register the ROADSTAR mark did not stop someone else making a
valid application. He submitted that the mere existence of a prior trade mark application is irrelevant to the validity of a later filed application. He pointed out that it is quite common for different applicants to apply for registration of the same trade mark and that the opposition procedure exists to try and resolve such matters.

Mr Hardie submitted that paragraph 5(a) was a broad submission. He claimed that at the time of making application No. 131539 SUNRISE HOUSE LIMITED was not entitled to claim proprietorship of the mark because as a matter of public record there was already on file an earlier application by ATLAS MAJESTIC INDUSTRIES LIMITED, No. 130702, and that SUNRISE HOUSE LIMITED and ROADSTAR SINGAPORE PTE LIMITED have failed to prove that the earlier application was based on a false claim to proprietorship.

Mr Hardie submitted that there could not be a situation where two parties have a valid claim to proprietorship unless both parties claim use. He pointed out that the SUNRISE HOUSE LIMITED application No. 131539 was applied for on the grounds that it was proposed to be used and that the ATLAS application was applied for on the basis that it was to be used by a registered user and that the ATLAS application pre-dated the SUNRISE HOUSE application. He went on to submit that at the time the SUNRISE HOUSE application was filed the ATLAS application was still pending and it was not withdrawn until 9 December 1983. He submitted that no evidence has been produced by the applicant to show why the ATLAS application was withdrawn, and no evidence has been adduced which would go to show that ATLAS had made a false claim to proprietorship and that in the circumstances it must be taken that ATLAS MAJESTIC INDUSTRIES LIMITED made a valid claim to proprietorship on 13 December 1979 when they filed their opposition. That claim he submitted was still subsisting when the SUNRISE HOUSE application was filed, and therefore the SUNRISE HOUSE application made an invalid claim to proprietorship and if it had been examined at that date would have been struck off. Subsequently, as stated earlier, ATLAS MAJESTIC INDUSTRIES LIMITED abandoned its application. Mr Hardie submitted that SUNRISE HOUSE LIMITED should have at that stage re-applied to register its trade mark on the grounds that a prior claim to proprietorship had been abandoned. He claimed that they would have needed to establish that the abandonment of the trade mark application also meant abandonment of any common law rights to the use of the name ROADSTAR by ATLAS MAJESTIC INDUSTRIES LIMITED and they then could have validly refiled. He submitted that the only problem that they would have then faced was that Mr Wood's company had commenced to use the trade mark prior to 9 December 1983 and they would have been up against a problem there. Mr Hardie stated that he realised that the submission he was putting forward is probably a novel one, as he had not come across it before, and that he knew that it is contrary to what in fact happens on a day-to-day basis, but he submitted that it is correct in law.

As ATLAS MAJESTIC INDUSTRIES LIMITED have withdrawn their application and have raised no objection in respect of the present application the point has not had to be argued as to any claim to validity of the ATLAS application. I do not consider that the matter of the ATLAS MAJESTIC INDUSTRIES LIMITED application need be considered any further in these proceedings.

"SUNRISE HOUSE LIMITED subsequently went into liquidation on 9 June 1982 under the name of ROADSTAR CORPORATE (sic) and it is improper to register the trade mark to a company which is non-existent."

Mr Dengate Thrush pointed out that the applicant's evidence clearly reveals just what happened and how the company went into liquidation. As to the assignment of pending trade mark applications he drew attention to the long-standing practice in the New Zealand Patent Office to accept applications for recording change of proprietor of pending trade mark applications with registration of the trade mark made in the name of the original applicant and then the assignment recorded on the register immediately following the registration of the trade mark.

Ground 6 will be touched upon again later in dealing with the matter of the assignment.

At this stage I would like to point out that it certainly is a long established practice in this Office to receive applications for registration of subsequent proprietor in respect of pending trade mark applications. The trade mark application is first registered in the name of the original applicant as registration has effect as from the application date. Once registered the change of proprietorship is then recorded on the register.

A submission made by Mr Hardie was that application No. 131539 must be deemed abandoned under regulation 38.

38. Within two months from the date of the receipt of the duplicate the applicant shall send to the Commissioner a counterstatement in duplicate in form 9 setting out the ground on which he relies as supporting his application. The applicant shall also set out what facts, if any, alleged in the notice of opposition he admits. If a counterstatement is not sent within the period allowed, the applicant shall, unless the Commissioner otherwise directs, be deemed to have abandoned his application."

Mr Dengate Thrush objected on the basis that this was not included as a ground of objection and that this was the first time the matter had been raised. Mr Hardie claimed that the trade mark application was filed in the name of SUNRISE HOUSE LIMITED but the counterstatement named a totally different party. Mr Hardie claimed that no relationship between the two parties had been brought forward. Mr Hardie submitted that the amended counterstatement on Paragraph 3 sub-paragraph (e) came closest to dealing with the matter.

"(e) Ground 5 - the applicant denies each and every allegation made in ground 5, 5(a), 5(b). The applicant was in fact entitled to claim proprietorship of the mark ROADSTAR in New Zealand by virtue of the assignment to it from the former proprietor, SUNRISE HOUSE LIMITED. Atlas Majestic Industries Limited had no prior right to claim proprietorship in the trade mark ROADSTAR as contended by the opponent. Atlas Majestic Industries Limited realised this and later abandoned their application after been notified of the applicant's true claim to proprietorship. Such an allegation by the opponent would merely serve to invalidate its claim to proprietorship of the mark ROADSTAR in New Zealand, because it filed its application subsequent to those filed by Atlas Majestic Industries Limited, and the applicant. Further the opponent can never be said to have gained common-law rights in the mark ROADSTAR, because it was acting without authority from the true proprietor, being the applicant".

Mr Hardie submitted that there was no evidence proving the validity of the assignment. He claimed that there was no proof that Mr Tanaka was entitled to sign anything on behalf of ROADSTAR CORPORATION.

Mr Hardie pointed to regulation 50 dealing with the situation arising out of the dissolution of a corporate body.

50. In case of the death of any applicant or the dissolution of a corporation applying for the registration of a trade mark after the date of the application and before the trade mark has been entered in the register, the Commissioner, after the expiration of the prescribed period of advertisement and the determination of any opposition to the application, may, on being satisfied of the applicant's death or the dissolution of the

corporation , enter in the register, in place of the original applicant, the name of the person owning the trade mark, on the ownership being proved to the satisfaction of the Commissioner".

Mr Dengate Thrush enquired as to the grounds in the Notice of Opposition that Mr Hardie was relying upon. After a slight hesitation, Mr Hardie advised that it was Ground 6 of the Notice of Opposition.

Mr Dengate Thrush submitted that the regulations referred to are ones of procedure. He submitted that Seah Siak How claims to be entitled as successor in title to the applicant and has provided details of the transactions by which this came about.

Mr Dengate Thrush took the view that on dissolution of a corporate body the rights in a pending trade mark application can be transferred and in the applicant's eyes appropriate actions have been taken to accomplish this.

"7. The purported assignment of the 26 March 1982 from ROADSTAR CORPORATION whereby ROADSTAR CORPORATION proported (sic) to assign trade mark 131539 to SEAH SIAK HOW (Anthony) is not a valid assignment because:

As a consequence of attempted deception of the Patent Office in New Zealand it would be unjust to register the assignment to SEAH SIAK HOW and therefore the application itself should not be registered".

At this stage Mr Dengate Thrush referred to a partial chronology he had prepared of events that had taken place that had a bearing on the present proceedings.

I consider it is helpful to set out this chronology as a guide to the sequence of events that the applicant relies upon in support of its application.

1974	Sunrise House Limited commenced distribution of products in New Zealand using La Wood as agent.
3 March 1980	Sunrise House Limited applies to register trade mark ROADSTAR in New Zealand under application No.131539.
13 July 1980	Sunrise House Limited changes its name to Roadstar Corporation.
18 September 1981	An agreement is made between Roadstar Corporation and Seah Siak How to assign trade marks and trade mark applications including New Zealand application 131539.
26 March 1982	A deed of assignment between Roadstar Corporation and Seah Siak How is executed.
31 March 1982	Roadstar Corporation declares itself insolvent.
13 May 1982	An application is filed in New Zealand for recordal of Seah Siak How as subsequent proprietor of New Zealand application 131539, accompanied by the deed of assignment to him dated 26 March 1982.
9 June 1982	Roadstar Corporation is declared bankrupt and Tanaka is appointed by the Court as trustee in bankruptcy.
16 June 1982	La Wood applies in New Zealand to register the trade mark ROADSTAR under application No.142888.
7 December 1982	Agreement is reached between the trustee in bankruptcy and Seah Siak How in relation to previous assignment of foreign (including New Zealand) trade mark applications under which Seah Siak How agrees to pay 10m Yen and undo steps to record assignment based on agreement of 26 March 1982 and trustee undertakes to assist with recording assignments, the parties agreeing that the contract of 26 March 1982 is nullified.
14 July 1983	An assignment deed is executed between the trustee in bankruptcy and Seah Siak How for assignment of trade mark applications on the basis of 7 December 1982 agreement.
29 August 1983	An almost identical version of the July agreement is executed before the New Zealand Consul in Tokyo in support of an application for recordal of the assignment in relation to New Zealand only.
21 December 1984	Notice of opposition filed by La Wood.
30 January 1985	Opposition deemed to be filed.
26 May 1986	By a supplementary counterstatement the application of 13 May 1982 for recordal of Seah Siak How as subsequent proprietor filed 13 May 1982 withdrawn.
24 March 1988	An application to record Seah Siak How as subsequent proprietor filed at Trade Marks Office based on deed of assignment dated 29 August 1983.

There were aspects of this chronology which Mr Hardie disagreed with and these will be considered later.

The only evidence filed in these proceedings is a statutory declaration of 28 January 1987 of SEAH SIAK HOW, managing director of ROADSTAR SINGAPORE PTE LIMITED on behalf of the applicant and a statutory declaration by ROBIN HUGH WOOD, managing director of WOOD ELECTRONICS MANUFACTURING LIMITED (formerly LA WOOD TELEVISION LIMITED) on behalf of the opponent.

Mr Hardie took the view that a large part of the evidence relied upon by the applicant was inadmissible. He claimed that much of it was irrelevant, hearsay or merely opinion evidence.

The parts of Seah Siak How's evidence that Mr Hardie objected to mainly relate to what has been claimed regarding the transfer of rights in the ROADSTAR trade mark from the applicant to Seah Siak How; the appointment of MR SANJI TANAKA as the Trustee-in-Bankruptcy of the applicant company; the right of Mr Tanaka to assign rights in the ROADSTAR trade mark; matters touching on the relationship between the applicant and the opponent; views expressed as to why ATLAS MAJESTIC INDUSTRIES LIMITED abandoned its application; reference to an advertisement in respect of the ROADSTAR trade mark by a company other than the opponent, where registration of the trade mark is claimed; reference to a decision of the High Court in Israel regarding the ROADSTAR trade mark; matters relating to the trading activities of FUJI ELECTRONICS MANUFACTURING COMPANY LIMITED; and disparaging criticisms of the conduct of the opponent.

Mr Hardie accepts that part of his own client's declaration was hearsay. Mr Dengate Thrush, however, advised that he had no objection to the opponent's evidence on this ground. Both parties referred to text book authority in support of the views they took in this matter.

Mr Hardie also took the view that some of the matters relating to the assignment and the appointment of the Trustee-in-Bankruptcy had not been established by satisfactory evidence. As a consequence he took the view that SUNRISE HOUSE LIMITED (by change of name ROADSTAR CORPORATION) was the applicant and that there was no justification for a counterstatement being in the name of ROADSTAR SINGAPORE PTE LIMITED and the opposition being contested by that applicant rather than the original applicant.

In support of his views on these matters, Mr Hardie referred to the principles of evidence as expounded by R.A. McGechan in "Garrow and McGechan's Principles of the Law of Evidence", Seventh Edition. He quoted from page 63 -

The positive rules of evidence, permitting evidence to be given, are few, and state general principles rather than exact propositions. Of these, the primary rule is the requirement for relevancy. The bulk of the law of evidence is comprised by negative rules, stating what is not evidence, frequently with restorative limited exceptions. These negative rules can be categorised under five headings, the five so-called "Exclusionary Rules of Evidence".

Out of the five exclusionary rules of evidence, Mr Hardie referred to those relating to hearsay and opinion and these read -

	Exceptions
1.	Admissions and confessions.
2.	Certain hearsay evidence admissible by the Evidence Amendment Act (No 2) 1980.
3.	Statements made by persons since deceased in certain cases.
4.	Statements in public documents.
5.	Statements in judgments.
6.	Evidence of a witness in a previous action (in certain circumstances).
C.	Evidence of opinion is not admissible
	Exceptions
1.	Evidence of reputation.
2.	Evidence of experts.
3.	Evidence of non-experts as to age, identity, libels, handwriting, mental and physical conditions, character".

"Hearsay" is the oral or written statement of a person who is not produced in Court, put forward to the Court either orally by a witness, or through the content of a document or object produced to the Court by a witness, as attempted proof of the truth of the content of that statement. What a witness says as to that which he has himself observed is original evidence, not hearsay. In contrast, what a witness may wish to say as to what he has been told by another, or has read, as attempted evidence of the truth of its content, is hearsay. The clue is in the name: "Hear-say" - "I hear it said". In the latter case, the witness offers to the Court not the result of his own perception of the fact stated, but the result of another person's observation of that fact."

What a third person thinks or believes about any matter before the Court is generally irrelevant and therefore inadmissible. If such person is called as a witness, he must as a rule only state facts; his personal opinion is not evidence. The reason for this rule is that it is for either the Judge or the jury to draw all inferences from facts. The Court must, if possible, form its own judgment on the facts brought before it."

"4. Mental or Physical Conditions - Witnesses may always testify to their own mental or physical condition at a given time; but not to the mental condition or intentions of others."

As to the last mentioned quote, Mr Hardie claimed that the evidence of Seah Siak How is full of statements about the intentions or supposed intentions of the opponent.

Mr Dengate Thrush submitted that just because matter is hearsay or opinion does not mean that I cannot consider it and that the admissibility of the evidence is always, unless there is a statutory exclusion, at the discretion of the hearing officer, particularly of a tribunal. In support of his views, Mr Dengate Thrush referred to Cross on Evidence, Third New Zealand Edition at page 37 -

"(ii) Administrative tribunals - One of several reasons underlying the proliferation of administrative tribunals is a desire for an informal procedure. Tribunals are accordingly often given power to determine their own procedure. If the relevant statute says no more, the courts will probably infer that the ordinary rules of evidence are inapplicable to that tribunal. This does not mean that the rules of natural justice or elementary requirements of fairness may be disregarded (i). It is, for example, fundamental that anyone exercising a judicial or a quasi-judicial function must base his decision on evidence. This requirement:

"... means no more than that it must be based on material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event... It means that he must not spin a coin or consult an astrologer; but he may take into account any material which, as a matter of reason, has some probative value in the sense mentioned" (k). Parson L J, in the same case, said: "No doubt the procedure has to be reasonable and when there is a hearing, it has to be a well-conducted hearing; but the deputy commissioner would not render his procedure unreasonable nor his hearing ill-conducted, merely by admitting something which, according to the strict rules of evidence for Court proceedings, would be inadmissible... The deputy commissioner's discretion to determine the procedure... must be wide enough to enable him, in a proper case, to admit good evidence notwithstanding that there might be... some technical objection to its admissibility" (l).

Hearsay is admissible before a tribunal (m), but to fail to allow a party's opponent the opportunity of commenting on, or contradicting, information placed before the tribunal is plainly wrong (n)."

(k) R v Deputy Industrial Injuries Commissioner, Ex parte Moore [1965] 1 All ER 81, 94;

(m) T A Miller Ltd v Minister of Housing and Local Government [1968] 2 All ER 633; Kavanagh v Chief Constable of Devon and Cornwall [1974] 2 All ER 697;

Questions concerning the admissibility of evidence must be distinguished from those relating to its weight. The former is a matter of law for the judge (h) (although it may sometimes depend upon a preliminary finding of fact by him). The weight of evidence, on the other hand, is a question of fact, although, in cases tried with a jury, the summing-up frequently contains observations on the cogency of certain matters, and the judge can always withdraw an issue from the jury because the proponent has not adduced sufficient evidence in support of his claim. The distinction between admissibility and weight is not clear-cut. The weight of evidence may affect its admissibility, as this is to some extent dependent on the degree of relevance of the matter under consideration (i). The tendency of the modern law is in favour of a broad basis of admissibility (k)."

"(h) Bartlett v Smith (1843) 11 M & W 483; Chan Wei Keung v The Queen [1967] 2 AC 160,168; [1967] 1 All ER 948,950.

(k) "People were formerly frightened out of their wits about admitting evidence lest juries should go wrong. In modern times we admit the evidence and discuss its weight": per Cockburn C J in R v Birmingham Overseers (1861) 1 B & S 763,767."

Also quoting from the same Text, Mr Dengate Thrush referred to the comments on pages 16 and 18.

"The classic statement of the best evidence rule is that of Lord Hardwicke when he said that "the Judges and sages of the law have laid it down that there is but one general rule of evidence, the best that the nature of the case will allow"(v).”

"The main general rule governing the entire subject is that all evidence which is sufficiently relevant to an issue before the Court is admissible and all that is irrelevant, or insufficiently relevant, should be excluded (m)."

" (m) See per Goddard L J in Hollington v Hewthorn & Co Ltd [1943] KB 587,594; [1943] 2 All ER 35,39. "The fundamental rule governing the admissibility of evidence is that it be relevant": per Barwick C J in Wilson v R [1970] HCA 17; (1970) 123 CLR 334,337. Cf R v Fox [1973] 1 NZLR 458,463, per Turner P."

Mr Dengate Thrush submitted that all the exhibits to Seah Siak How's declaration are relevant as they clearly set out the chain of events relating to the title to the trade marks and they meet the objection raised in the opponent's Notice of Opposition.

He pointed out that while he might regret the manner in which they have been put forward as evidence and perhaps they should have been put in a different way, nevertheless they have been put in and they should be left in as part of the Opponent's evidence.

The situation as revealed to me in these proceedings is complicated and unusual. My view of the matter is that I should carefully consider the information and evidence presented to me, reject any evidence that very clearly is inadmissible, consider all other evidence attaching such weight to it that is appropriate in the circumstances and then having given careful consideration to all matters that have been drawn to my attention, to decide whether or not the Opposition succeeds.

Mr Dengate Thrush reviewed the documents under which Seah Siak How claims to be entitled to the rights that the applicant had in the ROADSTAR trade mark in New Zealand and in trade mark application No.131539.

On 13 May 1982 an application was received by the Patent Office to change the name of the applicant to ROADSTAR CORPORATION. That application was supported by documents in Japanese along with a sworn translation which indicates that a change of name was decided upon on July 1, 1980 and officially recorded in Japan on July 14, 1980.

A Power of Attorney is signed on behalf of the ROADSTAR CORPORATION by Tsukasa Adachi, President, on 26 March 1982. There is a slight discrepancy in the date in the chronology supplied but this is of little significance. It would appear that a change of address should also have been applied for along with the application to record the change of name.

On 13 May 1982 application was also made to record SEAH SIAK HOW as subsequent proprietor of trade mark No.131539 by virtue of a deed of assignment dated 26 March 1982.

"For good and valuable consideration, the receipt of which is hereby acknowledged the undersigned assignor, ROADSTAR CORPORATION (formerly called as SUNRISE HOUSE LTD.), a Japanese corporation, with a principal office at 1-8, Minami-Aoyama 7-chome, Minato-ku, Tokyo, Japan, does hereby assign unto SEAH SIAK HOW (ANTHONY), a Singapore nationality, residing at 38-C, Pine Lodge Nassim Mansion, Nassim Hill Road, Singapore 1025, all right, title and interest in and to the trademark ROADSTAR, as duly applied in New Zealand Patent Office on or about March 3, 1980 as Application No.131539 together with the goodwill of the business in connection with the use of and symbolised by the said mark, and the registration thereof."

Mr Dengate Thrush referred to the declaration of Seah Siak How in support of the claim made that the rights in trade mark application No.131539 had passed to Seah Siak How.

"2. MY company is involved in the manufacture and distribution of car radio and related electronic appliances and accessories, and was established in Singapore in 1976 as ROADSTAR SINGAPORE, and later converted into a limited liability company called ROADSTAR SINGAPORE PTE LIMITED in 1980.

3. MY company has used/sought to register has already registered the trade mark in relation to the goods mentioned above in the following countries: Australia, Singapore, Thailand, Hong Kong, Malaysia, Taiwan, Korea, Iran, Syria, Lebanon, Israel, Indonesia, India, New Zealand, Pakistan, Saudi Arabia, Dubai, Iraq, Macao, Philippines, and Kuwait.

4. I obtained the rights in the trade mark ROADSTAR from a Japanese company, Sunrise House Ltd. By virtue of a change of name entered on the Minato Registry Office of Tokyo, the name of the company became ROADSTAR CORPORATION, annexed hereto as Exhibit SSH 1 and forming part of this declaration is a copy of the evidence relating to the change of name.

5. AFTER the change of name, the President of ROADSTAR CORPORATION, on the 18th September 1981, entered into an agreement with me to assign a number of trade mark registrations and applications for the trade mark ROADSTAR in a number of countries. Annexed hereto and forming part of this declaration is Exhibit SSH 2 relating to an agreement executed on the 7th December 1982 referring to the earlier agreement between ROADSTAR CORPORATION and myself.

6. SUBSEQUENTLY, on March 26th 1982 a formal deed of assignment between ROADSTAR CORPORATION and myself was entered into. Annexed hereto and forming part of this declaration as Exhibit SSH 3 is a copy of that deed of assignment."

On 24 March 1988 a second application for registration of subsequent proprietor was filed in this office. The application sought to register SEAH SIAK HOW as subsequent proprietor of trade mark No.131539. It was claimed that the trade mark at the time of the assignment was used in a business in the goods in question and the assignment took place in connection with the goodwill of a business in the goods.

A copy of the deed of assignment dated August 29, 1983 notarised by the New Zealand Consul at Tokyo is supplied together with an affirmation by SAIJI TANAKA, Trustee in Bankruptcy of the ROADSTAR CORPORATION also affirmed before the New Zealand Consul.

A copy of the agreement dated December 7, 1982 and referring to an agreement of September 18, 1981 is also included.

As the claim of SEAH SIAK HOW to trade mark rights in respect of this trade mark application have been so strongly disputed, I feel that it may assist if copies of these documents are appended to this decision, and I have done so.

Mr Dengate Thrush claims that the parties agreed that the contract of 26 March 1982 be nullified. This contract agreement was the basis for the earlier request for recordal of subsequent proprietor. The insolvency of the applicant company has complicated the situation.

The significant dates in this connection are 31 March 1982 when ROADSTAR CORPORATION declares itself insolvent and 9 June 1982 when ROADSTAR CORPORATION is declared bankrupt by the Court in Japan and a Trustee in Bankruptcy is appointed.

Mr Hardie submitted that there is no evidence that Mr Saiji Tanaka was appointed as Trustee in Bankruptcy. While this is true there certainly is no evidence to show that he was not so appointed and from my understanding of Japanese law as has been drawn to my attention, a Trustee in Bankruptcy is appointed in Japan to administer the affairs of a bankrupt company. From all that has been drawn to my attention in these proceedings, I feel that it is reasonable for me to conclude that Mr Saiji Tanaka was appointed as Trustee in Bankruptcy of the ROADSTAR CORPORATION.

The number of agreements entered into purporting to assign the rights in the trade mark ROADSTAR in New Zealand is rather puzzling. I am sure that what was done in respect of the pending New Zealand trade mark application prior to the bankruptcy of the ROADSTAR CORPORATION would very likely come under review following the bankruptcy. However, the actions taken subsequent to the bankruptcy all tend to point to the continuing desire of the applicant through the Trustee in Bankruptcy to transfer the rights in the pending trade mark application to SEAH SIAK HOW.

Conflicting claims have been made as to just what effect the bankruptcy of the applicant company had on agreements previously entered into by the applicant to transfer rights in the trade mark ROADSTAR to SEAH SIAK HOW. The declarant for the Opponent, Mr Wood, in paragraph 4 of his declaration states -

4. I have been informed and believe that under Japanese bankruptcy law all assets of Roadstar Corporation came into the Trustee in Bankruptcy's possession from six months prior to the liquidation date of June 9, 1982. This means that the assignment dated 13 May 1982 fell into that category and was a nullity as a fraud against creditors according to Japanese law and should never have been presented for registration in New Zealand. It was only when the opponent raised this question that Roadstar Singapore Pte Limited tendered a different chain of title. Otherwise it would have been content to have deceived the Patent Office in New Zealand by allowing it to act upon an agreement which it knew to be a nullity. Its principal officer is the same Seah Siak How. On December 7th, 1982 Seah Siak How agreed with the Trustee in Bankruptcy that an agreement purportedly made on September 18th, 1981 but in fact made on March 25th, 1982 was null and void. In many countries Seah Siak How applied to register the assignment of the trade mark ROADSTAR from Roadstar Corporation by virtue of agreements dated March 26th, 1982. However those agreements were all null and void because of the agreement dated December 7th, 1982 between the Trustee in Bankruptcy and Seah Siak How, and under general Japanese law."

In reply to these claims, Seah Siak How, in his declaration in paragraphs 7-18, declares as follows -

"7. ON 31 March 1982 Roadstar Corporation declared itself insolvent. At no time prior to this date were any of Roadstar Corporation's assets transferred into the later-to-be appointed Trustee in Bankruptcy's hands as contended in paragraph 4 of Mr Wood's declaration.

8. THE application to record the deed of assignment in New Zealand took place on instructions from Roadstar Corporation's patent attorneys in Japan, Ishiyama Patent Office, by letter dated 26 April 1982.

9. THE application for assignment took place on 13th May 1982 and was entered informally on the file for the trade mark application by the Commissioner of Trade Marks.

11. IN reply to these allegations the opponent is quite incorrect in stating that the assets were in the possession of the Trustee in Bankruptcy six months prior to 9th June 1982. Roadstar Corporation only declared itself insolvent on 31st March 1982 and had already agreed to assign, and had in fact assigned, the ROADSTAR trade mark to myself. I refer to Mr Saiji Tanaka's affirmation dated 9 November 1983, and annexed hereto as Exhibit SSH 4, referring to the 7th December 1982 agreement and to a subsequent deed entered into between himself on behalf of Roadstar Corporation, and myself on 14th July 1983. He does not make any mention of the assets having passed into his possession in December 1981 as contended by the opponent. Mr Tanaka was appointed Trustee-in-Bankruptcy of Roadstar Corporation on 9th June 1982 by the Tokyo District Court of Japan and his affirmation has been affirmed and authenticated by the New Zealand Consul in Tokyo.

12. THE Japanese Bankruptcy Act, Law No.71, 1922, ("the Act") provides for certain situations under which the Trustee-in-Bankruptcy ("trustee") may exercise the right of denial, meaning his right to void or set aside certain acts or deeds of the bankrupt if they were preferential and were affected within a certain period of time prior to the adjudication of bankruptcy. To allow the trustee to exercise this right, the bankrupt's act or deed must meet certain general requirements and fall into certain special categories all set forth in the Act. Referring to such special categories, there are three, one of which does involve a period of six months. Under this category comes any acts or deeds (i) which are gratuitous or which may be deemed gratuitous under the pertinent circumstances and (ii) which are effected by the bankrupt subsequent to the suspension of payments or the petition for bankruptcy or within the six months prior thereto.

Therefore, the statement to the effect that all assets held by the bankrupt Roadstar Corporation six months prior to June 9, 1982 and disposed by it during such six month period should constitute the bankruptcy estate, is obviously incorrect.

Should the agreement or deed in question meet all statutory requirements to render it voidable under the Act as preferential, it is nevertheless doubtful that such Japanese bankruptcy principles should apply to the trade mark in New Zealand because of its lack of extra-territorial jurisdictions, in that the Act in Article 3 provides that the adjudication of bankruptcy in Japan is effective as to only those assets of the bankrupt located in Japan.

13. FURTHER, the reason for entering into the deed of assignment dated 14th July 1983 (see annexed copy marked Exhibit SSH 5) was to comply with the earlier agreement of 7th December 1982, which had made null and void the earlier agreement of 18th September 1981 and 26th March 1982. An earlier deed of assignment dated 29th August 1983 which is annexed to Mr Tanaka's affidavit was not executed by myself as I had already executed an earlier deed on 14th July 1983.

14. THUS Mr Tanaka in his capacity as Trustee in Bankruptcy, was perfectly entitled to enter into an agreement to assign the ROADSTAR trade mark to myself.

15. THERE was never any attempt to defraud the creditors of Roadstar Corporation on my part, nor was there ever any attempt to deceive the New Zealand Patent Office for the reason that the deed of assignment dated 26 March 1982 was not in fact null and void, and was executed prior to Roadstar Corporation declaring itself insolvent.

16. WHILE the agreement dated 7th December 1982 is said to have made the earlier agreement and deed of assignment null and void, this was some six months after the appointment of the Trustee in Bankruptcy, nine months after the formal deed of assignment was executed, and fifteen months after the original agreement between myself and Roadstar Corporation.

17. THERE can therefore be no credibility in the allegation by the opponent that I tendered a different chain of title simply because the opponent raised the matter. The reason for withdrawing the earlier assignment dated 26 March 1982 was because it had in fact been reaffirmed by the subsequent agreement in respect of trade mark rights. At the time it was made however, it was not null and void, for the reasons mentioned above, but had legal effect, as would any other binding agreement between two parties.

18. FURTHER, the subsequent agreement dated 7th December 1982 was between myself and Mr Tanaka, the Trustee in Bankruptcy. Thus the only rightful party who could challenge the validity of the earlier agreement would be Mr Tanaka himself, and not the opponent."

Mr Hardie submitted that the withdrawal of the assignment of 26 March 1982 entirely justified this ground of opposition.

Mr Hardie characterised Seah Siak How's evidence as evasive and he referred to paragraphs 13,15,16 and 17 of Seah Siak How's declaration.

Mr Hardie referred to the claim by Seah Siak How in paragraph of his declaration that the agreement of 26 March 1982, was not null and void when made and he then referred to paragraph of the same declaration where it states " .... the agreement dated 7 December 1982 is said to have made the earlier agreement and deed of assignment null and void and from paragraph 17 where it states -

"The reason for withdrawing the earlier assignment dated 26th March 1982 was because it has in fact been reaffirmed by the subsequent agreement in respect of trade mark rights".

Seah Siak How was of course replying to what Mr Wood had alleged in his declaration.

Mr Hardie pointed out that an agreement does not cease to exist because it has been reaffirmed and it remains part of the record.

Mr Hardie referred to the four reasons advanced in paragraph 7 of the notice of opposition alleging that the assignment of 26 March 1982 is not a valid assignment. Mr Hardie drew attention to paragraph 1 of the supplementary counterstatement and which he presumed withdrew the assignment. This he claimed was implicit recognition of the invalidity of the assignment.

"1. That the application for subsequent proprietor filed at the New Zealand Trade Marks Office on the 13th May 1982 should be withdrawn;"

Mr Hardie submitted that if the assignment was valid it cannot simply be withdrawn, one cannot pretend that it does not exist. If it was a valid assignment then according to Mr Hardie it should have been left at the Patent Office and any confirmatory assignment should have been recorded. He pointed out that the so-called confirmatory assignment says nothing about it being a confirmatory assignment. Mr Hardie claimed that what he referred to as the invalid assignment was maintained in periodic correspondence before the Patent Office after the applicant's attorneys knew of its probable invalidity. He referred to the claim made that the withdrawn assignment was made in anticipation of the later assignment and Mr Hardie queried as to how Mr Adachi, when he made the earlier assignment, knew what a Trustee in Bankruptcy might do.

Mr Hardie also queried what might have been the "good and valuable consideration" claimed in respect of the 26th March 1982 assignment in respect of which a stamp duty of $10 was paid in contrast with the assignment of 14 July 1983 when
Mr How pays 23 million yen in respect of about 23 applications, an amount he estimated came to over $100,000. He claimed that everything points to the invalidity of the earlier assignment and the justification for the allegations in the notice of opposition.

While it is rather puzzling to me just why things were done the way they were in seeking to transfer the rights in the ROADSTAR trade mark, I nevertheless bear in mind that the actions were taken in Japan and no doubt the bankruptcy of the applicant company created a lot of problems as regards honouring obligations previously entered into by the applicant.

I consider that in dealing with trade mark oppositions I must take an overall view of the whole matter and reach a decision giving the best consideration I can to the evidence and information placed before me. Despite the many agreements entered into relating to the transfer, I am satisfied that the applicant before bankruptcy and the applicant through the Trustee in Bankruptcy subsequent to the bankruptcy sought the one objective, namely of transferring such rights as the applicant had in the New Zealand mark application at the time of filing the ROADSTAR trade mark application to Seah Siak How.

In support of his company's claim to proprietorship of the trade mark ROADSTAR, Mr Wood in paragraph 2 of his declaration, states -

"2. With reference to ground 2 of the notice of opposition I note that the only allegation denied is my company's claim to proprietorship of the trade mark ROADSTAR. My company has assembled and marketed goods under the ROADSTAR brand in New Zealand since November 1980. Some of the components for these goods were supplied to my company by Sunrise House Limited, whose name was later changed to Roadstar Corporation. However, that company exercised no control over the manufacturing process or the components used or quality of workmanship which were totally under the control of my company. My company was also solely responsible for advertising the trade mark and used its own free discretion in terms of advertising and sales policy. I therefore believe that from the moment of first use of the trade mark ROADSTAR by my company in November 1980, my company had a valid claim to proprietorship. At no time has there been any arrangement with Roadstar Corporation that my company should be registered as a user of the trade mark. The goods on which my company has used the trade mark in New Zealand are as follows: radios, radio cassette players, loud speakers, all being suitable for use in vehicles."

As to the claim by Mr Wood to proprietorship of the ROADSTAR trade mark in New Zealand, Seah Siak How states in paragraphs 20-32 of his declaration.

"20. BY virtue of an agreement entered into between the then Sunrise House Limited and the opponent as early as 197A, the opponent was to act as an agent distributing ROADSTAR goods in New Zealand.

21. DUE to the passage of time, and more particularly to the circumstances relating to the change in ownership of the ROADSTAR trade mark, no trace of the agreement between Sunrise House Limited and the opponent can be found. I surmise that the documents were either lost or destroyed in the transfer. The opponent obviously has a copy in its possession and has conveniently chosen not to refer to it.

22. FROM my understanding this distribution agreement contained inter alia the following conditions:

In particular I refer to paragraphs 5 and 6 of Mr Adachi's affirmation referring to the contents of the agency agreement with the opponent, and the fact that no authorisation to use the trade mark ROADSTAR was ever given to the opponent by him in his capacity as President of Roadstar Corporation.

23. THE opponent has seen fit to ignore the terms of the distribution/agency agreement.

24. EVEN in the event that a copy of the 1974 distribution agreement cannot be found, it is not difficult to imply from the facts and from the conduct of the opponent, that a distribution agreement did in fact exist. Why else would the opponent not have chosen to apply to register the trade mark ROADSTAR itself prior to the 25th June 1982 when it claims to have "used" the trade mark in New Zealand since 1980?

25. IT seems more than a mere coincidence that the opponent applied for registration of the trade mark ROADSTAR sixteen days after Roadstar Corporation was officially declared bankrupt, notwithstanding the fact that there were two applications to register ROADSTAR as a trade mark which had been filed prior to that of the opponent. The opponent had full knowledge of the facts and thus took advantage of the situation by applying to register the mark in its own name. This was clearly in contravention of the earlier distribution/agency agreement.

26. AS assignee of the goodwill in the trade mark ROADSTAR, I have an application dated 3rd March 1980, and this is obviously prior to the claim by the opponent that it first used the trade mark ROADSTAR in November 1980 (cf paragraph 2 of Mr Wood's declaration). Thus, as successor in title to the trade mark ROADSTAR I have priority in New Zealand to the trade mark.

27. THE other application to register ROADSTAR was filed on 13th December 1979 by ATLAS MAJESTIC LIMITED. No use of this trade mark had ever been alleged and when written to by the Commissioner of Trade Marks in September 1983, they abandoned their trade mark application. This therefore left me as having the earlier priority date.

28. I attach a copy of an advertisement marked Exhibit SSH 7 which appeared in the Sunday News dated 10th June 1984. It was obviously inserted with the express authority of the opponent, and makes a clear representation that the ROADSTAR trade mark is a registered trade mark. This is in clear contravention to the provisions of the Trade Marks Act 1953 cf Section 71(l)(a), as the trade mark is not registered in New Zealand by the opponent, or anyone else for that matter. I note that the offence is in fact liable on summary conviction to a fine under the penal provisions of the Act.

29. FURTHER, the advertisement shows clearly that the opponent considers itself to be a distributor, and this makes it quite obvious that its claim to proprietorship of the ROADSTAR trade mark is one based on fraud. Why would the opponent adopt the legend "Distributed by La Wood Wholesalers Ltd", if it claimed to have proprietorship in the trade mark?

30. I refer now to paragraph 3 of Mr Wood's declaration, wherein he states that I am not the registered proprietor of the trade mark ROADSTAR in many other countries. This is correct, but I have never intended to "conveniently leave these countries out of the list" as contended by the opponent. Why should I refer to countries in which I have no interest? This is clearly irrelevant and must be seen as the opponent trying to set up yet another smoke screen to confuse the issue. I am the proprietor of the trade mark ROADSTAR either by virtue of trade mark registrations in those countries, or in common law, of the countries listed in the deed of assignment dated 14th July 1983 (cf Exhibit SSH 5). In particular New Zealand is one of those countries, and it is New Zealand with which I am presently concerned, not Canada, United States, United Kingdom, Europe, Africa, Japan.

Further, in a similar dispute to the present one, the High Court in Israel has officially declared me to be the rightful proprietor of the ROADSTAR trade mark in Israel.

31. I am aware of Fuji Electronics Manf. Co. Limited owning the ROADSTAR trade mark in Japan. This is not in issue because it was never intended that I have exclusive rights to the name ROADSTAR in Japan. I point out that Fuji Electronics Manf. Co. Limited does not hold any proprietary rights in the ROADSTAR trade mark for the countries as listed in paragraph 3 of my declaration. I am also aware that the opponent may be obtaining componentry and finished products from this company which it may be marketing in New Zealand under the ROADSTAR trade mark.

32. FROM my understanding of the transfer of interests in the trade mark ROADSTAR by the Trustee in Bankruptcy, the Japanese company, Fuji Electronics was not to sell ROADSTAR marked products or componentry in the areas covered by my ROADSTAR trade mark. This has however occurred, but I am powerless at present to prevent these activities until such time as the New Zealand Patent Office recognises my rights in New Zealand in the ROADSTAR trade mark, and allows the trade mark to proceed to registration. The opponent is obviously aware of this, and for these reasons has seen fit to either intentionally delay the proceedings, or else confuse the issues."

In paragraph 3 of his declaration, Mr Wood alludes to the claim by the applicant in its counterstatement as to the position in other countries, and he states -

"3. In paragraph 2 of the counterstatement Roadstar Singapore Pte Limited claims to be the registered proprietor of the trade mark in several countries. To my own knowledge, it is also not the registered proprietor of the trade mark in many other countries including Canada, United States of America, United Kingdom, Europe, Africa, Japan and Israel, which it has conveniently left out of the list, but where some other party is registered as proprietor of the mark.

In Japan the trade mark ROADSTAR is owned by Fuji Electronics Manf. Co. Limited pursuant to an agreement with the Trustee in Bankruptcy. On July 14th, 1983 the Trustee-in-Bankruptcy agreed with Seah Siak How to assign 10 registered trade marks to him and so therefore Seah Siak How should have applied for registration or assignment of those trade marks in his name only after the above date. This was not done in the countries in which the applicant claims to have proprietorship. Accordingly all of those foreign registrations are not validly held in the name of the applicant."

As to the position in other countries, Seah Siak How in paragraph 33 of his declaration, states -

"33. IN paragraph 3 of Mr Wood's declaration he alleges that I should have applied for registration or assignment of the ten registered trade marks in the deed of 14th July 1983. There are in fact eleven registered trade marks, but the relevant point must be the New Zealand trade mark application which appears in Part II of the Schedule. An application was filed on 13th May 1982 to record myself as subsequent proprietor in relation to the New Zealand mark. It is thus irrelevant whether or not the foreign registrations are validly held in the foreign countries, because it is the proprietorship of the New Zealand trade mark which is in issue, and to which the opponent is making claims, not the others. This is yet another attempt by the opponent at confusing the issue."

Mr Dengate Thrush submitted that the opponent's evidence in support of any rights to the trade mark ROADSTAR was minimal to meaningless. He claimed that the applicant under its changed name Roadstar Corporation can establish use of its own name and this is supported by applications and registrations around the world in this name in respect of the trade mark ROADSTAR.

Mr Dengate Thrush submitted that judicial approval of the applicant's claim to proprietorship was supported by a decision of the Court in Israel. A certified copy of the Israel Court decision was produced.

Mr Hardie objected to this being put in. He submitted that if the Israeli decision was to be considered then the proper course would have been for Seah Siak How to include it as part of his declaration evidence.

Mr Dengate Thrush maintained that it was a foreign judgment that he was relying upon and not a foreign fact. He referred to the constant reference made to overseas decisions at hearings in respect of trade marks. The matter was first raised regarding the position in Israel by the opponent in paragraph 3 of Mr Wood's declaration when it was claimed that the applicant was not the registered proprietor of the trade mark in Israel.

In paragraph 30 Seah Siak How responded by mentioning proceedings before the Court in Israel concerning the ROADSTAR trade mark. Both parties saw the reference to the Israeli Court decision from different perspectives. Mr Hardie felt that if the matter was of sufficient significance to be mentioned in Seah Siak How's declaration, then when the decision was known, if any reliance was to be placed upon it, it should have been submitted by way of a supplementary declaration so that he could have had ample time before the hearing to consider it and if necessary reply to it. On the other hand Mr Dengate Thrush pointed out that the proceedings in the Israeli Court were drawn to the attention of the opponent in the declaration of Seah Siak How at a time when the decision had not been issued and if the opponent had wished, they could have in the time before the New Zealand hearing have pursued the matter further. I ruled at the hearing that I would allow the Israeli Court decision to be put in but indicated that probably little weight would be attached to it. The Israeli Court case concerned a dispute between rival parties seeking registration of the trade mark ROADSTAR.

Mr Seah Siak How was one applicant and an Israeli company the other applicant. Seah Siak How claimed to be the successor in title to the application originally filed in the name of Roadstar Corporation of Japan. In a hearing before the
Registrar of Trade Marks a decision was reached in favour of the Israeli company. On appeal the matter was referred back to the Registrar who then came up with a decision which the Court stated pleased neither party so the matter had to be finally decided by the Court.

A decision was then reached in favour of Seah Siak How. Because of the difference in the factual situation in that case and the present and bearing in mind the different laws applicable little reliance could be placed upon that decision. It is interesting to note however, that twice in that decision reliance is placed upon quotes from Kerly, 11th Edition in support of the decision reached.

The decision at least shows that Seah Siak How is involved in a dispute regarding ownership of the mark in another place besides New Zealand. The decision points to Sunrise House Limited (by change of name Roadstar Corporation) as the owner of the trade mark in Japan prior to bankruptcy of that company and that it held registrations of the trade mark and had various pending applications to register in various countries at the time it became bankrupt. It seems that ROADSTAR branded goods were made for Sunrise House Limited by another company, Fuji Electronics Manufacturing Co. Ltd.

In his declaration Seah Siak How claims that on the bankruptcy of the applicant the rights in the trade mark ROADSTAR and in pending trade mark applications in various areas of the world including New Zealand, Australia parts of Asia and Middle East were assigned to him.

However in Japan and the Americas the trade mark ROADSTAR went to the Fuji Company.

Reference is made in the Israeli Court decision to the date of June 9, 1982 as the date of insolvency of the Roadstar Corporation. Other dates mentioned are March 26, 1982 the date of a deed of assignment transferring rights in the Israeli trade mark application to Seah Siak How (Anthony), December 7, 1982 the date of an agreement between Seah Siak How (Anthony) and the Trustee in Bankruptcy and a later agreement dated July 14, 1983 between the same parties.

These dates tie in with dates referred to by Seah Siak How in his declaration in support of his claims that the rights in the pending New Zealand trade mark application had been assigned to him.

Having had regard to all the matters that have been raised concerning proprietorship of the trade mark ROADSTAR in New Zealand I am satisfied that Sunrise House Limited had a valid claim to proprietorship of the trade mark ROADSTAR in New Zealand at the time it filed its application and that by the time the opposition commenced in respect of the application Seah Siak How would have had reasonable grounds to believe that he had succeeded to proprietorship of the ROADSTAR trade mark in New Zealand and to the benefit of trade mark application No. 131539.

As to the use claimed by Mr Wood in respect of his company's use of the ROADSTAR trade mark, Mr Dengate Thrush referred to paragraph 1 of Mr Wood's declaration where a date from November 1980 is claimed. Mr Dengate Thrush referred to the lack of exhibits to Mr Wood's declaration and he pointed out that although this use is not proved, it nevertheless is used after the Sunrise House application of 3 March 1980.

On the other hand, Mr Dengate Thrush claimed that the unchallenged (except as to form) evidence of the applicant is that the trade mark ROADSTAR has been used by Sunrise House Limited or Roadstar Corporation since 1974.

Mr Hardie, however, submitted that it is not necessary for the opponent to file detailed evidence of its use of the ROADSTAR trade mark in the present proceedings. He submitted that if it is necessary to do so, evidence of use would be filed in support of his own client's ROADSTAR application No.142888.

Mr Dengate Thrush submitted that whatever the nature of the opponent's use of the ROADSTAR trade mark it would at best amount to assembling of ROADSTAR components with the application of the ROADSTAR name. This Mr Dengate Thrush assumed would simply be a continuation of a business in the mark dating back to 1974. However, he submitted that this does not constitute use of the trade mark under the Trade Marks Act. Mr Dengate Thrush referred to Kerly's Law of Trade Marks and Trade Names 11th Edition, paragraph 20-21 which reads in part as follows -

As pointed out above, there may be cases in which more than one person is connected with the goods in the course of trade and the question may arise whether the trade mark indicates a connection with trader A or trader B, or with both.

Where one of the two traders is known to the public as the manufacturer, and the other as only a merchant, the tribunal concerned to decide the question will probably not require very much evidence to show that it is on the

producer's reputation that the purchaser will place reliance, so that the real connection indicated is the connection with the manufacturer."

The 12th Edition of Kerly also sets forth the same proposition but extended to cover services as well as goods. Mr Dengate Thrush submitted that the real connection indicated is the connection with the manufacturer. He submitted that the contrary view needs only to be stated to be rejected and he illustrated his point by instancing the case of a chain of well known retail stores selling a wide variety of goods of different manufacturers without thereby becoming the owner of the trade marks of all the goods sold in the retail stores. This he emphasised is not the function of the trade mark. He further quoted from the same paragraph of Kerly -

"The mere fact that by contract with the manufacturer, an importer or dealer is given some exclusive right in regard to a particular territory will not normally give the latter any right to the trade mark."

This he submitted is different from the situation where somebody commences use as a manufacturer on their own or even as an importer on their own, before there is any reputation or goodwill in the jurisdiction and who manages to create a reputation of their own such as in the case of Pioneer Hi-Bred Corn Company v Hy Line Chicks Pty Ltd [1978] 2 NZLR 50.

He submitted that where someone is buying from overseas, assembling some of the components here of a well known foreign product this will give no rights to the local merchant in respect of the trade mark.

In support of his views, he referred to paragraph 19-22 of Kerly's 11th Edition which states -

An importer who, as agent for a foreign manufacturer or otherwise, imports into the United Kingdom goods bearing a trade mark registered abroad for the foreign manufacturer is not ordinarily entitled to register the said trade mark in his own name in this country. To be registrable by the importer, the mark must be distinctive of his goods and not of those of the foreign manufacturer. Otherwise, the registration could if secured be expunged at the instance of the foreign manufacturer."

Mr Dengate Thrush submitted that there is little evidence in support of the opponent's claim to use of the trade mark. He submitted that if the opponent was to succeed in an opposition such as this, the opponent would have to show the nature of the use, the extent of the use and they would have to produce declarations from the trade evidencing their sales history and other supporting information such as market surveys which is the customary evidence put forward in trade mark oppositions.

In support, Mr Dengate-Thrush referred to the Court of Appeal decision in the case of Wham-O MFG v Lincoln Industries [1984] 1 NZLR 641. In this case the Court upheld the High Court decision in the same matter reported in [1981] 2 NZLR 628.

As to the nature of the New Zealand company's infringing use of the American company's FRISBEE trade mark, Moller J. in his decision at page 656 lines 35-44 stated -

"Then, too, it is clear, from the letter dated 26 July 1973 from Nelson Associates to Griffiths, and from the letter of the same date from Nelson Associates to Tolmer, that, by 16 July 1973, Griffiths, who are manufacturers' representatives here, knew of the use of the name FRISBEE in New Zealand, and also knew that Wham-0 was the company to which inquiries about it should be made. It was approximately two months later that Lincoln applied to register the mark as its own.

A great deal of authority was cited to me in connexion with the scope of s.26(1). It showed, amongst other things, that the words in the section reading "any person claiming to be the proprietor of a trade mark" mean no more than "claiming that he is entitled to be registered as the proprietor."

"In connexion with these two sections, I have considered the cases mentioned to me during the argument. These include: Gynomin Trade Mark [1961] RPC 408; Vitamins Ltd's Application [1956] RPC 1; [1956] 1 WLR 1; Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1975] 2 NZLR 422 (SO, [1978] 2 NZLR 50 (CA); Rawhide Trade Mark [1962] RPC 133; Brown Shoe Company Inc's Application [1959] RPC 29; Re Registered Trade Mark "Thunderbird" [1974] HCA 51; (1974) 4 ALR 687; General Electric Co v General Electric Co Ltd [1972] 2 All ER 507; [1972] 1 WLR 729; and North Shore Toy Co Ltd v Charles L Stevenson Ltd [1973] NZLR 562.

As a result of an examination of the totality of the facts and of these cases, I have formed the opinion that the claim of Lincoln to proprietorship of the trade mark FRISBEE cannot be sustained, this being because the application for registration was not, in my view, made in good faith. Moreover, for similar reasons, I also hold that, under s 16, the registration of the mark is "disentitled to protection in a Court of justice"."

What I have to decide in these proceedings is whether or not the mark in application No. 131539 is entitled to proceed to registration in the light of the opposition that has been mounted in respect of it. It has been accepted by all concerned that there is no objection per se in respect of the inherent registrability of the mark for a part A registration for the goods concerned.

I am satisfied that had the applicant Sunrise House Limited (which by change of name became Roadstar Corporation) remained in business and had continued with the ROADSTAR trade mark application there would have been no problem with it being registered as proprietor as from the application date. As registered proprietor of the trade mark it would have been entitled to sell its business and assign its rights in the trade mark registration attached to that business.

Unfortunately for the applicant it got into difficulties that led to it becoming insolvent, and under Japanese law a Trustee in Bankruptcy was appointed to administer the affairs of the applicant company. In the situation the applicant found itself in, it sought through the Trustee in Bankruptcy to assign its rights in the trade mark ROADSTAR to different parties in various areas of the world. In order to accomplish this purpose in respect of New Zealand various agreements were
entered into which purported to assign the rights in New Zealand in respect of the ROADSTAR trade mark to Seah Siak How. While I find the multiple agreements which Seah Siak How relies upon to support his claim to the transfer to himself of the rights in the trade mark ROADSTAR rather perplexing, nevertheless I am satisfied that the rights which the applicant had in New Zealand in the ROADSTAR mark when it applied to register trade mark application 131539 have now been acquired by Seah Siak How.

While the evidence filed in support of some of the matters relied upon by Seah Siak How in support of his claim for transfer of the rights in the ROADSTAR trade mark in New Zealand could have been presented in a more acceptable form nevertheless the overall picture that emerges is such as to satisfy me that Seah Siak How is entitled to the benefit of trade mark No. 131539.

There is no evidence before me to show that the sequence of events outlined by Seah Siak How in support of his claim to rights in the ROADSTAR trade mark did not in fact take place or show that what was done in seeking to assign to him the rights in the New Zealand trade mark application No. 131539 were not done in good faith. I am prepared to accept that what the parties concerned in the agreements did was done at the time in the honest belief that the action they then took was the correct action to take in order to secure the rights in the New Zealand trade mark application in favour of Seah Siak How.

It is generally agreed that the applicant was declared bankrupt by order of the Japanese Court on June 9th 1982. From then on according to the evidence filed on behalf of the applicant Mr Saiji Tanaka comes into the picture as the Trustee in Bankruptcy for the applicant company. While Mr Hardie has queried the lack of evidence as to Mr Tanaka's appointment there certainly is no evidence to show that he was not the officially appointed Trustee in Bankruptcy. From what has been indicated as to Japanese law on the subject of company bankruptcy a Trustee in Bankruptcy is appointed to administer the affairs of bankrupt companies. There has been no suggestion that someone other than Mr Tanaka was appointed to this position and there is no evidence to show that what Mr Tanaka did was not within his power to do. While there is room for argument as to just what were the reasons for the repeated agreements purporting to assign the rights in the ROADSTAR trade mark in New Zealand to Seah Siak How, they nevertheless are all directed to the same objective, namely assigning the trade mark ROADSTAR in New Zealand to Seah Siak How. The successive agreements tends to reinforce the conclusion that it was the intention of those who at the time had the authority to dispose of the rights in New Zealand in trade mark application No. 131539 that those rights should be vested in Seah Siak How. Mr Adachi former president of the applicant company, by declaration declares that the rights in respect of the trade mark ROADSTAR in New Zealand were not conferred upon anyone except Seah Siak How.

I am satisfied that the bankruptcy of the applicant company did not destroy the rights that existed in respect of trade mark, application No. 131539. I am also satisfied that the Trustee in Bankruptcy had the power to authorise the transfer of the rights that the applicant company had in this trade mark application. I am also satisfied that the intention of the applicant before bankruptcy and of the Trustee in Bankruptcy after the bankruptcy was to transfer the rights in the pending New Zealand trade mark application to Seah Siak How.

The practice in the New Zealand Patent Office has been to receive applications for the assignment of pending trade mark applications and to record the assignment on the Trade Marks Register at the time the trade mark application proceeds to registration.

While I accept that some parts of the applicant's evidence are not really relevant in these proceedings, nevertheless I am satisfied that there is sufficient relevant evidence to justify Seah Siak How being deemed the successor in title to pending trade mark application No. 131539.

From the limited background information revealed in this opposition I feel that the division of the applicant's business together with the rights in the ROADSTAR mark amongst different parties in various areas of the world has created the potential for conflicting claims to the ROADSTAR mark. The rights in the ROADSTAR mark in Japan and America have apparently gone to the company that was the manufacturer of the ROADSTAR products for the applicant and it was no doubt this company that was the source of manufacture of the ROADSTAR products that the applicant formerly exported to this country. The opponent's trade mark application for the ROADSTAR mark No. 142888 still remains pending and Mr Hardie has stated that if need be evidence of use can be supplied in support of application 142888. The fate of that application is a matter that will have to be decided separately. The matter for me to decide in the present proceedings is whether or not trade mark application No. 131539 proceed to registration and the assignment to Seah Siak How be recorded on the Register on registration of the trade mark.

While the counterstatement was made in the name of Roadstar Singapore Pte Limited (as successor in title of the applicant) Seah Siak How is obviously the power behind the Singapore company, a company which he claims he founded and of which he is managing director and which he refers to as "my company".

My decision is that trade mark application No. 131539 proceed to registration and that on registration the assignment to Seah Siak How be recorded.

A decision as to costs is deferred in the meantime. Costs have been claimed by both sides and in respect of this matter there have been two preliminary hearings each decided in favour of the opponent.

IN THE MATTER	of the Trade Marks Act 1953 and the Trade Marks Regulations 1954.
AND
IN THE MATTER	of Application No. 131539 in the name of SUNRISE HOUSE LIMITED, of 11-5 Kamiikedai, 3-chome, Ohtaku, Tokyo, Japan (APPLICANT)
AND
IN THE MATTER	of opposition thereto by WOOD ELECTRONICS MANUFACTURING LIMITED (formerly La Wood Television Limited), of 74 Princess Street, Onehunga, Auckland, New Zealand. (OPPONENT)

Intellectual Property Office of New Zealand - Trade Marks Decisions

Sunrise House Limited v Wood Electronics Manufacturing Limited [1988] NZIPOTM 1 (27 July 1988)