AIA Agricola Italiana Alimentare SpA v Borgo Developments Pty Ltd

[2017] ATMO 152

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReOppositions by AIA Agricola Italiana Alimentare SpA to applications by  Borgo Developments Pty Ltd for removal of trade marks 1176139 (29) NEGRONI SALUMI CREMONA (ITALY) and 1414432 (29) Star, 5‑point breaks circle, double (device) in the name of AIA Agricola Italiana Alimentare SpA

Delegate:                 Robert Wilson

Representation:       Opponent: Shauna Ross of Counsel, instructed by FB Rice Patent and Trade Mark Attorneys

Applicant: Mark Metzeling of IP Gateway Patent and Trade Mark Attorneys

Decision:                   2017 ATMO 152

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to ss 92(4)(a) and 92(4)(b) – merger of sub-ss (a) and (b) after challenged trade mark registered for five years – s 92(4)(b) only considered – no use of trade mark 1414432 during relevant period – not appropriate to exercise discretion under s 101 to leave 1414432 on Register – 1414432 to be removed from Register – trade mark 1176139 used only in respect of some goods – discretion under s 101 exercised to leave 1176139 on Register for all goods

Background

1.     AIA Agricola Italiana Alimentare SpA (‘the Opponent’) is the registered owner of trade mark registrations 1176139 and 1414432 (collectively ‘the Trade Marks’), relevant details of which are as follows:

Trade Mark Number:

1176139

Filing Date:

11 May 2007

Goods :

Class 29: Meat, fish, poultry and game; meat extracts; charcuterie, sausages, preserved meats; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

 (‘the 6139 Goods’)

Trade Mark:

(‘the 6139 Trade Mark’)

Trade Mark Number:

1414432

Filing Date:

25 November 2010

Goods:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

 (‘the 4432 Goods’)

Trade Mark:

(‘the 4432 Trade Mark’)

2.     On 14 March 2016, Borgo Developments Pty Ltd (‘the Applicant’) filed applications based on ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Trade Marks from the Register. The applications were made in respect of all the goods for which the Trade Marks are registered. The Opponent filed Notices of Opposition consisting of a Notices of Intention to Opposed filed on 18 May 2016 and Statements of Grounds and Particulars which were filed on 17 June 2016. The Applicant filed Notices of Intention to Defend both oppositions on 4 July 2016.

Evidence

3.     All the evidence filed in this matter was filed in respect of both oppositions. The Opponent filed Evidence in Support of its oppositions (‘EIS’) on 10 October 2016. This evidence consists of:

·Declaration made on 7 October 2016 by Donato Didonè, the Managing Director of the Opponent, with Annexures 1 to 12 (‘the Didonè declaration’).

4.     The Applicant filed Evidence in Answer (‘EIA’) on 4 January 2017. This evidence consists of:

·Statutory Declaration made on 14 December 2015 by Luigi Borgo, the director of the Applicant, with Exhibits LB-01 to LB-14 (‘the Borgo declaration’); and

·Statutory Declaration made on 4 January 2017 by Mark Stephen Metzeling of IP Gateway Patent and Trade Mark Attorneys Pty Ltd, the attorney of the Applicant, with Exhibts MSM-01 to MSM-08 (‘the Metzeling declaration’).

5.     The Opponent filed Evidence in Reply (‘EIR’) on 9 March 2017. This evidence consists of:

·Declaration made on 9 March 2017 by Ninel Molinari, the Managing Director of Combined Wines & Foods, with Annexure 1 (‘the Molinari declaration’).

6.     Once the time allowed for filing evidence had ended the parties requested to be heard. I heard the matters together in Canberra on 24 October 2017 as a delegate of the Registrar of Trade Marks. Shauna Ross of Counsel, instructed by FB Rice Patent and Trade Mark Attorneys, appeared for the Opponent. Mark Metzeling of IP Gateway Patent & Trade Mark Attorneys, appeared for the Removal Applicant.

The Applicant

7.     The Applicant is the owner of the applications detailed below:

Application Number:

1672263

Filing Date:

3 February 2015

Goods and services:

Class 29: Meat, including processed meat products, smallgoods and Salumi; meat extracts; fish, poultry and game

Class 35: Retail and wholesale services, namely the retail and/or wholesale of meat (including processed meat products, smallgoods and Salumi), meat extracts, fish, poultry and game

Class 43: Services for providing food and drink; restaurant services, including Salumi bar services

Trade Mark:

(‘the Applicant’s Star Device Trade Mark’)

Status:

Under examination - deferred

Application Number:

1809076

Filing Date:

14 November 2016

Goods and services:

Class 29: Meat, including processed meat products, smallgoods and Salumi; meat extracts

Class 35: Retail and wholesale services, namely the retail and/or wholesale of meat (including processed meat products, smallgoods and Salumi), meat extracts

Class 43: Services for providing food and drink; restaurant services, including Salumi bar services

Trade Mark:

(‘the Borgo Trade Mark’)

Endorsements:

Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.

Status:

Opposed

8.     During examination of the application for the Applicant’s Star Device Trade Mark, the 4432 Trade Mark was cited as a conflicting trade mark under a s 44 ground for rejection of the application. This appears to represent the motive for the applications for removal being considered in the present matter. The Borgo Trade Mark was applied for after the removal applications were filed. The 4432 Trade Mark was also cited under s 44 during examination of the Borgo Trade Mark. As is apparent from the endorsement, the Borgo Trade Mark was accepted under the provisions of s 44(4) and/or reg 4.15A(5). The application was advertised as accepted on 6 April 2017. Registration of the Borgo Trade Mark has been opposed by the Opponent: the Notice of Intention to Oppose was filed on 6 June 2017.

9.     According to the Borgo declaration the Applicant exclusively licenses Borgo Smallgoods Co the right to use the Applicant’s Trade Mark in relation to the Applicant’s Goods and Services and:

The Applicant, its licensee and its predecessors in title have used [the Applicant’s Trade Mark] extensively in Australia since in or about 1966.

The Applicant (its licensee and its predecessors in title) is Queensland’s oldest Italian-style smallgoods manufacturer. …

In or about the mid to late 1970s, the Applicant’s predecessor in title commenced use of [the Applicant’s Trade Mark] in a substantially identical format to [the Applicant’s Trade Mark], namely the use of the star with the three consecutive circles behind same.

The Opponent

10.     According the Didonè declaration:

Pietro Negroni started the NEGRONI brand in 1907 when he opened his delicatessen in Cremona, Italy producing authentic Italian delicatessen meat/charcuterie. The Veronesi Group acquired the NEGRONI business and trade marks in 2002. … In 2007, all Veronesi’s delicatessen meat brands including NEGRONI, MONTORSI, FINI and DANIEL, were brought together under the new company Negroni SpA which subsequently merged with and into AIA on 15 December 2011.

Based on a study conducted in 2009 … NEGRONI is the most well-known brand of charcuterie in Italy and is globally recognised as one of the highest quality Italian brands with 96% global brand awareness among consumers of charcuterie.

11.     In addition to the trade marks the subject of the present removal applications, the Opponent is the owner of the registered trade marks detailed below:

Trade Mark Number:	735849
Priority Date:	2 June 1997
Goods:	Class 29: Meat and meat products, including cooked, cured and smoked sausage, ham, salami, mortadella; jellies, jams, milk products, edible oils and fats
Trade Mark:	NEGRONI

Trade Mark Number:	1459583
Priority Date:	21 September 2011
Goods:	Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats
Trade Mark:

Legal Framework

12. Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the present matter are ss 92, 96, 100 and 101. Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.

(2)  The application: 

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

…

(4)  An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: 

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)        to use the trade mark in Australia; or

(ii)       to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)      has not used the trade mark in Australia; or

(v)       has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed.

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner: 

(i) used the trade mark in Australia; or

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates. 

Note 1: For file and month see section 6.

13. Section 96 makes provision for any person to oppose an application made under s 92 by filing a Notice of Opposition with the Registrar. Section 100 specifies that the burden is on the person opposing an application to rebut any allegations made under s 92. Subject to ss 101(3) and 102, section 101(1) provides the Registrar with the discretion to remove the Trade Marks from the Register ‘in respect of any or all of the goods and/or services to which the application relates’. Section 101(3) provides that the discretion may be exercised in the trade mark owner’s favour (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.

Discussion

14. In the present matter the Applicant has made applications for removal under both ss 92(4)(a) and (b). Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Nevertheless, because of the specifics of those provisions sub‑s (4)(a) ‘merges’ with sub‑s (4)(b) once an impugned trade mark has been registered for five years.[1] As the Trade Marks had both been registered for a period longer than five years at the date of the applications for their removal it is necessary only for me to consider the application for removal under s 92(4)(b).

[1] Adopting the language used in Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 6^th ed, 2016) [70.510].

15. In the case of an allegation of non-use under s 92(4)(b) the onus is on the Opponent to establish that it, or an authorised user, used the Trade Marks (or the Trade Marks with additions or alterations not substantially affecting their identity) in good faith in respect of the goods for which they are registered, and that this use occurred within the three year period ending 14 February 2016 (‘the Relevant Period’). Use of a trade mark in good faith means genuine commercial use as opposed to token use.[2] The demonstrated use must be ‘use in the course of trade’.[3]

Use of other trade marks

[2] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 86 IPR 224, 239-240 [60]-[65].

[3] Trade Marks Act 1995 (Cth) s 17.

16.     The Opponent’s evidence asserts use of a number of variations of its trade marks over many years. Of particular relevance to the matters in hand is the use of the trade mark shown below left. For ease of comparison, the 6139 Trade Mark is shown below right.

‘the Negroni Star Mark’ ‘the 6139 Trade Mark’

17.     Use by a person of a trade mark with additions or alterations which do not substantially affect the identity of the trade mark may be taken by the Registrar to be use of the trade mark.[4] There are only very minor differences in the graphical elements of the above trade marks. The 6139 Trade Mark does contain word elements—‘SALUMI’ and ‘CREMONA (ITALY)’ which are not present in the Negroni Star Mark. ‘Salumi’ is an Italian word meaning ‘cured meat’.[5] ‘Cremona’ is a city in Italy. Those elements are not distinctive in connection with many of the goods with which we are concerned here. The absence of the word elements from the Negroni Star Mark does not create a significant point of difference. Consequently, I am satisfied that use of the Negroni Star Mark is use of the 6139 Trade Mark with additions or alterations which do not substantially affect its identity. Consequently, use of the Negroni Star Mark during the Relevant Period is taken as use of 6139 Trade Mark during that period.

[4] Trade Marks Act 1995 s 7(1).

[5] According to the translation provided at < I note that the Opponent has at times referred to the Negroni Star Mark as though it were the 6139 Trade Mark. If I were to perpetuate those references it would create some unnecessary confusion. In the interests of simplicity I have at times in this decision indicated that the Opponent referred to the Negroni Star Mark where the Opponent had in fact referred to the 6139 Trade Mark. I have done this where I believe the Opponent’s reference was actually to the Negroni Star Mark. Given that I have found that use of the Negroni Star Mark is to be taken as use of the 6139 Trade Mark the distinction is, in any case, largely irrelevant.

19.     In the SGP for the 4432 Trade Mark the Opponent asserted that it had used the Negroni Star Mark, ‘in relation to meat, preserved meat and charcuterie being ham, namely parma ham and prosciutto’. For ease of comparison the trade marks have been juxtaposed below.

‘the Negroni Star Mark’ ‘the 4432 Trade Mark’

20.     The Opponent has not asserted that it has used the 4432 Trade Mark exactly as it is registered during the Relevant Period, and I find the evidence provides no examples of such use. Rather, the Opponent asserts that the 4432 Trade Mark has been used as ‘an integral part’ of the Negroni Star Mark. Mr Didonè in his declaration analysed the Negroni Star Mark as follows:

Each element … is essential to [the Negroni Star Mark] as a whole, and each element represents an important attribute of the products on which [the various trade marks of the Opponent] are used. The red and green circle represents the Italian origin of the products, the gold star represents the ‘highest quality and safety standards’ of the products [the Opponent] aims to guarantee, and NEGRONI is the brand’s heritage as derived from Pietro Negroni.

The importance of each element in [the Negroni Star Mark] is clearly represented [by the image below].

21.     The Applicant, on the other hand, submitted that use of the Negroni Star Mark does not constitute use of the 4432 Trade Mark. I agree. The stylised ‘Negroni’ word element which is present in the Negroni Star Mark but which is absent from the 4432 Trade Mark, is highly distinctive when used in connection with the goods with which we are concerned here. The ‘Negroni’ element constitutes a significant point of difference between the respective trade marks and represents an addition and an alteration to the 4432 Trade Mark which substantially affects it identity. I am not satisfied that use of the Negroni Star Mark (or, for the same reasons, use of the 6139 Trade Mark) constitutes use of the 4432 Trade Mark.

No use of the 4432 Trade Mark during Relevant Period

22. As a consequence of my findings above, the Opponent’s evidence shows no use of the 4432 Trade Mark during the Relevant Period. The grounds on which the application to remove the trade mark was made have therefore been established. The Opponent has submitted that in these circumstances the Registrar’s discretion under s 101 of the Act should, nevertheless, be exercised in its favour. I will consider the exercise of the discretion later in my decision. However, I will firstly consider whether the Opponent has used the 6139 Trade Mark during the Relevant Period.

Use of the 6139 Trade Mark during the Relevant Period

23.     There are a number of annexures to the Didonè declaration which are asserted to demonstrate use of the 6139 Trade Mark during the Relevant Period. A number of these have deficiencies which limit their effectiveness at establishing such use. Nevertheless, Confidential Annexure 10 in conjunction with the Molinari declaration are sufficient to satisfy me that the 6139 Trade Mark has been used during the Relevant Period in connection with ham—specifically, boneless Parma ham, boneless San Daniele Ham and ‘slicing log Parma ham’, for the reasons which follow.

24.     Confidential Annexure 10 to the Didonè declaration contains a number of invoices and purchase orders. Amongst these are invoices from the Opponent which are addressed to a small number of customers in Australia. The quantity of goods contained in the invoices strongly suggests that the customers are distributors. Amongst the customers to whom the invoices are addressed is Combined Wines & Foods who have an address in New South Wales. A number of the invoices are dated during the Relevant Period. The invoices bear what appears to be three signs at the top, including an ‘AIA’ logo and the Negroni Star Mark. The items in the invoices are typically listed as ‘Boneless Parma Ham’ and ‘Boneless S. Daniele Ham’, although one invoice also includes ‘Slicing Log Parma Ham’. Also present in Confidential Annexure 10 are some purchase orders from Combined Wines & Foods to a company listed as ‘Negroni’. Many of the purchase orders are dated within the Relevant Period and are for items including ‘Boneless Parma Ham’ and ‘Boneless San Daniele Ham’.

25.     In his declaration Mr Molinari indicated that he is Managing Director of Combined Wines & Food. Mr Molinari provided some confidential sales figures and has also relevantly declared:

My company began importing and selling parma ham and prosciutto (‘the Goods’) bearing [the 6139 Trade Mark and the Negroni Star Mark] (‘the NEGRONI Trade Marks’) in 2007. My Company has been importing and the Goods [sic] bearing the NEGRONI Trade Marks continuously since this time and imported and sold the Goods bearing the NEGRONI Trade Marks [during the Relevant Period].

My Company sells the Goods bearing the NEGRONI Trade Marks to Restaurants, Delicatessens, and Fruit Barns.

Now produced and shown to me and marked Annexure 1 is a photograph showing how the NEGRONI Trade Marks were displayed on the Goods for sale during [the Relevant Period].

26.     Annexure 1 to the Molinari declaration shows the image provided below.

27.     The Applicant has made the following criticisms of the Molinari declaration:

The financial figures in the Molinari declaration are unsubstantiated and the declaration doesn’t read as though it is in the words of the declarant. Accordingly, little weight should be attached to the financial figures.

Additionally, there is no photo of the goods in Annexure 1 … but rather it is an extract from the declarant’s website dated the day before the declaration is signed being 8 March 2017. … We consider it is highly likely that this picture is not a photograph taken by the declarant of the goods that Combined Wine & Foods have imported from [the Opponent] …

It also begs the question as to why [the Opponent] wouldn’t include a photo of the Negroni trade mark on the goods if in fact it was able to obtain one from Mr Molinari. …

It is not good enough to make an unsupported statement that the trade mark as it appears on the website is how the trade mark is used on the products, with nothing more. …

The evidence should not be accepted unless it can be substantiated by a document that is capable of authentication or verification.

28.     I am not persuaded by the Applicant that the evidence contained in the Molinari declaration should not be accepted. The quanta of the sales figures provided by Mr Molinari are not of great relevance. In rebutting the allegation of non‑use, it is not necessary that the Opponent establish that its trade mark has acquired a reputation, say, through high sales volumes. It is necessary only that the Opponent establish that its trade mark was used. It is my experience that declarations which I find before me often read as though they have been drafted by attorneys rather than by the declarants—which is of course generally the case and is to be expected. However, Mr Molinari, and declarants generally, by signing their declarations are attesting to the truth of the statements made within them and making them their own.

29.     Mr Molinari has not declared that the photograph in Annexure 1 is a photograph of goods which his business imported/sold during the Relevant Period, but a photograph showing ‘how the NEGRONI Trade Marks were displayed’ during the Relevant Period. It is not surprising, in my view, that some traders do not have photographs of goods which were actually traded during a non-use period. An inability to provide photographs of a trade mark on goods which were taken during a relevant period should not prevent a finding that such trade marks were in fact used during that period.

30. The Molinari declaration together with the evidence contained in Confidential Annexure 10 to the Didonè declaration, discussed above, is sufficient to satisfy me that the Negroni Star Mark, and therefore the 6139 Trade Mark, was used in connection with certain types of ham during the Relevant Period. There is nothing in the evidence, however, that suggests that the trade mark was used in connection with any goods other than ham. In the case of a finding of use only in respect of a limited range of goods the Opponent has submitted that the Registrar’s discretion under s 101 be exercised in its favour for the remaining goods. I move now to consider the Registrar’s discretion.

The Registrar’s discretion

31. Section 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[6]

Her Honour also noted:

By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[7]

[6] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

[7] Ibid [171]-[172].

32.     While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[8] Flick J stated:

Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[10] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[11]

[8] E & J Gallo Winery v Lion Nathan Australia Pty Limited (2008) 77 IPR 69 (‘Gallo’).

[9] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

[10] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

[11] E & J Gallo Winery v Lion Nathan Australia Pty Limited (2008) 77 IPR 69, 113 [210].

33.     Flick J referred to five factors which may be taken into account when considering the exercise of the discretion. His Honour stressed that the following are ‘not an exhaustive catalogue of factors’ but that they ‘provide some assistance’:[12]

·whether there has been abandonment of the trade mark;

·whether the registered proprietors still have a residual reputation in the trade mark;

·whether there has been sales of goods bearing the trade mark by the registered proprietor since the relevant period ended;[13]

·whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the trade mark; and

·whether the registered proprietors were not aware of the applicant’s sales under the trade mark.[14]

[12] Ibid 112 [203].

[13] The italicised words were not explicit in Flick J’s judgement. Flick J derived his list from the decision of Falconer J in Hermes Trade Mark [1982] RPC 425. I have added the italicised qualification on the basis of Falconer J’s wording at p 434 of his decision.

[14] E & J Gallo Winery v Lion Nathan Australia Pty Limited (2008) 77 IPR 69, 111-12 [202].

The Registrar’s discretion – the 4432 Trade Mark

34.     The first three of the five factors listed by Flick J in Gallo generally require that the trade mark under consideration has at some time been used. As indicated above, there is no suggestion by the Opponent that it has used the 4432 Trade Mark as registered and there is nothing in the evidence before me to suggest that it has been so used. Neither is there any evidence of the use of the 4432 Trade Mark with additions or alterations which do not substantially affect its identity. The Opponent has not indicated that it has any future intention to use either the 4432 Trade Mark or the 4432 Trade Mark with additions or alterations that do not substantially affect its identity. There is no apparent public interest in retaining the 4432 Trade Mark on the Register. Nor does there appear to be any significant inconvenience to the Opponent. In these circumstances I am not satisfied that it is appropriate to exercise the discretion available to the Registrar to do other than remove the trade mark from the Register for all goods for which it is registered.

The Registrar’s discretion – the 6139 Trade Mark

35.     The Opponent submitted that were it to be found that the 6139 Trade Mark has been used in connection with some only of the 6139 Goods during the Relevant Period, the Registrar should exercise her discretion to leave the trade mark on the Register for all of the 6139 Goods. As indicated above, I have found that the 6139 Trade Mark was used in connection only with ham during the Relevant Period. The Opponent has submitted:

In applying the discretion of the Registrar, the Delegate can take into account whether the goods and services for which the mark has been used are ‘similar goods or services’ to the remaining goods or services. Indeed, this is one of the non-exhaustive factors that the Delegate may take into account under section 101(4) of the Trade Marks Act.

The broader term of ‘similarity’ brings into play concepts such as ‘particular uses of the goods or services’ or ‘trade channels employed’. In this regard, even if the Hearing Officer determines that use in relation to certain items of [the 6139 Goods] now sought to be excluded by [the Applicant] has not been proved, such items can still be retained on the Register on the basis that they are ‘similar’ goods to the other Goods.[15]

In the present case, ALL of [the 6139 Goods] (which are all in class 29 and are foodstuffs) are similar to those that have been imported into Australia and offered for sale and sold by [the Opponent] in Australia under and by reference to [the 6139 Trade Mark]. …

Further, the exercise of the discretionary power by the Hearing Officer is not limited to similar goods.[16] In this regard see, see Societe Anonyme Des Eaux Minerales D’Evian v Yoghurt Co Pty Ltd (2012) 97 IPR 77 (at [43]) as follows:

It is not necessary for me to determine whether all the goods or services in classes 43, 3, 32, 18 and 25 in respect of which the opponent’s trade marks are registered are similar goods and services as the goods and services in respect of which the opponent has used its trade marks. I consider that it is sufficient to state that obviously many of them are … on the basis of the opponent’s use of the EVIAN Word and EVIAN Stylised trade marks on similar goods and services to many of those for which it is registered, it is apparent that the registrar’s discretion ought to be executed in relation to the broad range of goods and services within these registrations.

[15] The Opponent cited Spear & Jackson (Australia) Pty Ltd v Amalgamated Hardware Merchants Ltd (2013) 98 IPR 261 to support this proposition.

[16] The Opponent cited the Trade Marks Act 1995 (Cth) s 101(4) to support this proposition.

36.     The Opponent has, additionally, referred to the application for the Borgo Trade Mark, and submitted:

Even if [the 4432 Trade Mark] is removed in toto and [the 6139 Trade Mark] is removed for Goods other than meat, poultry, charcuterie, sausages and preserved meat (in respect of which the non-use application should fail), it is unlikely that the Borgo Application will proceed to registration because the Borgo Application is at least deceptively similar to [6139 Trade Mark] and that application claims goods that are the same as the remaining Goods. [The Applicant] will, therefore, not suffer any additional disadvantage if [the 6139 Trade Mark is not removed for all the 6139 Goods]. Moreover, [the Applicant] contends that it has been using [the Borgo Trade Mark] for many years without a registration. Again [the Applicant] will, therefore, not suffer any additional disadvantage as the status quo would be preserved.

I note that the application for the Borgo Trade Mark has been accepted and opposed as indicated at paragraph 8, above, and that the application is in respect of goods and services which include meat, including processed meat products, smallgoods and Salumi; meat extracts in Class 29.

37.     Simply because the 6139 Goods might all be considered to be the same or similar to ham, is not sufficient reason on its own to warrant leaving the registration on the Register for all the 6139 Goods. Any consequences of doing so should also be considered. The Applicant has submitted:

[The 6139 Trade Mark] actually states ‘Salumi’ on it (Salumi are Italian cold cuts predominantly made from pork and include cooked products such as mortadella, prosciutto cotto and salami) – therefore, it would be inherently confusing if this trade mark was used on anything other than salumi, including the remaining goods of [the 6139 Trade Mark] being fish, poultry and game; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats …

Should the Hearing Officer decide not to remove [the 6139 Trade Mark] in its entirety, we submit that the specification for [the 6139 Trade Mark] should be restricted to Prosciutto imported from Italy.

This would minimise any potential confusion for the general public and maintain the status quo with both [the Opponent] and [the Applicant] being able to continue to sell prosciutto under their respective composite trade marks.

38.     I acknowledge the potential confusion should the 6139 Trade Mark be used in connection with goods other than salumi. However, I think this risk is minimal given the low prominence of ‘salumi’ in the trade mark. If the trade mark were to be used on, say, a bottle of olive oil, consumers are unlikely to think that they are actually buying salumi, but—if they should happen to turn their mind to it—that perhaps Negroni was a company that started out selling salumi and had branched out into olive oil. It is apparent from the evidence that the Opponent is actually using a version of the 6139 Trade Mark that does not include ‘SALUMI’ or, for that matter, ‘CREMONA (ITALY)’.

39.     The Applicant is described in the Borgo declaration as ‘Queensland’s oldest Italian-style smallgoods manufacturer’. The narrow specification of the Borgo Trade Mark in Class 29 is for goods which are essentially the same as those for which the Opponent has established use. Whether the 6139 Trade Mark remains on the Register for simply ham, or prosciutto imported from Italy, or for all of the 6139 Goods, is unlikely to affect the fate of the application for the Borgo Trade Mark; the Borgo Trade Mark would, nevertheless, include in its specification goods which are similar to at least some of the 6139 Goods. In these circumstances I can see no disadvantage to the Applicant if the discretion available to the Registrar is exercised in a manner which leaves the 6139 Trade Mark on the Register for all the 6139 Goods. I am satisfied that it is appropriate to exercise the discretion in that manner.

Decision

The 4432 Trade Mark

40.     The Opponent did not rebut the allegation of non-use in respect of the 4432 Trade Mark nor did it persuade me that the discretion available to the Registrar in this situation not to remove the trade mark should be exercised in its favour. I decide, therefore, that trade mark 1414432 be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the trade mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.

The 6169 Trade Mark

41.     The Opponent rebutted the allegation of non-use in respect of the 6139 Trade Mark only in respect of ham. However, it is appropriate that the discretion available to the Registrar to leave the 6139 Trade Mark on the Register for all of the 6139 Goods be exercised in the Opponent’s favour. I decide, therefore, that the trade mark remain on the Register for all the goods for which it is currently registered.

Costs

42.     Each of the Applicant and the Opponent has had a measure of success. I am of the view that in the circumstances it is appropriate that each party bear its own costs and I make no award against either party.

Robert Wilson
Hearing Officer
Trade Marks and Designs Hearings
5 December 2017