Amazon Technologies Inc. v The Echo Label Limited

[2019] ATMO 58

TRADE MARKS ACT 1995

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

Re: Opposition by The Echo Label Limited to an application under section 92 of the Act by Amazon Technologies Inc. to remove trade mark registration 670282 – ECHO (class 9) – in the name of The Echo Label Limited

Delegate:	Katrina Brown
Representation:	Removal Applicant:	Not represented at hearing – written submissions by King & Wood Mallesons
	Removal Opponent:	Sean McManis of Shelston IP
Decision:	2019 ATMO 58 Trade Marks Act 1995 – opposed application for removal under s 92(4)(b) – no use demonstrated in relevant period - discretion exercised in relation to some goods – registration to be partially removed – no award of costs.

Background

1. The Echo Label Limited (‘the Removal Opponent’) is the registered owner of the following trade mark:

Registration No:	670282
Trade Mark:	ECHO (‘the Trade Mark’)
Priority Date:	22 August 1995
Specification:	Class 9: Records, tapes, discs, CD's; audio visual recording and reproducing apparatus and instrument (‘the Registered Goods’)

1. On 15 August 2017 Amazon Technologies Inc. (‘the Removal Applicant’) filed an application pursuant to section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Trade Mark from the Register. The removal application was made in respect of all of the Registered Goods; that is for complete removal of the Trade Mark from the Register.

2. The Removal Opponent filed a Notice of Intention to Oppose the removal application on 24 October 2017, followed by a Statement of Grounds and Particulars on 23 November 2017. 

3. On 4 December 2017 the Removal Applicant filed a Notice of Intention to Defend the removal application.

4. The Removal Opponent filed evidence in support of the opposition. No other evidence was filed by either party.  

5. The matter came before me, a delegate of the Registrar of Trade Marks, on 19 February 2019. The Removal Opponent was represented by Sean McManis of Shelston IP. The Removal Applicant was not represented at the hearing however written submissions were filed on its behalf by King & Wood Mallesons in accordance with reg 9.20(5)(c) of the Trade Marks Regulations 1995.  

   The relevant provisions

6. Part 9 of the Act deals with the removal of trade marks from the Register due to non-use. Section 92(4)(b) relevantly provides:

   (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:

   …

   (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.

7. The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time in the three year period ending on 15 July 2017 (‘the Relevant Period’).

8. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing that it, or an authorised user, used the Trade Mark in the course of trade in Australia during the Relevant Period in relation to the Registered Goods. The relevant standard of proof is on the balance of probabilities.[1]

   [1] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

9. In accordance with s 101 of the Act, I may decide to remove the Trade Mark for all or some of the goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

   Evidence

10. To rebut the allegation of non-use, the Removal Opponent relies on the following declaration which was filed as evidence in support:

    ·Declaration of Peter Stack (Executive Vice President Global Catalogue Recordings at BMG Rights Management (UK) Limited, the parent company of the Removal Opponent) made on 5 March 2018 with annexures PS-1 to PS-4 (‘Stack Declaration’).

11. Mr Stack deposes that the Removal Opponent commenced operations in 1994 and that the Trade Mark has been used in relation to sound recordings since that time. He further states that the distribution rights for the Removal Opponent’s music catalogue in Australia and New Zealand were exclusively licensed to Liberator Music Pty Ltd (‘Liberator’) from 1 January 2013 to 31 December 2015. After that time, Warner ADA held the distribution rights in Australia and New Zealand.

12. Annexure PS-1 to the Stack Declaration consists of a spreadsheet tabulating royalties in respect of products distributed by Liberator in Australia from July to December 2016. It is declared that the royalties are in respect of ‘recordings produced by the [Removal Opponent] and bearing the [Trade Mark]’.

13. Confidential Annexure PS-3 consists of royalty statements dated from July 2014 to December 2015. It is declared that these royalty statements relate to ‘musical recordings produced by the [Removal Opponent] and distributed in Australia by [Liberator].’

14. Annexure PS-2 consists of images of CDs and CD cover sleeves which are declared to show how the Trade Mark is typically applied to sound recordings. In these images the Trade Mark is shown on the front of the CD and also on the back of the cover sleeve beneath the list of songs. I note that the images relate to artists and albums specifically listed in the royalty summaries in Annexures PS-1 and PS-3.

15. Annexure PS-4 also consists of images of CDs and cover sleeves which are declared to be further examples of how the Trade Mark was used in relation to sound recordings produced by the Removal Opponent and distributed by Liberator.

    Discussion and reasons

16. As this is a removal action, it is crucial that the Removal Opponent demonstrates that it, or an authorised user, used the Trade Mark in Australia in relation to the Registered Goods within the Relevant Period.

17. The evidence put forward by the Removal Opponent has deficiencies such that it does not satisfy me that the Trade Mark was used in Australia in the Relevant Period. The deficiencies include:

    ·Although dated within the Relevant Period, the royalty statements do not contain the Trade Mark or any reference to it. Furthermore, the Stack Declaration is silent as to whether the statements in Annexure PS-3 relate to goods bearing the Trade Mark. I note that the Stack Declaration does state that the statements in Annexure PS-1 relate to goods bearing the Trade Mark that were produced by the Removal Opponent and distributed in Australia. On its own this is not sufficient as it does not demonstrate how the Trade Mark was used in relation to the Registered Goods without which I cannot be satisfied of at least three crucial issues: that the alleged use was of the Trade Mark as applied for, was without additions or alterations that substantially affects its identity, or that it was use ‘as a trade mark’.

    ·The images of the CDs and CD covers are undated. The Stack Declaration does not indicate that these images were taken within the Relevant Period rather it states that the images are typical of how the Trade Mark is applied to sound recordings. Whilst the images may be illustrative of how the Trade Mark is typically used on sound recordings, crucially, the Stack Declaration does not confirm that this typical use was how the Trade Mark was used in the Relevant Period.  

18. The evidence before me is not sufficient to satisfy me that the Removal Opponent used the Trade Mark in Australia during the Relevant Period in relation to the Registered Goods. As such the ground for removal under s 92(4)(b) of the Act has been made out.

    Discretion

19. Section 101 relevantly provides:

    (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

    (4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

    (a) similar goods or closely related services; or

    (b) similar services or closely related goods;

    to those to which the application relates. 

20. In this matter, the question to be asked is whether it is reasonable not to remove the Trade Mark, even though the registered owner did not demonstrate that it had used the Trade Mark during the Relevant Period.[2]

    [2] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28] (‘Austin’).

21. The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[3]

    [3] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273].

22. Section 101 confers a broad discretion which ‘is limited only by the subject matter, scope and purpose of Part 9 of the Act’.[4] In Austin, the purpose of Part 9 of the Act was expressed as follows:

    The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[5]

    [4] Austin [35].

    [5] Ibid [38].

23. A range of circumstances may be taken into account in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy me that it is reasonable to exercise the discretion.[6]

    [6] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [198].

24. In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised some relevant considerations for the exercise of the discretion:

    In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).

    In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; 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 mark; and whether the registered proprietors were aware of the applicants’ sales under the mark.[7]

    [7] [2012] FCA 252 [467].

25. As already explained in this decision, there are deficiencies in the evidence such that the Removal Opponent has not been able to meet the specific requirements of s 92(4)(b) of the Act. Despite these deficiencies, the evidence demonstrates that this is not a case of an unused or abandoned trade mark cluttering the Register.

26. The Removal Opponent has provided royalty statements within the Relevant Period and deposed that at least some of these statements relate to sound recordings bearing the Trade Mark produced by the Removal Opponent and distributed in Australia by Liberator. As a means of corroborating this information, the Removal Opponent provided images of CDs and CD cover sleeves for albums specifically referred to in the royalty statements. Albeit undated, the images show the Trade Mark being used ‘as a trade mark’ in relation to CDs. I also note that at the end of the exclusive distribution agreement with Liberator, the Australian distribution rights for goods bearing the Trade Mark were granted to other entities.

27. At this point, it is also convenient to address the Removal Applicant’s assertion that any use of the Trade Mark demonstrated in the evidence is use by Liberator not the Removal Opponent. At the hearing the Removal Opponent’s representative relied on E & J Gallo Winery v Lion Nathan Australia Pty Ltd[8] and asserted that the use was that of the Removal Opponent; Liberator, as the distributor, was not using the Trade Mark, they were simply distributing goods that the Trade Mark had already been applied to. On the information before me, it is reasonable to conclude that the Trade Mark was being used to distinguish the Removal Opponent’s goods and that it continued to do so despite being handled by intermediaries such as Liberator. In this respect I note the following observation of Windeyer J in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd:

    When it is said that a trade mark is used to distinguish the goods of one man from those of another, that abbreviated statement obviously does not refer to the goods of the owner of the mark in the sense of goods which he owns or possesses. After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connexion in the course of trade between them and him, the registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.[9]

    [8] [2010] HCA 15.

    [9] (1967) 116 CLR 254, 266.

28. Although somewhat of a jigsaw, when the information summarised in [27] to [28] of this decision is pieced together I am satisfied that it is reasonable for the Trade Mark not to be removed in relation to CDs and similar goods namely records, tapes and discs. I note the Removal Applicant’s assertion that the Removal Opponent did not establish that records, tapes and discs were similar goods to CDs. In this matter I do not consider such evidence necessary, the similarities between these goods are readily apparent; they are all media upon which sound is recorded and they are all mediums for playing pre-recorded sounds.

29. The Removal Opponent asserted that it was also reasonable not to remove the Trade Mark in relation to audio visual recording and reproducing apparatus and instruments. The Removal Opponent, relying on the technological convergence argument put forward in Pioneer Computers Australia Pty Limited v Pioneer KK,[10] asserted that:

    In the developing ‘connected’ world of electronic entertainment products, there is increasing integration between musical recordings and devices used to record or play such recordings. With the growing convergence of technology, and particularly the rapidly changing and fluid nature of musical entertainment products, it is reasonable to think that businesses that produce and supply musical recordings might also trade related electronic products that enable ready access to, and playing of, such recordings.[11]

    [10] [2009] FCA 135.

    [11] Removal Opponent’s hearing submissions, 8.

30. The Removal Opponent has not provided any evidence to support its assertions of the ‘growing convergence of technology’ and ‘rapidly changing and fluid nature of musical entertainment products’. Nor has the Removal Opponent provided any information to suggest that businesses that produce and supply musical recordings routinely offer pre-recorded CDs and audio visual recording and reproducing apparatus under the same trade mark. Additionally, the evidence makes no reference to the Removal Opponent dealing in anything other than pre-recorded CDs and digital downloads of those recordings.

31. The onus is on the Removal Opponent to satisfy me that it is reasonable to exercise the Registrar’s discretion and I am not satisfied in respect of audio visual recording and reproducing apparatus and instruments.

    Decision 

32. The application for removal under s 92(4)(b) of the Act has been successful. However, I am satisfied that it is reasonable to exercise my discretion and not remove the Trade Mark from the Register in respect of records, tapes, discs and CDs.

33. Therefore I direct that, one month from the date of this decision, registration number 670282 be removed from the Register of Trade Marks in respect of audio visual recording and reproducing apparatus and instruments.

34. If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the court.

    Costs

35. The general rule is that costs follow the event. As both parties were, strictly speaking, partly successful I believe it is appropriate in this case that each party bears its own costs.

    Katrina Brown
    Hearing Officer
    Oppositions & Hearings
    Trade Marks & Designs
    17 April 2019