Americana International Limited v Suyen Corporation

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
IN THE MATTER of Australian Trade Mark Application No. 968981(25) for the mark BENCH BODY (logo) in the name of Suyen Corporation and an Opposition to Registration by Americana International Limited

Delegate:

Debrett Lyons

Representation:

Opponent: Julia Baird of Counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys

Applicant: Greg Chambers of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys

Decision:

2008 ATMO 4

s. 52 opposition: s. 58 not established since opponent found not to be the owner of a substantially identical trade mark; s. 59 established since evidence sufficient to shift onus of proof to applicant and onus not discharged; applicant to pay opponent’s costs

Background

Suyen Corporation (‘the applicant’) filed an application to register a trade mark, current details of which appear below:
Application number:  968981
Filing date:  5 September 2003
Goods specification:  Class 25: Clothing; including boots, shoes, slippers
Trade mark:              (‘the trade mark’)
The application was accepted for possible registration but on 10 September 2004, Americana International Limited (‘the opponent’), filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.
The opponent served and filed evidence in accordance with the Trade Mark Regulations 1995. The opponent’s evidence in support of the opposition comprised the statutory declarations of:
§ Kelvin Vidler dated 26 October 2006 and Exhibits KV1 – KV13;
§ Nichola Shanks (1) dated 1 November 2006 and Exhibits NS1 - NS10;
§ Nichola Shanks (2) dated 1 November 2006 and Exhibit NS-1 (being a statutory declaration of Hilton Seskin[1]);
§ Theo Karpathios dated 22 November 2006 and Exhibits TK1 and TK2; and
§ Nichola Shanks (3) dated 20 December 2006 and Exhibit NS1 (being a statutory declaration of Martin Haese).
[1] also filed as evidence in answer in the opposition to an application for removal for non-use of trade mark registration No. 588371
The applicant did not serve any evidence in answer.
It is noteworthy that some of the opponent’s evidence has also been filed in related proceedings between the parties, namely, an application by Americana International Limited for removal of trade mark registration no. 588,371(25) for the mark BENCH in the name of Suyen Corporation and an opposition by Americana International Limited to registration of trade mark application no. 989,448(25) for the mark BENCH (series of 3) in the name of Suyen Corporation.
The parties had been before me previously in relation to a request for directions by the opponent to consolidate this opposition with the other two matters referred to in the preceding paragraph[2]. I refused to consolidate them.
[2] Americana International Limited v Suyen Corporation [2007] ATMO 51 (24 August 2007)
This opposition was set down before me, a delegate of the Registrar of Trade Marks, for a Hearing on 20 September, 2007 in Melbourne. The applicant was represented by Greg Chambers, Solicitor and Patent Attorney with Messrs. Phillips Ormonde & Fitzpatrick. The opponent was represented by Julia Baird of Counsel, instructed by Messrs. Griffith Hack.
The Notice of Opposition listed additional grounds of opposition under the Act however, at the Hearing, Ms Baird indicated that she would restrict her submissions to sections 58, 59 and 60 and that the remaining grounds were abandoned.
Submissions and Reasoning
Section 58
Section 58 of the Act provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
In Computer Business Works Inc v Dylan Mark Johnston [2005] ATMO 14, Hearing Officer McDonagh observed:
“In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.
The proper comparison for substantial identity is side by side, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, at 414:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”
The opponent claims to be the owner of the trade mark BENCH. Before its section 58 case can succeed, it must show that the trade mark of the application and the trade mark BENCH are substantially identical when subjected to a side by side comparison.
A comprehensive overview of the case law can be found in Effem Foods Pty Ltd [1999] ATMO 80 where Hearing Officer Thompson considered:
“… sections of the Trade Marks Act 1995 which deal with substantial identity, or under which substantial identity has been considered. In particular, where substantial identity has been considered under, subparagraphs 44(1)(a), 44(2)(a), section 58, subparagraph 60(a), subsection 65(2), subparagraphs 83(1)(a), 100(2)(a) and (b), 100(3)(a) and (b), 102(1)(a), subsections 120(1) and (2), subparagraph 120(3)(b), subsections 124(1), 133(2), 146(2), and subparagraph 230(2)(b), or the analogues of these sections where they existed under the Trade Marks Act 1955, or preceding British and Australian Acts.
Under the above referred to sections of the relevant Acts, cases where substantial identity has been found include: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be 'substantially the same mark' to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, 'substantially identical' in Carnival Cruise Lines, supra.
To contrast the above decisions, the following trade marks have been found to be neither 'substantially the same mark' or 'substantially identical': "Otrivin" Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the delegate observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.
I can not agree with Ms Baird’s submission that the trade marks under examination are substantially identical. The applicant’s trade mark is a logo style mark including the word BODY in upper case, the two words are arranged above and below each other and there is a device element of sorts. I appreciate the submission that in the context of the goods, the word ‘body’ is non-distinctive, but that does not mean that the word is to be ignored in assessing the substantial identity of the trade marks. In my assessment they are not substantially identical. Accordingly, the ground of opposition under section 58 must fail.
Section 59
Section 59 of the Act states:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the
applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.
Note: For applicant see section 6.
Mr Chambers pointed to the use of the trade mark shown in Exhibit NS-2 to the first declaration of Nicola Shanks, an associate with the opponent’s representative patent and trade mark attorneys. Exhibit NS-2 comprises voluminous print-outs of all the pages from the applicant’s website, The website shows use of the trade mark, but it does not prove an intention to use the trade mark in Australia.
Ms Baird argued that there are several pieces of evidence which show that the applicant lacks an intention to use the trade mark in Australia. The website just mentioned does not refer to any presence in Australia. The applicant gives its address as 2214 Tolentino Street, Pasay City, Metro Manila, Philippines. The website carries information about online shopping for the applicant’s goods. Help in that regard is via a website enquiry or telephone, fax or mail enquiry to the applicant’s offices at the same Manila address. Terms and conditions of sale are governed by the laws of the Philippines. Any consumer complaints are to be made to the Manila office. The website includes a store locator. Stores are located in the Philippines, China, the Middle East and the United Sates. There is no mention of Australia anywhere on the website.
Nicola Shanks attests to enquiries she made to identify any trading presence by the applicant in Australia. She could find none. The opponent’s other declarants attest to there being, to their knowledge, no use of the trade mark in Australia in the period 1998 – 2006. Theo Karpathios was previously a director of High Jinks Clothing Pty Ltd (‘High Jinks’), incorporated in 1998. Mr Karpathios declares that High Jinks operated a retail clothing store in Crown Street, Sydney and from 1998 to 2003 imported British and European fashion brands including goods from the opponent which bore the BENCH trade mark. Mr Karpathios declares that he was never aware of any use of the BENCH trade mark by the applicant in Australia. Martin Haese is the managing director of Watsongate Trust, trading as Retail IQ, a business providing educational and training services to the retail sector. From 1999 to 2004, Mr Haese was CEO of Youthworks Group Pty Ltd, an importer and retailer of fashion clothing. Mr Haese attests to negotiations during that time with the opponent with a view to distribution in Australia of the opponent’s goods carrying the BENCH trade mark. Mr Haese declares that:
“as part of my work with Youthworks and Watsongate Trust trading as Retail IQ, I have kept up to date with fashion brands and labels in Australia. At the time of the aforementioned negotiations with Americana I was unaware of any products manufactured or sold by Suyen bearing the BENCH trade mark in Australia, or elsewhere. I am still unaware of any use of the BENCH or similar trade marks by Suyen in Australia”.
Mr Haese’s declaration is dated 15 December 2006.
Ms Baird submitted that by reason of their interest in the opponent and its BENCH trade mark, it could reasonably be inferred that any use in Australia of the trade mark by the applicant would have caught the attention of either Mr Kaparthios or Mr Haese.
Finally, Ms Baird argued that evidence from a trade mark opposition in the United States between the parties demonstrates no use in Australia and no intention to use the trade mark in Australia. The opponent’s US Trade Mark Application Serial No. 78/539,111 has been opposed by the applicant. The Notice of Opposition in those proceedings has been put into evidence. It is dated 23 March 2006. It gives a chronological account of the applicant’s store openings in the countries referred to previously in this decision. Paragraph 26 of the Notice states:
“With the resources available, Opposer initially concentrated on establishing in the Philippines its business under the trademark BENCH. Subsequently, Opposer also began addressing the export market involving other countries. This export expansion has included Saudi Arabia, Kuwait, UAE, the United States and the People’s Republic of China”.
Paragraph 32 of the Notice states:
“Opposer’s Marks are famous and distinctive, and they are well known to the public and to the trade based upon widespread marketing and advertising and the extensive sales in the Unites States and numerous other countries, including but not limited to The Philippines, Australia, Saudi Arabia, Kuwait, China and the United Arab Emirates”.
Paragraph 24 of the Notice states:
“Opposer extensively advertises its goods and services under the trademark BENCH in The Philippines and in other countries. Opposer advertises its BENCH goods and services in many ways including television, the Internet, radio, newspapers, magazines, outdoor signs, shop fronts, point-of-sale signs, brochures, pamphlets and handbills. ABS-CBN, the largest television network in The Philippines, has a branch station in San Francisco, California. This television company has also since 1995 operated an on-line retail store called STARRY STARRY in San Francisco that advertises and sells via cable and satellite television transmissions a range of Filipino goods. This STARRY STARRY television sales channel transmits its signal throughout the Philippines and to San Francisco and to Japan and through its various affiliated transmission facilities to most other Asia Pacific countries including via satellite to Australia where there are located substantial numbers of Filipino customers. This television and sales channel and online facility provides a mechanism for advertising and selling Opposer’s BENCH goods in many countries including, but not limited to, the United States”.
Ms Baird submitted that the two references to Australia in the US Notice of Opposition are excursive and do not touch on the critical question. Ms Baird argued that any intention to use the trade mark in Australia implied by the filing of the application for registration on 5 September 2003 is deflated by the lack of actual use of the trade mark in this country, coupled with the representations as to the applicant’s geographic reach of trade in goods bearing the trade mark from both its website and its US action against the opponent.
The applicant chose not to file evidence in answer. Mr Chambers stated that the onus is on the opponent to prove an absence of intention to use the trade mark (Aston v Harlee Manufacturing Company [1960] 103 CLR 391 at 401) and, for additional support, referred me to the cases of NSW Lotteries Commission v Novamedia BV 52 IPR 638, Torrag Pty Ltd v Pah Pty Ltd 70 IPR 349 and Amalgamated Television Services Pty Ltd v Clissold 52 IPR 207. I will turn to those cases later.
Three questions arise. First, how is the word ‘intends’ in section 59 to be understood? Secondly, what is required for the onus of proof to shift to the applicant? Thirdly, if the onus does shift, has the failure of the applicant to adduce any evidence in answer left it unable to discharge the burden which then rests upon it?
What intention?
In the case of McDonald’s Corporation v McBratney Services Pty Ltd [2006] ATMO 71 (2 August 2006), Hearing Officer Windsor wrote:
It is accepted that the making of a trade mark application is prima facie indication of an intention to use.[3] According to section 27 of the Act[4], the requirements for a person to apply for a trade mark are that the person claims to be the owner of the trade mark, and there is either use already taking place, or an intent to use in the future, by the person himself or by another person under authorization. For the purposes of considerations in respect of, for instance, sections 44(3), 44(4), 58 and 60, the filing date is indeed the relevant date.
Section 59, however, is written in the present tense. The effect of this difference in tense has been considered in a number of recent decisions. Hearing Officer Williams, for example, in Sapient[5] said the following:
“…it is a ground written in the present tense and looks at the present state of the intention of the applicant. The introduction of such a ground is consistent with the creation of s 108, which had no counterpart under the 1955 legislation. Under s 108, a party defending an application may well be a different entity from the one who initially filed the application. Thus, section 59 deals with current defects in intention to use, interlocking with s 58, under which the intention and facts at the time of filing are the relevant elements”.
The operation of this section, therefore, is a continuing one. Since the section is written as an allowable ground of opposition, the relevant date would appear to be the date on which the opposition was mounted. It is appropriate for me to consider the applicant’s intent to use its trade mark as at the date the notice of opposition was filed…”
[3] Aston v Harlee Manufacturing Co (1960) 103 CLR 391
[4] The relevant portions of section 27(1) reads: A person may apply for the registration of a trade mark in respect of goods and/or services if:
[5] Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 31
What is clear is that the intention of the applicant is an ongoing intention not limited by its state of mind at the filing date of the application. Less clear is the proposition that the relevant date is the date the Notice of Opposition was filed. Other cases, some of which are referred to later, suggest that the relevant date is the date of the hearing, but it seems to me that the correct “cut-off” date is when the last evidence is filed. In some cases, for example where further evidence is admitted at a hearing, that date might be the hearing date. In very rare cases, it might even coincide with the filing of the notice of opposition, but what seems to me to be critical is the time when the record of admissible evidence closes.
Strength of presumption
As in the McBratney case, Mr Chambers relies upon Aston v. Harlee for the proposition that a trade mark application is indication of an applicant’s intention to use the mark. In that case it was said:
“There is another element mentioned by Dixon J. in the Shell Co.'s Case (1949) 78 CLR, at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s. 72, the unused mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars: the effect of In re Registered Trade-Marks of John Batt & Co. (1898) 2 Ch 432; (1899) AC 428, is, I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J. and the Court of Appeal”. (at p401)

The application is thus prima facie evidence of the intention to use the trade mark. Ms Baird made the submission that since every trade mark application carries with it a presumption that the applicant intends to use the trade mark, that presumption must at least be readily rebuttable, else section 59 has no work. I agree.
Use is a cornerstone of trade mark law. It informs virtually every important aspect of it and is fundamental to a trade mark registration system, such as ours, which favours the first to use over the first to file.
Within that framework, non-use is the exception. As far back as the case of In re Hudson's Trade Marks (1886) 32 ChD 319, Cotton L.J. said: “The difficulty is this: Is a man to be considered as entitled to the use of any trade mark when he has never used it at all?”(at p.320). That paradox is inherent within our law. The earliest registration systems were intended to provide a statutory scheme to recognize and provide a public register of trade marks already in use. The thirst of the Industrial Revolution demanded a system which somehow catered for trade marks soon intended for use. The resulting compromises gave rise to a number of fictions which survive in our modern law. Old Acts, for example, spelt out that registration is equivalent to public use[6], a construct to which we still adhere.
[6] Trade Marks Registration Acts 1875-77, section 2:
Characteristics of registered trade-mark
A trade-mark must be registered as belonging to particular goods, or classes of goods; and when registered it shall be assigned or transmitted only in connection with the goodwill of the business concerned in such particular goods or classes of goods, and shall be determinable with such goodwill, but subject as aforesaid registration of a trade-mark shall be deemed to be equivalent to public use of such mark.
In the Introduction to their 1938 book, The Trade Marks Act 1938 with Annotations[7], Bray and Underhay write:
“The task of amending the Trade Marks Acts 1905-1919, was one of considerable difficulty. The earlier and existing legislation had been directed mainly to establishing a system of rights, acquired by the fact of registration, but so regulated by the statutes as to approximate to the rights (now generally referred to as the “common law” rights) which a trader could acquire by use. The statutory rights, though more easily established and more definite in effect, were thus supplementary and similar in character to the common law rights.
This close correspondence made it possible to employ in the statutes expression which were not very precise, but which could usually be readily understood by those familiar with the pre-existing common law.”
… …
“it is mainly against those provisions of the Trade Marks Acts which were directed to assimilating the statutory to the common law rights that the criticisms of owners of valuable trade marks were levelled. Such persons asked for a more effective monopoly and wider facilities in acquiring and dealing with it. In going some way to meet their wishes, the Legislature has created statutory rights which certainly diverge from, and in some cases may conflict with, the principles applied in determining the common law rights”.[8]
[7] F. E. Bray and F. G. Underhay, Sweet & Maxwell, London
[8] And so it was that the words, “used or proposed to be used” appeared for the first time in section 17 of the Trade Marks Act 1938.
It is not without significance that the United States, known for its progressive trade mark jurisprudence, resisted until relatively recent times, the amendment of their laws to allow for so-called “Intent-to-Use” applications.
Set in context, it can be seen that unused trade marks occupy a frail position in the law. In the case of Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254, it was said:
“It is for an applicant who seeks to have a mark removed to prove his case. The onus is on him to show an absence of use in good faith during the period. If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove. Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user. But if evidence be given for the respondent to controvert the applicant's prima facie case, then when all the evidence is complete the question is still, has the applicant proved his case? I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it.” (at p259)
That was a case involving section 23(1)(b) of the Trade Mark Act 1955 and an action for removal of a registration for non-use. Nevertheless, under that now repealed legislation, the removal applicant bore the initial onus to show non-use and so stood in a similar position to the opponent here.
So the presumption the applicant enjoys of an intention to use the trade mark deriving solely from the act of filing the application is a prima facie presumption, which can be rebutted by slight evidence.
Shift of onus
An opponent can not know the mind of an individual applicant, still less the mind of a corporate applicant. Like proof in any other cause under civil or administrative law, the intentions or lack thereof of an applicant must be assessed on the balance of probabilities and, as in other matter under civil or administrative law, the onus of proof can shift (Pfizer Products Inc v Karam (2006) 70 IPR 599 at [26] per Gyles J; Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2004) 61 IPR 130 at [12]-[13]).
In the case of Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430, Hearing Officer Forno said that:
“…the mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application. …

I believe that the words [in section 55] “having regard to the extent (if any) to which any ground on which the application was opposed has been established” make it clear that the onus is on the opponent to establish its grounds of opposition before there can be any onus on an applicant to refute it. Here, the opponent has not served any evidence to support its grounds of opposition and the applicant has not served any evidence in answer to the opposition”.
I agree, save for the Hearing Officer’s opinion that the onus is on the opponent to establish its ground of opposition before there can be any onus on an applicant to refute it. As a matter of law, I think that proposition is simply incorrect.
In the case of Phillip Morris Products SA v Sean Ngu [2002] ATMO 96, Hearing Officer McDonagh stated, against the backdrop of prior contests between the same parties, that:
“I consider that the evidence of Mr Williams goes very much to section 59 of the Act and should have put the applicant on notice that section 59 was an issue that would be addressed by the opponent at the hearing. The applicant, in his letter to Spruson & Ferguson, above, made various allegations that he was preparing for use of the opposed trade mark. The purported preparations are ones which would be easy to substantiate via documentation of negotiations with the Australian Taxation Office, substantiation of the referred to market research and so on. For whatever reason, the applicant has, when pressed, not provided evidence to support his claims.”
In Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [op. cit.], Hearing Officer Williams said, again in the context of prior litigation between the protagonists[9]:
“I do not say that Sapient has proved its case - it does not (sic.) have the unenviable job of "proving a negative" - but if "slight evidence will suffice[10]" then it has done sufficient to shift the onus onto SAP Ag, requiring it to validate its intention”.
[9] a related decision of the Federal Court and the decision of an appeal from that decision preceded the matter before Hearing Officer Williams made his decision.
[10] Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited, 116 CLR 254 at 258
In Wal-Mart Stores, Inc v Ozark-London Ltd [2004] ATMO 33, Hearing Officer Thompson said of the Sapient case:
“Taken in totality, an inference could be drawn from the opponent’s evidence before Mr Williams that the applicant had filed the application for tactical or strategic reasons as a part of its dispute with the opponent. The applicant did not present evidence or argument to refute that inference. Mr Williams said:
The evidence of use that has been filed will thus support an inference that SAP Ag's past use will continue and, further, that the present application was filed for tactical reasons only and not supported by any genuine intention to commence bona fide commercial use”.
In the later case of Danjaq, LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18, Hearing Officer Thompson was, as in this case, confronted with a section 59 claim where evidence in support was served and filed but there was no evidence in answer. There were four aspects to the evidence:
v Use of the trade mark was unlikely because of the limited resources of the applicant and a Court's prior observations about the trade of the applicant;
v The applicant had a record of applying for trade marks similar to those of others but then not seriously prosecuting them;
v The applicant's cybersquatting activities and pattern of trade mark applications give rise to an inference that the applicant hoped to profit by selling any registrations;
v The applicant was uncontactable either at its notified address for service or at its notified business address.
In that case, Hearing Officer Thompson asked if adverse inferences could be enough to establish a ground of opposition in the absence of any evidence from the applicant. In reaching his decision he relied partly on the words of Kitto J in the High Court case of Jones v Dunkel (1959) 101 CLR 298 at 312:
“(i) that the absence of the defendant Hegedus as a witness cannot be used to make up any deficiency of evidence; (ii) that evidence which might have been contradicted by the defendant can be accepted the more readily if the defendant fails to give evidence; (iii) that where an inference is open from facts proved by direct evidence and the question is whether it should be drawn, the circumstance that the defendant disputing it might have proved the contrary had he chosen to give evidence is properly to be taken into account as a circumstance in favour of drawing the inference”.
Hearing Officer Thompson concluded that the evidence from which the adverse inferences could be drawn was
“unchallenged and unrebutted by the applicant who could have readily addressed them in its own evidence. The opponent's evidence is cogent, relevant and drawn from the records of ASIC, the Federal Court and of the Trade Marks Office. The evidence thus has a high provenance and credibility in a situation where, as Hearing Officer Williams, in the Sapient decision said, slight evidence should suffice to shift the onus onto the applicant and the applicant has not responded. I therefore accept the inferences in the opponent's evidence and I am satisfied that the applicant does not intend to use the trade mark.”
In Wal-Mart Stores, Inc. [op. cit.], it was observed that:
“The reported cases have distinct essentials. In common between them there is, in the opponent’s evidence, inferences of some element of lack of good faith intention in the application. In Sapient, it was the making of an application for purely strategic purposes – for no other reason than to thwart a perceived rival which was, in Mr Williams’ words, “not supported by any genuine intention to commence bona fide commercial use”. In Danjaq, it was an apparent attempt at trade mark piracy. In Ngu, it was the ‘bridging over’ over two very well known trade marks”.
… …
“An additional essential to the Registry cases is that, in each (Sapient, Danjaq and Ngu), the totality of the opponent’s evidence put the applicant on notice that section 59 would be canvassed at the hearing”.
I return to the cases to which Mr Chambers referred: NSW Lotteries Commission v Novamedia BV 52 IPR 638, Torrag Pty Ltd v Pah Pty Ltd 70 IPR 349 and Amalgamated Television Services Pty Ltd v Clissold 52 IPR 207.
In the NSW Lotteries Commission case, the opponent argued that the applicant’s failure to provide any evidence of use or intended use, together with its lack of an Australian address for service, was enough to engage section 59. Senior Examiner Ryan cited Aston v Harlee and said that “without some substantiation, the ground under section 59 remains a mere allegation. A trade mark applicant may choose to provide evidence in response to such an allegation, but it may equally choose not to do so”.
In the Torrag case, Hearing Officer Williams said that:
“the applicant is under no onus to demonstrate such an intention unless and until Torrag brings in evidence to support the ground in the first place.” … … “taking the evidence as a whole, the best that can be said is that there is no evidence of a positive intent to use. However, and fatally for Torrag under this ground, this is not sufficient to support an inference of lack of intent.”
In the Amalgamated Television Services case, Hearing Officer Forno wrote:
“[The opponent] has said that the applicant had failed to rebut the allegation of a lack of intention to use the mark and had also not explicitly stated such an intention. However, the applicant, by applying for the trade mark, has made the claim that at that time, she was using, or intended to use, the trade mark on the nominated goods or services - see s.27(1)(b) of the Act, as laid out earlier in the reasons for this decision. It follows that the Registrar, by accepting the application for a trade mark under s33 of the Act, was prima facie satisfied that there existed such an intention to use the trade mark on the goods applied to be covered. For an opposition to be successful on this ground, the Registrar must be convinced that the applicant did not have an intention to use the trade mark as at the date of opposition.
The opponent has not done anything to show the applicant's intentions were other than to use its mark, as at the date of opposition, and I therefore must find that the opposition does not succeed under this section.”
From those collected decisions, the following principles can be distilled:
v filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee et. al.);
v that presumption is rebuttable ( Sapient; Danjaq);
v once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);
v where, under the Trade Mark Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing);
v a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co; NSW Lotteries Commission; Torrag);
v inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);
v prior or concurrent actions between the same parties can be a source of inference (Phillip Morris; Sapient; Danjaq);
v non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);
v failure to respond to an allegation can draw an adverse inference (Jones v Dunkel);
v under section 59, it is the applicant who is best placed to know its own business and show evidence of intent when it is properly challenged (Danjaq; Wal-Mart Stores).
Applying those principles to the facts, it can first be said that the apparent non-use of the trade mark in Australia is not evidence that the applicant lacks an intention to use the trade mark here. I do not think, by itself, it even invites any such inference.
The same can be said of the evidence of Nicola Shanks so far as her enquiries failed to uncover the applicant as having any discoverable trading presence in Australia. Again, the same holds for the declarations of Mr Kaparthios and Mr Haese.
I am conscious so far as possible not to predetermine any of the issues between the parties in relation to the pending action brought by the opponent for removal of the applicant’s registration no. 588,371 for alleged non-use. For that reason, I do not think that it is required of me for the purposes of this section 59 analysis to make any absolute finding as to whether the trade mark has been used in Australia or not. Whilst a section 59 ground of opposition rests on a tacit premise that the trade mark has not been used in Australia, the rare circumstance might arise where a trade mark was actually used at some point in this country, however the applicant had no intention to use it or, more realistically, lost the intention to use it.[11] I think it sufficient that I refer only to the evidence to which I was led by the parties as that which is indicative of the applicant’s intentions.
[11] Indeed, the case report of Aston v Harlee suggests that very scenario. See later discussion.
The applicant’s website makes no reference to Australia. There are no listed stores in Australia. The website may, as Ms Baird submitted, provide evidence as to the geographic reach of trade in goods bearing the trade mark, but once more it does not speak for the applicant in regard to its intentions for Australia.
The US Notice of Opposition is more serious evidence. It is a legal document. It was filed by the applicant’s US attorneys. It is dated 23 March 2006 and so post-dates the filing of the Notice of Opposition in this matter by almost two and a half years. Whilst Australia is clearly not the focus of the US opposition, the applicant [opponent there] felt it was important to lay out the international development of its business in detail.
I agree with Ms Baird that the two incidental references to Australia in the US Notice of Opposition do not illuminate the applicant’s intentions for the trade mark in this country. I observe in the evidence indications that the parties have been in dialogue with each other at different points between the dates of the two Notices of Opposition with a view to global settlement. I note that the opponent filed its application to remove Australian trade mark registration no. 588,371 on 11 August, 2004, more than 18 months before the date of the US Notice of Opposition. Against that landscape, the applicant had nothing to say of plans for Australia in the US papers. Within the framework of the case law analyzed above, I would regard that omission as serious enough for an adverse inference to be drawn.
Further applying the case law, it can be said that although the section 59 ground of opposition may have been one of many grounds originally relied upon, the applicant must reasonably be assumed to have expected it to have been pressed by the opponent if only for the reason that the applicant faced a non-use cancellation action in respect of a directly related trade mark. That application for cancellation had been filed one month earlier than the Notice of Opposition in this case. The applicant is professionally represented and any astute advisor would understand that evidence such as that of the US Notice of Opposition is as relevant, if not more so, to section 59 as it is to the non-use action. In short, allegations of non-use are central to the opponent’s complaints and there can be no realistic suggestion that the applicant was somehow ambushed by the section 59 arguments.

Additionally, as in Sapient, an inference can be drawn from the evidence that the applicant had filed the application for tactical or strategic reasons as a part of its larger dispute with the opponent. Its registration no. 588,371 is under siege for alleged non-use. The trade mark of that registration is the word mark, BENCH. The class 25 goods are virtually identical to those of the application. The pattern repeats with the applicant’s series trade mark application no. 989448(25) for BENCH (series of 3), filed 17 February, 2004.
These adverse inferences are not of the same degree as in Danjaq, but as was correctly noted by Hearing Officer Williams in Sapient, the opponent does not need to prove its case, only do enough to shift the onus of proof to the applicant. I find that in this case the opponent has done just enough.
Discharge of onus
It is worth reminding ourselves that in the Aston case, upon which Mr Chambers and other have placed store, the evidence showed that:
“…from its inception Harlee had intended to operate with the mark "Tastee Freez" throughout ‘the entire world including Australia’, that a large number of ‘inquiries’ were ‘received from Australia’, and that ‘steps were taken’ by Tastee Freez International Ltd. in 1957 ‘for the issuance of franchises in Australia’”.
… …
“I am not satisfied that Aston, at the time when he lodged his application, had no intention of using the mark. … [a]t any rate, I find myself unable to say that he did not. He said that he did, and that there was in fact about the end of 1956 some slight user of the mark, which ceased on the advice of his patent attorneys.” (at p403)
Weighting against the applicant is its decision not to respond to the opponent’s evidence and consequently the complete absence of any positive statement about its intention to use the trade mark in Australia.
I find that the applicant has not discharged the onus and accordingly the section 59 ground is established.
Decision
The opposition succeeds since a ground of opposition has been established. The application is refused.
Costs
I order that the applicant pay the opponent’s costs according to the official scale.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
31 January 2008

(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be

constituted with a view to the use by the body corporate of the trade mark in relation

to the goods and/or services. …

[2008] ATMO 4

31 January 2008