Americana International Limited v Suyen Corporation [Sec=Unclassified]

[2009] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by AMERICANA INTERNATIONAL LIMITED to registration of trade mark application 989448 (25) – BENCH ; bench ; bench/ - filed in the name of SUYEN CORPORATION.

Delegate:	Bianca Irgang
Representation:	Opponent: Julia Baird, Senior Counsel, instructed by Griffith Hack, Sydney. Applicant: Ben Fitzpatrick of Counsel, instructed by Phillips Ormonde & Fitzpatrick Lawyers, Melbourne.
Decision:	2009 ATMO 86 s.52 opposition – s.58: opponent’s trade mark is substantially identical to the opposed trade mark – on the balance of probabilities the opponent has demonstrated first use of the trade mark on clothing, headgear and footwear excluding shoes and boots – s.59: applicant has discharged any onus upon it so ground not made out – registration to proceed if applicant requests amendment to class 25 – costs awarded against the applicant.

Background

1. Suyen Corporation (‘the applicant’) filed application number 989448 on 17 February 2004 in class 25 of the International Classification of Goods and Services (‘Nice’ classification). Details of the application are set out below.

   Trade mark[1]:  BENCH ; bench ; bench/

   Application Number:  989448

   Priority Date:            17 February 2004

   Class 25:Clothing including underwear and outerwear; headwear including hats and caps; footwear including socks and shoes

   [1] Strictly, the application is in respect of three trade marks, as shown (s. 51). I will hereafter refer to these, singly or collectively, as the BENCH trade mark, in the singular, for convenience.

2. Americana International Limited (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of this BENCH trade mark on 16 September 2005. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 17 July 2009. The applicant was represented by Ben Fitzpatrick of Counsel, instructed by Phillips Ormonde & Fitzpatrick Lawyers. Julia Baird Senior Counsel, instructed by Griffith Hack, appeared for the opponent via telephone conference.

4. I note that the opponent’s evidence in support was also filed in relation to other proceedings between the parties. It was filed in proceedings where Americana International Limited made an application by for removal of trade mark registration no. 588371 for the mark BENCH in the name of Suyen Corporation. This same evidence was also filed in the opposition by Americana International Limited to registration of trade mark application no. 968981 for the trade mark BENCH BODY which was decided by Hearing Officer Lyons on 31 January 2008 and is currently the subject of an appeal to the Federal Court[2].

   [2] Americana International Limited v Suyen Corporation (2008) ATMO 4

   Grounds of Opposition

5. The Notice nominated most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’). However, only those grounds under s. 58 and s. 59 were pursued at the hearing. For the sake of completeness I say now that the grounds not pressed have not been established.

6. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[3] His findings upon that issue, arrived at after a consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[4].

   [3] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

   [4] [2009] FCA 891, para 22-27

   Evidence

7. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Kelvin Vidler	Chief Executive Officer for the Opponent.	26 October 2006	KV-1 to KV-13
Nichola Shanks[5]	Associate for Griffith Hack	1 November 2006	NS-1 to NS-10
Nichola Shanks	Associate for Griffith Hack	1 November 2006	NS-1 (a declaration by Hilton Seskin)
Theo Karpathios	Director of High Jinks Clothing Pty Ltd	22 November 2006	TK-1 to TK-2
Nichola Shanks[6]	Associate for Griffith Hack	20 December 2006	NS-1 (a declaration by  Martin Haese)
Evidence in Answer
David Bertram Fitzpatrick[7]	Legal Counsel for the Applicant	22 January 2008	DBF 4 to DBF 20 (containing the earlier Fitzpatrick, N. Lim & Arboleda declarations)
Amelita Fabro Jayona	Sales Coordinator for Solid Trading	5 June 2008	AFJ-1 to AFJ-12
Francisco Breva	Maintenance assistant with Railcorp.	5 June 2008	FB-1A to FB-7
Pacita Breva	-	13 June 2008
Magda Khalil	Lawyer of Phillips Ormonde & Fitzpatrick Lawyers	17 June 2008	MK-1 to MK-6
Roderick Anton Frank Saunders	Partner of Phillips Ormonde & Fitzpatrick Lawyers	17 June 2008	RAFS-1 (containing still more declarations by Fitzpatrick, Shanks & N. Lim)
Bryan Lim	Vice President for Business Development at Suyen Corporation	23 June 2008	BL-1 to BL-11
Roderick Anton Frank Saunders	Partner of Phillips Ormonde & Fitzpatrick Lawyers	27 June 2008	RAFS-2
Evidence in Reply
Larisa Vella-Xuereb	Private Enquiry Agent for Rumore & Associates Pty Ltd	18 December 2008	LVX-1
Nicola Winifred Scheepers	Principal of Griffith Hack	24 December 2008	NWS-1 (the 2nd Hilton Seskin declaration)
Larisa Vella-Xuereb	Private Enquiry Agent for Rumore & Associates Pty Ltd	2 February 2009	LVX-2

[5] For convenience I will refer to this declaration as the Shanks #1 declaration.

[6] I will refer to this declaration as the Shanks #3 declaration.

[7] I will refer to this declaration as the Fitzpatrick #1 declaration.

1. Counsel for the applicant, Ben Fitzpatrick, has also sought to rely on a statutory declaration made by Amelita Fabro Jayona on the 31 August 2008. However, I have not considered this statutory declaration when making my decision as it was served out of time and the applicant did not apply for permission to serve and file further evidence. This was despite being advised of the situation by a delegate on the 26 November 2008.

   Evidence in Support

2. The evidence in support demonstrates that a UK-based company, Westworld Retail, established its ‘BENCH’ branded men’s clothing line, including headgear, in the mid 1990’s. In 1998 Americana and Westworld Retail merged into a single company that currently owns the BENCH and HOOCH brands and is the opponent in these proceedings. The use of the opponent’s BENCH trade mark was extended in 1998 to include a range of women’s clothing and headgear. In 2002 the opponent commenced using its BENCH trade mark on footwear, sunglasses and eyewear.

3. The report from Information Edge in exhibit NS-9 of the Shanks #1 declaration demonstrates, through a number of news articles, a rough time-line for the expansion of the opponent and its product distribution. In particular, page 25 of the report states that as of 12 May 2001 the opponent had 160 stockists in the UK and 30 in Germany and the USA. There is no mention of the opponent expanding their interests into Australia. Rather, it appears that the opponent’s main plans for the expansion of its BENCH brand were focused on Germany, the EU and the USA.

4. However, the opponent has provided statutory declarations and evidence from independent third parties which indicate that the opponent’s ‘BENCH’ branded clothing has been made available for purchase by consumers through retail stores located in Australia. Companies such as High Jinks Clothing Pty Ltd and Next Athleisure Pty Limited have sold the opponent’s ‘BENCH’ clothing within Australia since as early as 1999.  

   Evidence in Answer

5. The evidence in answer states that the Philippines-based company Suyen Corporation began operations in 1985 and commenced using the BENCH trade mark on clothing in Manila in 1987. The evidence demonstrates that that the applicant slowly but steadily developed and continues to develop a significant reputation in its BENCH trade mark within the Philippines expanding into the foreign markets of Saudi Arabia, Kuwait, UAE, China and the USA.

6. Further to this, the applicant has received a number of awards and has been recognized in particular for its marketing and advertising campaigns. These awards included a World Class Retailer Award from the Philippine Retailers Association and the Department of Trade and Industry in 1997 and a World Medal at the New York Festivals of TV and Cinema Advertising in 2004.

7. The applicant established a website in 1998 and has advertised and sold its products through this medium to date. The website is not directed towards Australian consumers and, as at 2006, the store locater did not list Australia. It does appear that Australian customers would be able to purchase BENCH branded clothing through this website. The Statutory Declaration of Magda Khalil (‘the Khalil declaration’) and accompanying exhibits demonstrate that in June 2008 Ms Khalil purchased a single piece of underwear through the applicant’s website. She paid $4.32 USD for the item and $46.00 USD for the postage of that item to Australia.

8. All of the advertising figures provided by the applicant are in American dollar approximations and relate to world-wide advertising expenditure since 1999. The same is true of the value of clothing sold under the BENCH trade mark. These figures relate to world-wide sales dating from 1993.

9. The applicant asserts that clothing bearing its BENCH trade mark has been available for sale in Australia since 1990. According to the statutory declaration made by Nenita Lim (which is contained in Exhibit 4 of the Fitzpatrick #1 declaration), when Fransisco Breva and his wife Pacita ‘Baby’ Breva emigrated from the Philippines to Australia in 1989 there was an agreement in place between them and the applicant. It is asserted that the agreement was that the applicant would export BENCH branded goods including clothing to the Brevas who would in turn offer the goods for sale in Australia. However, written agreement to this effect has not been provided in the evidence.

10. The applicant’s evidence does establish that the Brevas settled in Australia and then opened and operated a small general store in Blacktown near Sydney from 1990 until 1993 when they closed their store and sought other employment. The applicant asserts that the Brevas sold BENCH clothing through their retail store until it closed and that after this the Brevas continued to sell BENCH clothing on a part-time basis from their home.

11. It is further asserted that the Brevas have visited the Philippines approximately once a year since around 1993/4 and purchased BENCH branded clothing at wholesale prices from Nenita Lim. It is also alleged that the Brevas returned to Australia with these goods and then sold them at a profit to individual customers including friends, relatives and Filipinos living in Australia who had heard by word of mouth that the Brevas sold BENCH branded clothing. However, once again there are no documents in the evidence which support the claims that the Brevas ever sold BENCH branded clothing in Australia before 2004.

12. The Statutory Declaration of Fransisco Breva (‘the Breva declaration’) states that when he and his wife emigrated to Australia it was viewed as a good opportunity to introduce the BENCH brand into Australia. Mr Breva asserts that he discussed the registration of the BENCH trade mark with the applicant and then arranged the trade mark registration on behalf of the applicant.

13. It is a matter of public record that on the 14 October 1992 the applicant sought, and having met no opposition, obtained registration of trade mark no. 588371 for the word BENCH in class 25 (which has previously been and currently is the subject of non-use removal proceedings). The legal firm Collison & Co of Adelaide, South Australia was listed as the applicant’s address for service at the time of that trade mark application. There is no documentation supporting Mr Breva’s assertion that he organized the trade mark registration on behalf of the applicant in order for the applicant to sell its clothing in Australia.

14. The applicant has also provided in its evidence in answer the details and evidence it filed when its trade mark registration no. 588371 (‘TM 588371’) had non-use proceedings brought against it by Saul Bliss (‘Bliss’) on 26 August 2002. This non-use proceeding was withdrawn by the non-use applicant. The relevance of the applicant’s (then opponent) evidence filed in those proceedings (which has now been filed in these proceedings) is debatable. However, the applicant is seeking to rely on this earlier registration, TM 588371, as establishing both the applicant’s intention to use the BENCH trade mark in Australia and as being evidence of the applicant’s first use of the BENCH trade mark in Australia.

    Evidence in Reply

15. The opponent’s evidence in reply includes two Statutory Declarations made by Larisa Vella-Xuereb, a private inquiry agent, accompanied by exhibits which attempt to cast doubt on the applicant’s assertions regarding the Brevas and sales of its BENCH branded clothing in Australia. This evidence infers that the family home of the Brevas does not engage in any noticeable retail trade and that other retailers/distributors named by the applicant as having sold its BENCH branded clothing are either not contactable or not engaged in the business of selling clothing. It is also asserted that the staff employed at some of these stores have no knowledge of the store ever selling clothing, much less BENCH branded clothing. 

    Discussion

    Ownership – section 58

16. S. 58 of the Act provides:

    Applicant not the owner of the 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.

1. It is well established that the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner. For the requirements of the s. 58 ground of opposition to be met, the opponent must demonstrate:

   ·    that the respective trade marks of the applicant and opponent be either identical or substantially identical [8],

   ·    that the respective goods of both parties be the ‘same kind of thing’ [9]

   ·    that the opponent has the earlier claim to ownership based on use prior to whichever is the earlier of (a) the application to register and (b) any actual use of the mark by the applicant[10].

   [8] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

   [9] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

   [10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

2. The parties are in agreement that the trade marks are substantially identical and have not disputed that their respective goods of interest are what may fairly be described as ‘the same’. I agree. A comparison of the opponent’s BENCH trade mark and the applicant’s series of trade marks BENCH ; bench ; bench/ shows that they are substantially identical according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[11]. Consequently, I am satisfied the first two requirements to establish a ground of opposition under s. 58 have been met.

   [11] (1963) 109 CLR 407 at 414.

3. In order to establish the last requirement of s. 58 it is up to the opponent to demonstrate that they have used their substantially identical BENCH trade mark in Australia before the earlier of either the priority date of the opposed trade mark application or any actual use of the trade mark by the applicant in Australia. As pointed out by Mr Fitzpatrick, for the purposes of demonstrating ownership the first use need only be a small amount[12].

   [12] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 (Jacobs J).

4. To this end, the evidence provided by both parties is voluminous but somewhat repetitive in nature and has required very thorough consideration. It is clear that neither party has enjoyed a well documented past prior to late 2003 and early 2004. The opponent has explained this lack through the introduction of a new computer system due to a management buyout. This management buyout is well documented by news articles contained in exhibit NS-9 of the Shanks #1 declaration.

5. The applicant has not provided an explanation. While the applicant has asserted that BENCH branded clothing has been sold to Australian consumers by the Brevas since as early as 1990 the opponent’s counsel, Ms Baird, is correct in pointing out that these assertions of early use have not been substantiated by any contemporaneous records within the evidence before me. This is despite the applicant being a well established and recognized Philippines business operating for over 20 years and having significant world-wide sales figures.

6. The Breva declaration states that the Brevas did not retain records as their purchases were arranged directly with Nenita Lim (Pacita ‘Baby’ Breva’s sister) during their visits to the Philippines once a year since around 1993/4. However, the earliest dated receipts which have been provided as exhibits to the Breva declaration are dated in August of 2006 and do not appear to relate to BENCH branded clothing, headgear or footwear.

7. The applicant does not appear to have kept any of the records of any earlier transactions between themselves and the Brevas either. This is despite Ms Lim’s declaration that she could personally confirm that the applicant made exports of BENCH clothing to the Brevas in Australia in every one of the years from 1994 to 1999 inclusive. There is no documentation to support this claim, however, the Breva declaration does correct earlier information and concede that the Brevas did not sell footwear or socks during this time. I may infer from this distinct lack of early records that the volume of goods the applicant apparently sold and exported to the Brevas from 1990 until 2006 did not consist of sufficient number and value to merit transaction records, tax invoices, receipts, shipping or postal receipts or payment confirmations.

8. Mr Fitzpatrick referred me to the applicant’s evidence filed in relation to the removal application filed by Bliss against TM 588371 in 2002. Mr Fitzpatrick asserts that the evidence the applicant filed in those earlier proceedings established that the identical BENCH trade mark had been used on clothing since as early as 1992. However, I draw no such conclusion from the evidence. That particular non-use application against TM 588371 was withdrawn by Bliss before the applicant’s (the opponent in those proceedings) evidence of use was tested which was, perhaps, fortuitous for the applicant.

9. I turn now to the comments put forward by Mr Fitzpatrick regarding TM 588371 and his argument that in the absence of relevant use, the act of filing a trade mark application in Australia confers ownership in respect of the claimed goods and services. In other words, the applicant is attempting to claim first or prior use of the opposed trade mark based upon the statutory rights conferred by its prior registration for the substantially identical TM 588371. However, I cannot accept this basic premise.

10. Mr Fitzpatrick argued this situation arises out of established case law and referred me to the authorities in Shell Company of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601 at 627 – 628; Colorado Group Limited supra; Re Hudson’s Trade Marks (1886) 32 ChD 311, 319; Seven-Up Co v O T Ltd (1947) 75 CLR 203; Malibu Boats West Inc v Catanese (2000) 51 IPR 134 at 25; Ford Motor Company v Hino Motor Sales Australia Pty Limited (2002) ATMO 75.

11. I refer to the decision of Hearing Officer Williams in The Sunraysia Natural Beverage Company Pty Ltd v Ocean Spray Cranberries, Inc[13] where a similar issue regarding the previous application of a substantially identical trade mark was considered. Hearing Officer Williams considered the argument with reference to the authority of Shell v Rohm and Haas, supra, and confirmed that such a claim to proprietorship is a claim to registration, but nothing more than this. It carries with it an assertion that a limited property right exists under the Act (see s. 21) but does not suggest that a new property right has been created under common law by the making of an application. Similarly, the decision in PB Foods v Malanda Dairy Foods[14] held that the scheme of the Act is not proprietorship by registration but rather registration of proprietorship.

    [13] [1996] ATMO 53; 36 IPR 663 (10 October 1996)

    [14] [1999] FCA 1602

1. In Ford Motor Company v Hino Motor Sales Australia Pty Limited Hearing Officer Murray observed:

   In The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, Dixon J said, at page 627:

   The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration. (Emphasis added.)

   Ford did not strictly apply for the registration in the first instance - trade mark no. 760175 was unusually created as a result of a partial assignment to Ford of a much older registration. In any event, as Elkington, Hall and Kell, [Trade Mark Law in Australia, 2000], say of ownership disputes, at page 77:

   The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing". (Emphasis added.)

2. While the existence of that registration represents a definite anomaly in the surrounding circumstances of this case, it is not the subject of this opposition and does not prove use of the BENCH trade mark prior to the filing of this opposed application. Therefore, I propose to take no further notice of it here, save to consider the evidence of use in as far as it has relevance to this opposed application.

3. I say now, in relation to these current proceedings before me, I am not satisfied by the aforementioned evidence that the applicant has demonstrated use of its BENCH trade mark on clothing prior to the filing date of this opposed application. The evidence does establish that clothing bearing the BENCH trade mark was sent to Mr Fitzpatrick in February 2003 as evidence in those earlier removal proceedings against TM 588371. However, there is nothing in that evidence which establishes that any actual bona fide commercial sale of BENCH branded clothing took place in Australia before the priority date of the presently opposed application.

4. The clothing items in exhibit 5 of the Fitzpatrick #1 declaration clearly bear some of the applicant’s various trade marks. However, of the six individually identified items of clothing only one has a swing tag or price attached. From the photographs it appears the other items are well used and of severely limited variety for a retailer/distributor apparently in the business of selling BENCH branded clothing even part time for a number of years. Any inferences drawn from this evidence are unlikely to prove the applicant has used its BENCH trade mark in Australia since 1992 as asserted by the declarations of Mr Arboleda and Ms Lim.

5. As a whole the applicant’s early evidence demonstrates a propensity towards approximations and ambiguity in regards to specific dates, sales figures, expenditure and the exact nature of the items to which the trade mark has been applied. This makes it difficult to discover from the evidence, any firm time-line and pattern of commercial use of their BENCH trade mark on the relevant goods within Australia before the priority date of the opposed application. While examples have been provided, they are undated and there is nothing in the evidence which establishes that any sales of the applicant’s BENCH goods took place in Australia prior to late 2004.

6. Indeed, I find the applicant’s lack of early transaction records to be somewhat unusual given the sheer quantity of transaction records the applicant has submitted which post-date the trade mark application. There may be any number of reasons why the applicant does not have early transaction records. Similarly, there are any number of possible reasons why, as the applicant claims, the vast majority of these undocumented transactions took place informally between family members who themselves do not appear to have kept any business transaction records.  However, while I fully accept the veracity of the declarants on whom the applicant has relied, the establishing of common law rights is a serious matter, since it goes to the very heart of the proceedings.  Without more detailed or compelling evidence of the surrounding circumstances I decline to infer that the dealings to which the applicant refers amount to the conduct of a trade in Australia by reference to the trade mark.

7. I note the development of the applicant’s website in 1998 but, as discussed earlier, the website is not directed towards Australian consumers[15]. While the Khalil declaration demonstrates that it was possible in 2008 for an Australian customer to make a purchase of clothing over this website it does appear to be an expensive endeavor. It has not been established by the evidence presented that any Australian customer other than Ms Khalil has made a purchase of BENCH clothing from the applicant’s website.

   [15] Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471

8. Given the sheer number of records, receipts and postal tracking numbers supplied for this single purchase it appears that it would have been a relatively simple task for the applicant to provide proof of sales to Australian customers if any other transactions had taken place. This is particularly so when they have clearly maintained records of email inquiries from Australian consumers since as early as 1999 regarding possible purchases of BENCH clothing. These records are found in Exhibits RAFS-1 of the Statutory Declaration made by Roderick Anton Frank Saunders (‘the Saunders declaration’) and exhibits 9A, B and C accompanying the Statutory Declaration of Bryan Lim (‘the B Lim declaration’).

9. In some of those cases the applicant has omitted to include their responses to these inquiries or has responded to the inquiries advising they did not have a distributor of BENCH branded clothing in Australia at the time but would be interested in having one. However, the applicant’s evidence demonstrated that the earliest actual use of the applicant’s BENCH trade mark on clothing in Australia was in October 2004. I refer to exhibit 6 of the B Lim declaration and the invoice dated 20 October 2004 for the purchase of a number of the applicant’s BENCH shirts, shorts, jackets, pants, blouses and underwear made by Grandwell Holdings. Grandwell Holdings is located in Australia. However, this sale is after the priority date of the opposed trade mark. There is also nothing in the evidence which suggests that the applicant used their BENCH trade mark on footwear or headgear before the priority date of this application either.

10. Therefore, it is up to the opponent to demonstrate use of their BENCH trade mark on clothing and/or footwear and/or headgear in Australia prior to 17 February 2004. Ms Baird submits the opponent has indeed provided the requisite small amount of use sufficient to defeat the applicant’s claim to ownership of the BENCH trade mark. To this end the opponent has provided in its evidence in support the Statutory Declaration of Theo Karpathios (‘the Karpathios declaration’) accompanied by exhibits TK-1 and TK-2.  Mr Karpathios was a director of the Australian company High Jinks which specialized in British and European fashion brands. High Jinks operated a retail store located in Sydney, Australia between 1998 and 2003. The Karpathios declaration asserts that during this period High Jinks imported a range of men’s and women’s clothing and accessories branded with the opponent’s BENCH trade mark from the United Kingdom.

11. In support of Mr Karpathios’ claim exhibit TK-2 is a copy of orders made by High Jinks to the opponent. These order forms clearly list the clothing items as being either BENCH ladies clothing or BENCH mens clothing and as being an ‘add on order for Australia’. These order forms are dated 2 February 1999 for delivery of the orders between July and September 1999. I am satisfied from this evidence that, on balance, the opponent used their Bench trade mark on clothing in Australia in 1999. This is before any use evidenced by the applicant and before the priority date of the opposed trade mark.

12. Therefore, weighing all of the matters discussed above into the balance, I find that the opponent has made its case for ownership of the applied-for trade mark on clothing under section 58. I am satisfied that clothing is the ‘same kind of thing’ as headgear and footwear excluding shoes and boots. It now needs to be determined if the opponent has demonstrated use of their BENCH trade mark on shoes before the priority date of the opposed application. This is because shoes and boots are included under the applicant’s broad claim in class 25 for footwear and I do not consider shoes and boots to be the ‘same kind of thing’ as clothing for the purposes of s.58.

13. The statutory declaration of Kevin Vidler (‘the Vidler declaration’) states that the opponent sells its BENCH products through over 600 retail stores in the United Kingdom including popular tourist destinations such as London. This assertion is supported by the statutory declaration of Martin Haese (annexure 1 of the Shanks #3 declaration) which confirms that he saw the opponent’s BENCH goods for sale in London while on a buying trip in 2003. The Haese declaration advises that he considered the opponent’s BENCH goods to be suitable for retail in the Australian stores owned by Youthworks Group Pty Ltd (‘Youthworks’) and made inquiries to the opponent for this purpose.

14. Both the Vidler declaration and Haese declaration provide copies of emails detailing discussions regarding the possible importation and sales of clothing, headgear and footwear in Australia. These discussions took place between the opponent and Youthworks in late 2003 and did eventually result in Youthworks placing an order with the opponent for BENCH goods in late 2004. However, this was after the priority date of the opposed application.

15. The present situation is not analogous with the decision in Boundy Insulations Pty Ltd v American Energy Products Inc[16]. The evidence provided by the opponent in the form of the Youthworks discussions and the applicant’s evidence of similar type discussions provided in the B Lim declaration is, however, in keeping with the decision in Moorgate Tobacco Co Ltd v Philip Morris Ltd[17]. In that case Dean J made the distinction between use and mere preliminary discussions preceding use stating[18]:

    It is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark[19] or that the mark has been used in an advertisement of the goods in the course of trade[20]. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.

    [16] [1987] AIPC 90-415

    [17] (1984) 156 CLR 414

    [18] (1984) 156 CLR 414 at 443 - 444

    [19] Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corp (1951) 82 CLR 199 at 204

    [20] Shell Co (Aust) v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422

16. There is nothing in either party’s evidence which demonstrates that anything apart from preliminary discussions took place between themselves and potential Australian traders or consumers in regard to goods such as shoes before the priority date of the opposed application. Therefore, I am satisfied that, on balance, the opponent has demonstrated it is the owner of the BENCH trade mark for clothing, headgear and footwear excluding shoes and boots under s. 58.

    Section 59

    Section 59 of the Act reads as follows:

    59. 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.

17. The opponent has pursued this ground in relation to all of the applicant’s specification in class 25. However, I will only be considering its arguments in relation to ‘shoes and boots’ as the opponent has already established the s.58 ground of opposition for the rest of the goods in the applicant’s specification. Both the opponent and applicant have provided evidence and submissions going towards the ground of opposition under s. 59.

18. I agree with Mr Fitzpatrick’s submissions that under s. 59 it is generally acknowledged that filing an application to register a trade mark is prima facie evidence of the applicant’s intention to use it in respect of the goods and services nominated, at least at the time the application was filed[21]. Therefore, the onus is on the opponent to make its case under s. 59, as for any other ground of opposition.

    [21] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401

19. Like proof in any other matter under civil or administrative law the intentions or lack thereof of an applicant must be assessed on the balance of probabilities and the onus of proof can shift[22]. Under s. 59, however, the opponent does not need to prove its case, it has only to do enough to shift the onus of proof to the applicant. Thus, the opponent is only required to bring in material sufficient to shift the onus from itself onto the shoulders of the applicant[23]. The mere nomination of the s. 59 ground cannot shift the onus[24]. Hearing Officer Kirov, in Apple Inc v Artistic Licence International[25], has recently described the potential shifting of onus from opponent to applicant under s. 59 thus:

    [T]he High Court’s decision in Aston v HarleeManufacturing Co [1960] HCA 47; (1960) 103 CLR 391 is longstanding authority that applying to register a trade mark is prima facie evidence of intention to use. Subsequent decisions indicate this prima facie presumption may be rebutted where the evidence readily gives rise to the drawing of an adverse inference and that evidence remains unchallenged and unrebutted by the applicant.[26] The onus does not however shift to an applicant merely because an opponent questions the applicant’s intention in its Notice of Opposition or submissions.[27]

    [22] 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]

    [23] Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254; Pfizer Products Inc v Karam supra ; Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd supra

    [24] Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430

    [25] [2009] ATMO 15, para 21.

    [26] See for example Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient Australia Pty Ltd and Sapient Corporation v SAP.

    [27] See for example Medley Distilling Company v Croakers Gully Australia supra; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165.

20. Therefore, while the filing of an application for registration raises a prima facie presumption of intention to use in favour of the applicant that presumption can be rebutted. Indeed, slight evidence from which adverse inferences can be drawn to indicate a lack of intention to use is sufficient to shift the onus as noted by Hearing Officer Williams in Sapient Australia Pty Ltd and Sapient Corporation v SAP AG[28]:

    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[29]" then it has done sufficient to shift the onus onto SAP Ag, requiring it to validate its intention.

    [28] [2002] 55 IPR 68

    [29] Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited, 116 CLR 254 at 258

21. The opponent’s evidence and submissions regarding s. 59 predominantly focus on:

    ·    The US Trade Mark Application Serial No. 78/539111 and the US Notice of Opposition to that trade mark application in which the applicant (opponent there) detailed its international development with what appears to be incidental reference to Australia.

    ·    The Shanks #1 declaration and Ms Shanks’ failure to discover the applicant having any trading presence in Australia.

    ·    The Haese and Karpathios declarations which state the declarants were not aware of the applicant ever having sold BENCH branded goods in Australia.

    ·    The independent investigation reports compiled by Larisa Vella-Xuereb in response to the applicant’s evidence in answer.

22. In considering whether the opponent’s evidence is sufficient to shift the onus onto the applicant I am guided by a number administrative decisions including Danjaq, LLC v Resource Capital Australia Pty Ltd supra where Hearing Officer Thompson held that evidence from which adverse inferences could be drawn was:

    …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.

23. Applying the general principals of provenance, credibility and relevance to the assertions in the Haese, Karpathios and Shanks #1 declarations I am not satisfied the apparent non-use of the trade mark in Australia is sufficient to demonstrate that the applicant lacks an intention to use the trade mark here. While the veracity of the declarants is not doubted, I do not consider opinion based upon their private research and knowledge of the marketplace is sufficient to shift the onus onto the applicant. I do not accept that such research and opinions substantiate the opponent’s claims that the applicant did not intend to use its BENCH trade mark in Australia. Based upon the legal principles in Aston v Harle; Sapient; Danjaq; Estex Clothing; Medley Distilling Co; Phillip Morris; Wal-Mart Stores there are no adverse inferences which could credibly be drawn from these statutory declarations which would assist the opponent in shifting the onus onto the applicant under s. 59.

24. I turn now to the statutory declarations and independent investigations made by Larisa Vella-Xuereb. Ms Vella-Xuereb asserts her investigations failed to locate any current or prior use of the applicant’s BENCH trade mark on any of the goods which the applicant claims to have sold to the Brevas and Grandwell Holdings. She has advised that as part of her investigations she conducted surveillance of the locations identified by the applicant as being places of business where BENCH goods have been sold. Ms Vella-Xuereb asserts that the surveillance failed to discover any business activity, signage or trade mark usage which included the applicant’s BENCH trade mark. Also, none of employees questioned were able to recall ever having sold the applicant’s BENCH goods. The opponent argues the results of these investigations demonstrate that the applicant did not use, nor did it have any intention of use the BENCH trade mark for any of the goods in its specification between 1998 and 2006.

25. The opponent’s investigations may indeed have suggested that the applicant has not yet commenced use of its trade marks in Australia in relation to the goods specified in its application. However, based solely upon this evidence the opponent has fallen short of making a persuasive case for the applicant’s lack of a genuine intention to use the BENCH trade mark in the future.

1. I am satisfied there may be any number of reasons why the purported Australian distributors of the applicant would not have signage showing trade mark use on a private residence or why employees of retail stores previously engaged in the sale of BENCH goods would not recall having sold them. None of these situations are conclusive or even slight evidence of a lack of intention to use on the applicant’s part. I am not prepared to accept that Ms Vella-Xuereb’s inconclusive investigative reports substantiate the opponent’s claim that the applicant has no intention of using its BENCH trade mark in Australia. I do not accept that this evidence has been sufficient to shift the onus onto the applicant.

2. The opponent’s case, then, is limited to the applicant’s US Notice of Opposition (‘the US Notice’) made against the opponent’s US Trade Mark Application Serial No. 78/539111. The US Notice is a legal document of good provenance since it originated from the applicant itself. This US Notice is in the evidence before me. It is dated 23 March 2006 and post-dates all the Australian opposition proceedings mentioned in paragraphs 2 and 4 of this decision.

3. I am conscious that this US Notice has been the subject of some earlier discussion with respect to s. 59 by Hearing Officer Lyons in his decision Americana International Limited v Suyen Corporation[30]. I do not intend to revisit and restate all the issues discussed by Hearing Officer Lyons in that case. However, I agree with his findings that, given the timing of the US Notice’s filing, the applicant’s references to Australia in the US Notice do not, by themselves, illuminate the applicant’s intention for the BENCH trade mark in this country. Considering that the US Notice was put into evidence by the opponent to support the ground of opposition under s. 59, the applicant’s lack of evidence in response could allow adverse inferences to be drawn from its omissions in the US Notice. This was particularly when the applicant:

   ·    considered it relevant to the US opposition proceedings to provide a detailed outline of its international development (which only nominally mentions Australia) and use of its BENCH trade mark in its US Notice of Opposition;

   · was aware of the opponent’s s. 59 arguments in relation to Australian opposition proceedings already taking place; and

   · made the decision not to respond to the opponent’s s.59 arguments and did not file and serve any evidence in the Australian proceedings (when before Hearing Officer Lyons).

   [30] (2008) ATMO 4

4. Firstly, it is to be said the present situation is not analogous to the situation faced by Hearing Officer Lyons in his earlier decision. Most notably, in the present opposition proceedings the applicant has responded to the opponent’s evidence. The applicant has clearly stated it intends to use the BENCH trade mark in Australia and have provided evidence in response to the opponent’s s. 59 arguments. The applicant’s evidence may not have demonstrated use of its BENCH trade mark before the priority date of the opposed application but it has demonstrated use of its trade mark in Australia in late 2004.

5. I note from that evidence that the applicant does not appear to have commenced using its BENCH trade mark on shoes and boots but I do not draw any adverse inferences from this apparent lack of use. The applicant’s evidence has established that its various BENCH product lines are continually expanding and now include clothing, underwear, cosmetics, food, watches and socks. Without more conclusive evidence from the opponent, there is no reason to question if the applicant had an intention to use the BENCH trade mark on shoes and boots which were specifically mentioned in its class 25 specification. In addition, an applicant is entitled to wait for the conclusion of an opposition process, and subsequent registration, before using its trade mark.

6. I am in any case satisfied that the applicant’s evidence of use in Australia coupled with the product diversification and growth the applicant has demonstrated makes it more likely than not that the applicant did and does have an intention to use its BENCH trade mark on shoes and boots in Australia. Therefore, even should the opponent’s evidence have been sufficient to shift the onus onto the applicant, I am satisfied that the applicant has discharged any such onus due to the evidence it has tendered into proceedings. Therefore, the ground under s. 59 has not been established.

   Decision

7. S. 55 of the Act provides:

   Decision

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

8. I find here that the opponent has met the onus upon it, in terms of the ground of opposition argued under s. 58. Therefore, in accordance with section 55(a) of the Act, I refuse to register application no. 989448 as it now stands.

9. However, I will allow the applicant one month from the date of this decision in which to request to amend its specification in class 25 to ‘shoes and boots’ in which case the application may proceed to registration.

10. In the event that the Registrar is served with a copy of a notice of appeal before the trade mark is registered, I direct that the amendment not be made, and that registration not proceed, until either the court so orders or the appeal is withdrawn.

    Costs

11. Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, the opponent having been successful to some extent is entitled to costs, which I award against the applicant in accord with Schedule 8 of the Trade Mark Regulations 1995.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    29 October 2009