Anchor Brewing Co v Kartelle Nominees Pty Ltd

[1991] ATMO 26

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by KARTELLE NOMINEES PTY LTD to an Application for the Removal from the Register of Trade Marks Nos. 398613, 398614 and 398615 by ANCHOR BREWING COMPANY

Trade Marks Nos. 398613, 398614 and 398615 are registered in the name of KARTELLE NOMINEES PTY LTD, a Western Australian company, of 231 Hay Street, Perth.  They are registered as from 18 October 1983 in respect of the following goods and services respectively:

1. Class 42     Wholesale liquor service, retail of liquor service

2. Class 33     Wine, spirits and liqueurs

1. Class 32     Beer, ale and porter; mineral waters and other non-alcoholic drinks; syrups and other preparations for making beverages.

All three registrations are for the words LIBERTY LIQUORS.
On 14 April 1989 an application pursuant to s.23 of the Act to remove Nos. 398614 and 398615 from the Register was lodged in the name of ANCHOR BREWING COMPANY ("the applicant") incorporated in California of 1705 Mariposa Street, San Francisco, California, United States of America. On 21 July 1989 a further application in respect of 398613 was lodged by the same company. All three applications relied on the grounds for removal set out in paras (a) and (b) of sub-sec.23(1), namely:

(a)The Trade Mark subject of registration A398613 was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those services and there has, in fact, been no use in good faith of the Trade Mark in relation to those services except in the metropolitan area of the city of Perth in the state of Western Australia by the Registered Proprietor or a Registered User of the Trade Mark for the time being earlier than one month before this application.

(b)  Up to one month before the date of this application, a               continuous period of not less than three years has elapsed      during which the Trade Mark was a Registered Trade Mark              and during which there was no use in good faith of the     

Trade Mark in relation to those services except in the metropolitan area of the city of Perth in the state of Western Australia by the Registered Proprietor or a Registered User of the Trade Mark for the time being.

Notice of opposition to all three applications pursuant to reg. 22 was lodged by KARTELLE NOMINESS PTY LIMITED ("the opponent") on 20 October 1989.  The grounds of the opposition were stated as follows:

(a)The Applicant for Removal of the Trade Mark from the Register is not a person aggrieved in accordance with Section 23 of the Trade Marks Act 1955.

(b)The Opponent has used the Trade Mark in good faith during the three (3) year period terminating one (1) month before the Application for Removal of the Trade Mark.

(c)In the event that the Applicant establishes that the Trade Mark has not been used in good faith during the relevant period (which the Opponent denies), then the Registrar should exercise his discretion and refuse to order the removal of the Trade Mark.

Service of the applicant's evidence in support of the applications was completed on 20 December 1989.  It consisted of a statutory declaration by David Greenstein dated 23 November 1989 and a further declaration by Laurence Edward Butler dated 6 December 1989.  The opponent's evidence in answer was served on the applicant on 16 May 1990.  It comprised a statutory declaration by William David King dated 11 May 1990.  The applicant applied for extension of the prescribed time for serving evidence in reply.  This application was later withdrawn and the matter was set down for hearing in Canberra on 4 December 1990.  On 29 November 1990 the applicant lodged an application pursuant to reg. 47(1)(b) for special leave to adduce further evidence.  The application was accompanied, in accordance with reg. 47(3), by a statutory
declaration by Kenneth Edward Niblett, solicitor, of Spruson & Ferguson, patent attorneys, of Sydney.
         At the hearing the opponent was represented by Mr Wayne Condon of Corrs, solicitors, of Melbourne.  Mr Niblett appeared for the opponent.
         In his submissions in support of the application for special leave to adduce further evidence Mr Niblett referred me to the grounds set out in his declaration.  These were as follows:

1.I am a solicitor of the Supreme Court of New South Wales and have the carriage in the offices of Spruson & Ferguson of applications by Anchor Brewing Company for the removal from the Register pursuant to the provisions of Section 23 of the Trade Marks Act of Australian trade marks Nos. A398,613, A398,614 and A398,615 all in the name of Kartelle Nominees Pty Limited which applications have been opposed by the said Kartelle Nominees Pty Limited.

2.In August 1990 I became aware that Dileum Pty Ltd had been entered as a Registered User of each of the said trade marks and on subsequent checking found that such entries had been advertised in the Official Journal on 14 December 1989.

3.In view of the provisions of Section 77(2) of the Trade Marks Act I referred to my firm's instructing associates in the United States for approval to undertake enquiries concerning the said Dileum Pty Ltd. Before such approval was forthcoming I was obliged to conduct a protracted correspondence with the associates regarding the general implications of Section 77(2) of the Act and on receipt of approval I subsequently instructed a firm of investigators in Perth to undertake appropriate enquiries.

4.I have only this day received their report which contains information concerning the activities of Dileum Pty Ltd which I believe, in the absence of any positive evidence from the opponent, should be available for the Registrar's consideration but it will not be possible to obtain a confirmatory declaration prior to 4 December 1990 on which date the applications are set down for hearing since the declaration will need to be drafted, approved and finally forwarded to Perth for completion and received back in Sydney for lodgement in Canberra and service in Melbourne.

Section 77, so far as is relevant, is in the following terms:

77.Effect of permitted user. 

(1)The permitted use of a registered trade mark shall be deemed to be use by the registered proprietor of the trade mark and shall be deemed not to be use by a person other than the registered proprietor, for the purposes of section 23 and for any other purpose for which use by the registered proprietor of the trade mark is material under this Act.

(2)Where -

(a)a person is registered as a registered user of a trade mark;

(b)there has been previous use (whether before or after the commencement of this Act) of the trade mark by that person; and

(c)that use is in relation to goods or services in respect of which that person is registered and, where he is registered subject to conditions or restrictions -

(i)that use complied substantially with those    conditions or restrictions; or

(ii)did not so comply but was not such as to be contrary to the public interest.

the last preceding sub-section has effect as if that previous use had been permitted use.

The registration of a registered user in the circumstances specified therefore could serve to defeat an application for the removal of a trade mark from the Register for non-use by the registered proprietor.
         Mr Condon made the following submission in opposing the application for special leave:

.The test in determining whether leave should be granted to allow the tender of further evidence involves consideration of essentially two desiderata:

(i)it must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage; and

(ii)the evidence must be such that, if given, it would probably have an important influence on the result of the case.

Ladd v Marshall [1954] 3 ALL ER 745

Orchard v Orchard [1972] 19 FLR 176

Oxon Italia SpA's Trade Mark Application[1981] FSR 408

Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd

(1985) 5 IPR 281

Paragini Footwear Pty Ltd v Paragon Shoes Pty Ltd (1987)

AIPC 90-453

The Timberland Company v Speedo Knitting Mills Pty Ltd

(1990) AIPC 90-699.

.Application for leave to tender further evidence was served on 30 November 1990, four days prior to the date set down for hearing.

.Mr Niblett in his Statutory Declaration of 28 November 1990 states that he first became aware of the fact that a company known as Dileum Pty Ltd had been entered as a registered user of each of the three trade marks in question in August 1990.

.Registration of the user was advertised in the Official Journal of 14 December 1989.  The fact has therefore been a matter of public record for almost a year.

.An application to tender the evidence should have been made earlier than four days before the hearing of the Section 23 Applications and shortly after the advertisement in the Official Journal or, at the latest, very soon after August 1990 when Mr Niblett states that he first became aware of the registration of the user.

.The Opponent's case has been prepared on the basis of the evidence tendered by the Applicant initially.  The Opponent should not, at this late stage, have to contend with further material which the Applicant may wish to tender in order to somehow advance an otherwise weak case.

.The evidence, in the light of Zelling J's comments explaining the second limb of the test is not such as would advance the Applicant's case.  Indeed, on no view could the evidence of the registration of the user assist the Applicant - at best the evidence sought to be tendered may be regarded as neutral so far as the Applicant is concerned.

.If Dileum Pty Ltd's use of the mark is retrospectively deemed by Section 77 of the Trade Marks Act to be use by the registered proprietor, then the Applicant's case must fail.

.If Dileum Pty Ltd's use of the marks is not deemed to be such user then the Applicant should be left to rely upon the evidence which it has already adduced in support of its applications.

.The Applicant should not be allowed to bolster by the back door its totally inadequate evidence of non-user by attempting to adduce further evidence of a matter which
cannot improve the Applicant's chance of success in any event.

It is important to note in this regard that Mr Niblett is not heard to say how the additional evidence sought to be tendered might affect the outcome of the case other than to say in paragraph 4 of his Statutory Declaration that the evidence represents information which "should be available for the Registrar's consideration".

In this regard see the Timberland Company decision.

The second limb of the test is therefore not satisfied.

.The only effect of leave being granted will be to:

(i)prejudice the Opponent;

(ii)cause further delay;

(iii)cause the Opponent further substantial cost.

I believe that Mr Condon has correctly stated the effect of the authorities and the relevant tests to be applied.  The opponent has not relied on use of the trade mark by any other party.  It has, in fact, lodged no evidence of use of the trade marks in rebuttal of the applicant's evidence.  It has chosen rather to rely on the ground that the applicant has not made out the requisite case of non-use.  If, therefore, the applicant has made out a case of non-use it will be entitled, in the absence of evidence to the contrary, to an order for the removal of the marks.  If not, then the applications fail and must be dismissed.  The evidence sought to be adduced by Mr Niblett has no bearing at all on the question to be decided and no purpose would be surved by further delay in having the matter decided.  The application for special leave to adduce further evidence is therefore refused.
         I turn therefore to the question whether the applicant has made out a prima facie case of non-use.

Person aggrieved
Section 23 requires that an applicant for removal must be a person aggrieved by the registration. The evidence in support of the applicant in this case being such a person is the Greenstein declaration referred to above. Mr Greenstein states as follows:

1. I am employed as a Technical Assistant by Spruson & Ferguson, Patent and Trade Mark Attorneys, and as such I have the conduct of the prosecution of Trade Mark Application No 446907 LIBERTY ALE in class 32 in respect of "beer, ale, porter and other malt beverages", in the name Anchor Brewing Company.

1. An Examiner's Report No 1 for the above application issued on or about 1 February 1988 which, inter alia, cited trade mark registrations Nos 398614 and 398615 and application No. 398613 as objections to registration of the applicant's mark.

1. Accordingly, the applicant is aggrieved by the said trade marks remaining in the Register.

Mr Condon did not take issue with the applicant's standing as a person aggrieved and I accept that that threshold question must be answered in the applicant's favour.
The evidence
         The evidence on which the applicant relies to make out a prima facie case of non-use is contained in the declaration of Laurence Edward Butler.  It is as follows:

1. I am employed by M G Baker & Co Pty Limited, Insurance Assessors ("my Firm") and advise that my Firm undertakes commercial investigations from time to time.

1. On or about 25 March 1988, my Firm received instructions from Spruson & Ferguson, Patent & Trade Mark Attorneys, to conduct a market investigation to determine whether the trade mark LIBERTY LIQUORS ("the Trade Mark") had been used in the last three years.  My Firm's instructions were to determine whether there had been any use of the Trade Mark during that time on:

wine, spirits and liqueurs in international class 33, beer ale and porter, mineral and aerated waters and other non-alcoholic drinks; syrups and other
preparations for making beverages in international class 32 and wholesale liquor service, a retail of liquor service in international class 42.

1. My initial enquiries revealed that there are two retail outlets operating in the State of Western Australia under the name LIBERTY LIQUORS, situated respectively at 231 Hay Street, Perth and 1926B Albany Highway, Maddington.  I visited these premises, both of which operate as liquor outlets and as such, stock and sell wines, spirits, liqueurs, beer, softdrinks and other related items.  I photographed the exterior of both premises and copies of these photographs are attached and marked as Annexure "A".

1. Further enquiries made at the Office of Liquor and Gaming in Western Australia revealed that the retail outlets referred to above and known as "LIBERTY LIQUORE" commenced trading in this State in 1983 and have been trading continuously since then.

1. On or about 15 June 1989, my Firm was again instructed by Spruson & Ferguson to update the earlier investigation.

1. My further enquiries revealed that there are now four retail outlets operating under the name of "LIBERTY LIQUORS" in the State of Western Australia, the additional outlets being located at 42 Bayview Terrace, Claremont and 367 Canning Highway, Palmyra.

1. At none of the above locations was I able to locate any goods for sale which were labelled with the Trade Mark.

1. I made additional enquiries through associates in the States of Victoria, New South Wales, Queensland, South Australia and Tasmania and in the Northern Territory in respect of businesses using the name LIBERTY LIQUOR or goods so labelled, which enquiries failed to locate any such business or goods.

1. Save as aforesaid, my enquiries revealed that the Trade Mark has not been used in respect of any of the goods or services mentioned in paragraph 2 above for a period of three years prior to 25 June 1989.

Mr Condon made the following criticisms of this declaration:

This Statutory Declaration is deficient and does not establish a prima facie case of non-user for the following reasons:

(a)evidence is required from persons who

"by reason of their connection with the relevant trade might be expected to have seen or heard the mark if it were used as a trade mark upon goods for which it is registered".

-  Estex per Windeyer J at 259.

On the contrary, Butler describes himself as a Licenced Enquiry Agent.  From paragraph 1 of the Statutory Declaration it appears that Mr Butler is apparently employed by a firm of Insurance Assessors that undertake commercial investigations "from time to time".

Not clear what this means.

Does not say how long has been an investigator and no idea what his experience is.

(b)PARAGRAPH 2

Butler states that his firm received instructions from Spruson and Ferguson on 25 March 1988.

His firm was instructed to investigate whether the trade mark Liberty Liquors had been used "in the last three years" in respect of the goods and services referred to.

Clearly any investigations undertaken on or about 25 March 1988 can be of no assistance to the Applicant because at that stage the relevant three years periods had:

(i)in the case of A398,613 four days short of sixteen months to run; and

(ii) in the case of A398,614 and A398,615, twelve and                   thirteen days still to run.

As the evidence does not cover the relevant periods in full this does not amount to prima facie evidence of non-use.

(c)PARAGRAPHS 3 AND 4

Neither of these paragraphs assist the Applicant.

These paragraphs establish only that there are retail liquor outlets in WA stocking and selling wines, spirits, liqueurs, beers and soft drinks which have been carrying on business under the name "Liberty Liquors" and that those retail outlets have traded continuously since 1983.

There is no evidence as to the identity of the proprietor of either of those businesses.

(d)PARAGRAPHS 5, 6 AND 7

Butler states in paragraph 5 that his firm was instructed to update earlier investigations on or about 15 June 1989.  No indication of precisely what instructions were received e.g. what time period were the further investigations to cover.

In paragraph 6 Butler refers to the result of those "further enquiries".

He states that two additional Liberty Liquor outlets were identified.

Paragraph 7 does not assist the Applicant because:

(i)Butler does not set out the type of investigations that he undertook at each outlet;

(ii)he does not state when he attended the outlets;

(iii)the statement of paragraph 7 does not address the use of the trade marks throughout the relevant three year period.

At best this evidence pertains to one specific unspecified day and one is simply not informed as to how scrupulous the investigation was.

(e)PARAGRAPH 9

The period referred to in this paragraph bears no relation to the relevant three year periods and the conclusion asserted by Mr Butler is not supported by the balance of his Statutory Declaration.

(f)PARAGRAPH 8

Butler says

"made additonal enquiries through associates in Victoria, NSW, Queensland, S.A., Tasmania and N.T.  In respect of businesses using the name Liberty Liquor or goods so labelled:

(i)Does not say when those additional enquiries were made therefore not clear whether they cover the relevant periods - particularly in the case of A398,613.  Enquiries may have been made prior to the expiry of the relevant period i.e. 21 June 1989.

(ii)There is no description of the kind of "additional enquiries" which were said to have been made.

(iii)No reference to the relevant three year period in respect of each registered trade mark;

(iv)No identification as to who the "associates" of Mr Butler were nor is their competence to comment established.

(v)There are no statutory declarations from the so-called "associates".

(vi)It is not clear whether the associates have themselves made further enquiries and, if so, what enquiries were made, of whom and what was said.

(vii)Paragraph 8 falls into the category of the worst possible hearsay upon hearsay and the evidence should be held to be inadmissable and of no significance.

See particularly the Studio Australia case and Habitat case at p.3.

The opponent's evidence in answer consists of the King declaration already referred to.  Mr King is a principal in the firm of Corrs Australian Solicitors.  He states that the opponent would rely at the hearing on the submission that the applicant had not made out a prima facie case of non-use. Mr Condon in fact made just that submission for the reasons outlined above. Because of this, he said, there was no necessity on the part of the opponent to establish use of the subject marks or otherwise to defend the actions taken by the applicant pursuant to s.23 of the Act.
Conclusion
It is well established that the onus of proving non-use within the relevant period for the purposes of s.23 rests ultimately on the applicant for removal. In this regard the words of Windeyer J in Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein (1966) 116 CLR are most frequently cited:

"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 beter 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."

The deficiencies of the Butler declaration have been clearly pointed out by Condon.  To para 8, in particular, though not inadmissible before an administrative tribunal, I find it impossible to give any weight whatever.  The declaration as a whole falls a long way short of establishing that slight evidence which would shift the onus of proof onto the opponent.
         In the result, therefore, I find that the applicant has failed to make out a prima facie case of non-use of the subject marks and the applications for removal are therefore refused.
         The opponent having been successful is entitled to its costs and I so award them, to be taxed according to the official scale.

(M.A. HOMANN)
Hearing Officer
19 April 1991