Angelica Cota v East Side Clothing Co Pty Ltd

[2013] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by Angelica Cota to application under section 92 of the Act by East Side Clothing Co Pty Ltd to remove trade mark number 1037280 (18, 25) – LuLA by Angelica Cota with heart device - in the name of Angelica Cota.

Delegate:	Bianca Irgang
Representation:	Opponent: Self represented Removal Applicant: Ms Magda Bramante of Phillips Ormonde Fitzpatrick
Decision:	2013 ATMO 105 S 96 opposition to removal–opposition not successful – trade mark to be removed from the Register

Background

1. Angelica Cota (‘the opponent’) has a registered trade mark in Australia, relevant details of which are shown below:

Trade mark:  

Trade mark registration:     1037280

Filing Date:  28 May 2004 (being also the date from which registration took place)

Specification:  Class 18: Handbags, wallets, coin purses

Class 25: T-shirts

Endorsements:  Trade Mark Description: Colour Claimed: MAGENTA; Parts Colour Claimed: Asymmetrical heart; Mark Description: The mark is an asymmetrical heart whose lines cross and extend at the bottom; the word "Lula" is written across it with the "L" to the left of the heart, the "ul" within the heart and the "a" to the right of the heart; the words "by Angelica Cota" are written to the right of the mark in a smaller arial font.

1. On 13 November 2012, East Side Clothing Co Pty Ltd (‘the removal applicant’) filed an application to have the trade mark removed from the Register of Trade Marks (‘the Register’). The application was filed pursuant to section 92 of the Trade Marks Act 1995 (‘the Act’) and specified grounds pursuant to both paragraphs 92(4)(a) and 92(4)(b).

2. The opponent filed a notice of opposition to the application on 4 April 2013. The notice asserted that the grounds on which the removal applicant relied were not relevant because the opponent had the intention to use the trade mark for all relevant goods at the time of its filing and there had in any event been actual use of the trade mark for relevant goods during the relevant period. 

3. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 27 September 2013. Ms Magda Bramante of Phillips Ormonde Fitzpatrick appeared on behalf of the removal applicant. The opponent was not present at the hearing but did provide written submissions for consideration.

Evidence

1. The evidence provided for this matter consists of the following declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Angelica Cota	Owner and President of LuLA by Angelica Cota, Inc	19 February 2013	Exhibit A to C

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Section 92 provides that a person may apply to the Registrar to have a trade mark removed from the Register. The removal application must be made in accordance with the Trade Mark Regulations 1995 (‘the Regulations’)[1] and may be made in respect of any or all of the goods and/or services in respect of which the trade mark is or may be registered. The grounds for removal are stated in paragraphs 92(4)(a) and 92(4)(b) which relevantly provide:

   [1] Regulations 9.1 to 9.4 of the Trade Marks Regulations 1995.

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

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

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

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

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

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

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

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

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

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

   (i) used the trade mark in Australia; or

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

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

3. In the present matter the application is based on both grounds and is in respect of all the goods for which the trade mark is registered.

4. Section 96 makes provision for a person to oppose any application made under section 92 by filing a notice of opposition with the Registrar. This notice must be in an approved form and must be filed in accordance with the Regulations[2]. 

   [2] Regulation 9.3

5. Section 100 specifies that the burden is on the opponent to a non-use application to rebut allegations of non-use or lack of intention to use as the case may be. The opponent needs to establish that the applicant for, or registered owner of the trade mark has used it (or used it with additions or alterations not substantially affecting its identity) in good faith in respect of the relevant goods and/or services, and that this use occurred within the relevant periods as specified in the Act.

6. Section 101(1) provides the Registrar with the discretion to remove the trade mark from the Registrar “in respect of any or all of the goods … to which the application relates”. S 101(3) explicitly provides that if the Registrar is satisfied it is reasonable to do so the discretion may be exercised in the trade mark owner’s favour even if the grounds on which the application was made have been established.

Discussion

1. The trade mark under attack in this case had been registered for approximately 9 years by the time the application for its removal was made.  Paragraph 70.510 of Shanahan’s Australian Law of Trade Marks and Passing Off  (4^th ed, 2008), makes the following comments:

   Section 92(4)(a) and (b) provide distinct and alternative grounds for removal. Under para (a) it is necessary to establish: first, that the trade mark was registered without the necessary intention in good faith that it should be used; and secondly, that there had in fact been no use, or no use in good faith, earlier than one month before the application for removal. Under para (b) it is necessary to establish only that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal, subject to s 93(2) which provides that five years must have passed since the application for the registered trade mark was filed.

   Paragraph (a) thus merges with para (b) once the trade mark has been registered for five years, though it should be noted that the defence of "circumstances that were an obstacle to the use of the trade mark" which applies to para (b) is not available under para (a).

2. Thus, in order to defeat the removal application the opponent, who is the registered owner of the trade mark, needs to establish that it has used its trade mark in good faith within the three year period ending one month prior to filing of the application for removal on 13 November 2012 (‘the relevant period’). The trade mark owner’s intentions at the time it filed the trade mark in 2004 are not relevant to my considerations.

3. The statutory declaration made by Angelica Cota (‘the Cota declaration’) states that the class 18 and 25 goods were marketed and sold internationally including in Australia under the LULA BY ANGELICA COTA trade mark (the ‘LULA’ trade mark) since 2003. The Cota declaration also states that the use of the LULA trade mark has resulted in the trade mark acquiring a secondary meaning in the international apparel and accessories marketplace.

4. Ms Cota states that the presence of the LULA trade mark in Australia is demonstrated by it having the top listing in the results of a search for LULA on Google® Australia (exhibit B accompanying the Cota declaration).  The Cota declaration also states that the opponent has an extensive and established collection of products sold under the LULA trade mark, and exhibit C comprises two photographs of a blue clutch purse with a zipper top closure which bears the LULA trade mark on a silver plate attached to its front.

5. Ms Bramante, counsel for the removal applicant, has argued that the opponent’s evidence does not demonstrate use of the LULA trade mark in Australia during the relevant period. She pointed out that none of the photographs are dated and that there is no evidence provided which demonstrates that the opponent made a single sale of its LULA branded goods within Australia. I am in agreement with the removal applicant.

6. Ms Cota has made a number of statements about the sale of her products and the reputation of the LULA trade mark within the apparel and accessories marketplace, however, the evidence she provided simply does not support her statements. In order to resist a removal application the opponent needs to demonstrate genuine commercial use of the its trade mark in relation to its goods within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & CoLtd [1982] FSR 72. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149.

7. In this situation it appears that Ms Cota has been carrying on business and establishing her reputation in her LULA branded goods within the USA. However, there is no evidence in before  me that the opponent has ever made a single sale of a LULA branded product within Australia or marketed its goods deliberately towards Australian consumers. The undated photograph of the blue purse along with the Google searches conducted after the relevant period do not establish genuine commercial use of the trade mark in Australia relation to the opponent’s goods within the relevant period. I give no weight to Ms Cota’s statements regarding the reputation of her LULA branded goods without material in evidence to substantiate her claims.

Registrar’s Discretion

1. Subsection 101(3) of the Act provides:

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

1. The application for non-use specified that the trade mark be removed for all goods within classes 18 and 25. The opponent has requested the Registrar’s discretion to leave the trade mark registration on the Register due to the long-standing reputation of the owner’s goods and the confusion which would result from anyone apart from the opponent using the LULA trade mark. However the opponent has not provided any evidence to satisfy me that it is reasonable to  exercise that discretion.

Decision

1. I find the opponent has not rebutted the allegation of non-use. I direct trade mark registration 1037280 be removed from the register in respect of all the goods to which the registration applies, one month from the date of this decision. In the event of an appeal, I direction that the trade mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the trade mark be subject to that order.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent as allowed by Schedule 8 of the Regulations.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

19 December 2013