Anthony Velissariou v Lorna Jane Pty Ltd

[2023] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Anthony Velissariou to an application under section 92 of the Trade Marks Act 1995 (Cth) by Lorna Jane Pty Ltd for removal of trade mark number 1475275 (class 25) – "NEVER GIVE UP" – in the name of Anthony Velissariou.

Delegate:

Nicholas Barbey

Representation:

Opponent: Rembert Meyer-Rochow

Applicant: Melissa Marcus of counsel instructed by HopgoodGanim

Decision:

2023 ATMO 70

Trade Marks Act 1995 (Cth) – application under section 92 – removal sought for entire registration – evidence does not establish use of the trade mark during the relevant period or obstacle to use – discretion not exercised – registration to be removed.

Background

1. Anthony Velissariou (‘Opponent’) is the owner of the following Australian trade mark registration (‘Registration’):

   Trade Mark:  "NEVER GIVE UP"            (‘Trade Mark’)

   Registration no.:  1475275

   Filing Date:  17 February 2012

   Specification:  Class 25: apparel (clothing, footwear, headgear); printed t-shirts; t-shirts; boxer shorts; shorts; surf shorts; swimming shorts; boys' clothing; clothing; clothing for sports; clothing for surfing; clothing for swimming; cyclists' clothing; denims (clothing); girl's clothing; gloves (clothing); golf clothing (other than gloves); headbands (clothing); ladies clothing; men's clothing; rainproof clothing; women's clothing; weather resistant outer clothing

   (‘Registered Goods’)

2. On 29 January 2021, Lorna Jane Pty Ltd (‘Applicant’) filed a non-use application based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’). The non-use application sought removal of all the Registered Goods.

3. The Opponent filed a notice of intention to oppose the non-use application followed by a statement of grounds and particulars. In response, the Applicant filed a notice of intention to defend the non-use application.

4. The only evidence filed in this matter was Evidence in Support (‘EIS’) and an oral hearing was requested. Submissions were filed by the Opponent on 13 February 2023 (‘Opponent’s Submissions’) and by the Applicant on 22 February 2023 (‘Applicant’s Submissions’).

5. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 1 March 2023. Rembert Meyer-Rochow presented submissions on behalf of the Opponent and Melissa Marcus of counsel presented submissions on the Applicant’s behalf.

Legal framework

1. Section 92 of the Act relevantly provides:

Application for removal of trade mark from Register etc.

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

…

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

(i) used the trade mark in Australia; or

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

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

Relevant period and onus

1. The non-use application was filed on 29 January 2021 and complies with s 93(2) of the Act.[1] Pursuant to s 92(4)(b) of the Act, the period in which the Opponent must establish use of the Trade Mark in Australia in good faith is the 3 year period ending on 29 December 2020 (‘Relevant Period’).

   [1] See Act s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. The amended s 93(2) applies to trade mark applications filed from 24 February 2019 onwards.

2. The onus rests on the Opponent to rebut the non-use allegation.[2] The Registrar retains the discretion to remove the Trade Mark from the Register in respect of any, or all, of the goods for which removal has been sought. If satisfied that it is reasonable to do so, the Registrar may decline to remove the Trade Mark from the Register even if the grounds on which the
   

   [2] Act s 100(1)(c).

   [3] Ibid s 101(3).

   non-use application was made have been established.[3]

3. I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[4]

   [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

Evidence

1. The following declarations were filed:

EIS

• Declaration made on 18 October 2021 by Anthony Velissariou (Opponent) with Items 1 to 21 (‘Velissariou 1’).
• Declaration made on 19 October 2021 by Anthony Velissariou with Items 1 to 29 (‘Velissariou 2’).

EIS

1. The Opponent declares that he is a ‘Senior Founding Executive Member’ of the ‘Friday Warriors’ which was founded in 2001. The Opponent describes the ‘Friday Warriors’ as being ‘the brainchild of former New Zealand rugby league captain Sam Stewart’ and it is a social fitness group that ‘aims to inspire blokes from all walks of life to get out of their comfort zones’. The ‘Friday Warriors’ participate in ‘various social responsibility campaigns’ and have approximately 58 financial members and 150 non-financial members. In the Opponent’s opinion, the ‘Friday Warriors’ have ‘a strong community presence on the Gold Coast’ in Queensland.

2. Velissariou 1 states that ‘NEVER GIVE UP’ is the official creed of the ‘Friday Warriors’ and the Trade Mark has ‘been incorporated into an extensive range of Friday Warriors material’. Such material includes ‘club shirts, event singlets, cycling kits and hats’ as well as marquees and banners which display the Trade Mark. The Opponent declares that no ‘Friday Warriors event unfolds without Never Give Up being prominently displayed inclusive of various apparel items available for purchase’. 

3. According to Velissariou 1, the Opponent ‘has given the Friday Warriors a licence to use the Trade Mark “Never Give Up” on all sporting and training apparel in conjunction with [the Opponent] to be sold to the members and the public’. In the Opponent’s view, removal of the Trade Mark from the Register ‘would result in a loss of income for the Friday Warriors group and local Gold Coast community charities’.

4. Exhibited to Velissariou 1 and Velissariou 2 are various photographs and documents which the Opponent claims demonstrate that ‘I have been using the trade mark for an extended period of time on various apparel pieces and merchandise’.

Discussion

1. The main issue for determination is whether the Opponent (or an authorised user) has used the Trade Mark in Australia in relation to the Registered Goods during the Relevant Period. If the evidence establishes that the Opponent (or an authorised user) has, then the non-use allegation is taken to have been rebutted and the Trade Mark will remain registered in respect of the Registered Goods. If the evidence fails to establish use of the Trade Mark for all the Registered Goods, then consideration will turn to whether it is reasonable to invoke the Registrar’s discretion to preserve the Trade Mark for any goods for which it has not been used.

2. The evidence of use required to be demonstrated is ‘use as a trade mark’. That is, the Trade Mark must have been used as a badge of origin.[5] The extent of use required is not onerous and a ‘relatively small amount of use’ may be sufficient to rebut a non-use application.[6] Potentially, a single bona fide use of a trade mark during the relevant period may suffice to prevent removal.[7] However, if reliance is placed on a solitary example of use, it should be established by ‘overwhelmingly convincing proof’.[8]

Use of the Trade Mark during the Relevant Period

[5] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ) wherein it was observed that ‘[u]se “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods’.

[6] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).

[7] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[8] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

1. The Opponent submits that the Trade Mark has been continuously used since it was first registered. Primarily, the use relied on has ‘been through and in association with the Friday Warriors organization’.[9] The Opponent contends that the use of the Trade Mark by the ‘Friday Warriors’ has always been with his permission and under his supervision and control.[10] Additionally, the Opponent asserts that he personally used the Trade Mark when he notified the Applicant of his Registration.[11]

   [9] Opponent’s Submissions, [7].

   [10] Ibid [11].

   [11] Ibid [19].

2. In my assessment, the EIS contains numerous deficiencies which, ultimately, are fatal to the Opponent’s case that he personally used or authorised the use of the Trade Mark during the Relevant Period. Many examples provided in the EIS are undated or are dated outside of the Relevant Period.[12] Plainly, this material does not assist in showing use of the Trade Mark in the Relevant Period. Meanwhile, other examples in the EIS are insufficiently contextualised and simply do not show or reference the Trade Mark (or iterations thereof).[13] Naturally, this material also fails to advance the Opponent’s case.

   [12] See, eg, Velissariou 1, Items 1A and 3–21; Velissariou 2, Items 1–6.

   [13] See, eg, Velissariou 1, Item 17; Velissariou 2, Items 7 and 24–29.

3. Nevertheless, the EIS does contain some invoices for clothing items that reference the Trade Mark and are dated within the Relevant Period.[14] Broadly speaking, this material is capable of being characterised as use of the Trade Mark in relation to the goods itemised in each invoice.[15] However, the principal difficulty faced by the Opponent is that each invoice is either addressed to, or issued by, an entity named ‘Friday Warriors Inc’ (‘FWI’).[16] As such, the Opponent cannot rely on these invoices to rebut the non-use allegation unless it is established that FWI was an authorised user of the Trade Mark within the meaning of the Act.

   [14] See, eg, Velissariou 2, Items 18 and 22.

   [15] Act ss 7(4), 9(1)(c)(ii).

   [16] See, eg, Velissariou 2, Items 11–12 and 18–21.

4. Section 7 of the Act relevantly provides:

Use of trade mark

(3)    An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

1. Section 8 of the Act relevantly provides:

Definitions of authorised user and authorised use

(1)    A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)    The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)    If the owner of a trade mark exercises quality control over goods or services:

(a)dealt with or provided in the course of trade by another person: and

(b)in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)    If:

(a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)the owner of the trade mark exercises financial control over the other person's relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

1. It is clear from the expression of s 8 of the Act that control is a pivotal aspect of establishing authorised use. The examples of ‘quality control’ over goods or services and ‘financial control’ over trading activities provided for within the provision form a non-exhaustive list of the types of control required to establish authorised use.[17] The degree of control required to satisfy s 8 of the Act was discussed in Lodestar Anstalt v Campari America LLC:

   [C]ontrol in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time. ... Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8.[18]

   [17] Act s 8(5).

   [18] [2016] FCAFC 92, [97] (Besanko J) (emphasis added).

2. It was common ground between the parties that FWI is an association incorporated under Associations Incorporations Act 1981 (Qld) (‘AIA’).[19] In Velissariou 1, the Opponent declares that he granted FWI a licence to use the Trade Mark. However, the EIS does not contain a written licence agreement between the Opponent and FWI nor does it contain any documents upon which such a licensing relationship may be inferred. Indeed, aside from the Opponent’s assertion that a licence existed, the EIS is silent as to the nature or terms of the licence allegedly granted.

   [19] Opponent’s Submissions, [62]; Applicant’s Submissions, [4].

3. The Opponent sought to counter this issue by pointing out that the absence of a written licence agreement is not determinative of whether such a relationship existed. Emphasis was placed on the nature of the material in the EIS, such as design proofs and order invoices, which the Opponent claimed made it obvious that FWI’s use of the Trade Mark was under the Opponent’s control otherwise he would not have access to this material.[20] Likewise, the Opponent’s Submissions highlighted that the Opponent’s awareness of FWI’s use and position as a ‘Senior Founding Executive Member’ of FWI further supported a conclusion that FWI’s use of the Trade Mark was under his permission and control.[21]

   [20] Opponent’s Submissions, [43], [59].

   [21] Ibid [61].

4. In my consideration, neither argument is persuasive. First, the mere production of invoices and orders made by FWI does not constitute cogent evidence that the Opponent controlled FWI’s use of the Trade Mark. This is particularly the case given the Opponent’s name does not appear on any of the documents.[22] Based on the EIS, it is not clear whether the Opponent even had personal access to these documents or if they were supplied to him by FWI. Second, the Opponent’s awareness of FWI’s use of the Trade Mark is insufficient to establish that control existed as a matter of substance. To this end, the EIS does not elaborate on what the Opponent’s role as a ‘Senior Founding Executive Member’ of FWI entailed. On its face, it is not clear what this title means. In any event, as the Applicant highlighted, FWI’s status as an incorporated association means that its business and operations are controlled by a management committee.[23] The EIS does not address the composition of FWI’s management committee nor does it expand on what involvement, if any, the Opponent had with same. In short, there is no cogent evidence to support the Opponent’s assertions. Consequently, I am not satisfied that the Opponent exercised any actual control over FWI’s use of the Trade Mark. It follows that FWI’s use of the Trade Mark does not constitute authorised use within the meaning of the Act.

   [22] See, eg, Velissariou 2, Item 12 which lists the ‘Client’ as ‘Friday Warriors’ and the ‘Contact’ as ‘Ray Dib’ and Item 28 which lists the shipping and billing address to ‘Ray Dib’ of ‘Friday Warriors INC’.

   [23] AIA, s 60(1) which states ‘Subject to this Act, the business and operations of an incorporated association shall be controlled by a management committee’. I note that s 61(3) provides that ‘The management committee must have at least 3 members of whom – (a) 1 holds the office of president; and (b) another holds the office of treasurer’.

5. Finally, I turn to the alleged personal use of the Trade Mark which involved the Opponent’s assertion that he notified the Applicant of his Registration. Even if I were to accept that this action constituted use of the Trade Mark, the EIS does not mention this exchange and there is no documentary evidence to support such an exchange having occurred. In these circumstances, the contention that the Opponent personally used the Trade Mark during the Relevant Period is without foundation.  

6. For the above reasons, the Opponent has not established that he has used the Trade Mark in relation to the Registered Goods during the Relevant Period.

Obstacles to use

1. The Opponent did not assert that there were any obstacles to the use of the Trade Mark during the Relevant Period. For completeness, I confirm that there is nothing in the EIS to suggest that an obstacle prevented use of the Trade Mark in relation to the Registered Goods during the Relevant Period.

2. Accordingly, the Opponent has not rebutted the s 92(4)(b) ground for removal in respect of the Registered Goods.

Registrar’s discretion

1. Pursuant to s 101 of the Act, the Registrar has a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Federal Court provided the following insights regarding the discretion under s 101(3) of the Act:

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[24]

   [24] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

1. The Opponent broadly submits that removal of the Trade Mark from the Register ‘would result in a loss of income for the Friday Warriors group and local Gold Coast community charities’. Further, the Opponent’s Submissions emphasise that the Applicant has not shown any legitimate interest in the Trade Mark and claim that ‘[t]he right to use Mr Velissariou’s mark is certainly not essential to, or a core part of the business of the Applicant’.[25] As such, the Opponent contends that it is reasonable to exercise the discretion.

   [25] Opponent’s Submissions, [29].

2. For its part, the Applicant submits that that discretion should not be exercised. Whilst the Applicant accepts that the Trade Mark has not been abandoned,[26] it nevertheless maintains that ‘this is a case where a different entity altogether has been using the [Trade] Mark, namely Friday Warriors’.[27] In this context, the Applicant asserts that the retention of the Trade Mark on the Register is contrary to maintaining its integrity given the evidence shows there is no connection between the Trade Mark and its registered owner.  

   [26] Applicant’s Submissions, [4].

   [27] Ibid, [53].

3. There is merit in the position advanced by the Applicant. The contention that the removal of the Trade Mark would result in financial loss being incurred by FWI and local charities amounts to a bald assertion. Put simply, there are no financial records or information disclosed in the EIS to support this. Similarly, the EIS does not disclose any standard metrics such as revenue and advertising figures nor does it address how the Trade Mark has been promoted. In this context, there is no basis to infer that the Trade Mark enjoyed any form of reputation. Meanwhile, the allegation that the Applicant has not established that use of the Trade Mark is a ‘core part of its business’ is beside the point given it is the Opponent who bears the burden of positively satisfying the Registrar to exercise the discretion.

4. Overall, the EIS fails to establish that the Opponent has personally used the Trade Mark or that he intends to do so in the future. Rather, at its highest, the EIS indicates that FWI has been using the Trade Mark in relation to a subset of the Registered Goods. In my view, the integrity of the Register is therefore served by removing the Trade Mark. To do otherwise would be contrary to the public interest given it would effectively allow a trade mark to remain on the Register in the name of a person that does not use the Trade Mark or exercise any actual control over the use of the Trade Mark.

5. Accordingly, I am not satisfied that it is reasonable to exercise the discretion available under the Act in favour of the Opponent to allow the Trade Mark to remain on the Register. As such, I decline to exercise the discretion.

Decision

1. The ground for removal under s 92(4)(b) of the Act has been established in respect of all the Registered Goods. I direct that trade mark registration 1475275 be removed from the Register one month from the date of this decision. In the event of an appeal from this decision, trade mark registration 1475275 shall not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

Costs

1. The Applicant has sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Nicholas Barbey

Hearing Officer

Delegate of the Registrar of Trade Marks

30 May 2023