Arthur Nestor v Javatex Pty Ltd

[2004] ATMO 11

TRADE MARKS ACT 1995

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

Re:Oppositions by Arthur Nestor to applications under section 92 of the Act by Javatex Pty Ltd to remove trade mark numbers 716542, 716543 and 717227(3, 5, 9, 14, 16, 18, 24, 28, 42) - Golden Breed - in the name of Arthur Nestor and Nestor Nominees Pty Ltd

Date of Decision:

27 February 2004

Delegate:

Jock McDonagh

Representation:

Opponent: no appearance

Applicant: Ben Fitzpatrick of counsel instructed by Griffith Hack, Attorneys

Decision:

Trade Marks to be removed from Register

Background

1. Trade mark registrations 716542, 716543 and 717227 are registered in the name of Arthur Nestor and Nestor Nominees Pty Ltd ("the opponent").  That registration has effect from 30 December 1970.  It is for the trade mark golden breed, registered for the following goods:

TM No.	Date	Class	Goods/Services
716542	02.09.1996	28	Covers for skis and boards, flippers, masks, gloves (games), golf bags and clubs, hanggliders, knee and elbow guards, protective padding ( part of sportsuit), roller skates or blades, skateboards, skis, wax for ski and boards, surfboards, water skis, snow boards, toys and games
716543	02.09.1996	9	Sunglasses, head guards
14	Watches, jewellery, bracelets, alarm clocks, cases for watches, cases for clocks, tie clips, earrings, keyrings, ornamental pins, rings; bands, cases, chains and straps for watches and wrist watches; wrist watches
16	Advertisement boards of paper or cardboard, calendars, posters, stickers(stationery), tear-off calendars
18	Carrybags, knapsacks, beach bags, travelling bags, wallets,  keycases, umbrellas
24	Travelling rugs, bed covers and pillowcases, beach towels
716543	02.09.1996	42	Wholesaling and retailing of sunglasses, watches, jewellery, keyrings, rings, posters, calendars,stickers, carrybags,  knapsacks, beach bags, travelling bags, wallets, keycases,  umbrellas, travelling rugs, bed covers and pillowcases,  beach towels
717227	11.09.1996	3	Personal care toiletries, including soaps; perfumery,  essential oils, aticles for body and beauty care, especially  lotions, moisturizing lotions, hair lotions and sun tanning preparations
5	Lip balm for medical purposes, sun screen preparations for  the protection of the skin

1. On 10 October 2001, Javatex Pty Ltd ("the applicant") filed applications for removal of the trade marks from the Register, on the basis of non-use in the period commencing three years and one month before the date of filing. This period ("the relevant period") is 10 September 1998 to 10 September 2001. The opponent filed Notices of Opposition to the application on 31 January 2002.

2. The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark or not used the trade mark in good faith during the relevant period.

3. In turn, the opponent alleged in the Notice of Opposition:

• that the trade mark had been used by the opponent during the relevant period.

• That the trade mark was not used within the relevant period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

1. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 18 November 2003. The removal applicant was represented by Mr Ben Fitzpatrick of counsel instructed by Griffith Hack Patent and Trade Mark Attorneys of Melbourne. Mr Fitzpatrick appeared by telephone.

2. The opponent was not represented and a hearing fee had not been paid. However, after the commencement of the hearing a facsimile message from the solicitors for the opponent was received in the Office requesting an adjournment of the hearing.  The solicitors stated that they had taken over the conduct of the matter 10 days before the hearing and had only received notification of the hearing on 13 November.

3. I decided to continue with the hearing, given the attorneys for the applicant were not amenable to an adjournment and there had been no formal notification of any change of representation for the opponent.

Legislation

1. Section 92 of the Act provides as follows:

92  Application for removal of trade mark from Register etc.

(1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2)The application:

(a)must be in accordance with the regulations; and

(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:For prescribed court see section 190.

(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.

1. There are a number of elements of s.92 that must be satisfied before the Registrar will exercise his powers under the section, namely:

(a)the applicant must be a "person aggrieved";

(b)the application must be in the correct form and must relate to at least some of the goods for which the trade mark is registered;

(c)there must be no Court proceedings pending which relate to the trade mark; and

(d)at least one of the grounds referred to must be made out.

1. In the present case, the only contentious issue is (d), namely, whether the applicant is correct in its assertion that section 92(4)(b) has been satisfied. The application for removal is in the correct form and covers all the goods for which the trade marks are registered. The application alleges that the applicant is aggrieved by the registration of 716542, 716543 and 717227. The application also states that it is the applicant's understanding that there are no pending court proceedings.

The Evidence

1. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Arthur Nestor	19.10.2002	AN-1 to AN-4	Nestor
Con Andronicou	28.10.2002	Andronicou
Avi Haines	28.10.2002	Haines
Evidence in Answer
Lyn Stevens	29.01.2003	LS-1 to LS-19	Stevens
Nicolas van de Merwe	30.01.2003	NvdM-1 to NvdM-25	Van de Merwe
Christopher Daniel Simmonds	28.02.2003	Annexure A	Simmonds

Standing

1. Section 92(1) of the Act requires a removal applicant to be a "person aggrieved". In its application for removal, the applicant has asserted that it aggrieved by the registration of 716542, 716543 and 717227. This assertion is substantiated by the declaration of Nicolas van de Merwe, which establishes that the applicant has a substantial business interest in the golden breed trade marks.

2. The standing of the applicant to file the removal action has not been brought into question in the opponent’s notice of opposition. 

3. I am satisfied that the applicant is a person aggrieved.

Use During Relevant Period

The relevant legislation is contained in of section 100 of the Act. The relevant parts state

100.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

...

(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

...

(3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

`(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period

1. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. 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] FCA 261 ("Woolly Bull") at paragraph 17

2. Having regard to the evidence and submissions by the applicant, I am not satisfied that the opponent has used the trade mark during the relevant period.

3. The evidence of genuine commercial use of goods shows use of a mark quite different to those registered, which is as shown:

1. The mark that is exhibited in evidence comprises a device featuring the male/female symbols superimposed on a wave, and superimposed over the words golden breed australia written with the letters “o” and “d” coloured gold. Also exhibited were goods bearing a device comprising a rectangle showing the word golden in black on a white background and the word breed in white on a black background, with the letters “o” and “d” again coloured gold.

2. I am not satisfied that the opponent has used its registered trade marks.  I dismiss this ground of opposition.

Obstacle to Use

1. The relevant legislation is contained in of section 100 of the Act. The relevant parts state:

   100.

   ...

   (3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   ...

   (c)the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

1. Although the opponent raised this ground in his notice of opposition, the evidence in support of the opposition appears to be solely directed at establishing use during the relevant period.

2. I am not satisfied that this ground of opposition is made out, and I reject it.

Registrar's Discretion

Determination of opposed application—general

101. (1) Subject to subsection (3) and to section 102, if:

(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b)the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(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. In deciding an opposed removal application, the Registrar is called on to exercise a discretion: the Registrar "may" remove a registration or "may" decide that the trade mark should not be removed even if the grounds for removal have been established . The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at 482:

If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.

1. What constitutes "sufficient reason" has been enunciated by Deputy Registrar Hardie in Figgins Holdings Limited v Beltrami SpA (1998) 46 IPR 411, at 418:

   Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist is on the opponent to the removal application.

2. I have had regard to the evidence served in this matter and to the submissions made by counsel for the applicant at the hearing in deciding, as the delegate of the Registrar, whether there is sufficient reason to leave the present trade mark on the Register.

3. I am not satisfied on the evidence and submissions before me that there are any special facts and circumstances, or an overriding question of public interest.

Conclusion

1. I find that the opponent has not discharged the onus placed on it under the Trade Marks Act 1995 of showing why trade mark registration numbers 716542, 716543 and 717227 should not be removed from the Register on the grounds of non-use during the period in question. Accordingly, I find that the opponent has been unsuccessful in its opposition to the applicant's action under s.92.

2. Therefore, I dismiss the opposition and direct that registration numbers 716542, 716543 and 717227 be removed from the register unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

Costs

1. As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

27 February 2004