Atomic Skifabrik Alois Rohrmoser v Sasdor Pty Ltd

[1991] ATMO 13

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by SASDOR PTY LTD to an Application by ATOMIC SKIFABRIK ALOIS ROHRMOSER for removal of Trade Mark No 402509 from the Register

On 16 June 1987 ATOMIC SKIFABRIK ALOIS ROHRMOSER ("Atomic"), a firm registered in accordance with the laws of Austria, of Markt 44, A-5602 Wagrain, Austria, lodged an application pursuant to the provisions of the Trade Marks Act 1955 ("the Act") seeking the removal of trade mark No. 402509, registered in the name of SASDOR PTY LTD, a Victorian company, whose address as shown on the Register is 3rd Floor, 286 Toorak Road, South Yarra, Victoria (referred to as "Sasdor").
The grounds for removal set out in the application are those contained in paras (a) and (b) of sub-section (1) of s.23 of the Act, namely:

(a)That the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to all of those goods by it, and that there has, in fact, been no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being earlier than one month before the application;

(b)up to one month before the date of this application, a continuous period of not less than three years had 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 goods or any of them by the registered proprietor of the trade mark for the time being.    

The application seeks removal of the mark from the Register in respect of all or any of the goods for which the mark is registered, namely:

"Women's and men's clothing, excluding clothing for use in contact with atomic machinery and also excluding sports clothing and in particular ski clothing."

On 23 December 1987 Sasdor lodged a notice of opposition to the application under s.23, having obtained an extension of the time prescribed by reg. 22 in order to do so. The principal ground of opposition was as follows:

Registered Trade Mark "Atomik" No. A402,509 ("the Mark") was registered in good faith on the part of Sasdor and the Mark has been used in good faith by Sasdor in relation to the type of clothing permitted by the Mark since approximately the 4th day of July, 1985 being the date that the Mark Application was accepted by the Patent, Trade Marks and Designs Office which Application was subsequently advertised in the Official Journal on the 11th July, 1985.

Evidence in support of the application was served on Sasdor's solicitors on 18 July 1988.  It consisted of:

Statutory Declaration of Robert Charles Kelson made at Richmond, Victoria on 19th June 1987.

Statutory Declaration of Vince Pepi made at Melbourne, Victoria, on 30th June 1987.

Statutory Declaration of Peter Pausewang made at Maidstone, on 23rd September 1987.

Statutory Declaration of Nava Kingston made at St. Kilda, Victoria, on 12th October 1987.

Statutory Declaration of Stephen Charles Berry made at St. Peters, New South Wales on 22nd December 1987.

Service of Sasdor's evidence-in-answer was completed on 18 October 1988.  The evidence comprised;

Statutory Declaration of Daniel Aharon Roseby made at Melbourne on the 17th day of October 1988 together with exhibits relating thereto.

Statutory Declaration of Elaine Susan McWhinney made at Melbourne on the 17th day of October 1988 together with original exhibit relating thereto.

A further declaration of Robert Charles Kelson dated 13 June 1989 comprising Atomic's evidence in reply was served on Sasdor on 14 June 1989.
Pursuant to reg 58 the attorneys for Atomic on 30 April 1990 lodged an application for the appointment of a time and place for the hearing of the opposition and the matter eventually came on before me on 17 September 1990 in Melbourne. Mr Robert Kelson of the firm of patent attorneys Callinan Lawrie appeared for the s.23 applicant, Sasdor. The solicitors acting on behalf of Atomic advised that their client would not be represented at the hearing.
Person aggrieved
Section 23 provides that "a prescribed court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed in respect of any of the goods or services in respect of which it is registered ..." on certain grounds there prescribed. It is therefore necessary for an applicant under s.23 to show, as a threshold question, that it is a person aggrieved by the registration of the challenged mark. Mr Kelson relied on an application, No 433638, lodged by Atomic on 24 September 1985 to register the word ATOMIC in respect of all goods in Class 25. The examiner raised an objection in the first report dated 27 July 1987 in terms of s.33 of the Act based on Sasdor's registered mark ATOMIK. This objection was sustained and Atomic was ultimately successful in securing registration pursuant to sub-section 34(2) for a limited range of goods for which it had shown prior and continuous use of the mark. Although the initial examiner's objection was subsequent to the lodgment of the s.23 application Mr Kelson submitted that Atomic was a person aggrieved from the date of lodgment of its application for registration.
          In Continental Liqueurs Pty Ltd v G.F. Heublein and Bro Inc 103 CLR 422 at 428 Kitto J said:

"The applicant has applied for registration of three trade marks consisting of or containing the word "Smirnoff", and the examiner has made adverse reports under s.33(2) on the ground, amongst others, that each of the proposed three marks so closely resembles the respondent's mark as to be likely to deceive. This would suffice even by itself to give the applicant a locus standi."

In Ritz Hotel Ltd v Charles of the Ritz and Anor, (1989) AIPC 90-546, McLelland J held that the material time for ascertaining whether the applicant is a person aggrieved is the date of application. That date was a little over a month before the adverse reports referred to by Kitto J were issued. But in my view Atomic was a person aggrieved at the material date by virtue of the lodgment of its application for registration even though the examiner's objections would only be raised later. In any case Atomic gained registration for its mark ATOMIC on the very ground that its use of that mark antedated the first use or date of application for registration by Sasdor of its mark and that its use of the mark had been continuous since then. It had been compelled to restrict the ambit of its registration because of Sasdor's prior registration. As Lord Herschell stated in the leading case of Powell's Trade Mark, (1894) 11 RPC 195:

"Whenever it can be shewn, as here, that the Applicant is in the same trade as the person who has registered the Trade Mark, and wherever the Trade Mark, if remaining on the Register, would, or might limit the legal rights of the Applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Registerm, he could lawfully do, it appears to me that he has a locus standi to be heard as a person aggrieved.

And as McLelland J said in the Ritz case (supra), at p.38,788:

The meaning of the expression "person aggrieved" in legislation cognate with sec. 22(1) and 23(1) of the Act has been the subject of consideration in numerous cases, the reconciliation of which I do not propose to attempt, even if it were thought possible. Decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed (see Attorney-General (N.S.W.) v Brewery Employees Union of N.S.W. (1908) 6 CLR 469; Powell v. Birmingham Vinegar Brewery Co. (1894) A.C. 8; Daiquiri Rum Trade Mark (1969) R.P.C. 600; Crean & Co. v. Dobbs & Co. (1930) 3 C.L.R. 22). It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. In my opinion the concept does not admit of further refinement."

In my view, therefore, Atomic was a person aggrieved at the material date by the registration of the mark ATOMIK by Sasdor both by virtue of its prior and continuous use of the mark ATOMIC in relation to articles of sports clothing and by virtue of its application to register the word ATOMIC for all articles of clothing in Class 25 dated 24 September 1985.

The evidence
          For the purposes of para 23(1)(b) the period during which non-use of the mark ATOMIK by Sasdor is required to be shown is 16 May 1984 to 16 May 1987 being one month prior to the lodgment of the application for removal.  Mr Kelson's own declaration in support of the application states that in May 1987 he caused certified copies to be made of the annual returns lodged by Sasdor with the Corporate Affairs Office in Melbourne, that these returns showed that in the years 1983, 1984 and 1985 Sasdor acted solely as the trustee of a discretionary family trust and had not therefore been using the trade mark on its own behalf.  He further states that his investigations revealed that the company did not at January 1987 trade at the address shown on the records of the Corporate Affairs Office, which is also the address shown on the Register of Trade Marks.  Copies of the company's annual returns for the years 1981-1985 were exhibited to Mr Kelson's declaration and he pointed out many instances where the business of Sasdor is described as that of trustee.
          The declaration of Vince Pepi states that he is Operations Manager of INGE Detective Agency Pty Ltd, that on or about 22 May 1986 he was requested by Messrs Callinan and Associates, the patent attorneys for Atomic, to carry out a detailed investigation of Sasdor, that preliminary investigations failed to locate that Company and that further instructions were received on 27 June 1986.  A copy of that letter is exhibited to the declaration and shows that the investigators were requested to ascertain whether Sasdor was operating at 3rd floor, 286 Toorak Rd, South Yarra.  In response to this request the agency submitted the following report to Callinans:

"Our licenced enquiry agent ... left our offices and proceeded to 686 Toorak Road, South Yarra.  Discreet and confidential enquiries revealed that the subject company was not located at those premises.  Further record searches and telephone attendance also failed to reveal the current whereabouts of Sasdor Pty. Ltd. and we are of the opinion that the company is no longer in operation."

The declaration of Peter Pausewang states that he is a director of Denpro Pty Ltd, manufacturers, wholesalers and retailers of clothing, that he has been involved in the clothing trade since 1975, that he is familiar with the trade marks used in the clothing trade and especially the casual clothing trade and that he is not aware of the use of the trade mark ATOMIK by any person in relation to clothing, and in particular that he is not aware of any use by Sasdor between 19 January 1984 and 23 September 1987 when the declaration was made.  The same facts are declared to by Nava Kingston for the period 19 January 1984-12 October 1987.  She is a director of F.& N. Kingston Nominees Pty Ltd, importers, manufacturers and wholesalers of clothing, has been in the clothing trade since 1973 and declares herself to be especially familiar with trade marks used in the "more trendy" area of the clothing industry.
          Stephen Charles Berry is managing director of Casa Alpina Pty Ltd, an authorised Australian representative of the applicant Atomic which sells goods bearing the mark ATOMIC.  He also declares that he is not aware of any sales of goods under the trade mark ATOMIK, in particular clothing.  He believes he would become aware of such sales because of the similarity between that mark and ATOMIC.
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 better 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."

In considering the evidence in support of the s.23 application described above I cannot afford any weight to the Kelson and Pepi declarations. I cannot see why use of a trade mark by a trustee is any less use than that by any other registered proprietor or that such use inures to the benefit of the beneficiaries of the trust. Despite the prohibition in s.15 of the Act against notice of a trust being placed on the Register, nevertheless, in my opinion use of a mark by a registered proprietor who is a trustee is use by that trustee for all purposes under the Act. Likewise I cannot regard a possible change of address of a registered proprietor or the fact that it does not trade at what may be the address of its registered office as contributing anything to the establishment of a prima facie case of non-use.  However, I am prepared to accept the Pausewang, Kingston and Berry declarations, despite the fact that the latter is not independent of Atomic, as sufficient to constitute that "slight evidence" of which Windeyer spoke in the Estex case (supra).  They are persons who by their connection with the trade, although in somewhat specialized areas of it, might be expected to have seen or heard of the mark.  It is slight evidence but sufficient in my view to shift the evidentiary burden to the opponent Sasdor.
          The opponent's evidence in answer, as already mentioned, consists of a declaration of Daniel Aharon Roseby, a director of Sasdor, together with Exhibits DAR1-DAR13, and a declaration of Elaine Susan McWhinney.
          Mr Roseby states that Sasdor has at all material times carried on business as a trustee, that the address mentioned in the Kelson declaration was in fact until 15 July 1988 the address of the registered office of Sasdor, the address of Sasdor's accountants but that Sasdor never had any connection with the address 686 Toorak Road, South Yarra, referred to in paragraph 3 of the Pepi declaration.  During the relevant three year period Mr Roseby states that Sasdor has operated from various retail outlets including Shop 14, Embank Arcade, 325 Collins Street, Melbourne which it opened in September 1984 and from which it has traded ever since.  A second store was opened at Shop 3, 292 Flinders Street in May 1985, a third store at 36-38 Hardware Lane, Melbourne in September 1986, a fourth at 96 Bridge Road, Richmond in October 1986 which it has operated ever since.  Also, from May-December 1987 it traded from premises at 100 Bridge Road, Richmond.  All of this activity took place during the relevant three year period.  Mr Roseby states that Sasdor manufactured its own clothing and sold by retail clothing manufactured by it and by other manufacturers.  Since 1983 Sasdor has carried on this business under the registered business names ANDREA GOLD AGENCIES and others.  During this time also it sought and was granted registration of the trade mark ATOMIK.  Mr Roseby states that during the period February 1984-June 1987 labels and swing tags bearing the mark were manufactured for Sasdor and affixed to garments by sub-contractors who produced the goods for Sasdor.  The completed articles were delivered to the retail premises of Sasdor and were there sold to the public.  Exhibited to the Roseby declaration are three invoices from TMG Woven Labels to Andrea Gold Agencies two of which bear dates during the year 1984 and addressed to 2nd Floor, 159 Flinders Lane, Melbourne and the third of which, dated 31.8.87, is addressed to 96 Bridge Road, Richmond.  Only one of these invoices falls within the relevant three year period and is in respect of 5,000 woven labels bearing the word ATOMIK.  Also exhibited to the declaration are invoices from M.J. Printing Pty Ltd to Andrea Gold Agencies at the same two addresses and over the same period of time.  These are in respect of swing tickets bearing, among others, the mark ATOMIK.  Samples of both woven labels and swing tickets are also attached.  Invoices from four sub-contractor manufacturers of clothing were also submitted.  These are G.F. Sport Action, Najar Distributors, Wendouree Fashions and Jack Peiro Pty Ltd.  They relate to items of clothing such as suits, vests, coats, tops, jackets, skirts, jumpsuits, blouses, dresses, pants, shorts.  All are addressed to Andrea Gold, A. Gold, Andrea Gold Agencies or Sasdor P/L.  Many of them carry dates within the relevant three year period and those from Jack Peiro Pty Ltd among the details of the goods delivered specify the label or swing ticket attached to the garment.  Four invoices during the period at issue specify that the label or swing ticket bore the word ATOMIK.  A further group of invoices from M.R.C. Fashion also refer to the goods as ATOMIK.  Only two of those carry dates within the period and both refer to ATOMIK in relation to shirts.  Exhibit DAR 14 of Mr Roseby's declaration consists of samples of advertisements for Andrea Gold Agencies in which articles of clothing are advertised under various marks among them ATOMIK.  One of these advertisements was inserted in The Ragtrader, clearly dated March 31 1987.  None of the others featuring the ATOMIK mark carry any identifiable date.
          The remaining evidence for Sasdor consists of a declaration of ELAINE SUSAN McWHINNEY.  Ms McWhinney states that in or about the month of April 1986 she purchased a pants suit from Sasdor Pty Ltd trading as Preference at the Embank Arcade, 325 Collins Street, Melbourne boutique and that the article had attached a swing ticket and also a cloth label both bearing the mark ATOMIK.  The suit itself was submitted in evidence.  Both the top and the pants bore cloth labels with the word ATOMIK.  The swing ticket had presumably long been discarded.
          None of this evidence of Mr Roseby and Ms McWhinney on behalf of Sasdor was challenged by the attorneys for Atomic.  In reply Mr Kelson submitted a further declaration dated 13 June 1989 in which he states that he ordered certified copies of the annual returns lodged at the Corporate Affairs Commission in Melbourne on behalf of Sasdor for the periods ending 30 June 1986, 30 June 1987 and 30 June 1988.  He was informed, he says, that no annual returns were filed for the latter two years.  In that for year ended 30 June 1986 it was stated that Sasdor acted principally as trustee of a trading trust.  I have already stated my view that use of a mark by a trustee is use in the fullest sense and is no different from use by any other person.  In particular I cannot accept the argument that use by a trustee inures to the benefit of the cestuis que trust. I therefore regard this evidence as irrelevant to the issue at hand. Mr Kelson then refers to copies of documents exhibited to the declaration which had been obtained under the Freedom of Information Act. These consisted largely of correspondence between Mr Roseby on behalf of Sasdor or Andrea Gold Agencies and the examiner of trade marks who was examining Sasdor's application for the registration of the word ATOMIK during the course of examination. The first letter, dated 16 February 1984, from Mr Roseby requested that examination of the application be expedited "for fear of infringement". This request was granted and an examiner's report was issued on 3 May 1984 which among other things required the applicant to lodge a statement indicating whether the mark was used or was presently intended to be used by the applicant in respect of all the goods specified. This was to comply with the requirements of sub-reg 8(1) of the Trade Marks Regulations. The application as lodged had sought registration in respect of "Clothing". In his reply dated 9 May 1984 Mr Roseby responded to this request as follows: "We are currently using the trade mark "ATOMIK" in relation to class 25 (clothing) - specifically women's sportswear". In her next report issued on 6 June 1984 the examiner again addressed the question of the requisite statement of use in view of Mr Roseby's earlier reply as follows:

"8.The statement of use set out in paragraph 3 of the applicant's letter has been noted.  However, that statement indicates that the applicant is only using the mark in respect of women's clothing.  If the applicant does not intend to use the mark in respect of clothing other than women's clothing the specified goods should be qualified to reflect the current and intended use.  For example (taking paragraph 7 into account) WOMEN'S CLOTHING, EXCLUDING CLOTHING FOR USE IN CONTACT WITH ATOMIC MACHINERY AND ALSO EXCLUDING SPORTS CLOTHING AND IN PARTICULAR SKI CLOTHING.

If the applicant does intend to use the mark in future on a wider range of clothing than just women's clothing, a supplementary statement which indicates that the applicant presently intends to use the mark on other types of clothing should be lodged."

The reason for the suggested exclusion of "sports clothing and in particular ski clothing" was in order to overcome an objection to registration (referred to in para 7) based on two registered marks of the s.23 applicant in this case, Nos. 321196 and 374835, the former registered in respect of skiing equipment and accessories and the latter in respect of sunglasses, spectacles for sporting purposes and spectacles for skiing. Mr Roseby's reply of 15 June 1984 consented to the suggested exclusion but indicated that the applicant was not willing to restrict the specification of goods to "women's clothing". He added that "... maybe in the future the label could be used for men's clothing". This depended, he said, on the fate of another registered mark, No 306925, consisting of the word ATOMIC and registered in respect of clothing in general which had also been cited as an objection to the registration of Sasdor's mark. This mark had in fact been removed from the Register for non-payment of the renewal fee but could still have been restored before 4 May 1985. At that time, Mr Roseby said, the applicant would decide whether to "extend the label to men's clothing or not". This did not satisfy the regulation or the examiner who required a definite statement of use and intended use. She understood that a final statement of use would be lodged when the status of the cited mark 306925 was finalised in 1985. In a further letter of 28 February 1985 Mr roseby confirmed that he intended to await the permanent removal of the ATOMIC mark from the Register before furnishing a definitive statement of intended use of the mark. However, the examiner issued a further report before that date, on 22 March 1985, suggesting that if the position in relation to men's clothing had been resolved the applicant should make a statement along the following lines:

"I ... hereby state that SASDOR PTY LTD is using or presently intends to use the trade mark ATOMIC in   respect of the following goods: ...".

She also requested the applicant's consent to the restriction of the specification of goods as previously suggested.  Finally, in a letter dated 3 April 1985 Mr Roseby submitted the following statement of use in fulfilment of the official requisition:

I Daniel Roseby (director of Sasdor P/L) hereby state that Sasdor P/L is using or presently intends to use the trademark "ATOMIK" in respect of the following goods;

WOMEN'S & MEN'S CLOTHING EXCLUDING CLOTHING FOR USE IN CONTACT WITH ATOMIC MACHINERY AND ALSO EXCLUDING SPORTS CLOTHING AND IN PARTICULAR SKI CLOTHING.

Following amendment of the specification of goods to accord with the above the application was finally advertised accepted in the Official Journal of 11 July 1985. Mr Kelson submitted that the inference to be drawn from this course of correspondence is that the applicant did not have a "settled intention" to use the mark in relation to men's clothing and that in accordance with the terms of para 23(1)(a) of the Act "the trade mark 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 goods ...". Mr Kelson also submitted that as in his declaration of 17 October 1988 in his evidence-in-answer in this opposition proceeding Mr Roseby refers to previous declarations made by him in the history of the conflict between these two parties I was entitled to take those earlier declarations into consideration in these proceedings. He referred in particular to two declarations dated 16 December 1987 and 27 March 1986 respectively. The first of these was filed in relation to an application by Atomic for an extension of time within which to lodge notice of opposition to registration of Sasdor's mark. At para 3 of that declaration Mr Roseby states:

"Sasdor acts as Fashion Agent, Manufacturer and Retailer of women's clothing.  Since approximately 4 July 1985, (being the date that the Mark was accepted) it has manufactured and been the Wholesale Supplier of women's clothing as defined by the Mark to various Retailers.  The wholesale value of such production is in excess of $344,300.00."

At para 4 of the same declaration Mr Roseby states:

1. That Sasdor, in its capacity as Retailer, operates under its various trading names from the following retail locations:

(a)36-38 Hardware Lane, Melbourne.

(b)Shop 14, Embank Arcase, 325 Collins Street, Melbourne.

(c)Shop 3, 292 Flinders Street, Melbourne.

(d)96 Bridge Road, Richmond.

(e)100 Bridge Road, Richmond.

In all of these retail locations, Sasdor has sold from time to time significant quantities of womens clothing under the label of the Mark.  In excess of 50 per cent of the clothing items manufactred by Sasdor have been sold from the Retail locations referred to herein.  It can therefore not be said that the Mark was registered without an intention in good faith on the part of Sasdor for registration and that there has been no use in good faith of the Trade Mark in relation to these goods.

It is to be noted that this declaration was made in December 1987, after the relevant three year period (16 May 1984-16 May 1987) and that therefore the period referred to in para 3 of the declaration overlaps with that period.  Mr Kelson pointed to the references to women's clothing only in both these paragraphs.  The earlier declaration of 27 March 1986, also in relation to the extension of time, recited the history of the correspondence between Sasdor and the examiner of trade marks which has already been set out here in some detail.  Mr Kelson's submission on this declaration was that it showed a lack of a settled intention on the part of the applicant to use the mark in relation to men's clothing.
Conclusion
          I turn to consider the applicant's case in relation to para 23(1)(b) firstly.  I have already found that the evidence adduced by Atomic was sufficient, though slight, to establish a prima facie case of non-use of the mark thus shifting the evidentiary onus to the opponent Sasdor.  The evidence adduced by Sasdor in turn clearly shows that during the relevant three year period from 16 May 1984 to 16 May 1987 Sasdor used the mark in relation to women's clothing.  Mr Kelson would have me go further and find that Sasdor used its mark only in relation to "women's fashion clothing" but I am not at all sure what goods would be covered by that expression.  It seems to me that "fashion" is a phenomenon which affects the entire range of clothing from underwear to outerwear, business, formal, evening, casual, sleepwear etc.  Sports clothing is of course excluded from the scope of the registration.  The actual demonstrated use of the mark would seem to relate mainly at least to articles of outerwear such as suits, skirts, blouses etc. but I do not consider it appropriate to attempt to limit the use of the mark to specific items of clothing.  I am satisfied to find that Sasdor has used the mark in relation to women's clothing.  On the other hand in view of the complete lack of evidence of use in relation to men's clothing I must also find that Sasdor has not used the mark during the relevant three year period in relation to men's clothing.
          In order to make aout a case under para 23(1)(a) an applicant must show first that the mark was registered without an intention in good faith that it should be used and, secondly, that there has in fact been no use in good faith earlier than one month before the date of the application for removal.  I have already found that there was no use at all by Sasdor in relation to men's clothing.  Mr Kelson's case was that the intention to use the mark in relation to those goods was also lacking at the time of registration.  In view of my finding in relation to para (b) it is strictly unnecessary for me to make a finding in relation to para (a) but for the sake of completeness I will say that I do not think the evidence adduced by Mr Kelson is strong enough to support the inference he urged me to draw.  Certainly there was some initial hesitation on the part of Mr Roseby to declare an intention to use the mark in relation to men's clothing but in the end such a statement of intention was declared and the onus is on the applicant to show that it was made in bad faith.  Mr Kelson claimed that Mr Roseby's hesitation evinced a lack of a "settled intention" to use the mark.  This phrase seems to derive from the words of Lord Hanworth in Ducker's Trade Mark (1928) 45 RPC 397, at 402:

"I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a  mark which is to be definitely used or in respect of which there is a revolve to use it in the immediate future upon or in connection with goods.  I think that the words "proposed to be used" mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered."

At the same time, however, while the intention to use must be sufficiently definite it is not necessary to show an intention to use immediately or within any limited time.  In Aston v Harlee Manufacturing Company (1960) 103 CLR 391 Fullagar J said, at 401.

"There is another element mentioned by Dixon J in the Shell Co's Case*, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s.72, the mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars: the effect of In re Registered Trade Marks of John Batt & Co.+, is I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal."

*(1949) 78 CLR 627

+(1898) 2 Ch 432; 1899 AC 428

This is clearly not a case of a manufacturer of confectionery attempting to register a mark in respect of motor cars.  The applicant at the time of application was engaged in the clothing trade and although at the time its activities may have been confined to women's clothing it was perfectly feasible that in the future it would extend those activities into the field of men's clothing.  The most that the evidence is capable of showing in my opinion is that there may not have been an intention on the part of Mr Roseby to use the mark immediately or within any limited time.  This is not sufficient in my view to justify a finding of lack of good faith.
In the result I find that the s.23 applicant has made out a case of non-use of the mark under para 23(1)(b)in respect of men's clothing and is therefore prima facie entitled to an order that trade mark No. 402509 be removed from the Register in respect of "men's clothing".  No argument was presented to me that I should exercise the Registrar's discretion to refuse the removal of the mark and therefore I direct that, subject to any appeal from this decision, the mark be removed in respect of these goods.  The specification of goods should be amended to: Women's clothing, excluding clothing for use in contact with atomic machinery and also excluding sports clothing and in particular ski clothing.
          Both parties have been partly successful, the opponent in resisting the application with respect to women's clothing and the applicant in achieving removal of the mark in respect of men's clothing.  In those circumstances I consider it appropriate that I make no award of costs.

(M. HOMANN)
Hearing Officer

31 January 1991