Aussie Water Coolers Pty Ltd v Lee Bradley
[2020] ATMO 23
•18 February 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Aussie Water Coolers Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Lee Bradley to remove trade mark number 1517269 (class 11, 35) – AWESOME WATER - in the name of Aussie Water Coolers Pty Ltd
Delegate: | Katrina Brown |
Representation: | Opponent: Frances St John of Counsel, instructed by LegalVision ILP Pty Ltd Applicant: Ian Tannahill of Ahern Fox Patent & Trade Mark Attorneys |
Decision: | 2020 ATMO 23 Trade Marks Act 1995 (Cth) – application under section 92 – use in the relevant period in relation to class 11 – no use in relation to class 35 – discretion not exercised – registration to be partially removed. |
Background
Aussie Water Coolers Pty Ltd (‘the Removal Opponent’) is the registered owner of the following trade mark:
Registration: 1517269
Trade mark: AWESOME WATER (‘the Trade Mark’)
Filing date: 28 September 2012
Registered goods: Class 11: Water coolers
Registered services: Class 35: Advertising, business management, business administration and franchising services related to supply of water coolers
On 10 November 2017 Lee Bradley (‘the Removal Applicant’) filed an application seeking removal of the Trade Mark from the Register for non-use. The removal application was made in respect of all of the goods and services for which the Trade Mark is registered; that is for complete removal of the Trade Mark from the Register.
On 16 January 2018 the Removal Opponent filed a Notice of Intention to Oppose removal of the Trade Mark, followed by a Statement of Grounds and Particulars.
On 16 May 2018 the Removal Applicant filed of Notice of Intention to Defend the removal application.
In due course the Removal Opponent filed the following declarations as evidence in support and evidence in reply:
· Declaration of Desiree Fairbairn (Director of the Removal Opponent) made on 25 August 2018 with Annexures A to M (‘Fairbairn 1’); and
· Declaration of Desiree Fairbairn made on 18 February 2019 with Annexures A to D (‘Fairbairn 2’).
The Removal Applicant filed the following declaration as evidence in answer:
Declaration of Ian Tannahill (Ahern Fox Patent & Trade Mark Attorneys) made on 6 December 2018 with Exhibits IRT-1 to IRT-39 (‘Tannahill Declaration’).
The matter came before me, a delegate of the Registrar of Trade Marks, on 11 July 2019. The Removal Opponent was represented by Frances St John of Counsel. The Removal Applicant was represented by Ian Tannahill of Ahern Fox Patent & Trade Mark Attorneys. The Removal Applicant was also present.
The relevant provisions
Part 9 of the Trade Marks Act 1995 (‘the Act’) deals with removal of trade marks from the Register due to non-use.
The Removal Applicant nominated both s 92(4)(a) and s 92(4)(b) of the Act as the grounds for removal. Section 92(4) of the Act relevantly provides:
(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.
Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(a) or s 92(4)(b). Although distinct and alternative grounds, the Removal Opponent can rebut both by establishing that it used the Trade Mark in good faith in relation to the registered goods and/or services in the relevant period.[1]
[1] The Act, s 100(2)(a) and s 100(3)(a).
For the purposes of s 92(4)(a) the relevant period is any time before 10 October 2017. For the purposes of s 92(4)(b) the relevant period is the three-year period ending on 10 October 2017.
‘Use in good faith’ has a well-established meaning in removal matters. It is ‘real, as opposed to token, use in a commercial sense’.[2] Provided that the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] For example, one invoice, if genuine, may be sufficient.[4] The relevant standard of proof is on the balance of probabilities.[5]
[2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [16].
[3] Ibid [18].
[4] Geo W McPherson v Remington (1999) 47 IPR 636.
[5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].
In accordance with s 101 of the Act, I may decide to remove the Trade Mark from the Register in respect of any or all of the goods and/or services identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Discussion
As this is a removal matter, it is crucial that the Removal Opponent demonstrates that it used the Trade Mark in good faith in Australia in relation to the registered goods and services during the relevant period.
Exhibit A to Fairbairn 2 contains an invoice dated 4 February 2015. This invoice is from the Removal Opponent to a customer in Queensland. It is for the sale of goods described as ‘Awesome Water Bench Top – Cold & Ambient Water Cooler’. Additionally, on this invoice above the payment details, is the phrase ‘Specialists in AWESOME WATER products’ (original emphasis).
The Removal Applicant suspects that this invoice relates to a refurbished water cooler and relying on Wingate Marketing Pty Ltd v Levi Straus & Co[6] asserts that it does not amount to use by the Removal Opponent. The basis for this suspicion is because there is not an internal code on the invoice to identify the goods. In my opinion the Removal Applicant’s position rises no higher than a speculative musing. There is no evidence to support it. Notably, of the five invoices contained in Exhibit A to Fairbairn 2, only the invoice dated 4 September 2015 contains what could be described as product codes. Additionally, the invoice dated 18 February 2016 clearly describes the goods as ‘refurbished Awesome Water machine’ which suggests that the Removal Opponent identifies refurbished goods on its invoices with the word ‘refurbished’.
[6] (1994) FCR 89. In this case it was held that the sale by Wingate Marketing Pty Ltd of second-hand Levi jeans that still bore trade marks originally applied by Levi Straus did not amount to use of those trade marks by Wingate Marketing Pty Ltd.
I also note that the Removal Applicant seeks to discredit the invoice dated 4 February 2015 by questioning the accuracy of Ms. Fairbairn’s declarations. Due to the way Fairbairn 2 has been written there is some question as to whether the sale, which the invoice dated 4 February 2015 relates to, was made via a website or by another means such as a phone order. Importantly, this does not mean that the sale was not made. There is nothing before me to establish that this invoice is not genuine. I also note that in Fairbairn 1 the Removal Opponent’s revenue from the sale of ‘its AWESOME WATER water coolers’ in Australia has been declared for the years 2014 to 2017. This dispels any suggestion that the invoice merely evidences token as opposed to real use in a commercial sense.
I am satisfied that the invoice dated 4 February 2015 shows use of the Trade Mark in good faith by the Removal Opponent in Australia in relation to the registered goods in the relevant periods. As such, the Removal Opponent has rebutted the non-use allegation in relation to the registered goods.
However, I have reached a different conclusion in respect of the registered services. The evidence before me does not establish that the Removal Opponent has ever provided the registered services, let alone used the Trade Mark to do so. The Removal Opponent has not submitted, and there is no evidence before me to suggest, that there was an obstacle to use of the Trade Mark for the registered services in the relevant period.
As such the ground for removal under s 92(4)(b) of the Act has been made out only in respect of the registered services.
Discretion
Section 101(3) of the Act provides:
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.
In this matter, the question is whether it is reasonable not to remove the Trade Mark in respect of the registered services, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those services.[7]
[7] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28].
The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark in respect of the registered services.[8]
[8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273].
The Removal Opponent has made no submissions in relation to why I should exercise the discretion in its favour in respect of the registered services. Its submissions were confined to applying the discretion to retain the registration in respect of water coolers. In this matter, in the absence of submissions or persuasive evidence, I cannot be satisfied that it is reasonable to exercise the Registrar’s discretion in respect of the registered services.
Decision
I am satisfied that the Trade Mark was used by the Removal Opponent in the relevant period on or in relation to: water coolers. As such, the Removal Opponent has successfully rebutted the non-use allegations made under s 92(4)(a) and s 92(4)(b). It has not done so in respect of the registered services.
Therefore, I direct that, one month from the date of this decision, registration number 1517269 be removed from the Register in respect of class 35 - Advertising, business management, business administration and franchising services related to supply of water coolers.
If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the court.
Costs
The general rule is that costs follow the event. As both parties were, strictly speaking, partly successful I believe it is appropriate in this case that each party bears its own costs.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
18 February 2020
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