Australian Food and Beverage Group Pty Ltd v Cadbury Schweppes Pty Limited

[1998] ATMO 56

TRADE MARKS ACT 1955 AND TRADE MARKS ACT 1995

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

Applications under s23 of the 1955 Act and s92 of the 1995 Act by AUSTRALIAN FOOD & BEVERAGE GROUP PTY LTD for the Removal from the Register of Trade Marks of Trade Marks Nos 242491, 242492, 244043 and 244044 in the Name of CADBURY SCHWEPPES PTY LTD

Background

Applications under s23 of the Trade Marks Act 1955 (the s23 applications) for the removal of the above-mentioned trade marks from the Register were lodged by Australian Food & Beverage Group (AFBG) on 20 March 1995 (242491 and 244043) and 13 January 1995 (242492 and 244044). The applications specified both of the possible grounds under that section, namely:

23. (1) Subject to this section and to section 93, a prescribed court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered, on the ground-

(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 those goods or services by him or, if it was registered under sub-section (1) of section 45, by the body corporate or registered user concerned, and that there has, in fact, been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being earlier than 1 month before the application; or

(b) that, up to 1 month before the date of the application, a continuous period of not less than 3 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 services by the registered proprietor or a registered user of the trade mark for the time being.

The relevant periods of non-use in accordance with s23(1)(b) are therefore

242491 and 244043	20 February 1992 to 20 February 1995
242492 and 244044	13 December 1991 to 13 December 1994

Notices of opposition to the applications in respect of 242491 and 244043 were lodged by the registered proprietor of the trade mark, COPPER KETTLE, Cadbury Schweppes Pty Ltd (Cadbury) on 27 September 1995.  Notices of opposition to applications in respect of 242492 and 244044 were lodged on 17 August 1995.  The grounds of opposition were that:

The Applicant is not a person aggrieved within the meaning of Section 23(1) of the Trade Marks Act 1955.

The conditions required by Section 23(1)(a) and (b) have not been fulfilled.

The application for registration of the Trade Mark was made with a bona fide intention to use the Trade Mark and the Trade Mark has been so used.

The Trade Mark and/or an associated trade mark has been used in Australia by the Registered Proprietor and/or a Registered User in respect of goods for which the Trade Mark is registered and/or goods of the same description as those goods, within the period of three years up to one month prior to the date of the application for removal.

The discretion of the Register should be exercised in favour of the Registered Proprietor by virtue of the circumstances surrounding the use and registration of the Trade Mark in Australia.

Applications under s92 of the Trade Marks Act 1995 (the s92 applications) for the removal of the same four registrations were filed by AFBG on 24 May 1996. That section provides as follows:

Application for removal of trade mark from Register etc.

92.(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.

Note:For file see section 6.

(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

The relevant period of non-use in accordance with s92(4)(b) is therefore 24 April 1993 to 24 April 1996.

Notices of opposition to those applications were filed by Cadbury on 12 September 1996.

The grounds of opposition to those applications were the same mutatis mutandis as those for the s23 applications

Details of the trade marks concerned are as follows:

Number	Trade Mark	Class	Goods
242491	Copper kettle	29	Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, eggs, milk and other dairy products; edible oils and fats; preserves, pickles
242492	Copper Kettle	30	Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powders; salt, mustard, pepper, vinegar, sauces, spices, ice
244043	29	Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, eggs, milk and other dairy products; edible oils and fats preserves, pickles
244044	30	Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powders; salt, mustard, pepper, vinegar, sauces, spices, ice

Both matters were set down for hearing in Canberra on 25 March 1998.  Mr Colin Oberin of Arthur Robinson & Hedderwicks, solicitors, appeared for Cadbury.  Mr Richard Cobden of counsel appeared on behalf of AFBG.

Evidence

The evidence in respect of the removal applications consists of the following:

v  Evidence in support of the s23 applications:

¨   Declaration of John R Geber, Managing Director of AFBG, made 30 April 1996, with Exhibit A.

v  Evidence in support of the opposition to the s92 applications and in answer to the evidence in support of the s23 applications:

¨   Declaration of Ewing R Sutherland, Vice President External Development of Cadbury, made 8 May 1997, with Exhibits ERS1-ERS5.

¨   Declaration of Robin Blair Cuy, Company Secretary of McCain Foods (Aust) Pty Limited, made 30 May 1997, with Exhibit RBC1.

¨   Declaration of John Strom, Grocery Buyer of Franklins Limited, made 26 May 1997.

¨   Declaration of Peter Wise, Merchandise Manager of Voss/Purity Supermarkets, made 30 May 1997.

¨   Declaration of Keith Chessell, Packaging Manager of Schweppes Cottee's, a division of Cadbury, made 26 May 1997, with Exhibits KC1 and KC2.

¨   Declaration of Colin J Oberin, principal of Oberins Arthur Hedderwicks and a consultant patent attorney to that firm, made 30 May 1997, with Exhibits CJO1 and CJO2.

v  Evidence in answer to the evidence in support of the opposition to the s92 applications and in reply to the evidence in answer to the evidence in support of the s23 applications:

¨   Declaration of Geoffrey Gale, Supply Chain Program Manager of Franklins, made 30 July 1997.

"person aggrieved"

Both s23 of the 1955 Act and s92 of the 1995 Act require that an applicant for the removal of a trade mark from the Register must be a person aggrieved by the existence on the Register of the trade mark sought to be removed. That AFBG was a person aggrieved by the trade marks in question was asserted by it in its respective removal applications and denied by Cadbury in its notices of opposition. It is for an applicant who seeks to have a mark removed to establish his or her case. The applicant bears the onus of establishing that he or she is a “person aggrieved” for the purposes of s23(1) and s92(1) of the Acts: Kraft Foods Inc v Gaines Pet Foods Corporation 34 IPR 198. Moreover, this a threshold issue: per Gummow J in NSW Dairy Corp v Murray Goulburn Co-op 14 IPR 26.

The meaning of “person aggrieved” in the context of removal applications has been considered by the courts on a number of occasions.

In Powell’s Trade Mark (1894) 11 RPC 4 at 7-8 Lord Herschell LC said:

Wherever 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 Register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved.

There is no evidence before me as to the business or trading activities of AFBG.

However, in a more recent case McLelland J in Ritz Hotel Ltd v Charles of the Ritz & Anor (1988) 12 IPR 417, said, at 454:

Meaning of "person aggrieved"

The meaning of the expression "person aggrieved" in legislation cognate with ss 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 (NSW) v Brewery Employes Union of NSW (1908) 6 CLR 469; WilliamPowell (trading as Goodall, Backhouse & Co) v Birmingham Vinegar Brewery Co Ltd [1894] AC 8; "Daiquiri Rum" Trade Mark [1969] RPC 600; Crean & Co v Dobbs & CO [1930] 3 DLR 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 deference to a submission by the defendants based on, inter alia, "Consort" Trade Mark [1980] RPC 160 at 166, I would merely add that in my view there is no legitimate basis for introducing into the concept of "person aggrieved" for the purposes of ss 22(1) or 23(1) any restriction based on the conditions required to be fulfilled by an applicant for registration of a trade mark. I reject the defendants' submission that "the plaintiff must show a trade rivalry by demonstrating that it is either in trade or has a fixed and present intention to enter trade in Australia in goods sufficiently similar to those covered in Classes 3 and 26 as to be likely to cause confusion". In the present case the question whether the plaintiff is a person aggrieved in relation to any of the claims made in the proceedings has no necessary relationship to the question whether the plaintiff could itself successfully apply for registration of any of the subject marks: for example, see Re Riviere's Trade Mark (1884) 26 Ch D 48; Re Trade Mark of La Societe Anonyme des Verreries de L'Etoile (1984) 11 RPC 142; Pink v J A Sharwood & Co Ltd (1913) 30 RPC 725.

Moreover, AFBG has applied under 645104 and 645105 to register the trade mark copper kettle for the following goods:

Number	Class	Trade Mark	Goods
645104	29	Copper kettle	Meat, fish, poultry and game; meat extracts; preserved,          dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
645105	30	Copper kettle	Tea, coffee and substitutes thereof

The acceptance of those applications has been prevented by the existence on the Register of Cadbury's marks in respect of the same or similar goods. In Continental Liqueurs Proprietary Limited v G.F.Heublein and Bro. Incorporated 103 CLR 422 Kitto J. said, at 428:

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 s33(2) on the ground, amongst others, that each of the three proposed 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.

However, in Kraft General Foods Inc v Gaines Pet Foods Corporation 31 IPR 439, Hill J held that the words “person aggrieved” are not unique to trade mark law but occur in various statutes where the consequence is to exclude from standing persons whose interest is no greater than that of an officious bystander. The question whether a person is aggrieved is always a matter of fact and, in a trade mark removal action, the mere lodgment of an application to register the same trade mark is not in itself enough to make a person aggrieved. The applicant must also show that it uses or proposes to use the mark. The onus to show that it was a “person aggrieved” as at the date of lodgment of the removal applications lay upon Kraft. It had provided no evidence on oath of actual or proposed use and, in the absence of evidence other than the mere making of the application for registration, on the balance of probabilities it was not a “person aggrieved”. Leave to appeal from this decision was granted to Kraft.

In a unanimous decision the Federal Court dismissed the appeal. The Court held that an applicant for removal of a trade mark from the Register bears the onus of establishing that he or she is a person aggrieved by the registration. The material date is that of the lodgment of the removal application. The mere fact of having filed an application to register the same mark which application is blocked by the mark sought to be removed is not sufficient in itself to make the applicant a person aggrieved or to support an inference that the applicant intended to use the mark. If the application had been accompanied by material which clearly demonstrated such an intention the position is likely to be different.  Sackville J in the leading judgment said, at 206, after referring to the onus on the applicant who seeks to have a mark removed to establish his or her case:

Similarly, the applicant bears the onus of establishing that he or she is a “person aggrieved” for the purposes of s23(1) of the TM Act. The material time for determining whether the applicant is a person aggrieved is the date of the application - ie the date of commencement of the proceedings in which the claim for removal of the mark is made: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 194-5; 12 IPR 417 (SC(NSW), McLelland J)

He cited with approval the judgment of Hill J in the Court below:

...the mere fact that the person is an applicant [for registration] would not result in the conclusion that the person was a person aggrieved.  It follows that the submission made on behalf of Kraft that an applicant for a trade mark will always be a person aggrieved could not be accepted in such wide terms.  It is not the application per se for registration of a new mark which makes the applicant the person aggrieved in an expungement applicant (sic), it is the fact that the applicant must, to obtain registration of the mark, either use it or propose to use it.  So much is clear from the definition of “trade mark” in s6(1) of the Act and the reference in that definition to “used or proposed to be used”

It must be accepted that the onus of showing that it is a person aggrieved lies upon Kraft.  The relevant time at which the onus must be satisfied is the date of the application of expungement which in the present case was 23 June 1989.

In that case Kraft had lodged an application to register the trade mark GAINES on 22 June 1989 and , on the following day, 23 June 1989, had lodged an application under s23 to remove the trade mark GAINES in the name of Gaines Pet Foods from the Register. It subsequently lodged a statement of user pursuant to reg 8 on 11 August 1989, some six weeks after the lodgment date of the trade mark application. Kraft relied on the mere fact of its having applied to register the same trade mark to make it a person aggrieved. Sackville J went on to say, at 209:

In the present case, Kraft bore the burden of establishing the facts necessary to show that it was a “person aggrieved” for the purposes of an application under s23(1) of the TM Act to remove Gaines’ trade mark from the Register. It was perfectly clear from an early stage of the proceedings that Kraft’s standing to claim relief was an issue. Yet, in substance, the only evidence adduced by Kraft to support its claim to be a “person aggrieved” was proof that it had filed the application for registration of the GAINES mark on 22 June 1989 (the day before the removal application was filed and that it had subsequently lodged a statement of user.

The statement of user merely recited the words of reg 8(1) of the TM Regulations, without providing any further information to clarify which of the two apparently mutually exclusive propositions (current use or intention to use ) Kraft was asserting was true.  In my opinion, Hill J was fully justified in regarding that statement as carrying no probative weight on the issue of whether Kraft, in June 1989, intended to use the mark

...

It follows that the only evidence from which it might be inferred that Kraft intended to use the mark in June 1989 was the filing of its application for registration on 22 June 1989.  The filing of the application, of itself, does not necessarily require an inference to be drawn that the applicant intended to use the mark.  If the application had been accompanied by a clear statement of such an intention, the position is likely to have been different.  But Kraft’s application was accompanied by a statement of user that carried no probative weight in the present proceedings on the issue of intention to use... Hill J was, with respect, plainly right in concluding that the evidence fell well short of establishing that in June 1989 Kraft had used or intended to use the mark.  Such a finding precludes Kraft from establishing that it is a person aggrieved by the registration of Gaines’ mark on the ground that it had used or intended to use an identical or similar mark.

Mr Oberin submitted that AFBG was not "appreciably disadvantaged in a legal or practical sense by the register remaining unrectified or by the trade mark remaining unremoved", in the words of McLelland J in the Ritz case, supra..  In reliance on Kraft v Gaines, supra, he also submitted that the mere filing of the later applications by AFBG was not sufficient to make it a person aggrieved.  In that respect AFBG was in the same position as Kraft in that case.

Mr Cobden acknowledged the decision in Kraft v Gaines but maintained that AFBG was a person aggrieved by the registrations because they had been cited against its own applications to register the same mark. He also relied on a copy of a letter which was put in evidence in relation to an earlier hearing on the matter of an extension of time to serve evidence by Cadbury which had been opposed by AFBG. In that letter, dated 9 August 1996, from Arthur Robinson & Hedderwicks (ARH), solicitors for Cadbury, to Spruson & Ferguson, patent attorneys, who were at that time acting for AFBG reference was made to telephone conversations which were said to have taken place between a solicitor of ARH and an attorney of Sprusons on 8 May 1995 and 5 March 1996 in which the attorney was said to have told ARH that AFBG had filed the removal applications because it proposed to use the mark Copper kettle in respect of instant coffee, tea, drinking chocolate, cocoa and tea and coffee substitutes. ARH stated that the purpose of the letter was to make it clear to AFBG that its plan was misconceived because of the reputation of Cadbury in the trade mark. Mr Cobden argued that the evidence, once put in by the registered owner, was in for all purposes. He referred to s60 of the Evidence Act 1995 (Cth) which reverses the common law rule and permits the use of hearsay evidence that has been admitted for a non-hearsay purpose. Be that as it may, I think it is of little assistance to AFBG and I can give it little weight in discharging the onus on AFBG.

In the present case AFBG lodged its applications to register the trade mark Copper Kettle on 7 November 1994. The statements of user required under reg 8 were signed by the managing director Mr John Geber on 22 August 1995 and lodged on 31 August 1995. AFBG's applications under s23 were lodged on 13 January 1995 and 20 January 1995 and those under s92 on 24 May 1996. At those dates therefore, which are the relevant dates to establish that AFBG was a person aggrieved for the purposes of s23, the applications for registration were not accompanied by a clear statement of intention to use the trade mark Copper kettle. I must agree with Mr Oberin that AFBG is in the same position as Kraft in Kraft v Gaines. On that basis I am not prepared to accept that AFBG is entitled to be considered a person aggrieved for the purposes of its applications for removal under s23 of the Act. Those applications must fail at the threshold.

On the other hand, at the date of filing of the applications under s92 the two applications for registration by AFBG were accompanied by a definite statement that it was using or intended in the near future to use the trade mark applied for even though those statements were made under the 1955 Act. On that basis I find that AFBG was a person aggrieved for the purposes of s92 of the 1995 Act.

Evidence of use

The evidence of use of the trade marks in terms of s92 consists of the declarations in support already detailed above.

Mr Sutherland states that the trade marks were first used by CSPL in the early to mid-1970's in relation to coffee and "approximately 1971" in relation to "frozen vegetables" ..The trade marks were used by Cottees General Foods Limited (Cottees) which was subsequently bought by Cadbury.  In relation to frozen vegetables the trade marks were used by Cottees until 1983 "when the said trade marks were used under licence by McCain Foods (Aust) Pty Ltd".  He goes on to state that "over the years" coffee has been sold under the trade mark in various forms and that "over the years" the said goods have been sold in approximately "5,110 retail stores throughout Australia".  He goes on to give an estimate of the retail value of sales of coffee bearing the trade marks between the years 1984 and 1990 and to state that in the year 1991, 7,310 kilos of instant coffee bearing the trade mark COPPER KETTLE were sold.  Moreover, for "the period 1996", 6000 kilos, amounting to 2000 "units", to the value of $96,000 were sold.  Also included in the declaration are advertising figures for the years 1984-1990.  Exhibited to the declaration are invoices evidencing sales from SCHWEPPES COTTEES to FRANKLINS- NO FRILLS of a product described as "C. KT COFF GLASS…".  These invoices are dated in July and August 1996 and even assuming the abbreviations used would constitute use of the trade marks at issue the dates are well outside the relevant dates for my consideration here.

In all of the above evidence there is obviously a resounding absence of any reference to use of the trade marks during the relevant period under consideration.

Mr Robin Blair Cuy states that he is the Company Secretary of McCain Foods (Aust) Pty Limited, (here "McCain") and has been employed by that company for eleven and a half years in various capacities.  He asserts that the rights to use the trade marks in respect of frozen vegetables were acquired by McCain when it purchased "the processing plant" (sic) in 1984.  Following that acquisition McCain changed its packaging so that products were labelled with the McCain brand and the COPPER KETTLE TRADE MARK was a link for previously loyal COPPER KETTLE buyers.  An example of the packaging used by McCain is exhibited to the declaration.

Precise sales figures of goods sold bearing the COPPER KETTLE trade marks are not available.

Mr Cuy goes on to state that McCain and Cadbury have a registered user agreement dated 10 March 1994 in respect of trade marks 242491 and 244043.  The effective date of the recordal of that agreement was 2 September 1994.

Mr Cuy states further that "goods" sold bearing the COPPER KETTLE trade mark or "with reference to" the COPPER KETTLE trade mark have been sold through "most retail grocery outlets" throughout Australia.  "Over the years" some of the major grocery outlets which have stocked and sold "goods" bearing the COPPER KETTLE trade mark are Coles, Woolworths and Franklins.

"In 1984/85 a television advertising campaign featured the COPPER KETTLE trade mark."  "The focus of the advertising campaign was to inform the public that goods bearing the COPPER KETTLE trade mark were now processed by McCain."

None of this evidence addresses the precise points at issue, namely, any use of the trade marks on the relevant goods during the relevant period of 24 April 1993 to 24 April 1996.

The balance of the evidence consists of what may be categorised as "trade evidence":

John Strom, Grocery Buyer for Franklins, states that he has had some 27 years experience in the grocery business, has no connection with Cadbury and is familiar with the trade marks in question. He states that he associates the said trade marks with frozen vegetables and coffee and has been aware of the trade marks being in use in relation to frozen vegetables and coffee for approximately 15 years in Victoria, New South Wales and Queensland.  The first use he says was by General Foods and he believes that McCain now uses the trade marks "under authorisation".

Peter Wise, Merchandise Manager of Voss/Purity Supermarkets of Tasmania, states that he has had 16 years experience in the grocery trade, has no connection with Cadbury and is reasonably familiar with brands and trade marks used in the marketing of food and beverages throughout Australia.  He states that to his knowledge goods bearing the trade marks have been available nationally.  He associates coffee bearing the trade mark COPPER KETTLE with Cadbury and frozen vegetables bearing the trade mark with McCain which he believes produces those goods under licence from Cadbury.

Keith Chessell, Packaging Manager of Schweppes Cottee's, a division of Cadbury, states that he has worked for that employer for 31 years and for 25 of those years has been involved in packaging and marketing.  He considers that he is familiar with the trade marks and styles of packaging used on goods produced by Cadbury.  He exhibits to his declaration examples of labels used in the packaging of instant coffee by Cadbury prior to 1986 and, following a change in that year, of the packaging used subsequently, both featuring the words COPPER KETTLE. 

Finally, in the evidence in support of of the s92 application, there is the declaration of Colin J Oberin who apart from exhibiting samples of advertising of COPPER KETTLE instant coffee dating from 1983 and stating that he is personally aware of the use of the trade marks in relation to instant coffee and frozen vegetables since that date, states his belief that the use of the trade marks by a party other than Cadbury would be misleading and deceptive.

The declaration of Geoffrey Gale, Supply Chain Program Manager of Franklins, in answer to the above evidence, states that he was formerly employed as a Senior Grocery Buyer for that company in Richlands in Queensland, that from January 1995 to July 1996 the supermarket did not stock, offer for sale or sell any products under the name COPPER KETTLE but that in July 1996 he was approached by a representative of Schweppes Cottee's and as a result ordered a coffee product under the name of COPPER KETTLE in July 1996 and again in August 1996.  No further orders were placed because he was told by the supplier that the product was "out of stock".

In the result I can find no evidence of any use of the trade marks by the registered proprietor during the relevant period of 24 April 1993 to 24 April 1996.

The final argument on behalf of the opponent Cadbury is that I should exercise the Registrar's discretion to refuse removal of the trade marks from the Register.

That the Registrar has a residual discretion is now well established, though there was formerly some doubt.  As Kitto J said in  Re Carl Zeiss Pty Ltd’s Application (1969) 122 CLR 1 at 5-6:

In Continental Liqueurs Pty Ltd v G F Heublein and Bro. Inc. (1960) 103 CLR 422 at 433, I noticed the question thus raised, but expressed no view upon it. In Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254, at pp 260, 261, Windeyer J indicated a tendency of opinion against the existence of a discretion to refuse an application for removal, but found no need to decide the point. I have now heard full argument upon it and have come to the conclusion that a discretion exists. As Lord Evershed pointed out in Re J Lyons & Co. Ltd.’s Application [1959] RPC 120, at p 130, the terms of the proviso to s26(1) of the Trade Marks Act, 1938 (U.K.), corresponding with those of the Australian sub-s (2), carry the implication that where the special facts there referred to are not shown the tribunal prima facie ought not to refuse the application; but as his Lordship said: “That is not to say that no discretion whatever is left by the use of the word “may”... Exceptional circumstances may arise...which would make it just to refuse the application even though the proviso were not at all called into play.”  This view seems to have been held consistently in England under successive forms of the removal section.

The position under s23 of the repealed Act was as expressed by McLelland J in Ritz Hotel v Charles of the Ritz 12 IPR 417, 481-482:

The Court’s power to order rectification of the register under s22(1) and to order the removal of a trade mark under s23(1) are in each case of a discretionary nature. This is the natural and ordinary meaning of the words used and promotes the underlying policy of the Act by giving the court a sufficient degree of flexibility to give effect to public interest considerations. The existence of a discretion to withhold relief even if a ground for rectification or removal has been made out is also well established by authority: see ... as to removal, Re Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 5-6 and the earlier cases there referred to, and Astronaut [1972] RPC 655 at 672.

The proper approach under both ss22(1) and 23(1) is that if the condition of the 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 Carl Zeiss at 11; Astronaut at 672.

Although the reference there was to “the court” I think the decision was also applicable to the exercise of the Registrar’s discretion: cf Kitto J in Carl Zeiss: “... the tribunal prima facie ought not to refuse the application”.

“The sufficient reason” for refusing to remove a mark from the Register was closely bound up with questions of public interest.  As Woodward J said, in Paragon Shoes v Paragini Distributors 13 IPR 323 at 345,in referring to rectification under s22 of the repealed Act:

There are several points which emerge from this line of authority [ie Carl Zeiss, Astronaut and others mentioned].  The first is the importance of the public interest - whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark.  The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it.  Finally, if the public interest is not adversely affected and such title and use are shown, then the technicalities or defects in legal formalities may be overlooked.

Thus the discretion to refuse an application under s23 was a residual discretion to be exercised on the basis of all the evidence. If the applicant had made out its case for removal then the mark should be refused unless it could be shown that there were “special facts”, “exceptional circumstances” or there was an overriding question of the public interest which demanded that the mark should remain on the Register in the name of the present proprietor. The onus was clearly on a person who objected to the removal of a mark to show that those circumstances existed. If he or she failed to do so then there was simply no basis for the exercise of the discretion. The discretion given to the Registrar was limited in that way and was not a discretion to dispense with the entire legislative scheme as embodied in s23 and its dependent regulations. In the decided case there was simply no evidence properly before the delegate on which he could possibly contemplate exercising the Registrar’s discretion to refuse the application. The invitation to do so was accordingly refused.

I find that there is no material difference in the provisions of s23 of the repealed Act and s101(3) of the 1995 Act in relation to the discretion of the Registrar to remove a mark from the Register.

Conclusion

In conclusion I find that there is no evidence before me of any use of the trade marks sought to be removed during the relevant statutory period and that therefore the applicant for removal has made out its case.  Furthermore, I have been shown no good reason why I should exercise the Registrar's discretion to refuse to order the removal of the trade marks from the Register.  In those circumstances my order is that, subject to any appeal from this decision, the trade marks 242491, 242492, 244043 and 244044 are to be removed from the Register.

I award costs in the matter to the successful applicant for removal, AUSTRALIAN FOOD & BEVERAGE GROUP PTY LTD.

Michael Homann
Hearing Officer

13 November 1998