Auswool Products Pty Ltd v Source Co International Pty Ltd
[2022] ATMO 173
•10 October 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Auswool Products Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Source Co International Pty Ltd to remove trade mark numbers 1037351 AUSWOOL PRO & Device and 1037358 AUSWOOL PRO (both in classes 24 and 25) - in the name of Auswool Products Pty Ltd
Delegate:
Tracey Berger
Representation:
Opponent: IP Guardian Pty Ltd
Applicant: IP Service International Pty Ltd
Decision:
2022 ATMO 173
Trade Marks Act 1995 (Cth) – applications under section 92 for partial removal – s 92(4)(b) considered – use demonstrated in relevant period for goods – trade marks to remain on the Register
Background
1. Auswool Products Pty Ltd (‘Removal Opponent’) is the owner of the following marks:
Registration Number
Trade Mark
Filing Date
Registered Goods
1037351
(‘Logo Mark’)
11 January 2005
Class 24: Quilt, underblanket, bedding products
Class 25: Clothing, hats, footwear (‘Class 25 Goods’)
1037358
AUSWOOL PRO
(‘Word Mark’)[1]
11 January 2005
[1] The Logo Mark and Word Mark are collectively referred to as the ‘Trade Marks’.
On 1 June 2021, Source Co International Pty Ltd (‘Removal Applicant’) filed applications seeking the partial removal of the Trade Marks from the Register for non-use with respect to the Class 25 Goods (‘Removal Applications’).
3. On 12 July 2021, the Removal Opponent filed Notices of Intention to Oppose the Removal Applications, followed by a Statement of Grounds and Particulars (‘SGP’) in each case on 4 August 2021. The Removal Applicant filed a Notice of Intention to Defend each of the Removal Applications on 28 October 2021.
4. The Removal Opponent then filed a declaration of Zu Yong Xu, director of the Removal Opponent, made on 27 January 2022 with Annexures A-N (‘Xu Declaration’) as evidence in support (‘EIS’) of its opposition to the Removal Applications. The Removal Applicant did not file any evidence.
5. Following the filing of the evidence, the parties were given the opportunity to be heard. The Removal Applicant requested a decision without a hearing and this matter was allocated to me to decide as a delegate of the Registrar of Trade Marks. I make my decision based on the information contained in the SGP and EIS.
Legal Framework
6. Part 9 of the Trade Marks Act 1995 (Cth)[2] deals with the removal of trade marks from the Register due to non-use.
[2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
7. The Removal Applicant nominated both s 92(4)(a) and s 92(4)(b) as the grounds for removal of the Class 25 Goods.
8. Sections 92(4)(a) and 92(4)(b) provide:
(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.
9. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Due to the specifics of these provisions, paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[3] As the Trade Marks have been registered for more than five years as at the filing date of the Removal Applications, I need only consider the applications for removal under s 92(4)(b).
[3] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Thomson Reuters, 6th ed, 2016), [70.510].
10. For the purposes of s 92(4)(b), the relevant period is the three year period ending on 1 May 2021 (‘Relevant Period’).
11. The Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b)[4] on the balance of probabilities.[5]
[4] Act s 100(1).
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
12. In Woolly Bull Enterprises Pty Ltd v Reynolds,[6] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[7] Little weight is to be given to assertions of use which are not supported by documentary evidence.[8] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9]
[6] [2001] FCA 261, [16].
[7] Ibid [17].
[8] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate I. Forno).
[9] [1962] RPC 1, 7.
13. Under s 101, if the grounds for partial removal are established, I may decide to remove or partially remove the Trade Marks from the Register in respect of any or all of the goods identified in the Removal Applications, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Marks from the Register.
Use of the Trade Marks during the Relevant Period
14. Mr Xu declares that the Removal Opponent has used the Trade Marks continuously since 2003 for all of the registered goods including the Class 25 Goods.
15. The Removal Opponent’s goods bearing the Trade Marks are sold wholesale to retail stores throughout Australia as well as directly to Australian consumers through its website at (‘Website’). Mr Xu avers that the Trade Marks are used on packaging, labels stitched to the Class 25 Goods and swing tags affixed to the Class 25 Goods. The Removal Opponent is authorised to use the ‘Australian Made’ and ‘Woolmark’ certification marks and these marks are often used in combination with the Word Mark and/or Logo Mark.
16. The Xu Declaration annexes a selection of invoices from each of the years 2018-2021 for the Class 25 Goods sold to various retailers. At the top of each of these invoices, a version of the Logo Mark is used. This mark is the Logo Mark but instead of the words AUSWOOL PRO appearing in the scroll at the bottom of the device, the words AUSWOOL PRODUCTS PTY LTD are used. The Removal Opponent’s company name and details appear directly underneath this logo. None of the products are listed on the invoices under the mark AUSWOOL PRO but are described generically such as ‘lambskin vest’, ‘lambswool slipper’, ‘lambskin hat’, ‘lambswool scarf’, etc. However, Mr Xu attests that these products all feature the Trade Marks which are the subject of the Removal Applications and annexes photos of the goods referred to in the invoices which show use of the Logo Mark and Word Mark on the packaging, labels and swing tags affixed to the Class 25 Goods described in the invoices.[10]
[10] Xu Declaration, Annexure L.
17. In addition, the Xu Declaration annexes letters of reference from two of the Removal Opponent’s retail customers. The first letter of reference is from Mr Lake who has a single store named Bungendore Village Leather which has operated for 31 years, but he has had 6 stores in total in the past including in Westfield Centres in Canberra. Mr Lake confirms that all of these stores stocked the Removal Opponent’s goods and the Bungendore Village Leather store continues to do so. He also sells the Removal Opponent’s goods and promotes the Removal Opponent as a supplier on his website at At the time of Mr Lake’s letter, he had in stock the Removal Opponent’s slippers, scuffs, sheepskin vests, sheepskin beanies and sheepskin baby booties. He confirms that all products supplied by the Removal Opponent and point of sale documentation features the Trade Marks and includes photographs of the Removal Opponent’s products in his store. It is difficult to make out the Trade Marks in the photos but the photos appear to show swing tags featuring the Logo Mark with the Word Mark appearing underneath affixed to vests and hats.[11] The hat depicted in the photographs also shows a label sewn onto the hat which appears to be the same label depicted in Annexure I of the EIS. The third photograph is a picture of slippers in packaging featuring the Logo Mark. The invoices discussed at paragraph 16 above include invoices to Bungendore Village Leather for footwear in 2019, 2020 and 2021 as well as scarfs and hats in 2021.
[11] I note that this is how the Logo Mark and Word Mark appear in the example of the swing tag shown in Annexure H of the EIS.
18. The second letter of reference from R M Cush confirms that he has sold the Removal Opponent’s products, principally footwear, in his Gift Shop Tora at Katoomba in New South Wales since commencing business in 2011. Mr Cush has included photographs of the Removal Opponent’s goods in this gift shop which show the Logo Mark in use for footwear.
19. Also annexed to the Xu Declaration are screenshots of pages from the Website which Mr Xu attests was “published” in the Relevant Period. I understand this to mean that the screenshots were taken at the time that Mr Xu prepared his declaration but that the Website has not been updated since before the end of the Relevant Period and therefore is indicative of the Website content during the Relevant Period. These extracts feature a range of the Class 25 Goods being promoted under the Trade Marks.
20. Taken in its entirety, I am satisfied that the evidence shows there was more likely than not use of the Logo Mark and Word Mark in good faith by the Removal Opponent in Australia in relation to the Class 25 Goods in the Relevant Period. As such, the Removal Opponent has satisfied the onus under s 100(3)(a) and the Removal Applications are unsuccessful.
Decision
21. The Removal Opponent has established its opposition to removal of the Logo Mark and the Word Mark. Registration numbers 1037351 and 1037358 are to remain on the Register for all of the registered goods.
22. I award costs against the Removal Applicant in respect of registration number 1037351 in accordance with the amounts set out in Schedule 8 of the Regulations and in respect of registration number 1037358, I award reduced costs against the Removal Applicant in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[12]
[12] [2001] ATMO 78.
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
10 October 2022
7