Auto Services Group Pty Ltd v Fuji Television Network Inc

[2017] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by Auto Services Group Pty Ltd to application under section 92 of the Act by Fuji Television Network Inc to remove trade mark number 1229498(35) - Iron Chef Logo – registered in the name of Kristian Appelt.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: FB Rice Pty Ltd – written submissions by Joanne Martin
Decision:	2017 ATMO 105 Trade Marks Act 1995 Application for removal under paragraph 92(4)(b): burden of proof on the Opponent; Opponent has not satisfactorily established that it used the Trade Mark during the relevant period under the authority of the owner of the Trade Mark. Trade Mark to be removed from the Register.

Background

1. On 17 December 2015 Fuji Television Network, Inc (‘the Applicant’) applied under paragraph 92(4)(b) of the Trade Marks Act 1994 (‘the Act’) for the removal of the trade mark registration which appears below from the Register of Trade Marks for all of the services in respect of which it is registered:

Registration No:         1229498
Owner:  Kristian Appelt [‘the Owner’]
Priority Date:             12 March 2008

Services:Class 35: Import-export agency services; retail services; retailing of goods (by any means); advertising; marketing; wholesaling of goods (by any means)

(‘the Services’)

Trade Mark:               

(‘the Trade Mark’)

1. The application for removal has been opposed by Auto Services Group Pty Ltd (‘the Opponent’).

2. The opposition process has subsequently followed the timetable below:

   Statement of Grounds and Particulars – 1 April 2016 – which contends:

   Iron Chef Imports has been used as a trading name since 2007, originally under [the Owner] a sole trader, and more recently as a trading name owned by Auto Services Group[1] (ABN 47 162 065 581), of which [the owner] is the director.

   Iron Chef Imports currently operates as an online business: It also operates a popular Facebook page Chef Imports maintains its own accounts and bank account. Evidence of ongoing business activity can be provided.

   Notice of Intention to Defend – 11 May 2016.

   Evidence in Support – 23 August 2016

   Declaration of the Owner, made on 22 August 2016, with Exhibits 1 – 4.

   [1] I take this to be a reference to the Opponent.

3. There being no evidence in answer filed by the Applicant, the parties were informed of their right to be heard or to make written submissions.  Neither of the parties requested to be heard and the Applicant has filed written submissions by its attorneys, FB Rice Pty Ltd.  I am a delegate of the Registrar of Trade Marks and am to decide the matter on the basis of the written record which is comprised of those documents mentioned in the preceding paragraphs.

4. The Relevant Period for the purposes of paragraph 92(4)(b) is the three years ending on 17 November 2015.

The Onus and Standard

1. Paragraph 100(1)(c) of the Act provides that an opponent bears the onus of rebutting the allegation made against it under paragraph 92(4)(b), which it may do by, inter alia, establishing that the Trade Mark, (or, per paragraph 100(3)(a) of the Act, the Trade Mark with additions or alterations not substantially affecting its identity), was used by the owner of the trade mark or by an authorised user in good faith during the Relevant Period. I proceed on the basis that the relevant standard of proof is that the Registrar be satisfied whether or not the evidence establishes the opposition to removal on the balance of probabilities.

2. The use of the Trade Mark by the Opponent (or under its control per section 8 of the Act) must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[2].  A single bona fide use of the Trade Mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[3]. However, Wilberforce J, in Nodoz Trade Mark[4], 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”.

   [2] [1982] FSR 72.

   [3] [2001] FCA 261; (2001) 51 IPR 149 at [17].

   [4] (1962) RPC 1 at 7.

The Evidence

1. In his declaration the Owner of the Trade Mark states:

   1. Iron Chef Imports has been trading as a business name continuously since 2007.

   2. Iron Chef Imports was originally registered as a business name through Kristian Appelt (as a sole trader) in 2007 (Exhibit 1), then as a business name operating under Auto Services Group Pty Ltd, of which Kristian Appelt is a director (Exhibit 2).

   3. Iron Chef Imports operates and regularly updates the website address (Exhibit 3).

   4. Iron Chef Imports operates and regularly updates a Facebook page with more than 27,000 followers, also regularly updated (Exhibit 4).

2. I note that Exhibit 3 is a webpage on which the service offered is the import of second-hand cars from Japan.

Discussion

1. Section 92 of the Act relevantly provides:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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 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:

   […]

   (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 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

2. Concerning use of a trade mark, section 7 of the Act provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)In this Act:

   use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

   (5)In this Act:

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

3. Further, concerning the authorised use of a trade mark, section 8 of the Act provides:

   8Definitions of authorised user and authorised use

   (1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

   (2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

   (3)If the owner of a trade mark exercises quality control over goods or services:

   (a)dealt with or provided in the course of trade by another person; and

   (b)in relation to which the trade mark is used;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (4)If:

   (a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

   (b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

4. The declaration by the Owner of the Trade Mark raises the following points of law:

   1.The use of a business name such as ‘Iron Chef Imports’ does not establish use of a trade mark – it merely signifies compliance with a Business Names Act.[5]

   2.In any event, the use of the words ‘Iron Chef Imports’ is not a use of the Trade Mark in terms of subsection 7(1) of the Act as they are not a use of the Trade Mark with additions or alterations which do not substantially affect its identity.[6]

   3.If Iron Chef Imports is mentioned in the declaration as being an authorised user of the Trade Mark, this is based on a false premise as an authorised user must, in terms of section 8 of the Act, be a person that has legal personality.

   4.If Auto Services Group Pty Ltd is put forward as being an authorised user of the Trade Mark, there is no detail of the agreement, the services subject to the agreement, or whether the control of that authorised use is either financial control or by quality control.

   5.There are no express assertions by the declarant that the Trade Mark has been used or the nature of the services in relation to which the Trade Mark may have been used.

   [5] Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29; (2000) 48 IPR 325.

   [6] See Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 per Yates J at [256] and The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407.

5. Further, the sole documents on which the Trade Mark appears in evidence are a printout of the homepage at and a printout of that at No dates are apparent on the printouts and they do not, therefore, establish use of the Trade Mark during the Relevant Period. The websites are stated by the owner to be operated by Iron Chef Imports; however, Iron Chef Imports, being a business name, is not a person and so cannot be an authorised user of the Trade Mark in terms of section 8 of the Act.

6. The evidence filed by the Opponent is such that the Registrar would be required to make several assumptions in finding that the Trade Mark had been used by its Owner, or by a user authorised by the owner, during the Relevant Period.  Any such finding based on that evidence would be speculative.

7. As previously observed, the burden is on the Opponent to establish that either he, or an authorised user, has used the Trade Mark during the Relevant Period.  In my consideration the evidence before the Registrar is such that she could not be satisfied that the Trade Mark has been used by its owner or by an authorised user during the Relevant Period, or (in the absence of any explanation by the Owner) of the exact nature of the services in relation to which the Trade Mark might have been used.

Discretion

1. There are no circumstances which call for an exercise of the Registrar’s discretion to allow the Trade Mark to remain upon the Register.

Decision

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

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

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

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

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

2. I am satisfied that the grounds on which the application was made have been established because the Owner has not discharged the burden on him to show use of the Trade Mark during the Relevant Period.  I decide to remove the Trade Mark from the Register in respect of the Services.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
19 September 2017