Avatar Singh, Harkirat Singh, Aero Traders Pvt Ltd and Aero Associates Pvt Ltd v Nipv Pty Ltd

[2024] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by Avatar Singh, Harkirat Singh, Aero Traders Pvt Ltd and Aero Associates Pvt Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by NIPV PTY LTD for removal of trade mark number 1758051 (25) – W WOODS (Figurative) – in the name of Avatar Singh, Harkirat Singh, Aero Traders Pvt Ltd and Aero Associates Pvt Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Andrew Sykes of Counsel instructed by Mark My Words Trademark Services Pty Ltd t/as Quick Off the Mark

Applicant: Trademark Ventures International

Decision:

2024 ATMO 32

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 3 June 2021 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by NIPV PTY LTD (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1758051

Lodgement date

10 March 2016

Goods

Class 25: Clothing, footwear, headgear

(‘Registered Goods’)

Owners

Avatar Singh, Harkirat Singh, Aero Traders Pvt Ltd and Aero Associates Pvt Ltd

Trade Mark

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Avatar Singh, Harkirat Singh, Aero Traders Pvt Ltd and Aero Associates Pvt Ltd (collectively ‘Opponent’) have opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 3 August 2021 and a Statement of Grounds and Particulars (‘SGP’) on 31 August 2021.  The Applicant filed a Notice of Intention to Defend on 15 October 2021.

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Harkirat Singh, an opponent to the removal (‘Singh declaration’)	18 January 2022	HS-1 to HS-6
Evidence in answer (‘EIA')
Margie Woods, Director Founder of Viktoria & Woods[1] (‘Woods declaration’)	10 May 2022
Evidence in reply (‘EIR’)
Catherine Macneil, registered trade marks attorney with Mark My Words Trademark Services Pty Ltd t/as Quick Off the Mark	20 July 2022	CM1 to CM2
Armadeep Bhurji, director of AustraliaMart.biz Pty Ltd (‘Bhurji declaration’)	21 July 2022	AB1 to AB2

[1] It is unclear what sort of entity (company, partnership, sole trader) Viktoria & Woods is and how, if at all, it is related to the Applicant.  

1. The entirety of the EIS, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

   7.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 8 September 2022, the Opponent requested a hearing by written submissions and paid the appropriate fee.  The matter was set down for a hearing on 1 December 2023.  In line with usual practice, a letter was sent to the parties on 4 October 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 17 November 2023 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 23 November 2023 (‘Applicant’s Submissions’). 

   8.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   9. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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)  …

   (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.

   10. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 3 May 2021 (‘relevant period’).

   11. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the Trade Mark,[3] and I confirm that five years since filing the application have in fact passed.

   [3] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

   12.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) …
   (b) …
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   13.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[4]

   [4] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

   14.     In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the ground under which the application for removal was made is established.

   15. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[5] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[6] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[7] 

   [5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [6] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [7] Act s 7(3).

   16.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[8]

   [8] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

   Discussion

3. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[9]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

   [9] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

4. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

5. The Singh declaration gives evidence that the Opponent is an Indian enterprise trading in clothing and footwear.  It exhibits a catalogue of products offered by the Opponent. Mr Singh does not give evidence that the Opponent supplied its products in Australia in commercial quantities in the relevant period, rather he states that the Opponent was in discussion with a potential distributor, AustraliaMart.biz Pty Ltd, during that time.  He states that an agreement was entered into on 4 December 2018 and on 18 December 2018 the Opponent’s business issued an invoice to the distributor for the purchase of the samples of goods made on 1 December 2018.

6. The Singh declaration then states that the Opponent had taken all necessary preliminary steps to supply goods under the Trade Mark to Australia but was hindered due to the Covid-19 pandemic.  I note that the Opponent provides no documentary support for the assertion that its ability to export goods to Australia was impacted.  The Singh declaration also gives evidence that the Opponent has shipped goods under the Trade Mark to Australia in September 2021, being after the relevant period.

7. In reviewing the exhibits to the Singh declaration, I note that the catalogue does not make any references to the Trade Mark – rather the products do not display a brand or reference is made to a brand known as WOODLAND.  The agreement between the Opponent and the distributor does refer to the WOODS brand but it is not clear from the agreement if this is the Trade Mark or the word mark WOODS.  However, given that the agreement refers to all trade marks owned or controlled by the Opponent and the Trade Mark was registered in Australia at the time it was entered it is reasonable to interpret the agreement as including the Trade Mark.   The invoice dated 18 December 2018 refers to a sample order of 23 pairs of ‘Woods Gents Footwear’ but does not indicate whether the products sold bear the Trade Mark or simply the word mark WOODS.  The same issue arises with the invoice between the Opponent and the distributor dated September 2021, noting that the invoice in September 2021 appears to be both for footwear, apparel (handbags, belts, wallets) and clothing under the WOODS brand.  

8. The Bhurji declaration states that the Opponent’s distributor did intend to use the Trade Mark in Australia and this is reflected in the September 2021 order, which the declarant states would have come to fruition earlier were it not for the Covid-19 pandemic.  The declarant states that his company ordered samples of footwear bearing the Trade Mark in December 2018 and attaches undated photographs showing use of the WOODS brand on the goods.  It appears from the photographs that the footwear goods display the plain word mark ‘WOODS’, sometimes with a shield device that is different to and separately positioned from the shield device in the Trade Mark.  There is one photograph of a shoe box depicting the Trade Mark.  The apparel products (which must have been photographed after the relevant period, given the declarant did not order any products in the period) feature the WOODS word mark alongside the shield but the shield is sometimes in a different location to that depicted in the Trade Mark and sometimes the shield is of a different design to that depicted in the Trade Mark.

9. The Bhurji declaration also states that the declarant’s company sold the footwear it ordered in 2018 to customers in Australia in the non-use period and attaches internal records for those sales that took place in 2019.

10. The Woods Declaration comments on the EIS and provides evidence suggesting that the Opponent does not use the Trade Mark for the Registered Goods, rather it uses the plain word mark WOODS or WOODLAND. 

11. My first conclusion is that the use of the word mark WOODS (or WOODLAND) is not use of the Trade Mark, as it does not contain the stylisation or shield element that is part of the Trade Mark and hence is not use without alterations not substantially affecting its identity.  There is no use of the Trade Mark for clothing or headgear in the relevant period, noting that there is no evidence whatsoever of use of the Trade Mark for headgear and any order for clothing took place after the relevant period.  I do not accept that entering into an agreement in 2018, clearly in the context of footwear, absent any other evidence, can be seen as preliminary steps to the use of the Trade Mark for clothing ordered 3 years later.

12. With respect to the use of the Trade Mark for footwear, I am not satisfied that the footwear imported and sold in Australia in the relevant period bore the Trade Mark and hence I am not satisfied that there has been use of the Trade Mark for footwear in Australia in the relevant period.  I note that it would be well within the power of the Opponent to provide dated photographs (for example as part of its catalogue) of footwear or its packaging depicting the use of the Trade Mark in connection with its footwear (or even advertising material or extracts from its website depicting the use).  The Opponent has not done that.  Rather the Opponent in its EIS asserts use of the word mark WOODS (not the Trade Mark). 

1. After the EIA raised the issue of whether the Opponent used and uses the Trade Mark or the plain word mark WOODS for its products, in response the EIR exhibited four undated photographs of the Opponent’s footwear (presumably footwear purchased from the Opponent after the relevant period, the footwear purchased in 2018 having been sold).  One photo shows use of the Trade Mark on the packaging.  One photo shows use of the plain word mark Woods alongside a similar but not identical shield element on footwear, while the other photos show the Opponent’s footwear sold bearing and by reference to the plain word mark WOODS (which is not use of the Trade Mark).  A single undated photograph of packaging bearing the Trade Mark, in a context where it is clear that other footwear sold by the Opponent does not bear the Trade Mark, is simply insufficient proof to conclude that the footwear sold from the Opponent to the distributor in 2018 and onsold to customers in the relevant period bore the Trade Mark (as opposed to the plain word mark WOODS). 

2. I am not satisfied that the evidence before me shows use of the Trade Mark for any of the Registered Goods in the relevant period.

   Obstacles to use

   29.     An opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’.[10] The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[11]

   [10] Act s 100(3)(c).

   [11] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J).

   30.     The Opponent asserts that the various restrictions placed as a result of the Covid-19 pandemic restricted its ability to use the Trade Mark in Australia but provides no documentary support for its assertions, which in any event lack specificity as to how the use of the Trade Mark in Australia was hindered by restrictions in India.  In the absence of specific, supported evidence of how the Covid-19 pandemic was an obstacle to the Opponent’s use of the Trade Mark in Australia, I am not satisfied that the Opponent’s failure to use the Trade Mark was because of circumstances that were an obstacle to use pursuant to s 100(3)(c)

   Registrar’s Discretion

   31.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off, the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[12]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   [12] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[13]

   [13] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

   32.     While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register”,[14] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or, at least—a predominant interest is the maintenance of the integrity of the Register.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

   [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

   [15] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

   33.     In the present case, there is evidence of a limited order of footwear and clothing in September 2021, primarily under the WOODS word mark but some of the products depicting either the Trade Mark or elements of the Trade Mark.  There is no evidence of consistent ongoing use of the Trade Mark in Australia, nor is there any evidence of reputation of the Trade Mark in Australia (nor would I expect there to be, given the Opponent’s products predominantly bearing the WOODS word mark rather than the Trade Mark).  Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

   Decision

   34.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1758051 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   35. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   20 February 2024