Baroque Japan Ltd v Mad Keen Pty Ltd

[2015] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by Baroque Japan Limited to application under section 92 of the Act by Mad Keen Pty Ltd to remove trade mark number 1133030 (9; 14; 18; 25 ) - SLY - in the name of Baroque Japan Limited (a corporation of Japan)

Delegate:

Heath Wilson

Representation:

Opponent: Spruson & Ferguson (No appearance or written submissions)

Applicant: Self-represented (No appearance or written submissions)

Decision:

2015 ATMO 41

Application under section 92(4)(b) of the Act – use established - opposition to application for removal successful – trade mark to remain on the Register.

Background

1. This matter concerns an application for removal of a trade mark from the Register of Trade Marks under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The application for removal was filed by Mad Keen Pty Ltd (‘the Applicant’) in relation to the following trade mark registration:

   Trade Mark No: 1133030

   Trade Mark: SLY (‘the Trade Mark’)

   Owner: Baroque Japan Limited

   Filing Date: 31 August 2006

   Specification of Goods:

   Class 9: Spectacles (including sunglasses); parts and accessories therefor

   Class 14: Precious metals; personal ornaments; jewellery; cufflinks; tie pins; clocks and watches; keyrings

   Class 18: Leather and imitations of leather, and goods made of these materials; bags; pouches; wallets, purses; backpacks; travelling bags; umbrellas and their parts; vanity cases

   Class 25: Clothing; footwear; headgear; belts in this class

1. The application for removal of the above trade mark was filed on 16 February 2012 and concerned all of the goods for which the Trade Mark is registered. A notice of opposition to the removal was subsequently filed by Baroque Japan Limited (‘the Opponent’).

2. As evidence in support of the opposition to removal the Opponent filed the declaration of Kaoru Kudo (Department Manager, Legal and Compliance Department of the Opponent) made 13 December 2012 with exhibits 1 to 5.

3. The evidence in answer comprises the statutory declaration of Mariana Aguiar (General Manager of the Applicant) made 19 March 2013 with exhibits 1 to 4.

4. The Opponent having not filed evidence in reply initially requested to be heard on the opposition and the matter was set down to be heard on 23 April 2015. Ultimately, the Opponent elected not to appear and did not file written submissions. The Applicant also did not file submissions or request to be heard.

5. I am a delegate of the Registrar of Trade Marks and what follows is my decision made on the material before the office.

The Law

1. Section 92 of the Act relevantly provides:

92Application 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.

1. Section 100(1)(c) of the Act makes it clear that the burden lies with the Opponent to rebut the allegation of non-use. If the Opponent does not rebut the allegation, the ground for removal is taken to have been established and the matter is to be decided pursuant to section 101 of the Act which 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)…

(3)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.

(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)similar goods or closely related services; or

(b)similar services or closely related goods;

to those to which the application relates.

Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:For registered owner see section 6.

1. As the application for removal was filed on 16 February 2012 the period in which the Opponent must establish use of the Trade Mark is the three years ending on 16 January 2012 (‘the relevant period’).

Discussion

1. The declaration of Kaoru Kudo indicates that the Opponent was established in Japan in 2000 and is involved in the branding and sale of a wide range of fashion items including apparel and accessories. One of the brands used by the Opponent in Japan and Taiwan is the Trade Mark.

2. Kaoru Kudo also declares that the Opponent has promoted the sales of goods under the Trade Mark in Australia via magazine and web page advertisements, catalogues, posters and point of sale materials. That said, examples of use of the Trade Mark via such media are in short supply in the evidence before me.

3. An exhibit provided by the Opponent noting the establishment of its Facebook® page in 2011 does not, by itself, establish commercial use of the Trade Mark in Australia. There is no evidence, as the Applicant notes, of the use of the Trade Mark directed at Australian consumers by the Opponent on Facebook®.

4. Exhibits 4 and 5 to the Kudo declaration are the strongest evidence of trade mark use by the Opponent. Exhibit 4 consists of extracts from the Australian website ‘ This use in Australia is conducted on behalf of the Opponent[1]. The extracts from the website are dated 16 September 2011 (and were downloaded on this date according to the declaration). Accordingly, the examples fall within the relevant period.

   [1] Declaration of Kauro Kudo, paragraph 20.

5. The website shows use of the Trade Mark in relation to the sale of leather bags and satchels, sunglasses, dresses, boots, shoes, pants, necklaces, earrings, rings and hats and other leather accessories such as belts.

6. The domain name for the website is Australian and the goods are clearly directed at Australian consumers. The prices for the Opponent’s goods are in Australian dollars and statements on the website such as “YesStyle.com.au only ships to Australia” and “all transactions at YesStyle.com.au are handled in Australian Dollars” all indicate Australian use. Exhibit 5 to the declaration is claimed as confidential but sets out the amount of goods sold in Australia such as those sold via the aforementioned website.

7. For the Applicant the declaration of Mariana Aguiar refers to extracts from the same website ‘ at the time of the declaration and remarks that the products therein are marked as discontinued. However, a close inspection of the exhibit does not reveal the products to be “discontinued” but rather “discounted”.

8. Even if Ms Aguiar is correct in her belief that the Trade Mark is not currently one of the Opponent’s featured brands, this (along with current extracts from the website) does not inform use within the relevant period. Much of the remaining evidence from the Applicant refers to the Opponent’s slight evidence of use, or seeks to differentiate the evidence as it refers to women’s clothing, shoes, bags and accessories. 

9. The fact that evidence of use may be slight is not determinative of an opposition to a removal action. Australian legal authority establishes that a demonstrated single bona fide instance of use of the Trade Mark in the relevant period will suffice to answer the allegation.[2] The High Court of Australia also found in E & JGallo Winery v Lion Nathan Australia Pty Ltd: ^[3]

   Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards.

   [2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 26 at [14] and [16].

   [3] [2010] HCA 15 at [64].

10. In terms of the nature of the use of the Trade Mark, use in the course of trade includes offers to sell products in Australia as well as evidence of actual sales.[4] In this matter, there is at the very least evidence of offers to sell goods to Australian consumers in the relevant period.

    [4] See Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (at 439).

11. The Applicant was also critical of the physical location of the Opponent’s stock. However, if the physical location of the Opponent’s stock is in Hong Kong rather than Australia that fact does not preclude use of the Trade Mark in Australia. In Re Registered Trade Mark “Yanx”[5], Willliams J held:

    On principle and as a matter of common sense, however, it would seem that a mark is used as a trade mark in Australia if it is used here to designate the goods of a particular trader which are offered for sale in Australia under that mark whether the goods themselves are actually in Australia or not. The goods are put upon the Australian market whether they are in Australia awaiting delivery upon sale or they may have to be imported for delivery after sale. They are in either case actually a vendible article in the Australian market...

    [5] Re Registered Trade Mark “Yanx”; Ex Parte Amalgamated Tobacco Corp Ltd [1951] HCA 28; (1951) 82 CLR 199 (at 205).

12. Similarly, the High Court of Australia in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd[6] found:

    [W]hen an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. Indeed, in this case, the respondent is the only person who has the right to use the mark, and the retailer to whom goods have been sold for resale does not, in any relevant sense, use it. [Emphasis added]

    [6] (1967) 116 CLR 254 (at 271).

13. Finally, Ms Aguiar noted that the Opponent only appears to claim use of the Trade Mark in relation to women’s clothing, shoes, accessories and bags. On that point, I note the comments made by Drummond J in McHattan v Australian Specialised Vehicle Systems Pty Ltd discussing the application of section 92(1):

    [I]f that provision is construed to permit fine distinctions to be drawn between two items, eg between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz that between armoured military vehicles of greater than 8 tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.[7]

    [7] (1996) 34 IPR 537 (at 544).

14. I find that to make any fine distinction in this regard between the Opponent’s specific goods mentioned on the Australian website and other goods notionally within the scope of the specification would result in the kind of erosion envisaged by Drummond J in the above case. I find that the Opponent has established use of the Trade Mark in good faith in the relevant period on or in relation to goods in classes 9, 14, 18 and 25 of the specification. As a result, the allegations made by the Applicant under section 92(4)(b) of the Act have been successfully rebutted.

Decision

1. I find that use of the Trade Mark in good faith has been established upon or in relation to the Opponent’s goods in the relevant period. The opposition to the application for removal of the Trade Mark under section 92(4)(b) of the Act is successful and the Trade Mark is to remain on the Register.

Heath Wilson

Hearings Officer

Trade Marks Hearings

14 May 2015