Beat Rutsche v Acuda Group Limited - [2024] ATMO 182

TRADE MARKS ACT 1995

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

Re:Opposition by Beat Rutsche to application under section 92 of the Trade Marks Act 1995 (Cth) by Acuda Group Limited to remove trade mark number 1094098 (class 31) - Best Mates (logo) - in the name of Beat Rutsche

Delegate:

Benjamin Goldsworthy

Representation:

Removal Opponent: Self-represented

Removal Applicant: Simon Rowell doing business as Innovation Liberation Front

Decision:

2024 ATMO 182

Trade Marks Act 1995 (Cth) – application under section 92 – no use of the trade established – no obstacles to use – discretion not exercised – trade mark to be removed.

Background

This matter concerns an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of a trade mark from the Australian Register of Trade Marks (‘Register’) for non-use. I extract the trade mark below:

Trade mark number:   1094098
Trade mark:   (‘Trade Mark’)
Owner:  Beat Rutsche
Filing date:  11 January 2006
Goods:  Class 31: pet food (‘Registered Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

On 21 November 2022, Acuda Group Limited (‘Removal Applicant’) filed a request for removal of the Trade Mark for non-use under s 92(4)(b) for all of the Registered Goods.
On 30 November 2022, Beat Rutsche (‘Removal Opponent’) filed a Notice of Intention to Oppose the application for removal. On 12 January 2022, the Removal Opponent filed its Statement of Grounds and Particulars (‘SGP’) followed by an extension of time request for the filing of the SGP on 18 January 2022 (‘EOT’).[2] This EOT was granted. On 24 February 2023, the Removal Applicant filed its Notice of Intention to Defend.
[2] The due date for filing of the SGP was 30 December 2022.
On 30 March 2023, the Removal Opponent filed its Evidence in Support being a declaration of Beat Rutsche dated 30 March 2023, with attachments 1 to 3 (‘Rutsche’). The Removal Applicant did not file Evidence in Answer.
The parties requested to be heard by teleconference. I heard the matter on 5 September 2024. The Removal Opponent appeared in person and Simon Rowell appeared on behalf of the Removal Applicant. I am to decide this matter as a delegate of the Registrar of Trade Marks.

Relevant period and onus

Section 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:
…
(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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 182
Decision Date: 27 September 2024

CaseChat Overview and Summary

This matter concerned an application by Acuda Group Limited for the removal of trade mark number 1094098, known as "Best Mates" (logo), from the Australian Register of Trade Marks. The application was made under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) on the ground of non-use in relation to pet food in Class 31. Beat Rutsche, the registered owner of the trade mark, opposed the removal. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether Beat Rutsche had established use of the trade mark in Australia during the three-year period ending one month before the application for removal was filed, or whether there were circumstances constituting an obstacle to its use during that period. If non-use was established, the delegate also had to consider whether to exercise a discretion under section 101(3) of the Act to allow the trade mark to remain on the Register.

The delegate found that the onus was on Beat Rutsche to rebut the allegation of non-use. Rutsche provided evidence including a declaration, website ownership details, a screen capture of a website or flyer, a letter to the applicant, and a photograph of cartons. However, the delegate determined that this evidence was largely undated, lacked specificity regarding the goods or services offered under the trade mark, or was dated outside the relevant period. Consequently, Rutsche failed to satisfy the delegate that the trade mark had been used in relation to the registered goods during the relevant period. Furthermore, claims of obstacles to use, such as the COVID-19 pandemic and health reasons, were not supported by corroborating evidence. The delegate also considered the discretion under s 101(3) but found no compelling reason for the trade mark to remain on the Register, noting the public interest in the Register reflecting actual use.

Accordingly, the delegate directed that trade mark number 1094098 be removed from the Register one month from the date of the decision. Costs were awarded against Beat Rutsche in favour of Acuda Group Limited.

Orders