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

1. 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).

1. 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.

2. 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.

3. 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.

4. 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

1. 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 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.

2. Sufficient time has passed for s 92(4)(b) to be alleged.[3] By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Trade Mark in Australia in the three year period ending on 21 October 2022 (‘Relevant Period’) or that the Trade Mark was not used in relation to the Registered Goods because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period. The Removal Applicant alleges that there has been no use of the Trade Mark in relation to any of the Registered Goods in the Relevant Period. The allegation can be rebutted by establishing use by the owner of the Trade Mark or by an ‘authorised user’.[4]

   [3] Section 93(2).

   [4] Section 8.

3. It is the Removal Opponent who must rebut the allegation of non-use.[5] Any findings of fact are based on the civil standard of the balance of probabilities.[6]

   [5] Section 100(1)(c).

   [6] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).

4. ‘Use as a trade mark’ is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and/or services and the person who applies the sign to those goods and/or services.[7] This does not require the actual sale or purchase of the goods.[8] A commercial dealing in relation to goods and/or services under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’. A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[9] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[10]

   [7] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   [8] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).

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

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

5. If the requisite use is not established, in accordance with s 101 I may decide to remove the Trade Mark, or, if satisfied it is reasonable to do so, decide to not the remove it. I explain this discretion in more detail further below.

Evidence

1. For completeness, I note that at the hearing Mr Rutsche referred to various facts and material not before me in the present matter and not filed during the proceedings for this opposition. I confirm that have I have not relied on documents or material outside of those filed in the proceedings. No clear reason was given for why this material was not provided in the course of the evidence stages of these proceedings, nor was it appropriate to have regard to this material, given the Removal Applicant has not had the opportunity to review it.

2. Rutsche in general declares that there has been use of the Trade Mark since 2006. Various references to ownership of websites are made, including and bestmates.au. The SGP also contains broad and uncorroborated statements.

3. A document showing what appears to be a screen capture of a website or a flyer, bearing the Trade Mark in relation to dog treats, has been supplied. However, this document is not dated.

4. A copy of a letter from the Removal Opponent to the Removal Applicant, dated 20 March 2023, discussing the potential sale of the Trade Mark to the Removal Applicant has been provided.

5. A photograph, with the file name name ‘Yedang Pallet Korea Export’, showing a single pallet with cartons stacked on top also forms part of the Removal Opponent’s evidence. Each of the boxes appears to bear the Trade Mark. The particular goods contained in the cartons is not apparent from the photograph and the photograph is undated.

Consideration

Use of the Trade Mark in the Relevant Period

1. Rutsche makes assertions which are unsupported by any corroborating evidence. It is sufficient to state in summary that none of the attachments to Rutsche assist in this matter as they are not dated, are not specific about the particular goods or services offered under a trade mark or are dated outside of the Relevant Period.

2. I emphasise that it is the Removal Opponent’s onus to demonstrate that they have used the Trade Mark. The Removal Opponent’s evidence shows little, if any, evidence of use of the Trade Mark in relation to the Registered Goods in the Relevant Period.

3. Accordingly, I am not satisfied that the Removal Opponent has used the Trade Mark in relation to any of the Registered Goods in the Relevant Period.

4. At the hearing, and also in the SGP, the Removal Opponent made reference to events which suggests they might have suffered a barrier to use of the Trade Mark by the Covid-19 pandemic and because of health reasons. No corroborating evidence of these events has been filed in these proceedings. I cannot be satisfied that there is any obstacle to use of the Trade Mark in Relevant Period that would have prevented the use of the Trade Mark in relation to the Registered Goods.

Registrar’s discretion

1. Section 101(3) provides me with a broad discretion to not remove the Trade Mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. I must consider whether this discretion should be exercised in relation to the Registered Goods. However, the Removal Opponent need not establish ‘exceptional circumstances’.[11]

   [11] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).

2. Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Federal Court observed of s 101(3) and the relevant factors:

   [t]he 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.[12]

   [12] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

3. The Removal Opponent provides unsatisfactory, if any, evidence of any compelling reason for the Trade Mark to remain on the Register for the Registered Goods. I am also conscious of the public interest in the Register reflecting what is being used by traders.

4. Balancing the relevant considerations and noting all of the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Goods.

Decision and costs

1. The Removal Opponent has not rebutted the allegation of non-use in respect of the Trade Mark and I am not satisfied it is reasonable to exercise the discretion to allow the Trade Mark to remain on the Register.

2. I direct that one month from the date of this decision registered trade mark 1094098 be removed from the Register. If the Registrar is served with a notice of appeal within the relevant timeframe, the Trade Mark shall be treated in accordance with the decision of the court.

3. The Removal Applicant sought its costs. Costs will ordinarily follow the event. I award costs against the Removal Opponent in accordance with Schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

27 September 2024