Beck Hansen v Brauerei Beck GmbH & Co KG

[2013] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Beck Hansen to applications under section 92 of the Act by Brauerei Beck GmbH & Co KG to remove trade mark number 962759 (9, 25, 41) - BECK - in the name of Beck Hansen

Delegate:	Jock McDonagh
Representation:	Opponent: Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys Applicant: Did not appear or file submissions
Decision:	2013 ATMO 91 Section 92 opposition – s92(4)(b) ground for removal - opponent established use in good faith – trade marks to remain on register

Background

1. Beck Hansen (‘the opponent’) is the registered owner of a Trade Mark the details of which appear below:

Trade Mark number: 962759
Registered from:                   22 July 2003

Goods/Services:  Class 9:           Sound and video recordings

Class 25:Clothing

Class 41:Entertainment services

Trade Mark:  BECK

1. On 14 June 2011, Brauerei Beck GmbH & Co KG (‘the applicant’) filed applications under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the Trade Mark from the Register, alleging it had not been used for any of the registered goods and services during the three year period ending 14 May 2011 (‘the relevant period’).

2. On 30 September 2011, the opponent filed Notice of Opposition to the removal, claiming the Trade Mark was applied for and registered with the bona fide intention of using the Trade Mark and The Trade Mark has been so used; the trade mark was applied for and registered with the bona fide intention of authorizing the use of the Trade Mark and the Trade Mark has been used in good faith in Australia; the Trade Mark has been used in respect of the goods and services for which the mark has been registered within the relevant period.

3. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 14 August 2013.  Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys appeared for the opponent. The applicant was not represented at the hearing, and did not provide any written submissions. Solicitors for the applicant had advised this Office accordingly.

Evidence

1. The opponent filed and served the following declaration as evidence in support:

Declarant	Status	Date, Known as	Exhibits
Beck Hansen	Opponent	23.08.12 “Hansen”	1 to 21

1. The applicant did not file any evidence in the proceedings. However, I do note that the applicant’s legal representatives have maintained correspondence with this Office during the conduct of the opposition process.

2. Hansen details the opponent’s career as a musician, singer-songwriter, composer and producer who performs and produces under the Trade Mark. The opponent has been in the music industry since 1993, and his music has been released in Australia since 1994.

3. Hansen attests to use of the Trade Mark in Australia during the relevant period and exhibits material in the following broad areas:

• Release of music album 20 July 2008, along with Australian articles relating to it;

• Live performances by BECK during the period 1995 to 2012;

• Media articles and web-site printout referring to BECK’s music and entertainment services;

• Playlists from Australian radio stations;

• Sound and video recordings available for purchase in Australia during the relevant period;

• List of television shows broadcast in Australia during the relevant period in which the opponent has appeared, performed music for or written songs for and has been credited as BECK;

• Clothing bearing the Trade Mark available for sale at the opponent’s Australian performances during the relevant period; and

• Web-site records showing Australian access to the opponent’s web-site and purchases of clothing, music and accessories from the web-site by Australian residents since May 2008.

Discussion

1. Section 92 relevantly states:

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:

(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.

1. Section 100(1)(c) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

2. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz ) at 7, 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.”

3. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

4. I am satisfied that the opponent has discharged its evidentiary onus with regard to its use of the Trade Mark for relevant goods and services within the relevant period.

Decision

1. The evidence satisfies me that there has been genuine commercial use of the trade mark with respect to the goods and services specified in the registration during the relevant period.  The ground for removal has not been established and I therefore refuse to remove the Trade Mark.

Costs

1. As the successful party, the opponent is entitled to its costs and I award costs against the applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
31 October 2013