Best & Less Pty Ltd v Consolidated Artists BV

[2013] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Best & Less Pty Limited to extension of protection to International Registration 949063, Australian trade mark application 1220638(3, 9, 14, 35) - MNG BY MANGO (Logo) - filed in the name of Consolidated Artists BV.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Kevin Andronos of Counsel instructed by Clare Mirabello, Special Counsel, and Emma Talbot, Senior Associate, both of TressCox Lawyers.

Holder: Written submissions by Kelvin Lord & Company, Patent & Trade Mark Attorneys.

Decision:

2013 ATMO 56

17A.29 opposition - s59 Holder not intending to use trade mark - opposition established.

Background

1. In this matter Consolidated Artists BV (‘the Holder’) has applied (‘the Application’) under the Trade Marks Act 1995 (‘the Act’) for protection of the International Registration Designating Australia (‘IRDA’) current details of which appear below:

Application No: 1220638

IR No:                   948063

Priority Date:  24 October 2007

Goods/Services:              Class 3: Soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices

Class 9: Clothing and footwear for protection against accidents, irradiation and fire; protective helmets and masks

Class 14: Precious stones; horological and chronometric instruments

Class 35: Advertising, including online advertising on a computer network; rental of advertising space; arranging exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising services (advertising); dissemination of advertisements and advertising matter (including leaflets, prospectuses, printed matter and samples); advertising mailing; updating of advertising material; sales promotion; shop-window dressing; demonstration of goods; distribution of samples for advertisement purposes; modelling for advertising or sales promotion; press review services

Trade Mark:  

Endorsements:                Convention priority claimed: 24 April 2007, Benelux, No. 1131930 in respect of CLASS 3, CLASS 9 and CLASS 35.

1. The application for protection was examined as mandated by reg 17A.12 of the Trade Mark Regulations 1995 (‘the Regulations’), the specifications of goods and services were amended to that above in order to overcome rejection of the application under the provisions of section 44 (as further discussed below), then the Application was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 13 May 2010.

2. As allowed by reg 17A.29 of the Regulations, Best & Less Pty Limited (‘the Opponent’) filed Notice of Opposition to the extension of protection to the IRDA. The Notice nominates most of the available grounds of opposition available and includes that under section 59 of the Act which was amongst the grounds subsequently argued at a hearing of the matter and under which section the opposition to protection of the opposed trade mark succeeds.

3. For the sake of completeness I find that the grounds other than that under section 59 have not been established and note that any ground (including a ground or grounds not pursued at the hearing) may be argued in an appeal of my decision which a Court will hear de novo: Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579 at [16], per Wilcox J and see, for example, Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24; [2001] AIPC 91-724 which was decided by Madgwick J on a fresh ground.

The Hearing

1. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 18 June 2013.  Kevin Andronos of Counsel instructed by Clare Mirabello, Special Counsel, and Emma Talbot, Senior Associate, both of TressCox Lawyers, appeared for the Opponent.  Kelvin Lord & Company filed written submissions on behalf of the Holder.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

2. The date at which the grounds of opposition must be established is the date of filing of the application for protection (‘the relevant date’): see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Evidence

1. The evidence in this matter comprises:

Evidence in Support:

1. Statutory declarations of:

   • Jeffrey George Vickery made on 8 April 2011; and
   • Emma Talbot made on 8 April 2011.

Evidence in Answer

1. Statutory declarations of:

   • Jaume Passarell Beya made on 3 November 2011; and
   • Zhi Ling Zeng dated 22 October 2011

Evidence in Reply

1. Statutory declaration of:

   • Jeffrey George Vickery made on 4 April 2012

2. There is also the Holder’s statutory declaration made to the examiner which the Opponent has obtained under the Freedom of Information provisions: the contents of this declaration are obviously known to the Holder and since the Applicant refers to this material in its evidence, the Holder is aware that that declaration is effectively in the evidence before me.

The Opponent

1. The Opponent is a well-known retailer of clothing, footwear, accessories, Manchester and homewares throughout Australia.  It had, at the priority date, traded continuously throughout Australia for 48 years and had 190 retail outlets.  Over that time it built up a substantial market position offering goods from both house and national brands to its customers.  It advertises widely, including in relation to both its house brands and national brands that it sells.  House brands and national brands are offered for sale in its stores side by side.

2. Amongst the house brands offered for sale by the Opponent is the trade mark MANGO and its variants, including the trade marks AQUA MANGO, MINI MANGO and BABY MANGO on a range of goods but predominantly for clothing.  MANGO (and its variants) is/are trade marks registered in Australia by the Opponent in a number of classes

3. The Opponent or its predecessors has sold MANGO products, predominantly clothing, bearing the trade mark MANGO since about 1986.  In or around 1986 the Opponent commenced purchasing MANGO branded products from the then registered proprietor of the MANGO trade marks, Gazal Clothing, for sale in its retail stores. Gazal Clothing had commenced selling clothing under the trade mark MANGO in around 1982.  Gazal Clothing owned a number of registered trade marks which included the word MANGO.

4. The MANGO trade marks were sold by Gazal Clothing to Jason Gazal Trading Pty Ltd (‘Gazal’) in 1995.  Gazal thereafter continued to sell MANGO branded products to the Opponent for sale in its retail stores.

5. The Opponent became the exclusive retailer of MANGO branded products in 1998.

6. In or about March 2002 Pepkor Direct Pty Ltd (previously known as Mango (Australia) Pty Ltd) (‘Pepkor Direct’) acquired from Gazal the business assets associated with the manufacture, supply and distribution of MANGO branded products along with several registered MANGO trade marks (together with a number of other MANGO trade mark registrations which have subsequently lapsed).

7. Mr Andronos in his submissions drew my attention to evidence showing that the Opponent is the exclusive sub-licensee of Retail Holdings S.a.r.l. (previously known as Retail Holdings Limited) (‘Retail Holdings’) and Pepkor Direct.

8. Relevant to the section 59 ground, in her declaration Ms Talbot states:

   I am a solicitor employed by TressCox Lawyers. I attended at the ‘MNG’ retail store at Galleries Victoria, 500 George Street, Sydney NSW 2000 at around 12.00pm on Wednesday, 6 April 2011. I attended the store with my colleague Clare Mirabella.

   The store is clearly branded MNG. The signage on the outside of the store is ‘MNG’. In the interior of the store there is signage ‘MNG Barcelona’. The store primarily sells fashion clothing but also shoes, belts, scarves, sunglasses and handbags.

   The various ‘labels’ that appeared on clothing and accessories in the store were ‘MNG’, ‘MNG Casual Wear’, ‘MNG Suit’ (this appeared to be applied to business style clothing), ‘MNG Basics’ and ‘MNG Jeans’. Bags, scarves, sunglasses and belts all appeared to be branded ‘MNG’.

   Annexed hereto and marked ‘ET1’ is a scarf purchased at the store clearly labelled ‘MNG’ on both the sew-in label and the swing tag.

   Annexed hereto and marked ‘ET2’ is a T-shirt which includes on the sew-in tag the brand ‘MNG Jeans’ and on the swing tag ‘MNG’.

   Annexed hereto and marked ‘ET3’ is a T-shirt branded ‘MNG Basics’ on the sew-in label and ‘MNG’ on the swing tags and also on the front of the T-shirt.

The Holder

1. Mr Beya is the in-house legal counsel of the Holder.  Mr Beya states that the Holder uses and has registered the trade mark appearing below in relation to its clothing and accessories goods and clothing and accessories retail services in Australia:

(‘the MNG trade mark’)

1. Mr Beya is not explicit about the exact goods or services that the Holder sells or provides under its trade marks, in particular the opposed trade mark, but states that “Since 1984, the Mango Group has been providing high end goods, in particular fashion and accessory items, which target specifically mature, modern, urban women.”  And, “The promotional materials put out by my company bearing the MNG trade marks and the subject trade mark, featuring international stars such as Scarlett Johansson, Penelope Cruz and Milia Jovovich wearing my company’s clothing and accessory items (Exhibits JPB-5 to JPB-7), also send out the clear message that our goods are high end goods targeting modem women in the age bracket of 20-35.”  Mr Beya further claims, “Even in the instance where the Opponent claims that cosmetic products have been provided under the MANGO trade mark, their Evidence shows only the provision of lip gloss, for demographics that are less than 18 years of age. It can be appreciated that lip glosses for children are different from cosmetic products for mature women.  We submit that my company has full intention to make use of the subject trade mark in Australia and to provide at least some of the accepted goods, specifically for mature, modern women, under the [opposed trade mark].”

2. Mr Beya states:

   To date, my company has built a significant reputation for the MNG trade mark in Australia as evident from the millions of dollars worth of annual sales and assisted by the extensive promotion featuring international movie stars on our Australian billboard posters and sales catalogue covers.

   In view of the success of the MNG brand in Australia, we wish to clearly display the connection between MNG and the Mango Group (being the owner and source of the MNG brand). Further, we wish to obtain protection for the subject trade mark in Australia, and introduce new product lines under the [opposed trade mark].

3. In other words, the Holder thought to establish its MANGO trade mark in Australia and saw the opposed trade mark as a way to do it without infringing the Opponent’s trade marks.  However, the examiner’s provision refusal of protection of the Application appears to contradict this supposition.

4. Mr Beya further states:

   In Australia, the main form of use has been [the MNG trade mark], in accordance with my company’s Australian Trade Mark Registrations 700687 and 953893. However, there has also been use or advertisement of the subject trade mark by my company in Australia. For example, we periodically distribute sales catalogues that are provided specifically for the Australian market, nowhere else [sic]. The catalogue covers, while commonly feature [sic] our [MNG trade mark], has also at times featured the subject trade mark, or at least variations of it. Annexed hereto as Exhibit JPB-5 comprise selected catalogue cover or content pages, and a back page that is consistently used for our Australian catalogues. It can be seen that while a cover or content page displays “MNG BY MANGO” or mngbymango.com, the back page of the catalogue shows the locations of my company’s MNG stores in the different States of Australia. We note that the catalogue features Milla Jovovich on the cover dates back to April 2007, before the filing date of the subject trade mark application. The other sample catalogue which features Penelope Cruz on the cover was published around the filing period of the subject application. We also note that my company has always re-directed websites bearing our trade marks (e.g. mngbymango.com, mngbymango.com.au and mng.es) to our main website, being mango.com.

5. I have inspected the website to which the domain names mngbymango.com, mngbymango.com.au and mng.es resolve and will further refer to this website in my reasons below.

Observations on the evidence

1. I have difficulty in putting much weight on the Holder’s evidence because, considered as a whole, it contains inherent contradictions which, when considered objectively, causes much of what is claimed within the Holder’s evidence to merit question.

2. For example, Mr Beya states:

   It is important to note that my company’s goods bearing the subject trade mark will be sold primarily through our MNG stores located in the different States of Australia, while the Opponent’s goods are sold through their Best & Less stores. Therefore, the sales venues are noticeably separate from one another, further avoiding the possibilities of any confusion between the brands.

3. However, Mr Beya also claims:

   Furthermore, there have been on-line sales of the goods under the subject trade mark through Australian websites such as Annexed hereto as Exhibit JPB-8 are sample printouts from such websites.

4. Obviously, the Opponent’s trade mark registrations are not limited according to mode of sale and the Opponent’s goods sold under its MANGO trade marks might be sold from anywhere, including through online shopping forums such as that mentioned above.  On such sites, the goods of the parties would effectively be adjacent to each other.

5. Further, if there have been such sales, they may have infringed the Opponent’s trade mark registrations and Mr Beya is consequently somewhat circumspect in his claims.  According to the Opponent’s evidence, in Mr Beya’s declaration to the examiner he stated:

   The subject Trade Mark was first used in Australia in June 2002 and has been used in Australia with or without the small print ‘by Mango’ since that time.

6. I note that Mr Beya had in his declaration to the examiner somewhat confusingly previously defined ‘The subject Trade Mark’ to be that which is here opposed and elsewhere in his declaration claims:

   The goods and services which have been provided under the subject Trade Mark include Soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices being goods in Class 3,·Glasses, sunglasses, cases and frames thereof, clothing and footwear for protection against accidents, irradiation and fire, protective helmets, masks being goods in Class 9,·precious metals and their alloys and goods made of or coated with these materials not included in other classes, jewellery. fashion jewellery, precious items, horological and chronometric instruments being goods in Class 14,· Leather and imitation leather, goods made of these materials not included in other classes, animal skins, hides, trunks and suitcases, umbrellas, parasols and walking sticks, whips, harness and saddlery being goods in Class 18; clothing, footwear and headgear being goods in Class 25: and Services in Class 35: advertising, including online advertising on a computer network, rental of advertising space, arranging exhibitions and trade fairs for commercial or advertising purposes, outdoor advertising services (advertising), dissemination of advertisements and advertising matter (including leaflets, prospectuses, printed matter and samples). Advertising mailing, updating of advertising material, sales promotion, shop-window dressing, demonstration of goods, distribution of samples for advertisement purposes, modelling for advertising or sales promotion, press review services, services of retail stores selling clothing, footwear, hats, perfume, glasses, jewellery, watches and leather goods.

   The total values of sales provided under the subject Trade Mark in Australia for the last five years is approximately AU$ xx.x million. [Figure redacted]

7. In contrast with the above claims, the evidence before me shows that there has been sparse, if any, use of the opposed trade mark in Australia and no use of any trade mark whatsoever in relation to many of the goods and services which are in fact those in respect of which protection continues to be sought.

8. Consequently, as I have observed, there is some degree of difficulty in accordingly much weight to the evidence of Mr Beya.

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:For applicant see section 6.

2. It is also relevant to the ground, as pursued by the Opponent, to consider what a trade mark is and how it functions. Sections 17 and 7 of the Act provide:

   17What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:For sign see section 6.

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)In this Act:

   use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

   (5)In this Act:

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

3. Sections 7 and 17 relevantly have the combined effect that to qualify as use under the Act, the use of a trade mark must be by the owner of the trade mark or under their authority so as to distinguish goods provided to, or services provided to or performed on behalf of, another person.

4. In Television Food Network, GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271; (2009) 80 IPR 314; [2009] AIPC 92-339 Collier J stated at [95]:

   Legal principles relevant to the application of s59 which I consider relevant to the proceedings before me include the following:

   ·the intention described in s59 must exist at the filing date: Nikken Wellness Pty Ltd v Van Voorst [2003] FCA 816;

   ·the intention must relate to the applicant or an authorised user or potential assignee of the applicant;

   ·making an application for registration is prima facie evidence of an  intention to use (Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at 401 per Fullagar J, Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415 ; (2008) 78 IPR 612 at [10] );

   ·once a prima facie case of lack of intention is established the evidentiary onus shifts to the trade mark applicant to establish intention (Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 at 163] affirmed Health World Limited [2009] FCAFC 14);

   ·provided the intention to use is sufficiently definite, it does not matter that the mark will not be used immediately (cf Re Peddie’s Application (1944) 61 RPC 31 and cases cited in Shanahan at 5.1420);

   ·the intention, or lack thereof, to which s59 is directed is a real and definite intention of the applicant for registration, to use the mark publicly as a trade mark , although not necessarily immediately or within a limited time (Health World Ltd [2008] FCA 100 at [163] , Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158);

   ·the intention to use  must be bona fide (cf s 62A of the Act).

1. In Americana International Ltd v Suyen Corporation [2008 ATMO 4], Hearing Officer Debrett Lyons summarised the case law under section 59 in the following way:

   ✓filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee Manufacturing Company [1960] HCA 47; [1960] 103 CLR 391 at 401);

   ✓that presumption is rebuttable (Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 31; Danjaq, LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18);

   ✓once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);

   ✓where, under the Trade Mark Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254 (‘Estex’);

   ✓a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430; NSW Lotteries Commission v Novamedia BV 52 IPR 638, Torrag Pty Ltd v Pah Pty Ltd [2006] ATMO 59; 70 IPR 349);

   ✓inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);

   ✓prior or concurrent actions between the same parties can be a source of inference (Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient; Danjaq);

   ✓non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);

   ✓failure to respond to an allegation can draw an adverse inference (Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 at 312 (‘Dunkel’));

2. The Opponent’s evidence reveals that at the filing date of the opposed application the specifications of goods and services of the opposed application read as follows:

   Class 3: Soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices.

   Class 9: Glasses, sunglasses, cases and frames thereof; clothing and footwear for protection against accidents, irradiation and fire; protective helmets and masks.

   Class 14: Precious metals and their alloys and goods made of or coated with these materials not included in other classes; jewellery; fashion jewellery; precious stones; horological and chronometric instruments.

   Class 18: Leather and imitation leather, goods made of these materials not included in other classes; animal skins: hides; trunks and suitcases; umbrellas; parasols and walking sticks; whips, harness and saddlery.

   Class 25: Clothing; footwear; headgear.

   Class 35: Advertising, including online advertising on a computer network; rental of advertising space; arranging exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising services (advertising); dissemination of advertisements and advertising matter (including leaflets, prospectuses, printed matter and samples); advertising mailing; updating of advertising material; sales promotion; shop-window dressing; demonstration of goods; distribution of samples for advertisement purposes; modelling for advertising or sales promotion; press review services; services of retail store selling clothing, footwear, hats, perfume, glasses, jewellery, watches and leather goods.

3. The Application was amended to that shown at paragraph 1, above, by the excision of the goods and services which are underlined, above, after an examiner of trade marks cited the Opponent’s trade mark registrations as a bar to the extension of protection to the Trade Mark and the declaration of Mr Beya was not accepted as establishing honest concurrent use of the opposed trade mark.

4. The Opponent, via the evidence of Ms Talbot, has challenged the intention of the Holder to use the opposed trade mark in relation to all of the goods and services within the specification as it stood at the priority date of the opposed application.  Ms Talbot it will be recalled attended one of the Holder’s stores with her colleague Clare Mirabella and found neither the goods nor services of the opposed application as it now stands nor the opposed trade mark in use at that store.  Substantially, the goods and services in respect of which the Opponent has challenged the intention of the Holder are those goods which were present at the priority date and not deleted from the Application by the Holder in order to overcome the examiner’s objections.  Conversely, the goods which are sold by the Holder (but do not bear the opposed trade mark) are, in the main, those which were deleted from the Application.

5. In other words, the Opponent alleges that for whatever reason the Holder has chosen to delete the goods and services of interest to it and chosen to pursue an application in relation to goods and services which it does not provide and has no intention to do so in the future.

6. This challenge, in combination with the inherent unlikelihood of the Holder selling the goods in Class 9 for which protection of the trade mark is sought, is enough in my consideration to shift the onus to the Holder: Estex.

7. The Holder has not directly addressed the allegations and appears to have misunderstood them in terms of the grounds within the Notice.  Mr Lord says in his submissions:

   The evidence in support submitted by the opponent comprises a statutory declaration by Emma Talbot.  This evidence focuses on a visit to an MNG retail store in Sydney, New South Wales on a single day which was 6 April 2011.

   The evidence focuses on purchases of clothing by Ms Talbot and a discussion of the MNG BY MANGO website on that day. There is also a discussion of certain goods which were not found to be on sale. The website is currently operating as of 14 June 2013.

   We submit that whether or not certain goods were on sale in that store on that day does not advance the opponent’s case one iota. The Hearing set down for 18 June 2013 is concerned with registrability of the trade mark in the classes set out above. It is not a non-use application and Ms Talbot’s evidence is thus irrelevant to the present proceedings in its totality.

8. The website mentioned by Mr Lord currently specifies that the Holder sells: dresses, coats, tops, skirts, trousers, shorts, jeans, jumpsuits, cardigans and sweaters, jumpsuits, jackets, swimwear, hosiery, bags, shoes, belts, wallets, jewelry, sunglasses, hats, gloves, scarves and other accessories under the trade mark MNG.  The impugned goods do not appear on the website.  The opposed trade mark either does not appear on the website or is not so obvious that it can be readily located.  Further, there is no mention on the website of plans to sell or provide any of the goods or services in respect of which protection is now sought, for example, protective clothing of the type worn for hazardous situations and materials such as those used in fighting fires or in chemical, nuclear and biological materials handling.  During the hearing Mr Andronos submitted (and I agree) that there is an inherent incongruity, unlikelihood and implausibility in the suggestion implicit in the Holder’s evidence and submissions that Scarlett Johansson, Penelope Cruz and Milla Jovovich would promote such protective clothing as being, in Mr Beya’s words, “high end goods, in particular fashion and accessory items, which target specifically mature, modern, urban women.”

9. The Zhi Ling Zeng declaration states:

   With reference to paragraphs 13 and 14 of the Statutory Declaration of Emma Talbot, I note that simply because the adverse party did not find the Applicant’s goods on sale that day (being 6 April 2011) in that particular store, it does not mean that the goods are not on sale on other days or in other stores of the Applicant.

10. Zhi Ling Zeng, who is trade mark attorney for the Holder, does not mention the services in respect of which protection is sought.  However, if the goods were on sale on other days or in other stores of the Holder, it should have been a simple matter for the Holder (onto whom the onus in this matter has transferred) to establish this via evidence.  Similarly, if the Holder has business plans to make protective clothing, it would be a simple matter to adduce evidence of those plans.  In the absence of such evidence, one would reasonably conclude that the Holder’s goods and services were not available at the priority date (or subsequently) and that the Holder has no intention to use the opposed trade mark in relation to the goods or services for which protection is sought.

11. The inference is thus there to be drawn that the Holder, at the relevant date, had no intention to use the trade mark in relation to protective clothing in Class 9.

12. In fact, none of the goods or services in respect of which protection is sought are currently offered through the Holder’s website and the opposed trade mark or variants of it do not appear on the part of the Holder’s website directed to the Australian market.

13. Further, it is apparent that the Holder has no intention to use the opposed trade mark in relation to the services for which protection is sought.  As discussed above, use of a trade mark must be by the owner or under the owner’s authority in relation to goods provided to, (or services provided to or performed on behalf of), another person.  While it is apparent that the Holder may advertise its own goods, there is no evidence that it performs advertising services (or any other of the nominated services) on behalf of another person (or provides those services to people other than itself) under any trade mark.  The suggestion that a retailer of clothing and accessories might act as an advertising agency and engage in all of the activities of an advertising agency appears to me to be so inherently unlikely that this factor combined with Ms Talbot’s evidence shifts the onus onto the Holder to establish its intentions via evidence which clearly rebuts the inference.

14. Similar observations can be made about the balance of the goods in Classes 3 and 14 of the Application.  The goods were clearly not in the store visited by Ms Talbot and are associated with those which have been impugned by the Opponent.

15. The Holder was fairly put on notice by Ms Talbot’s evidence that section 59 was a ground which would be pursued at the hearing and the Holder has chosen not to address it. Accordingly, I draw the adverse inference in terms of Dunkel and find that the Holder has not addressed this allegation with evidence because the allegation is well founded in relation to both the opposed trade mark itself used in relation to the goods and services for which protection is sought, and otherwise well founded in relation to the goods and services in respect of which protection is sought.

16. The Opponent has established its ground under section 59 of the Act.

Decision

1. Reg 17A.34 of the Regulations provides:

17A.34Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

1. As the Opponent has established its opposition to the protection of this trade mark, I refuse to extent protection to it.

Costs

1. Having been successful in this matter, the Opponent is entitled to its costs which I award against the Holder at the Official Scale set out in the Regulations.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

16 July 2013