Black-market Co Nz Limited and Blackmarket Com Au Pty Ltd v Vinomofo Holdings Pty Ltd

[2018] ATMO 42

TRADE MARKS ACT 1995

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

ReOpposition by Black-market.co.nz Limited and Blackmarket.com.au Pty Ltd to registration of trade mark application 1719550 (35) – BLACK MARKET DEAL - in the name of Vinomofo Holdings Pty Ltd

Delegate:  Robert Wilson

Representation:                  Opponents: Tim Mahood of Hudson Gavin Martin

Applicant: Natalie Hickey of Counsel, instructed by James Omond of Omond & Co

Decision:  2018 ATMO 42

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b) and 44 considered – neither ground established – s 44 trade marks removed for non-use – no use of Opponents’ trade marks in Australia – application to proceed to registration

Background

1.     This decision concerns an opposition brought by Black-market.co.nz Limited and Blackmarket.com.au Pty Ltd (‘the Opponents’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Vinomofo Holdings Pty Ltd (‘the Applicant’):

Application Number:

1719550

Filing Date:

4 September 2015

Services:

Class 35: Retail services; Retailing of goods (by any means)

 (‘the Applicant’s Services’)

Trade Mark:

BLACK MARKET DEAL

(‘the Applicant’s Trade Mark’)

2.     On 28 January 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponents filed a Notice of Intention to Oppose (‘the NIO’) the registration on 24 February 2016 and a Statement of Grounds and Particulars (‘the SGP’) on 24 March 2016. The Applicant filed a Notice of Intention to Defend on 21 April 2016. The SGP nominated grounds of opposition under ss 42, 44, 60 and 62A of the Act.

Evidence

3.     The Opponents filed Evidence in Support of their opposition (‘EIS’) on 4 August 2016. This evidence consists of:

·Statutory Declaration made on 3 August 2016 by Richard James Barry Knight, a director of the Opponents, with Exhibits A to X (‘the Knight declaration’).

4.     The Applicant filed Evidence in Answer (‘EIA’) on 11 November 2016. This evidence consists of:

·Statutory Declaration made on 10 November 2016 by Krista Diez-Simson, the Head of Finance of the Applicant, with Exhibits KDS-1 and KDS-2 (‘the Simson declaration’); and

·Statutory Declaration made on 10 November 2016 by James Omond, the Principal of Omond & Co Pty Ltd, the representative of the Applicant, with Annexure JLO-1 (‘the Omond declaration’).

5.     The Opponents filed Evidence in Reply (‘EIR’) on 16 December 2016. This evidence consists of:

·Statutory Declaration made on 15 December 2016 by Thomas James O’Brien, a solicitor employed by Hudson Gavin Martin, the representative of the Opponents, with Exhibits A and B (‘the O’Brien declaration’).

6.     I heard the matter in Canberra on 6 September 2017 as a delegate of the Registrar of Trade Marks. Tim Mahood of Hudson Gavin Martin appeared for the Opponents. Natalie Hickey of Counsel, instructed by James Omond of Omond & Co appeared for the Applicant. Both representatives’ oral submissions were supported by written submissions which were filed in accordance with my earlier directions.

The Opponents

7.     According to the Knight declaration, Black-market.co.nz Ltd (‘Blackmarket NZ’) has its registered office in Auckland, New Zealand. Blackmarket.com.au Pty Ltd (‘Blackmarket Australia’) has its registered office in Melbourne, Australia. The Opponents are both operated by the same staff and the same resources based in New Zealand but are managed through separate, incorporated companies. The Opponents’ business was established in New Zealand in 1999. Initially, the Opponents’ business involved operating a website which facilitated the sale of wines by wineries and distributors directly to customers. Blackmarket NZ conducts its business through the website blackmarket.co.nz. Blackmarket Australia conducts its business through the website blackmarket.com.au. From 2014, the Opponents also began selling wine themselves, although these were not wines that the Opponents had any hand in producing; rather, this was in the nature of a retailing service. Much of the wine was sold as a ‘mystery wine’, where the producer of the wine is concealed until after purchase.

8.     Also according to the Knight declaration, since 1999, the Opponents delivered wine to New Zealand customers. During that time a number of requests for the purchase of wine were received from Australians looking to order wine to their Australian addresses. The Opponents refunded those orders. The Opponents registered the domain name for the Australian website in 2004; however, until May 2016 the website redirected customers to the New Zealand website. Australian customers were able to use the New Zealand website to send wine to New Zealand addresses for collection or for re‑routing to Australia by distributors. The Opponents did not send goods or offer their services to Australia. Since May 2016, the Australian website has displayed an Australian-specific welcome page encouraging visitors to register in anticipation of the Opponents being able to send wines directly to Australian consumers. The Opponents expect to be able to do this by mid to late 2017.

9.     At the date of filing the NIO and at the date this matter was heard, Blackmarket Australia was the owner of the Australian registered trade marks detailed below. These registrations were subject of a successful application for removal for non-use by the Applicant and at the time of writing this decision the trade marks have been removed from the Register:

Trade Mark Number:	1171493
Priority Date:	18 April 2007
Services:	Class 35: Discount services (retail, wholesale, or sales promotion services)
Trade Mark:	(‘the 1493 Trade Mark’)
Status:	Removed - Non-Use.

Trade Mark Number:

1306160

Priority Date:

23 June 2009

Goods and Services:

Including:

Class 33: Alcoholic beverages, except beer

(See Annexure 1 for full specification)

Trade Mark:

BLACKMARKET 

(‘the 6160 Trade Mark’)

Status:

Removed - Non-Use.

10.   I also note that Blackmarket NZ is the registered owner of New Zealand trade mark number 724275 for the plain word BLACKMARKET. The trade mark is registered for goods similar to those of the 6160 Trade Mark.

The Applicant

11.   According the Simson declaration:

The Applicant launched its business under the name VINOMOFO in January 2011, which evolved from a business its founders had previously operated under the mark ‘QWOFF’. …

The Applicant’s original business model involved only the sale of wine products produced by third parties.

Every online retailer of wine that I am aware of in Australia, and most ‘bricks and mortar’ retailers who have more than one store, now sell wines under their own proprietary brands, and the Applicant now also does the same.

The Applicant’s name, VINOMOFO, is a play on words, with the ‘MOFO’ component indicating that the Applicant is an ‘edgy’ business, challenging established social norms.[1]

The term ‘Black Market Deal’ similarly indicates a challenge to normal, established practice, given that it indicates that the deal is somehow ‘illegal’.

The reason for this is that the nature of offers made by the Applicant under the ‘Black Market Deal’ are such that the identity of the producer and the specific wine is not disclosed to the potential purchaser at the time of the offer …

This secrecy is because the price at which the Applicant offers the wine for sale is less than it can usually be purchased for elsewhere, and the producer of the wine does not want the wine to be seen as of lesser value or ‘cheaper’ than the position it otherwise holds in the market.

It is only after a consumer has taken delivery of a ‘Black Market Deal’ that the consumer becomes aware of the identity of the producer and the wine.

The Applicant first started use of the trade mark ‘Black Market Deal’ to describe this type of offer in a marketing email sent on 19 March 2013. Since then, the Applicant has made more than 100 such offers in each full year, and has sent out more than 400 ‘Black Market Deal’ offers altogether …

The Applicant has only ever used the mark ‘Black Market Deal’ to describe wines produced by third parties.

[1] The Applicant provided no further explanation of this statement and I thank the Opponents for explaining that ‘MOFO’ is a slang acronym for ‘mother fucker’. This interpretation is supported by a photograph in Exhibit KDS-1 of what appears to be a celebration of three years of the Applicant which shows a banner which reads ‘Happy 3^rd Birthday WINEMOTHERFUCKERS’.

Grounds of Opposition, Onus and Standard of Proof

12. As indicated above, in the SGP the Opponents nominated grounds of opposition under ss 42, 44, 60 and 62A of the Act. At the hearing the Opponents pressed only the grounds pursuant to ss 42(b) and 44, and it is only those grounds that I consider in this decision. The onus of proof in an opposition rests upon the Opponents.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 4 September 2015, being the filing date of the application (‘the Relevant Date’).[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Discussion

13.   It is useful at this point to consider the use the Opponents have made of their trade marks.

14.   As indicated in the background of the Opponents above, they have two domain name registrations. From when it was registered in 2004 up until May 2016 (after the Relevant Date) the blackmarket.com.au domain name redirected to a website at blackmarket.co.nz (‘the NZ website’). As mentioned earlier, where Australian addresses were entered for an order on the NZ website the Opponents would refund those orders. It was also suggested that Australian customers may pick up wine from a New Zealand address while visiting, or use a distributor in NZ to forward the wine to Australia. The Knight declaration states that the NZ website ‘has been available for anyone, including Australia-based customers, to view since 1999 or 2000’.

15.   For use of a trade mark on a non-Australian website to constitute use in Australia it is necessary that the use ‘was specifically intended to be made in, or directed at’ Australia.[5] Unless this is the case, mere exposure to the website by persons in Australia does not constitute use in Australia of the trade marks appearing on the website. The manner in which the Opponents’ domain names and websites functioned—at least before the Relevant Date—strongly indicates that the NZ website was not specifically directed at Australia. There is nothing in the Opponents’ evidence to persuade me otherwise. Consequently, I am not satisfied that use of any trade marks on the NZ website constitutes use in Australia.

[5] Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, [43].

16.   Exhibit M to the Knight declaration is declared to be ‘a number of email enquiries from Australia-based customers asking to have wine shipped to Australia’. The emails are typically from New Zealanders about to leave the country or who had recently left enquiring about deliveries to Australia, or tourists who had sampled NZ wines while visiting NZ and were hoping to purchase some of those wines from Australia. The response to the queries was consistently that the company does not ship to Australia. None of the emails bear BLACKMARKET in a manner that could be construed as trade mark use. Most typically the sign appears as part of an email address, for example, [email protected]. Sometimes the sign would appear in the subject header of the email. I am not satisfied that use of this type constitutes use of BLACKMARKET as a trade mark in Australia.

17.   The Knight declaration refers also to a reference in an Australian textbook on marketing. A copy of the reference was provided in Exhibit O. While almost illegible in the exhibit, the single reference appears in a sentence which contains, ‘many SMEs (e.g. …’. Such use is not use as a trade mark, this is simply a reference to a domain name and is not use in the course of trade for any of the Opponents’ goods or services.

18.   The Opponents’ evidence does not satisfy me that they used the BLACKMARKET trade mark in Australia prior to the relevant date.

Section 44

19. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)…

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)              a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)             a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)…

20. In the SGP the Opponents nominated the trade marks detailed at para 9, above, in respect of s 44. As those trade marks have been removed from the Register for non‑use I find this ground of Opposition has not been established.[6]

[6] This approach was discussed and affirmed in 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, 25-31.

Section 42

21.   This ground was, in part, particularised in the SGP as follows:

Due to the reputation acquired by the Opponents in the trade mark BLACKMARKET and in the BLACKMARKET Registrations prior to the Relevant Date, including in connection with [the Applicant’s Services], use by the Applicant of [the Applicant’s Trade Mark] in connection with [the Applicant’s Services] would be contrary to section 18 and 29(1)(g) of the Competition and Consumer Act 2010 (Cth), Schedule 2, the Australian Consumer Law.

22. Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

23. It is apparent from the particulars in the SGP that the Opponents are relying on s 42(b) and assert that use of the Applicant’s Trade Mark by the Applicant would be contrary to law.

24.     As indicated in its particulars for this ground, the Opponents rely on the reputation acquired by the trade mark BLACKMARKET as a result of their use of that trade mark prior to the Relevant Date. The relevant reputation for this ground is reputation in Australia. As indicated in the examination of the evidence before me in this matter, I am not satisfied that the Opponents used BLACKMARKET as a trade mark in Australia before the Relevant Date. It follows that the Opponents have failed to establish the asserted facts and have, therefore, failed to establish this ground of opposition.

Decision

25.   I have found the Opponents have failed to establish either of the grounds of opposition they pressed at the hearing. Accordingly, application 1719550 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

26. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponents have failed to establish a ground of opposition, I award costs against the Opponents under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson

Hearing Officer

Hearings and Oppositions

28 March 2018

Annexure 1

Goods and Services of trade mark registration 1306160

Class 30: Coffee beans, ground coffee, and coffee-based beverages; tea and tea based beverages; condiments, namely chutney, marinades, dressings and sauces; spices and flavourings (other than essential oils); delicatessen and exotic foods in this class, namely cocktail wafers, crackers, crisp bread, antipasto comprising food and condiments in this class and confectionery, including boiled sweets, peppermints, cakes and chocolate

Class 32: Beer; non-alcoholic beverages including distilled, mineral and aerated water, fruit juices and soft drinks

Class 33: Alcoholic beverages, except beer

Class 35: Marketing; advertising

Class 42: Consulting services in relation to information technology support services; computer programming, software and network design, installation and maintenance services; creating and maintaining websites and providing support services in relation to the same