Blackmarket.com.au Pty Ltd v VinoMofo Holdings Pty LTd
[2018] ATMO 14
•2 February 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Blackmarket.com.au Pty Ltd to applications under section 92 of the Act by VinoMofo Holdings Pty Ltd to remove trade mark numbers 1171493 (35) blackmarketwines.com.au (and device) and 1306160 (30, 32, 33, 35 and 42) BLACKMARKET - in the name of Blackmarket.com.au Pty Ltd.
Delegate: | Heath Wilson |
Representation: | Opponent: Tim Mahood of Hudson Gavin Martin Applicant: Natalie Hickey of Counsel instructed by James Omond of Omond & Co. |
Decision: | 2018 ATMO 14 Opposed applications to remove trade marks from the Register under section 92(4)(b) of the Trade Marks Act 1995 - no use of the Trade Marks within the relevant period – no exercise of discretion under section 101 of the Act – trade marks to be removed from the Register. |
Background
On 3 March 2016, VinoMofo Holdings Pty Ltd (‘the Applicant’) applied for the removal of two trade marks from the Register of Trade Marks under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The registered trade marks sought to be removed are in the name of Blackmarket.com.au Pty Ltd and relevant details are:
| TM No | Trade Mark | Specification of Goods and Services |
| 1171493 | Class 35: Discount services (retail, wholesale, or sales promotion services) | |
| 1306160 | BLACKMARKET | 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 |
(Collectively, ‘the Trade Marks’)
Notices of intention to oppose the applications for removal were filed by Blackmarket.com.au Pty Ltd (‘the Opponent’) who also filed a Statement of Grounds and Particulars (‘SGP’) for each opposition. The SGP for trade mark registration no. 1171493 relevantly stated:
Opponent, and Black-market.co.nz Limited with Opponent’s permission (together, Blackmarket) used, or took preparatory steps to use, in Australia, various signs, (together, Trade Marks) which include the terms BLACKMARKET or BLACKMARKETWINES, that albeit with additions or alterations, are nevertheless substantially the same as trade mark number 1171493 BLACKMARKETWINES.COM.AU (device), in relation to the services to which trade mark number 1171493 relates, before this application for removal and in particular during the period 3 February 2013 – 3 February 2016 (Relevant Period).
The SGP for trade mark registration no. 1306160 stated:
Opponent, and Black-market.co.nz Limited with Opponent’s permission (together, Blackmarket) used, or took preparatory steps to use, trade mark number 1306160 BLACKMARKET (Trade Mark) in Australia in relation to the goods and services to which the Trade Mark relates before this application for removal and in particular during the period 3 February 2013 – 3 February 2016 (Relevant Period).
The Applicant subsequently filed notices of intention to defend both of the applications for removal. The following evidence in support was filed by the Opponent:
ØStatutory declaration of Richard James Barry Knight (a Director of the Opponent and a Director of Black-market.co.nz Ltd) made 20 October 2016 with exhibits A to W (‘Knight declaration’).
ØStatutory declaration of Renee Stephanie Bertuch (Company Director of the Opponent) made 18 October 2016 with exhibit A (‘Bertuch declaration’).
The Applicant elected not to file any evidence in answer, with the result that, in accordance with Reg 5.14(6) of the Trade Marks Regulations 1995 (‘the Regulations’), there was no evidence in reply stage and the evidence stages of the opposition process were complete.
On 10 May 2017, the Opponent requested to be heard in relation to both oppositions to removal.
The hearing was set down for 20 November 2017 and the matter was allocated to me to hear and decide in my capacity as a delegate of the Registrar of Trade Marks. On 14 September 2017, I outlined the schedule for the provision of a written summary of argument from both parties.
Along with its written submissions provided in accordance with the schedule on 6 November 2017, the Opponent sought to introduce additional material being a supplementary declaration of Richard Knight made 6 November 2017 with exhibits A to K. At that time, the reasons provided for the admission of additional material were simply:
a.It is in the public interest for the Registrar to be able to review as much relevant material as possible to enable a considered determination of the issues; and
b.The Applicant will not, or is unlikely to, suffer any prejudice as it has taken no steps since filing its applications.
The hearing of the oppositions occurred in Canberra on 20 November 2017. Tim Mahood of Hudson Gavin Martin made oral submissions on behalf of the Opponent. Natalie Hickey of Counsel instructed by James Omond of Omond & Co (also in attendance) made oral submissions on the Applicant’s behalf.
At the hearing, I gave both parties the opportunity to make submissions in relation to the admission of the out of time material. Ms Hickey did not have any particular objection to the material being admitted. This is, however, not by itself a deciding factor. I refer to, and affirm, comments made by Hearing Officer Murray in the decision of TWG Tea Company Pte. Ltd v Tsit Wing International Company Limited:
I am reluctant to accede without protest to an unsettling assumption that appears to have been made here by both parties. This is the assumption that, post commencement in April 2013 of stricter extension of time for evidence provisions as well as the removal of formal further evidence provisions, regulation 21.19 might almost be a given to assist in ‘wrapping up loose ends’ at the time an opposition comes before a hearing officer. Emphatically, opposing parties who intend to rely on such an assumption will do so at their peril.[1]
[1] [2015] ATMO 64, [46] (footnotes omitted).
At the hearing, I referred Mr Mahood specifically to part 51.2.6 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) which relevantly provides:
The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:
· Why the evidence was filed after the due date
· If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
· What the evidence shows
· Why that information is crucial to the delegate’s decision
· Why it is in the public interest to have the information considered
· What is the balance of convenience for the parties if the information is considered.
After hearing the submissions made at hearing, I found that the Opponent had not made out a convincing case for the admission of the material and had not satisfactorily addressed the above factors. As a result, the hearing proceeded on (and this decision is based upon) the evidence properly filed and submissions made by the parties’ representatives.
The Law
Section 92(4)(b) of the Act relevantly provides:
92Application 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:
(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.
With regard to the burden of proof and the requirements necessary to rebut the allegation of non-use section 100 of the Act relevantly provides:
100Burden on opponent to establish use of trade mark etc.
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a)…
(b)…
(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
(2)…
(3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period…
Section 101 of the Act sets outs the decision to be made by the Registrar at the end of proceedings. It relevantly provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2)…
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
As the application for removal was filed on 3 March 2016, the period in which the Opponent must establish use of the Trade Marks is the three year period ending on 3 February 2016 (‘the relevant period’).
Reasons for Decision
The Opponent bears the onus[2] of establishing that it has used the Trade Marks in the course of trade in Australia during the relevant period. Such use may have been conducted by an authorised user[3] and may include use of the Trade Marks with additions or alterations that do not substantially affect the identities of the marks[4].
[2] See section 100 of the Act above.
[3] Section 8 of the Act.
[4] Section 100(3)(a) of the Act.
A single instance of use (as opposed to a single act of sale) may suffice to rebut the allegation of non-use, but such an instance must be accompanied by conclusive proof of that use.[5] The use must be upon or in relation to the registered goods and services and constitute use in the course of trade in Australia. Use in the ‘course of trade’ is a broad expression which includes (1) actual dealings in the relevant goods/services (e.g. product sales), (2) offers to sell goods or provide the services (e.g. advertisements) and also (3) an intention to offer the goods/services under the Trade Marks coupled with an objective commitment to use.[6]
[5] Re Nodoz Trade Mark [1962] RPC 1; and see Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939, [109].
[6] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261.
Use by the Opponent
The Knight declaration refers to the Opponent and the New Zealand company ‘Black-market.co.nz Ltd’ (‘the NZ Company’) collectively as ‘Blackmarket’. Mr Knight is a director of both companies and the Applicant has pointed out that neither company is a subsidiary of the other. By referring to ‘Blackmarket’ or ‘the Blackmarket business’, Mr Knight is able to make broad claims, for example, that Blackmarket’s online business was established in 1999, when (upon viewing the evidence in its entirety) he in fact means the NZ Company (which was subsequently incorporated on 8 August 2000).
It was not until 23 December 2008, that the Opponent was incorporated. The Knight Declaration states that the Opponent has conducted its business through the Australian website ‘ The Opponent’s business can be broadly described as involving the retail of wine. The NZ Company packages and sends a ‘mystery wine’ to its customer which bears the label of the wine manufacturer.
[7] The registration of the Australian domain name occurred on 29 June 2004 under the name of Ms Bertuch, who later became a company director of the Opponent.
I note that the specifications of goods and services for the Trade Marks are broader than simply retail of wine. I will return to this point later.
The evidence makes clear that the Opponent has not, at any point, shipped any of its goods nor provided any of its services directly to Australian consumers. The issue before me is whether the actions taken by the Opponent in the relevant period nevertheless amount to use of the Trade Marks in the course of trade in Australia.
Ms Bertuch is a director of the Opponent and the holder of the Australian domain name ‘ She declares that the Opponent is the beneficial owner of the domain name although she has ‘continued to legally own the domain name on trust for the Opponent.’ The domain name, she declares, has been used on behalf of, and under directions of the Blackmarket businesses. Once again, ‘Blackmarket businesses’ is an encompassing term used to mean the Opponent and the NZ Company.
The conflating of the New Zealand and Australian entities in the evidence creates ambiguity as to whether the Opponent has authorized the use of the Trade Marks. To rebut the allegation of non-use, any use of the Trade Marks must have been conducted by the Opponent. The Opponent’s representative argues that ‘Blackmarket NZ’s use of the BLACKMARKET Marks during the Relevant Period was, at all material times, authorised by the Opponent’. In relation to whether there was the requisite control of such use by the Opponent, the managing director of both companies was Mr Knight and the Opponent submits that when the trading activities concerned Australia they were controlled by Mr Knight on behalf of the Opponent. Mr Knight also declares:
Blackmarket NZ and the Opponent are connected/related entities in that they are both owned and controlled by me, my family, and a close family friend (Renee Bertuch (nee Law)). The Opponent is authorised to use any and all assets of Blackmarket NZ and vice versa. The separate company registrations in each jurisdiction are merely administrative…[8]
[8] Knight declaration, [11].
Ms Bertuch confirms in relation to the Australia-based ‘blackmarket.com.au’ domain name:
[T]he Opponent has since its incorporation had actual, sole control over the blackmarket.com.au domain. The domain name blackmarket.com.au has not been used for any other purpose by me, other than as the domain name for the Blackmarket businesses in Australia. To the extent that I have used the blackmarket.com.au domain, it has been on behalf of, with the permission of and under the direction of the Blackmarket businesses.[9]
[9] Bertuch declaration, [3].
Although I have noted particular shortcomings in the Opponent’s evidence, Mr Knight can at least be considered the controlling mind behind the Opponent and the person best placed to attest to any use of the Trade Marks. However, I do not find it necessary at this point to definitively determine whether any relevant use has been in fact been authorized by the Opponent. This is due to my findings below regarding the evidence of use of the Trade Marks, to which I will now turn.
Use of the Trade Marks upon or in relation to the Goods and Services
The Trade Marks consist, in one case, of the expression ‘blackmarketwines.com.au’ and the device of a box (‘the Composite Trade Mark’) registered for discount retail services in class 35 and, in the other, the expression ‘BLACKMARKET’ (‘the Word Trade Mark’) for a range of goods and services in classes 30, 32, 33, 35 and 42.
There is not a single instance of use of the Composite Trade Mark in the evidence before me. I find that the addition of the box device element is an addition that substantially affects the identity of the domain name ‘blackmarketwines.com.au’ by itself because it does not lack distinctiveness in relation to the goods and services for which that trade mark is registered and neither can it be reasonably be seen as an illustration of the words within the Composite Trade Mark.[10] I also note that the official Australian website of the Opponent resolves from the domain name ‘blackmarket.com.au’, rather than ‘blackmarketwines.com.au’ as appears in the Composite Trade Mark[11].
[10] See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, 69.
[11] I note, however, from the Opponent’s submissions that the Opponent is also the holder of this domain name.
Mr Knight declares that the central good the Opponent sells is wine. In fact, the evidence before me does not demonstrate use of the Trade Marks upon the Australian market in relation to the sale of any other goods. Neither is there demonstrated evidence of use in relation to advertising or marketing services (class 35) or any use in relation to the services in class 42 for which the Word Trade Mark is registered. Within the Knight declaration, the sale of wine by the Opponent (or the NZ company) is described as follows:
[T]he New Zealand website facilitated the sale of wine by wineries and distributors directly to customers, by posting offers from wineries and distributors on the New Zealand website. Customers could then use the site to buy wine from those wineries and distributors on the terms the set by the vendors. Blackmarket was not itself party to those transactions, other than as an intermediary.
…
An important part of Blackmarket’s business has been the sale, either by its suppliers or, more recently, by Blackmarket, of exclusively branded wine to registered customers.
…
From 2014, Blackmarket began selling wine itself, usually using the wine’s usual retail name (although most of this wine is sold as a “mystery wine”, where the wine’s label is concealed until after purchase). As such, when the “mystery wine” is considered, reviewed, selected and ultimately purchased by a customer, the only brand that the customer sees and therefore can associate with that selection is BLACKMARKET.
The above statements all appear to indicate that the NZ Company provides a discount retailing service, rather than the production of wine itself. Despite the fact that the actual label on the bottle of wine cannot be seen until after purchase, it would be evident to the consumer that it is not the Opponent’s wine that is offered for sale, but instead a retail service that is being offered to the consumer. The Word Trade Mark is not registered for such a retailing service in class 35.
It may be that the above deficiencies are fatal to the Opponent rebutting the allegation of non-use under section 92(4)(b) of the Act in relation to the Trade Marks. However, for completeness, I will address whether the services that have been offered and provided to consumers amount to use of the Trade Marks in the Australian market.
Use through the NZ and Australian websites
As I have said, ‘use in the course of trade’ is not limited to having actual vendible goods which have been sold in the marketplace.[12] The case most relevant to the facts before me is Ward Group Pty Ltd v Brodie & Stone Plc (‘Ward Group’) which provides:
[U]se of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[13]
[12] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939, [117]-[118].
[13] [2005] FCA 471, [43].
Mr Mahood also referred me to the decision in International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited[14] and submitted that Logan J had found use of an Australian registered trade mark on an overseas website even though it was not possible to order or pay for goods directly from the website. That decision concerned whether an undertaking to the court had been breached rather than a decision on trade mark infringement and it may be distinguished from the current matter on its particular facts. In the decision, it was not just Australian consumers that could not place orders; there was not a facility on the website for any consumer to make payments. However, the finding in that decision was that the relevant use accorded with the reasoning in Ward Group due to the following factors:
That downloading can occur in Australia is evidenced by the searches conducted by both Mr Bennett and by Mr Mitchell. A person seeking information concerning, “Affinage” can readily access from Australia and download here the global “affinage.com” web site maintained by IHC UK. As accessed by Mr Bennett this year, that global web site is, inter alia, directed to or targeted at Australia. That is the whole purpose of the “Australia” option in the drop down box selection offered on the global landing page.[15]
[14] [2011] FCA 339.
[15] Ibid, [60].
In Playgro Pty Ltd v Playgo Art & Craft Manufactory Limited (‘Playgro’), Moshinsky J explained that:
An overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark when those same goods, to which the trade mark is affixed, are in the course of trade, that is, are offered for sale and sold in Australia. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade before they are bought for consumption [Estex (1967) 116 CLR 254 at 266-267]. As affirmed by Gummow J in Wingate Marketing Pty Ltd v Levi Strauss & Co [(1994) [1994] FCA 1001; 49 FCR 89 at 136], “whilst a trade mark remains on goods, it functions as an indicator of the person who attached or authorised the initial use of the mark”. During the trading period, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale.[16]
[16] [2016] FCA 280, [52].
On the facts before me, I remain unsatisfied that the Opponent has fulfilled the above requirements for use of the Trade Marks in Australia.
Mr Mahood submitted that Australians can view the NZ website ( and have been able to since at least 2000. It may also be true that Australian consumers have accessed the NZ website with a view to purchasing products. However, it is the Opponent’s actions that are paramount in rebutting an allegation of non-use and what is lacking here from the evidence is a specific intent by the Opponent for its content on the NZ website to be directed to or target Australian consumers. This is perhaps not surprising as the Opponent has made it clear to any prospective consumers that it does not supply its services to Australia.
Neither the incorporation of the Opponent,[17] the registration of the Australian domain name,[18] nor the registration of the Trade Marks[19] demonstrates use of the Trade Marks in the course of trade in Australia. The following comments of Rangiah J in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd were made in the context of an infringement action, but are equally applicable here:
The applicants allege that mere registration of the business names amounts to infringement of their trade marks. I do not accept that submission. Section 120 of the TMA requires use of a sign as a trade mark. Registration is not use. The mere registration of a business name is analogous to the mere registration of a domain name. The mere registration of a domain name which contains the words of a registered trade mark does not amount to trade mark infringement: Sports Warehouse Inc. v Fry Consulting Pty Ltd at [153]; Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544 at [50]; CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279; (2003) 128 FCR 408 at [42].[20]
[17] Knight declaration, exhibit E.
[18] Exhibit F.
[19] Exhibits A and M.
[20] [2015] FCA 554, [308].
Having said that, the use of a domain name may constitute trade mark use if it is performing the same function as a sign would on the front of a shop.[21] In the current opposition, the majority of the evidence provided concerns use of the sign ‘blackmarket.co.nz’ on a New Zealand based website rather than the Australian based domain name ‘blackmarket.com.au’.
[21] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; 92 IPR 165, [50].
The Australian website ‘blackmarket.com.au’ now resolves to a landing page[22] which states simply ‘BLACK MARKET – Quality wine online. Exclusive prices’ and a footer which states ‘NZ#1 online wine site coming to Australia!’ As this exhibit is undated, I presume this screenshot to be current at the time of making the Knight declaration rather than an example from the relevant period. It therefore does not assist in rebutting the allegations of non-use of the Trade Marks.
[22] Knight declaration, exhibit U.
Exhibit I to the Knight declaration includes internal documents being screenshots of order forms the Opponent has entitled ‘Wine ordered from Australia’ from the NZ website during the relevant period. Mr Knight declares that they are likely to be orders from Australia on the basis of their IP addresses, but this is far from conclusive, and Mr Knight concedes that the IP tracking is not 100 per cent accurate.[23] Some examples appear to be orders from Australia for delivery to New Zealand addresses, others are orders for wine intended to be delivered to Australian addresses which may have originated from Australian customers. Each order intended to be sent to an Australian address has a nil total as the orders were refunded to the customer. This is evidently due to the fact that the NZ Company (and the Opponent) does not offer its retail services to the Australian market. Even if one were to accept that some of these purchases originated from Australian customers, it is unclear which (if either) of the Trade Marks have been used.
[23] Knight declaration, 19.
Exhibit Q to the Knight declaration indicates that any enquiries to have wine shipped to Australia were declined and any orders intended for Australian addresses were refunded. For example, on 13 and 16 March 2017, a representative of the NZ Company wrote to a message along the following lines to two different customers who were moving from New Zealand to Australia:
We hope to some day to expand into the Australian market, so when you get a new email address let us know and we keep your details on file.
Further, on 2 August 2017, another customer was informed:
Thanks for ordering via Blackmarket.co.nz.
Unfortunately we don’t send wine overseas. By the time you add freight and duty the wine almost doubles in price.
I have cancelled your order and no payment has been taken.
Sorry we can’t help you out.
From the evidence there is interest from Australian customers to have the wine shipped to Australia and also from New Zealand customers looking to have wine shipped to Australia. However, there is nothing on the New Zealand website ‘blackmarket.co.nz’ to indicate that the relevant services are being offered to, or directed at Australian consumers. [24]
[24] Exhibit G to the Knight declaration.
The Facebook page at exhibit V to the Knight declaration features a search for ‘blackmarket NZ’ and displays the name ‘blackmarket NZ’ being a company concerned with ‘Food/Beverages’ based in ‘Auckland, New Zealand’. There appears to be only a link to the New Zealand website and it is in any event an undated extract. Once again, while the Facebook page would have been accessible to Australian consumers, it is clearly not directed to them with a view to offering a service.
As mentioned in the Playgro decision, an overseas manufacturer may continue to use its trade mark after property in the goods has passed to an Australian retailer so long as the goods remained in the course of trade.[25] On the facts before me, I am not convinced that any sales of goods that were concluded in New Zealand resulted in such products making their way to the Australian market. Even if this did happen to occur, there is no evidence that this amounts to use ‘in the course of trade’ in relation to the Opponent’s retail services. For the avoidance of doubt, an Australian resident travelling to New Zealand who purchases wine for personal consumption and subsequently takes it back to Australia, similarly does not constitute use in the course of trade in Australia. As the delegate in Habitat Holding BV v Habitat Holding BV v KMM Enterprises Pty Ltd commented: ‘Use in New Zealand, despite close economic ties and a relative geographical proximity, is not use in Australia.’ [26]
[25] Ibid, [137].
[26] [2007] ATMO 65, [29].
Intention and objective commitment to use the Trade Marks:
Mr Knight declares[27] that ‘Blackmarket’ does not currently ship wine to Australia, and I have also found that there is no evidence of use in the relevant period on the NZ website to constitute an offer of goods or services to Australian consumers. When the NZ Company has received queries on whether or not it ships to Australia, it has directed customers to other wine distributors who may be able to forward the wines it is selling to an Australian address.
[27] Knight declaration, 29.
However, in Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J found:
[A]n intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.
…
Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect.[28]
[28] [2001] FCA 261, [20]; [40].
Given the time that has elapsed since the respective registrations, the existence of the Australian domain name and these Trade Marks and the registration of the Opponent are factors that are insufficient to demonstrate the objective commitment to use the Trade Marks in Australia. It is clear from the evidence that investigations and planning into the use of the Trade Marks is still ongoing.
Apart from creating a landing page for the Opponent’s Australian website (which redirects to the NZ website), the Opponent has also retained email addresses from subscribers to its newsletter. Some of these email addresses ending in ‘.com.au’ indicating an Australian consumer. The customers would likely have subsequently received promotional material relating to wine products that may be purchased from the website ‘blackmarket.co.nz.’, but this is not a reference to the Trade Marks used in relation to the particular goods and services for which they are registered. In any event, it has not been until after the relevant period ended that the Australian website has directed customers to ‘sign up with Black Market’. As such, these examples do not assist the Opponent in rebutting the allegation of non-use, but the activities may be still be relevant in the consideration of the discretion below.
After carefully considering the entirety of the evidence filed, I find that the Opponent has not used the Trade Marks in the course of trade in Australia during the relevant period upon or in relation to the goods and services. The grounds upon which the removal applications were made have been established.
Registrar’s discretion under subsection 101(3)
Mr Mahood argued that should the Opponent be unsuccessful in rebutting the allegations of non-use, it is nevertheless reasonable for the Registrar to exercise her discretion and allow the Trade Marks to remain on the Register. Under subsection 101(3) of the Act, the circumstances under which the Registrar may exercise her discretion need not be exceptional, and there are no particular circumstances that must (as opposed to ‘may’), be taken into account.
The non-exhaustive factors considered in Pioneer Computers Australia Pty Limited v Pioneer KK included:
In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 [‘Hermes’] were of assistance in considering the exercise of the discretion:
- there had been no abandonment of the trade mark;
- the registered proprietors of the mark still had a residual reputation in the mark;
- there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
- the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
- the registered proprietors were not aware of the applicant’s sales under the mark. [29]
[29] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [169].
Mr Mahood referred to a reputation in the Trade Marks and specifically to a spill-over reputation from the New Zealand market onto the Australian market. It is evident from the registration of the Opponent, its registration of an Australian domain name, retaining email addresses of potential Australian customers, and the registration of the Trade Marks themselves that the Opponent had the intent to expand its activities to Australia. However, given the findings I have made above, I am not convinced that a reputation in the Trade Marks exists in the Australian market.
Mr Mahood referred to ongoing commercial negotiations to providing its services in Australia. Mr Knight declares that ‘Blackmarket plans to be sending wine (and other products) directly to consumers in Australia by, at least, the end of 2017’.[30] Having noted this, I further observe that the intention to trade in Australia has been an ongoing one since 2006. For example, in an article dated from 2006 Mr Knight was quoted as stating that he had ‘secured the blackmarket site name in Australia and planned to expand across the Tasman next year’.
[30] Knight declaration, 35.
Exhibits J, K and L to the Knight declaration are evidence of negotiations taking place between 2013 (exhibit K), and January 2015 (exhibit J). These instances appear to be preliminary investigations into trading within Australia and do not demonstrate an objective commitment to using the Trade Marks on the Australian market. I am not convinced these are anything more than mere preliminary discussions and negotiations[31] about whether to enter the Australian market, and do not constitute use or a resolved intention to use the Trade Marks in Australia.
[31] See, for example, Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73, [23].
While I do not find that the Opponent has abandoned the use of the Trade Marks, there is no further information that anything significant has changed in recent years and it does not appear that the Opponent is any more committed to trading in the Australian market than it was when the Trade Marks were entered on the Register of Trade Marks.
I have taken into account the possible effects of removal of the Trade Marks on the Opponent’s business, but this must be balanced with the scheme of the provisions including that an unused trade mark will be ‘removed from the register unless sufficient reason appears for leaving it there’.[32] The question therefore is: Despite the lack of use of the Trade Marks in the relevant period, is it reasonable in the circumstances for them to remain on the Register? For the reasons provided, I am not satisfied that it is reasonable to exercise the discretion and allow the Trade Marks to remain. I therefore decline to exercise the discretion.
[32] Re Carl Zeiss Pty Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1, [11] and see Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28].
Decision
The applications for removal under section 92(4)(b) of the Act have been successful. Under section 101(1) of the Act, I therefore direct that trade mark registration nos. 1171493 and 1306160 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before the end of that period, the registrations will be subject to the court’s decision.
Costs
An award of costs in these proceedings normally follows the event. The Applicant has been successful and I award costs against the Opponent for the first opposition under section 221 of the Act in the allowable amounts set out in Schedule 8 of the Regulations. For the remaining opposition, I direct that relevant costs be awarded in accordance with the practice set out in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[33]
[33] [2001] ATMO 78; (2001) 53 IPR 591.
Heath Wilson
Hearing Officer
Oppositions and Hearings
5 February 2018
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