Body Business Pty Ltd v Opti-Nutra Ltd

[2022] ATMO 185

TRADE MARKS ACT 1995

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

Re:Opposition by Body Business Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Opti-Nutra Ltd to remove trade mark number 1386626 (classes 5 & 41) – BURN LAB – in the name of Body Business Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Trademark Ventures International

Applicant: Duncan Cotterill Lawyers

Decision:

2022 ATMO 185

Trade Marks Act 1995 (Cth) – section 96 opposition – s 92(4)(b) application for partial removal – Removal Opponent’s evidence shows no use of the Trade Mark during the relevant period for class 5 goods – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register with respect to class 5 goods

Background

1. Body Business Pty Ltd (‘Removal Opponent’) is the owner of Australian registration number 1386626 BURN LAB (‘Trade Mark’) filed on 3 October 2010 for:

Class 5:Health food supplements for persons with special dietary requirements; health food supplements made principally of vitamins (‘Registered Goods’)

Class 41: Booking of exercise facilities; conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise); provision of apparatus for exercise; provision of exercise facilities

1. On 14 October 2021, Opti-Nutra Ltd (‘Removal Applicant’) filed an application seeking the partial removal of the Trade Mark from the Register for non-use with respect only to the Registered Goods (‘Removal Application’).

2. On 20 October 2021, the Removal Opponent filed a Notice of Intention to Oppose the Removal Application, followed by a Statement of Grounds and Particulars (‘SGP’) on 22 October 2021.  The Removal Applicant filed a Notice of Intention to Defend the Removal Application on 23 December 2021.

3. On 22 March 2022, the Removal Opponent filed evidence in support of its opposition to the Removal Application (‘EIS’) consisting of a declaration of Donna Aston, Managing Director of the Removal Opponent made on 22 March 2022 (‘Aston Declaration’).[1]  The Removal Applicant did not file any evidence in answer.

   [1] The Removal Opponent filed two declarations of Donna Aston both made on 22 March 2022.  The declaration of Ms Aston made using IP Australia’s standard Declaration form does not add any information to that contained in the other declaration made by Ms Aston.

4. Once the evidence stage concluded, the parties were given the opportunity to request a hearing.  Both parties requested a decision without a hearing and this matter was allocated to me to decide as a delegate of the Registrar of Trade Marks.  I make my decision based on the information contained in the SGP and EIS.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth)[2] deals with the removal of trade marks from the Register due to non-use.

   [2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

2. The Removal Applicant nominated s 92(4)(b) as the ground for removal of the Registered Goods which relevantly provides:

(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. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[3] and I confirm that five years have in fact passed.

   [3] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 24 February 2019 onwards.

2. The Removal Opponent bears the onus of rebutting the allegation of non-use[4] on the balance of probabilities.[5]  A removal opponent is taken to have rebutted the allegation if it establishes use of the trade mark (or the trade mark with additions or alterations not substantially affecting its identity) or if it establishes that there was an obstacle to use of the trade mark during the relevant period.  A single bona fide use during the relevant period will be sufficient[6] although that use ought to be established by ‘if not conclusive proof, at any rate  overwhelmingly convincing proof’.[7]

   [4] Act s 100(1).

   [5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

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

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

3. The relevant period for the Removal Opponent to establish use of the Trade Mark for the Registered Goods is the three year period ending on 14 September 2021 (‘Relevant Period’).

4. Pursuant to s 101, I may decide to remove the Trade Mark from the Register for all or some of the Registered Goods, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark for the Registered Goods even if the ground under which the Removal Application was made is established.

Discussion

Evidence

1. The Removal Opponent’s evidence in this matter consists of the Aston Declaration.  Ms Aston attests that she is a celebrity nutritionist, human performance coach and author. 

2. Ms Aston declares that the Trade Mark is used for a health food supplements range as well as for exercise facilities and fitness classes.  She claims that there is “an impressive reputation in Australia in the health and fitness industry” in the Trade Mark.

3. As evidence of use of the Trade Mark, the Aston Declaration  includes:

• A photograph of containers bearing a stylised version of the Trade Mark purporting to be samples of the Removal Opponent’s health food supplements range (‘Photograph’). 

• A snippet of an online promotion of the Removal Opponent’s health food supplements range (‘Online Promotion’); and

• An example of a promotional advertisement bearing the Trade Mark dated 25 November 2019 offering “20% off all packs plus a complimentary goal-setting session” (‘Christmas Promotion’).

1. Ms Aston appears to be under the misapprehension that the Removal Application is also directed to the class 41 services for which the Trade Mark is registered which is not the case.  She claims use of the Trade Mark for those services and annexes a photograph of what is presumably an exercise gym with signage bearing the Trade Mark.  Two invoices from 27 March 2020 and 15 January 2019 from LifeFitness for the purchase of exercise equipment are included in the EIS.  These invoices are virtually illegible and other than being able to ascertain that both documents appear to have been issued by LifeFitness and at least one of the documents is a purchase order, it is not possible to read any pertinent details such as the dates, purchaser details or specifics of the items bought. 

2. On 23 August 2020, the Removal Opponent claims to have purchased ingredients from FIT-BioCeuticals Ltd for sale under the Trade Mark as health food supplements.  A copy of the sales order for this purchase is included in the Aston Declaration but again, none of the details, such as the purchaser or items ordered, are legible.

3. Finally, Ms Aston claims the Removal Opponent has been working on establishing the brand BURN LAB in Australia as a trusted provider of health, fitness and nutrition products and services for over 12 years.  Ms Aston intends to continue to grow the business including nutrition and performance-based supplements and powders.

Use of the Trade Mark in the Relevant Period

1. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Trade Mark (or a mark with additions or alterations not substantially affecting the identity of the Trade Mark) in relation to the Registered Goods within the Relevant Period in order to rebut the allegation of non-use.  Undated examples are afforded little, if any, weight.

2. As a preliminary point, I note that in both the Photograph and the Online Promotion, BURN LAB appears in a stylised form where the word LAB appears in a square device.  In my opinion, this stylised form of the mark is a trade mark with additions or alterations not substantially affecting the identity of the Trade Mark.

3. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd,[8] the High Court noted that:

   Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine"  use judged by commercial standards.

   [8] (2010) 241 CLR 144, [64] (French CJ, Gummow, Crennan and Bell JJ).

4. The EIS does not include any proof of sales of the Registered Goods under the Trade Mark in the Relevant Period or at any other time.  Whilst actual sales of the Registered Goods under the Trade Mark are not essential to defeat a non-use action, there must be at least an offer to supply the Registered Goods under the Trade Mark during the Relevant Period.

5. Whilst all of the examples of use of the Trade Mark feature the mark, it is not clear what goods are being promoted and when or where the promotions occurred.

6. The Photograph is undated and much of the label is so unclear, it cannot be ascertained whether the goods are actually health food supplements. 

7. The Online Promotion is also undated and no information is provided about where this promotion appeared online.  The image is cropped to such an extent and is so unclear, that it is not apparent whether the products appearing in the promotion are health food supplements.

8. The  promotional advertisement dated 25 November 2019, features the Trade Mark but makes no specific mention of health food supplements and does not include any illustration of the Registered Goods.  The reference to “20% off packs” could be a reference to a discount on a ‘pack’ of exercise sessions.

9. The order of 23 August 2020 for ingredients does not establish use of the Trade Mark for the Registered Goods.  It is not possible to determine what goods were purchased, in what quantity or whether the goods were bought by the Removal Opponent.  In any event, there is no evidence that these ingredients were offered for sale to consumers as health food supplements under the Trade Mark.

10. I am not satisfied that the EIS establishes use of the Trade Mark for the Registered Goods in Australia during the Relevant Period.

Obstacles to Use

1. The Removal Opponent has not submitted that there have been any obstacles to use of the Trade Mark for the Registered Goods in the Relevant Period and for completeness I note that I have been unable to identify any such obstacles.  As such, I am not satisfied that there was an obstacle to use of the Trade Mark for the Registered Goods in the Relevant Period.  The Opponent has not rebutted the ground for removal in respect of the Registered Goods. 

Registrar’s Discretion

1. Section 101(3) provides the Registrar with a broad discretion not to remove a trade mark from the Register for goods or services for which a mark has not been used during the relevant three year period, if satisfied that it is reasonable to do so.

2. There are no limitations on the discretion or the factors to be taken into account.[9]  Some factors that have been found relevant to the consideration of whether to exercise the discretion include:

• There has been no abandonment of the mark;

• The registered owner still has a residual reputation in the mark;

• There has been use of the mark by the registered owner since the relevant period ended;[10]

• The mark has been used for similar goods or services to those which are the subject of the non-use application.[11]

  [9] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [171] – [172] (Bennett J).

  [10] Ibid [169].

  [11] Act s 101(4).

1. The Removal Opponent has declared that it has an ongoing interest in growing the goods and services offered under the Trade Mark including nutrition and performance-based supplements and powders.  Further, the Removal Opponent has taken steps to update its details on the Register.  Hence, I am satisfied that the Removal Opponent has not abandoned the Trade Mark.

2. The Removal Opponent’s ongoing interest in using the Trade Mark for the Registered Goods must be balanced against the public interest in the integrity of the Register which generally demands the removal of an unused mark.[12]

   [12] M Davison, I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off online 7th edition, 2022 Thomson Reuters, [70.2505].

3. In the present case, where there is no detailed information about the nature and extent of the use, or intended use, of the Trade Mark, I am not satisfied that the Removal Opponent’s ongoing interest in using the Trade Mark for the Registered Goods is sufficient to justify the exercise of the discretion.  Accordingly, I decline to exercise the discretion to retain the Trade Mark on the Register for the Registered Goods.

Decision

1. The Removal Opponent has not established use of the Trade Mark for the Registered Goods in Australia during the Relevant Period and the ground on which the Removal Application was made has been established.  I direct that registration 1386626 be amended to remove all of the class 5 goods one month from the date of this decision.  The Trade Mark shall remain registered for the class 41 services.

2. If the Registrar is served with a notice of appeal, I direct that the removal of the class 5 goods shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court see fit.

3. The Removal Applicant requested an award of costs. As costs generally follow the event, I see no reason to depart from that general principle. Accordingly, I award costs against the Removal Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

19 October 2022