Brenda Lesley Robinson v Meadowmist Management Pty Ltd

[2002] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Brenda Lesley Robinson to applications under section 92 of the Act by Meadowmist Management Pty Ltd to remove trade mark numbers 615140, 615141, 618415(in classes 42, 35, 41) - CLUB PET - in the name of Brenda Lesley Robinson

Background

Brenda Lesley Robinson owns trade mark registrations number 615140, 615141 and 618415.  They are all for the trade mark CLUB PET.  The registrations cover, respectively:
615140 (class 42): Providing of food and drink; temporary accommodation; medical, hygenic and beauty services; scientific and industrial research; computer programming; veterinary and agricultural services in relation to animals
615141 (class 35): Advertising and business management consultancy services in relation to providing services for animals, animal owners, potential animal owners and veterinarians
618415 (class 41): Education; animal training; entertainment; sporting services related to animals, animal owners, potential animal owners and veterinarians

Meadowmist Management Pty Ltd (Meadowmist) runs a boarding kennel under the trade mark MEADOWMIST CLUB PET.  It accommodates dogs, cats, even birds, rabbits and guinea pigs.  Its advertising or customer-information material shows that its fees include a compulsory $10 charge for flea and tick rinsing of pets on arrival and washing and grooming them on departure.

In the circumstances that I will come to below, it has applied to remove Ms Robinson's trade marks from the register, under s 92(4)b of the Trade Marks Act 1995.  In simple terms, Meadowmist alleges that Ms Robinson's trade marks were not used within the three year period up to and including 11 August 2000 ("the relevant period") for any trade in the relevant services.

Ms Robinson has opposed this removal, relying on two grounds of opposition, that:

• Meadowmist is not a person aggrieved, a requirement for standing to make a removal application, and

• the trade mark has been used for services covered by each registration.

The parties completed the evidence stages set out in the regulations.  Their evidence is as follows

Ms Robinson's  evidence in support

Declaration by	Dated	Annexures
herself, re 615140	28.2.01	BLR001 to 010
herself, re 615141	28.2.01	BLR020 to 021
herself, re 618415	28.2.01	BLR030 to 032

Meadowmist's evidence in answer

Declaration by	Dated	Annexures
Patricia Hall	15.8.01	A to C

Ms Robinson's evidence in reply

Declaration by	Dated	Annexures
herself	14.11.01	Variously numbered, from 40 to 209

After this, the matter came on for hearing before me.  Ms Robinson was represented by Ben Fitzpatrick of counsel, instructed by Zolis Lawyers.  Meadowmist was represented by Martin Pollock, solicitor, of the patent attorney firm of Spruson & Ferguson.  I am now to decide the removal question, under delegation from the Registrar of Trade Marks. 

Issues

Person aggrieved

Mr Fitzpatrick opened Ms Robinson's case by impugning the standing of Meadowmist.  It was common ground between the parties that standing as a person aggrieved was a preliminary test.  Mr Fitzpatrick argued that, failing this, Meadowmist was not entitled to make an application under s 92 in the first place. 

The history of this matter is that his client, Ms Robinson, had caused her former patent attorneys to write to Meadowmist.  Ms Robinson's previous attorneys had become aware of an application, then newly filed by Meadowmist, seeking registration of the trade mark MEADOWMIST CLUB PET, application 843851.  The attorneys say, in that letter, which is part of the Hall declaration:  "use of the mark would constitute an infringement of the rights emanating from the registration of our client's registered marks."  The letter went on to give an ultimatum:  proceedings would be commenced within seven days unless Meadowmist ceased to use CLUB PET in respect of "boarding for animals including boarding kennels and cattery services" (the services specified in Meadowmist's application) or any services of the same description as these, withdrew its own trade mark application and publicly advertised of that it had ceased to use the trade mark.

Mr Fitzpatrick argued that Ms Robinson's action was not enough to confer standing on Meadowmist, that there were many alternative options to resolve the matter, and that the filing of the opposed removal applications by Meadowmist was "premature".  He noted a recent decision in the Trade Marks Office to the effect that a "mere possibility" of being appreciably disadvantaged was not sufficient.  Here he referred to Castle Bacon v Leofrani to which I will come, below.  If, on the other hand, the dealings between the parties were sufficient, against which registrations was Meadowmist entitled to file removal applications?  Surely it could not be that the mere listing by Ms Robinson of registrations she holds in a range of very diverse classes could justify the level of response adopted by Meadowmist?

Mr Pollock, for Meadowmist, conceded that merely having a subsequent and blocked trade mark application was not, in itself, sufficient to confer standing.  However, as he argued, clearly there is more to the matter than this.  In Castle Bacon, an as yet unpublished decision of the Trade Marks Office, the standing of the person aggrieved was alleged to lie in its somewhat nebulous intention to find a licensee in Australia.  There were many ifs and maybes about the removal applicant's intention to use the mark in question but the significant fact is that all of those uncertainties were under its own control. 

In the present matter, my view is that this cannot be said of Meadowmist.  It had been told, categorically, that Ms Robinson asserted that any use by it of its own trade mark in the terms covered by its application was an infringement of (any one or more of a number of) registrations held by Ms Robinson.  There is clear evidence in the Hall declaration that Meadowmist is using its trade mark in relation to dog and cat boarding services and other activities.  Equally, there is no apparent basis on which any prudent person could read the letter sent by Ms Robinson's former solicitors as a groundless threat.  Therefore, I think that Meadowmist was entitled to take the letter sent to it by Ms Robinson at face value and to take any necessary steps to protect its position.  Those steps would surely extend to the filing of a removal application in relation to any registrations held by Ms Robinson that Meadowmist might believe Ms Robinson could in future argue were being infringed by Meadowmist's existing use.

Mr Fitzpatrick, however, argued that while a lawyer's letter should be taken seriously, the appropriate action was for Meadowmist to write back and refute the claims.  I cannot agree with this.  It is hard to see how the claims made by the lawyers could be refuted, short of, as Meadowmist elected to do, filing the now-opposed removal applications to eliminate the basis of the threat.  The fact that less rigorous replies were open is not significant.  That Meadowmist might have elected to merely threaten to file such removal applications is, I think, completely tangential to the fact that it was aggrieved by the peril offered to its continued use of its own trade mark.  However, my opinion becomes somewhat academic as it is resolved by the case of Unilever Aust Ltd v Karunos, [2001] FCA 1132, 52 IPR 361, at 372, to which Mr Pollock referred. I set this out, with emphasis added:

Nor would mere use by Unilever of the word "real" in relation to the products necessarily require the conclusion that Unilever is a person aggrieved as the registration may be in respect of classes of goods different from the classes into which the Unilever products fall. But it is not necessary to consider in detail into what categories the Unilever products fall, because the allegations made by Mr Karounos in his letter of 20 May 1998 and in the letters from his patent attorneys (Collison & Co) dated 16 June 1998 and 17 July 1998 suffice to establish Unilever as a person aggrieved in relation to each of the classes in respect of which the marks are registered. The allegations in these letters are in nature general and allege infringement in relation to all the classes in respect of which the marks are registered. They threaten further action if Unilever does not cease the alleged infringing action. There is, in these circumstances, a sufficient disadvantage to Unilever in a practical sense to require the conclusion that it is a person aggrieved. As was said in Continental Liqueurs Pty Ltd v G F Heublein and Bro Inc (1960) 103 CLR 422; at 427-8; [1960] ALR 682; at 685:

"It is enough to say that the respondent has shown an intention of preventing the applicant from using the word, if by any means it can do so, and on some future occasion it may well rely for this purpose on the trade mark now in question."

The former bolded paragraph is comparable to the facts of the correspondence here.  The latter paragraph is, from the evidence, precisely the attitude that Ms Robinson takes. 

Mr Fizpatrick also proposed a variation of the argument.  For what services, he asked, is Meadowmist aggrieved?  He argued that Meadowmist is not aggrieved by the entirety of Ms Robinson's registrations and that it therefore has filed its removal applications too broadly.  Here he relied on comments by DR Shanahan at p244 of Australian Law of Trade Marks and Passing Off.  Shanahan states simply that, "where the party seeking rectification is aggrieved only in relation to particular goods or services, the application will succeed only in relation to those goods or services".  The author refers to a number of cases.  These include one to which both advocates made specific reference, Ritz Hotel v Charles of the Ritz 12 IPR 417 at 455. McLelland J said, in a passage it is necessary to set out in full:

The question whether an applicant for relief is a "person aggrieved" cannot be divorced from the nature and extent of the relief claimed. For example, the relief available under s 23 (1) is expressly defined in terms of removal of a trade mark "in respect of any of the goods or services in respect of which it is registered", which in its context means "in respect of any category of goods or services specified in the registration". If a mark were registered in respect of goods in specified categories A and B, and an applicant for relief under s 23 (1) were to show that he was a "person aggrieved" in respect of registration of the mark in relation to goods in category A, but not in relation to goods in category B, then he would have standing to claim removal of the mark in respect of goods in category A, but not in respect of goods in category B: Lever Brothers, Port Sunlight Ltd v Sunniwhite Products Ltd (1949) 66 RPC 84. If, however, the mark were registered only in respect of goods in specified category C and the applicant were to show that he was a "person aggrieved" in respect of the registration of the mark in relation to some kinds of goods in category C but not other kinds in that category, he would nevertheless have standing to claim removal of the mark in respect of goods in category C without distinction: "Kodiak" Trade Mark [1987] RPC 269.

Mr Pollock referred to Lahore - Patents, Trade Marks and Related Rights.  The authors assert that "the only possible meaning attributable to McLelland J 's use of the word 'category' is 'class'".  See footnote 8 to para 62030. With this, Mr Fitzpatrick took issue, saying that it was "speculation", and, with all due respect to the learned authors, "wrong".  He argued that the word "category" should be given its ordinary meaning, "able to be categorised together".  Mr Pollock countered that a delegate of the Registrar of Trade Marks, in deciding the matter of the removal of trade mark 617886, had been content to accept the view put in Lahore.  See P & T Basile Imports Pty Ltd v Societe Des Produits Nestle SA [2002] ATMO 16.

Perhaps McLelland J was not looking to lay down a proposition that the mere drawing together of disparate goods or services into the same classification under the International (Nice) Classification of Goods and Services entitles a party to seek rectification for any that find their way into a registration held by an adversary.  In the absence of the threat of infringement actions, it might have been necessary for me to attempt to decide this question.  However, Ms Robinson, by making generalised infringement claims, has settled the matter.  By making those threats, she has helped Meadowmist over the threshold.

The purpose of the revision of the non-use provisions of the former 1955 act was to ensure that unused trade marks are removed.  This is clearly evident in the terms of new s 100.  Such a process, conducted at the Trade Marks Office, can only simplify the work of the courts and the Registrar should attempt to keep the focus on the issue of non-use, rather than conduct elaborate inquiries into the standing of the person whose activities are under threat.  Once a threat is made and a case is arguable for some of the services in a particular class, I do not think that it would be proper for me to attempt to anticipate the scope, grounds or probable upshot of any court action by attempting to draw fine lines through and between services specified for the registration in question.

Evidence of use

I turn to the evidence of use relied on by Ms Robinson.  The initial criticism raised by Mr Pollock is that, while Ms Robinson is recorded as the owner of the registrations, none of the evidence shows use by Ms Robinson herself.  The apparent user is mostly VM Supplies Pty Ltd, the source of the pet accessories catalogs in the evidence to which I will come.  Another apparent user is Club Pet Pty Ltd, the company whose name is shown on exhibit BLR001, to which I will also refer below. 

The Robinson declarations show that Ms Robinson considers she holds the trade mark registrations in trust for VM Supplies Pty Ltd.  Where this leaves Club Pet Pty Ltd is not clear.  However, the evidence shows that, as well as both companies having Ms Robinson as a director, the two companies have the same address.  The evidence shows that Ms Robinson considers the relationship to be sufficiently defined by this director/trustee amalgam.  I agree with Mr Pollock that the evidence does not necessarily establish the use by VM Supplies to be "authorised use" for the purposes of s 9.  However, unlike First Brands v Interco 48 IPR 681, there is at least a good and candid attempt to explain the relationship. Paradoxically, I think that relationships such as this may sometimes be more direct than those of authorised use may be when between entities dealing with each other at arms length.

A distinction between a company and its directors is no doubt critical for contractual purposes and similar distinctions may become critical for other matters between corporations that are indeed at arms length.  However, it would be pedantic, in looking at who is using the mark in the present case, to draw any meaningful distinction between Ms Robinson and the company of which she is a director and, more importantly, for which she is a trustee.  For such mundane purposes, when Ms Robinson attends a pet show or sells a consignment of dog leads, her company does the same.  In what follows, I will refer to the user as if it was Ms Robinson in person.

The evidence shows that, by and large, Ms Robinson's primary business is the selling of pet accessories.  The range is broad and includes bedding and carry-cages and the sort of fixed cages used by veterinarians and pet shops.  Much of the selling is done by way of displays of such equipment at veterinary surgeries, mostly in Melbourne but with a trade extending into New South Wales.  "Club Pet Supplies" is listed in the Yellow Pages for 2000 under the heading "Veterinary Supplies or Instruments".

However, Mr Fizpatrick argued that I should also look at the overall context of the trading relationship between Ms Robinson and her customers.  He argued that the trade Ms Robinson conducts is broader than the supply of accessories per se.  For example, he noted that there was evidence that, having cages on her premises, Ms Robinson was sometimes called on, by veterinarian customers, to accommodate animals. 

He conceded that the service was not advertised but argued it was none the less a real and commercial service.  However, I find the evidence of this to be, as Mr Pollock argued, unconvincing.  There seems to be no doubt that a dog was given day care at the behest of Clayton Vet Hospital.  See exhibit BLR001 and the relevant declaration, which attests to the exhibit being "an ID card kept with the cage containing the animal on temporary stay".  However, that instance was in September 2000 and thus, as Mr Pollock noted, outside the relevant period.  While Ms Robinson does make a general assertion about boarding animals 'from time to time', the terms of her assertion do not meet the specifics of the relevant period under s 92.

Otherwise, exhibit BLR049 is a photo of a bank of metal cages, one of which is occupied by a cat.  There is no sign of a document such as BLR001.  I therefore take a carefully weighed view of Ms Robinson's declaration to the effect that exhibit BLR049 shows a "boarding facility at Clayton, Victoria".  I think it is open to me to take these words a nothing more than a description of the intended use of the cage itself.  Consistent with this, BLR 050 is a brochure that shows that Ms Robinson sells such cages to veterinarians:  "Even easier to fit into your clinic".  There is no evidence of at whose instigation either the dog referred to in Ms Robinson's declaration or the cat shown in exhibit BLR 049 were accommodated.  In the absence of any detail of how these things came about, that either was charged for or that it was any more than a favor, outside of any trading relationship, done for a customer, I find such evidence as there is on this aspect is unconvincing.

Mr Fizpatrick argued that the grooming aids sold by Ms Robinson were inextricably linked to animal grooming services, which I appreciate may sometimes be provided, or at least recommended, at the veterinary surgeries where Ms Robinson's products are on sale.  Mr Pollock was critical, and rightly, I think, of the strength of the connection between the goods and the service.  The goods were, he said, a long way from the service, which was actually provided by third parties, just as, in paragraph 6 of one of her declarations, Ms Robinson states, "Veterinarians commonly keep animals overnight, sometimes longer and for this purpose we supplied cages...".  Mr Pollock argued that Ms Robinson herself had succinctly described the line between what she sells and what other people do.

Again, Mr Fitzpatrick referred to s 7(5): use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.  He argued that the trade mark owned by Ms Robinson has therefore been used in relation to veterinary services, as shown in the evidence.  He noted that Ms Robinson had provided external signage ("Veterinary clinic now open", with a direction arrow, and bearing at the top of the sign the trade mark CLUB PET VETMART).  It appears from various exhibits that the pet accessories sold by Ms Robinson are displayed on boards bearing those same words, in the vet clinics in question).  However, I think Mr Fitzpatrick's argument strains the definition.  Woolly Bull Enterprises Pty Ltd v Reynolds, [2001] FCA 261, 51 IPR 149, shows that what will amount to use of a trade mark in relation to services or goods is a practical thing. Section 7 ensures that, if there has been use, this is not upset by the fact that the use has been aural, for instance. But the mere fact that some sort of relationship between the trade mark and the services can be observed does not necessarily make the use of the words on a sign a trade mark usage in respect of veterinary services.

Nor can I give particular weight to the simple assertion that "we offer vaccinations through vets, welfare societies and universities.  While I accept the honesty of the statement, it is lacking in details about when, on what terms and under what trade mark.  It is thus no answer to these specific factual questions.

Mr Fitzpatrick urged me to take veterinary services broadly, in what he argued was a commonsense view, as including all the activities that a veterinary clinic might perform.  However, I prefer to give the words their ordinary meaning, stretching to the treatment and hospitalization of animals, the sale and prescription of animal medicines and the general run of services provided by veterinarians in their professional capacity.  The fact that veterinarians may sell pet accessories to clients, or indeed provide the client with a cup of tea, does not make either of those activities veterinary services.  Nor does it establish that Ms Robinson has conducted a trade in veterinary services.

Mr Fitzpatrick stressed that both Ms Robinson and the trade marks have a high profile at dog and pet shows.  He noted that Ms Robinson produces printed instruction leaflets about the training of dogs.  I accept that such leaflets were produced and, since it does not affect the outcome, distributed in the relevant period.  However, the leaflets are headed CLUB PET & TREAT REWARDS TRAINING TIPS.  In the context they were given out, they make it fairly plain that they are the product of a firm selling training aids, such as dumbells and liver treats, both of which are promoted by the brochures.  The fact that such information was arguably given out, during the relevant period, at dog shows where dog trainers attend and perhaps dog training occurs, does not reinforce the claim that Ms Robinson was engaged in a trade in any sort of owner education or dog training service. 

Trade mark use has been found even in relation to a magazine or publication that is given away to customers.  See "REALTOR" Trade Mark, Application by Estate Agents Co- Operative Ltd - 20 IPR 54, "GOLDEN PAGES" Trade Mark [1985] FSR 27 and "VISA" Trade Mark [1985] RPC 323. However, there is simply not a sufficient level of connection between the leaflets and the alleged trade in dog training services.

I accept that, from the evidence, it is clear that Ms Robinson has otherwise promoted the trade mark extensively through displays in public malls and at open days held at veterinary clinics.  Equally, she has provided at least one fully catered and accommodated entertainment event for veterinarians and their staff.  This was a dinner and overnight cruise.  None the less, such promotions appear to have been, at all times, centered on Ms Robinson's trade in pet accessories.  The link between the pet accessories and the other activities is not strong.  They were simply promotions of her core business.  There was nothing in the conduct of the activities themselves to suggest that the trade mark was used in respect of any trade in any services.

Decision of opposition

I turn, given the facts that I have set out as above, to the fate of the opposition. 

Use of the trade mark

I find that there has been no use of the trade mark for a trade in any of the services in classes 35, 41 and 42.

Discretion

There seems to me to be no good reason for me to decline to remove the registrations.  It is true that there have been quite substantial sales of goods under the trade mark.  However, in view of the disparity between that trade and the one conducted by Meadowmist, any question of deception of customers can best be dealt with in the course of the pending application by Meadowmist to register its own trade mark.

Conclusion

The three trade mark registrations in question will be removed from the register after one month from the date of this decision unless, prior to then, Ms Robinson serves on the Registrar of Trade Marks a copy of a notice of appeal. 

I order that Ms Robinson pay the costs to Meadowmist to the extent set out in the scale and taxed in the usual manner for such cases, see Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd, [2001] ATMO 78, 53 IPR 591.

Terry Williams
Hearing Officer
Trade Marks Hearings
23 July 2002