Brevets Licences Commercialisations Laboratoires BLC Thalgo Cosmetic v Ogive (Australia) Pty Ltd

[1992] ATMO 52

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by Ogive (Australia) Pty. Limited to an Application by Brevets Licences Commercialisations Laboratoires BLC Thalgo Cosmetic to remove Trade Mark Registration 433501 from the Register

Background

On 14.3.89 Brevets Licences Commercialisations Laboratoires BLC Thalgo Cosmetic S.A. ("the applicant") lodged an application to remove trade mark registration 433501 from the Register, in respect of some or all of the goods presently covered, on the grounds provided by section 23 of the Trade Marks Act. One of those grounds has since been abandoned and the applicant now seeks to establish, in terms of the relevant portions of section 23(1)b, only that:
. the applicant is a person aggrieved by the trade mark registration and
. the trade mark has not been used by the registered proprietor, who is recorded as being at all material times Hollco International (Australia) Pty Limited ("Hollco"), on some or any of the goods for which it has been registered, in the three year period ending 14.2.89.

The trade mark under attack is the word OGIVE and the goods covered by the registration are quite broad, but the attack made by the applicant is directed only at cosmetics and toiletries, and no broader success can have been anticipated by it. 

Removal has been opposed, as provided for by regulation 22(4), by Ogive (Australia) Pty. Limited ("the opponent").  I note from the notice of opposition that the opponent is described as "formerly Senly International (Australia) Pty. Limited", and that material from the Corporate Affairs Commission lodged and known to the applicant confirms this.  It may be as well to point out however that neither the opponent nor Senly is or has ever been the person recorded in the register of trade marks as the registered proprietor.

After the evidence stages provided in the regulations the matter was set down for hearing on 3.3.92.  The opponent was represented by Robert Halliday of the attorney firm of Hallidays, while the applicant was represented by Ray Walton, patent attorney of Griffith Hack and Co. 

Having heard the parties I will turn to the evidence.  I note however that the applicant's evidence can and should be viewed in totality. 

Mr Halliday invited me to stop the hearing after the reading of the evidence in support of the removal application - ie the first evidence stage provided in the regulations - and to consider refusal of the application if in my view the applicant had not made a prima facie case solely by reference to the evidence in support.  However, where the applicant has ultimately served evidence in reply (the last of the three ordinary evidence stages in an opposed removal application) after being served with the opponent's evidence in answer then I think the two portions of the applicant's evidence must be looked at together.  In some instances, and particularly in the light of an opponent's evidence in answer, it might be that to take the first portion of an applicant's evidence on its own would be to exclude facts and background necessary to understand the material in its context, and where those facts and background have been properly made available to the other side for comment that cannot be the correct approach.  I note also the case of Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited, the Estex case, 116 CLR 254 at 258.

It is for the applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non‑user.  But if evidence be given for the respondent to controvert the applicant's prima facie case, then when all the evidence is complete (my emphasis) the question is still, has the applicant proved his case?  I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it."

It should be noted that what might seem an unusual focus for the applicant's later declarations - ie the concentration on possible use in regard to hotel amenity lines, small sample-size toiletries bought by hoteliers for the use of their customers - is in fact a fair response to claims made in the opponent's evidence.

Applicant's Evidence in Support - the first declaration of Paul Brand
The applicant did not initially serve any evidence in support which was relevant to the question of non-use by the registered proprietor.  Instead we have the first declaration by Mr Paul Brand, who is the managing director of BLC Cosmetics Pty Ltd.  His declaration relates to the competing use by his firm in Australia, which is declared to have been both the importer of goods from the applicant and the importer and seller of goods under the trade mark OGIVE.  I note that this tends to support the claim that the applicant is a person aggrieved by the attacked registration, but that matter in any case is beyond dispute as the attacked registration has been cited against the applicant's own pending trade mark application 506168.

Strictly speaking, the declarations to which I now turn are part of the evidence in reply, which is in fact the final evidence stage in the provisions of the Trade Mark Regulations.  However for reasons which I have given I will review this material, in so far as it relates to the prima facie case, now. 

Second Declaration of Paul Brand
In his second declaration Mr Brand claims the benefit of in excess of ten years experience in the Australian cosmetics industry.  His company is declared to have been the exclusive Australian importer of the applicant's goods since 1980, and the importer of the applicant's OGIVE goods since 1987.  Mr Brand's company sells OGIVE products only to beauty therapists and beauty salons.

Mr Brand declares that his firm has about 1000 such customers, of whom he estimates more than half buy OGIVE products, and employs four sales staff in New South Wales and has agents in the other states.  It is declared that Mr Brand has "conducted enquiries" through customers, agents and sales staff but was unable to locate any person who was aware of or "had ever been aware" of the OGIVE trade mark, other than in relation to his own company.  In the making of a prima facie case, I think I am entitled to say that Mr Brand includes himself in that group.

As to those enquiries, however, Mr Brand is silent as to how many people he consulted, and as to their trade experience.  I can accept that a set of answers of "never heard of it" would cover the entire three year period ending 14.2.89 only if there is some good reason to assume that at least some the people questioned were in fact experienced in the relevant trade in February 1986.  When it is remembered that Mr Brand was enquiring more than four years later, and that there is no indication of how many people he questioned, it is clear that there is a weakness in this part of the applicant's evidence, which I will revert to when the totality of the evidence is looked at.

Mr Brand goes on to declare that he has never encountered anyone (customers or otherwise) who happened to remark on the use of OGIVE by any other party.  That is not surprising as the applicant and proprietor both claim the identical trade mark, albeit for perhaps slightly different products marketed in different niches, and it is quite possible that Mr Brand has in fact encountered people who know of the attacked trade mark and wrongly associate it with Mr Brand's company - or associated Mr Brand with the registered proprietor - but found nothing in that situation to remark on.  Mr Brand simply cannot rely on the opinions of people he has not properly questioned.

Mr Brand offers even more disputable evidence when he says that his agents, sales staff and customers also have failed to remark on encountering in the course of their travels people who know of the attacked trade mark and wrongly associate it with Mr Brand's company.  Mr Brand also refers to the fact that he and his agents and staff stay at hotels - he is aiming his comments at the hotel amenities trade - but I do not accept that a mere handful of travellers are likely to have a fair appreciation of marks used in relation to hotel amenities, and that will reduce the weight given to this aspect of the evidence. 

As to any other views which may be imputed to this diverse group, my questions are:  what were they asked, and can they address the relevant period?"

There is also reference to Mr Brand being familiar with "advertising literature which is used for promoting cosmetics in Australia" including: APAA Journal, AABTh Journal and publications by ABTS Association and ABA Victoria.  I will accept the assertion that these publications are of at least some relevance, though with no information as to what they are, how they are circulated and from where their advertisers come I cannot give them full weight.  (I draw some support in this from the fact that Mr Brand does not list these publications when he refers to promotion of the applicant's own OGIVE products.) 

Leaving that matter aside for the moment, I note Mr Brand declares that he has not seen any mention of OGIVE products, other than from his own firm, in any of those publications, but I would need to be satisfied that Mr Brand is familiar with their contents on a regular basis, rather than just being "familiar" with them in some unspecified sense, if I were to give this aspect full weight.

Mr Brand concludes by reference to his company's own sales and advertising of OGIVE products, including advertisements in Vogue, Cosmopolitan, Ita, HQ, and Simply Living.  Mr Brand has not encountered any OGIVE products other than those of his firm in those five publications.

Declaration by Ruth Kalceff
Ms Kalceff attests to a trade investigation she conducted in  October 1991 by telephone.  Her declaration is more explicit than was Mr Brand's about the opinions of the people she questioned.

Ms Kalceff has enquired of various beauty parlour operators or employees.  Her declaration says that she "has conducted investigations concerning use of the trade mark OGIVE in Australia.  Specifically, my company was instructed to make enquiries of three different classes of business operations in Australia, namely beauty salons and beauty therapists; hotels and hotel chains; and retail outlets of soaps,perfumery and cosmetic preparations.  In addition my company was instructed to investigate whether interviewees of the second and third classes of business operations were aware of or familiar with any of the following companies" and goes on to list:  Hollco (the registered proprietor), the opponent, Senly (the former name of the opponent) and Senly Marketing (Singapore) Pty Limited". 

Ms Kalceff has made contact by telephone with six people connected with the first class of business.  They are named, but their experience in the trade was not asked.

All of those interviewed were aware of the applicant's use of OGIVE though only one interviewee quantified this and had known of the applicant's OGIVE products for "three or four years", which I can take to be no more than from early 1988 onwards.  This is not a direct measure of trade experience as it could well be that the interviewee was speaking of nothing more than three or four years of reading the applicant's advertisements in various magazines.  It does not establish that particular person as one "who, by reason of ... connexion with the relevant trade, might be expected to have seen or heard of the mark" in relation to the earliest parts of the three year period beginning in February 1986, though it is still something that I must add to the scales at the weight it deserves.

Ms Kalceff went on to investigate the use of the OGIVE trade mark in a more general retail context.  She interviewed the National Buying Director for a large chain of retail stores, a person who has been employed by that firm for ten years - but at what levels and in which department we are not told.

There were also telephone interviews with:

> a sales assistant in Brisbane, who has been involved in the cosmetics industry for "a number (unspecified) of years"
> a Category Buyer of cosmetics who is named and who was then working for an Adelaide retailer (but whose trade experience is not quantified)
> a Cosmetics Consultant with a firm in Perth - again, there is no attempt to quantify the experience of this interviewee
> a Cosmetic Buyer for another large chain of department stores - and yet again there is no attempt to quantify the experience of this interviewee. 

None of the last five interviewees had heard of the OGIVE trade mark.

As to the enquiries in the hotel trade I will commence with Ms Kalceff's interview of a person who identified herself as Tchung, the Company Secretary of the registered proprietor, Hollco.  Questioned under subterfuge, Tchung advised that the name OGIVE was used solely on Hollco International (Australia) Pty Limited's range of bathroom amenity products for hotel toiletry use and that Hollco International (Australia) Pty Limited were definitely not suppliers of cosmetics or skin care products.

Here again an opportunity has been missed and a relevant question has not been asked:  is Tchung able to comment on the period between February 1986 and February 1989? 

I turn to the remaining enquiries made by Ms Kalceff, in relation to the hotel trade; eight in all.  In none of these is there a real attempt to quantify the experience of the people surveyed, though in one instance the information is elicited voluntarily and the person surveyed has commented on matters prevailing in the field of hotel control for "three years", since only January 1988 at the earliest and thus not entirely the relevant period.  In another instance the person surveyed lays claim to a "long" period of experience at the "corporate" level of the industry, a standing which might well involve no knowledge of either cosmetics and toiletries or of the brands used on hotel amenity lines.  Another interviewee has worked in a Sydney hotel - as what we are not told, but apparently in some area related to cost control or accounting - for "quite some time".   Such vague claims must weigh for little if anything.

The prima facie case
Having thus reviewed all of the applicant's evidence that is relevant to the making of an initial case, I must look at it in total, and not be swayed by defects in individual pieces of the applicant's material.  I can give little weight to Mr Brand's comments about trade publications, and very little indeed to the views of those surveyed by Ms Kalceff.  None the less Mr Brand is a trader who has been in the cosmetics and toiletries industry for ten years, and his testimony, when its various aspects are properly weighted, counts for something.

Of the people contacted by Ms Kalceff in relation to the hotel trade and to the general retail level I can give no more than a minimum weight to the interviewees whose trade experience can be at least partly assessed, and none at all to the remainder.  Even taken together the interviewees do not make a significant contribution to the applicant's case:  they either cannot comment on the entire relevant period, or have not been shown to be experienced in the relevant goods.   

The removal applicant however has to make no more than a prima facie case and "slight" evidence will suffice when the relevant questions have been addressed as they have by Mr Brand.  A case of non-use in relation to cosmetics and toiletries has been made and is worthy of an answer, and I turn to consider the opponent's evidence.

The opponent's evidence in answer
This consists of two declarations by Fook Whu Yeng, together with various exhibits.  Mr Yeng declares that he is a director and major shareholder of the opponent, which was known as Senly International Australia Pty Limited until 4.8.88
Mr Yeng declares he is also a director and major shareholder of "Senly Marketing (Singapore) Pty Limited", though at the hearing Mr Halliday conceded that the latter company is incorporated in Singapore, and that its name has the suffix Pte Limited.

It was asserted and accepted at the hearing that evidence of Mr Yeng's involvement with the registered proprietor is also available, but it will not be necessary to tie up that particular loose end for reasons which follow.

Mr Yeng has declared that the trade mark has been used within the relevant period, in respect of bathroom amenities, and that the hospitality industry understands that term to include the substances referred to in exhibit FHY-2.  While that brochure relates to the mark SENLY and not to the OGIVE trade mark it is the only and undisputed evidence of the nature of "bathroom amenities", a term used by both applicant and opponent.  I will thus take the term as including at least shampoo, foam bath, bath gel, body lotion, suntan oil, moisturising lotion, cleansing milk, skin freshener, aftershave, cologne, soap and talcum powder, all packaged in small portions for hotel and similar use.

The use to which Mr Yeng refers is said to be based on various dealings evidenced in his declaration, where the history of the business conducted by Mr Yeng is made clear.

At the outset, Mr Yeng declares that he had been selling into Australia since 1984 a range of SENLY bathroom amenities, and that he decided in 1985 to register that trade mark and to acquire registrations for other product names so as to be able to provide customers with a range of product names from which to make a choice.  Application to register the present mark was made in September 1985 and the certificate of registration issued in August 1987.  Mr Yeng has referred to a: "need to have registration confirmed before I changed my company name and commenced the lengthy process of programming container styles, location for production and other related matters."  I have already noted that the company name was not changed until 4.8.88, but I will note at this point that the company which changed its name on that date, ie from Senly International (Australia) Pty Ltd to Ogive (Australia) Pty Ltd, was not incorporated until 19.2.88.

Mr Yeng turns next to what is said to be the advertising of goods for sale, though I note that he has referred to "the time needed for advertising to appear several times prior to product launch in order to obtain the customer reaction to a trade mark and the feed back needed for production planning".

Exhibits FHY-3 to 5 are copies of advertisements for OGIVE bathroom amenities which appeared in the journal Hotels and Restaurants International in February, May and July of 1988.  Mr Yeng goes on to exhibit (FHY-6 to 9 inclusive) declarations which establish that this journal is received and read in Australia, but it is clear from the advertisements themselves that the journal circulates internationally, and that it is of a type which provides what Mr Yeng calls a "sales lead service" whereby anyone interested in a particular advertised line can send a coupon to the publisher and have his name brought to the attention of the advertiser.

Exhibit FHY-10 is a copy of the result of such a process, and in October 1988 the publishers advised Senly International that, along with enquiries from Sweden, Kenya and Ecuador, there had been an enquiry from a motelier in Tasmania.  There is no evidence that this enquiry was responded to in any way, and in that failure I find a clear inference that the enquiry was left unanswered.

Exhibit FHY-11 is the declaration of Anne Irving, the director of purchasing for the Hilton International group of hotels.  She declares that:  "In November 1987 the Sydney Hilton had sample containers for bathroom amenities as they were proposed for supply to the Sydney Hilton and those containers were prominently marked with the trade mark OGIVE".  Ms Irving supports this with a copy of a written quotation for the supply of bathroom amenities.

This quotation originates from the registered proprietor, and has the sub-heading "LOGO:  Individual Hotel Logo".  Attached to the quotation is a sheet of "remarks" which describes the nature of the goods.  With reference to the heading "bottle" it is said:  "Contents:  Brand name OGIVE" though the items were, according to the quote, to bear the "individual hotel logo - 1 colour print", and the bottles in particular were to bear "One hot-stamping silver on both sides of coloured background".  It is not clear, moreover, if the remarks sheet was a part of the discussions between buyer and seller or if it was an afterthought in relation to the contents of the bottles which had already been defined to the satisfaction of both parties.

FHY-12 is a declaration from Mr Ebert, whom I note from exhibit FHY-9 is the director of purchasing for Conrad International Hotel and Jupiters Casino, Broadbeach, Queensland.  Mr Ebert declares that in discussions Mr Yeng mentioned in 1987 that "he would like to have his product name Ogive printed on one side of the bottles he supplied shampoo and spa in."  This was not acceptable to Mr Ebert's hotel, which had a policy that no marking for identification other that the hotel logo was permitted, but the hotel continued to order goods from Mr Yeng and Mr Ebert has exhibited to his declaration a copy of an order dated 9.2.87 for goods "which were, as proposed by Mr Yeng to carry the name Ogive as well as the Conrad "C" logo, but which were in the end provided carrying only the Conrad "C" logo".

It is declared that the hotel policy has since changed and that "I am now receiving bathroom amenities ... branded on a rear face with the name OGIVE".

Mr Yeng concludes by declaring that his company's intention to enter and remain in the Australian market can be seen in the company name change, and from the fact that the company has for some time been setting up manufacturing facilities at Hornsby NSW, and that "trial runs of manufactured product are expected to be undertaken in January 1990".  In this Mr Yeng says that his company has moved as fast as commercially practical.

Use
The use which is envisaged by section 23 is defined in section 6(2) of the Act, which reads:

(2) In this Act-

(a) references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark; and

(b) references to the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods.

and this must be taken in context with the comments of the High Court in Moorgate Tobacco v Phillip Morris 3 IPR 545 at 557:

The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd, supra, at 204-5) or that the mark has been used in an advertisement of the goods in the course of trade (Shell Co of Australia v Esso Standard Oil (Australia) Ltd, supra, at 422).  In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark in trade.  In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade.  There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.  The cigarette packets and associated advertising were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time.  There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark "KENT GOLDEN LIGHTS" for the purpose of indicating or so as to indicate a connection in the course of trade between the new cigarettes and Loew's."

Again, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd:

[A] mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened in Australia. The mark must be used for the purpose of trade: WD & HO Wills (Australia) Ltd v Rothmans Ltd(1956) 94 CLR 182 at 191. The forwarding of samples and brochures is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here

Those words are entirely in keeping with Mr Yeng's intention in promoting the goods in advance of their availability.  The discussions with Mr Ebert's hotel and the provision of sample containers to Ms Irving's hotel were only 3 or 4 months after the issue of the certificate, before the company name change said to be one of the preliminary steps towards use and well before the first advertisements preliminary to launch of the product.  Equally, against such a background, I do not find the appearance of advertisements - in advance of production or supply - in an internationally circulating magazine was use in trade in Australia.

On that basis Mr Yeng's material does not amount to a use in the course of trade.

Decision

A prima facie case having been made in respect of cosmetics and toiletries and no use having been shown within the requisite period, it is open to me to direct removal from the register in respect of those goods. 

McLelland J has noted in Ritz Hotel v Charles of the Ritz 12 IPR 417 at 481 that removal is discretionary, but that if a case for removal has been made then removal of the trade mark should be directed "unless sufficient reason appears for leaving it there". I have not been shown any such reason and I therefore direct that registration 433501 be removed from the register in respect of cosmetics and toiletries.

As the removal applicant has succeeded only in part I direct that each side should bear its own costs in this matter.

T. Williams

Hearing Officer

8 September 1992