Bridge Procurement Services Pty Ltd v Discovery Holiday Parks Pty Ltd

[2024] ATMO 26

TRADE MARKS ACT 1995

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

Re:Oppositions by Bridge Procurement & Services Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Discovery Holiday Parks Pty Ltd to remove trade mark numbers 1671112 G’DAY TASTY AUSSIE SAUSAGES & Device (class 29), 1692807 G’DAY RICE & Device (class 30), 1788536 Make it a G’day (classes 29 & 35) and 1809522 G’DAY EVERYDAY (class 29) - all in the name of Bridge Procurement & Services Pty Ltd

DELEGATE:  Tracey Berger REPRESENTATION:  Opponent: IP Wealth Pty Ltd

Applicant: MinterEllison

DECISION:  2024 ATMO 26

Trade Marks Act 1995 (Cth) – section 96 oppositions - applications under section 92(4)(b) – no use or authorised use found – no obstacles to use of the trade marks – discretion not exercised – registrations to be removed

from the Register for all the registered goods and services  

Background

1. Bridge Procurement & Services Pty Ltd (‘Opponent’) is the owner of the following trade mark registrations (‘Registrations’):

Number	Trade Mark	Filing Date	Class1
1671112	28 Jan 2015	29 - sausages, meat and meat products (‘12 Goods’)

¹ A summary of the specifications are shown in the table and the full specifications of goods and services are set out in Annexure A to this decision.

(’12 Mark’)
1692807	(‘07 Mark’)	11 May 2015	30 – rice, rice products and goods made from rice (‘07 Goods’)
1788536	Make it a G’day (‘36 Mark’)	9 Aug 2016	29     -     meat    and    meat products 35- retail of meat and meat products (‘36 Goods and Services’)
1809522	G’DAY EVERYDAY (‘22 Mark’)	16 Nov 2016	29 – meat and meat products (‘22 Goods’)

1. Collectively, the 12 Mark, 07 Mark, 36 Mark and 22 Mark are referred to as the ‘Trade Marks’.

2. On 16 February 2022, Discovery Holiday Parks Pty Ltd (‘Applicant’) filed applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth)² (‘Removal Applications’) seeking the complete removal of the Trade Marks from the Australian Register of Trade Marks (‘Register’) on the grounds of non-use for all the goods and services for which the Trade Marks are registered.

² Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

1. The Opponent filed Notices of Intention to Oppose the Removal Applications on 28 February 2022 followed by a Statement of Grounds and Particulars in each case on 11 March 2022. The Applicant filed Notices of Intention to Defend the Removal Applications on 5 May 2022.

2. The evidence stages followed and the Opponent filed Evidence in Support of its oppositions on 5 August 2022, followed by the Applicant’s Evidence in Answer in each case on 15 November 2022. The Opponent did not file any Evidence in Reply.

3. After the evidence stages, both parties requested a hearing by written submissions. The Opponent filed written submissions in each case on 23 November 2023 and the Opponent filed its written submissions on 30 November 2023. These matters have been allocated to me to determine as a delegate of the Registrar of Trade Marks and I have done so based on the aforementioned materials.

Evidence

1. Both the Applicant and Opponent filed separate declarations in each of the Removal Applications as set out below:

Trade Mark Number	Opponent’s Evidence	Applicant’s Evidence
1671112	Declaration of Andrew James Bulman, director of the Opponent, made on 5 August 2022 with Exhibits AB-01 to AB-07	Declaration of Lisa Nicole Jarrett, Partner of MinterEllison, made on 15 November 2022 with Exhibits LJ-1 and LJ-2
1692807	Declaration of Andrew James Bulman, made on 5 August 2022 with Exhibits AB-01 to AB-04 (‘07 Declaration’)	Declaration of Lisa Nicole Jarrett, made on 15 November 2022 with Exhibits LJ-1 and LJ-2
1788536	Declaration of Andrew James Bulman, made on 5 August 2022 with Exhibits AB-01 to AB-07	Declaration of Lisa Nicole Jarrett, made on 15 November 2022 with Exhibits LJ-1 and LJ-2
1809522	Declaration of Andrew James Bulman, made on 5 August 2022 with Exhibits AB-01 to AB-05	Declaration of Lisa Nicole Jarrett, made on 15 November 2022 with Exhibits LJ-1 and LJ-2

1. Although each party filed separate declarations, there is a degree of commonality in the contents of the declarations and any statements regarding use of the Trade Marks relates to all of the marks unless otherwise indicated.

Opponent’s Evidence

1. Mr Bulman attests that he coined the 12 Mark in October 2014, the 07 Mark in April 2015, the 36 Mark in August 2016 and the 22 Mark in November 2016.

2. The Opponent’s evidence is contradictory in parts. On the one hand, Mr Bulman seems to suggest that the Trade Marks have not been used declaring that the Opponent has engaged in market research and developed marketing materials ‘in preparation for a full launch of the Registered Goods branded with the Trade Mark’ and has ‘continuously taken steps to launch the production, distribution and export of the Registered Goods branded under the Trade Mark’.

3. On the other hand, the Opponent claims that the Trade Marks have been used by the Opponent, its authorised suppliers and resellers since the filing date of each of the marks and during the relevant three year period for establishing use from 16 January 2019 to 16 January 2022 (‘Relevant Period’) for the respective goods and services for which the marks are registered. The Opponent also asserts that, except for the 07 Mark, it has ‘produced over 1000 tons of goods including the Registered Goods branded with the Trade Mark in Australia’ during the Relevant Period. The particular examples of use of each of the Trade Marks on which the Opponent relies are considered further under the heading Discussion.

4. In addition, the Opponent has attested that the COVID-19 pandemic constituted an obstacle to use of the Trade Marks during the Relevant Period.

Applicant’s Evidence

1. Each of the Applicant’s declarations details its criticisms of the Opponent’s evidence including that many of the Opponent’s claims of ‘considerable turnover’ annually and widespread use of the Trade Marks are unsubstantiated. With the exception of the 07 Mark, the Applicant provides the result of online searches conducted in October and November 2022 seeking to identify use of the Trade Marks for the registered goods and services. In particular, the Applicant’s online searches did not disclose any use of the Trade Marks on the

Opponent’s website or in the first 50 Google search results nor any social media accounts in the name of the Opponent or by reference to any of the Trade Marks.

Legislative Framework

1. Section 92 relevantly provides:

92 Application 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.

1. Pursuant to s 93(2), a non-use application under s 92(4)(b) may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark.³ I confirm that each of the Removal Applications complies with this requirement.

2. As noted above at [11], for the purposes of the Removal Applications, the Relevant Period in which the Opponent must establish use of the Trade Marks is 16 January 2019 to 16 January 2022.

3. The Opponent bears the onus of rebutting the allegations under s 92(4)(b) on the balance of probabilities.⁴

4. Section 7(4) provides that ‘use of a trade mark in relation to goods’ means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods). Moreover, s 9(1)(c) states:

³ See s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3. The amended s 93(2) applies to trade marks filed from 24 February 2019 onwards.

⁴ Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

(a)    a trade mark is taken also to be applied in relation to goods or services if it is used:

(i)    on a signboard or in an advertisement (including a televised advertisement); or

(ii)    in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

As such, use of a trade mark in advertisements, invoices or other documents relating to goods can be trade mark use for the purposes of s 7(4).

1. In Woolly Bull Enterprises Pty Ltd v Reynolds,⁵ Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Little weight is to be given to assertions of use which are not supported by documentary evidence⁶ but provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.⁷ However, if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.⁸

2. Section 101 provides the Registrar with the discretion to remove each of the Registrations from the Register in respect of any, or all, of their respective goods and/or services. If satisfied that it is reasonable to do so, the Registrar may decline to remove any of the Registrations from the Register even if the grounds on which the non-use application was made have been established.⁹

Discussion

1. 
   The Opponent will discharge its onus of rebutting the allegations of non-use if it establishes that each of the Trade Marks, or a mark with additions or alterations not substantially affecting the identity or the relevant registered mark, was used in good faith during the Relevant Period for the goods and/or services for which each mark is registered.¹⁰ It is necessary that the Opponent provide evidence of use which is clearly dated and shows use during the Relevant Period.  Evidence of use which falls outside of the Relevant Period is

   ⁵ [2001] FCA 261, [16].

   ⁶ Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
   ⁷ Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   ⁸ Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   ⁹ Act s 101(3).

   ¹⁰ Act s 100(2)(a).

generally of little or no assistance to the Opponent in establishing use during the Relevant Period.

Use of the 12 Mark

1. In support of its claim to have used the 12 Mark since January 2015, the Opponent has provided copies of:

   (4)   promotional materials and screenshots of an advertisement the Opponent claims was produced in late 2018;

   (5)   packaging for various products branded with different forms of G’DAY as shown below (‘G’DAY Packaging’) some of which are ‘samples’ and others have an expiry date well outside the Relevant Period:

(collectively the G’DAY Marks’).

(6)   an order for staff uniform shirts bearing the 12 Mark, photo of sample embroidery for the shirts and invoice dated 21 June 2018 for the order of shirts;

(7)   invoices purporting to show sales of the 12 Goods under the 12 Mark dating from May 2019 to February 2022;

(8)   copies of export certificates dated from 20 February 2020 to 16 February 2022 (‘Export Certificates’) and export licences dating from February 2014 to 10 January 2022 (‘Export Licences’); and

(9)   an invoice for the order of barcodes dated 27 May 2015 and invoices for annual subscription fees to the barcode provider dating from June 2019 to June 2022 (‘Barcode Invoices’).

1. Many of the promotional materials are undated or dated outside the Relevant Period. Although the Opponent claims that the promotional materials and the advertisement were used by the Opponent, its authorised suppliers and resellers, no details are provided about such use.  The authorised suppliers and resellers are not named and the Opponent has not

specified when and where such promotion occurred. In the absence of any concrete evidence that these materials were used in trade or commerce, this evidence does not demonstrate that the 12 Goods were advertised or offered for sale in Australia under the 12 Mark during the Relevant Period.

1. Similarly, whilst the Opponent asserts that the t-shirts embroidered with the 12 Mark form part of the uniforms worn by staff when ‘acting on behalf of the Opponent’ at trade shows, conferences and other work related events, there are no specifics provided about the trade shows or conferences the Opponent has attended nor any other work related events at which it exhibited its 12 Goods.

2. The Export Certificates and Export Licences make no reference to the 12 Mark nor any other trade mark. The Export Certificates and Export Licences simply establish that the Opponent was authorised to export poultry and poultry products. These documents do not establish that the 12 Goods were exported under the 12 Mark in the Relevant Period or at any other time. Similarly, the Barcode Invoices merely show that the Opponent purchased barcodes presumably to apply to packaging but these invoices do not demonstrate that any goods were sold by reference to the 12 Mark.

3. In relation to the G’DAY Packaging, none of the examples provided show the 12 Mark as registered but some of the packaging features the device element of the 12 Mark. The Opponent argues that this constitutes use of a mark with additions or alterations not substantially affecting the identity of the 12 Mark. A trade mark with additions or alterations that do not substantially affect the identity of the trade mark has been interpreted to mean that the trade marks being compared must be substantially identical. Justice Windeyer set out the test for determining whether marks are substantially identical in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd as follows:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.¹¹

1. The Full Federal Court also noted in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd

   that:

¹¹ [1963] HCA 66, [12].

[I]t is unlikely that the essential elements of a mark or its dominant cognitive clues [sic] are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.¹²

1. The 12 Mark is shown below side by side with the manner of use of the device element:

12 Mark Logo Mark G’DAY EVERYDAY BACON package

1. The Opponent argues that the dominant cognitive cue of the 12 Mark is the device and that the words ‘Tasty Aussie Sausages’ are merely descriptive so consumers will pay minimal attention to these words. The Opponent contends that the comparison in the present case is analogous to CHILL and CHOC CHILL in PB Foods Ltd v Malanda Dairy Foods Ltd¹³ (‘PB Foods’), QH Tours Ltd v The Mark Travel Corporation¹⁴ (‘Funjet’) where Funjet was found to be use of the registered mark Funjet-Service and Goodman Fielder Pte Ltd v Conga Foods Pty Ltd¹⁵ which found that use of the logo on the left below was used of the registered mark on the right:

   ‘Used mark’:   Registered mark:    

¹² [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).

¹³ [1999] FCA 1602 (Carr J).

¹⁴ [1999] ATMO 31 (Hearing Officer I. Thompson).

¹⁵ [2020] FCA 1808 (Burley J).

1. The Applicant argues that the cases relied on by the Opponent are distinguishable because in those cases, the words by which consumers would refer to the marks were retained whereas in the present case, the words by which consumers would refer to the 12 Mark are omitted. In my view, although the words ‘TASTY AUSSIE SAUSAGES’ may be descriptive of sausages and sausage products, the words have no meaning in relation to most of the 12 Goods.

2. On a side by side comparison of the 12 Mark and the device shown on the G’DAY Packaging, I do not consider there to be a total impression of resemblance. Whilst the words ‘Tasty Aussie Sausages’ are descriptive of some of the 12 Goods, the presence of these words cannot be totally ignored. The words form a significant part of the 12 Mark. In my opinion, use of the device on the G’DAY Packaging does not constitute use of a mark with additions or alterations not substantially affecting the identity of the 12 Mark.

3. Having found that the Opponent has not used the 12 Mark, it is not necessary to consider the invoices purportedly for sales the 12 Goods as the 12 Mark does not appear on any of the invoices. Use of GDAY EVERYDAY BACON, GDAY CHICKEN SAVELOY and GDAY

   MINI CHICKEN SAVELOY on the invoices does not constitute use of the 12 Mark as each of these marks is significantly different from the 12 Mark.

Use of the 07 Mark

1. The Opponent claims to have ‘consistently used’ the 07 Mark since 2015 and relies on samples of packaging showing the marks below, a few emails dated 2015 and some pro forma invoices:

   i)      and ii)

1. However, the Opponent attests that this packaging design was not created until 2021. The emails and proforma invoices are dated well outside the Relevant Period and some of these documents predate the coining of the 07 Mark in April 2015. Moreover, none of the emails or proforma invoices refer to the 07 Mark and these documents could not relate to rice or rice

products in packaging that was not created until 2021. In my view, the emails and proforma invoices dated some years before the Relevant Period and which do not feature the 07 Mark do not amount to use of the 07 Mark nor the taking of preparatory steps sufficient to rebut the allegation of non-use.

1. The only other exhibits are photos of the G’DAY Packaging, none of which feature the 07 Mark or a mark with additions or alterations not affecting the identity of the 07 Mark, and copies of the Export Certificates. The Opponent argues that the Export Certificates show ‘a resolve and settled purpose’ to sell goods under the 07 Mark as the Opponent had the necessary approvals to do so. It is difficult to understand how export certificates for poultry and poultry meat products equates to an intention to sell rice and rice products. The G’DAY Packaging and Export Certificates are not evidence of actual use or an intention to use the 07 Mark for the 07 Goods.

2. On my assessment of the evidence, the Opponent has not established that it used the 07 Mark during the Relevant Period for the 07 Goods.

36 Mark

1. In support of the Opponent’s claim to have used the 36 Mark, the Opponent has provided:

(4)   digital copy of a poster (undated) for ‘Make it a G’DAY’ Chicken Saveloys with a copy of an invoice dated in September 2015 for creation of the poster; undated photos of an apron and employee wearing an apron at a company event; undated photo of a gazebo bearing the 36 Mark with artwork and a 2017 invoice for the creation of a sample gazebo; and a photo of people wearing t-shirts printed with the 36 Mark which the Opponent claims was taken in 2019 (‘Promotional Materials’). The Opponent claims that the poster, aprons and gazebos were provided to customers and/or authorised suppliers and resellers for promotional purposes.

(5)   images of a t-shirt bearing the 36 Mark which the Opponent attests have been worn by staff as part of their uniform since 2017 and an invoice for the order of these t-shirts (‘Uniform evidence’);

(6)   the G’DAY Packaging;

(7)   copies of invoices from the Opponent’s packaging manufacturer Primo Foods Pty Ltd (‘Primo Foods’) to the Opponent’s authorised suppliers and resellers for the 36 Goods and invoices from the Opponent where the customer details have been redacted but it appears that the 36 Goods are to be exported to the Solomon Islands (‘36 Invoices’);

(8)   the Export Certificates, Export Licences and Barcode Invoices.

1. The Promotional Materials and Uniform evidence do not demonstrate use of the 36 Mark in Australia in the course of trade for the 36 Goods and Services. The evidence is either undated or dated outside the Relevant Period and it is not clear where the photos were taken. There are no details about when and where these promotions occurred or whether the uniforms were worn in connection with the sale or offer to sell the 36 Goods.

2. Neither the G’DAY Packaging nor the 36 Invoices show use of the 36 Mark. The Opponent argues that use of the G’DAY Marks constitutes use of the 36 Mark being marks with additions or alterations not substantially affecting the identity of the 36 Mark. As noted above, this requires the 36 Mark to be substantially identical to the G’DAY Marks.

3. The marks to be compared side by side are shown below:

36 Mark	G’Day Marks
Make it a G’day	G’Day

1. The Opponent argues that the dominant cognitive cue and essential element of the 36 Mark and each of the G’DAY Marks is the word G’DAY and the phrase ‘MAKE IT A…’ is merely a preposition leading consumers to choose G’DAY branded goods.  The Opponent again

submits that the comparison between the 36 Mark and G’Day Marks is analogous to the relevant marks in PB Foods and Funjet.

1. The Applicant argues that use of G’DAY solus (in word or logo form), as shown on the G’DAY Packaging and 36 Invoices and in combination with other words such as EVERYDAY BACON or Chicken Saveloys on the 36 Invoices, does not constitute use of the 36 Mark. I agree with the Applicant that none of the G’DAY Marks is substantially identical to the 36 Mark. The 36 Mark is visually and phonetically different from each of the G’DAY Marks. Further, the words “MAKE IT A…” cannot be ignored. Whilst these words may not be particularly distinctive alone, they change the idea of the mark suggesting ‘make it a good day’ as compared to the colloquial greeting ‘G’Day’. In my opinion, the side by side differences between each of the G’DAY Marks and the 36 Mark are such that there is not a total impression of resemblance. Hence, none of the G’DAY Marks are substantially identical to the 36 Mark and it follows that the 36 Invoices and G’DAY Packaging do not establish use of the 36 Mark in the course of trade in Australia for the 36 Goods and Services during the Relevant Period.

2. The Export Certificates and Export Licences make no reference to the 36 Mark or any other trade mark. As noted earlier in this decision at [25], these documents only establish that the Opponent was authorised to export poultry and poultry products. The Export Certificates and Exports Licences do not establish that the 36 Goods were exported under the 36 Mark in the Relevant Period but rather the evidence suggests it is more likely that if any goods were exported, it was under one of the G’DAY Marks. Furthermore, these documents are not proof that the 36 Mark has been used in relation to the 36 Services. Similarly, the Barcode Invoices are not evidence that the 36 Goods were sold by reference to the 36 Mark.

3. The Opponent has not established use of the 36 Mark for the 36 Goods and Services during the Relevant Period.

Use of the 22 Mark

1. For the 22 Mark, the Opponent has provided the G’DAY Packaging, the Export Certificates, Export Licences, Barcode Invoices and two invoices issued by Primo Foods to the Opponent for GDAY EVERYDAY BACON, GDAY CHKN SAVELOY and GDAY MINI CHK SAV

   (‘Primo Invoices’).

1. For the reasons outlined above, the Export Certificates, Licences and Barcode Invoices are not proof of use of the 22 Mark during the Relevant Period for the 22 Goods.

2. The G’DAY Packaging includes two examples of products bearing the G’DAY EVERYDAY BACON mark shown at [28] but these examples have an expiry date before the Relevant Period. In any event, the packaging alone does not establish use of the 22 Mark as mere packaging is not evidence of sales or an offer to sell the 22 Goods under the mark in the Relevant Period.

3. The Primo Invoices are dated within the Relevant Period and were issued by Primo Foods to the Opponent for the sale of GDAY EVERYDAY BACON, GDAY CHKN SAVELOY and GDAY MINI CHK SAV. The Opponent argues that these invoices, in conjunction with the packaging referred to in [28] is evidence of the ordering for production of the 22 Goods branded with the 22 Mark (or a mark with additions or alterations not affecting the identity of the mark) in Australia in the Relevant Period.

4. The Applicant contends that these invoices do not demonstrate use of the mark by the Opponent on two grounds. Firstly, the Applicant argues that the use relied on by the Opponent is not use of a mark with additions or alterations not substantially affecting the identity of the 22 Mark and secondly that there is no evidence of the Opponent exercising any control over the use of the 22 Mark or quality of the products to which the mark is applied by Primo Foods.

5. Turning to the question of whether the Opponent has used a mark with additions or alterations not substantially affecting the identify of the 22 Mark, on the test for substantial identity outlined at [26], I consider use of GDAY EVERYDAY BACON in the Primo Invoices is use of a mark with additions or alterations not substantially affecting the identity of the 22 Mark. However, I do not regard the mark GDAY to be substantially identical to G’DAY EVERYDAY. It is immediately apparent on a side by side comparison of GDAY and G’DAY EVERYDAY that the two marks are different and the G’DAY logos shown at

   [22] are even further removed. The additional word EVERYDAY results in obvious visual and phonetic changes to G’DAY solus and is not in the same category as the word ‘service’ in Funjet.  It is significantly longer than the element G’DAY and even if the word

EVERYDAY has a low level of distinctiveness, its presence cannot be ignored in a side by side comparison.

1. Having found that use of GDAY EVERYDAY BACON is use of the 22 Mark with additions or alterations not substantially affecting the identity of the 22 Mark, I turn to the issue of whether use of GDAY EVERYDAY BACON in the Primo Invoices is evidence that the 22 Mark was used during the Relevant Period for the 22 Goods.

2. For the purposes of rebutting an allegation of non-use under s 100, use of the relevant mark(s) must be by, or authorised by, the registered owner of the trade mark. Section 8(1) defines an authorised user as a person using the trade mark under the control of the trade mark owner. What constitutes ‘control’ is not exhaustively defined in the Act but includes a situation where the trade mark owner exercises quality control over the goods or services in respect of which the mark is used¹⁶ or financial control over the goods or services or the user’s trading activities.¹⁷

3. The Opponent has provided little information about its relationship with Primo Foods simply referring to them as its packaging manufacturer in one instance and its packaging designer in another. The Opponent argues in its submissions that it is not necessary for the Opponent to establish the nature of its relationship with Primo Foods as the invoices are proof that the Opponent ordered the 22 Goods for production which is a preparatory step showing an objective commitment to use the 22 Mark in the Relevant Period. The nature of the relationship between the manufacturer and ‘customer’ ordering the goods is critical to determining which party is using the trade mark. It appears from the Primo Invoices that Primo is the manufacturer of the goods (presumably in addition to being the packaging manufacturer) and on the G’DAY Packaging, the Opponent is described as the exporter. In the absence of any information about the nature of the relationship between Primo Foods and the Opponent, or the terms on which the goods are manufactured (such as whether the products must meet certain quality standards dictated by the Opponent) and the 22 Mark applied, it cannot be said that the Primo Invoices are convincing proof of use of the 22 Mark by the Opponent.  There is no evidence that the Opponent exercised any control over the

¹⁶ s 8(3).

¹⁷ s 8(4).

quality of the goods or use of the Trade Mark. Hence, it cannot be determined that the use of GDAY EVERYDAY BACON on the Primo Invoices is an authorised use of the mark.

1. Further, in the absence of evidence that the products listed in the Primo Invoices were sold to third parties by the Opponent before, during or after the Relevant Period, I am not satisfied that the Opponent has used the 22 Mark in Australia during the Relevant Period.

Obstacles to use of the Trade Marks in the Relevant Period

1. I have found that the Opponent’s evidence does not demonstrate that it has used the Trade Marks for any of the registered goods or services. However, the Opponent argues that the Covid-19 pandemic constituted an obstacle to use of the Trade Marks throughout the Relevant Period and I should exercise my discretion under s 100(3)(c) to retain the Registrations.

2. Section 100(3)(c) is intended to meet Australia’s obligations under Article 19 of the Agreement on Trade-Related Aspects of Intellectual Property Rights which refers to ‘circumstances arising independently of the will of the owner of the trade mark which constitute an obstacle to the use of the trade mark, such as import restrictions on or other government requirements’ as being obstacles to use. ¹⁸ The circumstances preventing use of a mark must be of a trading nature and external to the registered owner.¹⁹ Moreover, there must be a causal link between the relevant circumstances and the non-use of the mark.²⁰ The obstacle may only exist for part of the relevant three year period but only if the opponent ‘establishes that the mark would have been used during that part of the three year period but for the existence then of the obstacle’.²¹

3. The Opponent declares in the 07 Declaration that during the pandemic, the Opponent was continuously ‘preparing for the upcoming product launch by market monitoring and with corresponding prospect evaluation exercises to estimate the chances of success of such launch’ and that there were ‘many commercial challenges … particularly in the industry of the [07] Goods and the intended export thereof to Asia Pacific primarily’.  The Opponent

¹⁸ Daniel Gervais, The TRIPS Agreement: Draft History and Analysis 5^th ed (Thomson Reuters) 2021, 355-357.

¹⁹ Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [55].

²⁰ Ibid.

²¹ Ibid [58].

claims to have continuously been in discussion with suppliers and potential customers although those discussions were temporarily halted during the pandemic.

1. The only evidence from the Opponent of the impact of the pandemic on use of the other three marks is the Opponent’s claim that it faced ‘many commercial challenges’ during the pandemic and struggled to gather its evidence as a result.

2. In the Opponent’s submissions, the Opponent argues that the overlap of the pandemic and the Relevant Period was at least 2 years. Moreover, due to lockdowns, the Opponent had difficulties maintaining factory operations and also could not source products (including packaging) from third parties. There is no doubt that the pandemic impacted business operations for a time but even in those States with the most extreme pandemic restrictions, those restrictions on businesses commenced in about March 2020 and were lifted by October 2020. Many factories continued to operate with only temporary suspensions of their operations and whilst some products were in short supply at times, I do not recall packaged meats being one of those. The Opponent has not provided any information about where the relevant factories or packaging suppliers are located and the periods during which they could not operate or supply goods nor has the Opponent indicated whether it considered using alternative providers. As the Applicant notes, the Opponent’s claim that the pandemic prevented it from using the Trade Marks is inconsistent with its evidence that that during the Relevant Period it produced over 1000 tons of goods including goods under the 36 Mark, 12 Mark and 22 Mark. The Applicant’s evidence detailed its criticisms of the Opponent’s claim that it was unable to use the Trade Marks due to the pandemic but the Opponent chose not to file any evidence in reply addressing these criticisms or providing more detail about how the pandemic restrictions prevented the Opponent from using the Trade Marks.

3. The Opponent has provided copies of some emails from 2015 which it claims relate to use of the 07 Mark but no evidence of any subsequent discussions before or after the Relevant Period. No details are provided about when and how the Opponent monitored the market or conducted evaluation exercises to assess whether the 07 Goods should be launched. There is no evidence of the Opponent taking any steps to use the 07 Mark between the 2015 emails and the creation of the packaging for the 07 Goods in 2021.

1. With respect to the 36 Mark, 12 Mark and 22 Mark, there is no evidence as to any steps taken before or after the pandemic restrictions or at any time during the Relevant Period to use these marks.

2. In my view, the Opponent’s evidence does not establish that but for the pandemic, the Opponent would have used the Trade Marks during the Relevant Period.

Exercise of Registrar’s Discretion

1. Section 101(3) provides:

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.

1. The Removal Opponent bears the onus of satisfying me that it is reasonable to exercise the discretion in its favour.²²

2. The discretion conferred by s 101 is broad and limited only ‘by the subject-matter, scope and purpose of Part 9 of the Act’.²³ In Austin, Nichols & Co Inc v Lodestar Anstalt, the purpose of Part 9 of the Act was expressed as follows:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.²⁴

3. A range of circumstances may be considered in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy me that it is reasonable to exercise the discretion.²⁵

4. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court summarised the range of factors that have been held to be relevant to the exercise of the discretion:

   The range of factors considered in the exercise of the discretion has included whether or not:

²² Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

²³ Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ) (‘Austin’).

²⁴ Ibid [38].

²⁵ Ibid [69].

(a)  there has been abandonment of the mark;

(b)  the registered proprietor of the mark still has a residual reputation in the mark;

(c)  there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

(d)  the applicant for removal had entered the market in knowledge of the registered mark;

(e)  the registered proprietors were aware of the applicant’s sales under the mark;

^(f)    A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.²⁶

1. The exercise of discretion is not one that should be exercised lightly. As stated by Jacob J in

   Laboratoire De La Mer Trade Marks:

There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.²⁷

1. In each case, the Opponent argues that the Trade Marks should be retained on the Register because the period of non-use is not much longer than the minimum 3 years, there is no ‘prospect of confusion … nor of any public mischief’ if the Registrations remain and removing the Registrations may cause confusion to the public as a result of the Opponent’s extensive business presence in Australia and overseas ‘through which the Registered Mark has gained significant exposure in the marketplace’. With respect to the 36 Mark, the Opponent argues that its prominent use of the similar brand G’DAY is also a reason to retain the 36 Mark.

2. There is no evidence of the size or nature of the Opponent’s business beyond the Opponent’s mere assertions nor details about the ‘prominent use’ of the mark G’DAY. The Opponent has not filed any evidence that there was widespread publicity or significant sales of products branded under the Trade Marks or the mark G’DAY prior to, during or after the Relevant Period. Further, the Applicant disputed these claims in its evidence in answer but the Opponent did not reply by filing additional evidence.

²⁶ [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

²⁷ [2002] FSR 51 (Ch) 790, [19(a)].

1. In each case, the Opponent’s evidence in reply was due to be filed in January 2023 at least 6 years after the filing of each of the Trade Marks yet there is no evidence that the Opponent used the Trade Marks nor took any steps after the Relevant Period to use the Trade Marks.

2. In the circumstances and given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion not to remove the Trade Marks from the Register for all of the registered goods and services.

Decision

1. The Opponent has not established its opposition to the Removal Applications and the Trade Marks should be removed from the Register in respect of all the goods and services for which the Trade Marks are registered.

2. Accordingly, I direct that registrations 1671112, 1692807, 1788536 and 1809522 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

3. Both parties sought an award to costs. Costs generally follow the event and hence I award costs against the Opponent with respect to each of the Removal Applications in accordance with s 221 in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger Hearing Officer

Oppositions and Hearings Trade Marks and Designs 14 February 2024

ANNEXURE A

Number	Trade Mark	Filing Date	Class
1671112	28 Jan 2015	Class 29: Battered frankfurts or sausages; Blood sausage; Dehydrated sausages; Dried sausages; Fish sausages; Foodstuffs consisting of sausage meat; Foodstuffs consisting of sausages; Hot dogs (sausages); Hotdog sausages; Pork sausages; Preparations for making sausages; Preserved sausages; Sausage meat; Sausage patties; Sausage products; Sausage roll fillings; Sausages; Sausages in batter; Smoked sausages; Vegetarian sausages; Saveloys; Alimentary preserves made of meat; Burgers (meat patties); Casseroles (prepared meal of meat or vegetables); Chilled meals made from meat; Chopped meat patties; Cold meats; Cooked meals consisting principally of meat; Cooked meals consisting principally of meat and vegetables; Cooked meat; Cooked meat dishes; Cooked pork meats; Corned meat; Dehydrated meat balls; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations made from meat; Food products derived from meat; Food products made from meat; Fresh meat; Frozen meat; Frozen meat products; Frozen prepared meals consisting principally of meat; Game products (meat); Grilled meat; Hamburgers (meat patties); Lamb (prepared meat); Luncheon meats; Meat; Meat based stock; Meat broth concentrates; Meat products; Minced meat; Pie fillings of meat; Snack foods consisting principally of meat; Snack foods made from meat

1692807	11 May 2015	Class 30: Creamed rice; Extruded food products made of rice; Flavoured rices; Flour of rice; Foodstuffs made of rice; Fried rice; Frozen meals consisting primarily of rice; Frozen prepared rice; Kheer mix (rice pudding); Meals made predominantly from rice, pasta or noodles; Natural rice flakes; Prepared meals containing (principally) rice; Prepared rice dishes; Puffed rice; Rice; Rice based snack foods; Rice biscuits; Rice cakes; Rice chips; Rice crackers; Rice crust; Rice flour; Rice mixes; Rice paper; Rice prepared for culinary purposes; Rice products for culinary purposes; Rice pudding; Rice salads; Rice sticks; Rice tapioca; Sauces for rice; Snack food products made from rice; Snack food products made from rice flour; Snack foods consisting principally of rice; Wild rice (prepared)
1788536	Make it a G’day	9 Aug 2016	Class 29: Alimentary preserves made of meat; Baked meat; Burgers (meat patties); Canned meat; Casseroles (prepared meal of meat or vegetables); Chilled foods consisting predominantly of meat; Chilled meals made from meat; Chopped meat patties; Cold meats; Combinations of cheese and meat; Cooked meals consisting principally of meat; Cooked meals consisting principally of meat and vegetables; Cooked meat; Cooked meat dishes; Cooked pork meats; Corned meat; Cubed meats; Dehydrated crab meat; Dehydrated meat balls; Dried meats; Extracts of meat; Food pastes made from meat; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations made from

meat; Food products derived from meat; Food products made from meat; Foodstuffs consisting of sausage meat; Fresh meat; Frozen meat; Frozen meat products; Frozen prepared meals consisting principally of meat; Game products (meat); Grilled meat; Hamburgers (meat patties); Lamb (prepared meat); Luncheon meats; Meat; Meat based stock; Meat broth concentrates; Meat broth paste; Meat burgers (meat patties); Meat conserves; Meat extracts; Meat gelatines; Meat jellies; Meat paste; Meat pates; Meat preparations; Meat preserves; Meat products; Meat substitutes prepared from vegetables (textured vegetable protein); Meat terrines; Meat, preserved; Meat, tinned; Meat- based dips; Minced meat; Pastes containing meat; Pastry fillings of meat; Pie fillings of meat; Pork products being cuts of meat; Potted meats; Preparations made from meat; Prepared dishes consisting principally of meat; Prepared meals consisting principally of meat; Prepared meals made from meat (meat predominating); Prepared meals, predominantly of meat or vegetables; Prepared meat; Prepared meat dishes; Prepared meat products; Preserved meats; Preserved prepared meat; Preserves made from meat; Processed meat products; Processed pork meats; Quenelles (meat); Roasted meat; Salads containing meat; Salt meats; Salted meats; Sausage meat; Smoked meats; Smoked prepared meat; Snack foods consisting principally of meat; Snack foods

made from meat; Steaks of meat;

Tinned meats; Turkey meat; Vegetable based meat substitutes Class 35: Retail sale of prepared meat and meat products (butcher's shop)
1809522	G’DAY EVERYDAY	16 Nov 2016	Class 29: Alimentary preserves made of meat; Baked meat; Burgers (meat patties); Canned meat; Casseroles (prepared meal of meat or vegetables); Chilled foods consisting predominantly of meat; Chilled meals made from meat; Chopped meat patties; Cold meats; Combinations of cheese and meat; Cooked meals consisting principally of meat; Cooked meals consisting principally of meat and vegetables; Cooked meat; Cooked meat dishes; Cooked pork meats; Corned meat; Cubed meats; Dehydrated crab meat; Dehydrated meat balls; Dried meats; Extracts of meat; Food pastes made from meat; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations made from meat; Food products derived from meat; Food products made from meat; Foodstuffs consisting of sausage meat; Fresh meat; Frozen meat; Frozen meat products; Frozen prepared meals consisting principally of meat; Game products (meat); Grilled meat; Hamburgers (meat patties); Lamb (prepared meat); Luncheon meats; Meat; Meat based stock; Meat broth concentrates; Meat broth paste; Meat burgers (meat patties); Meat conserves; Meat extracts; Meat gelatines; Meat jellies; Meat paste; Meat pates;

Meat preparations; Meat preserves; Meat products; Meat substitutes prepared from vegetables (textured vegetable protein); Meat terrines; Meat, preserved; Meat, tinned; Meat- based dips; Minced meat; Pastes containing meat; Pastry fillings of meat; Pie fillings of meat; Pork products being cuts of meat; Potted meats; Preparations made from meat; Prepared dishes consisting principally of meat; Prepared meals consisting principally of meat; Prepared meals made from meat (meat predominating); Prepared meals, predominantly of meat or vegetables; Prepared meat; Prepared meat dishes; Prepared meat products; Preserved meats; Preserved prepared meat; Preserves made from meat; Processed meat products; Processed pork meats; Quenelles (meat); Roasted meat; Salads containing meat; Salt meats; Salted meats; Sausage meat; Smoked meats; Smoked prepared meat; Snack foods consisting principally of meat; Snack foods made from meat; Steaks of meat; Tinned meats; Turkey meat; Vegetable based meat substitutes