Cafe Do Brasil v Scrava Pty Ltd

[1991] ATMO 57

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by SCRAVA PTY LIMITED to Application by CAFE Do BRASIL under Section 23 for Removal from the Register of Trade Mark No. 456317

Application under s.23 of the Act for the removal from the Register of trade mark no 456317, which consists of the words KIMBO COFFEE in respect of "coffee", and registered in the name of SCRAVA PTY LIMITED, was lodged on 11 May 1990 by CAFE Do BRASIL S.p.A., of Via Appia Km. 22,648, Casella Postale n.3, 80017- Melito Di Napoli, Italy (referred to herein as "the applicant") on 11 May 1990.  The grounds of the application are as follows:

(a)The Trade Mark subject of registration A456317 was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods and there has, in fact, been no use in good faith of the Trade Mark in relation to those goods by the Registered Proprietor or a Registered User of the Trade Mark for the time being earlier than one month before this application.

(b)Up to one month before the date of this application, a continuous period of not less than three years has elapsed during which the Trade Mark was a Registered Trade mark and during which there was no use in good faith of the Trade Mark in relation to those goods by the Registered Proprietor or a Registered User of the Trade Mark for the time being.

(c)We are the applicant for registration of the trade mark KIMBO under No 496217 in Class 30 in respect of "coffee and coffee substitutes" lodged on 27 September 1988 and have used our mark in Australia in respect of these goods since at least as early as April 1988.

In accordance with reg. 22 of the Trade Marks Regulations the application was served on the registered proprietor of the mark on 20 December 1990 and advertised in the Official Journal of 21

February 1991.  On the same day notice of opposition to the application was lodged by the registered proprietor of the mark, SCRAVA PTY LIMITED, of 7 Read Place, West Pennant Hills, New South Wales ("the opponent").  The stated grounds of opposition are as follows:

(a)The trade mark was registered by me/us with the intention in good faith that it should be used by me/us in relation to the goods specified in the application.

(b)The trade mark has been used by me/us in good faith during the relevant period in relation to the goods for which it is registered.

Service of the applicant's evidence in support on the opponent, consisting of declarations by Richard Kurland, Debra Cahill and Helen Thomsett, was completed on 2 May 1991.  On 6 June 1991 the opponent served on the applicant a copy of a declaration of Pino Fiorentino comprising its evidence in answer.  The applicant then requested a hearing in the matter which was set down for 31 July in Sydney.  Mr David Griffith of Spruson & Ferguson, patent attorneys, appeared for the applicant.  The opponent was not represented.
          Mr Griffith began by pointing out that, as set out in the notice of opposition, the applicant had applied itself to register the word KIMBO in respect of coffee and had been met by an objection under s.33 of the Act based on the opponent's registered mark.  This was the reason for the lodgment of the application for removal since the applicant was clearly a person aggrieved by the registered mark as required by s.23.
          Mr Griffith then took me to the evidence of Richard Kurland who states that on instruction from Spruson & Ferguson he conducted certain enquiries "to determine whether the trade marks

COFFEE KIMBO and KIMBO COFFEE were in use" by the registered proprietor during the period 11 April 1987 to 11 April 1990, this being the relevant period for the purposes of this application.  These enquiries were conducted on 10 and 11 May 1990 by telephone and by a visit to the premises of the opponent.  He states that he was unable to find "any evidence of the actual use of the names COFFEE KIMBO or KIMBO COFFEE other than a statement by an "alleged Director of SCRAVA PTY LTD that the launch of a coffee product bearing this name was imminent".  Mr Kurland does not state his occupation, experience or qualifications to conduct such enquiries or why indeed he was selected by the applicant's attorneys to conduct them.
          Debra Cahill and Helen Thomsett, the other two declarants for the applicant, are both clerks employed by Spruson & Ferguson.  In February and March of 1991 both conducted a telephone survey of various businesses in Sydney, Adelaide and Melbourne engaged in some aspect of the trade in coffee.  In all 18 businesses were contacted and the following questions asked:

(a)What is your name?

(b)What is your position in the business?

(c)Does your company sell coffee?

(d)How many years have you had experience in relation to the sale of these goods?

(e)Do you believe yourself to be familiar with the types of trade marks used by various manufacturers in relation to coffee between 11 April 1987 and 11 April 1990?

(f)Have you heard of the words CAFFE KIMBE or KIMBO COFFEE?  Do you know who makes the coffee?

(g)If so, please explain your knowledge of the words CAFFE KIMBO or KIMBO COFFEE and say how long ago these words were in use.

(h)Are you aware of any use of the words CAFEE KIMBO or KIMBO COFFEE as a trade mark or otherwise on coffee between 11 April 1987 and 11 April 1990?

If yes, please provide details of where and when you first became aware of the words CAFFE KIMBO or KIMBO COFFEE.

Of the 18 respondents to the questionnaire, the results of which were exhibited to the declarations in question and answer form, 7 did not know of the use of the word KIMBO in connection with coffee.  Of the remaining 11, 9 knew of the use of the word for a period of 1-3 years, 2 associating the word with the applicant, and another 5 identifying the word as used in relation to a coffee imported from Italy.  Only 6 of the respondents claimed knowledge of the use of the mark during the relevant period, 11 April 1987 to 11 April 1990, 1 identifying the user as the applicant and 5 aware of use on a coffee imported from Italy.  Only 1 of the respondents, who claimed to import KIMBO coffee from Italy, mentioned the opponent, stating that he had received samples of a locally blended brand of KIMBO coffee towards the end of 1990, prior to that his only knowledge being of the Italian product.
          There are obvious weaknesses in this sort of evidence which is hearsay and gathered by the applicant's own agents.  Nevertheless, the evidence is in declaratory form, the questions are all pertinent and not leading, the respondents are well placed to provide the answers, having a wide range of experience from as little as 2 years to as many as 38 years in the relevant trade.  They also provide, as Mr Griffith submitted, a good cross-section of the relevant population.  It is therefore the kind of evidence desiderated by Windeyer J in Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein (1966) 116 CLR 254:

"It is for an 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 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."

I think the applicant's evidence in this case is more than slight and quite sufficient to make out the prima facie case required.
          The opponent's evidence in answer is a declaration dated 5 October 1990 of Pino Fiorentino who states as follows:

1. I am a Director of SCRAVA PTY LIMITED the Registered Proprietors of Trade mark Registration Nos A456316 and A456317.  In this capacity I have full access to my company's records and I state as follows from personal knowledge.

1. My company adopted the trade mark KIMBO in respect of its coffee in 1986.

1. In January 1987 I travelled to Brazil seeking supplies of an Italian style espresso coffee which my company proposed to import and market under the trade mark KIMBO.  Following that visit, we received a price list from the intended Brazilian suppliers CAFE' DO PONTO S/A and a copy of that communiction is attached as Exhibit 1.

1. CAFE' DO PONTO S/A were advised that the samples provided to me in Sao Paulo in January 1987 were too weak and therefore unsatifactory.  It was arranged that they would prepare an alternative blend meeting our requirements and despatch this to us in Australia.   CAFE' DO PONTO S/A also agreed to look for more suitable packaging to provide a quality and shelf life comparable to that available in other countries.  The shelf life problems were aggravated by the fact that it takes some six weeks for the delivery of coffee from Brazil to Australia.  Further samples of coffee were sent by CAFE' DO PRONTO S/A to us in Australia in November 1987 but again unfortunately the taste characteristics and shelf life were unsuitable.

1. Immediately after the testing of the Brazilian coffee proved unsatisfactory, we attempted to obtain supplies locally and were able to obtain a satisfactory blend from CAFFE' BIANCHI, 139 Parramatta Road, Concord, New South Wales.  However, although the taste characteristics of this coffee were satisfactory, we still encountered problems with shelf life as it was not possible to obtain bags of the right quality to allow long-term storage on the shelf.  Efforts to obtain such bags from local manufacturers were unsuccessful and it was therefore necessary to seek supplies from overseas.

1. Our Australian blenders, CAFFE' BIANCHI, shared our concern about the shelf life of the product due to the properties of the available bags, and as they were trying to overcome this problem by using replacement bags my company decided to pool its efforts with CAFFE' BIANCHI to find a manufacturer of suitable bags.  CAFFE' BIANCHI had sought supplies from Italian manufacturers who could supply bags of the necessary construction and quality.  Unfortunately the Italian manufacturers would only consider extremely large orders which proved quite impractical and not economical having regard to the size of the Australian market.

1. Together, my company and CAFFE' BIANCHI subsequently sought suppliers in South-East Asia and eventually was able to locate a manufacturer who would supply bags of the necessary quality and in the appropriate quantities and orders for bags were then placed.  The orders were finally satisfied in September 1990 whereupon my company immediately commenced sale of its coffee under the KIMBO trade mark and a sample package (bag) is annexed as Exhibit 2.  The coffee has been on sale in Australia continuously since that time.

1. I say that the failure to sell coffee under the trade mark until September 1990 was entirely due to the special circumstances and problems encountered in obtaining first supplies of a satisfactory coffee blend, and subsequently supplies of suitable bags to permit long term shelf storage.

   The relevant period for the purposes of s.23(1)(b) in relation to this application is 11 April 1987 to 11 April 1990.  Mr Fiorentino states that coffee was not sold under the mark KIMBO until September 1990 and there is no evidence of any other use of the mark during the above three year period.  However, although not expressly stated, Mr Fiorentino appears to rely on the provisions of sub-section (4) of s.23 which reads:

(4)An applicant is not entitled to rely, for the purposes of paragraph (b) of sub-section (1), or for the purposes of sub-section (3) or (3A), on failure to use a trade mark if the failure is shown to have been due to special circumstances in the trade and not to an intention not to use or to abandon the trade mark in relation to the goods or services to which the application relates.

The "special circumstances" relied on here are the difficulties experienced by the opponent in obtaining a suitable blend of coffee and suitable packaging for the coffee.  However, the provision refers to special circumstances in the trade and the English Court of Appeal has held in In the Matter of Trade Marks of the Columbia Graphophone Co, Ld 49 RPC 621, in approving of an earlier decision in In the Matter of a Trade Mark of James Crean & Son Ld, (1921 38 RPC 155:

Mr Justice Sargant points out in that case, and we agree with him, that the non-user must be due to circumstances of the trade and not to special circumstances attaching to and belonging to the trader personally.  It must be something of a wider nature than the latter; it must be circumstances belonging to the trade as a whole.

In the present case it has not been shown that there were any special circumstances affecting the coffee trade as a whole which prevented the opponent from using its mark.  The difficulties experienced by the opponent as recited in the declaration appear to be peculiar to the opponent and in any case do not seem to be in any sense "special" in that they would be difficulties facing any trader in coffee.
          In the result I find that the s.23 applicant has made out a case of non-use of the subject mark during the specified period which the opponent has failed to answer.  I also find that the defence of special circumstances in the trade has not been made out.  No argument has been put to me, the requisite case having been made out, as to why I should exercise the Registrar's discretion not
to order the removal of the mark and I therefore direct that, subject to any appeal from this decision, trade mark no 456317 be removed from the Register.  The applicant having been successful is entitled to its costs and I so award them.

(M.A. HOMANN)
Hearing Officer
26 August 1991