Carlton & United Berages Ltd v Paul Mulard

[2006] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Paul Mulard to application under section 92 of the Trade Marks Act by Carlton and United Beverages Limited to remove trade mark number 725798 (5, 29, 31, 32, 42) - Neptunes Gift Health Foods - in the name of Paul Mulard

Delegate:	Alison Windsor
Representation:	Opponent Ed Heerey of counsel, instructed by Behan Legal Applicant Written submissions by Tim Allen, partner, Corrs Chambers Westgarth
Decision:	Section 92 Opposition: Opponent demonstrated appropriate use within the relevant period.  Non-use application fails.  Costs awarded against applicant.

Background

1. Trade mark registration 725798 is registered in the name of Paul Mulard with a priority date of 9 January 1997 and for the following goods: 

Class	Goods/Services
5	Pharmaceutical products and dietetic substances adapted for medical use
29	Preserved, dried and cooked fruits and vegetables and fish oils, including various foods used in the manufacture of health foods
31	Agricultural products, fresh fruits and vegetables, seeds, natural plants and flowers
32	Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages
42	Providing of food and drink, medical and agricultural services including advice relating to health foods, scientific and industrial research including those relating to health foods

1. On 28 January 2005, Carlton and United Beverages Limited (“CUB”) filed an application for removal of the trade mark under the provisions of paragraph 92(4)(b)of the Trade Marks Act 1995 (“the Act”) in respect of the following goods and services: 

Class	Goods/Services
5	Dietetic substances adapted for medical use
32	Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages
42	Providing of food and drink

1. On 17 August 2005, Paul Mulard (“the opponent”) filed notice of opposition to the non-use application.  The sole ground for the opposition was a claim to have “used the trade mark in good faith throughout the period named in the application for non-use, namely 28 Dec 2001 to 28 Dec 2004 in relation to the goods and service to which the application relates”.

2. The opponent filed evidence in support concurrently with its Notice of Opposition following a 3 month extension of time.  The non-use applicant elected not to submit evidence in answer.  The matter came before me as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 17 February 2006.  The non-use applicant was not represented, but relied on written submissions.  The opponent was represented by Mr Ed Heerey of counsel, instructed by Behan Legal of Melbourne.

   Legislation and onus

3. The applicant, claiming to be a “person aggrieved”, filed an application for removal of the trade mark under the provisions of paragraph 92(4)(b)[1] of the Act for part only of the goods and service specification, as set out in paragraph 2 above. The application is in order, and the applicant’s standing as a person aggrieved has not been challenged.

   [1] The wording of the application is as follows:  “This removal application is made on the ground that the trade mark has remained registered for a continuous period of three years ending one month before the day on which this non-use application is filed and at no time during that period did the registered owner use the trade mark in Australia or use the trade mark in good faith in Australia in relation to the Relevant goods and Services”.

4. Section 100 of the Act refers to the onus on the opponent to rebut the applicant’s allegations. The relevant parts of section 100 state:

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
   …

   (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   …

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a)     the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period;

   (b)  in a case where the trade mark has been assigned but a record of the assignment
        has not been entered in the Register:

   (i)   the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment;

5. To succeed in his opposition to the removal of the trade mark, the onus is on Mr Mulard to establish use in good faith of the trade mark in relation to at least some of those goods and services nominated in the application.

   Use of the trade mark

   Use by registered owner within the relevant period

6. The onus is on the trade mark owner to demonstrate use of the trade mark in good faith on the relevant goods within the relevant time period. 

7. Up until 30 June 2005, at which time the assignment to Mr Mulard was recorded at the Trade Marks Office, the owner of this trade mark was a company known as Extract-All Pty Ltd.  Thus, this entity owned the trade mark for the whole of the relevant period.  Mr Mulard, at paragraph 4 of his declaration, notes that he was a director of the company from October 1996 until its deregistration in May 2003.  He also notes, in paragraph 9 , that the company assigned the trade mark to him at some unspecified date, which I take to be some time in 1998.[2]  Mr Mulard also notes, in paragraph 11, that “Neptune’s Gift” products were distributed from his home address at about the same time he claimed to have taken control of the trade mark.

   [2]Paragraph 8 of the Mulard declaration.

8. Technically speaking, Mr Mulard’s claim to use is not use “by the registered owner”. I am, however, satisfied that such use as is attested to, is use in good faith by Mr Mulard, who was of the impression he was the legal owner of the trade mark at the time, even though a formal assignment of the trade mark had not been registered with the Trade Marks Office. I am satisfied this is use of the trade mark as envisaged by paragraph 100(2)(b) of the Act.

   Evidence, submissions and discussion

9. The applicant filed written submissions prior to the hearing.  These submissions are made only in relation to a subset of the goods and services specified in the application, namely, non-alcoholic drinks in class 32 (“the relevant goods”).  There are no submissions in respect of the remainder of the goods and services mentioned in the application.

10. The opponent’s evidence in support consists of two declarations, plus supporting exhibits.  The initial declaration is that of Paul Mulard, the current owner of the trade mark under attack.  The second declaration is that of Penny Marinelli, a naturopath and customer of Mr Mulard. 

11. Mr Mulard’s supporting evidence is not always easy to follow, and it is not always clear what actions took place within the relevant period.  The lack of sales figures, and his chosen method of advertising, via word of mouth, leaves significant gaps in his information and arguably makes it harder for him to demonstrate his claims.    

12. The general thrust of the applicant’s submissions is that the annexures to the Mulard declaration do not show the trade mark itself in use on the relevant goods.  Use of the words is seen as reference to the business Mr Mulard operates rather than as reference to trade mark use on the goods themselves.  The comment is made more than once that there is no clear indication that the trade mark is used on the goods themselves, with the suggestion that the products could have been branded with another name, or sold as “no name products”.[3]  The submissions end by indicating the belief that Mr Mulard has not discharged the onus on him to rebut the allegation of non-use.

    [3] Sub paragraphs 3.6, 3.7, 3.9 and 3.11

13. I do not agree with the applicant in respect of what can be regarded as trade mark use.  Trade mark use is not restricted to the mark being physically placed upon the goods concerned.  Subsection 7(4) reads as follows “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).  (My emphasis.) 

14. Paragraph 2.145 (p34) of Shanahan’s Australian Law of Trade Marks and Passing Off, Edition 3 refers specifically to this point in the following words:

    Thus use of a trade mark on the Internet, in advertisements, invoices or other documents relating to goods and/or services can be trade mark use for the purposes of the Act.

    Those of the opponent’s invoices, letterhead paper and other documents which include the trade mark can all be regarded as use of the trade mark so long as they refer to relevant goods.  

15. The applicant makes another comment with which I find myself unable to agree.  In disputing that the examples demonstrate use, the applicant makes the comment that there is nothing to show the goods the opponent did sell went out into the marketplace with the trade mark upon them.  An example from paragraph 3.6 of the applicants submissions follows:  “There is no indication that the words “Neptunes Gift Health Foods (& Drinks) are used as a trade mark in relation to the products referred to in the letter.  Again, these products could have been branded with another name or sold as “no name” products”.

16. I cannot deny there is a possibility that this comment could be correct, but I consider it to be an unlikely scenario.  Mr Mulard states, in paragraph 14 of his declaration, that both his information booklet and his price list include a space in which a distributor can affix their own name and address.  The example attached as annexure PM-4 clearly shows this space.  The photographs of the goods and the labels shown in annexures PM-11 and PM-12 also both include a space for entry of the distributors (or agents)contact details.  Given this information, it is hard to see why customers would re-brand the goods before selling them on.  I am prepared to accept Mr Mulard’s information as evidence that the goods did go into the marketplace with the registered trade mark, or minor variations of it, applied.

17. In any event, it appears clear to me, despite the shortcomings of the evidence provided by Mr Mulard, that he did use versions of the trade mark in respect of the relevant goods within the relevant period.  Two pieces of evidence point clearly to this - annexure PM-5 – the catalogue for the period 1 June 2003 to 1 June 2004 – which lists a range of fruit flavoured drinks incorporating substances such as ginseng, deep sea kelp, aloe vera and evening primrose oil, as well as wheat grass.  The second piece of information which I consider supports use is the Marinelli declaration, which refers to the range of drinks as a regular purchase during a period incorporating the relevant period, and comments (at paragraph 8) that this range became unobtainable some time after 14 May 2003[4].  The drinks were therefore available to Ms Marinelli during at least part of the relevant period.

    [4]Annexure PMA-2

18. The next question then, is whether the use demonstrated is use of the trade mark as registered.  Mr Mulard’s claims to use of the trade mark are inconsistent, in that he refers in his declaration and annexures to several versions as examples of use, without apparently noticing any differences between them – Neptunes Gift; Neptunes Gift Health Foods; Neptunes Gift Health Foods & Drinks; Neptunes Gift Health Drinks; Neptunes Gift Health Drink Products.

19. The registered trade mark consists of the words neptunes gift health foods. In considering what is and is not use of a trade mark, the provisions of section 7 of the Act are relevant. Subsection 7(1) relevantly states “If the Registrar …, having regard to the circumstances of a particular case, thinks fit, the Registrar … may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.”

20. In this case, I consider use of the following two versions to be use of the trade mark as registered:  Neptunes Gift Health Foods (as shown in annexures PM-9, PM-10, PM-13 and PMA-4 to Mr Mulard’s declaration) and Neptunes Gift Health Foods and Drinks (as shown in annexures PM-5, PM-8, and PMA-2).  The addition of the words “and drinks” is not an alteration which I consider substantially affects the identity of the trade mark. I am satisfied there is demonstrated use of the trade mark as envisaged by the provisions of section 7 of the Act.

21. I am satisfied therefore, that Mr Mulard, as the owner of the trade mark has demonstrated use within the relevant period of this trade mark in respect of the relevant goods, that is, non-alcoholic drinks in class 32. Having demonstrated this use, the application for removal under section 92(4)(b) fails.

22. However, I consider it appropriate to refer to whether there has been use of the trade mark in respect of the remaining goods claimed in the non-use application.  As set out earlier, the original non-use application was in respect of the following list of goods and services:

Class	Goods/Services
5	Dietetic substances adapted for medical use
32	Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages
42	Providing of food and drink

1. The evidence supplied demonstrates some use of the trade mark in respect of a number of dietary supplements which fall into the class 5 description noted above.  These include shark cartilage powder and glucosamine sulphate powder, items which appear in the catalogue provided as annexure PM-5.  These catalogue entries fall within the relevant period, and I am satisfied this is sufficient indication of use on dietetic substances adapted for medical use within the relevant period.

2. For the broader range of goods in class 32, I consider Mr Mulard has demonstrated use on fruit drinks, which are a subset of the non-alcoholic drinks already mentioned.  His use of the trade mark on wheatgrass powders and concentrates equates, in my mind, to use on preparations for making beverages.  I am satisfied he has demonstrated use on the goods referred to in class 32.

3. In respect of class 42, however, I do not consider there is any indication of use in respect of the claimed services.  At the Hearing, Mr Heerey’s submitted that the class 42 services covered the broad description of providing foods and drinks via distributing them into the market in the way Mr Mulard has chosen to do.  This is simply not correct.  The provision of food and drink in class 42, as was the correct  classification under the Nice system version 7[5], is not meant to refer to the distribution of goods for sale.  The item concerned is  “provision of food and drink”, that is, services such as takeaway food services, restaurant services, bar services  - all those services of a catering nature designed for people who wish to purchase a meal or something to quench their thirst.  These services now appear in class 43, following addition of three extra service classes when Nice Version 8 took effect on 1 January 2002. 

   [5] “Nice” is the international classification system to which Australia is a party.  Refer to WIPO publication “International Classification of Goods and Services for the Purposes of the Registration of Trade Marks”.

4. There is no evidence at all that Mr Mulard offers any kind of catering service.  Mr Heerey specified the services envisaged here were those of retailing or wholesaling (distributing) the goods dealt in.  Retailing and wholesaling services are now, following Nice 8, found in class 35, though at the time the application was filed, they were correctly placed in class 42.  The description of services for which Mr Mulard registered his trade mark in class 42, however, does not incorporate this retailing/wholesaling scenario.  He has registered his trade mark for a catering type service which he does not provide.  Class 42 in the registration appears to be superfluous.

   Decision

5. I find the application for non-use fails, as the opponent has established his opposition to the removal, at least in respect of goods in classes 5 and 32.  As is usual, costs should follow the decision, and I award costs against the non-use applicant, at the official scale.

   Alison Windsor
   Hearing Officer
   Trade Marks Hearings
   3 April 2006