Carmel Krpan and Zdenko Krpan v Youngblood Skin Care Products LLC

[2010] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Carmel Krpan and Zdenko Krpan to application under section 92 of the Act by Youngblood Skin Care Products LLC to remove trade mark number 1064079(35) - YOUNGBLOOD - in the name of Carmel Krpan and Zdenko Krpan.

Delegate:	Iain Thompson
Representation:	Removal opponent: written submissions Removal applicant: written submissions by Khristyna Misko of Fisher Adams Kelly.
Decision:	2010 ATMO 102 s92 proceedings - use of trade mark conceded by the applicant – intention to use in good faith - inappropriate choice of forum. Application for removal not established. No costs award.

Background

1. This matter, which is necessarily brief, concerns an application under section 92 of the Trade Marks Act 1995 seeking removal of the registered trade mark appearing below:

   Registration No:           1074079
   Priority Date:               11 July 2005

   Services:Class 35:  Mail and web based skin care clinic services being the retailing of products related to hair care, skin care and cosmetics.

   Trade Mark:                YOUNGBLOOD

2. Youngblood Skin Care Products LLC (‘the removal applicant’) has applied under subparagraph 92(4)(a) for the removal of the trade mark, alleging that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith to use the trade mark in Australia.  The owners of the trade mark Carmel Krpan and Zdenko Krpan (‘the removal opponents’) have served and filed notice of opposition to the removal of the trade mark.

3. The matter was scheduled for me to hear in Brisbane on 7 September 2010, as a delegate of the Registrar of Trade Marks.  However, neither party appeared.  Both relied on written submissions – the removal opponents on their own submissions and the removal applicants on those by Khrystyna Misko of Fisher Adams Kelly, patent and trade mark attorneys.

4. Both parties have served and filed evidence to support their respective positions. As I understand the evidence, the removal opponents sell the removal applicant’s skincare products which are imported into Australia through a third party bearing the trade mark YOUNGBLOOD – but, it is the removal opponents who have registered the trade mark; they claim it is with the assent of the third party. The removal applicant implicitly concedes the use of the trade mark by the removal opponents. However, the removal applicant alleges that the removal opponent cannot have had an intention to use the trade mark in good faith in Australia since (at the date of application for registration of the trade mark) the removal applicant was the rightful owner of the trade mark in Australia. The removal applicant thus seeks to do under section 92 of the Act that which is properly done under section 88 before a Court of Law.

5. The choice of forum and grounds for this matter are thus inappropriate.  In Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 Gordon J stated at paragraph 8:

   Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187]- [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together.

6. There is no other evidence that the removal opponent’s intention to use the trade mark, at the date the application was filed, was not in good faith.

7. The application for removal of the trade mark from the register is not established.

   Costs

8. The removal opponents have represented themselves in this matter and have had no apparent legal costs – however, should they be entitled to any of their costs, I award these against the removal applicant at the official scale.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   08 October 2010