Castle Co Pty Ltd v Murray Goulburn Co-Operative Co Ltd
[2013] ATMO 3
•14 January 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Castle Co Pty Ltd to application under section 92 of the Act by Murray Goulburn Co-Operative Co Ltd to remove trade mark number 720468(5) - NATUREGUARD - in the name of Castle Co Pty Ltd
Delegate: | Iain Thompson |
Representation: | Opponent: Christopher Doidge of Counsel, instructed by McIntoshIP Applicant: Bill Ladas, solicitor, of Corrs Chambers Westgarth |
Decision: | 2013 ATMO 03 s92 - use established within relevant period only in relation one of the goods for which trade mark is registered – Registrar’s discretion: scope of description of goods - plans to use trade mark on other goods in future - registration to be partially removed. |
Background
This matter is a proceeding under the Trade Marks Act 1995 (‘the Act’) in which Murray Goulburn Co-Operative Co Ltd (‘the Applicant’) has sought the removal from the register of trade marks (‘the removal’) of the trade mark appearing below under the provisions of subsections 92(4)(a) and 92(4)(b) of the Act:
Registration No: 720468
Priority Date: 28 October 1996
Goods:Class 5: Pharmaceutical preparations; vitamin preparations; particularly liquid vitamin preparations; preparations effective as insect repellents, particularly liquid preparations; dietetic beverages and foods adapted for medicinal purposes; ointments and lotions for pharmaceutical purposes; herbs; medicinal drinks (‘the Specification’)
Trade Mark: NATUREGUARD (‘the Trade Mark’)
The removal of the trade mark has been opposed by its owner, Castle Co Pty Ltd (‘the Opponent’) as allowed by section 96 of the Act.
Also as allowed by the Act and regulations thereto, the Opponent has served and filed evidence in support of its opposition to the removal. The Applicant has not served and filed evidence in answer.
Both parties were informed of their right to be heard and subsequently appeared before me, a delegate of the Registrar of Trade Marks, at a hearing in Melbourne on 11 November 2012. Christopher Doidge of Counsel, instructed by McIntoshIP, represented the Opponent. Bill Ladas, solicitor, of Corrs Chambers Westgarth represented the Applicant.
Onus and relevant dates
The onus on the Opponent is that referred to in section 100 of the Act which relevantly provides:
100Burden on opponent to establish use of trade mark etc.
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a)any allegation made under paragraph 92(4)(a) 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:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or
(b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
(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.
The relevant date (‘the relevant date’) for the purposes of subsection 92(4)(a) is 28 October 1996 and the relevant period (‘the relevant period’) for the purposes of 92(4)(b) is the three years ending on 10 April 2011.
Evidence
The evidence in support of the opposition to removal is a statutory declaration made by Russell Moles who is Managing Director of the Opponent.
Relevantly Mr Moles states:
[The Opponent], and its predecessors in title, has made use of the Mark since at least its registration in 1996 and including during the 3 year period prior to the lodgement of the Non-Use Application.
The Mark was originally used in relation to an oral mosquito prevention liquid called “Mozi-Free” (“the Product”). The Product’s active ingredients include thiamine hydrochloride. The Product was sold in 200mL and 50mL packages.
Natureguard Pty Ltd (ACN 075 015 673) was the original marketer of the Product, using:-
(a) the Mark as a parent brand; and
(b) “Mozi-Free” as the Product brand.
Natureguard Pty Ltd was subsequently deregistered in about 2004, after the sale of the Mark and the Product to [the Opponent].
[The Opponent] acquired the Mark, intellectual property rights and stock of the Product in or about September 2000. Exhibit “RM01” is a copy of a statement signed by the directors of Natureguard Pty Ltd dated 7 September 2000.
The Product was manufactured by a laboratory located in Burleigh, Queensland.
[The Opponent] appointed Tinsonax (NSW) Pty Ltd (“Tinsonax”) as an authorised master distributor of the Product throughout Australia. Tinsonax distributes the Product to wholesalers and retailers including:-
(a) Go-Vita Distributors; and
(b) Terry White Chemists.
Confidential Exhibit “RMO2” is a copy of a Sales Order Summary between 1 January 2010 and 28 April 2010, which shows sales of the product by Tinsonax. The Sales Order Summary was prepared and provided to me by Tinsonax at my request.
Exhibit “RM03” is a copy of the label for the Mozi-Free Product, which bears the Mark, and has been used since about 2007. Labels for the Product were printed by Mr Labels Pty Ltd. Confidential Exhibit “RM04” is a copy of an Invoice dated 21 September 2007 for a quantity of 15,000 labels for the Product.
The Product was registered by the Therapeutic Goods Administration on or about 21 August 1997 (Registration Nos. AUST L 61098; AUST L 58109; AUST L 61098).
The TGA registration was transferred to [the Opponent] when it acquired the Product in 2000.
Confidential Exhibit “RM09” is a copy of the letters provided to the Australian Register of Therapeutic Goods (ARTG) by [the Opponent] and Natureguard Pty Ltd regarding the transfer of the Product’s TGA registration.
The Product’s TGA registration was cancelled by the TGA in or about February 2011.
In compliance with the cancellation of the TGA Registration, [the Opponent] has discontinued manufacture and supply of the Product. However, it is my understanding that some residual stock of the Product may still be available in the market place.
Notwithstanding the discontinuation of the Mozi-Free Product, [the Opponent] intends to continue use of the Mark in respect of goods within the specification of the Mark.
Since about March 2011, [the Opponent] has been planning and developing a range of skin care products which it will market in Australia under the Mark (“New Product Line”). The New Product Line includes:-
(a) moisturising creams;
(b) bath and body oils; and
(c) cocoa butter.
The planning process for the New Product Line is well advanced and it is anticipated that products will be available for retail purchase in Australia from early 2012. Currently 6 products are planned for the New Product Line.
Confidential Exhibit “RNI10” is a copy of an internal document titled “Marketing Summary New Products” prepared by [the Opponent].
Confidential Exhibit “RM11” is a copy of a proforma invoice dated 14 September 2011 from Yangzhou Hengyuan Daily Chemical Plastic Co. Ltd of China in relation to an order placed by [the Opponent] for 15,000 units of New Product Line. [The Opponent] paid the full shipment amount on 20 September 2011.
Confidential Exhibit “RM12” is a copy of a design for the proposed in-store retail display on which products from the New Product Line are to be displayed.
Confidential Exhibit “RM13” is a copy of packaging designs for the New Product Line.
On or about 2 August 2011, [the Opponent] registered the domain name, <natureguard.co> at which it operates a website for the New Product Line. Exhibit “RM14” is a copy of the whois extract for the domain name. Exhibit “RM15” is a print out of the website as it appeared at 7 November 2011.
I add that the product sold during the relevant period is a vitamin preparation which, when ingested, is said to repel or repel mosquitoes.
As both parties refer to it in their submissions, I note also that the Opponent is the owner of the following trade mark application:
Application No: 1503266
Priority Date: 23 July 2012
Goods:Class 3: Body lotions (other than for medical purposes); Moisturising body lotion (cosmetic); Perfumed body lotions (toilet preparations); Ointments for cosmetic use; Baby lotions; Body talcum powder; Hair spray; Hair shampoo; Hair conditioner; Non-medicated lip balms; After sun products (not medicated); Aloe vera preparations for cosmetic purposes; Petroleum jelly for cosmetic purposes; Personal deodorants
Trade Mark:
Reasoning
The application for removal is made under subsections 92(4)(a) and 92(4)(b) of the Act which provide:
(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)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:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv)has not used the trade mark in Australia; or
(v)has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(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.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
I agree with Mr Doidge’s submission that the grounds under subsections 92(4)(a) and 92(4)(b) tend to merge once an impugned trade mark has been registered for 5 years in that, except where circumstances prevented the use of the impugned trade mark, an owner’s intention to use a trade mark at the filing date may become reflected in the goods or services within the specification in respect of which that trade mark has or has not been used within the relevant period.
I am satisfied that such is the case here and that any consideration of the ground under 92(4)(a) would, in view of the actual use of the Trade Mark, be otiose. Both parties before me agree that within the relevant period the Trade Mark was used in relation to a vitamin preparation that is formulated to be orally ingested which is said to repel or repel mosquitoes (‘the Goods’). It is the effects of that use and the further effects of the Opponent’s intention to use the Trade Mark on other Class 5 goods which are in contention. Both of these considerations are matters which go to the Registrar’s discretion in terms of section 101 of the Act which relevantly allows:
(3)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.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:
[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
[171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.
[…]
[176] The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal (E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [4] per Flick J).
The Applicant argues that, in the exercise of the Registrar’s discretion, the Specification should be restricted narrowly to reflect the purpose and use of the Goods. The Opponent argues that the Specification should be preserved broadly to reflect the nature of the Goods and the Opponent’s intentions concerning the use of the Trade Mark.
In my consideration it is useful to initially assess these questions via the analogy of ownership: section 92 in effect provides a means by which a trade mark registrant’s ownership of a trade mark in relation to some or all of the goods or services in respect of which it is registered may be challenged and tested. And, as Carr J stated in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117 at [78]:
The scheme of the Act is not proprietorship by registration but rather registration of proprietorship …
The Opponent has, to all intents, established that it owns the Trade Mark in respect of the Goods after such ownership has been challenged under the provisions of section 92.
Again following this analogy, because the Opponent has established that ownership of the Trade Mark in relation to the Goods does, or should, that ownership extend to other goods in the Specification? In Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; (2007) 74 IPR 246; [2008] AIPC 92-272 at [14] Kenny J said:
For this purpose, too, the owner’s right to registration extends to goods “of the same kind” as the goods that have already borne the mark: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 per Stirling J and In re Hick’s Trade Mark (1897) 22 VLR 636 at 640 per Holroyd J. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
Kenny J went on to say at [16]:
In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a “same kind” inquiry from the factors for a “same description” inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as “essentially the same” may well cover a narrower field that goods “of the same description”.
Following the ‘physical and functional’ line of analysis suggested by Kenny J, it is difficult to ascribe much more breadth to the Goods than the description I have already given: ‘a vitamin preparation that is formulated to be orally ingested which is said to repel or repel mosquitoes’. In my consideration, bearing in mind that the Goods are pharmaceuticals for which TGA approval was necessary, ‘vitamin preparations to protect from or to repel insects’ is a generous description which is of the same comparative order as the ‘hatchets’ and ‘axes’ example quoted with approval by Kenny J.[1] Accordingly, thus far in my considerations, ‘vitamin preparations to protect from or to repel insects’ is an appropriate restriction of the specification.
[1] Cf the ‘watches’ and ‘clocks’ example in Hermes Trade Mark [1982] RPC 425.
I turn now to the intended use of the Trade Mark by the Opponent.
The situation before me is quite different from that in Hermes Trade Mark [1982] RPC 425 (‘Hermes’) or QH Tours Ltd v The Mark Travel Corporation [1999] ATMO 31.
In Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39; (2011) 90 IPR 310 the Court explained the decision in Hermes at [128]:
In E & J Gallo Winery Flick J at [202]-[203] referred to the observations of Falconer J in Hermes Trade Mark [1982] RPC 425 in which Falconer J in the High Court of Justice held that there had been no abandonment of the HERMES trade mark. In Hermes the Court considered whether the applicant, a French company dealing in clocks and watches in the United Kingdom, was entitled to removal of the respondent’s registration of HERMES in Class 14 for watches and clocks on the ground of five years of continuous non-use.
The respondent in Hermes acquired the mark in 1954 and had sold watches under that name between 1960 and 1971. From 1954 until the hearing, advertisements had appeared in an annual trade publication referring to the trade mark and to the respondent. Occasionally the respondent received Hermes watches for repair and in 1976 they made plans to recommence selling watches under the mark in July 1977. To do so the respondent placed orders containing references to the mark with a component supplier in October 1976 and the orders were fulfilled in April 1977. They prepared a price list and ordered boxes for the sale of their products. No sales took place until September 1977.
The Assistant Registrar expunged clocks from the registration resulting from the concession by the respondent that there had been no sales of clocks. However, with regard to watches, he held that whilst the advertisements alone would have not been sufficient to establish sufficient use, their combination with the steps taken in preparation for the re-launch of the watches constituted sufficient use of the trademark to defeat the application for removal by rectification. Falconer J affirmed the decision of the Assistant Registrar, dismissing the appeal.
In Pioneer Computers, Bennett J at [169] succinctly stated the principles arising from Hermes and adopted by Flick J in E & J Gallo Winery as follows:
In E & J Gallo [2008] FCA 934; 77 IPR 69 at [202]- [203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
·there had been no abandonment of the trade mark;
·the registered proprietors of the mark still had a residual reputation in the mark;
·there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
·the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
·the registered proprietors were not aware of the applicant’s sales under the mark.
The goods in relation to which the Opponent proposes to use the Trade Mark are moisturising creams, bath and body oils and cocoa butter. Accordingly, the goods on which the Opponent proposes to use the Trade Mark are not goods in relation to which the trade mark was used by the Opponent at any time before the filing of the application for removal. This is not a putting back onto the market of a product or service which had already been there; it is the launch of entirely new products in relation to which the Trade Mark remains unused. Additionally, although this is not necessarily determinative, I note that neither are those proposed goods ‘the same kind of thing’ as the Goods nor are they ‘goods of the same description’ as the Goods.
Further, it appears to me that the goods on which the Opponent intends to use the Trade Mark most likely do not fall within the Specification and it appears via the filing of 1503266, referred to above, that the Opponent itself might have a similar belief.
It thus follows that no broadening of the specification of goods from ‘vitamin preparations to protect from or to repel insects’ is appropriate as the intended use is, to all intents, a completely new use of the Trade Mark by the Opponent. It is again stressed that the scheme of the Act is not one of ownership by registration but, rather, the registration of ownership.
It follows that the Opponent has established its opposition to the removal of the Trade Mark in relation to ‘vitamin preparations to protect from or to repel insects’ and that the exercise of the Registrar’s discretion in relation to any further goods in the Specification is not appropriate.
Decision
Section 101 of the Act relevantly provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
I direct that the Trade Mark be removed from the Register for all goods in respect of which it is registered other than, ‘vitamin preparations to protect from or to repel insects’.
Costs
In the circumstances of this matter and given that use of the Trade Mark on the Goods was conceded by the Opponent, the Applicant has succeeded in its objective – the restriction of the goods of the registration or, looked at in another way, the Opponent has not succeeded in preserving a broad specification of its goods. I therefore order costs against the Opponent at the Official Scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
14 January 2013
10
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