Chestermans Pty Ltd v The Jungle Tribe Pty Ltd

[2024] ATMO 22

TRADE MARKS ACT 1995

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

Re:Opposition by Chestermans Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by The Jungle Tribe Pty Ltd for removal of trade mark number 982975 (41) – JUNGLE SOCCER FUN TO PLAY. PLAY FOR FUN. (Figurative) – in the name of Chestermans Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Redchip Lawyers Pty Ltd

Decision:

2024 ATMO 22

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 17 February 2022 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by The Jungle Tribe Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

982975

Lodgement date

19 Dec 2003

Services

Class 41: Education, providing of training; entertainment, sporting and cultural activities

(‘Registered Services’)

Owner

Chestermans Pty Ltd

Trade Mark

(‘Trade Mark’)

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

3.  Chestermans Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 15 April 2022 and a Statement of Grounds and Particulars (‘SGP’) on 10 May 2022.  The Applicant filed a Notice of Intention to Defend on 9 June 2022.

1. The following evidence was filed in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Andrew Smith, General Manager of the Opponent (‘Smith declaration’)	15 September 2022	Various unmarked attachments
Evidence in answer
N/A
Evidence in reply
N/A

5.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 7 November 2022 the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 1 December 2023.  In line with usual practice, a letter was sent to the parties on 5 October 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 22 November 2023 (‘Applicant’s Submissions’). 

6.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

·The application for removal;

·The Notice of Intention to Oppose and SGP;

·The Applicant’s Submissions. 

The Relevant Provisions

7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 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.

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.

8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 17 January 2022 (‘relevant period’).

9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

10.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100  Burden 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) …
(b)  …
(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.

[…]

(2) 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; or
 (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 of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

11.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

[2] 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.

12.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the ground under which the application for removal was made is established.

13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5] 

[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

[5] Act s 7(3).

14.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

Discussion

1. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

   [7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

2. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

3. In evaluating the Opponent’s evidence there is an important threshold determination that I make, namely that the Trade Mark is not substantially identical to the words ‘Jungle Sports’ or ‘Jungle Soccer’, as the Trade Mark contains the additional words ‘FUN TO PLAY. PLAY FOR FUN’, considerable stylisation and a device consisting of a lion holding a soccer ball.  

4. The Opponent’s evidence in this matter consists of a declaration by its General Manager, Andrew Smith.  This declaration refers to an intention by the Opponent, a company based in Western Australia, to enter into the South Australian junior soccer market using the brand ‘Jungle Soccer’.  The declaration attaches a job advertisement for a ‘Jungle Soccer Kids program’ in Adelaide and material indicating an employment contract was offered to various individuals including hotel bookings and tickets for travel.  The declaration states that the Opponent has been prevented from using the Trade Mark due to Covid which has caused travel restrictions and staff shortages in Western Australia.  It also states that the Opponent seeks to enter into the Queensland market and would be impacted by the loss of the Trade Mark.

5. The Opponent does not assert, nor is there any evidence (documentary or other) before me that the Opponent has ever used the Trade Mark for the Registered Services or intends to use it in future.  The entirety of the evidence concerns the mark ‘JUNGLE SOCCER’ which is not substantially identical to the Trade Mark.  Moreover, if the Opponent had been using the Trade Mark in any way in Western Australia, such evidence would have been within the possession of the Opponent.  I find that there is no evidence that the Opponent has used the Trade Mark in the relevant period.

   Obstacles to use

   20.     An opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’.[8] The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[9]  The Opponent gives evidence that the various restrictions placed as a result of the Covid-19 pandemic restricted its ability to use the JUNGLE SOCCER trade mark in South Australia, but in the absence of any evidence showing any use whatsoever of the Trade Mark, and/or evidence of how the Covid-19 pandemic were an obstacle to the Opponent’s use of the Trade Mark in the Opponent’s home state of Western Australia, I am not satisfied that the Opponent’s failure to use the Trade Mark were because of circumstances that were an obstacle to use pursuant to s 100(3)(c)

   [8] Act s 100(3)(c).

   [9] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J)

   Registrar’s Discretion

   21.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.[10] The burden of persuasion in this regard falls on the Opponent.[11]

   [10] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [11] Ibid.

   22.     The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.

   Decision

   23.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 982975 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 registration be dealt with as the Court sees fit.

   Costs

   24. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   6 February 2024