Coathurst Pty Ltd v Dune Holdings Limited

[2015] ATMO 115

TRADE MARKS ACT 1995

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

Re:Opposition by Coathurst Pty Ltd to application under section 92 of the Act by Dune Holdings Limited to remove trade mark number 709581(25) - Dunes (Logo) - in the name of Coathurst Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Tracey Savage of Spruson & Ferguson Applicant: Andrew Fox of Counsel instructed by Nicola Scheepers of Griffith Hack, Patent & Trade Mark Attorneys
Decision:	2015 ATMO 115 S92 application for partial removal – Trade Mark has been used during the Relevant Period in relation to the Goods

Background

1. In this matter Dune Holdings Limited (‘the Applicant’) applied on 10 October 2013 under the Trade Marks Act 1995 (‘the Act’) for the partial removal under paragraph 92(4)(b) of a trade mark from the register of trade marks in respect of ‘footwear and headgear’ (‘the Goods’) within the registration which appears below:

Registration No:  709581
Priority Date:  30 May 1996
Goods/Services:  Class 25: Clothing surf wear, footwear head gear

(‘the Goods’)

Trade Mark:  

(‘the Trade Mark’)

1. Although it is of no consequence to this decision I will remark now that it is the words ‘Rash Pro’ that might be seen under the word ‘DUNES’ in the Trade Mark.  I will also mention now that I read the Goods as being ‘Clothing, surf wear, footwear, head gear’.

2. On 24 December 2013 the owner of the Trade Mark, Coathurst Pty Ltd, (‘the Opponent’) filed Notice of Intention to Oppose the application for removal; this was followed on 22 January 2014 by its Statement of Grounds and Particulars which states:

   1. The Opponent had an intention to use the Trade Mark at the filing date. In fact, the registered Trade Mark has been used in Australia during the three years ending on 10 September 2013 (the Relevant Non-Use Period) in connection with clothing, footwear and headgear products in Class 25.

   2. The Opponent has used trade marks consisting of or containing the word "DUNES", in Australia continuously since at least 1989. The Opponent has continuously used the registered Trade Mark in Australia since at least 2000.

   3. The Trade Mark has been continuously used on the Opponent's website during the Relevant Non-Use Period, in connection with a broad range of goods including clothing, footwear and headgear products in Class 25. The Trade Mark has also been continuously used during the Relevant Non-Use Period in connection with clothing, footwear and headgear products sold via the Opponent's retail store.

   4. It is noted that the Applicant for Removal of the Trade Mark is the owner of pending Application Nos. 961910 DUNE in Class 25, 1165753 DUNE in Classes 18, 25 and 35, and 1209554 DUNE LONDON in Class 35. Each of these marks cover goods or services the same or similar to the Class 25 goods covered by the Opponent's registration 709581. Further, the Removal Applicant was unsuccessful in a previously application for removal of the Trade Mark (see (2011) ATMO 85). Thus, it is in the public interest for the Registrar to exercise discretion not to remove the Trade Mark because this may result in deception or confusion arising.

3. On 4 February 2014 the Applicant filed a Notice of Intention to Defend.

4. Thereafter, both parties have filed their evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’) as is further discussed below.

5. Subsequently both parties requested to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 15 October 2015.  Ms Tracey Berger, trade mark attorney, of Spruson & Ferguson, Patent & Trade Mark Attorneys represented the Opponent.  Andrew Fox of Counsel instructed by Nicola Scheepers, solicitor and trade mark attorney, of Griffith Hack, Patent & Trade Mark Attorneys, represented the Applicant.

Onus

1. In terms of section 100 of the Act the burden is on the Removal Opponent to establish its opposition to the removal of the Trade Mark; that is, to satisfy me there was use of the Trade Mark in relation to the Goods and Services during the three year period ending on 10 September 2013 (‘the Relevant Period’). If such use is established it may be taken that the Removal Opponent has successfully addressed the ground under paragraph 92(4)(b). The Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc [2015] ATMO 10:

   Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

   The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

Evidence

1. The evidence in this matter is comprised of the following declarations:

   Evidence in Support

   Greg Sandmann made on 7 May 2014 together with Exhibits GS-1 to GS-7 and Confidential Exhibits GS-8 and GS-9 (‘Sandmann Declaration’)

   Evidence in Answer

   Aparna Watal made on 7 May 2014, together with Annexures AW-1 to AW-24 (‘Watal Declaration’).

   Evidence in Reply

   Brecht Robert Olga Valcke dated 15 October 2014, including Exhibits 1 to 12 (‘Valcke Declaration’).

2. My understanding of the Applicant’s argument is that it submits that one item within the Applicant’s evidence is of doubtful probity and that, consequently, all of the Applicant’s evidence should be considered with that in mind.  Accordingly, I think it appropriate to look first at that particular piece of evidence and assess whether the Applicant’s submission has merit.

3. The evidence that the Opponent alleges is of questionable probity is the picture of an article of footwear which appears below and is contained in the Sandmann Declaration Exhibit GS-4:

1. I have adjusted the contrast in the above picture of a ‘fin sock’ so that the darker area is more visible.

2. The essence of the Applicant’s submission is that in the picture the darker area above the Trade Mark may be an obliteration over which the Trade Mark has been affixed in order to spuriously establish use in relation to an article of footwear.  This might be so; however, there are other possible explanations such as:

   ·    The dark area may be an artefact brought about by shadow, reflection or the nature of the photograph or camera;

   ·    The article of footwear may be one of hundreds which bore another sign such as (for example) the generic words ‘fin sock’ all of which have had the generic words obliterated and the Trade Mark affixed to them for sale by the Opponent

3. The Applicant points to one of its items in evidence to establish that the Trade Mark, as it appears on the fin sock, may be on a sticker which is easily affixed to articles which appear in exhibits to the Sandmann Declaration – this is (states the Watal Declaration) on a pair of thongs (footwear) which was ordered from the Opponent by a Mr Alvin Ortega whose relationship with the Applicant is not stated:

4. Again, the sticker may be affixed to the thongs (footwear) by the Opponent who has ordered the thongs in bulk from a manufacturer without any trade mark affixed to them in order to itself affix the Trade Mark.  Or, indeed, the Opponent could have supplied the stickers to the manufacturer.  Because the sticker may have been attached to the fin sock or thong (footwear) by the Opponent does not necessarily mean that it was attached by the Opponent or, that, if it was attached by the Opponent there was any nefarious motive in that action.

5. Thus I do not consider that questions concerning the probity of ‘the fin sock evidence’ should cause me to consider the Opponent's evidence with anything other than the normal degree of circumspection.

6. Exhibit GS-3 to the Sandmann Declaration shows the Trade Mark in use on:

   ·    Surf tops

7. Exhibit GS-4 to the Sandmann Declaration shows the Trade Mark in use on:

   ·    Headwear (caps and hats)

   ·    thongs (footwear)

   ·    tee-shirts

   ·    shorts

   ·    hoodies

   ·    surf shoes

   ·    wet suits

   ·    swimwear (male)

   ·    sports pants

   ·    fin socks

8. Exhibit GS-5 to the Sandmann Declaration shows the Trade Mark in use in the Opponent’s factory outlet on:

   ·    shop frontage

   ·    shop counter & sales register

9. Exhibit GS-6 to the Sandmann Declaration shows the Trade Mark in use on the Internet website dunesinternational.com on 9 August 2013 in relation to:

   ·    swimwear (female)

   ·    swimwear (male)

   ·    tee-shirts

10. Exhibit GS-6 to the Sandmann Declaration also shows the Trade Mark in use on the Internet website dunesurfstore.com; however, it is not clear when this particular iteration of this website was published.  Amongst the goods on this website at Exhibit GS-6 are:

    ·    plimsoll style shoes

    ·    sports shorts

    ·    tee-shirts

    ·    fin socks

    ·    bucket hats

    ·    baseball-style caps

    ·    French foreign legion style caps

    ·    thongs (footwear)

11. Confidential Exhibit GS-8 to the Sandmann Declaration is a collection of receipts which are headed by the Trade Mark for goods which include girls and boy’s swimmers, reef shoes, hats, thongs (footwear), fins socks, tee shirts, surf shoes, rash shirts, board shorts, surf hats, and wetsuits.

12. I further note that the Sandmann Declaration states of Exhibit GS-9 that it is sales reports “of some of the goods sold under the DUNES Mark in Australia during the relevant period.”  The Sandmann Declaration has previous defined the Trade Mark as the DUNES Mark.  Amongst the goods mentioned within the sales report is a pair of school shoes, a men’s hat, school shorts and a straw hat.

13. Taken as a whole, the Sandmann Declaration appears to me to be largely coherent and to be ‘real’ – as opposed to be what the Applicant suggests which is that it is, at least in part, a confection.  And, if there is doubt about one item in the evidence, (which I am not satisfied that there is) it does not necessarily follow that all of the evidence is tainted.

14. The only doubt that may remain is as to the date of publication of the Opponent’s website dunesurfstore.com (and consequently whether the date of use of the Trade Mark was during the Relevant Period or possibly after it).  Uncertainty about this date does not affect the outcome of my decision for reasons which will become apparent.

15. The Applicant’s evidence (the Watal Declaration) is couched in terms of challenging much of the Opponent’s evidence.  There are two trap purchases of goods sold under the Trade Mark.  To my mind these purchases of fin socks and hats merely confirm that the goods were available when the trap purchases were made.

16. There is an investigator’s report as to a visit in July 2014 to the Balance Health retail outlet mentioned in the Sandmann Declaration.  In my consideration the fact that Goods were not on sale under the Trade Mark when the investigator attended the store (nearly four years after the start of the Relevant Period) may be of less weight than the Opponent’s statement that Goods were supplied to the outlet during the Relevant Period.  Further, logic and relevance would suggest that, if the Applicant wished to cast doubt upon the Opponent’s claims, the most obvious store for an investigator to attend would be the Opponent’s own factory outlet: this did not happen.

17. The Watal Declaration also exhibits the results of various Internet searches which are structured to show that fashion outlets do not generally sell reef shoes or fin socks of the type sold under the Opponent’s Trade Mark.  However, these detail the results of searches of the websites of Oroton®, Hush Puppies®, David Jones®, Kate Spade® and so on which one does not usually think of selling fashion surfwear whereas the sellers of fashion surfwear (to which the Valcke Declaration refers) such as Quicksilver or Billabong might be more appropriate outlets to gauge the marketplace.  I note that Billabong® sells, as well as surfing goods, thongs (footwear), sheepskin boots and reef-boots as well as a range of casual fashion clothing in additional to headwear such as sports caps, beanies, safari hats, corporal’s hats and so on.  Quicksilver® sells a similar range.

Section 92

1. Section 92 of the Act relevantly provides:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (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:

   […]

   (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.

2. The application for removal is made in respect of ‘footwear and headgear’.  The Opponent has shown use within the Relevant Period in relation to items that fall within those general descriptions.  In particular, I am satisfied that the Opponent has shown use within the Relevant Period in relation to Headwear (caps and hats), thongs (footwear), surf shoes and fin socks.

3. There remains doubt, however, that the Opponent has shown use within the Relevant Period in relation to the goods depicted on its dunesurfstore.com website as there is no date evidenced for the publication of the material on this particular iteration of this website – these goods on which the Opponent has used the Trade Mark are (relevantly) plimsoll style shoes, bucket hats, baseball-style caps, French foreign legion style caps and thongs (footwear).

4. Further, it is not clear that the Trade Mark was used during the Relevant Period in relation to the subset of the Goods which appear in the sales reports: school shoes, men’s hats, school shorts and straw hats.  However, due to the presence of the Trade Mark over the door of the Opponent’s factory outlet and on the cash register, it is plain that the Trade Mark was used in the Relevant Period in relation to the retail of these and other goods which appear in the sales reports.

Subsection 101(3)

1. Subsection 101(3) provides:

   (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.

2. Bennett J discussed the nature of the discretion in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [169]:

   In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 [Hermes] 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.

3. There is some doubt arising from the evidence whether the Opponent used the Trade Mark in relation to plimsoll style shoes, bucket hats, baseball-style caps, and French foreign legion style caps on its dunesurfstore.com website during the Relevant Period or whether this use was after the Relevant Period.  However, I am satisfied that these goods are very much of the kind that it might be expected that traders in surfing goods and surfwear might be expected to market under their trade marks and that the Opponent, in marketing these particular goods, was not responding to the application for the partial removal of the Trade Mark.  I am also satisfied because of the nature and range of the Applicant’s goods that the marketing by another person of similar goods under a trade mark similar to the Trade Mark would be deceptive or confusing.  It is, in the light of this and the tests arising from Hermes, appropriate to exercise the Registrar’s discretion in relation to those goods.

4. Additionally, I consider that it is appropriate that the Registrar exercise her discretion in relation to ‘school shoes, men’s hats, school shorts and straw hats’ since the Trade Mark has been used prominently in relation to the retail of those goods.

Decision

1. Subsection 101(1) 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.

2. Having regard to the goods in respect of which the Opponent has used the Trade Mark within the Relevant Period, and the goods in respect of which it is appropriate to exercise the Registrar’s discretion, I consider that it is not appropriate to remove the Trade Mark from the Register in respect of any of the Goods.

Costs

1. Having been successful the Opponent is entitled to its costs which I award at the official scale set out at Schedule 8 to the Regulations.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
3 December 2015