CUB Pty Ltd v Elixir Signature Pty Ltd

Case •

[2013] ATMO 74

•

10 September 2013

TRADE MARKS ACT 1995



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

Re:Oppositions by CUB Pty Ltd to applications under section 92 of the Act by Elixir Signature Pty Ltd to remove for non-use 54 trade marks registered in the name of CUB Pty Ltd

Delegate: Alison Windsor
Representation: Removal Opponent:  Tim Allen of Corrs Chambers Westgarth
Removal Applicant:  Tom Cordiner of counsel, instructed by K & L Gates
Decision: 2013 ATMO 74
Section 96: opposed non-use applications – provisions of paragraphs 92(4)(a) and 92(4)(b) considered where appropriate – paragraph 92(4)(a) not established – 92(4)(b) established in respect of certain of the trade marks - Registrar’s discretion applied in respect of some of these trade marks to allow them to remain on the Register – certain others to be removed.  No costs award as neither party achieved its objectives.

Background

  1. This decision relates to applications by Elixir Signature Pty Ltd (the ‘removal applicant’ or ‘Elixir) to remove from the Register for non-use 54 trade marks owned by CUB Pty Ltd (formerly Fosters Australia Limited) (‘the removal opponent’ or ‘CUB’).  Details of the registered trade marks subject of the non-use applications may be found in Annexure 1 to this decision.  

  2. Fifty of the non-use applications were filed on 7 September 2010, with another four being filed on two later dates.[1] All bar one of these non-use applications were made under the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’).  The non-use application for registration 1121877 was made under the provisions of paragraph 92(4)(a).  All of the non-use applications sought removal of the relevant trade mark in respect of all of the goods for which it was currently registered.

    [1] Non-use applications were filed for registrations 42305 and 173634 on 20 June 2011; for registrations 57474 and 758333 the applications were filed on 23 December 2011.

  3. In due course the non-use applications were advertised in the Australian Official Journal of Trade Marks, following which the removal opponent filed a notice of opposition to each application, giving the following reasons for opposing removal of the trade marks:

    a)      The Opponent has used the Registered Trade Marks in good faith in Australia

    (b)     The Registrar should exercise her discretion not to remove the Registered Trade Marks from the Register.[2]  

    [2] I note that the same wording has been included in respect of registration 1121877 which is proceeding under paragraph 92(4)(a). 

  4. Both parties provided evidence in support of their respective positions as provided for by the Trade Mark Regulations 1995 (‘the Regulations’).  Once most of the evidence had been served and filed the parties requested to be heard.[3]  The parties negotiated for and obtained agreement from the Registrar that all of the non-use matters would be heard in a single hearing to take place over two days. [4]

    [3] CUB filed an application to bring further evidence into proceedings two weeks prior to the hearing date.  As Elixir did not object to entry of the evidence into proceedings, it is included as a part of the total volume of evidence. 

    [4] Five oppositions mounted by Intellectual Property Development Corporation Pty Ltd (‘IPDC’) pursuant to section 52 of the Act to registration of new applications filed by CUB were also heard at the same hearing. These oppositions are the subject of a decision by Hearing Officer Cristy Condon issued on the same date as this decision.

  5. The hearing was conducted by Deputy Registrar Michael Arblaster assisted by Hearing Officer Cristy Condon and myself, Hearing Officer Alison Windsor, as delegates of the Registrar in Melbourne on 16 and 17 April 2013.  CUB was represented by Tim Allen of Corrs Chambers Westgarth, assisted by Natalia Blecher of the same firm.  Elixir was represented by Tom Cordiner of counsel, instructed by Chris Round and Christine Danos of K&L Gates (formerly Middletons).  On behalf of Elixir, Mr Philip Withers and another staff member also attended at the hearing.  They were accompanied by two members of the press who were, I understand, invited by Mr Withers.  The reason I mention this will become apparent later in my decision.

Legislative framework

Section 92

  1. Grounds for removing registered trade marks on the basis of non-use may be found in section 92 of the Act which relevantly provides:

    92  Application 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:

    (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. 

  2. The relevant period for the majority of the trade marks subject of the removal applications is therefore the three year period ending on 7 August 2010.

Section 96

  1. Section 96 of the Act makes provision for the filing of a notice of opposition to a non-use application and provides:

    96  Notice of Opposition

    (1)Any person may oppose an application under section 92 by filing a notice of opposition with the Registrar or the court, as the case requires.

    (2)The notice of opposition:

    a.Must be in the form approved by the Registrar or by the court; and

    b.Must be filed in accordance with the regulations or the rules of court (as the case may be). 

    Note:  For file see section 6

Section 100

  1. Section 100 of the Act, reproduced below, provides that the onus is on the removal opponent to establish that it has used the trade marks during the relevant period.

    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) 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.

    Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2: For file, month and registered owner see section 6.

    (2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before 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 in relation to those goods or services before 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 before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

    Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2: For Registered owner see section 6.

    (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; 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.

    Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2: For registered owner see section 6.

Section 101

  1. The opposition will be decided pursuant to section 101 of the Act which provides:

    Determination 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)  Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

    (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.

    Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2: For registered owner see section 6.

Evidence and submissions

  1. The evidence provided by the parties consists of 32 declarations. These are summarised in the table comprising Annexure 2 to this decision. The evidence goes both to the non-use applications as well as to the section 52 oppositions mentioned previously in footnote 4.

  2. On behalf of the removal opponent, Mathew O’Keefe has provided a total of 20 declarations in support of its oppositions.[5]  Mr O’Keefe holds the position of intellectual property manager for Fosters Group Limited.  (‘FGL’) and has held that position and other similar positions with the organisation since 2002.  CUB is a subsidiary of FGL and is the vehicle through which FGL runs its brewing business.

    [5] I have numbered the declarations strictly in the order of the exhibits they contain as Mr O’Keefe has numbered his exhibits consecutively across the 20 declarations.

  3. Paul Donaldson, group marketing manager for CUB’s VB and Crown beer brands has provided two declarations in support of the oppositions.  Roland Kaldor, a beverage technologist employed by CUB; Owen Malone, past intellectual property director of CUB; and Grant Peck, CUB’s managing director of supply, have each provided one declaration.

  4. On behalf of the removal applicant, Philip Withers has provided seven declarations.  Mr Withers is the director of the removal applicant, as well as a director of Intellectual Property Development Corporation Pty Ltd (‘IPDC’) which is opposing the registration of a number of CUB’s trade mark applications, including the five heard at the same time as the non-use matters.

  5. Both parties also provided comprehensive submissions, both written and oral, which I will refer to, where appropriate.

  6. A brief summary of the history of the parties derived from the evidence follows.

History of the removal opponent

  1. CUB was formed in 1907 through the merger of six breweries operating in Victoria.  The breweries were the following:

    • Carlton Brewery (established in 1864);
    • Victoria Brewery (established in 1854);
    • McCracken’s City Brewery (established in 1851);
    • Shamrock Brewing & Malting (established in 1865);
    • Castlemaine Brewery Co (established in 1871) and
    • Foster’s Brewing Co (established in 1888). 

  2. The amalgamated brewing group adopted the name ‘Carlton and United Breweries’.  The name has changed several times since the amalgamation occurred, but reverted to the original name in 2012.

  3. Over the years, CUB has amalgamated with and acquired the assets and businesses of a number of breweries, mainly in the eastern states of Australia.  Some of the breweries amalgamated into the CUB business are:

    • Melbourne Co-operative Brewing Company, acquired in 1925, giving CUB control of the Abbotsford Brewery; 
    • Great Northern Brewery (formerly known as the Cairns Brewing Company) acquired in 1931;
    • Richmond Brewery acquired in 1962;
    • the brewing operations of the Ballarat Brewing Company acquired in 1958;
    • Tooth’s brewery business, including its Kent Brewery in Sydney acquired in 1983;
    • Cascade Brewery in Hobart acquired in 1993.

  4. In December 2011 a meeting of shareholders voted in favour of SABMiller’s purchase of CUB.  SABMiller, a joint Anglo-South African business, was at the time the second largest brewing company in the world with over 200 beer brands and operations in 75 countries.  The takeover was approved by the Foreign Investment Review Board, and SABMiller officially took over CUB on 16 December 2011.  The takeover was made on the basis of certain undertakings including the following:

    • management of CUB’s operations would remain in Australia;
    • none of the existing brewing facilities would be moved offshore to produce beer for Australian domestic consumption and
    • SAB Miller would continue to invest in CUB’s iconic Australian brand portfolio.

  5. I will refer to the individual beer brands and the trade marks relevant to the opposed non-use applications later in this decision.

History of the removal applicant

  1. Elixir was incorporated in 2009 and is part of a group of companies (‘ICB Group’) described as operating an import/export business in Australia, New Zealand, Europe, USA, South Africa and throughout Asia. IPDC which holds the intellectual property of the group is another member of the ICB Group. Philip Withers, who has provided all the evidence in answer to the non-use oppositions as well as the evidence in support of the section 52 oppositions, is a director of each of the companies that form the group. He says that Elixir was formed in order to ‘bring some historical beers back to life’. He said that Elixir intended to establish one or more micro-breweries, some of which would be formed in conjunction with a local pub and tourist attraction, most likely in regional areas, but also in relevant urban locations with a heritage focus.

  2. Mr Withers states that in the four years leading up to the making of his declarations, the ICB Group has expanded into the brewing industry by developing and marketing a range of beers and related merchandise.  He says that the ICB Group has expended a significant amount of money in researching, filing and prosecuting Australian trade mark applications for its beer products and services, and that he has himself spent many hours researching beer trade marks.  

The non-use applications and oppositions

  1. Some of the relevant events leading up to the non-use applications and oppositions to registration may be found in the declarations made by Mr Withers.  He describes the significant precursor events as follows (references to specific exhibits have been deleted):

    In October 2009, I asked the [removal] Applicant’s solicitors to contact Owen Malone, the then Intellectual Property Director of the [removal opponent], to discuss the [removal] Applicant’s interest in acquiring certain of the [removal opponent’s] historical brands which were no longer part of the [removal opponent’s] core business (Historical Brands).

    Tony Watson of the [removal] Applicant’s solicitors told Mr Malone that the [removal] Applicant held genuine concerns that the Historical Brands were susceptible to non-use applications and that the only reason non-use applications had not been filed was because the [removal] Applicant wished to acquire the Historical Brands.  The [removal] Applicant considered that filing non-use applications at that time would have been perceived to be an aggressive action and the proposed acquisition of Historical Brands would be unlikely to succeed.  The [removal] Applicant prepared a written proposal for the [removal opponent’s] consideration in November 2009.  The proposal put by the [removal] Applicant was to either acquire or enter into a long term licence agreement with the [removal] Applicant to re-enliven the Historical Brands.  Documenting the [removal] Applicant’s background and its interest in the history of Australian brewing, the proposal also set out the [removal] Applicant’s intended use of the brands and the benefits of entering into the arrangement

    On 4 November 2009, Mr Malone acknowledged receipt of the proposal but recommended that the [removal] Applicant should rework the proposal.  In the original proposal, the [removal] Applicant commented that the Historical Brands appeared to be released every few years to maintain the registrability of the brands and that an advantage of entering into the licence agreement would be to remove the risk of the Historical Brands being removed from the Register on the basis of non-use.  Mr Malone stated that the proposal in its current form was likely to cause offence and recommended that the [removal] Applicant should rework the proposal.

    The [removal] Applicant subsequently amended its initial proposal and on 16 November 2009 the revised proposal was sent to Mr Malone for the [removal opponent’s] further consideration.

  1. The amended proposal (in part) stated the following:

    3.  The relevance of CUB

    CUB owns a number of old beer brands which are no longer part of its core business.  Two of these brands are Richmond Lager and Ballarat Bitter.  Elixir is interested in acquiring the brands or entering into long term licence agreements with CUB to re-enliven these brands as historical Australian beer brands, in the context of one of Elixir’s micro-breweries.

    3.1  Richmond Lager

    With respect to Richmond Lager and the other Richmond marks, Elixir seeks to draw on the heritage aspects of this brand.  Elixir is especially interested in the original depiction of Richmond Lager, Pilsner and other varieties.  Elixir seeks to retain the tiger head and prefers the way that the beer brand was presented in the 1930’s and 1950’s.

    3.2  Ballarat Bitter/Ballarat Bertie

    In the case of Ballart (sic) Bertie, Elixir does not intend to alter the characters (sic) image.  Rather, it intends to retain and enhance the original character drawing on Bertie’s authentic charm from an historical perspective to ensure it survives and remains a relevant part of Australian beer history.

    3.3  Other Brands

    There are other such historical brands which Elixir would seek to acquire or licence if CUB was amenable.

    4.  Intended use of the CUB brands

    Elixir seeks to acquire or licence the brands on a long term basis to refocus them on the local communities with which they enjoy their links.  It envisages they will be brewed in those community areas on a small batch basis.

    Benefits to CUB-

    ·     PR role coverage of the history of brewing in Victoria incorporating CUB’s history

    ·     Positive PR within the community allowing these historical brands to come back to life within the communities they were born (sic).  

  2. On 25 August 2010 CUB finally provided Elixir with the formal advice that it did not wish to dispose of or to licence the ‘historical brands’ to Elixir, but that it would be prepared to revisit the matter in the future if the situation changed.  Further discussions took place throughout the later part of 2010 and early 2011.  However, in early May 2011 CUB advised that it did not wish to enter into any long term licence agreement with Elixir.  CUB’s final comment in the message of refusal was that ‘CUB will otherwise defend its brands with its full resolve should you continue your attempts to appropriate them’.

  3. Meanwhile, CUB had filed a number of new applications for registration of trade marks, most of which are re-filings of certain of its registered trade marks, or are updated versions of registered trade marks from within its stable of beer trade marks.  On 25 August 2011 CUB filed another eleven new applications for registration of some of its ‘historical brands’ including an application for the words ‘Ballarat Bertie’.  

  4. On 7 September 2010 Elixir filed applications to remove 54 of CUB’s registered trade marks from the Register on the basis of non-use.[6]  In due course CUB filed notices of opposition to all of the non-use applications.

    [6] At the same time as the non-use  applications were filed, IPDC filed a number of applications for the registration of the trade marks listed at Annexure 3 to this decision.

Removal opponent’s evidence of use of the impugned trade marks

  1. In their submissions Mr Allen for CUB and Mr Cordiner for Elixir discussed the trade marks in what they both termed ‘brand families’.  For each family of trade marks, Mr O’Keefe has generally provided a separate declaration with a history, in differing degrees of detail, of the establishment of a particular brewery as well as the development and use over time of some of the brands of beers associated with that brewery.  In his declarations Mr Withers has provided useful information about the brand families and their use within the Australian beer market which he obtained from his research into Australian beer trade marks.

  2. I will discuss the parties’ evidence and submissions again later in the decision.  But first I will briefly describe the evidence provided in respect of broad ‘brand families’ of trade marks in order to, as it were, set the scene.  I should also say that a number of the images on the electronic Register which have been referred to by both parties were of very poor quality.  Many of the original labels supplied to the Trade Marks Office when the applications were filed consisted of actual coloured beer bottle labels.  Technology at the time the paper Register was converted into electronic form was such that only black and white images could be recorded.  I have located the original paper entries for a number of these marks and have reproduced them in colour in this decision.

The Ballarat marks

  1. There are six trade marks in this group, as follows:

2445 369884 369886
536842 915899 915900 Ballarat Bertie

  1. The Ballarat Brewing Company (‘BBCO) was formed in 1895 as Coghlan & Tulloch’s Ballarat Brewing Company Pty Ltd.  It was an amalgamation of two existing breweries – the Phoenix and Royal Standard breweries.  When the Phoenix brewery closed in 1911, the name was shortened to BBCO.  Registration 2445 which was filed in 1906 contains the images of a phoenix and a royal standard as indications of the original founders of the brewery.

  2. BALLARAT BITTER beer was introduced to the market in 1927[7] and went on to become BBCO’s flagship beer and easily its most popular beer.  It carried on its label an image of BALLARAT BERTIE, a character who had been introduced for advertising purposes shortly before.  BALLARAT BERTIE also became the official ship’s mascot of the corvette Ballarat 1 which was launched in 1940 for service in World War II.

    [7] Mr Cordiner put emphasis on small discrepancies between some of the historical the dates quoted in various parts of CUB’s evidence.  I am satisfied that these differences are not significant and that they will not have a material effect on my decision.

  3. CUB purchased BBCO’s brewing operations in 1958, but not its portfolio of over 100 hotels which BBCO continued to run in its own right until CUB acquired the company in 1997.  CUB had closed the Ballarat Brewery in 1989 and regular commercial production of BALLARAT BITTER (which had been brewed in Melbourne since the 1980s) ceased in 1994.  

  4. During operational deployment in the Middle East in about 2005 the Australian navy frigate HMAS Ballarat searched for an official mascot and decided to adopt BALLARAT BERTIE, as had the corvette Ballarat 1 during WWII.  In 2006, following a suggestion by a member of parliament who had visited the frigate on operations, CUB released a special commemorative run of Ballarat Bitter for limited release in Ballarat.  In all, CUB brewed 10,000 cases of the beer (240,000 individual cans) which sold out within a very short period.

  5. In November 2011, CUB released 300 kegs of BALLARAT BITTER into 26 pubs and hotels throughout Ballarat.  This was the first time in 50 years that Ballarat Bitter had been available on tap.  BALLARAT BERTIE as well as the BALLARAT BITTER trade mark appeared on the tap badges in the hotels and pubs.  BALLARAT BITTER in a ‘classic heritage can’ was released into Dan Murphy’s stores throughout Victoria in November and December of the same year.

The Tooth’s marks

  1. There are five trade marks in this group, shown below:

9948 12786 42305[8] Tooth's
173634 457529

[8] The relevant period for the purposes of 92(4)(b) in respect of this trade mark is the three year period ending on 20 May 2011.

  1. Tooth’s Kent Brewery in Sydney was founded in 1835 and operated continuously in the heart of the city until 2005.  By 1910 the New South Wales beer market was dominated by three Sydney brewers – Tooth’s, Toohey’s and Resch’s.  Tooth’s took control of Resch’s brewing operations in 1929.  Tooth’s and Tooheys used the strategy of buying their own hotels in order to restrict beer sales to their own brands alone.  By the mid 1970s Tooth’s controlled 933 hotels and dominated beer sales in NSW.  Tooth’s KB LAGER was the largest selling beer in NSW in the late 1970s.

  2. In 1978 Tooth’s bought out the Courage breweries in Melbourne in a bid to improve its Victorian sales.  The venture was not a success and Tooth’s was also under pressure in NSW because it had failed to modernise quickly enough.  It was bought out by Adelaide Steamship Company in the early 1980s and in 1983 Adelaide Steamship sold the brewing business, including the Kent Brewery, to CUB.  CUB continued production of the popular Tooth’s brands such as KB LAGER, TOOTH’S OLD and RESCH’S PILSENER.  KB LAGER was brewed and sold up until the end of November 2011.  CUB has continued to make KENT OLD BROWN up until the present, with evidence provided of sales during the relevant period.  The beer has been brewed at one of CUB’s other breweries since the Kent Brewery closed in 2005. 

  3. CUB provided confidential information referring to plans for the release of a beer under one of Tooth’s heritage brands in June-July of 2013. 

The Bulimba marks

  1. There are four trade marks in this group.  They are shown in the table below along with an associated trade mark – the QB mark: 

35759 37316 Bulimba 37318 Top
217098 Gold Top 106919

  1. The original Bulimba Brewery was established in 1882 and in 1885 was sold to Queensland Brewery Ltd (‘QB’).  BULIMBA GOLD TOP was introduced to the market in 1898 and went on to become Bulimba’s most popular product.  QB acquired the Silverstream Brewery in Toowoomba in 1923 and built a new brewery on the site.  It began buying up hotels across Queensland in 1934 in order to guarantee distribution of its beers.

  2. Around 1960, CUB entered into an agreement with QB to brew BULIMBA GOLD TOP at its Cairns Brewery.  In 1961 CUB acquired all the interests of QB including all its hotels and breweries.  In the same year it acquired the Fitzroy Brewery in Rockhampton thus enabling it to produce BULIMBA GOLD TOP in four breweries in major centres across the state. 

  3. In 1992 CUB also bought out the Power’s beer brand and its Yatala Brewery.  In 1993 it closed the Bulimba brewery and moved brewing operations to Yatala.  Production of Bulimba products and GOLD TOP had been suspended by this time (though no date of suspension is given) as CUB was concentrating on the Powers brand. 

  4. CUB submitted that it released BULIMBA GOLD TOP as one of its ‘heritage releases’ in November 2011 in special edition cans and in Queensland only.  No evidence of quantities involved in the release has been provided. 

  5. The QB mark is an early version of the Queensland Brewery logo.  CUB states that an active company called Queensland Breweries Pty Ltd still operates within its group though it has not provided any evidence of use of the QB trade mark.

The NQ and Cairns marks

  1. There are five marks in this group, shown below:

56575[9] 153683 261041
1121877[10] 497121
(series mark)

[9] I note that registration 56575 is registered for goods in class 33 namely:  Fermented liquors and spirits.

[10] The removal application in respect of this trade mark is proceeding under the provisions of paragraph 92(4)(a).

  1. CAIRNS DRAUGHT and NQ LAGER were originally brewed at the Cairns Brewery.  The company was formed in 1924 as the Cairns Brewing Co Ltd and the brewery opened for business in 1925.  CAIRNS DRAUGHT was one of the company’s original beers.  In 1927 the company was reformed as Northern Australian Breweries Ltd, and was generally known as the ‘Great Northern Brewery’.  CUB bought out the company in 1931, improved and expanded the facilities and the brewery again became known as the Cairns Brewery.

  2. In 1933 CUB released NQ LAGER which survived in the market for a few years, went into hiatus and was brought back in the early 1960s.  The Cairns Brewery ceased brewing operations in Cairns in 1992 and production of both CAIRNS DRAUGHT and NQ LAGER was moved to Bulimba and subsequently to Yatala.  Brewing of NQ LAGER ceased shortly after the move though brewing of CAIRNS DRAUGHT continued on strongly until it ceased in 2004.  CUB finally vacated the Cairns Brewery site in 2009.

  3. CUB stated that it had plans for releases of both CAIRNS DRAUGHT and NQ LAGER in the near future following acceptance by a large liquor retailer of its proposal to supply heritage branded beers.  Confidential information about proposed releases of these two beers at a date in 2013 was provided shortly before the hearing took place.

Brisbane Bitter

  1. There are two trade marks in this group, shown here:

300006 411589 Brisbane Bitter

  1. CUB does not appear itself to be clear about when BRISBANE BITTER was introduced into the Queensland market, but suggests it happened in 1976 after the Bulimba Brewery was upgraded.  The beer was sold as draught beer, in long neck bottles, in stubbies and in cans.  Full time production of BRISBANE BITTER appears to have ceased in the 1990s. 

  2. BRISBANE BITTER was released into Queensland in cans through Dan Murphy’s and Woolworths Liquor outlets in late November 2011.

The Abbotsford marks

  1. There are eight marks in this group, shown below:

18894 30084 33775
54596 225429 225432
420564 Abbots Exxtra Light 564232
(series mark) 		Abbots; Abbots Lager

  1. CUB says that ABBOTS LAGER was introduced in 1904 and was brewed continuously until 1995.  For much of that time it was one of the highest selling beers in Melbourne.  It is named after the Abbotsford Brewery, established in 1904 by the Melbourne Co-operative Brewery, and purchased by CUB in 1924.  The brewery is one of CUB’s main breweries and for much of its existence has been the biggest brewery in the Southern Hemisphere.

  2. In the early days of the brewery it produced a range of Abbots beers, including ABBOTS DOUBLE EXTRA STOUT.[11]  It introduced ABBOTS EXXTRA LIGHT to the market in the 1980s

    [11] It also produced Melbourne Bitter Ale which became another important brand for CUB. 

  3. While regular production of ABBOTS LAGER ceased in 1995 a sister product, ABBOTSFORD INVALID STOUT, has remained on the market up until the present with labels which are almost unchanged since its introduction (though an actual introduction date has not been provided). 

  4. A special batch of ABBOTS LAGER was brewed in 2004 to mark the centenary of the brewery.  There was a further release of the beer in ‘special edition’ cans in November 2011, though the release was restricted to Victoria.

The Carlton marks

  1. There are 12 marks in this group, shown below:

52638

66331

67577

67578

228982

233692
233921 352488 352489
752208 Carlton Crest 752209 Carlton Star 752213 Carlton Stripe

  1. The Carlton Brewery is one of the six original breweries which amalgamated to form Carlton and United Breweries.  CARLTON DRAUGHT beer has been in production since the brewery was established in 1864.  It is one of CUB’s most popular beers in its own right and beers under the Carlton master brand enjoy a 15% market share.

  2. Annexure MJO-91 consists of a list of 33 different beers all of which include in their names the word Carlton and all which CUB has produced at various times since the brewery was established.  The beers shown above are included in the list.

  3. CUB runs Carlton Brewhouses at both its Yatala and Abbotsford breweries.  Visitors are able to learn about the brands and heritage of CUB, tour the brewery, learn about the making of beer as well as buy merchandise and a drink of Carlton beer.

  4. Other than information about the position of CARLTON DRAUGHT in the beer market in Australia, no information about the production of any others of the Carlton beers has been provided.

The Richmond marks

  1. There are three marks in this group, shown below:

[12] The relevant period for the purposes of 92(4)(b) in respect of this trade mark is the three year period ending on 23 November 2011

57474 127009 758333[12]

  1. The Richmond Brewery opened at a site on Church Street, Richmond in 1928.  The first beers produced were RICHMOND LAGER and RICHMOND BITTER, and within 12 months, despite the very parochial nature of beer sales in Australia at the time, both beers were being advertised and sold in far north Queensland.  RICHMOND PILSENER became available on draught throughout Australia in 1932.  RICHMOND beers were also exported to India, as well as being sold in Western Australia and New South Wales.  Other beers such as RICHMOND STOUT, RICHMOND BOCK and a TIGER BEER were also produced.  The brewery was very successful and its production peaked at five million gallons of beer per year.

  2. In 1961 the founder of the brewery passed away and CUB acquired the business in 1962.  As CUB already had several breweries in inner-city Melbourne, it closed the site almost immediately.  Production of the beers soon ceased.  However, in 1987, coinciding with the 25th anniversary of the closure of the Richmond Brewery, CUB released a special edition of RICHMOND LAGER, and further small releases followed in 1988 and 1989 as well as a release of RICHMOND TIGER BITTER, produced out of CUB‘s Kent brewery in Sydney.  Special editions of RICHMOND LAGER were issued in 1990, in 1992 and again in 1998.

  3. Another release occurred in 2008 to celebrate the 80th birthday of RICHMOND LAGER.  The press statement accompanying the release showed the following label as being used for the release:

Miscellaneous marks

  1. There are eight marks remaining in the group of 54 subject to the non-use applications and these are shown in the table below:

24686 56986 67579
67580 93751 119866
626214 626215

  1. CUB says that MELBOURNE BITTER ALE was one of the original products of the Abbotsford Brewery.  The label Registered as trade mark number 24686 originated at some time in the 1910s, and was used essentially unchanged until the 1960s, when it changed to a form very similar to the one which is currently used.  MELBOURNE BITTER is said to be currently the third highest selling beer in Victoria.

  2. As noted by Mr Cordiner in his submissions (and also by Mr Allen), the image for trade mark 56986 on the electronic Register is of very poor quality and it is difficult to see its features.  However, it was clear enough to show that it includes the word BOCK and the letters CUB as well as some pictorial features.  I have since located the actual trade mark as it was filed, which is reproduced in the table above.  No evidence of use of this mark has been provided.

  3. Similarly, no evidence of use of trade mark 67579, the VICTORIA LAGER label, has been produced.  However, it is appropriate to note that the registration of this trade mark carries an endorsement (described in the past as a ‘claim to vary’ endorsement) which allows the trade mark owner to substitute other descriptive words for the word ‘lager’ which appears in the mark.  This allows CUB to use the trade mark with the word ‘bitter’ substituted for ‘lager’.  The import of this comment will become clear later in this decision.

  4. McCracken’s City Brewery was one of the original six breweries which amalgamated in 1907 to form CUB.  In 2001 CUB provided a small batch of hand-labelled MCCRACKENS AUSTRALIA BITTER ALE to celebrate the reopening of the refurbished Young and Jackson Hotel in Melbourne’s CBD.  CUB says that it applied for additional protection of a McCracken’s mark in 2006 when it considered relaunching the brand as a full time proposition.  The idea did not, however, eventuate at the time.  CUB stated that it may consider releasing a McCracken’s beer at some time in 2013, details of which were confidential at the date of the hearing.

  5. CUB AUSTRALIAN BITTER ALE was a niche product but was in production for several decades and sold both in Australia and in overseas markets.  It was apparently available in the 1920s and up to at least 1954.  There do not appear to have been any recent releases of this beer.    

  6. The remaining two trade marks are the ‘tiger head’ marks, which CUB says are tied to the Cascade master brand.  CUB acquired the Cascade Brewery and the Cascade brand in 1993.  The ‘tiger head’ trade marks were used in connection with a beer from the brewery from March 1993 until November 1998.  A limited run of the beer may have been released in the mid 2000s but no hard information about this has been provided.  There was a proposal to release a run of CASCADE TIGER HEAD beer in mid 2010, but it did not proceed.  

Discussion and reasons

  1. As stated by the Full Court of the Federal Court of Australia in Austin, Nichols & Co Inc v Lodestar Anstalt[13] (‘Austin Nichols’) the purpose of Part 9 of the Act is the removal of unused trade marks from the Register. If a non-use application is not opposed, the trade mark concerned will be removed from the Register without further notice. The Registrar has no discretion in the matter. However, if a notice of opposition to the non-use application is filed, pursuant to section 101(3) the Registrar has the discretion to allow the trade mark to remain on the Register even if the ground on which the non-use application was made has been established. The Full Court in Austin Nichols stated at [28] that:

    The question to be asked is whether it was reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period.

    [13] (2012) 287 ALR 221 at [38]

  2. In his written submissions, Mr Cordiner for Elixir made the following comments:

    These oppositions explore the issue of non-use under the Trade Marks Act 1995. CUB is a famous Australian company with an extensive portfolio of trade marks amassed throughout the 20th and 21st centuries.  CUB’s collection of trade marks reads like a history of Australia’s brewing industry.  The principal issue for the Hearings Officer in this proceeding relates squarely to CUB’s approach to unused marks.  CUB maintains a trade mark portfolio not because it is using or intends to use each mark but because it fears the use of trade marks by others in a highly competitive market and hopes to stymie such competition by creating a thicket of trade mark registrations which may be of interest to other traders.

    CUB is engaged in a systematic approach of trade mark banking. The non-use sections of the Trade Marks Act 1995 are written specifically to enshrine public interest in having a Register of trade marks free from trade marks that are banked. Elixir’s principal contention is that the discretion to allow a company to maintain trade mark they are not using should not apply to CUB. Elixir intends to show the Hearings Office that there is a public and private interest in ensuring a multinational company like CUB uses its trade marks, or loses them, just like everyone else. Further, Elixir intends to show that some of the tactics employed by CUB by which it seeks to maintain its trade mark portfolio, such as limited non-commercial beer releases and refiling already Registered trade marks, are done in bad faith.

    Elixir and IPDC are new companies to the brewing industry in Australia.  They are companies that lie behind the new brewery launched by Philip Withers called Thunder Road Brewery.  This brewery is based in Brunswick in Victoria.  It launched in 2011 and has been very successful with its blend of new beers and historical beers.  Thunder Road Brewery currently brews a number of beers under historical trade marks and wishes to brew many more.  There is no suggestion that such conduct is causing any confusion in the market place or is anything other than good commercial practice on the part of a competitor of CUB. 

  3. As a general submission in respect of the non-use applications which are proceeding under the provisions of paragraph 92(4)(b), Mr Allen for CUB submitted the following:

    The owner's use of a trade mark must of course be use in good faith. It must be genuine commercial use as opposed to token or "sham" use.[14] 'Good faith use is "ordinary and genuine use judged by commercial standards".[15] Use must be a trading activity "pursued with the primary intention of deriving from it a trading profit coupled with a trading goodwill".[16] It must be use on a commercial scale, having regard to the standards of the relevant industry. However, there is no requirement that the use be substantial. Indeed, even a single instance of use during the relevant period - provided it is in good faith - may suffice to defeat a removal application.[17] It is established that a trade mark owners use will not be considered "in good faith" if it was motivated solely by a desire to shield the registration from attack on the grounds of non-use.[18] However, where the owners intentions were motivated by a genuine commercial purpose, the fact that the owner may also have intended to protect the registration against removal will not prejudice the owner.[19] The fact that use commences only after the owner realises the vulnerability of its registration does not render the use disingenuous.[20]

    [14] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261

    [15] Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 at 36, quoted by the High Court in E&J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 at [62].

    [16] Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72 at 83

    [17] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd [1987] VicSC 346

    [18] Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72

    [19] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261

    [20] New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 567 per Gummow J

  4. Of course, I am not only required to decide whether or not the relevant trade marks have been used in good faith, but also, in the case(s) of trade mark(s) where the allegation of non-use has not been rebutted, to decide whether or not to exercise the Registrar’s discretion and allow the unused trade mark(s) to remain on the Register.  The Full Court in Austin Nichols stated (at [38]):

    The purpose of part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.

  5. It is appropriate now to consider the grounds on which the non-use applications are based before it will be necessary to consider the Registrar’s discretion.

Paragraph 92(4)(a) - intention to use in good faith

  1. The non-use application with respect to registration 1121877 is based on the ground contained in paragraph 92(4)(a). In order to rebut an allegation of non-use pursuant to that paragraph, section 100 provides that the removal opponent must establish that:

  • at the time the trade mark application was filed the trade mark owner had an intention in good faith to use the trade mark or

  • there had been use of the trade mark in good faith in the period ending one month prior to the non-use application being filed. 

  1. Section 100 puts the initial onus on the removal opponent. However, in Structureco Inc v Starite Distributors Pty Ltd[21] the Registrar’s delegate found that a sworn statement that the applicant for registration intended, at the time of filing, to use the trade mark in good faith shifts the onus to the removal applicant to substantiate the alleged lack of intention.

    [21] (2000) 49 IPR 209

  2. In respect of its intention to use the impugned trade mark, CUB (in O’Keefe 3) states the following (at paragraph 52):

    In August 2010, following a review of its heritage brands, CUB filed a fresh application for CAIRNS DRAUGHT with the clear intention of using that mark as a beer brand.  It was not necessary to file a fresh application for NQ LAGER as trade mark protection over that brand was stronger and CUB also had a clear intention of using the NQ marks as beer brands.

    In May 2011 CUB approached the two largest liquor retailers in Australia, who together have over half the liquor retail market and offered to supply them with several heritage brands as part of a celebration of heritage proposition.  Amongst other things, the discussions focussed on sales targets, price points, recipes and branding.  One retailer declined the opportunity but the other accepted the offer and the process to produce these products is now underway.  There are approximately 10 brands that are part of the project, CAIRNS DRAUGHT and NQ LAGER amongst them.  

  3. This statement is sufficient to shift the onus from CUB to Elixir.  Elixir submitted:

    The NQ LAGER (device) Mark was not filed in good faith as the sole purpose for filing the new application was to secure registration of the mark in the circumstances where it knew that its Australian trade mark no 261041 for the exact same device, registered from 10 August 1972 in class 32 for “Beer, ale and porter” was vulnerable to removal from the Register on the basis of non-use.

    CUB claims that its production of beer under the NQ LAGER brand ceased in 1993 (although no corroborating evidence has been filed to substantiate this date).  On CUB’s own evidence, in 2006 a Cairns businessman appeared in the Cairns Post announcing that he was planning to launch a beer named NQ LAGER.  CUB has not produced the article in evidence and does not specify the exact date of publication of the article in 2006.

    The clear inference from this evidence is that CUB filed the NQ LAGER (device) Mark purely for defensive purposes to counter the potential removal for non-use of the registered mark and to block any potential trade mark application for NQ LAGER filed by the interested third party.  CUB also appears to have filed the new application in 2006 to strengthen its position in its negotiations with the interested parties throughout 2007. 

  4. Registration 1121877 was filed on 4 July 2006 in class 32 for “beers, preparations for making beers; brewing kits”. There is an assumption inherent in the filing of a trade mark application that the trade mark owner intends to use the trade mark and this is made quite clear by the wording of section 27 of the Act which specifies that a person who claims to be the owner of the trade mark may apply for registration if they are using or intend to use the trade mark in relation to the relevant goods.

  5. In Suyen Corporation v American International Limited[22] Dodds-Streeton J said (at [193]):

    Historically, an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists.  In Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (“Aston”), Fullagar J stated at 401:

    I do not regard his Honour [Dixon J in Shell Co] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.

    [22] [2010] FCA 638

  6. Dodds-Streeton J went on to refer to the Full Court decision in Food Channel[23]:

    [I]n Food Channel, the Full Court affirmed, in reliance on Aston, that “the very act of making the application is, without more, sufficient to establish the requisite intention” ([67]).  See also Television Food[24] at [95] where Collier J stated that:

    Making an application for registration is prima facie evidence of an intention to use: Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401 … per Fullagar J, Kimberly-Clark Worldwide Inc v Goulimis …78 IPR 612 …

    The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of the application.

    [23] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58

    [24] Television Food Network GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271

  7. Elixir has stated its belief that the application for registration was filed purely as an exercise in protecting an unused trade mark or in strengthening CUB’s position in negotiations with interested parties throughout 2007 but it has provided no hard evidence to substantiate the claim and give body to its belief.  While CUB has not provided any evidence of use of the trade mark its actions subsequent to filing in discussing heritage releases of the beer with a large liquor retailer in 2011 and the planned release of the beer in mid-2013, give rise to the inference that it did intend to use the trade mark in good faith at the time it filed the application for registration. 

  8. CUB provided a sworn statement that it intended to use the trade mark at the time of its filing, which shifted the onus to Elixir to demonstrate that the intention did not exist.  I find that Elixir has not met that onus.  Therefore the ground pursuant to paragraph 92(4)(a) to remove trade mark 1121877 has not been established.

Paragraph 92(4)(b) – use in the relevant period

  1. Paragraph 92(4)(b) does not go to the intention of the applicant at the time of applying for registration of the trade marks, but deals with actual use of the trade marks in Australia after five years had elapsed since they were Registered.[25]  I must first consider whether or not the respective trade marks have been used in good faith during the relevant period and, if not, whether there were any obstacles to that use.[26]

    [25] See section 93 of the Act.

    [26] See paragraph 100(3)© of the Act.

Evidence of Use

  1. It is clear from my brief summaries of the evidence CUB has provided that it has not substantiated that all of the impugned trade marks have been used within the relevant period.  In fact, I am only satisfied that the trade mark of registration 457529 – the KENT OLD BROWN trade mark – was used within the relevant period as was a variation of registration 173634 - the TOOTHS KB trade mark, at least until November 2011 when it was put into ‘hiatus’.  There are others of the attacked trade marks which may have had some slight use within the relevant period, but the evidence is not specific enough for me to be satisfied that this was the case.

  2. CUB places reliance on its occasional ‘heritage releases’ as support for the claim that its beer marks are either still in use or that it still has a firm intention to use them in the future.[27]  As mentioned previously, CUB made a special release of BALLARAT BITTER (with BALLARAT BERTIE on the label) in 2006.  A further release was made in late November – early December 2011. 

    [27] A list of the heritage releases as provided in the evidence and CUB’s submissions is set out at Annexure 4 to this decision.

  3. Others of the beers, including RICHMOND LAGER (including the TIGER HEAD device) BULIMBA GOLD TOP, NQ LAGER, CAIRNS DRAUGHT; ABBOTS LAGER, BRISBANE BITTER and a MCCRACKEN’S beer were either released in restricted quantities in late 2011 or evidence about proposed releases for 2013 was provided for the oppositions.

  4. Elixir submitted that much of the evidence of use CUB had provided should be discounted because it does not demonstrate use of the exact trade marks which are under attack.  I agree that it is often the case that the demonstrated use is not of the exact ‘heritage’ trade mark.  However, while the exact get-up of the ‘heritage’ trade mark may not have appeared on the newly released goods, the use that CUB has shown includes in each case the essential feature of the trade mark, namely the words which identify the particular beers. 

  5. Subsection 7(1) of the Act is relevant in this matter, and provides:

    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court 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.

  6. In Woolworths Ltd v BP plc [2006] FCAFC 132 the court commented at [48]:

    The analysis, in any case, of the “identity of the trade mark” will not necessarily be straightforward: see Re British Hoist & Crane Co Ltd’s Trade Mark (1955) 72 RPC 66; Otrivin Trade Mark [1967] RPC 613 (Otrivin); Pelican Trade Mark [1978] RPC 424 (Pelican) and Re Lawson (2001) AIPC 91-693 (Re Lawson). Bound up in the notion of “identity” is the feature or features by which the mark will be recognised as distinguishing the proprietor’s goods or services from those of others. When the mark is a word or device or combination thereof, any change that affects what is conveyed in terms of distinctiveness will affect the identity of the mark.

  7. In most of the heritage marks, the name of the beer is the essential feature of the trade mark.  It is also significant that, in some of the heritage marks, features other than the name of the beer have been disclaimed.  The identity of the trade marks thus rests in the identifying names of the beers, and alteration of less prominent features does not automatically change the identity of the trade mark.

  8. Elixir has also submitted that any use which has been demonstrated is both outside the relevant period and arguably ‘colourable’ or token use designed solely for the purpose of defeating the non-use attacks.  Elixir submitted that the heritage releases were too small in volume to be regarded as real commercial use.

  9. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 (‘Gallo’), the Court said (at 64):

    Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute “ordinary and genuine” use judged by commercial standards.  It has been recognised by the Court of Justice of the European Communities, dealing with the expression “genuine use” as used in Arts 10 and 12 of Directive 89/104 of the Council of the European Communities, that use of a mark “need not … always be quantitatively significant for it to be deemed genuine”.  On the facts here, it is not necessary to decide whether a single use of the Registered trade mark in good faith would have been sufficient to resist removal.

    A commercial quantity of wine, some 144 bottles was imported and offered for sale under the Registered trade mark by Beach Ave during the statutory period.  Some 41 sales during that time were proven by reference to invoices and tax paid.  There is no suggestion in the evidence that the offering for sale and selling either overseas or in Australia was for any purpose other than making profit and establishing goodwill in the Registered trade mark.      

  10. I note the Court’s decision that 144 bottles of wine was regarded as a commercial quantity of wine for the Australian market.  The volumes of beer to which CUB attests in respect of its heritage releases are many times that amount, and even given that beer drinkers and wine drinkers have different buying and drinking habits as far as quantity goes, if not in other ways, the volumes quoted are still commercial quantities.  Given also that CUB states that the heritage releases are often sold at a premium price in comparison with those beers which are constantly available, there can be little doubt that the profit motive also forms part of the chosen releases.  I am satisfied that CUB’s demonstrated trade mark use can be regarded as real commercial use.  However, I also note that most of this use occurred outside of the relevant periods.  Whether this use can be taken into account is a matter which I will pursue further when considering the Registrar’s discretion later in this decision.

100. Elixir also submitted that CUB, as ‘Australia’s largest brewing business’, would adhere to and maintain very stringent record keeping obligations, particularly when it was a publicly listed company.  It used this argument whilst commenting on the lack of production volume, sales and advertising figures for CUB’s various beers and also in respect of CUB’s failure to provide detailed documentation supporting its future plans for the release of its heritage beers.  Elixir claimed that if there were plans for future releases, these could have been tendered as evidence in the proceedings, and that the lack of this information should cause me to draw the inference that no such plans exist.

Annexure 2

Removal opponent’s evidence
Declarant Date Made Exhibits/Annexures Referred to as Trademark group
Mathew Jordan O’Keefe 23 June 2011 MJO-1 to MJO-12 O’Keefe 1 Abbots Lager

Mathew Jordan O’Keefe

 23 June 2011 MJO-13 to MJO-27 O’Keefe 2 Tooth’s
Kent

Mathew Jordan O’Keefe

 23 June 2011 MJO-28 to MJO-49 O’Keefe 3 Cairns Draught
NQ Lager

Mathew Jordan O’Keefe

 23 June 2011 MJO-50 to MJO-55 O’Keefe 4 Bulimba

Mathew Jordan O’Keefe

 23 June 2011 MJO-56 to MJO-78 O’Keefe 5 Ballarat Bitter/ Bertie

Mathew Jordan O’Keefe

 25 July 2011 MJO-79 to MJO-96 O’Keefe 6 Carlton

Mathew Jordan O’Keefe

 23 Aug 2011 MJO-97 to MJO-120 O’Keefe 7 Richmond

Mathew Jordan O’Keefe

 22 Nov 2011 MJO-121 to MJO-124 O’Keefe 8 Masthead

Mathew Jordan O’Keefe

 23 Nov 2011 MJO-125 to MJO-131 O’Keefe 9 Tigerhead

Mathew Jordan O’Keefe

 22 Nov 2011 MJO-132 to MJO-136 O’Keefe 10 Ballarat Bertie

Mathew Jordan O’Keefe

 23 Nov 2011 No Annexures O’Keefe 11 QB monogram

Mathew Jordan O’Keefe

 23 Nov 2011 MJO-137 to MJO-151 O’Keefe 12 Brisbane Bitter

Mathew Jordan O’Keefe

 23 Nov 2011 MJO-152 to MJO-158 O’Keefe 13 Aust. Bitter Ale

Mathew Jordan O’Keefe

 23 Nov 2011 MJO-159 to MJO-164 O’Keefe 14 McCracken’s

Mathew Jordan O’Keefe

 23 Nov 2011 MJO-165 to MJO-200 O’Keefe 15 VB
Victoria Lager

Mathew Jordan O’Keefe

 23 Jan 2012 MJO-201 to MJO-205 O’Keefe 16 SAB Miller takeover

Mathew Jordan O’Keefe

 23 Feb 2012 MJO-206(Confidential) to MJO-214 O’Keefe 17 Melbourne Bitter

Mathew Jordan O’Keefe

 23 Feb 2012 MJO-215 to MJO-222 O’Keefe 18 Heritage releases

Mathew Jordan O’Keefe

 24 Sep 2012 MJO-223 to MJO-234 O’Keefe 19 Evidence in reply to Withers 1-6

Mathew Jordan O’Keefe

 28 Mar 2013 MJO-235(Confidential)  and
 MJO-236(Confidential) 		O’Keefe 20
(Further evidence) 		Proposed heritage releases
Roland Anthony Kaldor 23 June 2011 RK-1 and RK-2 Brewing Heritage
Paul Robert Donaldson 23 June 2011 PD-1 to PD-3 Donaldson 1 General CUB info
Paul Robert Donaldson 14 Sep 2012 As Above Donaldson 2 General CUB info
Owen John Malone 14 Sep 2012 As Above CUB info
Grant William Peck 21 Sep 2012 As Above CUB info
Removal applicant’s evidence
Declarant Date Made Exhibits/Annexures Referred to as Trade marks referred to
Philip Craig Withers 29 November 2010 PCW-1 to PCW-5 Withers 1 Ballarat Bitter
Philip Craig Withers 21 June 2011 PCW-1 to PCW-6 Withers 2 Tooth’s group
Philip Craig Withers 21 June 2011 PCW-1 to PCW-6 Withers 3 Abbots/Abbotsford
Philip Craig Withers 21 June 2011 PCW-1 to PCW-6 Withers 4 Ballarat Bertie
Philip Craig Withers 21 June 2011 PCW-1 to PCW-7 Withers 5 Masthead
Philip Craig Withers 23 Sep 2011 PCW-1 to PCW-9 Withers 6 All – Evidence in answer to non-use opposition
Philip Craig Withers 21 June 2012 PW-R1 to PW-R11 Withers 7 Evidence in reply

Annexure 3

IPDC trade mark applications

All applications were filed on 7 September 2010.  All are claiming ‘beer’ in class 32.

Appn No.

Trade Mark

1382026

1382027

1382028

1382029

1382030

1382031

1382032

1382033

1382034

1382035

NQ

1382036

NQ LAGER

1382037

BALLARAT BERTIE

1382038

BALLARAT BETTY

1382039

VOLUM

1382040

KENT

1382041

BULIMBA

1382042

1382043

1382044

TOP

1382045

GOLD TOP

1382046

ORIGINAL GOLD TOP

Annexure 4

Heritage releases of CUB beers

Beer name

Dates released

RICHMOND LAGER

1987, 1988, 1989, 1990, 1998, 2008 and proposed for 2013

RICHMOND LAGER

RICHMOND TIGER BITTER

1987, 1988, 1989, 1990, 1992, 1998, 2008, 2011

Late 1980s

ABBOTS LAGER

1996, 2004, 2011/12

MELBOURNE BITTER

1996

MCCRACKEN’S AUSTRALIAN BITTER ALE

2001

MCCRACKEN’S

Proposed for 2013.  TM re-filed in 2006 (1141252) when reconsidered for a heritage launch - launch not followed through.

VICTORIA BITTER ORIGINAL ALE

2004

TIGER HEAD

Mid 2000s (unverified)  Proposal to release in 2010 but not followed through

Beer name

Dates released

BALLARAT BITTER

2006, 2011/12

BULIMBA GOLD TOP

2011/12

BRISBANE BITTER

2011/12

RESCHS DRAUGHT

2011 (heritage cans for a beer in full-time production)

CASCADE DRAUGHT

2011 (heritage cans for a beer in full-time production)

NQ LAGER AND CAIRNS DRAUGHT

Proposed for 2013

TOOTH’S WHITE HORSE

Proposed for 2013

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Cases Citing This Decision

12

Lendlease Corporation Limited v Civil & Civic Group Pty Ltd [2025] ATMO 153
Jack Goldberg v Nike Innovate CV [2025] ATMO 32
Aitken Enterprises Pty Ltd v The Lincoln Electric Company [2024] ATMO 179
Cases Cited

12

Statutory Material Cited

0

Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39
Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15