Cub Pty Ltd v Jack Singleton - [2023] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by CUB Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Jack Singleton to remove trade mark numbers 875717 BLUETONGUE PREMIUM LAGER, 882968 BLUETONGUE GINGER BEER, 891611 bluetongue and device, 1009417 BLUETONGUE, 1230042 bluetongue and device, 1230043 bluetongue and device, 1388528 Bluetongue PREMIUM LAGER and device, 1388530 Bluetongue PREMIUM LIGHT and device, 1642685 BLUETONGUE – all in class 32 in the name of CUB Pty Ltd

Delegate:

Katrina Brown

Representation:

Removal Opponent: Tim Allen (Principal Trade Mark Attorney and IP Counsel) of Allens Patent & Trade Mark Attorneys

Removal Applicant: Not represented

Decision:

2023 ATMO 17

Trade Marks Act 1995 (Cth) – applications under section 92(4)(b) – complete removal sought in respect of each registration – use within the relevant period demonstrated for 891611, 1230042, 1388528 and 1388530 – discretion exercised to retain 875717, 882968, 1009417 and 1230043 in respect of all goods – discretion exercised to retain 1642685 in respect of some goods

Background

Cub Pty Ltd (‘Removal Opponent’) is the registered owner of the following nine Australian trade mark registrations (‘Registrations’):

TM Number	Trade Mark	Registered goods	Short Title
875717	BLUETONGUE PREMIUM LAGER	Beer	717 Mark
882968	BLUETONGUE GINGER BEER	Alcoholic brewed ginger beer	968 Mark
891611	Beer	611 Mark
1009417	BLUETONGUE	Beers, including alcoholic ginger beer	417 Mark
1230042	Beers, including alcoholic ginger beer	042 Mark
1230043	Beers, including alcoholic ginger beer	043 Mark
1388528	Beers, including alcoholic ginger beer	528 Mark
1388530	Beers, including alcoholic ginger beer	530 Mark
1642685	BLUETONGUE	Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages	685 Mark

On 27 August 2020, Jack Singleton (‘Removal Applicant’) filed a removal application in respect of the 417 Mark. On 17 April 2021, the Removal Applicant filed removal applications in respect of the 717 Mark, 968 Mark, 611 Mark, 042 Mark, 043 Mark, 528 Mark, 530 Mark and 685 Mark (‘Remainder of the Registrations’). Each removal application sought complete removal under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’).
The Removal Opponent filed Notices of Intention to Oppose each removal application, followed by Statements of Grounds and Particulars. In turn, the Removal Applicant filed Notices of Intention to Defend each removal application.
In due course, the parties filed evidence in respect of each removal application. The Removal Opponent filed the following declarations as evidence in these matters:

Declaration of Timothy Charles Leoncelli (Head of Legal for the Removal Opponent) made on 12 April 2021 with Exhibits TCL-1 to TCL-11 (‘Leoncelli 1’);
Declaration of David Stingl (General Manager of Removal Opponent) made on 15 September 2021;
Declaration of Andrew Joseph Davis (Science & Technology Portfolio Manager of the Removal Opponent) made on 15 September 2021 with Annexures AJD-1 to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 17
Decision Date: 13 February 2023

CaseChat Overview and Summary

Cub Pty Ltd (‘Removal Opponent’) applied to oppose applications by Jack Singleton (‘Removal Applicant’) to remove nine trade mark registrations from the Register of Trade Marks under section 92(4)(b) of the *Trade Marks Act 1995* (Cth). The applications sought complete removal of the trade marks, which were all in class 32 and related to beverages, on the grounds of non-use. The delegate of the Registrar of Trade Marks heard the matters together.

The delegate was required to determine whether the Removal Opponent had established use of the trade marks in Australia during the relevant three-year periods preceding the removal applications. If use was not established, the delegate then had to consider whether to exercise discretion under section 101(3) of the Act to retain the trade marks on the Register, even in the absence of proven use. The onus was on the Removal Opponent to rebut the allegations of non-use and to satisfy the delegate that it was reasonable not to remove the trade marks.

The delegate found that the Removal Opponent had not established use of the trade mark numbered 875717 BLUETONGUE PREMIUM LAGER within the relevant period, as evidence indicated use ceased in 2014 and any reintroduction occurred after the relevant period for that mark. However, the delegate was satisfied that the supply and sale of ‘Bluetongue beer’ at the Welcome to Brunswick brewery and beer garden from November 2020 to January 2021 constituted sufficient use for trade marks numbered 891611 bluetongue and device, 1230042 bluetongue and device, 1388528 Bluetongue PREMIUM LAGER and device, and 1388530 Bluetongue PREMIUM LIGHT and device. This use was considered real and genuine, despite being for a limited period and quantity, and was deemed to constitute use of altered marks under section 100(3)(a) of the Act.

The delegate exercised discretion to retain trade marks numbered 875717 BLUETONGUE PREMIUM LAGER, 882968 BLUETONGUE GINGER BEER, 1009417 BLUETONGUE, and 1230043 bluetongue and device in respect of all goods, and trade mark 1642685 BLUETONGUE – all in class 32, in respect of some goods. This decision was based on the purpose of Part 9 of the Act, which seeks to protect the integrity of the Register and consumer interests while accommodating the interests of registered trade mark owners where reasonable. The delegate was satisfied that it was reasonable not to remove these specific trade marks from the Register.

Orders