Cub Pty Ltd v Jack Singleton
[2023] ATMO 17
•13 February 2023
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 AJD-2;
Declaration of Daryl MacGraw (General Manager of The Marsden Brewhouse) made on 15 September 2021;
Declaration of Timothy Charles Leoncelli made on 23 December 2021 (‘Leoncelli 2’);
Declaration of Jackie Shann (General Manager of the Welcome to Brunswick Brewery and Beer Garden) made on 23 December 2021 (‘Shann Declaration’);
Declaration of Andrew Joseph Davis made on 21 December 2021 with Annexures AJD-1 to AJD-14 (‘Davis 1’); and
Declaration of Andrew Joseph Davis made on 10 June 2022 with Annexure AJD-1 (‘Davis 2’).
The Removal Applicant filed the following declarations as evidence in these matters:
Declaration of Jack Patrick Singleton (Removal Applicant) made on 30 June 2021 with Annexures A1 to A10 (‘Singleton 1’); and
Declaration of Jack Patrick Singleton made on 10 April 2022 with Annexures A1 to A10 (‘Singleton 2’).
Once the time allowed for filing evidence ended, the Removal Opponent requested to be heard. The Registrar of Trade Marks (‘Registrar’) directed that the matters be heard together and that the evidence filed in each matter would be considered (as relevant) against any of the other matters.
The hearing was held by me, a delegate of the Registrar, on 14 November 2022. The Removal Opponent was represented by Tim Allen (Principal Trade Mark Attorney and IP Counsel) of Allens Patent & Trade Mark Attorneys. The Removal Applicant was not represented at the hearing and did not file written submissions.
The relevant statutory provisions
Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Section 92(4)(b) provides:
(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.
I note that a removal application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the trade mark application.[1] I confirm that the filing date of each of the Registrations predates the relevant removal application by more than five years.
[1] Act s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018.
In these matters, the Removal Applicant alleges that the Removal Opponent did not use any of the Registrations in Australia in relation to the registered goods at any time in the three-year period ending on 27 July 2020 in respect of the 417 Mark, and the three-year period ending on 17 March 2021 for the Remainder of the Registrations.
Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The relevant standard of proof is on the balance of probabilities.[2] The allegation can be rebutted by establishing that the Removal Opponent, or an authorised user:
used the relevant trade mark in Australia during the three-year period in relation to the registered goods;[3] or
did not use the relevant trade mark because of circumstances that were an obstacle to the use of the trade mark during the three-year period.[4]
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Act s 100(3)(a).
[4] Ibid s 100(3)(c).
The ‘use’ required to be demonstrated is ‘use as a trade mark’. The extent of use required is not onerous and a ‘relatively small amount of use’ may be sufficient to rebut an allegation of non-use.[5] Potentially, a single bona fide use of a trade mark during the relevant period may be sufficient to prevent removal.[6]
[5] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).
[6] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
In accordance with s 101 of the Act if the requisite use is not established, I may decide to remove the relevant trade mark from the Register in respect of any, or all, of the goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the trade mark.
Discussion
The first issue to be determined is whether the Removal Opponent has established that it used any of the Registrations in Australia in relation to the registered goods during the relevant three-year period.
The evidence before me demonstrates that the Removal Opponent (or its predecessor/s in title) used various iterations of the Registrations in respect of beer from 2003 to 2014. The Removal Applicant’s evidence contains third party media articles[7] which suggest that the Removal Opponent ceased using the ‘Bluetongue brand’ in 2014, well before either of the relevant three-year periods. The Removal Opponent does not claim otherwise. Rather, it asserts that the ‘Bluetongue brand’ was rested from 2014 and reintroduced into the market in November 2020.
[7] See, e.g., Mark Hawthorne, ‘SABMiller kills of John Singleton’s Bluetongue beer’, The Sydney Morning Herald (online, 23 January 2014) < Richard Baines, ‘Bluetongue Brewery closure: Questions raised about SAB Miller’s decision to shut brewer’, ABC News (online, 25 January 2014) <>
At this point it is convenient to note that any use in November 2020 and onwards, is after the relevant three-year period in respect of the 417 Mark. Accordingly, the Removal Opponent cannot establish that it used the 417 Mark within the relevant three-year period.
Was there use of the Remainder of the Registrations during the relevant three-year period?
The Removal Opponent submits that in November 2020 (which is within the relevant three-year period in respect of the Remainder of the Registrations) it supplied ‘Bluetongue beer’ in kegs to the Welcome to Brunswick brewery and beer garden (‘WTB’) in Melbourne, Victoria. In Davis 1, Mr. Davis declares that the beer was brewed under the supervision of the Removal Opponent’s head brewer using a substantially similar recipe to that used for ‘Bluetongue beer’ between 2003 to 2014. Mr. Davis declares that the beer was sold at the WTB under the Bluetongue brand from November 2020, noting that the product sold out in a matter of weeks.
The supply and sale of ‘Bluetongue beer’ in November 2020 is corroborated by Mr. Shann, the General Manager of the WTB. Mr. Shann declares that ‘Bluetongue beer’ was sold at the WTB from 25 November 2020. Annexed to the Shann Declaration is an extract from the point-of-sale system at the WTB. The extract is a record of the sales of ‘Blue Tongue Lager’ at the WTB on 25 November 2020 to 7 January 2021 with a total of 149 units sold. Furthermore, Mr. Shann declares that the ‘Bluetongue beer’ was dispensed from a beer tap with the following badge (as viewed from the customer’s side of the bar):
This is supported by Leoncelli 1 and Leoncelli 2 in which Mr. Leoncelli declares that he purchased a pint of ‘the Opponent’s BLUETONGUE branded beer’ at the WTB on 27 November 2020, and that it was dispensed from a beer tap badged as shown above.The Removal Applicant raises two main criticisms of the use at the WTB. Firstly, Singleton 1 and Singleton 2 state that ‘Bluetongue beer’ was not available at the WTB on 28 January 2021, when a colleague of the Removal Applicant attended the venue. This fact does not contradict the Removal Opponent’s evidence. The evidence of the point-of-sale records only substantiate sales of ‘Blue Tongue Lager’ at the WTB from 25 November 2020 to 7 January 2021; the last documented sale being some 20 days prior to the Removal Applicant’s colleague attending the venue. Furthermore, Davis 1 states that the Removal Opponent’s beer sold out in a matter of weeks. As such, it is reasonable to conclude that the WTB had sold out of the ‘Blue Tongue Lager’ by 28 January 2021.
Secondly, the Removal Applicant draws my attention to the fact that the use at the WTB post-dates the removal application in respect of the 417 Mark. Provided that the use of the trade mark is ‘real commercial use’ the motives of the Removal Opponent are largely irrelevant. In this respect, I note the following observation of Nicholas J in Lodestar Anstalt v Campari America LLC:
Use of a trade mark will still be use in good faith even if engaged in for the sole purpose of protecting the owner’s trade mark registration from attack for non-use provided that the use is real and genuine.[8]
[8] [2016] FCAFC 92, [120].
There is nothing before me to establish that the use in connection with the WTB was fictious, contrived or colourable. Whilst the use at the WTB was only for a number of weeks and the Removal Opponent has only substantiated that 149 units were sold; this does not mean that the use was something other than real and genuine. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd, the High Court observed that ‘a relatively small amount of use may be sufficient to constitute “ordinary and genuine” use judged by commercial standards’.[9] In that case, it was held that 144 bottles constituted a commercial quantity of wine and amounted to use in good faith.[10]
[9] [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ) (citation omitted).
[10] Ibid [65] (French CJ, Gummow, Crennan and Bell JJ).
Overall, I am satisfied that the supply to, and sale of the Removal Opponent’s beer at the WTB from 25 November 2020 to 7 January 2021 is sufficient to demonstrate use of the 042 Mark within the relevant period. Furthermore, the use shown in [18] of this decision, constitutes use of the 611 Mark, 528 Mark and 530 Mark (‘Aforementioned Marks’) with additions or alterations that do not substantially affect their identity.[11] In this respect, I consider the essential features of the trade mark used on the beer tap and each of the Aforementioned Marks, to be that of a stylised representation of a lizard, with an extended blue tongue, perched above the distinctive word ‘bluetongue’ in an identical stylised font. The differences in the stylisation of the lizard, such as the direction it is facing, are minor and any additional words are wholly descriptive in relation to beer.
Was there an obstacle to use of any of the Registrations?
[11] Act s 100(3)(a).
The Removal Opponent has not submitted that there was an obstacle to use of any of the Registrations during the relevant three-year period. Nor does any of the information before me suggest that an obstacle prevented use of any of the Registrations during the relevant three-year period.
Should the Registrar’s discretion be exercised?
Section 101(3) of the Act provides:
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.
In these matters, the question is whether it is reasonable not to remove the 717 Mark, 968 Mark, 417 Mark, 043 Mark and the 685 Mark, even though the Removal Opponent did not establish that it had used these trade marks during the relevant three-year period.[12]
[12] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ) (‘Austin’).
The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove these trade marks.[13]
[13] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
The discretion conferred by s 101 is broad and is limited only ‘by the subject-matter, scope and purpose of Part 9 of the Act’.[14] In Austin, Nichols & Co Inc v Lodestar Anstalt, the purpose of Part 9 of the Act was expressed as follows:
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.[15]
[14] Austin (n 12) [35].
[15] Ibid [38].
A range of circumstances may be considered in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy me that it is reasonable to exercise the discretion.[16]
[16] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J).
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court summarised the range of factors that have been held to be relevant to the exercise of the discretion:
The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[17]
Abandonment
[17] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).
The parties disagree as to whether there has been abandonment of the ‘Bluetongue brand’. In Singleton 1 and Singleton 2, the Removal Applicant states that the Removal Opponent abandoned the brand in 2014 when it ceased making the product. To support this position, the Removal Applicant relies on third party media articles from 2014 in which representatives of the Removal Opponent (or its predecessor/s in title) indicated that Bluetongue would be phased out and discontinued as a brand. The Removal Applicant also refers to online enquiries in August 2020, in which employees of the Removal Applicant stated that Bluetongue was not part of the Removal Opponent’s product range (notably, these enquiries were made prior to November 2020, when the product was reintroduced into the market).
For its part, the Removal Opponent submits that the ‘Bluetongue brand’ was not abandoned. The Removal Opponent asserts that the brand was rested, and at all times remained a valuable asset which it intended to reintroduce into the market.
Importantly, abandonment requires more than simply non-use of the relevant trade mark. It requires an affirmative intention to lose the right to ownership.[18] As such, discontinuation or phasing out of a brand is not necessarily the equivalent of abandonment. In this respect I note the following observation in Rael Marcus v Sabra International Pty Limited:
It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use. The connection in the course of trade denoted by it will not immediately be forgotten. That connection may be valuable, and it remains open to the proprietor to resume the use of the mark. Unless he has actually abandoned the mark, its use by another may amount to an appropriation of the benefit of the good name acquired by the mark over an earlier period of years.[19]
[18] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA [1988] FCA 553, [9] (Bowen CJ).
[19] [1995] FCA 1059, [16] (Burchett J).
I am not satisfied that the Removal Opponent abandoned the ‘Bluetongue brand’. As detailed below, I am satisfied that there is residual reputation in the ‘Bluetongue brand’. Additionally, the Removal Opponent has a history of resting brands for extended periods of time and reintroducing them into the market as special releases. This practice was acknowledged in CUB Pty Ltd v Elixir Signature Pty Ltd,[20] an earlier decision of the Registrar involving the Removal Opponent. The resting of the brand in 2014 and its subsequent reintroduction into the market from November 2020, is consistent with the established practices of the Removal Opponent.
Residual reputation
[20] [2013] ATMO 74.
The evidence before me demonstrates that the Removal Opponent (or its predecessor/s in title) had a substantial reputation in the ‘Bluetongue brand’ in respect of beer from 2003 to 2014. The following is a snapshot of the material which goes towards demonstrating the qualitative and quantitative dimensions of the reputation in the ‘Bluetongue brand’:
The Bluetongue Brewery was established in 2003 in Cameron Park, Hunter Valley, New South Wales. It produced a range of beers including Bluetongue Premium Lager, Bluetongue Pale Ale, Bluetongue Premium Light, Bluetongue Vintage Ale, Bluetongue Black Ale, and Bluetongue Alcoholic Ginger Beer.
By 2008, the Bluetongue Brewery was producing approximately six million litres of beer per annum, all of which were sold under the ‘Bluetongue brand’.
In 2010, the Bluetongue Brewery moved to a larger custom-built facility in Warnervale, New South Wales. Third party media articles report that this facility was the second largest brewery in New South Wales with the capacity to generate approximately fifty million litres per annum.
Beer bearing the ‘Bluetongue brand’ was sold continuously from 2003 to 2014. The beer was sold throughout Australia. It was available through national retailers such as Dan Murphy’s, and at bottle shops and on tap in pubs. Third party media articles report that it was sold at more than 5700 bottle shops and on tap in 400 pubs.
Bluetongue beer won various awards including the Craft Beer Award at the 2008 Australian Liquor Industry Awards and silver in the Australian Style Lager Draught and Reduced Alcohol Lager Draught categories at the Australian International Beer Awards in 2012.
The ‘Bluetongue brand’ was promoted online via websites, forums, social media, and YouTube. It has also been featured in third party media articles. Additionally, from 2006 to 2014, the Removal Opponent (or its predecessor/s in title) held the naming rights and exclusive pouring rights at the Central Coast Stadium in Gosford, New South Wales (a large venue which hosts various events including nationally televised sporting matches). During this time, the stadium was named ‘Bluetongue Stadium’.
The ‘Bluetongue brand’ consists of iterations of the various Registrations. Importantly, the word ‘Bluetongue’ is an essential element of each of these. Additionally, the goods are routinely ordered via a verbal request such as in a pub or a restaurant, where a customer is likely to refer to the product by the word ‘Bluetongue’. Considering all the above, I am satisfied that the use from 2003 to 2014 created goodwill in connection with the word ‘Bluetongue’. Given the extent of the reputation, I also consider it likely that a residual reputation exists in the word ‘Bluetongue’.
This conclusion is supported by Leoncelli 1 and Leoncelli 2. Mr. Leoncelli declares that whilst at the WTB on 27 November 2020, he overheard a patron commenting that they recognised the ‘Blue Tongue Lager’ from its previous use in the marketplace some 10 years prior. The Removal Applicant’s evidence also supports the existence of residual reputation. In Singleton 1 and Singleton 2, the Removal Applicant declares that on 20 April 2021 he attended the Queens Wharf Brewery Hotel (‘QWB’) in Newcastle, New South Wales. Despite ‘Bluetongue beer’ not being sold at the venue at that time, the employee was aware of the brand stating that ‘he remembered when the hotel did sell Bluetongue but it was about 10 years ago’.
Use after the relevant three-year period
The Removal Opponent submits that it has used, or has intentions to use, the ‘Bluetongue brand’ after the relevant three-year period. In Davis 1, Mr. Davis declares that the Removal Opponent has an arrangement for the supply and sale of ‘Bluetongue branded beer’ with QWB. It is declared that the first order was placed by QWB on 16 April 2021 and supplied by the Removal Opponent on 21 April 2021.
Additionally, in Davis 2, Mr. Davis explains that (at the time of making the declaration), the Removal Opponent was in the process of finalising an agreement with a hotel and hospitality group, in which ‘Bluetongue branded beer’ would be available across twelve venues. Further details of the agreement are confidential.
Conclusion in respect of discretion
Considering all the above, I am satisfied that it is reasonable to exercise the discretion to retain the 717 Mark, 968 Mark, 417 Mark, 043 Mark and the 685 Mark on the Register in respect of beer.
However, I am not satisfied in respect of the broader range of goods for which the 685 Mark is registered such as non-alcoholic beverages, mineral water, and fruit juices. Firstly, the evidence before me demonstrates that the ‘Bluetongue brand’ has only been used in respect of beer. There is no evidence of use on any other goods before, during, or after the relevant three-year period. Additionally, the Removal Opponent has not indicated any intention to apply the ‘Bluetongue brand’ to a broader range of goods in the future. Furthermore, the Removal Opponent has not submitted, nor does the material before me establish, that the goods for which the Registrations have been used namely beer, are goods of the same description as the variety of non-alcoholic beverages for which the 685 Mark is registered.[21] Accordingly, I am not satisfied that it is reasonable to exercise the discretion in favour of retaining the 685 Mark in respect of mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
[21] Act s 101(4).
Decision
The Removal Opponent has rebutted the allegation of non-use in respect of trade mark registrations 891611, 1230042, 1388528 and 1388530.
In relation to trade mark registrations 875717, 882968, 1009417 and 1230043, I am satisfied that it is reasonable to exercise the Registrar’s discretion and preserve these registrations in respect of all the registered goods.
In relation to trade mark registration 1642685, I am satisfied that it is reasonable to exercise the Registrar’s discretion to preserve this registration only in respect of beers. Accordingly, I direct that one month from the date of this decision, that the goods of trade mark registration 1642685 be amended as follows:
Class 32: Beers;
mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beveragesCosts
The general rule is that costs follow the event and there is no reason to make an exception here.
Accordingly, in respect of trade mark registration 875717, I award costs against the Removal Applicant as per s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
In respect of trade mark registrations 882968, 891611, 1009417, 1230042, 1230043, 1388528 and 1388530, I award costs against the Removal Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[22]
[22] [2001] ATMO 78.
In respect of trade mark registration 1642685, as each party has been partially successful, it is appropriate that each party bears its own costs in relation to that matter.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
13 February 2023
Key Legal Topics
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Intellectual Property
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Statutory Interpretation
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