Cysandra Punch and Bellinda Smith v Danjaq, LLC

[2011] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Cysandra Punch and Bellinda Smith to application under section 92 by Danjaq, LLC to remove trade mark number 1003280(25) – miss moneypenny - in the names of Cysandra Punch and Bellinda Smith

Delegate:	Debrett Lyons
Representation:	Opponents:    No representation Applicant:   Gerrard Skelly of Spruson & Ferguson, Patent and Trade Mark Attorneys
Decision:	2011 ATMO 67 Section 96 opposition. Application under section 92(4)(b) successful. Trade Mark removed for all goods. Costs awarded against Opponents.

Background

1. This opposition concerns the application (the ‘Removal Application’) filed on 4 May 2010 under section 92 of the Trade Marks Act 1995 (the ‘Act’) by Danjaq, LLC ( the ‘Applicant’) to remove registered trade mark number 1003280 miss moneypenny (the ‘Trade Mark’) in the names of Cysandra Punch and Bellinda Smith (the ‘Opponents’).

2. The Trade Mark has been registered since 24 May 2004 in Class 25 for “clothing, headgear, footwear” (the ‘Relevant Goods’).

3. The Removal Application is made on the bases of sections 92(4)(a) and 92(4)(b) of the Act and seeks removal of the Trade Mark from the register in respect of all the Relevant Goods.

4. On 10 August 2010, the Opponents filed a Notice of Opposition (the ‘Notice’) under section 96 of the Act to the removal of the Trade Mark. The Notice states that:

   “We have provided evidence from the “miss moneypenny” company in South Africa    that Cysandra Punch and Bellinda Smith have been consistently importing miss   moneypenny garments from South Africa. We also have evidence from the Boutiques, CJane and Aqwa Women that they purchase miss moneypenny clothing from Cysandra Punch and Bellinda Taylor to sell in their stores”.

   Representation

5. I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 6 April 2011.  Gerrard Skelly of Spruson & Ferguson, Patent and Trade Mark Attorneys, appeared for the Applicant.  There was no attendance by the Opponents nor any written representations made on their behalf.  Both the day before the appointed hearing and on the morning of the hearing I left telephone messages for the Opponents reminding them of the hearing and asking for a return call to indicate their intentions as to attendance or representation.  There was no response.

   Legal framework

6. Section 92 of the Act sets out the essential legislative framework. As mentioned, the Applicant relies on both sections 92(4)(a) and 92(4)(b). In short, section 92(4)(a) allows removal of the Trade Mark if the application for registration was made without the necessary intention in good faith that it should be used; and that there had in fact been no use, or no use in good faith, earlier than one month before the date of the Removal Application.

7. Section 92(4)(b) allows removal of the Trade Mark if there had been no use, or no use in good faith, in the three-year period ending one month before the date of the Removal Application, subject to the section 93(2) proviso that five years must have passed since the application for registration of the Trade Mark was filed.

8. Critically, sections 100(1)(c) and 100(3) of the Act provide that the Opponents bear the onus of rebutting an allegation made against it under section 92.

   The Evidence

9. The Opponents’ evidence in support consists of a written statement by Cysandra Hammill and Bellinda Smith dated 20 July 2010 with certain attachments.  It is described as a Statutory Declaration.

10. No Evidence in Answer was served.

11. No Evidence in Reply was served.

    Reasoning

12. Something must first be said of the evidence in support. Section 8 of the Statutory Declarations Act 1959 states that a statutory declaration must (a) be in the prescribed form; and (b) be made before a prescribed person.  

13. The document signed by the Opponents and dated 20 July 2010, described as a Statutory Declaration, is defective.  It is far from being in the prescribed form.  It does not constitute a valid statutory declaration.

14. Nevertheless, regulation 21.17(1) of the Trade Mark Regulations 1995 states that “[E]vidence that is given in writing in any proceedings before the Registrar must be in the form of a declaration”.

15. Regulation 21.6(2) states, inter alia, that a declaration required by the Act or these Regulations to be given to the Registrar must:

    (a) be headed with the title of the matter for which the declaration is made; and

    (b) be expressed in the first person; and

    (c) state the name and address of the person making the declaration; and

    (d) state the name and title of the person before whom the declaration is made; and

    (e) state the date on which, and the place at which, the declaration is made.

16. Regulation 21.6(3)(b) states a declaration may be made before a justice of the peace.

17. If the Opponents’ statement dated 20 July 2010 is treated as a “declaration” for the purposes of the Trade Mark Regulations 1995, then there is compliance with regulations 21.6(2)(a), (b) and (d) and regulation 21.6(3)(b).  There is non-compliance with regulations 21.6(2)(c) and (e) to the extent that the addresses of the Opponents are missing and the place where the declaration was made is omitted.

18. On balance, I decide that there has been substantial conformity with the Trade Mark Regulations 1995 and so I am prepared in this case to consider the 20 July 2010 statement as a valid declaration (hereafter, ‘the Declaration’) and therefore take into full account its contents and attachments.

19. That said, the claimed evidence of use of the Trade Mark is, for the purposes of section 92, so seriously deficient that the opposition fails for the following reasons.

20. The Declaration states that the Opponents “are the holders of trademark No. 1003280 and that it is in continual use in Australia. We have provided evidence that the trademark is in use in the following documents…”

21. Attachment to the Declaration entitled “Evidence A” is a letter dated 19 July 2010 from an Emma Jackson, located in South Africa.  It states:

    “The Australian distributors (Cysandra Punch and Bellinda Smith) of my clothing label, miss moneypenny, have received notification of an application for the removal of the miss moneypenny trademark due to non-use.

    I would like to state that the trademark has been in continual use for the past 6 years, and will continue to be used in the future. I am continually supplying them with new miss moneypenny stock to sell in Australian boutiques, the next order is due to leave in August 2010”.

22. The attachment entitled “Evidence B” is a copy of an email from an Emma Crossley at a store named, Aqwa Women, in Narrabeen in Sydney and dated 14 July 2010. Ms Crossley states: “I am the owner of the fashion boutique Aqwa Women and have been stocking the miss moneypenny label in my store for the past 3 years. My next delivery is due in August 2010”.

23. The attachment entitled “Evidence C” is a copy of a letter from a Sally Cantwell, Owner of C JANE, dated 14 July 2010. Ms Cantwell states: “I am the owner of the fashion boutique C Jane, Crows Nest, and have been stocking the miss moneypenny label in my store for the past 4 years. My next delivery is due in August 2010”.

24. The attachment entitled “Evidence D” is a copy of an email from Cassie Hammill to “Missmoneypenny” at an email address [email protected].  It is dated 4 May 2010. The email states:  “Hi Emma/Bianca, Hope all is well with your (sic) guys…Here is our 1st Summer order for August delivery. Please let us know if you have any questions or if you won’t be able to supply any of the styles etc.” There appears to have been an attachment to the original email which is not included in the evidence.

25. I need only consider the Removal Application in so far as it relates to the ground under section 92 (4)(b) of the Act which states that:

    An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)  … 

    (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner: 

    (i) used the trade mark in Australia; or

    (ii) used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates. 

26. As the Removal Application was filed on 4 May 2010, the period for the purposes of section 92(4)(b) is the three year period ending on 4 April 2010 (“the Relevant Period”).

27. The pertinent case law can be summarized by the following propositions.  Use relied upon by the Opponents must be genuine commercial use: Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. That said, a single instance of bona fide use of the Trade Mark during the Relevant Period is sufficient to resist the Removal Application: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 at paragraph 17. However, if the Opponents rely on a single act of use, that act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (1962) RPC 1 at 7, per Wilberforce J. Finally, the Act requires use of the Trade Mark in good faith and Drummond J said in Woolly Bull Enterprises Pty Ltd v Reynolds that good faith entailed “real, as opposed to token, use in a commercial sense”.

28. The letter of Emma Jackson states that “the trade mark has been in continual use for the past 6 years”.  There is no express mention of what trade mark has been used, where the trade mark has been used, or upon what goods.  The highest point is that Ms Jackson refers to the Opponents as “the Australian distributors of my clothing label, miss moneypenny…” from which it might be inferred that the Trade Mark is used on class 25 goods of some description.

29. Ms Jackson states that she is “continually supplying them [the Opponents] with new miss moneypenny stock to sell in Australian boutiques”. There is no supporting documentation in the nature of invoices or shipping documents. I cannot determine what goods constitute the “stock” spoken of and there is no certainty that the Trade Mark is used on or in relation to that stock.  I can give very little weight to this letter.

30. The email of Emma Crossley states that she has “been stocking the miss moneypenny label in my store for the past 3 years” and the email of Sally Cantwell states that she has “been stocking the miss moneypenny label I my store for the past 4 years”.  

31. It is not clear whether the reference to the “miss moneypenny label” is a reference to goods bearing the Trade Mark and there is no way of knowing whether those goods might be clothing, headgear or footwear.  There are no sales invoices from the Relevant Period.  There are no examples or photographs of the goods or of their labelling, swingtags, or packaging.  Once more, this evidence does not assist me.  It lacks the “conclusive proof” of a single act of trade mark use referred to in the Nodoz case cited above.

32. The email from Chrissie Hamill to “Miss moneypenny” dated 4 May 2010 is equally unhelpful.  I cannot ascertain the goods to which the order relates, or whether it is being made in relation to goods sold under or by reference to the Trade Mark.  In any event, the email is outside the Relevant Period, notably sent the day on which the Removal Application was filed.

33. In short, the evidence submitted does not show use of the Trade Mark on or in relation to the Relevant Goods in Australia during the Relevant Period.  

    Registrar’s discretion

34. Section 101 of the Act gives the Registrar the discretion to allow a trade mark to remain on the register even if the non-use application has been successful. In this case, however, I can find no mitigating factors which would persuade me to use the discretion in the Opponents’ favour.

    Decision

35. The Applicant has been successful in its Removal Application.  I direct that trade mark registration 1003280 be removed from the Register in its entirety after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Costs

36. The Applicant has been successful in this action and is entitled to its costs.  I award costs against the Opponents according to the Official scale. 

Debrett Lyons
Hearing Officer
Trade Marks Hearings
25 July 2011