Dashern Pty Ltd v Sledge USA Inc
[2011] ATMO 121
•1 December 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Dashern Pty Ltd to application under section 92 of the Act by Sledge USA, Inc to remove trade mark number 965903(25) - sledge - in the name of Dashern Pty Ltd
Delegate: Alison Windsor Representation: Opponent: Not represented
Applicant: Roseanne Mannion and Tracey Berger of Spruson & Ferguson Patent and Trade Mark AttorneysDecision: 2011 ATMO 121
S96 opposition to removal for non-use: s92(4)(b) allegation not rebutted – no evidence of circumstances which were an obstacle to use – registration to be removed from Register – costs awarded against Opponent.Background
On 21 April 2009 Sledge USA, Inc (‘the Non-Use Applicant’) filed an application under the provisions of section 92 of the Trade Marks Act 1995 (‘the Act’) to remove a registered trade mark from the Register for non-use. Current details of the trade mark subject of the removal application are as follows:
Registration number: 965903
Owner: Dashern Pty Ltd
Priority date: 13 August 2003
Goods specification: Class 25: Shoes, clothing, headgear
Trade Mark: sledge (‘the Trade Mark’)On 14 August 2009 Dashern Pty Ltd (‘the Opponent’) filed notice of opposition (‘the Notice’) to the removal application. The parties then served and filed evidence in support, in answer and in reply as provided for by the Trade Mark Regulations 1995 (‘the Regulations’). Following completion of the evidence processes, the Non-Use Applicant asked to be heard.
I heard the matter as a Delegate of the Registrar of Trade Marks at a hearing in Sydney on 12 August 2011. The Non-Use Applicant was represented by Ms Roseanne Mannion of Spruson & Ferguson Patent and Trade Mark Attorneys. Also in attendance from the same firm was Ms Tracey Berger. The Opponent was not represented, nor did it provide any written submissions.
Evidence provided
The Evidence in Support consists of a Statutory Declaration made by Nicholas Bokas, director of the Opponent. It was made on 11 June 2010 and is accompanied by Annexures A and B. I will refer to this declaration where necessary as ‘Bokas 1’.
The Evidence in Answer consists of the Statutory Declaration of Michael Rumore, a licensed investigator and principal of Rumore & Associates Pty Ltd. It was made on 19 October 2010 and incorporates Exhibits MR-1 to MR-3.
The Evidence in Reply consists of a second Statutory Declaration made by Nicholas Bokas (‘Bokas 2’). It was made on 11 April 2011 and is accompanied by Annexures A to J.
Legislative Background
The application relies upon the grounds provided by paragraph 92(4)(b) of the Act, and requests removal in respect of all the goods for which the Trade Mark is registered. Subsection 92(4) as it is relevant to this matter provides the following:
(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) …
(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.
Section 100 of the Act specifies that the onus is on the Opponent to rebut any allegations made under section 92. In particular, the Opponent must, on the balance of probabilities, prove that it used the Trade Mark in good faith and in respect of the registered goods during the period of three years ending one month before the day on which the removal applications were filed. As the removal applications were filed on 21 April 2009, the period for the purposes of section 92(4)(b) is the three year period ending on 21 March 2009 (“the Relevant Period”).
Paragraph 100(3)(c) provides that the Opponent may rebut a non-use allegation if it can establish that the Trade Mark was not used on the registered goods because of circumstances that were an obstacle to use of the Trade Mark within the Relevant Period.
Discussion and Reasons
The Bokas 1 declaration is brief, and it is convenient for me simply to quote its contents:
1.I am director of the applicant company.
2.I have been associated with the applicant company for at least 10 years and during that time have acquired a detailed knowledge of the affairs of the company. I obtained a registration for the trade mark SLEDGE on 13 August 2003. Registration was advertised on 6 May 2004.
3.In particular, I am familiar with the marketing, development and promotion of products marketed under the name SLEDGE including the use of this trade mark on the full range of clothes, shoes and related accessories. The facts contained in this Declaration are within my personal knowledge or have been derived from the records of the applicant.
4.Dashern Pty Ltd commenced use of SLEDGE in connection with the aforesaid goods in or around August 2003. The trade mark was used to launch a new range of clothing, particularly shoes. The trade mark has also been used on clothes including T shirts. To the best of my knowledge, SLEDGE has not been used in Australia by any other trader in the course of trade in the same or similar goods.
5.The proprietor has used SLEDGE continuously since the trade mark was registered. The evidence show [sic] use during 2004, 2007 and 2008. The trade mark is currently used. Annexed hereto as Annexure A is a listing of evidence of use of the trade mark sledge [sic] in the course of trade.
6.Annexed hereto as Annexure B is a set of samples of selected evidence of use in order in which they are identified in the Annexure A listing.
Annexure A consists of a single document, the contents of which are shown below:
Annexure B consists of numbered exhibits, eight in all, which accord with the list shown in Annexure A. The exhibits numbered 1 to 4 are undated and accord with the list – the word SLEDGE appearing on a shoe insole, on a shoe box lid, on a shoe box label and on a label for application to a shoe sole. Exhibit number 5 consists of a photograph of the word SLEDGE appearing on the sewn-in neck tag of a t-shirt, again undated.
The exhibit numbered 6 consists of a commercial invoice from the Zhong Cheng Shoes Factory in Guangzhou, China to Peter Bokas, Splat Shop D3.1B, Birkenhead Point Shopping Centre. It refers to the supply of 400 ‘sledge brand shoes’ at a unit price of $25 and 1000 ‘sledge brand shirts’ at a unit price of $12. It is dated 25 October 2004, which is outside the Relevant Period.
Exhibit 7 consists of a document printed from MYOB.[1] The document is headed Recipient Created Tax Invoice, and is between the Opponent and an entity called Clickers Pty Ltd.[2]
[1] MYOB – Mind Your Own Business – a proprietary brand of accounting software. MYOB is a registered trade mark in Australia.
[2] Clickers Pty Ltd will be referred to and its relevance explained later in this decision.
Exhibit 8 consists of another invoice from the Zhong Cheng Shoes Factory for a goods order identical in every respect to that provided as exhibit 6 including invoice number, goods descriptions and numbers, unit prices and total sale value. This invoice is dated within the Relevant Period, namely on 6 February 2008.
The Non-Use Applicant provided a single declaration being that of a private enquiry agent, Michael Rumore. Mr Rumore states that his company was instructed by Spruson & Ferguson to complete an investigation into use of the Trade Mark by the Opponent; to investigate the activities of Clickers Pty Ltd (‘Clickers’) to determine if there was a link between Clickers and the Opponent; and to investigate use of the Trade Mark by Clickers. He gives details of the searches undertaken and their results. He concluded from these searches that the Trade Mark was used about five years prior to his searches in two shoe stores in a shopping centre in Birkenhead Point, Drummoyne but that after a short run use of the Trade Mark had ceased. He did not find any use of the Trade Mark accruing to Clickers. The shoe stores concerned were those of ‘Bokas Shoes’ on Level 1 of the shopping centre, and ‘Splat’ on level 3 of the same shopping centre.
Mr Rumore stated that he telephoned a man called ‘Nick’ who he assumed to be a director of Clickers, Nick Kalamvokis. On asking about Clickers, Mr Rumore states that ‘Nick’ told him that Clickers was just a company name, part of the internal arrangement of the business run by the Opponent. Mr Rumore concluded that Clickers does not trade but is operated by the same people who operate the Opponent.
The Bokus 2 declaration clarifies this matter. Mr Bokus states that Clickers and the Opponent are related companies which have common directors. He states that the Opponent is the retail arm and Clickers is the wholesale arm of the same business.
Bokus 2 contains Annexures A to J. Annexure A consists of the copy of an invoice between Clickers Pty Ltd and Bokas Shoes, one of the Opponent’s two shoe stores at Birkenhead Point. The invoice is however, dated outside the Relevant Period.
The remaining annexures attached to this declaration comprise copies of photographs of footwear, all of which are clearly dated, but none of which are dated within the Relevant Period.
The pertinent case law for non-use matters can be summarized by the following propositions. Use relied upon by the Opponent 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 Opponent is relying 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 made it clear in Woolly Bull Enterprises Pty Ltd v Reynolds that good faith entailed “real, as opposed to token, use in a commercial sense”.
The Opponent is relying to a great extent on unsubstantiated claims of on-going use of the Trade Mark on a range of goods over the whole period since the Trade Mark was registered (see Annexure A to Bokus 1). There are, however, two documents which may serve to support this claim for at least some of the goods if they do demonstrate ‘overwhelmingly convincing proof’ of appropriate use. The documents are those previously described as exhibit 7 and exhibit 8 of Annexure B to Bokus 1.
Exhibit 7 is, as I described previously, a ‘Recipient Created Tax Invoice’ (‘RCTI’). It appears to identify the sale of goods identified as ‘Sledge shoes’ and ‘Sledge shirts’ between the Opponent and Clickers. Given that Bokas 2 describes Clickers as the wholesale arm of a business for which the Opponent is the retail arm, this document is scarcely a demonstration of genuine commercial use. At best it demonstrates the transfer of goods within different arms of the same business. As such it is effectively an internal document. Therefore it does not demonstrate commercial use of the Trade Mark in the manner which is required to defeat a non-use attack.[3]
[3] Nodoz Trade Mark (1962) RPC 1 at [7].
Exhibit 8 similarly is problematical. It is peculiar that this invoice effectively repeats the invoice shown at exhibit 6 even to the extent of an identical invoice number. The only differences between the two invoices are the dates of issue, and some slight differences in the signature of the individual ‘William’ who has signed both invoices. One would expect that there would be some change in unit price, if not in order size, over a four year period, yet this has not occurred. It is also unusual that two invoices issued some four years apart would have the identical invoice number. The probative weight of this document is thus somewhat tarnished.
In addition, while the invoice purports to demonstrate use of the Trade Mark, all it manages to do is demonstrate that the Zhong Cheng Shoes Factory of Guangzhou issued an invoice to Peter Bokas. It does not provide information about how, when or whether the goods were ultimately shipped to the recipient, or if he ever received them. Neither is there any indication at all that these goods were provided for sale to customers in Australia during the Relevant Period.
Most of the evidence provided is in respect of footwear, and as I have said, it does not provide any proof of actual commercial sales having occurred. The same can be said for the remainder of the claim to use made in Bokas 1, that is, the claim that the Trade Mark has been used ‘on the full range of clothes, shoes and related accessories’. In effect nothing at all has been provided to support this claim.
The Opponent has placed its reliance on claims to use within the Relevant Period which it has then not substantiated in any concrete fashion. It has not provided information which clearly demonstrates that any sales of any goods at all have been made within the Relevant Period. Neither has it made any comment on circumstances which may have been an obstacle to its use of the Trade Mark during the Relevant Period, a matter which was included within the Notice. It has therefore not rebutted the allegation of non-use.
Registrar’s discretion
The Notice also includes a reference to exercise of the Registrar’s discretion, such an exercise being allowed for by section 101 of the Act which relevantly 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.
…
(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 groundson 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.
Hermes Trade Mark [1982] RPC 425, concerned an application to remove a trade mark because no sales of the particular items had occurred in the five year period required under the legislation applicable at the time. Falconer J held that, in the exercise of his discretion under the equivalent English section, it was proper to take into account the fact that sales had taken place after the conclusion of the period.
The Opponent in this case has provided photographs of footwear bearing the Trade Mark but dated after the Relevant Period, as well as an invoice (Annexure A to Bokus 2) dated in 2010 which purports to demonstrate sales of the relevant footwear. This invoice, however, is another internal document as it consists of sales by Clickers to Bokas Shoes. This invoice is another example of transactions within the Opponent’s company group, and is not an example of commercial sales.
None of these exhibits is sufficient to support the Opponent in substantiating use of the Trade Mark in respect of any of the registered goods. Because of the complete absence of any persuasive information, I do not intend to apply the Registrar’s discretion in the Opponent’s favour.
Decision.
As the Opponent has not rebutted the allegation of non-use I direct that Registration 965903 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
The Non-Use Applicant requested its costs in the event of success. I award costs against the Opponent according to the Official Scale.
Alison Windsor
Hearing Officer
Trade Marks Hearings
1 December 2011
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Intellectual Property
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