Dick Smith Investments Pty Ltd v Roger John Ramsey
[2014] ATMO 16
•26 February 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Dick Smith Investments Pty Ltd to application under section 92 of the Act by Roger John Ramsey to remove trade mark numbers 811789(29, 30) - OZEMITE - in the name of Ozemate Pty Limited
| Delegate: | Hearing Officer: Jock McDonagh |
| Representation: | Opponent: No appearance or submissions (relied on evidence) Applicant: Anthony Norris of Collison & Co Patent and Trade mark Attorneys |
| Decision: | 2014 ATMO 16 Opposition to s.92 removal application – s92(4)(b) ground for removal – use not established – obstacle for use not established – Registrar’s discretion – registration to be removed from the Register |
Background
Ozemate Pty Limited is the registered owner of a trade mark the details of which appear below:
Trade Mark number: 811789
Registered from: 28 October 1999
Goods:Class 29: Spreads and snack food in this class
Class 30:Yeast, yeast extracts; spreads and snack foods in this class
Trade Mark: OZEMITE (the “Trade Mark”)
On 1 June 2011, Roger John Ramsey (‘the Applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the Trade Mark from the Register, alleging it had not been used for any of the registered goods during the three year period ending 1 May 2011 (‘the relevant period’).
On 9 September 2011, Dick Smith Investments Pty Ltd (‘the Opponent’) filed a Notice of Opposition to the removal.
The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 3 December 2013. Anthony Norris, of Colinson & Co, Patent and Trade Mark Attorneys appeared for the Applicant. The Applicant and his daughter, Elise Ramsay, attended the hearing.
The Opponent was not represented at the hearing, and did not provide any written submissions. However, the Opponent wrote a letter to the Registrar of Trade Marks on 8 August 2012, (which is included in the Opponent’s evidence as exhibit DS-2 to Smith 2), that discusses the perceived lack of merit in the Applicant’s case and the Opponent’s decision not to spend money on lawyers to represent his case..
Evidence
The parties filed and served the following declarations as evidence in support:
| Declarant | Status | Date, Known as | Exhibits |
| Evidence in Support | |||
| Richard (Dick) Smith | Director of Opponent | 1.06.12 “Smith 1” | DS-1 to DS-17 |
| Scott La Rocca | Solicitor for Opponent | 6.06.12 “La Rocca 1” | SLR-1 to SLR-3 |
| Sally Ford | Administrative assistant to Opponent’s solicitors | 3.08.12 “Ford” | SAF-1 to SAF-3 |
| Edward Bray | National Sales Manager Dick Smith Foods Pty Ltd | 6.08.12 “Bray” | EVB-1 to EVB-4 |
| Scott La Rocca | Solicitor for Opponent | 7.08.12 “La Rocca 2” | SLR-4 to SLR-8 |
| Phillip Murrell | General Manager of Opponent | 5.09.12 | PAM-1 |
| Scott La Rocca | Solicitor for Opponent | 5.09.12 “La Rocca 3” | SLR-9 to SLR-13 |
| Evidence in Answer | |||
| Elise Ramsey | Co-owner AUSSIE MITE | 6.03.13 “E Ramsey 1” | EKR-1 to EKR-15 |
| Roger Ramsey | Co-owner AUSSIE MITE | 6.05.13 “R Ramsey 1” | RJR-1 to RJR-33 |
| Elise Ramsey | Co-owner AUSSIE MITE | 7.05.13 “E Ramsey 2” | EKR-16 to EKR-24 |
| Evidence in Reply | |||
| Richard (Dick) Smith | Director of Opponent | 8.08.13 “Smith 2” | DS-1 to DS-2 |
The evidence in these proceedings demonstrates a history of disputation and ill-will between the parties since the Trade Mark was first registered in 1999. The Opponent is a well-known aviator, adventurer, entrepreneur and philanthropist. He is well known for his advocacy of Australian grown and produced products by Australian owned businesses, as well as his contributions to Australian charities.
The Applicant, along with his daughter, owns a business that sells an Australian-made yeast and vegetable extract spread of a similar nature to the well-known Vegemite branded spread and to the Opponent’s goods specified in the Trade Marks’ registration. While not as well-known as the Opponent, it is apparent from the evidence that the Applicant operates a bona fide business venture that provides goods throughout Australia and to the United Kingdom.
Discussion
Section 92 relevantly states:
92Application 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)… ;
(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.
Section 100(1)(c) of the Act provides that the Opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the Trade Mark, (or, per section 100(3)(a), the Trade Mark with additions or alterations not substantially affecting its identity), was used in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
Section 101(4) of the Act allows the Registrar to take into account whether the Trade Mark has been used by the Opponent in respect of similar goods or closely related services.
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the Trade Mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at paragraph 17.
Smith 1 and La Rocca 1 clearly demonstrate that the Opponent has actively publicised an intention to produce goods for sale under the Trade Mark since the Trade Mark was registered. Such publicity seems to have increased around the period of time when the parties opposed each other’s trade mark applications (in the case of the Applicant, an application to register the trade mark AUSSIE MITE) and around the time that these proceedings were initiated by the Applicant (and, to some extent, at the date of hearing this matter).
Much of the material filed in evidence by the Opponent to demonstrate use of the Trade Mark falls outside the relevant period; however, I am satisfied that the Opponent has used the Trade Mark within the relevant period to publicise forthcoming launches of the product.
There is no evidence of any goods bearing the Trade Mark having been sold within the relevant period. The earliest invoice for sale of goods is shown as 15 May 2012 (to a local grocer in the same suburb as the Opponent’s business), while the earliest invoices for supply to retailers nationally (here Woolworths and Coles) are dated July 2012. The only photographs of goods on supermarket shelves exhibited are dated August 2012. Smith 2 states that to date the Opponent has sold approximately 500,000 jars of its Ozemite branded product to over 2,500 stores nationally.
Mr Norris submitted that for promotion of, or advertising for, goods bearing the Trade Mark to constitute use the goods must be available to be ordered or traded.[1] Further, the promotion evidenced by the Opponent merely showed an intention to use the Trade Mark at some time in the future, rather than use by advertising a product that was available for purchase.
[1] Citing Shanahan’s Australian Law of Trade Marks and Passing Off, 5th Edition at [5.1430], [5.3010]and [70.1575], referring to Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 3 IPR 545
I note that in Smith 1, at paragraph 25, Mr Smith refers to exhibits DS-17, which he states is the advertisement that he has booked “to promote the product nationally” and, at paragraph 26, “[t]he Ozemite Product has been presented to the major retailers and we are confident that it will be ranged nationally within the coming weeks.” This demonstrates to me that the goods were not available for sale in Australia until some date in 2012: well outside the relevant period.
I am not satisfied that that the Opponent has demonstrated actual use of the Trade Mark within the relevant period. However, the evidence filed raises the issue of whether or not “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” per section 100(3)(c) of the Act.
The Opponent provided evidence that brewers’ yeast is required to produce the goods, and the Applicant confirmed that this was the case. Because of exclusive sales contracts with Kraft (manufacturers of the Vegemite branded spread), the Opponent could not purchase brewers’ yeast from breweries. The Opponent did not specify which breweries (other than Carlton & United/Fosters Brewing Group) would not supply the yeast to the Opponent. In paragraph 21 of Smith 1 it is stated that “[w]hile some brewers’ yeast is available, we decided to …develop a way of producing the Ozemite Product without using brewers’ yeast.” The alternative means took many years to develop because of dissatisfaction with the taste of the product and some flawed production techniques.
Obstacles to use sufficient to resist a non-use action have been defined[2] as follows:
Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark.
In the context of s 100(3)(c), there are, however, good grounds for reading “circumstances” as not embracing any event of any kind. The circumstances must be “an obstacle to the use of the trade mark by the registered owner”. This suggests that they must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner.
[2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] 51 IPR 149 at [46], [47]
The Applicant (in R. Ramsey 1) states at paragraph 27 that his company has been able to source the necessary ingredients for their goods and that, for example at paragraph 50 (and exhibit RJR-20) Halcyon Proteins, a Melbourne based manufacturer of yeast and vegetable extract proteins has supplied the Applicants business since 2000, and the company features in the Opponent’s 1999 preliminary report exhibited in La Rocca 1 SLR-1 (identified as DS-7 on the CD-ROM).
I am not satisfied that the Trade Mark was not used during the relevant period because of circumstances that were, relevantly, a sufficiently cogent “obstacle” to the use of the Trade Mark. The evidence suggests that brewers’ yeast, or a practical yeast extract product, was probably available for the production of the Ozemite branded product. I am not satisfied that the decision to develop a different method of making the product is an external event, rather the Opponent decided to develop an alternative ingredient, which is a voluntary act of the Opponent.
The delay in producing the alternative – and apparently satisfactory – ingredient has not been adequately explained.
Under section 101(3) of the Act, the Registrar has the discretion not to remove a trade mark from the Register even though the grounds on which the removal application was made have been established. A broad range of circumstances may be taken into account in exercising the discretion. The Opponent bears the onus of demonstrating the existence of circumstances that need not be “exceptional circumstances”[3], but will need to be sufficient to satisfy the Registrar that application of the discretion is reasonable.
[3] Kowa Company Ltd v NV Organon [2005] FCA 1282; (2005) 66 IPR 131, per Lander J at [98].
The Full Federal Court, in Austin, Nichols & Co Inc v Lodestar Anstalt[4], confirmed the proper test as “[t]he question to be asked is whether it [is] reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period”. In Tivo Inc v Vivo International Corporation Pty Ltd[5] Dodds-Streeton J summarized some relevant considerations for the exercise of the discretion:
In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).
In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and whether the registered proprietors were aware of the applicants’ sales under the mark.
In Austin, the Full Court confirmed that the discretion under s 101(3) was limited only by the statutory purposes and “whether the removal of the [relevant mark] would lead to deception or confusion... was plainly a relevant consideration to be taken into account” (at [31]). The Full Court also recognised that evidence showing a lack of deception or confusion should the mark remain on the Register was relevant to the exercise of the discretion, but it was not erroneous to find that circumstance an insufficient justification for its retention.
[4] [2012] FCAFC 8 (21 February 2012).
[5] [2012] FCA 252 (19 March 2012).
In Smith 2 paragraph 4, Mr Smith cites an instance where (in June 2013, outside the relevant period) he received “a lot of criticism” relating to advertisements promoting the Applicant’s Aussie Mite branded goods. And in Smith 1 paragraph 28, Mr Smith relates occasions where he was stopped in the street by people who said his Ozemite branded product tasted terrible; however, the people were referring to the Applicant’s product.
Therefore, it would seem that there has already been confusion about the respective trade marks and it is likely that this would continue if the Trade Mark were to remain on the Register.
Secondly, there has been no evidence of use of the Trade Mark since registration and prior to the application for removal of the Trade Mark, or during the relevant period other than general promotion of the Opponent’s future intention to launch the product with other of its various Dick Smith branded products. It seems also that the various promotions tend to coincide with proceedings in this Office. However, I cannot conclude that the Opponent has abandoned the Trade Mark.
I do take into account the Opponent’s evidence of a large volume of goods bearing the Trade Mark distributed nationally to major supermarkets. However, I do note that the evidence shows that this supply has occurred a year after the relevant period.
For the sake of completeness I mention that there is no evidence that the Opponent has used the Trade Mark on similar goods or closely related services to those of the registration.
I cannot see any public interest in leaving a trade mark on the Register which appears, on the evidence and submissions before me, not to have been used in Australia during the relevant period, nor for some nine years before that. That interest would appear to be better served by the mark’s removal to avoid any possible misconceptions as to ownership of any similar trade marks, such as the AUSSIE MITE trade mark of the Applicant.
Decision and Direction
Section 101 of the Act relevantly provides:
101Determination 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.
The application for removal in relation to the Trade Mark has been established. I direct that the Trade Mark be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registration will not be removed until the appeal is withdrawn or discontinued. Otherwise, the registration will be subject to the decision of the Court.
Costs
The Applicants has been successful in relation to the application for removal of the Trade Mark. I direct that costs in relation to the opposition be awarded in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Jock McDonagh
Hearing Officer
Trade Marks Hearings
25 February 2014
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