Dimitri v Chiotelis and Evangelos E. Chiotelis v TAP Worldwide LLC
[2014] ATMO 4
•14 January 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Dimitri V. Chiotelis and Evangelos E. Chiotelis to application by TAP Worldwide LLC for removal of trade mark registration 1011100 (12) - SMITTYBILT (Stylised) - in the names of Dimitri Vagelis Chiotelis and Marie Chiotelis
| Delegate: | Michael Kirov |
| Representation: | Opponents: Relied on written submissions prepared by their attorney, Jacqui Pryor, of Mark My Words Trademark Services Pty Ltd Applicant: Siobhán Ryan of Counsel, instructed by Carly Mansell of Davies Collison Cave, Patent & Trade Mark Attorneys, Melbourne |
| Decision: | 2013 ATMO 4 s 92(4)(b) opposition: No relevant use shown and opposition not established. No reason for exercise of discretion in Opponents’ favour. Trade Mark to be removed. Costs awarded against Opponents. |
Background
Dimitri Vagelis Chiotelis and Marie Chiotelis are recorded as[1] the registered owners of trade mark registration 1011100, relevant details of which are as follows:
Registration Number: 1011100
Registered from: 14 July 2004
Goods: Class 12: Vehicles; apparatus for locomotion by land, air or water in this class (“the Goods”)
Trade Mark: (“the Trade Mark”)
[1] Marie Chiotelis is deceased, but IP Australia has not to date received an application to record this.
On 28 March 2012 TAP Worldwide LLC (“the Removal Applicant”) filed an application based on section 92(4)(b) of the Trade Marks Act 1995 (“the Act”) for removal of the Trade Mark from the Register, alleging that it was not used in good faith in relation to any of the Goods during the three year period ending on 28 February 2012 (“the Relevant Period” and the “Relevant Date” respectively).
On or about 21 May 2012 Dimitri V. Chiotelis and Evangelos E. Chiotelis (“the Opponents”) filed a Notice of Opposition to removal which stated that:
The Owner’s [sic] of this registered Trade Mark deny the allegation made by the Applicant and oppose the Applicants [sic] Application on [sic] the reasons that are stated in the Statutory Declarations made by Dimitri V. Chiotelis and Evangelos E. Chiotelis.
The parties served and filed the Statutory Declarations listed below as evidence:
Evidence in Support
▪ Dimitri V. Chiotelis made 21 May 2012, with Annexure A (“D Chiotelis 1”)
▪ Evangelos E. Chiotelis made 21 May 2012 (“E Chiotelis 1”)
▪ Dr Oxana Chiotelis made 18 September 2012, with Exhibits M1 to M5 (“O Chiotelis”)
▪ Evangelos E. Chiotelis made 18 September 2012 (“E Chiotelis 2”)
▪ Evangelos E. Chiotelis made 18 September 2012, with Exhibits E1 to E18 (“E Chiotelis 3”)
▪ Dimitri V. Chiotelis made 18 September 2012 (“D Chiotelis 2”)
▪ Dimitri V. Chiotelis made 18 September 2012 (“D Chiotelis 3”)
Evidence in Answer
▪ Darren Salvin made 15 January 2013, with Exhibits 1 to 7 (“Salvin”)
Evidence in Reply
▪ Evangelos E. Chiotelis made 11 April 2013, with Exhibits TM-01 to TM-12 (“E Chiotelis 4”)
[2] This declaration is actually Exhibit TM-12 to E Chiotelis 4, but it is convenient to refer to it hereafter as D Chiotelis 4.
I heard the matter as a delegate of the Registrar of Trade Marks in Melbourne on 15 November 2013. Siobhán Ryan of Counsel, instructed by Carly Mansell of Davies Collision Cave, Patent & Trade Mark Attorneys, appeared for the Removal Applicant. Ms Ryan’s oral submissions were supplemented by written submissions emailed to the Opponents’ representatives and to me on 11 November 2013. The Opponents relied solely on written submissions dated 3 June 2013 prepared by their attorney, Jacqui Pryor, of Mark My Words Trademark Services Pty Ltd.
The Law
Insofar as relevant to this matter, s 92 of the Act is reproduced below:
Application 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 aggrieved 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.
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 s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.
(5) …
Sections 100(1)(c) and 100(3) of the Act indicate that the Opponents bear the onus of rebutting the allegation made under s 92(4)(b), by establishing that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used in good faith during the Relevant Period, or that there was an obstacle to use during that period. I proceed on the basis that the relevant standard of proof the Opponents bear is on the balance of probabilities.[3]
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599.
As mentioned, Marie Chiotelis (“Marie”) is currently recorded as co-owner of the Trade Mark notwithstanding her death in, as I understand it, around May 2007,[4] some 21 months before the Relevant Period commenced. From their evidence before me it is apparent that the Opponents have nevertheless assumed that Dimitri Chiotelis (“Dimitri”), as the surviving registered owner, thereby automatically became sole owner. Ms Ryan confirmed that the fact that transmission of Marie’s co-ownership of registration 1011100 has not yet been recorded on the Register was not relevant to the Removal Applicant’s case and I proceed on that basis. In this regard I note that Part 10 of the Act, which deals with “Assignment and Transmission of Trade Marks”, makes no significant distinction between the recordal of an assignment and recordal of the transmission of a registered or pending mark and that s 100(3)(b) of the Act specifically states that “the opponent is taken to have rebutted the allegation” under s 92(4)(b) if:
in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:
(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner;
[4] According to an investigator’s report included in the Removal Applicant’s evidence Marie died following a motor vehicle accident in or around this date.
As discussed below, the Opponents’ claim is that all use of the Trade Mark during the Relevant Period was by an authorised user rather than by Dimitri per se. In this regard both ss 100(1)(c) and 100(3) are followed by the identical “Note 1”:
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Both subsections 7(3) and 7(4) of the Act are relevant in this case:
(3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).
Section 8 of the Act provides:
Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
The Evidence
As will become apparent, my eventual decision in this matter turns not on whether there was actual use of the Trade Mark by either (or both) of the “authorised users” identified in the Opponents’ evidence, although even then the use claimed is far from convincing. Rather, I agree with Ms Ryan’s submission that the principal issue arising in this case is whether any of the claimed use was in any event authorised by Dimitri in the sense contemplated by s 8. To examine this question adequately, I have found it necessary to summarise the Opponents’ evidence in some detail.
Evidence in Support
In D Chiotelis 1 Dimitri gives his occupation as “Carpenter”. He explains that Evangelos Chiotelis (“Evangelos”) was the original author of the Trade Mark, who for some reason registered it in the names of his children,[5] that is Dimitri himself and Dimitri’s sister Marie. Although there is no supporting documentation included with D Chiotelis 1, Dimitri says that “the [Trade Mark] has been used at all times in good faith for the goods/services [sic] to which the application[6] relates”.
[5] The relationship between Evangelos, Dimitri and Marie is explained in E Chiotelis 4.
[6] Presumably Dimitri is referring here to the application for removal, although as mentioned registration 1011100 only covers goods.
Dimitri does not however claim that he used the Trade Mark himself during the Relevant Period, merely referring to “agreements” he (or he and Marie)[7] had with two companies concerning possible use. In particular, he says:
4. THAT: with an agreement CARPARTS CONNEXION PTY LTD ACN: 125 138 721 has use [sic] the [Trade Mark] from July 2007 to 19 January 2012
[I will refer to this company hereafter in the decision as “CC Pty Ltd”]
5. THAT: with an agreement MAXFLOW INTERNATIONAL GROUP PTY LTD ACN: 155 211 822 and also T/A CARPARTS CONNEXION PACIFIC GROUP has use [sic] the [Trade Mark] from 20 January 2012 to this current date [21 May 2012].
[I will refer to this company hereafter in the decision as “MIG Pty Ltd”]
[7] The agreement with Carparts Connexion Pty Ltd, which is said to be “effective 5th May 2007”, was apparently executed by Dimitri and Marie shortly before Marie’s death in or about May 2007.
E Chiotelis 1 is very brief, with co-opponent Evangelos, whose occupation is given as “Automotive Engineer”, simply declaring:
THAT: I have read [D Chiotelis 1] and say his [sic] contents of the Statutory Declaration are true and correct.
O Chiotelis is declared by another member of the Chiotelis family, Dr Oxana Chiotelis (“Dr Chiotelis”), whose occupation is given as “medical doctor”. It is made in her capacity as “the director of [MIG Pty Ltd]” and relates to the last six weeks or so of the Relevant Period, that is from 20 January to 28 February 2012. Exhibit M4 to her declaration is a copy of a registration certificate for MIG Pty Ltd issued by the Australian Securities & Investments Commission, which indicates the company was incorporated on 18 January 2012. Dr Chiotelis makes three further statements in the declaration, namely:
2. [that] an agreement (Exhibit M1) was signed on 20 January 2012 for the use of [the Trade Mark] between [Dimitri] and [MIG Pty Ltd]
3. THAT: [MIG Pty Ltd] has been producing and selling vehicle apparatus from on or about 20 January 2012 (Exhibits M2 & M3)
4. THAT: [MIG Pty Ltd] has been advertising the SMITTYBILT brand at its business premises situated at Unit 9-171 Cheltenham Road, Dandenong, Victoria 3175 (Exhibit [M5]).[8]
(My emphasis in bold)
[8] Exhibit M5 is incorrectly referred to in O Chiotelis as Exhibit “M4”, although nothing turns on this.
As regards the exhibits to O Chiotelis:
•The “agreement” forming Exhibit M1 is central to the submissions of both parties’ representatives and it is discussed in more detail below.
•Exhibit M2 is a copy of a tax invoice dated 3 February 2012 for a single item costing $425 described as “SMITTYBILT TOYOTA S/S POLISHED S/STEP KT” and issued by “CARPARTS CONNEXION PACIFIC GROUP – Division of [MIG Pty Ltd]”. The purchaser is not identified, with the “Invoice to”, “Deliver to” and “Comment/Memo” fields on the invoice all bearing the (typed) words “CASH SALE”.
•Exhibit M3 is essentially identical to Exhibit M2, but is dated 3 July 2012. This date being well after the Relevant Period, the invoice is not directly relevant to the removal application.
•Exhibit M5 is a copy of a photograph of a double-paneled glass door, presumably located at the Cheltenham Road, Dandenong premises. In addition to a card showing “Opening Hours”, the door has on its upper panel the words “BIOLIGHT”, “DASCOOL”, “J EBIKE”, “MAXCOOL”, “MAXFLOW”, “SAMARIA”, “SMITTYBILT” and “VARTA” in plain capital letters. No information as to the significance of these words is indicated.
E Chiotelis 2 is in similar terms to E Chiotelis 1, with Evangelos simply declaring:
THAT: I have read [O Chiotelis] and say his [sic] contents of the Statutory Declaration are true and correct.
E Chiotelis 3 is on the face of it principally relevant to Dimitri’s claimed use of the Trade Mark during the greater part of the Relevant Period, namely from 28 February 2009 to “on or about January 2012”. In particular, Evangelos says “THAT: the SMITTYBILT brand name, which I created on or about 1990 to the present day, has been used in good faith.” (sic) He provides very brief information concerning the Trade Mark over that period, noting “THAT: on or about July 2004 I filed an application with IP Australia to have the [Trade Mark] in the names of the (late) Marie Chiotelis and [Dimitri].” (sic) As to use during the Relevant Period, he says:
5. THAT: on or about May 2007 an agreement (Exhibit E10) was signed between the [Trade Mark] owners and [CC Pty Ltd]
6. THAT: [CC Pty Ltd] has been selling (Exhibit E11, E12, E13, E14, E15) various vehicle apparatus with the [Trade Mark]
7. THAT: on or about January 2012 the trade mark owner and [CC Pty Ltd] released (Exhibit E16) each other from the Agreement (Exhibit E10)
8. THAT: the SMITTYBILT brand name has been advertised on from on or about 2005 to 2007[9] and on on or about 2007 to the present day (Exhibit E17).
(My emphasis in bold)
[9] No further mention is made of the website in the evidence, and I note that at the time of writing the URL returns the web browser error message, “This website does not exist.”
I note in passing that Dr Chiotelis said in O Chiotelis that MIG Pty Ltd (which was incorporated in January 2012) was “producing and selling vehicle apparatus from on or about 20 January 2012”, apparently being the two sidesteps identified in Exhibits M2 and M3 thereto. For his part, Evangelos only says that the earlier user, CC Pty Ltd, had until the “release” in January 2012 been “selling … various vehicle apparatus”, apparently also being sidesteps (and a tow bar) as identified in Exhibits E11 to E15. Evangelos does not however indicate the manufacturer or provenance of these goods and there is nothing in the Opponents’ evidence which sheds light on this issue.
As for those exhibits to E Chiotelis 3 evidencing possibly relevant use:
•The “agreement” and the “release” forming Exhibits E10 and E16 respectively are central to the submissions of both parties’ representatives and they are discussed in more detail below.
•Exhibits E11, E12, E13, E14 and E15 are copies of “CASH SALE” tax invoices (with no purchaser identified) issued by CC Pty Ltd. Exhibits E11 and E12 are dated outside the Relevant Period. The other three tax invoices are dated 1 June 2009, 17 February 2010 and 25 March 2011 respectively and are for the four items indicated below:
E13: SMITTYBILT FORD FALCON TOW BAR WAGON
SMITTYBILT TOYOTA LANDCRUISER BLACK SIDE STEP BAR
E14: SMITTYBILT TOYOTA LANDCRUISER BLACK SIDE STEP BAR
E15: SMITTYBILT TOYOTA LANDCRUISER CHROME SIDE STEP BAR
•Exhibit E17 consists of the single page shown below downloaded from the URL For the reasons explained below in paragraphs 25 and 26 I have nevertheless reached the conclusion that this particular page was most likely not actually published on the website in question until after the Relevant Period.
Finally, as far as the Opponents’ evidence in support is concerned, are D Chiotelis 2 and D Chiotelis 3, which refer to O Chiotelis and E Chiotelis 3 respectively. In these Dimitri simply says that he has read the two declarations in question and that the “contents of the Statutory Declaration[s] are true and correct”.
Evidence in Answer
Darren Salvin is “the General Counsel, Executive VP and a Member of [the Removal Applicant]”, positions held since 2004. He explains how the trade mark SMITTYBILT[10] came to be coined in 1963 by a father and son team named Smith and says that the company they subsequently formed, (the Removal Applicant’s predecessor in title), first used the mark in the United States in relation to “truck parts” in 1964.[11] He continues:
Over the course of forty years, the [predecessor] company grew into a multi-million dollar company. In 2005 [the Removal Applicant] acquired the SMITTYBILT name and trade mark, and the existing inventory of automobile and truck parts. [The Removal Applicant] now supplies thousands of active dealers and distributors worldwide, including in Australia, with truck and SUV accessories under the mark SMITTYBILT. There are over two thousand different products available in the truck and SUV markets under the Smittybilt [sic] trade mark. Attached and marked Exhibit 1 is a screenshot from [the Removal Applicant’s] website which shows a representative list of products available under the SMITTYBILT trade mark. The [Removal Applicant’s] full range of products under the mark SMITTYBILT is available and has been sold in Australia for many years.
[10] The words “the trade mark SMITTYBILT” (or similar) refer to the mark rendered in plain capital letters as opposed to the slightly stylised manner in which it is represented in the Trade Mark.
[11] I understand Mr Salvin to be using the word “truck” in the broader American sense here and to mean what he elsewhere refers to as “the four-wheel drive lifestyle and off-road aftermarket parts industry”.
Mr Salvin goes on to document use of the mark for “locking hood catches” and to detail use for “vehicle parts and accessories” via distributors in NSW, Victoria, Queensland and Western Australia dating from 2005. He also exhibits a table setting out the Removal Applicant’s various registrations and pending applications around the world for the trade mark SMITTYBILT, the earliest being a 1995 registration in the United States for a wide range of “automobile accessories” which indicates the mark was first used in commerce in 1964 for the goods the registration covers.[12]
[12] In E Chiotelis 4 Evangelos exhibits details of this registration downloaded from the USPTO’s online search facility “clearly demonstrating that [the] registration…is owned by ‘Smittybilt Inc’ and not by the Removal Applicant”. It is nevertheless apparent from the exhibit that the registration was at some point assigned from Smittybilt, Inc to a company called Smittybilt Automotive Products, LLC. The assignee has the almost identical address to that of the Removal Applicant and, while nothing actually turns on this, I assume it to be a related company.
Finally, Mr Salvin exhibits two reports by a private investigator engaged both before and after the Opponents had served their evidence in support claiming relevant use of the Trade Mark. The initial investigator’s report, dated 20 March 2012, located no use at all by or on behalf of the registered owner(s) and the investigator’s “enquiries in the industry disclosed only some familiarity with the SMITTYBILT brand of [the Removal Applicant] in Australia”. It is relevant to note that the investigator did locate the website that Evangelos first mentions some six months later in E Chiotelis 3.[13] However the page from the website featured in Exhibit E17 (reproduced in paragraph 21 above), which actually mentions “Smittybilt side steps” and “SMITTYBILT ebikes”, was apparently not then in existence. In this regard the investigator says:
A perusal of the website revealed the business promotes the sale of Biolight, Boyu, Dascool, Maxcool, Maxflow and Varta parts as well as J ebike electric bicycles. According to the website the business has been trading since 2001. The website suggests that the business imports product direct from overseas. A telephone number of (03) 5134 3286 was also provided.
We confirm contacting the business via the above telephone number. In short, on each occasion our calls were answered by a female who identified herself only as the receptionist. In short, the female had very little knowledge about the business and its operations. In particular, when we enquired as to the availability of a number of brands including but not limited to SMITTYBILT, she simply advised that she had “no idea” and that she would have another member of staff contact us. In that regard, whilst the brands which appeared on the website were familiar to her, SMITTYBILT was not.
Our contact details have been left on a number of occasions but to date we have not received a reply.
[13] See paragraphs 19 and 21. E Chiotelis 3 was declared on 18 September 2012.
I accordingly infer that the webpage forming Exhibit E17 to E Chiotelis 3, (which I observe bears the notice “Copyright © 2012”), was most likely not added to the website until after 20 March 2012 and thus after the Relevant Period ended on 28 February 2012.[14] Indeed, my own enquiries through the website at the time of writing indicate that the actual web page shown in Exhibit E17, (with URL was not created until sometime between 19 March 2012 and 18 April 2012, that is in the days immediately following the investigator’s above described enquiries.
[14] The discussion by Hearing Officer Thompson in Telstra Corporation v Next IP Distribution Pty Ltd (2012) 98 IPR 219 at [47]-[49] also appears germane here.
[15] Also known as “the Wayback Machine”, this website is a digital archive of the World Wide Web and other information on the Internet created by the Internet Archive, a non-profit organization, based in San Francisco, California. It contains over 373 billion web pages saved at various time intervals and is searchable via the relevant URL of interest.
The investigator’s second report is dated 19 December 2012 and was aimed at ascertaining the nature of the use of the Trade Mark by MIG Pty Ltd since 20 January 2012 claimed in D Chiotelis 1 and O Chiotelis. In particular, the investigator visited the Cheltenham Road, Dandenong business premises of MIG Pty Ltd where Dr Chiotelis said the company had “been advertising the SMITTYBILT brand”.[16] Although attending during weekday business hours, the investigator “found the building in darkness, despite signage on the front door indicating the trading hours to be 9.00 am to 5.00 pm”. I note from a picture taken by the investigator at the time that this is the same door shown in Exhibit M5 to O Chiotelis, with stickers on it bearing the words “BIOLIGHT”, “DASCOOL”, “J EBIKE”, “MAXCOOL”, “MAXFLOW”, “SAMARIA”, “SMITTYBILT” and “VARTA” in plain capital letters.[17] The investigator further reports that:
At the time of writing [on 19 December 2012] a telephone call was placed to the Dandenong premises which confirmed that this is the only trading premises of the business.
[16] See paragraph 16.
[17] See paragraphs 16 and 17.
Evidence in Reply
Evangelos declares E Chiotelis 4 in his capacity as “General Manager of [MIG Pty Ltd] (the Authorised User)”. While not directly relevant to my eventual decision in this matter, I mention for the record that Evangelos takes issue with several of the matters declared by Mr Salvin and with the Removal Applicant’s investigator’s findings. Notably, as regards the investigator’s initial report, Evangelos says of the telephone number on the website that the investigator reported on using:[18]
This telephone number connects to a distributor (CCV) [Carparts Connexion Victoria] of various products and not directly to the Trademark Owners or Authorised User. … CCV has never had a female receptionist, and all staff of CCV are aware of the Trademark and other brands relating to the Trademark Owners, the Authorised User, the Carparts Connexion parent business and related parties. To support this I attach and mark as Exhibit TM-02a a supporting statutory declaration of Donald McDougall, who has acted as Sales Representative for the CCV business for the past three years. Attached and marked as Exhibit TM-02b are samples of invoices generated by CCV during the [R]elevant [P]eriod to demonstrate that the Trademark was promoted also on their stationery.
[18] See paragraph 25.
I understand Evangelos to be saying that whereas CCV is “a distributor of various products” and that “all staff of CCV are aware of the [Trade Mark]”, CCV is not related to, or otherwise controlled by, “the Authorised User” of the mark (that is, MIG Pty Ltd) or Dimitri. He does not say that CCV has ever actually dealt with any goods bearing the Trade Mark or that Dimitri ever “authorised” it to do so. I accordingly infer that the reason CCV’s contact details appear on not only the website consulted by the investigator,[19] but also on the invoices forming Exhibits M2 and M3 to O Chiotelis,[20] is that it was a distributor of products with which MIG Pty Ltd was associated other than products bearing the Trade Mark. That said, I note that Mr McDougall does not in fact refer to any of the matters Evangelos contests above such as the make up or knowledge of CCV’s staff. Most significantly to the matter at hand, Mr McDougall himself does not claim that CCV was an authorised user of the Trade Mark or that CCV ever actually sold any goods bearing the Trade Mark. I note, too, that the only product bearing the Trade Mark which he specifically identifies is “an electric bike”. For completeness, his declaration is set out in full below:
1. I am a sales representative for Carparts Connexion Victoria (CCV), a position I have held for three years. I am authorised to make this declaration. The information contained herein comes from my personal recollection, and from the records of CCV to which I have access.
2. CCV is a distributor of various brands within the automotive industry that relate to the Trademark Owners or their licensees.
3. I first became aware of the SMITTYBILT brand in or about May 2010. I am aware of an electric bike branded as “SMITTYBILT” and recall the product becoming available in or about May 2010.
4. I understand that the Trademark Owners and their authorised user, [MIG Pty Ltd], are providing evidence in support of the use of the Trademark. I understand that flyers are forming a part of this evidence, including flyers from 2010 (blue flyer, headed as Carparts Connexion) and from 2011 (Promotional flyer with offer ending 31 March 2011). Both of these flyers were provided to CCV. Accordingly I can confirm that their dates of creation were in 2010 and 2011, that these dates are true and correct.
5. As a sales representative for the CCV business, I can confirm that use of the Trademark has been continuous. There has been no period of time in which the name has not been used for various automotive parts and accessories, and in connection with the bicycle product since its first use.
[19] At a time when, as explained in paragraphs 25 and 26, it seems the Trade Mark did not itself appear on the website.
[20] See paragraphs 16 and 17.
I highlight that this is the first time that use of the Trade Mark for a “bicycle product” during the Relevant Period is specifically mentioned.[21] Indeed, one is caused to wonder why such an apparently key piece of information was omitted from the Opponents’ evidence in support, particularly given the actual coverage of the registration in suit. The only previous mentions of the goods for which the mark may have been used prior to 28 February 2012 were in O Chiotelis and E Chiotelis 3. As mentioned earlier, Dr Chiotelis merely says that “[MIG Pty Ltd] has been producing and selling vehicle apparatus from on or about 20 January 2012” and she exhibits a single tax invoice issued during the Relevant Period for a “SMITTYBILT TOYOTA S/S POLISHED S/STEP KT”. (I assume this to refer to a chrome side step in kit form of the kind commonly added to four wheel drive vehicles as an aftermarket accessory.) For his part, Evangelos says that “[CC Pty Ltd] has been selling … various vehicle apparatus with the [Trade Mark]” and he exhibits three tax invoices issued during the Relevant Period for a “SMITTYBILT FORD FALCON TOW BAR WAGON” (which I assume to be a tow bar suitable for a Ford Falcon station wagon) and three “SMITTYBILT TOYOTA LANDCRUISER … SIDE STEP BAR[S]”.
[21] Exhibit E17 to E Chiotelis 3, being the page from the website reproduced at paragraph 21 above, does say that “The all new SMITTYBILT ebikes have arrived!” but, as mentioned, I am not satisfied this webpage was created until after the Relevant Date. There is otherwise no mention of bicycles in Evangelos’ first three declarations, or by Dimitri or Dr Chiotelis.
As for Exhibit TM-02b to E Chiotelis 4, this consists of copies of five tax invoices issued by “Carparts Connexion Vic” [that is, CCV] between 31 July 2010 and 24 October 2011. The invoices are for oil, air or fuel filters, disc pads and coolant specified by reference to various brand names. None shows any item sold under the Trade Mark, albeit the Trade Mark appears at the bottom of each invoice alongside six other apparent brand names, presumably by way of advertising. I do not consider this, without more, to be “use” of the Trade Mark (as defined by s 7(4) of the Act) in relation to the Goods. As discussed above CCV is, according to Evangelos, not an “authorised user” as such of the Trade Mark. Moreover, no actual goods bearing the Trade Mark are identified[22] and there is nothing on the invoices to indicate any relevant connection between CCV and Dimitri. Indeed, from the public’s point of view the appearance of the Trade Mark on the five tax invoices in evidence might just as well be promoting the Removal Applicant’s SMITTYBILT branded goods.
[22] See the discussion by Hearing Officer Thompson in Bunter v Secureview Australia Pty Ltd (2011) 89 IPR 549 at [20]-[25] in this regard and the cases there mentioned.
I mention that I have the same view as regards the word “SMITTYBILT” affixed to the door of MIG Pty Ltd’s Dandenong premises.[23] Again, no actual goods are identified and there is nothing to indicate any relevant connection between MIG Pty Ltd and Dimitri. Again, from the public’s point of view this signage might just as well be promoting the Removal Applicant’s SMITTYBILT branded goods.
[23] See paragraphs 16, 17 and 27.
I note in passing that the Trade Mark’s presence on the door of the Dandenong premises and on invoices as described above aside, there is no evidence before me of any advertising relating to the Goods per se. The Opponents do not provide any expenditure figures for advertising or promotion of any goods bearing the Trade Mark during the Relevant Period (or at all) and the extent of any apparent activity in this regard may perhaps be gauged by Evangelos’ response to the investigator’s second report:
The investigator comments that on inspection, they are [sic] not able to determine the age of the SMITTYBILT sticker (attached to the front door of the premises) when compared to other brands. I can confirm that all brands, inclusive of SMITTYBILT, have been promoted by way of stickers on our premise doors (as well as on vehicles, and at other locations) since around the year 2000. The stickers were purchased from a business named GOOD STUFF, at the same time as branded notebooks. The business has since closed. The only evidence I am able to provide to confirm the date on which the stickers were purchased is a copy of the cheque butt relating to payment for the stickers, and, the relevant pages from the bank statement showing the cheque to have been presented in June 2000. These are attached and marked as Confidential Exhibit TM-03a. I confirm that the stickers have appeared on premises and vehicles continuously ever since.
The exhibited cheque butt is dated 2 June 2000, more than four years before registration 1011100 was filed and some nine years before commencement of the Relevant Period, and is for the sum of $312. I can only speculate as to why the cheque butt and bank statement for this particular historical and modest advertising expense is available, but evidence of any other amounts that may have been spent since the year 2000 is not before me. I would add that apart from appearing on the door of the Dandenong premises (at some unspecified time), there is no evidence before me of any other use of the stickers in question during the Relevant Period. Nor is there any evidence before me of any vehicles, or of any other premises, used by Dimitri, CC Pty Ltd or MIG Pty Ltd during the Relevant Period (or at all). Nor is there any evidence before me of use of the Trade Mark on “branded notebooks”.
As regards the fact that the investigator found the Dandenong premises of MIG Pty Ltd unattended in mid-December 2012, Evangelos says:
The Authorised User and the Carparts Connexion business coincidentally moved premises over December 2012 and January 2013. I attach and mark as Exhibit TM-03 invoices in relation to truck hire, and rent, demonstrating dates in January 2013.[24] I confirm that for several weeks prior we were packing up stock at [the Dandenong premises] and commencing the move. This is our explanation to the investigator’s comments that the premises were in darkness on 14 December 2012.
[24] TM-03 consists of (1) a van rental agreement between Evangelos and Thrifty Car Rental for the period 10 to 14 January 2013 and (2) a tax invoice dated 17 January 2013 for $1,200 for “rent” (apparently for premises at “3a Boileau Street, Keysborough”) for the period 10 January to 9 February 2013.
Evangelos does not address the investigator’s above quoted claim that “a telephone call was placed to the Dandenong premises which confirmed that this is the only trading premises of the business” but, be that as it may, the investigator’s second report, having been produced in December 2012, is not in any event directly relevant to the question of whether or how the Trade Mark may have been used during the Relevant Period.
Evangelos then exhibits three documents said “to further support the fact that the Trademark Owners[25] have used the Trademark, in connection with the relevant goods during the [R]elevant [P]eriod (which is in essence by way of licensing to third parties)”. He does not say why this evidence was not included in the Opponents’ evidence in support. Exhibit TM-04 is described as “Copy of the Chiotelis Family Trade Mark Agreement of Ownership, commencing in May 2006 and is in force to the current date [11 April 2013]”. It is unclear whether the entire Agreement is in evidence, but I confirm that the single operative page before me, which, inter alia, does not identify the Trade Mark or any goods, is of no relevance to my decision.
[25] Defined earlier in the declaration as “my children”, (Dimitri and Marie).
Evangelos describes the second supporting document, Exhibit TM-05, as:
A copy of a promotional flyer, distributed by [CC Pty Ltd] whilst a party to the licensing agreement for use of the Trademark. I can confirm this flyer has been distributed continuously October 2011. [sic] To support the dates of use, I also include under Exhibit TM-05 a copy of the document properties confirming date of creation. All of the marketing materials are designed “in-house”, there is no external designer invoice or similar to supply in support of dates.
The flyer in question is headed “CARPARTS CONNEXION –IMPORTERS AND WHOLESALERS” and features advertisements for engine oils, coolants, light globes, batteries, air filters, brake pads and the like under a number of different brand names. The only mention of the Trade Mark on the flyer is in relation to “electric bikes”, which are said to be “manufactured with quality parts such as ZOOM, SHIMANO, WUXING and they come with a 200W light weight high speed brush-less motor”. No manufacturer is identified. Other than via the words “Carparts Connexion”, which appear several times, CC Pty Ltd is not otherwise identified and there is nothing on the flyer to indicate any connection with Dimitri.
The third and final document said to support claimed use, Exhibit TM-06:
Is a printout showing the various brands promoted by the Authorised User [MIG Pty Ltd], as well as by former licensees including Carparts Connexion.[26] This print out is a copy of the stickers that are used as promotion by sending to customers, as they include contact details. These stickers are placed on customer walls and cabinets and the like. I can confirm that such stickers have been used since around 2008 through to the current date.
[26] I note that no licensees other than CC Pty Ltd and MIG Pty Ltd are identified in the Opponents’ evidence. Presumably “Carparts Connexion” here refers to CC Pty Ltd.
The included “contact details” that Evangelos mentions show the address “3a Boileau Street, Keysborough”, being the address to which MIG Pty Ltd apparently moved in December 2012/January 2013.[27] I accordingly infer that the stickers copied for this (single page) exhibit were produced after the Relevant Date. Unlike the stickers discussed earlier that were apparently produced in June 2000,[28] Evangelos does not mention the provenance of the stickers in this case, which include more than ten other apparent trade marks and logos in addition to the Trade Mark. As was the case with the earlier stickers, the stickers copied for this exhibit do not identify any goods, or any trading entity (other than bearing the URL Taking these matters into account, I am unable to give the exhibit any significant weight.
[27] See paragraph 35 and footnote 24 thereto.
[28] See paragraphs 33 and 34.
Under the heading “Other Information”, Evangelos then goes on in E Chiotelis 4 to refer to the evidence given in his earlier three declarations and seeks to address some of its apparent deficiencies. He begins by noting that the specification of registration 1011100 covers “Vehicles; apparatus for locomotion by land, air or water in [Class 12]” (as opposed, one might have thought, to accessories for such apparatus or vehicles), but nevertheless says of the specification:
I understand this to mean “vehicles”, which may be defined as “any means in or by which someone travels or something is carried or conveyed” and therefore will include the bicycle and trailer products clearly demonstrated in evidence, and also “apparatus” (i.e. items or things) that are made for use with vehicles or similar that move by land, air or water (i.e. for locomotion). I consider the evidence previously supplied, demonstrating the Trademark in use during the [R]elevant [P]eriod in connection with such goods as side-step kits, tow bars and the like to demonstrate use in connection with such apparatus.
As earlier noted, Evangelos’ only previous reference to a “bicycle product” was not explicit, the product merely appearing without comment on the (single) page forming Exhibit E17 to E Chiotelis 3. The page in question was apparently downloaded from the website and, as discussed in paragraphs 25 and 26, I believe was first published on the website after the Relevant Period. There has been no mention at all in the Opponents’ evidence until now of “a trailer product”.
Although I am not satisfied that the single webpage forming Exhibit E17 was published before the Relevant Date, I note for the record that E Chiotelis 4 continues:
In the previous evidence I supplied, Exhibit E17 included web pages [sic] from the website, demonstrating the Trademark to be in use. It is declared that this exhibit included a copyright notice showing the year of 2012. I declare that I maintain and update all websites myself, and that I update the copyright notice every year in the first week or so of January. Accordingly, the page seen at E17 is exactly as it appeared from the first week of January 2012 –again, within the [R]elevant [P]eriod. I reiterate earlier statements that the Trademark has been promoted through various websites connected with the Trademark Owners or their authorised users, continuously for many years and certainly through the [R]elevant [P]eriod of alleged “non-use”.
Apart from the website, the only other website in fact mentioned in the Opponents’ evidence was by Evangelos in E Chiotelis 3, where he says “the SMITTYBILT brand name has been advertised on from on or about 2005 to 2007”. That of course is some years before the Relevant Period commenced. In E Chiotelis 4 Evangelos does however go on to say:
Attached now and marked as Exhibit TM-07 is a printout from the subdomain of jebike.com.au (held on the main domain), which makes a clear reference to the Trademark. As I create and maintain the websites myself, there is no designer invoice or similar to provide to support dates. However, I include under Exhibit TM-07 the file properties for this page, which clearly demonstrates that the Trademark has appeared on this page in this manner continuously since that date in 2009.
The web page in question was apparently downloaded from the Internet on 26 March 2013 and provides details of a conditional warranty offered for an electric bicycle bearing the trade mark “J-ebike”. I am not satisfied that it shows relevant use of the Trade Mark for these goods since, inter alia, the mark does not appear on any of the pictures of the bike shown. Rather, the word “SMITTYBILT” appears solely in the warranty conditions as the apparent name of a business, in copy such as “SMITTYBILT or his Agent’s [sic] will replace any J ebike found to be of poor workmanship…” Neither “SMITTYBILT’s Agents” nor Dimitri is identified. Moreover, Evangelos does not explain why he did not mention either the bicycles or the webpage in his first three declarations. (Neither, for that matter, does Dimitri ever mention use for bicycles in any of his four declarations.) I note too that I checked the URL of the webpage ( using the search facility. Notwithstanding the “file properties” for the page included with Exhibit TM-07, this check suggested the webpage in question was created on 25 March 2013. This is the day before the webpage was downloaded for the exhibit.
As further apparent evidence of use of the Trade Mark for electric bicycles Evangelos includes as (Confidential) Exhibit TM-08:
Documents relating to the import of the electric bicycle product (from Chinese manufacturer) in June 2009 and again in February 2012. I declare that these documents relate to the product that has been subsequently branded as sold under the Trademark.
I consider the June 2009 documentation to be of no probative value since it does not mention the Trade Mark. Nor am I able to give the “February 2012” documentation any significant weight since, although the Trade Mark is mentioned, Evangelos does not say when the two bicycles involved were “subsequently branded as sold under [it]”. This is obviously critical given the Relevant Period ended on 28 February 2012. Moreover, the exhibited “Purchase Order” only indicates that the two bicycles were ordered in February 2012. The actual invoice in evidence shows the (presumably still unbranded) goods did not leave China until 11 April 2012. Indeed, the exhibited documentation prepared for the two bicycles to clear Australian Customs is dated 7 June 2012, well after the Relevant Date. I note, too, that this documentation was apparently prepared by MIG Pty Ltd and that it identifies MIG Pty Ltd as the importer (“from Chinese manufacturer”) rather than Dimitri. The purchase order is likewise signed by Evangelos and there is no indication on any of the documents concerned of any involvement by the owner of the Trade Mark.
Evangelos then turns to Exhibit TM-09, which he describes as:
Copies of sales invoices, demonstrating sales of the vehicle products bearing the Trademark to customers on dates throughout the relevant period.
This description notwithstanding, only two invoices form the exhibit, both addressed to the same customer. The earlier invoice, marked “special order not returnable”, is dated 18 May 2009 and is for “1 x SMITTYBILT MOTOR-BIKE TRAILER 2030 X 1060”. I note that this is the second (and final) reference in the Opponents’ evidence to a “trailer” apparently bearing the Trade Mark.[29] The later invoice is dated 18 January 2010 and is for “1 x TDE372 SMITTYBILT ELECTRIC BIKE”. At the bottom of both invoices the Trade Mark is also prominently displayed alongside four other apparent trade marks, presumably by way of advertising the brands in question. This is nevertheless somewhat odd on the face of it when these two invoices are compared with the three similarly dated invoices reproduced for Exhibits E13, E14 and E15 to E Chiotelis 3. Those three invoices are dated 1 June 2009, 17 February 2010 and 25 March 2011 and are described in more detail in paragraph 21 above. All five invoices were apparently issued by CC Pty Ltd and are in most respects very similarly formatted. However, no trade marks appear at the bottom of the three invoices exhibited with E Chiotelis 3 (apparently issued, as mentioned, in June 2009, February 2010 and March 2011), despite the first two of the three being dated less than a month respectively after the two invoices reproduced as Exhibit TM-09 to E Chiotelis 4 (apparently issued in May 2009 and January 2010). There is no explanation for this discrepancy in the evidence before me.
[29] See paragraphs 42 and 43 regarding the only other (albeit oblique) reference to such a product.
Exhibit TM-10 is said to be:
Copies of flyers, demonstrating the Trademark in use in connection with the relevant goods, bearing dates during 2010, 2011 and 2012. One of these flyers is a competition/giveaway promotion of a “Smittybilt” bike –drawn on 17 January 2012.
Four flyers form the exhibit. There is no information before me as to when, in what manner, to whom, or in what quantities they may have been distributed. None identifies or indicates any connection with the owner of the Trade Mark, Dimitri, and contrary to Evangelos’ claim, it is far from clear that any demonstrates the Trade Mark “in use in connection with the relevant goods” during the Relevant Period.
What I assume to be the earliest flyer bears the notice “Copyright 2010” and is headed “Carparts Connexion Wholesale Premium Auto Parts & Leisure Products”. Unlike the other three flyers (whose purpose is to announce a free gift if various indicated goods are purchased), this flyer features actual advertisements for a number of car parts and engine additives bearing various trade marks. A small section of the flyer advertises the “JE bike” and includes pictures of that product with the copy “JE bike is good for you and the environment.” Printed at right angles to this material, apparently as an afterthought but in any event of unclear significance, are the words “Available also In SMITTYBILT” (sic). The Trade Mark is not otherwise mentioned on the flyer.
Two of the remaining three flyers, headed “Carparts Connexion Wholesale Auto Parts” and “Carparts Connexion Wholesale Premium Auto Parts” respectively, merely include the Trade Mark amongst a list of several other apparent trade marks and with no reference to any particular goods. Indeed, the actual import of the flyers is to promote MAXFLOW branded air filters to the relevant motor vehicle trade by announcing that a “bonus” remote controlled model helicopter will be given away to purchasers of packs of “30 popular filters”. They accordingly suffer from the same deficiency as the invoices forming Exhibit TM-02b discussed in paragraph 31 above.
The fourth flyer is also headed “Carparts Connexion Wholesale Premium Auto Parts”, beneath which is the banner headline “WIN A SMITTYBILT ELECTRIC BIKE!” It announces that “THERE ARE TWO SMITTYBILT ELECTRIC BIKES TO BE WON!” and advertises a promotion whereby:
From 1st July 2011 until 31st December 2011 Carparts Connexion and SMITTYBILT are giving you the chance to win one of the two SMITTYBILT bikes. Every time you make a purchase of $200.00 or more of BIOLIGHT, BOYU, DASCOOL, MAXCOOL or MAXFLOW products your name will be entered into the draw for a chance to win one of these two SMITTYBILT electric bikes and remember the more purchases you make the more chances you get! Good Luck!
Whether this offer amounts to use of the Trade Mark in the course of trade in respect of electric bikes is, I consider, doubtful. On the face of it the two bikes mentioned are merely being given away as inducements to members of the trade to purchase (differently branded) motor vehicle parts. Moreover, as the next exhibit to E Chiotelis 3 makes clear, the bikes were not expected to be available to the winners before May 2012, some months after the end of the Relevant Period. In this regard identical letters dated 2 February 2012 from “Evan” of “Carparts Connexion” to the two winners are included in Exhibit TM-11. These state:
We are pleased to announce that Danaci Motors [or Ultra Tune Brandon Park, the second winner] has won one of the two SMITTYBILT electric bikes drawn on 17/01/2012.
We will be in touch with you shortly so you can choose the SMITTYBILT electric bike of your choice.
Please note that once you have chosen from our catalogue the SMITTYBILT electric bike it will delivered [sic] on or about May 2012 and should there be any shipping delays you will be advised in advance.
Once again congratulations and happy riding!
Notwithstanding the letters mention a “catalogue” from which the winners could apparently “choose the SMITTYBILT electric bike of [their] choice”, I note that this catalogue is not in evidence. Why is unexplained. However, I think it more than coincidental on the face of it that the date of these letters corresponds so closely with the date of MIG Pty Ltd’s “Purchase Order” for the two electric bikes discussed above in paragraphs 47 and 48. As there mentioned, those two bikes did not leave China until 11 April 2012, were apparently unbranded at that time and did not arrive in Australia before June of that year, being well after the Relevant Date. That said, presumably the Opponents have endeavoured in these proceedings to put forward the most cogent evidence of use available. I accordingly infer that apart from these two bikes, imported by MIG Pty Ltd after the Relevant Date and given away to trade customers in order to promote various differently branded motor vehicle products, no other “SMITTYBILT electric bikes” were imported around this period.
The final exhibit included with E Chiotelis 3, Exhibit TM-12, is a copy of a Statutory Declaration by Dimitri made 11 April 2013, to which I will refer for convenience as “D Chiotelis 4”. The declaration does not include any further evidence of substance, with Dimitri merely stating:
I reject any allegation that the Trademark has not been used in good faith in connection with the relevant class 12 goods and during the relevant period of time, which I understand to be the three years ending 28 February 2012. The Trademark has been licensed during this time to other parties, including Carparts Connexion[30] and [MIG Pty Ltd] for use in connection with the class 12 goods.
I have reviewed the statutory declaration of Evangelos E. Chiotelis, provided as evidence-in-reply in the subject matter. I confirm that the information contained therein is true and correct to the best of my knowledge, and that [MIG Pty Ltd] is an authorised user of the Trademark and authorised to make a declaration in relation to the use of the Trademark.
[30] Presumably Dimitri is referring to CC Pty Ltd here.
This completes my summary of the evidence, from which it will be apparent that the claimed use relied upon by the Opponents is, at best, very slight. In this regard I consider there is force in Ms Ryan’s submissions that:
Where a trade mark owner relies on only a few instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”: “Nodoz” Trade Mark [1962] RPC 1 (“Nodoz”) at 7, per Wilberforce J;
and
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark [1977] RPC 131.[31]
[31] See also Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4th ed., 2008) at [70.1525], where the identical points are made.
It is convenient here also to mention that Ms Ryan further questioned whether any of the specific goods in connection with which the Trade Mark was allegedly used, apart from electric bicycles, were actually covered by the registration in suit or were of the same description as the goods covered. In this regard she highlighted that neither tow bars nor side steps were “vehicles” or “apparatus for locomotion” per se. Indeed, citing dictionary definitions of the word “locomotion” suggesting it was concerned with vehicles which moved “under their own power”, she argued that the specification of registration 1011100 did not on the face of it include trailers either.
I note too that there were further aspects of the Opponents’ evidence of which Ms Ryan was (in my view rightly) critical. Be that as it may, I have not found it necessary to examine these issues in detail. Rather, as earlier foreshadowed and as discussed below, I believe the opposition must fail (as Ms Ryan also submitted) on a proper interpretation of s 8 of the Act. In particular, I am not satisfied that the claimed use was in any event “authorised” by the owner of the Trade Mark.
Discussion
Authorised use
What I see as the fundamental difficulties in the Opponents’ case in this regard are well encapsulated in the words from D Chiotelis 4 quoted above in paragraph 58. Firstly, the Opponents apparently believe that the mere licensing of the right to use the Trade Mark to a third party constitutes “use” as defined by ss 7 and 8 of the Act whether or not the third party itself actually used the mark for the designated goods during the Relevant Period. Secondly, it is all very well for Dimitri to “confirm that the information contained [in E Chiotelis 4] is true and correct to the best of [his] knowledge”, but the real problem is that what his knowledge is based upon is nowhere explained in the evidence.
As regards the first issue, there appears to be a significant misconception raised in both the Opponents’ evidence and in the written submissions of their attorney as to the import of ss 7 and 8 of the Act. In particular, the Opponents’ attorney submitted that:
Collectively, [MIG Pty Ltd] and [CC Pty Ltd] will be referred to as the Authorised Users for the purpose of these submissions.
Section 7(3) of the Act sets out that an authorised use of the Trademark us [sic] taken to be a use by the owner of the Trademark. Accordingly, the authorisation of use of the Trademark by the Trademark Owners [sic] is a use of the Trademark, and any use by the Authorised Users is to be taken as use by the Trademarks [sic] Owner. Section 8 of the Act further sets out a person is an authorised user when the use of the Trademark is under the control of the Trademark Owner. It is submitted this requirement of control over the Authorised Users to have been satisfied by the granting of a licence by the Trademark Owner to the Authorised Users, which provided the Authorised Users (or licensees) with the right to do what would otherwise have been unauthorised. (Refer: Asia Television Ltd and Another v Yau’s Entertainment Pty Ltd and Others (No 2) (2000) 49 IPR 264; Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670)
In similar vein, Evangelos says in E Chiotelis 4 at [7]:
The Trademark Owners have licensed the use of the Trademark to various parties over the years, and always with reference to the relevant class 12 goods. It is widely understood that licensing the use of a trademark is use by the Trademark Owners.
Such licenses have remained in place during the period of alleged non-use. We [sic] refer to the earlier evidence-in-support to attest to this statement, particularly exhibits E10, which comprised a trademark licence that was in place 2007-2012, and M1, which comprised a trademark licence that commenced in 2012 and remains to the current date [11 April 2013].
I consider that the trademark licensing agreements previously supplied are clear evidence in themselves of the Trademark being used by the Trademark Owners during the relevant period, and in connection with the stated class 12 goods of Vehicles; apparatus for locomotion by land, air or water in this class. Section 7(3) of the Trade Marks Act 1995 quite clearly states that:
“An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.”
Evangelos adds the following in E Chiotelis 4 at [15]:
Clearly the Opponent has established its position and accordingly the Trademark should remain on the register for the relevant class 12 goods. When considering section 7 of [the Act] which describes “use” of trademarks it is apparent that the Trademark Owners have used the Trademark, in connection with the relevant goods and during the [Relevant Period].
Section 7(3) alone establishes this matter in favour of the Opponent, as it confirms that the authorisation provided by the Trademark Owners of the Trademark is considered “use” of the trademark. The agreements provided clearly demonstrate sound licenses to have been in place during the relevant period.
The attorney’s submission that, in itself, “the authorisation of use of the Trademark by the Trademark Owners is a use of the Trademark” is, I consider, plainly wrong and I reject it. Even assuming valid and comprehensive licences were in place which, inter alia, clearly specified how control by the owner(s) of the Trade Mark was to be exercised, such a proposition is, with good reason, without any foundation. What would matter in such a case would not only be that use had in principle been authorised, but whether the authorised users had themselves actually used the Trade Mark in the course of trade for the designated goods during the Relevant Period as authorised and “under the control of” the trade mark owner.
Nor, indeed, do I accept the somewhat circular argument by the Opponents’ attorney that the “requirement of control over the Authorised Users [is] satisfied by the granting of a licence” in circumstances where, as here, the licences themselves are entirely silent on the issue of control and there is no evidence before me of any involvement by Dimitri either in producing or selecting the goods concerned or in any other relevant capacity such as financial control of the licensees.
In this regard the attorney refers in her above-quoted submission to the judgments of Gyles J in Asia Television Ltd and Another v Yau’s Entertainment Pty Ltd and Others (No 2) (2000) 49 IPR 264 (“Yau’s”) and Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670; 1A IPR 520 (“Pioneer”). I note in particular that the attorney’s full submission quoted in paragraph 63 above echoes the words of the headnote to Yau’s in the Intellectual Property Reports,[32] which states “The requirement of control over an ‘authorised user’ of the trade marks as envisaged by s 8 was satisfied by the granting of a licence which provided the licensee with the right to do what would otherwise have been unauthorised.” However, these are not Gyles J’s words. The words used by the reporter in his headnote must accordingly be read in context, this being that his Honour had already satisfied himself that the licensee concerned had actually used the marks in suit pursuant to the relevant licence (and therefore “under the control of” the licensor), notwithstanding the licensee may have then gone on to use the marks in a manner which the licensor alleged was beyond the scope of the licence. Gyles J’s point, summarised in the quoted headnote, was merely that the licensee could not rely on the alleged breach to establish that its use was not “authorised” in the sense required by s 8. That said, in reaching this conclusion his Honour quoted a passage from Aickin J’s judgment in Pioneer of direct relevance to the present opposition, as indicated below.
[32] Volume 49 (Butterworths, 2000).
In Yau’s the use in issue was pursuant to a licence granted by an overseas trade mark owner to an Australian licensee (“Yau’s Entertainment”) to reproduce and distribute the owner’s television programs in Australia. The programs were supplied to Yau’s Entertainment on video master tapes, along with ancillary promotional material, which all bore the owner’s registered marks. As part of a dispute over alleged breach of the licence conditions, Yau’s Entertainment sought removal of the marks under s 92(4)(b) of the Act. In particular, Yau’s Entertainment claimed the owner could not rely on any use by Yau’s Entertainment up to that point because the use was not under the owner’s control and was therefore not “authorised use” as envisaged by s 8. Pointing to Aickin J’s explanation in Pioneer as to what “use under the control of” a trade mark owner in reality required, Gyles J dismissed this claim, saying at [11]:
It was submitted for Yau's Entertainment that, here, the very breaches of the licence which [the owner] is complaining about show that it was not exercising actual control of the kind which is envisaged by the section. In my opinion, this kind of control is not required by the section. This submission suffers from the same kind of misconception as was exposed in the authoritative analysis of a similar issue under the 1955 Act by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670; 1A IPR 520 particularly at CLR 680–90 in a passage which is no doubt the source of the drafting of the present section. At CLR 683; IPR 531 his Honour said:
These cases demonstrate that the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connection in the course of trade with the registered proprietor, even though the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connection of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely, registration of a registered user will not save the mark if there ceases to be the relevant connection in the course of trade with the proprietor or the mark otherwise becomes deceptive.
Gyles J’s decision in Yau’s was in large part successfully appealed to the Full Federal Court, although the Full Court agreed with the primary judge’s analysis of s 8 of the Act on the issue of “authorised use” and his finding on the s 92(4)(b) application. In Yau’s Entertainment Pty Ltd v Asia Television Ltd (2002) 54 IPR 1 the Full Court, like Gyles J, also adopted Aickin J’s above-quoted formulation. In this regard, as Ms Ryan highlighted in her submissions, the Court said at [80]:
There will only have been authorised use of the mark if [the owner] exercised control over Yau's use of the mark in the sense defined in s 8. As Aickin J observed in Pioneer Kabushiki Kaishi v Registrar of Trade Marks (1977) 137 CLR 670 at 683; 1A IPR 520 at 531, the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connection in the course of trade with the registered proprietor, even though the connection may be slight, such as selection or quality control. It does not follow from the rejection of the implied terms pleaded that “control” in the relevant sense was lacking. Yau's entitlement to use the marks was referrable to the licensing arrangements, one of the terms of which was that title selections were subject to [the owner’s] approval. That provides a sufficient connection.
I note too that other judges of the Federal Court have also indicated their approval of Aickin J’s analysis, including the first instance judgment of Jacobson J in Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478[33] at [189] to [202], Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 (at 256-258)[34] and Moore J in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd (2000) 51 IPR 1 at [102]-[115], where his Honour observed at [111] that the definition of “authorised use” in s 8:
does not attempt to travel, for present purposes, beyond the bounds of what emerged from English and Australian authorities concerning the effect of licensing surveyed by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 683 ; 17 ALR 43 at 54 ; 1A IPR 520 at 531
[33] This matter was appealed to the Full Federal Court and subsequently to the High Court but neither appellate court took issue with Jacobson J’s findings with respect to the issue of “authorised use”.
[34] In relation to use by unregistered licensees for the purposes of s 23 of the Trade Marks Act 1955.
More recently, in Food Channel Network Pty Ltd v Television Food Network GP (2010) 87 IPR 620 Greenwood J said at [133]-[134] of the words “use in relation to goods” and “use in relation to services” contained in ss 7(4) and(5) and s 92(4)(b) of the Act:
The phrase “in relation to” can mean almost anything in the abstract but must necessarily be given a meaning in context. The relevant context is the structure and purpose of the Act which dictates the orthodoxy of the phrase and which requires a relationship between the owner of the trade mark, use (or at the application date, intended use) and goods or services in respect of which use, in trade, is to occur and for which the mark is registered, as specified, according to the ordinary and natural meaning of the language used.
Use of the mark in relation to goods and services is not established by showing use of the mark in relation to services provided by someone else. Section 7 of the Act which provides that use of a trade mark in relation to services means “use of the trade mark in physical or other relation to the services” does not have the effect of providing, for the purposes of the Act, that the meaning of the phrase “in relation to services” means use by the trade mark owner in relation to services provided by someone else.
In the present matter, as Ms Ryan highlighted, the licences to CC Pty Ltd (Exhibit E10 to E Chiotelis 3) and MIG Pty Ltd (Exhibit M1 to O Chiotelis ) do not address the issue of control. Nor is there evidence before me of any other involvement by Dimitri in actual use of the Trade Mark, or in how the Trade Mark may be used by CC Pty Ltd or MIG Pty Ltd. In this regard I agree with Ms Ryan’s submissions that the evidence merely indicates that the Trade Mark:
…has been predominately used (if at all) in relation to the re-sale of others’ goods. This limited manner of use is further evidenced by the fact that [the licences] are expressly limited to “…the distribution of wares and services of the Assets…” [with the term “Assets” nowhere defined in the licences]. Further, [CC Pty Ltd] is described in its own promotional material as “Importers & Wholesalers”: TM-05. … The use (if any) is confined to secondary use as a re-seller, which is not relevant use by the trade mark owner for the purpose of s 92(4)(b) absent evidence that the goods were manufactured by or on behalf of [Dimitri].
…despite the emphatic reliance on alleged authorised use in E Chiotelis 4 and the [Opponents’ attorney’s submissions], there is no evidence of control having been exercised by the trade mark owner over the licensees’ use. In particular, the [licences] are devoid of any quality control provisions over the goods and there are no alternative explanations by [Dimitri] or any of the other declarants. Therefore the [Opponents have] not proven that the use is authorised use.
In these circumstances, I agree that the required “connection in the course of trade with the registered proprietor” referred to by Aickin J in Pioneer has not been established. As mentioned in paragraph 7 above, ss 100(1)(c) and 100(3) of the Act provide that the party opposing removal bears the onus of rebutting an allegation made under s 92(4)(b). In my view the Opponents have not on the evidence before me shown that any use that may have been made of the Trade Mark during the Relevant Period qualifies as “authorised use” as contemplated by ss 7(3) and 8. Accordingly, the Opponents have not discharged the onus upon them.
Obstacles to Use
For the sake of completeness I note the Opponents have not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for any of the Goods. I accordingly find no case under s 100(3)(c) of the Act has been established.
The Registrar’s Discretion
I have found that there was no authorised use of the Trade Mark during the Relevant Period as claimed. In such circumstances s 101(1) gives the Registrar the discretion to remove the Trade Mark “in respect of any or all of the [Goods]”, whilst s 101(3) explicitly provides that discretion may be exercised in an owner’s favour if the Registrar is satisfied it is reasonable to do so.
In Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38 Bennett J said:
[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Co Ltd at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[169] In E & J Gallo at [202]–[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
• there had been no abandonment of the trade mark;
• the registered proprietors of the mark still had a residual reputation in the mark;
• there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
• 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;
• the registered proprietors were not aware of the applicant’s sales under the mark.While I accept that an opponent is not required to point to exceptional circumstances, in the present matter the Opponents have not satisfied me that any circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in Dimitri’s favour. There is no evidence before me that either Dimitri or any of his licensees used the Trade Mark to any significant extent at any time (if at all) and the Opponents accordingly do not appear to be in a position to claim the mark has garnered any significant reputation in Australia. Conversely, the Removal Applicant has on the evidence before me used the trade mark SMITTYBILT through distributors in several mainland States of Australia in relation to relevant goods from around 2005 as well as via the Internet. Moreover, not only was the Removal Applicant unaware of any use of the Trade Mark by or on behalf of Dimitri prior to filing its removal application, its enquiries since then have located no relevant knowledge of the mark in the market place. Indeed, as earlier noted, its investigator’s “enquiries in the industry disclosed only some familiarity with the SMITTYBILT brand of [the Removal Applicant] in Australia.”
In summary, in my view this is not a case, on the face of it, which warrants exercise of the Registrar’s discretion in the owner’s favour pursuant to s 101(3) and I decline to do so.
Decision
I find that there was neither use of the Trade Mark by Dimitri or by an “authorised user” in the course of trade in Australia for any of the Goods during the Relevant Period, nor were there any circumstances which were an obstacle to use. Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion not to remove the Trade Mark in respect of all the Goods. I accordingly direct that registration 1011100 be removed from the Register 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 either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.
Costs
As the successful party, the Removal Applicant is entitled to its costs and I award costs against the Opponents as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
14 January 2014
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