Divine Club Pty Ltd v Les Grands Chais De France SAS

[2024] ATMO 223

TRADE MARKS ACT 1995

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

Re:Opposition by Divine Club Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Les Grands Chais De France SAS for removal of trade mark number 1999006 (33) – DIVINE CLUB AUSTRALIA (Figurative) – in the name of Divine Club Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: GFS Legal Pty. Ltd.

Applicant: Collison & Co

Decision:

2024 ATMO 223

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 29 May 2023 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Les Grands Chais De France SAS (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1999006

Lodgement date

28 March 2019

Goods

Class 33: Alcoholic beverages containing wine; Beverages containing wine (wine predominating); Blended wine; Cooking wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Fortified wines; Ginger Wine; Hampers consisting predominantly of wine; Low alcohol wine; Mulled wines; Non-sparkling wines; Red wine; Sparkling fruit wines; Sparkling wines; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; Vintage wines; White wine; Wine

(‘Registered Goods’)

Owner

Divine Club Pty Ltd

Trade Mark

(‘Trade Mark’)

Endorsement

It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical Indications and Other Terms for use of the Geographical Indication AUSTRALIA and that the use will accord with the Wine Australia Act 2013.

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Divine Club Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal and a Statement of Grounds and Particulars (‘SGP’) on 12 July 2023.  The Applicant filed a Notice of Intention to Defend on 21 August 2023.

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Bohan Wu, legal representative with GFS Legal (‘Wu declaration’)	17 November 2023	Various unnumbered attachments[1]
Evidence in answer (‘EIA')
N/A (none filed)
Evidence in reply (‘EIR’)
N/A

[1] Prior to the filing of the EIS (on 1 November 2023) the Opponent filed several undated and unidentified documents with this office.  On 9 November 2023 this office informed the Opponent that as this evidence was not filed in the form of a declaration it would not be accepted and invited the Opponent to file the evidence in the form of a declaration, which it did on 17 November 2023.  I have had regard to the Wu declaration including the unnumbered attachments but not to the material filed on 1 November 2023.

5.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 23 February 2024 the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 19 September 2024.  In line with usual practice, a letter was sent to the parties on 22 August 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 3 September 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 12 September 2024 (‘Applicant’s Submissions’). 

6.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed earlier in this decision:

·The Application for Removal;

·The Notice of Intention to Oppose and SGP;

·The Opponent’s Submissions; and

·The Applicant’s Submissions.   

The Relevant Provisions

7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

92  Application for removal of trade mark from Register etc.

(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)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorise the use of the trade mark in Australia; or

(iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)  has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

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

(i)used the trade mark in Australia; or

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

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

Note 1:For file and month see section 6.

Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 29 April 2023 (‘relevant period’).

9. I note that an application under s 92(4)(b) may not be made before a period of three years has passed from the filing date of the application for the Trade Mark,[2] and I confirm that three years since filing the application have in fact passed.

[2] See s 93(2) in its current form, which applies to trade marks filed from 24 February 2019 onwards and hence applies in the present matter. 

10.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100  Burden on opponent to establish use of trade mark etc.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
(b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

[…]

(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) 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 its registered owner in relation to those goods or services during that period; or
 (b)  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; or

(c) 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.

11.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

[3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

12.     In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6]  Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[7] 

[4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[5] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

[7] Act s 7(3).

14.     The principles about when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[8]

[8] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

Discussion

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for three[9] years.[10] As the Trade Mark had been registered for more than three years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[11]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

   [9] For trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

   [10] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

   [11] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

2. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

3. The Opponent’s evidence in this matter consists of a declaration by its legal representative Bohan Wu.  I note that the Wu declaration makes various assertions about the conduct and the intention of the Opponent.  Mr Wu is the third-party legal representative of the Opponent and hence is unlikely to have direct knowledge of the facts asserted, nor does Mr Wu indicate who has provided him with this information (other than stating that his declaration is based on instructions provided to him by his client).  Evidence about the actions of a corporate entity should generally be given by a person with direct knowledge of the events and to the extent that Mr Wu’s statements are not supported by relevant documentation I have had limited regard to them.

4. The Wu declaration states that the Opponent has been actively producing and selling wines and marketing his (sic) products and that the Opponent has purchased a freehold property in Victoria and plans to expand in the UK market.  In support of those statements the Wu declaration attaches the following documents:

   A.   Proof of registration of Divine Winery as a business name on 9 June 2022 and confirmation of change of company name from Divine Club Pty Ltd to Divine Estates Group Pty Ltd in August 2022. 

   B.   A document confirming the granting of a liquor licence to the Opponent on 17 December 2021.

   C.   Photos of bottles of wine bearing the Trade Mark.  Thes photos are undated though the wine bottles have a 2019, 2020 or 2021 date on the bottle.  There is no evidence where these photos were taken but the third and fifth photo contain Chinese characters indicating that the photo is likely used in connection with the sale and advertising of the wine in China or other Chinese-language jurisdictions.

   D.   Two invoices from Winechek Pty Ltd/Vintessential Laboratories to the Opponent from 2022.  The invoices refer to to a 2021 Divine Club Shiraz but on their face the invoices appear to be for laboratory testing of a bottle of wine provided by the Opponent.  They do not appear to be invoices for the sale of wine.

   E.    A single page from a website known as ‘The Wine Front’ that contains the words ‘Divine Club Shiraz 2019’ but does not provide any further information (the page indicates that a subscription to the website is needed for more information).

   F.    Confirmation that the Opponent registered the domain name <divinewinery.com.au> in June 2022 and an undated extract from the website at the domain name, which does not display the Trade Mark or indicate whether the Opponent offers wine for sale from the website.

   G.   Evidence that on or around January 2020, prior to the relevant period, the Opponent entered into a purchase contract and exported wine described as ‘2019 Divine Club Shiraz Mildura’ to China.

   H.   Evidence that the Opponent has incorporated a company called Divine Estates Group Ltd in the United Kingdom.

   I.     A property sale contract indicating that the Opponent has purchased property in Victoria on June 16, 2022.

5. The evidence in the Wu declaration is insufficient to show use of the Trade Mark for the Registered Goods in Australia in the relevant period.  Had the Trade Mark been used it would have been relatively straightforward for the Opponent to provide evidence of the sale or advertising of goods bearing the Trade Mark in Australia in the relevant period (such as invoices for the sale of the wine photographed to Australian customers or dated evidence of advertising).  The Opponent has not done this.  Rather documents A, B, H and I simply indicate the acquisition of a company name, business name, liquor licence and/or property.  None of this amounts to use of the Trade Mark.  The extract from the Opponent’s Website at document F is undated and, in any event, does not display the Trade Mark or indicate use in the relevant period.  Documents C, E and G indicate that at some undated point the Opponent applied the Trade Mark to bottles of wine, some of which was likely exported to China before the relevant period[12], which again is not clear use of the Trade Mark in the relevant period.  Finally, document D indicates that a laboratory test was conducted on wine described as ‘2021 Divine Club Shiraz’ in 2022 but does not demonstrate use of the Trade Mark (noting the Trade Mark is a figurative mark and not the words ‘Divine Club’).  The material annexed to the Wu declaration does not establish that wine bearing the Trade Mark was ever made available or advertised in Australia in the relevant period.  Noting my comments at paragraph 13 above, in the absence of clear dated evidence indicating the sale or advertising of wine bearing the Trade Mark (or other conduct illustrating the use of the Trade Mark under law), I am not satisfied that the Wu declaration shows evidence of use of the Trade Mark for the Registered Goods in the relevant period.

   [12] Paragraph 11 of the Opponent’s Submissions acknowledge that the sales contracts and marketing materials are aimed at the Chinese market.

   Obstacles to use

   20.     The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.

   Registrar’s Discretion

   21.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Remaining Goods.[13] The burden of persuasion falls in this regard falls on the Opponent.[14]

   [13] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [14] Ibid.

   22.     The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

   Decision

   23.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1999006 be removed from the Register one month from the date of this decision. 

   24.     If the Registrar is served with a notice of appeal 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 registrations be dealt with as the Court sees fit.

   Costs

   25. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   19 November 2024