Eurark LLC v Planet Health Pty Limited

[2010] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Eurark LLC to application under section 92 of the Act by Planet Health Pty Limited to remove trade mark numbers 706480(3) - FOREVER YOUNG - in the name of Eurark LLC

Delegate:	Jock McDonagh
Representation:	Opponent: Julia Baird SC, instructed by Pigott Stinson Lawyers Applicant: Margaret Ryan of Phillips Ormonde Fitzpatrick Patent and Trade Mark Attorneys
Decision:	2010 ATMO 75 Section 92 opposition – s92(4)(b) - opponent established use of all goods in Australia – trade mark to remain on register – costs awarded against applicant

Background

1. Eurark LLC (‘the opponent’) is the registered owner of a trade mark, current details of which appear below:

   Trade mark number:  706480
   Registered from:                   15 April 1996
   Goods:  Class 3: cosmetics, namely, cellular moisturizing

   creams, lotions and gels

   Trade mark:  FOREVER YOUNG 

2. On 13 February 2008, Planet Health Pty Limited (‘the applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade mark from the register for all goods.

3. On 6 June 2008 the opponent filed Notice of Opposition to the removal.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 4 May 2010.  The opponent was represented by Julia Baird of Senior Counsel, instructed by Pigott Stinson Lawyers. The applicant was represented by Margaret Ryan of Phillips Ormonde Fitzpatrick Patent and Trade Mark Attorneys. Ms Ryan appeared by telephone.

   Evidence

5. The following evidence was filed and served pursuant to legislation:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Frank H. Newton III	Chief Operating Officer of Opponent	26.08.08, “Newton”	FHN-1 to FHN-13 (FHN-11 and 12 Confidential)
Evidence in Answer
Peter Patrick Harwood	Director and Secretary of Applicant	3.03.09, “Harwood”	Annexures A to T, Confidential Annexures A, B, C, and D

1. Newton shows that the opponent is based in the United States of America. It sells products, including cosmetics bearing the FOREVER YOUNG trade mark, through a “referral marketing” scheme by direct mail and over the internet. Products are available for purchase by members. Membership is free and does not involve a written contract. Membership is obtained via referral from an existing member. Members are provided with catalogues and brochures and purchase goods by mail, fax, telephone or via the opponent’s web site. There appears to be a system of “compensation” for members based on purchases made by the persons (or new member or consumer) that they have referred to the opponent.

2. Harwood attests to the applicant’s Australian business in health care and complementary medicines provided to health stores and pharmacies throughout Australia.

3. Harwood also asserts that the opponent’s goods are therapeutic goods that are required to be registered pursuant to the Therapeutic Goods Act 1989 and Therapeutic Goods Regulations 1990. The goods are allegedly not so registered and Harwood asserts that the opponent’s goods may not be legally advertised or distributed in Australia.

4. Where necessary, I shall refer to specific items in evidence as appropriate in following paragraphs.

   Discussion

5. Section 92 relevantly states:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

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

   (a)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.

6. Under section 100 of the Act, the onus of establishing use of a Trade Mark lies with the opponent. To discharge the onus for section 94(4)(b), the opponent must provide evidence of a bona fide use of the Trade Mark during the non-use period. In this case, that three year period ends on 12 January 2008.

7. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

8. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

9. Counsel for the opponent directed my attention to exhibits showing the schedule of sales of products across the FOREVER YOUNG product range in the years 2005, 2006 and 2007, a number of invoices with Australian delivery addresses, and product brochures for FOREVER YOUNG products available since 2005.

10. Counsel for the applicant seeks to impugn the opponent’s case on three broad fronts. The first is that any use in evidence is not in the course of trade. The second is that the opponent cannot use its goods in good faith because to use them without registration as therapeutic goods would be illegal. The third front was that use of the opponent’s trade mark does not encompass the full range of goods in the specification.

11. Ms Baird submitted that the opponent supplies its goods only for personal consumption, direct to consumers, which does not involve trade mark use in Australia, citing W D & H O Wills (Aust) Limited v Rothmans Ltd (1955) 92 CLR 131, (1956) 94 CLR 182 (“Pall Mall”). The Court held at first instance and on appeal that a mark is not:

    ‘”used” in Australia in any relevant sense when all that happens is that a person in Australia orders goods direct from the proprietor of the mark in another country for the use of himself or of himself and his friends’: 92 CLR 138-139

12. I do not agree with this characterisation of the transactions. The evidence satisfies me that the supply of goods goes beyond mere provision for personal use. The referral marketing scheme as detailed in Newton (especially at paragraphs 9, 15 and 16) involves members promoting the opponent’s goods for the purposes of obtaining new members to purchase the goods from the United States. Purchases by new members causes “compensation” being earned by the referring member. Newton confidential exhibit FHN-11 shows several hundred catalogues being forwarded to Australia each year in the non-use period.

13. Furthermore, Pall Mall was decided well before the electronic age of business transactions. The evidence demonstrates that Australian customers have purchased FOREVER YOUNG products by mail-order, fax, telephone, or using the internet through the opponent’s website following the link “Australia”. In Ward Group Pty Ltd v Brodie & Stone Plc (2005) 64 IPR 1, Merkel J considered what use of a trade mark on the internet would constitute use in Australia. At paragraph 44, his Honour stated that:

    The first occasion on which there would have been a specific use of the Restoria mark by the website proprietors in Australia was when the trap purchasers were informed in Australia that their order had been accepted, in terms that used the Restoria name when referring to the UK Restoria product. In this case the confirmation web pages and emails that were downloaded by the trap purchasers did not refer to the Restoria mark. However, I am prepared to assume that the downloading of the acceptance of the order involved an implicit use of the Restoria mark by the website proprietor. There was also a further use of the mark in Australia by the website proprietors when the UK Restoria products were delivered by them to the trap purchasers in Australia. Both uses were uses of the mark in Australia that fall within the terms of s 120(1).

14. I am satisfied that those invoices exhibited in FHN-12 that are dated within the non-use period and specify FOREVER YOUNG products are evidence of relevant trade mark use in Australia.

15. I am also satisfied that invoices during the non-use period specify lotions, gels and creams each bearing the trade mark FOREVER YOUNG. The qualifier “cellular” in the statement of goods is, in my opinion, a reference to the goods having a beneficial cosmetic effect on skin cells. This is referred to in most of the product brochures exhibited in Newton.

16. The good faith requirement is made out when the trade mark is used in a real use in a commercial sense, as opposed to token use, as described by Drummond J in Woolly Bull, supra. The invoices in evidence demonstrate a genuine, if small, regular supply of goods during the non-use period.

17. I am not satisfied that use of a trade mark contrary to the Therapeutic Goods Act and Regulations is relevant to whether or not a trade mark is used in good faith. Even if it were relevant in these proceedings, despite the assertions in Harwood, I am satisfied that the opponent is offering its FOREVER YOUNG goods as cosmetic, rather than therapeutic, goods.

    Decision

18. I am satisfied that the opponent has used its trade mark with respect to the goods specified in the registration.  I therefore dismiss the application to remove the trade mark.

    Costs

19. As costs usually follow the event, I award costs against the removal applicant at the scale found in Schedule 8 of the Trade Mark Regulations 1995.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    17 August 2010