Fashion Savings Pty Ltd v Mitchell Ogilvie

[2009] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Fashion Savings Pty Ltd to applications under section 92 of the Trade Marks Act by Mitchell Ogilvie to remove trade mark number 514291(25) - Mitch Clothing Made in Australia - in the name of Fashion Savings Pty Ltd

Delegate:

Frances Aarnio

Representation:

Opponent:  Fashion Savings Pty Ltd did not appear at the hearing but relied on written submissions prepared by its legal representative Axis Legal 

Applicant:  Mitchell Ogilvie, represented by Ian Tannahill of Ahearn Fox

Decision:

2009 ATMO 35

S 92 opposition – opponent failed to rebut non-use – non-use application successful – trade mark to be removed in part from the Register.

Background

1. Fashion Savings Pty Ltd (‘FS’) is the registered owner of trade mark 514291 (‘the subject trade mark’), details of which appear below:

Trade Mark No: 514291

Registered from:             5 July 1989

Trade Mark:  

Goods:                Class 25:  Clothing and all other goods in class 25

Endorsements: In use the description of CLOTHING appearing in the mark will be

varied in accordance with the application of the mark to other goods

comprised in the specification.

It is a condition of registration that the mark will be used in relation

to goods produced in Australia.

1. On 30 November 2006, Mitchell Ogilvie (‘MO’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the subject trade mark from the register in respect of all articles of clothing, headgear and footwear other than ladies and girls clothing.  The application was in an approved form as required by
   

   [1]Prior to 27 March 2007 reg 9.1 provided that a non-use application had to be in an approved form and supported by a declaration. The Intellectual Property Legislation Amendment Regulations 2007 (No. 1) which came into effect on 27 March 2007 removed the requirement for a supporting declaration.

   reg 9.1 as it existed at that stage.[1]

2. The removal application was opposed by FS, and the matter came before me, as a delegate of the Registrar, in Canberra on 25 February 2009.  The ground of opposition was:

   The Registrant of Trade Mark No 514291 is opposing the Non-Use Removal         Application as it has used its Trade Mark in good faith during the 3 year          period ending one month prior to 21 December 2006 for the goods the subject         of the Non-Use Removal Application.

3. MO was represented by Mr Ian Tannahill of Ahearn Fox, Brisbane.  FS did not attend the hearing, but relied on written submissions prepared by its legal representative, Axis Legal.

Evidence

1. The following evidence was filed and served in accordance with the legislation:

Declarant and status	Date	Known as	Annexures
Evidence in support
Frederick Benjamin Mitchell, director of Fashion Savings Pty Ltd	21 August 2007	Mitchell 1	A to P
Evidence in answer
Mitchell Gerard Ogilvie, director of Mitchell Ogilvie Menswear Pty Ltd	23 November 2007	Ogilvie	MGO-1 to MGO-4
Ian Robert Tannahill, registered patent and trade mark attorney	23 November 2007	Tannahill	IRT-1
Evidence in reply
William Vass, proprietor of Blue Lagoon Agencies	19 May 2008	Vass
Meza Cloes	5 June 2008	Cloes
Paul Henry Baillie, proprietor of Jagged Line Clothing Company	5 June 2008	Baillie
Fred Khedoori, director of Mr K Pty Ltd	10 June 2008	Khedoori
Jacob Kadoury, Director of Formulobe Pty Limited trading as Oxford Studio Clothing	8 July 2008	Kadoury	JK-1
Frederick Benjamin Mitchell, director of Fashion Savings Pty Ltd	18 June 2008	Mitchell 2	FBM-1

The law

1. The removal application was filed on 30 November 2006 after an amendment to s 92 of the Act came into force. As far as it relates to this matter, s 92 reads:

   (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.

   . . .

   (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:

   . . .

   (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.

2. I note that the applicable legislation allows for a removal application to be made by any person and it is no longer necessary for a removal applicant to establish that it is a person aggrieved.

The relevant period

1. The parties differed in their assessment of the relevant three-year non-use period. FS, in its Notice of Opposition and written submissions, referred to the relevant three year period as ending one month before 21 December 2006, the date the non-use application was advertised in the Australian Official Journal of Trade Marks.  MO, in its evidence in answer and via submissions made by Mr Tannahill at the hearing, identified the relevant period as 30 October 2003 to 30 October 2006. 

2. Section 92(4)(b) of the Act makes it quite clear that the relevant period is a
   three year period ending one month from the date of filing of the non-use application.  As the non-use application was filed on 30 November 2006, the period must end on 30 October 2006.  The relevant period, then, is 1 November 2003 to 30 October 2006. 

3. Although FS incorrectly identified the relevant period in its Notice of Opposition and written submissions, I am satisfied it was aware of the correct dates at the time of filing its evidence in support of the opposition and that it framed its evidence accordingly.  At paragraph 3 of Mitchell 1, Frederick Benjamin Mitchell declares:

   I am aware that the removal application was filed on 30 November 2006 and is based on an allegation that the Trade Mark was not used in relation to articles of clothing, headgear and footwear other than ladies and girls clothing during the period of 1 November 2003 to 30 October 2006.  The company opposes the removal application because the Trade Mark was used in relation to those goods, and similar goods, during the relevant period and also prior to the relevant period.

Onus on opponent

1. Section 100(1)(c) places the burden on the opponent to rebut any allegation made under s 92(4)(b). The relevant paragraphs of s 100 read:

Burden on opponent to establish use of trade mark etc.

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

(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.

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)).

Note 2:  For file and registered owner see section 6.

…

(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

…

(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.

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)).

Note 2:  For registered owner see section 6.

1. Thus, to rebut the allegation of non-use, FS has the onus of demonstrating:

   ·     use in good faith in the period 1 November 2003 to 30 October 2006, in relation to the relevant goods; or

   ·     circumstances (whether affecting traders generally or only FS) that were an obstacle to the use of the trade mark during that period.

2. The relevant standard is that of the balance of probabilities[2].

Reasons

[2] Pfizer Products v Karam [2006] FCA 1663.

Use of registered trade mark

1. As per Woolly Bull Enterprises Pty Ltd v Reynolds[3] a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal.  However, the use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[4].  If an 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”[5].  Mere assertions of use without documentary support are generally given little weight.[6]  Use must also be of the trade mark as registered, or that trade mark with additions or alterations which do not affect its identity.

   [3]51 IPR 149.

   [4][1982] FSR 72.

   [5] (Nodoz Trade Mark (1962) RPC 1 at 7 as per Wilberforce J.

   [6]Great White SharkEnterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208.

2. Through its evidence and written submissions, FS contended that it has used its mark in relation to class 25 goods since at least January 1990, with the exception of a
   7 month period from April 2005 to October 2006 when it had difficulty obtaining quality material.  Although it has specialized in ladies and girls clothing, FS states, it has also used its trade mark on an ad hoc basis on unisex clothing, T-shirts, hats, men’s shirts and men’s casual wear.

3. In response, MO argued that the evidence provided by FS fails to establish use of the subject mark (either the mark as registered or with additions or alterations that do not affect its identity) in relation to the goods of the application during the relevant period.  The evidence, MO contends, shows use of trade marks MITCH or MITCH CLOTHING, and falls outside the relevant period.

4. I agree that the evidence presented by FS does not establish use of the subject trade mark in relation to the goods of the application in the relevant period.  FS has provided a good deal of material which purports to show use of the subject trade mark.  Much of the material is undated, or falls outside the relevant period.  The material that clearly falls within the relevant period appears at Annexures C and D of Mitchell 1, Exhibit JK-1 of Kadoury and Exhibit FBM-1 of Mitchell 2. 

5. I will deal firstly with Annexures C and D of Mitchell 1, and Exhibit JK-1 of Kadoury.  This material comprises a number of sales invoices issued by Fashion Savings T/As Mitch Clothing.  All of the goods listed on the invoices are items of women’s clothing with the exception of ten “Specials”, five Men’s Cotton Shirts and three Men’s Tees.  None of the invoices provides a reference to a trade mark.

6. At Annexure M of Mitchell 1, FS provides copies of swing tags which Frederick Mitchell states were affixed to all MITCH clothing sold in retail outlets.  The first tag is round and features the words MITCH and Australia on one side.  On the other side of the tag are the words “made in australia” in lower case, and the words Size, Style, Price set out vertically below.  The second tag is rectangular.  The word MITCH appears on one side.  On the other side are the words Size, Style, Price set out vertically, with “Made in Australia” in small font underneath.

7. Even if I were to infer that the goods listed on the invoices mentioned above were provided for sale with such swing tags, I would not be satisfied such use was use of the subject trade mark.

8. The subject trade mark includes the words MADE IN AUSTRALIA.  I note at paragraph 7 of Mitchell 1, Frederick Mitchell declares that the trade mark is essentially the word Mitch, the words Clothing and Made in Australia being generic elements which do not form an essential part of the trade mark.

9. I agree that the word Clothing is not an essential feature of the mark and its omission does not alter the mark significantly.  I consider, however, the words MADE IN AUSTRALIA, are an essential feature of the trade mark.  Their presence creates a connotation that the goods bearing the trade mark have been produced in Australia.  To that end, the trade mark was registered with an endorsement limiting use of the trade mark. 

10. Although the swing tags do contain a reference to “Made in Australia”, the placement of the words on the back of the tag with miscellaneous non-distinctive trade matter such as Size, Style, Price, is a material alteration that changes the commercial impression created by the mark. The trade mark becomes simply MITCH. It no longer contains a connotation that the goods bearing the trade mark have been produced in Australia. To become aware of the geographical connotation, a consumer would need to sort through the miscellaneous material on the reverse of the tag. In my view, this does not constitute use of the subject mark as envisaged by s 92(4)(b).

11. I turn now to Exhibit FBM-1 of Mitchell 2.  Pages 9-13 of this exhibit are copies of stall receipts from Parklea Markets covering a number of days in October, November and December 2005.  Each of the receipts is in the amount of $330 and is made out to Fred Mitchell.  In Mitchell 2, paragraph 10, Frederick Mitchell recalls that in 2005 at Parklea Markets he sold some clothing, including a rack of men’s clothing consisting of about a dozen casual shirts and dress shirts with MITCH labels affixed.  Frederick Mitchell’s presence at the markets is confirmed by the stall receipts.  But there is no information on the receipts to establish that goods were sold from those stalls or that there was any use whatsoever of the subject mark. 

Circumstances that were an obstacle to use

1. FS also points to circumstances which it claims were an obstacle to use of the trade mark during the period April 2005 to October 2006.  Those circumstances included a concern over the quality of available fabric, and the consideration of the future direction of the company by Frederick Mitchell.  During the period FS ceased trading, Frederick Mitchell developed a strategy to reinvent the MITCH label as a surfwear/streetwear label for men and women, and conducted a search for suitable material.

2. The trade declarations of Baillie and Khedoori also refer to the cessation of trading by FS.  At paragraph 7 of his declaration, Paul Henry Baillie declares that he understood FS was not trading for some time because it became too difficult for Australian made clothing to compete with cheaper imported clothing.  At paragraph 5 of his declaration Fred Khedoori states that he is aware that FS stopped trading a couple of times and that he understands that one such hiatus occurred because Mr Mitchell was overseas for a period of time.

3. I do not doubt that FS experienced problems during the course of trade and those caused a good deal of inconvenience.  However, I am not satisfied that the explanation provided by FS points to circumstances so special or peculiar that they prevented it from using its trade mark.  FS has not put forward any evidence to show that the decision to cease trading was anything other than a voluntary act on the part of FS or Frederick Mitchell.

4. In summary, FS has not established use of the trade mark in the relevant period, and has not pointed to circumstances which prevented it from using its mark.  Consequently, I am satisfied that MO has established the ground on which its partial removal application was made. 

Registrar’s discretion

1. Section 101(3) of the Act allows the Registrar to decide that a trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

2. In considering the application of s 101(3), in Figgins Holdings Pty Ltd v Beltrami SpA[7] Deputy Registrar Hardie said:

   Under subsection 101(3) the Registrar needs to be “satisfied that it is reasonable” to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist, is on the opponent to the removal application.

   [7] (1998) 46 IPR 411 at 418-419.

1. In QH Tours Ltd v Mark Travel Corporation[8] Hearing Officer Thompson decided that discretion could be exercised in favour of an opponent who could show use of the trade mark prior to and after the relevant period in a bona fide fashion, could show a residual reputation in its trade mark, and could argue the likelihood of significant confusion or deception if the trade mark was removed from the Register.

   [8] (1999) 45 IPR 553.

2. FS submits that through the long-term use and promotion of its trade mark, it developed a considerable reputation in relation to fashion.  That it retains a reputation, FS contends, is evidenced by the ongoing interest of consumers in second-hand Mitch clothing sold via e-Bay.  Because of its residual reputation in the fashion industry, and its continuing use of the MITCH mark, FS says, use of the MITCH trade mark, or any mark essentially consisting of the word MITCH, by any other trader in relation to clothing, footwear or headgear in Australia would lead to confusion among consumers.

3. The trade declarations of Vass, Cloes, Baillie and Khedoori also address the possibility of confusion.  The claims in those declarations, however, are unsupported and therefore carry little weight.

1. FS provides evidence that in August 2007 it commenced redeveloping its website, The website displays samples of T-shirts for men and women and provides an email link through which parties interested in purchasing the goods for sale can contact the company.  At Exhibit FBM-1 of Mitchell 2 is a printout of the website’s homepage and photographs of the T-shirt range. I have perused the printouts and, again, find no use of the subject trade mark.  The mark in use is Mitch Clothing but there is no mention of the words Made in Australia.

2. I am satisfied FS developed a significant reputation in the fashion industry but that reputation was in relation to another trade mark, MITCH, solus, and not the subject mark.  None of the evidence put forward, covering periods before, in, or after the relevant period, shows use of the subject trade mark, either as registered or with additions or alterations that do not affect its identity.

3. In the circumstances, I am not satisfied that FS has established bona fide use of the subject mark.  I am therefore not satisfied that the public interest lies in leaving the mark on the Register in respect of the full range of goods for which it is registered.

Decision

1. I am satisfied that the grounds on which the application for non-use was made have been established. The registered owner has failed to meet the onus of rebutting the partial removal application and I can find no reason to exercise discretion in terms of s 101(3).

1. I direct that, one month from the date of this decision, trade mark 514291 is to be removed from the Register in respect of goods other than ladies and girls clothing. 

2. If the Registrar has been served with a notice of appeal before that time, I direct that amendment of the registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, the registration is made subject to its orders.

Costs

1. Both parties have requested their costs in this matter.  As the opponent is the unsuccessful party, I award costs against it at the official scale.

Frances Aarnio

Trade Marks Hearings

29 May 2009