Federal Express Corporation v Cosmos European Travels Anstalt

[1999] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by COSMOS EUROPEAN TRAVELS ANSTALT to application by FEDERAL EXPRESS CORPORATION for removal under section 92 of the Trade Marks Act 1995 of trade mark registration no. 357436 - COSMOS

Background

Trade mark registration no. 357436 is in respect of the trade mark COSMOS for

Transportation by land, water and air; booking of seats for passengers for travel; car and coach hire and transport; arranging of cruises, excursions, tours; escorting of passengers or travellers; sight-seeing; tourism; travel and tourist agency

in class 39. The registration dates from 6 March 1981, in the name of COSMOS EUROPEAN TRAVELS ANSTALT (hereafter: "Cosmos" or "the opponent"). On 13 March 1996, a US company by the name of FEDERAL EXPRESS CORPORATION ("Federal Express", or "the removal applicant") filed an application, under section 92 of the Trade Marks Act 1995 ("the Act"), to remove the trade mark from the Register.

The application for removal
The grounds cited in the application for removal were based on subsection 92(1) and paragraphs 92(4)(a) and (b) of the Act, as follows:

(a)That the Trade Mark was registered without an intention in good faith that on the day on which the application for registration of the Trade Mark was filed, the applicant for registration had no intention in good faith to use the Trade Mark in Australia or to authorise the use of the Trade Mark in Australia or 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 covered by the application and there has in fact been no use in good faith of the Trade Mark in relation to those goods or services by the applicant for registration or any authorised user in relation to those goods or services at any time before the period of one month ending on the date of [the] application

(b)That up to one month before the date of [the] application, a continuous period of not less than three years has elapsed during which the Trade Mark was a registered mark and during which time there was no use in good faith of the Trade Mark in relation to all or any of the goods or services in respect of which the Trade Mark is registered by the registered proprietor or an authorised user

(c)The applicant wishes to register and use a trade mark similar to the Trade Mark in respect of goods in the same class or of the same or similar description to the goods (sic) in respect of which the Trade Mark is registered and is aggrieved by the Trade Mark remaining on the Register.

The application for removal of the trade mark was made in respect of "all or any of the goods (sic) for which it is registered". The relevant period of non-use, for the purposes of paragraph 92(4)(b), was 13 February 1993 to 13 February 1996.

In accordance with the provisions of the 1995 Trade Marks Regulations (as amended), the removal application was supported by a declaration giving details of an inquiry by the removal applicant into use of the trade mark, and "setting out the findings of that enquiry that support the grounds referred to in subsection 92(4) of the Act in reliance on which the application is made" (subparagraph 9.1(b)(ii)). This declaration was made on 13 March 1996 by Mr Ross McLean, a partner of Baker & McKenzie, solicitors, of Sydney, on behalf of Federal Express. Mr McLean explained that Federal Express was the owner of trade mark application no. 542973, for the trade mark COSMOS. The first official report on that trade mark application raised Cosmos' registration no. 357436 as a citation. On behalf of Federal Express, Mr McLean had instructed a company by the name of Trade Mark Investigation Services to conduct an investigation into the use of the cited mark in Australia. A true copy of the report from that investigation was annexed, as Exhibit RM-1, to the declaration. The report itself also contained Annexures A to D. According to Mr McLean's declaration, the investigation report showed that "the Cited Mark has been used only in relation to package tours of Europe and not in relation to other types of transport, including transport of packages." Mr McLean further declared that Federal Express intended to use its mark in business in relation to its services of interest. (Although not listed in the removal application, I mention here for clarity that those services, as specified in trade mark application no. 542973, are "Electronic tracking services for the tracking of documents, packages and cargo during the delivery process.") Mr McLean said that Federal Express had invested a "significant amount of time and expense" in promoting its mark COSMOS, only to find that the citation of Cosmos' registration was a bar to the registration of its own trade mark application. This meant that his client was a person aggrieved by the continuance of Cosmos' registration on the Register.

Having found Federal Express' application for removal in accordance with the Act, the Registrar gave notice of the application to the affected parties, and advertised it in the Official Journal of Trade Marks, for possible opposition, on 18 April 1996. In response, Cosmos filed its notice of opposition to removal on 17 July 1996.

The notice of opposition
Cosmos' notice of opposition listed five grounds:

• The section 92 applicant was not a person aggrieved

• The application for registration of the trade mark the subject of registration no. 357436 was made with an intention in good faith on the part of the applicant for registration to use the trade mark in relation to the services of the registration, and the trade mark had so been used by the registered owner or an authorised user of the trade mark.

• The registered owner or an authorised user had used the trade mark on the services for which it was registered, within the relevant period

• If it had not used the trade mark during that period, any failure to use was due solely to circumstances that were an obstacle to use of the trade mark and was not due to an intention to abandon the trade mark or to an intention not to use it in relation to the services for which it was registered

• The Registrar should exercise his discretion to refuse to remove the registration from the Register.

The evidence

Cosmos completed service and filing of the evidence in support of its opposition to removal by 16 June 1997. This evidence comprised:

v  Statutory Declaration by Kevin Reville, Director of Circuit Travel Pty Limited, dated 11 June 1997 (1^st Reville declaration). According to Mr Reville's declaration, Cosmos authorised a company by the name of Tourama Limited ("Tourama") to use the Cosmos trade mark in Australia, which in turn authorised his company to use the trade mark. Mr Reville's company, originally incorporated as Cosmos (Australia) Pty Limited in 1974, changed its name to Circuit Travel Pty Limited ("Circuit travel") on 2 April 1985. The declaration was accompanied by Exhibits HH1 to HH11.

Federal Express completed its evidence in answer by 17 September 1997. The evidence comprised:

v  Statutory Declaration by George W. Hearn, Vice President, Law Corporate and Business Transactions of Federal Express, dated 9 September 1997. The declaration was supported by Annexures A, B and C.

Cosmos' evidence in reply was then finalised by 17 February 1998. This was:

v  Further Statutory Declaration by Kevin Reville, Director of Circuit Travel Pty Limited, dated 16 February 1998 (2^nd Reville declaration). Exhibits HH12 and HH13 accompanied the declaration.

The hearing
At the completion of the evidence stages, the opponent to removal, Cosmos, requested a hearing in the matter. This came before me, as a delegate of the Registrar, in Sydney. Mr James Maxwell, of Peter Maxwell and Associates, Sydney, represented Cosmos at the hearing. Mr Brian Elkington, of Baker & McKenzie, Sydney, represented the removal applicant, Federal Express.

Submissions
The opponent's case
Mr Maxwell began his submissions at the hearing by summarising the history of the matter to date. He then informed me that the opponent was aware that its trade mark registration had been cited against Federal Express' trade mark application no. 542973. Under these circumstances, Cosmos did not deny the applicant's standing as a person aggrieved by its registration.

Mr Maxwell then went on to examine the removal application. He referred to the investigation report by the manager of Trade Mark Investigation Services, Mr Ken Taylor, which was annexed to Mr McLean's supporting declaration. Mr Maxwell said Mr Taylor's investigation report clearly stated that he had identified Cosmos as travel tour organisers and the operators of tours, marketing these services throughout Australia. Furthermore, Mr Taylor had stated that enquiries he made of five other small travel agents indicated they were all aware of Cosmos tours. Mr Taylor's investigation report also annexed a copy of a 1996 Cosmos brochure which clearly indicated use by Cosmos "in respect of the registered services." Mr Maxwell submitted that the McLean declaration, rather than setting out the findings of an enquiry which established non-use of the Trade Mark, set out findings of an enquiry that established use of the Trade Mark in respect of the registered services. Mr Maxwell said that, on the basis of these findings, the removal application did not comply with regulation 9.1 and therefore did not meet the requirements of subsection 92(2) of the Act. Being not in accordance with the Act or Regulations, the application should be dismissed. In support of his argument, Mr Maxwell cited a recent Office decision, Intencity Pty Ltd v O'Mahoney, 42 IPR 91.

Mr Maxwell then moved on to recognise that, under the present Act, as opposed to the Trade Marks Act 1955, the onus has shifted to the registered owner to prove use of its trade mark during the relevant period. He pointed out that, for the purposes of paragraph 92(4)(a), the 1^st Reville declaration set out use by Cosmos of the trade mark in good faith in Australia since at least 1973. That is, before the date of filing of Cosmos' trade mark registration. This, said Mr Maxwell, clearly demonstrated that Cosmos had an intention in good faith to use the trade mark in Australia at the time of filing its application.

Mr Maxwell then considered the onus upon Cosmos to establish use within the relevant three year period, in terms of paragraph 92(4)(b) of the Act. He said that both the Reville declarations, together with the investigation report of Trade Mark Investigation services, (being part of the removal applicant's evidence) proved use of the trade mark on all the services specified in the registration, during the relevant period. (The investigation report, as mentioned previously, was originally attached to the declaration in support of the application for removal, but was also tendered as part of Federal Express' evidence in answer.) Mr Maxwell explained that, as could be seen from the Reville declarations, Cosmos, through its licensee in Australia, Circuit Travel, acted as a tour organiser and operator, arranging tours to Europe, the USA and in Australia. Such services involved the organising of flights, car and coach hire, cruises and ferry trips, various excursions and tours such as sightseeing. Further, Cosmos transported people and their luggage, baggage or any other cargo, by land, water and air. Mr Maxwell observed that Cosmos' transportation of traveller's packages could be seen as similar to Federal Express' services of interest, "Electronic tracking services for the tracking of documents, packages and cargo during the delivery process". In arguing that I must find, on the evidence before me, that use did occur, Mr Maxwell contrasted this with the unsatisfactory, unconvincing evidence recently examined by Hearing Officer Forno in Joosse Apparel Pty Ltd v Great White Shark Enterprises, 41 IPR 208.

Mr Maxwell submitted that certain matters from Federal Express' evidence (which I will mention again later), relating to co-existence of the trade marks belonging to both parties in the USA and UK, were not relevant to the question of whether there had been use of the trade mark by the registered owner on the services specified, during the relevant period.

Mr Maxwell then turned to the question of the Registrar's discretion, as described in subsection 101(3) of the Act. He submitted that, should a technical flaw in the authorised use arrangements between Cosmos and its Australian licensee, Circuit Travel, result in my finding the use of the trade mark not to be use by the registered owner, I should nevertheless exercise my discretion to refuse to remove the registration. This was because it was clearly in the public interest to retain on the Register, in respect of all the services for which it was registered, a trade mark that had been used continuously since 1973. Mr Maxwell cited Ritz Hotel v Charles of the Ritz, 12 IPR 417, and Paragon Shoes Pty Limited v Paragini Distributors (NSW) Pty Limited (1988), 13 IPR 323, in support of these arguments.

In conclusion, Mr Maxwell submitted that, as the removal applicant's original declaration did not meet the requirements of regulation 9.1, and did not establish a finding of non-use from the initial enquiry, the opponent had been put to unnecessary expense in proving use of its trade mark. As such, said Mr Maxwell, Cosmos should be entitled to an award of costs, "regardless of the delegate's decision".

The removal applicant's case
Mr Elkington began his submissions by arguing his client's case for standing as a "person aggrieved", in terms of section 92 of the Act. He said that the McLean declaration established the case, which was also supported by the Hearn declaration, served as evidence in answer. Responding to Cosmos' notice of opposition, he rejected its contention that Federal Express was not aggrieved by Cosmos' registration. That contention was not, in any event, pursued in the opponent's evidence in support and, as I have described above, was expressly revoked by Mr Maxwell at the hearing.

Mr Elkington then expanded on certain information from the Hearn declaration. He explained that, on 31 January 1995, prior to the commencement of these proceedings, Baker & McKenzie wrote to Peter Maxwell and Associates. They advised that Cosmos' registration had been cited against Federal Express' application no. 542973, and requested that Cosmos amend the statement of services of its registration by changing the first line to "transportation of people and their luggage by land, water and air". The purpose of this amendment was to facilitate co-existence of the respective COSMOS trade marks in Australia. Cosmos declined to make the amendment.

Mr Elkington said that Cosmos' evidence showed quite clearly that the company known as Circuit Travel had used the COSMOS trade mark "in relation to promoting and booking overseas tourist travel". It did not, however, show use of the trade mark in relation to any of the "numerous other services presently covered by its statement of services". In particular, there was no evidence that Circuit Travel had used the COSMOS trade mark in relation to any of the computerised electronic tracking services of interest to Federal Express. Mr Elkington then went on to examine at some length the issue of whether, in terms of the tests set out in Jellinek's Appn (1946) 63 RPC 59, the travel services of Circuit Travel were services of the same description as the electronic tracking services of Federal Express. He also pointed to the observation made on Cosmos' behalf by Mr Reville, that although the parties have competing trade marks in the US and the UK, there "they co-exist in respect of entirely different services". Mr Elkington submitted that the services at issue in these proceedings were also fundamentally different from each other. As in the UK and US, they could co-exist on the Register in Australia, subject to Cosmos' registration being partially expunged, in accordance with its actual use of the trade mark. He suggested the form of this partial expungement could be as per the amendment previously suggested by Federal Express, that is, changing the first part of the statement from "transportation by land water and air" to "transportation of people and their luggage by land, water and air".

Mr Elkington then addressed the issue of whether Circuit Travel was truly an authorised user of the COSMOS trade mark. He said it appeared that the only document by which Circuit Travel claimed authority to use the COSMOS trade mark was the supply agreement (Exhibit HH1 to the 1^st Reville Declaration) entered into on 3 January 1995 with Tourama Limited. He noted that the agreement had no quality control provisions, and indicated that there was no financial control. Further, said Mr Elkington, there was no indication in the agreement that Tourama Limited had any rights in the COSMOS trade mark. Therefore, he said, there was a serious question as to whether Circuit Travel was an authorised user of the registration. If it was not an authorised user, then none of its use of the trade mark could be imputed to Cosmos.

Finally, Mr Elkington touched on the issue of the Registrar's residual discretion whether to remove a given registration or not. He submitted that there was no reason for exercising that discretion in favour of Cosmos in this case, as the respective marks of the parties co-exist in the US and the UK without any confusion. The inconvenience to Federal Express in not being able to use its mark in this country would be "total", whereas there would be no inconvenience to Cosmos in having its statement of services restricted to those services in which it had demonstrated an interest.

In conclusion, Mr Elkington submitted that, in light of his client's various attempts to achieve a reasonable partial restriction of the services of Cosmos' registration, if my decision should be to so restrict the services, then I should award costs to Federal Express.

Discussion

The legislation

I do not propose to reproduce here the full wording of the relevant provisions of the Act. They are extensive, and I have already covered the provisions of section 92 under which Federal Express' removal application was made, as these were paraphrased in the wording of the application. The timing for making application under section 92 (not a significant issue here) is set out in section 93. The burden upon the opponent to rebut the application, and how it might do this, is set out at some length in section 100 of the Act.

The validity of the application for removal
The first issue I must deal with in regard to this opposition is the critical question of whether the removal application itself was validly made. This has been called into question by Cosmos, the opponent, on the basis that the application set out findings of use of the trade mark in relation to the registered services, rather than non-use. The application therefore (argued Cosmos) did not comply with regulation 9.1 and subsection 92(2) of the Act. It may be inferred, however, that the Registrar did find Federal Express' application in order, as its existence was advertised in the Official Journal, and notice was given to the parties. These actions are only taken under regulation 9.2, in respect of applications filed "in accordance with the regulations". Paragraph 92(2)(b) provides that an application

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.

The removal application of Federal Express was made in respect of "all or any of the goods (sic) for which it is registered". (My emphasis added in both cases.) For completeness, I also add that nothing whatsoever turns on the fact that the removal application mistakenly refers to the goods of the registration, instead of services.

The more usual course for a removal applicant who is interested only in partial removal of a trade mark in respect of only some of the goods or services for which it is registered, is to specify their interest in partial removal, and nominate the relevant goods or services. However, the wording of both paragraph 92(2)(b), and also regulation 9.1, which refers to a declaration setting out the findings of an inquiry into use (not non-use) of the trade mark, is sufficiently broad to include Federal Express' application.

Further, it must be remembered that the application was made less than three months from the commencement of the new legislation, at a time before practice and procedures supporting the unfamiliar provisions had been properly established, or become well understood by all users of the system. I find that, although Federal Express' application may not, to a limited degree, conform with accepted practice for filing of an application for what now appears to always have been intended as a partial removal, it nevertheless conforms with the Act and Regulations. It is to be regretted, however, that the misunderstanding as to the extent of the removal intended by Federal Express was compounded by no clarification of this position being made in the evidence in answer.

With respect to Mr Maxwell's citation of Deputy Registrar Hardie's recent decision, Intencity Pty Ltd v O'Mahoney, 42 IPR 91, in support of his opposite contention, I have not found anything in that decision to sway me from my view. In her decision, Ms Hardie found that the relevant removal application was in accordance with the Act, for the same reasons that I have found Federal Express' application to be likewise. The only difference was in the finding of no use, as opposed to use, in the investigations of the respective removal applicants. I have explained why I do not believe this to be significant. After due consideration of the issues, I find the application for removal to have been validly made, in accordance with the Act.

A person aggrieved
The next issue to be addressed also concerns the removal applicant. Just as under the provisions of section 23 of the Trade Marks Act 1955, under the new provisions of section 92, a person making an application to remove a trade mark must be "a person aggrieved". The removal applicant's standing as such a person was described both in the declaration supporting its removal application, and also in its evidence in answer to Cosmos' opposition. Although Cosmos had originally disputed this standing, it did not pursue the matter in its evidence, and formally conceded the validity of Federal Express' claim at the hearing. I am satisfied that, on the evidence before me, Federal Express is appreciably disadvantaged by Cosmos' continuing registration, and is therefore a "person aggrieved" within the terms of the Act.

Burden on opponent to establish use of the trade mark
I now move on to the crux of this case, the onus of proof upon Cosmos to rebut, in terms of section 100, the removal applicant's allegations that the opponent to removal had not intended to use, and has not used, the trade mark on all the services for which it is registered. There are two issues here:

• Whether the documented use of the trade mark in Australia by Circuit Travel covers all the services specified in Cosmos' registration

• Whether, in any event, Circuit Travel's use of the trade mark represents "authorised use", imputable to Cosmos, within the meaning of the Act.

I will deal with each in turn.

Extent of use
There is, it appears, common ground between the parties that Circuit Travel provides the kind of travel agency services that are covered by the description "booking of seats for passengers for travel; car and coach hire and transport; arranging of cruises, excursions, tours; escorting of passengers or travellers; sight-seeing; tourism; travel and tourist agency" in the latter part of the statement of services of Cosmos' registration. From consideration of the evidence before me, I too am satisfied that those services have indeed been provided by Circuit Travel, under the trade mark COSMOS, within the relevant period.

The services at issue, then, are those covered by the very broad description "transportation by land, water and air" which leads the statement of services. A brief perusal of the Nice Classification list of goods and services used by this Office, has produced the following disparate listings with prefix "transport" in class 39:

• Transport by pipeline

• Transporting furniture

• Transport of travellers

• Transport and storage of waste

• Transport and storage of trash.

It is clear from this list that the phrase "transportation by land, water and air" potentially covers far more than the service of "transportation of people and their luggage by land, water and air". From examination of the evidence, including glossy brochures and travel magazines, and consideration of Mr Maxwell's submissions, I have not been convinced that the transportation services provided under the trade mark have ever related to anything other than the transportation of travellers accompanied, by obvious inference, by their luggage.

Whether the use was authorised use
The important question remains: whatever the extent of Circuit Travel's use of the trade mark, was it "authorised use", within the meaning of the Act?

Both subsections 100(1) and (2), which deal with the means by which an opponent can rebut an applicant's case for removal under either paragraphs 92(4)(a) or (b), carry explanatory notes saying:

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 use of the trade mark by the registered owner (see subsection 7(3)).

Subsection 7(3) says:

An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be use of a trade mark by the owner of the trade mark.

Following the legislative trail still further, section 8 says:

Definitions of authorised user and authorised use

8.(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).

It is apparent from the wording of section 8 that some form of control by the owner of the trade mark over its use by an authorised user is required. This may be in the nature of quality control (subsection 8(3)), or financial control (subsection 8(4)), or some other form of control, as specified (subsection 8(5)).

In the present case, Mr Reville has declared in evidence:

Cosmos European Travel Anstalt who is the registered proprietor in Australia of [trade mark registration no. 357436], has authorised Tourama Limited to use [the trade mark]. My company [Circuit Travel Pty Limited] is authorised by Tourama Limited, pursuant to the Supply Agreement dated 3 January 1995 now shown to me and marked Exhibit HH1, to use [the trade mark].

The exhibited Supply Agreement has been criticised by Mr Elkington for its absence of quality control or financial control provisions. While this may be so, I note that the agreement appoints Circuit Travel the sole and exclusive seller in Australia of tours supplied by Tourama, subject to many conditions, including several relating to its use of the trade mark COSMOS. I am satisfied that, if Tourama were the owner of the trade mark, this document would define authorised use by Circuit Travel within the spirit of subsection 8(5) of the Act.

However, the registered owner of the trade mark is not Tourama. Although the preamble to the agreement states that Tourama has been authorised by the owner of the COSMOS trade mark to use the trade mark, and to delegate its use, that owner is not named anywhere in the document. Therefore, I am left only with the briefest of explanations in Mr Reville's declaration, that Cosmos has in fact authorised use of its trade mark to Tourama. I have no indication whatsoever of the nature or extent of the control, in terms of subsection 8(1), exercised by Cosmos over either Tourama's use of its trade mark, or its decisions to delegate that use further. Under these circumstances, I do not believe I have enough information to allow me to take Circuit Travel's use of the trade mark COSMOS to be use by Cosmos for the purposes of section 100. I therefore find that Cosmos has failed to establish its use of the trade mark, in the face of Federal Express' allegations of non-use under section 92.

The Registrar's Discretion
Subsection 101(3) provides the Registrar with a discretion not to remove a trade mark from the Register, similar to the discretion that existed under the Trade Marks Act 1955. It says:

If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

In the Paragon case, supra, at page 324, three conditions are listed for consideration by the Registrar in exercising that discretion:
(a) whether anyone has been deceived or is likely to be deceived if the mark remains on the register;
(b) the significance of the continued use of the mark in good faith by the person entitled to it; and
(c) if the public interest is not adversely affected and such title and use are shown, then technicalities or defects and legal formalities may be overlooked.

Although I have found that I have not been provided with evidence that will allow me to impute Circuit Travel's evidence of use to be use authorised by Cosmos, I am of an open mind as to whether or not such evidence actually exists. I propose to give Cosmos the benefit of the doubt, in as much as it is clear from the evidence that Circuit Travel believes itself to be authorised to use the trade mark by Cosmos, via Tourama. Circuit Travel maintains close identification with the trade mark. On the Cosmos tour brochures tendered in evidence, it is identified simply as "our Australian address: Cosmos". Further, the report by the manager of Trade Mark Investigation Services (commissioned by Federal Express) says, at page 2 that a company, trading under the name Cosmos, had been identified as Circuit Travel. The report continues:

We have identified that Cosmos [meaning: Circuit Travel] is a travel, tour organiser and operator of tours. They are especially strong in Europe and market these services widely in Australia.

We visited the Flight Centre at Elizabeth Street Sydney and Traveland, David Jones Sydney and were able to obtain a 1996 Tour Guide for Europe, Britain, Turkey and Israel…

These tours are well known and well regarded. Enquiry of 5 other smaller travel agents revealed they are all aware of Cosmos Tours.

We also visited the Qantas head sales office at Chifley square and they also had the 1996 Cosmos Tour Guide.

All the evidence before me points to the fact that use of the trade mark by Circuit Travel has been, and continues to be, considerable. In the Ritz case, supra, McLelland J held that:

If the condition of exercise of the court’s power has been established, the entry of the trade mark should be expunged or removed unless sufficient reason appears for leaving it there.

I believe I have such "sufficient reason". It is in the public interest that a trade mark as well used and widely known as the one at issue here remains registered for the services for which it is used. The public would be likely to be deceived and confused by any other party being permitted to use the trade mark on the same or similar services, which possibility would be laid open by my removing Cosmos' trade mark from the Register on a technicality.

Having said that, however, I must return to my earlier finding that Circuit Travel does not, and has not, used the trade mark on all services relating to "transportation by land, water and air". Services such as Federal Express' cargo tracking services, which arguably may fall under that general description, are not, I believe, services of the same description as the services of "transportation of people and their luggage by land, water and air" actually provided by Cosmos. Given this circumstance, I do not propose to exercise my discretion to allow Cosmos' registration to remain in respect of the broad claim it presently enjoys.

Decision and costs

After due consideration of all the circumstances of this removal opposition, I have decided to exercise the Registrar's discretion not to remove Cosmos' registration from the Register, provided that its statement of services is restricted to conform with the manner in which the trade mark is used. I therefore direct, under the authority of subsection 101(3), and subject to any appeal from my decision, that the services covered by registration no. 357436 be amended to:

transportation of people and their luggage by land, water and air; booking of seats for passengers for travel; car and coach hire and transport; arranging of cruises, excursions, tours; escorting of passengers or travellers; sight-seeing; tourism; travel and tourist agency.

Both parties have petitioned me that they should have costs awarded in their favour, essentially regardless of the outcome of the opposition. In the event, the decision I have arrived at gives each a degree of success. Overall, I have found somewhat puzzling the apparent reluctance of the parties to negotiate for themselves, at a much earlier stage, the compromise (already reached in other jurisdictions) that I have now imposed upon them. I consider it is appropriate in this situation that each party bears its own costs.

Claudia Murray
Acting Hearing Officer
15 March 1999