Figgins Holdings Pty Ltd v Beltrami S.p.A
[1998] ATMO 32
•1 July 1998
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Application by Figgins Holdings Pty Ltd for removal of trade mark number 460449, - B BELTRAMI - registered in the name of Beltrami S.p.A, an Italian company
Trade mark registration 460449 consists of the word BELTRAMI and a rendering of the letter B as shown above. Its registration dates from 23 February 1987 in the name of Beltrami S.p.A., an Italian company located in Florence, Italy. The trade mark is registered for goods in class 25, specified as:
“Suits and dresses made of leather; clothing articles for men, women and children; shirts; blouses; skirts; coats; trousers; pants; vests; jerseys; pyjamas; shoes; socks and stockings; singlets; corsets; garters; drawers; petticoats; slippers; hats; scarves; foulards; neck-ties; rain-coats; overcoats; great-coats; bathing-costumes; sports overalls; wind-resistant jackets; ski-pants and belts”
On 23 February, 1996 Figgins Holdings Pty Ltd (hereafter Figgins), filed an application to remove trade mark 460449 from the Register in respect of the goods “shoes”. The application is made under paragraph 92(4)(b) of the Trade Marks Act on the grounds that for the three year period ending 23 January 1996, Beltrami S.p.A. had not used the trade mark in Australia, or used the trade mark in good faith in Australia in relation to the goods to which the application relates. As the only goods nominated in the application for removal are “shoes” these are the only goods for which a determination may be made under subsection 101(1).
The removal application identifies Figgins as a person aggrieved. It is accompanied by a declaration from Adelina Colangelo, an employee of Figgins. Ms Colangelo’s declaration states that in her position as marketing manager of Figgins, a position she has held since 1986, she has responsibility for monitoring the use and possible infringement of Figgins registered trade marks, including Figgins’ registered trade mark 361603 consisting of the words BEL TRAMI. Ms Colangelo states that the monitoring process entails close scrutiny of relevant printed matter from the trade and reports from Figgins’ managers and buyers who have regular contact with manufacturers, importers and suppliers to the footwear industry. From this she had no record of the sale of any footwear in Australia bearing the trade mark BELTRAMI, other than footwear sold through Figgins retail outlets since 1981.
Opposition
On 20 June 1996 the Registrar advertised the removal application in the Australian Official Journal of Trade Marks and the application was then open to opposition for a period of three months. A notice of opposition to the application for removal was filed by the registered proprietor, Beltrami S.p.A., on 18 September 1996. The grounds of opposition are that:
1.The conditions required by S.92(4) have not been fulfilled.
2.The trade mark was applied for and registered by the applicant with the bona fide intention of using the trade mark and the trade mark has been so used.
3.The trade mark has been used by Beltrami S.p.A. in respect of the goods for which the mark is registered, within the period of three years ending one month before the day on which the non-use application was filed
4.The discretion of the Registrar should be exercised in favour of the registered proprietor by virtue of the circumstances surrounding the use and registration of the trade mark.
Davies Collison Cave, Patent Attorneys, agents for the opponent company, duly served a copy of the notice of opposition on Carter Smith & Beadle, attorneys for Figgins.
Evidence
Evidence in support of the opposition to removal of trade mark 460449 was served by Beltrami S.p.A. on attorneys for the applicant. The evidence consisted of a statutory declaration, dated 9 April 1997, by Mr Bruno Beltrami, president of Beltrami S.p.A., accompanied by exhibits “1” to “8”. Figgins served and filed, as evidence in answer, a statutory declaration, dated 14 October 1997, by Mr Graham Douglas Johnston, Leasing Manager of Figgins. The declaration was accompanied by one exhibit GDJ1.
No evidence was filed in reply to the evidence in answer and, at the request of the attorneys for the applicant, the matter was set down for hearing on 2 June 1998 in Melbourne. Figgins was represented by Mr Brett Connor of Carter Smith & Beadle. There was no representation made by, or on behalf of, Beltrami S.p.A. and no written submissions were filed.
Law
The provisions for removal of a trade mark are set down in Part 9 of the Trade Marks Act 1995. The provisions governing the removal application are to be found in section 92. For this application the relevant provisions are:
92.(1) A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be 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 .. in respect of which the trade mark ... is, registered.(3) ...
(4) An application under subsection (1) ... (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 ... to which the application relates.
Section 93 sets out the time requirements for the making of the application. For an application made under paragraph 92(4)(b), subsection 93(2) is relevant. The section reads:
93.(1) Subject to subsection (2), an application for the removal of a trade mark from the Register may be made at any time after the filing date in respect of the application for the registration of the trade mark.
(2) An application on the ground referred to in paragraph 92(4)(b) may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.
The onus on the opponent is set down in section 100. So far as it is relevant here, the section is as follows:
100.(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) ...
(b) ...
(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 ...(2) ...
(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 ... 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 ... during that period; or
(b) ...
(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods ... 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.
The requirements of the Registrar are set out in section 101.
101.(1) Subject to subsection (3) ..., if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods ... to which the application relates.
(2) ...
(3) If satisfied that it is reasonable to do so, the Registrar ... 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.
Standing
The application for removal has been filed in a form approved for the purposes of regulation 9.1. The form includes the statement:
Being aggrieved by the registration of the above trade mark, application is made to the Registrar of Trade Marks, under section 92 of the Trade Marks Act 1995, for the trade mark to be removed from the Register
This claim to standing is all that is required under the removal provisions of the Trade Marks Act 1995. In contrast to the Trade Marks Act 1955, the removal applicant is not required to lodge any evidence in support of the removal application. Once there is an opposition to the application for removal, the onus is on the opponent to rebut an allegation that the trade mark has not been used by the registered owner in the relevant period and to this purpose there is provision for lodgement of evidence. If the opponent challenges the applicant’s standing, the applicant has an opportunity to provide evidence to support its claim in evidence in answer. If the removal application is made in accordance with the regulations, and there is no opposition, then as explained in the Trade Marks Office Draft Manual of Practice and Procedure, the trade mark registration will be removed without further inquiry. In the present case the standing of Figgins to file the removal action has not been brought into question in the opponent’s evidence and I am not required to initiate any investigation into the applicant’s standing.
The removal application
Section 92 deals with the making of an application for removal which must be in accord with regulation 9.1. The regulation requires that the application must be in an approved form and must be accompanied by a declaration stating that an inquiry into the use of the mark has been conducted. It must also set out the findings of the inquiry that support the grounds for removal. As already discussed above, the application has been made in an approved form. The accompanying declaration by Ms Colangelo does not state that an inquiry has been made specifically for the purpose of inquiring into the use of trade mark number 460449. However, Ms Colangelo claims that, since 1986, in her monitoring of marks which are likely to infringe Figgins’ registered trade marks she has accessed information from the footwear industry and has no record, nor is she personally aware, of any use of the mark BELTRAMI other than through the Figgins’ retail outlets. It was Mr Connor’s submission, with which I agree, that the declaration meets the requirements of regulation 9.1 and supports removal grounds under paragraph 92(4)(b).
I find that the removal application is in accordance with both the Regulations and paragraph 92(2).
The timing of the application
Under the provisions of section 93(2) a removal application based on section 92(4)(b) grounds may not be made until five years after the date on which the trade mark was filed. The subject trade mark was filed on 23 February 1987. Figgins’ removal application was filed nine years later - on 23‑ February ‑1996 - and therefore meets the requirement of section 93(2).
The opponent’s case
Beltrami S.p.A. opposes on the grounds that it applied for registration of the trade mark with the bona fide intention of using it and that the trade mark has been so used. Further, it claims that there has been use in relation to goods for which the trade mark is registered within the relevant period, that is during the three years before 23 January 1996. Mr Beltrami’s declaration and exhibits are directed to establishing this claimed use as required by paragraphs 100(1)(c) and 100(3)(a).
In paragraph 5 Mr Beltrami refers to registrations of the trade mark in twelve countries including Australia. There is no reference to use of these registered trade marks. In paragraph 6, Mr Beltrami states that use in Australia commenced in about 1950 but gives no details of the goods on which the mark was used or indication of whether the use continued after that date. Exhibit “2” is a copy of correspondence between a company identified as Krieger Limited, of Florence, and Daimaru Australia Pty Ltd in relation to setting up a retail outlet for BELTRAMI. The relationship between Krieger Limited and Beltrami S.p.A. is not stated. The correspondence took place during 1990, which is outside the relevant period and, as Mr Beltrami concedes, did not result in the establishment of a retail outlet.
In paragraphs 7 and 8 of his declaration, Mr Beltrami describes the advertising and sales of shoes bearing the B BELTRAMI trade mark, purported to have taken place in Australia during the relevant period. He provides sales figures in Australian dollars for the years 1994 and 1996 in support of his statement that, in the relevant period, multiple sales of shoes bearing the trade mark were made to Australian customers, some for the purpose of re-sale. Exhibits to his declaration consist of examples of advertising in magazines and catalogues, and copies of “Tax-free Shopping Cheques” supplied to Australian customers. The exhibits are as follows:
Exhibit “3” consists of copies of three magazines. Mr Beltrami states that in the relevant period, advertisements for shoes sold under the trade mark were placed in magazines which are distributed in Australia and referred to the three magazines as showing examples of such advertisements. They are “Italia Style” (Spring 1992 edition), “The Charming Magazine” and “Timeless Appeal of Beauty” (April 1991 edition). All three are in bilingual format in English and Italian. The Charming Magazine appears to be a publication of The Charming Hotels and the “Timeless Appeal of Beauty” publication carries the Alitalia trade mark.
A selection of catalogues of “Beltrami” shoes and other fashion goods’ published between 1991 and 1996, is attached as Exhibit “4”. Mr Beltrami states that seasonal catalogues were supplied by post to Australian customers in the relevant period.
Exhibit “5” consists of a selection of “Tax-free Shopping Cheques” which are provided as evidence of the multiple sales of shoes, during the period July 1994 to June 1995, to customers residing in Australia. Each of these shows an Australian address for the customer who appears to have purchased goods from Beltrami S.p.A. at Via Cavour 8, 50123 Firenze (Florence), in Italy. Exhibit “6” is a copy of one of these “Tax-free Shopping Cheques” which identifies Mr Jeff Figgins, a director of Figgins, as the customer. There is no statement as to why this document is singled out.
The final ground of opposition relies on the favourable exercise of the Registrar’s discretion by virtue of the circumstances surrounding the use and registration of the trade mark.
Evidence in answer and submissions
Mr Johnston’s declaration filed as evidence in answer to the opponent’s case refers to a number of perceived deficiencies in the evidence of use of the trade mark furnished by Mr Beltrami. He also provides the result of an enquiry made by the marketing manager of Figgins to McGills Authorised Newsagency Pty Ltd (McGills) of Melbourne, to determine whether the magazines referenced in Exhibit “3” of the Beltrami declaration are available in Australia. A representative from McGills, specialist retailers of Australian and international magazines, advised by letter that McGills did not stock any of the three publications and she was not able to find them listed in directories held by McGills’ subscriptions department. Exhibit GDJ1 is a copy of her letter.
In his submissions at the hearing, Mr Connor amplified on the matters raised in Mr Johnston’s declaration.
Mr Connor pointed out, and I agree, that no evidence was furnished to support the claimed date of first use of the mark by Beltrami S.p.A.
He referred me to the enquiries made by Figgins’ marketing manager to McGills, specialist retailers of magazines, which failed to uncover any awareness in Australia of the magazines referred to in the Beltrami declaration. Publications that are not circulated in Australia cannot be considered as establishing any use in Australia. There is no evidence from Beltrami S.p.A. to show that these magazines are distributed here and, in the light of the information from McGills, it appears that they are not. I find that the magazines do not show Australian use.
No details are given in the Beltrami declaration as to which of the catalogues attached as Exhibit “4” were supplied to Australian customers, or to whom those catalogues were mailed, or whether any sales resulted from the supply of catalogues. Mr Connor submitted that even if the magazines and catalogues in Exhibits “3” and “4” have been distributed in Australia during the relevant period, this in itself would not be sufficient. To establish use of the mark in Australia it would be necessary to show that the advertising was directed to the Australian market and that sales had resulted from the supply of catalogues. He referred me to the decision of Midas Ltd vs Mr Figgins Pty Ltd (1987) AIPC 90-384 as an authority for the requirements of advertising and promotional literature to be considered use in Australia. I agree that the material fails to establish use of the trade mark in Australia during the relevant period. There is nothing in either the magazine advertisements or the catalogues to suggest that they are directed to the Australian market, or that they invite orders from Australian customers. Nor has Mr Beltrami furnished evidence of either the distribution of the material in Australia or of any actual sales which have resulted.
Mr Connor pointed out that the substantial sales figures referred to in paragraph 7(c) of Mr Beltrami’s declaration are not accompanied by evidence of sales made and there is no indication of whether the figures are in relation to the Australian market or world wide sales. He also submitted that if the amounts stated relate only to sales of shoes in Australia, to Australian customers either for personal use or re-sale, they would represent a sales volume in excess of what might be expected from catalogue sales alone. In his view it should therefore have been possible for Mr Beltrami to provide information on the retail outlets through which the sales had been made. I agree that the sales figures are no more than unsupported assertion and that sales of the order claimed should have been easy to support with material evidence. In the circumstances, I am not prepared to give these assertions any weight.
Mr Connor also pointed out that Tax-free Shopping Cheques allow claim back of VAT (Value Added Tax) by European retailers who sell goods to foreign customers prior to their departure from the country where the purchase is made. Therefore, he submitted, the copies attached as Exhibit “8” show only that customers who normally reside in Australia made purchases from Beltrami S.p.A. in Florence and do not provide evidence of sales of goods in Australia. From my own knowledge of this system for obtaining VAT refunds, and from the evidence of the exhibits, I quite agree.
In conclusion, Mr Connor pointed out that Mr Johnston’s declaration, which listed all the above deficiencies in the evidence of use, had been served on the opponent. However, there had been no action taken by the opponent to address these deficiencies by means of evidence in reply. He submitted that the opponent Beltrami S.p.A. has not met its onus under subsection 100(1) by establishing that there was use of trade mark 460449 in Australia during the period from 23 January 1993 to 23 January 1996, as required by paragraph 100(3)(a). On the evidence before me I have to agree that this is the case. Beltrami S.p.A. has filed evidence in support of its opposition which does not rebut the allegations of non-use in the relevant period and has failed to reply to criticisms put forward in the Johnson declaration. I find in sum that Beltrami S.p.A. has not established that, in the relevant period, it made any use in Australia of the trade mark B BELTRAMI on shoes.
Beltrami S.p.A., however, seeks a favourable exercise of the Registrar’s discretion “by virtue of the circumstances surrounding the use and registration of the trade mark”. The discretion to refuse an application under section 92 even where the grounds for removal have been established, is specifically provided for in the Trade Marks Act 1995. Where this residual discretion was implicit in the wording of section 23 of the Trade Mark Act 1955, subsection 101(3) now states that
101(3) 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.
The Registrar’s discretion under section 23 of the Trade Marks Act 1955 was generally exercised as per the directive in Ritz Hotel v Charles of the Ritz, 12 IPR 417, at pp 481-482. McLelland J states:
"The court's powers to order rectification of the register under s 22(1) and to order removal of a trade mark under s 23(1) are in each case of a discretionary nature. This is the natural and ordinary meaning of the words used and promotes the underlying policy of the Act by giving the court a sufficient degree of flexibility to give effect to public interest considerations. ....
If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, “unless sufficient reason appears for leaving it there”: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.”
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.
Beltrami S.p.A. has not demonstrated that there were any circumstances which were an obstacle to the use of the trade mark during the relevant period so that paragraph 101(3)(c) might operate in the opponent’s favour. I know of no other facts or circumstances which constitute sufficient reason to leave the trade mark on the Register for the goods subject of the removal application.
Decision
I have found that the application for removal of trade mark 460449 in respect of ‘shoes’ was properly made. Having considered the opponent’s case and evidence, and the evidence and submissions in answer, I am also satisfied that the grounds on which the application was made have been established.
No evidence has been provided of any use of the subject trade mark, in Australia, in respect of shoes, by Beltrami S.p.A., during the relevant period. Therefore the registered owner has failed to meet the onus of rebutting the removal application and I can find no reason to exercise discretion in favour of leaving the mark on the Register in respect of ‘shoes’.
I find that the removal application has succeeded, and subject to any appeal, I direct that the trade mark is to be removed from the Register in respect of the goods to which the application relates, that is to ‘shoes’.
Mr Connor sought costs and I see no reason why the costs should not follow the event, and I therefore award costs to Figgins. The costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar, and shall be in accordance with the items listed in Schedule 8.
Helen R. Hardie
1 July 1998
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