First Brands Properties Inc v Interco Vertrieb Kosmetischer Erzeugnisse GmbH

[2000] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by First Brands Properties Inc. to applications under section 92 of the Act by INTERCO Vertrieb kosmetischer Erzeugnisse GmbH to remove from the Register trade mark registrations numbers 339421 and 398308 for the marks MASSLINN and MASSLIN STRETCH 'N DUST, respectively

Background

On 24 December 1998, a company INTERCO Vertrieb kosmetischer Erzeugnisse GmbH (applicant for removal) filed applications, under s.92(4)(b) of the Trade Marks Act 1995, for removal from the Register of registration number 339421 for the mark MASSLINN in respect of the goods registered, namely, "small domestic utensils and containers, sweeping tools, and instruments and materials for cleaning purposes all being goods in class 21" and registration number 398308 for the mark MASSLIN STRETCH 'N DUST, in respect of "all goods in this class, including non-woven cleaning cloths", in class 21. The relevant three year period for the alleged non-use of both of the marks, under s.92(4)(b), therefore is 24 November 1995 to 24 November 1998. In terms of reg.9.1, the applications for removal on each of the registrations were accompanied by a statutory declaration by Martin Pollock, solicitor employed by the firm of attorneys acting for the removal applicant. In those declarations, Mr Pollock states that investigations conducted to determine whether the marks had been used in the three year period had proved to be negative.

The applications for removal in respect of both applications were advertised in the Australian Official Journal of Trade Marks of 28 January 1999.  Under the provisions of s.96 of the Act, notices of opposition to these applications were filed on 21 May 1999 by First Brands Properties Inc., the registered owner of the marks (the opponent).  The opposition in respect of both applications is based on the ground that the registered owner has used the marks, in good faith, in relation to the goods covered by each of the registrations during the relevant period.  Evidence in support of the opposition, which is identical in respect of both the applications for removal, comprises one statutory declaration by Christopher Michael Giles, company secretary of NationalPak Pty Ltd, together with two exhibits.  No other evidence was filed.

The hearing in the matter was held in Canberra.  Mr Martin Pollock appeared for the removal applicant.  No representation, either in written or oral form, was made on behalf of the opponent.  

Submissions
In stressing the fact that the onus rests on the opponent to answer any allegations under s.92(4), Mr Pollock submitted that the opponent's evidence had completely failed to satisfy this onus.  If a single act of use of a mark was relied upon in the evidence, as the opponent has done here, then that evidence needed to be strong and convincing - Re "Nodoz" Trade Mark [1962] RPC 1, this having been confirmed in Estate Agents Co-operative Ltd v National Association of Realtors (1988) 11 IPR 467, Mr Pollock said. He commented that in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1995) 33 IPR 577, it was held that the Registrar's function, as an administrative tribunal, was to assess matters on the balance of probabilities, "based on material which tends logically to show the existence or non-existence of fact relevant to the issue to be decided", in the words expressed in Minister for Immigration & Ethnic Affairs v Pochi (1980) 31 ALR 666. The fact to be determined was whether the opponent had used its marks in the prescribed period. From the material presented in the evidence in support, Mr Pollock submitted, the Registrar could only conclude that that fact had not been proven.

Turning to the evidence in support, Mr Pollock noted that there was no indication where the sales of the goods took place, in what period, and precisely what products had been sold.  He drew my attention to the fact that the opponent had directed its evidence of use of the marks to two items only.  Commenting on the annexures to Mr Giles' declaration, Mr Pollock said that it could not be determined what type of documents they represented, if they were purported to show sales of the goods.  The annexure, said to contain packaging used for the product 'cleaning cloth', failed to prove that the subject marks were ever used in the prescribed period, or that they were even used at all by the registered owner of the marks.  The material contained on the packaging actually disproved that the mark MASSLINN had anything to do with the opponent. 

Assertions of use not supported by material within a statutory declaration, served under the regulations, were no more than assertions and did nothing to support the claim that the registered owner used the marks, Mr Pollock said.  The opponent had every opportunity to provide relevant documentation, including invoices, brochures, or other documents linking it to use of the mark within the period.  As the Deputy Registrar had said in Peters Foods v Tip Top (1996) 33 IPR 475 at 481, the implication of the opponent's neglect was that the opponent had no use of the mark in the prescribed period. Further, as submitted in Joosse v Great White Shark (1998) 41 IPR 208, and accepted by the hearing officer, shortcomings in evidence meant that the Registrar could not ascertain whether the mark had been used by the registered owner in the relevant period.

Mr Pollock also made submissions on the standing of the applicant for removal as a "person aggrieved", citing Intencity Pty Ltd v G. J. O'Mahoney (1998) 42 IPR 91 and QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553 as authorities for the relevant principles. He said the opponent's failure in the notices of opposition to challenge the standing meant that the s.92 application was sufficient. However, the applicant for removal would have no difficulty in discharging the onus on it in the event of such a challenge, he submitted, explaining that the two registrations under consideration had been cited against the application number 740962 filed on 7 August 1997 by the removal applicant. As the date for determining the removal applicant's standing was the date of the section 92 applications, at that time the opponent was in a position to oppose application 740962. As was held in ICI Australia Operations Pty Ltd  v Duco Magic (Australia) Pty Ltd (1998) 40 IPR 35 at 39, such a scenario was sufficient to hold that the s.92 applicant qualified as a persons with a real interest in having the marks removed.

The removal applicant desired to claim costs in the proceedings. 

Discussion
 Section 92 provides that

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 and/or services in
            respect of which the trade mark may be, or is, registered.

The subject application has been made in terms of s.92(4)(b) which states:

92.(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.

Person aggrieved
The provisions of section 92(1) specify that the applicant for removal of a registered trade mark should be a "person aggrieved". The criteria for determining whether the applicant for removal is such a person, has remained the same as it was in relation to s.23 of the Trade Marks Act 1955. In explaining the meaning of the term under s.23, McLelland J, in The Ritz Hotel Ltd v Charles of the Ritz and Another 12 IPR 417 stated at 454:

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.    

The fact that both the opponent's registered marks were cited, in terms of s.44, as substantially identical or deceptively similar marks to the mark MISSLYN of application 740962, in classes 3, 8 and 21, filed by the removal applicant, shows that the applicant for removal had sufficient interest in the proceedings as a "person aggrieved".  In the absence of a challenge by the opponent as to the removal applicant's standing in the matter, or any evidence to the contrary, I am satisfied that the removal applicant qualifies as a person entitled to apply for removal of the registered trade marks. 

Onus
If an application for removal of a mark from the Register is opposed, the burden rests on the opponent to establish use of the trade mark in terms of s.100(1). As far as the onus concerns the grounds under s.92(4)(b), the opponent has an opportunity to:

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)).           
…

(3)     For the purpose of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, 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)).

In terms of s.100 then, the onus is on the opponent to show that the registered marks were used in respect of the goods as registered, in good faith, in the three year period specified in s.92(4)(b), or that, because of some circumstances the opponent was prevented from using the mark in relation to those goods.

Has the opponent rebutted the claims as to non-use of the marks in the relevant period?

The relevant period for the purpose of these proceedings is 24 November 1995 to 24 November 1998.  According to the statutory declaration by Mr Giles supporting the opponent's claim as to use of the mark, his company NationalPak Pty Ltd, sells products under the mark MASSLINN.  The exhibits to his declaration are intended to show sales of those products.  These consist of two printouts which, Mr Giles says, are of his company's invoices, and a samples of packaging of the product cleaning cloth.  The first printout carries the date 23 November 1997 and a name of a company, presumably the one that had placed an order for the goods, with two addresses.  The words 'Invoice with goods' are printed under the company's address in Scoresby, Victoria.  Two entries on the printout appear to refer to the sale and price of the products, one of those entries being in respect of 'MASSLINN SWEEPING TOOL'.  The second printout is of a similar format, dated 1 October 1998, showing two addresses for a company in New South Wales and one of the products being 'MASSLIN LWGHT', which Mr Giles, in his declaration, identifies as 'MASSLINN brand cleaning cloth'.  The accompanying exhibit - the packaging used for this product - features the trade mark CHUX with an â symbol and the trade mark MASSLINN followed by the * sign in respect of wiping cloths, and at the bottom of the packaging against the * and â symbols appear the words 'Registered Trade Marks of  NationalPak Pty. Limited'. 

The opponent has produced no evidence whatsoever in relation to the mark MASSLIN STRETCH 'N DUST of registration 398308.  The two printouts appear to suggest that orders had been received and invoices issued to two companies in respect of a sweeping tool and cleaning cloth under the mark MASSLINN during the critical three years, but nowhere on these printouts reference is made to the supplier of the goods.  Without copies of the invoices showing the supplier, or other documents to corroborate sale of the goods by the supplier, one can only assume that the sale of the goods actually occurred.  As Mr Pollock reminded me, if a person relies on one single act regarding use of a mark, then that act must be "if not conclusive proof, at any rate overwhelmingly convincing proof" - as per Wilberforce J in "Nodoz" case, supra.  This evidence falls short of such proof.    

More importantly, there is no indication in the evidence that the opponent was involved in any business transaction that might have taken place in respect of any of the products.  Mr Giles has stated that it is his company, NationalPak Pty Ltd, that sells the products carrying the mark MASSLINN and that the printouts originate from that company (although the company's name is not identified on the print outs).  The matter is further complicated by the reference to the trade mark MASSLINN as being the registered mark of the said company, which, I note, is not the name of the company who owned the mark before it was assigned to the present registered owner in April 1997.  If there is any relationship between the opponent and the company NationalPak Pty Ltd, then the opponent has made no attempt to explain it, with supporting documentation, in its evidence.  

Thus, from the evidence presented, I draw a conclusion that only the mark MASSLINN of registration 339421 has been used between the period 24 November 1995 and 24 November 1998, that use being in respect of 'sweeping tools' and 'cleaning cloths' and by a person other than the opponent - the registered owner of the mark.  If that use was authorised by the registered owner of the mark, as provided in s.7(3), such use being under the control of the registered owner - s.8(1) - then the evidence does not support such a scenario.  Concerning the mark MASSLIN STRETCH 'N DUST of registration 398308, as observed earlier, the opponent's evidence does not extend to its use, nor does it seek to establish that, owing to some circumstances, the mark could not be used during the three year period.

Conclusion
The opponent has not discharged its onus in terms of s.100 of the Act in showing that the marks MASSLINN and MASSLIN STRETCH 'N DUST have been used, in good faith, by it during the period prescribed under s.92(4)(b), in respect of the goods encompassed by the registrations of those marks. Hence, its ground of opposition to application for removal of the marks from the Register has failed.

Having so found, I direct that the trade marks of registrations 339421 and 398308 should be removed from the Register for all the goods for which they are registered.

Costs
The removal applicant being successful in these proceedings is entitled to costs.  I therefore order that the opponent pay costs to the applicant for removal. 

Vija Zars
Hearing Officer

26 May 2000