G.F.A. (Aust) Pty Ltd v Yiwu Rashel Trading CO., Ltd
[2025] ATMO 10
•15 January 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by G.F.A. (AUST) PTY LTD to application under section 92 of the Trade Marks Act 1995 (Cth) by YIWU RASHEL TRADING CO., LTD to remove trade mark number 1854476 (3) – DR RASHEL – in the name of G.F.A. (AUST) PTY LTD
Delegate: | Louise Tuohy |
Representation: | Removal Opponent: Self represented Removal Applicant: Linkwell Lawyers |
Decision: | 2025 ATMO 10 Trade Marks Act 1995 (Cth) – application under section 92 – sections 92(4)(a) and 92(4)(b) – Removal Opponent’s evidence does not show use of the Trade Mark during the Relevant Period or obstacle to use – exercise of the Registrar’s discretion not appropriate – Trade Mark to be removed from the Register |
Background
On 31 March 2023 YIWU RASHEL TRADING CO., LTD (‘Removal Applicant’) filed an application under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) seeking complete removal from the Register of the following registered trademark in the name of G.F.A. (AUST) PTY LTD (‘Removal Opponent’):
Trade mark number: 1854476
Trade mark: DR RASHEL (‘Trade Mark’)
Filing date: 29 June 2017
Specification: Class 3: Cosmetics; Cosmetics for use on the skin; Cleansing facial masks; Facial masks (cosmetic)
(‘Registered Goods’)
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
On 12 May 2023 the Removal Opponent filed a Notice of Intention to Oppose the removal of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 14 June 2023. On 8 August 2023 the Removal Application filed a Notice of Intention to Defend the Removal Application.
The Removal Opponent filed the following declaration as evidence in support (‘EIS’):
Declaration of Stephen Bell, Financial Controller of the Removal Opponent, made on 6 September 2023, with Annex A (‘Bell’).
The Removal Applicant filed the following declaration of evidence in answer (‘EIA’):
Declaration of David Li, solicitor of Linkwell Lawyers on behalf of the Removal Applicant, made on 23 November 2023 (‘Li’).
The Removal Opponent did not file evidence in reply.
Once time for filing had ended the parties were given an opportunity to request a hearing. The Removal Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee. The matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks for a decision based on the written record. I make my decision based on the particulars set out in the SGP, the EIS and EIA.
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register due to non-use.
Sections 92(4)(a) and 92(4)(b) provides:
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
The Removal Opponent nominated grounds under ss 92(4)(a) and 92(4)(b). However, given the way that s 92(4)(a) is expressed, this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years and I confirm that five years since filing the application have in fact passed.[2] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
[2] See, eg, Moores MDP Pty Ltd v Moore Stephens International Licensing [2023] ATMO 86, [23] (Delegate Wilson); Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173, [9] (Delegate Berger); Bangkok Broadcasting & TV. Co Ltd v Seven Network (Operations) Limited [2021] ATMO 78, [21] (Delegate Knowles); Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3, [22] (Delegate McDonagh). Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the Trade Mark is the three year period ending on 29 February 2023 (‘Relevant Period’).
Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent must show on the balance of probabilities[3] that it has used the Trade Mark, or a trade mark with additions or alterations not affecting the identity of the Trade Mark in relation to the Registered Goods, in good faith in Australia within the Relevant Period.
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. [4] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[7] Finally, the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[8]
[4] [2001] FCA 261, [16].
[5] Ibid [17].
[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
[7] (1962) RPC 1, 7.
[8] Ibid.
In accordance with s 101, if the ground for removal is established, I may decide to remove the Trade Mark from the Register in respect of any or all of the goods identified in the Removal Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Use of the Trade Mark during the Relevant Period
In Bell, Mr Bell states the following:
GFA Aust Pty Ltd has been selling Dr Rashel products since November 2017.
Our stock on hand of Dr Rashel products currently is 11,583 units.
Sales of Dr Rashel products have been 11,259 in 2019/2020, 5,704 in 2020/2021, 1,735 in 2021/2022 and 840 in 2022/2023.
Annex A to Bell comprises a copy of an internal Excel database listing of products, showing the ‘Total Stock On Hand’, and sales by month for the periods 1 July 2019 to 31 May 2023.
In response to the Removal Opponent’s evidence Li states that Bell did not provide any photographic or other actual evidence of how the Trade Mark has been applied onto the alleged ‘Dr Rashel products’. Li declares that the mere allegation of achieving sales (as provided in Bell) is not in itself evidence of such sales.
Furthermore, Li states that the extent that the Removal Opponent sold any cosmetic products under the Trade Mark, Bell made no mention as to whether the Removal Opponent: applied DR RASHEL onto its own products; or merely resold DR RASHEL branded products it purchased from someone else.
In my assessment, the evidence provided by the Removal Opponent is internal company documentation containing stock and sales figures, which is not supported by any corroborating or confirmatory evidence of actual sales such as invoices or of advertising undertaken by the Removal Opponent which promotes the goods branded with the Trade Mark. Therefore, I do not find this to be persuasive evidence of actual sales. Furthermore, there is no documentary evidence (such as photographs of products) that the Removal Opponent has ever applied the Trade Mark to any of the products supposedly listed on hand or sold in its evidence. If the Removal Opponent had, as it states, over 10,000 products on stock at the time it provided the EIS, it would have been relatively simple to provide photographic evidence of packaging of the product showing that the Trade Mark was used in relation to the product. I also note that this issue was specifically raised in the EIA. The Removal Opponent could have, but chose not to, address this issue by providing evidence in reply.
In the circumstances, the Removal Opponent has not provided any concrete evidence of use of the Registered Goods. Therefore, the Removal Opponent has not established that the Trade Mark has been used in good faith in relation to the Registered Goods during the Relevant Period.
Obstacles to Use
A removal opponent may rebut an allegation of non-use by establishing that a failure to use the trade mark in the relevant three year period was ‘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 circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[9]
[9] Woolly Bull Enterprises Pty Ltd v. Reynolds [2001] FCA 261, [47] (Drummond J).
The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the Relevant Period, pursuant to s 100(3)(c) and in the interests of completeness I have been unable to identify any such obstacles.
As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.
Registrar’s discretion
Section 101(3) provides:
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 Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[10]
[10] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
The Removal Opponent has made no submissions in respect of the discretion and for completeness I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.
Decision
The ground for removal under s 92(4)(b) has been established in respect of the Registered Goods.
I direct that trade mark registration 1854476 be removed from the Register. In the event of an appeal, the disposition of the removal will instead be subject to the decision made by the Court.
Costs
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
15 January 2025
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