G.P. Embleton & Company Pty Ltd v SKU Family Hold Co Pty Ltd

[2024] ATMO 133

TRADE MARKS ACT 1995

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

Re:Opposition by G.P. Embelton & Company Proprietary Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by SKU Family Hold Co Pty Ltd to remove trade mark number 1999386 (class 1) – Stick-it - in the name of G.P. Embelton & Company Proprietary Limited

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: IP Gateway Patent & Trade Mark Attorneys Pty Ltd

Decision:

2024 ATMO 133

Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – use of the trade mark established – trade mark to remain on the Register

Background

1. G.P. Embelton & Company Proprietary Limited (‘Opponent’) is the registered owner of the trade mark detailed below:

Trade Mark Number:              1999386          

Filing Date:  29 March 2019

Trade Mark:  Stick-it               (‘Trade Mark’)

Specification:  Class 1: Adhesives for floor coverings (‘Goods’)

1. On 17 July 2023, SKU Family Hold Co Pty Ltd (‘Applicant’) filed an application under
   

   [1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Act’) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Regulations’).

   s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] for removal of the Trade Mark from the Register of Trade Marks (‘Removal Application’).

2. On 17 August 2023, the Opponent opposed the Removal Application filing a Notice of Intention to Oppose and Statement of Grounds and Particulars (‘SGP’).  The Applicant filed a Notice of Intention to Defend the Removal Application on 15 September 2023.

3. The Opponent then proceeded to file its evidence in support of the opposition consisting of a declaration of Ebony Fraser, Marketing Manager of the Opponent, made on 5 October 2023 with Exhibits 1-5 (‘Fraser’).  No other evidence was filed and the parties were given the opportunity to file a request to be heard. 

4. The Applicant requested that the proceeding be determined without a hearing and the Opponent did not ask to be heard.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Opponent’s evidence

1. Ms Fraser claims that the Opponent first used the Trade Mark in Australia in 2019 when it began selling its private label product range Ulti-Mate.  According to Fraser, the Opponent has consistently sold the Goods under the Trade Mark since March 2019 through retail stores, Embelton Trade Centres nationwide and its ecommerce store at (‘Opponent’s online store’).

2. Fraser annexes copies of Product Datasheets and Material Safety Data Sheets for  EMBELTON ULTI-MATE STICK-IT dated 10 January 2019.  The Safety Data Sheet lists the recommended use of the product as ‘Adhesives’.  The Opponent claims that these materials were produced in 2018 and published on 10 January 2019. 

3. In support of its claim to having used the Trade Mark for the Goods, Fraser also provides a list of sales from 22 May 2019 to September 2023 of ULTI-MATE STICK-IT 16kg drums (‘Sales Data’), a tax invoice for the sale of 8 x 16kg drums of the Goods dated 15 September 2023, undated photographs of a display for the Goods at the Embelton Trade Centre in Braeside, Victoria and a ‘recent’ (but undated) screenshot of the Opponent’s online store showing the Goods bearing the Trade Mark being offered for sale.

Legal Framework

1. Part 9 of the Act deals with the removal of trade marks for non-use and relevantly to this matter, s 92(4)(b) provides:

92  Application for removal of trade mark from Register etc.

(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.

1. An application under s 92(4)(b) with respect to a trade mark may not be made before a period of three years has passed from the date the particulars of the trade mark were entered into the Register.[2]  The Trade Mark was entered on the Register on 9 December 2019 and hence this requirement is met.   

   [2] Per s 93(2) which applies to trade marks filed from 24 February 2019 onwards.

2. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 17 June 2023 (‘Relevant Period’).

3. Pursuant to s 100(1), the Opponent bears the onus of rebutting an allegation made under
   

   [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.

   s 92(4)(b). To successfully rebut the allegation of non-use, the Opponent must establish on the balance of probabilities[3] that it has used the Trade Mark, or a mark with additions or alterations not substantially affecting the identity of the mark, in good faith for the Goods within the Relevant Period.

4. 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] but if a single act is relied upon then it ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[6]  Little weight is to be given to assertions of use which are not supported by documentary evidence.[7]

   [4] [2001] FCA 261, [16].

   [5] Ibid, [17].

   [6] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [7] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

5. In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the Goods, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the applications for removal were made are established.

Use of the Trade Mark during the Relevant Period

1. Fraser declares that the Opponent has continuously used the Trade Mark in Australia for the Goods since 22 March 2019 and as outlined above, a number of documents are provided in support of this assertion.  It is apparent from these documents that the Opponent’s products are adhesives for floor coverings.  However, only the Sales Data falls within the Relevant Period and many of the supporting documents show the mark used with additions or alterations. 

2. Accordingly, I must decide whether the supporting documents, together with the sales data,  establishes use of the Trade Mark or a mark with additions or alterations not substantially affecting the identity of the Trade Mark.  A trade mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’ has been interpreted to mean that the trade marks being compared must be substantially identical.[8]  The test for whether marks are substantially identical was set out by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

   [8] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ) (‘Wicked’).

   [9] (1963) 109 CLR 407, 415.

3. More recently, the Full Federal Court considered the test for substantial identity in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[10] (‘Accor’) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[11] finding that the test requires that the trade marks are considered side by side while having regard to the essential features or dominant cognitive cues of the marks.  

   [10] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

   [11] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

4. The marks for comparison in the present case are:

Trade Mark

Forms of use of the Trade Mark

STICK-IT

     i.       EMBLETON ULTI-MATE STICK-IT;

   ii.      ULTI-MATE STICK-IT;

 iii.      

 iv.      

1. In my opinion, neither EMBLETON ULTI-MATE STICK-IT nor ULTI-MATE STICK-IT are substantially identical to the Trade Mark.  I consider both of these marks to be composite marks of which the mark STICK-IT forms only part of the mark.  Both these forms of the mark include other distinctive words.  On a side by side comparison of the Trade Mark and each of these marks, there are obvious differences.

2. In form (iii) being the manner in which the Trade Mark is used in the heading of the Material Data Sheets, the Trade Mark is arguably being used separately from either of the marks EMBELTON and ULTI-MATE.  The Trade Mark is on a separate line to EMBELTON and whilst it appears next to ULTI-MATE, the bolder font used emphasises the Trade Mark indicating that STICK-IT is a separate mark from ULTI-MATE.

3. Similarly, in form (iv), the Trade Mark appears separately from both EMBERTON and ULTI-MATE as well as being featured in a different colour.  In my opinion, this constitutes use of STICK-IT as a separate mark and therefore, is use of the Trade Mark as registered.  This is the form of the Trade Mark used on the product packaging according to Exhibit 5 and as illustrated in Exhibit 4 of Fraser.  Whilst these extracts are undated, I am satisfied that this is the form of the mark used on the Goods which were sold to the various third parties listed in the Sales Data during the Relevant Period.      

4. On my assessment of the Opponent’s evidence, I am satisfied that the Opponent has sold the Goods under the Trade Mark in Australia during the Relevant Period.

Decision

1. The Opponent has successfully rebutted the allegation of non-use.  I direct that trade mark registration number 1999386 remain on the Register.

2. The Applicant has the right to appeal this decision. If the Registrar is served with a notice of appeal, the disposition of the Removal Application shall be dealt with as the Court sees fit.

3. Costs generally follow the event and I award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

23 July 2024