General Mills, Inc v Maria Christofis and Nikitas Christofis - [2013] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by General Mills, Inc to application under section 92 of the Act by Maria Christofis and Nikitas Christofis to remove trade mark number 347155 (30) - NATURE VALLEY - in the name of General Mills, Inc

Delegate:	Michael Kirov
Representation:	Opponent: Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys, assisted by Kimberley Evans of the same firm Applicant: No appearance
Decision:	2013 ATMO 18 s 92(4)(a) and (b) opposition: Section 92(4)(a) ground successfully rebutted. Use shown for broad range of goods and s 92(4)(b) ground only partially established. Exercise of discretion in Opponent’s favour for the remaining goods. No costs order made.

Background

General Mills, Inc (“the Opponent”) is the registered owner of trade mark registration 347155, relevant details of which are as follows:

Trade mark number: 347155
Registered from: 11 June 1980

Goods:Class: 30 All goods included in this class
Trade Mark: NATURE VALLEY (“the Trade Mark”)

On 8 September 2011 Maria Christofis and Nikitas Christofis (“the Removal Applicants”) filed an application based on sections 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) for full removal of the Trade Mark from the Register, alleging in the case of the s 92(4)(b) ground that the Trade Mark was not used in good faith in relation to the registered goods during the three year period ending on 8 August 2011 (“the Relevant Period”).
On 31 January 2012 the Opponent filed a Notice of Opposition to removal (“the Notice”) raising, inter alia, the following grounds:

The [T]rade [M]ark was applied for and registered by the [A]pplicant with the bona fide intention of using the [T]rade [M]ark and the [T]rade [M]ark has been so used;
The [T]rade [M]ark has been used by the registered proprietor in respect of the goods for which the mark is registered, within the [Relevant Period]; and
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 [T]rade [M]ark.

The Opponent’s evidence in support consists of statutory declarations by:

Joshua J. Burke made on 22 May 2012, with Exhibits JJB-1 to JJB-10[1] (“Burke 1”);
Joshua J. Burke made on 3 December 2012, with Exhibits JJB-11 to JJB-29[2] (“Burke 2”)
[1] Of which Exhibits JJB-5 and JJB-6 are claimed to be confidential.
[2] Of which Exhibits JJB-14 and JJB-16 are claimed to be confidential.

The Removal Applicants have not served or filed any evidence in the proceedings.
I heard the matter as delegate of the Registrar of Trade Marks in Sydney on 15 February 2013. The Removal Applicants did not appear, nor were they represented at the hearing. Their attorneys of record, Jirsch Sutherland IP, confirmed by email on 8 February 2013 that neither would the Removal Applicants be filing any written submissions in support of their application.
Trevor Stevens of Davies Collision Cave, Patent & Trade Mark Attorneys, assisted by Kimberley Evans of the same firm, appeared for the Opponent. Mr Stevens’ oral submissions were supplemented by written submissions emailed to the Removal Applicants’ representatives and to me on 12 February 2013.

The Law

Section 92 of the Act is reproduced below:

92 Application for removal of trade mark from Register etc.

(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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.

(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note: For prescribed court see section 190.
(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.

Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.
(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

Sections 100(1)(a)(i)[3] and (b) of the Act provide that the Opponent bears the onus of rebutting either (or both) the allegations made under s 92(4)(a) that, as at 11 June 1980, it had “no intention in good faith to use the [T]rade [M]ark” or that the Trade Mark “has not, at any time before [8 August 2011], been used, or been used in good faith, by [the Opponent] in relation to the relevant goods and/or services”.
[3] As will become apparent, the Opponent relies on ss 100(1)(a)(i) and 100(1)(b) in rebutting the s 92(4)(a) allegation and accordingly ss 100(1)(a)(ii) and (iii) are not relevant to this discussion.
Section 100(1)(c) of the Act provides that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), by establishing that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used in good faith during the Relevant Period, or that there was an obstacle to use during that period.
Finally, (and with particular relevance to Mr Stevens’ submissions and the discussion which follows), is s 101 of the Act, which deals, inter alia, with the Registrar’s discretion:

Determination of opposed application—general

(1) Subject to subsection (3) and to section 102, 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 and/or services to which the application relates.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(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.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;

to those to which the application relates.

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)).

Note 2: For registered owner see section 6.

I proceed on the basis that the relevant standard of proof the Opponent bears is on the balance of probabilities.

Discussion

Section 92(4)(a)

Intention to use

I believe this aspect of the Removal Applicants’ application may be quickly dealt with. As Mr Stevens highlighted, the Removal Applicants have taken no part in proceedings beyond the actual filing of the removal application itself. I note in this regard that since amendment to the Act and to the Trade Marks Regulations 1999 in October 2006 a removal applicant is no longer obliged to explain why it is aggrieved nor to support its removal application with a declaration in support of its allegation of lack of intention to use and/or non-use.[4] Indeed, it is conceivable a removal application might be filed for reasons quite unrelated to any public interest or any objective private commercial need.
[4] Prior to 23 October 2006 reg. 9.1 required a removal application to be accompanied by a declaration stating that an inquiry into the use of the trade mark had been conducted and “setting out the findings of that enquiry that support either or both of the grounds for the application referred to in subsection 92(4) of the Act”.
As Mr Stevens reminded me, all the Removal Applicants have done in this case is “tick both the s 92(4)(a) and (b) boxes” on the standard Removal Application form provided by IP Australia, filed the document in question and then taken no further part in the ensuing process. For the sake of completeness I mention Mr Stevens did draw my attention to previous proceedings between the parties, being a partially successful opposition by the Opponent to an application by the Removal Applicants to register the trade mark NATURE’S VALLEY for a range of non-alcoholic beverages in Class 32 (“the 2012 Opposition”)[5]. He noted that the present proceedings were commenced only shortly before the 2012 Opposition was heard and, on the face of it, the reason behind their commencement would be tied up with that earlier opposition.
[5] General Mills, Inc v Nikitas Christofis and Maria Christofis [2012] ATMO 59 (20 June 2012).
Against this background I agree that the Opponent has effectively discharged its s 100(1)(a)(i) onus by affirming in the Notice that it had the requisite intention to use the Trade Mark as at the relevant date. It would be unreasonable to ask more of it in the absence of any more specific allegation from the Removal Applicants or of any evidence contradicting its reaffirmed intention. That said, if it had been necessary to so decide, I think that in the circumstances of this case the Opponent could reasonably claim that the Registrar’s discretion under s 101(3) ought be exercised in its favour in respect of the s 92(4)(a) ground in any event.
The Opponent has in any case essentially satisfied s 100(1)(b) by providing unchallenged evidence of its significant use of the Trade Mark in Australia for a range of relevant goods prior to 8 August 2011.
I accordingly find that the ground for removal based on s 92(4)(a) of the Act is not established.

Section 92(4)(b)

Actual use

Mr Burke, a trade mark attorney of some seventeen years standing, has been the Opponent’s Senior Counsel of Trademarks for around six years. The evidence given in Burke 1 is that:

The Opponent is “an American Fortune 500 corporation” and “is primarily concerned with the manufacture and supply of food products such as baking mixes, breakfast cereals, yoghurt, soup, pizza, snack foods, ice cream, soy products, vegetables, flour, and other food products under a variety of brands including Betty Crocker, Yoplait, Old El Paso, Latina, Haagen-Dazs and Cheerios”. Its products are sold in some 100 countries worldwide;
The Opponent “has at least 79 production facilities worldwide being used to manufacture, package and distribute a wide variety of food products”. These include a facility in Rooty Hill, NSW. Worldwide the Opponent employs some 28,000 people;
As at 22 May 2012[6] the Opponent was “the registered owner of at least 48 trade mark applications and 112 registrations worldwide that consist of or incorporate the words NATURE VALLEY”;
The Opponent first used the Trade Mark in the United States in 1973 “for food products, including breakfast cereal and granola (muesli/cereal) bars”, although “more recently [the Opponent] expanded the range of goods available under the [Trade Mark] to include granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars” (“the Goods”); [7]
As at 22 May 2012 the Opponent provided the Goods in at least 74 countries, including Australia and New Zealand.
[6] Being the date Burke 1 was declared.
[7] I confirm my understanding from these statements and from the evidence as a whole is that Mr Burke is not including breakfast cereals per se in his definition of the term “the Goods”.

As far as Australia in particular is concerned, Mr Burke says that:

the Opponent “has worked towards selling the Goods under the [Trade Mark] in Australia at least as early as July 2007 and commenced actual sales of the Goods under the [Trade Mark] in Australia in March 2010, which is within the Relevant Period.”
As at May 2012 the Goods were sold in Australia through many different outlets, including Woolworths, Metcash (responsible for IGA stores), Supa Barn and FoodWorks, as well as through BP, Caltex, 7/11, United, Spar, 5-Star and Freedom convenience stores “throughout Sydney, Newcastle, Melbourne, Brisbane and Canberra”;
Significant amounts[8] were spent on pre-launch and launch advertising and promotions for the Goods in Australia, including via distribution of free samples, television advertisements, billboards and digital promotional materials;
The Goods are promoted on, and may be purchased via, several websites owned by the Opponent, including <generalmills.com>, <generalmills.com.au>, <naturevalley.com>, <naturevalley.com.au> and <naturevalley.co.nz>;
The Opponent “also promotes the Goods via social media, including Facebook, Twitter, YouTube and Flikr”;
The Opponent’s records disclose a significant amount was spent on advertising and promoting the Goods in Australia during the period 1 March 2010 to 31 May 2010[9], being during the Relevant Period;
The Opponent’s records also disclose significant advertising and sales of the Goods in Australia (totaling several millions of dollars) for the period 1 August 2008 to 31 August 2011, all but 4 weeks of which being within the Relevant Period.
[8] Mr Burke provides the figures, which are indeed significant on the face of it, on a confidential basis.
[9] Again, Mr Burke provides the actual figure on a confidential basis.

In Burke 2 Mr Burke talks mainly about the Opponent’s use and promotion of the Trade Mark in the United States, but with some relevance to the position in Australia he says that:

“Each day, [the Opponent] provides 14 million NATURE VALLEY bars to consumers worldwide” and “since 2008 [the Opponent] has spent [several hundred] million dollars in promoting the NATURE VALLEY trade mark throughout the world and has derived net sales revenue of more than [several billion dollars] from the sale of goods under the NATURE VALLEY trade mark throughout the world”;
Since 1997 the Opponent has used the Trade Mark (primarily, as I understand it, in the United States) “in association with sponsorship programs, nature conservation programs and sporting tournaments for golf, cycling and skiing”;
As far as golf is concerned, as at 3 December 2012[10] “NATURE VALLEY snack bars are also the official snack bar of the PGA TOUR and [the Opponent] provides a sampling tent at most rounds from which NATURE VALLEY products are freely available. [The Opponent] also has three (3) NATURE VALLEY caddies, who participate in promoting the NATURE VALLEY products in association with the PGA TOUR.” While this activity takes place in the United States, Mr Burke notes that most rounds of the PGA TOUR are broadcast in Australia by FOX Sports (and final rounds also by CNBC Australia), with a potential viewing audience of between two and three million Australian households;
Between 11 June 2012 and 21 September 2012 (being after the Relevant Period) the Opponent’s Facebook page, founded in 2010, received 10,101 “Likes”, of which 9,779 “Likes” originated in Australia;
Since September 2010 the Opponent’s website at <naturevalley.com.au> has received more than 5,000 visits, of which at least 3,296 visits originated from Australian IP addresses.
[10] Being the date Burke 2 was declared.

I am satisfied, based on Mr Burke’s above summarised evidence, that the Opponent used the Trade Mark in Australia during the Relevant Period for what Mr Burke described as “the Goods”, that is “granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars”. I accordingly find that the s 92(4)(b) ground for removal is not established insofar as these particular goods are concerned.
The Trade Mark has however been registered since 11 June 1980 for all goods in Class 30, the Class heading of which (currently)[11] reads:
Coffee, tea, cocoa and artificial coffee, rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice
[11] While not relevant to my eventual decision, I note that as at 11 June 1980 the 2^nd edition of the Nice Classification, which specified a slightly different range of goods in Class 30, was then in force.
As discussed below, Mr Stevens nevertheless submitted this was an appropriate case for leaving the registration unamended despite its not having been used for all goods falling within Class 30 during the Relevant Period.

Obstacles to Use

For the sake of completeness I note the Opponent does not suggest there were any particular circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for any of the goods covered by its registration and accordingly no case under s 100(3)(c) has been established.

The Registrar’s Discretion

I have found that use of the Trade Mark during the Relevant Period was limited to “granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars”. In such circumstances, as mentioned earlier, s 101(1) gives the Registrar the discretion to remove the Trade Mark “in respect of any or all of the [registered goods]”, whilst s 101(3) explicitly provides that discretion may be exercised in the registered owner’s favour if the Registrar is “satisfied that it is reasonable to do so”. Mr Stevens’ submissions concentrated on this issue.
Early decisions considering exercise of the discretion under s 101 suggested an opponent would need to show special facts or circumstances, or an overriding question of public interest, to warrant leaving a mark on the Register in the absence of relevant use[12]. In Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38 (“Pioneer”), however, Bennett J said at [167] – [169]:
[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Company[13] at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo[14] at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[169] In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
o    there had been no abandonment of the trade mark;
o    the registered proprietors of the mark still had a residual reputation in the mark;
o    there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
o    the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
[12] See for example Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411 (at pp 418-9).
[13] Kowa Co Ltd v NV Organon (2005) 66 IPR 131.
[14] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69.
o    the registered proprietors were not aware of the applicant’s sales under the mark.

Her Honour added at [176] that:
The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the court makes the order for removal: E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) (2008) 78 IPR 334 ; [2008] FCA 1005 at [4] per Flick J.
Finally I note her Honour said at [178]:
Pioneer Computers [the removal applicant] relies upon the policy of the Act to facilitate the removal of an unused trade mark and the public interest in the integrity of the register which, it submits, will generally demand the removal of an unused trade mark (Shanahan at [15.145][15]). However, as Shanahan also points out at [15.145], the underlying policy of the Act is to give the court sufficient flexibility to give effect to public interest considerations. This includes the flexibility not to order removal even though the trade mark is unused in the sense required by s 92. The authors suggest that removal may not be appropriate where, for example, the trade mark is nonetheless well-known either from earlier use or from advertising or publicity coming from abroad. A further consideration, as noted by McLelland J in Ritz Hotel[16] and by the registrar in this case, is where removal could be “potentially conducive to public confusion”: Ritz Hotel at NSWLR 162; ALR 224; IPR 424.
[15] Shanahan’s Australian Law of Trade Marks & Passing Off (3^rd edition).
[16] The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158; 88 ALR 217; 12 IPR 417.
As Mr Stevens pointed out, in Pioneer Bennett J also considered it relevant to the exercise of her discretion in the registered owner’s favour that the owner (that is Pioneer KK) had shown use of the trade mark PIONEER for goods similar to other goods covered by its impugned registrations for which use was not shown. As her Honour noted, since amendment to the Act in October 2006 this has been explicitly indicated by s 101(4) of the Act to be a relevant consideration in any event[17].
[17] See Bennett J’s discussion of s 101(4) in Pioneer at [171] to [173].
Mr Stevens further highlighted Bennett J’s conclusion that, as he summarised it, “the PIONEER trade mark should remain on the register because Pioneer KK was a well-known manufacturer of audio-visual equipment and many well-known manufacturers sell both computer and audio-visual equipment under the same trade mark [and] therefore there was a likelihood of confusion or deception for consumers”.
It is convenient here to note that Bennett J’s approach regarding exercise of the discretion under s 101 of the Act was followed by Cowdroy J in Austin, Nichols & Co Inc v Lodestar Anstalt (2011) 90 IPR 310 (“Lodestar”), who said at [127]:
The discretion is unlimited: see Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300; 80 IPR 38; [2009] FCA 135 at [167], [172] and [173]. Further, it is unnecessary to demonstrate that “exceptional circumstances exist before the discretion may be exercised in favour of the holder of the trademark”: see Kowa Company Ltd v NV Organon (2005) 223 ALR 27; 66 IPR 131; [2005] FCA 1282 at [98]; Pioneer Computers at [168]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 at [198].
Referring to these remarks in a subsequent appeal from Cowdroy J’s decision, the Full Federal Court (Jacobson, Yates and Katzmann JJ) in Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 287 ALR 221 (“Lodestar FC”) said at [35] and [38]:
[35] As the primary judge pointed out, the discretion under s 101(3) is a broad one. While it might also be true to describe it as “unlimited”, as his Honour also did, … in the sense that there are no express limits on it, more correctly it is a discretion limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Pt 9 of the Act. … Only if the subject-matter, scope and purpose of the legislation impliedly exclude the interests of the owner of the trade mark could it be said that those interests are irrelevant to the exercise of the discretion. In our view it does not.
[38] The purpose of Pt 9 is to provide for the removal of unused trade marks from the register. In that regard it is plainly designed to protect the integrity of the register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.
Significantly, the Full Court at [28] rejected the proposition that the exercise of the discretion was dependant on there being “sufficient reason” to do so, emphasizing instead the words of s 101(3) itself that the discretion may be exercised “when it is reasonable to do so”:
The requirement that “sufficient reason” be shown for leaving the trade mark on the register stems from earlier authorities which were considering the position under the 1955 Act where there was no equivalent of s 101(3): Re Carl Zeiss Pty Ltd’s Application (1969) 122 CLR 1; [1969] ALR 605 (Carl Zeiss), Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158; 88 ALR 217; (1988) 12 IPR 417. To ask whether sufficient reason has been shown is apt to mislead. The question to be asked is whether it was reasonable not to remove the trade mark from the register, although the trade mark had not been used during the statutory period. As the High Court said in a different context, “no paraphrase of the expression can be adopted as a sufficient explanation of its operation, let alone definition of its content”: Spencer v Commonwealth (2010) 241 CLR 118; 269 ALR 233; [2010] HCA 28 at [58].
The Full Court otherwise confirmed at [41] that:
…s 101(3) is expressed in the present tense. The question is whether at the time the court is called upon to make its decision, it is reasonable not to remove the trade mark. Indeed, the [removal applicant] did not take issue with the proposition that the position must be assessed at the time the discretion is to be exercised.
…
As for use after the application for removal has been made, there is nothing in the subject-matter, scope and purpose of the Act that would require it to be disregarded.
Finally, the Full Court noted at [44] that:
For the discretion to operate in favour of the registered owner, the court must be positively satisfied that it is reasonable that the trade mark should not be removed. On this question [the registered owner] bears the onus of proof: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526; 89 IPR 457; [2010] FCA 1380 at [273]. This is a legal, and not merely an evidential, onus.
Mr Stevens also referred me to Hearing Officer Iain Thompson’s decision in Société Anonyme des Eaux Minérales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53 (4 June 2012) (“Evian”), where Mr Thompson maintained registrations for marks containing or consisting of the name EVIAN on the register “for the full range of goods and services, despite lack of use during the relevant period”. This, noted Mr Stevens, was notwithstanding the removal applicant had served evidence, had participated in the hearing and had only been seeking removal of a small subset of the goods and services actually covered by the registrations in question.
Mr Stevens took me to paragraph 62 of Evian, where the Hearing Officer, (having noted the reputation of the EVIAN mark disclosed in the evidence before him), said:
In my consideration of the evidence and circumstances of these matters, the removal of the trade marks from the Register would appear, on balance, to have a greater tendency to facilitate confusion and deception than would the retention of the trade marks on the Register. Retention of the trade marks on the Register permits the opponent to enforce those trade marks in relation to the goods and services for which they are registered and prevent deception and confusion which would arise because:
·of the use of those trade marks by the opponent on similar goods and services;
·the use of the trade mark EVIAN by traders other than the opponent on the majority of the goods and services for which the trade marks are registered would cause deception and confusion because of the reputation of the opponent’s trade marks;
·…
·…
·the applicant has not formally evidenced its interests or how the retention of the trade marks on the Register would be confusing or deceptive; and,
·inasmuch as the public record shows that the applicant had an interest in limiting the opponent’s registrations to prevent deception and confusion, those interests have been met by the opponent’s amendment of its registrations.
Mr Stevens also highlighted Mr Thompson’s words at [35], after the Hearing Officer had quoted from paragraphs [33] to [39] of the Full Court’s judgment in Lodestar FC:
I take the above to indicate that I may consider the interests of both parties. Further, I consider that it should not be the case that a party could improve its position in proceedings involving the exercise of the Registrar’s discretion by not adducing evidence concerning what its interests are. It appears that where the interests of the applicant for removal are not in evidence, the interests of the opponent might take some precedence over, at least, the potential commercial interests of the applicant for removal: see UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210; and, Mesoblast, Inc v UCP Gen Pharma AG [2012] FCA 509 where the applicant for removal did not adduce evidence.
The final passage I would mention from Evian to which Mr Stevens specifically drew my attention was paragraph 50, where Hearing Officer Thompson said:
I do not believe it is appropriate to examine the opponent’s specifications of goods and services item by item lest I prejudice any other application or proceeding whether involving the applicant, the opponent or a third party. However, it is sufficient to observe that, when the specifications of goods and services of the registered trade marks are considered in the light of the reputation of the opponent’s trade marks, it is difficult to understand how a third party could use the trade mark EVIAN in relation to most of the goods and most of the services without, at least, confusion occurring.
With that as background, Mr Stevens submitted the following matters evidenced in the Burke declarations were significant to exercise of the discretion in the Opponent’s favour in this case:

The Opponent “is one of the world’s largest food companies and provides a range of food products, from pre-made foods ready for consumption to meal kits and basic ingredients for baking and cooking” and thus that, “It can be inferred that [the Opponent] has the capacity to produce any of the goods that fall within Class 30 under the [Trade Mark].”;
The Trade Mark “is used for a wider range of goods overseas than has been the case up to now in Australia” and “enjoys a strong reputation internationally, derived from high advertising spend, high sales figures and evidence of use of the [Trade Mark] in sponsorship of major sporting events in North America and beyond”;
There has been, “Significant and substantial use of the [Trade Mark] in Australia in relation to certain goods covered by the registration both during and after the Relevant Period”;
“The Opponent now possesses a significant reputation in the [Trade Mark] in Australia in relation to snack products”; and
The Opponent has used “the [Trade Mark] to sponsor sporting events of international relevance and which include events televised in Australia”.

Mr Stevens again highlighted the fact that “the Removal Applicants have not provided any information as to why removal of the registration is sought”. Nor of course, I note in passing, have they provided any information as to why exercise of the Registrar’s discretion in the Opponent’s favour might not be reasonable in the present circumstances.[18]
[18] See Lodestar FC at [32].
The Opponent on the other hand has served evidence suggesting confusion in the marketplace could take place. In this regard I note the Full Court in Lodestar FC said at [73] (with my emphasis):
The onus was on [the registered owner] to show that confusion would or, at least, could result from removal of the [registered] mark from the register. In the absence of such evidence, there is no good reason why the [registered] mark should remain on the register.
As regards the possibility of confusion in this case, Mr Stevens reasoned that:
The Removal Applicants’ trade mark, NATURE’S VALLEY, which was opposed by the Opponent, is deceptively similar[19] to the [Trade Mark]; and
There is a public interest in preventing a likelihood of confusion on the part of members of the public if the scope of registration 347155 NATURE VALLEY is restricted and other traders are, as a result, allowed to use highly similar trade marks for snack products and beverages. Given the reputation of the NATURE VALLEY trade mark in Australia, use of a similar trade mark – such as NATURE’S VALLEY – for similar or related goods would undoubtedly lead consumers to think of the Opponent’s NATURE VALLEY mark and wonder whether there is a commercial connection.
[19] In fact the decision of the Hearing Officer in the 2012 Opposition, with which I agree, was that the Removal Applicants’ NATURE’S VALLEY mark was substantially identical with the Trade Mark.
As mentioned, s 101(4) indicates account may be taken of the Opponent’s use of the Trade Mark for goods similar to other registered goods. The Opponent has shown use during the Relevant Period for “granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars”. Similar goods to these described in the (current) Class 30 class heading would arguably include “rice; tapioca and sago”, “flour and preparations made from cereals” and “bread, pastry and confectionery”. I confirm I think it reasonable to exercise the Registrar’s discretion in favour of the Opponent as far as these particular goods descriptions are concerned.
Taking this into account, the remaining goods covered by registration 347155’s claim to all goods in Class 30 would in principle include the following items from the Class 30 class heading: “coffee, tea, cocoa and artificial coffee”; “ices”; “sugar, honey, treacle”; “yeast, baking-powder”; “salt”; “mustard”; “vinegar, sauces (condiments)”; “spices” and “ice”.
On balance I am inclined to leave the registration with its (implicit) coverage of these goods intact. While on the face of it the goods mentioned are of somewhat different natures from the goods for which the Opponent has shown use during the Relevant Period, they would nevertheless move through similar trade channels to some extent and would often be sold to the consumer from the same outlets. It is therefore difficult to rule out the possibility that some confusion might not ensue if another party were to use a substantially identical or deceptively similar mark for such goods, particularly given the use the Trade Mark has actually enjoyed in Australia to date.
Again, there is no evidence or submissions before me from the Removal Applicants as to why it might be against their interests, or otherwise not be reasonable, to exercise the Registrar’s discretion as I have indicated. On the other hand, it seems that leaving the registration unamended could be in both the Opponent’s interest and the public interest, if this meant possibly confusing use of a similar mark by another party would be less likely. When the foregoing matters are weighed up I believe it is reasonable in the circumstances of this case to exercise the Registrar’s discretion under s 101(3) in the Opponent’s favour and to leave registration 347155 unamended.

Decision

With respect to the s 92(4)(a) ground, I am satisfied the Opponent has met its s 100 onus and this ground is accordingly not established.
With respect to the s 92(4)(b) ground, I am satisfied that there was use of the Trade Mark during the Relevant Period for goods described in Mr Burke’s evidence as “granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars”. Accordingly the s 92(4)(b) ground is in principle established to the extent that registration 347155 covers goods other than these. However for the reasons discussed above I have decided to exercise the Registrar’s discretion pursuant to s 101(3) of the Act in the Opponent’s favour and leave the registration unamended.

Costs

As both parties were, strictly speaking, partly successful and given my decision to leave the registration unamended ultimately turned on exercise of the Registrar’s discretion, I believe it appropriate in this case that each party should bear their own costs.

Michael Kirov
Hearing Officer
Trade Marks Hearings
14 March 2013