Gina Boon v Jolly Swagmen Pty Limited

[2001] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by Gina Boon to the application to remove trade mark registration number 187615(25) - WALTZING MATILDA - under section 92 of the 1995 Act by Jolly Swagmen Pty Limited.

Background

On 20 November 1998, the applicant, Jolly Swagmen Pty Limited, applied for the removal of trade mark number 187615 from the register on the basis of non-use. The applicant relied on sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (the Act).  Section 92 relevantly provides as follows:

92  Application for removal of trade mark from Register etc.

(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.

(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.

The application was validly brought, and complied with the requirements of the Act. 

On 17 March 1999, the registered trade mark owner, Gia Pty Limited, filed a notice of opposition to the application to remove.  The registered owner claimed that the basis for the application for removal could not be made out, as the relevant trade mark had been used within the three year period commencing 20 October 1995.  The trade mark was transferred to Gia Boon pursuant to a Deed of Assignment dated 3 July 2001.  The effect of this assignment was to place Ms Boon in the position of opponent in this matter. 

The opponent filed evidence in support of its notice of opposition on 15 December 1999.  The evidence in support comprised a single statutory declaration by Mr E Ian Thompson dated 14 December 1999.  The declaration included four Exhibits numbered EIT-1 through EIT-4.  Nothing turns on the fact that the opponent has now changed.  The evidence of Mr Thompson goes to the state of affairs prior to the assignment this year.

Despite the granting of five extensions of time to file evidence in answer, the applicant has never filed any evidence.

In due course, the matter was referred to me for decision on the written record.

The Evidence

Mr Thompson states that, as at 14 December 1999, he had been the Managing Director of Gia Pty Limited for three and three-quarter years.  Allowing for some margin of error, this means that he had been Managing Director since approximately the second quarter of 1996.  The relevant period for the purpose of calculating the three year and one month alleged non-use period is 20 October 1995 through 19 October 1998.  Therefore, Mr Thompson was Managing Director during the relevant period, and I am satisfied that he is therefore qualified to comment on the applicant's activities during that period.

Mr Thompson states that the applicant had continually used the trade mark in question since 1964.  He provides sales figures for the period October 1997 to October 1998.  Given the nature of the items (woollen clothing), these figures are not insubstantial.  He states the products were sold before and after these dates.  He also indicates that the trade mark was applied to the applicant's products by way of sew in labels, swing tags and embroidery on the front of garments.  He annexes photocopies and photographs of these uses.  Finally, he declares that the trade mark has been used on and in brochures and other advertising material.

Having viewed the photographic and photocopy evidence, I am satisfied that there has been trade mark use.

Mr Thompson's evidence is not contested by the removal applicant, either by way of evidence or submissions. 

Findings

I am satisfied that the evidence shows use of the trade mark by the applicant during the relevant period. Therefore, the s.92(4)(b) ground as claimed by the applicant has not been made out.

In relation to s.92(4)(a), there is no evidence before me that the opponent did not, as at the date of the application for removal, use or intend to use the trade mark in good faith. On the contrary, the evidence of Mr Thompson shows actual use during that period. Accordingly, this ground is similarly not made out.

The opposition as a whole is therefore successful.  I refuse the application for removal.

Costs

Neither party has sought the costs of these proceedings.  Accordingly, I make no order in that respect.

Geoff Purvis-Smith
Hearing Officer
25 October 2001