Glen Raven Mills Inc, Re

[1995] ATMO 48

TRADE MARKS ACT 1955

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

Re:Trade mark number A464621(24) registered in the name of GLEN RAVEN MILLS INC. and restoration of this mark under the provisions of section 71(1)

Background

Trade mark number A464621 has been registered in respect of "fabric in the piece included in class 24". The mark consists of the two words SUNBRELLA FIRESIST. It has been registered in the name of Glen Raven Mills, Inc. (Glen Raven).  The trade mark became due for renewal on 5 May 1994.

Glen Raven is a North Carolina Corporation located in the United States of America.  On 1 November 1993, it asked its American agent, Dykema Gossett PLLC (Dykema Gossett) to renew the registration on six of its trade marks in various countries.  A464621(24)  was one of these marks.  Dykema Gossett confirmed receipt of these instructions and took steps to instruct its Australian associate, Watermark of Melbourne, to proceed with renewing A464621(24) .  However, none of the relevant correspondence generated by Dykema Gossett was received by either Glen Raven or Watermark.  In an affidavit an employee of Dykema Gossett gives the opinion that this breakdown was due to a print failure which meant that the letters to Glen Raven and Watermark were never generated and consequently were never dispatched.

Watermark therefore took no action to renew A464621(24)  and, on 5 May 1994, the provisions of section 71(1) came into operation.

71. (1) Where a trade mark has been removed from the Register for non-payment of the prescribed fee, the Registrar may, within 12 months from the date of expiration of the registration of the trade mark, if satisfied that it is just so to do, restore the trade mark to the Register, and renew the registration of the trade mark, either generally or subject to such conditions or limitations as he sees fit to impose, for a period of 14 years from the expiration of the last registration.

In the normal course of events, an application for restoration is not closely questioned.  There is usually no reason to suppose that the restoration would not be just, and in the absence of any indication to the contrary, restoration applications are generally allowed to proceed unchallenged. However, on 13 December 1994, some seven months after A464621(24) acquired the status of a removed mark, a company called Brella Pty. Ltd. (hereafter Brella) filed an application to remove it from the Register of Trade Marks. The grounds claimed to support this action are that Glen Raven applied to register the trade mark SUNBRELLA FIRESIST without a proper intention to use it; that subsequently there has not been any use of that mark; and, specifically, that Glen Raven has not used SUNBRELLA FIRESIST in the three years from 13 November 1991 to 13 November 1994.

The existence of these claims raised the question of whether or not it is just to restore this trade mark. Glen Raven was therefore advised that in order for it to make submissions on this matter, a time for a hearing would be appointed and, should it seek to rely on evidence, the evidence should be served on Brella, prior to the hearing.  Brella was likewise advised of the situation, and given a time in which it might serve any evidence it wished to be considered.

The provisions of section 128 give Glen Raven, the applicant for the restoration, a right to a hearing.  The Registrar, however, needs to be properly informed on facts, and to that end, attendance on behalf of the section 23 applicant is appropriate. As per T. A. Miller Ltd. -v- Minister of Housing and Local Government, [1969] RPC 91; and The Minister for Immigration and Ethnic Affairs -v- Pochi 31 ALR 666 per Deane J. at 686, the Registrar is required to vary the statutory framework governing tribunal proceedings according to the circumstances of the case. Therefore in the interest of understanding the facts of the matter, the section 23 applicant was invited to participate in the hearing.

On 14 September 1995 the hearing came before me in Melbourne.  The applicant for the restoration, Glen Raven, was represented by Ms Carolyn Harris of Watermark.  The section 23 applicant, Brella, was represented by Mr Chris Sgourakis of Griffith Hack and Co.

Submissions

Ms Harris presented evidence of declarations from which it appears that from the 1980’s Glen Raven has used its trade mark SUNBRELLA FIRESIST in Australia.  Since 1987 goods bearing this mark have been supplied to Australia through distributors.  Distribution is currently effected through a company called Bainbridge/Aquabatten (Aust) Pty Ltd and in its 1993 catalogue this company advertised the availability of SUNBRELLA FIRESIST goods. Sales, in metres of cloth, are established for the years 1992 - 1995.  SUNBRELLA FIRESIST goods were also advertised in various publications available throughout Australia over the years 1992 to 1994.

Prima facie, this evidence demonstrates first that Glen Raven  has in fact used its mark over a number of years.  Second, it shows that Glen Raven  continued this use of the mark through to 1995.  This trading activity dispels any concern that registration A464621(24) became an abandoned trade mark.

Mr Sgourakis pointed out to me that the sales quoted in the Glen Raven evidence were not particularly high and invited my attention to sales achieved by the section 23 applicant.  Brella has a pending application to register the trade mark SUNBRELLA for goods in class 24 and it has been selling canvas and other piece goods, under this mark, since 1969.  Brella's average sales figures for 1991 - 95 are well over a quarter of a million dollars per annum.  Calculating from Glen Raven evidence, Mr Sgourakis points out that Glen Raven's average sales for these years are in the vicinity of two to three thousand dollars.  He wished me to consider this difference, and said that in light of significantly greater use achieved by Brella, it would not be just to restore the SUNBRELLA FIRESIST trade mark.

Decision

As I indicated to the parties at the hearing, I am satisfied from the evidence, that it is just to restore the trade mark A464621(24) to the Register, and I will therefore give directions that this restoration is to proceed.  My decision is based on the finding that on evidence, there has been no abandonment of this trade mark and that it has, over a number of years, been in use in respect of goods which constitute the registration.  I note that the use claimed is quite modest. The question, however,  is whether it is just to restore the mark and that question simply does not turn on the fact that Glen Raven  may have achieved only modest sales, or sales which are less than a market competitor.  A trade mark has to be used in the course of trade, and if the evidence showed that the trade mark SUNBRELLA FIRESIST had not been used, or for some time had been treated as abandoned, then I may indeed have been in a position to find that it was not just to restore it.  However, the mark has been in use since the 1980s and  a local distributor has dealt with the trade marked goods from 1987 onwards. I am satisfied there has not been any dereliction of duty on the part of Glen Raven to use its registered trade mark A464621(24). Active use carried on in the course of trade is the critical concern, not the quantum of that use. I am satisfied that Glen Raven  has not neglected its statutory duty to use the mark  and I find that there is no reason why it should not benefit from the provisions of section 71(1) and have its mark restored.

I must finally comment on Mr Sgourakis' assertion that it is not just to restore the mark because of the position in which Brella now finds itself.  Certainly, Brella now has a significant trade under the mark SUNBRELLA.  But that trade was developed in the face of Glen Raven's registered rights, and clearly there is no aspect of that trade, and no aspect of Brella’s present position, which can be taken to reflect badly on Glen Raven. 

I find in sum that there is nothing to justify an adverse finding under section 71(1).  The trade mark will therefore be restored.

Costs

This is not an opposition matter, and in the circumstances I am not prepared to award costs.

Helen R. Hardie

DeputyRegistrar

17 October, 1995