Greg Buckley v South Cone Inc

[2013] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by Greg Buckley to application under section 92 of the Act by South Cone, Inc to remove trade mark number 751728(25) - REEF CLOTHING COMPANY (Logo) – registered in the name of Major Brand Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Julie Simpson, solicitor, of Pizzeys

Applicant: Ben Fitzpatrick of Counsel instructed by Peter Maxwell & Associates

Decision:

2012 ATMO 29

s92 proceedings: use of trade mark by owner during relevant period – opposition to removal established.

Background

1. On 13 October 2010 South Cone, Inc. (‘the Removal Applicant’) applied under the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade mark appearing below:

Registration No:              751728

Priority Date:  23 December 1997

Goods:  T-shirts (with and without collars) and singlets

(‘the Goods’)

Trade Mark:  

(‘the Trade Mark’)

2. On 5 January 2011, as provided for by section 96 of the Act, Greg Buckley (‘the Removal Opponent’) filed Notice of Opposition to the application for removal on the ground that the Trade Mark had been used by its owner during the three year period which ends on 13 September 2010 (‘the relevant period’).

3.     The parties duly served and filed evidence to support their respective contentions and the matter was subsequently heard in Canberra by a delegate of the Registrar of Trade Marks on 24 September 2012.  The Removal Applicant was represented by Mr Ben Fitzpatrick of Counsel and the Removal Opponent was represented by Ms Julie Simpson of Pizzeys.

4.     For administrative and operational reasons the matter has now been passed to me for my decision based on the evidence, the material on the official file and the written and recorded submissions of the parties.

Onus

5. Section 100 of the Act relevantly provides:

100Burden on opponent to establish use of trade mark etc.

(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

[…]

(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

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 file, month and registered owner see section 6.

6. The evidentiary burden on the Removal Opponent is no different from what it is under other parts of the Act; that is, to establish its opposition on the balance of probabilities.

Evidence

7.     The Removal Opponent has served and filed the following evidence in support:

·     Statutory Declaration of Gregory Buckley (‘first declaration) declared on 22 January 2011 together with Exhibit 1.

8.     The Removal Applicant has served and filed the following evidence in answer:

·     Statutory Declaration of James Vernon Maxwell declared on 9 August 2011 together with Exhibits JVM-1 and Exhibit JVM-2.

9.     The Removal Opponent has served and filed the following evidence in reply:

·     Statutory Declaration of Gregory Buckley (‘second declaration’) declared on 9 November 2011 together with Annexure GB-1 to Confidential Annexure GB-3.

10.   The Removal Applicant has served and filed the following further evidence:

·     Statutory Declaration of James Vernon Maxwell declared on 16 March 2012 together with Exhibit JVM-1.

11.   The Removal Opponent then served and filed the following further evidence:

·     Statutory Declaration of Gregory Buckley (‘third declaration’) declared on 26 May 2012 together with Annexure GB-1 to Confidential Annexure GB-4.

12.   Prior to the hearing, the Removal Applicant applied for special leave to serve and file further evidence – this application was unopposed and the evidence comprises:

·     Statutory Declaration of Leonard Anthony Mancini dated 14 September 2012 together with Annexure LM-1.

13.   Mr Buckley’s first declaration appends a copy of a sales register which shows sales within the relevant period – however, while sales obviously occurred, neither the Trade Mark nor the Goods in relation to which such sales occurred are recorded in the sales register.

14.   Mr Maxwell’s first declaration exhibits an investigator’s report into the use of the Trade Mark by the Removal Opponent.  This report concludes that the investigator, who did a wide search of available public records, did not find any use of the Trade Mark during the relevant period.

15.   Mr Buckley’s second declaration exhibits photographs of the Goods bearing swing tags bearing the Trade Mark and a copy of an Agents’ Price List dated 1 December 2007.  An invoice dated 20 July 2009 issued to Gala Direct Byron Bay in respect of goods which include the Goods and showing the trade mark which appears below is also exhibited to Mr Buckley’s second declaration.

16.   A further investigator’s report is exhibited to Mr Maxwell’s second declaration – the report details the investigator’s research into Gala Direct Byron Bay which shows it to be a business related to the owner of the Trade Mark (and to which business the abovementioned invoice was issued).  The report details the investigations and concludes that, “We do not believe Gala Direct Byron Bay is currently trading and have not been able to identify any current or prior use or sale of ‘Reef” clothing.”

17.   Mr Buckley’s third declaration exhibits Financial Statements for the period 30 June 2008 to 30 June 2010 for “Gala Direct” issued by Hauenstein Financial Services which show that “Gala Direct” traded during that period.  (I assume by this that the Removal Opponent asserts that “Gala Direct” and Gala Direct Byron Bay are one and the same business).  Also exhibited to this declaration are further examples of invoices from within the relevant period issued by a business called Reef Clothing Company to “Gala Direct” which show use of a trade mark which is substantially identical to that depicted at paragraph 15, above.

18.   Mr Mancini’s declaration exhibits an investigator’s report concerning use of the Trade Mark.  It is dated earlier than the report mentioned above and it and it too found no use of the Trade Mark during the relevant period.

Paragraph 92(4)(b)

19. Paragraph 92(4)(b) of the Act 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:

(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 section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

20.   As Ms Simpson observed, in order to found its opposition, the Removal Opponent must establish that the Trade Mark has been used:

in good faith;

in respect of the relevant goods;

within the relevant period;

by the registered owner or a person authorised by the registered             owner;

without any additions or alterations which substantially affect its              identity.

21.   It is convenient to consider the last of the above issues first.  Subparagraph 100(3)(a) provides:

(3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period;

22.   It is otherwise open to me to consider whether the Removal Opponent has established use of the Trade Mark via its use of a substantially identical trade mark under the provisions of subsection 7(1) which provides:

7Use of trade mark

(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

23.   The Removal Opponent argues that the trade mark it has used on the invoices in evidence is substantially identical to the Trade Mark.  Substantial identity is to be assessed on a side by side comparison of the trade marks under consideration: see Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; 35 ALJR 355; 1B IPR 523 where Windeyer J said at [12]:

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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

24.    In this case the trade marks under comparison are:

25.   Recently the Full Bench of the High Court has found the addition of the device of a footprint to the trade mark BAREFOOT was an alteration or addition which did not substantially affect the identity of the trade mark BAREFOOT: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.

26.   Similarly, I find that the background smudge (which I take to be a depiction of a wave breaking on a reef) and the word ‘Australia’ are alterations or additions which do not affect the identity of the Trade Mark: see also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117. The trade marks are, in all essential particulars, identical.

27.   Despite the Removal Applicant’s submissions which might at least imply otherwise, I see nothing unusual or sinister in the sale of the goods under the Trade Mark to an entity associated with the owner of the Trade Mark – in my observations of the world, it is not uncommon for such arrangements to be made for taxation purposes and I consider such use here to be use in good faith.  There appears to be some irregularity or informality in the way that ‘Gala Direct’ or ‘Gala Direct Byron Bay’ is referred to – however, I am satisfied that these two names refer to the same business.  In this regard I refer to Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd and Others [1988] FCA 384; (1988) 13 IPR 323 and observe that if a modicum of judicial latitude can be afforded to evidence establishing the chain of title to a trade mark under consideration, then an equal leeway may be given in appropriate circumstances in this forum to the formalities associated with identification of a particular business which is claimed to have bought goods sold under a trade mark. Further, having regard to the nature of this evidence, there is a far greater likelihood that it is true than otherwise and thus should be afforded full weight.

28.   The invoices in question show use by a business called Reef Clothing Company within the relevant period in relation to all of the goods in respect of which the Trade Mark is registered.  While there is no formal documentation that this use was an authorised use of the Trade Mark, it is again much easier to accept the proposition that it was an authorised use of the Trade Mark rather than to suppose that the Removal Opponent has accessed the records of an unrelated and unauthorised company in order to establish use of the Trade Mark.  I note also that the Australian Courts have shown tolerance of some informality in the way that authorised use is documented: Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227; (1993) 114 ALR 157; (1993) 26 IPR 246; [1993] AIPC 91-007.

29.   It follows that the Removal Opponent has established its opposition to the removal of the Trade Mark from the register of trade marks.

Costs

30.   Costs may follow the event and, having been successful, the Removal Opponent is entitled to its costs which I award against the Removal Applicant.

Iain Thompson

Hearing Officer

Trade Marks Hearings

16 June 2013