Gregory Edward Haywood v the Boneyard Pty Ltd as Trustee for the Meatworks Family Trust

[2010] ATMO 128

TRADE MARKS ACT 1995

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

Re:Oppositions by Gregory Edward Haywood to applications under section 92 of the Act by The Boneyard Pty Ltd as trustee for The Meatworks Family Trust to remove trade mark numbers 836341 (25 & 42) - GIMP & Device and 885295 (25) GIMP - in the name of Gregory Edward Haywood

Delegate:

Michael Kirov

Representation:

Opponent: No appearance

Applicant: Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys

Decision:

2010 ATMO 128

Section 92(4)(b) oppositions: No relevant use or relevant obstacles to use shown. No reason for exercise of discretion in Opponent’s favour. Trade marks to be removed. Costs awarded against Opponent.

Background

1. Gregory Edward Haywood (“the Opponent”) is the registered owner of trade mark registrations 836341 and 885295, relevant details of which[1] are as follows:

   [1] Registration 836341 was in fact not renewed when due on 24 May 2010 and is now subject to removal from the Register for this reason in any event.  However, the relevant date for the removal application subject of these proceedings is 19 December 2008.

Trade mark number:     836341

Registered from:  24 May 2000

Goods and Services:  Class  25: Clothing, footwear, headgear

Class 42: Providing of food and drink, temporary accomodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming

Trade mark:  

Trade mark number:     885295

Registered from:  8 August 2001

Goods:Class: 25 Clothing, footwear, headgear and clothing accessories, underclothes and lingerie

Trade mark:  GIMP

1. Hereafter I refer to these two trade marks as “the GIMP trade marks” and to the goods and services covered by registrations 836341 and 885295 as “the Goods and Services”.

2. On 19 December 2008 The Boneyard Pty Ltd as trustee for The Meatworks Family Trust (“the Removal Applicant”) filed applications under section 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the GIMP trade marks from the Register, alleging the marks had not been used in good faith in relation to any of the Goods and Services during the three year period ending on 19 November 2008 (“the Non-use Period”).

3. On 14 April 2009 the Opponent filed Notices of Opposition to the removal, raising a single ground of opposition in each case, namely that “The trade mark is currently being used”.  I note that whether or not the GIMP trade marks were being used as at 14 April 2009 is of course not of direct relevance to the question of whether the marks were being used during the Non-use Period.  However, I proceed on the basis that the Opponent intended to indicate the marks were in fact being used during the relevant three year period.

4. The Opponent did not serve or file any evidence in support.

5. The Removal Applicant’s evidence in answer consists of a statutory declaration by

David Parry made on 16 November 2009, with Exhibit DP-1.

1. The Opponent did not file any evidence in reply.

2. The matter was heard before me as delegate of the Registrar of Trade Marks in Canberra on 1 December 2010.  Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys, appeared by telephone for the Removal Applicant.  The Opponent did not appear and was not represented at the hearing.

The Law

1. Insofar as relevant to this matter, 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) …

(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) …

1. Section 93(2) of the Act specifies that an application under s 92(4)(b) “may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark”. (I note in passing that s 93(2) is clearly satisfied here since registrations 836341 and 885295 were filed in 2000 and 2001 respectively and the removal applications were not filed until 19 December 2008.)

2. Sections 100(1)(c) and 100(3) of the Act provide that the party opposing removal bears the onus of rebutting an allegation made against it under s 92(4)(b), either by establishing that the trade mark(s) (or the trade mark(s) with additions or alterations not substantially affecting its/their identity) was/were used in good faith during the Non-use Period, or that there was an obstacle to use during that period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities[2].

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].

The Evidence

1. As mentioned, the Opponent has not served or filed any evidence in these proceedings.  For the sake of completeness I do note that the Opponent wrote to IP Australia on 7 July 2009 (with copy sent to the Removal Applicant) providing information concerning his efforts to use the GIMP trade marks in the past, his future plans for the marks and the history of discussions between the Removal Applicant and him over possible assignment or licensing of the marks.  IP Australia wrote back to the Opponent on 28 July 2009 (with copy sent to the Removal Applicant) stating, inter alia, that:

   Please note, in trade mark oppositions proper weight is only given to sworn statements such as statutory declarations.  Unsworn statements carry little weight.  For this reason, the Trade Marks Regulations 1995 stipulate that evidence in opposition proceedings must be in the form of a declaration(s) and any accompanying exhibits must be referred to in that declaration.  As it currently stands, the details provided in your letter of 07 July 2009 and the accompanying attachments do not qualify as evidence in support as they are not in the form of a sworn declaration.  As such, the details you have provided do not currently form part of the evidence in support and can only be considered as a submission.

   (Original emphasis)

2. IP Australia’s letter then went on to detail the kind of specific statements and supporting documentation that the Opponent’s evidence in support would ideally include.  The letter ended by informing the Opponent what he would need to do to obtain an extension of time to serve and file such evidence.  IP Australia has not subsequently heard from the Opponent.  The Opponent was accordingly advised by letter dated 18 August 2009 that, as no response had been forthcoming, “The information contained in your letter (dated 07 July 2009) will be considered as a submission”.

3. That said, even if all the information contained in the Opponent’s letter of 7 July 2009 had been properly served and filed in declaratory form it would still be insufficient to establish relevant use of the GIMP trade marks during the Non-use Period. Indeed, most of the activity detailed in the letter, even if accepted at face value, appears to have taken place prior to the Non-Use Period. Further, even if this activity were considered to constitute “use” of the GIMP trade marks in the course of trade as specified by s 92, it was apparently mainly in relation to golfing equipment which is not included in the Goods and Services in any event. The sole statement contained in the Opponent’s letter which may relate to use of the marks for relevant goods or services during the relevant three year period is that:

   Following market testing, in 2005 I entered an informal business arrangement with a local business operator to sell products and merchandise displaying the ‘Gimp’ trade mark at local markets.  This arrangement continues to be in place and has been formalised into a written contract.  This business agreement has resulted in moderate income to me.  Discussions with a business operator based in the Philippines shows encouraging signs of progressing into a profitable business relationship, which I hope may result in significant income in future years.  I can provide documentation in support of this claim if required.

4. Although on the face of it perhaps redundant, the Removal Applicant, as mentioned, served and filed evidence in answer consisting of a statutory declaration by its managing director David Parry.  Mr Parry explains why the Removal Applicant seeks removal of the GIMP trade marks, outlines its own plans for use of the trade mark GIMP and states, inter alia, that after learning of the existence of registrations 836341 and 885295:

   Searches that I subsequently conducted suggested that the [GIMP] trade marks…were not being used by [the Opponent].

Discussion

Actual use

1. Without, at this point, discussing in detail the specific criticisms Mr Tannahill had of the information provided in the Opponent’s letter of 7 July 2009, I confirm I agree with his submission that even taken at face value the Opponent’s unsubstantiated claims do not establish actual use of the GIMP trade marks for specific goods or services of relevance during the Non-use Period.

Intended Use and Preparations for Use

1. Preparations in good faith for future use of a trade mark may in principle qualify as “use” for the purposes of the Act, provided it is shown the preparations are well advanced and the trader concerned can be seen objectively to be committed to using the trade mark[3].  In the present matter, however, there is no evidence before me, nor indeed is there anything specific contained in the Opponent’s letter of 7 July 2009, on which the Opponent might rely to establish this is the case.

   [3] See for example Woolly Bull Enterprises Ltd and Anor v Reynolds (2001) 51 IPR 149 and Buying Systems (Australia) Pty Limited v Studio Srl (1995) 30 IPR 517

Obstacles to Use

1. For the sake of completeness I note the Opponent has not provided evidence of any relevant circumstances prevailing during the Non-use Period which might have been an obstacle to use of the GIMP trade marks for any of the Goods and Services. I accordingly find no case under s 100(3)(c) of the Act has been established.

The Registrar’s Discretion

1. I have found that there was no relevant use of the GIMP trade marks during the Non-use Period.  In such circumstances s 101(1) gives the Registrar the discretion to remove the trade marks “in respect of any or all of the [Goods and Services]”, whilst s 101(3) explicitly provides discretion may be exercised in the Opponent’s favour if the Registrar is satisfied it is reasonable to do so.

2. In this regard early decisions considering exercise of the discretion under s 101(3) 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[4].  In Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38, however, Bennett J said:

   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[5] 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 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).

   [4] See for example Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411 (at 418-9).

   [5] Kowa Co Ltd v NV Organon (2005) 66 IPR 131

3. While I accept that an opponent is not required to point to “exceptional circumstances”, in the present matter the Opponent has not satisfied me that any facts or circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in his favour.  On the information before me the Opponent has not used the GIMP trade marks to any significant extent even after expiry of the Non-use Period and the Opponent is not in a position to claim the marks have garnered any significant reputation in Australia.  This is thus not a case, on the face of it, which warrants exercise of the Registrar’s discretion in the Opponent’s favour pursuant to s 101(3) and I decline to do so.

Decision

1. In summary, I find that there was neither use of the GIMP trade marks in good faith in the course of trade in Australia for any of the Goods and Services during the Non-Use Period, nor were there any relevant circumstances which were an obstacle to use.  Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion to not remove the two trade marks in respect of all of the Goods and Services.  I accordingly direct that registrations 836341 and 885295 be removed from the Register one month from the date of this decision.  If the Registrar has been served with a notice (or notices) of appeal before then I direct that removal shall not occur until the appeal(s) has/have been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

Costs

1. As the successful party, the Removal Applicant is entitled to its costs and I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Michael Kirov

Hearing Officer

Trade Marks Hearings

22 December 2010