Gregory Sandmann and Coathurst Pty Ltd v Dune Holdings Pty Ltd

[2011] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by Gregory Sandmann and Coathurst Pty Ltd to application under section 92 of the Act by Dune Holdings Pty Ltd to remove trade mark number 709581(25) - DUNES RASH PRO - in the name of Coathurst Pty Ltd

Delegate:

Heath Wilson

Representation:

Opponent: Amanda Caldwell and Tracey Berger of Spruson and Ferguson, Patent and Trade Marks Attorneys

Applicant: James Tobin of Counsel instructed by Griffith Hack Patent and Trade Marks Attorneys

Decision:

2011 ATMO 85

S 92(4)(b) – ‘person aggrieved’ – use of the trade mark established in the relevant period - Opponent successful- costs awarded against Applicant.

Background

1. An application for the removal of a trade mark was filed by the company Warwick Limited on 22 December 2005. The application for removal was made under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for all goods of trade mark registration 709581:

Class 25: Clothing surf wear, footwear head gear

(‘the Trade Mark’)

2.     The Trade Mark is owned by Coathurst Pty Ltd and the above application for removal was subsequently opposed by Mr Gregory Sandmann and Coathurst Pty Ltd (collectively, ‘the Opponent’) on 2 March 2006.

3.     In order to establish use of the Trade Mark, the Opponent (without legal representation at that time), filed the statutory declaration of Gregory Sandmann dated 17 May 2006 along with a number of attached exhibits.

4.     Warwick Limited, who was legally represented by Griffith Hack (Patent & Trade Mark Attorneys), did not provide any evidence in answer. Warwick Limited then requested a hearing on 11 August 2006 and the two parties entered into settlement negotiations. On 15 August, IP Australia was informed that Spruson & Ferguson (Patent & Trade Mark Attorneys) was acting for the Opponent.  Over three years later, settlement negotiations were terminated without resolution and the matter was set down for hearing.

5.     Prior to the Hearing, the name of the Applicant for removal was changed from Warwick Limited to Dune Holdings Limited (now ‘the Applicant’). I heard this matter as a delegate of the Registrar of Trade Marks in Sydney on 9 June 2011. Ms Amanda Caldwell and Ms Tracey Berger of Spruson & Ferguson appeared on the Opponent’s behalf and Mr James Tobin of Counsel appeared for the Applicant instructed by Griffith Hack.

‘A Person Aggrieved’

6. At the time the non-use application was filed in 22 December 2005, section 92 of the Act included the requirement that the removal applicant is a ‘person aggrieved’ by the trade mark. In finding that the term “aggrieved” should be construed liberally in this context, the majority of the High Court in Health World[1] decided that a person was ‘aggrieved’ by simply being in trade rivalry with the removal opponent in relation to the goods to which the Trade Mark is applied. That approach was also more recently followed by Justice Cowdroy in the “Wild Geese” case[2].

[1] Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13

[2] Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39

7.     The declaration of Nicola Scheepers from Griffith Hack accompanying the application for removal states:

The Removal Applicant is aggrieved by the continued registration of the Trade Mark the subject of Registration 709581 as it is delaying commencing use of its trade mark in Australia for fear of exposing itself to an action for infringement of Registration 709581.

8.     No further evidence regarding the nature of the Applicant’s trade mark or its business activities was filed. Conversely, neither the notice of opposition nor the evidence of the Opponent challenges whether or not the Applicant is ‘a person aggrieved.’ Only the Opponent’s amended written submissions (provided at the actual commencement of the hearing) disputed whether the Applicant was an aggrieved party. These circumstances are analogous to the case of I Can't Believe It's Yogurt v Unilever Plc[3] where:

The opponent had not challenged the status, either in its notices of opposition, or in its evidence in support. Instead, it postponed any reference to the issue until its written submissions were tendered for the hearing. The removal applicant was therefore effectively ambushed over this matter…

[3] I Can't Believe It's Yogurt v Unilever Plc (2001) 55 IPR 207

9.      The Trade Marks Office Manual of Practice & Procedure[4] states:

[T]he onus is on the opponent to rebut the assumption that the application is proven. Accordingly, the Registrar will not initiate any investigation into an allegation by the opponent that the non-use applicant is not a person aggrieved. The applicant’s standing will still be taken at face value unless the opponent disputes the right of standing and addresses this in its evidence in support. The non-use applicant will then have the opportunity to rebut any challenge to its standing in its evidence in answer.

[4] At 48.2.2.

10.   I can find nothing in the Opponent’s evidence in support to shift the relevant onus to the Applicant to further establish its standing.

11.   In any event, Mr Tobin also referred to pending Trade Mark application 961910: DUNE owned by the Applicant. The information regarding the Applicant’s trade mark is not evident from the Scheepers declaration but is clearly a matter of public record, appearing on the Trade Marks Register.  The fact that the only additional information regarding a ‘person aggrieved’ arises from Mr Tobin’s submissions is understandable given the Applicant was not aware that its standing would be contested until the commencement of the hearing.

12. The simple statement of aggrievement in the Scheepers declaration referring to trade mark infringement combined with the existence of a conflicting trade mark is sufficient for a liberal interpretation (especially an effectively uncontested one) of person aggrieved. I therefore find that the Opponent has not established that the Applicant is not ‘a person aggrieved’ for the purposes of the Act. I will now turn to whether the Opponent has demonstrated use of the Trade Mark in Australia for the claimed goods.

The Law

13.    Section 92(4)(b) of the Act relevantly 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.

14.   Under the legislation, the Opponent must establish use of the Trade Mark in Australia within the three years ending one month before the date of the removal application which was filed on 22 December 2005. Consequently, the period in which use must be established is 22 November 2002 to 22 November 2005 (‘the relevant period’).

15.   A single bona fide use of the trade mark on the goods during the relevant period can be sufficient to defeat an application for removal. In such a case, however, the use of the trade mark should be established by "if not conclusive proof, at any rate overwhelmingly convincing proof."[5]

[5] Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J.

16.   As it is the only evidence before me, Mr Tobin spent some time dissecting the form and content of the Sandmann declaration. The declaration itself makes no reference to the relevant goods, the relevant time period, and no reference to the annexures attached. The entirety of the sworn declaration provides:

I Greg Sandmann give. The Evidence of Proof of Dunes Rash Pro 709581 usage is correct and that Coathurst Pty Ltd Has been using the mark of Trade Previous to Removal notice from IP Australia (sic).

17.    The annexures to Sandmann include:

·     Undated photographs of various items of clothing with labels bearing the Trade Mark.

·     An undated photograph of a shop front bearing the Trade Mark.

·     Tax Invoices bearing the Trade Mark for items of clothing from March 2005 to May 2006.

·     Bank receipts for unspecified transactions around May 2005.

·     Invoices for “Dunes printed logo” from a label company in March to May 2005.  

·     An undated invoice for items of clothing from an Australian retailer.

·     Bookkeeping invoices mentioning the ‘Dunes Rash Pro’ business name from January 2005.

·     Handwritten invoices dated June 2004 from a fashion agency for clothing patterns.

·     A ‘mock–up’ for a magazine advertisement featuring the Trade Mark and an e-mail from February 2006 referring to the advertisement booking in late 2005.

18.   The most convincing pieces of evidence are the Tax Invoices for the sale of various pieces of clothing. The invoices that are dated within the relevant period include those from 6 March 2005, 4 October 2005, 2 October 2005 and 14 September 2005. They refer to the sale of various clothing items described as “dunes rash pro rash shirts”, “2x Size Small S/S Rash Shirt rash pro” and “2x dunes rashpro t shirts”. The Trade Mark itself and the company name “Coathurst Pty Ltd T/A Dunes Rash Pro” also appear at the top of each invoice.

19.   Despite the lack of explanation for the invoices from Mr Sandmann, they do indicate that clothing items were sold by the Opponent in Australia in the relevant period.

20.   The contents of the other annexures are also not without their flaws. The photographs clearly show the Trade Mark on the clothing labels for t-shirts, shorts, booties and caps. The Trade Mark also appears on a shop front, and the Applicant reasonably queried whether they were taken in Australia. All of those photos are undated.

21.   The supplied bank receipts do not feature the Trade Mark and bear no connection to any of the tax invoices. The most that can be inferred from the fashion agency and bookkeeping invoices is that the Opponent was taking steps to use the Trade Mark in preparation for the sales evidenced in the tax invoices. The magazine advertisement ‘mock-up’ is similarly lacking any explanation. An attached email indicates that an advertisement was booked on 10 November 2005 and due to be released on 9 March 2006. The release date is outside the relevant period and there is no indication that this advertisement actually occurred. The advertisement does feature a trade mark substantially identical to the Trade Mark.     

22.   It is true that Mr Sandmann does not explain how these items relate to each other and the annexures do not definitively establish genuine use by themselves. However, viewing the tax invoices and the other material surrounding the sales concurrently, I am satisfied that at least one bona fide instance of use of the Trade Mark (or a substantially identical one) has been demonstrated within the relevant period.

23. The Opponent has rebutted the allegation of non-use by satisfying the burden of establishing trade mark use under section 100(3)(a) of the Act. To the extent that there is any argument regarding the use of the Trade Mark having been definitively established for clothing and surfwear only and not headgear or footwear, I refer to (and apply) the discretion under section 101(3) of the Act. I am satisfied that it is reasonable for the Trade Mark to remain on the Register for all goods.

Decision

24.   Section 101: 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.

25.   I find that the Opponent has established a bona fide use of the Trade Mark in Australia within the relevant period on Clothing surf wear, footwear head gear. The application for removal under section 92(4)(b) of the Act has not been successful, and is dismissed.

Costs

26. The Opponent has been successful in opposing the removal of trade mark application 709581 and is entitled to an award of costs. I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

25 August 2011