GSBM Pty Ltd v Elemis USA Inc

[2023] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by GSBM Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Elemis USA Inc. for removal of trade mark number 1642487 (3) – Truth In Beauty – in the name of GSBM Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Banki Haddock Fiora

Decision:

2023 ATMO 34

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 25 March 2021 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) by Elemis USA Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1642487

Lodgement date

27 August 2014

Goods

Class 3: Anti-sun preparations (cosmetics); Body creams (cosmetics); Colour cosmetics for the eyes; Colour cosmetics for the skin; Cosmetics; Cosmetics for animals; Cosmetics for bronzing the skin; Cosmetics for eyebrows; Cosmetics for eyelashes; Cosmetics for personal use; Cosmetics for protecting the skin from sunburn; Cosmetics for skin tanning; Cosmetics for suntanning; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of eye shadow; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics in the form of mascara; Cosmetics in the form of milks; Cosmetics in the form of nail polish; Cosmetics in the form of oils; Cosmetics in the form of powders; Cosmetics in the form of rouge; Cosmetics preparations; Cosmetics to remove pigmentation marks; Essential oils for use in cosmetics; Eyebrow cosmetics; Facial wipes impregnated with cosmetics; Hair cosmetics; Liners (cosmetics) for the eyes; Milks (cosmetics); Moisturisers (cosmetics); Nail base coat (cosmetics); Nail enamel (cosmetics); Nail enamel remover (cosmetics); Nail gloss (cosmetics); Nail hardeners (cosmetics); Nail polish removers (cosmetics); Nail preparations (cosmetics); Nail revitalising lotions (cosmetics); Nail tips (cosmetics); Nail treatment creams (cosmetics); Nail treatment gels (cosmetics); Nail treatment lotions (cosmetics); Nail varnish remover (cosmetics); Nail varnish removing preparations (cosmetics); Night creams (cosmetics); Non-medicated cosmetics; Nourishing creams (cosmetics); Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the skin (cosmetics); Paper hand towels impregnated with cosmetics; Preparations for removing cosmetics; Skincare cosmetics; Sprays for use on the body (cosmetics); Sun barriers (cosmetics); Sun blocking cream (cosmetics); Sun blocking gel (cosmetics); Sun blocking lipsticks (cosmetics); Sun blocking lotions (cosmetics); Sun blocking oils (cosmetics); Sun blocking preparations (cosmetics); Sun creams (cosmetics); Sun gel (cosmetics); Sun lotions (cosmetics); Sun milk (cosmetics); Sun protecting creams (cosmetics); Sun protection oils (cosmetics); Sun protection products (cosmetics); Sun protectors for lips (cosmetics); Sun screen preparations (cosmetics); Sun screening preparations (cosmetics); Sun skin care products (cosmetics); Sun-tanning preparations (cosmetics); Suntan lotion (cosmetics); Suntan milk (cosmetics); Suntan oils (cosmetics); Suntan preparations (cosmetics); Tanning compositions (cosmetics); Tanning creams (cosmetics); Tanning oils (cosmetics); Tanning preparations (cosmetics); Textile pads impregnated with cosmetics; Tints (cosmetics); Tissues impregnated with cosmetics; Toilet napkins of cellulose impregnated with cosmetics; Toilet napkins of cellulose wadding impregnated with cosmetics; Toilet napkins of paper impregnated with cosmetics; Toy cosmetics (usable); Varnishes (cosmetics)

(‘Registered Goods’)

Owner

GSBM Pty Ltd

Trade Mark

Truth in Beauty

(‘Trade Mark’)

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  GSBM Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 21 May 2021 and a Statement of Grounds and Particulars (‘SGP’) on 16 June 2021.  The Applicant filed a Notice of Intention to Defend on 17 August 2021.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant chose not to file evidence in answer.  This material will be discussed in more detail below.

2. The entirety of the EIS, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

3. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

   7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision by way of written submissions and paid the appropriate fee.  The Applicant filed written submissions on 8 December 2022 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

   8.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   Evidence in Support

   • Declaration by Anthony Rechtman, Chief Executive Officer of Total Beauty Network Pty Ltd, dated 17 November 2021 (‘Rechtman Declaration’) together with Exhibits TR-1 to TR-8.

   The Relevant Provisions

   9. Part 9 deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

   92  Application for removal of trade mark from Register etc.

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

   10. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 25 February 2021 (‘relevant period’).

   11. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

   12.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden 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:

   (a) …
   (b)  …
   (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.

   […]

   (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; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   13.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

   14.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   15. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[6] 

   [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

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

   [6] Act s 7(3).

   Discussion

4. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).  If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   [7] Ibid s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

   Use of the Trade Mark in the relevant period

5. The Opponent’s evidence in this matter consists of the Rechtman Declaration.  Mr Rechtman indicates that he is the CEO of Total Beauty Network Pty Ltd (‘TBN’) and that the Opponent licenses the Trade Mark in Australia and world-wide to TBN.  The Rechtman Declaration indicates that the Trade Mark was initially applied for by TBN and was assigned to the Opponent on 8 March 2018.  The EIS does not contain any written licence agreement, nor is any evidence provided of any other relationship or connection between TBN and the Opponent or any control exercised by the Opponent over any claimed use of the Trade Mark by TBN.

6. Mr Rechtman gives evidence that TBN was established in 2003 and is involved in marketing and distributing cosmetic products and that the Trade Mark is associated with products in the INIKA range, which is available in Australia.  In support of this statement the Rechtman Declaration contains the following documentary evidence:

   -Exhibit TR-2 being an extract of a web-page taken on 15 November 2021 (outside the relevant period) for a product known as INIKA Vegan Crease Brush.  At the bottom of the page is the description ‘Cruelty Free – Not Tested on Animals – Vegan – Halal – Truth in Beauty’.

   -Exhibit TR-3 being an extract of a web page taken outside the relevant period for a product known as INIKA Mineral Blush.  At the bottom of the web page is the phrase ‘as a Truth in Beauty brand, we guarantee our products are SAFE, NATURAL, Ethical and ENVIRONMENTALLY CONSCIOUS’.

   -Exhibits TR-4 and TR-5 are extracts from the Amazon Australia website taken outside the relevant period featuring an INIKA product that is said to have the words ‘Truth in Beauty’ on its packaging (apparently on the back and requiring the user to zoom in on the packaging to identify the wording).

   -Exhibit TR-6 being a Facebook post dated 16 December 2019 from the Facebook page INIKA Organic.  The post has the heading ‘Skincare Quiz/INIKA Organic’ and below that the wording ‘As a Truth in Beauty brand, we guarantee our products are safe, natural, ethical and environmentally conscious.  Shop online for free shipping orders over $75’.

7. In addition, Exhibits TR-7 and TR-8 of the Rechtman Declaration consist of packaging and product development briefs created after the relevant date indicating that TBN is considering the launch of a sunscreen product that would make reference to the Trade Mark. 

8. In my review of the EIS I reach the following conclusions.  Firstly, there is no evidence of use of the Trade Mark by the Opponent in the relevant period.  Secondly, I am not satisfied that there was any use of the Trade Mark by TBN during the relevant period.  Finally, even if there were use of the Trade Mark by TBN I am not satisfied that the use of the Trade Mark by TBN was authorised by the Opponent under ss 7 and 8 and as such it does not satisfy the requirements of s 100(1)(c).  I will deal with the final conclusion first. 

9. Under s 8, authorised use requires use under the control of the trade mark owner.  In the Full Federal Court decision of Lodestar Anstalt v Campari America LLC,[8] Besanko J summarises the law at paragraph 63:

   [8] [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).

   Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.

10. Justice Besanko later stated that:

    98.        [A]ctual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

11. In that same case, Katzmann J commented on the construction of section 8 as follows:

    169.      Section 8 provides that whether a person is an authorised user of a registered mark and whether the use of the mark by that person is an authorised use depend on whether the person uses the mark under the control of the registered owner (subss (1) and (2)). Subsections (3)–(4) reveal that use will be taken to be use under the control of the owner where, for example, the owner “exercises quality control over goods or services ... dealt with or provided in the course of trade by another person ... and ... in relation to which the mark is used” or “exercises financial control over the other person’s relevant trading activities”. Subsection (5) states that subss (3)–(4) do not limit the meaning of the expression “under the control of” but this statement is ambiguous. It might signify that “control” is not limited to quality control or financial control. On the other hand, it might signify that control is not limited by the context provided by subs (3)–(4). The former construction is the preferable one. In my opinion, the examples given in subss (3) and (4) give colour to the concept of control in s 8. The language used in the two subsections strongly suggests that — regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.

    …

    183.      In my opinion, under the 1995 Act the use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. In a case where a registered proprietor of a trade mark is relying on use by an authorised user, it is still necessary to demonstrate that the trade marks indicate a connection in the course of trade with the registered proprietor. The purpose of s 8 is to identify the means by which that is done. …

    184. A bare licence to use a trade mark, particularly a perpetual licence, would not be sufficient. Without more, it would amount to a divestment of control. But there is no reason in principle why control might not be exercised through conditions imposed by agreement on the use to which the trade marks might be put and, in the event of an application to cancel the registration for non-use, proved by evidence that the authorised user is complying with those conditions. Whether or not that is sufficient in any particular case, however, will depend on the terms of the agreement, most importantly whether the control is such as to maintain the registered proprietor’s connection with the marks. As the Act makes clear, that can be achieved if either quality control or financial control is exercised. If it is not, the registered proprietor (upon whom the burden of proof rests), must show that it has exercised some other form of control in the relevant period which maintains its connection with the marks.

    24.   In Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’),[9] the Full Federal Court at paragraph 45 noted that as a matter of practicality, control could be found in circumstances where the two companies shared the same directors:

    The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.… it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[10]

    25.     In the present case the Opponent has asserted that a licence exists but has provided no evidence of such a licence and no evidence of any practical control over any use of the Trade Mark by TBN.  While Trident indicates that in certain circumstances (such as where the companies shared the same directors) control can be inferred, such evidence does not exist before me; indeed no evidence has been filed indicating any connection between TBN and the Opponent.  Consequently, use by TBN is not authorised use of the Trade Mark under s 8. 

    26.     In any event I am not satisfied that the evidence filed by the Opponent indicates any use of the Trade Mark by TBN in the relevant period.  Exhibits TR-2 to TR-5 (and TR-7 and TR-8) all postdate the relevant period and there is no evidence of any actual sales during the relevant period of any INIKA products.  In addition, I am not satisfied that the use of the words ‘Truth in Beauty’ in a single Facebook post in 2019 (on the INIKA Organic Facebook page) amounts to use as a Trade Mark; namely as a badge of origin for the Opponent’s products.  Rather the context in which they occur (as part of a broad statement on the INIKA Facebook page that the company is environmentally conscious and ethical), they read as advertising copy for products that are identified under the trade mark INIKA.

    [9] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

    [10] Ibid [45].

1. I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period. 

   Obstacles to use

   28.     The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) and, in the interests of completeness, I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.

   Registrar’s Discretion

   29.   As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[11]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Federal Court provided the following observations regarding the discretion under s 101(3):

   [11] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[12]

   [12] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

   30.   While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme — or, at least — a predominant interest is the maintenance of the integrity of the Register.[14] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   31. In the present case, there is no evidence that the Opponent (as opposed to TBN) has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for any of the Registered Goods. Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way. In particular, the use of the Trade Mark by a third party (TBN) which, on the evidence presently before me, is unconnected to the Opponent, does not provide a basis to allow the Trade Mark to remain registered to the Opponent. I note that if TBN wishes to apply to register the Trade Mark for the Registered Goods, that is an option available to it, subject to the examination requirements in the Act. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of the Registered Goods.

   Decision

   32.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1642487 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   33. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under section 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   7 March 2023