Guizhou Guijiu Co., Ltd. v NAGAYAMAHONKE SYUZOJO Co., Ltd

[2023] ATMO 206

TRADE MARKS ACT 1995

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

Re:Opposition by NAGAYAMAHONKE SYUZOJO CO., LTD. to an application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by Guizhou Guijiu Co., Ltd. for cessation of protection of Protected International Trade Mark number 1835113 (International Registration number 1336784) (class 33) – (Japanese Character) – in the name of NAGAYAMAHONKE SYUZOJO CO., LTD.

Delegate:

Nicholas Smith

Representation:

Opponent: Spruson & Ferguson

Applicant: AU TM Pty Ltd

Decision:

2023 ATMO 206

Trade Marks Act 1995 (Cth) – application for cessation of protection under reg 17A.48C - Opponent’s evidence shows use of the Trade Mark during the relevant period for a subset of the goods– exercise of Registrar’s discretion not appropriate – protection to cease for some goods

Background

1. This decision is pursuant to an application made on 23 September 2022 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) by Guizhou Guijiu Co., Ltd. (‘Applicant’) for partial cessation of protection of the protected international trade mark detailed below from the Australian Register of Trade Marks (‘Register’).[1]  The application is made in respect of all the goods for which the trade mark is protected, that is, the application is for complete cessation of protection of the trade mark.

   [1] Technically an application to cease protection of a protected international trade mark is to be made pursuant to reg 17A.48C of the Trade Marks Regulations 1995 (Cth). However, reg 17A.48D provides that Part 9 of the Trade Marks Act 1995 (Cth) (being the part of the Act dealing with an application for removal) applies in relation to an application for cessation of protection and, in particular, reg 17A.48D(f) provides that an application under s 92 to remove a trade mark is taken to be a reference to an application for cessation of protection.

Registration No.

1835113

International Registration (‘IR’) number

1336784

Lodgement date

24 October 2016

Goods

Class 33: Sake; western liquors [in general]; alcoholic fruit beverages; Chinese liquors [in general]; flavored liquors

(‘Registered Goods’)

Holder

NAGAYAMAHONKE SYUZOJO CO., LTD.

Trade Mark

(‘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.  NAGAYAMAHONKE SYUZOJO CO., LTD. (‘Opponent’) has opposed the application for cessation of protection of the Trade Mark, filing a Notice of Intention to Oppose cessation of protection on 15 November 2022 and a Statement of Grounds and Particulars (‘SGP’) on 14 December 2022.  The Applicant filed a Notice of Intention to Defend on 13 February 2023.

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Nagayama Takahiro, director of the Opponent (‘Nagayama declaration’)	1 June 2023	Annexures 1-9 and 11-14 Confidential Annexures 4A, 9A and 10
Evidence in answer
N/A
Evidence in reply
N/A

5.  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 Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

6.  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 earlier in this decision:

·The Application for Cessation of Protection;

·The Notice of Intention to Oppose and SGP.

The Relevant Provisions

7. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

8.  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)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorise the use of the trade mark in Australia; or

(iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)  has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(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.

9. 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 23 August 2022 (‘relevant period’).

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

11.     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) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or
(b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
(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.

12.     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.

13.     In accordance with s 101 I may decide to cease protection for all or some of the goods identified in the application for cessation of protection, or if satisfied it is reasonable to do so, decide not to cease protection even if the grounds under which the application for cessation of protection was made are established.

14. 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).

15.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]

[7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

Discussion

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[8] As the Trade Mark had been registered for more than five years as at the date of the application for cessation, I need only consider s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[9]) 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)). 

   [8] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

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

2. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide not to cease protection of the  Trade Mark.

   Use of the Trade Mark in the relevant period

3. The Opponent’s evidence in this matter consists of the Nagayama declaration.  The declarant states that the Opponent has offered Registered Goods bearing the Trade Mark in Australia in the relevant period.  The Nagayama declaration contains dated documentary evidence from the SakeNet Australia website (SakeNet being an entity that distributes and sells sake in Australia) showing the display of sake products bearing the Trade Mark being offered for sale in the relevant period, invoices from SakeNet Australia indicating the sale of the Opponent’s sake to Australian consumers in the relevant period as well as the use of the Trade Mark in marketing material connected to sake, some of which was targeted towards Australia.  In summary I am satisfied that the Nagayama declaration shows evidence of the use of the Trade Mark for sake (‘Used Goods’) in the relevant period.  There is no evidence that the Opponent has ever offered any alcoholic beverage other than sake under the Trade Mark.  As such I am not satisfied that the Opponent has used the Trade Mark for any of the other Registered Goods (‘Remaining Goods’) during the relevant period.

   Obstacles to use

   19.     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 Remaining Goods in the relevant period. Pursuant to s 100(3)(c) and in the interest of completeness I note that 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 protected for any of the Remaining Goods.

   Registrar’s Discretion

   20.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable not to cease protection of the Trade Mark in respect of the Remaining Goods.[10] The burden of persuasion in this regard falls on the Opponent.[11]

   [10] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [11] Ibid.

   21.     The Opponent has made no submissions in respect of the discretion. In the present case, there is no evidence that the Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for any of the Remaining Goods.  Given that, I am unpersuaded that the cessation of protection of the Trade Mark in respect of the Remaining Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to cease protection of the Trade Mark in respect of any of the Remaining Goods.

   Decision

   22.     The Opponent has partly established its opposition to the application for cessation of protection. Accordingly, I direct that protection cease in respect of all Remaining Goods of protected international trade mark number 1835113 (IR 1336784) one month from the date of this decision. It will remain protected for the goods listed below. 

   Class 33:  Sake

   23.     If the Registrar is served with a notice of appeal I direct that cessation of protection 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

   24.     Neither party has been entirely successful in respect of the application for cessation of protection of protected international trade mark 1835113 (IR 1336784).  As such I make no order as to costs.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   12 December 2023