H. Young (Operations) Ltd v Universal Protein Supplements Corporation
[2016] ATMO 82
•11 October 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by H. Young (Operations) Limited to application under section 92 of the Act by Universal Protein Supplements Corporation to remove trade mark number 713746 (9, 14, 16, 18, 20, 25) - ANIMAL (stylised) - in the name of H. Young (Operations) Limited
| Delegate: | Nicole Worth |
| Representation: | Opponent: Siobhan Ryan of Counsel instructed by Davies Collison Cave Patent & Trade Mark Attorneys. Applicant: Gerard Skelly of Shelston IP. |
| Decision: | 2016 ATMO 82 Section 92 of the Trade Marks Act 1995: application for removal under ss 92(4)(a) and 92(4)(b) – use established in respect of some goods – Registrar’s discretion under s 101 exercised in respect of remaining goods – application for removal refused. |
Background
This decision is pursuant to an application to remove the below trade mark registration from the Register of Trade Marks for all of the goods in respect of which it is registered.
Trade Mark: (‘the Trade Mark’)
Filing Date: 25 July 1996
Priority Date: 2 February 1996
Owner: H. Young (Operations) Limited
Goods:Class 9: Protective clothing, protective headwear, life jackets, spectacles, sunglasses, retainers for spectacles, retainers for sports spectacles and sunglasses.
Class 14: Jewellery, watch straps, watches, clocks and horological instruments, keyrings.
Class 16: Printed matter, photographs, books, leaflets, adhesive stickers, labels, posters, stationery items, cardboard articles.
Class 18: Articles made from leather and from imitations of leather, bags, backpacks, rucksacks, wallets and purses, straps, belts, key cases.
Class 20: Display stands, display boards, furniture, picture frames, cabinets, dispensers, frames, shelves, keyboards for hanging keys, boxes and packaging containers.
Class 25: Clothing, footwear, headgear, baseball caps, sweatshirts, shirts, t-shirts.
The application was made by Universal Protein Supplements Corporation (‘the Removal Applicant’) on 24 December 2014. It nominated grounds for removal under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The allegation under s 92(4)(b) is that the Trade Mark was not used during the three year period ending on 24 November 2014 (‘the relevant period’, explained further shortly).
The owner of the registration, H. Young (Operations) Limited (‘the Removal Opponent’), filed a Notice of Intention to Oppose removal on 13 March 2015 and a Statement of Grounds and Particulars on 13 April 2015. The Removal Opponent filed evidence in support of its opposition to removal (discussed in more detail below), and the Removal Applicant elected not to file evidence.
Thereafter the parties requested a hearing which took place before me, a delegate of the Registrar of Trade Marks, on 19 July 2016. The Removal Opponent was represented by Siobhan Ryan of counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys, who also prepared written submissions on its behalf. The Removal Applicant was represented by Gerard Skelly of Shelston IP, who also prepared written submissions on its behalf.
Evidence
The evidence filed in this matter comprises two declarations: the first by Richard Tape, Finance Director of Animal, a division of the Removal Opponent, with exhibits 1 to 13, dated 13 August 2015; and the second by by Stuart Ogg, Sales Director of Twinfin Limited, dated 10 August 2015. The relevant facts and events outlined in the evidence are summarised below.
Mr. Tape declares that the Trade Mark was conceived in 1987, apparently in the UK, by two surfers who devised a robust watch strap to withstand surfing conditions. Their business then expanded and in 1999 the Removal Opponent purchased the business. He declares that the Removal Opponent now provides a range of action sports-inspired clothing, footwear, headgear, watches, eyewear, footwear, luggage and accessories which feature the Trade Mark. An undated web page from the Removal Opponent’s website ( states ‘Animal is a UK action sports lifestyle brand…’, and Mr. Tape declares the brand has a keen following amongst surfing, skiing, windsurfing, skateboarding, mountain biking and snowboarding enthusiasts.
The Removal Opponent’s goods are available via retail outlets in the UK, via an online store at ‘ and via third party retailers including third party retailers in Australia.
Mr. Tape declares that it is a requirement (per the Removal Opponent’s ‘Corporate Guidelines’) that all of its goods bear a ‘Genuine Product Graphic’, a combination of logos which contains the Trade Mark. The three variations of the Genuine Product Graphic are depicted below:
(collectively referred to as ‘the Genuine Product Graphic’)
Copies of the Corporate Guidelines dated May 2015, October 2012, and February, June[1] and November 2013 are exhibited, all of which stipulate that the products must bear the Genuine Product Graphic although it need not be visible - for example it can be included on interior care labels of the products or on the reverse side of swings tags (I note that the primary branding of the goods appears to be variations of the second and third logos depicted in the first two Genuine Product Graphics above). This is declared to have been a requirement since 2005, and a ‘supplier manual’ apparently of that year is exhibited wherein it is stated that the wash care label must depict the following graphic:
[1] Albeit I note that the June 2013 document is a ‘draft update’ to the Corporate Guidelines.
Undated photographs show the Genuine Product Graphic depicted upon the sewn in labels of a bikini bottom, a baseball cap, a beach towel, a pair of sneakers, a pair of canvas shoes, a wallet and a belt; printed upon a water bottle and a sticker applied to flip flops, and upon the outer packaging of a wallet. The Genuine Product Graphic is also depicted upon catalogues dated Autumn/Winter 2011, Spring/Summer 2012, Winter 2012, Spring/Summer 2013 and High Summer 2013, although there is no claim made that any of these catalogues were distributed in Australia. Similarly, undated images of T-shirts bearing the Trade Mark across their front are exhibited, but there is no claim that any of these particular T-shirts have been sold or made available in Australia.
Mr. Tape declares that the Removal Opponent has had direct commercial dealings with Australian retailers since at least 2006, including during the relevant period. He goes on to say that the Removal Opponent supplies clearance stock to Twinfin Limited, a UK based entity which on-sells the goods to Gazal Apparel Pty Ltd (‘Gazal’), an Australian entity. Company registration details of Gazal are exhibited to Mr. Tape’s declaration, as are two redacted invoices dated 30 April 2014 and 31 August 2014 from Twinfin Limited to addresses in Australia. (The names of the entity or entities to which the invoices were made out have been redacted, although they are declared to be to Gazal and the address lists the same suburb as that shown in the company registration details). The Trade Mark itself is not depicted upon the invoices; however the goods sold are listed by reference to item codes and the catalogues depicting the goods that correspond with those item codes are exhibited. Those goods include hats, gloves, belts, jackets, swimsuits, shorts, skirts, trousers, dresses and tops.
Mr. Tape declares that the Removal Opponent also sells goods to Textrade Ltd, a company which on-sells them to APAC Sale Group Pte Limited (‘APAC’), a registered Foreign Company in Australia with a local agent in NSW. Two redacted invoices to APAC are exhibited, which do not depict the Trade Mark either but do list the goods sold as ‘Animal accessories’ and ‘Animal Menswear’. Mr. Tape declares that APAC sells goods in Australia via ‘flash sales websites’ (which was explained at the hearing to be websites whereby goods are available for a short period of time, such as a day or a week, those goods often being clearance stock). A table of sales via various such websites is exhibited, in which a modest number of sales of the Removal Opponent’s goods is stated to have been made during September 2013 via the websites ‘Ozsale.com.au’ and ‘buyinvite.com.au’.
Additionally, the Removal Opponent sells its goods directly to APAC. A selection of five invoices from the Removal Opponent to the Australian office of APAC are exhibited which list, by item code, the goods sold. The catalogues depicting the goods which correspond to those item codes are also exhibited. The dates of the invoices range from 21 May 2012 to 30 September 2013, and the goods invoiced include various items of clothing, watch straps, hats, notebooks, bags, belts, keychains, wallets, earmuffs, underwear and socks.
Various emails dated in the relevant period between the Removal Opponent and representatives of Australian retailers or fashion buyers are exhibited to Mr. Tape’s declaration, on a confidential basis, in support of the Removal Opponent’s claim that it intends to expand its physical presence in Australia.
Lastly Stuart Ogg, Sales Director of Twinfin Limited, declares that his company has purchased goods from the Removal Opponent during the relevant period and that a selection of those products featured the Trade Mark as a prominent design. He further declares that his company has sold ‘ANIMAL branded’ merchandise to Australia retailers including Gazal and APAC during the relevant period and that Gazal continues to purchase such merchandise.
Legal Framework
Section 92(4) of the Act provides:
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.
Section 100 of the Act specifies that the onus is upon an opponent to rebut any allegations made under s 92. It is for an opponent, therefore, to establish that it had the requisite intention to assign, use or authorise use of the trade mark when the application to register the trade mark was filed and/or that it used its trade mark in good faith before 24 November 2014 (under 92(4)(a)); or, under 92(4)(b), that it used the trade mark in good faith in the three year period ending 24 November 2014 (being the relevant period).[2] The authors of Shanahan’s Australian Law of Trade Marks and Passing Off[3] note that once five years have passed from the date of registration (being the period of time before which an application under s 92(4)(b) may not be made), ss 92(4)(a) and 92(4)(b) effectively merge. It is therefore convenient to discuss the ground under s 92(4)(b) first, given that if the removal application does not succeed here it will also fail under 92(4)(a). (This is because the Removal Opponent will have shown genuine use in the relevant period, thereby rebutting the allegation that it had no intention in good faith to use the Trade Mark at the time of applying for registration and did not use the Trade Mark at any time up until 24 November 2014).
[2] Or, for allegations under s 92(4)(b), to establish that there was an obstacle to use per s 100(3)(c) – not relevant here.
[3] Davison M and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off, 5th ed, Thomson Reuters (Professional) Australia Limited, 2012.
The Registrar has the discretion not to remove a trade mark from the register even if the grounds upon which the removal application was made have been established[4]. Lastly, I proceed on the basis that the relevant standard of proof is the balance of probabilities[5].
[4] If satisfied that it is reasonable to do so, see subsection 101(3) of the Act.
[5] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663 at [6] to [26] and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 at [132] to [133], albeit in relation to s 52 of the Act.
Section 92(4)(b)
The Removal Opponent contends that it has made genuine use of the Trade Mark in Australia in the relevant period which is evidenced by the sales invoices to Gazal and APAC, and though the invoices do not show use of the trade mark per se it can be inferred that in accordance with the Removal Opponent’s Corporate Guidelines all items sold bore the Genuine Product Graphic which contains the Trade Mark. It further contends that where use is not shown in respect of the goods of the registration, the Registrar’s discretion ought to be exercised to maintain the registration in full because those other goods are goods that consumers would reasonably expect a manufacturer of action sportswear and accessories to produce.
The Removal Applicant argues that there are few instances of use and, per the delegate’s analysis in Dimitri V. Chiotelis and Evangelos E. Chiotelis v TAP Worldwide LLC,[6] where few instances of use are relied upon such acts ought to be established by ‘if not conclusive proof, overwhelmingly convincing proof’[7] and the Registrar may not be persuaded by evidence which derives solely from the internal files of an opponent or which is of a circumstantial nature.[8] The Removal Applicant also submits that some of the invoices indicate trade did not occur in Australia.
[6] [2014] ATMO 4.
[7] Per Re Nodoz Trade Mark [1962] RPC 1 at 7.
[8] Per Trina Trade Mark [1977] RPC 131.
There are two invoices issued from Twinfin Ltd of the UK to an address in Australia, wherein the identity of the recipient is redacted but Mr. Tape declares to be Gazal and the billing address in the invoices corresponds to the suburb shown in Gazal’s company registration details. Both contain the notation ‘EX WORKS’ at the bottom of the page, and the Removal Applicant submits that this indicates the sales did not take place in Australia (‘ex works’ being a business term to describe an agreement in which the seller is required to make goods ready for pickup at its own place of business and all other transportation costs and risks are assumed by the buyer[9]). Similarly there are also two invoices issued from Textrade Ltd of Malta to an unidentified entity declared to be APAC and the billing address in the invoices corresponds to the suburb shown in APAC’s foreign company registration in Australia. The invoices appear to be in German, and under a heading ‘Transportart’ is stated ‘Pickup’ and under ‘Ubernahmeort des Gutes’ (which according to Google® Translate means ‘about acquisition place of the goods’) is listed an address in Germany. Had these invoices been the only evidence of use in Australia I consider there would be serious doubt as to whether they established trade in this country.
[9] See for example ‘ or ‘>
However there are five further invoices issued directly from the Removal Opponent to APAC’s office in Australia, dated within the relevant period and for a range of the registered goods. They do not state any mode of delivery or transfer of the goods. There is nothing that directly suggests the goods were not delivered to the Australian billing address listed on the invoices. There is also a table of sales of goods claimed to bear the Trade Mark, declared to be ‘an extract obtained from APAC’, which lists a modest number of sales made by APAC via flash websites it operates including ‘Ozsale.com.au’ and ‘buyinvite.com.au’.
The Removal Applicant submits that these documents do not prove use because they are internal documents from the Removal Opponent - none of the sales being corroborated by receipts of delivery in Australia, copies of sales receipts to final customers in Australia or supporting declarations from those who would be involved in trade in Australia. In respect of the table of sales via flash websites the Removal Applicant submits there is no corroboration of the origin of the table and nothing to say that the sales were to Australian customers (it is submitted rather that sales in Australia must be inferred by virtue of the relevant website addresses containing the country code Top Level Domain ‘.com.au’).
Whilst I agree that some criticism of the Removal Opponent’s evidence is warranted, particularly because it relies upon a number of inferences and the Removal Opponent could have done more to show that those inferences should be drawn, I nonetheless consider that it is sufficient to establish use of the Trade Mark within the relevant period in respect of a variety of clothing, bags, accessories and notebooks.
Firstly, the invoices list a billing address in Australia and whilst further proof of sales actually occurring in Australia might be necessary if there were circumstances or facts to cast doubt upon that, no such further circumstances or facts have been brought to light. Additionally this is not a case of a single sale proving use, rather there are five invoices issued over the period 21 May 2012 to 30 September 2013. I therefore consider it reasonable to infer that the Australian office of APAC ordered the goods identified in the invoices, and that those sales occurred in Australia.
Secondly, it is true that the invoices do not show use of the Trade Mark per se (some list goods as ‘Animal’ goods but others only by item code). Rather use must be inferred by virtue of the Removal Opponent’s ‘Corporate Guidelines’ which require that all goods must bear a Genuine Product Graphic, which includes the Trade Mark, and therefore those goods sold bore the Trade Mark as part of that Genuine Product Graphic. I consider it reasonable to infer that the goods sold did bear the Genuine Product Graphic: there are a number of iterations of the Corporate Guidelines in evidence dated 2012 and 2013, as well as a ‘Supplier Manual’ declared to be from 2005 which also stipulates the requirement for such a graphic (albeit that graphic is slightly different). Moreover there is no cogent reason put forward as to why the goods would not have borne the Genuine Product Graphic. The Removal Applicant submits it is not clear that clearance stock was required to bear the Genuine Product Graphic, but it is not clear why this is so. I note that the Removal Opponent’s ‘Supplier Manual’ states that rejected goods and seconds must have all Animal branding removed; however there is nothing to suggest that the goods sold by APAC were rejected goods or seconds. I note also that although it is stated that clearance stock is on-sold to Gazal, it is not stated what type of stock is sold to APAC.
As to whether use of the Genuine Product Graphic amounts to use of the Trade Mark, in terms of use with additions or alterations not substantially affecting identity, I consider that here the use is of the Trade Mark. It is established that more than one trade mark may be used in close proximity.[10] The evidence shows that the Removal Opponent’s goods are primarily branded by different iterations and combinations of the stylised word ANIMAL and the elliptical device in the Genuine Product Graphic (referred to in the evidence as the ‘claw’ logo). I therefore consider it likely that consumers would discern that different logos are used within the Genuine Product Graphic, all depicted with equal prominence, and comprehend that they are separate signs all of which act as badges of origin for the Removal Opponent. To that end I consider the Trade Mark retains its own identity in the Genuine Product Graphic, and that it is therefore a use of the Trade Mark with additions or alterations not substantially affecting its identity.
[10] See for example Wellness Pty Limited v Pro Bio Living Waters Pty Ltd [2004] FCA 438.
Lastly, the table of sales made via flash websites that APAC operates would not of itself be conclusive. However, considered in combination with the invoices made to APAC, it is reasonable to infer that the sales were made in Australia: the invoices are made out to an Australian address and the country code Top Level Domain of the relevant websites identifies Australia. The geographic location of the customers who purchased goods from those websites is not in evidence, but given the factors identified in this paragraph it is reasonable to conclude that the offer to trade was made in Australia and/or directed to Australian customers.[11]
[11] Merkel J in Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 noted that use of a trade mark upon a website can be use of a trade mark in a particular jurisdiction if there is evidence that the use was specifically intended to be made in, or directed or targeted at, that jurisdiction. Here, I consider the ‘.au’ country code Top Level Domain, and the sale of goods to the Australian address of APAC, are evidence that the use was specifically intended to be made in, or directed or targeted at, Australia.
I bear in mind also that this evidence is viewed in the context of the balance of evidence indicating that the ANIMAL brand is a relatively well-known brand of action sportswear in the UK, and not a relatively unknown or obscure brand from a foreign jurisdiction.
I am accordingly satisfied that the Removal Opponent has done enough to rebut the allegation under s 92(4)(b) (and therefore s 92(4)(a) as well) in respect of the registered goods in classes 14, 16, 18 and 25.
However no use of the Trade Mark in relevant period is shown in respect of the registered goods in classes 9 and 20. The removal application is therefore established in respect of them. Nonetheless, I consider that the Registrar’s discretion ought to be exercised in respect of these goods, for the reasons below.
Registrar’s discretion
As already mentioned, the Registrar has a discretion not to remove a trade mark from the Register even if the grounds upon which a removal application is made are established, per s 101(3) of the Act. The courts have identified a number of factors which are of assistance in considering the exercise of the discretion, including:
• there has been no abandonment of the trade mark;
•the registered proprietors of the mark still have a residual reputation in the mark;
•there have been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
•the applicants for removal have entered the market without having taken steps to ascertain from the register whether anyone has a right to exclude their use of the mark;
•the registered proprietors were not aware of the applicant’s sales under the mark.[12]
[12] Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [202]-[203], referring to Falconer J in Hermes Trade Mark [1982] RPC 425.
This is not an exhaustive list of the factors that may be taken into account, but is illustrative of the range of considerations that may inform a decision to exercise discretion. I note also that should the question of weighing the private interests of the parties be taken into account, the parties mentioned at the hearing that the Removal Applicant is seeking registration of a trade mark primarily identified by the word ANIMAL in class 25 for a range of clothing, footwear and headgear.
There is no evidence of abandonment of the Trade Mark. On the contrary there is evidence to indicate that the Removal Opponent was seeking opportunities to expand its physical presence in Australia during the relevant period, being the confidential emails between it and various retailers and fashion buyers in Australia (albeit there is no evidence that anything came of these communications). There have been sales during the relevant period of a range of goods aimed at the action sportswear market. Although use is not shown in respect of the various items of protective clothing and eyewear registered in class 9, I note that the Full Court in Austin, Nichols & Co Inc v Lodestar Anstalt[13] confirmed that the question of whether removal of the relevant trade mark would lead to deception or confusion was relevant in considering the exercise of the discretion. I consider that removal of the Trade Mark in class 9 would likely lead to deception or confusion in circumstances where the Removal Opponent has established use in class 25 in the context of the action sportswear market.
[13] [2012] FCAFC 8, [35].
The goods registered in class 20 are somewhat more removed from those which are usually associated with clothing and accessories. Nonetheless I am aware from my own knowledge that it is an increasing trend for clothing brands, including in Australia, to sell a range of homewares, stationery and other decorative items (for example the clothing retailers Country Road, Sportsgirl and Sussan all sell such goods) as well as clothing, bags and shoes. Whilst I would not go so far as to say that use in respect of class 25 is use upon similar goods (per s 14 of the Act) to those in class 20, I acknowledge a possibility of confusion given this trend. Additionally, should the interests of the Removal Applicant be taken into account it does not appear that removal of the registration in class 20 would be of any advantage to it, given it seeks registration in class 25. I mention also that the parties have not made submissions specific to the classes of goods but rather have made submissions on the basis of complete removal or complete maintenance of the registration. It is not for the Registrar to make out a case for removal in class 20, particularly where I have already acknowledged at least a potential for confusion given an increasing ‘merging’ of markets.
As such, I consider it reasonable to exercise the Registrar’s discretion to maintain the registration in respect of the goods in classes 9 and 20.
Decision and costs
I am satisfied, on the balance of probabilities, that the Removal Opponent has rebutted the allegation under s 92(4)(b), and therefore also 92(4)(a), in respect of the goods in classes 14, 16, 18 and 25. I am also satisfied that it is reasonable to exercise the Registrar’s discretion to maintain the registration in respect of the goods in classes 9 and 20.
Accordingly I refuse to remove trade mark registration 713746 from the Register of Trade Marks in respect of any of the goods for which it is registered.
Costs usually follow the event, and given there is no apparent reason to depart from that principle here I award costs against the Removal Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Nicole Worth
Hearings Officer
Trade Marks Hearings
11 October 2016
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