Harbour Guidance Pty Ltd v JW (figurative)

[2022] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by James Watson to application under section 92 of the Trade Marks Act 1995 (Cth) by Harbour Guidance Pty Ltd for removal of trade mark number 1521257 (Class 18 and 25) – JW (figurative) - in the name of James Watson.

Delegate:	Blake Knowles
Representation:	Opponent: Self-represented.   Applicant: KHQ Lawyers.
Decision:	2022 ATMO 101 Trade Marks Act 1995 (Cth) – application under section 92 – no evidence of use of trade mark during relevant period – discretion not exercised - trade mark removed.

Background

1. Harbour Guidance Pty Ltd (‘Removal Applicant’) on 23 February 2021 filed an application under s 92 of the Trade Marks Act 1995[1] (‘Removal Application’) for removal of registered trade mark number 1521257 in the name of James Watson (‘Removal Opponent’). The registration is for the following trade mark and goods:  

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

   
   (‘Trade Mark’)

   Class 18: Leather

   Class 25: Apparel (clothing, footwear, headgear)     

   (‘Goods’)

2. The Removal Opponent filed a notice of intention to oppose the Removal Application on 27 February 2021, and a statement of grounds and particulars (‘SGP’) on 28 February 2021. The Removal Applicant filed a notice of intention to defend the Removal Application on 6 May 2021. The Removal Opponent subsequently requested an amendment to the particulars stated in the SGP, which was allowed by a delegate of the Registrar.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 11 June 2021. An amended version of that declaration was subsequently filed on 23 August 2021, and the Removal Opponent was subsequently granted an extension of time to file evidence late. The Removal Applicant filed Evidence in Answer (‘EIA’) on 12 October 2021. The Removal Opponent did not file Evidence in Reply.

4. The parties were given the opportunity to request a hearing by videoconference or by written submissions only. Neither party requested a hearing. The Removal Applicant requested that the matter be decided based on the materials filed and paid the relevant fee. As such, I have decided this matter based on the particulars set out in the SGP and the evidence filed.   

5. As the Removal Application was filed on 23 February 2021, for the purposes of the opposition, the relevant period is the three-year period ending on 23 January 2021 (‘Relevant Period’).

   Evidence

6. The following declarations were filed as evidence:

   EIS

   Declaration of James Watson, Removal Opponent, made on 7 June 2021, with Exhibits A to G (inclusive of amendment requested on 23 August 2021).  

   EIA

   Declaration of David Robbins, solicitor for the Removal Applicant, made on 12 October 2021.

   EIS

7. The Removal Opponent’s declaration is brief, and as such, can be reproduced in full:

   1. The JW trademark is still used on wallets we create today. These wallets are sold at markets and through our website. The JW trademark is also still used for advertising and marketing the James Watson brand. Live pictures of current uses of the JW trademark on our wallets can be found within a few seconds through any online image search engine; type “James Watson Wallet” or “James Watson Bantam Wallet”. Our wallets with the JW trademark feature on numerous sites around the world, continuing to act as very important touch points to draw customer to our wallets and other leather goods. We still brand wallets with our original trademark for repeat customers that prefer our original trademark, and also for new customers that have seen our original JW trademark and prefer this image stamped onto their purchase. We continue to derive significant repeat and new income from our JW trademark. We also continue to have customers that have the same initials of JW and prefer our JW trademark image on their purchases. The JW trademark will still be used on wallets in the future.

   2. The JW trademark is used on our clothing as well. Attached is clothing patterns of a few items (Exhibit A and B), but does not include all our clothing items. Also attached is our promotional photo shoots of some of our clothing items with the JW logo on them (Exhibit C, D, and E). We have sold these at markets and are looking into selling them in retail shops and our own branded retail shops. We currently have t-shirts, business shirts, track suits, skirts. We will be expanding this range with the JW logo on them.

   3. The JW. Trademark is shown on an item of our clothing in article in a newspaper dated 14^th of January 2013.

8. The Removal Opponent annexes the following documents to his declaration:

   ·Undated pattern specification sheets for two shirts, which are indicated to fall under the label ‘James Watson’ (Exhibits A and B). These patterns do not display the Trade Mark.

   ·Promotional photographs of models wearing shirts bearing the Trade Mark (Exhibits C, D, and E).

   ·An article in the Gold Coast Bulletin featuring the Removal Opponent and referring to his launch of a range of high-end apparel. The article is accompanied by a photograph of the Removal Opponent with a T-shirt bearing the Trade Mark. The date on the article is not visible but the Removal Opponent indicates that it was published on 14 January 2013 (Exhibits F and G).

   EIA

9. Mr Robbins comments on the lack of relevant detail and the insufficiency of the examples submitted as use of the Trade Mark by the Removal Opponent. Mr Robbins also indicates that a review of the Removal Opponent’s website did not locate any wallets or other products featuring the Trade Mark.

   Grounds, onus and standard

10. The Removal Application nominates the ground for removal under s 92(4)(b), which states:

    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.

11. The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[2]

    [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

12. The Removal Opponent relies on use of the Trade Mark for the rebuttal.[3] However, I also have a discretion to allow the Trade Mark to remain registered even if there has been no use of the Trade Mark during the Relevant Period.

    [3] Ibid s 100(3)(a).

13. All findings of fact in these reasons are based on the ordinary civil standard of the balance of probabilities.

    Discussion

    Use of the Trade Mark during the Relevant Period

14. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user, in good faith, on or in relation to the Goods during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Goods, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Goods for which use during the Relevant Period has not been established.

15. The ‘use’ required to be demonstrated by the Removal Opponent or an authorised user is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person who applies the sign to or in relation to those goods or services.[4] Use in the course of trade means an actual dealing in the goods, an offer for sale of goods, or an intention to offer goods for sale manifested through preparatory steps showing an objective commitment to use the trade mark.5F[5]

    [4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

    [5] Angela Christou v Tonch Pty Ltd [2008] ATMO 24; see also Dick Smith Investments Pty Ltd v Ramsey[2001] FCA 261 (Katzmann J).

16. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[6] In addition to appearing on the goods themselves, a trade mark may be used in relation to goods where it is included in an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[7]

    [6] The Act, ss 7(4), 92(4)(b). 

    [7] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

17. The EIS does not establish that the Trade Mark was used in relation to the Goods during the Relevant Period. No dated invoices, transaction records, or other relevant documents such as webpage screenshots, emails, or advertisements have been provided which indicate that products were sold or offered for sale by reference to the Trade Mark between January 2018-2021. The only ‘dated’ Exhibit (although the date does not appear on the document itself) is the article in the Gold Coast Bulletin from 2013. This is well before the Relevant Period.  

18. Further, I note that the only goods registered in Class 18 are ‘Leather’. The term ‘leather’ without any qualifier refers to leather as a base material, not finished products made from leather. As such, even if there had been probative evidence of use of the Trade Mark for wallets or other finished products made of leather during the Relevant Period, I would not consider that such use is in relation to the Goods in Class 18 (i.e. leather).

19. I also note the Removal Opponent’s comment in his declaration that use of the Trade Mark can be located via Internet searches. However, it is not appropriate that a delegate of the Registrar undertake research to locate use of a trade mark. The onus was on the Removal Opponent to file any material that he wished to rely on during the evidence stages of the opposition.

20. As I am not satisfied that there has been use of the Trade Mark in the Relevant Period, I must now consider whether to exercise discretion to allow the Trade Mark to remain registered.

    Discretion

21. The discretion available to the Registrar is ‘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 Act’.[8] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[9] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

    There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[10]

    [8] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

    [9] Ibid [69].

    [10] [2002] FSR 51 (Ch) 790, [19].

22. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, 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. 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.[11]

    [11] [2008] FCA 934, [210] (citations omitted).

23. The Removal Opponent bears the onus of establishing that the discretion should be exercised in his favour: it is not for the Removal Applicant to establish that it should not.[12]

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

24. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

    ·     whether there has been abandonment of the trade mark;

    ·     whether the registered proprietors of the mark still had a residual reputation in the mark;

    ·     whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

    ·     whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[13]

    [13] ‘Gallo’ [2008] FCA 934, [202]–[203].

25. The evidence provides little information on which to consider the above factors, and the Removal Opponent has made no submissions on the exercise of discretion. At most, I have the Removal Opponent’s declaratory evidence that the Trade Mark has not been abandoned and the Trade Mark is still in use. However, there is no evidence which allows me to confirm whether there is any appreciable reputation in the Trade Mark, or whether there have been sales of the Goods bearing the Trade Mark, following the Relevant Period.

26. The Removal Opponent has not provided sufficiently compelling reasons why I should exercise discretion in his favour. As such, I decline to exercise discretion.

    Decision

27. The Removal Opponent has not established either use of the Trade Mark for the Goods during the Relevant Period, or that it is appropriate to exercise discretion to allow the Trade Mark to remain registered. As such, the Trade Mark should be removed from the Register.

28. Given it is the right of both parties to appeal this decision to the courts, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then the Trade Mark shall not be removed until the appeal has either been discontinued or, the Removal Application has been dealt with as the Court sees fit.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    17 June 2022