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

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

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 101
Decision Date: 17 June 2022

CaseChat Overview and Summary

This matter concerned an application by Harbour Guidance Pty Ltd (the Removal Applicant) to remove the trademark "JW" from the Register of Trade Marks. The application was opposed by JW (figurative) (the Removal Opponent). The dispute centred on whether the Removal Opponent had genuinely used the trademark during the three-year period preceding the filing of the removal application, ending on 23 January 2021.

The primary legal issue before the delegate was whether the Removal Opponent had established use of the "JW" trademark for the relevant goods during the specified period. A secondary issue was whether, even if use was not established, the delegate should exercise discretion to allow the trademark to remain registered.

The delegate considered the evidence provided by the Removal Opponent, including a declaration detailing the use of the trademark on wallets and clothing, sold at markets and through a website, and supported by various exhibits. However, the delegate found the evidence insufficient to establish genuine use of the trademark for the goods during the relevant period. Furthermore, the delegate determined that there were no sufficiently compelling reasons to exercise discretion in favour of the Removal Opponent.

Consequently, the delegate ordered that the "JW" trademark be removed from the Register of Trade Marks. The removal was stayed for at least one month from the date of the decision, with provisions for further deferral if an appeal to the courts was lodged.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 The following declarations were filed as evidence:EISDeclaration of James Watson, Removal Opponent, made on 7 June 2021, with Exhibits A to G (inclusive of amendment requested on 23 August 2021). EIADeclaration of David Robbins, solicitor for the Removal Applicant, made on 12 October 2021. EIS 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 14th of January 2013. 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

Decision

Reasons for decision

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 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. 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 KnowlesHearing OfficerDelegate of the Registrar of Trade Marks17 June 2022

Ratio Decidendi

Legal Principle Established

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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.