HBI Branded Apparel Enterprises, LLC v Fratex Industria Comercio LTDA

[2016] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by HBI Branded Apparel Enterprises, LLC to application under section 92 of the Act by Fratex Industria Comercio LTDA to remove trade mark number 1061942(24 & 25) - TF TRACK N FIELD - in the name of HBI Branded Apparel Enterprises, LLC

Delegate:

Jock McDonagh

Representation:

Opponent: Simon Kneebone of Banki Haddock Fiora Lawyers

Applicant: No appearance nor written submissions

Decision:

2016 ATMO 89

Opposition to s.92 removal application – s92(4)(b) ground for removal – use established in respect of some goods – registrar’s discretion applied in respect of remaining goods– trade marks to remain registered in respect of all goods.

Background

1. HBI Branded Apparel Enterprises, LLC (‘the opponent’) is the registered owner of a trade mark the details of which appear below:

Trade Mark number:     1061942

Registered from:  24 June 2005

Goods:Class 24:              Fabric

Class 25:Clothing, footwear and headgear

Trade Mark:  (“Trade Mark”)

1. On 21 January 2015, Fratex Industria Comercio LTDA (‘the applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the Trade Mark from the Register, alleging it had not been used for any of the registered goods during the three year period ending 21 December 2011 (‘the relevant period’).

2. On 24 April 2015, the opponent filed Notice of Intention to Oppose the removal application. On 18 May 2015, the opponent filed its Statement of Grounds and Particulars, claiming the Trade Mark has been used in Australia since 1973; the Trade Mark has been used in Australia in respect of the goods for which the mark has been registered within the relevant period; the opponent is currently using and intends to continue using the Trade Mark in Australia in relation to the goods covered by the registration; should it be necessary, the opponent seeks the Registrar to exercise her discretion and not remove the Trade Mark from the Register.

3. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 20 October 2016.  Simon Kneebone of Banki Haddock Fiora Lawyers appeared for the opponent by video link. The applicant was not represented at the hearing, and did not provide any written submissions. Solicitors for the applicant had advised IP Australia accordingly.

Evidence

1. The opponent filed and served the following declaration as evidence in support:

Declarant	Status	Date, Known as	Exhibits
Bruce Abraham	COO & CFO of opponent	9.10.15 “Abraham”	BA-1 to BA-5
Antonia Rosen	Paralegal of opponent’s attorney firm	27.07.15 “Rosen”	AR-1 to AR-3

1. The applicant did not file any evidence in the proceedings. However, I do note that the applicant’s legal representatives have maintained correspondence with this Office during the conduct of the opposition process.

2. Abraham details the opponent’s commercial and trading activity in Australia. The opponent or its authorized users, subsidiaries, affiliates, or licensees have continuously used the Trade Mark in relation to sportswear and active apparel since 1973.

3. Abraham attests to the dollar value of sales of clothing under the Trade Mark in Australia for the years 2011 to 2014, and exhibits a catalogue showing use of the Trade Mark in Australia for the year 2013.

4. Abraham lists Australian retailers and outlets that have sold the opponent’s clothing bearing the Trade Mark during the relevant period and exhibits representative samples of invoices for clothing sold in Australia bearing the trade mark during the relevant period.

5. Abraham confirms that copies of the opponent’s website ( during the relevant period exhibited in Rosen are what they purport to be.

6. Rosen explains how historical copies of the opponent’s webpage during the relevant period were obtained using the Internet Archive (the “Wayback Machine”).

Discussion

1. Section 92 relevantly states:

92Application for removal of trade mark from Register etc.

(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)The application:

(a)must be in accordance with the regulations; and

(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:For prescribed court see section 190.

(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.

1. Section 100(1)(c) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

2. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[1].  A single bona fide use of the trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[2].  However, Wilberforce J, in Nodoz Trade Mark[3] (Nodoz ), said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   [1] [1982] FSR 72.

   [2] [2001] FCA 261; (2001) 51 IPR 149 at [17]

   [3] (1962) RPC 1 at 7.

3. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark[4]; although one invoice, if genuine, will suffice: Geo W McPherson v Remington[5].

   [4] [1977] RPC 131.

   [5] (1999) 47 IPR 636.

4. I am satisfied that the opponent has discharged its evidentiary onus with regard to its use of the Trade Mark for clothing in nature of sportswear and active apparel. I am not satisfied on the basis of the evidence provided that the opponent has discharged its evidentiary onus with respect to the use of the Trade Mark for the remaining class 24 and class 25 goods for which it is registered.

5. Under section 101(3) of the Act, the Registrar has the discretion not to remove a trade mark from the Register even though the grounds on which the removal application was made have been established. A broad range of circumstances may be taken into account in exercising the discretion. The Opponent bears the onus of demonstrating the existence of circumstances that need not be “exceptional circumstances”[6], but will need to be sufficient to satisfy the Registrar that application of the discretion is reasonable.

   [6] Kowa Company Ltd v NV Organon [2005] FCA 1282; (2005) 66 IPR 131, per Lander J at [98].

6. The Full Federal Court, in Austin, Nichols & Co Inc v Lodestar Anstalt[7], confirmed the proper test as “[t]he question to be asked is whether it [is] reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period”. In Tivo Inc v Vivo International Corporation Pty Ltd[8] Dodds-Streeton J summarized some relevant considerations for the exercise of the discretion:

   In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).

   In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and whether the registered proprietors were aware of the applicants’ sales under the mark.

   In Austin, the Full Court confirmed that the discretion under s 101(3) was limited only by the statutory purposes and “whether the removal of the [relevant mark] would lead to deception or confusion... was plainly a relevant consideration to be taken into account” (at [31]). The Full Court also recognised that evidence showing a lack of deception or confusion should the mark remain on the Register was relevant to the exercise of the discretion, but it was not erroneous to find that circumstance an insufficient justification for its retention.

   [7] [2012] FCAFC 8 at [28].

   [8] [2012] FCA 252 at [467] – [469].

7. Section 101(4) of the Act allows the Registrar to take into account whether the Trade Mark has been used by the opponent in respect of similar goods or closely related services.

8. Mr Kneebone, for the opponent, submitted that the goods covered by the Trade Mark comprise goods which, if not only slightly different, are at least similar in nature to the goods for which use has been demonstrated.  He submitted that clothing, including sportswear and active apparel, are similar goods to footwear, headgear and fabric (which includes fabric used to manufacture goods of the kind in relation to which the Trade Mark has been used during the relevant period).

9. In assessing the similarity of the goods, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include their nature, their end users and their method of use and whether they are in competition with each other or are complementary.

10. In Jellinek’s Application[9], Romer J proposed a three-fold test when assessing whether goods are similar to other goods, namely the nature and composition of the goods, the respective uses of the goods, and the trade channels through which the goods are bought and sold. No one factor was considered conclusive and it was not considered necessary for all three factors to apply.

    [9] (1946) 63 RPC 59 at 70.

11. Further considerations were proposed in John Crowther & Sons (Milnsbridge) Ltd’s Appn[10], where this passage from the decision of the British Assistant Comptroller was cited:

    ...the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Appn (1946) 63 RPC 59 Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.

    [10] (1948) 65 RPC 369 at 372.

12. In British Sugar Plc v James Robertson & Sons Ltd[11], Jacob J proposed the following general guidelines, which he described as “an elaboration of the old judicial test” that “seeks to take account of present day marketing methods”:

    I think the following factors must be relevant in considering whether there is or is not similarity:

    (a) The respective uses of the respective goods or services;

    (b) The respective users of the respective goods or services;

    (c) The physical nature of the goods or acts of service;

    (d) The respective trade channels through which the goods or services reach the market;

    (e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; and

    (f) The extent to which the respective goods or services are competitive.

    [11] [1996] RPC 281.

1. Mr Kneebone referred me to the decision of a delegate of the Registrar in Dinning v New Balance Athletic Shoe Inc[12], where athletic footwear was found to be goods of the same description as sports clothing. It was noted that a whole range of sports clothing, both shoes and other articles were commonly sold side by side in specialist sporting goods or in special departments of larger general stores.

   [12] (1992) AIPC 90-931

2. I note that in Abraham, the large list of retailers and outlets for the opponent’s goods was very heavily populated by specialist sporting goods stores and larger general stores.

3. Mr Kneebone also submitted that in the field of sports and active wear, fabrics used in making clothing, footwear and headgear are often associated with the finished articles made using it. He cited the example of GORE-TEX, which is the name of a fabric used to make clothing, footwear and headgear and such items are also marketed under the GORE-TEX mark.

4. In Wilder Days v Karhugh Properties (1993) 27 IPR 473 at 479, the delegate of the Registrar found that fabrics are not goods of the same description as clothing, a conclusion with which I concur. However, in that matter the issue was ownership of a trade mark in proceedings opposing registration of a trade mark.

5. For the purposes of considering exercising the Registrar’s discretion, I do note that the Trade Mark has been used in Australia since 1973 and that goods bearing the Trade Mark have been sold in considerable quantities. If the opponent were to lose its statutory protection for the Trade Mark for fabrics, I consider that in the event that another party were to adopt the same or similar mark to use with fabrics, there is a real likelihood that consumers would consider that such goods were those of the opponent.

6. I note that the applicant remains represented in these proceedings by appropriately qualified legal representatives. The applicant is aware of the evidence and submissions filed by the opponent. It has not filed evidence in answer and has specifically advised that it would make no submissions.

7. Therefore, there is no material before me to contradict the evidence and submissions of the opponent. In otherwise accepting the opponents overall case, I reiterate my finding that fabrics are not goods of the same description as clothing.

8. Having taken into consideration the evidence and submissions provided by the opponent, and the authorities cited above, I consider it reasonable to exercise the Registrar’s discretion to maintain the registration in respect of the goods other than clothing in classes 24 and 25.

Decision and costs

1. I am satisfied, on the balance of probabilities, that the opponent has rebutted the allegation under s 92(4)(b) in respect of clothing in class 25. I am also satisfied that it is reasonable to exercise the Registrar’s discretion to maintain the registration in respect of the remaining goods in classes 24 and 25.

2. Accordingly I refuse to remove trade mark registration 1061942 from the Register of Trade Marks in respect of any of the goods for which it is registered.

3. Costs usually follow the event, and given there is no apparent reason to depart from that principle here I award costs against the applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

25 October 2016