Helen Gould v Hasbro Inc

[2024] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Helen Gould to an application under section 92 of the Trade Marks Act 1995 (Cth) by Hasbro Inc for removal of trade mark number 1277381 (28) – Doh-Magic – in the name of Helen Gould

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Baker McKenzie
Decision:	2024 ATMO 84 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 29 April 2022 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Hasbro Inc (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1277381
Lodgement date	18 Dec 2008
Goods	Class 28: Children's toys (‘Registered Goods’)
Owner	Helen Gould
Trade Mark	Doh-Magic (‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Helen Gould (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 23 June 2022 and a Statement of Grounds and Particulars (‘SGP’) on 21 July 2022.  The Applicant filed a Notice of Intention to Defend on 19 August 2022.

3. The following evidence was filed in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Helen Gould, Opponent (‘Gould declaration’)	20 Nov 2022	Various unmarked documents
Evidence in answer
N/A
Evidence in reply
N/A

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 10 February 2023 the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 1 February 2024.  In line with usual practice, a letter was sent to the parties on 27 November 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 25 January 2024 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

2. 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, any oral submissions made by the parties and the evidence listed earlier in this decision:

   ·the Application for Removal;

   ·the Notice of Intention to Oppose and SGP;

   ·the Applicant’s Submissions. 

   The Relevant Provisions

3. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. 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)  …

   (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.

4. 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 29 March 2022 (‘relevant period’).

5. 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 for the Trade Mark,[1] and I confirm that five years since filing the application have in fact passed.

   [1] 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.

6. 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) …
   (b) …
   (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.

7. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] 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.

8. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the ground under which the application for removal was made is established.

9. 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),[3] 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’.[4]  Little weight is to be given to assertions of use which are not supported by documentary evidence.[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] 

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

   [6] Act s 7(3).

10. 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

11. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[8]) 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] 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).

12. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

13. The Opponent’s evidence in this matter consists of a declaration by the Opponent.  The Gould declaration states that the Trade Mark is still in use and the Opponent has considerable resources invested in the use of the Trade Mark, including promotional and marketing material, packaging and labelling.  However, as noted in paragraph 13 above, little weight is to be given to assertions of use which are not supported by documentary evidence.

14. In support of this claim the Opponent attaches 4 documents.  Two of them are letters from the Opponent to IP Australia which states that the Opponent exhibited with the Applicant in the Melbourne Toy Fair in 2012 and was promoted by Coles in 2013. It also states that the Opponent donates Doh Magic to charitable causes and has the intention of resuming the sale of the product.  The letters annex photos of the Melbourne Toy Fair and a Coles catalogue.  The Opponent also provides an undated certificate of appreciation for the donation of Doh Magic to a children’s charity and a letter dated 20 July 2022 from a different children’s charity thanking the Opponent for her donation of Doh Magic.

15. I am not satisfied that the Gould declaration shows use of the Trade Mark for the Registered Goods in the relevant period.  The documents relating to donations of Doh Magic are undated or outside the relevant period and the letters evidence use of the Trade Mark in the 2012-13 period, well before the relevant period.  Nor does the Gould declaration provide any documentary evidence (as opposed to assertions) of intention or preparation to re-use the Trade Mark on the Registered Goods or support claims of existing stock or money invested in uniforms, printing or promotional material.

    Obstacles to use

16. 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 Registered Goods in the relevant period pursuant to s 100(3)(c). In the interests 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 on the Register for any of the Registered Goods.

    Registrar’s Discretion

17. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off, the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[9]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

    [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

    The following propositions are relevant to the exercise of this discretion:

    (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as 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 Trade Marks Act.

    (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

    (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

    (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

    (5) The range of factors considered in the exercise of the discretion has included whether or not:

    (a) there has been abandonment of the mark;

    (b) the registered proprietor of the mark still has a residual reputation in the mark;

    (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

    (d) the applicant for removal had entered the market in knowledge of the registered mark;

    (e) the registered proprietors were aware of the applicant’s sales under the mark;

    (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[10]

    [10] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

18. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register”,[11] 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.[12] 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.[13]

    [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

    [12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

19. In the present case, the Opponent has provided limited evidence of use of the Trade Mark in 2012-13.  Other than certificates of donation there is no evidence that the Opponent has had any dealings in connection with the Trade Mark in the last 10 years or has made concrete preparations to use the Trade Mark in the future in Australia for any of the Registered Goods. Nor are the Opponent’s claims to have significant stock and marketing material bearing the Trade Mark supported by documentary evidence.  Given that, I am unpersuaded that the removal of the Trade Mark for the Registered 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 remove the Trade Mark in respect of any of the Registered Goods.

    Decision

20. The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1277381 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal, I direct that removal 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

21. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    1 May 2024