I Can't Believe It's Yogurt Ltd v Unilever PLC

[2001] ATMO 127

TRADE MARKS ACT 1995

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

Re:Oppositions by I CAN'T BELIEVE IT'S YOGURT LTD to applications under section 92 of the Act by UNILEVER PLC to remove trade mark numbers 524664(30), 524665(42) in the name of I CAN'T BELIEVE IT'S YOGURT LTD

Background

Trade mark numbers 524664 and 524665 are registered for the trade mark I CAN'T BELIEVE IT'S YOGURT, in classes 30 and 42 of the International (Nice) Classification of Goods and Services, for "frozen yogurt" and "restaurant services" respectively. Trade mark number 524664 has a priority date of 2 October 1989, and trade mark number 524665, 5 December 1989. The trade mark owner is I Can't Believe It's Yogurt Ltd.

Applications under section 92 of the Trade Marks Act 1995 ("the Act"), for removal of both trade marks from the Register for non-use were filed on 8 May 1997, by Unilever PLC ("the removal applicant" or "Unilever"). They were advertised for opposition purposes in the Official Journal of Trade Marks dated 29 May 1997. On 26 November 1997, after three months' extension of the opposition period, notices of opposition were filed by the trade mark owner, I Can't Believe It's Yogurt Ltd ("the opponent").

The applications for removal

The grounds cited in the removal applications were those set out in paragraph 92(4)(b) of the Act:

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.

The relevant period of non-use ("relevant period"), for the purposes of paragraph 94(2)(b), was 8 April 1994 to 8 April 1997.

Mr Brian Jones, legal representative for the removal applicant, declared it was a "person aggrieved", therefore entitled to apply for removal of the registrations in terms of subsection 92(1). This was because those registrations had been cited against its own trade mark I CAN'T BELIEVE IT'S NOT BUTTER! (application number 728010) in class 29. According to the declaration, Unilever had invested a significant amount of time and money in its trade mark and had a "good faith intention to use the mark in the near future". It could therefore suffer significant economic harm if the trade marks in question remained on the Register.

The notices of opposition

The notices of opposition cited the following grounds:

That within the relevant period, the mark was used in good faith on goods/services and/or on some or all of the goods/services to which the applications relate by and/or under the control of the registered owner, and in so far as the mark was not used on goods/services and/or on some or all of the goods/services to which the applications relate during the relevant period, circumstances existed that were an obstacle to use of the trade mark during that period.

The evidence

The evidence in support of the opposition to removal comprises a statutory declaration by Mr Kevin Day, ("the Day declaration") Queensland State Manager and Export Manager of Everest Colonial Pty Ltd, dated 14 May 1998. This company is authorised by the opponent to use its trade mark I CAN'T BELIEVE IT'S YOGURT on "milk-based food products" for export from Australia to Malaysia and Singapore. Exhibits KD1 and KD2 are annexed to the declaration.

The evidence in answer is comprised of two statutory declarations by Ms Ayela Thilo, Corporate Counsel for Unilever Australia Limited, subsidiary of the removal applicant and licensed to use the trade mark I CAN'T BELIEVE IT'S NOT BUTTER! in Australia. The first declaration ("Thilo 1") is dated 18 February 2000, and is accompanied by Annexures A to J. The second declaration ("Thilo 2") is dated 16 June 2000, and is accompanied by a single Annexure A.

The hearing

The opponent's evidence in support and the removal applicant's evidence in answer were duly filed and served. After the opponent formally indicated that it had decided not to file and serve evidence in reply, the removal applicant requested a hearing of the opposition. This came before me, as a delegate of the Registrar, in Sydney, on 26 October 2001. Mr Malcolm Farr, of Baldwin Shelston Waters, provided written submissions on behalf of the opponent. Mr Brian Elkington, of Blake Dawson Waldron, represented the removal applicant at the hearing.

The case for removal

Mr Elkington opened his submissions with a discussion of the status of his client as a "person aggrieved", in relation to the opponent's trade marks. He pointed out that, in its notices of opposition, the opponent had not challenged that status (although, as will be explained below, the status was challenged for trade mark number 524665, at the hearing). He confirmed the information given with the original removal applications, that, at that time, the opponent's registrations for the trade mark I CAN'T BELIEVE IT'S YOGURT represented an obstacle to acceptance of Unilever's application for its trade mark I CAN'T BELIEVE IT'S NOT BUTTER! Mr Elkington said that, at all relevant times, Unilever had intended to use its trade mark in Australia. Indeed, significant use had already occurred, as demonstrated in Thilo 1. These circumstances at the time of filing qualified the removal applicant as a person aggrieved, in accordance with the description of such a person given by McLelland J in Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at page 454:

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

Mr Elkington went on to say that the removal applicant's aggrieved status has been well established in the case law to be determined as at "the date of commencement of the proceedings in which the claim for removal of the mark is made" (Kraft General Foods v Gaines Petfoods Corporation (1996) 34 IPR 198, at page 206). That is, the date of the application for removal. Further, he said, "the fact that the source of aggrievement is neutralised subsequent to filing of the removal action [as occurred in this case] does not affect a party's aggrieved status." This was acknowledged by Finn J in Henschke &Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63, at page 100:

At the time of making the cross-claim, Rosemount clearly was, for s 92 purposes, a person aggrieved in that the infringement application brought against it in respect of the Hill of Gold mark demonstrated it could thereby claim to be disadvantaged in both a legal and a practical sense by the Hill of Grace mark remaining on the register: Kraft Foods, above, at 208. Though the spectre of that disadvantage has now been eliminated...

Having dealt with that primary issue, Mr Elkington moved on to the question of use of the trade marks themselves. He observed that the opponent had provided no evidence of use of its registration number 524665, for "restaurant services", and no supporting explanation of its comments in the notice of opposition that circumstances had existed that were an obstacle to use of the trade mark during the relevant period. Under these circumstances, he said, there should be no question but that the registration should be removed from the Register, forthwith.

With regard to the opponent's registration for "frozen yogurt", however, Mr Elkington made a case for partial removal of the registration. This was based on the very restricted type of use that had been made of it, not only in geographical scope, but also in monetary terms. He acknowledged that section 228 of the Act provides for application of a trade mark within Australia to goods which are to be exported from Australia to "constitute use of the trade mark in relation to the export goods". Subsection 228(1) of the Act reads:

Use of trade mark for export trade

228.(1) If:

(a) a trade mark is applied in Australia:

(i) to, or in relation to goods that are to be exported from Australia (export goods); or

(ii) in relation to services that are to be exported from Australia (export services); or

(b) any other act is done in Australia to export goods or export services which, if done in relation to goods or services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia;

the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.

Note:For applied to or in relation to goods and applied in relation to services see section 9.

However, Mr Elkington said, the opponent had produced no evidence that the mark had been used in any other manner on goods provided to consumers in Australia. The removal applicant therefore sought "rectification of the Register to restrict the goods covered by the removal opponent's trade mark registration to export trade goods".

In support of this proposal, Mr Elkington quoted Shanahan's Australian Law of Trade Marks and Passing Off (2^nd edition, 1990), at page 216:

The Registrar might also restrict the effect of registration to a particular area or to goods to be exported to a particular market, and would do this, for instance, where the applicant has established distinctiveness only for the particular area or market in question. Such restrictions on the scope of registration are also common in honest concurrent user applications under section 34, and that provision is complemented by sections 23(3) and (3A) [of the Trade Marks Act 1955] which enable an honest concurrent user to compel a territorial restriction of the earlier conflicting registration through proceedings for non-use.

Mr Elkington went on to argue that the opponent had cited no special circumstances that precluded wider use of its trade mark, which might assist it in avoiding partial removal. Commenting then on the Registrar's ultimate discretion to maintain a trade mark on the Register in the face of demonstrated grounds for removal, he quoted Deputy Registrar Hardie, in Figgins Holdings Pty Limited v Beltrami SpA (1998) 46 IPR 411 at page 418:

Under s 101(3) the registrar needs to be "satisfied that it is reasonable" to leave a mark on the register even when the grounds on which the removal application is made have been established. This requires the registrar to be satisfied that there is sufficient reason for leaving it there. The reason would need to be based on special facts and circumstances, or an overriding question of public interest. The onus for showing that those circumstances exist, is on the opponent to the removal application.

Mr Elkington submitted that there were no special circumstances or overriding public interest that would justify my refusing a restriction of registration number 524664 to export goods. Indeed, he concluded, the public interest "would be better served by a restriction of the Register to reflect the actual use made by the removal opponent."

Mr Elkington wrapped up his submissions with a request that the removal applicant be awarded its costs as appropriate in the matter.

The case against removal

According to section 100 of the Act, the onus is placed upon the opponent to removal proceedings to demonstrate use of the trade mark in question for the relevant goods or services. Mr Farr's written submissions on this subject were devoted to his client's trade mark registration number 524664, which is in respect of "frozen yogurt". He drew my attention to the Day declaration, which attests to the manufacture of "milk-based foodstuffs" in Australia, all for export to Malaysia and Singapore, under the trade mark I CAN'T BELIEVE IT'S YOGURT, during the relevant non-use period. Mr Farr submitted that the manner of identifying the goods by means of the words I CAN'T BELIEVE IT'S YOGURT, as described in the declaration, satisfied the definitions of "trade mark" and "use" in sections 17 and 7 of the Act, respectively. Like Mr Elkington, Mr Farr then referred me to the provisions of section 228. He submitted that the opponent had, through its evidence, satisfied the requirements of subsection 228(1) in relation to trade mark number 524664, and thereby discharged the onus placed upon it under section 100 of the Act.

Mr Farr then moved on to discuss his client's trade mark number 524665, in respect of "restaurant services". The essence of his submissions here related to Unilever's lack of standing in filing its removal application in the first place. He argued that Unilever was not a "person aggrieved", in accordance with the requirements laid down in Kraft General Foods Inc v Gaines Pet Foods Corporation (1995) 31 IPR 439, that the removal applicant must be appreciably disadvantaged in a legal or practical sense. He wrote:

...there are of course differences which have been noted between food on the one hand and restaurant services on the other, and we refer in particular to the SIZZLER decision, [1996] ATMO 26 (29 April 1996). We submit that the removal applicant would not be appreciably disadvantaged by the registration remaining.

In conclusion, Mr Farr requested costs on behalf of his client.

Discussion

The legislation

I do not propose to reproduce here the full wording of the relevant provisions of the Act. They are extensive, and I have quoted earlier the provisions of paragraph 92(4)(b) under which Unilever's removal application was made. The timing for making application under section 92 (not a significant issue here) is set out in section 93. The burden upon the opponent to rebut the application, and how it might do this, is set out at some length in section 100 of the Act. I will, however, cite here the full provisions of section 102, as this is the equivalent provision to subsections 23(3) and 23(3)(A), referred to by Mr Shanahan, quoted above:

Determination of opposed application—localised use of trade mark

102.(1) This section applies if an application for the removal of a trade mark (challenged trade mark) from the Register is made on the ground referred to in paragraph 92(4)(b) and:

(a) the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark and is registered in respect of the goods and/or services specified in the application subject to the condition or limitation that the use of the trade mark is to be restricted to:

(i) goods and/or services to be dealt with or provided in a particular place (specified place) in Australia (otherwise than for export from Australia); or

(ii) goods and/or services to be exported to a particular market (specified market); or

(b)the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.

Note 1:  For registered owner see section 6.

Note 2:  For deceptively similar see section 10.

(2) If the Registrar or the court is satisfied:

(a) that the challenged trade mark has remained registered for the period referred to in paragraph 92(4)(b); and

(b) that during that period there has been no use, or no use in good faith, of the challenged trade mark in relation to:

(i) goods or services dealt with or provided in the specified place; or

(ii) goods or services to be exported to the specified market;

the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:

(c) goods or services dealt with or provided in the specified place; or

(d) goods or services to be exported to the specified market.

Note:  For limitations see section 6.

The relevant entry in section 6, referred to in the note, is:

limitations means limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to:

(a) mode of use; or
(b) use within a territorial area within Australia; or

(c) use in relation to goods or services to be exported.

I will return to the provisions of section 102 a little later.

A person aggrieved

The first issue to be determined in relation to the two registrations in question is the status of the removal applicant as a person aggrieved, required by subsection 92(1) of the Act. This is a threshold test, the interpretation of which has been the subject of considerable attention by the courts. For example, see Ritz Hotel v Charles of the Ritz and Kraft General Foods v Gaines Petfoods Corp, (both supra), and the analysis in Lahore, Patents, Trade Marks and Related Rights (2001), Chapter 7, especially at page 62025:

McLelland J in Ritz Hotel v Charles of the Ritz [supra] was reluctant either to reconcile the authorities or give a precise definition of a "person aggrieved" stating that "the expression has no special or technical meaning and is to be liberally construed".

However, my decision on this matter in relation to the cases before me has been made relatively straightforward by the manner in which the opponent has ultimately challenged the removal applicant's standing, in relation to registration number 524665. The Trade Marks Office Manual of Practice and Procedure (2001) at Part 48, paragraph 2.1, has this to say on the subject:

If removal is opposed, the onus is on the opponent to rebut the assumption that the application is proven. Accordingly, the Registrar will not initiate any investigation into a claim that the removal applicant has standing as a person aggrieved. Such a claim will still be taken at face value unless the opponent disputes the right of standing and addresses this in its evidence in support. The applicant for removal will then have the opportunity to rebut any challenge to its standing in its evidence in answer.

This practice has been applied in Registrar's decisions in relation to opposition actions to removal under section 92 of the Act. In [Figgins Holdings Pty Ltd v Beltrami SpA (supra)] Deputy Registrar Hardie pointed out, [at page 415]:

... the claim to standing is all that is required under the removal provisions of the Trade Marks Act 1995. In contrast to the Trade Marks Act 1955 (Cth), the removal applicant is not required to lodge any evidence in support of the removal application. Once there is an opposition to the application for removal, the onus is on the opponent to rebut an allegation that the trade mark has not been used by the registered owner and to that purpose there is provision for the lodgment of evidence. If the opponent challenges the applicant's standing, the applicant has an opportunity to provide evidence to support its claim in evidence in answer.

Note: In the normal course of events, no account will be taken of an assertion by an opponent that an applicant for removal has no standing, unless the opponent serves and files evidence in support of the opposition in which this issue is addressed. If no evidence in support is filed, reg 9.4(3) will end the proceedings without the applicant having an opportunity to answer the assertion. For this reason [an] unsupported assertion cannot be given weight.

Such is the situation here. The removal applicant has explained its aggrieved status in the original removal applications, and discussed it again at the hearing, in a general manner, as no challenge had been issued for it to answer. The opponent had not challenged the status, either in its notices of opposition, or in its evidence in support. Instead, it postponed any reference to the issue until its written submissions were tendered for the hearing. The removal applicant was therefore effectively ambushed over this matter, and accordingly, I do not intend to give the opponent's unsupported (written) comments at the hearing any weight at all. I find that the opponent's belated challenge to Unilever's standing as a person aggrieved has been unsuccessful.

Burden on the opponent to establish use of the trade mark

Unless the standing of a removal applicant as a person aggrieved is properly questioned, the onus, under section 100 of the Act, is upon the opponent. In response to the grounds for removal cited in Unilever's removal applications, it must, in this case, demonstrate either:

• That it, or its assignee, has used the trade mark, or a substantially identical mark on the goods/services specified in the registrations, during the relevant period (paragraphs 100(3)(a) and (b)), or

• That it did not use the trade mark in relation to those goods and/or services during the relevant 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 time (paragraph 100(3)(c)).

Failing both of these, the opponent may establish special facts or circumstances, or an overriding public interest, which might convince the Registrar that it is reasonable not remove the trade mark from the Register even if the grounds on which the application was made have been established (subsection 101(3)).

I will deal firstly with the opponent's registration no 524665, in respect of "restaurant services". I have to say that I have nothing before me whatsoever to save this registration from removal. The opponent has provided no evidence that it has used its trade mark on these services within the relevant period. Further, despite foreshadowing in its notice of opposition that circumstances may have existed that were an obstacle to that use, the opponent has provided no corroborating evidence to support this initial suggestion. Finally, no justification has been advanced for the Registrar to exercise the residual discretion provided under subsection 101 not to remove the trade mark even though the grounds for removal have been established.

The situation in respect of the second registration, number 524664 in respect of "frozen yogurt", is different. The opponent has provided evidence that shows limited use, on frozen yogurt for export to Malaysia and Singapore, of the trade mark I CAN'T BELIEVE IT'S YOGURT, during the relevant period. This use does indeed qualify as use in Australia for the purposes of section 228. However, the removal applicant has suggested that the effect of the registration be restricted to export trade goods, saying "the remedy of partial removal has long been recognized as appropriate where the removal opponent has demonstrated some, though limited use. Murray Goulburn Co-op v NSW Dairy Corporation (FC) (1990) 16 IPR 289 and Sasdor Pty Ltd v Atomik SkiFabrik (1991) 20 IPR 593." The exact manner in which such a restriction may be effected was not elaborated in the submissions.

I have considered the implications of this proposal in some depth. While it is certainly true that the remedy of partial removal is used not infrequently by the Registrar in circumstances of restricted use, such partial removal seldom takes the form of a restriction to goods only intended for export. Further, the provisions of section 102, which mirror the provisions discussed in the paragraph from Shanahan, (supra) quoted above, refer to a very specific set of circumstances, not in evidence here. Those circumstances are when:

• the removal applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark, and

• the removal applicant's trade mark is registered in respect of the goods and/or services specified in the removal application, subject to the condition or limitation that the use of the trade mark is to be restricted to goods and/or services to be dealt with or provided in a particular place in Australia (otherwise than for export from Australia); or goods and/or services to be exported to a particular market, or

• the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the removal applicant with that condition or limitation.

Unilever has a pending application, not yet registered. I have very recently found in a co-pending opposition matter that its trade mark, I CAN'T BELIEVE IT'S NOT BUTTER! is neither substantially identical, nor deceptively similar, to the opponent's trade mark I CAN'T BELIEVE IT'S YOGURT. Further, the goods to which they are respectively applied are not similar goods. There was no question of geographical conditions or limitations being applied to the application. Accordingly, circumstances are not present, under which I might find it necessary to apply complementary conditions or limitations to the opponent's registration, in order to allow both to co-exist on the Register.

Taking these factors into account, I believe that the opponent's registration number 524664 should be allowed to remain on the Register, in respect of "frozen yogurt". This is, in any case, a very limited specification of goods. Contrary to the removal applicant's suggestions, I do not believe there is any pressing public interest that would be served by the imposition of a condition further limiting the use of the trade mark to goods for export. Imposition of such a limitation seems particularly inappropriate here, when one takes into account the fact that section 228 clearly accepts and treats export use, for the purposes of the legislation, as use within Australia.

Decision

With regard to trade mark number 524664, I find that the opponent has satisfied the onus upon it to demonstrate use of its trade mark on the goods specified, within the relevant period. Accordingly, I refuse to remove the registration and hereby dismiss Unilever's removal application in respect of that registration.

With regard to trade mark number 524665, I find that the opponent has not satisfied the onus upon it to support its grounds of opposition to removal and that the removal applicant has therefore been successful in this matter. I now dismiss the opposition and direct that registration number 524665 be removed from the Register, unless the Registrar is served with a notice of appeal within one month from the date of this decision. Should this occur, I direct that the registration shall not be removed until the appeal has been decided or discontinued.

Costs

Both parties have claimed costs in this opposition, but each has been partially successful against the other in the outcome. Under these circumstances, I consider it appropriate that each side bears its own costs.

Claudia Murray
Hearing Officer

28 December 2001