Infiniti Golf Pty Ltd v King Par Corporation

[2003] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by INFINITI GOLF PTY LTD to application under section 92 of the Act by KING PAR CORPORATION to remove trade mark numbers 623661(28) in the name of INFINITI GOLF PTY LTD

Background

1. In this matter King Par Corporation ('the applicant'), of Michigan, United States of America, filed application in terms of section 92 of the Trade Marks Act 1995 on 3 April 2001 to remove registration 623661(28) AFFINITY ('the trade mark') from the Register.  Accompanying this was a statutory declaration by Chris Sgourakis, solicitor, stating that he had conducted an investigation into the use of the trade mark which had revealed that the owner had not used the trade mark during three years ending one month before the removal application was filed.

2. On 3 August 2001 Infiniti Golf Pty Ltd ('the owner') filed Notice of Opposition ('the Notice') to the application.  The Notice states three grounds of opposition, these being:

   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 the relevant goods during the relevant period

   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 the relevant goods during the relevant period

   The trade mark was not used by its registered owner in relation to the goods during the relevant period because of its circumstances that were an obstacle to the use of the trade mark during that period.

3. Zachary Alexander Toyne, Managing Director of the opponent has served and filed a statutory declaration in support of the opposition to the application.  James Hirschfield, Sales Director of the applicant, has served and filed a statutory declaration as evidence in answer.

4. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks.  The applicant was represented by Ben Fitzpatrick of Counsel.  The owner was not represented and did not appear.

   The Evidence

5. Mr Toyne in his evidence in support of the opposition details the owner's use of the trade mark INFINITI at some length.  Mr Toyne goes on to state that, in February 2000, he was alerted to "the existence of a pending New Zealand trade mark application, in the name of the applicant, for registration of the trade mark AFFINITY against which his company's registration for INFINITI GOLF had been registered."  Mr Toyne states that he was concerned that there could be some confusion between the trade marks INFINITI and AFFINITY because of his perceptions of the possibility that the trade mark might appear similar in use.

6. A search of the records of the Australian Trade Mark Office revealed registration 623661 in the name of a third party.  Subsequently, Mr Toyne instructed his legal representatives to negotiate for the assignment of 623661 with the third party.  This they duly did and, on 27 October 2000, official notification of recordal of the assignment was issued. 

7. Mr Tonye states that he was unable to use the trade mark until assignment of the trade mark was recorded and, since that time, had production drawings for golf clubs bearing the trade mark drawn up - copies of these drawings are appended to the declaration at ZAT-05.  When these production drawings were produced is not stated.

8. Mr Hirshfield, for his part, states that during June/July 1999, he traveled to Australia and New Zealand with a view to appointing a distributor for his company's AFFINITY trade marked golf clubs.  Amongst various people he met with to this end was Mr Toyne, the prior declarant.  They met over dinner on 30 June 1999 and Mr Hirshfield also visited Mr Toyne's office and warehouse.  Mr Toyne advised that he was aware of the various brands of golf club available from the applicant as he (Mr Toyne) sourced golf clubs from the same manufacturers in Asia.  During the meeting, Mr Hirschfield informed Mr Toyne of his company's intention to register the trade mark AFFINITY in Australia and pointed out that the trade mark AFFINITY and INFINITI co-exist in the US market-place without confusion.  This evidence is not disputed by Mr Toyne.

9. On 29 June 1999, the applicant applied to register its trade mark AFFINITY in Australia.

   The Evidence - Commentary

10. The production drawings produced as evidence by the owner are, I believe of little weight.  There is no evidence that these drawings led to the production of any golf clubs; the drawings are undated - nor is there any date claimed for them; the wording on the photocopies is predominantly in Japanese or Chinese and there is no accompanying translation; and, further, the drawings are photocopies of the originals.  It is preferable where a person is to look to such a slight use to establish that a trade mark has been used in trade, the antecedents of the evidence be much more obvious than are those of the exhibit in question: Nodoz Trade Mark (1962) RPC 1. I would further observe that if Mr Toyne caused a search of the records of the Trade Marks Office in around February 2000, he would doubtless have been aware of the existence of the applicant's application to register its own trade mark, filed on 29 June 1999, the day before he met with Mr Hirschfield to discuss a possible distributorship of the applicant's goods bearing the trade mark AFFINITY.

    Reasons

11. Section 92 of the Act provides:

    92  Application for removal of trade mark from Register etc.

    (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be 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 aggrieved 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)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)to use the trade mark in Australia; or

    (ii)to authorise the use of the trade mark in Australia; or

    (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services to which the non-use application relates and that the registered owner:

    (iv)has not used the trade mark in Australia; or

    (v)has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

    (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.

    Note:    For file see section 6.

12. The owner, in its Notice, states both that it had used the trade mark within the period specified by the Act, or, if it had not used the trade mark there were circumstances which were an obstacle to the use of the trade mark.  This ground relates to the provisions of subsection 100(3 which provides:

    (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:

    …..

(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.

1. The relevant period for the purposes of these reasons is from 3 March 1999 to 3 March 2001.  Mr Toyne in his declaration concedes at paragraph 18 of his declaration that the owner 'had not actually sold any golf clubs or other golfing equipment bearing the trade mark AFFINITY in the three (3) year period'.  I have already discussed the design drawings which are said to show preparations for use of the trade mark: these cannot be accepted as demonstrating preparations for use of the trade mark, let alone actual usage, for the reasons given above.

2. The owner also relies on two circumstances which, it states, prevented use of the trade mark:

   The time it takes to produce rebranded golf clubs with the trade mark moulded into the heads of the golf clubs

   The uncertainty of the removal application by the applicant.

3. The second of these circumstances can immediately discarded because, as Mr Fitzpatrick observed at the hearing, the removal application was filed one month after the relevant non-use period.  The non-use application therefore cannot be a reason for not using the trade mark as, during the non-use period, the owner cannot have had any knowledge of it.

4. A person who purchases an unused trade mark may be at risk that an application to remove that trade mark may succeed.  However, inasmuch as this might be of relevance, I make the following observations.  Mr Hirschfield states in his declaration that it takes approximately three months to arrange for rebranded golf clubs to be ordered and placed onto the market.  His evidence is not challenged by the owner of the trade mark.  The evidence shows that the trade mark was assigned to the owner on 27 October 2000.  Within the relevant period, the owner thus had approximately five months in which to arrange for the production of the goods: this did not occur.  This period of five months is likely to have been longer when it is considered that the outcome of the negotiations with the prior owner were known to the owner at some time earlier - the assignment was executed on 6 September 2000.  The assignment of the trade mark, as much as it might be a defence in non-use proceedings, was therefore not a circumstance which prevented use of the trade mark within the relevant period.

   Decision

5. Trade mark registration 623661 may be removed from the Register one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that removal shall not occur until the appeal has been decided or discontinued.

   Costs

6. The applicant has sought its costs in this matter should it be successful.  I order costs against the owner at the scale allowed in the regulations.

   Ian Thompson
   Hearings Officer
   Trade Marks Hearings
   18 April 2003