Intellectual Property Development Company Pty Ltd v CUB Pty Ltd - [2013] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Intellectual Property Development Corporation Pty Ltd to registration of trade mark applications 1379830, 1379832, 1379851, 1379854, 1342305(32) filed in the name of CUB Pty Ltd.

Delegate:	Cristy Condon
Representation:	Opponent: Tim Allen of Corrs Chambers Westgarth Applicant: Tom Cordiner of counsel, instructed by K & L Gates 2013 ATMO 73
Decision:	S52 opposition – grounds under sections 59 and 62A pursued – application not made in bad faith – lack of intention to use trade mark not established - applications to proceed to registration

Background

On 27 January 2010 and 25 August 2010 CUB Pty Ltd (‘the Applicant’ or ‘CUB’) applied to register the following trade marks under the provisions of the Trade Marks Act 1995 (‘the Act’):

Trade Mark Number	Trade Mark	Goods/Services	Filing Date
1342305	(‘the BALLARAT BITTER LOGO’)	Class 32:Beer	27 January 2010
1379830	ABBOTS	Class 32: Beer, brewing kits; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	25 August 2010
1379832	BALLARAT BERTIE	Class 32: Beer, brewing kits; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	25 August 2010
1379851	MASTHEAD	Class 32: Beer, brewing kits; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	25 August 2010
1379854	TOOTH'S	Class 32: Beer, brewing kits; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	25 August 2010

The applications were examined and advertised for possible registration in the Australian Official Journal of Trade Marks. Trade mark 1342305 was advertised on 27 May 2010 and the other four trade marks were advertised on 23 December 2010.
Within the time allowed Intellectual Property Development Corporation Pty Ltd (‘IPDC’ or ‘the Opponent’) filed notices of opposition to the registration of the trade marks (‘the Notices’). Thereafter the Opponent and the Applicant served and filed evidence as provided for by the Trade Mark Regulations 1995.
The parties requested to be heard and negotiated for and obtained agreement from the Registrar that these matters (referred to hereafter as ‘the section 52 oppositions’) would be heard together with a number of oppositions to the removal of trade marks owned by the Applicant (referred to hereafter as ‘the section 92 matters’)[1] in a single hearing to take place over two days.
[1] Elixir Signature Pty Ltd mounted actions under section 92 of the Act to remove from the Register for non-use 54 trade marks owned by CUB [this entity has already been defined as ‘CUB’ or ‘the Applicant’] (formerly Fosters Australia Ltd). The section 92 matters were heard at the same hearing, although they are the subject of a separate decision to be issued concurrently.
The hearing was conducted by Deputy Registrar Michael Arblaster assisted by Hearing Officer Alison Windsor and myself, Hearing Officer Cristy Condon, as delegates of the Registrar.
The hearing was held in in Melbourne on 16 and 17 April 2013. CUB was represented by Tim Allen of Corrs Chambers Westgarth, assisted by Natalia Blecher of the same firm. The Opponent was represented by Tom Cordiner of Counsel, instructed by Chris Round and Christine Danos of K&L Gates (formerly Middletons). On behalf of the Opponent Mr Philip Withers and another staff member of IPDC also attended at the hearing – they were accompanied by two members of the press who were, I understand, invited by Mr Withers who is the director of the Opponent and Elixir Signature Pty Ltd (‘Elixir’), the Opponent for the section 92 matters.

Grounds of Opposition

The Notices nominate all possible grounds of opposition available under the Act. At the hearing, Mr Cordiner advised the Delegate, Mr Arblaster, that only sections 62A and 59 of the Act would be pressed by the Opponent. None of the evidence served and filed by the Opponent appears to go to the grounds in the Notices that were not pressed and for the sake of completeness I find that those grounds have not been established.
To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

Standard of Proof

The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities[2].
[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Evidence and Submissions

The evidence provided by the parties consists of 32 declarations. The evidence goes to both the section 52 oppositions as well as the 54 concurrent section 92 matters mentioned previously at footnote 1. However, for the sake of presenting a clearer delineation of the evidence, only that of most relevance to the section 52 oppositions is summarised in the table below. The declarations make reference to either the precise trade marks being opposed or slight variations of them that are the subject of the section 92 matters. For the most part, the table excludes evidence pertaining only to the section 92 matters[3]:
[3] The total of the evidence is summarised in the decision relating to the 54 section 92 matters issued concurrently.

(a) The Opponent’s Evidence-In-Support of the Opposition Proceedings

Opponent’s Evidence	Trade Mark
Statutory Declaration of Philip Craig Withers (‘Withers I’) dated 29 November 2010	BALLARAT BITTER
Statutory Declaration of Philip Craig Withers (‘Withers II’) dated 21 June 2011	TOOTH’S
Statutory Declaration of Philip Craig Withers (‘Withers III’) dated 21 June 2011	ABBOTS
Statutory Declaration of Philip Craig Withers (‘Withers IV’) dated 21 June 2011	BALLARAT BERTIE
Statutory Declaration of Philip Craig Withers (‘Withers V’) dated 21 June 2011	MASTHEAD

(b) The Applicant’s Evidence–In-Answer in the Opposition Proceedings

Applicant’s Evidence	Trade Mark
Statutory Declaration of Paul Robert Donaldson (‘Donaldson I’) dated 23 June 2011	N/A – all trade marks
Statutory Declaration of Roland Anthony Kaldor (‘Kaldor I’) dated 23 June 2011	N/A – all trade marks
Statutory Declaration of Matthew Jordan O’Keefe (‘O’Keefe I’) dated 23 June 2011	TOOTH’S
Statutory Declaration of Matthew Jordan O’Keefe (‘O’Keefe II’) dated 23 June 2011	ABBOTS
Statutory Declaration of Matthew Jordan O’Keefe (‘O’Keefe III’) dated 23 June 2011	BALLARAT
Statutory Declaration of Matthew Jordan O’Keefe (‘O’Keefe IV’) dated 22 November 2011	MASTHEAD
Statutory Declaration of Matthew Jordan O’Keefe (‘O’Keefe V’) dated 22 November 2011	BALLARAT BITTER
Statutory Declaration of Matthew Jordan O’Keefe (‘O’Keefe VI’) dated 23 February 2012	A trade mark is not applicable

c) Opponent’s Evidence-In-Reply in the Opposition proceedings

Opponent’s Evidence	Trade Mark
Statutory Declaration of Philip Craig Withers (‘Withers VI’) dated 21 June 2012	N/A - All trade marks

d) Applicant’s Evidence-In-Reply[4]

[4] The Applicant’s Evidence In Reply in respect of the section 92 matters.

Applicant’s Evidence	Trade Mark
Statutory Declaration of Paul Donaldson (‘Donaldson II’) dated 14 September 2012	N/A
Statutory Declaration of Grant Peck (‘Peck I’) dated 21 September 2012	N/A
Statutory Declaration of Owen Malone (‘Malone I’) dated 24 September 2012	N/A
Statutory Declaration of Matthew O’Keefe (‘O’Keefe VII’) dated 24 September 2012	TOOTH’S, BALLARAT BITTER, ABBOTS LAGER
Statutory Declaration of Matthew O’Keefe (‘O’Keefe VIII’) dated 28 March 2013 (N.B. this is regarded as further evidence)	All trade marks

The Opponent's evidence makes reference to a number of the Applicant's prior registrations that can be found in Annexure 1 attached to this decision.[5] In addition, the Applicant is also the registered owner of trade mark registration 863298 MASTHEAD which is registered in class 32 for ‘Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
[5] These prior registrations are the subject of the section 92 matters.
As previously mentioned, Philip Withers is a director of the Opponent, as well as the director of Elixir. Mr Withers’ business ventures include a microbrewery called “Thunder Road” which is based in Melbourne, Victoria. On behalf of the Opponent, Mr Withers has provided 7 declarations relevant to the section 52 oppositions.
On behalf of the Applicant, Matthew O’Keefe has provided 8 declarations in support of its defense to the section 52 oppositions. Mr O’Keefe holds the position of intellectual property manager for Fosters Group Limited(‘FGL’) and has held that position and other similar positions with the organisation since 2002. CUB is a subsidiary of FGL through which FGL runs its brewing business.
Paul Donaldson, group marketing manager for CUB’s ‘VB’ and ‘Crown’ beer brands has provided two declarations in support of the oppositions. Roland Kaldor, a beverage technologist employed by CUB; Owen Malone, past intellectual property director of CUB; and Grant Peck, CUB’s managing director of supply, have each provided one declaration.
Both parties also provided comprehensive submissions, both written and oral, which I will refer to, where appropriate, in my decision. In addition, for the purposes of making it sufficiently clear which declaration I am referring to, I will refer to each declaration according to the name allocated to it in the table at paragraph 10.

History of the Opponent

The Opponent is part of a group of companies (‘ICB Group’) that operates an import/export business in Australia, New Zealand, Europe, USA, South Africa and throughout Asia. The Opponent holds the intellectual property of the group. Elixir is part of this same group. Philip Withers, who has provided all the evidence for the section 52 oppositions as well as the evidence in support of the removal applications, is a director of each of the companies which form the group. He says that Elixir was formed in order to ‘bring some historical beers back to life’[6] and that Elixir intended to establish one or more micro-breweries, some of which would be formed in conjunction with a local pub and tourist attraction, most likely in regional areas, but also in relevant urban locations with a heritage focus.
[6] See exhibit PCW-2 and the document entitled ‘Elixir Signature Pty Ltd – Points for Consideration by CUB’ as attached to the Withers I declaration.
Mr Withers states that in the four years leading up to the making of his declarations, the ICB Group had expanded into the brewing industry by developing and marketing a range of beers and related merchandise. He says that the ICB Group has expended a significant amount of money in researching, filing and prosecuting Australian trade mark applications for its beer products and services, and that he has himself spent many hours researching beer trade marks.

History of the Applicant

CUB was formed in 1907 through the merger of six breweries operating in Victoria. The breweries were the following:
- Carlton Brewery (established in 1864);
- Victoria Brewery (established in 1854);
- McCracken’s City Brewery (established in 1851);
- Shamrock Brewing & Malting (established in 1865);
- Castlemaine Brewery Co (established in 1871) and
- Foster’s Brewing Co (established in 1888).
The amalgamated brewing group adopted the name ‘Carlton and United Breweries’. The name has changed several times since the amalgamation occurred, but reverted to the original name in 2012.
Over the years, CUB has amalgamated with and acquired the assets and businesses of a number of breweries, mainly in the eastern states of Australia. Some of the breweries amalgamated into the CUB business are:
- the Melbourne Co-operative Brewing Company which was acquired in 1925, giving CUB control of the Abbotsford Brewery;
- the Great Northern Brewery (formerly known as the Cairns Brewing Company) which was acquired in 1931;
- the Richmond Brewery which was acquired in 1962;
- the brewing operations of the Ballarat Brewing Company which were acquired in 1958;
- Tooth’s brewery business, including its Kent Brewery in Sydney which was acquired in 1983;
- Cascade Brewery in Hobart which was acquired in 1993.
In December 2011 a meeting of shareholders voted in favour of the purchase of CUB by SABMiller, a joint Anglo-South African business which was at the time the second largest brewing company in the world with over 200 beer brands and operations in 75 countries. The takeover was approved by CUB’s Foreign Investment Review Board, and SABMiller officially took over CUB on 16 December 2011. The takeover was made on the basis of certain undertakings including the following:
- that the management of CUB’s operations would remain in Australia;
- that none of the existing brewing facilities would be moved offshore to produce beer for Australian domestic consumption, and
- that SABMiller would continue to invest in CUB’s iconic Australian brand portfolio.

Negotiations between the parties

Many of the relevant events that lead to the section 52 oppositions, as well as the section 92 matters can be found in the 7 declarations provided by Mr Withers.
On behalf of the Opponent, Mr Withers describes a commitment to the preservation and future commercial development of the Australian beer industry specifically in relation to its heritage beer brands.
In October 2009, based on Mr Withers instigation, Elixir approached CUB to negotiate for the long term licensing (or acquisition) of some of these heritage brands.
Exhibit PCW – 2, as attached to the Withers I declaration, is a copy of the emails between Tony Watson of Elixir’s solicitors to Owen Malone, the then Intellectual Property Director of the Applicant. The first of these emails details Elixir’s initial written proposal for the acquisition of, or long-term license for use of, CUB’s brands, specifically mentioning the ‘Ballarat Bitter/Ballarat Bertie and the Richmond Lager marks’. In this regard the Opponent states:
On 4 November 2009, Mr Malone acknowledged receipt of the proposal but recommended that the Opponent should rework the proposal. In the original proposal, the Opponent had commented that the Historical Brands appeared to be released every few years to maintain the registrability of the brands and that an advantage of entering into the license agreement would be to remove the risk of the Historical Brands being removed from the Register on the basis of non-use. Mr Malone stated that the proposal in its current form was likely to cause offence and recommended that the Opponent should rework the proposal.
The amended proposal (in part) stated the following:
3. The relevance of CUB
CUB owns a number of old beer brands which are no longer part of its core business. Two of these brands are Richmond Lager and Ballarat Bitter. Elixir is interested in acquiring the brands or entering into long term licence agreements with CUB to re-enliven these brands as historical Australian beer brands, in the context of one of Elixir’s micro-breweries.
3.1 Richmond Lager
With respect to Richmond Lager and the other Richmond marks, Elixir seeks to draw on the heritage aspects of this brand. Elixir is especially interested in the original depiction of Richmond Lager, Pilsner and other varieties. Elixir seeks to retain the tiger head and prefers the way that the beer brand was presented in the 1930’s and 1950’s.
3.2 Ballarat Bitter/Ballarat Bertie
In the case of Ballart [sic] Bertie, Elixir does not intend to alter the characters [sic] image. Rather, it intends to retain and enhance the original character drawing on Bertie’s authentic charm from an historical perspective to ensure it survives and remains a relevant part of Australian beer history.
3.3 Other Brands
There are other such historical brands which Elixir would seek to acquire or licence if CUB was amenable.
4.      Intended use of the CUB brands
Elixir seeks to acquire or licence the brands on a long term basis to refocus them on the local communities with which they enjoy their links. It envisages they will be brewed in those community areas on a small batch basis.
Benefits to CUB-
·     PR role coverage of the history of brewing in Victoria incorporating CUB’s history
·     Positive PR within the community allowing these historical brands to come back to life within the communities they were born (sic).

There was a considerable delay before Withers received the final email response rejecting his proposal.
The last email communication between the parties (of those I have been privy to), dated circa eight months after the Opponent's initial proposal, was emailed to Mr Watson and states:
Dear Tony,
Further to our last telephone discussion, I confirm that CUB does not wish to dispose or license its RICHMOND LAGER or BALLARAT BITTER/BERTIE brands. Both brands are required as part of its product portfolio and it has no current interest in pursuing the proposal put by your client.
Should the situation change in the future, CUB had advised that it will be prepared to revisit the matter if it remains of interest to your client.
Best regards
Owen Malone
Further discussions took place throughout the later part of 2010 and early 2011. However, in early May 2011 CUB advised that it did not wish to enter into any long term license agreement with Elixir. CUB’s final comment in the message of refusal was that ‘CUB will otherwise defend its brands with its full resolve should you continue your attempts to appropriate them’[7].
[7] See exhibit PCW-7 as attached to the Withers VI declaration which contains the email from Mr Malone to Mr Withers.

Other Relevant Events

The other relevant events that occurred during or shortly after these email exchanges are as follows:

• On 27 January 2010 the Applicant filed trade mark 1342305 at paragraph 1 of this decision.

• On 25 August 2010, the same day as the last email communication between Mr Watson and Mr Malone, the Applicant filed another eleven trade mark applications, including the applications for ABBOTS, BALLARAT BERTIE, MASTHEAD and TOOTH’S, all being for goods in class 32, namely ‘Beer, brewing kits; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.

• On 27 August 2010 the Opponent opposed the registration of trade mark application 1342305.

• The Opponent submits that it only ‘learned of the new applications, including the BALLARAT BITTER (Device) application after receiving Malone’s email on 25 August 2010. It was not conducting its own regular searches of the register as it was negotiating with CUB in good faith’. [8]

• On 28 March 2011 the Opponent opposed the registration of trade mark applications 1379830 ABBOTS, 1379832 BALLARAT BERTIE, 1379851 MASTHEAD and 1379854 TOOTH’S.

[8] Opponent’s written submissions titled ‘ES and IPDC Submissions for Hearing on 16 and 17 April 2013’ (henceforth ‘Opponent’s written submissions’) at paragraph 122 (j).

I now move on to discuss the evidence provided for the five Trade Marks.[9]
[9] Many of the following facts are gleaned from Mr Withers’ declarations, which therefore arguably support CUB’s case particularly in regard to the section 92 matters.

Evidence

1342305    and      1379832    BALLARAT BERTIE
(a)     BALLARAT BITTER was first brewed in Ballarat in 1927 by the Ballarat Brewing Company. The label included the character of ‘Bertie’ holding a foaming pot of beer. BALLARAT BERTIE also became the official ship’s mascot of the corvette Ballarat 1 which was launched in 1940 for service in World War II.
(b)     CUB acquired this company in 1958 and continued to brew the beer. Regular production ceased in 1994.
(c)     During operational deployment in the Middle Eastern Area of Operation in about 2005 the Australian navy frigate HMAS Ballarat searched for an official mascot and decided to adopt BALLARAT BERTIE, as had the corvette Ballarat 1 during WWII. In 2006, following a suggestion by a member of parliament who had visited the frigate on operations, CUB released a special commemorative run of BALLARAT BITTER for limited release in Ballarat. In all, CUB brewed 10,000 cases of the beer (240,000 individual cans) which sold out within a very short period.
(d)     In November 2011, CUB released 300 kegs of BALLARAT BITTER into 26 pubs and hotels throughout Ballarat. This was the first time in 50 years that BALLARAT BITTER had been available on tap. BALLARAT BERTIE as well as the BALLARAT BITTER trade mark appeared on the tap badges in the hotels and pubs. BALLARAT BITTER in a ‘classic heritage can’ was released into Dan Murphy’s stores throughout Victoria in November and December of the same year.
1379830 – ABBOTS
(a)     CUB says that ABBOTS LAGER was established in 1904 and was brewed continuously until 1995. For much of that time it was one of the highest selling beers in Melbourne. It is named after the Abbotsford Brewery, originally owned by the Melbourne Co-operative Brewery,^[10] and purchased by CUB in 1924. The brewery is one of CUB’s main breweries and for much of its existence has been the biggest brewery in the Southern Hemisphere.
(b)     Carlton and United Breweries ceased production of ABBOTS LAGER in 1995;
(c)     In July 2007, the Applicant brewed a limited release of ABBOTS LAGER to commemorate the 100 year anniversary of the Abbortsford brewery; and
(d)     There was a heritage release of ABBOTS LAGER in 2011.
[10] There is a picture of the brewery under its original ownership at >
1379851 – MASTHEAD
(a)     CUB acquired the Sanctuary Cove Brewery in Sanctuary Cove, Queensland in 1995 and in 2001 renamed it MASTHEAD Brewery;
(b)     MASTHEAD Brewery closed in 2001;
(d)     in 2005 CUB cancelled Australian company name “Masthead Brewing Company Pty Ltd”;
(e)     It appears that the trade mark has not been used on any goods or services in Australia since 2003/early 2004.
1379854 – TOOTH’S
(a)     Tooth’s Kent Brewery was founded in 1835
(b)     Tooth & Co Limited operated Sydney’s Kent Brewery from 1835 to 1983;
(c)     By 1910 the New South Wales beer market was dominated by three Sydney brewers, which included Tooth’s.
(d)     CUB acquired the Kent Brewery in 1983;
(e)     Kent Brewery closed in 2005. However, there are indications of intended use of the TOOTH’S brand post this time. Most of this intended use is provided in the O’Keefe declarations. Because time has passed since these declarations were made, it is now clear that the TOOTH’S brand was not part of the 2011 heritage release.
At the end of each of his declarations Mr Withers states his opinion:
It is my belief that the application for registration of the trade mark was:
(a) Only filed as a result of the Opponent’s solicitor specifically telling the Applicant that non-use applications would be filed against the registration of the historical marks;
(b) Not actually intended to be used by the Applicant at any time after filing; and
(c) Filed in bad faith given the negotiations that were ensuing.

The Applicant’s Evidence in Answer

As previously mentioned the Applicant's evidence in answer consists primarily of declarations and attached exhibits made by Mr Matthew O’Keefe. He states at paragraph 4 of the O’Keefe II declaration :
FLG is a publicly listed Australian company which conducts Australia’s biggest brewing business through its subsidiary Foster’s Australia Limited (FAL”). Currently, and for most of its history FAL has carried on its beer business in Australia as Carlton & United Breweries, also known widely as simply “CUB”[the same entity as the Applicant].
As I understand it a particularly relevant piece of evidence relating to the oppositions to registration as provided by Mr O’Keefe in his declarations is:
In August 2010, the Applicant conducted a review of its heritage brands and filed applications for the Trade Marks (and others not a party to these proceedings)
In May 2011, the Applicant approached ‘the two largest liquor retailers in Australia, who together have over half of the retail market and offered to supply them with several heritage brands as part of a celebration of heritage proposition. Amongst other things, the discussions focussed on sales targets, possible price points, recipes and branding. One retailer declined the opportunity but the other accepted the offer and the process to produce these products is now underway. There are approximately 10 brands that are part of the project…” [11]
[11] O’Keefe I declaration at paragraphs 41 and 44.
The evidence claims that the BALLARAT BITTER LOGO, ABBOTS, BALLARAT BERTIE and TOOTHS trademarks were included in those 10.
In regard to the closing of the MASTHEAD Brewery in 2003 , Mr O’Keefe states that:
In August 2010, following a review of its heritage brands, CUB filed a fresh application for its MASTHEAD brand with the clear intention of using that mark as a beer brand.
At no stage has CUB intended to abandon its rights in MASTHEAD. The spate of releases across the modern era demonstrates CUB’s ongoing commitment to its history.[12]
[12] O’Keefe IV declaration at paragraphs 14 and 15.
The Donaldson I declaration confirms that the discussions with Australia’s two largest retailers took place.
Mr O’Keefe further states:
Indeed, in late November/Early December 2011, ABBOTS LAGER (Victoria), BALLARAT BITTER (Victoria)…will be available in cans through Dan Murphy and Woolworth's liquor outlets in the relevant state…
The cans identified in the preceding paragraph are the first part of a wider release as bottles involving other iconic brands, are planned to follow in early 2012…the brands slated for release are McCRACKEN’S, RICHMOND LAGER, NQ LAGER, CAIRNS DRAUGHT and TOOTH’S.
These releases by CUB by Dan Murphy and Woolworth's liquor arose out of CUB’s approach to Woolworth's Limited (owner of Dan Murphy’s) in May 2011 as noted in evidence already filed in these proceedings. The releases are entirely consistent with CUB’S commercial strategy of using its heritage brands as an important point of distinction with its competitors. As has been noted previously in the evidence, the applications opposed by Withers were clearly filed by CUB with an intention to use the marks. [13]
[13] O’Keefe V declaration at paragraphs 13 to 15.
In a later declaration dated 23 February 2012 Mr O’Keefe confirms that some releases did take place and they “attracted significant media attention, particularly in Queensland and Victoria”[14]. The exhibits MJO-215 and MJO-216 help to support this deposition.
[14] O’Keefe VI declaration at paragraphs 7 and 8.

Further Evidence

The construction of the Opponent’s evidence is to cast doubt on the commercial validity and planning of the Applicant's heritage releases and its motives for conducting them. The Opponent also highlights a “history of [the Applicant] closing its breweries and discontinuing the brewing of its beers”. The Opponent provides examples of some such breweries and beers and as well as this, it provides examples of many country breweries that it contends were forced to close “due to pressure from CUB”.[15]
[15] Withers VII declaration at paragraph 22.
The Applicant responds to the depositions in the O’Keefe VII declaration dated 24 September 2012 and further states:
In paragraph 18 of the Withers’ Declaration, Withers asserts that CUB’S applications for various “historical Marks” were made as a direct result of his attorney telling CUB that non-use applications would be filed against those marks, and because CUB “knew that its historical brands were vulnerable to removal”. These assertions are misguided. Each of these applications was filed because of an intention on the part of CUB to use the marks and as a prudent measure around protecting its valuable brands. [16]
[16] O’Keefe VII declaration at paragraph 5.
During the hearing the Applicant, on one hand, stressed its claim that the Trade Marks are an important part of its overall business model whereas the Opponent alleged that they are a consummate part of our Australian heritage and should be available for use by Australians generally – more specifically, it would appear, by Mr Withers and his companies.
In his submissions for the hearing, Mr Cordiner made the following comments:
CUB is engaged in a systematic approach of trade mark banking. The non-use sections of the Trade Marks Act 1995 are written specifically to enshrine public interest in having a register of trade marks free from trade marks that are banked. Elixir’s principal contention is that the discretion to allow a company to maintain trade marks they are not using should not apply to CUB. Elixir intends to show the Hearings Office that there is a public and private interest in ensuring a multinational company like CUB uses its trade marks, or loses them, just like everyone else. Further, Elixir intends to show that some of the tactics employed by CUB by which it seeks to maintain its trade mark portfolio, such as limited non-commercial beer releases and refiling already registered trade marks, are done in bad faith.[17]
[17] Opponent’s written submissions at paragraph 2.
Mr Allen has also brought to my attention that the Applicant has not renewed the registration of many of its brands which can be seen as inconsistent with its alleged intent to ‘bank’ trade marks.
I will turn now specifically to the Applicant’s and Opponent’s written submissions. Both are lengthy and I see little value in repeating the detail in its entirety. In summary and with respect to section 59 and section 62A of the Act the most relevant submissions from each party are:
• The Applicant provided information about past and future beer releases under relevant trade marks that it claimed as confidential.
• The Opponent submitted a critical analysis of the Applicant's evidence. In essence, Counsel also submitted that the Applicant's evidence is a severely deficient instrument and is incapable of discharging the onus they claim the Applicant now carries to show that they filed the applications in good faith with an intention to use the Trade Marks.
Based on my consideration of the evidence and submissions before me, I will now discuss the reasons for my decision in the context of sections 62A and 59 of the Act.

Discussion and Reasons

Section 62A

Section 62A of the Act provides:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith

The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some non-exhaustive examples of applications made in bad faith:
•       persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
•       persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
•       persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The cases of Fry Consulting Pty Ltd v Sports Warehouse Inc. (No 2)[18] and DC Comics v Cheqout Pty Ltd[19] are currently the authorities on this section of the Act. Justice Dodds-Streeton in the former case, made the following comments at [24-26]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
[18] [2012] FCA 81.
[19] [2013] FCA 478.
I note also that each of the section 52 oppositions are in regard to trade marks and their respective goods that are essentially the same, or deceptively similar to, trade marks and relevant goods that are already registered under the name of CUB Pty Ltd. These trade marks appear in Annexure 1.[20]
[20] See also paragraph 11 regarding CUB’s other registration for trade mark 863298 MASTHEAD which is not currently the subject of a removal action by Elixir.
In Fry Consulting Dodds-Streeton J went on to say:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
Mr Cordiner, on behalf of the Opponent, submits that:
In many parts of CUB’s evidence it seeks to pull at the heart strings of the examiner to retain registration of its historical brands that it has not used for decades. Such evidence should be read in light of CUB’S behaviour in its dealings with IPDC and Withers. CUB perfectly understands the operation of the non-use system and the trade mark registration system and the only conclusion that can be drawn from its cynical re-filing of already registered trade marks is that those applications were made in bad faith. As a result they should be refused registration under s62A of the TMA [the Act].[21]
[21] Opponent’s written submissions at paragraph 124.
I am also aware that the Opponent has made recent applications for a number of trade marks that have obvious similarities to the Applicant’s registered trade marks. Further, Elixir’s amended proposal[22] suggests that Mr Withers’ interest lies in CUB’s other heritage brands, including the trade marks subject of these section 52 oppositions.
[22] See discussion at paragraph 25.
The Opponent argues that the Applicant has only filed for registration of the Trade Marks in response to the Opponent’s interest in licensing, or securing the intellectual property rights in some of CUB’s heritage brands which themselves had not been in use for many years. In doing so, the Opponent says the Applicant applied in bad faith because it filed the applications with the knowledge that its heritage trade marks would otherwise be vulnerable to non-use proceedings.
During the hearing Mr Allen argued that the Applicant is in the commercial planning phase for the release of more heritage brands. The finer details of these plans have not been put forward in evidence, which Mr Cordiner argued is suspect. Mr Allen claimed that detailed evidence was withheld because of a concern that the confidential nature of such evidence may not be respected. Indeed this fear seems credible, as confidential information was apparently leaked to a journalist during the proceedings. In light of these events, I am prepared to accept Mr Allen’s explanation for the Applicant’s failure to provide more detailed evidence.
After consideration of the emails between Mr Malone and Mr Watson, which I view as a key piece of evidence in these proceedings, I am satisfied of two important facts:
1) that CUB was aware Elixir had an interest in using the Trade Marks; and,
2) that there was at no time a business relationship between either Mr Withers, Elixir or IPDC and CUB.
I am not prepared to draw the inference proposed by the Opponent, that is, that the filing of the applications was purely a defensive or tactical response to the interest Mr Withers had shown in regard to using the Applicant’s prior registrations. If any inference is to be drawn, it seems more reasonable that, as the Opponent sought license from the Applicant for use of its prior registrations, the Opponent regarded the Applicant to be the legal owner of the Trade Marks.
As no evidence has been provided to show that the Applicant (or a reasonable man in its shoes) shouldn’t have applied for the Trade Mark’s. I am unable to ascertain any issues of bad faith inherent in the making of these applications. The Applicant’s conduct (in my view) does not fall short of the ‘standards of acceptable commercial behavior’ articulated by Dodds-Streeton J. Nor is it conduct which is of ‘an unscrupulous, underhand or unconscientious character’.[23]
[23] Fry Consulting at [165-166].
The Applicant has not renewed the registration of many of its brands. To my mind, this adds some weight to the argument that the Trade Mark applications are for the securement of heritage brands being for use in future commercial releases, not for the purpose for trade mark ‘banking’ as the Opponent would have me believe.
Given the surrounding circumstances I find that the Applicant was justified in applying for the registration of the Trade Marks.
I am satisfied that the Opponent has not established the section 62A ground of opposition.

Section 59

Section 59 of the Act provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.
As a general principle, the act of applying for registration is taken to be prima facie evidence of an intention to use the trade mark in relation to all the goods and services listed.[24] However, if a prima facie case is made to the contrary, the onus shifts to the Applicant to establish the requisite intention. The words of fellow Hearing Officer, Ian Thompson are also relevant here:
… if a person files an application to register a trade mark with an intention at the filing date only to sell the trade mark to another person, or only to thwart a registration of a trade mark by its rightful owner and/or gain a financial benefit therefrom, or only as a spoiler or blocking strategy in a trade marks dispute with another person, there can have been no intention at that date to use that trade mark as the intended use must have been in relation to goods or services and not for some other purpose.[25]
[24] Aston v Harlee Manufacturing Co (1960) 103 CLR 391; Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 at 456.
[25] Scotch Whisky Association v Jin Ho Lee and Myong Gil Lee [2013] ATMO 1 (9 January 2013) at paragraph 15

The Opponent's arguments under this ground rely heavily upon the email communications between Mr Malone and Mr Watson which detail the Opponent's proposal for the license or acquisition of some of the Applicant's heritage trade marks as well as the Opponent's failed negotiations with the Applicant in this same regard. By virtue of this awareness the Opponent argued that the Applicant applied to register the Trade Marks without any intention of using them. Instead the alleged intention for the filing of the applications was to prevent any other party from using the Trade Marks should the previous registrations be removed from the Register for non-use.
During the hearing Mr Cordiner referred to the present applications being for goods in which the Applicant has not yet traded. The remarks by the delegate in Ferring BV v Pure Health Direct Pty Ltd (‘Ferring’) [26] are relevant here:
The opponent has not evidenced any lack of intention in relation to the balance of the goods, only a lack of actual use. A lack of actual use is what pertains in common in relation to all of the unused trade marks in respect of which registration is sought; however, if lack of intention to use is alleged, the evidence of such lack of intention must go to some other factor other than the lack of use in itself.
….
Here there is only a contention of a lack of intention with nothing more substantial than argument in support of the allegation. There is nothing, therefore, for the applicant to respond to and no inferences may be drawn from its lack of response.
The opponent has not established its opposition under section 59 of the Act.
[26] [2011] ATMO 99.
In Ducker’s Trade Mark[27] Lord Hanworth MR said:
I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods. I think that the words “proposed to be used” mean a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.
[27] Re Ducker’s Trade Mark (1928) 45 RPC 397 at 402 (CA UK).

The Applicant has described plans for future beer releases, and after a consideration of the evidence I think it is reasonable to infer that such plans are truthful.
I am not satisfied that the onus has shifted to the Applicant to demonstrate an intention to use the Trade Marks. The Opponent has made allegations and not provided sufficient evidence to present a prima facie case, Allegations are not sufficient to shift the onus from the Opponent to the Applicant. An intention to use a trade mark is inherent in the application, and it requires more than what I have before me to cast aspersions on that intention.
However, in case I am wrong in this, the Applicant’s review of its heritage brands in 2010[28] and its past and planned future heritage releases, together with its existing registrations for the same or deceptively similar trade marks, discharge any onus that might have shifted to the Applicant. I am of the view that any inference potentially created by the Opponent’s evidence has been addressed or explained by the Applicant. Further, it is no obstacle in itself if the Applicant’s primary purpose in filing for the Trade Marks was to prevent their use in Australia by the Opponent, provided the Applicant also has a genuine intention to use the Trade Marks on the goods. I find such an intention exists.
[28] See also paragraph 38.
For the reasons given above I am satisfied that the Opponent has not established the section 59 ground of opposition.

Decision

Section 55

The Opposition will be decided pursuant to section 55 of the Act which relevantly provides:

55 Decision

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)	to refuse to register the trade mark; or

(b)	to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

The Opponent has failed to establish any grounds of opposition. The opposition thus fails. Applications 1379830, 1379832, 1379851, 1379854 and 1342305 may proceed to registration after 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 registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has not established a ground of opposition, I have awarded costs against the Opponent.

Cristy Condon
Hearing Officer
Hearings & Oppositions
10 September 2013

Annexure 1 – The Applicant’s Registrations

Due to the age of some of the trade marks that appear below, some of the images are of poor quality. The images are the best quality available at this time.

Trade Mark Number	Trade Mark	Goods/ Services	Filing Date
2445	Class: 32 Beer	4 October 1906
12786	Endorsements: The essential particular of the Trade Mark is the following:- The device of a rampant horse. Applicant Company disclaims any right to the exclusive use of the added matter, except in so far as it consists of its name and address. In use the description of goods appearing in the Mark is varied in accordance with the application of the Mark to other goods mentioned in the specification.* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Ale, beer, lager beer, stout, cider and fermented liquors generally; ginger beer, ginger ale, hop beer, botanic beer, lemonade, spa water, soda water, lithia water, mineral and aerated waters natural and artificial,	28 March 1912
18894	Endorsements: In use the description of goods appearing on the Mark is varied in accordance with the application of the Mark to other goods comprised in the specification.* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Lagers and beers	28 September 1915
30084	Class: 32 Ales, lager beer and stout	27 January 1921
33775	Class: 32 Ales, lager beer and stout	15 July 1922
42305	TOOTH’S	Class: 32 Fermented liquors being, beer, ale and porter being goods included in this class	30 July 1925
54596	Endorsements: In use the description of goods comprised in the mark is varied in accordance with the application of the mark to other goods comprised in the specification.* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Lagers and beers	8 November 1929
173634	Class: 32 Beer, ale and porter	11 May 1962
225429	Endorsements: In use the description of goods appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Beer, ale, lager and stout	14 January 1969
225432	Endorsements: In use the description of goods appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Beer, ale, lager and stout	14 January 1969
369884	Class: 32 Beer, ale, lager and other brewed liquors, products in this class for use in the manufacture of beer, lager ale and porter, including hop extracts and products resulting from the refinement of hops	30 December 1981
369886	Endorsements: In use the description of goods appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification. It is a condition of registration that, when the mark is in use in relation to the goods for which it is registered, the blank space in the mark will either be left vacant or be occupied by the trade marks the subject of registration nos A369884 and A238755, with or without the addition of matter of a wholly descriptive or non-trade mark character. It is a condition of registration of this trade mark that it will not be assigned separately from the trade marks the subject of registrations nos A238755 and A369884. Registration of this trade mark shall give no right to the exclusive use of the word BALLARAT.* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Beer, ale, lager and other brewed liquors, products in this class for use in the manufacture of beer, lager, ale and porter, including hop extracts and products resulting from the refinement of hops	30 December 1981
420564	ABBOTS EXXTRA LIGHT Endorsements: In use the description LIGHT appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Beer, ale and porter	9 January 1985
536842	Endorsements: Registration of this trade mark shall give no right to the exclusive use of the word BALLARAT* In use the description BITTER appearing in the mark is varied in accordance with the application of the mark to other goods comprised in the specification* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Class: 32 Beer, ale, stout, lager and other brewed liquors included in this class	27 June 1990
564232	ABBOTS ABBOTS LAGER	Class: 32 Beer and stout	27 September 1991
915899	Class: 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	11 June 2002
915900	BALLARAT BERTIE	Class: 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	11 June 2002