Intellectual Property Development Corporation Pty Ltd. v Reynolds Consumer Products, Inc

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 application under section 92 of the Act by Reynolds Consumer Products, Inc.
to remove trade mark number 1049748 (6,16) – CAPTAIN REYNOLDS – in the name of Intellectual Property Development Corporation Pty Ltd.

Delegate:

Debrett G. Lyons

Representation:

Removal Opponent: Chris Round, solicitor, of K&L Gates

Removal Applicant: Ike Papageorge, solicitor, of Herbert Smith Freehills

Decision:

2015 ATMO 49

s92 proceedings – s 92(4)(b) and s 7(1) considered; no use of the trade mark as registered; no exercise of discretion; registration to be removed.

Background

Intellectual Property Development Corporation Pty Ltd (“the Removal Opponent”) is the owner of trade mark registration 1049748 from 7 April 2005 for CAPTAIN REYNOLDS (“the Trade Mark”).
On 1 October 2013, Reynolds Consumer Products, Inc. (“the Removal Applicant”) applied under subparagraphs 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Trade Mark from the Register of Trade Marks in respect of all of the goods for which it is registered, namely, “Class 6: Foils in this class, including aluminium foil” and “Class 16: Plastic bags and cling wrap”.
On 25 November 2013, the Removal Opponent filed a Notice of Intention to Oppose the removal application.
Thereafter, the Removal Opponent filed evidence in support and evidence in reply; the Removal Applicant filed evidence in answer.
The parties asked for an oral hearing and, as a delegate of the Registrar of Trade Marks, I heard their submissions in Melbourne on 19 March 2015. Chris Round, a partner in the law firm of K&L Gates, represented the Removal Opponent; Ike Papageorge, a consultant to the law firm of Herbert Smith Freehills, represented the Removal Applicant.
The Evidence
The evidence in support filed by the Removal Opponent comprises the statutory declaration of Philip Craig Withers made 9 April 2014, with Exhibits PCW-1 to PCW-5.
The evidence in answer filed by the Removal Applicant comprises the statutory declaration of Jeremy Herz made 15 July 2014, with Exhibits JH-1 to JH-3.
The evidence in reply filed by the Removal Opponent comprises the statutory declarations of Peter Christofileas made 12 September 2014, with Exhibits PC-1 to PC-2 and Darren Briggs made 16 September 2014, with Exhibits DB-1 to DB-2.
Just prior to the appointed hearing, the Removal Applicant produced and attempted to introduce into evidence statutory declarations by Christopher John Round (the Removal Opponent’s representative in these proceedings) made 18 and 19 March 2015.
At the hearing representations were made by both sides as to the admissibility of those declarations and there was discussion concerning the manner in which the declarations had been provided resulting in further action by the Removal Applicant’s representatives following the hearing.
It has not been necessary for me to decide on the admissibility of the declarations from Mr Round since they are essentially concerned with aspects of the removal application as it hinges on subparagraph 92(4)(a) of the Act; for reasons which emerge below, the application as it rested on subparagraph 92(4)(b) was dispositive of the matter.
Reasoning
Section 92(4)(b) of the Act, under which I have decided the matter, provides:
92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2)The application:
(a)must be in accordance with the regulations; and
(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:For prescribed court see section 190.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(…)
(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 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
The relevant period during which the Trade Mark must be used is the three year period ending on 1 September 2013 (“the Relevant Period”).
As regards the onus in these proceedings, section 100 relevantly provides:
100Burden 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:
(…)
(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.
The onus is thus on the Removal Opponent to establish on the balance of probabilities use of the Trade Mark on, or in relation to, the Registered Goods during the Relevant Period.
Further, section 7(1) of the Act provides that a trade mark has been used “…if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark”.[1]
[1] See also, s.100(3)(a) stating that for the purposes of s.100(1)(c), the opponent is taken to have rebutted the allegation that the trade mark has not been used if the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity has been used.
The Removal Opponent’s evidence does not show use of the Trade Mark either during the Relevant Period or at any other time. Instead, the evidence shows use of the sign shown below (“the Logo”):
As can be seen, the Logo includes the words “CAPTAIN REYNOLDS”, but as part of a composite sign depicting a cartoon image of a man with some sort of headgear together with the additional phrases “TRIPLE DIAMOND” and “QC PASS”
Putting to one side then the other matters raised by the Removal Applicant concerning the probative value of the Removal Opponent’s evidence of use during the Relevant Period, I must as a threshold issue determine whether use of the Logo could properly be said to be use of the Trade Mark “with additions or alterations that do not substantially affect the identity of the Trade Mark”.
The Removal Opponent’s written submissions in this respect are headed Depiction of the Trade Mark in a logo and state:
The registration of the Trade Mark in block capitals includes the use of the words in any clearly legible form of lettering and is not confined to its representation in block capitals. The monopoly granted to IPDC in the use of the Trade Mark extends to the use of the words "CAPTAIN REYNOLDS" rendered in either a stylised or plain form, with or without capitalisation or partial capitalisation and whether or not, in that rendering, device elements are used. In short…..in whatever form it chooses.
In my assessment, these are troubling and I would say misleading statements of law when applied to section 94. It may be a different matter if the Removal Opponent was concerned, to use its words, with the monopoly granted by the registration of a trade mark. In the Federal Court case cited by the Removal Opponent in support of its submission, Apple Inc v Registrar of Trade Marks[2], Yates J. was primarily concerned with section 41 of the Act and at paragraph 18 said in full:
First, the registrability of a mark must be assessed by reference to the nature of the mark itself. Here, the mark is simply the words APP STORE. Apple does not seek to limit the mark by stylistic or device elements. In these reasons, I have adopted the convention of identifying such a mark by upper case lettering. However, should the mark proceed to registration as applied for, Apple would be entitled to a monopoly in the use of those words as a trade mark, in whatever form they might be rendered. The monopoly would extend to those words rendered in either a stylised or plain form, with or without capitalisation or partial capitalisation and whether or not, in that rendering, device elements are used. In short, upon registration, Apple’s trade mark rights would extend to the use, as a trade mark, of simply those words in whatever form it chooses.
[2] [2014] FCA 1304.
I would underline that his Honour uses the phrase, “simply those words in whatever form it chooses”. That, on my reading, is not authority for the proposition that you can add any device and it remains substantially the same trade mark.
The Removal Applicant’s broader written submissions relevant to section 7(1) were that:
The Registrar’s determination of this question must be made in the context of the Opponent’s claim that the Logo as a whole is being used as a trade mark. This express claim manifests through the Opponent’s use of ‘TM’ (see for example Exhibit PCW-1 and PCW-4 of the Withers declaration) and ‘®’ (see for example Exhibit PCW-4 of the Withers declaration) vis-à-vis the Logo in its entirety. The salient work on Australian trade mark law – Shanahan’s Australian Law of Trade Marks and Passing Off – states: “Where a device is used in conjunction with a word trade mark and the device is both simple and descriptive of the word, its presence may mean that the word and the device together will be regarded as substantially identical to the word trade mark alone. The position will be different if the device mark is not purely descriptive of the word.”[3]
[3] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Thomson Reuters, 5th ed, 2012) 546.
In Colorado,[4] for example, it was held that the word COLORADO in conjunction with a mountain device differed from the word COLORADO. The court determined that the mountain device was not purely descriptive of the word COLORADO, and therefore the composite mark’s identity was substantially different to the word mark alone.[5]
[4] Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 243 ALR 127.
[5] As interpreted by the Court in E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144.
It could hardly be said that the highly stylised Logo included in evidence is purely descriptive of the words “CAPTAIN REYNOLDS”. The Logo most prominently features the face of a bearded man and contains 4 words in addition to CAPTAIN REYNOLDS, including the words QV PASS in larger font than CAPTAIN REYNOLDS, which are separately and prominently positioned at the bottom of the logo. Consumers would not view the Logo and understand it to mean ‘CAPTAIN REYNOLDS’.
In Re Morny[6], the court found that it was not necessary for use of a trade mark “to maintain the precise form of embellishments or representations which at the time of the application were included in the form of the mark submitted for registration.” However, “that is not to say that where the form or design or embellishment forms part of the distinguishing matter, that can ever properly be disregarded by the registered proprietors”. In other words, where actual use includes distinctive and prominent elements which do not appear in the registered form of the trade mark, such use may not be considered use of the registered trade mark.
[6] Morny Ltd’s Trade Marks, Re (1951) 68 RPC 55 at 57.
In Express Newspapers, the Hearing Officer, in discussing the Re Morny decision, stated: …“MORNY” in plain block capitals is not a registration in an out of the ordinary form and may be used as a trade mark with various elements provided “Morny” remains discernable as the essential feature.[7]
[7] Express Newspapers v Star Newspaper Co [1984] IPD 7090.
The proposition that use which alters the distinctive elements from the registered form does not constitute use of the registered form has been consistently followed.
For example, in Tricarico, the court considered whether use of a logo which included the words, MALTMARKET BAR & KITCHEN supported the registered word mark MALTMARKET BAR & KITCHEN in relation to class 43 taverns. The word MARKET was obscured due to the fact that it was relatively small in size and also wholly contained within the letter “L” of the word MALT. As a result, the mark appeared from a distance to be MALT BAR & KITCHEN. The effective absence of the word MARKET, which is a distinctive word in relation to tavern services, was held to substantially affect the identity of the logo mark. The court said:
In this case, the word “MARKET” comprises half of the MaltMarket Trade Mark’s sole non-descriptive element in the word “MALTMARKET”. Unlike, “MALTMARKET” the words “BAR & KITCHEN” are descriptive of “tavern” services. “Market” is, therefore, an integral component of the word “MALTMARKET” and, in turn, the MaltMarket Trade Mark. In my view, obscuring “MARKET” in actual use to the point of difficulty in detection substantially affects the MaltMarket Trade Mark’s identity.[8]
In McDougall, the Hearing Officer did not consider that use of the terms “Ugh Boots”, “Ugg Boots” and “Ugg Australia” was use of the registered form UGH-BOOTS, and accordingly removed the registration for non-use. The Hearing Officer stated:
Whatever identity the term “Ugh-Boots” might have as a trade mark must derive from the hyphenated nature of the expression. It is apparent that any loss of the hyphen or misspelling (or other variation from the registered mark) by the opponent so that it is rendered “Ugh Boots” or “Ugg Boots” or “Ugg Australia” must necessarily involve a change to the identity of the trade mark since these terms are all generic.[9]
In light of these authorities, we submit that the additions and alterations made to the word mark CAPTAIN REYNOLDS in order to form the CAPTAIN REYNOLDS logo substantially affect the identity of the word mark within the meaning of s7(1) the Act. As a result, use of the Logo does not constitute use of the trade mark, and therefore the Opponent has failed to file any evidence of use of the trade mark.
[8] Tricarico v Dunn Holdings Pty Ltd [2012] FCA 271 at [59].
[9] McDougall v Deckers Outdoor Corporation (2006) 68 IPR 322 at 330.
The Removal Applicant’s position is to be preferred. In Sports Warehouse, Inc v Fry Consulting Pty Ltd [10], Kenny J. said:
In this case, the obvious differences between the trade mark TENNIS WAREHOUSE and the domain name to which the respondent referred do not substantially affect the identity of the mark within the meaning of s 7(1) of the Act. As Sports Warehouse submitted, Windeyer J’s statement of the test for substantial identity (see s 44 of the Act) in Shell Co (Aust) Ltd v Link Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414 is also a guide as to whether “a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark” (s 7(1)): see also Link Recruitment Pty Ltd v Employment and Training Inc (2006) 69 IPR 614 at [21]-[22] (Hearing Officer Nancarrow). Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[10] [2010] FCA 664 at para 154.
So, it is sometimes said that section 7(1) is a test of whether or not two trade marks are “substantially identical” as that expression is used in other places in the Act. If that is so, then there is no sustainable argument that the Trade Mark and the Logo are substantially identical. In any event, in the plain terms of sections 7(1) and 100(3)(a), I find that the added matter present in the Logo substantially affects or alters the identity of the Trade Mark. It follows that there has been no use of the Trade Mark in the Relevant Period. The Removal Opponent has therefore failed to rebut the allegation of non-use under section 92(4)(b).
Discretion
It also follows from those findings that there has been no use of the Trade Mark at all, one factor which has bearing on my discretion under section 101(3) to allow the Trade Mark to remain on the Register if I am satisfied that it is reasonable to do so.
The Removal Applicant provided evidence of its trade mark applications for REYNOLDS, blocked in their passage to registration by the Trade Mark. Before amendments to the Act some years back, the Removal Applicant would have been a “person aggrieved”. In any case, the Withers declaration shows the Removal Applicant to have a genuine commercial interest in the removal of the Trade Mark. Further, considering the factors pertinent to exercise of my discretion laid out in Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd[11], there is in my assessment nothing of any weight which favours the exercise of the discretion.
[11] (1988) 13 IPR 233 at 324
Decision
Subsection 101(1) of the Act provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
I direct that, should no appeal against this decision be filed, registration 1049748 be removed from the Register in respect of all of the goods to which the registration relates one month from the date of this decision.
Costs
The Removal Applicant, having been successful in its application, is entitled to its costs as set out in the official scale.
Debrett G. Lyons
Hearing Officer
Trade Marks Hearings
9 June 2015

[2015] ATMO 49

9 June 2015

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