Intencity Pty Ltd v Gavin James O'Mahoney

[1998] ATMO 28

TRADE MARKS ACT 1995

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

Re:      Application by Intencity Pty Ltd for removal of trade mark number 565476, intensity - registered in the name of Gavin  James O'Mahoney

Trade mark registration number 565476 is a simple word mark, INTENSITY.  Its registration dates from 18 October 1991 and it stands in the name of Gavin James O’Mahoney of Oxenford Queensland.  The goods specified in the trade mark registration are wetsuits and wetsuit booties in class 25; T-shirts.

On 25 October 1996, Intencity Pty Ltd, of Melbourne (hereafter Intencity), filed an application to remove trade mark 565476 from the Register.  The grounds for removal are that for the period of three years ending 25 September 1996, Mr O’Mahoney  had not used the trade mark in Australia, or used the trade mark in good faith in Australia, in relation to the goods to which the application relates.  

The removal application states Intencity is a person aggrieved. It was accompanied by a statutory declaration by Michael Joseph O’Donnell, an employee of Phillips Ormonde & Fitzpatrick. This is a Melbourne firm of patent and trade mark attorney which acts for Intencity.  Mr O’Donnell’s declaration  states he conducted an investigation on behalf of the applicant into the use of the trade mark and the investigation revealed no use of the trade mark, in Australia, by Mr O’Mahoney, during the three years from 25 September 1993 to 25 September 1996.

On 21 November 1996 the Registrar advertised the removal application in the Australian Official Journal of Trade Marks and the application was then, for three months,  open to opposition. Mr O’Mahoney did oppose.  He filed a notice of opposition on 14 January 1997.  His grounds of opposition are that:

1.The trade mark has been used by the original applicant (Waterski International Pty Ltd) and subsequently by the person opposing (assignee: registered owner) in Australia in respect of goods to which the application relates.

2.That use has been in good faith and includes use by the registered owner during the period of three (3) years ending one (1) month before the day on which the opposed application was filed.

Mr O’Mahoney’s solicitors, Richardson Williams of Sydney, duly served a copy of the notice of opposition on Phillips Ormonde & Fitzpatrick. 

Evidence

If a removal application is in accordance with the Act and Regulations, and where there is no opposition, section 97 states that the Registrar must remove that trade mark from the Register.  Where opposition is filed, regulations 5.7 to 5.15 set the times in which the opponent and the removal applicant may serve evidence on the other party.   The opponent, initially, is allowed three months to serve its evidence in support.  This time runs from the date it filed its notice of opposition. Mr O’Mahoney’s time for serving his evidence in support, ran from 14 January 1997 to 14 April 1997. He did not serve evidence in that time.  One month later, however, on 11 June 1997 he applied to have that time extended. A delegate of the Registrar, Senior Examiner Mr Don Nancarrow, wrote to Mr O’Mahoney explaining that his extension of time application suffered from formality deficiencies and inadequate grounds, that it was his intention to refuse the application, but that before he took that step, Mr O’Mahoney first had the right to request a hearing. Concurrently the removal applicant, Intencity, objected to Mr O’Mahoney’s extension application. 

A hearing was arranged to determine Mr O’Mahoney’s request for more time. It was conducted by another delegate, Hearing Officer Mr Ian Forno. Intencity was represented at the hearing by Mr Malcolm Bell of Phillips Ormonde & Fitzpatrick. Mr O’Mahoney relied on written representation. Mr Forno found that Mr O’Mahoney had not made out his case and he refused to grant the extension of time. In coming to this decision he considered the public interest, and the nature of the evidence that Mr O’Mahoney wished to have admitted.  Mr Forno says:

.. in the recent case of A.Goninan & Co Limited v The Commissioner of Patents and Anor (1997) AIPC 91-330, the court found that it was necessary for the Commissioner to consider the nature of the evidence an opponent sought to adduce and the significance of the evidence for the opposition proceedings. That was not to suggest that the evidence had to be scrutinised in the same way as would occur at a hearing on the merits but merely to make some sort of a determination as to its relevance to proceedings.

The evidence filed so far comprises a declaration by Mr O'Mahoney, dated 3 June 1997, which gives details of the alleged use of the mark by himself and Waterski International Pty Ltd, the original applicant for registration.  The declaration does not specify that the mark was in use on all of the goods for which it was registered, or mention the critical period under s.92, except to say that, "[s]ince registration of the Intensity TM, Waterski International and us are open to the public for trade.  Selling and marketing surf, ski and leisure commodities with the Intensity TM screenprinted or embroided to the products" (sic). There is no mention of exhibits or attachments to the declaration, although there were some other documents included with it. These comprise copies of invoices for ski suits and related goods from Waterski International Pty Ltd.  Nowhere does the word INTENSITY appear in this material.  There is also an invoice for artwork for delivery to "Intensity Wetsuits" at an address in Albion, Queensland.  These invoices do not, prima facie, show use of the trade mark on, or in connection with, the goods.  The last paragraph of the declaration says that, "[t]here are further customers documentation to call upon if required to give evidence that the Intensity TM logos are attached by screen print to the products of which are for sale to both the public and retailers."  This indicates that the process of gathering evidence may yet not be finished.  In his letter to the Office of 24 October 1997, Mr O'Mahoney says, "...you have sufficient information...for extension of time to be granted as well evidence from many customers in the way of Statutory Declarations.  Declaring a large scale use of the Intensity TM.  If required further evidence can always be submitted upon request."  These declarations, if they exist, do not appear to have been served on Intencity, or filed with the Office. Mr O'Mahoney has also filed copies of declarations dated 20 March 1997 (filed 16 May 1997) and 11 June 1997 which were apparently intended to show use of the trade mark.  The information with respect to what evidence Mr O'Mahoney intends to rely upon to show use is confusing to say the least.  Mr O'Mahoney … does not appear to have gathered any material to show use of his trade mark.  Without giving the evidence the same scrutiny as would need to be done to determine the substantive matter, I therefore conclude that the evidence he wishes to file and serve has little, if any, value.  Given all of this, it would seem that, even if the late extension was granted, nothing would turn on consideration of the evidence sought to be relied upon.

In consequence of this refusal for an extension of time, Mr O’Mahoney has not, within the time allowed, served or filed any evidence to support his opposition. 

Recent History

Mr Forno issued his decision on 6 November 1997.  Matters progressed and in January 1998, in accordance with the provisions of regulation 5.14(1)(b)(i), the removal applicant, Intencity, requested a hearing on the substantive issue. The hearing was scheduled for 16 April 1998. 

Then, on 27 March 1998 the Trade Marks Office received an affidavit sworn by Mr O’Mahoney together with three supporting statements. These came under cover of a letter in which Mr O’Mahoney sought to delay the hearing.  He said,  "there is current Federal Court action being taken therefore we wish you to delay this case because of medical reasons.  Depending [on] the out come of the Federal Court we are and will engage High Court proceedings." 

I notified Mr O’Mahoney that the hearing date would not be moved unless the fact of the Federal Court action was established and was shown to directly concern this trade mark removal. Alternatively, if both parties agreed that a delay was desirable, I would reconsider his deferment request. Mr O’Mahoney was also told that the evidence of his affidavit and three statement letters was not receivable evidence because his application for an extension had been refused and he was out of time.

On 14 April 1998 the Trade Marks Office received a copy of an application for an Order or Review filed by Mr O’Mahoney in the Federal Court - Queensland District Registry - seeking, amongst other things, an Order that the Registrar not proceed with the hearing on 16 April 1998.  This application was heard by Justice Spender on 15 April 1998.  His Honour did not Order that the Registrar not proceed with the hearing and therefore, after a brief delay to wait receipt of Court directions, I conducted the hearing on 21 April 1998. 

Intencity was again represented by Mr Malcolm Bell of Phillips Ormonde and Fitzpatrick.  Mr O’Mahoney was not represented.

Late evidence

Again, in line with the directives of A.Goninan & Co Limited v The Commissioner of Patents and Anor (1997) AIPC 91-330, it seems appropriate that I at least comment on the nature of the evidence which Mr O’Mahoney seeks to have admitted per his letter of 27 March 1998. In particular, I think that it may be useful if I comment on the overall relevance it would have if it were admitted. This material is Mr O’Mahoney's affidavit of 9 March 1998, and three statements addressed "to whom it may concern" from, respectively, a Mr Keith Young, a Mr Paul Cable and a Mr Shayne O'Mahoney.

For this evidence to be significant, it needs to establish that in the relevant period, that is 25 September 1993 to 25 September 1996, Mr O’Mahoney used the trade mark intensity on the goods specified in the trade mark registration - wetsuits and wetsuit booties and T-shirts.

First, then, Mr O’Mahoney's affidavit.  He asserts that over the years 1991 to 1997 he and the previous owner manufactured various items, including wetsuits and T-shirts, that the trade mark intensity was applied to these garments, and that they were distributed Australia wide.  He lists outlets in Newcastle and Tweed Heads, New South Wales;  Bulimba, Albion and Bli Bli, Queensland; Lonsdale, South Australia; and Echuca, Victoria; and asserts that relevant goods bearing the trade mark were sold through these agents from 1992 to 1997. There is no mention of quantity, either in gross, or specific to any one year. He also asserts that from 1992 to 1997 intensity price lists and trade terms were in circulation. He exhibits no examples of these. He provides no manufacturing records, no sales records, no distributorship agreements nor any material evidence of orders. There are no price lists or catalogues or advertise-ments. In short, there is no substantive evidence to support Mr O’Mahoney’s assertions. And there is no explanation as to why nothing of this kind was put forward. There is only Mr O’Mahoney’s assertions.  It requires more than mere assertion to establish use and consequently, I would hold this affidavit not capable of having any real bearing on the outcome of the removal application.

Second, there are the three statements.  Mr Young says that, since 1992, his business has manufactured and distributed "the famous intensity wetsuit as well an ongoing silk screen printer and distributor of intensity clothing wear" (sic).  The meaning of this statement is not clear. There is no supporting material evidence to substantiate or explain the statement. Mr Cable says he is  a "permanent distributor of products, with the intensity logo displayed on each product". This has been so since 1992. Mr Cable, likewise, does not support his assertions with any material facts.  The third statement is from Mr Shayne O'Mahoney.  He says he too is a permanent distributor and has sold goods bearing the trade mark intensity.  He does not say when these sales took place, nor does he provide any material evidence of those sales. None of these statements could bear great weight as they are not in declaratory form. Even if they were, however, the generality of the information they contain, and the total absence of any corroborative material, produce, in sum, only insignificant and unconvincing evidence. In my view these supporting statements are not capable of  showing that Mr O’Mahoney used the trade mark on the relevant goods in the relevant period. 

In sum, I do not think that the material that Mr O’Mahoney filed on 27 March 1998 is of any value. Had it been admitted, it would not have made any difference to the outcome of the removal application.

I turn then to decide the removal application on the basis of the removal application itself, on the notice of opposition and on Mr Bell's submissions made on behalf of Intencity in the course of the hearing.

Law

The provisions for removal are set down in Part 9 of the Trade Marks Act 1995.   The provisions governing a removal application, so far as they are relevant to the subject application, are:

92(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 .. in respect of which the trade mark .. 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

(4)  An application under (1) or (3) (non-use application) may be made on either or both of the following grounds and on no other grounds:

(a)       ...
(b)       that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)used the trade mark in Australia; or

(ii)used the trade mark in good faith in Australia;

in relation to the goods ... to which the application relates

The timing of removal applications is governed by section 93.

93.(1) Subject to subsection (2), an application for the removal of a trade mark from the Register may be made at any time after the filing date in respect of the application for the registration of the trade mark.

(2) An application on the ground referred to in paragraph 92(4)(b) may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.

The onus on the opponent is set down in section 100.  So far as it is relevant, the section is as follows:

100(1)  In any proceedings relating to an opposed application, it is for the opponent to rebut :

(a)
(b)  ...
(c)   any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used or been used in good faith, by its registered owner in relation to the relevant goods…

(2)     ...

(3)  For the purpose 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 … if

(a) the opponent has established that the trade mark ... was used in good faith by its registered owner in relation to those goods ... during the period; or
(b)  ...
(c)  the opponent has established that the trade mark was not used by its registered owner in relation to those goods … during the 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.

The requirements of the Registrar are set out in section 101

101(1)  Subject to subsection (3)…, if

(a)  the proceeding 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 … to which the application relates

(2)  ...

(3)  If satisfied that it is reasonable to do so, the Registrar … may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

Standing

The first issue is the question of whether or not the applicant is a person aggrieved.  The application document states that Intencity is aggrieved.  It says:

Being aggrieved by the registration of the above trade mark, application is made to the Registrar of Trade marks, under section 92 of the Trade Marks Act 1995, for the trade mark to be removed from the Registrar.

The scheme of Part 9 of the Act, removal of trade mark from register for non-use,  is that the burden lies with the registered owner. Unless there is opposition, then, so long as the removal application is in accordance with the regulations, and with the time provisions of section 93, the trade mark registration is removed forthwith. It is only on opposition that there is any provision for filing evidence. Then the provision is first, for the opponent to file evidence, not the applicant  There is no provision for the applicant to file evidence until after the time for evidence in support of the opposition closes.  Mr Bell submits that under this code while the removal applicant, in filing the removal application, must clearly indicate that it is a person aggrieved, it is not, at that point in the proceedings, required to do anything to substantiate the claim. Should the opponent challenge this standing, it is open to the applicant to rebut the challenge in its evidence in answer.

As Mr Bell rightly points out, the position under Part 9 of the Trade Marks Act 1995, is quite different from removal provisions as they existed under Part III of the Trade Marks Act 1955. Contrary to the Trade Marks Act 1955, Part 9 does not require, prima facie, that the removal applicant file any evidence in support of the removal action. The framework that now governs removal application sets up a simplified and streamlined procedures. This is confirmed by the Explanatory Memorandum which states at paragraph 74:

[Part 9] makes provision for a simplified and streamlined procedure for removing unused trade marks from the Register.  The onus is on the opponent (that is, the registered owner of the trade mark or some other relevant party) to demonstrate the required use or circumstances which have prevented use and which justify rejection of the application for removal.

Mr Bell is right.  There is neither provision nor requirement for a removal applicant to file evidence to support an unopposed removal application. I agree with him that in filing a removal application, the provisions of section 92(1) may be satisfied by an application document which clearly states that the applicant is a person aggrieved by the trade mark registration.  This is one of the simplifications achieved by the Trade Marks Act 1995.

The standing of Intencity to embark upon this removal application is clearly stated, and has not been called into question.  

The removal application

Subsection 92(2) per regulation 9.1 requires a removal application to be accompanied by a declaration which is made by, or on behalf of, the applicant.  It should  state that an inquiry into the use of the trade mark has been conducted by, or on behalf of, the applicant.  It must also set out the findings of the inquiry that support the grounds of the removal application.  To comply with this requirement, Intencity filed the O’Donnell declaration, mentioned at the beginning of my reasons.  It states that Mr O’Donnell conducted an investigation on behalf of the applicant, and that he has been advised of investigations conducted by the applicant.  These investigations, he declares,  revealed no use of the trade mark in Australia by the registered owner during the relevant three year period.

I find that the removal application is in accordance with both the Regulations and paragraph 92(2).   

The timing of the application

Under the provisions of section 93(2) a removal application based on section 92(4)(b) grounds may not be made until five years after the date on which the trade mark was filed. The subject trade mark was filed on 18­ October­ 1991.  Intencity’s removal application was filed five years and one week later - on 25‑October‑1996 - and meets the requirement of section 93(2).

Grounds for opposition

Mr O’Mahoney opposes on the ground that he, or his predecessor did use the trade mark intensity on wetsuits, wetsuit booties and T-shirts in the relevant three year period.  He states, in his notice of opposition, that the trade mark has been used by the original applicant (Waterski International Pty Ltd) and subsequently by Gavin James O’Mahoney, in Australia, for those goods, in good faith. Use, he says, includes use between 25 September 1993 and 25 September 1996.  There is, however, no evidence of this alleged use.

Consideration

Mr O’Mahoney has not discharged the onus required of him by section 100(1).  He served no evidence to rebut the charge of non-use within the statutory time set up under Parts 5 and 9 of the Regulations. He has, moreover, not been able to point to any credible evidence that would establish that use took place on the relevant goods in the relevant period. He has clearly failed to establish, as required by subsection 100(1), that he, or his predecessor, used this trade mark, in good faith, on any of the relevant goods, between 25 September 1993 and 25 September 1996.  

There are, however, the provisions of section 100(3)(c). This paragraph gives expression to the principle that where circumstances prevent use - either generally to the trade or specifically to the registered owner - the opponent  may  rely on those circumstances to rebut the allegation of non-use.  In the course of dealing with this matter, Mr O’Mahoney has at various times cited his health.  In particular, he filed a declaration which Mr Forno considered when dealing with the extension of time request.  This declaration, dated 18 July 1997,  is by Ian Robert Tannahill, a registered patent attorney of Pizzeys, patent and trade mark attorneys of Brisbane. Mr Tannahill gives an account of various problems which have confronted Mr O’Mahoney.  These include personal difficulties and various health problems generally of an undefined nature and of unspecified dates. Some problems (Mr Bell points out) are associated with his childhood.  Mr Bell submitted that this is material which cannot be allowed to activate the provisions of paragraph 100(3)(c). He submits that circumstances of this kind  only have relevance if they are directly responsible for non-use of the mark in the relevant period.  Mr O’Mahoney has not shown that any of the difficulties described in the Tannahill declaration had  direct bearing on his business activities between 25 September 1993 and 25 September 1996, or that they prevented use of the trade mark. Mr Bell reminded me that Mr Forno has criticised this material on the grounds of credibility.

I think that Mr Bell is right.  The general nature of this declaration does not establish circumstances that prevented use of the mark in the relevant three year period.  Furthermore, Mr O’Mahoney has maintained that the mark was in use, so I do not think that the provisions of section 100(3)(c) can assist him. 

I do not consider, then, that the provisions of paragraph 100(3)(c) can operate in favour of the opposition to remove this trade mark.

Decision

I have found

• that the removal application was properly made,

• that the registered owner has failed to rebut the allegation that the trade mark was not used within the relevant period, and

• that the provisions of section 100(3)(c) do not assist the opponent.

I find that the removal application has succeeded. Subject to any appeal, I direct that this trade mark is to be removed from the Register of Trade Marks.

Mr Bell sought costs.  I see no reason why costs should not follow the event, and I therefore award them to the removal applicant, Intencity.  The costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar, and will be in accordance with the items listed in Schedule 8.

Helen R. Hardie
Deputy Registrar

16 June 1998