Jamie Andrew Sutherland v Frank Mazal

[2023] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by Jamie Andrew Sutherland to an application under section 92 of the Trade Marks Act 1995 (Cth) by Frank Mazal for removal of trade mark number 649924 (25) – ANARCHY (Figurative) – in the name of Jamie Andrew Sutherland

Delegate:

Nicholas Smith

Representation:

Opponent: Michael Buck IP

Applicant: Legalvision ILP Pty Ltd

Decision:

2023 ATMO 71

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 15 April 2021 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) by Frank Mazal (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

649924

Lodgement date

6 January 1995

Goods

Class 25: Articles of clothing, headgear, footwear

(‘Registered Goods’)

Owner

Jamie Andrew Sutherland (‘Opponent’)

Trade Mark

(‘Trade Mark’)

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  The Opponent has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal and a Statement of Grounds and Particulars (‘SGP’) on 15 July 2021.  The Applicant filed a Notice of Intention to Defend on 29 September 2021.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant chose not to file any evidence in answer.  This material will be discussed in more detail below.

   5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 21 March 2022, the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 17 February 2023.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 14 December 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 10 February 2023 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

   6.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed below:

   ·The application for removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   EIS

   • Declaration by Jamie Andrew Sutherland, the Opponent, dated 22 December 2021 (‘Sutherland declaration’) together with Exhibit JAS-1.

   7.  The entirety of the evidence filed by the Opponent, including information such as a claim that the Trade Mark had been used prior to 2018, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

   8.  I note that much of the information in the Sutherland declaration relates to the Opponent’s medical circumstances and as such I have only disclosed as little of this information as necessary in order to adequately explain my decision in this matter.

   The Relevant Provisions

   9. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

   92  Application for removal of trade mark from Register etc.

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

      (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

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

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

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

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

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

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

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

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

   (i)used the trade mark in Australia; or

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

   in relation to the goods and/or services to which the application relates.

   Note 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.

   10. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 15 March 2021 (‘relevant period’).

   11. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

   12.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden 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:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
   (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.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   13.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

   14.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   15. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[6] 

   [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [5] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [6] Act s 7(3).

   16.     The principles when a trade mark has been used were recently summarised in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]

   [7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

   Discussion

2. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[8] As the Trade Mark had been registered for more than five years as at the date of the application, I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[9]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).

   [8] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

   [9] s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

3. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

4. The Opponent’s evidence in this matter consists of a declaration by the Opponent himself.  The Sutherland declaration states that the Trade Mark had been used prior to the relevant period, but provides no documentary evidence of this.  The Sutherland declaration also states that the Opponent plans to resume use in the future but again there is no documentary evidence in support of this statement.  The Sutherland declaration provides evidence of the Opponent’s medical conditions that I will discuss below under the heading ‘Obstacles to use’.  It does not assert nor provide any evidence of use of the Trade Mark in the relevant period.  

5. I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period. 

   Obstacles to use

6. An opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘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 circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[10]

   [10] Woolly Bull Enterprises Pty Ltd v. Reynolds, [2001] FCA 261, [47] (Drummond J).

   22.     The Opponent gives evidence that the use of the Trade Mark in the relevant period was impacted by a number of personal medical conditions that are not necessary to summarise in any great detail.  The Opponent provides copies of medical records to support the claim that he has suffered these medical conditions.  

   23. The Opponent’s personal medical circumstances do not give rise to an obstacle to use under s 100(3)(c). In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J discussed s 100(3)(c), noting that unlike its predecessor under the Trade Marks Act 1955:

   It is now not necessary to show unusual or abnormal, as opposed to normal or usual, trading conditions (a difficult concept to comprehend and apply) before s 100(3)(c) can operate. Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark.[11]

   [11] Ibid [46].

   24.     Justice Drummond considered that the circumstances relied upon ‘must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner’.[12] Justice Drummond went on to say that s 100(3)(c) did not contemplate circumstances such as ‘financial impecuniosity,’ or ‘illness,’ or a ‘falling out between joint registered owners’, but only ‘circumstances of a trading nature’:

   [12] Ibid [47].

   If the parliament intended any circumstance external to the owner to be capable of providing an excuse for non-use, little purpose would be served by the words in parenthesis in s 100(3)(c), viz, “whether affecting traders generally or only the registered owner of the trade mark”. The presence of these words is some indication that the circumstances comprising an obstacle to use of the mark must not only arise externally to the registered owner, but must also be circumstances of a trading nature.[13]

   [13] Ibid [49].

   25.     The Opponent also argues that he has been prevented from using the Trade Mark by way of travel restrictions caused by the Covid-19 pandemic.  This claim was not particularised in the SGP and I shall not consider it other than noting that it is speculative and unsupported by any evidence that shows a causal link (i.e. but for the Covid-19 pandemic, the Opponent would have used the Trade Mark) between the pandemic and the failure to use the Trade Mark.

   26. In summary, neither the medical conditions of the Opponent (there being explicit binding precedent that illness of the Trade Mark owner is not a s 100(3)(c) obstacle) nor the Covid-19 pandemic (being unparticularised and speculative) amounts to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c). As there was no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.

   Registrar’s Discretion

   27.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off , the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[14]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   [14] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[15]

   [15] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

   28.     While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[16] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[17] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[18]

   [16] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

   [17] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [18] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   29.     In the present case, there is no documentary evidence that the Opponent has ever used the Trade Mark in Australia, nor does the Opponent provide any documentary evidence supporting an intention to use the Trade Mark in the future for the Registered Goods.  Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

   Decision

   30.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 649924 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   31. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   6 June 2023