Jason Davidson v Daisy Holding Company Pty Ltd

[2019] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Jason Davidson to application under section 92 of the Act by Daisy Holding Company Pty Ltd to remove trade mark number 1050131 (16, 29, 30, 32, 33, 41, 43) - Figjam (and Device) - in the name of Jason Davidson

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Michael Buck IP Applicant: Minter Ellison
Decision:	2019 ATMO 13 Trade Marks Act 1995 Section 96 opposition to removal application under section 92(4)(b); Opponent has shown use of the Trade Mark under his auspices during relevant period in relation to services in Class 43. Exercise of Registrar’s discretion considered. Trade Mark to be removed from the Register in respect of all goods and services for which it is registered in Classes 16, 29, 30, 32, 33, and 41. No costs award.

Background

1. In these proceedings under section 96 of the Trade Marks Act 1995 (‘the Act’) Daisy Holding Company Pty Limited (‘the Applicant’) applied on 29 September 2016 under the provisions of section 92(4)(b) of the Act for the removal from the Register of the trade mark appearing below for all of the goods and services for which it is registered:

   Registration No:         1050131

   Priority Date:             11 Apr 2005

   Goods/Services:         Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks

   Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

   Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

   Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

   Class 33: Alcoholic beverages (except beers)

   Class 41: Education; providing of training; entertainment; sporting and cultural activities

   Class 43: Services for providing food and drink

   Trade Mark:               

   (‘the Trade Mark’)

2. On 12 December 2016, Jason Davidson (‘Mr Davidson’ or ‘the Opponent’) filed a Notice of Intention to Oppose the removal application; it was followed, on 20 January 2017, by a Statement of Grounds and Particulars for which an extension of time was granted.

3. On 24 April 2017, the Applicant filed a Notice of Intention to Defend.

4. Thereafter, on 2 August 2017, the Opponent filed Evidence in Support of the Opposition being declarations of:

   Mr Davidson, made on 2 August 2017, Parts 1 and 2, with attachments;

   Mark Galbraith, made on 28 July 2017, with attachment;

   Angeline Peta Behan, Trade Marks Attorney, made on 2 August 2017, with attachments;

   Peter Michael Conway, made on 31 July 2017, with attachment;

   Christopher Anning, made on 27 May 2017;

   Daniel Symonds, made on 2 August 2017;

   Paul Goodland, made on 15 May 2017;

   Paul Goodland, made on 15 May 2017;

   Bernadette Doobie, made on 29 July 2017, with attachments;

   Michael Anthony Young, made on 31 July 2017, with attachment;

   Catherine Bracken, made on 29 July 2017, with attachment;

   Andrew McClure, made on 28 July 2017, with attachment;

   Gregory John Ploetz, made on 20 July 2017;

   Stephen Moore, made on 31 July 2017, with attachment;

   Paul Morris, made on 28 July 2017, with attachment; and

   Marlena Louise Bishop, made on 31 July 2017, with attachments.

5. The Applicant’s Evidence in Answer was filed on 8 August 2017 and comprises declarations by:

   Shelley Francine Stebbing, solicitor, made on 8 November 2017; and

   Peta Fielding, Director and Secretary of the Applicant, made on 8 November 2017, with attachments;

6. And the Opponent has filed Evidence in Reply being a declaration by:

   Angeline Peta Behan, made on 15 January 2018, with attachments.

7. Both parties have subsequently been advised of their right to be heard or to make written submissions; both parties have elected to file written submissions: the Opponent by his attorneys Michael Buck IP and the Applicant by its solicitors Minter Ellison.

8. Now in order that the Registrar may decide the matter it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

   Principles

9. As the application to remove the Trade Mark from the Register was filed on 29 September 2016, the Relevant Period for the purposes of section 92(4)(b) of the Act is the three year period ending on 29 August 2016.

10. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

    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.

11. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[1]

    [1] [2001] FCA 261; 107 FCR 166 at 172.

12. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (‘Nodoz’).[2]

    [2] [1962] RPC 1 at 7 per Wilberforce J.

13. The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [3]

    [3] [1977] RPC 131.

14. The relevant standard of proof that the Opponent bears is on the balance of probabilities.[4] In this regard, section 101 of the Act provides that if “the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …” [Stress added]

    [4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

15. In Blount Inc v Registrar of Trade Marks Branson J observed:[5]

    Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

    16.     It follows that unless the Opponent evidences “convincing proof” of use, or authorised use, of the Trade Mark “in the course of trade”:[6]

    1.Without alterations or additions which substantially affect its identity;[7]

    2.during the Relevant Period;

    3.in relation to the Goods or Services;

    to the satisfaction of the Registrar, the opposition to removal will not be established.

    [5] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

    [6] See section 17 of the Act: What is a trade mark?

    [7] Subsections 7(1) and 100(3)(b)(i) of the Act apply.

16. Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the impugned goods if satisfied it is reasonable to do so.

    The Evidence

    The Opponent

17. Much of the Evidence in Support may be regarded as being declarations in support of the leading declarations by Mr Davidson and Ms Behan and it is easiest to summarise these supporting declarations, and what they assert, in tabular form, as below:

Name	Relationship to Opponent	Assertion
Mark Galbraith	None	In August 2013 Mr Galbraith attended a function in Ipswich ‘catered by Figjam’ whose wait-staff wore an apron bearing the trade mark ‘Figjam & Co’.[8] Beer served at the venue was not identified by brand name and was served in clear glasses.
Peter Michael Conway	None	In November 2013 Mr Conway attended a dinner in Ipswich ‘catered by Figjam’ whose wait-staff wore an apron bearing the trade mark ‘Figjam & Co’ which was also printed on the menu. The beer served at the venue was not identified by brand name.
Stephen Moore	None	In October 2013 Mr Moore attended a function in Ipswich which was ‘catered by Figjam’ whose wait-staff wore an apron bearing the trade mark ‘Figjam & Co’ and served beer which was not identified by brand name.
Paul Goodland	Not stated	In November 2013 Mr Goodland attended a function in Ipswich which was catered by JDM Catering trading as Figjam – beer, wine and soft drinks were served.
Marlena Louise Bishop	Figjam staff member from 2008 to 2016	Ms Bishop served beverages in unmarked glasses, wore an apron bearing the trade mark ‘Figjam & Co’, and states that the menus bore the sign ‘Figjam & Co’.
Christopher Anning	Not stated	On 3 November 2013 Mr Anning attended a birthday party catered by JMD Catering trading as Figjam & Co where beer wine and soft drinks were served.
Catherine Bracken	None	Figjam & Co Catering catered Ms Bracken’s wedding in October 2013. Beer was served in bottles which were categorised according to strength rather than by brand name and served in unmarked glasses. Wait-staff at this and other functions attended by Ms Bracken wore aprons bearing the trade mark ‘Figjam & Co’.
Michael Anthony Young	None	Mr Young attended events in Ipswich catered by Figjam & Co Catering in 2013 and 2014 at which beverages were served by wait-staff in unmarked glasses.  The staff wore aprons bearing the trade mark ‘Figjam & Co’ as did the menus and various promotional banners and fliers.
Andrew McClure	None	Mr McClure attended a function in Ipswich in 2013 catered by Figjam & Co Catering.  The beer was identified by brand name and strength which was served in clear unmarked glasses.  The wait-staff wore aprons which bore the trade mark ‘Figjam & Co’.
Daniel Symonds	Employed by Figjam Café, Figjam Catering and Figjam & Co since 2005	When working as wait-staff Mr Symonds asserts that he wore an apron bearing the trade mark ‘Figjam & Co’; he states that, at the CMC Rocks Queensland Music Festival from 23 to 26 March 2016, Figjam & Co provided foods at the festival and he wore an embroidered polo shirt bearing the Trade Mark when setting up the serving area.  Mr Symonds attaches a picture of him wearing the polo shirt at the festival.[9]
Gregory John Ploetz	Not stated	Mr Ploetz has attended many functions ‘where Fig Jam has provided the catering service’ including the service of beers which he drank from a clear unmarked glass.  Mr Ploetz states that the name Fig Jam was embroidered on the shirts and/or aprons of the wait-staff and the trade mark of Fig Jam is always clearly identifiable at the functions he has attended.
Paul Morris	None	Mr Moore attended a function in late 2013 in Ipswich ‘catered by Figjam’ at which he ordered a mid-strength beer which was not identified by brand name.  The wait-staff wore an apron on which the trade mark ‘Figjam & Co’ appeared.
Bernadette Dobbie	A staff member of Figjam & Co Catering during the years 2013-2014 and January to August 2016	Ms Dobbie states that beers served by wait-staff were in unmarked glasses and that at functions people would request beers by reference to brand name or strength. The wait-staff wore aprons bearing the trade mark ‘Figjam & Co’ and Ms Dobbie includes photographs of card and food descriptions on which the trade mark ‘Figjam & Co’ appears.

[8] The trade mark referred to by these declarants, other than Mr Symonds, is within the MG-Photo below the table.

[9] This picture referred to is within the DS-Photo below this table.

(‘MG-Photo’)[10]
(‘Figjam & Co trade mark’)

(‘DS-Photo’)

[10] A clearer representation of the trade mark which appears on the polo shirt appears at para [36], below.

1. I note that the Opponent, Mr Davidson, makes a claim for confidentiality for the whole of his declaration and the attachments thereto.  Obviously, if I were to accede to this request, I would not be able to discuss any of his declaration and it could not contribute to Mr Davidson’s efforts to establish use of the Trade Mark during the Relevant Period.  However, seemingly, in filing his declaration he must have anticipated some discussion of it: I will therefore discuss his declaration as is normal in such proceedings albeit with a degree of circumspection about information which is usually regarded as being business-sensitive.

2. A general observation about Mr Davidson’s declaration is that much of the material attached to it is not dated and it is not of the probative weight that it would be if dates could be confidently ascribed to those materials.

3. Mr Davidson states that he adopted the name FIGJAM in approximately 2001 or 2002 because of both its connotations with food and its significance as an acronym which, over time, he has modified to ‘Food Is Great, Just Ask Me’.  The name FIGJAM was used by Mr Davidson in relation to a café in Ipswich and, when he sold that business in 2013, he retained the name for his catering business which he called FIGJAM & CO.  Mr Davidson states:

   The Trade Mark and the word FIGJAM from which it derives have at all times been used with my authority.

4. Mr Davidson attaches to his declaration pictures of a vehicle from the year 2005 which carries the Trade Mark, along with menus, gift certificates and fliers and other stationery that carry the Trade Mark, which I infer date from before the sale of the café.  Also relevantly exhibited to Mr Davidson’s declaration are:

   Pictures of a light truck dated 23 August 2010 which carry the Trade Mark;

   An internet advertisement bearing the ‘Figjam & Co’ trade mark from 2017;

   Undated staff photograph showing use of the ‘Figjam &Co’ trade mark on aprons;

   Undated photograph of shopfront which bears the ‘Figjam & Co’ trade mark and ‘ with the words ‘Catering, Food Preparation, Consultancy’ also appearing on the shopfront;

   A gift certificate bearing the ‘Figjam & Co’ trade mark for high tea for 10 people valid under 31 March 2016;

   An invoice dated 29 July 2016 which bears the ‘Figjam & Co’ trade mark;

   A certificate of excellence issued to ‘Figjam & Co’ by easyweddings.com.au in 2016;

   Amounts of money expended on advertising during the Relevant Period by Figjam Catering and Figjam & Co; and

   The approximate number of events catered during the Relevant Period by Figjam & Co.

5. Ms Behan attaches to her declaration the results of the Internet research of the websites figjamandco.com.au and figjamcateringcom.au.  She states:

   The dates on which the website was saved during the Relevant Period were:

   • 17 September 2013;

   • 19 October 2013;

   • 20 November 2013;

   • 14 January 2014;

   • 25 January 2014;

   • 16 May 2014;

   • 18 December 2014;

   • 26 February 2015;

   • 27 February 2015;

   • 29 September 2015;

   • 9 January 2016;

   • 16 January 2016;

   • 5 February 2016;

   • 27 February 2016;

   • 5 March 2016; and

   • 20 August 2016.

   My review of the website, as saved by the WayBack Machine on 20 November 2013 (http:l/web.archive.org!web/ 20131120015400/http:!/figjamcatering.com.au:BOI, shows that the Opponent was clearly using the Trade Mark during the Relevant Period.

   Exhibited hereto and marked APB-4 is a printout of the website, as saved by the WayBack Machine on 20 November 2013. I note that the Trade Mark features prominently on the website. I also note that it features on the polo shirt being worn by the Opponent in the "Service" section of the website.

   [Various other printouts]

   Exhibited hereto and marked APB-7 is a printout of the website, as saved by the WayBack Machine on 16 May 2014. I note that the Trade Mark features prominently on the website. I also note that it features on the polo shirt being worn by the Opponent in the "Service" section of the website.

6. However, these (and other) examples of the Wayback Machine pages attached to Ms Behan’s declaration are not in the usual Wayback Machine format in that they do not show the capture date at the top of the page and are, accordingly, not of the probative weight they would be if those dates were included.  These pages feature the Trade Mark used in the promotion of Figjam Catering’s catering service.

   The Applicant

7. Relevantly, Ms Fielding states that she is a director of Burleigh Brewing Company Pty Ltd and it wishes to become an authorised user of the trade mark FIGJAM which the Applicant seeks to register as below:

   Registration No:         1782682

   Priority Date:             12 Jul 2016

   Goods/Services:         Class 32: Alcohol free beer; Alcoholic beers; Ale; Beer; Beer wort; Beer-based cocktails; Black beer; Dark Beer; Cider (non-alcoholic); Essences for making beverages; Extracts of hops for making beer; Fruit beers; Fruit beverages; Ginger beer; Hop pellets for use in brewing; Lager; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Malt beer; Malt wort; Malt-containing beverages (beers); Non-alcoholic beers; Pilsner beer; Root beer; Shandy; Stout; Syrup for making beverages; Whey beverages; Bitter beer

   Trade Mark:               

8. Ms Stebbing’s declaration is in the nature of submission being a critique of the declarations of the Opponent in the Evidence in Support.

   Evidence in Reply

9. Relevant to my decision in this matter Ms Behan states in her second declaration:

   The Opponent has also exerted control over the application of the Trade Mark to labels.

   In this regard, I state that I have been instructed and verily believe same to be true that the Opponent had previously decided refer to sell [sic] wine (including sparkling wine) and beer under the Trade Mark.

   The beverages were to be sourced by Australian Trade Partners, who were to also were [sic] to apply the labels featuring the Trade Mark to the relevant bottles in preparation for distribution. The application of the labels featuring the Trade Mark were to only be applied to the bottles upon receipt of the Opponent's approval.

   Exhibited hereto and marked APB-5 is a copy of the Sparkling Cuvee label which features the Trade Mark.

   Exhibited hereto and marked APB-6 is a copy of the e-mail to which APB-5 was attached. I note that the Sparkling Cuvee label was the only wine label that Australian Trade Partners could find, but that they knew that beer labels were available, although they could not immediately locate the beer labels.

   Exhibited hereto and marked APB-7 is a copy of the beer label which features the Trade Mark.

   Exhibited hereto and marked APB-8 is a copy of the e-mail to which the label which was the subject of APB-7 was attached.

   I note that in the e-mails which are the subject of APB-6 and APB-8, the Opponent corresponds with "Rick". I take "Rick" to be "Rick Borland" who is described as being the team leader on the Australian Trade Partners website's "About Us" webpage.

   Exhibited hereto and marked APB-9 is a copy of the "About Us" webpage.

   I have been instructed and verily believe same to be true that the Opponent decided not to proceed providing wines and beers and informed Australian Trade Partners accordingly.

   Section 92(4)(b)

1. Section 92 of the Act relevantly 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.

2. I note, since this has been the subject of some debate in submissions by the parties, that the application for removal has been accepted by a delegate of the Registrar as having been made in accordance with the Trade Marks Regulations 1995.

3. Section 7 of the Act provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark 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.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)In this Act:

   use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

   (5)In this Act:

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

4. Section 17 of the Act provides:

   17What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:For sign see section 6.

5. And section 8 of the Act provides:

   8Definitions of authorised user and authorised use

   (1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

   (2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

   (3)If the owner of a trade mark exercises quality control over goods or services:

   (a)dealt with or provided in the course of trade by another person; and

   (b)in relation to which the trade mark is used;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (4)If:

   (a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

   (b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

6. In my consideration, the evidence, taken as a whole, establishes use of the Trade Mark by the Opponent, or under his control, in respect of services in Class 43 during the Relevant Period.  Although the evidence which establishes use of the Trade Mark in relation to the Class 43 services is subject to criticism by the Applicant, the Applicant appears to concede such use.  The question that remains to be decided is whether such use has occurred in the Relevant Period in respect of any other goods and services for which the Trade Mark is registered.

7. The Opponent has stressed in his evidence that the service of beer at various functions which was done with reference only to its strength, in glasses which did not carry any trade mark.  The declaration of Mr McClure suggests that this was not invariably so.  However, in my consideration, although the personnel serving the beer wore aprons which bore the ‘Figjam & Co’ trade mark (as in the MG-Photo), in these circumstances this constituted a use of that trade mark in relation to the service of the beer, rather than a use in relation to the beer as goods.  The same is true of any use that was made of the Trade Mark (as depicted on the DS-Photo polo shirt) during the Relevant Period; however, in my view, such use of the Trade Mark during the Relevant Period is not well established appearing, as it does, in an undated photograph of a person who is an employee of the Opponent, or one of the Opponent’s companies, who states he did not serve food or beverages whilst he was wearing it. 

8. Additionally, in my consideration, the use of the ‘Figjam & Co’ trade mark is not, in terms of subsection 7(1) of the Act, a use of the Trade Mark without additions or alterations which do not substantially affect its identity: Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[11] (‘Optical’) and Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[12] (‘Shell’).

   [11] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].

   [12] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 1B IPR 523; 35 ALJR 355 at [12].

9. In Optical Yates J said:

   Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival[13] at 391; Shell at 414.

   [13] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

10. And in Shell Windeyer J stated:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

11. The trade marks in question appear side by side below:

    39.     The strong graphic elements of both trade marks are presumably figs: the first being highly stylised, the second a more realistic rendering. This creates a significant visual difference between the trade marks.  Also, the particular rendering of the word ‘Figjam’ in the Trade Mark dictates that it presents differently than does the unadorned rendering of the plain words ‘FIGJAM & CO’.  Further, the plain expression ‘FIGJAM & CO’ is strongly suggestive of a corporate body whereas the Trade Mark is not.  A total impression of dissimilarity rather than of substantial identity thus emerges from the comparison of the above trade marks and it follows that the use of the one is not a use of the other.

12. For all of the above reasons such trade mark use does not, therefore, qualify as a use of the Trade Mark in relation to the Class 32 goods.

13. Similar observations to those above apply in relation to the use of the Trade Mark in relation to goods in Classes 29, 30 and 33.  What the evidence establishes is use of the Trade Mark on menus, a light truck, a website, and so forth, in relation to a catering service and the service of food and beverages rather than use of the Trade Mark in relation to any goods.

14. Attached to Mr Davidson’s declaration are letters from the principals of educational institutions who state that Mr Davidson has trained students at those institutions in various aspects of the hospitality trade.  However, it is not apparent from these letters that Mr Davidson was training those students in anything other than a personal capacity and there is no mention of the Trade Mark (but rather of ‘Figjam & Co’) in those letters.

15. Further, while the Opponent submits that a photograph attached to Mr Davidson’s declaration establishes that Mr Davidson wore a polo shirt bearing the Trade Mark during these classes, the polo shirt on which a trade mark is apparent is worn by an individual other than Mr Davidson.[14]  That individual’s polo shirt bears the ‘Figjam & Co’ trade mark and it seems more likely than not that Mr Davidson’s polo shirt also bore the ‘Figjam & Co’ trade mark.  This does not, as I have found above, constitute a use of the Trade Mark without additions or alterations which do not substantially affect its identity.  Further, the date on which the photograph was taken is not apparent.  The photograph does not, therefore, corroborate use of the Trade Mark in relation to Class 41 services during the Relevant Period.

    [14] While Mr Davidson does appear in this photograph, his polo shirt is obscured by another person.

16. The Opponent has not established use of the Trade Mark in relation to services in Class 41.

17. As far as Class 16 is concerned, the Opponent submits that “Class 16 is considered to be closely related to Class 41.  As a consequence, I consider that the Class 41 evidence of use should be sufficient to defeat the removal application as it applies to Class 16.”  I do not consider that such a view is well-founded as the suggested principle would here, hypothetically, maintain the registration in respect of, for example, the goods paintbrushes and typewriters which are goods unrelated to the hospitality trade training services performed by the Opponent.  Further, if the suggested principle were sound, the Opponent has not established use of the Trade Mark in relation to services in Class 41.

18. It follows from the above discussion that the Opponent has established his opposition only in relation to services in Class 43 and the Trade Mark should, subject to my consideration of the Registrar’s discretion, be removed from the Register for the other goods and services for which it is registered in Classes 16, 29, 30, 32, 33, and 41.

    Discretion

19. Section 101 of the Act relevantly provides:

    101Determination of opposed application—general

    […]

    (3)If satisfied that it is reasonable to do so, the Registrar or the court 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.

    (4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

    (a)similar goods or closely related services; or

    (b)similar services or closely related goods;

    to those to which the application relates.

    Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2:For registered owner see section 6.

20. In Pioneer Computers Australia Pty Ltd v Pioneer KK (‘Pioneer’) Bennett J observed:[15]

    [15] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].

    The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

    In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

    In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion :

    ◦there had been no abandonment of the trade mark;

    ◦the registered proprietors of the mark still had a residual reputation in the mark;

    ◦there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

    ◦the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ◦the registered proprietors were not aware of the applicant’s sales under the mark.

21. The Opponent submits:

    It is submitted that, even if the Registrar holds that the [Trade Mark] has not been used on all of the registered goods and services in the Relevant Period, the interests of the registered owner should also be accommodated where reasonable. In this light, it is requested that the Registrar consider the following factors which are supported by the Opponent’s evidence:

    • There was never any abandonment of the [Trade Mark] overall. The “FIG JAM & CO Trade Mark” continued to also be used in the Relevant Period;

    • The Opponent has also used their Registration No. 1050043 for FIG JAM EXPRESS (& Device) since 2005, which is essentially the same mark as the [Trade Mark], with the addition of the word EXPRESS;

    • The Opponent and related business entities are known as FIG JAM and have been for many years and they have a long standing reputation in this name;

    • The Opponent has demonstrated long term ongoing commitment to the FIGJAM branding for its business, since 2005;

    • The Opponent has demonstrated long term ongoing commitment to the [Trade Mark];

    • The Opponent’s near future plans to work with his son and daughter to further develop the range of goods and services provided under the [Trade Mark];

    • The Removal Applicant’s failure to demonstrate any intention to use their FIG JAM IPA mark in respect of the goods and services covered by the Opponent’s mark, apart from one type of beer.

    Further, it is submitted that, in the current age where boutique breweries are quite common, consumers knowing of the FIGJAM Mark in relation to the Opponent’s catering services, would readily assume that beer branded with the FIGJAM Mark would emanate from the Opponent. This is because the alcoholic beverages and catering services may be seen to be closely related goods and services.

22. As far as the Opponent’s future plans are concerned, there is no mention or corroboration in the evidence of what those plans might be and these are mentioned only in the Statement of Grounds and Particulars.  The weight of the evidence before the Registrar supports only the use of the Trade Mark in relation to the Class 43 services in a relatively localised area in Ipswich, Queensland, and similarly of the word ‘Figjam’ (as far as it occurs in trade marks that the Opponent has established he has used) only in relation to such services.  The Applicant’s intention to use its trade mark is inherent in the application and Ms Fielding has stated that Burleigh Brewing Company Pty Ltd made nine different beers at the date that her declaration was made.

23. The Opponent’s situation does not appear to be similar or analogous to any of those mentioned by Bennett J in Pioneer.

24. In the circumstances of this matter I do not consider that it is reasonable to exercise the Registrar’s discretion in relation to the Opponent’s goods in Classes 16, 29, 30, 32, 33, and 41.

    Decision

25. Section 101 of the Act relevantly 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.

26. The Opponent has established his opposition to removal in relation services in Class 43.

27. I therefore direct if no appeal is notified to the Registrar within the allowed period, that one month from the date of this decision the Trade Mark be removed from the Register for the following goods and services:

    Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks

    Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

    Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

    Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

    Class 33: Alcoholic beverages (except beers)

    Class 41: Education, providing of training; entertainment; sporting and cultural activities.

28. If the Registrar has been served with a notice of appeal before that time, I direct that the partial removal of the Trade Mark from the Register shall not occur until the appeal has been decided or discontinued and that the disposition of the registration should be in accordance with the Court’s order or direction.

    Costs

1. The Opponent sought his costs in this matter.  However, as both parties may be viewed as having had a modicum of success, I make no award of costs.

   Iain Campbell Thompson
   Hearing Officer
   Trade Marks Hearings
   1 February 2019