Joe Montalto v JD Sports Fashions plc

[2018] ATMO 185

TRADEMARKSACT 1995

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

Re:Oppositions by Joe Montalto to applications under section 92 of the Act by JD Sports Fashions plc to remove trade mark numbers 627379 (25) and 1179126 (18) - Pink Soda (Logos) - in the name of Joe Montalto

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Self-represented – written submissions Applicant: Pizzeys – written submissions

DECISION:

2018 ATMO 185

Trade MarksAct1995

Section 96 opposition to applications under sections 92(4)(a) and 92(4)(b); no use of 627 Trade Mark; non-use of 117 Trade Mark in relation to registered goods during and after Relevant Period; grounds for exercise of Registrar's discretion not established - opposition to removal of Trade Marks not established.

Background

1. In these matters JD Sports Fashions plc (‘the Applicant’) applied on 15 August 2016 under the provisions of subsections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade marks listed below for all of the goods for which they are registered:

Registration No:         627379
Priority Date:             15 Apr 1994

Goods:Class  25:  Clothing  including  ladieswear,  menswear,  childrenswear, underwear and socks, also including boots shoes and headgear

Trade Mark:               

Registration No:         1179126

Priority Date:             31 May 2007

Goods:Class 18: Airline travel bags; articles of luggage being bags; athletics bags; bags (envelopes, pouches) of leather, for packaging; bags for clothes; bags for toiletry kits; bags made of imitation leather; bags

Trade Mark:

made of leather; beach bags; belt bags; boston bags; camera bags (other than adapted or shaped); casual bags; changing bags; clutch bags; cosmetic bags (not fitted); duffel bags; evening bags; hat bags; jewellery bags (empty); leather bags; luggage bags; make-up bags; money bags; overnight bags; portable bags (luggage); pouches (bags); school bags; shoulder bags; sling bags; suit carriers being travelling bags; toiletry bags; tote bags; towelling bags; travel bags; travel bags made of plastic materials; travelling bags; umbrella bags; weekend bags; work bags

1. I will refer to the above trade marks collectively as ‘the Trade Marks’, 627379 as the ‘627 Trade Mark’ and 1179126 as the ‘117 Trade Mark’. I will also refer to the above goods as ‘the Impugned Goods’.

1. On 9 November 2016, after seeking and receiving an extension of time in which to do so, the owner of the Trade Marks, Joe Montalto, (‘the Opponent’) filed Notices of Intention to Oppose the removal of the Trade Marks.

1. Thereafter, these matters have followed the timetable hereunder:

5 December 2016 – Statements of Grounds and Particulars filed by Opponent;1

17 February 2017 – Notices of Intention to Defend filed by the Applicant;

23May 2017 – Evidence in Support filed by the Opponent – declaration of: the Opponent made on 23 May 2017 with attachments 1 – 23;

22August 2017 – Evidence in Answer filed by the Applicant - declarations of: Graham Robinson, made on 21 August 2017, together with Exhibits A & B Jennifer Mackie, made on 22 August 2017, together with Exhibits JAM-1 to JAM-3;

28October 2017 – Evidence in Reply filed by the Opponent – declaration of: the Opponent, made on 28 October 2017.

1. Subsequently the parties were informed of their right to be heard or to make written submissions – both parties have made written submissions. The Opponent filed written submissions  on  10  February  2018  and  the  Applicant  made  written  submissions  by  its

1  A number of documents are appended to the Statements of Grounds and Particulars are duplicates of those later filed as Evidence in Support.

attorneys, Pizzeys, filed on 12 February 2018. I note that the Opponent also filed correspondence on 19 February 2018 and some of the content of this might be regarded as being evidence; as such, this content was objected to by the Applicant on 10 April 2018.

1. Much of the matter within the Opponent’s further correspondence is a duplication of that which he had previously filed and I will take notice of this further correspondence from the Opponent only inasmuch as the duplications and submissions are concerned. Anything which is fresh material within this further correspondence I have excluded from my considerations for the same reasons as those discussed by the Registrar’s delegate in Fed

   Square Pty Ltd v Federation IP Pty Ltd.2 I observe that none of them, in any event, affect the

   outcome of these proceedings.

1. Now, in order that the Registrar can decide these matters, 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

1. As the applications for removal were filed on 15 August 2016 the relevant period for the purposes of section 92(4)(b) is the three year period ending on 15 July 2016 (‘the Relevant Period’). Further, it is convenient to discuss the issues only in terms of section 92(4)(b). As the Registrar’s delegate observed in Liliana Forza v Jaimex Nominees Pty Ltd:3

   I note also the tendency for the grounds under ss 92(4)(a) and (b) to merge once five years have passed since the filing of an application to register, given an owner’s intention as at the filing date may come to be reflected in the actual use made of the trade mark. Often an analysis of the ground under s 92(4)(a) is otiose in view of any actual use made of a trade mark …

1. Additionally, if the ground under section 92(4)(b) against the removal of the Trade Marks is not established by the Opponent, further consideration of the ground under section 92(4)(a) becomes otiose. I accordingly note that, in this instance, whatever the outcome is of the opposition to removal under section 92(4)(b) there is no requirement to consider the ground under section 92(4)(a).

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

2 [2015] ATMO 42 at [35]-[40].

3 [2016] ATMO 5 at [9].

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

1. In Structureco Inc v Starite Distributors Pty Ltd 4the Registrar’s delegate stated:

Under s100 the onus is clearly upon the opponent to establish that, on the day that the subject application for registration was filed, the owner did have an intention in good faith to use the trade mark, use(d) the mark in good faith during the s.92 period, or that circumstances existed that were an obstacle to that use. I must decide, as the Registrar's delegate, whether the opponent has met that onus sufficiently by clearly showing that a registered trade mark has been used in the course of trade, or that there existed circumstances which prevented use.”

1. 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.5

2. 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’).6

3. 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 (‘Trina’). 7  And, little

4 [2000] ATMO 31.

5 [2001] FCA 261; 107 FCR 166 at 172.
6 [1962] RPC 1 at 7 per Wilberforce J.

7 [1977] RPC 131.

weight is to be given to assertions of use which are not supported by documentary evidence

Great White Shark Enterprises inc. v Joose Apparel Pty Ltd.8

1. The relevant standard of proof that the Opponent bears is on the balance of probabilities.9 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]

2. In Blount Inc v Registrar of Trade Marks10 Branson J observed:

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.

1. It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Marks ‘in the course of trade’:11

   1.   without   alterations   or   additions   which   substantially   affect   their identity;12

   2.   during the Relevant Period;

   3.   in relation to the Impugned Goods;

   to the satisfaction of the Registrar, on the balance of probabilities, the oppositions to removal will not be established.

1. Even if the Trade Marks have not been used and the oppositions to removal have not been established, there remains a discretion under section 101 of the Act for the Registrar to allow the Trade Marks to remain on the Register in respect of the Impugned Goods if satisfied it is reasonable to do so. The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.

8 [1998] ATMO 8.

9 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
10 [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
11 See section 17 of the Act: What is a trade mark?

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

Evidence

1. The Opponent has not filed any evidence of use of the 627 Trade Mark and it accordingly remains to be decided under the heading ‘Discussion’, below, whether any use of the 117 Trade Mark that might have been made by the Opponent during the Relevant Period might also qualify as a use of the 627 Trade Mark in terms of sections 7(1) and 100(3)(b)(i) of the Act.

1. The Opponent asserts, in essence, that he used the 117 Trade Mark extensively up until the birth of his first child, then put commercial concerns on hold to an extent, and more recently has commenced trading again.

1. Due to the way in which the Opponent’s Evidence in Support is organised, it is easiest to describe, and comment on, the various materials within the Evidence in Support in tabular form as below:

Item No	Description	Relevance
1.	Screen Shot of “website pinksoda.com.au”	Screen shot taken on 29 November 2016 after Relevant Period – does not show use of the 117 Trade Mark during Relevant Period. Further, the Applicant’s evidence suggests that website was not updated between February 2011 and 21 August 2017.13 Goods mentioned are jewellery, bags and hats.
2.	Screenshot  of  “Pink  Soda  Orders  Admin Screen”	Screenshot taken on 29 November 2016 – after the Relevant Period and orders listed on the screen do not show the date on which they occurred. Does not establish use of 117 Trade Mark during the Relevant Period or the nature of the goods.
3.	Screenshot  of  “Pink  Soda  Orders  Admin Screen carrying 117 Trade Mark”	As per Item No 2.

13 The day that the declaration by Graham Robinson was made.

4.	Screen      Shot    of     “Pink    Soda     Order Confirmation Screen”	Screenshot taken on 29 November 2016 The year in which the orders were confirmed does not appear and is thus not attributable to use within the Relevant Period – the order number – 274 corresponds to that within 4B and the probable date – 17 November 2016 – is after the elapse of the Relevant Period. Does not show the nature of the goods.
4B.	Screenshot  of  “Pink  Soda  customer  order confirmation email”	Screenshot taken on 30 November 2016 Date of email is 17 November 2016 – after the Relevant Period – does not establish use during Relevant Period or nature of the goods
5.	Screenshot  of  “Pink  Soda  Admin/Website Customer Invoice”	Screenshot taken on 1 December 2016 Invoice is dated 18 August 2014 – within the Relevant Period. 117 Trade Mark appears on the invoice but it does not establish the nature of the goods
6.	Screenshot of “Pink Soda Orders Folder”	Screenshot taken on 29 November 2016 The years in which these sales occurred are not apparent on this screen and  it does not establish use of the 117 Trade Marks during the Relevant Period
7.	Screenshot of “Pink Soda 'Canadian Order' Query”	Screenshot taken on 30 November 2016 Email exchange does not show  full date(s) of when it occurred or the 117 Trade Mark and accordingly does not establish use during the Relevant Period Goods referred to are ‘hats’

8.	Screenshot      of     “Pink     Soda    "Customer Query/Praise" Stocktake Sale”	Screenshot taken on 30 November 2016 Email exchange does not show  full date(s) of when it occurred Does not establish use of the 117 Trade Mark during the Relevant Period or nature of the goods
9.	Screenshot of “Pink Soda Backend of Website "Hit Counter" by unique visitors plus customers & products”	Screenshot taken on 30 November 2016. Does not show dates when transactions were made or the nature of the goods – does not show use of the 117 Trade Mark during the Relevant Period.
10.	Screenshot      of     “Pink     Soda    Order     at Overstock Shop”	Order is dated 20 August 2014 – within the Relevant Period. Refers to ‘Supplier’ as ‘Pink Soda’ possible use of the 117 Trade Mark on (or in relation to) goods which are caps; (however, 117 Trade Mark is registered in relation to handbags, etc, in Class 18).
11.	Screenshot   of   “Overstock   Shop   August Report for Pink Soda Orders”	Report is from 1 August 2014 to 31 August 2014 ‘for Pink Soda’ Occurs during Relevant Period. Possible use of the 117 Trade Mark on (or in relation to) the goods which include caps and handbags
12.	Screenshot  of  “Pink  Soda  Stocktake  Sale Advert at Salethisweek”	Year does not appear in the date so cannot corroborate use of the 117 Trade Mark during Relevant Period

13.	Screenshot  of  “Pink  Soda  75%  Stocktake Sale Advert at Lets Shop”	Document properties suggests a date of July 2009 Date not otherwise specified on screenshot – does not establish use of the 117 Trade Mark during Relevant Period. Goods mentioned are Bags, Jewellery and Hats
14.	Screenshot   of   “Pink   Soda   Home   Page Advert at Lets Shop”	Document properties suggest that the advertisement appeared on 8 July 2009 Date not otherwise specified in the advertisement – does not establish use of the 117 Trade Mark during the Relevant Period.
15.	Screenshot   “Pink   Soda   Stocktake   Sale Advert at Missy Confidential”	Document properties suggest the advertisement appeared on 7 July 2009 Year not otherwise specified in the advertisement – does not establish use of the 117 Trade Mark during the Relevant Period.
16.	Screenshot  of  “Pink  Soda  Pre-Xmas  Sale Advert at Missy Confidential”	Document         properties           suggest advertisement appeared in November 2007 Year not otherwise specified in advertisement – it does not establish use of the 117 Trade Mark during the Relevant Period.

17.	Screen Shot of “Pink Soda 'Fashion Set' at Erayo - Polyester/Rayon Dress w/Embellishment, Raffia Brim Hat and Crown Silver Lurex Bag”	Document properties refer to ‘Babydollbliss’, another trade mark apparently used by the Opponent. Neither the date nor the 117 Trade Mark appears in this advertisement and it does not establish use of the 117 Trade Mark during the Relevant Period.
18.	Picture of celebrity wearing “our Pink Soda silk dress for the Victorian Spring Racing Carnival”	The date of the picture is not stated – nor does it establish when the dress was sold to the celebrity. The picture does not establish use of the 117 Trade Mark during the Relevant Period.
19.	Screenshot  of  “Pink  Soda  'Olive  Stitched Bucket Hat' at Polyvore”	Neither the date nor the 117 Trade Mark is apparent within this advertisement and it does not establish use of the 117 Trade Mark during the Relevant Period.
20.	Screenshot of “Pink Soda Multi Heart Cap Sleeve T-Shirt w/Gold Glitter Necklace on Front Cover of Fashion Journal”	Neither the date nor the 117 Trade Mark is apparent within this advertisement and it does not establish use of the 117 Trade Mark during the Relevant Period.

21.	Screenshot of “Pink Soda Polyester/Spandex Skinny Leg Pant”	Neither the date nor the 117 Trade Mark is apparent within this advertisement and it does not establish use of the 117 Trade Mark during the Relevant Period. I note that the similarity of this image to the image on the website suggests a date February 2011, before the Relevant Period.
22.	Screenshot of “Pink Soda Ivory Cotton Top”	Neither the date nor the 117 Trade Mark is apparent within this advertisement and it does not establish use of the 117 Trade Mark during the Relevant Period.
23.	Screenshot of “Pink Soda Promotional Giveaways (Pen & Sticker Note Pad w/Pink Soda Insignia)”	The date of this screenshot is not apparent and it does not establish use of the 117 Trade Mark during the Relevant Period in relation to the Impugned Goods.

1. In Evidence in Answer Graham Robinson states that he is the Managing Director of Bishop IP Investigations Limited of Worthing, United Kingdom. He states that his firm conducted investigations in July and August 2017 into the use of the Trade Marks. The executive summary of the report is:

   ·     [The Opponent] is or has been associated with several businesses including Pink Soda, Babydollbliss and Krome Industries, all involved in the fashion and jewellery business.

   ·     Although there is a website at no prices are available and it is not possible to order any items. It appears that the website has not been updated since February 2011. The payment security certificate expired on 23 December 2012.

   ·     The website also appears to have been inactive since at least 2013.

   ·     According to [the Opponent], all Pink Soda stock was sold off in 2012, although he claims to be considering a relaunch in six months’ time. The majority of products were jewellery products, plus hats and handbags. The products were branded as Pink Soda.

   ·     We have found no evidence to suggest that [the Opponent] has sold any products under the Pink Soda brand during the last three years.

2. Without discussing the details of Mr Robinson’s extensive research in any length, his conclusions are, in my view, accurately based on that research. However, the possibility remains that the Applicant might have used the 117 Trade Mark within the Relevant Period and that use might not have been uncovered by Mr Robinson.

1. Ms Mackie is the Applicant’s trade mark attorney. A part of Ms Mackie’s declaration is research into various dates – for example, the 7th of July. While noting that, for instance, the 7th of July of an unspecified year is the date that Item 15 in the above table appeared as an advertisement, the significance of this research is not immediately apparent.   Ms Mackie’s

   research also appears to establish that as at the date of her declaration, 22 August 2017, the Opponent had some 75 items listed under the category ‘hats’ at its website under the 117 Trade Mark albeit with the words ‘Price Unavailable’ appearing under those items.

1. In his Evidence in Reply the Opponent explains the words ‘Price Unavailable’ underneath items on the website pinksoda.com.au in the following terms:

Anyone may view the Pink Soda collections however wholesale prices are only available to registered businesses. Retailers registering for access to view our online wholesale pricelist, the sales department will first need to verify your business is a registered retailer/reseller; Australian customers are required to provide their Australian Business Number (ABN). Once this process has been completed the sales department will notify you by email, usually within 1-4 working days. The location of the customer’s business will also be taken in to account as to avoid a possible conflict with a competitor.

If your application is approved you may then use the same "email address and password" that you had inputted initially via the account application form to enable you to view our wholesale prices. The reason for the verification process is to protect the integrity of our business and our valued buyers by only allowing access to authorised retailers/resellers.

1. The above statement is, however, unsupported by corroborative evidence and the screenshots within the table, above, (with unverifiable dates and/or trade marks) supplied by the Opponent suggest that single items may, in fact, be ordered and supplied.

1. The Opponent states that although stock was sold off in 2012 he had unsold stock and this has been sold within the Relevant Period.

1. The Opponent includes much material ‘pasted’ into this declaration in Evidence in Reply. Much of it occurs in the table, above and is of the same probative weight – where new material does occur in this declaration it suffers from the same defects as the material that is listed in the table, namely that the material is either undated, dated before or after the relevant period and/or does not show use of the Trade Marks in relation to the Impugned Goods. A Google Adwords Summary, while occurring towards the end of the Relevant Period, does not mention the Trade Mark. Photographs of pop-up shops in shopping malls selling jewellery and sunglasses are not relevant as those goods are not included in the Impugned Goods. I add that the dates that those photos were taken are not apparent and the Trade Marks do not appear on the shops or on the items being sold. Similar observations apply to pictures of handbags and hats that the Applicant includes in his declaration. Order forms for Pink Soda apparel from a retailer called Cynthia Rhodes are dated after the Relevant Period but are in respect of clothing/headwear for which the 117 Trade Mark is not registered. Screenshots of other commercial documents, from after the Relevant Period and which do not carry the Trade Marks, are pasted into the Evidence in Reply without explanation of their relevance to these proceedings.

Section 92(4)(b)

1. Relevant to section 92(4)(b) the Act provides:

92  Application 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.

1. The application for removal has been made in accordance with the Act and the Registrar has not been informed by either party of an action involving the Trade Marks in a prescribed court.

1. I mentioned at paragraph [19], above, that it is to be decided whether use of the 117 Trade Mark may be regarded as being use of the 627 Trade Mark. In this regard subsection 100(2) of the Act relevantly provides:

(2)   For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before that period;

1. Subsection 7(1) of the Act similarly provides:

7  Use 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.

1. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2) Yates J observed: 14

14 [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].

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 at 391; Shell at 414.

1. The test is therefore that of ‘substantial identity’ referred to in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd by Windeyer J:15

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.

1. Hence, in order to decide whether the use of the 117 Trade Mark is to be accepted as use of the 627 Trade Mark it is necessary to compare those trade marks side by side and consider “the total impression of resemblance or dissimilarity that emerges from the comparison.”

2. There are, in my view, arguments for any finding that the above trade marks either are, or are not, substantially identical. Both trade marks might be argued to admit to a logical order of words ‘Pink Soda’. Although the 117 Trade Mark is rendered in the colour pink, there is no restriction as to colour entered against the registration and section 70 of the Act provides:

70  Colours in registered trade marks

(1)    A trade mark may be registered with limitations as to colour.

15 [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

(2)    The limitations may be in respect of the whole, or a part, of the trade mark.

(3)    To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

Note:       For limitations see section 6.

1. Both Trade Marks might also be argued to consist of the essential features ‘pink’ and ‘soda’.

1. On the other hand, the graphics in the Trade Marks are quite different and the pronounced circle within the 627 Trade Mark containing the word ‘pink’ is an essential feature that dictates a moment of reflection to arrive at a conclusion that the 627 Trade Mark is in fact comprised of the words ‘pink’ and ‘soda’ and that the logical order of these words is ‘pink soda’. In fact, on a side by side comparison, the 117 Trade Mark tends to tutor the mind in its interpretation of the 627 Trade Mark.

1. Keeping in mind that the question is not one of ‘identity’ but of ‘substantial identity’ and that the question is one of a ‘total impression of resemblance or dissimilarity’, I do not consider that the Trade Marks are ‘substantially identical’ although they are strongly similar.

1. Any use of the 117 Trade Mark made by the Opponent during the Relevant Period is not, therefore, a use of the 627 Trade Mark and I note now that, significantly, the 117 Trade Mark is registered in Class 18 but not in Class 25.

Use of the 627 Trade Mark

1. There is no corroborative evidence that the Opponent used the 627 Trade Mark during the Relevant Period or, indeed, at all.

1. The Opponent has not, therefore, established his opposition to the removal of the 627 Trade Mark.

Use of the 117 Trade Mark

1. The highest that the Opponent’s evidence comes to establishing use during the Relevant Period is at Items 10 and 11 in the table above. However, Item 10 refers to the sale of ‘hats’ for which the 117 Trade Mark is not registered.

1. Item 11 is problematical in that it is the sole piece of evidence that suggests that the 117 Trade Mark might have been used by, or under the auspices of, the Opponent during the

Relevant Period in relation to the Impugned Goods. However, in terms of Nodoz, above, it is not ‘overwhelmingly convincing proof’ of use of the 117 Trade Mark and it is from the internal files of the Opponent. Further, in terms of Trina, above, Item 11 is of a purely circumstantial nature.  The Applicant also submits in respect of Item 11:

The order does not have sufficient detail upon it to indicate what goods were passing between which parties and what trade marks, if any, were present on the items.

1. I agree. Accordingly, I find that the Opponent has not discharged the onus upon him to establish to the Registrar’s satisfaction that he used the 117 Trade Mark during the Relevant Period.

Conclusion

1. The Opponent’s evidence does not establish that he used the Trade Marks during the Relevant Period.

Discretion

1. Section 101 of the Act relevantly provides:

101  Determination 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.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennet J observed:16

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.

168.   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

16 [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].

that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

169.   In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [(‘Hermes’)] [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.

1. The circumstances that were present in Hermes are arguably present here: the Opponent asserts that he had use of the 117 Trade Mark, that use was (at least to a large extent) discontinued during the Relevant Period and/or not established to the Registrar’s satisfaction, and recommenced after the Relevant Period.

1. However, the Opponent’s evidence of this asserted chain of events is either circumstantial or inconclusive in that:

   ·     Much of the evidence is not ascribable to any particular date or trade mark;

   ·     Evidence which is said to show use of the Trade Marks in relation to the Impugned Goods after the Relevant Period does not show use of the Trade Marks and the goods (sunglasses and jewellery) are not included in the Impugned Good;

   ·     While handbags, for which the 117 Trade Mark is registered, do appear in advertisements, the use of any trade mark in relation to those goods is not apparent – nor are the dates on which those advertisements appeared;

   ·     The corroborated use that has been made by the Applicant of the 117 Trade Mark after the Relevant Period is in relation to clothing and/or headwear (for which that trade mark is not registered).

2. Under such circumstances I am not satisfied that it is reasonable to exercise the Registrar’s discretion in relation to the Trade Marks to allow them to remain registered.

Decision

1. Section 101 of the Act relevantly provides:

101  Determination 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.

1. The Opponent has not established his oppositions to the removal of the Trade Marks. I decide therefore that registrations 627379 and 1179126 should be removed from the Register after one month from the date of this decision. In the event of appeals from these decisions, the Trade Marks will not be removed from the Register until the appeals have been discontinued or dismissed, or in the event of orders or directions from the court, the registrations will be subject to those orders or directions.

Costs

1. The Applicant requested its costs in these matters. As the Applicant has been the successful party I award costs against the Opponent: these costs are to be apportioned between these matters in accordance with Latrobe Brewing Company v Simmons17 and Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd18 at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Thompson Hearing Officer

Trade Marks Hearings 8 November 2018

17 (1996) 34 IPR 346.

18 [2001] ATMO 78; (2001) 53 IPR 591.