John and Viki Murray v HUGO Boss Trade Mark Management GmbH & Co. KG

[2024] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by John and Viki Murray to applications under section 92 of the Trade Marks Act 1995 (Cth) by HUGO BOSS Trade Mark Management GmbH & Co. KG to remove trade mark number 982363 BOSS COCKY (classes 16 and 25) and trade mark number 1500539 BOSS COCKY JOHN MURRAY and Device (classes 1, 9, 16 and 25) both in the name of John and Viki Murray

Delegate:

Anne Makrigiorgos

Representation:

Opponent:  Martin Earley of Baxter Patent Attorneys Pty Ltd

Applicant: Megan Evetts of Counsel instructed by Corrs Chambers Westgarth.

Decision:

2024 ATMO 61

Trade Marks Act 1995 (Cth) – section 96 oppositions - s 92(4)(b) applications for full removal – no use as a trade mark established for either mark - discretion not exercised– trade marks to be removed.

Background

1. On 7 September 2022, HUGO BOSS Trade Mark Management GmbH & Co. KG (‘Applicant’) filed applications under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Applications’) for the complete removal of the following registered trade marks in the name of John and Viki Murray (‘Opponents’):

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Registration Numbers	Trade Marks	Goods and Classes	Filing Dates
982363	BOSS COCKY (‘Word Mark’)	Class 16: Paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, instructional and teaching material, paintings, prints artwork Class 25: Clothing, footwear and headgear, excluding belts (‘Word Mark Registered Goods’)	16 December 2003
1500539	(‘Device Mark’) (together ‘Trade Marks’)	Class 1: Paper (sensitised) Class 9: Articles of protective clothing (against accident or injury); protective work clothing (for protection against accident or injury) Class 16: Printed publications relating to the sale of clothing; art prints; fine art prints; graphic prints; photographic prints; prints; gift paper; gift wrapping paper; materials for use as labels (paper); paper articles of stationery; paper boxes for wrapping; paper postcards; boxes of cardboard or paper; cardboard; cardboard articles; coaster sets of cardboard; goods made from paper or cardboard (not included in other classes); boxes made of cardboard; corrugated cardboard; drink coasters of cardboard Class 25: Apparel (clothing, footwear, headgear); athletic clothing; children's clothing; jackets (clothing); men's clothing; ready-to-wear clothing; women's clothing; none of the aforementioned being belts (‘Device Mark Registered Goods’)	5 July 2012

1. On 16 September 2022, the Opponents filed Notices of Intention to Oppose removal of the Trade Marks and Statements of Grounds and Particulars (‘SGPs’). The Applicant filed Notices of Intention to Defend on 4 November 2022.

2. The Opponents filed Evidence in Support (‘EIS’) covering both Trade Marks on 15 and 17 February 2023. The Applicant did not file Evidence in Answer.

3. The parties were given the opportunity to be heard. An oral hearing was requested and heard by me as a delegate of the Registrar of Trade Marks on 20 February 2024 by video conference. Martin Earley of Baxter Patent Attorneys Pty Ltd appeared for the Opponents. Megan Evetts of Counsel instructed by Stephen Stern and Fabien Lalande of Corrs Chambers Westgarth appeared for the Applicant. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing. I have decided this matter based on the particulars set out in the SGPs, the EIS, and the written and oral submissions of the parties.

   Evidence

4. The following EIS was filed:

   ·Declaration of Viki Murray dated 10 February 2023 with Exhibits A, B1, B2, C1, C2, D1, D2, E1, E2, F1, F2, G to K, L1, L2, M to P, QA to QF and R to V (‘Murray Declaration’).

   ·Second Declaration of Viki Murray dated 10 February 2023 with Exhibits 1 A to D, 2 A and B and 3 (‘Second Murray Declaration’).

   Legal Framework

5. Part 9 of the Act deals with removal of trade marks from the Register for non-use.

6. In respect of this matter, s 92(4)(b) relevantly provides (notes omitted):

   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)  …

   (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.

7. 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 Trade Marks,[2] and I confirm that five years since filing the Trade Marks has in fact passed.

8. Under s 92(4)(b), the relevant period during which the Opponents must establish use of the Trade Marks is the three year period ending on 7 August 2022 (‘Relevant Period’).

   [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.

10.  The Opponents bear the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that they have used the Trade Marks in respect of any or all of the goods identified in the Removal Applications during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]

[3] Act s 100(1)(c).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.

[5] Act s 100(3)(c).

11.  In Blount Inc v Registrar of Trade Marks, 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). 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.[6]

[6] [1998] FCA 440 (citation omitted).

12.  It follows that unless the Opponents evidence convincing proof of use of the Trade Marks during the Relevant Period, in relation to the registered goods to the satisfaction of the Registrar, the oppositions to removal will not be established

13.  In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[8] 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’.[9] Little weight is to be given to assertions of use which are not supported by documentary evidence.[10]

[7] [2001] FCA 261, [16].

[8] Ibid [17].

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

[10] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Delegate Wilson).

14.  Under s 101, I must first decide whether there has been use of the Trade Marks by the Opponents in good faith on or in relation to the registered goods during the Relevant Period. If I am satisfied there has been such use, the oppositions will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the registered goods, and I am not satisfied there have been obstacles to use, I must then decide whether to exercise discretion to allow the Trade Marks to remain registered for any of the registered goods for which use during the Relevant Period has not been established. In other words, even if no use is established, the Registrar retains a discretion not to remove the Trade Marks from the Register if satisfied that it is reasonable to do so.[11]

[11] Act s 101(3).

Summary of EIS

15.  Murray claims that John Murray is the artist of a painting entitled ‘Boss Cocky’ painted in 1994 (‘Painting’) and provides an undated photograph of the Painting. Murray claims that the John Murray Art Gallery (‘Gallery’) has been operating since 1992.

16.  Both the Murray Declarations contain exhibits which are claimed to show use of the Trade Marks. The categories of exhibits are photographs, copies of invoices, screenshots, two videos and a licence agreement.

17.   In the photograph category, there are undated photographs of:

·the Painting reproduced on the following goods which are available for sale from the Gallery and the Gallery’s website at (‘Gallery’s Website’):

o   greeting cards.

o   canvas and mounted prints (signed or unsigned) (‘Prints’).

o   stubby holders.

·greeting cards, prints and stubby holder displays at the Gallery.

·an embroidered representation of part of the Painting sandwiched between the embroidered words Boss Cocky on caps and a display for the caps at the Gallery.

·singlets, hoodies and t shirts on display at the Gallery which feature on their front a reproduction of the Painting without the words Boss Cocky, which are claimed to be available for purchase from the Redbubble web site.

I note the following:

·     none of the photographs show an exact reproduction of the Device Mark on greeting cards, Prints or stubby holders.

·     beneath the reproduction of the Painting on greeting cards and Prints are the words Boss Cocky in double quotation marks.

·     the sign above the small mounted print display in the Gallery states, inter alia, “TITLED AND READY TO FRAME”.

·     the displays in the Gallery show other greeting cards, prints, stubby holders and caps which all feature reproductions of other paintings with different titles such as ‘Missus Cocky’, ‘Waiting for Dad’ ‘Elvis Emu’, ‘Are We There Yet’ and ‘The Ringer’, amongst others.

18.  In the invoice category, there are the following copies of dated invoices in the Relevant Period:

·     invoices to the Gallery for orders of Prints, stubby holders and caps. I note that the different prints which reproduce paintings are described on the invoices by the name of the relevant painting e.g. Boss Cocky, Missus Cocky, Are We There Yet etc, the different stubby holders are described as Boss Cocky, Missus Cocky and AWTY (which I assume is an abbreviation of Are We There Yet) and the different caps are described as Boss Cocky, Missus Cocky and Emu with Web.

·     invoices for sales of prints, stubby holders, caps and greeting cards from the Gallery or the Gallery’s Website. I note the product description of the prints and greeting cards on the invoices appear as a picture of the relevant painting and next to the painting the title of the painting e.g. Boss Cocky, Missus Cocky, The Rainbow Tribe etc and the stubby holders and caps as a photograph of the products and next to the photograph the name of the painting on the product such as Boss Cocky, Missus Cocky, A Long Neck & Six Stubbies etc. An example of stubby holders and greeting cards appear below:

·     an invoice to the Gallery for orders of greeting cards with no reference to either of the Trade Marks.

19.  In the screenshots category there are undated screenshots:

·of the John Murray Redbubble home page showing designs available for products on sale through Redbubble. I note that under the name John Murray on the screenshots are the words ‘view artist profile’ and ‘177 designs’ and there is a reproduction of the Painting with the words Boss Cocky underneath.

·claimed to be of the John Murray Redbubble page showing singlets, hoodies and t shirts available for sale through Redbubble. I note that the singlets, hoodies and t shirts feature on their front a reproduction of the Painting without the words Boss Cocky. I also note there is no evidence that these screenshots are from the John Murray Redbubble page.

·claimed to be from the John Murray Redbubble page showing a tote and drawstring bag, a zipper pouch, coasters and a scarf which all feature a reproduction of the entire Painting or a cropped portion of the Painting without the words Boss Cocky. I note there is no evidence that these screenshots are from the John Murray Redbubble page.

·from the Gallery’s Website showing a cap, stubby holder, canvas print and greeting card for sale. I note that the canvas print and greeting card display a cropped portion of the Painting and the words Boss Cocky above, the cap shows a photograph of the cap with the words Boss Cocky Cap above and “Boss Cocky” cap below and the stubby holder shows a picture of the stubby holder with the words Boss Cocky above. An example of a cap and canvas print appears below:

20.  The two videos of the Gallery space showing how the Gallery’s products are displayed are undated.

21.  The licence agreement is titled ‘Non-exclusive License Agreement for Words and Artwork Image of Tradmarks 1500539 and 982363’ and is between the Opponents and Tristan Petty. It grants Tristan Petty a licence to use the words Boss Cocky and a reproduction of the Painting for clothing including workwear.[12] I note there is no evidence of any manufacture or sale of clothing by Tristan Petty.

Discussion and Reasons

[12] Second Murray Declaration Exhibit 3.

Preliminary Matter

22.  The Opponents’ written submissions included an additional document. I note that the additional document has not been filed in accordance with the timeframe set out in the Regulations for filing evidence, nor is it provided in the form of a declaration with a person swearing to the authenticity of the document. Neither the Opponents’ written nor oral submissions address any basis as to why I should take this additional document into account.

23.  Notwithstanding the lateness of the filing of this evidence and the improper manner in which it was filed, in certain circumstances it may be appropriate for a delegate to take into account material that is filed out of time. As the delegate, I may do so as I am not bound by the rules of evidence but may be informed on any matter in a way that I reasonably believe to be appropriate (reg 21.15(4)) and/or may take into account information available to me that is relevant subject to the parties having been provided with this information and having a reasonable opportunity (reg 21.19). The application of these provisions is discretionary, and a party cannot compel the Registrar or a delegate in this regard.

24.  As the Opponents have not addressed why the out of time additional document should be considered, I am not satisfied that any case has been made out, let alone a compelling case, and I decline to consider the unfiled evidence. Further, I note that the additional document itself, had it been admitted, would have had no impact on my ultimate decision in this matter.

Use as a Trade Mark During the Relevant Period

25.  The Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponents to provide clearly dated evidence showing use of the Trade Marks upon, or in physical or other relation to, the goods for which they are registered within that period in order to rebut the allegations of non-use. Undated examples of use carry little, if any, weight in support of a claim that the Trade Marks were used within the Relevant Period.

26.  The ‘use’ in good faith required to be demonstrated by the Opponents is ‘use as a trade mark’. Section 17 defines a trade mark as ‘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’. Therefore, use as a trade mark is use of the sign as a badge of origin.[13]

[13] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

27.  In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd; the High Court said:

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.[14]

[14] [2023] HCA 8, [24] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

28.  In relation to determining whether or not there is use as a trade mark, the court said in Woolworths Ltd v BP plc (No 2):

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin.[15]

[15] (2006) 154 FCR 97, [77] (Heerey, Allsop and Young JJ) (citations omitted).

29.  In Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH[16] Hill J said:

In determining whether the mark is a badge of origin, as Kitto J said in Shell at 422 (and as the case itself illustrates) context will be all important. That context includes a consideration of the way in which the word is displayed in relation to the goods or in advertisements of which complaint is made: see Mars GB Ltd v Cadbury Ltd per Whitford J and Johnson & Johnson at 347 per Gummow J.

[16] [2001] FCA 1874, [22] (citations omitted).

30.  The use of a mark may fulfil more than one purpose. Thus, a trade mark may contain descriptive elements but still be a ‘badge of origin’.[17] It all depends on context.

[17] Ibid [60].

31.  It is clear that in assessing whether use is as a trade mark, it is necessary to examine the purpose and nature of the use in its context. This includes factors such as the positioning of the sign, the type of font used, the size of the words or letters, and the colours which are used, as well as how the sign is applied. Prominence is a factor that suggests trade mark use.[18]

[18] State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137, [964] (Beach J) (‘State Street’)

32.  The assessment of the purpose and nature of the use of the sign is objective, and it is by reference to what a member of the public could be expected to understand by its use. In determining the nature and purpose of a trade mark, the court must ask what a person looking at the label would see and take from it.[19]

[19] Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390 (Allsop J).

33.  The Opponents’ SGPs simply claim that the Opponents are still using the Trade Marks.

34.  The Opponents submit that they have genuinely used the Trade Marks as commercial identifiers in the Relevant Period.

35.  The Opponents also submit that even if non use is established, the Registrar’s discretion should be exercised in the Opponents’ favour to retain the Trade Marks for all the registered goods. On this point, the Applicant objects to the Opponents raising the issue of discretion as the Opponents did not plead that the discretion be exercised in its SGPs and discretion has only been raised in the Opponents’ written submissions. The Opponents in their oral submissions state that the Opponents did not need to plead the exercise of the Registrar’s discretion for the Registrar to decide whether to exercise discretion under s 101(1). I agree with the Opponents. Regardless of the lack of reference in the SGPs to the exercise of discretion, as the Registrar’s delegate, I can and will consider the question of discretion under s 101(1).

36.  The Applicant submits that:

·     none of the evidence demonstrates use of the Trade Marks as a trade mark, namely as a badge of origin. The Painting is used in a decorative manner and the words ‘Boss Cocky’ as a title of the Painting, relying on State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2)(‘State Street’)[20] and State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd.[21]

·     there is no evidence that the Device Mark has been used at all.

·     if use as a trade mark is established, the evidence only extends to canvas prints (signed or unsigned), shirts, hoodies, tote bags, draw string bags, pouches, coasters, scarves, greeting cards, stubby holders and caps.

·     in respect of caps, there is no use of the Device Mark with additions or alterations that do not substantially affect its identity.

·     the Registrar’s discretion should not be exercised in the Opponents’ favour to retain the Trade Marks for any of the registered goods.

[20] State Street (n 17).

[21] [2022] FCAFC 57 (Jagot, Burley and Rofe JJ).

37.  There is no dispute that “Boss Cocky” is the title of the Painting. The title “Boss Cocky” is used to identify and distinguish John Murray’s Painting from other paintings whether they be his paintings or paintings of third parties. The title was chosen to describe a ‘Boss Cocky’, which according to Murray, is Australian bush terminology for the property owner of rural agricultural holding.[22] The Painting is obviously John Murray’s interpretation of a ‘Boss Cocky’ in cockatoo form.

[22] Murray Declaration Exhibit A. I am aware that ‘Boss Cocky’ is defined as both a farmer who employs labour and a boss in the Macquarie Dictionary Online.

38.  There is also no dispute that the Painting is reproduced by the Opponents in whole or part on prints, shirts, hoodies, tote bags, draw string bags, pouches, coasters, scarves, greeting cards, stubby holders and caps (‘Used Goods’).

39.  The Opponents’ video footage evidence[23] shows that the Gallery displays prints of many different paintings which are also reproduced in part or whole on greeting cards and stubby holders. The Opponents’ evidence also shows that these prints, greeting cards and stubby holders also feature other paintings with different titles such as ‘Missus Cocky’, ‘Elvis Emu’, ‘Waiting for Dad’ and ‘The Ringer’.[24]

[23] Second Murray Declaration Exhibits 2A and 2B.

[24] First Murray Declaration Exhibits C2, D2 and F2.

40.  At this stage, I point out that if the Opponents have indeed used the Trade Marks as a trade mark, the evidence only shows use in the Relevant Period for Prints, stubby holders, caps and greeting cards (‘Subset Goods’). Further, in respect of the Device Mark, I agree with the Applicant that the evidence does not show use of the Device Mark as registered on any goods. Therefore, if there has been use as a trade mark of the Device Mark, consideration must then be given as to whether the use evidenced by the Opponents is use of the Device Mark with additions or alterations that do not substantially affect its identity.

41.   I agree with the Applicant that the reproduction of the Painting in whole or part by the Opponents on the Used Goods is for decorative purposes. This is what a member of the public would be expected to understand by its use. The reproduction of the Painting on the Used Goods would not be regarded by purchasers as use as a trade mark and therefore as indicating a connection between the Used Goods and their origin.

42.  The Device Mark however is more than just a reproduction of the Painting as it also contains the words ‘Boss Cocky’ at the top of the reproduction (‘Combination’). The Opponents’ evidence only shows use of the Combination in the Relevant Period on the Subset Goods. In respect of the Subset Goods, the use on caps will be discussed separately below. Of the remaining Subset Goods, the use appears in the Opponents’ evidence as follows:

(greeting cards and Prints) (stubby holders)

43.  Is the Combination used as a trade mark on the Subset Goods? In my opinion, the evidence of use of the Combination in the Relevant Period on the Subset Goods is not sufficient to demonstrate that the use of the Combination would be apparent to the public as a trade mark. I believe the Combination is not used as a trade mark but rather as nothing more than a reproduction of the Painting with an identification of the reproduction alongside or beneath, namely its title.

44.  What of the use of the Word Mark, which is also the title of the Painting? Are the words Boss Cocky used as a trade mark? In my opinion, the evidence of use of the words Boss Cocky in the Relevant Period on the Subset Goods is not sufficient to demonstrate that the use of the words Boss Cocky would be apparent to the public as a trade mark. I believe the words Boss Cocky are not used as a trade mark but rather as the title of the Painting and reproductions of the Painting. As in State Street,[25] the Opponents have not used the words Boss Cocky as a badge of origin at all in relation to any goods, let alone the goods as registered. Rather, the words Boss Cocky were used as the title of the Painting. As Beach J said, “Indeed, there is no other way to properly describe the work.”[26]

[25] State Street (n 17).

[26] Ibid [991].

45.  The question is what purpose is conveyed by the Opponents’ use of the words Boss Cocky and the Combination in the context in which they were used. In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited,[27] Kitto J asks whether a trade mark purpose “would have appeared to the television viewer”. In Wrigley’s (Australasia) Limited v Life Savers (Australasia) Limited,[28] Nicholas J tested an alleged infringement of a trade mark by what a “member of the public could be expected” to understand.

[27] (1963) 109 CLR 407, 425.

[28] (1936) 37 S.R. (N.S.W.) 9, 16.

46.  I find that the purpose and nature of the use in its context including the way in which the words Boss Cocky and the Combination are displayed in relation to the Used Goods and Subset Goods, namely the positioning of the words, the reproduction of the Painting in a decorative manner, the use of ‘Titled and Ready to Frame’, using the words Boss Cocky in inverted commas and the use of the words Boss Cocky in an environment where other words are used for other paintings, all support a conclusion that the words Boss Cocky are used as the title of the Painting and the Combination as a reproduction of the Painting with its title and nothing more. The use of the Trade Marks only fulfils this one purpose. The Word Mark and the Combination are not used as a trade mark and certainly not to indicate a connection between the Used Goods or the Subset Goods and their origin. The Word Mark and the Combination do not have the purpose of distinguishing the Opponent’s Used Goods or Subset Goods from the same or similar goods of other traders.

47.  I now turn to consider whether there has been use of one or both Trade Marks in respect of caps, which are in a slightly different category to the other Subset Goods as the caps feature an embroidered representation of part of the Painting sandwiched between the embroidered words Boss Cocky and the letters TM (‘Composite Design’). A representation of the cap appears below:[29]

A photograph of the cap display appears below:[30]

[29] Murray Declaration Exhibit E1.

[30] Murray Declaration Exhibit E2.

48.  The question is whether the Composite Design used in this way is use of the Word Mark and/or Device Mark. To put it another way, does the Composite Design indicate trade origin of the caps rather than (or at least as well as) conveying the name of the representation of part of the Painting, that is, the cockatoo, to the reader. In my opinion, the Composite Design is not an indication of the provenance of the caps. This use is not sufficient to demonstrate that the use of the Composite Design would be apparent to the public as a trade mark. Further adding the letters TM, which I assume are to signify that the cocky device or the Composite Design is a trade mark, does not magically turn something that is not a trade mark into a trade mark.

49.  I believe the purpose and nature of the use of the Composite Design in its context including the way in which the words Boss and Cocky are positioned on either side of the embroidered representation of part of the Painting, the overall decorative aspect of the Composite Design and the use of the Composite Design in an environment where other words and designs are used, for example, Missus Cocky with a representation of a cockatoo, all support a conclusion that the Composite Design is not used as a trade mark. The Composite Design does not have the purpose of distinguishing the Opponents’ caps from the caps of other traders.

50. I now turn to consider the licence agreement between the Opponents and Tristan Petty. The Opponents’ submit that the Opponents’ control of use of the Trade Marks in the licence agreement is the personal interaction the Opponents have with Tristan Petty. Firstly, evidence of a licence agreement without more is not evidence of use of a trade mark,[31] and that is what we have here. Secondly, as previously noted, there is no evidence of any manufacture or sale of clothing by Tristan Petty. Thirdly, there is no evidence that the Opponents have exerted demonstrative and substantiative control over Tristan Petty’s use of the Trade Marks. Lastly, even if the personal interaction of the Opponents with Tristan Petty was considered control, there is no supporting evidence of what form this “control’ took and how it relates to the provisions of the licence agreement governing the Opponents and Tristan Petty. Therefore, the licence agreement does not support use of the Trade Marks.

Obstacles to Use

[31] Chiotelis v TAP Worldwide LLC [2014] ATMO 4 (Hearing Officer Kirov).

51.  For the sake of completeness, I note the Opponents have not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Marks for any of the registered goods of either of the Trade Marks. I accordingly find no case under s 100(3)(c) has been established.

52.  In conclusion, the Opponents have not satisfied me that the Trade Marks have been used as trade marks in the Relevant Period in respect of any of the registered goods of either of the Trade Marks.

53.  I will now consider whether to exercise my discretion to allow the Trade Marks to remain on the register.

Discretion

54.  The question to be asked is whether it is reasonable not to remove the Trade Marks, even though the Opponents have not established use of the Trade Marks as trade marks during the Relevant Period in respect of any goods. I must be positively satisfied that it is reasonable that the Trade Marks should not be removed.

55.  The discretion provided by this section is very broad. In PDP Capital Pty Ltd vGrasshopper Ventures Pty Ltd,[32] the Court made the following observations regarding the discretion under s 101(3):

[32] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

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.[33]

[33] Ibid [153] (emphasis altered) (citations omitted).

56.  The discretion factors broadly fall under 3 headings:

·the interests of the owner of the trade mark;

·the interests of the applicant for removal; and

·the public interest.[34]

[34] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33] (Hearing Officer Thompson).

57.  The Opponent argues in favour of the exercise of the discretion on the basis that:

·the Trade Marks have been used for over 20 years;

·the Used Goods are similar to the remaining registered goods; and

·allowing the Trade Marks to remain on the register will not affect the Applicant’s business.

58.  The Applicant argues against the exercise of the discretion on the basis that:

·the Trade Marks have not been used as trade marks;

·the Opponents have not provided evidence of any reputation in the Trade Marks and if there is any reputation, it is in the Painting and not the Trade Marks; and

·the Opponents will not suffer any detriment if the Trade Marks are removed.

59.  On the question of the public interest, there is a public interest in maintaining the integrity (or ‘purity’) of the register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the register, the Court said:

[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[35]

[35] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

60.  While the ‘purity’ of the register is a major aspect of the public interest, another major aspect is the minimisation of the likelihood for the public to be deceived or confused as to the trade source of the goods bearing a trade mark.

61.  There is an initial question here as to whether the discretion even applies where the use of the Trade Marks has been held not to be use as a trade mark.

62.  The decision of the Full Court of the Federal Court in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (‘RB’)[36] discussed the public interest in avoiding confusion amongst consumers in the exercise of the discretion under s 101(3). Briefly, the registered trade mark held not to have been used was (‘Red Powerball’) which was only used as part of the registered trade mark  (‘Finish Logo’). Both the primary judge and the Full Court agreed that there was no separate use of the Red Powerball. The primary judge declined to exercise her discretion not to remove the Red Powerball registration on the grounds, inter alia, that the Appellant’s appeal to the Court to exercise its discretion to maintain the Red Powerball on the register is predicated on the product depictions constituting use as a trade mark and the removal of the Red Powerball would not give rise to any risk of deception or confusion as the reputation and goodwill of the FINISH trade mark lay in the Finish Logo and the FINISH trade mark, and not in the product depictions.

[36] [2024] FCAFC 10 (Nicholas, Burley and Hespe JJ).

63.  The Full Court held that the primary judge had erred by failing to take account of the relevance to the discretion of non-trade mark use that nonetheless engendered an association in the minds of consumers between the Red Powerball and products sold under the FINISH brand. The Court said:

Leaving that to one side, her Honour’s observation does not account for the substance of the position being put by the appellants, which was that even if the court found that there had been no independent trade mark use of the 311 mark, nonetheless there was a sufficient association between that mark and consumers such that permitting another trader to use the 311 mark would be likely to cause confusion.[37]

[37] Ibid [128].

64.  In particular, the primary judge erred by not taking into account the finding that the Appellant may have a reputation in the Red Powerball, as it is the one constant on the FINISH capsule packaging aside from the Finish Logo, when considering the exercise of the discretion. The Court stated:

…A significant aspect of the exercise of discretion under s 101(3) is the public interest in avoiding confusion amongst consumers. Even though the use of the 311 mark was not as a separate trade mark, its use in the context of the FINISH POWERBALL Logo was part of use of the composite mark. It is a feature of that mark that is likely to have assisted the consumer to draw a connection between FINISH goods and those of other traders. The primary judge found that the red Powerball simpliciter would be recognised by consumers as being connected with the FINISH brand. A corollary of that finding is that consumers may well be confused if they see a red Powerball as depicted in the 311 mark if it is used by other traders.

This important point, when added to the evidence that the packaging depicted has been used for a considerable time, during and after the non-use period, and the self-evident intention of the appellants to continue to use it in the future, persuades us that in re-exercising the discretion we would determine that the 311 mark ought not to be removed from the register.[38]

[38] Ibid [131] and [132].

65.  Here, while I have decided that the Opponents have not used the Trade Marks as trade marks, unlike the Appellant in RB,[39] the Opponents have not provided any evidence that the Opponents have a significant reputation in the Word Mark or the Device Mark to support a conclusion that there is a sufficient association between the Word Mark and/or the Device Mark and consumers such that permitting another trader to use either mark would be likely to cause confusion. The use may well have been for 20 years, before, after and during the Relevant Period, but nonetheless, the evidence is not of a calibre sufficient to persuade me to exercise my discretion to allow the Trade Marks to remain on the Register. If the Trade Marks are removed, I am not satisfied that this would give rise to any risk of deception or confusion.

[39] Ibid.

66.  The Opponents have also not adduced any evidence of any intention to commence using either of the Trade Marks as trade marks, which is also a relevant factor in the exercise of my discretion. In Austin, Nichols & Co Inc v Lodestar Anstalt, the court held that:

…Section 92, however, is concerned with the grounds upon which an application for removal for non-use may be made. The circumstances that are relevant to the exercise of the discretion are necessarily different. The intentions of the owner may be irrelevant to whether non-use during the statutory non-use period can be proved. But that does not make them irrelevant to whether the trade mark should remain on the Register, despite that ground being made out. The appellants concede that if the owner had no intention to use the trade mark, that would be relevant. If it did have an intention and had not abandoned it, we do not see why those circumstances would be irrelevant.[40]

[40] [2012] FCAFC 8, [43] (Jacobson, Yates and Katzmann JJ).

67.  I note that were I remove the Trade Marks, the Opponents would still be able to use the Trade Marks in the same manner in which the evidence shows use. I am therefore satisfied that removing the Trade Marks will not affect the Opponents’ business or have an impact on the Opponents’ ability to continue to use the Trade Marks.

68.  I have already indicated above that I am not satisfied that the removal of the Trade Marks would result in consumer confusion or practically impact on the interests of the Opponents in any way. Accordingly, given the importance of the integrity of the register, I do not consider it appropriate to exercise my discretion in favour of the Opponents not to remove the Trade Marks.

Decision

69. The Opponents have not been successful in their oppositions and the ground for removal under s 92(4)(b) of the Trade Marks has been established in respect of all the goods for which the Trade Marks are registered. Therefore, I direct that registration numbers 982363 and 1500539 be removed.

70.  In the event of an appeal from this decision, the registrations shall not be removed until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registrations be dealt with as the court sees fit.

Costs

71.  Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, in respect of the opposition to the removal of trade mark 982363, I award costs against the Opponents under s 221 in the relevant amounts under Schedule 8 of the Regulations. For the opposition to the removal of trade mark 1500539, I award reduced costs against the Opponents under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[41]

[41] [2001] ATMO 78 (Hearing Officer Williams).

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

15 April 2024