John Fairfax Publications Pty Ltd v Eastern Herald Publishing Company Pty Ltd

[2003] ATMO 63

TRADE MARKS ACT 1995

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

Re:Oppositions by John Fairfax Publications Pty Ltd to applications under section 92 of the Act by Eastern Herald Publishing Company Pty Ltd to remove trade mark numbers 416607, 418166 & 422652(16) - WESTERN HERALD, SOUTHERN HERALD & EASTERN HERALD - in the name of John Fairfax Publications Pty Ltd.

Date of Decision:	24 October 2003
Delegate:	Jock McDonagh
Decision:	Section 92 application refused

Background

1. Trade mark registrations 416607, 418166 & 422652 are registered in the name of John Fairfax Publications Pty Ltd ("the opponent"). These registrations have effect from 10 October 1984, 13 November 1984 and 21 February 1985 respectively. They are for the trade marks western herald, southern herald & eastern herald respectively registered in class 16 for newspapers.

2. On 19 January 2001, Eastern Herald Publishing Company Pty Ltd ("the applicant") filed an application for removal of trade mark 422652 eastern herald from the Register. On 29 January 2001 the applicant filed applications for removal of trade marks 416607 western herald and 418166 southern herald. The opponent filed Notices of Opposition to the applications to remove 422652 on 15 May 2001, and for the others on 22 May 2001.

3. The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on paragraph 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark in the period commencing three years and one month before the date of filing. This period ("the relevant period") is 19 December 1997 to 19 December 2000 for 422152 and 29 December 1997 to 29 December 2000 for 416607 and 418166.

4. The application was accompanied by a declaration by Kenneth John McInnes, attorney for the applicant, detailing inquiries made and alleging that the applicant was aggrieved on the basis of “threats of possible legal proceedings” by the opponent.

5. In turn, the opponent alleged in the Notices of Opposition that:

   1. The applicant is not a person aggrieved within the meaning of section 92(1) of the Act;

   2.   The application for registration was made with an intention in good faith to use the trade mark in relation to the goods, and in fact it has been so used;

   3.the trade mark has in fact been used by the trade mark owner in respect of goods for which it has been registered within the relevant period;

   4.in the alternative, if there has been no use of the mark during the relevant period, any failure to use was due solely to special circumstances, and was not due to an intention to abandon the mark or an intention not to use it;

   5.in the alternative, the Registrar should refuse to remove the trade mark from the Register in the exercise of his discretion.

6. Neither party has requested a hearing in this matter. Accordingly, the issue has come to me as a delegate of the Registrar of Trade Marks to decide on the material on the file. Written submissions were filed on behalf of the opponent by its attorneys, Spruson & Ferguson of Sydney.

   Legislation

7. Section 92 of the Act relevantly provides as follows:

   92  Application for removal of trade mark from Register etc.

   (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods 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 aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   (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.

8. There are a number of elements of section 92 that must be satisfied before the Registrar will exercise his powers under the section, namely:

   (a)the applicant must be a "person aggrieved";

   (b)the application must be in the correct form and must relate to at least some of the goods for which the trade mark is registered;

   (c)there must be no Court proceedings pending which relate to the trade mark; and

   (d)at least one of the grounds referred to must be made out.

   9. In the present case, the only contentious issues are (a) and (d), namely, whether the applicant is a person aggrieved and whether it is correct in its assertion that section 92(4)(a) has been satisfied.

   The Evidence

   10.  Details of the evidence filed and served by the parties is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Simon Patrick Kane	14 August 2002	SPK-1	Kane
Carolyn Learoyd	9 August 2002	CL-1 to CL-6	Learoyd
Michael McGee	7 April 2003	McGee
Max Stamedes	15 April 2003	Stamedes
Athanasious Naum	7 April 2003	Naum
Michael Anthony Rumore	10 April 2003	Rumore

1. The Kane declaration states that on 4 December 2001, the attorneys acting for the applicant inquired whether the opponent was interesting in acquiring from the applicant trade mark applications for eastern herald, inner western herald,  southern herald & eherald, a NSW business name registration and associated domain name registrations. The declaration also states that on 24 January 2002 a liquidator was appointed due to a voluntary winding up of the applicant.

   12.  The Learoyd declaration provides details of the opponent’s stable of newspapers and magazine. It details the use of its trade marks as weekly inserts to the Sydney Morning Herald from 20 June 1985 and 1 October 1992. The declaration included confidential information relating to sales, revenue and circulation figures for the Sydney Morning Herald during the period of the use of the inserts.

   13.  The Learoyd declaration states that consultation with the opponent’s employees and others in the publishing industry failed to identify any use of the applicant’s trade marks in the industry. The declaration also repeats the information relating to the applicant trying to sell its applications and registrations to the opponent and as to its winding up.

2. The remaining evidence is that of newsagents recalling their knowledge of the inserts to the Sydney Morning Herald, and the Naum declaration also expresses the belief that the use of the trade mark eastern herald would cause him to believe it was the opponent’s publication.

3. No evidence in answer was provided by the applicant.

   Standing

   A person aggrieved

4. The first issue to be determined in relation to the registration in question is the status of the removal applicant as a person aggrieved, as required by subsection 92(1) of the Act. This is a threshold test, the interpretation of which has been the subject of considerable attention by the courts. For example, see the description of a person aggrieved given by McLelland J in Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at page 454:

   It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

   17.  The filing of an application for registration does not, in itself, support the drawing of an inference that the applicant intends to use the mark: Kraft General Foods v Gaines Petfoods Corp (1996) 34 IPR 198, per Sackville J at 209.

5. The opponent submitted that no probative weight should be given to the statement in the declaration in support of the removal application, to the effect that the opponent made “threats of possible legal proceedings”, as there is no evidence of such threats or what the threatened proceedings were.

6. The material date at which the aggrieved status is to be assessed is the relevant date. Therefore, the opponent’s evidence relating to the applicant’s attempts to sell its applications and registrations, and its current winding up are not strictly relevant to the issue.  However, the evidence does tend to support the inference that the applicant is not aggrieved.

7. The opponent's submissions on authorities relating to person aggrieved included the following comments of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149, at 151:

   An object of the 1995 Act is to create, by registration of trade marks, a species of tradeable property - see ss 21 and 22 - but only where such marks are connected with actual or contemplated trade in goods and services. It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods. Such a person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark he wishes to attack remaining on the Register, though he might wish to traffick in marks as distinct from to trade in marked goods.

8. Apart from its trade mark applications, business and company names and internet domain name, there is no evidence of any actual or intended business conducted by the applicant. It is conceivable that the applicant’s intention was to traffick in the marks, and names, and the opponent’s evidence tends to infer this.

9. The first ground of opposition cited by the opponent was that the applicant was not a person aggrieved. The evidence in support of the opposition showed a clear inference that the applicant was not aggrieved. This put the applicant on notice that the matter was in dispute and was likely to be argued. The applicant had an opportunity to provide evidence to support its claim in evidence in answer. However, the applicant did not do so.

10. Although the Act places the burden on the registered proprietor of a trade mark regarding the proof of use or intention to use, the authorities support the proposition that there is still an onus on the removal applicant to establish that he/she is an aggrieved person and therefore entitled to make an application under section 92. It seems to me that this is consistent with an underlying philosophy of the Act that the party best able to provide evidence of certain things is the party required to prove those things.

11. Following the authority of Woolly Bull Enterprises Pty Ltd v Reynolds, supra, and the lack of any material evidence to support its statement, I find that the removal applicant has failed to establish to my satisfaction that it is a person aggrieved by the registration of trade mark numbers 416607, 418166 and 422652. The applicant therefore has not shown that it has the necessary standing to apply for this removal application.

    Conclusion

    As I have found that the applicant has failed to establish that it is a person aggrieved in terms of section 92 of the Trade Marks Act 1995, I refuse this application.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    24 October 2003