John Harold Harding v Fathom Knowledge Network Inc

[2002] ATMO 20

TRADE MARKS ACT 1995

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

Re: Opposition by JOHN HAROLD HARDING to applications under section 92 of the Act by FATHOM KNOWLEDGE NETWORK INC to remove trade mark number 245151(16) in the name of JOHN HAROLD HARDING

Background
Trade mark registration 245151 is registered in the name of John Harold Harding ("the opponent").  That registration has effect from 30 December 1970.  It is for the trade mark fathom, registered in class 16 of the International (Nice) Classification of Goods and Services for the following goods:

Magazines, printed matter, newspapers, periodicals, books, photographs, stationery, instructional and teaching material, type and cliches

On 27 June 2000, Fathom Knowledge Network Inc, a United States company incorporated in Delaware, of New York City, United States of America ("the applicant") filed an application for removal of the trade mark from the Register, on the basis of non-use in the period commencing three years and one month before the date of filing. This period ("the relevant period") is 27 May 1997 to 27 May 2000. The opponent filed a Notice of Opposition to the application on 13 October 2000.

The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark in good faith during the relevant period.

In turn, the opponent alleged in the Notice of Opposition that the trade mark was in regular use by Australian Seafari Pty Limited and by the opponent himself.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 7 November 2001. The applicant was represented by Ms Joanne Martin of F.B. Rice and Co, who appeared by telephone. The opponent appeared in person.

Legislation

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.

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:

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

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

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

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

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

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

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

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

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

(i)used the trade mark in Australia; or

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

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

There are a number of elements of s.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.

In the present case, the only contentious issue is (d), namely, whether the applicant is correct in its assertion that section 92(4)(b) has been satisfied. The application for removal is in the correct form and covers all the goods for which the trade mark is registered. The application alleges that the applicant is aggrieved by the registration of 245151. The opponent did not dispute this. The application also states that it is the applicant's understanding that there are no pending court proceedings. The opponent also did not dispute this.

The Evidence
The opponent served and filed evidence in support in three batches. The first was a statutory declaration by the opponent himself ("JHH 1"). The second was a further declaration by the opponent ("JHH 2") and declarations by Peter Fields ("Fields") and Lyndy Tyrer ("Tyrer"). The final evidence was a third declaration by the opponent ("JHH 3"). Details of the opponent's evidence is shown in the following table:

Declaration	Date declared	Annexes	Summary of Annex Contents
JHH 1	15/01/2001	A	Samples from Fathom magazine (1970-73)
B	Declaration by Leigh Schmitzer that he made four colour photocopies from Fathom magazine for the opponent in 1998
C	Sample of Fathom magazine Vol 1, No 1 (1970) sharing themes with opponent's documentary film Aquarius (1970)
D	Film poster (1986), Video poster (1984)
E	Example copies of Fathom magazine pages shown to news reporters, copy of 1999 news report about opponent mentioning Fathom magazine.
F	Examples of movie advertising showing the trade mark 1973-85, 1988
G	Poster, postcards, video covers for videos Sea Safari and Reef Safari released 1984
H	Poster for film distributed and screened by opponent in 1965
I	Correspondence and advertising 1973-75
J	Correspondence and invoices 1975
Declaration	Date declared	Annexes	Summary of Annex Contents
K	QLD certificate of registration as travelling exhibitor for period 1/08/86 to 31/07/87
L	Newspaper article and advertising 1989
M	Photograph of John Smith, Greater Union
N	Correspondence (1989, 1990) with Dr Robert Endean of University of Queensland
O	Declaration by Coralie Endean dated 6/11/01, relating to a proposed book her late father intended to publish using opponent's photographs and trade mark
P	Declaration by Brian Rodger dated 3/10/00 that opponent had given him poster bearing the trade mark
Q	Declaration by Terry Morrison dated 6/10/00 that opponent had given him photographs/posters bearing the trade mark
R	Declaration by John Michael Harding dated 15/01/01
S	Declaration by Kevin Francis Baglow dated 6/10/00 that he presented film at his cinema in Sep 99, opponent gave introduction and poster bearing the trade mark was displayed in cinema
T	Copies of posters for above film
U	Newspaper article (1988) about opponent and Fathom magazine
V	Correspondence 1991, 1992
W	List of receipts and expenditure 1970-1999
X	Correspondence 1974
Y	TMO notices 1970, 1972
Z	Pictures of sharks, newspaper articles (1992, 1995), undated photograph of posters in shop window.
JHH 2	30/01/2001	1	JHH 1 (copy) advising that date, place of declaration and title of person witnessing
Peter Fields	4/01/01	Declaration that he is importer/distributor of diving equipment and has been aware of trade mark and its reputation since 1973
Lyndy Tyrer	3/10/00	Declaration that she attended opponent's film in November 1999 and saw posters bearing the trade mark.
JHH 3	8/02/2001	A1	Handbill advertising film (1999)
A2	Poster bearing trade mark
A3	Correspondence (1995) about book project
A4	Correspondence (1996) about book project
A5	Opponent's photographs published 1997

There was no other evidence served and filed by either party.

Standing

Section 92(1) of the Act requires a removal applicant to be a "person aggrieved". In its application for removal, the applicant has asserted that it aggrieved by the registration of 245151 fathom. During the hearing, counsel for the applicant submitted that the applicant has applied for registration of the trade marks fathom and fathom.com in classes 35, 41 and 42. The applicant has encountered objection from the Trade Marks Office under section 44 of the Act, citing registration 245151. The applicant further submitted that the applicant intended using its marks in Australia in respect of computers and computer-based education.

The standing of the applicant to file the removal action has not been brought into question in either the opponent’s notice of opposition or its evidence. Following the procedures outlined in the Trade Marks Office Manual of Practice and Procedure at Part 48, paragraph 2.1, I consider that I am not required to initiate any investigation into the applicant’s standing. Therefore, I am prepared to accept the applicant's declaratory statement at face value and thus I am satisfied that the applicant is a person aggrieved.

Use During Relevant Period

The relevant legislation is contained in of section 100 of the Act. The relevant parts state

100.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

...

(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

...

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

`(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period

The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark in the relevant period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 ("Woolly Bull") at paragraph 17

The opponent relates a history of the fathom mark commencing in 1970 and continuing to 1999. Unfortunately, the bulk of the evidence provided relates to events outside the relevant period, to events not amounting to trade mark use, to events not amounting to use in relation to the relevant goods, or to a combination of any of these.

I have first eliminated the evidence clearly relating to activities outside of the relevant period. The following evidence remains:

1.   JHH 1, Paragraph 5, Annexure D:

2.   JHH 1 Paragraph 6, Annexure E:

3.   JHH 1 Paragraph 18, Annexure O:

4.   JHH 1 Paragraphs 21 to 23, Annexures Q and R:

5.   JHH 1 Paragraph 24, Annexures S and T:

6.   JHH 1 Paragraph 27, Annexure W:

7.   JHH 1 Paragraph 32, Annexure Z:

8.   Fields Declaration:

9.   Tyrer Declaration:

10.  JHH 3 Paragraph 1:

11.  JHH 3 Paragraph 5, Exhibit JHH-A5.

JHH 1 paragraph 5 and Annexure D are indefinite about time. Even if I assume that it relates to the relevant period, the evidence does not show any genuine commercial use of the mark for any of the goods in class 16. The same applies to JHH 1 paragraph 6 and Annexure E.

JHH 1 paragraph 18 and Annexure O relate to discussions within the relevant period in respect of a proposal to publish books possibly utilising the opponent's photographs and trade mark. At best, these go no further than discussions preliminary to the parties actually committing themselves to the use of the mark in the course of trade.

JHH 1 Paragraphs 21 to 23 and Annexures Q and R each relate to the display of the opponent's photographs by others. None demonstrate any genuine commercial use of the trade mark for any of the goods in class16.

JHH 1 Paragraph 24 and Annexures S and T relate to the opponent promoting a French underwater film by providing a commentary for it and displaying fathom trade marked material. The use of such material to promote the French film does not evidence any genuine commercial use of the trade mark for any of the goods in class16.

The summary of receipts and expenses shown at JHH1 Annexure W provides no details of the expenses and receipts. There is no reference to the trade mark at all.

Neither the Fields declaration nor the Tyrer declaration provide evidence of trade mark use for goods in class 16. The former provides no details of the goods to which the declarant identifies the fathom trade mark, nor any trade mark use within the relevant period. The latter relates to the use of the fathom mark in relation to advertising for a film shown by the opponent, but not in relation to any goods in class 16.

JHH 3 paragraph 1 and Annexure JHH-A1, again relate to the opponent promoting a French underwater film by providing a commentary for it and displaying fathom trade marked material. This was discussed, above, in respect of JHH 1 paragraph 24. Again, this does not provide evidence of use of the trade mark for any of the goods in class 16.

JHH 5 and Annexure JHH-A5 are photographs and captions by the opponent and published in an unnamed and undated magazine in 1997. There is neither display of, nor reference to, the trade mark. While there is reference to the opponent by name in the magazine article, there is no reference to the trade mark. This does not constitute evidence of use during the relevant period.

Having regard to the evidence and submissions by the parties, I am not satisfied that the opponent has used the trade mark in good faith during the relevant period.

Obstacle to Use

The relevant legislation is contained in of section 100 of the Act. The relevant parts state:

100.

...

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

...

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

The opponent did not specifically refer to this defence in his notice of opposition, his submissions, or file and serve evidence relating to it. However, during his submissions he made comments relating to matters that would seem to touch on the issue.

The opponent submitted that in 1998 he moved to Coffs Harbour and his goods were temporarily stored and some of his materials were lost during the move. This period also coincided with the deaths of friends.

The opponent also submitted that the introduction of the Goods and Services Tax ("GST") was a setback to his business and should be considered as "special circumstances".

I am not satisfied that either of these matters, or both of them, constitutes an obstacle to the use of the trade mark.

The circumstances relating to the move to Coffs Harbour in 1998 do not constitute an obstacle to the use of the mark for the purposes of section 100(3)(c). These circumstances are entirely personal to the trade mark owner that do not bear any trading character. In Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149, Drummond J, at 163 and 164, explains that circumstances amounting to an obstacle must be events that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner's mark are traded, and at 164 states:

Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.

The GST commenced operation on 1 July 2000, which is after the relevant period of 27 May 1997 to 27 May 2000. The GST thus cannot be an obstacle to use during the relevant period.

Registrar's Discretion

Determination of opposed application—general

101. (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.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.
(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.

In deciding an opposed removal application, the Registrar is called on to exercise a discretion: the Registrar "may" remove a registration or "may" decide that the trade mark should not be removed even if the grounds for removal have been established . The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at 482:

If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.

What constitutes "sufficient reason" has been enunciated by Deputy Registrar Hardie in Figgins Holdings Limited v Beltrami SpA (1998) 46 IPR 411, at 418:

Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist is on the opponent to the removal application.

I have had regard to the evidence served in this matter and to the submissions made by the opponent and counsel for the applicant at the hearing in deciding, as the delegate of the Registrar, whether there is sufficient reason to leave the present trade mark on the Register.

In his submissions, the opponent mentioned circumstances that affected his use of the mark. I have discussed these above, relating to obstacles to use of the mark. He also submitted that he intended to use the fathom mark in relation to the film industry and film distribution, books and/or publications relating to health, spirituality subjects, cooking, organic food growing and anthropology, and he was considering reprinting Fathom magazine issue 1 published in the early 1970s.

The applicant submitted that the discretion should only be exercised in exceptional circumstances: Sceats v Jonathan Sceats Design Pty Ltd (1990) 17 IPR 28, at 20. It was submitted that the opponent's evidence had not revealed any circumstances sufficient to allow for exercise of the discretion. The applicant says that the only use of the trade mark in respect of the class 16 goods ceased at least 20 years ago.

The applicant submitted, in the alternative, that if the discretion were to be exercised in favour of the opponent the statement of goods for registration 245151 should be suitably limited to allow acceptance of the applicant's trade mark applications 814544 and 814545 for its services of interest.

I am not satisfied on the evidence and submissions before me that there are any special facts and circumstances, or an overriding question of public interest.

Conclusion

I find that the opponent has not discharged the onus placed on it under the Trade Marks Act 1995 of showing why trade mark registration number 245151 should not be removed from the Register on the grounds of non-use during the period in question. Accordingly, I find that the opponent has been unsuccessful in its opposition to the applicant's action under s.92.

Therefore, I dismiss the opposition and direct that registration number 245151 be removed from the register unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

Costs

As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995)

Jock McDonagh
Hearing Officer
28 February 2002