John Toh v Paris Croissant Co. Ltd

[2010] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by JOHN TOH to application under section 92 of the Act by PARIS CROISSANT CO. LTD to remove trade mark number 770083 (42) - PARIS BAGUETTE - in the name of JOHN TOH

Delegate:	Heath Wilson
Representation:	Removal Opponent: Written submissions only. Removal Applicant: Paul Thompson of Fisher Adams Kelly, Patent and Trade Mark Attorneys.
Decision:	2010 ATMO 34 Section 92(4)(a) and 92(4)(b): Intention to use; actions of the removal opponent not sufficient to amount to preparations for use of the trade mark; s92(4)(b) established and trade mark to be removed from the register; Costs awarded against the removal opponent.

Background

1. On 18 July 2008, Paris Croissant Co. Ltd (“the removal applicant”) filed an application for the removal of the following trade mark registration owned by John Toh (“the removal opponent”) from the Register on the basis of non-use:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
770083	PARIS BAGUETTE	13 Aug 1998	Class: 42 Providing foods and drinks

1. The non-use application was filed under sections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (“the Act”) and Mr. Toh subsequently filed a notice of opposition to this removal action on 11 November 2008. I heard this matter as a delegate of the Registrar on 7 May 2010 in Canberra where Mr. Thompson of Fisher Adams Kelly, Patent and Trade Mark Attorneys represented the removal applicant, and the removal opponent relied on written submissions prepared by Linkwell Lawyers and Trade Mark attorneys in lieu of appearing at the hearing.

   Evidence

   Evidence in Support

   ·    Statutory Declaration of John Toh dated 9 February 2009, with attached exhibits JT-1 to JT-10.

   Evidence in Answer

   ·    Statutory Declaration of Khrystyna Halyna Misko dated 19 May 2009 with attached exhibits KHM-01 to KHM-07. 

   The Law

2. The relevant provisions of section 92 of the Act provide:

   92Application 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)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.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   Reasons

3. The declaration of John Toh, (Managing Director of “Paris Baguette”) comprises the evidence in support of an intention to use at the time of filing, and of actual use of the trade mark within the three year period, from 18 June 2005 to 18 June 2008 (“the non-use period”).

4. In relation to section 92(4)(a) and the intention to use, the opponent’s declaration contains a positive statement that the owner had an intention to use the trade mark “Paris Baguette” at the time of filing in relation to the services. It has been previously established[1] that such a statement would be sufficient to shift the onus of establishing a lack of intention to the removal applicant. However, in recognition of the inherent difficulties in establishing 92(4)(a), the attorney for the removal applicant declined to pursue the intention to use argument, instead focusing on the application for removal under section 92(4)(b) of the Act.

   [1] Structureco Inc v Starite Distributors Pty Ltd (2000) 49 IPR 209 and Bunter v Hobarama LLC (2005) 67 IPR 216 at 222.

5. Mr. Toh’s statements that “In late 2006, I resumed my efforts in establishing the Paris Baguette café business”; “I also have continuing plans to use and advertise my trade mark in relation to my services” and “Since late 2008, I have since been engaged in negotiations with a prospective licensee for the PARIS BAGUETTE café business” all lead me to infer that the opponent had not actually commenced trading in the services claimed. Coupled with a lack of any sales figures or invoices for the services (either during or after the non-use period), this evidence leads me to the conclusion that the only possible bona fide use of the trade mark in the relevant period was via preparatory dealings.

   Preparations for Use

6. The use of a sign in the course of trade does not require an actual sale of goods (or in this case the provision of services), and established precedent indicates that preparatory steps coupled with “an existing intention to offer or supply the goods bearing the mark in trade”[2] may be sufficient to amount to trade mark use. However, the removal opponent must establish that it has objectively committed itself to offering or supplying services bearing the trade mark.[3]   

   [2] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) (1984) 156 CLR 414 [at 433].

   [3] See Buying Systems (Aust) Pty Ltd v Studio SrL (1995) 30 IPR 517.

7. The removal opponent’s evidence includes registration certificates for the business name “Paris Baguette”, stationery (a letterhead and business card), the trial use of a coffee machine, a quote for the purchase of a coffee machine, and an invoice for an advertising campaign involving a car to which the trade mark was applied and driven around Sydney from May 2007 to 6 August 2007. 

8. The registration of the removal opponent’s business or domain name is not sufficient by itself to amount to preparations for use of the trade mark in relation to the services, and bald unsupported statements of use included within the declaration are not sufficient to discharge the onus.[4] The opponent has declared that its business cards and letterheads were used in all its business dealings, however there are no examples of relevant correspondence to support this assertion.

   [4] See Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208

9. In July 2007, the company “Paris Baguette” borrowed a coffee machine as Mr. Toh was “considering the purchase of this coffee machine for use in the provision of my services in the PARIS BAGUETTE café.” To support this, there is a trial agreement and quote for the purchase of the machine, but nothing further to indicate that the removal opponent actually purchased a coffee machine. As a result, I am not satisfied that this evidence points to an objective commitment on the opponent’s part to using the trade mark in the course of trade. I find that the removal opponent’s general statements regarding discussions with bakeries and the coffee machine manufacturer would amount to nothing greater than the preliminary discussions and negotiations as contemplated in the Moorgate[5] case.

   [5] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) (1984) 156 CLR 414 at 443.

10. An advertisement on its own does not amount to trade mark use[6] but may amount to preparations for use if the services are concurrently available. The evidence supporting the car advertising campaign includes an invoice for that advertisement and a mention of the removal opponent on the website of the advertiser. The attorney for the removal applicant made a number of submissions regarding the weight to be placed on this evidence. It is notable that there is no supporting evidence to demonstrate how the trade mark appeared on this advertisement (whether as a trade mark or business name), only that “Paris Baguette” was a client of the advertising company and that the campaign occurred from May until August 2007. While I have no doubt that an advertising campaign took place, there is nothing in the invoice or the website to satisfy me that it was the trade mark “Paris Baguette”, which the advertiser helped to promote.

    [6] Harold Radford & Co Ltd’s Application (1951) 68 RPC 221.

11. While advertising preceding the launch of a product may constitute preparations for use of the trade mark[7], this is true only when the purpose of advertising is to immediately encourage orders of the product. As previously mentioned, the statements made by the removal opponent indicate that the services were not available at the time of the advertisements. I have no positive evidence before me that these services were available at that time, and little evidence that they would be in the future. Therefore, an advertisement which displays a trade mark but without any information about the availability of the goods or services,[8] is not use of the mark in the course of business. In this case, the promotion of “Paris Baguette” via the car advertisement would, at best, amount to a “mere puff” and not use in the marketplace.

    [7] British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54 at 59 (Ch D).

    [8] See Knickerbox Ltd v Pedita Australia Pty Ltd (1995) 31 IPR 108.

12. It is also worth noting that the removal opponent has not provided any more recent evidence (that is, after the non-use period) to indicate how (or if) the business has progressed in any way. While this evidence would not be decisive in establishing use in the relevant period it “may cast light upon the true position at an earlier date.”[9] The only reference is an indefinite statement indicating that since late 2008, it has been negotiating with a prospective licensee. This statement is also unsupported and would not, in any event, constitute more than further preliminary negotiations in relation to the trade mark.

    [9] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509) per Burchett J.

    Obstacles to Use

13. The removal opponent declares that it was not able to start using its trade mark until late 2006, “due to unforeseen circumstances relating to manpower, cash flow and liquidity in my finances”.[10] Further details are lacking in relation to this reason for not using the trade mark “PARIS BAGUETTE”, but it appears to be relying on this statement as proof of a possible obstacle to use under section 100(3)(c) of the Act.

    [10] Toh Declaration, (Paragraph 10).

14. Any obstacle to use of a trade mark must not be brought about by the voluntary act of the owner and should amount to circumstances of a trading nature, rather than being caused solely by events such as financial difficulty, or illness. In addition, Justice Drummond in Woolly Bull[11] commented:

    It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark: cf Re James Crean & Son Ltd’s Trade Mark at 162.

    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.

    [11] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149 at [55]-[56].

15. Therefore, without further explanation regarding the removal opponent’s “unforeseen circumstances”, the financial hardship of the removal opponent does not constitute a valid obstacle to use of the trade mark under section 100(3)(c) of the Act.

    Decision

16. The relevant provisions of section 101 of the Act state:

    101Determination of opposed application—general

    (1)Subject to subsection (3) and to section 102, if:

    (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

    (b)the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

    (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.

17. As the removal opponent bears the onus in opposition proceedings, I find that it has not discharged the onus of establishing any bona fide use of the trade mark in the non-use period for the services of providing food and drink. As a consequence, the non-use application has been successful, and I find no reason for the discretion available to the Registrar under section 101(3) to be exercised in this case.

18. Under section 101(1), I direct that the trade mark registration no. 770083 “Paris Baguette” will be removed from the Trade Marks Register for all services one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registration will be subject to the decision made by the Federal Court.   

    Costs

19. The non-use application has been made out and the removal applicant has been successful in this matter. Accordingly, I award costs against the removal opponent to the extent allowed under the Official Scale in Schedule 8 of the Trade Marks Regulations 1995.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    18 May 2010