JTI D.o.o v Japan Tobacca Inc

[2006] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by Japan Tobacco, Inc to registration of trade mark application 1002323(34) - MONTE CARLO + DEVICE - filed in the name of JTI d.o.o..

Delegate:

Alison Windsor

Representation:

Opponent – Simon Williams of Spruson & Ferguson, Patent and Trade Mark Attorneys

Applicant – not represented

Decision:

S52 opposition: s59 ground established: registration refused.

Background

1. Trade mark application 1002323 was filed as an International Registration designating Australia (“IRDA”).  The application was filed through the International Bureau (“the IB”) in the name of JTI d.o.o. (“the applicant”), an entity with an address in Serbia and Montenegro.  The application was for cigarettes, tobacco and smokers articles in Class 34, and the trade mark is shown below:

1. The application was examined, no grounds for rejection were found and on 26 August 2004 it was advertised as accepted for possible registration. 

2. JTI International S.A. filed notice of opposition on 26 November 2004, within the allowed three month period.  The Notice of Opposition was subsequently amended to change the opponent’s name from JTI International S.A. to Japan Tobacco Inc (“the opponent”).

3. Evidence in support was filed in due course.  The opponent advised they had not attempted to serve copies of the evidence on the applicant as it had not as yet notified an address for service in Australia[1].

   [1] The requirement to serve documents in this circumstance is covered by subregulation 17A.33(3), which reads as follows:  Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply unless, within 3 months after the notice of opposition is filed, the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

4. The opponent then applied to be heard.  The Office advised the applicant of this request, but received no response.  As a delegate of the Registrar, I heard the matter in Sydney on 16 March 2006.  The opponent was represented by Simon Williams of Sprusons & Ferguson, Patent and Trade Mark Attorneys.  The applicant did not appear, did not provide written submissions and was unrepresented.

Evidence

1. The evidence in support consists of a single declaration sworn by Pierre Keller, a Swiss citizen.  Mr Keller states he was employed by a subsidiary company of the opponent as “Graphics Design Manager – Worldwide”.  Over the period of time mentioned, Mr Keller had created and developed artwork, graphics and designs appearing on approximately 20 cigarette packages for his employer’s group of companies, including the current artwork on the packaging for the “Monte Carlo” brand of cigarettes.  The declaration also includes a brief description of the approach Mr Keller took to designing artworks for cigarette packets over the period.

2. The declaration incorporates a description and example of the original Monte Carlo packaging, used on the cigarettes from 1983 to approximately May 1995.  Also included are examples of the new version of the packaging designed by Mr Keller in 1995, and a list of the changes from the original.  Mr Keller then gives a comparison of the similarities between his newly created packaging and the trade mark as filed by the applicant. 

3. Mr Keller declares himself to be the author of the “Monte Carlo artistic work”, an original work made by him in 1995.  He gives the opinion that the applicant’s trade mark is not an independent creation, but an unauthorized copy of his Monte Carlo artistic work.  As such, he considers use by the applicant of the trade mark would be contrary to law because it would infringe his copyright in his artistic work.

Grounds of opposition

1. The notice of opposition included all possible grounds. However, submissions at the Hearing dealt only with those grounds under subsection 42(b) and section 59 of the Act. For the sake of completeness, I find none of the other grounds established.

Section 59 – Applicant not intending to use trade mark

1. The opponent submitted that the trade mark applicant had no bona fide intention to use, or authorize the use of the trade mark in Australia.  The final paragraph of Mr Keller’s declaration referred to his knowledge of the applicant company, and the fact that it was involved in disputes with the opponent company on a worldwide basis because of its (the applicant’s) practice of appropriating the opponent’s trade marks, and using them in respect of sale and distribution of counterfeit cigarette products.  The opponent considered the fact that the applicant did not file any information to refute, or otherwise explain the allegations of misuse of the opponent’s trade marks, as evidence it had no intention to use the trade mark in good faith.

2. Section 59 reads as follows:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.

Note:  For applicant see section 6.

1. When grounds of opposition are notified under the provisions of section 59, the onus is on the opponent to demonstrate the applicant’s lack of intention to use the trade mark in respect of the goods specified in the application. Proving a negative is always likely to be difficult. However, what the opponent needs to do is provide sufficient information in respect of that negative such that the Registrar’s delegate may be satisfied that it is more probable than not that the intention to use the trade mark in good faith clearly did not exist.

2. Filing an application to register a trade mark is prima facie evidence of an intent to use it in respect of the goods and services nominated, at least at that particular time.[2] It is implicit in section 27 of the Trade Marks Act 1995 (“the Act”) that the owner intends to use or authorize someone else to use the trade mark.[3] 

   [2] See Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401

   [3] 27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

   (a) the person claims to be the owner of the trade mark; and

   (b) one of the following applies:

   (i) the person is using or intends to use the trade mark in relation to the goods and/or services;

   (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

   (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

3. Section 59, however, refers to a continuing intention to use the trade mark. The delegate in Sapient Australia Pty Ltd and Sapient Corporation v SAP AG[4] said the following: 

   This ground is also one where an applicant’s intention to use is relevant. However, it is a ground written in the present tense and looks at the present state of the intention of the applicant. … Thus, section 59 deals with current defects in intention to use, interlocking with s 58, under which the intention and facts at the time of filing are the relevant elements.

   [4][ 2002] 55 IPR 68

4. In this case, there are a number of events (or non-events) which feed into this issue.  When the notice of opposition was received, the Office sent a standard letter to the International Bureau informing them that the opposition was in train.  This letter notified the IB of refusal of protection because of the opposition, and advised the applicant it would need to notify the Registrar of an address for service in Australia if it wished to participate in the process.  The IB on-line record has been updated to show the full refusal pertaining to the Australian record, prima facie evidence the IB received the correspondence and acted upon it as expected. 

5. A perusal of the applicant’s entry on the WIPO database shows its address in Beograd and an address for service, that of an attorney (avocat).  I infer from this record that correspondence from the IB, including that sent from Australia would be sent to the applicant’s legal representative in his home country.  However, no request for an Australian address for service has been received, nor any other correspondence from the applicant, either direct from him or via the IB.

6. After the opponent had filed its evidence in support, the Office again attempted to contact the applicant to advise him of requirements for serving evidence in answer, this time at his nominated address in Beograd.  This letter, specifically advising of the date by which evidence in answer was to be filed was returned to the Office, annotated “démenagé[5].  Notification of the opponent’s Hearing request was also sent to the applicant at its nominated address, but no response has been received up until the time of writing this decision.

   [5] “Démenagé” roughly translates from the French as “left address”.

7. I infer from the applicant’s lack of response that it has chosen not to be involved in these proceedings.  I also infer that it would have been more likely to do so if it had a genuine intent to use the trade mark in Australia.  The applicant may have had an initial intention to use the trade mark at the time of filing its application, but that intent seems to have vanished. 

8. Once the notice of opposition was served, it is probable the applicant’s intention changed. It may have chosen to back away from its original intention rather than take part in geographically remote proceedings, with the risk of an adverse decision being brought against it. I infer from the applicant’s actions (or lack thereof) that receipt of the notice of opposition is likely to have altered any intent it had to use the trade mark in the tobacco trade within Australia. Therefore, a combination of the information supplied by the opponent, and the information the Office has on hand is sufficient to satisfy me that there is no intent by the applicant to use the trade mark in good faith in Australia. I find the ground of opposition under section 59 is established.

Subsection 42(b) – use contrary to law

1. It is sufficient to decide an opposition in the opponent’s favour if a single ground of opposition can be established. As I have found the ground for opposition under section 59 has been established, I do not consider it necessary to go into the ground raised under section 42.

Decision

1. I have decided the ground of opposition under section 59 of the Act has been made out. I refuse to register the application.

2. The opponent has requested its costs.  In the normal fashion, costs follow the decision, and I direct the applicant pay the opponent’s costs in accordance with the Official Scale.  I note here that this may well be an empty award, given the difficulty or impossibility in contacting the applicant at any of the addresses the Office has for it.

Alison Windsor

Hearings Officer

Trade Marks Hearings

IP Australia

[phone]

[email protected]

4 May 2006