Julie Anne Martin v The Tasmanian Walking Co. Pty. Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Julie Anne Martin to an application under section 92 of the Act by The Tasmanian Walking Co. Pty. Ltd. to remove trade mark number 1649385 - Three Capes - in the name of Julie Anne Martin.

Delegate: M.Cooper

Representation: Opponent: Ms. J Pryor of Mark My words Trademark Services Pty. Ltd.
Applicant: Ms. J Simpson of Pizzeys Patent and Trade Mark Attorneys

Decision: [2019] ATMO 52
Trade Marks Act 1995 - Opposition to application to remove trade mark from Register under s.92(4)(a) – ground established for some goods and services – Registrar’s discretion under s.101 not exercised.
Background

This matter concerns the opposition by Julie Ann Martin (“the Opponent”) to an application under s 2(4)(a) of the Trade Marks Act 1995 (“the Act”) by The Tasmanian Walking Co. Pty. Ltd. (“the Applicant”), to remove the trade mark no. 1649385 from the Register in respect of all its designated goods and services.
The details of the trade mark registration the subject of the application for removal (“the application”) are:
Trade Mark No: 1649385
Trade Mark: Three Capes
(“the Trade Mark”)
Filing Date: 26 September 2014
Specification of Goods and Services:
Class 5:
Beverages adapted for medical purposes; Beverages adapted for medicinal purposes; Beverages containing added minerals (for medical purposes); Beverages containing added trace elements (for medical purposes); Beverages containing added vitamins (for medical purposes); Electrolyte replacement beverages for medical purposes; Herbal beverages for medicinal use; Ice beverages for medical use; Malted milk beverages for medical purposes; Medicated beverages; Medicinal beverages; Tisanes (medicated beverages); Tonic water (medicated beverages); Waters (beverages) for medical purposes
Class 29:
Algae prepared for human foods; Banana based snack food products; Chilled foods consisting predominantly of fish; Chilled foods consisting predominantly of game; Chilled foods consisting predominantly of meat; Chilled foods consisting predominantly of poultry; Colza oil for food; Edible essences for foodstuffs (oils); Edible oils for use in basting foodstuffs; Egg-based foodstuffs; Flowers and leaves, being dried, cooked or preserved foodstuffs; Food made principally from milk; Food pastes made from fish; Food pastes made from game; Food pastes made from meat; Food pastes made from poultry; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Food preparations having a base of vegetables; Food preparations made from meat; Food preparations with a vegetable base; Food preparations with added minerals for use by athletes; Food preparations with added proteins for use by athletes; Food preparations with added vitamins for use by athletes; Food preserves; Food products consisting principally of fish; Food products derived from fish; Food products derived from meat; Food products derived from seafood; Food products made from cooked fruits; Food products made from cooked nuts; Food products made from cooked vegetables; Food products made from dried fruits; Food products made from dried nuts; Food products made from dried vegetables; Food products made from eggs; Food products made from meat; Food products made from nuts; Food products made from preserved fruits; Food products made from preserved nuts; Food products made from preserved vegetables; Food products made from seaweeds; Food products made of fish; Food products made of shellfish; Food protein for human consumption; Food spreads being a blend of edible oils and edible fats; Food spreads consisting principally of dairy products; Food spreads consisting principally of edible fats; Food spreads consisting principally of edible oils; Food spreads consisting principally of vegetables for sandwiches; Foods made from fish; Foods made from milk products; Foods prepared from milk; Foodstuffs consisting of poultry; Foodstuffs consisting of sausage meat; Foodstuffs consisting of sausages; Fruit based snack food; Fruit-based snack foods; Gelling agents for use in foods; Isinglass for food; Jellies for food; Nut products for food; Olive oil for food; Palm kernel oil for food; Palm oil for food; Potato based snack food products; Potato snack foods; Prepared foods consisting principally of cheese; Prepared foods consisting principally of fish; Prepared foods consisting principally of fruits; Pulses (foodstuffs); Pulses (for food); Rape oil for food; Seaweed extracts for food; Smoked food products; Snack food products made wholly or principally of potatoes; Snack foods consisting principally of meat; Snack foods made from dehydrated vegetables; Snack foods made from dried vegetables; Snack foods made from eggs; Snack foods made from extruded vegetables; Snack foods made from meat; Snack foods made from potatoes and wheat (potatoes predominating); Snack foods made from pre-cooked vegetables; Soya beans, preserved, for food; Suet for food; Sunflower oil for food; Terrines (foodstuff); Vegetable food products
Class 30:
Crisp snack food products; Dressings for food; Dried pasta foods; Extruded food products made of rice; Flavourings for snack foods (other than essential oils); Food dressings (sauces); Food pastes (seasonings); Food pastes (spices); Food preparations for making puddings; Food products containing cereals; Food products containing flour; Food products having a pastry base; Foods produced from baked cereals; Foods produced from puffed cereals; Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made from cereals; Foodstuffs made from corn; Foodstuffs made from dough; Foodstuffs made from maize; Foodstuffs made from oats; Foodstuffs made of rice; Foodstuffs made of sugar for making a dessert; Foodstuffs made with cereals; Glazing for food products; Malted food drinks; Oat-based food; Organic thickening agents for cooking foodstuffs; Pickling preparations for foodstuffs; Preparations for preserving foodstuffs (salt); Rice based snack foods; Salt for flavouring food; Salt for preserving foodstuffs; Snack food products made from cereals; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products made from rice; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods consisting principally of bread; Snack foods consisting principally of confectionery; Snack foods consisting principally of extruded cereals; Snack foods consisting principally of grain; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack foods made from cereals; Snack foods made from corn; Snack foods made of wheat; Snack foods made of whole wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Thickeners for cooking foodstuffs; Wafers (food); Aerated beverages (with coffee, cocoa or chocolate base); Beverages consisting principally of chocolate; Beverages consisting principally of cocoa; Beverages consisting principally of coffee; Beverages made from cereals; Beverages made from chocolate; Beverages made from cocoa; Beverages made from coffee; Beverages made of tea; Beverages with a chocolate base; Beverages with a cocoa base; Beverages with coffee base; Beverages with tea base; Chocolate beverages; Chocolate beverages with milk; Chocolate essences for the preparation of beverages; Chocolate flavoured beverages; Chocolate-based beverages; Cocoa beverages; Cocoa beverages with milk; Cocoa-based beverages; Coffee beverages; Coffee beverages with milk; Coffee-based beverages; Frozen beverages (edible ices); Ice beverages with a chocolate base; Ice beverages with a cocoa base; Ice beverages with a coffee base; Iced coffee (coffee based beverages); Powdered sugar for preparing isotonic beverages; Preparations containing chocolate for making into beverages; Preparations for making beverages (chocolate based); Preparations for making beverages (cocoa based); Preparations for making beverages (coffee based); Tea-based beverages
Class 32:
Aerated beverages (non-alcoholic); Alcohol free beverages; Beverages consisting of a blend of fruit and vegetable juices; Beverages containing not more than 1.15% (by volume) of alcohol; Beverages made from fruit concentrates; Coconut milk (beverages); Edible essences for making beverages; Electrolyte replacement beverages for general and sports purposes; Essences for making beverages; Extracts of vegetables (beverages); Fruit beverages; Fruit concentrates for making beverages; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Fruit juice extracts (beverages or for making beverages); Fruit juice nectar (beverages or for making beverages); Fruit syrup (beverages or for making beverages); Grain based non-alcoholic beverages; Hop concentrates for use in the preparation of beverages; Hop essences for use in the preparation of beverages; Hop extracts for use in the preparation of beverages; Isotonic beverages; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Malt based preparations for making beverages; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Mineral water (beverages); Non-alcoholic barley based beverages; Non-alcoholic beverages; Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Pastilles for effervescing beverages; Powders for effervescing beverages; Preparations for making beverages; Seltzers (beverages); Sherbets (beverages); Sorbets (beverages); Soya based beverages (not being dairy substitutes); Spring water (beverages), other than for medical purposes; Squashes (non-alcoholic beverages); Syrup for making beverages; Syrup powder for beverages; Syrups for beverages; Tisanes (non-medicated beverages and other than tea based); Tropical fruit squash (beverages); Vegetable extracts (beverages); Vegetable juice concentrates (beverages); Vegetable juices (beverages); Waters (beverages); Whey beverages
Class 33:
Alcoholic beverages (except beer); Alcoholic beverages (except beer) containing more than 1.15% of alcohol by volume; Alcoholic beverages containing fruit; Alcoholic preparations for making beverages; Beverages containing wine (alcohol content 1.15% or more by volume); Beverages containing wine (wine predominating); Carbonated beverages (alcoholic, except beers); Cider coolers (beverages); Distilled alcoholic beverages; Distilled beverages; Fruit based alcoholic beverages; Liquors (alcoholic beverages); Pre-mixed alcoholic beverages, other than beer-based; Preparations for making alcoholic beverages; Spirits (beverages)
Class 35:
Tourism promotions (for others)
Class 39:
Provision of information relating to tourism; Sightseeing (tourism); Charitable services, namely distribution of goods such as foodstuffs, toys, clothing, furniture and household items; Delivery of food and drink prepared for consumption; Delivery of meals and prepared foods; Food delivery services; Food storage services; Food transportation services; Frozen food storage services; Packaging of food; Packing of food; Storage of food; Transportation of food
Class 41:
Arranging group recreational activities; Arranging the provision of recreation facilities; Conducting of exhibitions for recreation purposes; Hire of animals for recreational purposes; Information services relating to recreation; Operation of aquatic recreation areas; Organisation of recreational activities; Providing facilities for recreation; Providing recreation facilities; Provision of club recreation facilities; Provision of facilities for recreation; Provision of indoor recreational facilities; Provision of recreational activities; Provision of recreational areas; Provision of recreational events; Provision of recreational facilities; Recreation information; Recreation services; Recreational services; Recreational services for the elderly
Class 43:
Medical tourism services being the reservation or booking of hotels or temporary accommodation in order to obtain health care; Arranging for the provision of food; Arranging of wedding receptions (food and drink); Charitable services, namely providing food and drink catering; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Consultancy services relating to food; Consultancy services relating to food preparation; Consultancy, advisory and information services in relation to the provision of food and drink; Consultation services relating to food; Country club services (provision of food, drink and temporary accommodation); Country clubs (providing food, drink and accommodation); Food and drink catering; Food cooking services; Food hygiene services; Food preparation; Food sculpting; Hospitality services (food and drink); Internet cafe services (provision of food and drink prepared for consumption); Night club services (provision of food and drink); Old people's home services (provision of accommodation and food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation; Provision of carry out foods and beverages; Provision of information relating to the preparation of food and drink; Rental of food service apparatus; Restaurant services for the provision of fast food; Retirement home services (Provision of accommodation and food); Snack bars (provision of food and drink); Social clubs (Provision of food); Take away food services; Takeout food and beverage services; Takeaway food and drink services; Theatre restaurants (Provision of food and drink).
(“the Goods and Services”)
On 10 April 2017 the Applicant applied for the removal of Trade Mark 1649385. The Opponent filed two Notifications of Intention to Oppose on 16 June 2017, one on behalf of her company, Virtual Reality Entertainment Systems (“VRES”), and one in her own name. She subsequently withdrew the notice on behalf of her company. A Statement of Grounds and Particulars (“SGP”) was filed on 14 July 2017 and the Applicant filed a Notice of Intention to defend on 21 July 2017.
On 8 May 2018 the Applicant requested an oral hearing. It was conducted before me, as a delegate of the Registrar, in Canberra on 21 November 2018. Submissions were filed in accordance with directions however the Opponent elected not to appear.
Evidence
The evidence filed in relation to this removal opposition comprises:
·    Evidence in Support (“EIS”)
Ø Declaration of Julie Anne Martin dated 29 October 2017 with Exhibits JM-01a – JM-16 (“Martin declaration”).
·    Evidence in Answer (“EIA”)
Ø Declaration of Julie Simpson, the Applicant’s legal representative dated 6 February 2018 with exhibits JMS-1 to JMS-3 (“Simpson declaration”).
·    Evidence in Reply (“EIR”)
Ø Declaration of Jacqueline Louise Pryor, the Opponent’s legal representative, dated 12 April 2018 with exhibits TM-01 to TM-03 (“Pryor declaration”).
In her declaration Ms. Martin referred to her registered trade mark 1499774, Three Capes Eco Lodge (“the earlier mark”), and claimed she had used it providing accommodation, tours and recreational activities for guests in her eco-friendly “lodge” (accommodation) in Tasmania since at least as early as 2010. She acknowledged that the earlier mark covers some of same and closely related services as those listed in classes 39, 41 and 43 of the Trade Mark. She observed that the Applicant is currently seeking to register a similar Trade Mark for similar activities and notes that it sought her consent however she did not provide it.
She strongly rejected the allegation that she had no good faith intention to use or authorise the use of the Trade Mark “in relation to and in close connection with” the relevant classes or that she had not made actual use of it “on a number of claimed goods and/or services during the relevant period”.
She claimed that at the time of filing the Trade Mark application “it had become somewhat normal for either myself or my representatives to ‘drop’ the words ‘eco lodge’ when the brand was promoted or spoken” and, on a recommendation from her business coach, she decided to register just “Three Capes”.
She included details of her 2012 and 2014 licensing agreements with her company, VRES, and said the latter was still on foot. She claimed it demonstrated her intention in good faith, on the relevant date, to authorise use of the Trade Mark in relation to the full range of Goods and Services and that either she or her company had used the Trade Mark for “a number” of the Goods and Services.
She annexed several documents she claimed showed this use and asserted that the evidence of her inquiries with the Tasmanian government demonstrated her intention to use the Trade Mark “in relation to” native plants, walks, seafood products, tourism support grants, and further guest facilities.
She claimed she always intended, and is always working, to expand the products and services she delivers and said she also plans to offer wedding ceremonies, tours, recreational activities and to cross promote other businesses.
The Simpson declaration comprised an exhibit of Google searches undertaken by the Applicant’s representative on 12 July 2017, the results of which “did not reveal any listings showing Julie Martin using either the “Three Capes” or “Three Capes Eco Lodge” trade marks for the claimed goods and services.” Ms. Simpson also undertook searches of the CENTS (Community Exchange Network Tasmania) website which demonstrated use only of the earlier mark, Three Capes Eco Lodge, in advertising accommodation. She noted that the advertisement was placed on 7 May 2017.
In the EIR, Ms. Pryor acknowledged that “[t]here has been no suggestion by the Opponent that the Trademark is or has been promoted online”. Ms. Pryor also acknowledged that the CENTS advertisement was published in May 2017 but maintained that Ms. Martin had told her that arrangements to advertise under the Trade Mark “were underway much earlier” and she attached Ms. Martin’s purported notes, which she claimed were prepared in September 2016. The Pryor declaration also exhibited results of a Google search showing Ms. Martin’s profile on Houzz.com when she was “collecting design ideas for her Three Capes eco lodge.” She also exhibited a document from Opponent’s Facebook page which purported to show a post by the Opponent related to her tour services in July 2016.
Onus
In respect of the proceedings under section 92, s 100(1) provides the Opponent bears the onus of rebutting allegations made under s.92(4)(a).
Consideration and Reasons
Section 92 of the Act relevantly provides:
92 Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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 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

The application has been filed in accordance with the Regulations (s 92(2)(a)) and is made in respect of all the Goods and Services (s 92(2)). There is no evidence of any action concerning the Trade Mark pending in a court (s 92(3)).
Therefore, in the circumstances of this matter and for the purposes of s 92(4)(a), it is necessary for the Opponent to rebut one or both of the allegations that:
·on the day on which the Trade Mark application was filed, it had no intention in good faith to use (or authorise the use or assign) the Trade Mark in Australia in relation to the Goods and Services to which the non-use application relates; and
·it has not used the Trade Mark in Australia, or has not used it in good faith in Australia, in relation to those Goods and Services at any time before the period of one month ending on the day on which the non-use application is filed.; that is, any time before 11 March 2017 (“relevant period”).
Even if the grounds of the non-use application are established, the Registrar has a discretion, under s.101(3) of the Act, to decline to remove the Trade Mark, or to remove it in respect of only some of the goods and services identified in an application, if satisfied that it is reasonable to do so. In deciding whether to exercise the discretion not to remove the mark the Registrar may take into account whether the registered owner has used it in respect of similar or closely related goods and services (s.101(4)).
In her SGP, the Opponent noted that she had entered into a licensing agreement with her company on the same day as she lodged the application for registration of the Trade Mark. She claimed that this demonstrated her intention to authorise the use of the Trade Mark for the Goods and Services. She said she had already used her earlier trade mark, “Three Capes Eco Lodge”, registered number 1499774, in respect of accommodation and tourism-based activities and had intended to expand her business, hence the filing of the Trade Mark. She said that bushfires had affected her property, and this had affected her ability to run and expand her business, and that these were special circumstances which had prevented use of the Trade Mark. She claimed she had demonstrated her intention to use it on the “full scope” of the Goods and Services. She listed several activities which were said to demonstrate her intention and preparations to use the Trade Mark for the relevant goods and services within the relevant period and attached several declarations relating to discussions with other persons in this regard.
Intention in good faith to use
The threshold issue therefore is whether the Opponent has rebutted the Applicant’s allegation under s.92(4)(a) that, on the day on which the application was made to register the Trade Mark, she had no intention in good faith to use (or authorise or assign) it in relation to the Goods and Services. It is Ms. Martin’s intentions, as the individual owner and sole director of VRES, that are relevant to this assessment. Given the non-use application relates to all the registered goods and services, it is necessary to assess her intentions in respect of them all.
The Opponent relied on Structureco Inc v Starite Distributors Pty Ltd[1] to submit that that a “clear bare statement” from Ms. Martin that, at the time of filing, she intended in good faith to use the Trade Mark, was sufficient to shift the onus to the Applicant.
[1] [2000] ATMO 31
The Applicant submitted that the intention to use must be “a real intention to use, not a mere problematical intention, not an uncertain or indeterminate intention or possibility, but a resolve or settled purpose which has been reached at the time the mark is to be registered.”[2]
[2] Ducker’s Trade Mark [1928] 45 RPC 397
In discussing the various authorities relating to intention to use, Dodds-Streeton J in Suyen Corporation v American International Limited observed:
Historically, an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists.[3]
[3] Suyen Corporation v American International Limited [2010] FCA 638 at 193 (“Suyen”)
She went on however to discuss the nature of such an intention and noted the findings of other relevant authorities as follows: [4]
Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.
In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute “the controlling mind” of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that “we wanted to widen our business” to use the mark on any goods or products the company might make. [Jacobson J’s decision was upheld by the Full Court, which did not consider the intention issue (although it was a ground of appeal)].
[4] Ibid. [214-215]
In Suyen, having considered the authorities relevant to “intention”, Dodds-Streeton J accepted that the material before her “adduced a substantial body of evidence to establish the existence of the requisite “real and definite intention” to use the relevant trade mark.”[5]
[5] Ibid. [217]
As the Applicant noted in submissions, Ms. Martin stated in her declaration that she had “made actual use of the Trademark in respect of a number of goods and services covered by the Trademark”, thereby acknowledging she had not used it on all the goods and services she had nominated and demonstrating an absence of a good faith intention to do so. Similarly, the Applicant noted that Ms. Martin’s acknowledgment of duplicates and items that are “same kind of thing” indicated her lack of a good faith intention to use it. The Applicant further noted that she had not removed any of the Goods and Services, but the numerous claims and classes are so broad “it would not be possible for Ms. Martin to supply, provide and manufacture all of the different goods and provide all of the nominated services.” It observed that a comparison between the goods and services chosen by the Opponent in classes 5, 29, 30, 32, 33, 35, 41 and 43 “shows that nearly all of the available goods and services are “picked” from these classes.” By this, I take it that the Applicant means to allege that Ms. Martin chose almost all the goods and services that this office nominates for prospective trade mark applicants as falling within each of those classes—a facility known as the “pick-list”. Consequently, the Applicant alleged, that it was unlikely the Opponent had the requisite intention in good faith at the time of filing the Trade Mark application in relation to all the goods and services.
As noted above, Ms. Martin rejected the Applicant’s assertions in this regard. She acknowledged that “a lot of the claims are effectively duplicates or are the “same kind of thing” as other claims. For example, in class 32 I have claimed broadly non-alcoholic beverages, which encompass other class 32 goods and is closely related to some of the class 5 goods claimed. At the time of filing I had included these broader claims as well as more specific claims to items that I plan to release under the Three Capes trademark. As I complete the review of the full claims, should I find any that are not required any longer I will be seeking to remove them from the registration accordingly….”
I do not consider that these comments, taken together, while indicating an intention to use the Trade Mark generally, demonstrate a good faith intention to use it in respect of all the Goods and Services. On the contrary, Ms. Martin acknowledged that she has made broad claims that lack specificity and contain duplicates, and that she needed to review the lists to determine what to retain. There is no evidence she undertook that review and there have been no amendments requested to the registration.
Furthermore, in exhibit JM-01a, she indicated in correspondence to IP Australia that she wished to add goods and services to her specifications for this Trade Mark, as well as the earlier mark. In this context she refers to “establishing airline services and boating services to the region to service the resort. Transport is challenging in the area so I am creating a new infrastructure to service my development and the tourism industry in general, hence the many and varied descriptions to cover these endeavours…”
As well as being a tacit acknowledgment that the items she selected do not reflect the goods and services she intended to provide, none of those filed reflect the services she described above as relating to airline, boating or other transport services or infrastructure or tourism in general. At best her evidence demonstrates confusion, if not contradiction, as to her intentions in relation to the goods and services for which she intended to register the Trade Mark.
While I have also had regard to the additional declarations exhibited to the Martin declaration, which relate to various discussions with Ms. Martin concerning her intentions in respect of the Trade Mark, I place little weight on them. This is because, in stating an awareness of her intended or actual use of the Trade Mark, most of them are unclear whether they are referring to this Trade Mark or goods and services delivered under the earlier mark. In addition, some refer in part to goods and services that are not reflected in the Goods and Services. Overall, I am not satisfied these mere discussions demonstrate a “real or definite” intention by Ms. Martin to use the Trade Mark in respect of all the Goods and Services.
As the Applicant also submitted, “it is incumbent on the Applicant to file a trade mark for a clear and precise specifications (sic) encompassing all the goods and services intended to be offered. By Ms. Martin’s own admission ….the ‘pick-list’ services were something close, but not exactly what she intended to provide.”
Having carefully considered her declaration and the associated exhibits, I am not satisfied, other than as discussed below in relation to use of the Trade Mark, that they do establish a “real and definite” intention to use the Trade Mark in relation to most of the goods and/or services to which the non-use application relates. At best, the evidence indicates Ms. Martin’s intention when she applied to register the Trade Mark was to widen her business and protect her brand, as advised by her business manager. It was in this context she filed the application without any careful or genuine consideration or thought as to what goods or services she wished to nominate.
Intention in good faith to authorise use
Ms. Martin also claims that, by a Trade Mark Licence Agreement with her company VRES, made on the same day as she filed the Trade Mark, she genuinely intended to authorise the use of the Trade Mark in Australia in respect of the Goods and Services. Other than the agreement itself, which is not witnessed or otherwise authenticated and contains inexplicably different print sizes, there is nothing persuasive in any of the other supporting evidence that substantiates the claims made in this regard. For example, while she has provided an internal document that purports to reflect payments to her of licensing fees, she acknowledged in her declaration that it had previously been recorded as “uncategorised expenses” and so she provided “a more recently generated report to show the licensing fees from my company to myself in relation to Three Capes.” That report was generated on 26 October 2017, and the amounts, and three of the four dates, are different. Therefore, there is no convincing evidence of payment of any of the royalty or licence fees as required by the agreement. In addition, as the Applicant also noted, there is no provision in the agreement for an expiry date, the licence appearing to operate indefinitely. As the court stated in Lodestar Anstalt v Campari America LLC “a bare licence to use a trade mark, particularly a perpetual license, would not be sufficient, without more, it would amount to a divestment of control.”[6].
[6] [2016] FCAFC 92
In the circumstances I am not satisfied, other than as discussed below in relation to Trade Mark use, that the Opponent has rebutted the allegation that on the day she filed the application she had no good faith intention to use or relevantly authorise the use of the Trade Mark in relation to the Goods and Services.
Use of the Trade Mark
The Applicant also asserted that the Opponent had not not used the Trade Mark in Australia or has not used it in good faith in the relevant period. If the Opponent can demonstrate use, or use in good faith, on all the Goods and Services in this period it will have successfully rebutted the Applicant’s claims and the application for removal will be unsuccessful. As this application relates to all the Goods and Services for which the Trade Mark is registered, the registration might only be preserved for those goods or services for which use can be shown.
Proof of use for goods or services of the same description will not suffice[7]. In relation to the type of evidence that would be sufficient to establish trade mark use, “the tribunal may not be persuaded by evidence that is solely from the internal files of the opponent”[8] or of a circumstantial nature[9], although one invoice, if genuine, will suffice[10]. Little weight is to be given to assertions of use which are not supported by documentary evidence[11].
[7] McHatton v Australian Specialised Vehicle Services P/L (1996) 34 IPR 537
[8] Re Nodoz Trade Mark [2961] RPC 1
[9] Trina Trade Mark [1977] RPC 131
[10] Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425; Geo W McPherson Nominees Pty Ltd v Remington Arms Co. Inc. (1999) 47 IPR 636.
[11] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8
The Federal Court also commented in this regard in Liquid Engineering[12] as follows:
Before proceeding any further, I first note in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; (2007) 163 FCR 530 at [53]- [54], Tamberlin J pointed out that under ss 7 and 9 of the TMA, a trade mark is taken to be used in relation to goods and services if it is applied to, among other things, packaging labels, signs, invoices, business letters, and business papers. Here, the word "Liquideng" was applied by Edwards and LFS in just such ways. It follows that application of that word was its use as a trade mark.
[12] Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 [21], this finding not disturbed on appeal
I have examined the Opponent’s evidence and am not satisfied that it demonstrates Trade Mark use in relation to the bulk of the Goods and Services. This is because some use is undated or outside the relevant period[13]; non-use of the goods or services by reference to the Trade Mark is acknowledged or Trade Mark use is absent[14]; some of the uses identified are actually by reference to the earlier mark[15]; the use is demonstrably merely use of a shortened version of the earlier trade mark[16]; the use appears to be descriptive or as reference to the geographical location in Tasmania (that is the walking tracks bounded by Cape Raoul, Cape Pillar and Cape Huay also referred to as the “three capes”)[17]; or the evidence indicates only preliminary discussions having taken place, with no other evidenced action. Overall the only material persuasively supporting Ms. Martin’s assertions as to Trade Mark use in the relevant period is contained in some of the invoices at exhibit JM-03 and some of the brochures at exhibits JM-04b and JM-12a and the Facebook posting at exhibit TM-03.
[13] For example, JM-12a brochure, JM-11, JM-07b
[14] For example, JM-13, JM-14, JM-16 and Pryor declaration regarding online promotion (paragraph 4)
[15] JM-15, JM-01c
[16] JM-03 - Account Quickreport (the issue of whether such use might be regarded as use with additions or alterations which do not substantially affect the identity of the Trade Mark is discussed later in the reasons)
[17] For example, JM-12a – “Three Capes Adventure Tours” sticker on brochure.
I note that the Opponent’s circumstances in this regard are not analogous to some other cases in which, although direct commercial use of the mark was not demonstrated, there was evidence of expenditure on packaging and promotional videos and trade presentations[18] or the combination of the purchase of business cards, printing of letterheads, approaching of potential advertisers and soliciting them for advertisements[19].
[18] NSW Dairy Corporation v Murray-Goulburn Co-operative Co. Ltd. [1989] FCA 124
[19] Buying Systems (Aust) Pty Ltd v Studio SRL (1995) 30 IPR 517
There is no evidence, and no substantiated claim, that VRES has used the Trade Mark in relation to any of the Goods and Services in the relevant period.
In this context, I find as follows in respect of each of the nominated classes:
Classes 5 and 33
I am not satisfied that the evidence demonstrates the Opponent’s use of the Trade Mark on any of these designated goods in the relevant period. The use of “Three Capes” on the pickled (in alcohol) walnuts was outside the relevant period and in any event is not covered by the chosen descriptors in this class.
Class 29
There is a plethora of various foods and food preparations and products listed in this class however the Opponent’s evidence does not identify sufficiently whether or how its products fall into these categories. For example, there are invoices in exhibit JM-03 displaying the Trade Mark, issued in the relevant period, for Three Capes Breakfast Granola, Three Capes Gluten Breakfast Granola and Three Capes Trail Mix, however, other than speculation, it is not clear what or if any of these constitute, for example, “food preparations having a base of vegetables” or “food preparations made from cooked nuts”. In the circumstances these goods are most clearly identifiable under class 30 discussed below. In relation to the use of the Trade Mark on invoices for Three Capes Lobster, Three Capes Lobster and Vegetable Bisque and Three Capes Wakame Seaweed however, I accept that these might be appropriately categorised as “food products made from seaweed; food products made of shellfish; food products made from cooked vegetables.”
Class 30
On the basis of the above identified uses of the Trade Mark in the invoices at JM-03, as well as uses of the Trade Mark on those invoices for Three Capes Botanical Coffees and Three Capes Eco Tea, I am satisfied that Trade Mark use has been demonstrated in the relevant period respect of “Foods produced from baked cereals; Snack food products made from cereals; Snack foods prepared from grains; beverages made from coffee; coffee beverages, coffee-based beverages, Tea-based beverages; Beverages made of tea.” In addition, I also accept that the evidence of the pickled walnut samples bearing the Trade Mark also fall within the “pickling preparations for foodstuffs” category.
Class 32
While the exhibits indicate use of the Trade Mark in the relevant period on “Three Capes Oxygen Water” and “Three Capes Eco Kombucha” there is no evidence indicating the composition of these beverages. In the circumstances I can only be satisfied that they fall within the categories of “alcohol free beverages” and “waters (beverages)”. In the absence of further information or evidence in this regard, I am not satisfied there is demonstrated Trade Mark use in the relevant period of any other goods in this class.
Class 35
There is some evidence in the declarations that the Opponent has acted as an agent for or promoted other tourist activity providers by reference to the Trade Mark, and the relevant invoices in exhibit JM-03 bearing the Trade Mark reflect small charges for organizing various tourist activities such as beach tours, kayak tours and a Pennicott Tasman Island cruise. Brochures also indicate such activity by reference to “Three Capes” in the relevant period[20]. Given this I am satisfied that the Opponent has demonstrated Trade Mark use in the relevant period in respect of this class.
[20] Exhibits JM-04b and JM-12a
Class 39

The evidence of the Opponent’s Trade Mark use in relation to tourism information and the provision of sightseeing are embraced by class 35. That is, she promoted or facilitated the activities of others. The evidence does not support Ms. Martin’s claim that she provided charitable services by reference to the Trade Mark and her activities in relation to the provision of food services under the Trade Mark, on the evidence, appear best described in class 43.
Class 41
While there are references in the declarations to discussions between Ms. Martin and the declarants about organising various recreational activities, there is a dearth of persuasive evidence that the Trade Mark was relevantly used in this regard. The Priest declaration indicated extensive discussion of the establishment of an art school and classes, and an invoice is provided which suggests such activity was paid for, however both the Priest and Ms. Martin’s declaration state, in contradiction to the invoice, that it never occurred. In this context I give scant weight to the invoice as evidence of Trade Mark use by the Opponent in respect of recreational activities or facilities. In addition, the Nicholls declaration also notes that the penguin tours were unable to proceed. While reference is made to aquatic club activities and boat tours, and sponsorship and brochures displaying the Trade Mark, the associated declarations [21] do not demonstrate that the Trade Mark to which reference is made is this Trade Mark as opposed to the earlier mark. Overall, I am not satisfied on the evidence that the Opponent has demonstrated use of the Trade Mark in the relevant period in relation to these designated services.
[21] Exhibits JM-08 and JM-04b
Class 43
The accommodation services identified in this class are not consistent with the evidence of the type of accommodation offered by reference to the Trade Mark. Ms. Martin variously refers to her accommodation as a “resort” or an “eco lodge”. This is quite different from a country club, notwithstanding Ms. Martin’s claim that it is “the closest I have been able to find on the “pick list” to describe our eco-lodge services” (paragraph 12). While I acknowledge that trade mark applicants are encouraged to use the “pick-list”, they are by no means restricted to “pick-list” items when making an application. The relevant invoices indicate charges only for “accommodation” or for “self-contained units” or “glamping or camping sites”. Therefore, I am not satisfied the Trade Mark has been used in respect of the accommodation services nominated in Class 43. As also noted above, there is no objective evidence that the charitable services Ms. Martin claimed to have provided were provided under the Trade Mark. Furthermore, there is no probative evidence of the use of the Trade Mark in relation to medical tourism, consultancy services, food hygiene services, internet café services and so on. The Opponent’s evidence of her registration of three domain names containing “threecapes” without more, does does not constitute evidence of use. In the EIR, Ms. Pryor acknowledged that there has been “no suggestion by the Opponent that the Trademark is or has been promoted online.”
Several food delivery and preparation services nominated in this category overlap however, on the invoice evidence provided of charges for prepared food and drink under the Trade Mark during the relevant period, I am satisfied that they are most appropriately identified in this class as “Hospitality services (food and drink).”
In this matter, other than the assertions in the Opponent’s SGP and declarations, and a relatively small number of invoices and brochures, there is little in the evidence that substantiates the claims made of use in the relevant period on the Goods and Services. As noted above, many of the declarations are unclear as to which of the Opponent’s Trade Marks they refer and, in any event, generally indicate only preliminary discussions of Ms. Martin’s ideas for expanding her brand.
As the Court commented in Optical 88:
The onus falls on the opponent to the removal application (in this case, the applicant in the proceeding) to rebut the allegations that have been made: see s 100(1). It is, of course, the opponent who will know what use, if any, it has made of the mark the subject of the removal application. The opponent cannot be heard to complain of what might be found to be deficiencies in proof of the use that is relied on in order to rebut the allegation of non-use, when it has the means at its disposal to show precisely how, when and where the challenged mark was used.
The applicant for removal (the first respondent in this proceeding) bears no risk in that regard and, as s 100(1) recognises, is entitled to stand squarely behind the allegations that are made to actuate s 92(4)(a) and s 92(4)(b)…. Thus it is the opponent (the applicant in this proceeding) who must make good the case, in all its dimensions, for a challenged mark to remain on the Register.[22]
[22] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380 [204-5]
I consider that the Opponent would have had ‘the means at its disposal to show precisely how, when and where the challenged mark was used’ however it has failed to do so in relation to most of its Goods and Services. Having carefully considered the Applicant and Opponent’s evidence and submissions, for the reasons above, I attach little weight to the Opponent’s largely unsubstantiated claims of use of the Trade Mark in respect of the goods and/or services to which it relates.
On this basis, I am not satisfied that the Opponent has rebutted the allegation of Trade Mark non-use, genuine or otherwise, during the relevant period, in relation to most of the Goods and Services.
Trade Mark use not substantially affecting identity
I have considered whether the Opponent’s evidenced use of the earlier mark might be regarded as use of the Trade Mark with additions or alterations that did not substantially affect its identity, within the meaning of s.100(3)(a).
In this context I have had regard to the comments of the Registrar’s delegate in Intellectual Property Development Corporation Pty Ltd. v Reynolds Consumer Products, Inc., also a s 92 application, as follows:
In Re Morny, the court found that it was not necessary for use of a trade mark “to maintain the precise form of embellishments or representations which at the time of the application were included in the form of the mark submitted for registration.” However, “that is not to say that where the form or design or embellishment forms part of the distinguishing matter, that can ever properly be disregarded by the registered proprietors”. In other words, where actual use includes distinctive and prominent elements which do not appear in the registered form of the trade mark, such use may not be considered use of the registered trade mark.
In Express Newspapers, the Hearing Officer, in discussing the Re Morny decision, stated: ...“MORNY” in plain block capitals is not a registration in an out of the ordinary form and may be used as a trade mark with various elements provided “Morny” remains discernable as the essential feature.
The proposition that use which alters the distinctive elements from the registered form does not constitute use of the registered form has been consistently followed.[23]
[23] [2015] ATMO 49 (9 June 2015)
I have considered whether the use of “Three Capes Eco Lodge” (trade mark registration 1499774) might be appropriately regarded a use of the Trade Mark with an addition that does not substantially affect its identity. In context, it seems to me that the phrase “Eco Lodge” is a distinctive element of the earlier mark because, although descriptive, it significantly qualifies “Three Capes”, by limiting its meaning to a consideration of accommodation and accommodation services. By Ms. Martin’s own acknowledgment, part of the reason for registering this Trade Mark was to seek to broaden her brand. Furthermore, dropping off two words/half the Trade Mark has a major visual and aural impact on their side-by-side comparison such that I am satisfied the they could not be said to be substantially identical. Therefore, I do not consider that the Opponent’s use of its earlier mark in the relevant period might be appropriately characterised as use of the Trade Mark with additions or alterations that do not substantially affect its identity.
Conclusions as to use
There is no evidence or claim that the Trade Mark has been relevantly assigned for the purposes of s.100(3)(b). Section 100(3)(c) does not apply.
It follows, in relation to the identified Goods and Services noted above, the Opponent has, in part, discharged its obligation to rebut the allegation made by the Applicant under s 92(4)(a)(iv) and (v) that, in the relevant period, it did not use, or did not in good faith use, the Trade Mark.
Correspondingly, I am satisfied that the grounds for its removal in relation to the remaining Goods and Services have been established: s.101(1).
Registrar's discretion
As previously noted, even where grounds for removal have been established, s.101(3) of the Act provides that, if the Registrar or the court is ‘satisfied that it is reasonable to do so’, it may decide the trade mark should not be removed from the Register.
The recent comments of Rares J in Calico Global Pty Ltd v Calico LLC are pertinent in this regard:
Section 101(3) can only apply because Calico LLC has established the grounds for removal of the registration in class 44 of the 184 mark. … But, the Court will only exercise its discretion under s 101(3) if the registered owner or assignee establishes, as the section requires, that it is reasonable to do so in its favour.
Thus, the question under s 101(3) is whether it is reasonable not to remove the trade mark despite its non-use or lack of use in good faith: Austin Nichols & Company Inc v Lodestar Anstalt (No 1) [2012] FCAFC 8; (2012) 202 FCR 490 at 496-497 [28], per Jacobson, Yates and Katzmann JJ.
…
Jacobson, Yates and Katzmann JJ held that for the discretion under s 101(3) to be exercised in favour of the registered owner, that person had the onus of positively satisfying the Court that it was reasonable that the trade mark should not be removed: Austin Nichols 202 FCR at 500 [44].[24]
[24] [2018] FCA 2096 at 125-127
Therefore, while acknowledging the broad discretion available under s.101(3), and having carefully considered all the claims and material before me, in the absence of any submissions from the Opponent in this regard, it has failed to positively satisfy me that the discretion should be exercised in its favour. In all the circumstances of this application, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark in respect of those identified Goods and Services for which use has not been demonstrated.
Decision
Section 101 of the Act relevantly provides:
101 Determination 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.
I direct that the Trade Mark be removed from the Register for all goods and services in respect of which it is registered other than as follows:
Class 29:
Food products made from seaweed; food products made of shellfish; food products made from cooked vegetables.
Class 30:
Pickling preparations for foodstuffs; Foods produced from baked cereals; Snack food products made from cereals; Snack foods prepared from grains; beverages made from coffee; coffee beverages, coffee-based beverages, Tea-based beverages; Beverages made of tea.
Class 32:
Alcohol free beverages; waters (beverages)
Class 35:
Tourism promotions (for others)
Class 43:
Hospitality services (food and drink)
Costs
Both parties sought costs. Given that both parties have been partially successful, I make no orders in this regard.
Mary-Ann Cooper
Hearing Officer
5 April 2019

[2019] ATMO 52

5 April 2019

Key Legal Topics

Areas of Law

Commercial Law

Statutory Interpretation

Legal Concepts

Costs

Delegate:	M.Cooper
Representation:	Opponent: Ms. J Pryor of Mark My words Trademark Services Pty. Ltd. Applicant: Ms. J Simpson of Pizzeys Patent and Trade Mark Attorneys
Decision:	[2019] ATMO 52 Trade Marks Act 1995 - Opposition to application to remove trade mark from Register under s.92(4)(a) – ground established for some goods and services – Registrar’s discretion under s.101 not exercised.