K D Rausch Pty Ltd v Oettinger Brauerei

[2003] ATMO 69

TRADE MARKS ACT 1995

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

Re:Oppositions by K D Rausch Pty Ltd to application under section 92 of the Act by Oettinger Brauerei GmbH to remove trade mark number 881991(32) - OETTINGER BEERS - in the name of K D Rausch Pty Ltd

Delegate:

Terry Williams

Representation:

Opponent: no appearance

Applicant: Chris Sgourakis, solicitor, Griffith Hack & Co, patent attorneys

Decision:

S 96: mark used in Australia but in bad faith at time of filing and subsequently. Removal ordered.

1. Trade mark registration 881991 is in the name of K D Rausch Pty Ltd ("Rausch").  It is for the trade mark OETTINGER BEERS, and is registered in class 32 for "Beer brewed in Germany".  The registration has had effect from its filing date, 11 July 2001.

2. A large German brewery company, Oettinger Brauerei Gmbh, ("the brewery") claims to be aggrieved by the registration of the trade mark and has filed an application to remove the trade mark from the register, for all of the goods in question, under the terms of s 92(4)(a) of the Trade Marks Act 1995 (the Act).  The surrounding relevant provisions read:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may ... 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.

(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 date of filing of the non-use application, I note, is 30 April 2002);

1. The owner of the trade mark registration, Rausch, has opposed removal and the two parties have filed and served copies of their evidence, in support of the opposition and in answer to the opposition, respectively.  I am now to decide the opposition, under delegation from the Registrar of Trade Marks, after hearing the parties.  At that hearing, the opponent neither appeared nor filed written submissions.  The removal applicant was represented by Chris Sgourakis, solicitor and principal of the attorney firm of Griffith Hack.

2. The facts that emerge from this evidence are not disputed, nor has the standing of the brewery as a person aggrieved been contested.  The essential facts are these:

3. On 8 March 2000, Rausch approached the brewery with a proposal to purchase beer to be exported by the brewery to Rausch in Australia.  It is common ground, indeed, that beer was exported in response to that approach.  It was subsequently used for commercial promotion purposes by Rausch, who offered it for sale to the German community in Queensland.  Later still, on 12 June 2001, the brewery informed Rausch that another company had been appointed as the Australian distributor of the brewery's products.  The brewery suggested that Rausch should contact that other company should it wish to continue to distribute the beer in question.  Shortly thereafter, Rausch filed an application to register the trade mark OETTINGER BEERS in its own name.  That application ultimately gave rise to the now-attacked registration.

4. Other background facts are also relevant.  Rausch has admitted, in a letter that is in evidence, that it has applied to register six other trade marks that are identical to those of other well-known German brewing companies.  Of those, the records of the Trade Marks Office show that three have proceeded to registration in the name of Rausch.  Of the three that have failed, all the marks in question have been registered as a result of applications, either prior or subsequent, by German companies.

5. As regards the present trade mark, there has been use as an indication of commercial origin of goods in commerce.  As the exporter and supplier of goods, put into Australian trade under the trade mark, the brewery was, in law, the owner of the trade mark in Australia[1].

   [1] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA 12 IPR 321 and the earlier Supreme Court decision at 10 IPR 402 at 413

Issues and Consideration

1. The Act contemplates "use" of a trade mark in a number of senses.  Not everyone who uses a trade mark need be its owner.  Authorised use is one case in point.  At the other end of the scale, an infringer is also someone who uses a trade mark - that is the essence of the action.   

2. The submissions on behalf of the brewery go in a somewhat different direction.  Mr Sgourakis referred to Estex Clothing Manufactures Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254. He relied on that case to show that Rausch has not used the trade mark ín what he called "the true trade mark sense". Firstly, Windeyer J at pp 38-39:

   After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connexion in the course of trade between them and him, the registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods.  The mark is his property although the goads are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they arc upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.

3. He then noted the comments of the High Court on appeal from Windeyer J's decision at first instance (emphasis added by Mr Sgourakis).

   By the Act a trade mark means “a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user to use the mark, whether with or without an indication of the identity of that person” and “use” in s.23 must be understood in this context.  Its denotation is not limited by any concept of the physical use of a tangible object and we have no doubt that when an overseas manufacturer projects into the course of trade in this country by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the Mark is that of the manufacturer.  Indeed, in this case, the respondent [the manufacturer] is the only person who has the right to use the mark and the retailer to whom the goods have been sold for re-sale does not, in any relevant sense, use it.

4. However, there is a flaw with this argument as it applies to the current facts.  If Mr Sgourakis is correct and Rausch has not used the mark in a sense with which the Act can deal, all registered owners are potentially without redress under the Act if confronted by firms that import and distribute goods, bearing the mark in question, but originating from some other supplier. 

5. Clearly, the Act provides a remedy to deal with use, taking that word in the sense required by s120, of a trade mark by an Australian importer/distributor where the goods are non-genuine goods.  It could not be said, in such a case, that the importer/distributor was not using the trade mark.  If the importer has gone further (as here) and has misappropriated the right to be registered as the owner, I do not see how it thereby ceases to be a user of the trade mark.  It cannot be said that the actions that would ordinarily amount to use of a trade mark in commerce somehow cease to be use either because the goods originate from the true owner and are thus genuine goods or because the actions were taken by someone who has misappropriated the right to be registered as the owner.  That would be what the High Court, in Estex, supra, called an extraordinary result.  I therefore believe that I should not rely on the part of the decision to which Mr Sgourakis directed me as anything more than the obiter dictum that it is.  As a general statement of principle it is doubtless directed to the correct ends, but cannot be applied to the present facts.  Estex was a case where the right of the foreign exporter of the goods to be registered as the owner was under attack.  The principle in the present case is an inverted reflection and obiter remarks do not provide a safe guide.

6. I conclude, therefore, that there has been use by Rausch.  However, at and subsequent to the date of filing of the application for registration, it has been use in bad faith.  In saying this, I realise that I am giving the words "good faith" in s 92 significant work to do.  It is generally said that they are used in s 92, as in s 23 of the previous legislation, in a restricted sense, to filter out bogus or non-commercial use that might otherwise save a registration.  There is no doubt that is their primary function[2]. However, there is no reason that this must be the only function.  The words have a plain meaning that seems to me to be somewhat broader than "genuine commercial" use.  The same words are used in the infringement provisions, and are there given a less restricted meaning.  See the discussion of this issue in Shanahan's Australian Law of Trade Marks and Passing Off, 3^rd Edition, 18.195 - 18.230.

   [2] See for instance the comments of Drummond J in Woolly Bull Enterprises v Reynolds [2002 FCA 261

7. This is clearly a case where the evidence demonstrates that the registered owner has done more than misinterpret, perhaps innocently, the laws of ownership.  It has been guilty of more than what the courts often call "sharp business practice"[3].  The timing of the application for registration, together with the history of similar applications, satisfy me that Raush was acting to frustrate the operations of the owner in law of the trade mark.  That owner was the brewery, whose rights Rausch itself had already recognised and, indeed, created, by importing the goods in question and putting them into trade in Australia. 

   [3] The Seven Up Co v O. T. Ltd 75 CLR 203 at 211

8. In an opposed non-use matter, what was formerly the onus to establish non-use has been reversed (s 100) when compared to the former s 23 of the 1955 legislation.  In the event that an opponent shows use of the trade mark, it is then the applicant who bears the onus of establishing lack of good faith attending that use.  In this case, the evidence negates any presumption that the relevant actions were blameless.  While Rausch has used the trade mark as an importer and distributor, its actions at the time it filed the application for registration require me to find that, at that time, it set out to take up rights that it already knew belonged to another.  Therefore, the only reasonable interpretation open to me is one of filing, and subsequent use, in bad faith, sufficient to authorise removal.

9. Obviously, there are no facts that might suggest that I should exercise my discretion to leave the mark on the register as is open to me under s 101.

Conclusion

1. I direct that the trade mark be removed from the register after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that removal shall not occur until the appeal has been decided or discontinued.

Costs

1. I direct that Rausch pay the costs of the brewery to the extent set out in the regulations.

T. E. Williams

Hearing Officer

Trade Marks Hearings

19 November 2003