Kabushiki Kaisha Moonstar v Converse Inc

[2012] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by Kabushiki Kaisha Moonstar to application under section 92 of the Act by CONVERSE INC. to remove trade mark number 617983 (25) -  star in crescent device - in the name of Kabushiki Kaisha Moonstar

Delegate:

Bianca Irgang

Representation:

Opponent: Ben Fitzpatrick of Counsel instructed by Davies Collison Cave

Applicant: Tracey Berger of Spruson & Ferguson Patent and Trade Mark Attorneys

Decision:

2012 ATMO 95

S 92 opposition–use shown for some class 25 goods – s101(3) - Registrar’s discretion – non-use application partially successful – trade mark to remain on the register for some goods

Background

1. Kabushiki Kaisha Moonstar (‘the opponent’) is the owner of a registered trade mark, current details of which are shown below:

Trade mark:   (‘the opponent’s trade mark’)

Trade mark registration:             617983

Filing Date:  7 December 1993

Specification:  Class 25: Footwear and accessories therefor and all other goods in this class

1. On 7 October 2010, Converse Inc (‘the removal applicant’) filed an application to have the trade mark removed from the Register of Trade Mark on the grounds of lack of intention to use and/or non-use for all the goods for which it is registered. The application was filed pursuant to section 92 of the Trade Marks Act 1995 (‘the Act’) and specified grounds pursuant to both paragraphs 92(4)(a) and 92(4)(b).

2. Kabushiki Kaisha Moonstar filed a notice of opposition to the application on 27 January 2011. The notice asserted that the grounds on which the removal applicant relied were not relevant because the opponent had the intention to use the trade mark for all relevant goods at the time of its filing and there had in any event been actual use of the trade mark for relevant goods during the relevant period. 

3. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 23 May 2012. Tracey Berger of Spruson & Ferguson appeared on behalf of the removal applicant. Ben Fitzpatrick of Counsel instructed by Davies Collison Cave appeared on behalf of the opponent.

Evidence

1. The evidence provided for this matter consists only of the following declaration:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Wataru Iyama	President of Kabushiki Kaisha Moonstar	6 June 2011	Exhibit WI1 to WI4

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Section 92 provides that a person may apply to the Registrar to have a trade mark removed from the Register if it has not been used for the continuous period of three years one month prior to the filing date of the removal application and/or the original trade mark applicant did not intend to use it in good faith for the relevant goods or services as at the date the application for registration was filed. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and/or services in respect of which the trade mark is or may be registered. Paragraphs 92(4)(a) and 92(4)(b) as they are relevant to this case provide the following:

   [1] Regulations 9.1 to 9.4 of the Trade Marks Regulations 1995.

   (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. 

3. Section 96 makes provision for a person to oppose any application made under section 92 by filing a notice of opposition with the Registrar. This notice must be in an approved form and must be filed in accordance with the Regulations[2]. 

   [2] Regulation 9.3

4. Section 100 specifies that the burden is on the opponent to a non-use application to rebut allegations of non-use or lack of intention to use as the case may be. The opponent needs to establish that the applicant for, or registered owner of the trade mark has used the trade mark (or the trade mark with additions or alterations not substantially affecting its identity) in good faith in respect of the relevant goods and/or services, and that this use occurred within the relevant periods as specified in the Act.[3] 

   [3] Regulation 9.4 refers to the serving of evidence in the opposition proceedings.

5. Section 101(1) provides the Registrar with the discretion to remove the trade mark from the Registrar “in respect of any or all of the goods … to which the application relates”, whilst s 101(3) explicitly provides that discretion may be exercised in the trade mark owner’s favour even if the grounds on which the application was made have been established if the Registrar is satisfied it is reasonable to do so.

Discussion

1. The trade mark under attack in this case had been registered for approximately 17 years by the time the application for its removal was made.  Paragraph 70.510 of Shanahan’s Australian Law of Trade Marks and Passing Off  (4^th ed, 2008), contains the following comments:

   Section 92(4)(a) and (b) provide distinct and alternative grounds for removal. Under para (a) it is necessary to establish: first, that the trade mark was registered without the necessary intention in good faith that it should be used; and secondly, that there had in fact been no use, or no use in good faith, earlier than one month before the application for removal. Under para (b) it is necessary to establish only that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal, subject to s 93(2) which provides that five years must have passed since the application for the registered trade mark was filed.

   Paragraph (a) thus merges with para (b) once the trade mark has been registered for five years, though it should be noted that the defence of "circumstances that were an obstacle to the use of the trade mark" which applies to para (b) is not available under para (a).

2. I am satisfied that this merging of the paragraphs is indeed what has happened, given the length of time which has passed since the trade mark was registered. Therefore, as provided for by section 100(1)(c), the onus is on the opponent to rebut the claim that there has not been any use of its trade mark in good faith within the three year period ending one month prior to filing of the application for removal on 7 October 2010 (‘the relevant period’). The opponent’s intentions at the time it filed the trade mark in 1993 are not relevant to my considerations and I do not intend to investigate or consider them.

3. The statutory declaration made by Wataru Iyama (‘the Iyama declaration’) states that the class 25 goods were sold within Australia during the relevant period in packaging which shows the trade mark. Exhibit WI3 accompanying the Iyama declaration is a copy of two invoices dated 12 September 2008 from the opponent to an Australian company which had purchased some shoes from the opponent. The invoices do not make direct reference to the opponent’s trade mark but do contain the description of goods with their respective code or style names and numbers. The specific codes I refer to are CARROT 1070 and Superstar J100.

4. Exhibit WI1 contains a photograph of what appear to be the shoes referred to in the invoice as CARROT 1070. The labeling on the shoe itself and the box the shoes are sold in demonstrates use of the opponent’s trade mark. Exhibit WI2 contains a photograph of the shoe referred to in the invoice as Superstar J100. The box that these shoes are sold in has barcodes on it which repeat the code Superstar J100. Both the box and shoes display the opponent’s trade mark. Further to this, exhibit WI4 contains print outs from the opponent’s 2008 Spring and Summer footwear collection which clearly shows the above mentioned shoes were part of the 2008 collection which corresponds with the invoices from 2008 in exhibit WI3.

5. These examples provide sufficient information to demonstrate genuine commercial use of the opponent’s trade mark in relation to shoes within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149. I am satisfied the opponent has established use for shoes in class 25 within the relevant period. Consequently the ground of removal under section 92(4)(b) is rebutted with respect of shoes in class 25. With respect to all other goods in the class the opponent has not established any use at all, or provided me with any evidence that is relevant to exercise my discretion in relation to those goods in terms of s101(3). The trade mark will be removed for those goods.

Decision

1. I am satisfied that the trade mark of registration No. 617983 has been used in the relevant period. However, this use has only been with respect to shoes. Therefore, I refuse to remove trade mark registration No. 617983 in its entirety but direct that it be limited to shoes in class 25.

1. Unless this decision is appealed, the trade mark will be removed for the remaining goods after one month from the date of this decision.

Costs

1. The opponent has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

19 October 2012