Kabushiki Kaisha MoonStar v Converse Inc

[2010] ATMO 87

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 558717(25) - Moon and Star device - in the name of Kabushiki Kaisha Moonstar

Delegate:

Alison Windsor

Representation:

Opponent:  Peter Hallett of Watermark Patent and Trade Mark Attorneys

Applicant:  Kajaque Kortian of Spruson & Ferguson Patent and Trade Mark Attorneys

Decision:

2010 ATMO 87

S92 opposition: Trade mark owner relying on a single transaction – evidence insufficient to confirm commercial use – non-use application successful and registration to be removed from the Register – costs awarded against trade mark owner.

Background

1. Kabushiki Kaisha Moonstar (also known as Moonstar Company, and referred to in this decision as ‘Moonstar’) is the owner of Australian registered trade mark number 558717.  The registration dates from 1 July 1991 and specifies the following goods in class 25:  footwear, parts and fittings therefor in class 25.  The trade mark as it appears on the Australian Register of Trade Marks is shown below:

1. On 6 June 2008, Converse Inc (‘Converse’ or ‘the non-use applicant’) filed an application to remove the Moonstar trade mark from the Register on the basis of non-use. The non-use application nominated grounds for removal in respect of both paragraphs 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’).

2. On 10 October 2008, Moonstar filed notice of opposition to the removal application.  The parties then filed and served their respective evidence in support, evidence in answer and evidence in reply, the process being completed by 20 October 2009.  Both parties then requested to be heard.

3. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 9 July 2010.  Peter Hallett of Watermark Patent and Trade Mark Attorneys represented Moonstar.  Khajaque Kortian of Spruson & Ferguson Patent and Trade Mark attorneys appeared for Converse.  Both representatives made their submissions via telephone conference.

Evidence

1. Moonstar’s evidence consists of two declarations made by Kaoru Motomura on 24 December 2008 and 16 October 2009.  Converse provided the declaration of Stephanie Vardavas made 28 July 2009. 

The Moonstar evidence

1. Kaoru Motomura is the president of Moonstar.  He states that Moonstar is one of Japan’s leading footwear companies, founded in 1873.  It is an exclusive distributor of well known footwear brands and owns its own footwear brands such as TSUKIHOSHI children’s footwear.[1] 

   [1] ‘Tsukihoshi’ is a Japanese word that translates into English as ‘moonstar’.

2. Mr Motomura states that at the time of filing the application in 1991, Moonstar had a genuine intention to use the trade mark in Australia.  As one of Japan’s leading footwear companies it planned to sell footwear products under the trade mark in Japan and to export footwear under the trade mark to other countries, including Australia.

3. On or about May 2007, Mr Motomura says, Moonstar shipped 22 pairs of footwear to Ms Akiko Otsu at an address in Queensland on the understanding that Ms Otsu would be re-selling the footwear to her Australian customers.  A copy of Moonstar’s invoice to Ms Otsu is included as Exhibit 1 to the first Motomura declaration as is a copy of a FedEx document relevant to the shipment.

4. Mr Motomura says that Moonstar does not have any information in relation to the identity of Ms Otsu’s customers, or any documentation relevant to the resale of the products.  The footwear sold to Ms Otsu featured a trade mark which he said:

   is very similar to the Trade Mark, with the main difference being that the mark appearing on the footwear is a representation of the ‘Moon and Star’ device viewed from a different perspective angle to the mark as represented in registration no 558717.

5. This trade mark is shown at Exhibit 4, and appears below:

1. Mr Motomura says that Moonstar’s footwear products are available for purchase in Australia via the internet from online retailers ‘such as tiptopshoes.com’.

The Converse evidence

1. Ms Vardavas is an attorney for Converse.  Her declaration refers to enquiries made on behalf of Converse into the identity and whereabouts of Ms Otsu.  She also refers to the price at which the shoes were sold to Ms Otsu, giving her opinion that it appears to be inconsistent with actual retail price of shoes in the marketplace.  She also gives her opinion that the documents referring to the footwear shipment are unclear and that there is no representation of the actual trade mark on the picture of shoes attached to the Motomura declaration.

2. Ms Vardavas refers to the internet sales reference made in paragraph 10 above and annexes to her declaration an extract from the website which she says lists all brands available on the website and notes that the list does not include Moonstar brand shoes.[2]  She also declares that any representations of the trade mark which are included in the Motomura declaration and exhibits do not show use of the trade mark as it is represented on the Australian Register of Trade Marks.

   [2] I note, however, that ‘Tsukihoshi’ brand shoes do appear on the list.

The relevant law

1. The application for removal of Moonstar’s trade mark registration nominated both of the grounds made available by the Act. These grounds are set out below:

   Section 92. application 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.  

2. Section 93 gives the time frames for making applications for removal. An application for removal under paragraph 92(4)(a) may be made at any time after the filing date of the trade mark under attack. However, in respect of paragraph 92(4)(b), the application may not be made before a period of 5 years has passed from the filing date of the application for registration of the trade mark.

3. The provisions of section 100 of the Act specify that the onus is on the opponent to rebut any allegations made under paragraphs 92(4)(a) and (b). Moonstar may rebut the non-use applicant’s allegations by demonstrating the following:

   • in respect of allegations under paragraph 92(4)(a), use of its trade mark in good faith and in respect of the relevant goods and services at any time before the period of one month ending on the day on which the non-use application was filed;
   • in respect of allegations under paragraph 92(4)(b), use of its trade mark in good faith and in respect of the relevant goods and services during the period of three years ending one month before the day on which the non-use application was filed.

4. The relevant period for the purposes of paragraph 92(4)(b) is the three year period ending on 6 May 2008.

5. Any use relied upon must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 (‘Woolly Bull’) at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’

Discussion and Reasons

1. Moonstar is relying on a single transaction to support its claims to have used its trade mark in Australia. This transaction is within the relevant period for the purposes of paragraph 92(4)(b) but keeping in mind the words of Wilberforce J, it needs careful scrutiny.

2. The transaction is evidenced by an invoice at exhibit 1 to the first Motomura declaration.  The invoice was sent to an address in Carina Heights in Queensland, to the attention of Ms Akiko Otsu.  The invoice states that the goods were shipped from Fukuoka, Japan to Australia via FedEx ‘sailing on or about 17 May 2007’.  The invoice covers ‘22 pairs of MoonStar footwear’ which are further described as 20 pairs of ‘Hadashikko 01’ and two pairs of ‘Tsukihoshi’.  The unit price given is US$5, and the total value of the invoice is US$110.  The invoice is signed by S Okamoto, general manager of Moonstar’s Overseas Affairs department.

3. Exhibit 2 to the same declaration consists of a copy of a FedEx ‘Expanded Service International Air Waybill’.  The copy provided is of very poor quality, but it is possible to discern the delivery address, telephone number and name of recipient.  It is also possible to note that the value of the shipment is $110 and that it consists of footwear described as ‘Moonstar shoes’.  If there is any date on the waybill, I am unable to read it.

4. Exhibit 3 to the declaration consists of pictures of shoes which Mr Motomura says are ‘photographs of the relevant footwear styles sold by Moonstar to Ms Otsu’.  The word ‘MoonStar’ and the version of the trade mark shown previously at paragraph 9 appear inside the shoes and on the shoe box.  The second Motomura declaration clarifies that the photograph is of the relevant footwear style, but is not a photograph of the actual goods shipped to Ms Otsu.  It states that the trade mark on the shoes sent to Ms Otsu differs slightly from that of the registration in that it is viewed from a different perspective angle.

5. Converse argued that the trade mark shown in use on the shoes allegedly of the kind sent to Australia was not, in any event, the trade mark subject of registration 558717.  Converse said that the trade mark on the footwear was a composite mark with the word MOONSTAR and a device (shown at paragraph 10 previously) which is, in fact, the subject of Moonstar’s registration 617983. 

6. I note that Moonstar has indeed registered that particular moon and star device (‘the italic version’), and also the word MOONSTAR for goods in class 25. I am satisfied that the trade mark shown on the shoes is a substantially identical trade mark and thus meets the requirements of subsection 7(1) of the Act. My reasons for this satisfaction follow.

7. There is nothing that I am aware of which precludes a trader from using two registered trade marks in close proximity to one another on the relevant goods.  It is also clear to me that such use does not mean that the trade marks must be considered as a combination rather than as separate elements.  In my view, if the two trade marks can be seen as two separate elements, they may be treated as two separate elements.  This is the case as I see it here.

8. As far as the device trade mark is concerned, I am satisfied that the italic version of the moon and star device is substantially identical to the trade mark subject of 558717. The two trade marks consist of the same components, and the differences in the italic version compared to the original are not such that the identity of the trade mark is substantially affected. The use thus meets the requirements of subsection 7(1) of the Act and may be considered as use of the trade mark under attack.

9. Returning to the transaction itself, it appears from these documents that 22 pairs of shoes were sent to Australia at some time in 2007.  However, there is no indication of what happened to the shoes either in transit or after arrival in Australia, assuming the shipment even made it here.  As there is no indication that the invoice was ever paid for, there is no indication that Ms Otsu ever received the shipment.  To all intents and purposes the shoes left Japan via the FedEx service and after that they appear to have disappeared from sight. 

10. Given the lack of information about the fate of the shipment of footwear, Moonstar’s evidence of a single transaction cannot in any way be seen as providing either ‘conclusive proof’ or the ‘overwhelmingly convincing proof’ envisaged by Wilberforce J in the ‘Nodoz’ case.  I am satisfied that Moonstar has not met the onus upon it to establish any commercial use of its trade mark in Australia at any time since its trade mark was filed.

Registrar’s discretion – Section 101

1. Section 101 of the Act gives the Registrar the discretion to allow a trade mark to remain on the register even if the non-use application has been successful. There are various matters which may be taken into account in making this decision. In this case, however, I can find no mitigating factors which would persuade me to use the discretion in Moonstar’s favour.

Decision

1. Converse has been successful in its removal application.  I direct that trade mark registration 558717 be removed from the Register in its entirety after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

1. Converse has been successful in this action and is entitled to its costs.  I award costs against Moonstar according to the Official scale.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

13 September 2010