Kahn-Allen Pty Ltd v Weatherbeeta Pty Ltd

[2022] ATMO 184

TRADE MARKS ACT 1995

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

Re:Opposition by Kahn-Allen Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Weatherbeeta Pty Ltd for removal of trade mark number 73983 (18) – A TRUE TO LABEL GENUINE WIENEKE JACK WIENEKE  (Fancy) – in the name of Kahn-Allen Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: self-represented

Applicant: Cornwalls

Decision:

2022 ATMO 184

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark during the relevant period – Trade Mark to remain the Register

Background

1. This decision is pursuant to an application made on 27 August 2020 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Weatherbeeta Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

73983

Lodgement date

23 January 1939

Goods

Class 18: Saddles

(‘Registered Goods’)

Owner

Kahn-Allen Pty Ltd

Trade Mark

(‘Trade Mark’)

2.  Kahn-Allen Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 27 October 2020 and a Statement of Grounds and Particulars (‘SGP’) on 19 November 2020.  The Applicant filed a Notice of Intention to Defend on 23 January 2021.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

   4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 8 November 2021 the Applicant requested an oral hearing and paid the appropriate fee.  The matter was delayed due to the parties requesting a cooling off period and was further delayed following difficulties the Opponent had in respect of its legal representative.  It was finally set down for a hearing on 20 September 2022.  In line with usual practice, a letter was sent to the parties which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 30 August 2022 (‘Applicant Submissions’).  The Opponent did not pay the appropriate fee to be heard in this matter and did not attend the hearing, however I do not accept the Applicant’s submission that I should draw a negative inference against the Opponent for this reason.  At the hearing Len Hickey of Cornwalls represented the Applicant, appearing by video-link.

   5.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   Evidence in Support

   • Declaration by Jacqueline Kahn, Director of the Opponent, dated 29 April 2021 (‘Kahn 1’) together with Attachments A to F.

   Evidence in Answer

   • Declaration by Brett Philip Watson, master saddler and proprietor of saddle manufacturing business Front Row Saddlery, dated 4 August 2021 (‘Watson declaration’) together with Exhibit 1.
   • Declaration by Roger Jackson, Director, International Business Development of the Applicant, dated 4 August 2021 (‘Jackson declaration’) together with Exhibits 1-5.

   Evidence in Reply

   • Declaration by Jacqueline Kahn, dated 4 October 2021 (‘Kahn 2’) together with Attachments A to C.
   • Declaration by Tony Allen, Director of the Opponent, dated 4 October 2021 (‘Allen Declaration’) together with Attachments E to G.
   • Declaration by Kenneth Theo Dalton, retired saddle maker and former partner in saddle manufacturing business Queensland Saddlery Co, dated 27 September 2021 (‘Dalton declaration’).

   The Relevant Provisions

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   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)  …

   (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.

   7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 27 July 2020 (‘relevant period’).

   8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) …:
   (b)  …
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   11.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4]

   Discussion

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

2. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[5]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[6]    

   [5] s 100(3)(a) of the Act and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

   [6] Act s 7(3).

3. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

4. The Opponent’s evidence in this matter consists of four declarations.  Khan 1 states that the Opponent purchased the Trade Mark from its previous owner in 2015 and as part of that purchase acquired the original metal stamps (to stamp the Trade Mark on the leather saddles produced by the Opponent).  The Trade Mark refers to John/Jack Wieneke, a well-known horse saddle maker in Queensland Australia, and was first registered in 1939. 

5. Khan 1 states that the Opponent has acquired saddle trees, to manufacture saddles, and has used the Trade Mark on 26 new saddles.  It has sold 5 of those saddles to the public between 30 June 2015 and 27 July 2020.  In addition, it has displayed the saddles bearing the Trade Mark at its store since 2019, offering them for sale.  As at 27 July 2020, the Opponent had approximately 20 saddles bearing the Trade Mark available for sale to the public.   The Opponent has also informed a representative of the Applicant, Brett Watson, that the Opponent’s has and continues to make use of the Trade Mark.

6. In support of the statements above, Khan 1 includes undated photos of the saddles, the metal stamp used to brand the saddles with the Trade Mark and a saddle bearing the Trade Mark. It also includes a dated photo from the Opponent’s Facebook page within the relevant period showing saddles for sale through it is impossible to determine if the saddles in that photo bear the Trade Mark.   It also includes further statements from third parties that the Opponent’s saddles bearing the Trade Mark were on public display and available for sale in the relevant period.

7. Khan 2 contains various criticisms of the evidence of the Applicant that are unnecessary to set out here.  I note that Khan 2 indicates that the Opponent’s Riddells Creek store was established in June 2019 and commenced offering saddlery, including saddles bearing the Trade Mark, from that date.  Khan 2 also states that between 2015 to May 2016 the Opponent’s saddles were manufactured by Queensland Saddlery Co, and then upon receipt by the Opponent, the Trade Mark was physically stamped on the Opponent’s saddles by the Deponent or her business partner Tony Allen.  Khan 2 contains communications between the Opponent and Queensland Saddlery Co for the production of saddles.

8. The Dalton declaration confirms that Queensland Saddlery Co produced saddles for the Opponent in 2015-16.

9. The Allen declaration states that the Opponent has continuously displayed for sale saddles bearing the Trade Mark since June 2019.  The Deponent also gives evidence that on 21 January 2020 he had a conversation with Bret Watson who claimed that he had legal rights to the ‘Jack Wieneke’ brand.

10. The Applicant’s evidence consists of two declarations. The Jackson declaration gives evidence about the Applicant and the Wienecke saddles.  Much of the Jackson declaration goes to the historical use of the Wienecke saddles, including the type of saddle produced by Mr Wienecke, various ownership disputes surrounding the Trade Mark and the manner in which the Trade Mark was assigned to the Opponent.  Such material is not relevant in a non-use application, which simply concerns whether the Opponent has used the Trade Mark in respect of saddles in the relevant period.  

11. Mr Jackson also provides his opinion that the metal stamp used by the Opponent does not show the Trade Mark.  I do not agree with Mr Jackson and consider that both the metal stamp and the mark on the saddles displayed in Khan 1 are substantially identical to the Trade Mark as registered – the differences between the two are minor that do not substantially affect its identity[7], being some minor spacing and a flourish surrounding the first word ‘A’.  Mr Jackson correctly notes that Khan 1 does not provide any receipts showing the sale of saddles bearing the Trade Mark nor any clearly dated photos showing the display of saddles bearing the Trade Mark in the relevant period.

    [7] See s100(3) of the Act.

12. The Watson Declaration gives evidence about the Deponent and its company, as well as evidence about conversations he had had with an associate of the Opponent, which are not necessary to summarise in this matter.

13. The Applicant’s Submissions correctly note that there are gaps in the evidence provided by the Opponent; namely the lack of documented evidence of sales of saddles bearing the Trade Mark and the lack of dated photographs of the unsold saddles bearing the Trade Mark being displayed for sale.  However, when considering the Opponent’s evidence as a whole, I am satisfied, on the balance of probabilities that there has been use of the Trade Mark for the saddles in the relevant period.

14. I am satisfied that the Opponent, upon acquiring the Trade Mark, also acquired the original metal stamps (to stamp the Trade Mark leather saddles).  I am satisfied that the Opponent had engaged a third party to manufacture various leather saddles which were delivered to the Opponent.  I am satisfied by the evidence of Ms Khan that she or Mr Allen physically applied the Trade Mark to those saddles (that they wished to sell under the Trade Mark).  I note that the evidence of the Opponent includes photos of saddles bearing the Trade Mark (Attachment C1 and C2 to Khan 1).  The EIS and EIR then contains multiple statements from both the Opponent’s directors and third parties that the saddles bearing the Trade Mark were available for sale in the relevant period.  These statements have a ring of truth to them; indeed it is difficult to identify the alternate course of action consistent with the evidence provided by the Opponent; it is implausible that the Opponent, which is involved in the retail of saddles, acquired expensive saddles which they marked with the Trade Mark and did not publicly offer them for sale them in their store in the relevant period.

15. The Applicant makes various criticisms of the Opponent’s evidence, but I note that the mere fact that the Opponent’s evidence contains gaps does not mean it is false; it is plausible that the Opponent simply took no publicly dated photographs of its wares in its stores prior to the commencement of the opposition proceeding, and the evidence of the manner in which the Opponent and Queensland Saddlery Co engaged in commerce does not suggest that the Opponent had a detailed system of records that it has chosen not to provide to the Registrar.  I consider the Applicant’s submission that Ms Khan has given false and misleading evidence as to who manufactured the saddles to be unfair and unwarranted; the fact that the saddles displayed for sale by the Opponent were externally rather than internally manufactured is of no relevance given the evidence that the Opponent’s directors reviewed the saddle and physically applied the Trade Mark to each individual saddle.

16. The Applicant notes that the evidence of the Opponent is that the saddles on which the Trade Mark was applied to were manufactured before the relevant period.  This is correct but not relevant to my conclusion; I am satisfied that Opponent has displayed and offered for sale saddles bearing the Trade Mark in the relevant period, which amounts to use of the Trade Mark; the manufacturing date is not determinative.  

17. I note that the burden is on the Opponent to provide evidence of use.  While the Opponent’s evidence has significant gaps, it does provide clear evidence of a course of conduct (namely the Opponent displaying the saddles bearing the Trade Mark for sale in the relevant period) that I consider on the balance of probabilities did take place.  Any course of conduct consistent with the documentary evidence provided before me but not involving Trade Mark use (for example that the Respondent chose not to mark the saddles with the Trade Mark, or chose not to offer them for sale) is inherently highly unlikely to have occurred.

18. Accordingly I am satisfied that the Opponent has used the Trade Mark in Australia in respect of the Applicant’s Goods in the relevant period. 

    Decision

    30.     The Opponent has established its opposition to removal. I refuse to remove the Trade Mark from the Register.

19. If the Registrar is served with a notice of appeal in the relevant timeframe, the disposition of this removal application will be dealt with as the Court sees fit.

    Costs

    32.     The Opponent has been successful in relation to its opposition to the application for removal of the Trade Mark and has requested its costs.  The award of costs is a matter of discretion and while the successful party normally has an entitlement to costs, such an entitlement can be forfeited in the event of improper conduct.  In the present case the Opponent has not at any time paid the appropriate fee entitling it to attend the hearing.  Notwithstanding this the Opponent sought and obtained a delay in the hearing date on the basis of difficulty in engaging with its solicitors.  While I have sympathy for the Opponent at this time given its difficulty in engaging with its then representative, the Opponent’s conduct resulted in the Applicant incurring unwarranted costs arising from the Opponent seeking and obtaining a postponement of a hearing that both at the time and subsequently the Opponent did not have an entitlement to participate in.  As such I do consider it appropriate to make an award of costs in this matter.   

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    18 October 2022