Keith George Mackrell v L'Oreal

[2008] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by Keith George Mackrell to application under section 92 of the Act by L'Oreal to remove trade mark number 762353(3) - BLAST - in the name of Keith George Mackrell

Delegate:

Alison Windsor

Representation:

Opponent:  Did not appear or provide submissions

Applicant:  Andrew Lockhart of Shelston IP, Patent and Trade Mark attorneys

Decision:

2008 ATMO 3

S92 opposition – no use of the trade mark demonstrated within the relevant period – trade mark to be removed from the register.

Background

1. Keith George Mackrell is the registered owner of a trade mark, current details of which appear below:

Trade mark number:     762353

Registered from:  15/05/1998

Goods specification:  Class: 3  Shampoos, conditioners, treatments, gels, mousses, hairsprays, bleaching preparations, hair colour, peroxides, perms, styling products

Trade mark:                   (“the trade mark”).

1. On 3 May 2005, L’Oreal filed an application for removal of the trade mark from the register for all its goods, in terms of the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (“the Act”). Mr Mackrell filed Notice of Opposition to the removal, citing as his single ground that he had used the trade mark during the period between its registration date, 15 May 1998, and 3 April 2005. The relevant three year period for the purposes of paragraph 92(4)(b) is 3 April 2002 to 3 April 2005.

2. The matter came before me, as a delegate of the Registrar, at a hearing in Sydney on 15 November 2007.  L’Oreal’s submissions were presented by Andrew Lockhart of Shelston IP.  Mr Mackrell was neither represented nor chose to file written submissions.

Evidence

1. The only evidence provided in this action is Mr Mackrell’s evidence in support.  This evidence consists of the following three declarations:

   • James Fares, made 24 April 2006
   • Keith George Mackrell, made 26 April 2006 with annexes KGM-1 to KGM-4
   • David William Thompson, made 26 April 2006 with annex DWT-1.

2. Mr Fares says he is a hair stylist with twenty years experience and his own hair styling business.  He states that at some time around late 2004, Mr Mackrell asked him to test some samples of hair care and styling products and he agreed to do so.  He was given a number of bottles of hair products, labeled with the word BLAST, as far as he remembers in the script Mr Mackrell has registered as his trade mark.  Mr Fares says his staff had also inspected the goods, and used them with clients.  As well as the bottled goods, he received printed product information sheets, and sheets to record his observations following testing the goods on clients.  He says he remembers the word BLAST being on the sheets, but he no longer has copies of any of the documents. 

3. Mr Mackrell says he registered the trade mark with the intention of using it to market a range of hair care products that he would formulate and promote, both in his salons and in the wider market.  He also intended to use the mark on goods such as hair clips and grips, and brought a range of these kinds of goods onto the market in 1997.  The hair accessories have been sold through approximately twenty outlets in Perth, Darwin and Sydney. (I note that these goods are not part of the goods claim for the registration under attack.)

4. At some time in 2003, Mr Mackrell decided to proceed with the project of launching and marketing a range of hair styling products.  To that end, he contacted a chemist to assist in the formulations.  Exhibit KGM-3, he says, contains invoices from the chemist in respect of goods.  The word BLAST appears on the invoices as a form of product identification.

5. Once the range of goods was formulated, Mr Mackrell contacted a number of hair salon owners he was acquainted with and asked them to take products for testing.  Each salon was provided with the goods in bottles labeled with the word BLAST, an information sheet as well as test result sheets.  None of these documents are still extant.  Once the testing was complete, the project was temporarily shelved.

6. Mr Mackrell then had dealings with a man he had known for many years, Mr Starling, who was in the business of producing and marketing hair styling and hair care products on a large scale.  Mr Mackrell says Mr Starling was interested in bringing out a range of hair care products under the BLAST name, and asked if it would be possible to use the trade mark for the purpose.  An informal agreement was made in a letter dated 12 March 2004, a copy of which is appended to the declaration as annex KGM-4.  It was Mr Mackrell’s understanding at the time when the agreement was drawn up that he retained the right himself to use the trade mark, and that Mr Starling was working on a projected product line on which he was authorised to use the trade mark.

7. The remaining declaration is that of David Thompson, a legal practitioner with Lavan Legal, the firm who was representing Mr Mackrell at the time.  Mr Thompson refers to his contact with Ms Jackie Pearson, a business associate of Mr Starling who was mentioned previously.  Ms Pearson advised Mr Thompson that she and Mr Starling were working on a range of hair care products with the intention of marketing them under the brand BLAST.  A copy of artwork to be used as a label, and incorporating the word BLAST is provided as annex DWT-1.  She also advised that the project had been suspended pending the outcome of the present non-use proceedings.

Discussion

1. At the date the non-use application was filed, section 92 of the Act relevantly provided:

   (1)      A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

   …

   (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:

   …

   (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.

2. Because of the date on which the non-use action was filed, a threshold requirement is whether or not the applicant for removal, L’Oreal, is a person aggrieved.  As there is no ground of opposition challenging that status, L’Oreal does not have to establish this threshold requirement: Intencity Pty Ltd v Gavin James O' Mahoney [1998] ATMO 28.

3. Section 100 of the Act places the burden of establishing use of the trade mark during the relevant period onto the opponent in the proceedings, Mr Mackrell. If he intends to rely on only slight evidence of use of the trade mark, the evidence he provides should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of his claims: Nodoz Trade Mark [1962] RPC 1.

4. In order to defeat the non-use application, Mr Mackrell must be able to demonstrate use “in the course of trade”, or if he cannot demonstrate actual use, he must be able to demonstrate that he has taken those preliminary steps which would be required to put his goods onto the market.  This matter is discussed in Shanahan’s Australian Law of Trade Marks and Passing Off, 3^rd Ed, relevant extracts beginning from [2.185] (page 40 et seq) following:

   The sign must be used “in the course of trade”, but this does not require an actual sale.  The word “trade” appears sufficiently wide to include any form of commercial dealing in goods or services. 

   …

   Moreover, the words “in the course of trade” mean “for the purposes of trade” rather than “in trade”, so that there may well be use in the sense of the 1995 Act though the transaction contemplated is never completed.  These words are also wide enough to cover steps necessary for the production of goods or provision of services, as well as the actual placement of the product or service upon the market.  There will thus be trade mark use when, in ordering goods from a manufacturer for resale, the owner of a trade mark specifies that such goods should bear that trade mark.  An offer for sale or advertisement directed to persons in Australia should also involve trade mark use for the purposes of the 1995 Act,

   …

   What appears essential is not that the goods be physically present in Australia (or even in existence) but that the offer of advertisement is for the purpose of soliciting trade in a product that will be supplied in response to an order.  …  As for advertising that precedes the “launch” of a new product, there may well be a distinction between actual use and the mere announcement of an intention to use, but most advertising of this kind will have been planned for the purpose of immediately stimulating orders (from dealers if not from the public), and is therefore use.

5. There is nothing in the evidence which can meet these requirements.  The information provided only shows that there were some very preliminary steps taken to put together a range of goods for sale.  The goods supplied for testing may have shown the trade marks on the bottles, but there was not at that time any indication that further goods would be available, whether or not the testing was successful.

6. Mr Mackrell needed to show a clear offer to trade in the goods during the relevant period, even if the goods were not yet ready to be put onto the market.  No information of this kind has been supplied.  He did not provide any information pointing to his plans for marketing his goods, and neither have Mr Starling’s plans been revealed.  In any case, the Thompson declaration which refers to development of the product line by Mr Starling and Ms Pearson is dated well outside the relevant dates and strongly supports an inference that there were no products available at the time, let alone earlier.

7. Despite this lack of hard evidence, there are provisions in the Act for a trade mark owner to retain his trade mark on the Register in the face of failure to use if there are extenuating circumstances. In this respect, section 100 of the Act relevantly provides:

   (3)For the purposes of paragraph 1(c) [which refers to grounds of removal under paragraph 92(4)(b)], 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:

   …

   (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.

8. Mr Mackrell says, at paragraph 20 of his declaration, that shortly after his products had been tested via the samples given out to a number of hair styling salons he was forced by other business projects to temporarily defer his project.  There is no further information given about this matter.  In Woolly Bull Enterprises Pty Ltd v Reynolds[1] Drummond J said:

   It can be accepted that the wording of s 100(3)(c) was deliberately adopted to give the subsection a wider operation than the narrowly worded provision contained in s23(4) of the 1955 Act. It is now not necessary to show unusual or abnormal, as opposed to normal or usual, trading conditions (a difficult concept to comprehend and apply) before s 100(3)(c) can operate. Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark.

   In the context of s 100(3)(c), there are, however, good grounds for reading “circumstances” as not embracing any event of any kind. The circumstances must be “an obstacle to the use of the trade mark by the registered owner”. This suggests that they must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner.

   [1] (2001) 51 IPR 149

9. Deferring the further development of the range of goods was Mr Mackrell’s choice and therefore does not constitute “an obstacle to the use of the trade mark”.  In any event, shortly following this deferral, Mr Mackrell and Mr Starling made their agreement about use of the trade mark.  However, as noted before, no information about a range of goods and no information about preparations for marketing any range produced or proposed by Mr Starling have been provided to me.

Decision

1. Given the information before me, I am satisfied that there has been no use of the trade mark within the relevant period.  I direct that registration 762353 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 discontinued or, in the event of a decision from the Court, the registration be subject to its orders.

Costs

1. L’Oreal has claimed its costs and having been successful is so entitled.  I award costs against Mr Mackrell according to the official scale.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

10 January 2008