Kerrie Boylett v Jan Scherrer

[2012] ATMO 30

TRADE MARKS ACT 1995

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

Re:Oppositions by Kerrie Boylett to applications under section 92 of the Act by Jan Scherrer to remove trade mark numbers 262202 (25) and 965450 (9, 16, 25, 35, 41) - JAM - in the name of Hemmes Trading Pty Limited

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Brian Short and Susan Darmopil of Jirsch Sutherland IP Applicant: Mr Angus Lang of counsel
Decision:	2012 ATMO 30 S 92 opposition– no use shown for class 25 goods– s101(3) - Registrar’s discretion not appropriate – non-use application successful – trade mark 262202 to be removed from the Register in its entirety – class 25 to be removed from trade mark 965450.

Background

1. Hemmes Trading Pty Limited (‘the trade mark owner’) has two registered trade marks, current details of which are shown below:

   Trade mark:  JAM

   Trade mark registration:     262202

   Filing Date:  27 September 1972

   Specification:  Class 25: All articles of clothing including leather clothing and shoes

   Trade mark:  

   Trade mark registration:     965450

   Filing Date:  11 August 2003

   Specification:  Class 9: Apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers and recording disks none of the foregoing containing or for use with improvised or unrehearsed performances

   Class 16:Paper, cardboard and goods made from those materials not included in other classes; printed matter, photographs; stationery; plastic materials for packaging (not included in other classes) none of the foregoing relating to improvised or unrehearsed performances

   Class 25:Clothing, footwear and headgear

   Class 35:Business management; business administration; office functions none of the foregoing services being offered in relation to improvised or unrehearsed performances

   Class 41:Entertainment for the purpose of setting up recording companies, organising and operating festivals, setting up DJ companies and for the performance of live entertainment; none of the foregoing being unrehearsed or improvised performances

   Endorsements:  Provisions of paragraph 44(3)(b) applied. Provisions of subsection 44(4) applied.

2. On 22 September 2010, Jan Scherrer (‘the non-use applicant’) filed applications to have the trade marks removed from the Trade Marks Register on the grounds of lack of intention to use and/or non-use for all the goods for which it is registered. The applications were filed pursuant to section 92 of the Trade Marks Act 1995 (‘the Act’) and specified grounds pursuant to paragraph 92(4)(b).

3. Kerrie Boylett (‘the opponent’) filed a notice of opposition to the applications on 11 November 2010. The notice asserted that the grounds on which the non-use applicant relied were not relevant because the original trade mark applicant 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 marks on the relevant goods and services during the relevant period. 

4. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Sydney on 20 October 2011. Mr Brian Short of counsel instructed by Jirsch Sutherland appeared on behalf of the non-use applicant. Mr Angus Lang of counsel represented the opponent.

   Evidence

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

Declarant	Position	Date Made	Exhibits
Evidence in Support
Carolina Jenson	Owner of TCJ Pty Limited	1 December 2010	-
Kerrie Boylett	General Manager of Hemmes Trading Pty. Limited and JAM Recording Pty Limited	14 January 2011	Un-numbered

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 because it has not been used for a continuous period of three years and/or the original trade mark applicant did not intend to use it in good faith for 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

6. The trade marks under attack in this case have been registered for approximately 30 and 9 years respectively 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), makes 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).

7. 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 marks were 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 Hemmes Trading Pty Limited’s (‘the owner’) trade marks in good faith within the three year period ending one month prior to filing of the applications for removal on 22 September 2010 (‘the relevant period’). The trade mark owner’s intentions at the time it filed the trade marks in 1972 and 2003 are not relevant to my considerations and I do not intend to investigate or consider them.

8. The statutory declaration of Mr Kerrie Boylett (‘the Boylett declaration’) states that the JAM trade marks have been used continuously on all the goods and services listed in the trade mark registrations. Here the opponent has supplied a number of exhibits which he claims demonstrate the owner’s continual use of the trade marks through the relevant period. However, many of the exhibits are not persuasive in and of themselves to prove use of the trade mark on clothing through the relevant period.

9. Trade mark registration no. 965450 covers goods in class 9, 16 and 25 and services in classes 35 and 41. It is clear from the non-use applicant’s submissions that they only seek partial removal of this trade mark for those goods listed in class 25. It is also clear from the opponent’s evidence that the owner has used its JAM trade mark on music CDs, posters the organization of music festivals and music festivals. The sticking point between the parties is whether or not the owner has used its JAM trade marks on clothing.

10. The Boylett declaration states that the Merivale group of businesses, which includes the owner, has been using the trade mark JAM for its clothing since 1955. According to the Boylett declaration the JAM trade mark has been famous throughout Australia in clothing since 1955. However, the opponent’s evidence does not demonstrate or support this statement. 

11. Contained in the attachments accompanying the Boylett declaration are photographs and examples of the owner’s use of its JAM trade marks on clothing. The non use applicant submits that the owner has not used its JAM trade mark during the relevant period on clothing. They also content that any use of the JAM trade mark on t-shirts and singlets was merely ancillary to the entertainment services which the owner provides.

12. The non use applicant directed me to the recent case of Siberquelle GmBH v Maselli-Strickmode GmBH [2009] ECR 1 – 137, where the European Court of Justice (‘ECJ’) held that there is not genuine use of a registered trade mark where promotional items (alcohol-free drinks) bearing a registered trade mark are handed out as a gift to those who purchased the clothing of the registered proprietor. In the judgment, the ECJ held that such use was not genuine use. The ECJ also held that where items are not distributed “with the aim of penetrating the market for those goods”, there is no genuine use.

13. This is a persuasive argument. Based upon the opponent’s evidence it is clear that the owner has used its JAM trade mark on t-shirts and singlets and hats. However, it is also equally clear that the JAM trade mark has been used on these clothing items to denote ownership of the ‘good vibrations’ music festival. This is demonstrated through the use of the trade mark on these clothes which is as follows:

14. The expression ‘JAM presents’ shows that the main impetus behind using the JAM trade mark on the t-shirt was not for the promotion of clothing but rather, to promote the opponent’s music festival. I note that only small numbers of these clothing items were purchased by the opponent for sale at its music festivals. While the High Court in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 recently reiterated that a “relatively small amount of use may be sufficient” to maintain a registration, the case of CSL Ltd v Hong Kong CSL Ltd [2008] ATMO 23 held that the promotional items were marketing instruments. On this basis, the hearing officer held that the use of a trade mark on goods for the purpose of marketing other goods or services did not amount to use of the trade mark in connection with the goods for which the trade mark was registered.

15. Given the evidence before me, I am satisfied that this situation is close to the CSL case. The owner has used its JAM trade mark on clothing items such as singlets and t-shirts which is evidenced by photographs and invoices in the opponent’s evidence. However, there is only a minimal amount of evidence that these “JAM presents good vibrations” t-shirts and singlets were actually sold to consumers by the owner. Instead, given the very low numbers of t-shirts and singlets purchased by the owner and the photographs in its evidence, it is likely that the main reason for the owner’s purchase of these goods was for the goods to be used when promoting it’s music festival activities. In the opponent’s photographs the people wearing the t-shirts are holding multiple copies of CDs with “good vibrations festival” on them.

16. I also note that the invoices relating to sale of the owner’s merchandise refers to it as GVF merchandise, not JAM merchandise and there is no description of what goods make up the broad term ‘merchandise’. However, I find it doubtful that sales of 50 to 100 t-shirts bearing “JAM presents good vibrations” would come to the considerable amount listed in the invoice. It is likely that other merchandise goods such as music CDs were included in the invoice. In any event, the non use applicant submitted that the evidence of use was de minimus and insufficient to resist the application for partial removal.

17. There are several of legal propositions which might be laid out usefully here. The first is that use as a trade mark in the course of trade does not necessarily require a sale of goods under the trade mark: see Shanahan’s Australian Law of Trade Marks and Passing Off (Law Book Co.,3rd ed) at [2.185].

18. If an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims: “Nodoz” Trade Mark [1962] RPC 1. While it is not necessary that the opponent demonstrate a large amount of use during the relevant period, only that the use be bona fide or genuine. 

19. It is overtly clear from the opponent’s evidence that the t-shirts and singlets only exist to promote the ownert’s trade in its music festival which occurs once a year. The use of its JAM trade mark in small font on these goods can not elevate the clothing above its character as a marketing instrument for the owner’s other services.

20. I turn now to the statutory declaration of Carolina Jenson and the JAM branded jeans being sold through her business. Ms Jenson states that she has owned and operated a business from different premises in NSW which sells clothes, shoes, bags, CDs and jewellery. Ms Jenson asserts that during the relevant period she has sold ‘ivy jeans’, ‘jam jeans’ and ‘jam’ CDs for the company Jam Recordings Pty Limited. The owner provided the jeans which Ms Jenson claims to sell from her shop. The JAM trade mark appears on the jeans as following:

1. At first glance the JAM trade mark is not easily apparent unless a consumer is aware of what word they are looking for. Otherwise, it is quite easy to miss the word JAM on this label. I also note that the above scanned image more clearly represents the word JAM than is apparent on the actual product. I note section 7 of the Act which states:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

2. The owner’s trade mark registrations are for the plain text word JAM and for the stylized trade mark . The above usage of JAM on the jeans is not particularly close to the owner’s registrations. Closer examination of the trade mark used on the jeans reveals that a combination of the silver thread used along with the highly stylized nature of the font with an additional border around the word makes it unlikely that a consumer would associate the owner’s registered trade marks with the image found on the jeans. With reference to section 7 of the Act, I am satisfied that the changes made to the trade mark would be considered an alteration which would substantially affect the identity of the registered trade marks.

3. As such, the demonstrated use of a trade mark on the jeans the above is not use of either of the owner’s registered trade marks. Consideration of the opponent’s evidence has shown that the opponent has failed to demonstrate any use of the owner’s registered trade mark JAM trade marks within the required time period. I also consider the t-shirts and singlets are ancillary to the owner’s music festival services. It is not an essential adjunct to those services nor does anything in the evidence suggest that the opponent is making ‘in-roads’ within the clothing industry. Questions of degree are involved in these matters but I regard the t-shirts and singlets as something merely ancillary to the actual products and services (music CDs and music festivals) traded under the registered JAM trade marks. The examples provided in the opponent’s evidence are not sufficient information to demonstrate genuine commercial use of the trade marks in relation to clothing within the relevant period.

   Registrar’s Discretion

4. There is a discretion embodied in subsection 101(3) of the Act. That particular part of the legislation reads as follows:

   (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

5. The applications for non-use requested removal for all goods within the class 25 claims. The opponent has requested the Registrar’s discretion to leave the trade mark registrations on the Register due to the long-standing reputation of the owner’s clothing goods. The opponent has not provided me with any evidence that may need me to exercise my discretion in relation to those goods in terms of s101(3).

   Decision

   Trade Mark Registration 262202

6. I find the opponent has not rebutted the allegation of non-use and I direct trade mark registration 262202 be removed from the register in respect of all the goods to which the registration applies, one month from the date of this decision. In the event of an appeal, the trade mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the removal be subject to that order.

   Trade Mark Registration 965450

7. I am not satisfied that the trade mark of registration No. 965450 has been used in the relevant period on the class 25 goods in the specification. Therefore, the trade mark will be removed for the class 25 goods after one month from the date of this decision. In the event of an appeal, I direction that the trade mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the trade mark be subject to that order.

   Costs

1. The non use application has requested its costs. Having been successful, it is so entitled.  I award costs against Kerrie Boylett at the official scale.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   19 March 2012