Kiti Pty Ltd v Roll International Corporation

[1997] ATMO 43

TRADE MARKS ACT 1955

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

Re:Opposition by Roll International Corporation to an application under section 23, by Kiti Pty Ltd, for the removal of trade mark registration no 438959.

Background:

Trade mark registration no. 438959 stands in the name of Teleflora LLC.  This is the result of a recent assignment, but the registration was, at an earlier time, in the name of Roll International Corporation.  Under the relevant legislation, Teleflora (Australia) Inc was, until July 1995, recorded as a registered user of the trade mark.

The trade mark in question is as follows:

The trade mark is registered for: 

Vases, flower pots and other containers in this class for flowers; watering cans and watering pots; baskets in this class; all the foregoing being in the nature of household or domestic utensils.

On 28.11.94, Kiti Pty Ltd ("the applicant") applied to remove that registration from the register. The applicant alleged, in simple terms, that the trade mark the subject of the registration had not been used in the terms set out in s 23 of the Trade Marks Act 1955. 

I will note at this point that, under s 251 of the Trade Marks Act 1995, the provisions of the older 1955 legislation continue to apply to these proceedings.  Accordingly, unless otherwise stated, the provisions to which I will refer below are those of the Trade Marks Act 1955.

The applicant did not abandon the claim under s 23(1)a, that the mark had been registered without the requisite intention to use and had not actually been used by either the proprietor or a registered user. However, that ground is not supported in sufficient detail in the evidence. It will be as well to say, at the outset, that if the applicant is to succeed at all, it can do so only by way of the second ground, s 23(1)b.

That provision, the ground primarily relied on by the applicant, is that:

up to 1 month before the date of the application, a continuous period of not less than 3 years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being.

Roll International Corporation ("the opponent") has opposed removal of the registration.  As per the regulations, the applicant served a copy of the evidence in support of the application, consisting of declarations by Ann Grey, Lois McMillan and Edward Jones, on the opponent.  The opponent has not served any evidence in answer to the application.

The matter was set down to be heard by me, as a delegate of the Registrar of Trade Marks.  Mr B.J. Hess of counsel appeared for the applicant.  The opponent did not appear.

Mr Hess took me to the general details of the evidence in support of the application.  I will summarise this evidence down to the following key points.  Of the applicant’s supporting declarants:

• Lois McMillan is the principal of a professional school of floristry.  She is also a director of the applicant, which trades as Aspley Florists, and a director of Global Flower Service (Inc) (“GFS”).  That is the current name of the company that was formerly a registered user of the attacked trade mark.  GFS provides clearing house services for member florists.  This service allows the forwarding of orders from one florist to another and the dispatch of flowers by one florist in response to orders placed with another.

  
  
  

  Aspley Florists is, she declares, authorised by GFS to use the GFS trade mark, which I have reproduced below.  Ms McMillan does not, however, specify for what goods or services Aspley Florists is authorised to use the registered trade mark. 

  
  
  

  Ms McMillan notes that the opponent has, in its turn, also opposed the registration of the GFS trade mark in relation to certain goods and services, to which I will refer below.  Ms McMillan, under cover of her role as a declarant, proceeds to do the work of an advocate.  She notes, from the relevant Notices of Opposition filed in relation to the pending GFS applications, certain claims by the opponent.  From these, she argues that the applicant is a person aggrieved by being the user of a trade mark which the opponent alleges is deceptively similar to its own.

  
  
  

• Ann Grey is the Executive Director of GFS.  She declares that there were approximately 680 florist firms who were members of GFS in late 1994.

  
  
  

  Ms Grey declares that “there was never any use by GFS or its members of Trade Mark A438959 in the form as registered or in any form similar thereto”.  She also declares:  “Further, from my own knowledge of the use by others in the floristry industry, I can say that the form of trade mark application A438959 or any form of Trade Mark similar thereto was not used by (the opponent) nor was it used by any other florist or flowers by wire organisation...”

  
  
  

  Ms Grey also declares that GFS used, on its own behalf, the following device, which I will call the GFS trade mark:

  
  
  

• Edward Jones is the editor of what he declares to be “a trade journal of the flower industry”.  He considers his magazine, which takes paid advertisements, to be well read in the industry.  Mr Jones is unaware of any use of the registered trade mark by the opponent.  He is however aware of use of the GFS trade mark.

The issues:
Having reviewed the evidence, it is time to deal with the issues raised at the hearing by Mr Hess.

At the outset, if it is to succeed under s 23, an applicant must be a person aggrieved by the registration under attack. Mr Hess argued that, in terms of the 1955 legislation, which was in force at the time the applications were made, the applicant is a potential infringer of the opponent’s trade mark. If that was so, I would agree with Mr Hess that the applicant had established this aspect of its case.

It was for the applicant to make a case that it is aggrieved - per Kraft Foods Inc v Gaines Pet Foods Corporation, 34 IPR 198, to which Mr Hess referred. However, there is no evidence that this is so. There is no evidence that the applicant in the present non-use matter intends to trade in class 21 goods such as those I have listed. Whatever may be said of the business conducted by the opponent - and more needs to be said - it appears that the applicant is a florist firm, pure and simple. It may well trade in various ancillary equipment but there is no evidence that it has ever used the GFS trade mark in relation to any such trade or that it intends to do so.

Nor is it aggrieved by the fact that the GFS applications are, in their turn, opposed by Roll, the opponent here.  The GFS applications which are being opposed by Roll are in relation to:

• Live plants, live flowers, horticultural products in this class, arrangements of live plants, arrangements of flowers and other horticultural products in this class and all other goods, being goods included in class no. 31 (application 619574, in class 31)

• Business and advertising services including services relating to provision of clearing house services (application 619575, in class 35)

• floral and plant supply and distribution.  (application 631078, in class 42)

I can see that the applicant, in its capacity as a florist, is perhaps aggrieved by the oppositions to those pending applications for the registration of the GFS trade mark.  However, I simply fail to see how the goods covered by the presently attacked registration come into the picture. 

For the sake of completeness, I also say that I am not satisfied that the applicant has made out a prima facie case that the registration is unused in the terms specified in s 23(1)b.

Mr Hess argued strongly that, within the framework of Estex Clothing Manufacturers Pty. Limited v Ellis and Goldstein Limited, the Estex case, 116 CLR 254 at 258, the applicant had made the necessary case. However, I disagree. The clearly established position is that:

It is for the applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non‑user.  But if evidence be given for the respondent to controvert the applicant's prima facie case, then when all the evidence is complete the question is still, has the applicant proved his case?  I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it."

At the hearing, I put to Mr Hess the case that the evidence in support of the application was focused on the floristry industry.  None of it dealt with the mainstream trade in flower pots, vases, watering cans and the like.  Mr Hess argued that I could not expect particular qualifications in relation to class 21 goods, given the long experience and particular expertise of the present declarants.  The opponent, as he noted, had asserted use of the mark within the relevant period, but had filed no evidence at all.  The applicant, on the other hand, had relied on strong and uncontroverted statements.  It would be unreasonable, and therefore wrong of me, in Mr Hess’s view, to do anything other than rely on the applicant’s evidence.

However, I think there is more to it than this.  The reference to “slight” evidence in Estex, supra, is a careful one.  It is followed by a stipulation that the evidence be consistent with reasonable expectations.

While it is possible that the declarants in this case were in a position to declare that, like the applicant, the opponent is simply a floristry operator, they have not done so.  For all the evidence shows, the opponent may be a diversified trader.  Prima facie, it is: the fact is that the opponent has a registered trade mark in class 21, for various domestic utensils and containers.  The opposed fact is that three people with interests in the floristry industry deny that this trade mark has been used, at all.  However, they have not declared to particular knowledge of the business of the opponent.  I must therefore deal with them as ordinary traders, clearly well qualified in their own field but by no means all-knowing in regard to the presumably diverse trade in goods such as watering cans and baskets.

Conclusion
The applicant has not shown that it is aggrieved by the attacked registration. Nor has it made out a prima facie case that the registration has not been used in terms of s 23(1)b. Accordingly, I dismiss the application and refuse to remove trade mark registration 438959 from the register.

I award costs to the opponent.

T. E. Williams
Hearing Officer
25 August 1997