L & T Trading Pty Ltd v Cong Ty Co Phan Ky Nghe Thuc Pham Vietnam (Vietnam Food Industries Joint Stock Company)

[2020] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by L & T Trading Pty Ltd to an application under section 92 of the Act by Cong Ty Co Phan Ky Nghe Thuc Pham Vietnam (Vietnam Food Industries Joint Stock Company) for removal of trade marks numbered 639918 (29) – VIFON, 639919 (29) – VIFON and 1303711 (30) VIFON and Device  - in the name of L & T Trading Pty Ltd      

Delegate:	Nicholas Smith
Representation:	Opponent: Brian Elkington of Adams Pluck Applicant: Zhi Ling Zeng of Lord and Co
Decision:	2020 ATMO 33 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 for some of the goods during the relevant period. Registrar’s discretion under s 101(3) not exercised in favour of the Opponent for the remaining goods – trade mark to remain on Register for some of the goods.

Background

1. This decision is made pursuant to an application made on 14 May 2018 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Cong Ty Co Phan Ky Nghe Thuc Pham Vietnam (Vietnam Food Industries Joint Stock Company) (‘Applicant’) to remove the trade marks detailed below (‘Trade Marks’) from the Register of Trade Marks.  The application is made in respect of all of the goods for which the trade marks are registered, that is, the application is for complete removal of the trade marks for all the goods for which they are registered (collectively ‘Registered Goods’).

Registration No.

639918

Lodgement date

6 September 1994

Goods

Class 29: Meat, fish, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats; preserves being goods in this class (collectively ‘Class 29 Goods’)

Owner

L & T Trading Pty Ltd

Trade Mark

VIFON

(‘Word Mark’)

Registration No.

639919

Lodgement date

6 September 1994

Goods

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; salad dressings

Owner

L & T Trading Pty Ltd

Trade Mark

VIFON : 

(‘Word Mark’)

Registration No.	1303711
Lodgement date	11 June 2009
Goods	Class 30: Noodles including dried noodles, instant noodles, and noodles made from cereals, wheat, rice and egg; preparations containing noodles and vermicelli; rice pancakes and pancakes predominantly made from cereals; asian style foodstuffs containing noodles; foodstuffs comprising predominantly noodles; porridge; vermicelli; wontons; foodstuffs for being reconstituted with water for consumption, including soup, wonton, and noodle preparations; condiments and sauces, including soy, chilli, hoisin and fish sauces
Owner	L & T Trading Pty Ltd
Trade Mark	(‘Device Mark’)

1. L & T Trading Pty Ltd (‘Opponent’) has opposed the application to remove the trade marks, filing a Notice of Intention to Oppose removal on 13 July 2018 and a Statement of Grounds and Particulars (‘SGP’) on 31 July 2018.  The Applicant filed a Notice of Intention to Defend on 26 September 2018.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’), with the Applicant filing evidence in answer (‘EIA’) and the Opponent filing evidence in reply (‘EIR’), each of which is discussed in more detail below. On 28 January 2020 the Applicant sought to file further evidence in this proceeding pursuant to Reg 21.15(4) of the Trade Marks Regulations 1995 (Cth) and on 29 January 2020 I issued a decision indicating that I was not prepared to exercise my discretion to consider this late filed material.

3. The Applicant makes a broad claim for confidentiality over the entirety of information disclosed in the Nguyen Declaration (defined later in the decision).  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of a claim made by a then opponent) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

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 18 July 2019 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 4 February 2020. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 6 November 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 22 January 2020 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 28 January 2020 (‘Applicant’s Submissions’).  At the hearing Brian Elkington of Adams Pluck represented the Opponent, appearing in person and Zhi Ling Zeng and Ian Anderson of Lord & Co represented the Applicant, appearing by telephone. 

5. I have based my decision on consideration of the following relevant material and the oral submissions made at the hearing on 4 February 2020:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support;

   ·The Applicant’s Evidence in Answer;

   ·The Opponent’s Evidence in Reply;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Legal 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:

   …

   (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 each of the Trade Marks is the three year period ending on 14 April 2018 (‘relevant period’).  The use of the Trade Marks must be use by the registered owner or an authorised user in the 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 Trade Marks,[2] and I confirm that five years since filing the applications for each of the Trade Marks have in fact passed.

   [2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter.

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:

   …
    (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 the balance of probabilities.[3] 

    [3] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

11. In accordance with s 101, if the grounds for removal are established, the Registrar may decide to remove the Trade Marks 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 the Trade Marks should not be removed.

12. I further note that a single bona fide use of a trade mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]

    [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

    [5] Nodoz Trade Mark (1962) RPC 1, 7.

    Opponent’s Evidence

13. The Opponent’s EIS consists of a declaration made on 2 January 2019 by Ui Trinh, Director of the Opponent, with Attachments A to D (‘Trinh 1’).    

14. Trinh 1 conveys the following information:

    ·The Opponent specialises in marketing Asian food products to the Asian community in Australia.  It has sold and distributed products bearing the Trade Marks continuously since 1994 and continues to distribute the products to many supermarkets throughout Australia.

    ·The Opponent advertises its products on the SBS Radio Vietnamese language station which includes use of the Trade Mark.

    ·The Trade Marks have been used on e-mails and invoices from the Opponent to customers, suppliers, distributors and others.  The Trade Marks have been used continuously throughout the relevant period.  

15. Trinh 1 contains, as annexes, labels for Vietnamese food products including noodles and rice products featuring the Trade Marks.  The products bear the Trade Marks and include on the labels the following statement ‘Vifon and the cooking pot device are registered trade marks of L&T Trading Pty Ltd’.  Trinh 1 also contains evidence of advertising expenditure and the airing of advertisements on SBS Radio featuring the Trade Mark.  Trinh 1 also annexes invoices dated within the relevant period bearing the Trade Marks showing the sale of Vifon branded food products to third parties.  Finally the declaration also annexes e-mails from Mr Trinh in the relevant period, featuring the use of the Trade Marks in connection with the distribution of Vifon branded food products to other Australian distributors.

16. The Opponent’s EIR consists of a declaration made on 17 June 2019 by Ui Trinh with Attachments A to H (‘Trinh 2’).    

17. Trinh 2 conveys the following information:

    ·Many of the products sold under the Trade Marks are purchased from the Applicant, based in Vietnam.  On 5 September 1994, the Opponent acquired full rights to own, use and register the Trade Marks in Australia from the Applicant.  The Applicant was aware of this because the Applicant printed stickers or special packaging for the Opponent from 1994 until April 2019 which stated that the Trade Marks were owned by the Opponent.  .  On April 2019, following a change in policy the Applicant ceased the production of the stickers.

    ·The Opponent has used the Trade Marks for goods in class 29, for example it has used the Word Mark for soup powder and chili sauce.

18. Trinh 2 contains, as annexes, 1994-95 era letters from the then director of the Applicant, authorising the Opponent to register the Trade Marks in Australia in the Opponent’s name and assigning all its rights to the Trade Marks to the Opponent’s director.  Trinh 2 also contains an order from the Opponent to the Applicant, within the relevant period, showing the order of chili sauce and soup powder. 

    Applicant’s Evidence

19. The Applicant’s evidence in this matter consists of a declaration made on 10 April 2019 by Nguyen Ngoc Lan, General Director of the Applicant, with Exhibits LY-1 to LY-5 (‘Nguyen Declaration’) and a declaration made on 11 April 2019 by Zhi Ling Zeng, Trade Mark Attorney and partner in the Applicant’s Representative (‘Zeng Declaration’).     

20. The Nguyen Declaration conveys the following information:

    ·The Applicant was established in 1963 and is a leading manufacturer of instant food products.  From 1975 to 2005 the Applicant was a state-owned entity but since then it has returned to being a joint stock company.  Since 1992 the Applicant has used the Word Mark and Device Mark and owns many international trade mark registrations for these marks.

    ·The application of the Trade Marks to the goods sold by the Opponent, both on the products themselves and the importation labels, is by the Applicant and hence all use of the Trade Marks is by the Applicant, not the Opponent.

    ·There is no evidence that any of the goods sold by the Opponent are goods in class 29.

    ·The relationship between the Applicant and Opponent is governed by an Agent Contract dated 10 March 2006.  Under the Agent Contact the Applicant designates the Opponent as its sole agent to distribute all products produced by the Applicant in Australia, subject to a minimum distribution amount.  The Agent Contract also states that the Opponent can use the Applicant’s trade marks and brands for the purposes of advertising to develop sales in Australia.

    ·As a result of the Agent Contract the Applicant exercises quality control over the goods on which the Trade Marks have been applied.  All use of the Trade Marks on the goods is use by the Applicant and any associated use (on e-mails and the like) would have been use as an agent of the Applicant.

    ·In 2007 the Applicant proposed that the Opponent relinquish full control of the VIFON brand in Australia.  This proposal was not accepted by the Opponent. 

21. The Nguyen Declaration contains, as an annex, an English translation of the Agent Contract entered into by the parties in 2006.  It provides that the Applicant assigns to the Opponent the right to be the sole agent to distribute products produced by the Applicant in the Australian market with a minimum order requirement. The Opponent is required to provide the Applicant with a 6 monthly report on sales and work with the Applicant on solving distribution problems in Australia but the Applicant otherwise has no apparent contractual rights over the behaviour of the Opponent, including the use of the Trade Marks, the selection of customers in Australia, manner of storage or distribution or selection of products to which the Trade Marks are applied.  It does not appear to restrict the ability of the Opponent to apply the Trade Marks on goods produced by entities other than the Applicant. 

22. The Zeng Declaration consists of a mixture of evidence and submissions (which will be treated as such for the purposes of this proceeding), which I summarise below:

    ·The EIS only shows the sale by the Opponent of the following goods: Instant noodles, rice vermicelli, instant porridge, rice pancake, rice paper, fish sauce, food flavours and packaging materials.  None of these products are goods in Class 29 and as such there is no use of the Word Mark for goods in class 29.

    ·The Opponent is an importer of the Registered Goods and therefore its display of the Trade Marks does not constitute use of the Trade Marks since it does not produce any of the goods sold under the Trade Marks in Australia.  The use of the Trade Marks is by the Applicant since it is a badge of origin to show that the Applicant is the producer of the Registered Goods.

    ·The Applicant controls the quality of the goods and has a contract with the Opponent regulating the minimum sales levels of the Registered Goods in Australia.  As the Opponent does not control the quality of the goods it does not use the Trade Marks in Australia.

    Discussion

23. To successfully oppose the Application for Removal the Opponent must establish, pursuant to s 100 of the Act, that it has used the Trade Marks in the relevant period or that there was an obstacle to use in that period. Use of the Trade Marks by an authorised user is taken to be use of the Trade Marks by the Opponent[6]. 

    [6] s 7(3) of the Act.

24. In the event that the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Marks should not be removed from the Register.

    Use of the Trade Marks in the relevant period

25. Having reviewed the EIS, I am not satisfied that there has been any use of the Word Mark in Australia for any of the class 29 goods for which Word Mark 639918 is registered.  With respect to the class 30 goods for which Word Mark 639919 is registered I am only satisfied that there has been use in Australia during the relevant period for ‘preparations made from cereals and sauces (condiments)’.  I am satisfied that there has been use of the Device Mark in Australia during the relevant period for all the class 30 goods for which the Device Mark is registered.  The question therefore is whether the use of the Trade Marks for ‘preparations made from cereals and sauces (condiments)’ and the goods for which the Device Mark is registered (collectively ‘Used Goods’) is use by the Opponent, or use by the Applicant. 

1. In essence the Applicant’s Submissions are that all sales made by the Opponent (and related use by the Opponent of the Trade Marks for the Used Goods) are either use of the Trade Marks by the Applicant since the Applicant is the producer of the goods imported by the Opponent or that there is no use of the Trade Marks by the Opponent since the Opponent does not exercise quality control over the Used Goods.

2. I am not persuaded that prior to the signing of the Agent Contract 2006 any use of the Trade Marks in Australia was anything other than use by the Opponent.  The Opponent is the registered owner of the Trade Marks in Australia and this had been, in 1994, explicitly recognized by the Applicant.  I am not persuaded by the Applicant’s submission that because it was the manufacturer of the Used Goods, that all use of the Trade Marks was use by it.  By the Applicant’s logic no company that outsourced the manufacturing of its goods (such as Nike or Apple) could ever be seen to use its trade marks since the products were manufactured (and the trade mark applied) by a third party. 

3. The Used Goods sold to the Opponent bore a sticker, attached by the Applicant on instruction of the Opponent, that the Opponent was the owner of the Trade Marks. The Used Goods were then imported by the Opponent who then sold the Used Goods to other distributors and retailers and used the Trade Marks in advertising the Used Goods. This amounts to use of the Trade Marks as set out in s 17 of the Act, namely a use to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

4. The next question is whether the signing of the Agent Contract in 2006 changed the relationship between the parties such that the use of the Trade Marks in Australia was in fact use by the Opponent that was authorised by the Applicant. The answer to this question is no. Under s 8 of the Act, authorised use requires use under the control of the trade mark owner. The Applicant was never the registered owner of the Trade Marks in Australia and as such the concept of authorised use is irrelevant. Equally the Applicant’s submission that the Opponent exercised no quality control over the application of the Trade Marks by the Applicant to the Used Goods is both incorrect and irrelevant. Unlike the case of Lodestar Anstalt v Campari America LLC[7] and similar cases on authorised use, the Opponent purchased the Used Goods, to which the Trade Marks had been applied on its instruction, imported them, and then once the goods came within its possession, sold them to third parties under the Trade Marks. The Opponent does not need to show authorised use; its sale of the Used Goods under the Trade Marks was actual use of the Trade Marks under s 17 of the Act.

   [7] [2016] FCAFC 92.

5. I find that the Opponent has used the Trade Marks in the relevant period for the Used Goods[8].  I find that there is no evidence of use of the Word Mark (either before, during or after the relevant period) for the Registered Goods that do not fall into the Used Goods category (‘Remaining Goods’).  To the extent that the submission was made that chili sauce and soup powder fall under class 29, such a submission is irrelevant as none of the Remaining Goods are or encompass chili sauce or soup powder. 

   [8] The Applicant, in its submissions, also makes the argument that the Opponent is not the proper owner of the Trade Marks or that the registrations are invalid.  For completeness I note that there is no evidence before me to support such a claim and that no application has been made to the Registrar or a Court to revoke the registration of the Trade Marks.  An opposition proceeding is not the appropriate forum in which to deal with issues relating to whether or not the trade mark should have been registered: Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970. Removal proceedings are not meant to provide a ‘second bite at the cherry’ for parties who have missed time limits for initiating oppositions to registration of trade marks.

   Obstacles to use

6. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Word Mark for the Remaining Goods in the relevant period, pursuant to s 100(3)(c) of the Act. In the interests of completeness I note that I have been unable to identify any such obstacles. As there is no evidence or claim that there were any circumstances that were an obstacle to use of the Trade Mark, I turn to consider whether the discretion to allow the Remaining Goods to remain on the Register should be exercised.

   Registrar’s Discretion

7. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[9] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[10]

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[11]

   [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   [10] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   [11] Ibid [171]-[172].

8. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[12] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[13] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[14]

   [12] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [13] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [14] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

9. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[15]

   [15] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

10. In the present case, the Opponent submitted that I should exercise the discretion not to remove the Word Mark in respect of the Remaining Goods on the basis of s 101(4) of the Act, namely that the Word Mark has been used in respect of similar goods, being the Used Goods and soup powder and chili sauce in class 29. The Opponent submits that as a result of this similarity, by reason of the removal of the Word Mark in respect of the Remaining Goods, confusion will occur among the public, especially if the Applicant, following the removal, seeks to register a similar trade mark for the Remaining Goods.

11. The Opponent also submits that the Removal of the Word Mark in respect of the Remaining Goods will affect the Opponent’s ability to expand its product range or increase its business presence, however I note that there is no evidence before me of any intention by the Opponent to expand its product range; as such I take very little notice of this submission.

12. In the present case, I do accept that there are similarities between the Used Goods and some of the Remaining Goods as they are both foodstuffs, however this is not by itself determinative of whether or not I should exercise the discretion. Section 101(4) of the Act only identifies the use of the Word Mark on similar goods as a factor that I may take into account in the exercise of the discretion.

13. It appears that the Opponent has only used the Word Mark for the Used Goods and there is no evidence of any intention to use the Word Mark for the Remaining Goods, nor does the Word Mark have any reputation in the Remaining Goods.  There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing a mark to remain registered for a wider variety of goods than used or intended to be used by the Opponent.  If I were to remove the Remaining Goods the Opponent would still retain the protection of the Word Mark for the Used Goods and (both in respect of any opposition or infringement matters including opposition to any trade mark sought to be registered by the Applicant) any similar goods or closely related services.  As such I do not consider that the private commercial interest of the Opponent would be significantly impacted by the removal of the Word Mark for the Remaining Goods.  Nor would there be a significant risk of consumer confusion; the scope of the protection granted to the Opponent under the revised registration would be a barrier to the registration and use of deceptively similar marks for the Used Goods and any similar goods or closely related services; it is not necessary for the protection of the public to retain the registration of the Word Mark for a wider range of goods than those for which it has actually been used.

14. Given the matters considered above I consider that this is not an appropriate case to exercise the Registrar’s discretion to allow the mark to remain registered in respect of goods for which it has not been used on or in relation to during the relevant period.

    Decision

15. I decide that the Opponent has partly established its opposition to removal and the Trade Marks should only be removed from the Register in respect of the Remaining Goods.

16. Accordingly, I remove trade mark registration 639918 from the Register.  I refuse to remove trade mark registration 1303711 from the Register.

17. I refuse to remove trade mark registration 639919 in its entirety but direct that one month from the date of this decision the specification of goods be amended to the goods listed below and the Word Mark will be removed from the Register in respect of all remaining goods.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Class 30: preparations made from cereals and sauces (condiments)

    Costs

18. Both parties have requested their costs.  However as both parties have had a degree of success I determine that each party should bear their own costs.

    Nicholas Smith
    Hearing Officer
    Hearings and Oppositions
    3 March 2020