Laila Gampfer v Natural Raw C Pty Ltd

[2025] ATMO 9

TRADE MARKS ACT 1995

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

Re: Opposition by Laila Gampfer to applications under section 92 of the Trade Marks Act 1995 (Cth) by Natural Raw C Pty Ltd for removal of trade mark number 1613397 (29, 30, 41) – RAWSOME (Fancy) and trade mark number 161339 (29, 30, 41) – rawsome – both in the name of Laila Gampfer

Delegate:

Nicholas Smith

Representation:

Opponent: Keypoint Law

Applicant: Signify IP Pty Ltd

Decision:

2025 ATMO 9

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(b) applications for removal - Removal Opponent’s evidence shows use of the Trade Marks during the relevant period for a subset of the goods for which the marks were registered – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register for some of the goods and services for which they were registered

Background

1. This decision is pursuant to application made on 26 April 2023 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Natural Raw C Pty Ltd (‘Applicant’) to remove the trade marks detailed below (collectively ‘Trade Marks’) from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade marks are registered, that is, the application is for complete removal of the Trade Marks.

Registration No.

1613397

Lodgement date

25 March 2014

Goods and Services

Class 29: desserts and preparations for making desserts; dessert toppings; health bars; desserts suitable for vegans and vegetarians; gluten-free desserts; snack foods in this class

Class 30: cocoa; foodstuffs containing cocoa; chocolate candy with fillings; cocoa beverages; chocolate confectionary; chocolate; chocolate bars suitable for vegetarians; confectionary containing nuts; gluten-free confectionary; gluten-free chocolate; dairy-free chocolate; dairy-free confectionary; desserts; dairy-free desserts; slices; snack foods in this class

Class 41: dietary education services; health education; cooking classes; food preparation classes

(‘Registered Goods and Services’)

Owner

Laila Gampfer

Trade Mark

Registration No.	1613399
Lodgement date	25 March 2014
Goods	Registered Goods and Services
Owner	Laila Gampfer
Trade Mark	rawsome

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  Furthermore, I consider that both the Trade Marks are substantively identical to one another, as one consists of the word mark ‘rawsome’ and the other consists of the same word with limited stylisation, so any use of either mark is use of the other; hence at certain points in the decision I may refer to the mark in the singular, as the Trade Mark.

3. Laila Gampfer (‘Opponent’) has opposed the application to remove the Trade Marks, filing Notices of Intention to Oppose removal on 23 June 2023 and Statements of Grounds and Particulars that are identical other than a reference to the specific trade mark number (referred to in the singular as ‘SGP’) on 21 July 2023.  The Applicant filed Notices of Intention to Defend on 31 August 2023.

1. The parties filed the same evidence in both matters, set out below:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Laila Gampfer, Owner and Opponent (‘Gampfer declaration’)	5 December 2023	LG-1 to LG-11
Evidence in answer
None filed
Evidence in reply
None filed

5. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 15 April 2024 the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 30 October 2024.  In line with usual practice, a letter was sent to the parties on 23 September 2024 which contained a schedule for the provision of written submissions to be filed prior to the hearing.  The Opponent filed written submissions on 16 October 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 23 October 2024 (‘Applicant’s Submissions’).

6. 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 earlier in this decision:

·The Application for Removal;

·The Notice of Intention to Oppose and SGP;

·The Opponent’s Submissions

·The Applicant’s Submissions. 

The Relevant Provisions

7. 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 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.

8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 26 March 2023 (‘relevant period’).

9. 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 for the Trade Marks,[1] and I confirm that five years since filing the application have in fact passed.

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

10.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 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.

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

[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.

12.     In accordance with s 101 I 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 not to remove the Trade Marks even if the grounds under which the application for removal was made are established.

13. I further note that a single bona fide use of the Trade Marks 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] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5]  Use of the Trade Marks by an authorised user (as defined by s 8) is taken to be use of the Trade Marks by the Opponent.[6] 

14.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]

Discussion

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

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

[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

[6] Act s 7(3).

[7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

1. To successfully oppose the application the Opponent must establish that it has used the Trade Marks (or a substantially identical trade mark[8]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

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

2. If the Opponent fails to establish such use or an obstacle to use, I have 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

3. The Opponent’s evidence in this matter consists of the Gampfer declaration.  It states that the Opponent has operated a raw food manufacturing and wholesale business in Australia using the Trade Marks since 2011.  Its products are sold by 230 retailers and the Opponent received various accolades and third party media attention for its business.  The business has been conducted by the Opponent as well as two related entities, Raw So Me Pty Ltd and Claila Pty Ltd.  The Opponent has been the director and secretary of both the related entities and all use of the Trade Marks by these entities have been under the Opponent’s direction and control.

4. The Gampfer declaration contains invoices issued by Claila Pty Ltd for sales of products bearing the Trade Marks in the relevant period.

5. The Gampfer declaration contains evidence that the Opponent maintained a website in the relevant period bearing the Trade Marks but the website is no longer accessible.  The screenshots included in the Gampfer declaration do not show what goods or services were advertised on the Opponent’s website in the relevant period, rather the evidence consists of a screenshot of a single page bearing the Trade Marks and extracts from the Internet Archive from before the relevant period (2016) showing use of the Trade Mark in connection with baked goods.  The Gampfer declaration also contains a document stated to show nutritional information about products that were promoted and supplied under the Trade Marks during the relevant period, but I note again that this document appears to be dated from 2016.

6. In considering the evidence, I accept the Applicant’s Submissions that the sum total of evidence of the use of the Trade Marks in the relevant period consists of the single screenshot referred to in the paragraph above and 4 invoices issued by Claila Pty Ltd dated 16 December 2021, 25 January 2022 and 26 February 2022.  All other material provided by the Opponent is undated or pre-dates the relevant period.  In particular, I accept the Applicant’s Submissions that I should not rely on the assertions that the otherwise undated photographs annexed at LG-4 were taken within the relevant period since the quantity sizes and prices do not match the quantity sizes and prices of products sold in the relevant period (as indicated by the invoices).

7. The 4 invoices show the sale of various products by Claila Pty Ltd, some sold by reference to the Trade Marks, some clearly sold under third party trade marks.  The invoices show use of the Trade Marks for the following products:

   ·     Carawmel Slice

   ·     Choc Mint Slice

   ·     Lamington Rawble (Ball)

   ·     Lemon Macadamia Rawble (Ball)

   ·     Mocha Rawble (Ball)

   ·     Salted Carawmel Rawble (Ball)

   ·     White Choc Raspberry Rawble (Ball)

   22.     Based on this material I consider that Claila Pty Ltd has used the Trade Marks for the products referred to above in the relevant period.  I am not satisfied by the evidence before me that the Trade Marks were used for any goods and services other than the products above in the relevant period; all other evidence being undated or obviously pre-dating the relevant period.  Specifically, I am not satisfied that the Trade Marks were used for any of the registered services as the evidence of the content of the Opponent’s website (other than a single screenshot) that the Opponent submits show the provision of services pre-dates the relevant period.

   23.     I am satisfied that the use of the Trade Marks by Claila Pty Ltd was authorised by the Opponent as the Opponent gives clear evidence that she was the director, secretary and at all times held practical control over the use of the Trade Marks by Claila Pty Ltd.  Under s 8, authorised use requires use under the control of the trade mark owner.  In Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’),[9] the Full Federal Court at paragraph 45 noted that as a matter of practicality, control could be found in circumstances where the two companies shared the same directors:

   The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.… it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[10]

8. With respect to whether the use of the Trade Mark for the products outlined in paragraph 21 falls within the specification of the Registered Goods and Services, I consider that the breadth of the specification for the Registered Goods and Services, which includes snack foods in classes 29 and 30, is far broader than the proven use by the Opponent in this case, which is limited to desserts, health bars and slices.  In Trident Seafoods Corporation v Trident Foods Pty Limited Gleeson J stated, ‘if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] – [306]’[11].  Accordingly, I am satisfied that the Opponent has used the Trade Mark in Australia in respect of the following goods (‘Used Goods’) in the relevant period:

   Class 29: Desserts, Health Bars; desserts suitable for vegans and vegetarians; gluten-free desserts

   Class 30: Foodstuffs containing cocoa; desserts; dairy-free desserts; slices

   [9] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ) (‘Trident’).

   [10] Ibid [45].

   [11] [2018] FCA 1490, [116].

1. I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods and Services other than the Used Goods (‘Remaining Goods and Services’) during the relevant period. 

   Obstacles to use

   26.     The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Marks for the Remaining Goods and Services in the relevant period, pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Remaining Goods and Services.

   Registrar’s Discretion

   27.     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 in the integrity of the Register will generally demand the removal of an unused trade mark.[12]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   [12] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[13]

   [13] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

   28.     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’,[14] 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.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.[16]

   [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

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

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

   29.     In the present case, there is no evidence that the Opponent has ever used the Trade Marks or intends to use the Trade Marks in the future in Australia for any of the Remaining Goods and Services (noting that I do not accept the Opponent’s Submissions that the Opponent has ever used the Trade Marks for any services; merely providing promotional recipes on a website is not ‘health education’).  Furthermore, I consider the reputation of the Opponent in the Trade Marks to be very limited, given the absence of evidence of turnover or ongoing marketing, especially noting that the Opponent’s website is presently inactive.  Given that, I am unpersuaded that the removal of the Trade Mark for the Remaining Goods and Services would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods and Services.

   Decision

   30.     The Opponent has partly established its opposition to the removal applications. Accordingly, I direct that registrations 1613397 and 1613399 be removed from the Register in respect of all Remaining Goods and Services one month from the date of the Decision. The Trade Marks will remain registered for the goods listed below. 

   Class 29:  Desserts, Health Bars; desserts suitable for vegans and vegetarians; gluten-free desserts

   Class 30: Foodstuffs containing cocoa; desserts; dairy-free desserts; slices

   31.     If the Registrar is served with a notice of appeal 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 registrations be dealt with as the Court sees fit.

   Costs

   32.     Neither party has been entirely successful in respect of the application for removal of the Trade Marks.  As such I make no order as to costs.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   14 January 2025