LeisureLife (Aust) Pty Ltd v Glen Raven, Inc

[2018] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by LEISURELIFE (AUST) PTY LTD to application under section 92 of the Act by GLEN RAVEN, INC to remove trade mark number 1339500 (22, 28) - SUNBRELLA - in the name of LEISURELIFE (AUST) PTY LTD

Delegate:	Aaron Walters
Representation:	Opponent: Written submissions by Dr. Victoria Longshaw & Michael Houlihan of Houlihan2 Pty Ltd Applicant: Written submissions by Clinton Fillipou of Anisimoff Legal
Decision:	2018 ATMO 29 Opposition under section 96 of the Trade Marks Act 1995 to an application for removal under section 92 – ground under section 92(4)(b) – allegation of non-use successfully rebutted – Trade Mark to remain on Register.

Background

1. This is a matter concerning an application made on 14 December 2015 for removal of a trade mark from the Register under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The details of the trade mark registration subject of the application for removal (‘the removal application’) is:

Trade Mark No: 1339500

Trade Mark: sunbrella (‘the Trade Mark’)

Owner: Leisurelife (Aust) Pty Ltd.

Specification of Goods: (‘the registered goods’)

Class 22
Awnings for tents; camping tents; tents; tents (awnings) for caravans; tents (awnings) for vehicles; tents for camping; tents for use as an adjunct to vehicles; tents made of textile materials; awnings for tents; camping tents; tents; tents (awnings) for caravans; tents (awnings) for vehicles; tents for camping; tents for mountaineering; tents for use as an adjunct to vehicles; tents made of textile materials

Class 28
Play tents; play tents

1. The removal application was made by Glen Raven, Inc (‘the Applicant’). Leisurelife (Aust) Pty Ltd (‘the Opponent’) opposed that application, per s 96 of the Act, by filing a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’). The SGP provides:

   1. Use by the Registered Owner (Section 100(3)(a))

   The Registered Owner has used the Trade Mark or the Trade Mark with additions or alterations not substantially affecting its identity in good faith in Australia in relation to the goods, during the period of 3 years ending one month before the day on which the Removal Application was filed.

   2. Discretion (Section 101(3))

   The Registrar can be satisfied that it is reasonable to decide that the Trade Mark should not be removed from the Register even if the ground on which the Application for Removal has been established. Without limiting the matters, in not removing the Trade Mark from the Register, the Registrar may and should take into account, whether the Trade Mark has been used by the Registered Owner in respect of:

   (a) similar goods or closely related services; or

   (b) similar services or closely related goods;

   to those to which the Application relates.

2. The Applicant filed its Notice of Intention to Defend and the evidence stages commenced with both parties filing evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The evidence before me consists of:

Evidence in Support

• Declaration of Maxwell William Day, Managing Director of the Opponent, made 20 April 2016 and featuring exhibits MWD-1 to MWD-3 (‘Day 1a’). Mr. Day provides a second declaration made on 14 September 2016 and features exhibits MWD-7 to MWD-15 (‘Day 1b’). It is clear Day 1a and Day 1b are to be read cumulatively[1] and, where appropriate, I shall refer to this culmination as the ‘Cumulative Day Declaration’.

Evidence in Answer

• Statutory Declaration of Derek B. Steed, Vice President and General Counsel of the Applicant, made on 15 December 2016 (‘Steed’). Material containing product description and product availability through third party retailers related to the Applicant in Australia is attached to the declaration. While this material is referenced briefly, Steed does not list any exhibits or annexures. 

  [1] For example, Day 1b, paragraph 1, repeats paragraphs 1 to 10 of Day 1a.

Evidence in Reply

• Declaration of Maxwell Day made on 24 February 2017 (‘Day 2’).

1. Both the Opponent and the Applicant opted to rely on written submissions in lieu of requesting to be heard. These submissions were filed by representatives of the former on 4 May 2017 and the latter on 8 May 2017. Unusually, the Opponent’s representatives filed subsequent submissions (‘further submissions’) on 19 May 2017. The outcome of which I will discuss under ‘Preliminary Matters’ below.     

Preliminary Matters

1. As mentioned above, representatives for the Opponent provided me with further submissions on 19 May 2017. The further submissions alleged new material had been inappropriately introduced by the Applicant’s representatives in their submissions, dated 8 May 2017. The Opponent argued that, as a result, I should disregard the Applicant’s submissions in their entirety. 

2. In particular, the Opponent’s representatives highlighted in the Applicant’s submissions:

• Paragraph 10, being a statement as to the lack of any commercial arrangement between the parties;

• Paragraph 13, providing screenshots of internet searches conducted on 28 April 2017 (‘screenshot material’); and

• Paragraph 21, being a statement as to the Applicant’s awareness of the acceptance and registration of Trade Mark 1399500.

1. On 22 January 2018 I corresponded with the parties and provided the Applicant an opportunity to respond to the issues raised, primarily with respect to the screenshot material.

2. As part of my correspondence I stated my opinion was to not to strike out the Applicant’s submission in its entirety, nor that I considered the statements made in Paragraphs 10 and 21 to be additional evidence. I shall now provide my reasons for so considering in full:

   i.The Opponent’s representatives claim paragraph 10 introduces new arguments relating to the lack of a commercial arrangement between the parties. Though not stated expressly, a clear inference can be drawn, when reading through Steed, as to the lack of a commercial arrangement between the parties. I do not, in any event, consider the Opponent’s submissions in this regard to amount to new evidence.  

   ii.The Opponent’s representatives claim paragraph 21 introduces new arguments relating to the circumstances in which the Applicant became aware of the Registration. I do not consider this the case. Paragraph 21 merely provides inferable background information related to Paragraph 13 of Steed. Again, I will treat such information as submissions on the basis of evidence already filed and give it due weight.

3. In light of the above, I informed the parties I would give the statements made in paragraphs 10 and 21 due weight given they have not been provided in declaratory format. However, the screenshot material did not form part of the Applicant’s Evidence in Answer and should be recognized as additional material. Accordingly, I sought representations from the Applicant as to its proper inclusion into proceedings. 

4. On 6 February 2018 I received a response from the Applicant’s representatives. I note the Applicant contends the screenshot material should not be considered new evidence, as it was a:

   i.“[D]irect response to the new claims made by the Opponent in the Evidence in Reply, and a re-assertion of the Applicant’s previous arguments that the Opponent has failed to supply retailers, including those that it again claimed to supply in the Evidence in Reply”; and further

   ii.The contents of the screenshot material “are crucial, necessary and entirely reasonable to clarify the facts and refute the incorrect assertions made by the Opponent in respect of the supply of goods bearing the Trade Mark, as made throughout the evidentiary stages but repeated in the Opponent’s Evidence in Reply.”

5. I am in agreement that it is reasonable for submissions to be used to respond to, clarify points of principle or otherwise assert a proponents position, but only as it relates to evidence submitted correctly during the evidentiary stages. However, what I have before me is more than simple assertion. By the Applicant’s own admission the screenshot material has been provided to clarify fact and refute assertions made throughout the evidentiary stages. In the present circumstances, I remain of the opinion the screenshot material is new evidence.   

6. The principles for admitting late evidence, post April 2013, were discussed in Fed Square Pty Ltd v Federation IP Pty Ltd.[2] An outline of the more crucial points that a party seeking to file late evidence should try to cover is provided in Pt. 51.2.6 of the Trade Marks Office Manual of Practice and Procedure.

   [2] [2015] ATMO 42.

7. The Applicant has not mentioned why this evidence could not have been made available during the evidentiary stages if its purpose is to refute assertions made within these stages. However, likely the most salient point for the present matter, is if the information is crucial to the delegate’s decision. The Applicant has not given me a compelling reason to consider why the screenshot material, captured on 28 August 2017, being a date well outside of the relevant period,[3] is of high probative value for the current opposition. The Applicant has further made no comment as to whether this was the appearance of these websites during the relevant period. Consequently, I do not accept the new evidence in for consideration, and, in the event I was inclined to do so, the weight to which it would be attributed would be low.     

   [3] Defined at paragraph [21].

8. Having dealt with these Preliminary Matters, I consider my decision rests on the properly filed evidence, a summary of which I provide further below.

Discussion

The legislative framework

1. Section 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:

   (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 nonuse application is filed, and, at no time during that period, the person who was then the registered owner:

   (i) used the trade mark in Australia; or

   (ii) used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

2. Section 100 of the Act makes clear the requirements and the fact that the onus to rebut an allegation of non-use made under s92(4)(b) of the Act lies with the Opponent. Pertinent to the current proceedings ss 100(1)(c) and 100(3)(a) provide:

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.

(2) ...

(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...

1. For guidance, s7(4) of the Act provides:

   “use of a trade mark in relation to goods” means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

2. The definition of a trade mark ‘applied to and in relation to’ goods is defined in s9 of the Act:

Definition of applied to and applied in relation to

(1)  For the purposes of this Act:

(a)  a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

(b)  a trade mark is taken to be applied in relation to goods or services:

(i)  if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

(ii)  if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

(c)  a trade mark is taken also to be applied in relation to goods or services if it is used:

(i)  on a signboard or in an advertisement (including a televised advertisement); or

(ii)  in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

1. Finally, the Registrar may apply her discretion in deciding upon an opposition to a non-use application. In that regard, section 101 of the Act relevantly provides:

101 Determination of opposed application—general

(1) Subject to subsection (3) and to section 102, if:

(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b) the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2) ...

(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.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a) similar goods or closely related services; or

(b) similar services or closely related goods;

to those to which the application relates.

1. Due to the removal application being filed on 14 December 2015, the period in which the Opponent must establish use of the Trade mark is the three year period ending 14 November 2015 (‘the relevant period’).

Summary of the Evidence

1. The primary evidence relied upon by the Opponent to rebut the allegation of non-use, within the relevant period, is contained in the Cumulative Day Declaration. The following is a summary of the evidence before me.

2. The Opponent operates a manufacturing, importation and wholesaling business of camping equipment and goods related to the registered goods which it alleges to supply to a number of large and well-known retailers throughout Australia.[4]

   [4] Day 1a, paragraph 7-8.

3. During the relevant period, the Opponent promoted its products through face to face meetings with representatives of potential customers or clients, a marketing practice which is alleged to be standard for wholesalers and importers in the industry.[5] During these meetings the Opponent provided quotations, product lists and corresponding product specifications of its goods which were ready for sale. To substantiate its claims, the Opponent leads the following exhibits:

   [5] Day 1a, paragraph 9.

   i.      Exhibits MWD-1 and MWD-2 contains two emails between Mr. Day and a ‘Buyer’ for Woolworths sent on 5^th February 2014. The subject of which is to arrange a meeting. The Opponent contends this was to enter into negotiations for possible sales to Woolworths,[6] though this is not expressly evident based on the contents of the exhibits. I note that no further evidence is led as to the outcome of this meeting, nor does the Opponent specify which of its products were to be presented to the Buyer.

   [6] Day 1a, paragraph 11.

1. Exhibit MWD-3 provides an email, sent by the Opponent on 11^th November 2013. The recipient is declared to be the (then) Managing Director of AHM Australia, one of the Opponent’s current customers.[7] The email contains a quote, being a list of eight items with prices listed in US dollars. Two items make reference to the Trade Mark. Item 6 refers to ‘Screen House (cheap) with mesh walls Sunbrella’, while Item 8 refers to ‘Beach shelter BS240 Sunbrella’.

   [7] Day 1a, paragraph 12.

2. Exhibit MWD-7 provides two emails between a representative from AHM Australia and Mr. Day, sent in early December 2013. The Opponent describes this as ‘relating to an order of products’.[8] The email correspondence begins with a request for information by the representative as to the ‘Best shipment date to deliver to Cargo Services’. Mr. Day’s response outlines a number of problems facing the order, though states an intention to meet the ‘present requirements’.   

   [8] Day 1b, paragraph 5.

3. Exhibit MWD-8 contains two emails sent in mid-December 2013, between Mr. Day and the same Buyer for Woolworths seen in MWD-1 and MWD-2. The contents of the Buyer’s email appear to be an introductory commercial outreach to the Opponent, following recommendation by the Managing Director of AHM Australia. Of note, Mr. Day’s emailed response appears to shed some light on the order referred to in MWD-7. In reference to the above order for AHM Australia, Mr. Day states the ‘production and delivery of gazebos and swags in February [2014] is impossible due to previous commitments.’   

4. Exhibit MWD-9 contains a duplicate email seen in MWD-1. 

5. Both exhibits MWD-10 and MWD-11 contain price lists of the Opponent’s products presented to representatives of Aussie Disposals and Big W in March 2014 and June 2014 respectively. These price lists show goods referred to as ‘Beach Shelters’ or ‘Sun Shelters’ under the Trade Mark.  

6. Exhibit MWD-12 contains four product specifications which the Opponent provides as examples of the like to accompany the product lists handed to Aussie Disposals and Big W.[9] For the sake of clarity, these are not the actual product specifications which accompanied the price lists in 2014. The first specification, dated November 2013, features a vague image of a marquee-like structure. Above this image the Trade Mark can be seen. The product description lists this as a ‘Screen House’. The subsequent product specifications follow similar formatting with respect to various tent-like shelters. However, two notable differences present in that they are undated and have a large slogan ‘LIFE’S GREAT OUTDOORS with SUNBRELLA’ featured at the bottom of each specification.

7. Exhibit MWD-13 contains an email sent by Mr. Day in February 2013 to representatives of Bunnings. The email attaches a product specification for a beach chair with the Trade Mark visible at the bottom of the document. No reference to any other product is contained.

8. Exhibit MWD-14 contains a single purchase order, dated 31^st May 2015, created by the Opponent and sent to Baejin Corporation in Korea. The purchase order, clearly entitled ‘Purchase Order’, shows a request for a quantity of 1800 ‘Family Pop Up Shelter[s] Sunbrella’ to be supplied to Target Australia in Melbourne. I would note the delivery schedule date is listed as ‘7^th July 2006’. However, the Mr Day declares this as being an administrative error resulting from a failure to update the details of an earlier purchase order template. I accept this as being the case.  

9. Exhibit MWD-15 is an email confirming receipt of the quote evidenced in MWD-3. However, this confirmation is dated three years after the original email is sent and falls outside of the relevant period.  

   [9] Day 1b, paragraph 6.

1. In answer, Steed primarily discusses the cogency of the Opponent’s evidence contained in the Cumulative Day Declaration. However, Steed does not feature any exhibits or annexures to substantiate the statements contained therein.

2. In reply, Day 2 primarily responds to statements made in Steed and, where relevant, clarifies evidence provided in the Cumulative Day Declaration.

Reasons

1. I must now determine whether the Opponent’s evidence demonstrates, during the relevant period, the required use of the Trade Mark within the meaning of s 92(4)(b) and s100(1)(c) of the Act.

2. It is clear from reviewing the materials before me that the answer to this question is fiercely contested by the parties. In determining a similar matter, Katzmann J in Dick Smith Investments Pty Ltd v Ramsey (‘Dick Smith’) provides:

   The answer to this question turns on the meaning of the concept of use of a trade mark in the Act and s 92(4) in particular. The question must be determined objectively: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 (“Gallo”) at [33].[10]

   [10] [2016] FCA 939, [97].

3. The Opponent’s representatives submit the following:

   It is submitted that the Opponent has, at all relevant times, had and still has a genuine intention to use the Mark. The Opponent has in actual fact used the Trade Mark. The Opponent has never abandoned the Trade Mark of the Registration.”[11]  

   [11] Opponent submissions, paragraph 8.

4. I would first make clear that the ‘concept of use of a trade mark’ (referred to at [21]) is inherently linked to the definition of a trade mark.[12] In this regard, s 17 of the Act provides:

   [12] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144, [41]

   What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:          For sign see section 6

5. In Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd it was determined that a trade mark will be taken to be used only if it is in the course of trade.[13] Further, in Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. (No. 2) preliminary discussions and negotiations to use the trade mark were not considered to be use in the course of trade.[14] However, where such “preparatory steps coupled with an actual trade or offer to trade; or preparatory steps coupled with an existing intention to offer or supply goods in trade” would be sufficient to demonstrate use of a trade mark.[15]

   [13] (1987) 10 IPR 402

   [14] (1984) 59 ALJR 77.

   [15] Winton Shire Council v Lomas [2002] FCA 288, [38]. And see Buying Systems (Australia) Pty Ltd v Studio SRL [1995] FCA 1063.

6. Use of a trade mark can further be demonstrated in circumstances where a trade mark owner, in ordering goods from a manufacturer for resale, specifies the goods should bear the owner’s trade mark.[16] Consequently, in the matter before me, exhibit MWD-14 (‘the purchase order’) is the strongest evidence relied upon by the Opponent to support its use of the Trade Mark during the relevant period. The Opponent describes the purchase order as the result of a request to supply Target Australia with ‘1800 Family Beach Shelters under the brand name SUNBRELLA.’[17] The Opponent created the purchase order and sent this to its Korean agent for manufacture, as the Opponent’s own manufacturing plant was unable to complete the request, with instructions to forward the completed order to Target.[18]

   [16] Re Hermes Trade Mark [1982] RPC 425 (Ch D)

   [17] Day 1b, paragraph 10.

   [18] Ibid.

7. However, the Applicant criticizes the cogency of the purchase order, on the basis that, inter alia, its execution is not clear, nor does it evidence the goods were actually manufactured and sent to Australia.[19] In submissions it is further scrutinized:

   … [T]his evidence falls into the category of mere preparations to use, indicating a potential outcome where goods may later be manufactured and potentially dispatched to Australia. There is no signature on the purchase order or acknowledgement of receipt provided. There is no evidence that this actually occurred within the non-use period, or that any goods bearing the Trade Mark actually reached a purchaser in Australia or any consumers/end-users in Australia, or what the goods looked like and if they bore the Trade Mark.[20]

   [19] Steed, paragraph 27.

   [20] Applicant Submissions, paragraph 24.

8. Day 2 relatedly states:

   Contrary to Mr. Steed’s unsubstantiated allegation in paragraph 27, Exhibit MWD-14 is a genuine purchase order provided to a manufacturer by the Opponent, instructing the manufacturer to manufacture the goods of the Opponent, apply the Opponent’s trade mark thereto, and deliver the manufactured goods to Target, the Opponent’s customer, at an address located in Australia. The Opponent has used its Trade Mark for commercial purposes in respect of goods for which it is registered during the course of trade.

9. I do not agree the purchase order amounts to a mere preparation to use the Trade Mark. I refer to the words of the High Court in Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd (‘Re Yanx’):

   Under our Act the mark need not be used upon the goods. It is sufficient if it is used in connection with the goods. If the mark had to be used upon the goods it might be difficult to say… that there had been any user in Australia unless the goods on which it was used were in Australia. Since, however, a mark need only be used in connection with the goods, it seems to me that a mark is so used if the goods that are offered for sale in Australia under the mark whether they are actually in Australia or not.[21]

   [21] [1951] HCA 28; (1951) 82 CLR 199 (4 June 1951), [6]. The Court discussing, as it was, use of a trade mark under the Trade Marks Act 1905 (Cth), which is not materially different to the current Act.

10. Re Yanx supports the Opponent in that it need only show an offer for sale of goods in connection with the Trade Mark has occurred in Australia. Looking over the exhibit, and taking into account the Opponents own comments, I see no reason why the purchase order should not be considered the result of an offer for sale made in Australia.

11. In Woolly Bull Enterprises Pty Ltd v Reynolds (‘Woolly Bull’), a single bona fide use of the trade mark during the non-use period could be considered sufficient to resist an application for removal.[22] Though where a registered owner relies on one single act of use of the trade mark, Wilberforce J, in Nodoz Trade Mark (‘Nodoz’), makes clear that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”[23]

    [22] [2001] FCA 261; (2001) 51 IPR 149, [17]

    [23] (1962) RPC 1, [7]

12. I believe the Applicant’s criticisms do highlight some shortcomings, though only serving to point out the purchase order falls short of overwhelmingly convincing proof. Accordingly, I turn to the additional evidence put before me.

13. Reviewing the evidence exampling the manner in which the Opponent operates as a commercial operation, I note the following passages taken from the Cumulative Day Declaration:

    According to the standard marketing practice of importers and wholesalers in the industry, I actively promote my products to stores by arranging for meetings with potential customers such as Purchasing Officers, Buying Agents, or Business Managers.[24]

    …

    Typically, such meetings involved corresponding with a representative of the client by email or telephone to set up a meeting, then meeting with the representative to discuss possible orders of products from the Company.[25]

    Before those meetings, I usually prepared hardcopies of pricelists and specification sheets that were current at the time and which related to available products, including SUNBRELLA products. During the meeting, I personally handed copies of the price lists and specification sheets to the representative of the client. Any subsequent orders of the products were normally provided verbally to me by the representative during the meeting.[26] 

    [My emphasis added]

    [24] Day1a, paragraph 9.

    [25] Day 1b, paragraph 3

    [26] Ibid, paragraph 4

14. Several examples are led to illustrate the manner in which the Opponent conducts its commercial operation, including exhibits MWD-1, MWD-2, MWD-7, MWD- 8 and MWD-9 (collectively, ‘the business activity evidence’). The Applicant dismisses the business activity evidence, claiming it is irrelevant to the current proceedings.[27] I disagree that the evidence is irrelevant.

    [27] Steed, paragraph 17.

15. Each case will turn on its own facts.[28] As I have established, use must be in the course of trade. What is therefore in the course of trade must have regard to the manner in which the Opponent claims to operate as a trader, which in turn, will be supported by the evidence.  

    [28] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939, [130].

16. It is abundantly clear that none of the business activity evidence feature the Trade Mark. Further, given the emphasized segments in the above passages, the extent to which I can objectively view this evidence demonstrates an offer to trade, or in the case of MWD-8 an actual trade, in goods under the Trade Mark is extremely limited.

17. That being said, in Gallo it was noted “the reference in s 17 to ‘the course of trade’ encompasses the idea that use of a trade mark is use in respect of "vendible articles".”[29] In Dick Smith, Katzmann J considered the meaning of ‘vendible’ and clarified it does not mean sold but capable of being sold or marketable.[30]

    [29] At [44]. The Court citing Jackson & Co v Napper; In re Schmidt's Trade-mark (1886) 35 Ch D 162 at 179 per Stirling J; Aristoc Ltd v Rysta Ltd [1945] AC 68 at 102 per Lord Wright

    [30] At [117].

18. The above quoted passages make it clear, as part of its commercial operation, the Opponent prepared price lists and specification sheets of available products, including those under the Trade Mark, prior to each meeting. The Opponent leads MWD-10 and MWD-11 as examples of such product lists, which relevantly featured goods in relation to the Trade Mark (‘the product list evidence’).

19. I note the Applicant’s comments in regards to the product list evidence not demonstrating goods were actually manufactured bearing the Trade Mark.[31] However, I accept the product list evidence as being use of the Trade Mark in relation to the goods described within the evidence.[32]

    [31] Steed, paragraph 25.

    [32] Sub-section 7(4) of the Act refers to a trade mark being used either physically on or in other relation to the goods. Sub-section 9(1)(b)(ii) considers ‘a trade mark is taken to be applied in relation to goods if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods’.

20. The Opponent states the product list evidence was presented to representatives of Aussie Disposals and Big W during meetings in 2014.[33] No evidence has been led to corroborate these meetings actually occurred. However, in combination with the business activity evidence, I accept the product list evidence supports the Opponent’s claim to have conducted meetings with prospective buyers, during the relevant period, in which the Opponent offered price lists featuring vendible articles in relation to the Trade Mark.

    [33] Day 1b, paragraph 6.

21. In Buying Systems (Australia) Pty Ltd v Studio Srl (‘Buying Systems’), the Court in that matter outlined the steps taken by the opponent prior to the critical date of 8 December 1983 and noted:

    The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine.  This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade.[34]  

    [34] (1995) 30 IPR 517, 520.

22. In Woolly Bull, the Court further discussed the position taken in Buying Systems:

    Buying Systems not only had an existing intention to trade in the magazine, it had gone beyond making preliminary arrangements to use the mark by December 1983.  It had an objectively ascertainable commitment to offering to supply the magazine in trade demonstrated by its having purchased and used appropriate business cards and letterheads in connection with the proposed offering of the magazine and by having solicited advertisers for the magazine.  (In the absence of evidence as to the subsequent publication of the magazine, however, it may well have been difficult for Buying Systems to satisfy the Court that, by December 1983, it then had an intention to offer or supply goods bearing the mark in trade and had done things sufficiently unambiguous to objectively show that it had that intention.)[35]

    [My emphasis added]

    [35] [2001] FCA 261, 28.

23. I believe the business activity evidence and product list evidence, when considered in light of the purchase order, demonstrates the Opponent had more than a mere subjective intention to use the Trade Mark during the relevant period has but rather demonstrated Trade Mark use.

24. Noting too the evidence contained in exhibit MWD-3, showing a quote for available goods, some of which appear next to the Trade Mark, alongside exhibit MWD-8, featuring a discussion of products to be delivered to a current client, I consider the Opponent has gone some way to demonstrate the purpose of such interactions go beyond the mere presentations of goods, not yet in existence, to potential customers or clients.[36]

    [36] Cf the position of the delegate in Myerton Ltd v Foreign Supplement Trademark Ltd [2007] ATMO 75.

25. Therefore, like in Buying Systems, I consider the Opponent’s evidence, as a whole, shows at the very least an objectively ascertainable commitment to producing vendible products which would carry the Trade Mark.[37]

    [37] Dick Smith, [156].

26. However, in so considering, I shall address some additional arguments contended by the Applicant.

27. The first argument pertains to the Opponent’s evidence purportedly demonstrating use of the Trade Mark on goods falling outside of the registered goods. The registered goods include claims for tents and tents made of textile materials. The Macquarie Dictionary provides the following definition for ‘tent’.

    noun 1. a portable shelter made of a strong material, formerly usually canvas, supported by one or more poles or a collapsible frame, and usually anchored by ropes fastened to pegs in the ground.

28. I accept the dictionary definition of tent would encompass goods described as ‘pop-up beach shelters’ or ‘sun shelters’ to the extent that it satisfies they are goods that are “the same kind of thing.”[38]                

    [38] Re Hick’s  Trade Mark ; Ex parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636, at 640.

29. The second argument is the more serious allegation relating to the exhibited use by the Opponent being a misappropriated use of the Applicant’s trade marks. Specifically, the Applicant contends:

    It is contended by the Applicant that the evidence provided by the Opponent here shows misappropriation of the Applicant’s trade marks in a deliberate attempt to pass off the trade mark of the Applicant as the Trade Mark of the Opponent, in breach of the Applicant’s registered and unregistered rights [‘the first allegation’]. Or, at best, if the evidence provided could be categorised as ‘use’ at all, it shows use in a way that could just as easily be evidence of use (or misuse) of the Applicant’s trade marks that those of the Opponent [‘the second allegation’].[39]

    [39] Steed, paragraph 15.

30. With respect to the first allegation, I shall make it expressly clear that any decision made in regards to the current application for removal of a trade mark for non-use under s92(4) of the Act, is not a decision made in regards to allegations of misappropriation or passing off. No doubt, for the purposes of s92(4) of the Act, the relevant use of the Trade Mark in Australia must be ‘in good faith’ which means use of the trade mark for commercial purposes.[40] I am satisfied that the use referred to earlier meets this requirement.

    [40] Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7; 175 FCR 26; (2009) 79 IPR 437, [54].

31. With respect to the second allegation, I find such an allegation to be unproven based on the information I have before me. I note the comments in Steed which refer to the Applicant’s branded fabrics, bearing the Applicant’s identical trade mark, being promoted by manufacturers and distributors in finished products, including on hang-tags and labels. I can see the Applicant has attached images, taken from its website, of its available materials. However, outside of this, I have not been presented with any evidence to substantiate this serious allegation.

32. Without such, I am unable to view the Opponent’s use of the Trade Mark as being anything other than use in good faith and in connection with the Opponent’s vendible articles.

33. I therefore consider the Opponent has successfully rebutted the allegation of non-use. Accordingly, there is no reason to consider the discretion provisions under ss101(3) of the Act.

Decision

1. The evidence satisfies me that there has been genuine commercial use of the Trade Mark upon or in relation to the goods within the relevant period. Therefore, the opposition to removal under section 92(4)(b) of the Act has been successful and I refuse to remove the Trade Mark from the Register.

Costs

1. An award of costs normally follows the event. The Opponent has been successful and I award costs against the Applicant under section 221 of the Act in the allowable amounts set out in Schedule 8 of the Regulations.

Aaron Walters
Hearing Officer
Oppositions and Hearings
15 January 2018