Lidl Stiftung & Co. KG v Conga Foods Pty Ltd

[2020] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Lidl Stiftung & Co. KG to application under regulation 17A.48C of the Trade Marks Regulations 1995 by Conga Foods Pty Ltd for cessation of protection of Protected International Trade Mark number 1634828 (International Registration number 1208920) (29, 30, 31, 32, 33) - SOL&MAR (Figurative) - in the name of Lidl Stiftung & Co. KG

Delegate:	Nicholas Smith
Representation:	Opponent: Jeremy Herz of Herbert Smith Freehills Applicant: Sonia Stewart of Counsel instructed by Clayton Utz
Decision:	2020 ATMO 54 Trade Marks Act 1995 (Cth) – Opposition to an application under regulation 17A.48C for cessation of protection - Opponent’s evidence does not show any use of the Trade Mark during the relevant period nor validly particularised obstacle to use. Exercise of discretion not appropriate. Protection of International Trade Mark to cease.

Background

1. This decision is pursuant to an application made on 14 December 2018 under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Conga Foods Pty Ltd (‘Applicant’) to cease protection of the protected international trade mark detailed below[1].  The application is made in respect of all of the goods for which protection has been extended to Australia, that is, the application is for complete cessation of protection the trade mark.

   [1] Technically an application to cease protection of an International Registration Designating Australia (‘IRDA’) is to be made pursuant to reg 17A.48C of the Trade Marks Regulations 1995 (‘Regulations’). However reg 17A.48D provides that Part 9 of the Act (being the part of the Act dealing with an application for removal) applies in relation to an application for cessation of protection and in particular, reg 17A.48D(f) provides that an application under s 92 to remove a trade mark is taken to be a reference to an application for cessation of protection.

Registration No.	1634828
Lodgement date	8 November 2013
Priority date	8 May 2013
Goods	Class 29: Meat and meat products, poultry and poultry products, game and game products, sausage and sausage products, fish and fish products, sea food (not living) and products therefrom, mollusca and crustacean (not living) and products therefrom, meat extracts, fish extracts, poultry extracts, game extracts and vegetable extracts, fruits and vegetables, also pickled sweet and/or sour, fruit and vegetable preserves, fruit and vegetable pulp, potato products of all kind (included in this class), all aforementioned goods also preserved, cooked, dried and/or frozen; delicatessen fish, especially bismarck herrings, rollmops, fried herrings, matjes herrings, coalfish in oil, smoked salmon, smoked fish fillets, caviar, prawns and crab meat in brine and/or sauce; antipasti, essentially consisting of meat and/or fish and/or sea food and/or poultry and/or game and/or sausage and/or vegetable and/or fruits and/or cheese (included in this class); salads based on meat, fish, poultry, game, sausage, sea food, vegetables and/or fruits; semi-processed meals, ready-to-serve meals and frozen foods, especially exclusively or essentially consisting of meat, fish, poultry, game, sea food, potatoes, processed fruits, vegetables and/or cheese (included in this class); jellies, jams, marmalades, fruit mush and other sweet spreads (fruit preparations); processed almonds, processed nuts and nut mixtures of all kind, also with dried fruits; snacks based on potatoes included in this class, especially potato chips and potato sticks; edible oils and fats, olive oil; eggs, milk and milk products (included in this class); desserts based on yoghurt, curd, cream, milk and/or fruits; soups, broths, soup preparations, stews, also ready-to-serve; fresh fruits and vegetables, cut and in form of salads Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and cereal preparations, cereals, muesli and whole grain products; coffee beverages, tea beverages, cocoa beverages and chocolate beverages; coffee or cocoa preparations for making alcoholic or non-alcoholic beverages; flavourings for foodstuffs; bread and bread products, pastry and confectionery; sweets and candies (also using nutritive sweeteners), chocolate and chocolate goods, chocolate candies, edible ices; honey, treacle; instant mixtures for making dumplings of all kind; instant doughs, especially dumpling dough, yeast dough, puff paste; baking ingredients, especially baking powder, yeast, icings, chocolate topping for covering confectionery, pastry and pralines and for preparing fillings for confectionery, pastry and pralines; jelly for covering fruit cakes, whipped cream stabilizer, baking flavours and flavorings for cakes other than essential oils, sugar crumbles, marzipan, marzipan mass, nougat, baking oblates, vanilla and vanillin sugar, vanilla pods; corn starch, gravy thickener; pudding, custard powder; pasta meals of all kind, also ready-to-serve and/or deep frozen; sweet ready-to-serve meals on basis of pasta, rice and/or whole grain products, especially rice pudding, semolina pudding, pancakes Kaiserschmarrn (cut-up and sugared pancake with raisins); salt, mustard; mayonnaise, remoulade, pesto, ketchup; vinegar, sauces (condiments), salad dressings; spices, spice extracts, dried and freeze-dried seasoning herbs; pizza and pizza products; pasta, also ready-to-serve and/or deep-frozen; open-faced sandwiches, open-faced bread rolls and open-faced baguette; sushi; salads on basis of rice and/or pasta; semi-processed meals, ready-to-serve meals and frozen foods, especially exclusively or essentially consisting of pasta and/or rice and/or whole grain products and/or pastry and/or confectionery (included in this class); pies Class 31: Fresh fruits and vegetables; fresh nuts of all kind and almonds; fish, mollusca and crustacea (living) Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages Class 33: Alcoholic beverages (except beers) (‘Registered Goods)
Holder	Lidl Stiftung & Co. KG
Trade Mark	(‘Trade Mark’)

2.     Lidl Stiftung & Co. KG (‘Opponent’) has opposed the application to cease protection of the Trade Mark, filing a Notice of Intention to Oppose on 12 March 2019 and a Statement of Grounds and Particulars (‘SGP’) on 12 April 2019.  The Applicant filed a Notice of Intention to Defend on 3 May 2019.

1. The Opponent subsequently filed evidence in support of its opposition to cessation of protection (‘EIS’) with neither party filing any additional evidence.

   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 29 August 2019 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 3 March 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 12 December 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 18 February 2020 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 25 February 2020 (‘Applicant’s Submissions’).  At the hearing Jeremy Herz of Herbert Smith Freehills represented the Opponent, appearing by video conference and Sonia Stewart of Counsel, instructed by Brett Doyle of Clayton Utz represented the Applicant, also appearing by video conference. 

2. The Applicant’s Submissions included three additional documents, described as ‘annexures’. I note that the additional material has not been filed in accordance with the timeframe set out in the Regulations for filing evidence, nor is it provided in the form of a declaration with a person swearing to the authenticity of these documents. The Applicant’s Submissions set out no basis as to why I should take this additional material into account (although subsequent oral submissions were made during the hearing). The Opponent objected to the inclusion of this additional material, filing written submissions seeking that I not have regard to the additional material.

3. Notwithstanding the lateness of the filing of this evidence and the improper manner in which it was filed, in certain circumstances it may be appropriate for a delegate to take into account material that is filed out of time.  As the delegate, I may do so as I am not bound by the rules of evidence but may be informed on any matter in a way that I reasonably believe to be appropriate (reg 21.15(4)) and/or may take into account information available to me that is relevant subject to the parties having been provided with this information and having a reasonable opportunity (reg 21.19).  The application of these provisions is discretionary and a party cannot compel the Registrar or a delegate in this regard.  I also note that in numerous decisions delegates have cautioned that reg 21.15(4) and reg 21.19 should not be used as a substitute for the repealed further evidence provisions.

4. The party who has filed the out of time material must make a compelling case in favour of it being considered.  In this matter I am not satisfied that a compelling case has been made and I decline to consider the unfiled evidence.  In particular I note that the evidence itself, had it been admitted, would have had no impact on my ultimate decision in this matter.

   8.     I wish to make one further comment in respect of the Opponent’s oral submissions in the hearing.  During the hearing the Opponent submitted that no inference be taken by its failure to put on any direct evidence of any future intention to use the Trade Mark by reason of a reference to the decision in CUB Pty Ltd v Elixir Signature Pty Ltd.[2]  That decision involved a unique set of circumstances where one party failed to provide evidence on the basis that the tendering of such evidence may involve a breach of commercial confidentiality and the Delegate recognised this as such.  However the Opponent’s attempts to rely on this case as an explanation for its failure to provide any evidence of use, intention to use or causal link in respect of obstacles to use were utterly unpersuasive and I would caution other parties before the Registrar not to make nebulous and unsupported claims of ‘commercial confidentiality’ as an explanation for their failure to put on evidence in a hearing before a Delegate of the Registrar.

   [2] [2013] ATMO 74, [102].

   9. 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 oral submissions made at the hearing on 3 March 2020:

   ·The Application for Cessation;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   10. Reg 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

   11. 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:

      (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

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

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

   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.

   12. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years[3] since 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[4]. As the Trade Mark had been protected for more than five years as at the date of the Application I need only consider the application for removal under s 92(4)(b) in this case.

   [3] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

   [4] 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.

   13. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three-year period ending on 14 November 2018 (‘relevant period’).  Such use of the Trade Mark must be use by the registered owner or an authorised user in the relevant period. 

   14. 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.

   15.     I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[5] 

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

   16.     In accordance with s 101 the Registrar may decide to remove the Trade Mark 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 Mark even if the grounds under which the application for removal was made are established.

   17. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b)[6], but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[7]

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

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

   Opponent’s Evidence

5. The Opponent’s evidence in this matter consists of a declaration made on 16 August 2019 by Jeremy Herz, Senior Associate with Herbert Smith Freehills, the Opponent’s representatives with Exhibits JDH-1 to JDH-12 (‘Herz Declaration’).    

6. The Herz Declaration conveys the following information:

   ·The Opponent is a global supermarket chain that currently operates in 29 countries and employs over 350,000 people.  The Opponent operates over 10,000 stores across Europe and the United States of America and is the 6^th largest supermarket chain in the world by number of stores.

   ·The Opponent uses the Trade Mark as one of its private label brands and has done so since December 2015.  Its business model involves the sale of predominantly private label products, similar to its competitor Aldi.

   ·At the date of filing of the trade mark application, the declarant is instructed that the Opponent had an intention to use the Trade Mark or authorise the use of the Trade Mark in Australia, indeed it has filed over 1,000 trade mark applications in Australia.

   ·A related entity to the Opponent, Kaufland, has recently announced an intention to use the mark in Australia.

   ·The Opponent has not commenced actual use of the Trade Mark in Australia because of circumstances that have been an obstacle to use.  In particular there are high barriers to entry due to the dominance of the two largest players, Woolworths and Coles, and a challenging regulatory landscape in Australia.

   ·The Opponent has a significant reputation overseas and as such a large number of Australians would travel overseas, visit one of the Opponent’s supermarkets and be exposed to the Trade Mark.  In addition the Opponent has promoted the Trade Mark across its social media platforms and its website which is regularly visited by Australian consumers.

7. The Hertz Declaration contains, as exhibits, examples of the use of the Trade Mark by the Opponent outside Australia both in the form of in-store brochures and external marketing material.  It also contains details of the very significant revenue the Opponent makes from the sale of products branded with the Trade Mark, albeit solely outside Australia.     

   Applicant’s Evidence

1. The Applicant has filed no evidence in this matter though I note from the Applicant’s Submissions that the Applicant is the holder of a number of registrations on the Register, for various foodstuffs in classes 29 and 30 consisting or containing the words ‘SOLE MARE’ for goods that are similar to the Registered Goods and that one of these registrations predates the Trade Mark.[8]

   [8] Trade Mark Registration Nos. 619981, 1976323 and 1976328.

   Discussion

2. To successfully oppose the application for removal of the Trade Mark the Opponent must establish that it used the Trade Mark pursuant to s 100 of the Act in the relevant period or that there was an obstacle to use in that period.

3. 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 Mark should not be removed from the Register.

4. In the present case the Herz Declaration concedes that the Opponent has failed to use the Trade Mark in Australia in the relevant period.  The Opponent sought to argue that its intention to use the Trade Mark in Australia amounted to use, under the principles outlined in Moorgate Tobacco Co Ltd v Philip Morris Ltd[9].  The facts in the present case are in no way analogous to the cases referred to in the Opponent’s Submissions in which use was found arising from an intention supported by an evidence of action by the trader to commit goods bearing that mark to trade in Australia.  The mere fact that the Opponent has purportedly registered a large number of trade mark registrations in Australia is not a sufficient basis to show actual use of a mark, as opposed to mere preliminary discussions.

   [9] (1984) 156 CLR 414, 433-4.

   Obstacles to use

   25. The Opponent in its evidence (and submissions) raises matters which could be regarded as obstacles to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act. The Applicant submits that I should not consider the matters relevant to s 100(3)(c) of the Act as the SGP does not explicitly identify s 100(3)(c) as a separate basis for opposing removal of the Trade Mark.

   26. I agree with the Applicant’s Submissions. While reg 17A.48P of the Regulations provides that the Registrar may grant a request to amend a statement of grounds and particulars, no such request has been made in this case, nor have any submissions been made with respect to the requirements under reg 17A.48P.

   27. The Opponent submits that is entitled to raise s 100(3)(c) as a separate basis since its SGP particularised as a basis for opposing the removal, s 92(4)(b), being good faith use during the relevant period. I do not understand the Opponent’s submission on this point. The relevant paragraph in the SGP is extracted below. I cannot conclude that this paragraph adequately signposts or gives any particulars to the s 100(3)(c) basis to oppose the removal of opposition since it expressly says that the mark was used or intended to be used and does not particularise either any obstacles to use or an intention to argue that there were obstacles to use.

   The Trade Mark has been used or intended to be used by the Opponent, or an authorised user, in good faith in respect of the goods for which the Trade Mark is registered, within the relevant non-use period of 14 November 2015 – 14 November 2018. Intention to use has been held to constitute use within the meaning of the Trade Marks Act 1995 (Cth).

   28. While certain grounds that the Opponent subsequently argued were obstacles to use had been particularised as a basis for the Registrar to exercise its discretion, this does not change my view that I should not consider matters relevant to s 100(3)(c) of the Act. When particularising the basis for opposition for removal, it is necessary to particularise that basis, whether it is under s 100(3)(c) or as an exercise of discretion, not merely state facts in relation to basis that a party may later choose to rely on in respect of an unrelated basis not particularised in a statement of grounds and particulars. The purpose of a SGP in such a case is to place a removal applicant on notice that the opponent is seeking to rely on s 100(3)(c) of the Act. This was not done by the SGP in this proceeding.

   29. Even if I were to consider whether the Opponent faced circumstances that amounted to an obstacle to use within s 100(3)(c), the EIS does not establish that such circumstances exist. The Opponent’s purported obstacles relate to the commercial circumstances in Australia, being the dominant position of Coles and Woolworths, and what are described as a challenging regulatory landscape. The claim of a challenging regulatory landscape does not appear to be supported by the documentary evidence exhibited to the Harz Declaration that describes the level of regulation as medium and the trend of such regulation being steady. The Opponent provides no direct evidence from its executives, or even documentary evidence in the form of memos or other internal documents that the Opponent’s failure to use the Trade Mark was caused by these purported obstacles. Furthermore there is no evidence of any causal link between such obstacles and the failure of the Opponent to use the Trade Mark in Australia.[10] 

   [10] As required under s 100(3)(c) of the Act, see Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, 55.

   30.     It is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Trade Mark to remain on the Register.

   Registrar’s Discretion

   31.     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.[11] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

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

   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.[12]

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

   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.[13]

   [13] Ibid [171]-[172].

5. 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, 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].

   [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].

   33.     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.[17]

   [17] 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].

   34.     In the present case the Trade Mark has never been used in Australia and hence there is no residual reputation of the Trade Mark in Australia or sales under the Trade Mark since the relevant period has ended.  I am unpersuaded by the Opponent’s submission that I should consider the purported barriers to entry to the supermarket market in Australia in applying the  discretion; I refer to my comments in paragraph 29 above referring to the lack of evidence of a causal link between purported commercial circumstances in Australia and the Opponent’s failure to use the Trade Mark.

   35.     The Opponent submits that I should exercise the discretion having regard to the overseas reputation of the Trade Mark, and its commercial interest.  With respect to the second matter, as the Opponent has not used the Trade Mark in Australia at any time, and has not (on the evidence before the Registrar) announced any plans to use the Trade Mark in Australia, I am unpersuaded that the removal of the Trade Mark will result in any particular commercial disruption to the Opponent.  As noted in paragraph 23 above I do not find the fact that the Opponent has spent a large amount of money registering trade marks in Australia a significant factor in the exercise of the discretion, especially in the case where there is no use of the mark or any concrete evidence (such as acquisitions of land or setting up of distribution centres) of the Opponent actually intending to use the Trade Mark in Australia at any future date.

   36.     While I note that the Opponent does have a significant international presence and consider that Australians living and travelling in any of the 29 countries in which the Opponent operates may have been exposed to the Trade Mark, I am unpersuaded that any public interest in the maintenance of a mark that has never been used in Australia outweighs the public interest in the integrity of the Register. 

   37.     I note the that the Applicant has registered or applied to register several trade marks that are prima facie similar to the Trade Mark for similar goods[18] and hence it would have a private interest in the removal of the Trade Mark.  Given the matters considered above I am not prepared to exercise the Registrar’s discretion to allow for the continuation of protection of the Trade Mark.

   [18] Trade Mark Registration Nos. 619981, 1976323 and 1976328.

   Decision

   38.     I decide that the Opponent has not established its opposition to cessation of protection and protection of the Trade Mark should cease in respect of all of the goods for which it is registered.

   39.     Accordingly, I direct that protection of registration 1634828 be ceased one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that cessation of protection 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.

   40.     The Registrar will notify the International Bureau of the cessation of protection of the Trade Mark at the conclusion of the appeal period if there is no appeal.  If there is an appeal, at the conclusion of the appeal process the Registrar will advise the International Bureau if required.

   Costs

   41. The Applicant has been successful in relation to the application for cessation of protection of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 1634828 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   15 April 2020