Liliana Forza v Jaimex Nominees Pty Ltd
[2016] ATMO 5
•28 January 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Liliana Forza to application under section 92 of the Act by Jaimex Nominees Pty Ltd to remove trade mark number 1281918 (25) - DREAMZ - in the name of Liliana Forza.
| Delegate: | Nicole Worth |
| Representation: | Removal Opponent: did not attend but written submissions prepared by Collison & Co. Removal Applicant: Robynne Sanders of DLA Piper Australia |
| Decision: | 2016 ATMO 5 Application for removal of registered trade mark under sub-ss 92(4)(a) and (b) of the Act – use of trade mark with additions or alterations not substantially affecting identity – use established – trade mark to remain on the Register. |
Background
This matter concerns an application for removal of a trade mark from the Register of Trade Marks under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘the Act’).
The application for removal was filed on 6 June 2014 by Jaimex Nominees Pty Ltd (‘the Removal Applicant’), who requested removal of the following trade mark registration in respect of all of the goods for which it is registered:
Trade Mark No: 1281918 Owner: Liliana Forza Filing Date: 22 January 2009 Trade Mark: (‘the Trade Mark’)
Goods: Class 25: Underwear
The registered owner of the Trade Mark, Liliana Forza (‘the Removal Opponent’) filed a notice of intention to oppose the application for removal followed by a statement of grounds and particulars. The statement of grounds and particulars states that the Trade Mark has been in use since 2009.
The Removal Applicant subsequently filed a notice of intention to defend, and the parties filed evidence in due course.
Following the completion of the evidence stages, the Removal Applicant requested to be heard and the matter came before me, a delegate of the Registrar of Trade Marks, on 16 September 2015 in Melbourne. The Removal Applicant was represented at the hearing by Robynne Sanders of DLA Piper Australia. The Removal Opponent did not attend the hearing, however written submissions were filed by its legal representative, Anthony Norris of Collison & Co.
The Law
Section 92(4) of the Act relevantly provides:
(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 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.
…Additionally, in accordance with s 93(2) an application under 92(4)(b) may not be made before five years have passed from the filing date of the application to register the trade mark.
Section 100 of the Act provides that the Opponent bears the onus of rebutting the allegations made under ss 92(4)(a) and (b), stating relevantly:
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
(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) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before that period;
…(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;
…
Accordingly, for the purposes of s 92(4)(a) the Removal Opponent bears the onus of rebutting the allegation that, as at 22 January 2009, it had no intention in good faith to use the Trade Mark and that the Trade Mark has not, at any time before 6 May 2014,[1] been used or been used in good faith by the Removal Opponent in relation to underwear. In respect of s 92(4)(b) the Removal Opponent has the onus of rebutting the allegation by establishing that the Trade Mark was used in good faith in relation to underwear during the three year period ending on 6 May 2014 (‘the relevant period’).[2] I note also the tendency for the grounds under ss 92(4)(a) and (b) to merge once five years have passed since the filing of an application to register, given an owner’s intention as at the filing date may come to be reflected in the actual use made of the trade mark.[3] Often an analysis of the ground under s 92(4)(a) is otiose in view of any actual use made of a trade mark, nonetheless I will address that ground briefly after the consideration of the ground under s 92(4)(b).
[1] That date being one month before the application for removal was filed.
[2] An allegation under s 92(4)(b) may also be rebutted by establishing that there was an obstacle to use during the relevant period (per s 100(3)(c)), however this was not pursued by the Removal Opponent and is therefore not discussed in this decision
[3] See for example M Davison, T Berger and A Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4th ed, 2008) [70.510]; Negro International Pty Ltd v Winstons Wine Pty Ltd [2014] ATMO 102; Castle Co Pty Ltd v Murray Goulburn Co-Operative Co Ltd [2013] ATMO 3.
Use in good faith may include use of a trade mark with additions and alterations that do not substantially affect the identity of the trade mark[4] and the Registrar may take into account use in relation to similar or closely related goods and/or services when determining the matter.[5]
[4] The Act s 100(3)(a).
[5] The Act s 101(4).
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co.[6] A single bona fide use of the trade mark during the relevant period may be sufficient to resist an application for removal.[7]
[6] [1982] FSR 72 at 83.
[7] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [17].
The relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities.
Evidence
For their evidence, the parties rely on the following declarations:
Evidence in support
- Declaration of Liliana Forza made on 21 November 2014 with exhibits LF1 – LF18.
Evidence in answer
- Declaration of Robynne Lyndsay Sanders (the Removal Applicant’s Solicitor at DLA Piper Australia) made on 16 March 2015 with exhibits RLS1 – RLS11.
Evidence in reply
- Declaration of Liliana Forza made on 22 April 2015 with exhibits LF19 – LF23.
The Removal Opponent declares that she has conducted a business under the name DREAMZ LINGERIE since 2009, in which year she also registered the business name DREAMZ LINGERIE in South Australia, and that she has made significant sales of underwear (or ‘lingerie’) products before, during and after the relevant period. She declares that she added the word LINGERIE to DREAMZ because it described the nature of the goods she sold.
The business is declared to have continuously been conducted since 2009 from physical premises in South Australia, as well as being promoted online via the website < since 2010. The Removal Opponent’s goods are also sold via ‘party plan events’ that are conducted in-store and at customers’ homes, although it is not stated when such party plan events commenced, and they have also been sold since at least May 2012 in third party retail outlets.
Several documents are adduced which display the words DREAMZ or DREAMZ LINGERIE, some examples of which, and the context in which they appear, are listed in the table below.
| Example | Context and Exhibit Reference |
| A logo: (referred to collectively as ‘the Butterfly logo’) | Upon invoices from 2012, 2013 and 2014 in LF-6 and LF-18. At the website < extracts of which are at LF-9 (exhibit dated after the relevant period: 18/11/14); upon the Groupon® voucher at LF-11 referred to below; upon undated business cards (LF-13) and an undated promotional sign (LF-14); upon hangtags attached to underwear (undated, LF-15). |
| A stamp upon order slips (this being a partial image of an order slip, showing the relevant stamp). At LF-5, comprising a number of order slips from Nov 2011. Similar examples appear in exhibits LF-6, LF-7 and LF-8, which relate to Aug 2012, Oct 2013 and July 2014 respectively. | |
| DREAMZ LINGERIE (in plain text) | Upon the website referred to above, in such contexts as ‘Dreamz Lingerie is designed for a better fit and sensual feel’, in conjunction with the butterfly logo; LF-9. In a redeemable coupon from online trader Groupon® in such contexts as ‘$40 Dreamz Lingerie voucher’ and ‘Dreamz Lingerie offers a wide selection of stylish lingerie’, in conjunction with the butterfly logo; LF-11, undated, declared to be from Sep 2011. In an advertisement upon electronic marketplace LivingSocial®, in such contexts as ‘Dreamz Lingerie $60 to Spend on Lingerie, Swimwear and More’ and ‘Look more gorgeous out of your clothes than you do in them with Dreamz Lingerie’; LF-12, undated, declared to be from Sep 2013, and an invoice for advertising services from LivingSocial® is adduced, dated 14/10/13. |
| Advertising proofs for advertisements placed in the 2011 and 2012 editions of the Yellow Pages®: | LF-19, dated 12/7/10 LF-20, dated 17/11/11 |
For its part the Removal Applicant provides a summary of its trade mark portfolio, which includes a trade mark that is currently denied registration because of the Removal Opponent’s prior registration, and copies of various searches it conducted of the Australian Trade Mark Online Search System (‘ATMOSS’). It also adduces an article entitled All Dressed Up With Something to Say: Effects of Typeface Semantic Associations on Brand Perceptions and Consumer Memory.[8]
[8] T Childers and J Jass, All Dressed Up With Something to Say: Effects of Typeface Semantic Associations on Brand Perceptions and Consumer Memory, 2002, Journal of Consumer Psychology.
Section 92(4)(b)
As indicated previously the question under s 92(4)(b) is whether the registered owner (in this case the Removal Opponent) has used the Trade Mark in good faith in Australia during the relevant period in relation to the goods for which it is registered.
It is arguable that the Butterfly Logo contains additions and/or alterations that substantially affect the identity of the Trade Mark. For that reason I will put consideration of the Butterfly Logo aside for the time being, and consider rather the use of the words DREAMZ LINGERIE in plain typescript.
The Removal Applicant characterises the use of DREAMZ LINGERIE in plain typescript as use of a business name to identify a business, which does not constitute use as a trade mark.[9] It also asserts that use in plain typescript cannot properly be regarded as use of the Trade Mark because such use does not possess the following submitted ‘prominent design features’ of the registered Trade Mark:
· depiction in the colours pink and purple;
· a shaded dark-to-light gradient running from the top of the trade mark to the bottom of the trade mark;
· an upwards slant from left to right;
· background shading to make the letters appear three-dimensional;
· ‘block-lettered’ sans-serif typescript;
· a condensed formatting with minimal spacing between each letter;
· the Trade Mark is in ‘sentence case’, that is, the first letter is capitalised;
· the Trade Mark is in italics; and
· the Trade Mark contains only the word DREAMZ.
[9] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [197].
The Removal Applicant also asserts that the typeface design of the Trade Mark conveys very different consumer associations and emotive responses to those conveyed by plain typescript, with reference to the previously referred to journal article which found:
[T]he results of [two experiments conducted by the authors] provide evidence that typefaces convey meanings that have the potential to significantly influence important marketing constructs. These associations influence how consumers perceive brands, as well as, what they remember about brands….
Typefaces do more than communicate verbal material, they convey unique associations independent of the words they represent.
It is true that the evidence contains some instances of us of the words ‘DREAMZ LINGERIE’ which only serve to identify a business and do not amount to use as a trade mark, that is, as a badge of origin for goods.[10] Specifically, those instances include the listing of the business’s name and address upon invoices which also contain the Butterfly Logo, and the use of those words to name the business to which certain photography services were to be provided (in a quote for photography services that the Removal Applicant sought).
[10] Per Coca-Cola Co v All Fect Distributors [1999] FCA 1721 and embodied in s 17 of the Act.
Nonetheless, the examples listed in the table above (aside from the examples of the Butterfly Logo) do constitute use as a trade mark. It is established that a trade mark may perform more than one function (but it must still operate as a trade mark),[11] and it is what a person looking at a mark would see and take from it that is the basis of whether the use is as a trade mark.[12] A person looking at the examples above would identify the source of the lingerie referred to in those exhibits as DREAMZ LINGERIE. Whilst in those contexts DREAMZ LINGERIE may also identify the Removal Opponent’s business, its primary function as a badge of origin for the lingerie being promoted and sold.
[11] For example Aldi Stores Ltd Partnership v Frito Lay Trading Company GmbH [2001] FCA 1874.
[12] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390.
Having determined that the above use of DREAMZ LINGERIE in plain typescript constitutes use as a trade mark, I turn to the question of whether such use contains additions or alterations substantially affecting the identity of the Trade Mark as registered.
I do not agree that the features identified by the Removal Applicant are prominent design elements. In my opinion, they are simple conventional embellishments which add very little to the identity of the Trade Mark. The word, although depicted in colour, is not limited by the terms of its registration to any colour such that purple and pink form part of the Trade Mark’s identity. The orientation of the word in an upward slanting trajectory is the sort of ‘common form of display’ referred to in Fanfold Ltd’s Appn,[13] and it likewise does not substantially contribute to the Trade Mark’s identity. The remaining features identified by the Removal Applicant are slight, and variations in them are likely to go unnoticed by the consumer.
[13] (1928) 45 RPC 325.
In respect of the addition of the word LINGERIE, the presence of descriptive words in trade marks cannot be utterly disregarded; however their impact upon the identity of trade marks will tend to lessen the greater their degree of descriptiveness.[14] Here, the primary significance of the word LINGERIE is to indicate the goods in which the Removal Opponent trades. As such it carries little weight in the ‘badge of origin’ function and the identity of the Trade Mark lies in the word DREAMZ, which is distinctive in relation to the Removal Opponent’s goods.
[14] See for example QH Tours Ltd v Mark Travel Corp [1999] ATMO 31, or in the context of substantial identity between marks PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.
In respect of the asserted difference between the consumer associations and emotive responses conveyed by the plain typescript as opposed to the typescript of the Trade Mark as registered, it is not obvious to me what those associations and responses are nor how they differ (nor are they articulated by the Removal Applicant). I am therefore unable to give that submission significant weight.
I am therefore satisfied that use of DREAMZ LINGERIE in plain typescript is use of the Trade Mark with alterations and additions that do not affect its identity. The Opponent has provided evidence to demonstrate that it has used DREAMZ LINGERIE as a trade mark in good faith in Australia during the relevant period. Accordingly the ground under s 92(4)(b) is successfully rebutted.
Section 92(4)(a)
As stated previously the grounds under ss 92(4)(a) and (b) tend to merge given the registered owner’s intentions may come to be reflected in any actual use made of a trade mark.
The Removal Applicant asserts that the Removal Opponent has failed to adduce any evidence of use of the Trade Mark as registered, and that in neither of the Removal Opponent’s declarations did it make a positive statement of intention to use the Trade Mark as filed. On this basis it is submitted that the Removal Opponent had no intention to use the Trade Mark on the day it filed the application for its registration.
Given my finding that the use of the words DREAMZ LINGERIE in plain typescript is use of the Trade Mark with additions or alterations not substantially affecting its identity, I am satisfied that the Removal Opponent had the requisite intention to use the Trade Mark in good faith as at the date it filed the application to register it (albeit that such a finding is not strictly necessary).
Accordingly the ground under s 92(4)(a) is also successfully rebutted.
Decision
With respect to both the s 92(4)(a) and (b) grounds, I am satisfied that the Removal Opponent has met the onus upon it, articulated in s 100, and accordingly neither ground is established.
As such, the application for removal fails and the Trade Mark is to remain on the Register in respect of all of the goods for which it is registered.
Costs
Costs usually follow the event, and as there is no apparent reason to depart from the general principle I award costs against the Removal Applicant per Schedule 8 of the Trade Mark Regulations 1995.
Nicole Worth
Hearing Officer
Trade Marks Hearings
28 January 2016
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