Limited Edition Surf Hardware Pty Ltd v TackX International Pty Ltd
[2023] ATMO 150
•4 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Limited Edition Surf Hardware Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by TackX International Pty Ltd to remove registered trade mark 923592 (class 25) - Nomad (composite) - in the names of Shane Clifford Britten and Mark Damien Britten and registered trade mark 1192461 (classes 25 and 28) - Nomad - in the name of Limited Edition Surf Hardware Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Mark Britten and Shane Britten Applicant: Kellie Stonier of Griffith Hack |
Decision: | 2023 ATMO 150 Trade Marks Act 1995 (Cth) – applications under section 92 regarding two trade marks – authorised use not established for composite trade mark – use of composite trade mark not established during the relevant period – discretion exercised for composite trade mark for some goods – application partially successful for composite trade mark – partial application successful for word trade mark. |
Background
This matter concerns two applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of two trade marks from the Australian Register of Trade Marks (‘Register’) for non-use. I extract the trade marks (‘Removal Trade Marks’) below:
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
Trade mark number: 923592
Trade mark:
(‘Trade Mark 923592’)
Owners: Mark Britten and Shane Britten
Filing date: 15 August 2002
Goods: Class 25: Surf wear and accessories being caps, beanies and belts
Trade mark number: 1192461
Trade mark: Nomad (‘Trade Mark 1192461’)
Owner:Limited Edition Surf Hardware Pty Ltd (‘Limited Edition’)
Filing date: 10 August 2007
Goods: Class 25: Clothing, footwear, headgear
Class 28: Gymnastics and sporting articles in relation to surfing; none of the above games and playthings being computer based games or other electronic devices
On 2 September 2021 TackX International Pty Ltd (‘Removal Applicant’) filed a pair of removal applications with this office. The first was for Trade Mark 923592 (‘923592 Removal Application’), seeking removal in relation to all goods. The second was for Trade Mark 1192461 (‘1192461 Removal Application’) in relation to all goods in class 25 (for clarity, this application does not seek removal in relation to any of the goods in class 28).[2] The 1192461 Removal Application was advertised for opposition purposes on 9 September 2021, and the 923592 Removal Application on 14 September 2021. On 28 October 2021, Limited Edition (‘Removal Opponent’) filed a NIO for the 1192461 Removal Application and for the 923592 Removal Application. Statements of Grounds and Particulars (‘SGP’) were filed by the Removal Opponent for both matters on 5 November 2021. The Removal Applicant filed notices of intention to defend both matters on 20 December 2021.
[2] At the hearing and in submissions the Attorney for the Removal Applicant confirmed that it does not press the 1192461 Removal Application in relation to t-shirts, hooded jumpers and caps, though seeks removal for all remaining goods. Removal Opponent’s Submissions, [16]-[17].
On 15 March 2022 the Removal Opponent filed identical Evidence in Support (‘EIS’) for both oppositions, which consists of a declaration of Mark Britten, Director at Limited Edition, dated 14 March 2022 (‘Britten-1’), with Annexures MB-A to MB-H. The Removal Applicant filed its Evidence in Answer (‘EIA’) on 17 June 2022 for both removal applications. For Trade Mark 923592, the EIA consists of a declaration of Kellie Stonier, lawyer and Trade Mark Attorney for the Removal Applicant, dated 17 June 2022 (‘Stonier Declaration’) with Annexures KAS-1 to KAS-04. For Trade Mark 1192461, the EIA consists of a declaration of Damon Olsen, Director at the Removal Applicant, dated 17 June 2022 with Annexures DO-01 to DO-03 (‘Olsen Declaration’). The Removal Opponent filed identical Evidence in Reply (‘EIR’) on 5 August 2022 for both the Removal Trade Marks. The EIR consists of a declaration of Mark Britten dated 3 August 2022 (‘Britten-2’) with Annexures MB-R01 to MB-R20.
Both parties requested to be heard and the Removal Applicant proposed that there be a joint hearing. After taking submissions on the point from the parties, I decided that the oppositions should be heard together. I heard the matters on 6 July 2023 by teleconference. Mark Britten and Shane Britten appeared on behalf of the Removal Opponent. Kelly Stonier and Mitchell Bruce from Griffith Hack appeared on behalf of the Removal Applicant. I heard and have now decided this matter in my capacity as a delegate of the Registrar of Trade Marks (‘Registrar’).
Relevant period and onus
Section 92 relevantly provides:
92 Application for removal of trade mark from Register etc.
…
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
…
(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.
Sufficient time has passed for s 92(4)(b) to be alleged.[3] By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Removal Trade Marks in Australia in the three year period ending on 2 August 2021 (‘Relevant Period’). The Removal Applicant alleges that there has been no use of Trade Mark 923592 in relation to any of its designated goods in the Relevant Period. While the 1192461 Removal Application made the same allegation in relation to all Class 25 goods for that mark, the Removal Applicant has in its submissions said that the mark should remain registered in relation to t-shirts, hooded jumpers and hats (caps).
[3] Section 93(2).
It is the Removal Opponent who must rebut the allegations of non-use.[4] Any findings of fact are based on the civil standard of the balance of probabilities.[5] For each of the Removal Trade Marks, the allegation can be rebutted by establishing that the respective owner or an ‘authorised user’:
- used the particular trade mark ‘as a trade mark’ in Australia during the Relevant Period in relation to the class 25 goods;[6] or
- did not use the trade mark in relation to the class 25 goods because of circumstances that were an obstacle to use of the trade mark during the Relevant Period.[7]
[4] Section 100(1)(c).
[5] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).
[6] Section 100(3)(a).
[7] Section 100(3)(c).
A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[8] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9]
[8] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[9] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
If the requisite use is not established, in accordance with s 101 I may decide to remove the relevant mark, or if satisfied it is reasonable to do so, decide to not the remove it. I explain this discretion in more detail further below.
Evidence
The EIS and the EIR show use by Limited Edition of various different trade marks containing the word ‘nomad’ (‘Nomad Trade Marks’). I list these at Schedule 1 to these reasons with my own short-hand notation for ease of reference. Some use in evidence also shows completely different trade marks such as ‘Funkshen’, ‘Custom’ and ‘Limited Edition’ and I need not further address that specific evidence as it is not relevant to either of these proceedings.
EIS
Britten-1 provides a brief introduction of the Brittens and Limited Edition, noting launch of a business in 2000 for a clothing and headwear label in the action sports market. Mark Britten and Shane Britten are stated as being, ‘owners of [Limited Edition]’. Britten-1 also states Mark Britten and Shane Britten, ‘on behalf of [Limited Edition] own the website domain (‘Nomad Website’) and that, ‘over the last 21 years [Shane Britten] & [Mark Britten] in conjunction with [Limited Edition] have had continuous and concurrent use of the “NOMAD” trademarks in Australia since the year 2000, including the last 3 year period on the registered goods to our extensive client base, while also diversifying our product range into action sports hardware’. Annexures MB-A to MB-H to Britten-1 are put forward as corroboration for these propositions. Annexure MB-A is a certificate of business name registration for ‘Nomad Bodyboarding Australia’ without indication of the owner of this business name. Annexures MB-B, MB-C and MB-D consist of three letters from different retailers which stock ‘Nomad Trademark clothing’, dated after the Relevant Period. Each notes that the retailer had stocked ‘Nomad Trademark clothing’ in ‘the last three years’, without specific indication of goods and the relevant trade marks on (or in relation to) the purchased goods. The letters also do not specify who exactly has been selling clothing to the shops, only that they stock ‘Nomad Trademark clothing’. Annexures MB-E and MB-F consist of a letter from Dendene Pty Ltd (‘SPC’) dated 19 January 2023 and an undated letter from a director of Design Your Caps Pty Ltd (‘DYC’) which are respectively the suppliers of ‘garments’ and ‘headgear’. These state that DYC has supplied Limited Edition with ‘Nomad Trademark headwear concurrently since 2018, including the last 3 years’, and that SPC has supplied Limited Edition with ‘Nomad Trademark garments concurrently since 2009, including the last 3 years.’ Annexure MB-G is three pages containing images of t-shirts, hooded jumpers, singlets and caps bearing trade marks which feature the word ‘nomad’. There is little context for these images. The declaration and the annexure cover sheet both simply assert that the goods pictured were ‘manufactured and sold in stores and online in the last 3 years.’ Perhaps most importantly, Annexure MB-H consists of 4 invoices dated within the Relevant Period by Limited Edition, including for goods labelled as ‘Nomad Original Hooded Jumper’, ‘Nomad Original T-shirt’ and ‘Nomad hat’.[10]
[10] Britten-2, Annexure MB-H.
EIA
Trade Mark 1192461
The Olsen Declaration is brief and states that the continued registration of the Removal Trade Marks would prejudice the Removal Applicant in relation to its own trade marks for apparel goods. It declares the adoption of the trade mark ‘nomad’ was because it is a palindrome of Mr Olsen’s first name. It states that the Removal Applicant was not aware of any trade mark of the Removal Opponent at the time of adoption. It makes various assertions about the respective markets for the parties’ goods. The results of a search conducted of the Australian Trade Marks Register are also provided as annexures, which I need not summarise.
Trade Mark 923592
The Stonier Declaration provides background for the proceedings and its annexures. It describes searches of the Nomad Website and trade marks on the Register in the name of the Brittens and/or Limited Edition. Annexures include two screen captures of definitions of the word ‘surfwear’ from unnamed websites and extracts of results of the Register searches.
EIR
Britten-2 provides annexures which it states as being in response to statements in the Stonier Declaration and Olsen Declaration. In summary the evidence shows new examples of repeated use of the following trade marks in relation to the following goods: Trade Mark 923592 in relation to t-shirts and hooded jumpers; Nomad Bodyboards Decades in relation to t-shirts; Nomad Bodyboards in relation to singlets, t-shirts and hooded jumpers; Nomad Skull in relation to t-shirts; Fun Park in relation to t-shirts and hooded jumpers; and Nomad Represent in relation to caps, t-shirts and hooded jumpers. Examples of sales of various goods, including in invoices and offerings, by online stores and by the Nomad Website, are also provided. There are also examples of interactions with suppliers, such as purchase orders by Limited Edition for stock. Much of this material is undated or dated outside of the Relevant Period. Some of the EIR does not clearly display the relevant trade marks, such as invoices from the Nomad Website with small images of products sold. Relevant to some of the discussion below, the EIR shows use of Nomad Trade Marks by Limited Edition, but not by Mark or Shane Britten.
Preliminary issue
On 20 September 2022 the Removal Applicant wrote to this office expressing concerns that the EIR was not properly in reply, raising new examples of alleged trade mark use that ought to have been included in EIS. I agree that some of EIR is not properly in reply as it provides new examples of use of trade marks both outside and inside the Relevant Period. Regardless, I may consider the EIR under reg 21.15 and 21.19. In deciding whether I should give weight to material not properly in reply, the nature and significance of the material is relevant.[11] However, if the material does not assist, then I need not give it weight. I have addressed this issue throughout these reasons.
Consideration
[11] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [50] (Hearing Officer Wilson).
Trade Mark 923592
It is useful to note at the outset that the evidence relevantly shows only t-shirts, hooded jumpers, singlets and caps. Therefore, other than those specific forms of clothing and headwear, no use of Trade Mark 923592 is shown in the evidence.
Was there use by Mark Britten and Shane Britten or an authorised user?
If the use of a trade mark has been by a person other than the registered owner(s), the Removal Opponent bears the onus to show that such use was authorised.[12] As all the use of any trade mark shown by the evidence is by Limited Edition, the Removal Opponent must show that use was authorised by Mark Britten and Shane Britten for any of the evidence to be relevant to a rebuttal under s 100(3)(a). For use to be authorised, it must be shown that the registered owners exercised control over the other entity’s use of the trade mark. This is a question of fact and degree.[13] Control by Mark Britten and Shane Britten for these purposes can be the exercise of quality control, financial control or some other relevant form of control over use of Trade Mark 923592 by Limited Edition.[14] Where the evidence shows a ‘unity of purpose’ and common directorship, this can, in certain circumstances, be sufficient to establish control.[15]
[12] See sections 100(3), 7(3) and 8.
[13] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [98] (Besanko J) (‘Lodestar’).
[14] Lodestar ibid [3], [184]-[185] (Besanko J).
[15] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
A corporation is a separate legal person to its owners and directors. As such Limited Edition is a separate legal entity to Mark Britten and Shane Britten. Whilst Britten-1 states that there has been use by Mark Britten and Shane Britten ‘in conjunction’ with Limited Edition, there is no corresponding explanation of the legal relationship between the Brittens on the one hand and Limited Edition on the other, other than that the former ‘own’ the latter. Whilst an email from DYC suggests some level of quality control by Mark Britten, this extends only to interactions with a supplier of headgear to Limited Edition. The nature of the Brittens’ ownership of Limited Edition and what it specifically entails, including in terms of control, is not clear. Whilst Britten-1 also states that Mark Britten is a director of Limited Edition, whether there are other directors of that company is not otherwise clear on the evidence. I cannot infer a ‘unity of purpose’ between the Brittens and Limited Edition without further details. Therefore, I see no evidence of direct use of Trade Mark 923592 by Mark and/or Shane Britten in the Relevant Period, and I am unable to conclude that Mark Britten and Shane Britten exercised quality, financial or other relevant control over the use that has been shown by Limited Edition. Regardless, I have further examined the evidence below.
Caps, hats, beanies, belts and singlets
Other than for hooded jumpers and t-shirts, the evidence shows use of Nomad Represent in relation to caps and use of Nomad Bodyboards in relation to singlets, in the Relevant Period. An invoice from 17 July 2020 also mentions sales of a ‘nomad hat’. However, it is not clear whether ‘nomad hat’ refers to Trade Mark 923592 and evidence shows only use of Nomad Represent in relation to caps.
Section 7(1) provides:
[i]f the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
For the evidence showing use of Nomad Bodyboards and Nomad Represent to qualify as showing use of Trade Mark 923592 I must determine whether the use of Nomad Bodyboards and/or Nomad Represent each amount to use without alterations or addition which substantially affect the identify of Trade Mark 923592.[16] I must compare each of the trade marks side by side, note the similarities and differences and assess the importance of these having regard to the essential features of the trade marks.[17] In order to find that additions or alterations do not substantially affect the identity of a trade mark, ‘it is necessary to find that a total impression of similarity emerges from a comparison between the two marks’.[18]
[16] Section 7(1).
[17] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12](Windeyer J) (‘Shell’).
[18] Optical 88 Limited v Optical 88 Pty Limited (No 2) (Includes Corrigendum dated 26 May 2011) [2010] FCA 1380 (Yates J) (‘Optical 88’), citing Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [61] (Gummow J) and Shell (n 17) [12](Windeyer J) (‘Shell’).
I reproduce the trade marks below:
Trade Mark 923592: Nomad Represent:
Nomad Bodyboards:
On a side-by-side comparison, I do not consider use of Nomad Bodyboards or Nomad Represent to be use of Trade Mark 923592 without alteration or additions which substantially affect the identity of that trade mark. The additional three squares, stacked above the word ‘nomad’ and containing a bodyboarder at three different poses in Trade Mark 923592, are not present in Nomad Bodyboards and Nomad Represent. Nomad Represent and Nomad Bodyboards also have additional elements, including a circle containing a stylised letter ‘n’. These differences are important and amount to additions or alterations which substantially affect the identity of Trade Mark 923592, such that a total impression of similarity does not emerge. The use of Trade Mark 923592 in relation to singlets or caps is not established.
For completeness I also note that none of the evidence shows use of any trade mark in the Relevant Period in relation to ‘accessories being … beanies and belts’.
T-shirts and hooded jumpers
Annexure MB-G to Britten-1 shows Trade Mark 923592 applied to some t-shirts and hooded jumpers. However, as mentioned above this is accompanied only with a mere assertion that sales of the pictured goods occurred in the Relevant Period. Therefore, by itself this evidence does not assist. However, Annexure MB-H to Britten-1 contains invoices which appear to mention Trade Mark 923592, in relation to hooded jumpers and t-shirts. Other goods listed in the invoices either relate to completely different trade marks (such as Limited Edition or Funkshen), or relate to completely different or unclear goods (such as wax or board leashes). The invoices do however list, ‘nomad original hooded jumper’ and ‘nomad original t-shirt’, and are dated respectively at 19 October 2020 and 10 December 2020. Again, it is not clear from this document alone to which of the Nomad Trade Marks in the Removal Opponent’s evidence the invoices at Annexure MB-H relate.
The question then is whether this reference to ‘nomad original’, as appearing in the invoices, refers to Trade Mark 923592. Annexure MB-17 to Britten-2, a catalogue which appears to show a date but has been presented to me in a format so small that it is not legible, shows a t-shirt with the description, ‘NOMAD “ORIGINAL” T-SHIRT’ bearing Trade Mark 923592.[19] Another extract of the Nomad Website, again undated, shows a hooded jumper with Trade Mark 923592 with the description, ‘Nomad Original Hooded Jumper’[20] and a t-shirt with Trade Mark 923592 with the description, ‘Nomad Original T-shirt’.[21] Otherwise, the various screen captures of a website titled ‘Bodyboard King’ and dated in Relevant Period reflect the labelling I ascribe in Schedule 1 to these reasons for: ‘Nomad Bodyboards’, ‘Nomad Bodyboards Decades’ and ‘Nomad Represent’. The references in the dated evidence are generally consistent with the undated material in Annexure MB-R15. Overall, I consider on the balance of probabilities that Annexure MB-R15 to Britten-2 represents the likely understanding of ‘nomad original’ as at the date of the invoices in Britten-1 as referring to goods bearing Trade Mark 923592. The EIR, to the extent it corroborates the EIS, is crucial to the Removal Opponent. Therefore, I give that aspect of the EIR weight, and find that Limited Edition has used Trade Mark 923592 for t-shirts and hooded jumpers in the Relevant Period. As stated above, this does not assist in rebutting the allegation of non-use as the evidence does not establish that Limited Edition is an authorised user. However, it may be relevant to the exercise of the Registrar’s discretion (discussed further below).
Does ‘surf wear’ include hooded jumpers and t-shirts?
[19] Britten-2, Annexure MB-R17, 82.
[20] Britten-2, Annexure MB-R15, 70.
[21] Britten-2, Annexure MB-R15, 69.
I must next consider whether ‘surf wear’, being the specific qualifying language of designated goods in Trade Mark 923592, includes t-shirts and hooded jumpers. The Removal Opponent submits that I should interpret ‘surf wear’ as including clothing worn even out of the surf. Annexure MB-R07 to Britten-2 is an undated Wikipedia article defining ‘surfwear’ as, ‘a popular style of casual clothing, inspired by surf culture’. The article references traders from the 1970s adopting colourful designs for surf wear and displays an image of a person surfing and wearing a rash shirt and board shorts, described as ‘wearing surfwear’. The Removal Applicant submits that an ordinary construction of the words would refer only to clothing to be worn whilst surfing in the ocean and states that it is nether reasonable or in the public interest for me to adopt a definition otherwise. It says such meaning offers certainty, noting the role of the Register to enable the public to search for extant rights, asserting also that a statement of goods should be strictly construed.[22] The Removal Applicant provides two undated definitions of ‘surfwear’ both being, ‘clothing to be worn while surfing’. It submits a strict interpretation of the words ‘surf wear’ is appropriate.[23]
[22] Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [40] and [44] (Wilcox J).
[23] Ibid.
In the construction of a statement of goods, one factor to be considered is how the words are understood commercially. An ordinary and commercial way to understand the term ‘surf wear’ is that t-shirts are included. Even on an interpretation confined to items worn in the surf, t-shirts would qualify as such. Other interested traders, and consumers, would also be likely to understand ‘surf wear’ as including clothing not necessarily worn in the surf, though likely worn by surfers, perhaps immediately after surfing. They would also consider ‘surf wear’ as including clothing marketed at persons who frequent the surf or beach, or otherwise clothing associated in style with surfers or surfing. Importantly, it is recognised that clothing shops for what is called ‘surf wear’, and makers, sell under the same trade mark, for example, rash vests to be worn in the surf and hooded jumpers to be worn even outside the surf.[24] This interpretation reflects a fair notional use of Trade Mark 923592 which would be unsurprising to other traders or consumers. An ordinary and commercial reading of ‘surf wear’ is that the words include items such as hooded jumpers and t-shirts.[25]
[24] Coathurst Pty Ltd v Dune Holdings Limited [2015] ATMO 115 (Hearing Officer Thompson) (‘Coathurst’) [27], regarding a s 92 application for removal for class 25 ‘clothing surf wear, footwear head gear’, appears to confirm this. The delegate considered use to be shown for t-shirts and caps. Large surf focused clothing retailers were noted as selling surfing goods as well as a range of casual fashion clothing.
[25] Coathurst ibid offers support for these findings.
Accordingly, I am satisfied that there has been use of Trade Mark 923592 in relation to surf wear being hooded jumpers and t-shirts in the Relevant Period by Limited Edition, and this may be a relevant factor in exercising the Registrar’s discretion.
Trade Mark 1192461
Excluding the goods that the Removal Applicant does not press for the 1192461 Removal Application, the evidence shows use of trade marks containing the word ‘nomad’ only in relation to footwear and singlets.
Footwear and headgear
Whilst extracts in the EIR of the Nomad Website and from eBay show use of Trade Mark 1192461 in relation to ‘fins’, the material is undated and not otherwise corroborated so it does not assist. There is otherwise no evidence of use of a trade mark in relation to footwear in the Relevant Period. I confirm there is no evidence of use of any trade mark in the Relevant Period in relation to the headgear which is pressed by the Removal Applicant (i.e., headgear other than caps). Accordingly, the Removal Opponent has not rebutted the allegation in relation to footwear and headgear (other than caps) for Trade Mark 1192461.
Clothing (singlets)
Some evidence shows use of Nomad Bodyboards in relation to singlets in the Relevant Period.[26] Comparing Trade Mark 1192461 with Nomad Bodyboards side by side, noting the additional material and differences in each, I do not consider a total impression of resemblance to emerge. Whilst I acknowledge the word ‘nomad’ is one shared element, the additional material or differences appears important and substantial. The stylisation combined with the line element underscoring the word ‘nomad’ in Nomad Bodyboards, and centrally placed disc with a stylised letter ‘n’, are additions which substantially affect the identity of Trade Mark 1192461. Therefore, this evidence does not assist. Accordingly, the allegation of non-use of Trade Mark 1192461 in relation to singlets has not been rebutted.
[26] Britten-2 at Annexure MB-R16 and in Britten-1 at Annexure MB-G
Conclusions about use of the Removal Trade Marks
The Removal Opponent asserts that the Covid-19 pandemic impacted the use of the Removal Trade Marks. These were bare assertions without further details or evidence showing any specific obstacle that prevented use of the Removal Trade Marks in relation to class 25 goods during the Relevant Period. Standing counter to this are the Tax Invoices in Annexure MB-H to Britten-1, which show at least some degree of trading by Limited Edition during the second half of 2020, which was during the pandemic and associated widespread lockdowns.
The s 92(4)(b) ground for removal, to the extent the Removal Applicant presses it for Trade Mark 1192461, has not been rebutted by the Removal Opponent. The ground for removal of Trade Mark 923592 has also not been rebutted. However, I accept Limited Edition has used Trade Mark 923592 in relation to surf wear being hooded jumpers and t-shirts.
Registrar’s discretion
Section 101(3) provides me with a broad discretion to not remove a trade mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. The Removal Opponent bears ‘the burden of persuasion’[27] for this. However, it need not establish ‘exceptional circumstances’.[28] Various factors are to be considered in applying s 101.
[27] Optical 88 (n 18) [273] (Yates J).
[28] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Full Court of Federal Court observed of s 101(3) and the relevant factors:
[t]he following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[29]
[29] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).
The Removal Opponent presents little direct evidence or submissions regarding these factors. At the hearing the Removal Opponent asserted that use was impeded by the Covid-19 pandemic. However, there are no specific details or evidence of this. So, I am not able to weigh and accept this as a compelling reason to exercise the discretion. The Removal Opponent notes that the 1192461 Removal Application as not initially specifying particular goods for removal and that it requested all goods be removed. It takes issue with the Removal Applicant no longer pressing the removal application for hooded jumpers, t-shirts and caps. I note that the Act does permit fine distinctions to be drawn.[30] It further submits that a lapsed earlier application filed on 18 September 2007 by the Removal Applicant’s predecessor reflects awareness of the Removal Trade Marks at the time the Removal Applicant adopted its trade mark. However, that adoption may have been before the application so that 2007 filing does not necessarily indicate impropriety. The Removal Opponent also notes the Removal Trade Marks as major parts of the protection for the business. No information about the scale of operations is provided, though I note that general statements recognising trade by Limited Edition are made by the letters from five traders. These statements reflect awareness of the Removal Opponent’s business. However, they are vague about the specific trade marks used, goods purchased and any volume of trade.
[30] McHatton v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481 (Drummond J).
Regardless, this is not a case of unused or abandoned trade marks cluttering the Register. Evidence shows use of Trade Mark 923592 by Limited Edition, a related entity that Britten-1 declares working in ‘conjunction’ with Mark Britten and Shane Britten, who also own the Nomad Website ‘on behalf of’ Limited Edition. My sole uncertainty concerning use of Trade Mark 923592 for surf wear being hooded jumpers and t-shirts in the Relevant Period concerns specific legal requirements of authorised use. There is use of trade marks containing the word ‘nomad’ across over 20 years in relation to hooded jumpers and t-shirts. It is clear enough that this has involved Mark Britten and Shane Britten. Indeed, the Brittens appeared at the joint hearing for both oppositions on behalf of Limited Edition. I am satisfied that some commercial damage would be incurred to the Removal Opponent by removal of Trade Mark 923592 for hooded jumpers and t-shirts. Additionally, I note that there is some precedent for the discretion to be exercised where authorised use has presented similar issues.[31]
[31] STI Technologies (Holdings) Unit Trust v Google Inc [2018] ATMO 54 (Hearing Officer K Brown); Darley Stud Management Company Limited v Kevin Francis Darley [2018] ATMO 55 (Hearing Officer Smith).
I note that there is otherwise no evidence of use, let alone any intention to use, any of the Removal Trade Marks on goods other than those appearing in the evidence. Balancing the relevant considerations and noting the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove Trade Mark 1192461 for any of the pressed goods. However, in the circumstances, I am satisfied that it is reasonable to exercise the discretion in relation to Trade Mark 923592 for specifically surf wear being hooded jumpers and t-shirts.
Decision
I direct one month from the date of this decision that the following amendments be made to the Removal Trade Marks (additions in bold and deletions in strikethrough):
Trade Mark 923592:
oClass 25: Surf wear being hooded jumpers and t-shirts
and accessories being caps, beanies and belts.Trade Mark 1192461:
oClass 25: clothing being hooded jumpers and t-shirts,
footwear,headgear being capsoClass 28: Gymnastics and sporting articles in relation to surfing; none of the above games and playthings being computer based games or other electronic devices.
If the Registrar is served with a notice of appeal within the relevant timeframe, the Removal Trade Marks shall be treated in accordance with the decision of the court.
Costs
The Removal Applicant has been mostly successful in these proceedings. While costs ordinarily follow the event, I also note that the EIR variously contains material which should have been filed as EIS. I award costs against the Removal Opponent under s 221 of the Act in the same manner as in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[32]
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 October 2023
[32] [2001] ATMO 78 (Hearing Officer Williams).
Schedule 1
| Nomad Trade Mark | Removal Trade Marks |
‘Nomad Bodyboards Decades’: | Trade Mark 1192461: Nomad |
‘20 Years Logo’: | Trade Mark 923592: |
‘Nomad Represent’: | |
‘Fun Park’: | |
‘Nomad Bodyboards’: | |
‘Nomad Skull’: | |
‘N-Logo’: | |
‘Nomad Wave’: | |
‘Nomad Fade’: |
2
15
4