Linton Park (Vic) Pty Ltd v Helen Richardson

[2000] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by Linton Park (Vic) Pty Ltd to the application to remove from the Register trade mark registration number 612077(32) - YARRA VALLEY SPRING WATER and device - by Helen Richardson.

Background
Trade mark number 612077 has been registered as of 22 September 1993.  The application to register the mark was filed by Yarra Valley Properties Pty Ltd.  On 14 September 1995, an assignment was recorded at the Trade Marks Office to transfer the mark to Linton Park (Vic) Pty Ltd, the present registered owner of the mark.  The mark is as shown here:

 

It is registered in class 32, in respect of:

Spring water, mineral and aerated waters and other non-alcoholic drinks.

On 6 July 1999, Helen Richardson filed an application for removal of the trade mark from the Register for all the goods for which the mark is registered.  The application was advertised for opposition in the Australian Official Journal of Trade Marks of 29 July 1999.   Ms Richardson, henceforth in this decision referred to as the "removal applicant", claims to be a person aggrieved under section 92 of the Act.  The application for removal is based on paragraphs (a) and (b) of subsection 92(4) of the Act.  In terms of regulation 9.1, a statutory declaration, with exhibits, made by Stephen Newman, a solicitor of the firm acting for the removal applicant, accompanied the application.  The declarant states that the removal applicant had traded in relation to the sale of spring water under the name YARRA VALLEY SPRING WATER.  From the inquiries made by the removal applicant, or on her behalf, she had ascertained that the mark had not been used by the registered owner at any time since its registration.  The removal applicant had approached the registered owner regarding the non-use of the mark and had requested a transfer of the mark to her.  She had received a reply to the effect that the mark had been used in the last three years and that it was intended to continue using it in the future. Copies of correspondence exchanged by the parties concerning this matter are exhibited to the declaration.

On 26 October 1999, the registered owner of the mark (the opponent) filed a notice of opposition to the removal application.  The grounds of opposition rebut the removal applicant's allegations based on s.92(4) of the Act.  Five grounds listed in the notice of opposition relate to opposing registration of a trade mark and therefore are not relevant to the removal action.  The last ground concerns the Registrar's discretion under the provisions of s.100(1).  The evidence in support was served and filed by 26 January 2000.  The removal applicant did not file any evidence in answer, but has requested that a decision as to the removal of the mark be made, based on the information held on file.  As the parties did not avail themselves of an opportunity to be heard on the matter, I have been directed to issue a decision on the written record.     

The Evidence
The evidence in support consists of an affidavit by Raymond Leung, the managing director of the opponent company.  Mr Leung states that the opponent has been trading in spring water under two brand names LINTON PARK NATURAL SPRING WATER  and YARRA VALLEY SPRING WATER.  He reiterates the rebuttal of the              removal applicant's allegations based on s.92(4) of the Act.  According to Mr Leung, on the same day as the subject mark was assigned to the opponent, it also acquired the business name "Yarra Valley Spring Water".  Two annexures confirm the opponent's rights in that business name.  The declarant exhibits samples of the mark in use, and, to demonstrate its continuous use, he annexes a large number of copies of documents, which include invoices, facsimiles, a bill of lading, a letter and a purchase order.

Discussion
The provisions concerning an application for removal of a mark from the Register on the grounds of non-use of the mark are set out in s.92.  These provisions, as they relate to the present application, read as follows:

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2) The application:

(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3) …

(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:  For file see section 6.

In order to initiate an action for removal of a trade mark from the Register in terms of s.92, the applicant applying for the removal must be 'a person aggrieved'.  There is no indication in the notice of opposition that the opponent is challenging the removal applicant's standing as being such a person. 

In proceedings involving opposition to removal of a trade mark, the onus rests on the opponent to rebut the removal applicant's allegations as to non-use of the mark, as prescribed in s.100 of the Act.

The subject mark, which had been filed by the opponent's predecessor in business, was accepted for registration under Trade Marks Act 1955.  The terms of that Act required that an application for registration of a mark was to be supported by a statement under reg.8 as to the intention to use the mark, or its actual use in Australia, by the applicant, in respect of the goods or services specified in the application.  I am satisfied that this requirement was met by the applicant at the time of making the application.  There is no material before me to doubt either the intention to use the mark in good faith in Australia, by the applicant for registration, or that, if there was use of the mark in Australia by the registered owner - the opponent - one month before the date of the non-use application, that use was not in good faith. 

Turning now to considerations of the demonstrated use of the mark by the registered proprietor in terms of s.92(4) of the Act, I make the following comments.  The documents supporting sales of the product under the subject mark cover the period from 19 February 1997 to 24 November 1999.  For the purpose of s.92(4)(b), the critical period is from 6 June 1996 to 6 June 1999.  The evidence relating to the relevant sales appears to indicate that a company in Victoria, A & L Export Pty Ltd, acted as an agent in Australia in purchasing the goods under the mark for overseas consignments: two invoices dated 19 February 1997 and 6 April 1998, as well as the bill of lading of 23 February 1997, all clearly show that the goods bearing the mark were bought by the Australian company for shipping to a company in Singapore, as also do the instructions on the purchase order from the agent, accompanied by a cheque, of 19 May 1999.  In the absence of any other evidence to support use of the mark in Australia by the opponent before 6 June 1999, I must conclude that no such use occurred.  The documentary material as to sales in Australia of spring water under the mark, which is included in the evidence, does not correspond to the relevant time period in terms of s.92(4).  According to the five copies of invoices, the product was sold to two companies in Australia during the months of October and November 1999. 
From the opponent's evidence, I can draw only one conclusion - that the opponent has not successfully met its onus to rebut the removal applicant's allegations concerning use of its mark in Australia during the specified period.    

In its notice of opposition, the opponent has requested that the Registrar's discretion be exercised by refusing the removal application.  The Registrar's discretionary powers in respect of opposed applications for removal are set out in s.101.  In terms of s.101(3), the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register, even if the grounds on which the removal application is made have been established.  In this regard, in an unpublished decision, Beltrami SpA v Figgins Holdings Limited, issued on 1 July 1998, the Deputy Registrar stated:

This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist, is on the opponent to the removal application.

In the present case, having considered the opponent's evidence, I cannot find a sufficient reason for allowing the mark to remain on the Register - Carl Zeiss Pty Ltd (1969) 122 CLR 1. The opponent has not referred to any circumstances that might have prevented use of the trade mark in Australia during the critical period, nor have any other facts or circumstances been established as to why the mark should be retained on the Register. Thus, there seems to be no justification for the exercise of discretion in the opponent's favour.

Conclusion
The opponent has not discharged its onus, in terms of s.100 of the Act, in rebutting the removal applicant's allegations under paras. (a) and (b) of subsection 92(4).  Hence, the opposition to the application for removal has failed.  As a result, I have no other choice than to direct that the trade mark of registration 612077 be removed from the Register for all the goods in respect of which it is registered. 

Vija Zars
Hearing Officer

8 August 2000