Lodestar Anstalt v Austin, Nichols & Co Inc
[2009] ATMO 38
•13 May 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Oppositions by Lodestar Anstalt to applications under section 92 of the Act by Austin, Nichols & Co Inc to remove trade mark number 839740 - WILD GEESE - in the name of Lodestar Anstalt
Delegate: Terrence Williams Representation: Opponent: Ben Fitzpatrick of counsel, Joanne Dunn, trade mark attorney, of Pizzeys attorneys
Applicant: Michael Hall of counsel, Nicholas Smith, solicitor, of Mallesons Stephen JaquesDecision: S 92 removal application. Standing, relevance of documents produced under s 202, relevance of material supporting removal application, exercise of discretion, trade mark to be partially removed. Background
Trade mark registration 839740 is in the name of Lodestar Anstalt (“Lodestar”). The trade mark is the words WILD GEESE. It is registered in classes 32 and 33 for goods listed as:
Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33: Alcoholic beverages (except beers)
Section 92(4)(b) of the Trade Marks Act 1995 (“the Act”) relevantly allows for making of a removal application seeking the removal, from the register, of a trade mark that has not been used within a period of three years ending one month before the date on which the removal application was filed. The relevant ground for removal reads:
(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.
Two such removal applications have been filed in respect of the registration in question.
First removal application
This was filed by Austin, Nichols and Co, Inc (“Austin”) on 27 June 2005. It seeks removal, in terms of s 92(4)(b), of the trade mark for all of the goods for which it is registered.
Second removal application.
This was filed by Wild Geese Wines Pty Ltd (“Geese”), a South Australian company, on 6 September 2005. However, it proceeds now in the name of Austin, reliant on the terms of s 92(5), which reads:
(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.
The second removal application sought removal in terms of s 92(4)(a) as well as (b). However, for reasons which are not relevant, Mr Hall formally abandoned the 92(4)(a) ground and only the subsequent provision, which I have set out, was pursued at the hearing. Also, no attack is made on the registration as it relates to class 32. The second removal application seeks removal in respect of “class 33 alcoholic beverages (except beers)”.
Both removal applications have been opposed by Lodestar, triggering the opposition provisions of Part 9 of the Act, and Parts 5 and 9 of the regulations. Ultimately, I was assigned to hear and decide the matters under delegation from the Registrar of Trade Marks. At that hearing, Lodestar was represented by Ben Fitzpatrick of counsel, accompanied by Joanne Dunn, trade mark attorney, of the instructing attorney firm, Pizzeys, and by Andre Levy, a marketing consultant to, ultimately, Lodestar. Austin was represented by Michael Hall of counsel accompanied by Nicholas Smith, solicitor, of the instructing solicitor firm, Mallesons Stephen Jaques.
Relevance of documents produced under s 202
It will not be necessary to fully list the evidence filed under the provisions of parts 5 and 9 of the regulations, although I will come to the relevant parts at a later point.
Beyond this, however, one unusual technicality arises. At the request of Lodestar a Deputy Registrar of Trade Marks issued a notice under s 202. This notice required both Austin and Geese to produce documents (“the s 202 documents”) relevant to the assignment and licencing of trade marks applications 1066646 and 1066650. Those applications themselves are relevant to this matter. The trade mark applications are for registration of trade marks as follows.
Application no
Trade Mark
Goods
1066646
WILD GEESE WINES
Wine
1066650
WILD GEESE
Wine
Those applications for registration were filed by Geese on 26 July 2005 and assigned to Austin in 2007. The s 202 documents show that the trade marks and the relevant applications for registration have been assigned to Austin and licenced back, in perpetuity, to Geese, for use by Geese in relation to Australian wine only.
At the hearing, Mr Hall relied on certain aspects of the s 202 documents. Mr Fitzpatrick disputed his entitlement to do this, saying that the material was not formally served as evidence. I gave my decision to the contrary, allowing Mr Hall to proceed. The s 202 documents were produced to the registrar at the request of Lodestar, as part of the proceedings. The s 202 documents were, moreover, copied by the Trade Marks Office to Lodestar for its convenience. To my mind, those documents are within the scope of reg 21.19. This reads:
(1) If:
(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the information.
(2) For the purposes of paragraph (1) (e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
To argue, as Mr Fitzpatrick did, that one or both parties might need to both file and serve yet more copies of parts or all of the same documents would simply add to the complexity of the process for absolutely no gain. Perhaps in future, under other circumstances, it might be necessary for a party to ask the Registrar to issue directions to establish procedure in a case where material produced under s 202 was either voluminous or not well-organised. Neither of those was the case here.
Issues and argument
It is common ground that the trade mark has not been used in Australia. The issues, therefore, are twofold: Firstly, was each removal application properly made by the removal applicant at the time it was filed? Secondly, if so, should the trade mark be allowed to remain on the register for some or all goods, either in terms of s 100(3) or otherwise? I will deal with the matters in that order.
The threshold question - standing
It is common ground that the changes brought about by the Trade Marks Amendment Act 2006 do not affect either removal application. Thus, the standing of the removal applicant as a person aggrieved remains critical to the success of either removal application. Standing must be extant at the time the removal application is filed.
Such issues are not new. In order to assist practitioners in avoiding difficulty, the Trade Marks Office, in a notice in the Official Journal of Trade Marks of 2 February 2006, under the heading “Application Under Section 92 For Removal Of A Trade Mark Registration - Standing Of Removal Applicant”, made the following point:
Decision-makers in the Trade Marks and Designs Hearings and Legislation section have noted that there continues to be some uncertainty about when, and under what conditions, the standing of a removal applicant can be impugned. Pending any change in the Act or Regulations, the following comments apply.
An application under section 92 for removal of a trade mark registration can only be made by a party who is, on the date the removal application is filed, a ‘person aggrieved’ (see subsection 92(1)). The Registrar will, if removal is not opposed, take a removal applicant’s standing as unquestioned. However the decision in Kowa Company Ltd v N V Organon [2005] FCA 1282 is a reminder that the removal applicant’s status is a threshold test in an opposed removal application. Where a notice of opposition does not subsequently challenge standing, the opposition will be decided without further reference to that question.
Where standing is challenged in the notice of opposition, various scenarios may ensue:
If there is evidence in support, even if this does not challenge standing:
The Registrar advises removal applicants to address the issue in the evidence in answer unless it has already been adequately dealt with in the declaration accompanying the removal application and the Trade Marks Office has already sent this to the opponent under reg 9.2. If a removal applicant otherwise fails to fully deal with the issue, the removal application may be dismissed without any consideration of whether or not the allegation of non-use has been rebutted. See Schutz-Werke Gmbh & Co Kg v Forecast & Trading Pty Ltd – (1998) 44 IPR 209. If the removal applicant does not take prompt action to establish its status through its evidence in answer, there is no guarantee that it will be given permission to do so when the removal application is being determined. As of the date of this Official Notice, removal applicants are cautioned of the risks of delay in addressing this issue.
…
What is required to establish standing?
At the hearing, Mr Hall presented a proposition which I found somewhat startling. It was, he said, sufficient proof of standing to show merely that the removal applicant was in the same trade as the registered proprietor. Mr Hall relied on the decision of the Full Court of the Federal Court in Health World Ltd v Shin-Sun Australia Pty Ltd. [2009] FCAFC 14. He noted what Perram J (with whom the remaining judges both explicitly and succinctly agreed) called “the prima facie rule”. This, he said, would establish a prima facie standing for the removal applicant, although one that an opponent might rebut.
Perram J commented, at 32: “The existence of that prima facie rule is well-established”: (followed by a list of the usual well-recognised authorities including Ritz and Kraft[1]). He continued, at 33:
Shin-Sun submitted that analysis of those cases revealed the prima facie rule was a manifestation of the general test and hence had to be tied back to the effect on the applicant in a practical or legal sense. So viewed, where the intention to trade in the same class is obscure or fantastic, the rule does not apply. This may well be true. However, for myself, I think it is more useful to look at that matter as an element tending to rebut the prima facie rule. This, I believe, was the approach taken by the Full Court in Kraft (1996) 65 FCR 104 at 113 where Sackville J (with whom Sheppard and Tamberlin JJ agreed) said:
A trader who has dealt in the same class of goods as the registered proprietor and shows that he or she could use the mark, establishes a prima facie case that he or she is a person aggrieved for the purposes of a removal application. The inference may be rebutted by evidence from the objector, demonstrating that the applicant would not take advantage of the opportunity to use the mark, but in the absence of such evidence the prima facie inference remains.
[1] Perram J referred to Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 195-196 per McLelland J and to Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 113 per Sackville J (Sheppard and Tamberlin JJ agreeing). In what follows, I will refer to that case, an appeal, as Kraft, unless the context indicates that I refer to the decision at first instance.
It is important to note, as Mr Hall did, that there were a total of five matters argued by Health World (see para 31) for the purposes of the appeal, all aimed at showing that, contrary to the decision of the primary judge, Jacobson J, Health World had standing in the first place. The arguments based on the prima facie rule are set out at 32-34, and there is no getting away from the plain words at 33, set out above.
Mr Fitzpatrick attempted to rely on Health World’s “thirdly”, “fourthly” and “finally” bases set out in paragraphs 35, 37 and 38. In addition, Mr Fitzpatrick also noted that, whatever view of the matter I might reach, Health World at the end was found to be lacking in standing. So, he predicted, would it be with Austin. Mr Hall countered that proper resolution of argument about the existence of the prima facie rule, supported by long-standing authority, must lie in the terms set out in paras 32-34.
My own view is that Mr Hall is right in this approach, but my conclusion is somewhat different. Health World raised, on appeal, five arguments, only the second of which involved the prima facie rule described by Perram J in para 33. Health World was unable to rely on the prima facie rule because there was no evidence of its intention to use the trade mark under attack. To rely on the prima facie rule Health World would have needed to show that, in addition to dealing in the same class of goods, it “could” also have used the mark under attack. But, as Mr Hall conceded, the case made under the prima facie rule is a rebuttable one. Ultimately, I believe that I still need to be satisfied that “there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense”[2]. Peram J completely accepted this aspect of Kraft. That aspect of the initial decision by Jacobson J was not, as Mr Fitzpatrick noted, challenged on appeal.
[2] Ritz Hotel v Charles of the Ritz, (1998) 12 IPR 417 at 454, and specifically endorsed by the Full Court of the Federal Court in Kraft, supra, at para 40.
In the appeal decision, paras 35-36 are directed to Health World’s argument that, if it was not aggrieved because it “could”[3] use the attacked mark (but was being prevented from doing so by the registration under attack) then it was aggrieved by what it asserted was the deceptive similarity of the attacked mark to a mark which Health World did intend to use.
[3] “Could”, for these purposes, means simply that “the intention to trade is not obscure or fantastic” – see Health Word, supra, at 33.
Importantly, as Mr Fitzpatrick noted, all of Health World’s arguments failed. The plain ratio of the case is that because Health World used a trade mark INNER HEALTH PLUS this alone did not give it standing as a person aggrieved able to attack the registration of HEALTHPLUS.
What Hill J said at first instance in Kraft General Foods Inc v Gaines Pet Foods Corp (1995) 31 IPR 439 at 442, with my own emphasis added, remains appropriate, even so:
Because matters of standing inevitably involve issues of fact, the cases which have considered whether in particular circumstances an applicant under s 23(1) is a person aggrieved ultimately turn on their particular facts. Care must be taken to resist turning conclusions of fact into principles of law. Thus, for example, if the applicant to expunge a trade mark from the register is a person engaged in the same class of business as the owner of the mark, that person will have little trouble in satisfying the registrar, or on appeal the court, that he or she is a person aggrieved.
Mr Hall noted at the hearing that this is a passage from the primary judgment, not the appeal. This is true, and Perram J, in the Health World appeal, supra, quotes from the Kraft appeal when he puts the matter in terms of prima-facie standing being able to be rebutted. It is true that in none of the relevant court precedents to which Mr Hall referred and in which the removal applicant fails are the facts directly comparable to this one[4]. None the less, the authorities to which Perram J refers do indeed support the existence of the prima facie rule.
[4] Thus, in Kraft, forming one of the elements on appeal, there was a lack of credible evidence that the removal applicant, unlike Austin, was in the same trade as the opponent.
Consequences for present matter
Ultimately, both of the removal applications hinge on a possible rebuttal of the prima facie standing on which Mr Hall relied. If I accept the evidence that Austin was in the same trade as Lodestar at the time it filed the first removal application, then the same evidence would also suggest that the trade mark that it used or intended to use at that time was WILD TURKEY. As with Health World, Austin’s standing as a person aggrieved would then fail if I were to find that this trade mark is not deceptively similar to the one under attack[5].
[5] Furthermore, as Perram, J said at [35]: “This argument [ie that there was a reasonable possibility of Healthworld being disadvantaged in a legal or practical sense “because of the possibility that HEALTHPLUS and INNER HEALTH PLUS were deceptively similar”] should be rejected. There is no doubt that the owner of a mark is an aggrieved person where by reason of the reputation of their mark another mark would be likely to deceive or cause confusion. But the possibility of appreciable disadvantage does not arise from the possibility of deceptive similarity alone, as submitted by Heath World – it arises from the existence of goodwill.
Presumably with that contingency in mind, Mr Hall then set out a second proposition. He noted that Austin now has its own pending applications for registration, being 1066646 and 1066650, to which I have referred, and either uses or intends to use the trade marks in question on relevant goods.
To those issues I now turn.
First removal application
Standing, as I have noted, must be extant when the removal application is filed. Leaving aside various matters that I will come to shortly, Austin has not addressed the use or intended use by it, at the relevant date, of any trade mark other than WILD TURKEY[6]. Mr Tracey, the in-house Intellectual Property Counsel for Austin, gives evidence of his own opinion on a question of law. Austin, declares Mr Tracey, has been “legitimately motivated by a concern to protect Austin’s valuable trade mark rights in the WILD TURKEY brand”. This concern, he declares, should be construed as a reasonable basis for the proceedings that, in various jurisdictions, Austin has taken to oppose or cancel Lodestar’s claims to rights in the WILD GEESE trade mark.
[6] As Mr Fitzpatrick noted at the hearing, there is no evidence at all of an Australian trade under that trade mark at the time the first removal application was filed. The earliest date Austin addresses is in July 2006, in the context of the Mackie declaration. Mr Hall noted, for his part, that there was “no evidence that this was brand-new use”. While the latter might be an optimistic approach I will apply the spirit of what Hill J said to this facet of the debate and give Austin the benefit of the doubt.
To be fair to Mr Hall, his case was not based on any contention that such deceptive similarity existed. It was not, he said, a necessary or relevant ingredient of the argument he put before me. However, it was an issue that Mr Fitzpatrick traversed and, in my own view, it is an issue on which I must be satisfied or the removal application must be refused. To make a long story short, I am not satisfied that there is the necessary element of deceptive similarity about the trade marks. In the interests of completeness I will explain why this is so.
Mr Tracey, in his declaration, attaches details of what is apparently the only action in which Austin has enjoyed success in its attacks on Lodestar’s relevant trade marks based on issues that might be analogous to deceptive similarity under the Act. This is a decision of the US Trademark Trial and Appeal Board. The decision appears not to be directly relevant to the Australian situation since it appears to have been heavily influenced by the fame of Austin’s trade mark and: “Fame plays a ‘dominant role in the process of balancing the Du Pont factors’”. The board referred, at that point, to the factors listed In re E I du Pont de Nemours and Co 476 F.2d 1357, 177 USPQ 563.
The board’s decision sets out the fame of the WILD TURKEY trade mark in detail as it relates to the USA but, at page 18 of the decision, it then comes to elements that are, I think, likely to be seen significantly differently in Australia. These are the perceived similarities between competing marks WILD GEESE on one hand and WILD TURKEY on the other. On the evidence before it, the board viewed the products for which registration of WILD GEESE was sought as “ordinary consumer goods which would be purchased without a great deal of care by ordinary consumers”. It viewed the trade marks in question in terms of “the commercial impression and general connotation of wild game birds”.
Now is not the time for a full and final adversarial resolution of the question of deceptive similarity, since, as I write these words, Austin is also conducting an opposition to the registration of trade mark 1090567 in the name of Lodestar and the evidence stages in that proceeding are still open. Even so, Austin has the onus, here and now, of establishing standing, at least to a degree that would authorize me to consider the merits of the first removal application. I am not remotely satisfied that the two trade marks, viewed as wholes, would be seen or recalled by relevant Australian consumers in terms as simple as “wild game birds”. There is no evidence at all that either sort of bird is ordinarily seen, or likely to be seen, in this country, as a game bird. Geese and, in particular, turkeys, in Australia, are perhaps less common than in the United States. While there are native forms of both birds, I think the differences between the two would be well understood and recognised.
I appreciate that the word WILD is being used in a sense that the board described as “arbitrary” in its decision. Compare, for instance, that word to CRAZY, at issue in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212. It is a word that, I accept, is not common to the trade and I accord it the full weight that is due to it when comparing the two trade marks in all the surrounding circumstances and making proper allowance for imperfect recollection. None the less, the trade marks, viewed as wholes, do not look alike, sound alike or give rise to a common idea. This is not a situation that I think the ordinary Australian consumer would view simply as one where, to quote the board’s decision, “the commercial impression and general connotation of wild game birds, creates a confusingly similar mark”. Perhaps, in this matter, I have been disadvantaged by Austin’s failure to deal more fully with such issues in its evidence. Nonetheless, my decision on the evidence in front of me is that there was no legal or practical grievance caused for Austin by the registration of trade mark 839740 at the time it filed the first removal application.
Accordingly, I conclude that Austin was not, at the time it filed the first removal application, a person aggrieved. It is not therefore necessary to consider the substantive merits of the first removal application. It is refused.
Second removal application
Geese has not demonstrated, either during the time that it was the removal applicant of record or subsequently, by any cogent documents or by any simple statement of facts, that it uses or intends to use any trade mark at all. Austin, by then the removal applicant of record, filed and served evidence in answer to the evidence of Lodestar. Austin’s evidence is silent on what trade marks either Austin or Geese might have been using at the filing date of the second removal application. However, at the hearing, Mr Hall relied on a declaration supporting the second removal application at the time it was filed. That declaration was made by Mr O’Sullivan, a director of Geese. In turn, his declaration annexes an affidavit by Mr Andrewartha, a director of a liquor retailing business known as East End Cellars in South Australia. Mr Andrewartha has given evidence about a wine product allegedly being sold under the name “Wild Geese” or “Wild Geese Wines”. Mr Fitzpatrick argued that since the O’Sullivan declaration had not been served by the removal applicant as part of the opposition process I could not have recourse to it. I disagreed. The declaration in question was copied by the Trade Marks Office to the lawyers for Lodestar as was required by reg 9.2. That declaration was part of the very documents that commenced the proceeding.
Mr Fitzpatrick also argued that the Andrewartha affidavit, if regard could be taken of it, did not prove what was claimed of it by Mr Hall. Mr Fitzpatrick took me to the detail of the affidavit of 5 September 2005, to which Mr Hall referred. This in turn refers to another and earlier affidavit Mr Andrewartha made on 1 May 2001. I set out the relevant portions of both, starting with the later affidavit, for better understanding of Mr Fitzpatrick’s criticism.
I, Michael John Andrewartha of 22-26 Vardon Avenue, Adelaide in the State of South Australia, Company Director make oath and say as follows:
1. I am a Director of East End Cellars Pty Ltd and I am authorised by the Company to make this affidavit on its behalf.
2. The company operates the liquor retailing business known as "East End Cellars".
3. I have been involved in the business of liquor retailing for 26 years. During that time I have been closely involved in the retail sale of bottled wine products including products made amongst other places, in Australia, New Zealand, South Africa, Italy, France, Germany, the United States of America and Chile.
4. I refer to an affidavit sworn by me in this matter on 1 May 2001. Now produced to me and marked "MJA-l" is a true copy of that affidavit.
5. As is apparent from my affidavit exhibit MJA-l, O'Sullivan had asked me to investigate whether there was any wine product being sold under the name "Wild Geese" or "Wild Geese Wines" in South Australia or Australia.
6. On 26 June 2003, O'Sullivan again asked me if I knew of any wine product being sold under the name "Wild Geese" or "Wild Geese Wines" in South Australia or in Australia.
7. I told him that apart from the wine sold by a company of which I am informed and verily believe he is a director and named Wild Geese Wines Pty Ltd, I did not have any such knowledge. I indicated to him I would make investigations.
8. As a result of those investigations, I have been unable to find any wine product for sale under the name "Wild Geese" or "Wild Geese Wines" either in South Australia or Australia other than that produced by Wild Geese Wines Pty Ltd, the company of which O'Sullivan is a director.
9. On 26 August 2005, O'Sullivan again asked me if I knew of any wine product being sold under the name "Wild Geese" or "Wild Geese Wines" in South Australia or in Australia.
10. I told him that apart from the wine sold by a company of which I am informed and verily believe he is a director and named Wild Geese Wines Pty Ltd, I did not have any such knowledge. I indicated to him I would make investigations.
11. As a result of those investigations, I have been unable to find any wine product for sale under the name "Wild Geese" or "Wild Geese Wines" either in South Australia or Australia other than that produced by Wild Geese Wines Pty Ltd, the company of which O'Sullivan is a director.
12. To the best of my knowledge and belief save as set out in paragraph 8 and 11 above I am unaware of any wine product for sale in South Australia or Australia under the name "Wild Geese" or "Wild Geese Wines"
Leaving out duplications, the relevant part of MJA-1 reads as follows:
I have been involved in the business of liquor retailing for 22 years. During that time I have been closely involved in the retail sale of bottled wine products including products made amongst other places, in Australia, New Zealand, South Africa, Italy, France, Germany, the United States of America and Chile.
On 30th March 2001 I had a conversation with a person I know as Simon Patrick O'Sullivan ("O'Sullivan"). I have known O'Sullivan since about l985 through his interest in the wine industry.
O'Sullivan asked me if I knew of any wine product being sold under the name "Wild Geese" or "Wild Geese Wines" in South Australia or in Australia.
I told him that I did not have any such knowledge although I would make investigations. As a result of those investigations, I have been unable to find any wine product for sale under the name "Wild Geese" or "Wild Geese Wines" either in South Australia or Australia.
To the best of my knowledge information and belief, I am unaware of any wine product for sale in South Australia or Australia under the name "Wild Geese" or "Wild Geese Wines".
I know the facts deposed to herein of my own knowledge to be true except where otherwise appears.
Mr Fitzpatrick noted that Mr Andrewartha had been asked his views in relation to “wine” only. He argued that Mr Andrewartha, if he refers to knowledge of wine made by Geese at all, refers only to the knowledge imparted to him by Mr O’Sullivan. In other words, if Mr Fitzpatrick is correct, there is no evidence of anything but a second-hand, unsworn, assertion by Mr O’Sullivan on the part of Geese. The evidence of use of a trade mark by Geese is thus open to serious challenge.
The strength of the challenge lies in that I cannot establish with certainty just what Mr Andrewartha was told by Mr O’Sullivan, and how far this may contaminate Mr Andrwartha’s statement of facts. Mr Hall argued that clause 7 above sets out what Mr Andrewartha “knew”, while clause 8 sets out his subsequent discoveries. Clearly, Mr Andrewartha is either aware of usage of WILD GEESE or WILD GEESE WINES, as a trade mark or something like one, or he has been told by Mr O’Sullivan that such is the case. In the first place, how much of what Mr Andrewartha has attested to is done on the basis of his own knowledge? Where does that knowledge stop, and the assistance or assertions of Mr O’Sullivan take over? But, beyond this, if Mr Andrewartha is attesting to the existence of “a wine product sold under the name WILD GEESE or WILD GEESE WINES”, it is curious that he is not able to say to which of the two he refers. Beyond that, if he refers to a usage as a trade mark, whose usage was it? That of Geese, or that of some third party?
Mr Andrewartha is clearly aware of the need to separate what he knows from what he has been told. MJA-1 is made in terms of “I know the facts deposed to herein of my own knowledge to be true except where otherwise appears”. Clauses 7 and 10 of the subsequent affidavit are thus worded in a way that would be entirely consistent with Mr Andrewartha being told, by Mr O’Sullivan, that there had been usage of the trade mark, that the user was Geese, and that he (O’Sullivan) was a director of that company.
From this affidavit, I can find no clear evidence which would necessarily satisfy me that Geese has used a trade mark consisting of either WILD GEESE or WILD GEESE WINES. There is, potentially, no more than an assertion made by Mr O’Sullivan, and repeated by Mr Andrewartha.
Mr Hall attempted to draw from the s 202 documents some support for Mr Andrewartha’s opinions. The deed of assignment, within those documents, shows that Geese warranted, as part of the assignment, that it and its predecessors had used the trade marks set out in the table above in respect of wine on a continuous basis since at least August 1998. Mr Hall urged that I should accept this at face value. I do not think I can do so. The representation made by Geese to Austin carries with it remedies available to Austin in the event that it is not true. However, the existence of the representation does not provide a basis on which I can safely reach a conclusion as to its truth. That the representation was made is manifest, but its truth is a second question entirely, another and only indirectly related issue.
Mr Hall suggested that I should avoid being put in a position where “a lacunae in the evidence” would oblige me to act on a basis which I knew was not factual, since, apparently, “we all know” that Geese has used its trade mark. He ascribed this difficulty as being due to a lack of “technical evidence”.
There is an element of irony about the position in which Geese, in whose shoes Austin now stands, finds itself. It filed a removal application in the expectation that the details of Lodestar’s own usage would be put to the test, Lodestar’s invoices scrutinized, its declarations subjected to careful analysis and so forth. When, at the threshold, Geese’s own paperwork is subjected to the same careful examination, it is open to serious questioning. It is doubly ironic that this remains so even when Austin has recourse, at the very last minute, to documents produced at the behest of Lodestar’s lawyers.
However, it may, just, be possible to overlook the alleged failings in Austin’s case as regards the second removal application, to which Mr Fitzpatrick pointed, in order to allow me to proceed to the substantial matter. Let me, therefore, accept that Geese was a person aggrieved.
Were I to have such a view, Mr Fitzpatrick argued that Geese’s, and now Austin’s, grievance could extend no further than wines. He relied here on the fact that the evidence in the s 202 documents showed that both parties would be content to see Geese continue to use WILD GEESE in relation to Australian wine, while Austin for its part, per the evidence of Ms Mackie, would use WILD TURKEY in relation to bourbon whiskey.
Mr Fitzpatrick conceded frankly that the trade mark had not been used in the three year period relevant to the second removal application. He argued, however, that this had been due to circumstances within the scope of, variously, s 100(3)(c) or in the exercise of my ultimate discretion under s 101(3). A proper outcome, he said, would be that the trade mark registration exclude only wines and wine-based spirits.
Neither party made submissions on a small conundrum arising from Ritz (1988) 12 IPR 417 at 455. There, I note Justice McLelland's comments, in relation to same issue under the predecessor legislation, s 23 of the 1955 Act:
The question whether an applicant for relief is a "person aggrieved" cannot be divorced from the nature and extent of the relief claimed. For example, the relief available under s 23(1) is expressly defined in terms of removal of a trade mark "in respect of any goods or services in respect of which it is registered", which in its context means "in respect of any category of goods or services specified in the registration". If a mark were registered in respect of goods in specified categories A and B, and an applicant for relief under s 23(1) were to show that he was a "person aggrieved" in respect of registration of the mark in relation to goods in category A, but not in relation to goods in category B, then he would have standing to claim removal of the mark in respect of goods in category A, but not in respect of goods in category B: Lever Brothers, Port Sunlight Ltd v Sunniwhite Products Limited (1949) 66 RPC 84. If, however, the mark were registered only in respect of goods in specified category C and the applicant were to show he was a "person aggrieved" in respect of the registration of the mark in relation to some kinds of goods in category C but not other kinds in that category, he would nevertheless have standing to claim removal of the mark in respect of goods in category C without distinction: "Kodiak" Trade Mark [1987] RPC 269.
In the lack of more detailed submissions, I think it is sensible for me to accept that Geese was, and therefore Austin now is, aggrieved for all the goods in class 33.
Removal or not?
An opponent to an application for removal may rebut an allegation of non use by establishing that a failure to use the mark in the relevant three year period was “because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to use of the trade mark during that period”. The circumstances must be “an obstacle to the use of the trade mark by the registered owner”: Woolly Bull Enterprises Pty Ltd v. Reynolds, (2001) 51 IPR 149 at 46-47.
The wording of s 100(3) of the Act is broader than s 23(4) of the 1955 Act, as Mr Fitzpatrick noted. The circumstances must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner, but it is not necessary to show unusual or abnormal trading conditions. The circumstances must be of a “trading nature” and there must be a causal link shown between the relevant circumstances and the failure to use the mark. See Woolly Bull supra at 45-47 and 55.
The evidence establishes that Lodestar originally entered into an arrangement with Irish Distillers to supply Irish whiskey under the WILD GEESE trade mark. However, before this agreement could be formalised, the negotiations were aborted on the basis that Irish Distillers had invested in the marketing of its own whiskey. As a result of this, Lodestar concluded an agreement with Cooley’s Distillery in October 2002, the only other actual distiller of whiskey in Ireland. As a result of this, WILD GEESE whiskey became available on the Irish market in early 2003.
The evidence established, in Mr Fitzpatrick’s view, that Lodestar made a number of attempts to promote and sell the WILD GEESE whiskey at a number of trade fairs, in particular the Tax Free World Association Fairs held in Singapore and Cannes. These efforts at promotion were “thwarted”, ostensibly due to a lack of space at the various fairs. However, Mr Fitzpatrick argued that there was a basis for me to reasonably infer that the difficulties encountered arose from threats made to third parties and their consequential concern to avoid involvement in legal proceedings. The inability to promote the product at trade fairs made it difficult to get buyers for the product in Australia.
These circumstances, he argued, were a clearly of a trading nature and were not brought about by the voluntary acts of the trade mark owner. There was a clear causal link between these events and the difficulties in the establishment of an Australian market. Accordingly, the registration should be retained, at least in respect of goods other than “wine and wine-based spirits”.
Mr Hall, for his part, was dismissive of the circumstances pleaded by Lodestar. They were, he said, “pretty ordinary”. He noted that Lodestar did not allege conspiracy to unlawfully deprive Lodestar of space at trade fairs. Nor, he said, was there any evidence that linked, in a causal way, the legal disputes to the failure to use. His view was that Austin was entitled to have the trade mark removed for all of the goods in class 33.
While I accept that, from the evidence, Lodestar faced difficulties in obtaining supplies of Irish whiskey, I agree with Mr Hall. Lodestar has chosen, as part of its marketing strategy, to sell its products through duty free outlets, avoiding the perception that the product a mass market item. The fact that this marketing decision did not result in sales extending to Australia by the time of the relevant period is entirely attributable to Lodestar’s own actions.
Discretion
Mr Fitzpatrick argued that I should be satisfied to exercise the discretion under s 101(3) in favour of Lodestar for the following reasons:
·Lodestar has a legitimate business in its WILD GEESE whisky and has sold the product in a range of countries around the world, including Ireland, Canada, Japan, United Arab Emirates and Vietnam
·Lodestar made legitimate attempts to sell its WILD GEESE product in Australia through the appointment of a sales representative in Australia
·Lodestar has sought to promote its WILD GEESE whisky product through a number of trade fairs. As part of this, a number of Australian attendees of the Cannes and Singapore shows were directly contacted providing information concerning the WILD GEESE whisky product
·Lodestar’s attempts to promote its product were thwarted
·there is no public interest served in removing the trade mark from the register
·there are no legitimate private interests served by such removal.
To make an end of this matter, I am not so satisfied under any of those headings. As to the proper approach to the exercise of the discretion, I accept that decisions such as Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411, to which Mr Fitzpatrick referred, have been overtaken by more authoritative precedent, see Kowa Co Ltd v NV Organon (2005) 66 IPR 131. Consistently, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 at 110, Flick J said:
And it is a discretion, it is considered, no longer constrained by any requirement to establish “exceptional circumstances”; it is a discretion which may be exercised “when it is reasonable to do so”: Kowa, supra. Lander J there indicated that he was of the view that it was not reasonable not to remove the mark in issue. Of the discretion, his Honour concluded (at [97]–[98]):
[97] … There are significant differences in the section considered by the Court of Appeal in Lyons (1959) 76 RPC 120 and s 101(3). In the English section, regard had to be had to the bona fide use of the trade mark during the relevant period. No such regard is had in s 101(3). It is always dangerous to have regard to a statement of principle in relation to the exercise of a discretion in a section in an Act which is not in pari materia with a section of a second Act for the purpose of considering the way in which a discretion should be exercised in that second Act.
[98] In Upjohn (1998) 42 IPR 576 it was said that the power may be applied in “exceptional circumstances”. Section 101(3) does not say that. There is no warrant to read the expression “exceptional circumstances” into the subsection. That would be to give the subsection a construction contrary to its express terms. In my opinion, the discretion which is to be exercised under s 101(3) is to be exercised as the subsection itself says, “when it is reasonable to do so”. To suggest that the party against whom the non-use has been put in a case such as this should establish exceptional circumstances is to put too high a hurdle in that party’s path.
The factors to which Mr Fitzpatrick pointed are every bit as ordinary as Mr Hall argued. Lodestar’s trade mark is not used at all in this country. The individual appointed as Lodestar’s Australian distributor turns out to have been what Mr Hall unsympathetically described as “a mistake”. Lodestar’s overseas usage of its trade mark is not, so far as I can see, known to any but a few proprietors of duty-free stores who were said to have been alerted to the existence of relevant spirits.
I have found that Austin does not have standing in respect of the first removal application. It might be that the entire exercise of the assignment of Geese’s own pending trade mark applications to Austin, with Geese authorized as a user, was done for tactical reasons on Austin’s part. None the less, as Mr Hall noted, Austin is obliged by its agreement with Geese to protect the trade mark WILD GEESE. To the extent that the result of the tactical ploy gives Austin scope to pursue its own broader strategy, the attack on Lodestar’s business under the WILD GEESE trade mark, its interests are “legitimate”.
Mr Fitzpatrick goes too far when he argues that there need be a public interest in removal. The proper view is that s 101(3) does not require public interest in removal; rather, the existence of the conditions that would authorize removal suggests, prima facie, that removal should occur unless s 101(3) can be triggered by an opponent.
However, there is one saving grace. I have already noted that Mr Fitzpatrick announced, at the hearing, that Lodestar did not oppose removal in respect of “wines and wine-based spirits”. He also undertook, on instruction from his client, that Lodestar would provide a letter of consent to Austin that might assist it in registering applications 1066646 and 1066650.
Ultimately, Lodestar has filed the necessary letters of consent with respect to applications 1066646 and 1066650. Also, since the time of the hearing there has been some adjustment of the terms on which Lodestar does not oppose removal. Lodestar now consents to removal in respect of “wine, fortified wine and wine-based spirits, namely brandy, grappa and cognac”. This has occasioned a round of written submissions. Ultimately, the parties note the decision of the Full Court of the Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, to the effect that beer – strictly, radler beer, as Mr Fitzpatrick has noted - should be seen as being goods of the same description as wine. The ultimate view of Austin is that this adds complexity to the interrelationship of the goods in class 33 and reinforces Austin’s claim to standing in relation to all goods in the class. As Austin put it in its submissions:
The very close interrelationship of different alcoholic drinks was emphasised by the Full Court of the Federal Court in the recent E & J Gatlo Winery v Lion Nathan Pty Ltd decision, in particular paragraphs 72 and 74 which found that beer and wine were goods of the same description. This is not, therefore, a field in which you should be tempted to carve away part of the registration but leave another part on the register. The applicant having established that it uses WILD GEESE on wines, the marks should be removed entirely. Otherwise the potential for confusion would arise if the opponent in future sought to use its marks for any goods for which they remained registered e.g. if they sought to use the WILD GEESE mark in relation to whiskey.
The two concessions proffered by Lodestar would, even so, be a strong shield against any inconvenience that Geese might otherwise suffer. They might be unlikely, in contrast, to satisfy the broader strategic interests of Austin. However, I think that Austin cannot be permitted, in acquiring the right or interest on which Geese relied in filing the removal application, to bring about any broader result than would have been appropriate to Geese’s initial cause.
Accordingly, balancing the interest of Lodestar against that of Austin insofar as it results from the initial obstruction experienced by Geese, I think a proper application of the discretion would see the trade mark removed from the register in respect of “wine, fortified wine and wine-based spirits, namely brandy, grappa and cognac”. This would leave a specification reading as follows in respect of class 33:
Alcoholic beverages (except beers) but excluding wine, fortified wine and wine-based spirits, namely brandy, grappa and cognac.
Conclusion and costs
I have refused the first removal application filed by Austin. I have, in contrast, directed that the trade mark be partially removed, reflecting the limited success of the other removal application now being prosecuted by Austin when balanced against the last-minute concession made by Lodestar. I do not believe that either side is entitled to an award of costs.
T. E. Williams
Hearing Officer
Trade Marks Hearings
13 May 2009
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