LWR Hosiery and Underwear Limited v CHL Enterprise Pty Ltd

[1994] ATMO 38

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:      Application by LWR Hosiery and Underwear Limited to remove
Trade Mark Registration 76405 from the Register

Background

On 31.1.90, LWR Hosiery and Underwear Limited ("the applicant") lodged an application to remove trade mark registration 76405 from the Register on the grounds provided by section 23 of the Trade Marks Act. The applicant seeks to establish only that the trade mark has not been used, on any of the goods for which it has been registered, in the three year period ending one month before the removal application was lodged, and that, in consequence, it should be removed. The goods covered by the registration are hosiery.

Removal had been opposed, as provided for by regulation 22(4), by CHL Enterprise Pty Ltd. ("the opponent").  Their interest in the matter is, inter alia, that they are a registered user of the mark in respect of hosiery.  It is to be noted that they have withdrawn their opposition to the removal application.  I can also fairly note that there is some suggestion, in the documents on the file, that they may have previously believed that they could be registered as a user in respect of a broader range of goods including, inter alia, lingerie and underwear.  Those broader goods were specified in a user application lodged in 1987, and it was only in 1990, after advice from this office, that the goods specified in the application for recordal of a registered user were listed simply as hosiery.  That user arrangement was recorded, in August 1991, consistent with the practice set out in the Official Journal of Trade Marks of 3.8.89. 

Be that as it may, the removal application was opposed.  Consistent with the trade mark regulations in such an event, the removal applicant served evidence on which it wishes to rely and which, in my opinion, establishes a prima facie case of non-use.  It was therefore open to the opponent to answer the case for removal, and evidence of use of the trade mark was in turn served by the opponent and lodged with this office. 

The matter had been listed for hearing by the time the opposition to removal was withdrawn. While this made a hearing less immediately necessary, since unopposed applications under section 23 are reviewed ex parte, the applicant took the opportunity to make in-person submissions and bring about the final resolution of the application. At the hearing the applicant was represented by Ken McInnes, a patent attorney of the attorney firm of Spruson and Ferguson.

Decision

Let me first say that the applicant has the necessary standing as a person aggrieved.  The present registration has served to block one (now-lapsed) application for the registration of a deceptively similar trade mark in the name of the applicant, and is presently blocking another. 

I do not intend to dwell at length on the evidence relied on by the applicant and by the former opponent.  The applicant's evidence establishes, firstly, that in the relevant trade the word hosiery is taken to mean socks, in the case of male clothing, or socks, stockings, knee-highs and pantihose in the case of female clothing.  That evidence consists of a declaration from a buyer of hosiery, of 10 years experience in that capacity in the employ of a national chain store.  The ten years span the relevant period and the same declaration also establishes that the trade mark INTRIGUE has remained unknown to that buyer for that time.   

There are some problems with the thoroughness of the other declaration relied on by the applicant.  None the less, I think, all things considered, that a case has been made, for these goods, such as to shift the onus to a party wishing to defend the registration.

Here the opponent relied on material which in my view establishes that the mark has been used.  Though the opposition to removal has now been withdrawn, the opponent's evidence has been properly served and must be considered in deciding the removal application.

I find that the attacked registration has been used, in the relevant period, in relation to women's underwear other than hosiery, ie other than stockings, knee-highs or pantihose. Sales of $175,562 have been claimed for the year 1988, which falls in the middle of the three year period applying under s 23. The extent of use is small in recent times, averaging under $37,000 for the last four calendar years, with a similar figure, $35,866, claimed for 1989. There is no evidence of the relationship, if any, between the company which used the mark and the former opponent, other than an assertion by the former opponent that the mark has been used by it and by its predecessors in business. I also note, however, that the actual user has the same street address as the registered user and that its name, CHL Apparel, bears an obvious resemblance to that of the registered user.

The position is thus that the mark has not been used for the goods for which it has been registered. It has, however, been used to a small degree for what I take to be "goods of the same description", for the purpose of s 23(2) of the Act, as those goods. In anticipation of such findings, Mr McInnes drew my attention to the exact wording of sub-section 2 in the light of the matters set out in paragraph (b) of sub-section 1.

23. (1) Subject to this section and to section 93, a prescribed court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered, on the ground-

(b) that, up to 1 month before the date of the application, a continuous period of not less than 3 years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being.

(2) Except where an applicant has been permitted under section 34 to register a substantially identical or deceptively similar trade mark in respect of the goods or services to which the application relates, or the prescribed court or the Registrar is of opinion that the applicant can properly be permitted to register such a trade mark, a prescribed court or the Registrar may refuse an application made under the last preceding sub-section in relation to any goods or services if there has been, before the relevant date or during the relevant period, as the case may be, use in good faith of the trade mark by the registered proprietor or a registered user of the trade mark for the time being in relation to goods or services in respect of which the trade mark is registered, being-
(a) where the application relates to goods-goods of the same description as those goods or services that are closely related to those goods;

Mr McInnes noted that the user has at no stage been either the registered proprietor or a registered user. He also argued that a strict reading of the terms of s 23(2) required that the "goods of the same description" specified in that sub-section must be goods covered by a registration. Such a stipulation is consistent with various decisions in the United Kingdom. However, as Shanahan notes in Australian Law of Trade Marks and Passing Off, 1990 Edition, p278, footnote 46, it is an action which appears to give marked effect to the accidents of classification. 

Now even if I cannot expressly consider, under the explicit terms of s 23(2), the use on these (unregistered) goods of the same description, it is still quite clear from the authorities, including Re Carl Zeiss Pty Ltd's application, (1969) 122 CLR 1, that there is a general discretionary action in s 23. The determinant here is the public interest, and it may be that public interest concerns would require that circumstances such as the present ones would need to be carefully considered in the general application of the discretion to remove a mark from the register. That is not, however, something I am called on to decide at the present time.

Mr McInnes reminded me that it was not the role of the Registrar to act as the advocate for any party in an opposition matter.  Here he relied on Roger & Gallet SA v Cussons Pty Ltd. (1991) AIPC 90-785. There was thus a limit, he argued, as to how far I can go in considering circumstances which might argue for the retention of the attacked registration on the register. He relied on Atomic Skifabrik Alois Rohrmoser v Sasdor Pty Ltd, (1988) AIPC 90-508, for the principle that there is a public interest in having the register accurately reflect the use or non-use of a trade mark. Such a principle is consistent with the approach of, inter alia, McLelland J in Ritz Hotel v Charles of the Ritz 12 IPR 417 at 482, to the effect that, a case having been made in terms of s 23(1), a mark should be removed from the Register unless there is sufficient reason to leave it there.

There is, in the present case, no good reason that I can see for not exercising my discretion to remove the trade mark from the register.  While I do not say that the former opponent has actually consented to the removal of the registration, it has certainly not sought to make any argument as to why the mark should remain.  In that case, neither will I.

I therefore order that trade mark registration 76405 be removed from the Register for all goods in respect of which it is registered.  In so doing, I note that I may be clearing the way for a pending application for the registration of a deceptively similar trade mark in the name of the present removal applicant.   That is, however, a matter which will be decided elsewhere and in the light of other, as yet unknown, circumstances, as Mrs Farquhar noted in Fawns & McAllan v Burns-Biotec, 7 IPR 343.

At the request of the removal applicant I make no order as to costs.

T. Williams
Hearing Officer.
12 May 1994