Lyndon Bradney Simmons v Latrobe Brewing Company

[1994] ATMO 81

TRADE MARKS ACT 1955

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

Re:Opposition by LATROBE BREWING COMPANY to an application under section 23 of the Act by LYNDON BRADNEY SIMMONS to remove trade mark registration number 436170 from the Register

An application under s.23 of the Act to remove trade mark registration number 436170 from the Register was lodged on 18 September 1992 by LYNDON BRADNEY SIMMONS (the applicant).  The application was opposed on 22 February 1994 by the registered proprietor of the mark, LATROBE BREWING COMPANY (the opponent).  The mark comprises the words ROLLING ROCK and is registered for "Beer and ale and all other goods in this class" in Class 32.

The grounds relied upon by the applicant are that the mark was registered without an intention to use it in good faith by the proprietor and also that, up to one month before the date of the s.23 application, a period of three years had elapsed during which time the mark had not been used in relation to the goods included in the specification.

The opponent's grounds against removal were that the mark had not been registered without an intention in good faith to use the mark and that it had been used in good faith during the period in question - 18 August 1989 to 18 August 1992 - in respect of the goods for which it was lodged.  Alternatively, failing to satisfy the above, any failure to use the mark was due to special circumstances existing in the trade and not to any intention not to use the mark.  The opponent also said that the applicant was not a person aggrieved by the registration and so was not entitled to apply for removal of the mark from the Register.

Lodgment of the applicant's evidence in support was completed on 10 March 1994.  This evidence comprised Statutory declarations by:

David Robert Grant

Kev Nittel
  Desmond Bolton
  Alan J Weller
  Graham Beverly Monk
  Ross Bradley Jones
  Claude Paul Anese dated 13 December 1993 (first Anese declaration)
  Claude Paul Anese dated 25 February 1994 (second Anese declaration)

The opponent did not lodge any evidence in answer

The applicant subsequently applied for a hearing and the matter came before me, as the Registrar's delegate, in Canberra on 12 October 1994.  Both sides decided to make submissions by telephone.  Representing the applicant was Mr Claude Anese of Cullen & Co, Patent & Trade Mark Attorneys of Brisbane.  Appearing for the opponent was Mr Peter Marsh of F.B.Rice & Co, Patent & Trade Mark Attorneys of Sydney.

Submissions

At the hearing, Mr Anese began his submissions by claiming that the continued registration of a mark was a privilege and not an automatic right.  He said that the main criterion of continued registration was that the mark should continue to be used.

He said that the applicant was an aggrieved person as envisaged by s.23 of the Act by virtue of the existence of the present mark having been relied upon by the opponent in an opposition matter in the case of the applicant's own applications numbered A543943(41), A543944(42) and A543945(25), for a mark which includes the words ROLLING ROCK.  As these applications covered services which included bars and restaurants, and as beer could be sold in these establishments, it was unlikely that the marks could co-exist without some confusion.  The applicant would also be disadvantaged commercially by the continued presence of the subject mark on the Register.

Mr Anese then discussed, in turn, each of the declarations relied upon in the evidence in support.  He said that, whilst they were in questionnaire form, there had been no attempt to lead the declarants in their answers and this form of document had been found to be satisfactory by the Registrar in similar cases in the past.  Mr Anese said that the declarants represented a broad cross-section of hotels, restaurants, taverns and the brewing industry around Australia.  Despite any criticisms which might be levelled at the declarations individually, together the declarants had a wide knowledge of the industry concerned.  All of the declarants save Mr Jones had stated that they were not aware of the opponent's use of the mark during the s.23 period.  Mr Jones had said in his declaration that he was aware of use of the mark on beer, "distributed throughout eastern seaboard of Australia" by the "La Trobe (sic) Brewing Company".  Mr Anese said that his first declaration showed that he rang Mr Jones to clarify the situation as that declarant was the only person approached to have any knowledge of use of the mark.  According to his declaration, Mr Anese had said that Mr Jones had then admitted that he had no personal knowledge of the use of the subject mark in Australia but had been advised by a colleague at Swan Brewery, Mr Howard Kerns, that ROLLING ROCK had been used as a brand name of beer in the "Eastern states".  Mr Anese had then spoken to Mr Kerns who said that he had advised Mr Jones of such use that he knew about, "on the eastern seaboard of the United States".  Mr Kerns had then agreed with Mr Anese that Mr Jones must have wrongly inferred his reference to the "eastern seaboard" of the U.S.A. as meaning the corresponding portion of Australia.  Mr Anese said that, although charges of hearsay could be levelled at the assertions made in his declaration, it did clarify the matter of why Mr Jones had stated he knew of the mark's use.  There had been no time for Mr Anese to approach Mr Jones again and to ask him to submit a clarifying declaration.  However, this was not considered to detract from the applicant's case, as the opponent had not produced any evidence to refute the prima facie case of non-use which had been established.

Mr Anese continued his submissions by saying that beer is sold in Australia on a national basis, with beers made in each State being available in all of the others.  Given the wide geographic spread of the declarants, it was inconceivable that the mark could have been used in this country without the knowledge of any of them.  He said that the burden of proof in s.23 matters was not heavy as it was difficult to prove a negative.  Consequently, it was only necessary to show a prima facie case of non-use to shift the onus to the registered proprietor to demonstrate that it had, in fact, used its mark.  He said that the applicant in the present instance had established much more than a prima facie case and this had not been rebutted by any evidence of use at all by the opponent.

Mr Anese said that the opponent had re-applied for the present mark's registration on 23 March 1992 on application number 575028.  He said that it was legitimate to infer from this that the opponent did so because it realised that the current mark was open to successful action under s.23.  It was therefore further possible to infer from this that the mark had been registered without an intention of good faith to use the mark, so offending the provisions of para.23(1)(a) of the Act.  He said that, because of the existence of that application, a loss of rights by the opponent occasioned by the present registration being removed from the Register would be minimal.  He concluded his submissions by seeking costs in the matter on behalf of the applicant.

In reply, Mr Marsh disputed whether the evidence lodged in support of the s.23 application constituted a prima facie case for removal.  He said that the onus to which Mr Anese had referred only rested on an applicant for registration.  Once a mark was registered, the registered proprietor had a justifiable right for it to remain there unless it was shown by overwhelming proof that it should be removed.  With respect to the onus of proof in actions under s.23, he referred to the case of Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited (1967) 116 CLR 254 and the well used quote from Windeyer J, at 258 and 259, where he said that the applicant for removal should prove its case. He said that the Trade Mark Examiners Manual at Chapter 10.05 discussed the nature of the evidence which was required to show a prima facie case for removal, one of the criteria of which was a sufficient spread of declarants who could attest to the alleged non-use throughout Australia.  At the end of that section of the Examiners Manual, a lack of response from a registered proprietor to a removal action was said not to be fatal to its case.

With respect to Mr Anese's assertions regarding the opponent's motives in relation to its later application for the same mark, and the inferences which could be drawn in relation to para. 23(1)(a) of the Act, Mr Marsh said that no such case existed and I should attach no weight to that submission.

Mr Marsh then discussed each of the declarations on which the applicant sought to base its case for removal, alleging several shortcomings, including various declarants' lack of knowledge of the relevant industry and the Australia-wide situation regarding use of the mark.  He said that there was very little in the way of evidence originating outside of Queensland which attested to non-use of the mark.  He was particularly critical of the Jones declaration, where that declarant had said that he had heard of use of the subject mark in the eastern States of Australia during the relevant period.  He said that the declaration from Mr Anese, which attempted to explain why Mr Jones expressed a contrary view to the other declarants, could only be called hearsay.  He said that it would have been a simple matter to obtain a supplementary declaration from Mr Jones to rectify the situation and the fact that this had not been done showed the flimsy case on which the applicant relied.  He said that it was the fact that the applicant's case was so lacking in substance which had prompted the opponent not to lodge any evidence of its own, as it considered that it did not have a case to answer.  He said that there was no obligation on the proprietor to put in any evidence at all to refute, what he called, "flawed evidence".

Discussion

Person aggrieved

The threshold question which needs to be resolved in a matter of an application under s.23 for removal of a registered mark is whether the applicant is a "person aggrieved" in terms of that section of the Act.  In my estimation, the applicant has established its status in this regard by also being the applicant for registration of three trade marks which include the words ROLLING ROCK.  These marks have been opposed by the present opponent on the basis of the existence of the subject registration: see the words of McLelland J. in Ritz Hotel Ltd v Charles of the Ritz & Anor (1988) 12 IPR 417 at 454.

Onus

It is well established that the onus of proof of the non-use of a trade mark rests with the applicant for removal: see Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited (supra) at 258 and 259:

It is for the applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period. ... slight evidence may suffice at this stage for the applicant has the task of proving a negative ... but ... when all the evidence is complete, the question is still, has the applicant proved his case?

However, if the applicant does succeed in establishing a prima facie case of non-use, the onus in the matter shifts to the opponent to demonstrate that it has used its mark on the appropriate goods during the specified period, or that there are grounds for the favourable exercise of the Registrar's discretion under s.23 on the grounds that special circumstances prevented it from using the mark, despite a bona fide intention to do so.

The applicant's prima facie case in this matter includes several declarations from people involved in the hospitality and beverage industries.  Despite Mr Marsh's criticism of some elements of this evidence, particularly that some of the declarants might not know of the non-use of the mark throughout Australia, I think that the declarations, taken together, go a long way in establishing a prima facie case.  I do appreciate that Mr Jones declared that he knew of use of the mark throughout the eastern seaboard of Australia but Mr Anese's explanation, outlined in his first declaration, is plausible and, as it has not been contested, it is a factor to which I should give some weight in deciding the matter.  I agree that it would be more convincing if another declaration had been obtained from Mr Jones explaining how his alleged misapprehension came about, but it should have been an easy matter for the opponent to produce evidence of any use in Australia at all during the s.23 period and I have considered that factor as relevant in assessing the matter.

The rules regarding evidence in such matters are not as strict as in a court of law and, as the applicant has the difficult task of proving a negative, I am satisfied that the information assembled is sufficient to comprise a prima facie case.  This then shifts the onus to the opponent to demonstrate use of its mark for the subject goods during the s.23 period.  Alternatively, that party could show that there are grounds for the favourable exercise of the Registrar's discretion under s.23 on the grounds that special circumstances prevented it from using the mark, despite a bona fide intention to do so.

Use

Under s.23, the thing which must be used is a trade mark, and that term is defined in section 6(1) of the Act as:

(a) except in relation to Part XI, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods or services and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person;

The foregoing must be taken in context with the comments of Deane J in the High Court in Moorgate Tobacco, (1984) 156 CLR 414, at 433:

The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd, supra, at 204-5) or that the mark has been used in an advertisement of the goods in the course of trade (Shell Co of Australia v Esso Standard Oil (Australia) Ltd, 109 CLR 407 at 422). In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark in trade.

Again, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd (10 IPR 402 at 417):

[A] mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened in Australia.  The mark must be used for the purpose of trade: WD & HO Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191. The forwarding of samples and brochures is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia.

Further, the High Court has made it clear that the finding of trade mark use is a matter of context.  In the case of The Shell Co of Australia v Esso Standard Oil (Australia) Ltd, 109 CLR 407, Kitto J., with the concurrence of the other members of the Full High Court, found at pp 425 to 426 that the context in which a particular use of an animated oil drop was used precluded a finding that there was use as a trade mark - "Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol?". This can only be decided by making inferences about how a particular advertisement or whatever would be perceived, and Kitto J. referred to the cases of J. B. Stone and Co v Steelace Manufacturing Co Ltd. (46 RPC 406) and the Yeast Vite Case (50 RPC 139, 51 RPC 110) as giving examples of similar conclusions under English law. He described the latter as "a striking example of a context precluding a conclusion that a use complained of as an infringement was use as a trade mark". He went on to refer to Edward Young and Co Ltd v Grierson Oldham and Co Ltd 41 RPC 548 as an appropriate example of how the "purpose and nature" of the use must be considered. The above means then, that the use to be established must be use which, on an objective test, is as a badge of origin. This is illustrated in the Johnson and Johnson Australia Pty Ltd v SterlingPharmaceuticals Pty Ltd 21 IPR 1 (the Caplets case).

I am of the belief that it should not have been too onerous a task for the opponent to produce some evidence of use of its mark.  It is too easy to say that it did not because it considered that the applicant's case was weak.  I think that the opponent should have had more regard for its registration than to just ignore the matter, especially given that the expense of providing only minimal evidence would have been far outweighed by the benefits attaching to the mark's retention on the Register.  I believe that a prima facie caseof non-use had been established, despite any flaws which may have become apparent, and the opponent ignored that at its peril.

Special circumstances

The opponent has not produced any evidence relating to special circumstances which prevented it from using its mark during the s.23 period in Australia and Mr Marsh did not make any submissions regarding such a possibility.  I therefore cannot find that any such state of affairs existed which prevented it from using the mark.

Discretion of the Registrar

In cases such as I have to decide in the present instance, it is the public interest which is the main determinant for the exercise of the Registrar's discretion to remove or retain a trade mark on the Register.  On one hand, the opponent has implied that it was using the mark during the period but it has not produced a shred of evidence to demonstrate this.  Conversely, the applicant has applied for registration of marks, which include the words ROLLING ROCK, for services related to the serving of beverages.  This raises issues of the potential deception or confusion of the public as to the ownership of the mark if it remains registered in the name of the opponent.  I think that the latter concern is the more relevant in safeguarding the public interest which I feel would be best served by the removal of the mark from the Register.

Decision

The opponent has not, to my satisfaction, discharged its onus of showing why the mark should not be removed on the grounds of non-use during the period in question.  Accordingly, I have decided that the applicant has been successful in its action under para.23(1)(b).  Having so found, I do not need to look at the other part of the applicant's case, that under para. 23(1)(a) that the mark was registered without an intention of good faith to use the mark, and I make no comment on that ground.  In addition, the opponent has not shown to me sufficient reason why I should exercise the Registrar's discretion to retain the mark in the present instance.

Accordingly, subject to any appeal from this decision, I direct that the registration should be removed for all the goods for which it is registered.  Having been successful in its application, the applicant is entitled to its costs and I so award them.

Ian Forno
Hearing Officer

28 October 1994