M. and D. Davidson v B. Daisley, D. Wilson, T.Gaze

[2003] ATMO 11

TRADE MARKS ACT 1995

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

Re:Oppositions by M. and D. Davidson to applications under section 92 of the Act by B. Daisley, D. Wilson, T. Gaze to remove trade mark number 640459(41) - KAHVAS JUTE - in the name of M. and D. Davidson.

DATE OF DECISION:	12 Feb 2003
DELEGATE:	T. E. Williams
DECISION:	Section 92 Removal Application: trade mark to be removed from Register.

Background

Trade mark registration 640459 is in the name of M. and D. Davidson.  That registration, granted in March 1997, has had effect since the filing date, 13 September 1994.  I will refer to the owners as the Davidsons in what follows.

The trade mark in question is the words KAHVAS JUTE, and the trade mark is registered for the following services in class 41: Entertainment services being in the nature of a rock band including live shows and recording music of such band.

On 30 November 2000, Messrs B. Daisley, D. Wilson and T. Gaze (the removal applicants) applied under s 92(4)(a) and (b) of the Trade Marks Act 1995 (the act) to have the trade mark removed from the register.  In simple terms, they claim that the trade mark was not used, in trade, for the relevant services, either at all (s 92(4)(a)) or (under s 92(4)(b)) in the three year period beginning on 30 October 1997. 

The Davidsons have opposed the removal application, on the grounds that:

• as a threshold question, the removal applicants do not have the necessary standing as persons aggrieved

• the trade mark has been used during the three year period beginning on 30 October 1997.

Both sides have filed evidence to support their positions. 

Evidence

The Davidsons' Evidence in support

Declaration by	Dated	Annexures
Dannie Davidson	7 August 2001	A-C
Maureen Davidson	7 August 2001

The Removal Applicants' Evidence in answer

Declaration by	Dated	Annexures
Bob Daisley	24 August 2001	BD1-BD4
Bob Daisley	23 January 2002	BD1-BD3
Bob Daisley

The Davidsons' Evidence in reply

Declaration by	Dated	Annexures
Dannie Davidson	25 March 2002
Maureen Davidson	25 March 2002	A-C
Craig Doyle	25 March 2002

Further evidence:

There is also some further evidence, filed by the removal applicants and introduced with my permission under regulation 5.15.  This consists of the declaration of Bob Daisley dated 16 May 2002 and including annexures A to C.  Of these latter, I have not given any weight to annexure C.  The removal applicants' lawyers, Cutler Hughes and Harris, made a decision not to serve that annexure on the Davidsons.  It therefore stands as material on which the removal applicants are not entitled to rely.

Purported Overview:

The lawyers for the Davidsons, the firm of McDonald Johnson, have attempted to rely on what they term an Overview.  This purports to be final written submission of argument, a thing that both parties were invited to submit as an alternative to appearing at a hearing.  However, it contains new evidence that appears to be, by and large, extraneous to the issues to which I will come below.  That material was prepared and filed after the lawyers in question had been told that the evidence stages were closed.  It has not been introduced by the formal process set out in regulation 5.15, to which I myself drew the attention of the lawyers in July 2002.  I therefore give the evidentiary part of the material no weight.

Evidence in general

There is a great deal of contradictory material in this evidence.  It is safe to say that the band Kahvas Jute was at its prime in the 1970's.  At one stage, the lineup included all of the removal applicants and Mr Davidson.  It appears that the band was probably started by the four, though the removal applicants' evidence seeks to minimise the role of Mr Davidson.  The evidence is not such as to support any clear finding about who, at that time, was the owner of the intellectual property in the trade mark.  There is apparently dispute also about the extent of the copyright held by the band members in various songs, and it is clear that there is a high level of distrust between various members or former members.

The filing of the application for registration of the trade mark has been the cause of dispute, though precisely when this dispute started is not clear. The application that gave rise to the currently-attacked registration under the Trade Marks Act was filed by the Davidsons, who listed themselves as the only owners, on 13 September 1994. It is not clear just when the removal applicants first became aware that they were not recorded as owners of the trade mark. On the other hand, it is undisputed that Dennis Wilson has registered KAHVAS JUTE as a business name, listing the proprietors as Mr Daisley and himself. That business name registration has stood since about December 1998.

Apparently, however, the removal applicants had Mr Davidson's interests in mind when they nominated him - but not Mrs Davidson - as one of the owners of trade mark application 857950.  That application is for the trade mark in question and for, among other things, similar services.  As might be expected, that later application in blocked by the registered trade mark now under attack.

I will deal in more depth with some of the specifics of the evidence, below.

Legislation:

I will set out only the provisions most relevant to the decision of this particular matter.

Application for removal of trade mark from Register etc.

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.

(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.

Burden on opponent to establish use of trade mark etc.

100.(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

Note 1:  If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:  For file and registered owner see section 6.

(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

Note 1:  If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:  For registered owner see section 6.

(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

Note 1:  If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:  For registered owner see section 6.

Determination of opposed application—general

101.(1) Subject to subsection (3) and to section 102[1], if:

[1] This provision deals with localised use of an attacked trade mark when the removal applicants are already, or may properly be allowed to become, registered owners of a deceptively similar trade mark. It does not apply to this matter.

(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

Issues and Decision

Person Aggrieved

Given the terms of s 92, the standing of the removal applicants is of fundamental importance under both s 92(4)(a) and (b). The Davidsons were granted permission to amend the notice of opposition so as to bring that matter into question. The removal applicants have addressed this issue in their evidence, and it can be readily dealt with.

Mr Daisley has asserted that the removal applicants wish to re-form the band, playing under the name KAHVAS JUTE, either with or without Mr Davidson.  The evidence also shows that the removal applicants are quite well aware that they could infringe the currently-attacked registration if they did so.  Mr Davidson's strongly-held view is that the removal applicants are not entitled, either morally or legally, to make any claim to the trade mark.  However, I cannot come to a reliable finding on those issues, which are well outside the matters to hand and are not supported by evidence that would support a safe finding.  Thus, the evidence of the intended purpose of the removal applicants is sufficient to show that they are aggrieved by the registration and entitled to file the removal application.

Non-use in terms of s 92(4)(a)

• Bad faith

Under the 1995 legislation, there is a reversed onus in some parts of these matters.  The removal applicants do not, for instance, need to make a prima facie case that the trade mark has not been used.  However, the reversal does not extend to absolutely all aspects of the provision[2].  In so far as the removal application is based on allegations of bad faith, the burden of proof is still on the applicants.  Thus, it is not for the Davidsons to prove their good faith in filing the application in their names only.  Rather, if bad faith is alleged, it is on the removal applicants to show it.

[2] See the discussion of s 100 in Trade Mark Law in Australia, Elkington, Hall and Kell

Mr Daisley has declared (16 May 2002) that, even after the grant of registration of the trade mark in March 1997, he was unaware that the registration stood in the names of the Davidsons only.  This is a direct contradiction of the statement of Mr Davidson in his declaration of 25 March 2002 but there is no evidence from any of the other removal applicants.  I think the only safe finding is that there is insufficient evidence to support a conclusion of bad faith on the part of the Davidsons.

• Intention to use:

Mr Davidson has declared that "the primary reason my wife and I applied for trade mark registration was because we had the intention of using the name".  It may well be that this statement does not satisfy the removal applicants.  They impute bad faith to Mr Davidson and see the application as depriving the removal applicants of their rights of co-ownership.  However, as I have said above, they have simply not made a sufficient case of bad faith.  This failure leaves Mr Davidson's statement as to his intention completely intact.  Mr Davidson has met the onus upon him in that respect.

• Use post 13 September 1994 and up to 30 October 2000

The period defined by s 92(4)(a) began on 13 September 1994, the date the Davidsons filed their application to register the trade mark. It ended on 30 October 2000, one month before the removal applicants filed their application to remove the Davidsons' registration. Has the trade mark KAHVAS JUTE been used, as a trade mark, in the course of trade, in that period?

I must, for the benefit of the parties, stress the importance of the qualification that the trade mark must be use as a trade mark, an indication of the origin of services offered in trade.  Words can be used in various ways.  It is not enough that the band members themselves were using the words as a potential name while debating the matter among themselves, or that the Davidsons had nothing more than an intention to offer services at some future time under the trade mark.

In the lack of a detailed argument, it is possible that this explanation, which goes to the heart of the present matter, will be enough.  However, as both parties clearly have strong views, I will quote from a relevant court decision.  To paraphrase Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 at 443-4, noting that I have added emphasis here to avoid misleading either of the parties:

The cases establish that it is not necessary that there be an actual dealing in services bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported services which have not actually reached Australia have been offered for sale in Australia under the mark ... or that the mark has been used in an advertisement of the services in the course of trade: ... In such cases, however, it is possible to identify an actual trade or offer to trade in the services bearing the mark or an existing intention to offer or supply services bearing the mark in trade.

Much of the evidence focussed on a performance at the Lewisham Hotel.  This was in 1991 and is thus irrelevant to the tests under s 92.  Equally irrelevant is the undisputed evidence that in early 1994 the Davidsons sought a recording contract with the recording companies Sony, EMI, Festival and Polydor.  Mr Davidson's first declaration touches on events in 1999.  The picture of these is clearer from Mrs Davidson's declaration, and I will leave them be for the moment.

In July 1994, the Davidsons met with Sebastian Chase of Phantom Records.  That company provided the Davidsons with costings for the production and distribution of a CD.  However, when these were prepared, Mr Wilson initially declined to take part.  Subsequently, in August 1994, Mr Wilson would not accept the terms on which the Davidsons proposed he would take part.  On legal advice, the Davidsons then decided to file the application that has resulted in the now-attacked registration.

Mr Davidson's earlier declaration of 7 August 2001 mentions the printing and supply of 70 t-shirts with the words KAHVAS JUTE on the front and back.  The order was placed on 20 September 2000 and, if the declarants (Mrs Davidson's declaration is identical on this point) are correct in their details, printed and supplied that same day.  However, the mere existence of t-shirts with the words KAHVAS JUTE on them is by no means sufficient to establish use as a trade mark in relation to band services.  Nothing is shown about what precisely was on the t-shirts or, more importantly, how or if they were used before the period defined by s 92 ended on 30 October 2000.

Mr Davidson also declares:

We have started to book KAHVAS JUTE.  We have done one gig at Charing Cross Hotel Charing Cross 24/4/01 we are also booked to perform at Swansea Hotel 6/10/01 and a corporate gig at Noah's on the Beach 1/12/01 Newcastle and we are waiting for more confirmations.  Plus we have invested in a live CD.

However, the period relevant to s 92 ended, as I have said, on 30 October 2000.  Mr Davidson's declaration was made after that date and he has not been specific about any acts before then that might have amounted to use of the trade mark.

His second declaration goes on to attempt a detailed rebuttal of material that is disclosed in the Daisley declarations.  While Mr Davidson finds some of the statements in Mr Daisley's declarations to be incorrect, none of his criticism is directly relevant to the present heading.

The earlier declaration of Maureen Davidson does not go to details of the use of the trade mark by the Davidsons.  Her later declaration shows information about a possible re-forming of the band.  It seems that, in August 1999, there were telephone discussions involving one or other of the Davidsons and both Mr Daisley and Mr Wilson.  The subject was a performance of KAHVAS JUTE in which Messrs Daisley and Wilson might take part.  This, however, did not proceed beyond the proposal stage.  It was simply a possibility:  that a number of musicians might join together (on terms that were never agreed) and re-form a band for what may have been "a show at the Globe featuring KAHVAS JUTE".  Nothing came of this, though it seems that the Davidsons were serious about their proposal.  There are no details at all about what the show was or (more importantly) if or how it was promoted to anyone outside the (potential) band.  I accept Mr Davidson's statement that the unsatisfactory ending of the proposal was the ultimate driver for filing the application to register the trade mark.  I infer that the entire matter was closed and finished by 13 September 1994.

The final declaration, that of Mr Doyle, goes to the events of August 1999.  It establishes no more than that Mr and Mrs Davidson were serious about their attempts to reform the band and incorporated a company to that end.  (Although it is not strictly relevant, I accept statements of the Davidsons that their motivation in doing this was to further their objective of keeping the trade mark out of the hands of the removal applicants.)  Mr Doyle gives no details about the use of the trade mark by the company or the Davidsons. 

I find, therefore, that there has been no use of the trade mark, in the requisite sense, by the Davidsons in the time since it was applied for and up to the end of the relevant period defined as above. The Davidsons have, I note, elected to oppose removal on a limited ground, alleging only that the trade mark was used in the three year period beginning on 30 October 1997 and ending on 30 October 2000. That ground ignores the wider scope of the application filed under s 92(4)(a) but, lest this matter go on appeal, I state that the evidence before me would not support even a less restrictive ground of opposition.

Discretion

Where a ground is established under s 92, I none the less have the discretion to allow the trade mark to remain on the register.  However, the proper exercise of that discretion by the registrar will generally be as per Ritz Hotel v Charles of the Ritz, (1988) 12 IPR 417, at 482:

... if the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and ASTRONAUT trade mark [1972] RPC 655 at 672.

And as was said by Deputy Registrar Hardie in Figgins Holdings Pty Ltd v Beltrami SpA, (1998) 46 IPR 411 at 418-419:

Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  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.

I find no such circumstances present here.

Conclusion:

I have found that the Davidsons did not use the trade mark in the requisite sense in the time since it was applied for and up to 30 October 2000. Even if I am wrong in my assessment of their intentions in applying to register the trade mark - relevant only to s 92(4)(a) - my conclusion would still support removal under s 92(4)(b). My decision is therefore that the trade mark should be removed from the register unless an appeal is filed and a copy served on the Registrar of Trade Marks within the time allowed under the Federal Court rules. In the even of an appeal, the registration will remain until the appeal is either decided or discontinued.

Terry Williams
Hearing Officer
Trade Marks Hearings
12 February 2003