Malcolm Walter Atwell v Truline (Australia) Pty Ltd

[2001] ATMO 19

TRADE MARKS ACT 1995

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

Re:Oppositions by Malcolm Walter Atwell to applications under section 92 of the Act by Truline (Australia) Pty Ltd to remove trade mark numbers 472784(28) and 508240(28) from the Register for some of the goods for which they are registered.

Background
Applications, under s.92(4)(b) of the Trade Marks Act 1995, for the removal from the Register of registration numbers 472784(28) and 508240(28), in relation to some of the goods contained in their specifications, were filed by Truline (Australia) Pty Ltd (the applicant) on 23 June 1999.  The trade marks covered by the registrations comprise, firstly, the word TRUELINE, in respect of 472784 and covers the statement of goods:

All tables in this class including pool tables, snooker tables and billiard tables, and parts and accessories therefor included in this class,

while, in the case of 508240, it is the following composite mark:

covering the specification of goods:

All goods in this class including, dart boards, and tables including pool tables, snooker tables and billiard tables, and parts and accessories for all of the aforementioned goods.

Calculated from the date of the filing of the non-use applications, the relevant three year period of alleged non-use under s.92(4)(b), in relation to both trade marks, commenced on 23 May 1996 and ceased on 23 May 1999. The applications for removal were accompanied by statutory declarations by Mark Wakeham, dated 23 June 1999, then a patent attorney with the attorneys, Carter Smith & Beadle, attesting as to inquiries he had made into the use of the trade marks and setting out the findings of those inquiries. The applications for removal were advertised in the Australian Official Journal of Trade Marks (the Journal) of 15 July 1999.  Notices of opposition to the applications were filed, under s.96 of the Act, on 15 October 1999, by the owner of the subject trade marks, Malcolm Walter Atwell (the opponent).

The evidence in support of these oppositions comprises statutory declarations by Mr Atwell.  He declares that his firm had used the marks, on a wide range of sporting goods and in a number of Australian states, during the critical period.  This use, he says, included advertisements in the Yellow Pages, hotel magazines and newspapers.  He supplies sales figures of goods under the marks during the s.92 period and, annexed to his declaration, are some photographs of goods bearing the marks, a brochure showing some of the ranges of pool, snooker and billiard tables and associated equipment sold under the marks, a price list which includes TRUELINE goods, and invoices bearing the device trade mark which list particular goods sold.

The applicant's evidence in answer includes a statutory declaration by Michael Moutsias of Moutsias Management Services Pty Ltd.  Mr Moutsias annexes a copy of a report, made by his company to the applicant's attorney, regarding an investigation it had made into the extent of use of the subject marks.  The report outlines the searches made in the Perth and Melbourne editions of the Yellow Pages and a visit made to the premises of the Mal Atwell Leisure Group.  Attached to the report are copies of pages of the various directories, a brochure and photographs of the premises.

The balance of the evidence in answer comprises a statutory declaration by Mark Wakeham.  The declarant gives details about the applicant's own application for registration of the trade mark TRULINE - against which an Examiner of Trade Marks had cited the present registrations.  He says that the inquiries he made into use of these marks had revealed "very little use" of the subject marks.  He details his further actions in relation to the matter, including the commissioning of Mr Moutsias' company to search for use of the marks, and approaches he made to the owner of those marks regarding a restriction of the goods covered by the registrations.  He annexes to his declaration, some of Mr Moutsias' report and copies of correspondence between himself and the opponent's attorney regarding the goods covered by the subject trade marks.

The applicant requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  Mr Kelvin Lord of Lord & Company represented the opponent, while Mr Ben Fitzpatrick of Counsel, instructed by F.B.Rice & Co appeared on behalf of the applicant.

Submissions and analysis
Messrs Lord and Fitzpatrick both made comprehensive submissions in relation to the matter before me.  I will not repeat them in detail here but I will refer briefly to any points made by the respective parties, which I consider might be relevant in explaining my decision.

I find that the wording of the respective applications for removal is, prima facie, ambiguous.  However, I understand from the applicant's evidence, and this was confirmed by Mr Fitzpatrick at the hearing, that that party concedes that the registered owner did use the marks on some goods during the critical period.  However, the applicant does maintain that this use was restricted to pool, snooker and billiard tables, and some related accessories..   I have therefore treated the present applications as seeking the partial removal of the trade marks from the Register, thereby leaving the marks registered only for those particular goods where use can be shown.

The relevant sections of Part 9 of the Trade Marks Act 1995 reads as follows:

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.

Person aggrieved

The threshold question, which needs to be resolved in a matter of an application under s.92 for removal of a registered mark, is whether the applicant is a "person aggrieved" in terms of that section of the Act.  Only such a person can make an application for removal.

Mr Lord argued that the evidence in answer failed to substantiate the opponent's claim that it stands aggrieved, relying for support here on several precedent decisions of the Federal Court and delegates of the Registrar, including Kraft General Foods Inc v Gaines Pet Foods Corporation 34 IPR 198, Puma Industrial Co Ltd v Uno Resourcing Inc. [2000] ATMO 53 (29 May 2000), and Johnson & Johnson v Virbac (Aust.) Pty Ltd [2000] ATMO 107 (3 October 2000). He said that the mere fact that the applicant might have filed an application of its own was not enough - it needed to substantiate its claim as to its being aggrieved. Mr Fitzpatrick said in answer that the Registrar had already determined that the applicant was a person aggrieved in another removal opposition involving the parties, on the basis of the history of disagreement between the parties. The dispute had not been resolved and he argued that the continued existence of the subject registrations, in their present form, disadvantaged the applicant in both a legal and practical sense.

The criteria for determining whether the applicant is a "person aggrieved" under the present Act has not altered from that considered in relation to s.23 of the Trade Marks Act 1955.  The meaning of the term was defined, for the purposes of that section, by McLelland J in The Ritz Hotel Ltd v Charles of the Ritz and Another 12 IPR 417 at p.454:

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

As Mr Lord submitted, in the Kraft Foods v Gaines Pet Foods case, supra, Sheppard, Tamberlin and Sackville JJ held that the mere fact that a person has filed an application for removal of a trade mark may not be sufficient to establish that a person is "appreciably disadvantaged in a legal or practical sense" by the continued registration of an identical or deceptively similar mark.  However, I think that the present instance can be distinguished from that in Kraft v Gaines, supra. This is because, in that case, which was decided in relation to s.23 of the Trade Marks Act 1955, the applicant for removal had relied solely upon the fact that it had filed applications of its own, when claiming it was a person aggrieved, and had not provided any clear evidence of either use of those marks, or an intention to use them.  Thus it had not unambiguously shown that the continued presence of the challenged mark on the Register led to any disadvantage for it.

In the present case, the applicant for removal claims its status as a "person aggrieved" on the ground that not only is it the applicant for registration of the trade mark TRULINE in class 28 but also that the present registrations had been cited as a bar to that mark's acceptance, thus denying it registration.  This situation reinforces an earlier finding I made, as a delegate of the Registrar, in relation to the previously referred to opposition to removal of registration number 508240, that the applicant here was a person aggrieved.  That ruling was on the basis of my assessment that an ongoing dispute between the parties gave the removal applicant a real interest in removing the subject trade mark from the Register.  I cannot see how this situation could have changed - especially given that the parties there are still obviously locked in argument in the present case.

All of this is sufficient, in my opinion, to show that the applicant for removal has sufficient interest in the proceedings to be a “person aggrieved”.  Accordingly, I find that the applicant is such a person and qualifies to apply for removal of the present trade mark from the Register.

Opposition

In relation to an opposition to a non-use application under the 1995 Act, s.96(1) allows:

96.(1) Any person may oppose an application under section 92 by filing a notice of opposition with the Registrar or the court, as the case requires.

Unlike s.92.(1), where only an aggrieved person may apply to have a mark removed from the Register, s.96.(1) allows any person to oppose that application.  In this instance, as with the majority of oppositions to removal, it is the registered owner of the registration involved which has opposed the action sought.

Onus

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:

...

(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.

...

(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.

Under s.100, the onus is clearly upon the opponent here to establish that the registered owner did use the trade marks on the goods for which removal is sought, during the relevant period under s.92(4)(b), or that circumstances existed that were an obstacle to that use. Here, the applicant has alleged, in the case of registration number 472784, that there had been no use in relation to "all tables in class 28" during the critical period. I have already stated that I have inferred this as meaning that it seeks to have those words removed from the statement of goods for which the mark is registered. In the case of registration number 508240, I have decided that the applicant is seeking to have the words "all goods in Class 28" excised from the specification of goods. In both cases, the opponent has claimed the opposite and clearly has the burden upon it to show that this is the case.

Use

Section 7 of the Act says:

Use of trade mark

7.(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:For prescribed court see section 190.

(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

(3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

(4) In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5) In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

Mr Lord submitted that the opponent was a leading supplier in Australia of billiard, snooker and pool tables, and associated accessories.  However, it also had a wider interest in various game tables, soccer and golf balls, and other sports equipment.  He said that the evidence showed that it had used the trade marks on a reasonably wide range of goods, within the s.92 period.  Because of this, he said, while he did agree that the evidence did not show a trading history in all of the items which could conceivably be covered by the present statements of goods of the two registrations, it would be unreasonable and excessive to restrict the present descriptions.  This was especially so, he said, given both parties' marks had coexisted in the market place for some time with no reported instances of deception or confusion.  He said that the opponent had already offered to exclude those goods of particular interest to the applicant from the registrations but that this compromise had been rejected by the applicant.

Mr Fitzpatrick said in reply that the applicant had been forced to make applications to remove the opponent's trade marks because that party had done nothing at all to restrict its goods.  This lack of action by the opponent, he said, had continued, despite the applications to remove having been on foot for some time.  He said that the present statements of goods, which covered all tables and all goods, respectively, were too wide and that they should be limited to those on which the marks had actually been used.  He conceded that the opponent had appeared to have used the marks in relation to snooker, billiards and pool tables and associated equipment, during the critical period but that any claims of use on other goods, such as soccer balls, golf balls and table tennis tables, had not been substantiated.

I have carefully considered the evidence and arguments put forward by the opponent in this case of use of its marks on goods during the critical period under s.92.  The evidence comprises Mr Atwell's declaration and the attachments to it.  It would seem from all of this that the subject trade marks have been used by the opponent, or by an organisation associated with him, in relation to pool, billiard and snooker tables and associated equipment.  These, according to the evidence, appear to be the goods of interest for the applicant and his companies.  The situation outside of these goods is not so clear.  Mr Atwell declares as to use of both of the marks on a variety of sporting goods and points to various attachments to support his claims.  However, these merely include several photographs of goods and premises, and also a brochure bearing the TRUELINE marks which do not, on their own, substantiate use during the s.92 period.   Although they do seem to relate to the opponent's activities in relation to the trade marks, there is no reference in those exhibits to dates of use which might fall within the critical period.  There is a copy of a price list of goods, with some reference to the TRUELINE mark, inter alia, - but only on snooker cues.  However, once again there is no reference to dates in the document.  Then there is a collection of copies of "Mal Atwell Pool and Fund Raising" invoices which do include dates from inside the critical period under s.92.  However many of these invoices show sales of goods which are referred to by other manufacturers' trade marks, e.g., ADINI golf balls, NORDAR dart boards, and UNICORN dart boards.  I allow that all of the invoices do include the TRUELINE device mark in the top right corner.  However, in my opinion, such a placement is not the kind of use of a trade mark on, or in relation to, specific goods which might defeat an action of alleged non-use.  Notwithstanding the above, I agree with Mr Fitzpatrick who conceded that the evidence does indicate use by the opponent of its trade marks on pool, snooker and billiard tables and some related accessories such as cues.  However, as I have already said, the evidence is deficient in convincing me that the marks were used on the wider range of goods covered by the respective registrations.

Therefore, given the onus, which rests squarely with the opponent under the Act to persuasively show use, has not been convincingly met, I can only find that the trade marks were not used on "all tables" in Class 28, with respect to registration number 472784, or "all goods" in Class 28, in relation to number 508240.

Registrar’s discretion

Notwithstanding my above finding, under the terms of subsection 101(3) of the Act, the Registrar has a discretion not to remove the trade marks under attack.  This discretion hinges on the Registrar being satisfied that even though the removal grounds have been made out, it is reasonable to leave the trade marks on the Register for all of the goods for which they are registered.

Determination of opposed application—general

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

(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.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

In deciding an opposed removal application, the Registrar (or a court) is called on to exercise a discretion.  The Registrar or a court "may" remove a registration.  The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz, supra, 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.

However, the decision of the Registrar is an administrative one, unlike the decision of a court in what may otherwise be the same matter - see the decision of Jacobs J in The Queen v Quinn, ex parte Consolidated Food Corporation 138 CLR 1 at 10. Thus, there may be matters which affect the exercise of the discretion by a court but which are beyond the Registrar’s competence to decide.

Nevertheless, as was said by Deputy Registrar Hardie, as the delegate of the Registrar, in Figgins Holdings Limited v Beltrami SpA, 46 IPR 411, at 418:

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 have had regard to the evidence served in this matter, and to the submissions made by the legal representatives from both sides at the hearing, in deciding whether there is sufficient reason to leave the present trade marks on the Register for all of the goods covered by their specifications.  Mr Lord said that, in line with the finding of the Registrar's delegate in Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988)13 IPR 323, I should take the following into consideration. These are whether anyone has been, or will be likely to be deceived by the marks remaining on the Register for the goods for which they are registered; the significance of the continued use in good faith of the trade marks by the entitled user; and that technicalities, defects and legal formalities might be overlooked if the public interest is not adversely affected.

On his part, Mr Fitzpatrick said that the applicant merely wanted the goods covered by the registrations to be restricted so that the Register accurately recorded the actual goods sold by the registered proprietor.

With respect to the first of the criteria, pointed to by Mr Lord as being relevant here, I note that he has claimed that if the present statements of goods are restricted, it may well lead to the acceptance of the applicant's TRULINE application, which covers bat tennis and soccer balls - both currently sold by the opponent.  He said that this, in itself, might be likely to deceive.  However, the acceptance, or not, of the applicant's mark will be assessed by the relevant examiner of that case, who will separately consider any possible deception or confusion.  It therefore has no bearing on the present matter.  Further, I note that the opponent has not relied upon any supporting material at all, e.g. declarations from independent traders, surveys, or the like, to show whether or not there had been any deception in the market place.

On the second point, I agree with Mr Fitzpatrick that the opponent does appear to have used the trade marks on some of the goods included in the respective specifications of goods.  However, despite Mr Lord's claims of use of the mark on goods outside those shown in the evidence, I am not satisfied that this is, in fact, the case.  This is because I believe that the evidence is deficient in convincingly showing that goods, other than the snooker type products previously listed, have been sold under the subject trade marks.

On the last consideration, the onus is squarely upon the opponent here to put forward a convincing case that there was any use of the trade marks at all on the wide range of goods claimed in the specifications - outside of the goods of interest.  I think that the evidence fell far short of this and, despite Mr Lord's attempts to rectify this in his submissions at the hearing, there are serious deficiencies in the opponent's case which far outweigh any minor shortcomings which might have been otherwise overlooked.

In further considering the Registrar's discretion, I note that the opponent did not point to any circumstances which might have prevented use.  It merely stated that it had used the marks during the relevant period but then produced evidence which, in my opinion, was not convincing enough to support that assertion for all of the goods covered by the specifications.  I cannot see any public interest in leaving trade marks on the Register for the very wide statements of goods claimed which appear, on the evidence and submissions before me, to have only been used in Australia on a narrow range of goods.

Conclusion
I find that the opponent has not, to my satisfaction, discharged the heavy onus placed on it under the Trade Marks Act 1995 of showing why the trade marks, the subject of these registrations should not be removed from the Register for those goods for which use, during the period in question, was not convincingly shown.

Accordingly, I direct, subject to any appeal from this decision, that the trade marks, covered by registration numbers 472784 and 508240, should be removed for some of the goods currently included in the specifications.  The descriptions of goods covered by the trade marks will then accord with those goods for which some use was actually shown during the s.92 period of alleged non-use.  The statements of goods for both registrations numbers 472784 and 508240 should now read:

Pool tables, snooker tables and billiard tables, and parts and accessories therefor included in this class.

Costs
Both parties sought costs in the matter.  However, as the applicant has been the successful party in the present instance, it is entitled to his costs.  Thus, I award costs against the opponent, in accordance with the Official scale.

Ian Forno
Hearing Officer

8 March 2001