Manassen Foods Australia Pty Limited v Bespoke Foods Limited

[2010] ATMO 50

TRADE MARKS ACT 1995

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

Re:Oppositions by Manassen Foods Australia Pty Limited to applications under section 92 of the Act by Bespoke Foods Limited to remove Trade Mark numbers 618317(29) & 618318(30) – TASTE OF THAI - in the name of Manassen Foods Australia Pty Limited

Delegate:	Jock McDonagh
Representation:	Opponent: nil Applicant: nil
Decision:	2010 ATMO 50 Section 92 opposition – s92(4)(b) - opponent established use in good faith – Trade Mark to remain on register

Background

1. Manassen Foods Australia Pty Limited (‘the opponent’) is the registered owner of two Trade Marks (collectively “the Trade Mark”), current details of which appear below:

   Trade Mark number: 618317
   Registered from:                   10 December 1993

   Goods:Class: 29 Dried, preserved, canned and frozen vegetables, food products made from fish, food products made from meat, food products made from poultry, food products made from vegetables, soups and preparations, and prepared meals included in this class

   Trade Mark:  TASTE OF THAI       

   Trade Mark number: 618318
   Registered from:                   10 December 1993

   Goods:Class 30 Pasta, noodles, rice and food products containing pasta, noodles or rice, sauces and salad dressings, spices and seasonings

   Trade Mark:  TASTE OF THAI

2. On 6 March 2008, Bespoke Foods Limited (‘the applicant’) filed applications under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the Trade Mark from the Register, alleging it had not been used for any of the registered goods during the three year period ending 6 February 2008 (‘the non-use period’).

3. On 10 April 2008, the opponent filed Notices of Opposition to the removal, claiming that the Trade Mark was in fact used during the non-use period; in the alternative if the Trade Mark was not used such failure was because of circumstances that were an obstacle to the use of the Trade Mark during that period; or seeking the Registrar’s discretion to retain the Trade Mark on the Register.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 23 March 2010.  However, neither of the parties appeared or was represented, with the opponent requesting I determine the matter based on the evidence filed..

   Evidence

5. The following evidence was filed and served pursuant to legislation:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Wayne McIntosh	Financial Director of Opponent	5.03.2009, McIntosh	WM-1 to WM-4

1. The evidence included:

   ·    Bar code verification reports illustrating the goods using the Trade Marks

   ·    Samples of artwork of labels bearing the Trade Marks

   ·    Sample invoices for the goods bearing the Trade Marks dated in August and September 2007.

   Discussion

2. Section 92 relevantly states:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (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 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

3. Under section 100 of the Act, the onus of establishing use of a Trade Mark lies with the removal opponent. To discharge the onus for s94(4)(b), the opponent must provide evidence of a bona fide use of the Trade Mark during the non-use period. In this case, as mentioned, that period ends on 6 February 2008.

4. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

5. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

6. I note that the invoices exhibited in McIntosh are not internal documents and that, in my opinion, are genuine instances of use of the Trade Mark on both class 29 and class 30 goods.

   Decision

7. The evidence satisfies me that there has been genuine commercial use of the Trade Mark with respect to the goods specified in the registration during the non-use period.  The opposition is therefore established and I therefore refuse to remove the Trade Mark.

   Jock McDonagh
   Hearing Officer
   Trade Marks Hearings
   24 June 2010