Marcel Lema v Fondo Pty Ltd

[2019] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by Marcel Lema to application under section 92 of the Act by Fondo Pty Ltd for removal of trade mark number 1409933 (25, 41) – GRAN FONDO (and Device) - in the name of Marcel Lema

Delegate:	Nicholas Smith
Representation:	Opponent: Brian Goldberg, Trademark.Ventures Applicant: Self-represented
Decision:	2019 ATMO 14 Trade Marks Act 1995 (Cth) ) - section 96 opposition: s 92(4)(b) application for removal - Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 1 March 2017 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Fondo Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods and services in classes 25 and 41 for which the trade mark is registered, that is in effect, an application for complete removal of the trade mark.

Registration No.	1409933
Lodgement date	04 Mar 2011
Goods  and Services	Class 25: Apparel (clothing, footwear, headgear); arm warmers (clothing); articles of clothing made from wool; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; beach clothing; casual clothing; clothing; clothing for sports; clothing for surfing; clothing of leather; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; cyclists' clothing; denims (clothing); girl's clothing; gloves (clothing); jackets (clothing); jerseys (clothing); knitted clothing; knitwear (clothing); ladies clothing; mantles (clothing); men's clothing; motorcyclists' clothing (other than for protection against accident or injury); ready-made clothing; ready-to-wear clothing; ski clothing (other than for protection against injury); sports clothing (other than golf gloves); stuff jackets (clothing); thermal clothing; thermally insulated clothing; waterproof clothing; waterproof clothing; water-resistant clothing; weather resistant outer clothing; weatherproof clothing; windbreakers (clothing); women's clothing; woollen clothing; woven articles of clothing Class 41: Advisory services relating to the organisation of sporting events; arranging of sporting events; booking of tickets for sporting events; event management services (organization of educational, entertainment, sporting or cultural events); handicapping or seeding of sports events; management of cultural events; management of educational events; management of entertainment events; management of sporting events; organisation of ceremonial events; organisation of entertainment events; organisation of musical events; organisation of sporting events; organisation of vehicle racing events; organising events for cultural purposes; organising events for entertainment purposes; organising of entertainment and social events; organising of equestrian events; production of sporting events; providing facilities for sports events; provision of recreational events; provision of sporting events; rental of equipment for use at sporting events; timing of sports events (‘Registered Goods and Services)
Owner	Marcel Lema
Trade Mark	(‘Trade Mark’)

1. Marcel Lema (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 5 May 2017 and a Statement of Grounds and Particulars (‘SGP’) on 1 June 2017.  The Applicant filed a Notice of Intention to Defend on 15 July 2017.

2. The Opponent subsequently filed evidence in support of its opposition to removal, which will be discussed in more detail below.  The Applicant chose not to file any evidence in answer. 

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. By letter issuing from IP Australia on 2 March 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar of Trade Marks for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to rely upon. On 2 April 2018, the Applicant filed written submissions (‘Applicant’s Submissions’).  On 16 July 2018, the Opponent filed its written submissions (‘Opponent’s Submissions’). 

   5. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support

   ·The Applicant’s Submissions; and

   ·The Opponent’s Submissions.  

   The Law

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of the matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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.

   7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 1 February 2017 (‘relevant period’).

   8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (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
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; 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.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   11.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [4] Nodoz Trade Mark (1962) RPC 1, 7.

   Opponent’s Evidence

3. The Opponent’s evidence in this matter consists of a declaration made on 20 September 2017 by Marcel Lema, the Opponent (‘Lema Declaration’) with Annexures ‘Evidence 1’ to ‘Evidence 15’.  The Lema Declaration contains no statements, rather it simply lists the Annexures.  As such my description of the evidence below will simply be a description of the Annexures to the Lema Declaration.  The Opponent’s evidence is accompanied by a letter from the Opponent’s representative however as it is not in the form of a declaration and there is no basis to infer any direct personal knowledge, to the extent relevant, this letter shall be treated as submissions.   

4. The Lema Declaration contains the following:

   ·An undated letter from the Opponent stating that he has used the Trade Mark for 9 years and seeks to use the Trade Mark further.

   ·Undated photos of

   owhat purports to be a website displaying the Trade Mark;

   othe Beach Road Cyclist Facebook page which features the Trade Mark. 

   oThe Beach Road Cyclist twitter page that states that it is funded by “Granfondo”

   ·A business name registration for ‘GRANFONDO’ dating from 2007 and a company registration for GRANFONDO PTY LTD.

   ·An undated search report for ‘granfondo australia’ showing images of cyclists and one image of the Trade Mark.

   ·A letter dated 1 June 2017 from the director of Bright Alpine Sporting Events stating that ‘granfondoTM’ has worked with BASE in event management.

   ·A letter from Murray Thompson MP, Victorian State Member for Sandringham stating that the Trade Mark owner has been an active spokesman for cycling interests along Beach Road, tweets under the name @BeachRdCyclist and that he is advised that his ‘Grandfondo emblem’ is also used for the purpose of sales of cycling clothing’

   ·Letters from the Yarra Bicycle Users Group and Cycling Victoria indicating that the Owner has been a supporter of the respective groups.

   ·Five invoices in 2014-16 to Base Events, Crisp Projects and The Bicycle Fitting Store for what appear to be cycling clothing.  The invoices are expressed to be from ‘Granfondo Pty’ and display the Trade Mark.  It is not clear if the clothing referenced in the invoices bears the Trade Mark.

   ·A bank statement dated 30 November 2016 for Granfondo Pty Ltd.  No transaction details are included.

   ·Undated photos of clothing, some of which appear to bear a swing tag displaying the Trade Mark.

   Discussion

5. To successfully oppose the Application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use) or, in the event that the Opponent fails to establish such use, the Registrar exercises its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

6. I find that the Opponent has failed to establish that the Trade Mark was used in Australia by the Opponent during the relevant period.   The undated annexures to the Lema Declaration are of little relevance to showing use during the relevant period, nor is the evidence of a registered business name and incorporated company under the granfondo name; this evidence does not show use of the Trade Mark in the relevant period.  The Lema Declaration does not establish a connection between Granfondo Pty Ltd and the Opponent or a licence between them, such that any use of the Trade Mark by Granfondo Pty Ltd would be authorised use by the Opponent.  Furthermore a number of the letters annexed to the Lema Declaration show that the Opponent was a prominent advocate for cycling and cycling organisations; they do not show the use of the Trade Mark, by the Opponent, in the course of trade, for the Registered Goods and Services.

7. The only potentially relevant evidence of use of the Trade Mark consists of the 5 invoices from ‘Granfondo Pty’ for a small amount of clothing, and letter from the director of Bright Alpine Sporting Events stating that ‘granfondoTM’ has worked with BASE in event management.  With respect to the former, the invoices do not establish use of the Trade Mark in the course of trade by the Opponent; they are sent from ‘Granfondo Pty’ and as stated above there is no evidence to establish that any use by Granfondo Pty Ltd is use authorised by the Opponent.  Furthermore even if I were satisfied that such use was authorised use, it is not clear that the clothing sold bore the trade mark and hence the Trade Mark was used for the Registered Goods, as opposed to some form of clothing retail.

8. With respect to the letter I broadly agree with the Applicant’s submissions which note that the Opponent has failed to produce any evidence of engagement or provision of the Registered Services under the Trade Mark, including service agreements, engagement letters, or invoices for services provided.  Such material, if it existed, would undoubtedly be available to either the Opponent or the director of Bright Alpine Sporting Events and its absence is telling.  To the extent that the Opponent has provided some services to Bright Alpine Sporting Events it is ultimately unclear whether these services were provided in the course of trade or amounted to casual assistance, similar to the assistance that the Opponent, in his personal capacity, appears to have provided to a number of other cycling and community organisations.  As noted in paragraph 12 above, if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]  Such convincing proof is manifestly absent.

   [5] Nodoz Trade Mark (1962) RPC 1, 7.

9. I find that the Opponent failed to establish that the Trade Mark was used in Australia for the Registered Goods and Services in the relevant period. The Opponent has failed to satisfy its onus under s 100(3)(a) of the Act

   Obstacles to use

   20. The Opponent does not submit, not does its evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act. It is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Registered Goods and Services to remain on the Register.

   Registrar’s Discretion

   21.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[6] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [6] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[7]

   [7] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[8]

   [8] Ibid [171]-[172].

10. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[10] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[11]

    [9] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [10] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [11] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

    23.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[12]

    [12] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

1. In the present case, although the Opponent’s Submissions and Lema Declaration express an intention to grow and expand the business under the Trade Mark, there is no evidence of any significant reputation in the Trade Mark, no evidence of sales by the Owner of the Registered Goods and Services after the relevant period or evidence that the Trade Mark has been used by the Opponent on similar/closely related services/goods.

2. While the Opponent may have a limited private commercial interest in maintaining the registration of the Trade Mark, given the very limited to non-existent reputation of the Trade Mark in Australia, the Opponent’s private commercial interest is insufficient to outweigh the public interest of the integrity of the Register.  In those circumstances I am not prepared to exercise the Registrar’s discretion.

   Decision

   26.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all the goods and services for which it is registered.

   27.     Accordingly, I direct that registration be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   28. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 1409933 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   1 February 2019