Mario Valention SpA v Globelegance BV

[1992] ATMO 45

trade marks act 1955

decision of a delegate of the registrar of trade marks

Re:Opposition by GLOBELEGANCE B.V. to an application under Section 23 of the Act by MARIO VALENTINO S.p.A to remove Trade Marks 291323 and 291325 from the Register

Applications under s.23 of the Act to remove trade mark numbers 291323 and 291325 from the Register were lodged on 31 May 1989 by MARIO VALENTINO S.p.A. (the applicant), an Italian joint stock company.  The applications were opposed on 21 May 1990 by the registered proprietor GLOBELEGANCE B.V. (the opponent), a Dutch company.  The marks comprise the word VALENTINO, in signature form, for "All goods in this class other than tobacco products of all kinds" in Class 34 and "All goods in this class" in Class 14, respectively.

The grounds relied upon by the applicant are as follows:

"that up to one (1) month before the date of this application, a continuous period of not less than three years has elapsed during which the trade mark was a registered trade mark and during which there has been no use in good faith of the trade mark in relation to those goods, goods of the same description as those goods, or services that are closely related to those goods, by the registered proprietor or a registered user of the trade mark in Australia."

The stated grounds of the opponent are:

1. The applicant is not a person aggrieved within the meaning Section 23 of the Trade Marks Act.

1. The Applicant has made an Agreement with the Opponent and the making of the Section 23 removal application is contrary to that Agreement.

1. The Opponent denies the grounds stated in the Section 23 application.

1. The Trade Mark has been used in good faith in Australia and the three year period in the sense relevant to the Section 23 application.

1. The Opponent is the proprietor of associated Australian Trade Mark Registrations.

1. Without prejudice to the foregoing, if it is determined that there has been no relevant use in good faith of the Trade Mark in Australia this has been due to special circumstances and not due to an intention not to use or to abandon the Trade Mark.

1. The Registrar should having regard to matter in any one or more of the foregoing paragraphs or otherwise in the exercise of his discretion refuse the Section 23 application and award costs to the Opponent.

Service of the applicant's evidence in support, comprising a declaration by Bruce Tritton and several appendices, was made on the opponent on 28 May 1990.  The opponent's consequent evidence in answer, comprising a declaration by G.F.Nicolai and several exhibits, was served on the applicant on 27 August 1991.  The applicant did not serve any evidence in reply in the matter.

The applicant subsequently applied for a hearing and the matter came before me in Melbourne on 2 June 1992.  Representing the applicant was Mr J.Hawker of Griffith Hack & Co, Patent and Trade Mark Attorneys, while appearing for the opponent was Mr D.Fitzpatrick of Phillips Ormonde & Fitzpatrick, Patent Attorneys.

Mr Hawker began by submitting that the applicant was a person aggrieved by the present registered mark as required by s.23 by virtue of an examiner's citation of the present marks against its own application, 441246(34) for the words MARIO VALENTINO and the statement of goods which embraced all goods in Class 34.  This clearly established the applicant as a person aggrieved.  This claim follows the decision of Chief Assistant Registrar Farquhar in Estate Agent Co-Op Ltd v National Association of Realtors (1988) AIPC 90-470 which re-affirmed the decision in Powell's Trade Mark (1894) 11 RPC 4 where Lord Watson said that any trader is in the sense of the statute aggrieved whenever the registration of a particular trade mark operates in restraint of what would otherwise been his legal rights. He said that there were some claims by the opponent that the applicant had acted in a manner contrary to a co-existence agreement, and it would appear that the Registrar was being asked to exercise his discretion and refuse to give standing to the applicant because of alleged misconduct. However, the applicant had rights under this agreement to register its own mark and, in any event, the case law tended to indicate that misconduct is largely irrelevant to an applicant's status as a person aggrieved.

He said that the applicant must establish a prima facie case of non-use.  This had been done through the statutory declaration of Bruce Tritton of 27 June 1989 which contained a list of enquiries made of people in the jewellery, tobacconist and gem merchant trades.  These enquiries were made in all States and the Northern Territory of people who had considerable experience in the relevant industries.  This, he submitted, was sufficient to establish a prima facie case for removal of the marks.

Commenting on the opponent's evidence in answer, Mr Hawker said that, where it related to the evidence of use, this consisted of a number of invoices and an advertisement where the only instances of use were references to the word VALENTINO and not the marks as lodged.  This, he submitted, showed that the signature versions of the marks had not been shown to be used.  There was no debate that the word VALENTINO had been used on the invoices submitted as evidence but, if it had been used as registered, i.e. in signature form, then some evidence of this should be available.  The registration of a signature mark provided a narrow monopoly and this did not sanction exclusive use of the surname in block type.  He said that the provisions of s.38 should not apply as, although it was conceded that some goods in Class 25 and 14 could be considered of the same description, use of the word in block type did not count as use under that section.

Mr Fitzpatrick submitted that, under the terms of the co-existence agreement, both parties should be allowed to use their own marks.  The opponent was unaware of the circumstances of the applicant's attempt to register its own mark or the possible remedies to overcome objections.  The opponent had not alleged miscconduct on the part of the applicant and had not denied consent for use of the MARIO VALENTINO mark.  He said that the Registrar should adopt a practical approach in matters where there was an agreement between parties, giving substantial weight to it, and not involve himself in unnecessary matters.  He disputed that the applicant was an aggrieved person under the terms of s.23 because no grounds had been given showing why it was aggrieved; because of the co-existence agreement which bound the applicant not to object to any of the opponent's marks; and that the applicant had previously withdrawn opposition to 291325 when it was an application, thereby acquiesing to its registration.

He said that the opponent had used the mark in the relevant period and that any deficiencies in the opponent's case were only technical in nature.  He submitted that the Registrar's discretion should be exercised in favour of the opponent for retention of both marks for all the goods for which they were currently registered or, alternatively, retain the Class 14 registration for all goods, or at least for jewellery together with other items in the evidence and goods of the same description.  Mr Fitzpatrick said that the co-existence agreement between the parties was working, as evidenced by marks owned by both sides in Class 25 (albeit for mutually exclusive goods).  He said that the same situation existed in Classes 14 and 34 which had wide Class headings.  No one trader could be expected to deal in all the goods and the applicant's s.23 applications for removal did not specify which goods were in question and the evidence to prove prima facie non-use did not make out a case to cover all goods.  Further, the s.23 application covered non-use for all goods registered including goods of the same description and no evidence had been lodged to support the latter claim.  Negotiations had previously taken place between the parties during Opposition proceedings in trade mark cases where both had interests in similar goods.  These had led to the co-existence agreement and, as the applicant had previously agreed to the registration of the Class 14 mark, it could not now be aggrieved by its continued existence.

With respect to the applicant's evidence in support, he said that it consisted only of a declaration by an investigator; the applicant had chosen not to make any statement itself.  The declaration by Mr Tritton had many deficiencies.  These included doubts on the independence and standing of the declarant; shortcomings in the alleged appendices which purported to report on the enquiries made; a lack of specifity in answers on the vital question of the period of alleged non-use; details on how the survey was conducted; an absence of information on what questions were asked; and the lack of the details on, and the qualifications of, those asked.  He said that, on the other hand, the invoices covered by Mr Nicolai's declaration showed use during the relevant period of the name VALENTINO on a wide range of jewellery.  Although he had no explanation for the lack of evidence showing use of the mark as a signature, the use on invoices and on associated marks was sufficient for the purposes of s.38 where the Registrar had a discretion to accept such use as an equivalent to the use in question.  The opponent was not claiming exclusive use of the surname VALENTINO as the word was disclaimed.  The mark's use on invoices in Australia was proof that the mark, although not being used on the goods was used in relation to the goods.

He concluded by asking that I find in favour of the opponent in allowing both marks to remain on the Register for all goods and submitted that I award costs in the opponent's favour.

Decision

On the threshold question of whether the applicant is a person aggrieved, I have considered both the co-existence agreement between the parties and the fact that the opponent's marks have been cited against the applicant's mark during examination.  I note that, in page 8 of the agreement as exhibited with Mr Nicolai's declaration, the applicant has agreed not to object to any of the opponent's trade marks.  However, the Registrar is not bound by such an agreement and need only take it into consideration along with other factors in determining the applicant's standing as a person aggrieved. I have no information before me to indicate whether the agreement is still in force or whether it has been amended.  The agreement was signed in May 1979 and I share Mr Hawker's view that situations can change over time and a person could become aggrieved through circumstances (such as the citations of the subject marks against his client's mark) which were unforseen by the original signatories.  I also observe that the agreement was made under Italian law and any remedies which should legally be applied must be made under that jurisdiction.  It is open to the opponent to take whatever steps it sees fit under Italian law against the applicant for allegedly contravening the agreement.

With respect to the usual authorities relied upon to determine whether a party qualifies as a "person aggrieved", I am mindful of the words of Kitto J. in Continental Liqueurs Proprietory Limited v G.F.Heublein and Bro. Incorporated, at 103 CLR 422 where he said:

The applicant has applied for registration of three trade marks consisting of or containing the word "Smirnoff" and the examiner has made adverse reports under s33(2) on the ground, amongst others, that each of the three proposed marks so closely resembles the respondent's mark as to be likely to deceive.  This would suffice even by itself to give the applicant a locus standi: cf Batt's Case.

Supporting this, McLelland J in Ritz Hotel Ltd v Charles of the Ritz & Anor (1988) 12 IPR 417 at 454 held that the expression "person aggrieved" had no special or technical meaning and was to be liberally construed, and that it:

...would embrace a person having a real interest in having the register rectified, or the trade mark removed in respect of any goods ... and thus would include any person who would be ... 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...

In the present instance, the marks sought to be removed by the applicant were cited by the examiner as a bar to registration of its own mark.  Clearly, the applicant is disadvantaged by the trade mark remaining on the Register - despite whatever other remedies may be available - and this, in my opinion, qualifies it as a "person aggrieved".

It is well established that the onus of proof of the non-use of a trade mark rests with the applicant for removal: Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited (1967) 116 CLR 254 at 258 where Windeyer J. said:

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?

Until this onus is discharged there is no onus on the opponent to show that there has been use of the mark during the relevant period: Durban Inc. v Campio Pty Ltd (1990) AIPC 90-658 at 36182.

The evidence in support of the s.23 comprises a declaration by the manager of Probe Investigations, together with several appendices which purport to summarise enquiries made of persons in the trades who might deal in the opponent's goods.  The appendices cover enquiries made in all Australian States.  The number of enquiries made appears to be quite extensive and Mr Tritton draws the inference from them that "...it appears clear that the trade mark VALENTINO has not been used in relation to ...(a rough approximation of the Class headings in 14 and 34 - some of which are excluded already in the case of the opponent's Class 34 registration) in any of the major states of Australia, or the Northern Territory, during the past three years."  However, in my opinion, there are several deficiencies in the reports of these enquiries.  None of those spoken to has made a declaratory statement.  The enquiries appear to be made on the telephone by an unknown investigator and then reported to Mr Tritton.  This would seem to make it difficult for him to personally declare that the marks had not been used.  In many, indeed most, of the enquiries, the persons spoken to were either only referred to by their given names or not identified at all.  Many persons spoken to did not reveal the length or scope of their experience or their position in their company.  If they did, they were mainly employed in a sales assistant capacity, not the responsible positions where one would expect a respondent to have a complete and thorough knowledge of the particular industry.  There was no indication of the questions put to the respondents by the unknown investigator and, most importantly, no mention at all of the vital matter of their lack of knowledge of use during the critical period for s.23 purposes.

Therefore, in my opinion, the evidence falls short of establishing even a prima facie case of non-use of the marks in question.  The only evidence relied upon by the applicant is the Tritton declaration which I have already said is, to my mind, lacking in many important areas.  Although "slight evidence" may suffice, the evidence must be probative.  Perhaps if the evidence had included the points I have indicated are lacking, I could have found a prima facie case proven and proceeded to a proper examination of whether the marks were used on all the goods for which they are registered during the period in question.  However, in the present case, it is not possible for me to find in favour of the applicant.

Conclusion

The s.23 applicant has failed to make out a prima facie case of non-use and the application is therefore dismissed.  The opponent is entitled to its costs in accord with the Official scale and I so award them.

Ian Forno
Hearing Officer

31 July 1992