Mark Robinson and Brenda Robinson v Australian International Traders Pty Limited

[2018] ATMO 75

TRADE MARKS ACT 1995

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

ReOpposition by Mark Robinson and Brenda Robinson to application by   Australian International Traders Pty Limited for removal of trade mark  1444627 (30) – DYNAMITE - in the names of Mark Robinson and Brenda Robinson

Delegate:  Robert Wilson

Representation:                  Opponents: relied on written submissions

Applicant: Kerry Chrysiliou of Chrysiliou IP

Decision:  2017 ATMO 75

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) unsuccessful – no use of trade mark during relevant period – trade mark to be removed from Register

Background

1.     Mark Robinson and Brenda Robinson (‘the Opponents’) are the registered owners of trade mark registration 1444627, relevant details of which are as follows:

Trade Mark Number:	1444627
Filing Date:	24 August 2011
Goods:	Class 30: Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; bread, confectionery, ices; honey and honey products, treacle; breakfast spreads, yeast and yeast products, baking-powder; salt, vinegar, spices; ice (‘the Challenged Goods’)[1]
Trade Mark:	DYNAMITE	(‘the Challenged Trade Mark’)

[1] The Challenged Goods are all of the goods for which the trade mark is registered.

2.     On 17 October 2016, Australian International Traders Pty Limited (‘the Applicant’) filed an application based on ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Challenged Trade Mark from the Register. The Opponents filed a Notice of Intention to Oppose on 7 December 2016 and a Statement of Grounds and Particulars on 8 December 2016. The Applicant filed a Notice of Intention to Defend on 30 January 2017.

Evidence

3.     The Opponents filed Evidence in Support of their opposition (‘EIS’) on 3 April 2017. This evidence consists of a Statutory Declaration made on 31 March 2017 by Mark Robinson, who is one of the Opponents, (‘Robinson 1’). The declaration includes the following exhibits:

·DYNAMITE 30-5;

·DYNAMITE 30-10;

·DYNAMITE 30-15;

·DYNAMITE 30-20;

·DYNAMITE 30-25;

·[etc to:]

·DYNAMITE 30-65;

·DYNAMITE 30-70(1);

·DYNAMITE 30-70(2);

·DYNAMITE 30-70(3);

·DYNAMITE 30-75; and

·DYNAMITE 30-80.

4.     The Removal Applicant filed Evidence in Answer (‘EIA’) on 14 August 2017. This evidence consists of:

·Declaration made on 9 August 2017 by John Joseph Wilkinson, the sole director and  secretary of the Applicant ­(‘the Wilkinson declaration’); and

·Declaration made on 14 August 2017 by Kerry Chrysiliou, a patent and trade mark attorney at Chrysiliou IP, the representatives of the Applicant, with Annexures KC-1 to KC-19 (‘the Chrysiliou declaration’).

5.     The Opponents filed Evidence in Reply (‘EIR’) on 25 September 2017. This evidence consists of a Statutory Declaration made on 25 September 2017 by Mark Robison (‘Robinson 2’). The declaration includes the following exhibits:

·DYNAMITE 30-100;

·DYNAMITE 30-105;

·DYNAMITE 30-110;

·DYNAMITE 30-130; and

·DYNAMITE 30-135.[2]

[2] There are no Exhibits 30-115, 30-120 or 30-125 and they are not referred to in the declaration.

6.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Applicant requested to be heard and the Opponents decided to rely on written submissions.

7.     I heard the matter via teleconference on 4 May 2018 as a delegate of the Registrar of Trade Marks. Kerry Chrysiliou appeared for the Applicant. Ms Chrysiliou’s oral submissions were supplemented by written submissions filed with IP Australia on 27 April 2018 (‘the Applicant’s submissions’). The Opponents’ written submissions were prepared by Mark Robinson and were filed with IP Australia on 18 April 2018.

The Applicant

8.     According to the Wilkinson declaration:

[The Applicant] conducts the business of importing into Australia and distributing within Australia a range of confectionary and has done so since at least 2000. Since 2000, [the Applicant] has distributed its confectionary to a range of large and small retailers in Australia. Current customers of [the Applicant] for confectionary including Metcash, IGA, Campbells Cash and Carry, The Distributors Group, Accredited Wholesale Group, Quality Food Group, Rite Price, Red Dot Stores, The Professors.

9.     The Applicant appears to be the owner of a large number of registered trade marks associated with confectionary. The Applicant is also the owner of the trade mark application detailed below:

Application Number:

1797056

Priority Date:

15 September 2016

Goods:

Class 30: Confectionery; Ice confectionery

(‘the Applicant’s goods’)

Trade Mark:

DYNAMITE  (‘the Applicant’s Trade Mark’)

The Opponents

10.   According to Robinson 1:

[The Opponents] market and sell goods using their DYNAMITE® bearing their registered trade mark logo bearing the ‘R’ in a circle ®.[sic]

[The Opponents have] continuously and continue to market and sell goods in Class 30 bearing their registered trade mark DYNAMITE® in Australia.

[The Opponents] continuously market and sell goods in Class 30 bearing their registered trade mark DYNAMITE® to the consumers, health stores, general stores, grocery, green grocers, markets, exhibitions, conferences, expos, festivals, online, retail and wholesale.

11.   It is apparent from the ASIC search provided at Annexure KC-14 to the Chrysiliou declaration that the Opponents incorporated Nature’s Blend Pty Ltd (‘Nature’s Blend’) on 6 July 2007. The Opponents are the directors and only shareholders of the company and have been that way since its incorporation.

Legal Framework

12. The removal application specified that removal was being sought under the provisions of both ss 92(4)(a) and 92(4)(b). In its submissions the Applicant indicated that it is pressing removal only under s 92(4)(b). I will therefore consider the application for removal under only under that provision.

13. Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101. Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)… a person may apply to the Registrar to have a trade mark that is … 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.

…

(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) …

(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.

14. Section 96 makes provision for any person to oppose an application made under s 92 by filing a Notice of Opposition with the Registrar. Section 100 specifies that the burden is on the person opposing an application to rebut any allegations made under s 92. In the case of the allegation of non-use under s 92(4)(b) the Opponents need to establish that they, as the registered owners of the Challenged Trade Mark, used the trade mark (or the trade mark with additions or alterations not substantially affecting its identity) in good faith in respect of the Challenged Goods, and that this use occurred within the three year period ending 17 September 2016 (‘the Relevant Period’). Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[3] The demonstrated use must be ‘use in the course of trade’.[4]

[3] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645, 660.

[4] Trade Marks Act 1995 (Cth) s 17.

15.   Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Mark from the Register ‘in respect of any or all of the goods … to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the impugned trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.

Discussion

Use during Relevant Period?

16.   The Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponents to provide clearly dated evidence showing use of the Challenged Trade Mark upon, or in physical or other relation to, the Challenged Goods[5] within that period in order to rebut the allegation of non-use. Undated examples of use carry little, if any, weight in support of a claim for use of the trade mark within the Relevant Period.

[5] See s 7 of the Act.

17.   Robinson 1 makes a number of statements about the Opponents’ use of the Challenged Trade Mark which are not specifically related to the Relevant Period and are without reference to a supporting exhibit. For example:

[The Opponents use all their trade marks/brands] including DYNAMITE® and sub-brands as a badge of origin. All [the Opponents’] trade marks/brands and sub-brands at all levels are recognised as a badge of origin to [the Opponents]. [The Opponents’] registered trade marks/brands and sub-brands are continuously marketed and sold to the consumer.

Such bald and somewhat vague statements are of little assistance to the Opponents in establishing use during the Relevant Period. There are, however, examples of use which warrant further consideration.

18.   Robinson 1 states:

[The Opponents market] and sell confectionary being goods in Class 30 bearing the DYNAMITE® trade mark as confirmed in confidential commercial invoice … dated 10 June 2016 DYNAMITE® honey confectionery lollipops. SEE EXHIBIT DYNAMITE 30-20.

Exhibit DYNAMITE 30-20 consists of a single invoice (‘the First Invoice’) to an Australian business dated during the Relevant Period and includes as an item ‘MANUKA DYNAMITE HONEY POPS 6 PACK’. The invoice indicates that it is issued by Nature’s Blend Pty Ltd. The Opponents’ names appear nowhere on the invoice.

19.   Robinson 1 also states:

[The Opponents also market and sell] the following goods in Class 30 as per invoice … dated 13 February 2016. SEE EXHIBIT DYNAMITE 30-25

Exhibit DYNAMITE 30-25 consists of a single invoice (‘the Second Invoice’) to ‘CASH SALES’ dated during the Relevant Period. The invoice lists a number of items including:

·MANUKA DYNAMITE HONEY POPS 6 P;

·RICE VINEGAR DYNAMITE;

·DYNAMITE BREAD BAKE MIX

·OMEGAMITE DYNAMITE 290g

·DYNAMITE COFFEECHAI SPICE 500G

·DYNAMITE HONEY 450G

·DYNAMITE WATER ICE

·DYNAMITE APPLE CIDER VINEGAR

As with the First Invoice, the Second Invoice was issued by Nature’s Blend Pty Ltd, and the Opponents’ names appear nowhere on the invoice.

20.   Robinson 1 further states:

[The Opponents use] the DYNAMITE® trade mark and registered logo on packaging as shown in evidence SEE EXHIBIT DYNAMITE 30-30

Exhibit DYNAMITE 30-30 consists of a single page on which appear nine photographs. The general quality, small size and resolution of the photographs mean that in only one is the Challenged Trade Mark trade mark legible. That photograph is reproduced below:

There is no indication as to the date the above photograph was taken, nor is there any statement as to when it was taken or its purpose. Consequently, this evidence is of little assistance, if any, to the Opponents.

21.   There are no other relevant examples of use provided in the Opponents’ evidence. The balance of the evidence consists of material such as printouts of entries for trade marks from the Register, and copies of correspondence between the Opponents and the Applicant’s representatives.

22.   It was noted in the Woolly Bull case that a ‘single bona fide use of the mark in the relevant period is sufficient to answer an application for removal’.[6] Where such minimal use is relied upon by an opponent, however, the evidence must be ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[7] We have in this case as the only apparently relevant evidence of use the two invoices referred to above. In line with Woolly Bull two invoices are potentially sufficient. However, the Applicant has called into question the cogency of those invoices.

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

[7] Nodoz Trade Mark [1962] RPC 1, 7.

23.   The Applicant noted that ‘evidence may not be persuasive where it consists only of internal company files[8] or evidence of a circumstantial nature[9]’ and submitted:

An examination of [the First Invoice] shows:

-     The document appears to have been generated from internal records of [Nature’s Blend]. It does not appear to be a copy of an issued invoice, which would be endorsed with notations relating to data entry or manner of payment or the date on which the goods were picked up, for example;

-     It purports to be a tax invoice, but no GST is applied to the item ‘Manuka Dynamite honey pops 6 pack’ (despite the fact that GST is imposed on confectionery …);

-     The unit price is $4.80 for each 6 pack, in contrast to the other invoice (below), for which the unit price is $7.50 – a difference of 56%.

[8] Ibid.

[9] Trina Trade Mark [1977] RPC 131.

24.   The Applicant made similar criticisms of the Second Invoice noting in addition that GST was not applied to a second item for which it is required to be applied. The Applicant further submitted:

There is no indication that any goods were actually provided under either invoice. …

The Opponents have not provided any corroborating declarations from customers. If there had been any use of [the Challenged Trade Mark] during the Relevant Period then it should have been a relatively easy task to produce copies of orders from customers, and correspondence relating to delivery, etc.

25.   I note that the Applicant provided evidence that shows that GST is payable on the items mentioned above. The Applicant also provided evidence of searches conducted using an internet archive website. The evidence shows that since 2007 Nature’s Blend maintained a website at (‘the Website’). A range of products were advertised on the Website over the years:

including yeast spread, Manuka honey, flaxseed oil, peanut butter, milk, mayonnaise, salad dressing, joint response capsules, chocolate eggs, chocolate frogs, Manuka honey pops, chocolate hearts, nuts, chia, jellies and other confectionery … Yet at no time until after the Relevant Period was [the Challenged Trade Mark] used for any of those goods on the Website.

Particular reference is made to the archive.org capture of the Website on 9 September 2016 in Annexure KC-12, showing no use of the Trade Mark on the Website. That date is some three months after the date of [the First Invoice] and some 7 months after the date of [the Second Invoice].

However, by 16 November 2016, the Trade Mark appeared on the website in relation to yeast spread and honey pops.

I note that 16 November 2016 is some two months after the end of the Relevant Period and one month after the filing of the application for removal.

26.   The Opponents responded to the evidence regarding the absence of the Challenged Trade Mark on the Website in their EIR by indicating that they do not rely on the internet for sales. The Applicant submitted in response that ‘that explanation does not accord with the fact that the [Challenged Trade Mark] did appear on the Website after the Relevant Period’.

27.   It is declared in Robinson 1 that the Opponents ‘continuously and continue to market and sell goods in Class 30 bearing their registered trade mark DYNAMITE® in Australia.’ This statement is somewhat vague as it does not indicate from when the continuous use is claimed. Nevertheless, it is reasonable to expect that the asserted use would mean that there is a significant amount of evidence of use available which goes well beyond what the Opponents have provided in this matter. While there is no requirement that the Opponents provide more evidence than is sufficient to rebut the allegation of non-use, if the Opponents choose to rely on minimal evidence it must be cogent: in the words from Nodoz Trade Mark quoted above, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.

28. There are significant questions surrounding the cogency of the two invoices discussed above; questions which have not been answered by the Opponents. In the absence of cogent evidence of use of the Challenged Trade Mark in circumstances where it is reasonable to expect that other supporting evidence ought to be readily available, I am not satisfied that the Opponents used the Challenged Trade Mark during the Relevant Period. Consequently, the s 92(4)(b) ground has been established.

29. The Applicant also submitted that insofar as the invoices discussed above might show use of the Challenged Trade Mark they do not show use by the Opponents but show instead use by Nature’s Blend. Section 7(3) of the Act provides that an authorised use of a trade mark by a person is taken, for the purposes of the Act, to be a use of the trade mark by the owner of the trade mark. As I have found that the invoices provided in evidence are not sufficient to satisfy me that the Challenged Trade Mark was used by the Opponents during the Relevant Period it is unnecessary that I consider further whether use by Nature’s Blend was use authorised by the Opponents.

The Registrar’s Discretion

30.   As indicated above, there is a discretion available to the Registrar under s 101(3) not to remove the Challenged Trade Mark from the Register even though the grounds on which the application was made have been established. The Opponents have provided no submissions in respect of the discretion and I am not satisfied that it is reasonable to exercise it in the Opponents’ favour based on the material before me.

Decision

31.   As the Opponents have not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that trade mark be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.

Costs

32. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponents have failed to rebut the allegation of non-use, I award costs against the Opponents under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson

Hearing Officer

Oppositions and Hearings

17 May 2018