Mark Robinson and Brenda Robinson v Omega Yeast Labs LLC

[2024] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Mark Robinson and Brenda Robinson to applications under section 92 of the Trade Marks Act 1995 (Cth) by Omega Yeast Labs LLC to partially remove trade mark registrations 1209504, 1260590 and 1271447 (all in class 30) - ΩMEGA, OMEGA and OMEGA respectively- in the name of Mark Robinson and Brenda Robinson.

DELEGATE:  Nicole Worth
REPRESENTATION:             Removal Opponents: Self-represented

Removal Applicant: Spruson & Ferguson

DECISION:  2024 ATMO 30

Trade Marks Act 1995 (Cth) – applications under section 92 – applications for removal in respect of ‘yeast’ only – no use of trade marks as registered during relevant period – some use of trade marks with other elements – use not established to be by authorised user – obstacle to use not established –

no exercise of Registrar’s discretion – trade marks to be partially removed.

Background

1. Mark Robinson and Brenda Robinson (‘Removal Opponents’) are the registered owners of the trade marks detailed below.

Trade Mark:	ΩMEGA	OMEGA	OMEGA
RegistrationNo.:	1209504	1260590	1271447
Filing Date:	12 November 2007	4 September 2008	10 November 2008
Goodsinclass30:	Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial 1offee; flour and preparations made from cereals, cread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.	Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces; spices; ice.	Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereal, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces; spices, ice.

(collectively, ‘the Trade Marks’)

1. On 2 December 2021, Omega Yeast Labs LLC (‘Removal Applicant’) filed applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth) to remove each of the Trade Marks from the Register of Trade Marks in respect of the goods ‘yeast’. The basis of the applications is an alleged lack of use of the Trade Marks by the registered owners.

2. The Removal Opponents filed a Notice of Intention to Oppose all three removal applications, followed by a Statement of Grounds and Particulars particularising the basis for their opposition to removal. The Removal Applicant filed Notices of Intention to Defend the removal applications. Within the time allowed for doing so, the Removal Opponents filed evidence in support of their opposition to removal (discussed in more detail later in this decision). The Removal Applicant did not file evidence in answer, but rather requested a hearing by written submissions. It filed written submissions on 25 January 2024. The Removal Opponents did not request to be heard and have not filed submissions.

3. The matter has now been allocated to me to decide, as a delegate of the Registrar of Trade Marks. I base my decision upon the aforementioned materials. In this decision, all references to a section are references to the Trade Marks Act 1995 (Cth) and all references to a regulation are references to the Trade Marks Regulations 1995 (Cth), unless otherwise stated.

The Legislative Framework

1. Section 92(1) provides that a person may apply to the Registrar to remove a trade mark that is or may be registered. Section 92(4) provides the grounds under which such an application may be made, being relevantly:

   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:

   …

   (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.

1. An application under s 92(4)(b) is subject to s 93(2), which at the time the Trade Marks were filed stipulated that such applications ‘may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark’. Given that the applications to register the Trade Marks were filed in 2007 and 2008, this requirement is satisfied.

2. Section 96 allows for a person to oppose an application for removal by filing a notice of opposition, and s 100(1) places the onus upon an opponent to rebut an allegation of non-use. Section 100(3) provides that an opponent is taken to have rebutted the allegation of non-use if it establishes that the trade mark (without additions or alterations substantially affecting its identity) was used in good faith by the registered owner during the relevant period; or, in relation to s 92(4)(b), that there were circumstances that were an obstacle to use. Note 1 to s 100(3) allows for authorised use to be taken as use by the registered owner in accordance with s 7(3).

3. Section 101(1) provides that the Registrar may remove a trade mark for any or all of the goods or services to which the application for removal relates, if satisfied that the grounds for removal are established. Alternatively, s 101(3) bestows upon the Registrar the discretion not to remove a trade mark, even where the grounds for removal are established. Section 101(4) provides two examples of matters the Registrar may take into account in deciding whether to exercise the discretion, being use of a trade mark in respect of similar goods or closely related services, or vice versa, but does not limit the matters the Registrar may take into account.

4. I proceed on the basis that the standard of proof required of the Removal Opponents is on the balance of probabilities.1 I note further that if the exercise of the Registrar’s discretion is sought, it is for the party seeking the exercise of the discretion to positively satisfy the Registrar that it is reasonable to do so.2

5. Here the relevant period for the purposes of s 92(4)(b) is the three-year period ending on 2 November 2021 (‘Relevant Period’).

¹ Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J) with respect to oppositions under s 52 of the Act.

² Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ) (‘Austin’), citing Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

Evidence

1. The evidence filed in this matter consists of a declaration by Mark Robinson (‘Robinson’) filed in respect of each of the oppositions, dated 21 July 2022 with exhibits OP-01A to OP-300. A further confidential declaration by Mr Robinson (‘Robinson Confidential’) was also filed, dated 21 July 2022.3

2. The Removal Opponents are traders of various food products including edible spreads and oils. They own a relatively large number of trade mark registrations containing or comprising OMEGA. Robinson states:

   (4)    The Opponent (ROBINSONS) is the registered owner of many years registered Australian trade marks 1029504 ΩMEGA® (30), 1260590 OMEGA ® (30), 1271447 OMEGA ® (30) as below and AUSTRALIAN GOVERNMENT IP

   AUSTRALIA ATMOSS search and their continuous use by the Opponents (ROBINSONS) and their authorised users are a badge of origin back to the Opponents (ROBINSONS) for goods in Class 30 including YEAST for use in AUSTRALIA…

   (5)    The Opponent (ROBINSONS) is the registered owner of many years of the registered Australian trade marks including 1223887 OMEGAMITE® used in conjunction with [the Trade Marks] for “YEAST” in Class 30…

   (6)    Opponent (ROBINSONS) is the registered owner of many years of the registered Australian trade marks including 1234738 OMEGABEER4 used in conjunction with [the Trade Marks] … for goods in Class 30 and Class 32 including YEAST for BEER…

3. With regard to the references to ‘authorised users’, Robinson states under the heading ‘The Opponent is the Registered Owner of Business Names – “Authorised Users”’:

   The Opponent (ROBINSONS) is the registered owner of the “business names and

   authorised users”. NATURES BLEND ROBINSONS HONEY5

   The nature of the authorisation is not explained or documented further.

³ Robinson Confidential is titled ‘Confidential Evidence in Support Exhibit OP-300’, and within it is contained

Confidential Evidence in Support Confidential Exhibit OP-400.

⁴ The specification of goods of registration 1234738, OMEGABEER, is: Beers, mineral and aerated waters and

other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

⁵ Robinson, [17].

1. Robinson and Robinson Confidential assert that the Trade Marks have been used for many years in respect of yeast products and products which contain yeast. As implied in the statements from Robinson quoted above, those products appear to be a yeast spread and beer.

2. In respect of yeast spread, an undated photograph depicts jars of ‘OmegaMite’ (with the words ‘yeast spread’ below the name), shown below. 6

1. Social media posts, mostly by Nature’s Blend but also by a limited number of third parties, depict or discuss OmegaMite. Some are undated, some are from before the Relevant Period, and one was posted ‘yesterday at 1.48pm’.7 I note that the profile picture for Nature’s Blend appears to be a jar of OmegaMite (although the image is too small to discern precisely). The only mention of the Removal Opponents is upon the profile page(s) of Nature’s Blend which, in respect of various posts or reposts, state ‘posted by Brenda Robinson’ (or in one instance states ‘Nature’s Blend is with Dannielle Hogarth and Brenda Robinson’).

2. Confidential samples of invoices are adduced in Robinson Confidential.8 They itemise the sale of ‘Omegamite Dynamite’ (among other products), including in commercial amounts. Seven of them are dated within the Relevant Period. They are issued by Nature’s Blend Pty Ltd and are headed with the following logo.

⁶ Robinson, exhibit OP-25.

⁷ Robinson, exhibits OP-35, OP-40 and OP-45. The post dated ‘Yesterday at 1.48pm’ may refer to the day before the post was captured, which may have been on or around 21 July 2022 when the evidence was prepared (and hence after the Relevant Period). It is otherwise uncertain when ‘Yesterday at 1.48pm’ refers to.

⁸ Robinson Confidential, confidential exhibit OP-400.

1. The results of a Google® search for OMEGAMITE conducted on 20 July 2022 demonstrates that at least the first seven results relate to the ‘OmegaMite’ product of Nature’s Blend.9

2. In respect of beer, images depicting beer bottles being placed on a bottle draining stand and a person holding up a bottle of beer are in evidence, the latter appearing to contain a label upon the bottle although the label is illegible.10 The images are provided in relation to the statement that ‘The Opponent (ROBINSONS) has a reputation for the registered trade marks … for YEAST product including OMEGA beer branding as a badge of origin back to the Opponent (ROBINSONS) including major supermarkets’.11 There is no indication that the images were taken within or near a supermarket. The images are dated in June 2011.

3. There is also an image of what appears to be a Facebook profile page for OMEGAbeer.12 It says nothing of yeast or of ingredients with which to make beer. The image is undated although it displays a pop-up window of ‘page management history’ stating that Brenda Robinson was ‘added as an admin’ on 13 December 2020.

4. None of the confidential sample invoices list OMEGAbeer or any other product relating to beer.

5. Both OMEGAbeer and OMEGAmite are displayed on labels attached to ‘outer packaging’ for the Removal Opponents’ products, as are the Trade Marks. Undated images of this packaging are adduced.13 I reproduce these below.

⁹ Robinson, exhibit OP-50.

¹⁰ Robinson, exhibit OP-35.

¹¹ Robinson, [11].

¹² Robinson, exhibit OP-40.
¹³ Robinson, exhibit OP-30.

1. Robinson further declares that the Removal Opponents are the owners of various websites including ‘ Undated extracts from this website display products which incorporate OMEGA into their name, including OmegaMite, OMEGAHONEY and OMEGAGOLD flaxseed oil, but none relating to beer or beer ingredients.14

2. In respect of an alleged reputation in the Trade Marks, Robinson states that the Trade Marks have built a reputation over many years and have been promoted to ‘industry’ and the general

¹⁴ Robinson, exhibit OP-55.

public. This allegedly includes by way of pharmacy conferences, grocery and green grocer stores, veterinary clinics, expos, Royal Shows, Good Food & Wine Shows, gluten free shows, markets and online.15 The exhibits supporting these statements16 are either dated outside of the Relevant Period or do not show the Trade Marks. I note nonetheless that the Removal Opponents have taken part in various shows and expos (although I cannot surmise which of the Removal Opponents’ trade marks were promoted at them); that OmegaMite was in the past promoted in Retail World magazine (declared to be known as the ‘retail supermarket bible’); that OmegaMite and products by Nature’s Blend were previously available at Coles and IGA Supermarkets (it is not stated if they continue to be available via these channels); and that the Removal Opponents’ products have won the 2012 SIAL Shanghai Innovation Award and an Australian Food Awards (it is not stated when, but a social media post about it from Nature’s Blend is dated 2016).

1. Lastly, Robinson includes a paragraph titled ‘Covid Restrictions “Not Promoting” Beyond our Control’. I take this to be a reference to circumstances that that were an obstacle to use of the Trade Marks, one of the defences to removal for non-use identified in s 100(3)(c). The paragraph states:

   IT MUST BE DULY NOTED THAT DURING 2020-2021 The Opponent

   (ROBINSONS) beyond our control were hindered during the COVID restrictions/regulations periods and were prevented or limited by the Australian/Victorian Government cancelling and banning events, travelling restrictions/bans and lockdowns thus prohibiting marketing and promoting at EXPOs, Conferences, Royal Shows, public gatherings and others.

Use of Trade Marks during Relevant Period

1. The extent of use required to rebut an allegation of non-use is not onerous. A ‘relatively small amount of use’ may be sufficient,17 and potentially a single bona fide use will be sufficient to prevent removal.18 If a single use is relied upon, it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.19

¹⁵ Robinson, [20].

¹⁶ Robinson, exhibits OP-70 to OP-225.

¹⁷ E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).

¹⁸ Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

¹⁹ Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

1. No single exhibit provides satisfactory evidence of use, either because it is undated or dated outside of the Relevant Period, does not show the Trade Marks (as opposed to other marks containing OMEGA as a word element), is not in respect of ‘ yeast’, or is not shown to be authorised use within the meaning of s 8.

2. With regard to which trade marks are shown to be used, there is only one instance of use of the Trade Marks not combined with other word elements, being the undated photograph of a label attached to outer packaging in exhibit OP-30. Such evidence is insufficient to establish use in the course of trade during the Relevant Period. All other use is of OMEGA in combination with other word elements of varying degrees of distinctiveness. When those uses are confined to yeast or goods which may contain yeast, the only instances of use are in the form of OmegaMite and OMEGAbeer.

3. I do not consider OmegaMite to be use of any of the Trade Marks with additions or alterations not substantially affecting identity. On the contrary, I consider ‘Mite’ to be an element which does affect identity – whilst not unusual in respect of yeast spreads, it is not so descriptive of them that its presence may be discounted as mere description of the product.

4. On the other hand, OMEGAbeer might be considered use of the Trade Marks with additions or alterations not substantially affecting identity when used in respect of beer. Firstly, though, I am not satisfied that any use of OMEGAbeer in the course of trade during the Relevant Period is established, and secondly, I would not equate use in respect of ‘beer’ with use in respect of the yeast with which beer is made. There is no indication that the Removal Opponents (or Nature’s Blend) have offered home brew kits, brewer’s yeast, or any other yeast product which is not a yeast spread.

5. As to the alleged authorised use, Nature’s Blend appears to be the source of the Removal Opponents’ goods. There is little explanation of what kind of entity Nature’s Blend is. It is referred to as the Removal Opponents’ ‘business name and authorised user’ in paragraph 17 of Robinson. I note also that the sample invoices in confidential exhibit OP-400 are issued by Nature’s Blend Pty Ltd. Either way, there is no documentation regarding the entity Nature’s Blend.

1. There is also no documentation to support the statement that Nature’s Blend is an authorised user within the meaning of s 8. The Removal Opponents do not expand on the nature of any control they may exercise over Nature’s Blend,20 nor do they describe their own roles or duties such that it may be surmised they act with a unity of purpose with Nature’s Blend21 or that they are the alter ego of Nature’s Blend.22

2. Considering the evidence in its totality, the Removal Opponents have not satisfied me that they or an authorised user have used the Trade Marks in respect of yeast during the Relevant Period.

Circumstances that were an obstacle to use

1. The Removal Opponents submit that the restrictions put in place during the period 2020 to 2021 by the Australian and Victorian governments in response to the COVID-19 pandemic hindered their ability to promote their goods at events such as public gatherings, Royal Shows, expos and so on.

2. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed

   There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc.23

3. I consider it likely that the restrictions imposed during the 2020-2021 period did hinder the ability of many traders to promote and sell their goods or services. However, there is insufficient detail in the Removal Opponents’ statement to establish a causal link between the COVID-19 restrictions and the non-use of the Trade Marks in respect of yeast during the Relevant Period. This is particularly so in light of at least some evidence that the Removal Opponents were willing and able to promote their goods online, particularly via social media, and that they had a website through which their products may be purchased.

²⁰ Per the discussion of genuine control in Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).

²¹ Such as was found in Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [45] (Reeves,

Jagot and Rangiah JJ).

²² As found in Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd [2022] FCA 700 (Greenwood J).

²³ [2001] FCA 261, [55].

1. I am therefore not satisfied that there were circumstances that were an obstacle to use of the Trade Marks, and therefore s 100(3)(c) does not apply.

2. Accordingly, the ground for removal under s 92(4)(b) is established.

Registrar’s discretion

1. As already noted, s 101(3) bestows upon the Registrar the discretion not to remove a trade mark, even where the grounds for removal are established.

2. It is for the party seeking the exercise of the discretion to positively satisfy the Registrar that it is reasonable to do so.24 The discretion is a broad one, limited only by the subject-matter, scope and purpose of Part 9 of the Act,25 and it need not be applied only in exceptional circumstances but rather where it is reasonable.26 The public interest in the integrity of the Register of Trade Marks as well as the private interests of the parties are relevant considerations.27

3. The Removal Opponents have not made any submissions in relation to the Registrar’s discretion to maintain registration of the Trade Marks. The Removal Applicant submits that the Removal Opponents have not discharged their onus either to establish use or to establish that the Registrar’s discretion ought to be exercised. The Removal Applicant also submits that its own application to register the trade mark OMEGA YEAST is obstructed by the Trade Marks.

4. It is in the public interest that unused trade marks are removed from the Register. The use of the Trade Marks in their own right is minimal and not within the Relevant Period. Rather, any exercise of the discretion would be based upon use by an entity (Nature’s Blend) not established to be an authorised user; of a trade mark (OmegaMite) that is not substantially the same as the Trade Marks; or of a trade mark (OMEGAbeer) that is not necessarily in respect of similar goods and of which no use during the Relevant Period is established.28

²⁴ Austin (n 2).

²⁵ Ibid [35].

²⁶ Kowa Company Ltd v N V Organon [2005] FCA 1282, [98] (Lander J), cited in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No. 4) [2016] FCA 138, [222] (McKerracher J).

²⁷ Austin (n 2) [33]-[36].

²⁸ I note also that both OMEGAMITE and OMEGABEER are the subject of their own registrations in Australia.

1. In such circumstances I do not consider it appropriate to exercise the Registrar’s discretion to maintain registration of the Trade Marks.

Decision and costs

1. The Removal Opponents have not rebutted the allegation of non-use and I refuse to exercise my discretion to allow the Trade Marks to remain registered in respect of yeast. Accordingly, I direct that one month from the date of this decision, ‘yeast’ be deleted from the specification of goods for each of the Trade Marks (registration numbers 1209504, 1260590 and 1271447).

2. Should the Registrar be served with a notice of appeal before that time, I direct that ‘yeast’ should not be deleted from the specifications of goods until the appeal has been decided or discontinued, and that the disposition of the registrations be in accordance with the Court’s orders or direction.

3. Both parties requested an award for costs. The usual rule is that costs follow the event, and there is no reason to depart from that. Accordingly, I award costs against the Removal Opponents in accordance with s 221, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth) in respect of registration 1209504. In respect of registrations 1260590 and 1271447 I award costs against the Removal Opponents in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd.29

Nicole Worth Hearing Officer

Oppositions and Hearings Trade Marks and Designs 19 February 2024

²⁹ [2001] ATMO 78 (Hearing Officer Williams).