Mark Robinson v Venus Citrus Pty Ltd as trustee for the Venus Citrus Trust

[2025] ATMO 4

TRADE MARKS ACT 1995

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

Re:Oppositions by Mark Robinson to applications under section 92 of the Trade Marks Act 1995 (Cth) by Venus Citrus Pty Ltd as trustee for The Venus Citrus Trust for partial removal of trade mark numbers 1139549 A KISS OF NATURE / THE KISS OF NATURE (series) (29), 1139550 A KISS OF NATURE / THE KISS OF NATURE (series) (29) and 1370455 NATURE’S KISS & Device (29) – all in the name of Mark Robinson and Brenda Robinson

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Norman Waterhouse Lawyers Pty Ltd

Decision:

2025 ATMO 4

Trade Marks Act 1995 (Cth) – opposition under s 96 to applications under section 92(4)(b) for partial removal of the trade marks – use established for some of the relevant goods – discretion not exercised for remaining goods – trade marks to be partially removed

Background

1.     Mark and Brenda Robinson (‘Registered Owners’) are the joint owners of the following trade marks (collectively ‘Registrations’):

Trade Mark Number	Trade Mark (collectively ‘Registered Marks’)	Filing Date	Specification
1139549	A KISS OF NATURE THE KISS OF NATURE (series)	8 October 2006	Class 29:  Meat, fish, poultry and game; meat and fish extracts, preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats
1139550	A KISS OF NATURE THE KISS OF NATURE (series)	8 October 2006	Class 31: Agricultural, horticultural and forestry products and grains: live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals
1370455	(‘Registered Logo’)	6 July 2010	Class 29:  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

2. On 3 May 2023, Venus Citrus Pty Ltd as trustee for The Venus Citrus Trust (‘Applicant’) filed applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] for the partial removal of the Registered Marks from the Register of Trade Marks (‘Removal Applications’) seeking to have removed the following goods on the grounds of non-use:

·     ‘preserved, dried and cooked fruits and vegetables’ from the class 29 registrations; and

·     ‘fresh fruits and vegetables’ from the class 31 registration (collectively ‘Removal Goods’).

[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.     Mark Robinson (‘Opponent’) filed Notices of Intention to Oppose the Removal Applications on 22 June 2023 followed in each case by a Statement of Grounds and Particulars (‘SGP’).[2]  On 2 September 2023, the Applicant filed Notices of Intention to Defend the Removal Applications.

[2] Although a separate Statement of Grounds and Particulars was filed in each Removal Application, the SGPs are identical and hence can be referred to in the singular for the purposes of this decision.

4. The parties then had the opportunity to file evidence in accordance with the Regulations. The Opponent filed his Evidence in Support of the oppositions on 29 October 2023. The Applicant filed Evidence in Answer to the oppositions on 15 March 2024 and the Opponent filed Evidence in Reply on 6 May 2024.

5.     Once the evidence stage concluded, the parties were given the opportunity to request a hearing and both parties asked to be heard by way of written submissions.  The Opponent filed written submissions on 30 November 2024.  The Applicant’s written submissions were prepared by Marissa Mackie of Norman Waterhouse Lawyers and filed on 10 December 2024.  This matter has been allocated to me to decide as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Evidence

6.     The following evidence was filed in the proceedings:

7.     Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Nature’s Kiss Non Use Evidence in Support: Declaration of Mark Robinson, Opponent (‘Robinson 1’)	29 October 2023	NK100, 115, 120
Nature’s Kiss Non-use Exhibits Evidence in Support: Declaration of Mark Robinson (‘Robinson 2’)	29 October 2023	NK100, 110, 115, 120, 130, 142, 150, 151, 300
Confidential Declaration of Mark Robinson (‘Robinson 3’)	29 October 2023	NK200
Evidence in answer
Marissa Mackie, solicitor for the Applicant (‘Mackie’)	15 March 2024	MM-1 to MM-4
Evidence in Reply
Mark Robinson (‘Robinson 4’)	6 May 2024	NK340, NK350, NK360, NK365, NK370, NK375, NK380, NK390, NK392, NK395, NK399, NK410, NK420, NK425, NK430, NK435, NK460, NK465, NK470, NK480

Opponent’s Evidence

8.     The Opponent claims that the Registered Marks have been continuously used by the Registered Owners’ authorised users Nature’s Blend Pty Ltd (‘Nature’s Blend’) and Robinsons Honey which entities are wholly owned by the Registered Owners.

9.     The Opponent attests that the Registered Marks are promoted on:

i.the Nature’s Blend business cards of the Registered Owners as illustrated in Exhibit NK100;

ii.     inner and outer packaging of their goods including flaxseed, vinegar, nuts, spreads, confectionery, fruit, vegetables, mayonnaise, juices, trail mix (being a mix of nuts, fruits, seeds, peas, coconut etc), honey and honey products, plants and agriculture services;

iii.Nature’s Blend invoices to wholesale and direct customers being green grocers, supermarkets, pharmacies, health food stores and other outlets.  Examples of invoices dated from 14 April 2020 to 21 March 2023 are provided as Exhibit NK200;

iv.events such as the Nature’s Blend Facebook Taste Testing on 20 October 2017;

v.vehicles (illustrated in NK130); and

vi.the Registered Owners’ Facebook Accounts for Nature’s Blend, Robinsons Honey, OMEGA Walnuts and Making Good Food Better.

10.    Robinson 4 reiterates the Opponent’s earlier claim that the Registered Owners wholly own Nature’s Blend and the business Robinsons Honey and declares that the Registered Owners are sole  shareholders of Nature’s Blend.  Accordingly, the Opponent attests that the Registered Owners have full control of these entities and their use of the Registered Marks as well as the Nature’s Blend website at (‘Nature’s Blend Website’).

11.    The Opponent declares that the Registered Owners’ OMEGA Walnuts Facebook account is followed by various fruit and vegetable retailers and further notes that the dictionary definition of a walnut is a fruit specifically a dried fruit.

Applicant’s Evidence

12.    Much of Mackie consists of submissions and criticisms of the Opponent’s evidence.  It is not presently necessary to summarise this part of Mackie.

13.    Mackie attests that Robinson’s Honey is a business name held by Nature’s Blend and not a separate company.  Extracts from the Australia Business Register for Nature’s Blend and Robinson Honey are provided.

14.    Mackie declares that the Applicant’s attorney undertook research into the Registered Owners’ use of the Registered Marks and annexes historical extracts of the Nature’s Blend Website obtained using the Wayback Machine, as well as all posts on the Facebook accounts of both Nature’s Blend and Robinson’s Honey from 1 March 2020 to 17 May 2023.

Legal Framework

15. Part 9 of the Act deals with the removal of trade marks from the Register on account of non-use. In this regard, s 92(4)(b) 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)  …

(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.

16. Pursuant to s 93(2), a non-use application under s 92(4)(b) may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark.[3]   The Removal Applications comply with this requirement.

[3] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

17. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Registered Marks is the three year period ending on 3 April 2023 (‘Relevant Period’).

18.    The Applicant contends that the Opponent has failed to establish that it used, or authorised use, of the Registered Marks during the Relevant Period for the Removal Goods or and that there was no obstacle to use.  The Opponent bears the onus of rebutting those allegations.[4]  The Opponent must establish on the balance of probabilities[5] that it has used or authorised use of the Registered Marks (or a mark with additions or alterations not substantially affecting the mark) in good faith in Australia for the Removal Goods in the Relevant Period.

[4] s 100(1).

[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

19.    In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.[6]  Little weight is to be given to assertions of use which are not supported by documentary evidence but provided the use is in good faith, ‘a single bona fide use of the mark’[7] may be enough to rebut an allegation of non-use.   However, if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[8]

[6] [2001] FCA 261, [16].

[7] Ibid [17].

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

20.    Section 101 provides the Registrar with the discretion to remove the Registered Marks from the Register in respect of any, or all, of the Removal Goods. If satisfied that it is reasonable to do so, the Registrar may decline to remove any of the Registered Marks from the Register even if the grounds on which the non-use applications were made have been established. 

Discussion

Preliminary Comments

21.    Firstly in both Robinson 4 and the Opponent’s written submissions, the Opponent contends that I should disregard Mackie on the basis that Mackie refers to trade mark number 1139950 which mark is not owned by the Registered Owners.  In referring to trade mark number 1139950, Mackie identifies the mark covered by that registration as A KISS OF NATURE, THE KISS OF NATURE and hence it is readily apparent that the reference to 1139950 is an inconsequential typographical error which should be 1139550.  There is no basis for me to disregard Mackie. 

22.    Each of the Opponent’s declarations refers to various ‘exhibits’.  The contents of these ‘exhibits’ are contained in the body of one or more of the declarations and often referred to in one or more of the declarations even if the contents are not displayed.  Where the contents of the ‘exhibit’ are not displayed in the declaration under discussion, I will discuss those exhibits in connection with a declaration in which the contents of the exhibit are set out.

23.    The Applicant is critical of the Opponent’s evidence on the basis that much of the evidence falls outside the Relevant Period.  The Opponent submits in Robinson 4 that any Internet or social media posts outside the Relevant Period are still visible and constitute continuous marketing from the date of the post.  I disagree that such posts constitute use in the Relevant Period simply because they may still be visible if consumers search through the social media account (which in my view is highly improbable).  For example, Exhibit NK 115 dates from 2014 and whilst that post may still exist on the social media account, it is unlikely that consumers are seeing the post.  Use of a mark on a social media post outside the Relevant Period does not constitute use of the mark within the Relevant Period.[9]  At best, such posts are relevant to consideration of whether to exercise my discretion if no use of the Registered Marks is established.

[9] See Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [76] (Yates, Stewart and Rofe JJ). 

Use of the Registered Marks during the Relevant Period

24.    In my view, Robinson 1 does not demonstrate any use of the Registered Marks during the Relevant Period for the Removal Goods.  The exhibits are either dated outside the Relevant Period (Exhibit NK115) or do not illustrate the Removal Goods (Exhibits NK100 and NK120).

25.    In relation to Robinson 2, once again a number of the exhibits are dated outside the Relevant Period (Exhibits NK 115, NK130) or do not feature the Removal Goods (Exhibits NK100, NK120) or do not feature the Registered Marks (Exhibit NK150, NK151 and NK300).  Exhibit NK 110 features undated photographs of cartons bearing the marks A KISS OF NATURE or   (‘Used Logo’) with a product next to the packaging such as peanut or almond spread, honey and honey products, trail mix, walnuts or almonds.  Similarly, Exhibit NK142 is an undated picture of a market stand featuring two cartons with either A KISS OF NATURE or the Used Logo and a selection of products including honey and almond spread.  It is difficult to discern the other products but it appears that walnuts may be featured.  In any event, as these images are undated, they do not conclusively prove use of the Registered Marks during the Relevant Period.  Hence Robinson 2 does not provide any conclusive evidence of use of the Registered Marks for the Removal Goods in the Relevant Period.

26.    Robinson 3 includes at Exhibit NK200 copies of various invoices during the Relevant Period which have the following header (‘Invoices’):

27.    The Invoices list for sale the following products: honey, flaxseed, nuts, vinegar, orange juice, bee pollen and other items.  Most relevantly, a number of the Invoices in the Relevant Period include sales of ‘OMEGA TRAIL MIX NATKISS’.  This is the only use in Robinson 3 of either of the Registered Marks during the Relevant Period which may constitute use for some of the Removal Goods sufficient for the purpose of rebutting the allegation of non-use.

28.    Robinson 4 includes, as Exhibit NK370, examples of posts on the Registered Owners’ OMEGA Walnuts account.  None of these posts is dated within the Relevant Period.  However, the post of 24 July 2023 features Nature’s Blend OMEGA TRAIL MIX, a mix of dried fruits and nuts, in its packaging which features ‘A KISS OF NATURE’ in the top left hand corner. 

29.    The Opponent also points to a number of Facebook posts in the annexures to Mackie as evidence of its use of the Registered Marks during the Relevant Period for the Removal Goods.  Most of the posts referred to by the Opponent make no mention of the Registered Marks and those that do, do not show use in relation to the Removal Goods.  For example, Robinson 4 appears to claim that a post on 18 January 2021 on the Nature’s Blend Facebook account stating ‘Don’t forget to add your Robinsons HONEYcomb to your Cheese for your platter! OMEGAMayo for your Seafood!’ is use of one or more of the Registered Marks for fresh fruit and vegetables because the platters in the picture include seafood and fruits.  Firstly, this post does not feature the Registered Marks and secondly, promoting honeycomb for use on a platter of mixed foods would, had the Registered Marks been used, only be use in relation to honeycomb and not third party products which the consumer must purchase from other suppliers.

30.    In Robinson 4, the Opponent attests that all of its products are sent to customers in cartons featuring the marks A KISS OF NATURE and the Used Logo.  According to Robinson 2, this packaging was adopted in June 2022.

31.    In Robinson 4, the Opponent claims that it has built a reputation in the Fruit & Vegetable industry with Brenda Robinson winning the Australian Women’s Small Business Champion Award Agriculture Services 2023 and being a finalist for Agriculture Services 2022.  These awards appear to relate to Brenda Robinson’s work in relation to Robinson’s Honey.  There is no evidence that the Registered Owners used the Registered Marks in promoting these accolades.

32.    I am satisfied based on the Invoices and packaging for the Nature’s Blend OMEGA Trail Mix that the Registered Owners used the trade mark A KISS OF NATURE during the Relevant Period for trail mix.  The Applicant argues that this use does not constitute use for the Removal Goods as dried fruit is simply an ingredient of trail mix and the two products are not the same.  In this regard, the Applicant refers to Gleeson J’s comments set out below in Trident Seafoods Corp v Trident Foods Pty Ltd:

The use of a trade mark on goods denotes the trade source of those goods. Where those goods are food stuffs, there is a separate question whether the trade source of the ingredients are the same as the trade source of the goods. As appears from the definition of “use” of a trade mark in s 7(4) [of the Act], a trade mark distinguishes goods by its application upon or in relation to the goods. Where a food is an ingredient of goods, the application of a trade mark upon the goods may do nothing to distinguish that ingredient.

Accordingly, and while I accept that there may be trade mark owners who have registrations for use of the trade mark in relation to goods that are ingredients of other goods in relation to which they are also registered to use the trade mark, in my view, the application of a trade mark to a particular food product is use of the trade mark in relation to those goods only, and generally not to the ingredients from which the goods are made…[10] 

[10] [2018] FCA 1490, [64]-[65], affirmed on appeal [2019] FCAFC 100, [41]-[42] (Reeves, Jagot and Rangiah JJ).

33.    In my view, the question of whether use of A KISS OF NATURE for trail mix constitutes use of that mark for the registered goods ‘dried fruit’ is finely balanced.  Trail mix is defined as ‘a mixture of dried fruits, nuts, etc used as a light but sustaining snack…’[11] and a nut is defined as a dried fruit.[12]  Accordingly, adopting a scientific approach, trail mix is a mixture of dried fruits.  However, the Full Federal Court has recently held that it is the ordinary meaning rather than the technical or dictionary meaning of a specification which is to be considered in construing the scope of the monopoly afforded by a registration.

[11] Macquarie Dictionary (online at 2 January 2025) ‘trail mix’.

[12] Ibid ‘nut’ definition 1.

34.    In Killer Queen, LLC v Taylor (‘Killer Queen’), the Full Federal Court considered the question of whether ‘footwear’ and ‘headgear’ fell within the registered goods ‘clothes’.  The Full Court held that this question ‘is a matter of construction, taking into account the ordinary meaning of the word “clothes” within the application of the broader statutory scheme for the registration of trade marks’.[13] The Full Court made the following observations:

(1) Parliament can be taken to have intended the Register to speak for itself. In most cases people who peruse an extract from the Register should be able to understand what it says without being obliged to make inquiries about the business history or previous conduct of the registered owner of the mark;

(2) the scope of a statutory monopoly. It should be taken to be expressed in a manner that is not reasonably capable of being misunderstood;

(3)   It may be taken, in construing the specification of goods or services, that it is a considered statement by the applicant which should be read as a whole to determine its meaning and effect;

(4)   The Register should be understood through the eyes of persons interested to know the scope of the monopoly. This is likely to include other traders who may be interested in using or licensing the trade mark and also persons interested in dealing with the trade mark, for instance by seeking a licence or taking an assignment of it. Generally, such persons can be expected to be familiar with the language and expressions used in the trade concerned;

(5)   Unless it is shown that the words used to define the goods or services have a particular or special meaning to those to whom they are taken to be addressed, they should be construed as ordinary English words, the definition of which will be a matter for the Court. On occasion, the construction of the words used may be the subject of evidence.[14]

[13] [2024] FCAFC 149, [49] (Yates, Burley and Rofe JJ).

[14] Ibid, [57] (citations omitted).

35.    Hence, in Killer Queen, given that at least one ordinary meaning of ‘clothes’ is garments covering the body and not the head or feet, and in the context of the registered owner choosing not to nominate any other items in the specification such as footwear and headgear, the registration for ‘clothes’ was found not to cover headwear and footwear. 

36.    In the present case, the Registered Owners have essentially adopted the class heading for the Registrations (in use at the time of applying for registration) and have not consciously included or excluded particular items.  Dried fruits are the dominant ingredient of trail mix.  Further, this is not an instance where the ingredients are different to the food product such as flour and bread.  The dried fruits have not changed their form in the product being sold.  Accordingly, on balance, I consider the use of A KISS OF NATURE for trail mix to be use of that registered mark during the Relevant Period for ‘dried fruit’.  If I am wrong in this regard, given the close similarity of dried fruits and trail mix, I would consider this an appropriate instance to exercise my discretion under s 101(4).   

37.    Despite the Opponent’s submissions, I do not consider walnuts to be fresh fruits.  Taking into account consumers’ ordinary understanding of the term ‘fruits’, consumers would not consider this term to include walnuts or other nuts.  Further, there is no evidence within the Relevant Period demonstrating use of the Registered Marks in relation to walnuts and as the Applicant notes, any evidence of sales of walnuts by the Registered Owners appear to be processed walnuts rather than fresh walnuts.   

38.    The Invoices also show sales of orange juice during the Relevant Period.  On an ordinary construction of the meaning of the Removal Goods, juice does not fall within the description. 

39.    I do not believe that the Opponent’s evidence demonstrates any use of the Registered Marks for the other Removal Goods being ‘preserved and cooked fruits; preserved, dried and cooked vegetables’ and ‘fresh fruits and vegetables’.

Is use of the Used Logo use of the Registered Logo?

40.    The Opponent claims that all of its products are shipped in boxes which bear the Registered Marks.  This outer packaging bears the Used Logo and not the Registered Logo.   However, pursuant to s 100(3)(a), use of a trade mark with additions or alterations not substantially affecting the identity of the registered mark during the Relevant Period is sufficient to rebut an allegation of non-use. 

41.    The marks in question are shown side by side below:

Used Logo Registered Logo

42.    I consider that the Used Logo and Registered Logo are substantially identical as they have the same ‘dominant cognitive cues’.   In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’),[15] the Full Federal Court found that use of the composite mark  was use of a mark with additions or alterations not substantially affecting the identity of the registered mark HARBOUR LIGHTS.  In relation to the composite mark, the Full Federal Court found that HARBOUR LIGHTS was the badge of origin being the first component presented in large emphatic letters, the five stars did not substantially affect the identity of the mark and the slogan was a ‘barely noticeable piece of text’.[16]

[15] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

[16] Ibid [206]-[209].

43.    Also, in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[17] the Full Federal Court found the following marks to be substantially identical on the basis that the dominant cognitive cues or essential elements are the word ‘Insight’ and circular devices situated to the left of the words:[18]

and      

[17] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

[18] Ibid [56].

44.    In the present case, I regard the dominant cognitive cues as the words NATURE’S KISS and the Lips Device.  The V Device in the Used Logo is not highly distinctive.  I am satisfied that there is a total impression of resemblance between the Used Logo and the Registered Logo. 

45.    The Applicant argues that due to the number of trade marks appearing on the Registered Owner’s outer packaging, ‘any ordinary viewer of the Opponents’ outer packaging, if viewing such packaging in isolation, may not be readily able to correctly identify the origin of the goods contained therein’.  I am not persuaded by this submission.  The Used Logo appears prominently on the side of the boxes as well as on the bottom, in close proximity to the house mark NATURE’S BLEND.  Consumers ordering the OMEGA trail mix will receive those products in the cartons bearing the Used Logo and accordingly, will associate the Used Logo with Nature’s Blend for dried fruits. 

46.    Hence, I find that the Registered Logo has been used in relation to preserved and dried fruits.  In the absence of any dated evidence that the Registered Owners sold or offered for sale the other Removal Goods during the Relevant Period, I am not satisfied that the Registered Logo, or a mark with additions or alterations not substantially affecting its identity, was used for those goods.

Is Nature’s Blend an authorised user of the Registered Marks?

47.    Use of a trade mark by a person under the control of the owner of the mark is an authorised use of the mark which inures to the benefit of the registered owner.[19]

[19] S 7(3) and s 8(1).

48.    I have found that the Registered Marks have been used in relation to NATURE’S BLEND preserved and dried fruits during the Relevant Period and this use is by Nature’s Blend.  The Applicant concedes that the Registered Owners were the sole shareholders and directors of Nature’s Blend until at least 26 November 2021 as evidenced by the Australian Securities and Investments Commission company extract provided at Exhibit NK360 of Robinson 4 (‘ASIC Extract’) but notes that there is no documentary evidence that this was still the case after 26 November 2021.      

49.    The ASIC Extract shows that the Registered Owners have been the sole shareholders and office holders of Nature’s Blend since its incorporation in 2006.  Considering the totality of the Opponent’s evidence, there is no reason to believe that this longstanding situation changed between 2021 and the filing of the Removal Applications.  I am satisfied that the Registered Owners control Nature’s Blend and that use of the Registered Marks by that company is use under the control of the Registered Owners.

Registrar’s Discretion

50. Pursuant to s 101, the Registrar has a broad discretion not to remove or restrict the goods of a trade mark if it is satisfied that it is reasonable to do so. This discretion is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’[20] being the removal of unused marks from the Register.  ‘Exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[21] 

[20] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ) (‘Lodestar’).

[21] Ibid [69].

51.    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”, 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. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.[22]

[22] [2008] FCA 934, [210] (emphasis in original) (citations omitted).

52.    The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[23]

[23] Lodestar (n 17) [44].

53.    In the present case, the Opponent has not submitted that I should exercise discretion to retain the Registrations for all of the Removal Goods.  However, the Opponent is not represented by attorneys.  As I have noted above, I consider the question of whether the use of the Registered Marks in relation to trail mix constitutes use of the marks for dried fruits to be a close call.  Given that dried fruits are the principal ingredients of trail mix, that trail mix and dried fruits are sold side by side in the same outlets, I believe that there is a high likelihood of confusion if another trader was to use a similar mark to either of the Registered Marks for dried fruits in view of the Registered Owners’ use of its marks for trail mark.  Accordingly, I am of the view that if I am not correct that use of the Registered Marks for trail mix constitutes use for dried fruits, it is in the public interest to exercise my discretion and retain the class 29 registrations for dried fruits. 

Decision

54.    I have found that the Opponent has established use of the registered mark A KISS OF NATURE / THE KISS OF NATURE (series) for dried fruit.  Accordingly, I direct that the goods of registration 1139549 be restricted to:

Class 29:  Meat, fish, poultry and game; meat and fish extracts, preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

55.    The Opponent has not established any use of the registered mark A KISS OF NATURE / THE KISS OF NATURE (series) for ‘fresh fruits and vegetables’ and I direct that the goods of registration 1139550 be amended to:

Class 31: Agricultural, horticultural and forestry products and grains: live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals

56.    The Opponent has established use of the Registered Logo for ‘dried fruits’ and I direct that the goods of registration 1370455 be amended to:

Class 29:  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

57.    The parties have the right to appeal this decision. The above amendments should be made no earlier than one month from this decision.  If the Registrar is served with a notice of appeal, the disposition of the Removal Applications shall be dealt with as the Court sees fit.

58. Both parties have sought an award of costs. Costs generally follow the event. The partial removal application against registration 1139550 is successful and accordingly, I award costs against the Opponent under s 221 in accordance with Schedule 8 of the Regulations. With respect to the partial removal applications against registrations 1139549 and 1370455, both parties have had a degree of success and accordingly, I decline to award costs in these two matters.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

8 January 2025