Matchlow Pty Ltd v Godfrey Mantle
[2018] ATMO 96
•22 June 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Matchlow Pty Ltd to application under section 92 of the Act by Godfrey Mantle to partially remove trade mark number 1463296 (35), (41), (43), (44), - THE GARDENS OF BABYLON - in the name of Matchlow Pty Ltd
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Richard Cobden of Counsel instructed by Ian Tannahill, a partner of Ahearn Fox. Applicant: Mark Metzeling of Macpherson Kelley. |
| Decision: | 2018 ATMO 96 Trade Marks Act 1995 Section 96 opposition to removal of Trade Mark: paragraph 92(4)(b) application for partial removal; Trade Mark not used during Relevant Period; subsection 101(3) exercise of Registrar’s discretion – ownership – and continuing intention; Trade Mark to remain registered for the Impugned Services. |
Background
As allowed by section 96 of the Trade Marks Act 1995 (‘the Act’) Matchlow Pty Ltd (‘the Opponent’) has opposed an application (‘the Application’) by Godfrey Mantle (‘the Applicant’) under paragraph 92(4)(b) of the Act for the partial removal of the trade mark appearing below for all of the services (‘the Impugned Services’) for which it is registered in Class 43:[1]
[1] The Impugned Services are those italicised within in the specification of services.
Registration No: 1463296
Priority Date: 25 May 2010 (Divisional of application 1363716[2])
[2] I will term this application, which has subsequently lapsed, ‘the Parent’.
Services:Class 35: Retail and wholesale services, but excluding the retail and wholesale of motor vehicles
Class 41: Services in this class provided in connection with the operation or botanical gardens, zoological parks, zoological gardens, aquariums, and similar institutions; recreational services, including the provision of amusement parks and entertainment centres; hire of recreational, sports and entertainment venues; all national parks and wildlife services included in this class; health club services; conduct of physical fitness programs and instruction clinics; provision of swimming facilities; provision of recreation, exercise. gymnasium and sports facilities; physical education including gymnastics, exercise and sports instruction and training; education services in relation to personal well-being, health and fitness, stress management, meditation and relaxation techniques, diet, healthy eating, preparation of meals and beverages, weight loss, weight gain and weight management programs; supervision services in relation to personal well-being, health and fitness, stress management, meditation and relaxation techniques, diet, healthy eating, preparation of meals and beverages, weight loss, weight gain and weight management programs
Class 43: Accommodation and resort facilities; provision of foods and beverages; services rendered by restaurants, cafes, cafeterias and take away food establishments engaged in the preparation and/or sale of food stuffs and/or beverages; advisory services relating to the preparation of meals and beverages
Class 44: Services provided by a psychologist; services provided by a dietician; gardening and landscaping services
Trade Mark: THE GARDENS OF BABYLON
(‘the Trade Mark’)
The Opposition process
The opposition process has followed the timetable hereunder:
·The Application for Removal filed by the Applicant on 25 October 2016;
·Notice of Intention to Oppose the Removal of a Trade Mark filed by the Opponent on 14 December 2016;
·Statement of Grounds and Particulars filed by Opponent on 22 December 2016 citing, inter alia, the following grounds of opposition:
1. On the day on which the [Parent], (application No. 1363716), was filed, the Opponent, […], had an intention in good faith:
(a) to use [the Trade Mark] in Australia in respect of the registered services in class 43; or
(b) to authorise the use of [the Trade Mark] in Australia in respect of the registered services in class 43.
2. During the period from 25 September 2013 to 25 September 2016 [the Opponent], or an authorized user, has used [the Trade Mark] with additions or alterations that do not substantially alter its identity, in respect of the [Impugned Services] in class 43, or where there has been no use of [the Trade Mark] during the period from 25 September 2013 to 25 September 2016 in respect of the registered services in class 43, the non-use was due to circumstances that were an obstacle to the use of [the Trade Mark] during that period.
[…]
15.[The Opponent] intends to lead evidence which will show they have not abandoned their intention to use [the Trade Mark]. The evidence will include details of [the Opponent’s] plans to establish a wellness and lifestyle centre to be known as THE GARDENS OF BABYLON, as well as details of the progress that [the Opponent] has made in this regard.
[…]
17.The evidence will also show that [the Opponent] has made “an objectively ascertainable commitment” to produce a “vendible” product that will traded under [the Trade Mark] as contemplated in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 and (2001) 107 FCR 166.
·Notice of Intention to Defend was filed by the Applicant on 14 February 2017;
·Evidence in Support was filed by the Opponent on 18 May 2017 comprising the following declarations:
oGraham David Mitchell, a director of the Opponent, made on 16 May 2017 together with Exhibits GDM-1 to GDM-20 (‘Mitchell 1’);
oGraham David Mitchell made on 17 May 2017 together with Exhibits GDM-21 to GDM-24 (‘Mitchell 2’);
oKelvin George Berger made on 17 May 2017 (‘the Berger Declaration’);
oCole James Wilkinson made on 16 May 2017 (‘the Wilkinson Declaration’), and
oIan Robert Tannahill made on 17 May 2017 (‘the Tannahill Declaration’).
·Evidence in Answer was filed by the Applicant on 21 August 2017 and comprises a declaration by the Applicant, made on 17 August 2017 with Exhibits MK-1 to MK-5 (‘the Applicant’s Declaration’);
·Evidence in Reply was filed by the Opponent on 27 October 2017 and comprises a further declaration by Graham David Mitchell made on 27 October 2017 together with Exhibits GDM-24 to GDM-44 (‘Mitchell 3’).
Thereafter, both parties were informed of their right to be heard or to make written submissions. Both parties requested to be heard. The hearing was in Canberra on 14 May 2018 before me as a delegate of the Registrar of Trade Marks. At the hearing the Opponent was represented by Richard Cobden of Counsel instructed by Ian Tannahill, a partner of Ahearn Fox; the Applicant was represented by Mark Metzeling of Macpherson Kelley. Both parties supplemented their oral submissions with written summaries.
Principles
As the application for removal was filed by the Applicant on 25 October 2016, the relevant period during which (in order to establish its opposition) the Opponent must show use of the Trade Mark is the three year period ending on 25 September 2016. Evidence of use which is from either before or after[3] that three year period (‘the Relevant Period’) will not establish the Opponent’s opposition to the removal of the Trade Mark.
[3] I note that in some circumstances in which the opposition to removal has not been established by reason of use in the relevant period, the use of a trade mark after the relevant period can be a relevant factor considered by the Registrar when exercising her discretion under section 101 of the Act to leave a trade mark registered for some or all of the goods in respect of which removal had been sought.
Concerning the onus in these proceedings, section 100 of the Act relevantly provides:
100Burden on opponent to establish use of trade mark etc.
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
[…]
(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds[4] (‘Woolly Bull’).
[4] [2001] FCA 261; 107 FCR 166 at 172.
However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’: Nodoz Trade Mark (‘Nodoz’).[5]
[5] [1962] RPC 1 at 7 per Wilberforce J.
The decision maker may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [6]
[6] [1977] RPC 131.
The relevant standard of proof that the Opponent bears is on the balance of probabilities.[7] In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [Stress added]
[7] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
In Blount Inc v Registrar of Trade Marks[8] Branson J observed:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
[8] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Mark, without alterations or additions which substantially affect its identity,[9] during the Relevant Period, in relation to the goods in respect of which it is registered to the satisfaction of the Registrar, the opposition to removal will not be established.
[9] Subsections 7(1) and 100(3)(b)(i) of the Act refer.
Even if the Trade Mark has not been used and the ground for removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the Impugned Services if satisfied it is reasonable to do so. The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.
The Evidence
Before discussing the evidence in detail I note that Mr Metzeling submitted that some of the Opponent’s evidence lacks supporting corroboration in the way of exhibits to the declarations. However, the various declarations in the Opponent’s evidence corroborate each other and the standard of proof is on the balance of probabilities; thus, if both Mr Mitchell and Mr Berger state, for instance, that delays have been introduced in their construction project by very high rainfall, and this is consistent with with my observations of the world, it is preferable to accept it as fact. If it is not a fact, it is open to the Applicant to challenge such statements in Evidence in Answer. The Opponent’s evidence, where unsupported by corroborating exhibits, appears to me to be forthright, coherent, consistent, and does not appear to overstate its claims.
The Opponent
Mr Mitchell states:
I am a director of [the Opponent], […]. I have been a director of [the Opponent] since 5 December 1991.
I am the managing director of G.D. Mitchell Enterprises Pty Ltd, (hereinafter referred to as “ME”), trading as Mitchell’s Quality Foods, (hereinafter referred to as “MQF”). I have held this position since 26 September 1986.
I am the managing director of Gardens of Babylon Pty Ltd, (hereinafter referred to as “GOB”). I have held this position since 14 May 2012.
I add that a report by Trademark Investigation Services dated 10 August 2017[10] establishes that the Opponent is the sole shareholder of GOB and that any use of the Trade Mark by GOB is therefore, in terms of subsection 8(4) of the Act, an authorised use under the financial control of the Opponent. It also follows that where there may be uncertainty whether any use of the Trade Mark is by the Opponent or GOB, this does not affect the outcome of this decision as any such use is either by the Opponent or under the Opponent’s aegis. Accordingly, when I refer in this decision to ‘use of the Trade Mark by the Opponent’ I also refer to any such use by GOB.
[10] Exhibit MK4 to the Applicant’s Declaration.
Mr Mitchell further states:
In 1986 I set out to develop a weight loss program that would be easy, enjoyable and would really work. I myself had struggled to lose weight and had tried many different weight loss programs without long lasting success. Whether it was the regimentation of attending classes; eating unappetising packaged foods, or time-consuming food preparation, none of the weight loss programs seemed to work for me.
I knew there had to be an easier and better way. After extensive research in Australia and overseas, and with the help of experienced chefs and dieticians, I developed a program to help people lose weight in a healthy way, supplying nutritionally balanced calorie controlled meals. The program involved providing customers with all of their meals for a whole week. The meals would be freshly prepared and delivered to the customer’s address.
On 9 April 1987 I applied under application No. 463130 to register the trade mark LITE N’ EASY DIET CUISINE in class 29 in respect of “calorie controlled food items”. This application subsequently proceeded to registration and was subsequently assigned by me to [the Opponent] in April 1998. The registration is currently in force till 9 April 2018. Attached hereto and marked Exhibit GDM-2 is a status report for registration No. 463130.[11]
Since I January 1987 ME has continuously used the trade mark LITE N’ EASY under licence firstly from me and subsequently from [the Opponent]. The trade mark LITE N’ EASY has been used by ME in respect of a wide range of foods and beverages, including prepared meals, as well as the delivery of foods and beverages and the provision of advice concerning health related matters, including nutrition, the preparation of meal plans and exercise.
[11] I note that the current status of the registration is ‘Expired – Renewal Possible’.
Whilst the goods were originally advertised as weight-loss products, they became to be promoted as healthy foods – delivered to customers for consumption on a weekly basis.
Through his interest in healthy eating, wellbeing, and lifestyle, Mr Mitchell states that he became interested in health and wellness resorts. Although the quote from Mitchell 1, below, is lengthy it provides background and context for my decision. Mr Mitchell states:[12]
[12] Mitchell 1 from paragraph 27.
By mid 2006 I could see the need for a health and wellness resort that would underpin and compliment [sic] the Lite N’ Easy business. Further I envisaged that my health and wellness resort would be world class.
Around this time I commenced research on wellness resorts both in Australia and abroad. I personally visited multiple resorts locally and overseas. I noted that many resorts were located in remote locations that often entailed a long and arduous journey lasting many hours. My goal was to offer patrons as shorter [sic] commute time as possible.
Local wellness resorts Camp Eden and Gwinganna both have extensive natural gardens, which provide an important benefit in the rehabilitation and healing process allowing people to regain control of their lives. Camp Eden, in reference to the Garden of Eden, was established in 1984. It is located at the end of the Currumbin Valley amid 120 hectares (290 acres) of pristine tropical rainforest and manicured gardens.[13]
[13] Exhibit GMD-14 is copies of selected pages taken from the website is located on 200 hectares (500 acres) in the Tallebudgera Valley. The resort is surrounded by bushland and offers patrons both ocean and valley views.[14]
[14] Exhibit GMD-14 is copies of selected pages taken from the website 2007 I set about looking for a suitable location for the proposed health and wellness resort referred to [above]. In my mind the site needed to be large enough to incorporate a health and wellness resort, whilst surrounded by natural beauty. Further, in my mind the site needed to be close to an airport so as to offer patrons a short transit time, (ideally less than 30 minutes) and be close to a residential area so that staff would have a short commute to and from work each day.
In 2008 [the Opponent] purchased some 200 acres of land in the Currumbin Valley, (hereinafter referred to as the “Currumbin property”), including the sheer 2000ft cliff face of Mount Tallebudgera, for approximately $4.2 million. The Currumbin property contains the remnants of seven banana farms together with more than 100 acres of pristine natural rain forest, and is approximately 2kms away from Camp Eden and 6kms from Gwinganna, located in the nearby Tallebudgera Valley.
Having acquired the Currumbin property […] my goal has been to establish a world famous health and wellness resort with the largest botanical garden of its type on the east coast of Australia on the Currumbin property. I estimate the transit time for guests travelling from Coolangatta Airport to the resort will be 25 minutes and that staff will have an average commute time of 35 minutes.
In August 2008 Berger, a business that is famous for work they have done in relation to the construction of golf courses and beautification projects, tendered for and was subsequently awarded a contract to manage and coordinate all of the contract and subcontract labour necessary to develop the Currumbin property and construct the proposed health and wellness resort, including the botanical garden [located there].
A plan for this enormous project was drawn up by Berger with assistance from Read Project Services, a specialist architectural firm. The plan included the construction of new machinery sheds, bridges, bores, irrigation systems, roads and access tracks, facilities for storm water control, power infrastructure, communications networks, water reticulation and storage facilities, internal and external fencing, cattle yards and off stream watering for livestock. The plan also encompassed the renovation of the manager’s residence (main homestead and office), caretaker’s residence, cottage (security office) and historical banana packing facility. Attached hereto and marked Exhibit GDM-16 are copies of drawings prepared by Read Project Services, including a conceptual site plan and conceptual drawings of some of the resort buildings.
Due to the challenging nature of the terrain, a small specialised team of industry professionals was chosen to assist Berger with the delivery of the desired outcome, including the businesses listed below:
• Byrns Lardner Architectural & Environmental
• Habitat Environmental Management[15]
[15] A lengthy planning application, dated August 2009, for remediation works at the Currumbin property filed by Habitat Environment Management with the Gold Coast Council is included at Exhibit MK 5 to the Applicant’s Declaration.
• Andrews & Hansen Consulting Surveyors
• Storey & Castle Planning
• Shaw Urquhart Consulting Geotechnical Environmental Services
• Hyder Consulting (Engineering)
• Gassman Development Perspectives
In 2007 a horticultural specialist Paul Moon from Plantworld was engaged to assist with identifying and locating rare and endangered botanically significant species. Plants were transported from as far away as Cairns in the north, Batemans Bay in NSW and Broome in Western Australia.
With many trees weighing 3-6 tonnes each, the task of removal and transportation of suitable specimens commenced in 2009, which was both time consuming and expensive. To date thousands of large trees have been purchased with many already transplanted. Further many of the more endangered species required special permits from the relevant Parks and Wildlife departments before removal and transportation could commence.
In 2011 work began on the construction of the botanical garden. Since 2011 many thousands of native trees have been planted as part of the construction of the botanical garden[16] and for the general enhancement of the natural rain forest. Multiple bridges too have been constructed, with more in the planning stages.
[…]
In 2012 construction of various walking tracks commenced, including tracks to cater for different levels of fitness, such as beginners, intermediate and extremely fit persons and athletes. To date some 6kms of walking tracks have been completed or are currently under construction.
Multiple waterfalls, some natural others man made, are in various stages of completion or beautification.
GOB owns and operates a variety of plant, equipment and machinery used on the Currumbin property. Since 2012 GOB has spent approximately $880,000 on equipment and machinery for this purpose.
GOB has also purchased a property in Terara, NSW, which is a large holding nursery containing 950 Canariensis weighing between 3-7 tonnes each plus 175 mature Trachycarpus Fortune.[17] All botanical specimens have been purchased for the botanical garden […]. It is estimated that GOB has spent $1.5m on the purchase of this nursery.
[16] Photographs of some large trees being transplanted utilising cranes are at Exhibits DGM-23 and DGM-25 of Mitchell 2.
[17] Photographs of, I gather, this nursery are included in Exhibit GDM-22 to Mitchell 2.
The conceptual plans and site drawings (‘the Concept Plans’) referred to by Mr Mitchell were prepared by Read Project Services for the project ‘Gardens of Babylon’ at the Currumbin property and are dated October 2009. The Concept Plans are titled ‘Gardens of Babylon’. The Concept Plans show locations for ‘An Open Turf Area, Accomodation [sic] for 60 persons, Restaurant, and Reception’ as well as design concepts for buildings which are labelled ‘Restaurant, Reception, and Accomodation [sic]’.
Before leaving Mitchel 1, I will mention that Mr Mitchell also states:
In 2009 work also commenced on marketing, together with research on the internal look to be experienced by clients, with numerous projects already complete, including the selection of beds and bed linen. In the case of the former, bed manufacturer Sealy kindly provided me with four sample beds for the selection process. In the case of the latter, attached hereto and marked Exhibit GDM-20 are copies of photographs showing the bed linen that has been chosen for the resort.
Exhibit GDM-20 to Mitchell 1 includes the photographs reproduced below:
(‘the Manchester’)
Mitchell 2 refers, inter alia, to the length of time that it has taken to bring the works at the Currumbin property to completion. Mr Mitchell states:
The steep terrain and heavy rainfall environment in the new botanical garden has slowed progress as earthmoving machinery and cranes can only be operated safely once the ground has dried sufficiently. Nevertheless work continues weekly on other aspects of the Currumbin property during these periods and the new The Gardens of Babylon health and wellness resort remains on track for completion in 2021.
Mr Berger is the owner of Berger Earthmoving (‘BE’), an earthmoving and construction business. Mr Berger states:
In August 2008 BE tendered for and was awarded a contract to manage and coordinate all the contract and subcontract labour necessary to develop the Currumbin property, including the construction of a very large botanical garden.
Due to the challenging nature of the terrain, a small specialised team was chosen as the best solution for the project. BE’s first task was to formulate a management plan detailing the Stage One project objectives, many of which are listed below:
• New machinery sheds
• Bridges
• Bores
• Irrigation systems
• Roads and access tracks
• Storm water control
• Power infrastructure
• Communications network
• Water reticulation and storage
• Fencing internal and external
• Off stream watering for livestock
• Cattle yards
Below is a list of some of the industry professionals who were engaged to assist BE with the completion of some of the projects referred to in paragraph 6:
• Read Project Services
• Byrns Lardner Architectural & Environmental
• Habitat Environment Management
• Andrews & Hansen Consulting Surveyors
• Storey & Castle Planning
• Shaw Urquhart Consulting Geotechnical Environmental Services
• Hyder Consulting (Engineering)
• Gassman Development Perspectives
BE has also been actively involved in the following renovation projects on the Currumbin Valley property:
• Manager’s residence (main homestead and office)
• Caretaker residence
• Cottage (security office)
• Historical banana packing facility
BE has been working continuously on the Stage One projects since late 2008, being multiple infrastructure improvements together with the construction of a significant botanical garden. Further, BE is currently working on multiple projects in connection with the health and wellness resort, including:
• Design and construction of a l hectare fully enclosed organic orchard
• Upgrades to existing access roads and tracks
• Embankment stabilisation
• Noxious plant and weed eradication
• Pasture improvement.
Because the botanical gardens is located in an extreme rainfall catchment area, (average rainfall 2500mm/year) there have been periods where progress on the construction of the garden has been hampered due to sustained rainfall events. However, work on the various infrastructure improvements and the construction of the garden remains on schedule for completion in 2021.
Since 2010 I have been aware that Graham Mitchell intended to call the health and wellness resort THE GARDENS OF BABYLON and that the botanical garden that I have been constructing is intended to rival the hanging gardens of Babylon in its shear [sic] size and natural beauty.
The Wilkinson Declaration establishes that Mr Wilkinson is an accountant and a partner of Pitcher Partners who, at the time of the declaration, had acted for the Opponent for 13 years and for GOB for 5 years. Mr Wilkinson confirms the purchase price of the Currumbin property as being approximately $4.2m and that the Opponent has spent approximately $1.2m per year relating to the establishment of the health and wellness resort since work commenced in 2008. Mr Wilkinson also states:
GOB also owns a property in Terara, NSW that was purchased as a significant holding nursery with mature botanical specimens. Many have already been transplanted to the Currumbin health and wellness resort under construction.
I estimate that GOB has spent over $1.5m on the purchase of the nursery at Terara.
In the Tannahill declaration Mr Tannahill declares as to the search of the Australian Trade Mark Office databases he performed on or about 24 May 2010 on behalf of Mr Mitchell to ascertain if the Trade Mark was available for use as the name of the health and wellness resort to be built at the Currumbin property. The Parent was subsequently filed on 25 May 2010.
The Applicant
The Applicant states:
On 20 October 2017 we approached the Opponent’s legal counsel with a proposal to co-exist on the register. See Exhibit MK2. We were advised that our correspondence had been directed to the appropriate contact. No further response was received.
On 24 October 2017, a mere 4 days later, the Opponent filed a trade mark application for the exact same words as the [Trade Mark], being “THE GARDENS OF BABYLON” with IP Australia in relation to the below services. See Exhibit MK3 for full IP Australia database reports.
This clearly demonstrates that the Opponent knew that it had no use of the [Trade Mark] and it would be removed under a non-use action.
Although it is not expressly stated by the Applicant, his own application to which he refers is:
Application No: 1758253
Priority Date: 11 Mar 2016
Services:Class 43: Bar services; Coffee bar and coffee house services (provision of food and drink); Wine bar services; Cafes; Providing food and drink; Restaurants
Trade Mark: Babylon
(‘the Applicant’s Application’)
The Trade Mark was cited in a report dated 12 May 2016 by an examiner under subsection 44(2) of the Act as being an impediment to the registration of the Applicant’s Application.
I will observe in passing that I do not agree with the Applicant that the above shows only that the Opponent knew that it had no use of the Trade Mark and that it would be removed because of non-use. What might alternatively be shown is that while the Opponent thought that the Trade Mark might be removed, it might also subsequently succeed in an opposition to the registration of the Applicant’s trade mark. The refiling might thus only be a precaution in the event that a person other than the parties to these proceedings thought to register a similar trade mark for similar services.
The balance of the Applicant’s declaration is largely critiques of the Opponent’s Evidence in Support and it is relevant to mention these as they were at the core of submissions by both Mr Cobden and Mr Metzeling at the hearing. The Applicant states:
[Mitchell 1] states that THE GARDENS OF BABYLON name was chosen in late 2009. This statement does not constitute evidence of use. Nor does the declaration contain any evidence of use of the [Trade Mark]. No evidence of choosing the brand name was provided.
[Mitchell 1] states that in 2009 bedlinen was chosen for the resort. The photo provided for this statement is not evidence of use. It also states that the resort project is not due for completion until 2021. In my opinion, it is fair to say that bedlinen would not be chosen 12 years before completion of a resort complex.
[Mitchell 1] shows a conceptual site plan dated October 2009. No evidence of use of the [Trade Mark] is indicated or provided in relation to the [Trade Mark] since that date by the Opponent for any of the Services being provided to others.
The Berger Declaration does not provide any evidence of use of the [Trade Mark] by the Opponent in relation to any of the Services being provided to others.
The Wilkinson Declaration does not provide any evidence of use of the [Trade Mark] by the Opponent in relation to any of the Services being provided to others.
The Tannahill Declaration declares a conversation held in May 2010 in relation to the [Trade Mark]. Conversations with legal counsel does [sic] not constitute evidence of use. No evidence of this conversation is provided.
The Tannahill Declaration does not provide any evidence of use in relation the [Trade Mark] by the Opponent for any of the Services being provided to others.
I here interject that the Applicant, in the above, stresses that the Opponent’s evidence does not establish that the Impugned Services were provided to others. However, as I further discuss below, whilst such provision of services to others would establish the opposition to removal, it is not an essential requirement; what is relevant is whether there was sufficient activity by the Opponent during the Relevant Period under the Trade Mark in relation to the Impugned Services to constitute use (whether or not such use culminated in actual trade under the Trade Mark).[18]
[18] See, for example, Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939; Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91-119
The Applicant goes on to provide evidence of various planning and development approvals relating to the Currumbin property. There are five of these some of which relate to the recent landscaping and remedial works at the Currumbin property.
The Applicant also refers to an investigator’s report. The investigator was Ms Simone Lanyon of Trade Mark Investigation Services. The report is not in declaratory form and is prefaced with the claim, ‘The entire contents of this report are strictly confidential and privileged and for the purpose of obtaining legal advice only’. For the purposes of this decision I will regard this claim as having been implicitly waived by the Applicant. The instructions to the investigator are reported by Ms Lanyon as being ‘you requested we investigate [the Opponent] for the use of THE GARDENS OF BABYLON. We have undertaken enquiries and now report.’
Although Ms Lanyon does not make it clear that she was to investigate the Opponent for the use of the Trade Mark, it is probable that she understood this to be the case. Ms Lanyon’s findings are usefully summarised by the Applicant:
In summary, the findings were as follows:
The Opponent is sole shareholder of [GOB]. No evidence of trade by [GOB] was identified.
No evidence of use of the [Trade Mark] was identified on websites owned by the Opponent.
No evidence of use of the [Trade Mark] was identified on social media.
Customer Service department of the Opponent has no knowledge of the BABYLON [sic] brand.
No evidence of use of the [Trade Mark] was identified at the general office and warehouse entrance of the Opponent where other brands were advertised.
No evidence of use of the [Trade Mark] was identified at the main reception of the Opponent where other brands were advertised. Receptionist advised they only provide food service under the Lite N’ Easy brand.
I note, however, that the investigator did not attend at the Currumbin property or, apparently, become aware either of its existence or of the nature and scale of works being undertaken there. Further, the lack of knowledge of a customer service officer on the front desk of a city factory/distribution centre about an associated company’s plans and operations involving construction of a resort in the hinterland might be unsurprising.
Other
At the hearing of the matter Mr Metzeling sought to introduce evidence which concerns the Applicant’s preparations for use of his trade mark. I agree with Mr Cobden that this material is responsive only to arguments in his outline of submissions, which was filed on 10 June 2018, concerning the exercise of the Registrar’s discretion. Further, it does not affect my decision in this matter. I am, in any event, inclined to afford it little weight as, in my view, it merely affirms the Applicant’s intention to use his BABYLON trade mark and that intention is already inherent in the filing of the Opponent’s Application.[19]
[19] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391.
Paragraph 92(4)(b)
Section 92 of the Act relevantly provides:
92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be 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.
(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:For prescribed court see section 190.
(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.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
In regard to the above, I note that:
· The Application was made in accordance with the Trade Marks Regulation 1995 (‘the Regulations’);
· It is made in respect of all of the services in Class 43; and
· The Registrar has not been notified of proceedings in a prescribed Court.
In terms of subsection 93(2) of the Act, as the Application was filed on 25 October 2016, over five years had passed from the filing date (25 May 2010) of the Trade Mark.
Submissions
For the Opponent Mr Cobden submitted that the actions of the Opponent in preparing to use the Trade Mark are analogous to circumstances in Dick Smith Investments Pty Ltd v Ramsey[20] (‘Dick Smith’) and QH Tours Ltd v Mark Travel Corporation[21] (cited with approval by Katzmann J in Dick Smith) and that:
The litmus test is […] whether, in the words of Drummond J in Woolly Bull[22] at [40] cited with evident approval by Katzmann J in Dick Smith at [149]:
[T]he owner will not use its mark unless it is so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.
[20] (2016) 120 IPR 270; [2016] FCA 939
[21] (1999) 45 IPR 553.
[22] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, (2001) 107 FCR 166, 51 IPR 149.
The Opponent’s actions in creating the botanical gardens and its very large expenditures in doing so through the Relevant Period are, submitted Mr Cobden, all referable to the Concept Plans which are titled with the Trade Mark. As such, the submission goes, this should be sufficient to establish use of the Trade Mark during the Relevant Period and establish the opposition to the removal of the Trade Mark from the Register of Trade Marks.
However, the contractors who were working on Stage 1 of the construction during the Relevant Period were presumably working to detailed plans other than the Concept Plans which are very much of a ‘top level’ nature: these more detailed plans are not in the Opponent’s evidence.
Mr Metzeling, for the Applicant, submitted:
The assessment in a non-use action is whether or not a trade mark has been used with respect to the particular goods or services during a specified period of time. It is therefore plain that the evidence must be dated in some way. In Suzanne Malone v Stance Global Pty Ltd [2014] ATMO 115 at [24], the Delegate criticised the trade mark owner’s evidence as providing “no identification of any particular date any on which the photographs of the goods or the Trade Mark were taken”.
Advertisement where the services are not immediately available for sale does not constitute use within the meaning of the Act: British Registrar in Radford & Co’s Application (1951) 68 RPC 221; John Toh v Paris Croissant Co. Ltd [2010] ATMO 34; Myerton Australia Pty Ltd v Foreign Supplement Trademark Pty Ltd (2007) 74 IPR 563 at [23].
The provision of brochures or samples will not by itself constitute use “in the course of trade” where the services are not concurrently available for purchase. In Settef SpA v Riv-Oland Marble Co (Vic) Pty Limited (1987) 10 IPR 402 at 417, McGarvie J said:
I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purposes of trade: WD & HO Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191. The forwarding of samples and brochures is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. (emphasis added)
The High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144; 84 ALJR 353; 265 ALR 645; 86 IPR 224 [‘Gallo’] at [64], [said] that a single act of sale may not be sufficient to prevent removal. In the case of genuine use, a relatively small amount of use may be sufficient to constitute “ordinary and genuine” use judged by commercial standards. In Gallo, a commercial quantity of wine, some 144 bottles, was imported and offered for sale under the registered BAREFOOT trade mark by Beach Avenue during the statutory non-use period. Some 41 sales during that time were proven by reference to invoices and tax paid. Those amounts were sufficient to resist the non-use application.
On the basis of there being no use of the trade mark proved, that is sufficient to dispose of the opposition to the non-use application. If the Delegate considers that there has been use of the trade mark, the Removal Applicant does not accept that there has been use with respect to the [Impugned Services] as contended for by the Removal Opponent.
I note that in Gallo the High Court stated that ‘On the facts here, it is not necessary to decide whether a single use of the registered trade mark in good faith would have been sufficient to resist removal’ and cited the decision of Drummond J in Woolly Bull[23] who stated that ‘A single bona fide use of the mark in the relevant period is sufficient to answer an application for removal under both provisions.’
[23] Op cit at [17].
As observed by Mr Cobden at the hearing, the principle in Woolly Bull is consonant with principles involved in the establishment of ownership of a trade mark for the purposes of section 58 of the Act where a corroborated single bona fide use of a trade mark is sufficient to establish ownership: Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd.[24] However, here the corroborative materials that support those preparatory acts in relation to the Trade Mark are from a time well before the Relevant Period.
[24] [1974] HCA 51; (1974) 131 CLR 592; 4 ALR 687; 48 ALJR 456; 1A IPR 511.
Mr Metzeling went on to submit:
The use must be on, or in physical or other relation to, the services, for example,
a) Use on invoices, receipts etc provided in the course of trade: s7(5), read with s9(1)(c)(ii); Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2016] FCAFC 91; 243 FCR 152 [‘Trojan’] at [63] per Besanko, Nicholas and Yates JJ; see also Darley Stud Management Company Limited v Kevin Francis Darley [2009] ATMO 91 at [41] to [42].
b) Use in advertising material: s7(5), read with s9(1)(c)(i); Scandinavian Tobacco at [63], [66].
c) Use on other printed or electronic material offering the services: s7(5), read with s9(1)(c)(i) and (ii); [Trojan] at [63].
d) Use on shop fronts, websites and physical displays where services are offered: s7(5), read with s9(1)(b)(ii), (c)(i) and (c)(ii); [Trojan] at [63].
I observe, in this regard, that section 7 of the Act relevantly provides:
7Use of trade mark
[…]
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
And section 9 of the Act provides:
9Definition of applied to and applied in relation to
(1)For the purposes of this Act:
(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b)a trade mark is taken to be applied in relation to goods or services:
(i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c)a trade mark is taken also to be applied in relation to goods or services if it is used:
(i)on a signboard or in an advertisement (including a televised advertisement); or
(ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
(2)In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper, lid or cap.
label includes a band or ticket.
In Trojan the Court considered the definition of the word ‘applied’ as it occurs within sections 121 and 123 of the Act in relation to infringement proceedings. The word ‘applied’ does not occur within section 7 of the Act which describes ‘use’ of a trade mark more generally. Section 9 of the Act might be regarded as providing illustrations of what constitutes ‘use’ for the purposes of section 7 rather than prescribing what does constitute ‘use’ and, in any event, paragraph 9(1)(b)(ii) appears to be a catchall. This approach accords with that taken by the Court in Dick Smith where the examples of use were not considered restrictively.
Consideration
Absent any corroborative evidence of use of the Trade Mark by the Opponent during the Relevant Period the issue resolves itself to a question of whether the evidence before the Registrar is sufficient to satisfy me that it establishes that the Opponent used the Trade Mark in 2009 or 2010 in relation to the Impugned Services and, if so, whether the evidence also establishes that the extensive Stage 1 works on the Currumbin property during the Relevant Period may be inferred as indicating a continuing use from 2009 or 2010 of the Trade Mark in relation to the Impugned Services within the Relevant Period.
In terms of the above quoted passage in both Woolly Bull and Dick Smith: ‘[T]he owner will not use its mark unless it is so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect’, it is clear that the Opponent went beyond investigating and planning whether to use the Trade Mark from at least 2010. The Opponent had:
· Purchased 200 acres at Currumbin for the resort;
· Selected Berger as the coordinating contractor;
· Produced the Concept Plans for the resort bearing the Trade Mark which include outline detail for:
·Reception,
·accommodation, and
·restaurant facilities;
· Selected the Manchester for the accommodation;
· Engaged at least seven subcontractors;
· Purchased large amounts of botanical specimens; and
· Created a nursery in NSW to supply specimens for the botanical gardens.
While I note the criticisms of both the Applicant and Mr Metzeling concerning the early selection of Manchester for the resort, I consider that the early selection of these materials which do bear the Trade Mark (albeit in relation to future accommodation services) reflects on the Opponent’s commitment to implement the project. It also reflects on the creation of the resort as a ‘total package’ in which wellness, health, accommodation, and restaurant services are integral to the resort.
Accordingly, I find that that the Opponent’s evidence, considered as a whole in relation to the principle, above, in Woolly Bull and Dick Smith, establishes that the Opponent engaged the Trade Mark sufficient to establish use (and hence common law ownership) of the Trade Mark in relation to services related to the resort project, which include the Impugned Services, at least in 2010.
However, although there is an apparent continuing intention on the part of the Opponent to use the Trade Mark, there is no corroborating evidence of use of the Trade Mark during the Relevant Period not withstanding that the supporting declarations of Messrs Wilkinson and Berger corroborate the Opponent’s claims of continuing activity to bring his resort project to fruition. Section 100 of the Act places the burden on the Opponent to show use during the Relevant Period and, in the circumstances before me, I consider the Opponent is required to show use during the Relevant Period (even if it is of a preparatory nature) rather than seek to have the Registrar draw an inference of use.
The Opponent has not, therefore, established its opposition to the removal of the Trade Mark from the Register in relation to the Impugned Services.
Discretion
Section 101 of the Act relevantly provides:
101Determination of opposed application—general
[…]
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
As observed by the Registrar’s delegate in Darley Stud Management Co Ltd v Kevin Francis Darley: [25]
[25] [2018] ATMO 55 [25].
As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[26] However, […] s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is: [27]
[26] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].
[27] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].
a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
Her Honour also noted:
By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. ...
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[28]
[28] Ibid [171]-[172].
While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated: [29]
[29] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].
Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[30] 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.[31] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.
Factors that have been found relevant to the consideration of whether to exercise the discretion include: [32]
oThere had been no abandonment of the trade mark;
oThe registered proprietor of the mark still had a residual reputation in the mark;
oThere had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;
oThe applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
oThe registered proprietor was not aware of the applicant’s sales under the mark.
[30] Kowa Co Ltd v Organon [2005] FCA 1282, [92].
[31] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].
[32] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].
Here I consider the following factors established by the evidence to be relevant to the exercise of the Registrar’s discretion:
· The activities of the Opponent in relation to the Trade Mark in around 2010 were sufficient to establish ownership of the Trade Mark at common law in relation to the Impugned Services;
· The evidence establishes that the Opponent has a continuing intention to use the Trade Mark in relation to the Impugned Services;
· There has been no abandonment of the Trade Mark: the evidence of ongoing activities in relation to the construction of Stage 1 of the resort project is relevant in this regard;
· The capital expenditure of the Opponent in relation to the establishment of the resort and towards use of the Trade Mark has been very significant;
· Although the length of time to bring the project to fruition (and for actual trade under the Trade Mark to commence) has been prolonged, such is the nature of projects of the size and scope of the resort project undertaken by the Opponent;
· The length of time has been exacerbated by the high rainfall in the area that the resort is being built in;
· There is no evidence that the Applicant had taken steps before filing the Application to ascertain from the Register whether anyone had a right to exclude its use of its trade mark; and
· There is no evidence that the Applicant has had sales under its trade mark.
These factors obviously sway the balance in favour of the Opponent. Accordingly, the evidence before the Registrar is sufficient to establish that it is reasonable that as one of her delegates I exercise her discretion to allow the Trade Mark to remain registered in relation to the Impugned Services.
Decision
Subsection 101(1) of the Act provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
The Opponent has not established use during the Relevant Period but has established that it is reasonable for the Registrar to exercise her discretion and allow the Trade Mark to remain registered for the Impugned Services: accordingly, as one of her delegates I so decide, subject to the outcome of any appeal against this decision.
Costs
Both parties requested their costs in the event that they were successful in these proceedings. As the Opponent has been the successful party it is appropriate in terms of section 221 of the Act that I award costs against the Applicant at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
22 June 2018
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