Mathew O'Reilly v RenewGen Pty Ltd

[2023] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by RenewGen Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Mathew O'Reilly for removal of trade mark number 1751386 (25, 33) – Spirit of Byron – in the name of RenewGen Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: HWL Ebsworth Lawyers

Applicant: IP Wealth Pty Ltd

Decision:

2023 ATMO 5

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark during the relevant period for a subset of the goods for which it is registered – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the goods for which it is registered

Background

1. This decision is pursuant to an application made on 15 March 2021 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Mathew O'Reilly (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1751386

Lodgement date

10 February 2016

Goods

Class 25: Apparel (clothing, footwear, headgear)

Class 33: Alcoholic beverages (except beer)

(‘Registered Goods’)

Owner

RenewGen Pty Ltd

Trade Mark

Spirit of Byron

(‘Trade Mark’)

2.  RenewGen Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 6 May 2021 and a Statement of Grounds and Particulars (‘SGP’) on 7 May 2019.  The Applicant filed a Notice of Intention to Defend on 1 July 2021.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  This material will be discussed in more detail below.  The Applicant chose not to file any evidence in answer (‘EIA’). 

2. The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

3. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

   6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 4 February 2022 the Applicant requested a hearing by submissions and paid the appropriate fee.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 18 July 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 22 August 2022 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

   7.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   Evidence in Support

   • Declaration by Brian Restall, Director of the Opponent, dated 29 July 2021 (‘Restall declaration’) together with Exhibits 1 to 20.

   The Relevant Provisions

   8. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly 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.

   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.

   9. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 15 February 2021 (‘relevant period’).

   10. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

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

   11. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden 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:

   (a) …
   (b) …
   (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.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   12.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   13.     In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   14. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[6] 

   Discussion

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

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

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

   [6] Act s 7(3).

4. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period).

   [7] s 100(3)(a) of the Act and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

5. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

6. The Opponent’s evidence in this matter consists of a declaration by its Director, Brian Restall.  The Restall declaration states that the Opponent owns and operates the Lord Byron Distillery which manufactures and sells the Registered Goods under the Trade Mark.  The Restall declaration makes a broad assertion that the Trade Mark has been used continuously across all the Registered Goods and attaches a series of exhibits purporting to show use of the Trade Mark for the Registered Goods in the relevant period.

7. At this point it is appropriate to review Exhibits 1 to 10 of the Restall declaration purporting to show use of the Trade Mark in connection with the Registered Goods in the relevant period.  Exhibit 1 consists of bottle label designs featuring the Trade Mark however these designs are undated and there is no evidence they were ever applied to the Registered Goods.  Exhibit 2, being product cards, is undated.  Exhibit 3, being an order for promotional stickers, is dated outside the relevant period and is unconnected to the Registered Goods.  Exhibit 4 consists of postcard designs dated within the relevant period but there is no evidence that the postcard designs were ever produced, sold or distributed.  The promotional vouchers referred to in Exhibit 5 are undated and there is no evidence of use of these in the course of offering the Registered Goods.  The photos of the tent bearing the Trade Mark in Exhibit 6 is undated.  The e-mail in Exhibit 7 does not show use of the Trade Mark.  The evidence of the Opponent’s website in Exhibit 8 and social media in Exhibit 9 are undated (or appear to post-date the relevant period) and hence do not show use in the relevant period.   The T-shirt designs depicted in Exhibit 10 do not depict the Trade Mark.  

8. Exhibits 11 and 12 are e-mails relating to attempts by the Opponent to use the Trade Mark on promotional clothing.  The content of the e-mails appear to be preliminary discussions with a designer on 10 and 11 February 2021 about creating a series of design ideas for the use on merchandise.  There is no evidence that a design featuring the Trade Mark to be placed on clothing was ever created let alone that it was used as a Trade Mark on clothing.

9. Paragraph 12 of the Restall declaration refers to various promotions featuring the Trade Mark.  Exhibits 13-15 consist of Instagram screenshots of these promotions.  Exhibit 13 is undated.  Exhibit 14 consists of a dated (within the relevant period) Instagram post depicting the tent in Exhibit 6 (which prominently displays the Trade Mark) on display at the Bangalow Showgrounds where an employee of the Opponent is mixing cocktails.  Exhibit 15 consists of a dated (within the relevant period) Instagram photo of a marketing poster that features the Trade Mark and offers complimentary shipping of bottles purchased from the Opponent. 

10. I note that I have not had regard to the video referred to in paragraph 12.2 of the Restall declaration.  This is because it is not exhibited to the Restall declaration, rather referred to by Instagram link, which may have been changed or updated since the date of the declaration. 

11. Exhibit 16 is an article in the Financial Review dated September 25, 2019 (within the relevant period) reporting on the operation of the Lord Byron Distillery and indicates that it produces rum[8].  Exhibit 17 is an article from 2021, outside the relevant period, indicating that the Lord Byron Distillery produces rum, vodka and limoncello.  Exhibit 18 is an article dated October 2018, within the relevant period, in the Got Rum? journal profiling the Lord Byron Distillery and in particular the declarant.  It indicates that as of the publication date the Lord Byron Distillery was producing rum, vodka and spirits.  Furthermore the article contains a photo promoting the distillery with the words ‘Spirit of Byron’ in fancy script, and in the interview, the statement ‘I hope that people have the chance to drink our rum and taste the unique Spirit of Byron’.   The article contains a photo of the Opponent’s bottles of limoncello, r(h)um and vodka, each of which clearly displays ‘Spirit of Byron’  in fancy script on the bottle.

    [8] At certain points in the evidence, this is referred to as rhum, which is a specific type of rum.

12. Exhibit 19 is the Opponent’s corporate style guide showing the manner in which the Trade Mark is to be displayed.   Exhibit 20 consists of screenshots of the Opponent’s website taken within the relevant period, which appear to show the words ‘The Spirit of Byron’ as part of a broader logo.

13. Following my review of the evidence I make the following findings: 

    -I do not consider the evidence establishes use of the Trade Mark for the class 25 goods in the relevant period.  Taken at its highest all the evidence shows is a discussion about possibly designing a logo similar to other logos featuring the Trade Mark for use on clothing.  This is not use of the Trade Mark.

    -I consider that the logo in Exhibit 20 is not use of the Trade Mark as the addition of the logo element substantially affects the identity of the Trade Mark.

    -I am satisfied by the dated evidence in Exhibits 14, 15 and 18, which is supported by Exhibit 17, that during the relevant period the Opponent offered vodka, rum, and spirits in bottles (and under promotional material) that displayed the words ‘Spirit of Byron’ in curved script. I do not accept the Applicant’s submissions that because the article in Exhibit 18 dated October 2018 does not specifically date the photographs in the article, that such an article does not show use in the relevant period.  Such a claim is entirely speculative and places too high a burden on a party showing use. It can be assumed that photographs taken for the article were taken at the time the article was prepared, which would be fairly close to the publication date.

    -I consider the display of the words ‘Spirit of Byron’ in curved script on the Applicant’s bottles to be use of the Trade Mark.  I do not accept the Applicant’s submissions that the words ‘Spirit of Byron’ in curved script is not substantially identical to the Trade Mark; the mark is aurally and conceptually identical, and has a similar visual impact. 

    -I do not accept the Applicant’s submissions that because the Opponent uses other logos on its bottles that the Trade Mark does not function as its own trade mark; having considered the manner in which the mark is displayed on the bottles I consider that it operates and would be seen as a separate badge of origin.  

    -Finally, I do not accept the Applicant’s submissions that the Trade Mark, when displayed on the Applicant’s bottles of rum, vodka and spirts, is not being used as a trade mark because it is being used in a descriptive sense to indicate the place of origin (Byron Bay). Firstly, if the Applicant wishes to argue that the Trade Mark should not be registered by reason of the mark being inherently descriptive then it should make such an application under s 88 of the Act for cancellation of the Trade Mark; the present proceeding is not the place to consider such an application. Secondly, when considering the manner of the use of the Trade Mark in Exhibits 14, 15 and 18, it is not used as a geographical descriptor as it does not refer to the proper name of the town (Byron Bay) or the fact that the product is produced or distilled or manufactured in that region. Rather the manner of the display, being its use in a prominent place on the bottle indicates that it is an evocative phrase that is being used as a badge of origin.

14. In summary I am satisfied that the Restall declaration shows evidence of use of the Trade Mark for rum, vodka and spirits (‘Used Goods’) in the relevant period.  I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods other than the Used Goods (‘Remaining Goods’) during the relevant period. 

    Obstacles to use

    26. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Remaining Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Remaining Goods.

    Registrar’s Discretion

    27.   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.[9]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3) of the Act:

    [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

    The following propositions are relevant to the exercise of this discretion:

    (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as 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 Trade Marks Act.

    (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

    (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

    (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

    (5) The range of factors considered in the exercise of the discretion has included whether or not:

    (a) there has been abandonment of the mark;

    (b) the registered proprietor of the mark still has a residual reputation in the mark;

    (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

    (d) the applicant for removal had entered the market in knowledge of the registered mark;

    (e) the registered proprietors were aware of the applicant’s sales under the mark;

    (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[10]

    [10] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

    28. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Remaining Goods.[11] The burden of persuasion in this regard falls on the Opponent.[12]

    [11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

    [12] Ibid.

    29.   The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods.

    Decision

    30.     The Opponent has partly established its opposition to the removal applications. Accordingly, I direct that registration 1751386 be removed from the Register in respect of all Remaining Goods one month from the date of the Decision. It will remain registered for the goods listed below. 

    Class 33:  Rum, Vodka and Spirits

    31.   If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

    Costs

    32.     Each Party has had a measure of success in this matter and as such each party shall pay their own costs in the matter.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    25 January 2023