Matthew Gulia v JD Sports Fashion Plc

[2019] ATMO 112

TRADE MARKS ACT 1995

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

ReOpposition by Matthew Gulia to application by JD Sports Fashion Plc for removal of trade mark 1295258 (25, 28) – UNDISPUTED - in the name of Matthew Gulia

Delegate:                 Robert Wilson

Representation:       Opponent: Self

Applicant: Corrs Chambers Westgarth

Decision:                   2019 ATMO 112

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) unsuccessful – no use of trade mark during relevant period – no obstacle to use – not reasonable to exercise discretion – trade mark to be removed from Register

Background

1. Matthew Gulia (‘the Opponent’) is the registered owner of trade mark registration 1295258, relevant details of which are as follows:

Trade Mark Number:	1295258
Filing Date:	22 April 2009
Goods:	See Annexure (‘the Challenged Goods’)
Trade Mark:	UNDISPUTED	(‘the Challenged Trade Mark’)

1. On 14 February 2018, JD Sports Fashion Plc (‘the Applicant’) filed an application (‘the Application’) based on s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Challenged Trade Mark from the Register. The Application alleged that the Challenged Trade Mark was not used in good faith in connection with any of the Challenged Goods during the three year period ending on 14 January 2018 (‘the Relevant Period’).

2. The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose filed on 13 March 2018 and a Statement of Grounds and Particulars (‘SGP’) which was filed on 8 April 2018. The Applicant filed a Notice of Intention to Defend on 11 May 2018.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) being a declaration made on 9 August 2018 by the Opponent (‘Gulia 1’). The declaration was accompanied by a single exhibit being a ‘License Agreement’ (‘the License Agreement’).

2. The Applicant filed Evidence in Answer (‘EIA’) being a declaration made on 15 November 2018 by Jürgen Bebber, a Partner of Corrs Chambers Westgarth, the representative of the Applicant, with Annexures JB-1 to JB-14.

3. The Opponent filed Evidence in Reply (‘EIR’) being a declaration made on 28 January 2019 by the Opponent, with Exhibits 1A to 1C and Exhibits 2 to 6 (‘Gulia 2’). Exhibit 5 is the same license agreement that was filed with Gulia 1.

4. 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 13 March 2019 the Applicant requested to be heard. A hearing was scheduled for 24 July 2019. A schedule for written submissions to be filed prior to the hearing was provided to the parties. Both parties filed submissions on time and in accordance with the schedule. The Applicant’s submissions were prepared by its representative, Corrs Chambers Westgarth. The Opponent prepared his own submissions. Following the filing of the parties’ submissions, the Opponent indicated that he did not intend to appear at the hearing.

5. Following the Opponent’s decision not to appear at the hearing the Applicant decided also to rely on written submissions only. The hearing date was vacated accordingly.

The Opponent

1. It appears from the Opponent’s submissions that he was involved in the sport of boxing from a young age and has been both a competitor and trainer of other boxers. The Opponent describes himself as running a small Australian business.

The Applicant

1. The Applicant has provided no information from which a background might be provided.

Legal Framework

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

2. The Application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:

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

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

   (2)  The application: 

   (a) must be in accordance with the regulations; and

   (b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   …

   (4)  An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: 

   …

   (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.

3. 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 to register the Challenged Trade Mark,[1] and I confirm that that period has passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

4. Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Challenged Trade Mark was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is on the balance of probabilities.[2]

   [2] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

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

Discussion

1. To successfully oppose the Application the Opponent must establish that he, as the owner of the Challenged Trade Mark has used it in the course of trade in respect of the Challenged Goods, in good faith, in the Relevant Period or that there was a relevant obstacle to its use.

Use of the Challenged Trade Mark

1. Where an opponent to an application for removal has used an impugned trade mark during the relevant period it is generally a simple matter to establish this fact. For example, a small number of relevant invoices is likely to be sufficient. In the present matter the Opponent has provided no evidence of use of the Challenged Trade Mark during the Relevant Period or at all. Beyond statements to the effect that he is involved in an ‘active business’ and that the Challenged Trade Mark ‘has and will be used in good Faith and always has good intention to use’ (sic) there is no evidence that the Opponent is involved in a going concern.

2. An authorised use of the Challenged Trade Mark by a person is taken to be a use of the Challenged Trade Mark by the Opponent.[3] This prompts consideration of the License Agreement. This is a heavily redacted document by which the Opponent appears to grant a licence to MMA Sports Pty Ltd to use the Challenged Trade Mark. The Opponent has not suggested, nor has he provided any evidence, that MMA Sports Pty Ltd has used the Challenged Trade Mark during the Relevant Period or at any time. The License Agreement, therefore, does not assist the Opponent.

   [3] Trade Marks Act 1995 (Cth) s 7(3).

3. The Opponent is apparently the registrant of the domain name <undisputed.com.au>. The Opponent has not provided any evidence that, during the Relevant Period, there has been any sales, advertising or offers of sales of goods or services in connection with the Challenged Trade Mark on or by a website with that domain name.

4. The Opponent has failed to satisfy me that he used the Challenged Trade Mark during the Relevant Period.

Obstacle to use

1. The Opponent has not explicitly sought to rely on the existence of a relevant obstacle to use to defeat the Application. The possibility that there was an obstacle to use was not mentioned in the SGP nor in the EIS or EIR. The Opponent did state in his submissions that he had experienced a number of significant personal events ‘so that every time I was just about to launch something happened’. On the assumption that this statement in his submissions was an attempt by the Opponent to establish that he was prevented from using the Challenged Trade Mark during the Relevant Period the Applicant submitted that the Opponent ‘should not be permitted to introduce a new basis for rebuttal of the non-use allegation at this late stage of the proceeding’. I agree with the Applicant’s submission on this point and this question will not be considered further. The grounds on which the Application was made have, therefore, been established.

The Registrar’s Discretion  

1. As indicated above, if satisfied that it is reasonable to do so, the Registrar may decide that the Challenged Trade Mark should not be removed from the Register even if the grounds on which the Application was made have been established.[4] In the words of Bennett J, this is

   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.[5]

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.[6]

[4] Trade Marks Act 1995 (Cth) s 101(3).

[5] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

[6] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[7] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[8] 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.[9] 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.[10]

   [7] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.

   [8] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [9] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [10] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210]. (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point.)

2. The Applicant has submitted in respect of the discretion:

   There is a public interest in ridding the Trade Marks Register of marks which are not in use. Indeed, the policy of the Act is to facilitate the removal of an unused trade mark[11] and the public interest in the integrity of the Register will generally require the removal of an unused trade mark.[12] We submit that this is a powerful factor against exercising the discretion to permit an unused trade mark to remain on the Register. …

   We submit that there are no circumstances in the present case which would warrant the exercise of the discretion in Mr Gulia’s favour. Mr Gulia has not used [the Challenged Trade Mark] at all since its registration dating back to 2009 and, despite Mr Gulia’s good intentions, this is not sufficient to justify the exercise of the discretion in Mr Gulia’s favour … This is a clear circumstance in which the policy of the Act and public interest dictates [the Challenged Trade Mark] must be removed.

   [11] Shanahan’s Australian Law of Trade Marks & Passing Off (6^th ed) [70.2505].

   [12] New South Wales Dairy Corp v Murray Golburn Co-op Co Ltd (No 2) (1989) 14 IPR 75.

3. The Opponent has made no submissions which are explicitly in respect of the discretion. I am inclined to the Applicant’s view and in the absence of any submissions or evidence from the Opponent which might persuade me otherwise, I am not satisfied that it is reasonable to exercise the discretion available to the Registrar in favour of the Opponent.

Decision

1. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that trade mark 1295258 be removed from the Register, in respect of all of the Challenged Goods, after one month from the date of this decision. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs

25 July 2019

Annexure

The Challenged Goods

Class 25: Armbands (clothing); articles of clothing made from wool; articles of clothing made of fur; articles of clothing made of imitation leather; articles of clothing made of leather; articles of water-resistant clothing; articles of windproof clothing; athletic clothing; boys' clothing; casual clothing; children's clothing; clothing; clothing for sports; cyclists' clothing; dance clothing; gloves (clothing); headbands (clothing); hoods (clothing); interlinings for clothing; jackets (clothing); jerseys (clothing); jump suits (clothing); knitted clothing; knitwear (clothing); ladies clothing; leather belts (clothing); linen articles of clothing; men's clothing; mitts (clothing); money belts (clothing); motorcyclists' clothing (other than for protection against accident or injury); ski clothing (other than for protection against injury); sports clothing (other than golf gloves); tennis clothing; thongs (clothing); waterproof clothing; water-resistant clothing; women's clothing; woollen clothing; wraps (clothing); wristbands (clothing)

Class 28: Apparatus for use in training for the game of rugby (sporting equipment); bags adapted to hold fencing equipment; equipment for making soap bubbles (toys); exercise equipment, other than for medical rehabilitative purposes; inflatable play equipment; jumping castles (inflatable play equipment); martial arts training equipment; sport bags adapted (shaped) to contain sporting equipment; trolley bags for golf equipment