Mercury Retail Pty Ltd v Nile Clothing AG

[2015] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Mercury Retail Pty Ltd to application by Nile Clothing AG for partial removal of trade mark registration 1277035 (35) THE NILE owned by Mercury Retail Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Nick Weston of Nicholas Weston Lawyers Applicant: Did not appear
Decision:	2015 ATMO 56 s 92(4)(a) and (b) opposition: Use of trade mark shown for relevant services and thus neither the s 92(4)(a) nor (b) ground established.

Background

1. Mercury Retail Pty Ltd (“the Opponent”) is the registered owner of trade mark registration 1277035, relevant details of which are as follows:

Registration Number:               1277035

Filing Date:  11 December 2008

Services:Class 35: Distribution services being the wholesale and retail sale of books, magazines and e-books, music, videotapes, cassette tapes, compact discs and DVDs, clothing, shoes, hats, footwear and headgear, computer software, computer and video games and office products; providing online marketplaces for the foregoing; providing searchable online advertising directories for the foregoing; advertising and advertisement services; business consulting and advisory services; promoting the goods and services of others  

(“the Services”)

Trade Mark:  THE NILE                (“the Trade Mark”)

1. On 12 December 2013 Nile Clothing AG (“the Removal Applicant”) filed an application based on sections 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) seeking partial removal of the Trade Mark from the Register, alleging in the case of the s 92(4)(b) ground that the Trade Mark was not used in good faith in relation to the relevant services during the three year period ending on 12 November 2013 (“the Relevant Period”).

2. The partial removal sought is in relation to the following services:

   Distribution services being the wholesale and retail sale of clothing, shoes, hats, footwear, headgear and computer software; providing online marketplaces for the foregoing; providing searchable online advertising directories for the foregoing

   (“the s 92 Services”)

3. On 21 January 2014 the Opponent filed a Notice of Intention to Oppose removal, followed by a Statement of Grounds and Particulars (“SGP”) on 19 February 2014.  The SGP contained detailed particulars of the Opponent’s claimed use of the Trade Mark over the Relevant Period (and beyond), including sales figures for each of the years 2011 to 2013 of several millions of dollars annually.  In effect summarizing the Opponent’s position later to be set out in its evidence in support, Mark Taylor, a Director of the Opponent, says in the SGP that:

   [The Opponent] has been using the Trade Mark in respect of the [Services] to operate an online retail distribution business operating from New Zealand since 2003.  Sales commenced into the Australian market in 2004.  The [Opponent’s] physical presence and operations transferred to Australia in 2007.  The Trade Mark is used on products, on all facets of advertising and promotion both print and online and on all documentation and paperwork related to [the Opponent].  The business plan for [the Opponent] is loosely modelled on the business plan for US online retailer AMAZON.  [The Opponent] commenced operations as a bookseller but by February 2011 had expanded to all of the goods [identified in the Services] in accordance with our intentions when the [Opponent] was formed in 2003.

4. Through its Australian attorneys, Shelston IP, the Removal Applicant, which is based in Switzerland, filed a Notice of Intention to Defend (“NID”) on 4 April 2014.

5. The Opponent’s evidence in support consists of a statutory declaration by another of its Directors, Jethro Marks, made on 9 July 2014, with Exhibits JM1 to JM7.

6. The Removal Applicant has not filed any evidence in the proceedings.

7. I heard the matter as a delegate of the Registrar of Trade Marks in Melbourne on 26 May 2015.  Shelston IP had earlier advised that the Removal Applicant would not be represented at the hearing and confirmed by email on 6 May 2015 that neither would the Removal Applicant be filing any written submissions in support of its application.

8. Nick Weston of Nicholas Weston Lawyers appeared for the Opponent.  Mr Weston’s oral submissions were supplemented by written submissions emailed to the Removal Applicant’s representatives and to me on 19 May 2015.

The Law

1. Section 92 of the Act is reproduced below:

92 Application 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 aggrieved 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:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
(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 s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.

(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

1. Sections 100(1)(a)(i)[1] and (b) of the Act provide that the Opponent bears the onus of rebutting either (or both) the allegations made under s 92(4)(a) that, as at 11 December 2008, it had “no intention in good faith to use the [T]rade [M]ark” or that the Trade Mark “has not, at any time before [12 November 2013], been used, or been used in good faith, by [the Opponent] in relation to the [s 92 Services].”

   [1] As will become apparent, the Opponent relies on ss 100(1)(a)(i) and 100(1)(b) in rebutting the s 92(4)(a) allegation and accordingly ss 100(1)(a)(ii) and (iii) are not relevant to this discussion.

2. Section 100(1)(c) of the Act provides that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), by establishing that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used in good faith during the Relevant Period, or that there was an obstacle to use during that period.

3. I proceed on the basis that the relevant standard of proof the Opponent bears is on the balance of probabilities.

Discussion

Section 92(4)(a)

Intention to use

1. As mentioned, the Removal Applicant has taken no part in proceedings beyond filing the removal application itself and the subsequent NID.  Both are purely formal documents and neither requires the removal applicant to explain why it seeks removal or to support the removal application with any information underpinning the allegation of lack of intention to use and/or non-use.[2]

   [2] Prior to 23 October 2006 then reg. 9.1 required a removal application to be accompanied by a declaration stating that an inquiry into the use of the trade mark had been conducted and “setting out the findings of that enquiry that support either or both of the grounds for the application referred to in subsection 92(4) of the Act”.

2. Against this background I am satisfied that the Opponent has effectively discharged its s 100(1)(a)(i) onus by affirming in the SGP that it had the requisite intention to use the Trade Mark as at the date registration 1277035 was filed.  I think it would be unreasonable to ask more of the Opponent in the absence of any more specific allegation from the Removal Applicant or of any evidence contradicting the Opponent’s reaffirmed intention.

3. The Opponent has in any case satisfied s 100(1)(b) by providing unchallenged evidence of its significant use of the Trade Mark in Australia in connection with, inter alia, the s 92 Services, prior to 12 November 2013.

4. I accordingly find that the ground for removal based on s 92(4)(a) of the Act is not established.

Section 92(4)(b)

Actual use

1. As mentioned, Jethro Marks is a Director of the Opponent.  He says in his declaration that the Opponent “commenced using the Trade Mark in Australia in respect of the [Services] in 2006” and provides, inter alia, the following further information concerning its use:

   9. [The Opponent] has since 2006 run a website (“our THE NILE website”).  We have held the domain name <thenile.com.au> since August 2006.  Exhibited hereto and marked Exhibit “JM1” is a screen capture of the homepage of the website displaying the range of products marketed under [the Trade Mark] and representing some of the goods listed in Classes [sic] 35 together with a print out of the Registry’s registration details for the domain name <thenile.com.au>.

   10. In and from 2006, our THE NILE website has received and fulfilled orders from throughout all States and Territories of Australia and worldwide.  Exhibited hereto and marked “JM2” is analytics by geography of visitors to our THE NILE website from 2006 until now.

   11. In addition to [our] THE NILE website, [the Opponent] also operates two eBay stores under the [Trade Mark].  Ebay store the_nile_au is our main Australian eBay Store and has been in operation since 30 July 2009 under [the Trade Mark].  It has accumulated 409206 feedback [sic] since its inception and is in the top 100 biggest eBay stores globally despite being a store focused at the Australian market.  I have read and verily believe a “Web Retailer” article stating that we are the 152nd top eBay seller in the world and since then have observed over the last 5 months that we have ascended this list and now sit within the top 100.  We sell Fashion through the_nile_au eBay store on a regular basis.  Our second eBay store the_nile_au_stores has been in operation as per the following dates and ID changes: it has been the_nile_au_stores since 13 September 2012 to the Present, prior to that it was thenile_fashion from 10 January 2011 to 13 September 2012, and before that it was hot_oz_fashions from 1 April 2010 to 10 January 2011.  The website and the two eBay Stores have been continually updated and expanded over time and by February 2011 all product lines of the goods listed in Classes [sic] 35 were available from either THE NILE eBay Stores or THE NILE website, or both.  [The Opponent] has sold KING GEE, DIESEL, GLOBE and other designer T-shirts on our eBay stores.  In the past, fulfilled orders were sent to the customer with an invoice and other collateral displaying [the Trade Mark].  Presently, order details and invoices are emailed to customers bearing [the Trade Mark]. …

2. Mr Marks goes on to provide significant dollar figures for “the approximate turnover, rapidly growing, for the past 3 financial years [2011, 2012 and 2013] for all products lines under [the Trade Mark] including the [goods identified in the Services].”  He also lists the actual number of items sold under the Trade Mark since first use, broken down into the following categories:

   books

   e-books

   compact discs

   DVDs

   units of clothing

   units of shoes

   units of footwear[3]

   units of headgear

   units of computer games and video games

   [3] Mr Marks does not say how “footwear” may differ from “shoes” in this context.

3. Finally, Mr Marks provides information about some of the Opponent’s advertising and promotional activities, including such activities featuring the products of third parties, and exhibits “the approximate promotional expenditure for promotions from 2009 to present.”

4. I am satisfied, based on Mr Marks’ above summarised evidence, that the Opponent used the Trade Mark in Australia during the Relevant Period for (at least) all of the s 92 Services. I accordingly find that the s 92(4)(b) ground for removal is not established.

Decision

1. With respect to both the s 92(4)(a) and (b) grounds, I am satisfied the Opponent has met its s 100 onus and accordingly neither ground is established.

Costs

1. In the event of success Mr Weston sought an award of costs in the Opponent’s favour. I believe this to be appropriate in this case and award costs against the Removal Applicant as specified in Schedule 8 to the Trade Marks Regulations 1995.

Michael Kirov
Hearing Officer
Trade Marks Hearings
25 June 2015