Mermaid (Brands) Limited v Yongfeng Trade Co Limited

[2022] ATMO 189

TRADE MARKS ACT 1995

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

Re:Opposition by Mermaid (Brands) Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Yongfeng Trade Co Limited to remove trade mark number 1746076 (9, 16, 25, 28, 35, 38, 41, 42, 43, 45) – Dog and gramophone (Figurative) – in the name of HMV (Brands) Limited

Delegate:

Louise Tuohy

Representation:

Opponent: Lucy Davis of counsel instructed by Media Arts Lawyers

Applicant: Paul Temple of Remarkable IP

Decision:

2022 ATMO 189

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(a) application for removal – intention in good faith to use or authorise use found – trade mark to be remain on the register

Background

1. HMV (Brands) Limited (‘Registrant’) is the registered owner of the following trade mark:

   Registration Number:   1746076

   Trade Mark:    (‘Trade Mark’)

   Filing Date:  13 January 2016

   Registered Goods and Services:                Classes: 9, 16, 25, 28, 35, 38, 41, 42, 43, 45[1] (‘Registered Goods and Services’)

   [1] See Annexure A to this decision for the specification details.

2. On 5 November 2020 Yongfeng Trade Co Limited (‘Removal Applicant’) filed an application (‘Application’) seeking removal of the Trade Mark from the Register for non-use. The removal application was in respect of all goods and services for which the Trade Mark is registered.  

3. On 11 January 2021, Mermaid (Brands) Limited (‘Removal Opponent’)[2] filed a Notice of Intention to Oppose the removal of the Trade Mark, followed by its Statement of Grounds and Particulars on 9 February 2021. On 28 April 2021 the Removal Opponent filed its Notice of Intention to Defend.

   [2] On 15 April 2019 the Registrant changed its name to the Removal Opponent.

Evidence

Evidence in Support

• Declaration of Matthew David Bone, Marketing Director at Hilco Capital Limited, made on 5 August 2021, with Exhibits MB1 to MB8 (‘Bone declaration’).

• Declaration of Henry Forster, Chief Executive Officer at Hilco Capital Limited, made on 6 August 2021, with Exhibits HF1 to HF4 (‘Foster declaration’).

Evidence in Answer

• Declaration of Paul James Temple of Remarkable IP, made on 11 November 2021 (‘Temple declaration’).

Evidence in Reply

• Declaration of Sharon Kirby of Murgitroyd, European Patent & Trade Mark Attorneys, made on 11 January 2022, with Exhibits SK1 to SK4.

1. Once time for filing evidence had ended both parties requested to be heard by way of written submissions. Lucy Davis of counsel instructed by Media Arts Lawyers filed written submissions on behalf of the Removal Opponent. Paul Temple of Remarkable IP filed a written submissions on behalf of the Removal Applicant. The matter has now been allocated to me a delegate of the Registrar of Trade Marks to decide. This record consists of the SGP, and the evidence and written submissions filed by the parties.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated s 92(4)(a) of the Act as the ground for removal. Section 92(4)(a) provides:

   (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;

3. The onus of rebutting an allegation of under s 92(4)(a) lies with the Removal Opponent. This onus is pursuant to s 100 of the Act which provides:

   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)  any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or

   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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;

   […]

   (2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before 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 in relation to those goods or services before 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 before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

4. In the present case the Removal Opponent relies solely on the Registrant’s intention in good faith to use or authorise the use of the Trade Mark in Australia in respect of the Registered Goods and Services as at the filing date of the trade mark application for registration on 13 January 2016 (‘Relevant Date’).

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

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

6. Though the onus is, in terms of section 100 of the Act, on the Removal Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed:

   [,,,] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meanings an intention to use immediately or within any limited time. [4]

   [4] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALIR 242, [21].

7. While this observation was made in proceeding under the Trade Marks Act 1955 (Cth), where the onus was on an applicant for removal, the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd (‘Structureco’), Hearing Officer Forno said:

Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92 (4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[5]

[5] [2000] ATMO 31.

1. In accordance with s 101 of the Act, if the grounds for removal are established, I may decide to remove the Trade Mark from the Register in respect of any or all of the Registered Goods and Services, or, if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. In the Bone declaration, Mr Bone declares that over the last 100 years the HMV Group (‘HMV’), has used the ‘dog and gramophone’ image as a trade mark in relation to its retail entertainment business. The Trade Mark was created in 2010 and older versions include:

‘Original’

dog and gramophone trade mark

‘Roundal’

dog and gramophone trade mark

1. Mr Bone declares that HMV operated 30 stores which featured different versions of the dog and gramophone trade marks in Australia from 1990 to when the stores were closed down in the early 2010s.[6]

   [6] Bone declaration [20].

2. In the Foster declaration, Mr Foster declares that HMV Group Plc entered administration in January 2013. Hilco Capital Limited (‘Hilco’) a business that specialises in the restructuring and refinancing of other companies, acted as agents to the Administrators to ensure HMV branded stores continued to trade. Hilco then acquired HMV in April 2013. Hilco was responsible for the day to day running of the business and HMV continued to operate the retail stores in the United Kingdom and Ireland.  

3. Mr Foster declares that Hilco reviewed HMV’s trade mark portfolio with a view to rebuilding HMV’s international presence. At the time of filing the trade mark application the Registrant was the owner of the ‘dog and gramophone’ trade mark portfolio in Australia and in other countries and was working with Hilco to build the business. Mr Foster declares the intention of the Registrant on filing the Australian trade mark application in 2016, was to revive the HMV retail business in Australia via a licensee or partner, and also to look to produce a selection of related merchandise. Mr Foster also declares that Hilco hoped to license the Trade Mark in respect of the full range of Registered Goods and Services, if a suitable licensee or partner could be found. To assist with this Mr Foster declares that in 2015 Hilco appointed a brand licensing agency to identify and pursue opportunities in Australia.

4. In this case, the Registrant has filed the application for trade mark registration, and Mr Foster has made a clear statement that the Registrant had an intention in good faith to authorise use of the Trade Mark as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.

5. The Removal Applicant’s submissions argue that the Removal Opponent did not have an intention to use the Trade Mark for commercial purposes in respect of any or all of the Registered Goods and Services at the Relevant Date. The Removal Applicant also submits all the evidence filed by the Removal Opponent reflects only a speculative possibility or general intention for using the Trade Mark at some future but unascertained point in time.[7]

   [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [87]-[88] (Yates J).

6. However, the Removal Applicant has provided no basis either in the form of evidence or argument for the Delegate to find the clear evidence given by Mr Foster as to the intention of the Registrant at the Relevant Date to be false or inaccurate. The Registrant was clearly capable of entering into a partnership and its then parent entity, Hilco, had taken the concrete step of appointing a brand licensing agency to investigate such opportunities. Noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use the Trade Mark for the Registered Goods and Services and the Removal Applicant has provided insufficient evidence or submissions to suggest otherwise.

7. As such, the grounds for removal under s 92(4)(a) of the Act have not been established in relation to the Registered Goods and Services.

Decision

1. The Removal Applicant has been unsuccessful in its Application. I direct that trade mark registration 1746076 is to remain on the Register for all of the Registered Goods and Services. If the Registrar is served with a notice of appeal within the relevant timeframe, I direct that the disposition of the removal application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Applicant under s 221 of the Act in line with Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

26 October 2022

Annexure A

1746076

Registered Goods and Services:

Class 9:

Apparatus for recording, compressing, transmission or reproduction of sound or images; telecommunication apparatus and accessories; telecommunication kits and accessories for broadband telecommunication services and the internet; mobile telephones; combined phones with cameras; camcorders; personal digital assistants (PDA); wireless communication devices; compact disc players; MP3 and MP4 players; video players and recorders; DVD players, writers and recorders; CD players, writers and recorders; portable media players; cases and fascias for all the aforesaid equipment; PC drives; hard drives; flash memory drives; disc drives; tape drives; modems; headphones; parts and fittings for all the aforesaid goods; electronic circuit boards; computer program memory cartridges; digital media player (or other DRM-less (digital rights management-less) hardware); wireless communications apparatus being in-store wireless kiosks with download capacity; download recorders for cell phones or other apparatus for recording (software); magnetic data carriers; CDs; DVDs; SACDs; mini-discs; high definition DVDs; high density and definition media and hardware; Portal Media (pre-recorded disks of sound, audio, digital and video recordings made available to consumers allowing instant communication); sound recordings; music recordings; video recordings; audiovisual recordings; audio books; books and other publications recorded on computer media; downloadable sound, music, video, images, games and texts; computer software; video games; computer games programs; software and cartridges for any type of games apparatus; books and other publications recorded on computer media; racks and cases, all adapted to hold CDs, DVDs, SACDs, mini-discs or high definition DVDs; computer software; computer games programs; joysticks; headphones; drive consoles; light guns; keyboards, fittings and parts thereof; interactive games equipment to play games on TV screens, visual display units, monitors and computer screens; interactive computer systems; computer interfaces to remote units; electronic publications (downloadable) provided on-line from databases, via the Internet or any other communications network; electrical equipment and apparatus in this class; electronic equipment and apparatus in this class; computer hardware; computer tablets; televisions

Class 16:

Printed publications; books; comics; periodicals; magazines; posters; photographs; prints; albums; stickers; calendars; greetings cards; diaries; manuals; paper; paper articles; writing implements; stationery; gift vouchers; voucher books; gift certificates, book and record tokens; gift stationery; gift wrappers; gift packaging; gift tags

Class 25:

Clothing, footwear, headgear

Class 28:

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; games apparatus adapted for use with television receivers; games consoles; video gaming machines; games apparatus playable on TVs, screens, visual display units, monitors and computer screens; interactive games equipment to play games on TV screens, visual display units, monitors and computer screens

Class 35:

Advertising; provision of advertising space through computer networks and websites; distribution of advertising material and dissemination of advertising messages; the organisation and provision of loyalty card schemes and services; the bringing together, for the benefit of others (including consumers), of a variety of goods, namely, books, magazines, products (whether or not in tangible form) carrying or containing music, products (whether or not in tangible form) carrying or containing audio-visual matter, electronic games, apparatus and equipment relating to any of the foregoing, other goods in the consumer electronics or home entertainment or personal entertainment or consumer communications markets, posters, calendars, paper goods, writing implements, stationery and mouse mats, novelty items, gift sets, badges, keyrings, fridge magnets and metal plaques and mugs, blank recording media, toys, playthings and games (including board games), clothing, headgear, confectionary, snack foods, sandwiches, crisps, sweets, popcorn, ice cream, edible ices and drinks, enabling customers to conveniently view, sample and purchase those goods from a retail outlet, mail order catalogue or internet web site; retail services, including online retail services; wholesale services, including online wholesale services; retail services relating to the sale of music, musical equipment and other music related products; wholesale services relating to the sale of music, musical equipment and other music related products; retail services relating to the sale of electrical and electronic equipment; wholesale services relating to the sale of electrical and electronic equipment

Class 38:

Telecommunications, broadcasting and webcasting; delivery of digital music, video, games or books by telecommunications; providing access to digital music web sites on the internet; providing video sharing portals; leasing access time to computer databases; providing internet chatrooms and virtual chatrooms; providing on-line forums, interactive bulletin boards and interactive communication services; transmission of information, messages, text, data, multimedia content, videos and images by electronic means; streaming media; delivery of multimedia content to computers, portable media players and other apparatus; short messaging services (SMS); organising and providing online community forums for users to post, search, watch, share, critique, rate and comment on audio, video and other multimedia content; provision of access time to computers and the internet; providing access to media bearing audio matter, audio-visual matter, texts, images, multimedia works and electronic games; providing access to equipment for playing, recording, storing, compressing or otherwise processing audio matter, audio-visual matter, texts, images, multimedia works and electronic games

Class 41:

Entertainment; cultural activities and events; lending and rental of media bearing audio matter, audio-visual matter, texts, images, multimedia works and electronic games; rental and lending of equipment for playing, recording, storing, compressing or otherwise processing audio matter, audio-visual matter, texts, images, multimedia works and electronic games; organisation, production and presentation of events, games, quizzes and competitions; distribution of films, audio and video recordings, electronic games and multimedia recordings; interactive entertainment services; provision of interactive play and game areas; provision of amusement centres; electronic games services provided on-line or by means of a global computer network; publishing; production, editing, presentation and recording of films, audio and video recordings, images, texts and multimedia works; ticket procurement, reservation and information services relating to entertainment events, concerts, theatres, cinemas, and to sporting, cultural and theatrical events; cinema services; management of cinemas; providing cinema facilities; cinema hire services; cinematographic entertainment services; entertainment services in the form of cinema performances; services for the showing of cinematographic films; showing of cinematographic films; film distribution services including distribution of films, cine films, cinematographic films, motion picture films; production services including production of films, videos, DVD's, television programmes and radio programmes; preparation of documentary and entertainment programmes for the cinema; services for the organising of games, competitions and of quizzes relating to cinema, motion pictures and films; education services relating to the cinema; booking agency service for cinema tickets; information services relating to the aforesaid services; information services relating to the aforesaid services also provided on-line from the Internet or from a computer database; interactive online computer services featuring information about production, distribution, showing, leasing and rental of motion picture films, video and television programmes accessed via computer network

Class 42:

Computer services in this class; hosting of digital content on the internet; computer software design; online provision of web-based software; hosting of web-blogs; creating and maintaining web-blogs; hosting a computer website for online meetings, gatherings, forums, chatrooms, journals, blogs and interactive discussions

Class 43:

Cafeteria and coffee shop services; services for the provision of food, refreshments and drink; social clubs

Class 45:

Social networking services; internet-based social networking services