Millionaire International, Inc v John M. Bester & Associates Pty Limited

[1991] ATMO 19

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Registration No. 355461 in the Name of MILLIONAIRE INTERNATIONAL, INC., and Opposition to an Application under Section 23 of the Act for the Removal thereof by JOHN M. BESTER & ASSOCIATED PTY. LIMITED.

Trade mark No. 355461 is registered in the name of Millionaire International Inc ("the proprietor") of PO Box 10089, Beverly Hills, California 9D213 in the United States of America.  On 11 October 1988, John M. Bester & Associates Pty Limited ("the applicant") a New South Wales company, of 29-35 Bellevue Street, Surry Hills, New South Wales made application under section 23 of the Act for the removal of the trade mark from the Register.  The registration details are as follows:
Number    Mark       Registered               Goods

from

A355461MILLIONAIRE  15 Jan 81 Magazines and other publications and printed matter included in this class, but not including printed matter for use in or connected with games.

Notice of opposition was lodged by the proprietor on 15 June 1990.
          Evidence in support of the application was lodged on 29 June 1990 and consists of a statutory declaration made by MICHAEL KAZACOS, managing director of the applicant company.  Evidence in answer was served on 17 September 1990 by the proprietor and consists of a statutory declaration, and annexure, by DOUGLAS LAMBERT, president of the proprietor company.
          The issue came before me to be heard in Sydney on 5 March 1991.  The applicant was represented by Hugh R. Hodgkinson, patent attorney, of the firm H.R. Hodgkinson & Co, of Sydney; and the proprietor was represented by Claude Anese, patent attorney, of the firm Cullen & Co, of Brisbane.

The extensive submissions of the attorneys may be precised as follows.
          For the applicant Mr Hodgkinson submitted that the applicant is a person aggrieved: his client is the subsequent proprietor of three applications to register trade marks: 460065, 460046 and 469692, since lapsed, however his client was the potential assignee of these applications (should they have proceeded to registration), at the time of lodgement of the application under s.23.  Further, they have published a magazine called MILLIONAIRE since February 1988.  The evidence in support does, Mr Hodgkinson submits, establish a prima facie case of non-use: it has not been shown that one declaration is insufficient for this purpose: Estate Agents Co-operative Ltd v National Association of Realtors, 11 IPR 467. The declarant has the necessary expertise to attest to the non-use of the mark and in his declaration declares that he has contacted a number of large printing and publishing houses who have also not encountered the use of the mark in relation to magazines in Australia prior to his contacting them. The proprietor's evidence in answer is open to a number of criticisms: the two Australian subscriptions they purport to evidence, to a Mr A. Sproule and a Mr K. McEntee, are, to an extent, gainsayed by the declaration of Mr Lambert who declares that two subscriptions were sent to Mr McEntee; given that the relevant period for the purposes of this application is 11 September 1985 to 11 September 1988. Mr Hodgkinson suggests that there was, in fact only one sale of the goods since the declarant's statement that two subscriptions were taken by Mr McEntee obviously cannot be relied on. There is no proof of despatch or receipt of the goods. Following the REALTOR decision, supra, the proprietor was not using the mark in a trade mark sense as the word MILLIONAIRE was incorporated into the proprietor's name. As regards costs, they should be awarded on the basis that the applicant has not attempted to show use on all of the goods for which the mark is registered and, failing to find that the applicant has failed to make out a case, or show locus, in relation to magazines, I should order a partial removal in respect of the balance of the goods in respect of which no use could claim to have been shown.
          Mr Anese responded by submitting that they do not accept that the applicant is a person aggrieved; the applicant is not and was not the proprietor of the applications mentioned by Mr Hodgkinson; secondly, as the proprietor has not complained of the applicant's actions in publishing a magazine called MILLIONAIRE, there is no grievance.  The applicant has not made out a prima facie case of non-use; the applicant has not specifically addressed the period of time in question; there is no evidence of when Mr Kazacos went into the publishing field or his depth of experience in that field - the only thing that the declaration shows, states Mr Anese, is that towards the end of the relevant period Mr Kazacos was in the publishing field.  Thus, the bona fides of the declarant have not been established as regards his authority in this area.  The declaration that Mr Kazacos had contacted a number of large publishing houses is hearsay evidence: this should be given appropriate weight when considered in the light of Essex Clothing Manufacturers Pty Ltd v Ellis and Goldstein (1966) 116 CLR 254 or Softsel Computer Products Inc v Studio Australia Pty Ltd (1991) AIPC 90-751 and 90-762. Further, the necessary details of those interviewed in the publishing houses are not given so that, in turn, states Mr Anese, their authority on this matter is not established. While there is no law that says that one declaration is not sufficient, Australian Bacon Limited v Mulfric Foods Pty Ltd 12 IPR 372 suggests certain qualifications. There has been no evidence filed that goes to the proprietor's intention to use the mark. Therefore neither has a case under s.23(1)(a) been made out.
Determination
          Section 23 of the Act, as much as is relevant to this determination reads as follows:

23.(1)  Subject to this section and to section 93, a prescribed court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered, on the ground -

(a)that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods or services by him or, if it was registered under sub-section (1) of section 45, by the body corporate or registered user concerned, and that there has, in fact, been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being earlier than 1 month before the application; or

(b)that, up to 1 month before the date of the application, a continuous period of not less than 3 years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being.

(Section 93(2) concerns the immunity of Part D marks from removal for non-use.)
          It follows from the above that the applicant in these issues should be a person aggrieved and that the onus is on him to set up a prima facie case that the proprietor has not, in the case of sub-paragraph (b) above, used the mark for a period of 3 years leading to the time of one month before the s.23 application was lodged.  The onus swings then to the proprietor to negative the prima facie case against him by evidencing use of the mark or a special circumstance in terms of s.23(4) which has prevented use of
the trade mark.  However, if a prima facie case has not been set up by the applicant there is no onus on the proprietor to show use.
          Initially, then, I will accept that the applicant is a "person aggrieved".  In Powell's Trade Mark, (1894) 11 RPC 4, at
7-8, Lord Herschell said:

"My Lords, I should be very unwilling unduly to limit the construction to be placed upon these words; because, although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.

Whenever it can be shewn, as here, that the applicant is in the same trade as the person who has registered the trade mark, if remaining on the Register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the mark upon the Register, he could lawfully do, it appears to me that he has a locus standi to be heard as a person aggrieved."

As the applicant has the desire to use the inherent mark, and the instant registration might limit his legal rights, he must be accepted as a "person aggrieved".  The proprietor's alleged failure to exert his legal rights is not, I think, a determining factor in this question.
          However, I consider that I must accept Mr Anese's submissions concerning the declaration by the applicant.  This declaration falls very far short of that which would be required to establish a prima facie case of non-use.  As was observed in the "REVUE" Trade Mark [1979] RPC 27, at 29:

"[The burden] should, in my opinion, rest on more than the testimony of one individual, unless he were a person particularly well-placed and knowledgeable in the trade, such as, for example, an official or a relevant trade association might be, especially if the industry concerned were one which kept a record of marks in use ..."

With the very greatest of respect to the declarant, Mr Kazacos, I do not think that it can ever be accepted that a single declaration being from an officer of an applicant company can establish a prima facie case of non-use.  Even if the declarant's interest in the outcome of this application were disregarded (which it cannot be), I have no information as to his length of time in the industry, his period of service with the applicant company, his previous positions in the trade, and so on, by which I can guage the likelihood that he has a sufficiently deep knowledge of the market-place to state with authority that a trade mark is not being used.  As to the "executives" that Mr Kazacos contacted - the same applies.
While it is accepted that hearsay evidence of this nature may go towards establishing a prima facie case of non-use, the precise questions and answers as well as the names, positions, length of time in the industry and geographical locations of the attestees are required as well as the date of interview and exact reference to the relevant time frame - again this is in order that the extent and depth of their knowledge of the industry might be safely assessed in their declaration as to the state of the market at the relevant period.  With deep respect to the declarant, the word "executive" could be stretched in a broad sense to include anybody in a company.  The declaration is further fraught by a major flaw in its internal logic: the executives contacted by the declarant appear to be stating that they know of no use of the trade mark by anybody - this includes the applicant who by his same statement attests to having used it for a period of at least seven months at that time.  I do not take this to be a reflection on the veracity of the declarant but to be an illustration of the danger in relying on the unsworn statements of anonymous people of dubious authority reported at second-hand.
          Having found that the applicant has not made out a prima facie case of non-use there is no requirement to go on and consider the question of the proprietor's use of the trade mark.  However, for the sake of completeness, I will note that the trade mark has been used albeit not to a great extent.  As was observed by McGarvie J. in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd, (1987) 10 IPR 402 at 437, the applicant must demonstrate "... that during the three year period (the proprietor) did not once use the mark in good faith in Australia". As the reference to two subscriptions taken by KEVIN McENTEE in the declaration is an obvious drafting error that is shown to be an error by the two subscription forms sent by Mr McENTEE and a Mr A. SPROULE, I will accept that the trade mark has been used at least twice by the proprietor if the use is counted by reference to the subscription and seven times if use is calculated by the number of magazines sold. It is not clear whether this is the total use of the mark in Australia, however, it is all the use that the proprietor of the mark would have had to show had the applicant established a prima facie case of non-use.
          In summary then, the application for removal for non-use fails as the applicant has failed to establish a prima facie case of non-use; and, in the event, the proprietor established that it had use of the mark.
          Accordingly, I dismiss the application and I allow the proprietor its costs, to be taxed, allowed and certified according to the official scale.

(IAN THOMPSON)
Hearing Officer
28 March 1991