Momaworld Sdn Bhd v Cesari Srl

[2022] ATMO 147

TRADE MARKS ACT 1995

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

Re:Opposition by Momaworld Sdn Bhd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Cesari SRL to remove trade mark number 1647184 (classes 30, 32) – MOMA - in the name of Momaworld Sdn Bhd

Delegate:	M. Cooper
Representation:	Opponent: Samuel Hallahan of counsel instructed by Foundry Intellectual Property Applicant: Natasha Burns of Burns IP
Decision:	2022 ATMO 147 Trade Marks Act 1995 (Cth) – s 96 opposition: application under s 92(4)(b) to remove trade mark from Register in respect of all goods – use demonstrated for some goods - s 92(4)(b) grounds partially established – discretion not exercised - Trade Mark to be removed for some goods.

Background

1. Momaworld Sdn Bhd (‘Opponent’) is the registered owner of the following trade mark:

   Registration:  1647184

   Trade mark:    MOMA (‘Trade Mark’)

   Filing date:  16 September 2014

   Specification:  Class 30: Herbal beverages (non medicinal)

   Class 32: Beverages, namely drinking water, flavoured non-alcoholic water; aerated and mineral waters; fruit drinks and fruit juices; soft drinks; energy drink; soft beverages; carbonated drink; non-carbonated drink, namely soft drinks and non-alcoholic frozen flavoured beverages; concentrated syrups and powders for making drink; lithia waters; seltzer water; isotonic beverages; table water; soda beverages

   (‘Goods’)

2. On 21 July 2020, Cesari SRL (‘Applicant’) applied under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) to remove the Trade Mark from the Register for non-use in relation to the Goods for which it is registered.

3. A Notice of Intention to Oppose the removal application was filed by the Opponent on 22 September 2020. On 22 October 2020 it filed its Statement of Grounds and Particulars. A Notice of Intention to Defend was filed by the Applicant on 18 December 2020.

4. The evidence filed in this removal opposition comprises:

   Evidence in Support 
   Declaration of Samuel James Tai Huei, General Manager of the Opponent, dated 22 March 2021, with Annexures ST-1 to ST-9 (‘Huei 1’); and
   Declaration of Hezi Refael, Managing Director of Natuur Pty Ltd., dated 22 March 2021, with Annexures HR-1 to HR-8 (‘Refael’).
   Evidence in Answer
   Declaration of Elena Marangoni, Authorised Legal Representative of Cesari SRL, dated 22 June 2021, with Exhibits EM-1 to EM-4 (‘Marangoni’).
   Evidence in Reply

   Declaration of Samuel James Tai Huei, dated 24 August 2021, with Annexures ST-10 to ST-15 (‘Huei 2’).

5. Following the evidence stages, the parties requested a hearing.  The Opponent and Applicant filed written submissions on 18 May 2022 and 25 May 2022, respectively.

6. On 30 May 2022, the Opponent filed a further declaration of Samuel James Tai Huei dated 25 May 2022 with Exhibits ST-16 to ST-21 (‘Huei 3’), discussed further below.

7. On 1 June 2022, I heard the matter by videoconference as delegate of the Registrar. Samuel Hallahan of counsel, instructed by Dr Andrew Jones of Foundry Intellectual Property, appeared for the Opponent. Natasha Burns of Burns IP appeared for the Applicant.

   Summary of Evidence

8. The Opponent’s declarations outline the circumstances of Huei’s dealings (through Momawater Sdn Bhd, (‘Momawater’)) with Hezi Refael, Managing Director of Australian company Natuur Pty Ltd. (‘Natuur’) regarding the sale and distribution of MOMA branded bottled water (‘MOMA water’) in Australia. In 2016 Refael, an existing client of the Opponent, visited its Malaysian factory to purchase charcoal but also discussed with Huei the Opponent’s production of bottled water. A ‘test shipment’ of MOMA water was sent to Natuur in October 2016 which Refael states he distributed in Victoria. In November 2016 Refael says he undertook a pricing analysis to assess his profit and assign a wholesale price to the MOMA water. He states he visited the factory again in June 2017 and continued negotiations to purchase the MOMA water at this time. Both Huei and Refael acknowledge the lengthy discussions.

9. In 2019 the Applicant sought to register its International Trade Mark 942559[1] for ‘MOMA’ for Goods in classes 32 and 33 in Australia however the examiner raised a s 44 ground for rejection, citing the Trade Mark.[2] On 25 March 2020 the Applicant’s representative emailed the Opponent’s representative seeking to explore a coexistence agreement, adding ‘[i]n the contrary my client shall have to consider conflictual solutions, in view of the lack of factual use of your client’s mark our investigation retrieved in Australia.’ (Marangoni, Exhibit EM-2). Negotiations concerning an agreement commenced.

   [1] Australian trade mark no. 1937278.

   [2] The examiner also cited the Opponent’s trade mark LIVE MOMA, TM 1658515. The Opponent did not oppose its removal from the register following the Applicant’s application.

10. Annexures to both Huei 1 and Huei 2 and Refael (ST-10, HR-7) show WhatsApp discussions between them in April 2020 regarding the sale and transport of MOMA water to Australia. On 4 May 2020 Momawater and Natuur entered into a Distribution Agreement for MOMA water in Australia, including use of the Trade Mark (Huei 1, ST-6). On 5 May 2020 Natuur placed a Purchase Order for over 1200 cartons of MOMA water (Huei 1, ST-7) to be delivered to it in Australia. Refael states he requested a delay of the shipment in June 2020 because of business uncertainty caused by the COVID lockdown.

11. After several communications, on 17 July 2020, the Opponent advised the Applicant that it had decided not to pursue a coexistence agreement. On 21 July 2020, this removal application was filed.

12. Evidence shows that on 27 October 2020, a WhatsApp conversation between Huei and Refael discussed Australian labelling requirements. These discussions continued in February 2021 (Huei 2, ST-10). In August 2021 the Opponent contracted a Chinese company to produce labels for the Australian MOMA water bottles (Huei 2, ST-11).

13. Huei 3 includes an invoice dated 29 October 2021 to Natuur for 1470 bottles of ‘MOMAWATER’. Other attachments include the packaging declaration dated 26 October 2021, Momawater’s declaration dated 29 October 2021, the Sea Waybill dated 2 November 2021 along with a photograph of the inside of a container (as identified in the documentation) packed with MOMA labelled cartons for shipment to Natuur in Australia.

    Preliminary issue: late filed evidence

14. On 30 May 2022, the Opponent sent Huei 3 to the Applicant, copying in the Registrar. At the hearing I observed that Huei 3 was not filed during the evidence period and no extension of time had been sought to file this additional evidence.  Following some brief oral submissions, I issued directions giving both parties time to make written submissions in regard to whether Huei 3 should be considered in the determination of this opposition.   

15. In accordance with the directions, the Opponent filed submissions on 8 June 2022. Essentially it was submitted that the  Huei 3 is crucial ‘because it proves unequivocally’ that when the Opponent offered to supply MOMA water to Natuur in April 2020 it ‘had an existing intention to offer or supply goods bearing the mark in trade’ in Australia. The Opponent submits it could not have filed the material within time because the events occurred after the deadline for filing evidence, and it is in the public interest that the matter be decided on all the relevant information. It also submitted that there would be no prejudice to the Applicant.

16. The Applicant also filed submissions, contending the material was not probative or crucial to the decision and it should not be admitted. It further observed that, given the Opponent’s onus in this regard, while it could not have provided the material during the evidence stages, it could have provided it earlier than 22 May 2022 given the activity to which it relates occurred in October/November 2021. It further noted that there is still no evidence of the MOMA water product being offered to Australian consumers or evidence of sales made by Natuur to consumers in Australia.

17. The Registrar is not bound by rules of evidence and may be informed on any matter he or she reasonably believes to be appropriate,[3] providing that the parties have an adequate opportunity to put their case. In this context I observe that the information conveyed in Huei 3 supports its claims of a demonstrated objective commitment to trade in Goods bearing the Trade Mark in Australia. It is also probative insofar as it demonstrates the Opponent’s continuing efforts, after the relevant period, to deliver and sell its Goods in Australia, thereby addressing the Applicant’s submission that the Opponent’s activity in the relevant period was token and contrived.

    [3] Trade Marks Regulations 1995 (Cth) reg 21.15(4).

18. It is in the public interest in ensuring the accuracy of the Register that material pertinent to trade mark ownership and use is not excluded from consideration. Accordingly, I am satisfied that there are compelling reasons to accept this material in evidence under reg 21.15(4) of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).

    Onus

19. In respect of the proceedings under s 92(4)(b), s 100 of the Act provides that the Opponent bears the onus of rebutting the allegation of non-use. The relevant standard of proof is on the balance of probabilities.[4]

    [4] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 [504].

    Legislation

20. Section 92 of the Act relevantly provides as follows:

    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 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:

    [...]

    (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the nonuse 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.

21. If the Opponent establishes its good faith use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), or that there was a relevant obstacle to its use during the relevant period[5], it is taken to have rebutted the allegation.[6]

    [5] Although COVID was cited as the reason for the delay in shipment of the MOMA water to Australia (paragraph10 above) the Opponent did not invoke s100(3)(c).

    [6] s 100(3).

22. Alternatively, if the ground for removal are established, s 101(3) of the Act provides that, if the Registrar or the court is ‘satisfied that it is reasonable to do so’, it may decide the Trade Mark should not be removed from the Register.

    Consideration

23. There is no evidence of any action concerning the Trade Mark pending in a court (s 92(3)). Based on the available records, the Trade Mark has been registered since 16 September 2014, that is, it has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application was filed (s 92(4)(b)). Self-evidently, it is over 5 years since the filing date of the application for registration (s 93(2))[7].

    [7] Section 93(2) of the Act prior to the amendments made by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth).

24. As noted above, the Applicant sought that the Trade Mark be removed under s 92(4)(b) for all the Goods for which it is registered. The period of non-use was asserted to be from 21 June 2017 to 21 June 2020, that is, the three years ending one month prior to the filing of the non-use application on 21 July 2020 (‘the relevant period’).

    Was the use authorised?

25. The Opponent, the owner of the Trade Mark, is Momaworld Sdn Bhd however Momawater Sdn Bhd is the entity that manufactures the products and, as the evidence indicates, uses the Trade Mark. I therefore need to determine whether the Opponent relevantly authorised Momawater’s use within the meaning of s 8 of the Act such that its use might be taken as use by the Opponent (s 7(3)).

26. In this regard I note the decision in Trident Seafoods Corporation v Trident Foods Pty Ltd,[8] where the Full Court found that authorised use could be established in circumstances where two companies shared the same directors:

    It must be inferred from the evidence that the two companies operated with a unity of purpose. … As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. …it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[9]

    [8] [2019] FCAFC 100.

    [9] Ibid [45].

27. The Opponent’s evidence demonstrates a similar relationship between it and Momawater. Documents from the Companies Commission of Malaysia attached to Huei 1 (ST-1) show that Momaworld Sdn Bhd is a company whose business is in part ‘to carry on business related to soft drinks, and other drinks of bottles, can etc’. Its shares are owned solely by Subur Tiasa Holdings Berhad. The entry for Momawater states its business is the ‘manufacture and trading of drinking water’ and its sole shareholder is also Subur Tiasa Holdings Berhad. That is, the Opponent and the user of the Trade Mark are both wholly owned subsidiaries of Subur Tiasa Holdings Berhad. The evidence also demonstrates that they share the same registered address, the same auditor and the same directors. On this basis I am satisfied that the material supports an inference that the two companies were operating in the relevant period with a unity of purpose such that, for practical purposes, the Opponent controlled the use of the Trade Mark by Momawater within the meaning of s 8 of the Act and Momawater’s use of it can be regarded as use by the Opponent (s 7(3)).

    Use of the Trade Mark

28. The Opponent is required to show its use of the Trade Mark as a badge of origin which indicates a connection in the course of trade between the Goods and the person who applies the mark to the Goods[10]. A single instance of bona fide use in the relevant period may suffice to resist a removal application[11] however that use requires ‘if not conclusive proof, at any rate overwhelming convincing proof’.[12]

    [10] For example, see E&J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 at [41] – [43] (‘Gallo’).

    [11] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (‘Woolly Bull’).

    [12] Nodoz Trade Mark [1962] RPC 1,7.

29. The Opponent asserts that use of the Trade Mark in the relevant period is established by the evidence of three dealings with the Australian company Natuur. They are:

    ·     the screenshots of WhatsApp communications between Huei and Hezi Refael in April 2020 in which, in the context of organising for the dispatch of MOMA-labelled drinking water to Australia, they discuss details of packaging, carton and container sizes. The screenshots also display the Trade Mark on cartons, on bottled water and a brochure;

    ·     the Distribution Agreement dated 4 May 2020 between Momawater and Natuur for the distribution of MOMA bottled water in Australia; and

    ·     a purchase order from Natuur to Momawater on 5 May 2020 for over 1000 cartons of ‘Momawater’ to be delivered to Australia.

30. As observed by the Applicant, in the relevant period, there was a Distribution Agreement but no distribution, a purchase order that was not fulfilled and a WhatsApp conversation in which container and pallet sizes were discussed but no evidence that any Goods bearing the Trade Mark were ever shipped or offered for sale in Australia. The situation is submitted to be analogous to the circumstances of Moorgate Tobacco Co. Ltd. v Philip Morris Ltd (‘Moorgate’)[13] where similar dealings were found to constitute nothing more than preliminary discussions about whether a mark would be used, not trade mark use. The Opponent however relied on the further comments in Moorgate that ‘if an actual trade or offer to trade, or an intention to offer or supply goods bearing the mark in trade’ is identified ‘it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be local use of the mark as a trade mark’.[14] The Opponent maintains that its communications and transactions during the relevant period demonstrate ‘an offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade’[15] which was received in Australia ‘in relation to the future purchase and distribution of MOMA water in Australia’[16] It contends it is immaterial that the Goods were not shipped before the end of the relevant period.[17]

    [13] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [1984] HCA 73 [23]; (1984) 156 CLR 414, 433-434 (‘Moorgate’).

    [14] Ibid; see also Winton Shire Council v Lomas [2002] FCA 288, [36-38] and the Full Court on appeal Lomas v Winton Shire Council [2002] FCAFC 413 [39]; Buying Systems (Australia) Pty Ltd v Studio SRL [1995] FCA 1063; Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 [155] (‘Dick Smith’).

    [15] Moorgate, op. cit.

    [16] Relying on Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6 [110] and [116].

    [17] Re Hermes Trade Mark [1982] RPC 425 (‘Hermes’); Buying Systems (Australia) Pty Ltd v Studio Srl (1995) 30 IPR 517 (‘Buying Systems’).

31. As Drummond J noted in relation to Moorgate:

    The applicants, in my opinion, misunderstand what Deane J said… Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark.  What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country…[18]

    [18] Woolly Bull (n 10) [20].

32. In the circumstances of this opposition, unlike that, for example, in Moorgate and Woolly Bull, the evidence establishes more than the Opponent’s subjective intention to offer Goods bearing the Trade Mark in Australia. Its evidence is corroborated by its Australian client/distributor (Refael) with whom it has an established trading channel to Australia. While taken individually, the Distribution Agreement and the purchase order might be insufficient to establish the required use, I am satisfied that, considered collectively with the WhatsApp messages between Huei and Refael, (and especially in light of the evidence of their earlier and later activity in this regard[19]), they constitute objective proof of ‘action by the mark owner to commit goods bearing the mark to actual trade in Australia.’ That is, it is not a case of the registered owner proffering a single act of use but of ‘sufficient activity’[20] to establish that the Opponent ‘has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark i.e., to carrying its intention to use the mark into effect.’[21]

    [19] For example, the previous samples sent to Australia in 2016, contractual arrangements with a third party for the Australian labels, and the actual shipment of the MOMA water to Australia in 2021.

    [20] Buying Systems (n 16)520.

    [21] Woolly Bull (n 10) [40].

1. Overall, I am satisfied that the Opponent’s evidence of the use of the Trade Mark for its bottled water in its transactions with the Australian company Natuur constitutes use of the Trade Mark in Australia in the relevant period. This use however was limited to drinking water. There is no evidence of relevant use on any of the other Goods.

   Good faith

2. The Opponent must also establish that the use was ‘in good faith.’ ‘Good faith’ use is described as ‘real, as opposed to token, use in a commercial sense.’[22] Actual sale of the Goods need not be demonstrated.[23]

   [22] Ibid [16].

   [23] Dick Smith (n 13) [131]-[132].

3. The Applicant contends that even if there was use, it was not use in good faith, because it only occurred after the Applicant made the Opponent aware in March 2020 of the non-use of the Trade Mark. It submits that, if there was use of the Trade Mark, it was contrived and lacking good faith. Specifically, it should be inferred that the Opponent engaged in its dealings with Natuur for the sole purpose of defeating the Applicant’s removal application.

4. The Opponent refers to its discussions with Natuur from 2016 as compelling objective evidence of its genuine intention to use the Trade Mark in Australia. It submits that, taken with the other evidence, the Opponent’s ongoing, long-term commitment to distribute MOMA water in Australia is demonstrated. Even if these discussions were reinvigorated by the Applicant’s approach, then this would not necessarily mean use of the Trade Mark was not in good faith. It submits that the use does not cease to be genuine even if it only occurs after appreciation of vulnerability.

5. The High Court in Gallo found as follows:

   In Electrolux Ltd v Electrix Ltd [(1953) 71 RPC 23] a question arose of bona fide use within the meaning of s 26 of the Trade Marks Act 1938 (UK). It was held that bona fide use must be ordinary and genuine use judged by commercial standards. In Imperial Group Ltd v Philip Morris & Co Ltd [[1982] FSR 72], it was held that use of a trade mark for a purpose other than deriving profit and establishing goodwill is not use as required by the legislation. It has also been held that contriving use for the purpose of defeating a trade rival’s plans will lack the necessary quality of genuineness. However, a use does not cease to be genuine even if it only occurs after an appreciation that a registration was vulnerable to an attack on the grounds of non-use…[24]

   [24] Gallo (n 9)  144.

6. While the Applicant’s approach to the Opponent in March 2020 appears to have been the catalyst for its accelerated activity in this regard, the consistent evidence of ongoing plans and discussions (since 2016) between Huei and Refael to sell MOMA water in Australia persuades me the use was in good faith. The acceleration of these plans does not detract from their genuineness. Even if I accept that the Opponent’s use of the Trade Mark in the relevant period was partially motivated by its desire to protect its Australian registration, this in itself, does not establish a lack of good faith.[25] I further observe that the evidence indicates the failure of the Opponent’s and Applicant’s discussions concerning a potential consent agreement appears to be largely due to significant language difficulties and misunderstandings, not because the Opponent’s representative was not engaging in good faith.[26]

   [25] Ibid.

   [26] See for example the email communications between the parties’ representatives of 13 July 2020 (EM-3).

7. Having carefully considered the Applicant’s and Opponent’s evidence and submissions, on balance, I am satisfied that the Opponent’s identified use of the Trade Mark on its bottled water in its discussions with its Australian customer in the relevant period, was in good faith for the purposes of s 100(3)(a).

8. It follows that I am satisfied the Opponent has discharged its obligation to rebut the allegation made by the Applicant under s 92(4)(b) in relation to ‘Beverages, namely drinking water and table water’ in class 32.

9. I am not satisfied the Opponent has discharged its obligation to rebut the allegation made by the Applicant under s 92(4)(b) in relation to its other Goods in class 30 or class 32 (‘the Remaining Goods’). There is no evidence or claim that the Trade Mark has been relevantly assigned for the purposes of s 100(3)(b) nor of any circumstances that were an obstacle to its use under s 100(3)(c). I am satisfied therefore that the grounds on which the application was made have been established in respect of the Remaining Goods.[27]

   [27] s 101(1).

   Registrar's discretion

10. Even where grounds for removal have been established, s 101(3) of the Act provides that, if the Registrar or the court is ‘satisfied that it is reasonable to do so’, it may decide the trade mark should not be removed from the Register. The Opponent bears ‘the burden of persuasion’[28] on this issue however it does not need to establish ‘exceptional circumstances’ before the discretion can be exercised in its favour.[29]

    [28] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380 [273].

    [29] Gallo (n 9) [193]-[213].

11. Having regard to the (non-exhaustive) factors applied by Flick J in Gallo,[30] in the circumstances of this opposition, there is insufficient evidence to make any findings regarding the Applicant’s knowledge when it entered the market. In relation to the other factors, while it cannot be positively stated that the Trade Mark has been abandoned in relation to the Remaining Goods, there is no evidence of any sales or reputation in them.

    [30] Ibid [202] as listed by Falconer J in Hermes.

12. In relation to the further similar factors considered in Austin, Nichols & Co Inc v Lodestar Anstalt, [31]  while there is evidence of the Opponent’s reputation in the Trade Mark in Malaysia for drinking water, there is none for the Remaining Goods. There is no evidence of use of the Trade Mark for those other goods nor is any intention to expand use of the Trade Mark to such goods suggested or claimed. The period of non-use is greater than the relevant period. In relation to market confusion, the Opponent submits that there is a ‘significant possibility’ of consumer confusion if another trader uses the MOMA mark for goods similar to ‘beverages’ ‘drinking water’ and ‘table water.’ The evidence does not establish Trade Mark use for ‘beverages’ generally. In fact, the class 32 Goods specify ‘Beverages, namely drinking water etc..’ therefore effectively limiting the scope of ‘beverages.’ In the absence of further evidence, I am therefore unpersuaded that removing the registration of the Remaining Goods would give rise to any market confusion or public detriment, either in Australia or internationally.

    [31] (2012) 202 FCR 490; 287 ALR 221; [2012] FCAFC 8 [9]-[12].

13. As the Opponent also submits, I have had regard to s 101(4) of the Act, however there is no convincing evidence or claim that the Opponent has used the Trade Mark in respect of goods or services other than bottled water.

14. As noted above, it is the Opponent which bears the onus of satisfying the Registrar that the discretion under s 101 ought to be exercised. While acknowledging the broad discretion available under s 101(3), having carefully considered all the claims and material before me, the Opponent has failed to satisfy me that it is reasonable to exercise the discretion not to remove the Trade Mark in respect of the Remaining Goods.

    Decision

15. Section 101 of the Act relevantly provides:

    101 Determination of opposed application--general

    (1) Subject to subsection (3) and to section 102, if:

    (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

    (b) the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

16. The Opponent has rebutted the allegation of non-use only for ‘Beverages, namely drinking water; table water’ in class 32. It follows that the ground for removal in respect of the Remaining Goods has been established.

17. I direct that the Trade Mark be removed from the Register after one month from the date of this decision for all the Goods in Class 30.

18. I further direct that the Trade Mark be removed from the Register after one month from the date of this decision for the following Goods in class 32:

    flavoured non-alcoholic water; aerated and mineral waters; fruit drinks and fruit juices; soft drinks; energy drink; soft beverages; carbonated drink; non-carbonated drink, namely soft drinks and non-alcoholic frozen flavoured beverages; concentrated syrups and powders for making drink; lithia waters; seltzer water; isotonic beverages; soda beverages

19. If the Registrar is served with a notice of appeal on or before that time, the registration will not be amended or removed unless the appeal is withdrawn or discontinued. Otherwise, the registration will be subject to the decision of the Court.

    Costs

20. Both parties sought costs. Given that both parties have been partially successful, I make no orders in this regard.

    Mary-Ann Cooper
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    30 August 2022