Murray Carter v Liberty Procurement Co. Inc

TRADE MARKS ACT 1995

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

Re:Opposition by Murray Carter to application by Liberty Procurement Co. Inc to remove trade mark registration 958768 (24) Bed Bath & Beyond Logo in the name of Brands Limited

Delegate:	Michael Kirov
Representation:	Opponent: Relied on written submissions prepared by Anisimoff Legal Applicant: Michael Seifried of FB Rice
Decision:	2016 ATMO 83 Trade Marks Act 1995 s 92(4)(b) opposition: No relevant use or obstacles to use shown. No reason for exercise of Registrar’s discretion in Opponent’s favour. Trade Mark to be removed.

Background

Brands Limited (“the Registered Owner”), a New Zealand company, is the owner of trade mark registration 958768, relevant details of which are as follows:

Registration Number: 958768

Registered From: 20 June 2003

Goods: Class 24: Textile and textile goods, not included in other classes; bed and table covers

Trade Mark: (“the Trade Mark”)

On 21 May 2014 Liberty Procurement Co. Inc (“the Removal Applicant”) filed an application based on s 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Trade Mark from the Register for all of the goods it covers (“the Removal Goods”).
The allegation made is that the Trade Mark was not used in relation to any of the Removal Goods during the three year period ending on 21 April 2014 (“the Relevant Period”).
On or about 31 July 2014 Murray Carter (“the Opponent”) filed a Notice of Intention to Oppose removal, followed on 1 September 2014 by a Statement of Grounds and Particulars (“SGP”). I note that in addition to the Trade Mark itself, the SGP variously refers to other trade marks which are not defined in the document, namely “the slightly altered ‘BED BATH & BEYOND’ trade mark” (at [1]), “the slightly altered variation [of the Trade Mark]” (at [2]), “the BED BATH & BEYOND trade mark and logo” (at [3]), “the broader BED BATH & BEYOND trade mark” (at [5]), “the BED BATH & BEYOND trade mark” (at [6]) and “the brand” (at [7]).
That said, the SGP summarises the Opponent’s case as follows:
[1] The [Registered Owner] has, historically, made products available for sale under the [T]rade [M]ark, and also more broadly under the slightly altered “BED BATH & BEYOND” trade mark, that are contained within the [T]rade [M]ark’s class 24 goods specification.
[2] Importantly, in the [Relevant Period], the [Registered Owner] made products available bearing the [T]rade [M]ark (and the slightly altered variation) by virtue of an online store, which while based in New Zealand, was in a position to ship product to Australia on any request by an Australian consumer.
[3] It is imperative to note that, during the Relevant Period the [Registered Owner] has provided on-line retail, advertising and promotional services and continued to make products available for purchase by dispatching a regular newsletters [sic] bearing the [T]rade [M]ark and the BED BATH & BEYOND trade mark and logo, this newsletter having been sent to customers in Australia during the Relevant Period. Evidence can and will be provided of this use as required.
[4] In addition to the use outlined above, the [Registered Owner] has continued to develop plans for an Australia-focused online store, having engaged an external third party consultancy to lead this project. The proposed store will enable a significantly increased capacity to distribute the class 24 products branded with the [T]rade [M]ark, to Australian consumers. The project remains a priority for the [Registered Owner].
[5] The intention of the [Registered Owner] remains to continue to use the [T]rade [M]ark and the broader BED BATH & BEYOND trade mark in relation to the [Removal Goods] and in connection with on-line retail, advertising and promotional services and to grow the reputation in the mark by selling directly to Australian consumers through an Australia-focused online store.
[6] To this end, the [Registered Owner] already owns/controls through a related company both the (registered 17 August 2012) and (registered 24 June 2014) internet domains which are intended to be used either as the landing page URL for the store after launch or otherwise to direct site traffic appropriately. Again, the [Registered Owner] intends to significantly expand the breadth of its sales of the class 24 products (and others) and its on-line retail, advertising and promotional services under the [T]rade [M]ark and also the BED BATH & BEYOND trade mark moving forward.
[7] The registration dates of the URLs (the first one referenced above in particular) during the Relevant Period indicate that the [Registered Owner] has continued to develop its future corporate plans for the brand during the Relevant Period while continuing to make products available for purchase in Australia under the brand.
The Removal Applicant filed a Notice of Intention to Defend on 30 September 2014.
The parties then filed their evidence, which is described in detail below.
I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 13 May 2016. The Opponent relied on written submissions prepared by its attorneys Anisimoff Legal, which were emailed to the Removal Applicant’s attorneys and me on 29 April 2016. Michael Seifried of FB Rice, Patent & Trade Mark Attorneys, appeared for the Removal Applicant via video link from Melbourne. Mr Seifried’s oral submissions were supplemented by written submissions emailed to the Opponent’s representatives and me on 6 May 2016.

The Law

Insofar as relevant to this matter, section 92(4) of the Act states that an application for removal of a trade mark from the register (“non-use application”):
(4) …may be made on either or both of the following grounds, and on no other grounds:
(a) …
(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.
Section 93(2) of the Act specifies that an application under s 92(4)(b) “may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.” This requirement is satisfied here since the Trade Mark was filed on 20 June 2003 and, as mentioned, the application for removal was filed on 21 May 2014.
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 Trade Mark, or the Trade Mark “with additions or alterations not substantially affecting its identity,” was used in good faith in relation to the Removal Goods 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.[1]
[1] 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 decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133], where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.

The Evidence

For their evidence, the parties rely on the following declarations:[2]

Evidence in Support

▪ Trevor Allan Brown made 23 December 2014, with Attachments TB-1 to TB-13 (“Brown 1”)

Evidence in Answer

▪ Rich McMahon made 1 May 2015, with Annexures RM1 to RM10 (“McMahon”)

[2] Made pursuant to the Oaths and Declarations Act 1957 (NZ) in the case of Mr Brown and pursuant to the laws of New Jersey, USA in the case of Mr McMahon. All conform to the requirements of the Act and reg. 21.6 of the Trade Mark Regulations 1995.

Evidence in Reply

▪ Trevor Allan Brown made 6 August 2015, with Attachments TB-1 to TB-5 (“Brown 2”)

It is convenient to begin with an overview of the evidence, bearing in mind, as Mr Seifried explained, that in a nutshell the Removal Applicant’s contentions are that:
1. There was no use at all in Australia during the Relevant Period of the Trade Mark as registered;
2. To the extent I found there was use of a similar mark, it was not use of the Trade Mark, but rather use of the mark “with additions or alterations” which substantially affected its identity (s 7(1) of the Act); and
3. Any such use was in any event not authorised use as defined in s 8 of the Act.

The Evidence in Support

Trevor Brown is “Chief Executive Officer of the Bed Bath & Beyond business” with “access to the documents of [the Registered Owner] and the wider Bed Bath and Beyond group of companies for the purposes of preparing [his declarations].” I note that in both Brown 1 and 2 he on occasion refers simply to “Bed Bath and Beyond” (or “Bed Bath & Beyond”), without definition, presumably as shorthand for this “wider group of companies” and/or some or all of the group’s relevant “business.”
Under the heading “Ownership of the Bed Bath and Beyond business” in Brown 1 he explains the relationship between the Opponent (Murray Carter), the Registered Owner (Brands Limited), various other New Zealand companies in the group and an apparently related Australian company named Sirica Pty Ltd, as follows:
5. Bed Bath & Beyond is a privately owned business based in New Zealand that was founded by [the Opponent] and Fred Bart in 1995.
6. Through their respective shareholding companies, [the Opponent] and Fred continue as majority shareholders and directors of the Bed Bath & Beyond group of companies that comprise this business. I am also a shareholder through my shareholding company and a director of relevant companies in the group.
7. [The Registered Owner] is a New Zealand company that was established in March 2005 and is the owner of the intellectual property used in the Bed Bath and Beyond business in New Zealand and Australia, including the Bed Bath and Beyond trade mark.[3]
8. [The Registered Owner] authorises and licenses other companies in the Bed Bath and Beyond group to use the trade mark[4] including Bed Bath and Beyond Limited, which is the main retail operating entity for the Bed Bath & Beyond business and operates our main bricks and mortar stores and our online store, and conducts related promotional activity.
9. I attach marked as TB-1 [reproduced below] a structure chart that shows the ownership structure of the Bed Bath & Beyond group business and the related licence arrangements between [The Registered Owner] and the group companies.
10. Fred Bart is based in Australia and [the Opponent] and I are based in New Zealand. Between us we have over 100 years’ experience in the Australian and New Zealand retail sectors and all play and [sic] active role in the business.
11. For a number of years the Bed Bath & Beyond business operated alongside the Shanton Apparel business, which is a leading women’s clothing retailer in New Zealand.
12. [The Opponent] was the initial CEO of the Bed Bath & Beyond business in New Zealand before bringing me into the business and appointing me as General Manager in 1996. This enabled [the Opponent] to concentrate on Shanton’s operations. I subsequently became CEO of the Bed Bath & Beyond group and also a shareholder in the business.
13. The Shanton business was sold in 2012 and our sole focus since this time has been the growth and development of the Bed Bath & Beyond business in the Australasian market.
14. Bed Bath & Beyond has grown into a very successful business and is New Zealand’s largest manchester specialist. It now has 52 retail stores in New Zealand. This bricks and mortar presence is complemented by our website In the first four paragraphs of Brown 1 Mr Brown defined and used the term “Bed Bath & Beyond Logo” to refer to the Trade Mark. I accordingly assume his reference here is to a different mark.

[4] Again, it is not possible to say what trade mark Mr Brown is referring to here.

Under the heading “History of the Bed Bath & Beyond brand” Mr Brown goes on to explain that at some (unspecified) time, the words “LINEN FOR LESS” contained within the Trade Mark (“the Tagline”) were no longer used. I note that apart from his references to the Trade Mark itself, (which are in principle clear because he earlier defined the term he uses), he also variously refers in the passages quoted below to the “Bed Bath & Beyond brand” (paragraphs 16 & 20), “the Bed Bath & Beyond name” (paragraph 19) and “the Bed Bath & Beyond trade mark” (paragraphs 17 & 18), which are nowhere defined or described in his declaration(s). It is accordingly unclear whether he is referring to a trade mark consisting of the unadorned words “Bed Bath & Beyond” only, and/or to a logo mark otherwise the same as the Trade Mark but with the Tagline excised, and/or possibly to a different logo incorporating the words “Bed Bath & Beyond” only.[5] In particular he says:

15. The Bed Bath & [B]eyond business began its life under the name Linen for Less selling seconds and overruns from a bedding manufacturer in Auckland.

16. In 1996 the Linen for Less business re-branded as Bed Bath & Beyond, although continued to make reference to the legacy business by incorporating [the Tagline] in relevant branding, including in the [Trade Mark].

17. The most prominent and distinctive feature of our business branding has however always been the Bed Bath & Beyond trade mark, and the [Tagline] is no longer used in the business (including in the [Trade Mark]).

18. There is however no doubt in my mind that in using the Bed Bath & Beyond trade mark as we currently do that we are using the [Trade Mark] with alterations not substantially affecting its identity.

19. The Bed Bath & Beyond name is the critical component and resonates strongly with our customers and as a standalone brand is entirely sensible and complete, once the traditional “Linen for Less” tagline is removed.

20. Indeed, another major consideration in the use of the [Tagline] in conjunction with the main Bed Bath & Beyond brand at the beginning was that it also made perfect sense as a clarifying statement, as a reference to the price competitiveness of the main brand. As it worked on both levels, it was retained as a sub-brand/tagline, but it never affected the identity of the main brand, Bed Bath & Beyond.

[5] Such as the “Line Logo” or the “Square Logo”, as I have defined them in paragraphs 20 and 24 below respectively.

As to the reason registration 958768 was originally filed, Mr Brown says:

22. We were involved in initial discussions concerning a transaction in Australia in 2003 and although the transaction did not proceed, we were alive to the importance of establishing a brand presence in Australia and future proofing the ownership of the Bed Bath & Beyond trade mark.

23. We filed a trade mark application in June 2003 for the [Trade Mark] (being the version of our logo we were then using in the business). The trade mark was filed in [the Opponent’s] name at that time but the legal ownership of the logo now vests with [the Registered Owner].

Mr Brown does not claim that there was any use of the Trade Mark (or of “the Bed Bath & Beyond trade mark” or “brand” or “message” or “logo” or “version of our logo”) in Australia following its registration, other than to refer to the business’ “online presence,” which he says “started to gain real momentum from 2012 onwards.” Regrettably Mr Brown uses opaque or non-specific terminology such as this, (and phrases such as “in its current form” or “since its establishment” of the website described below), without further clarification and it is difficult to infer when or whether any relevant use in the course of trade of the Trade Mark (or some unspecified “version” thereof) may have actually occurred in Australia. He does nevertheless say the following in Brown 1 under the heading “Our online trading”:

25. The website [“the NZ Website”] has been in operation in its current form since September 2012 and has been very successful in communicating the Bed Bath & Beyond brand and message to our customers. The website incorporates:

(a) photos and descriptions of our latest products and ranges;

(b) a copy of our latest catalogue;

(d) our online store, which has the capability to sell into Australia.

26. The form and content of our website has been largely unchanged since its establishment. I attach marked as TB-2 screen shots for a selection of pages from the website.

Attachment TB-2 consists of screenshots of six pages from the NZ Website featuring various products. Amongst these are sheets, blankets, duvets, mattress protectors and towels, being goods falling within the description of the Removal Goods.[6] The first of the six web pages is reproduced below:

[6] The other products shown would fall in Class 11 (electric blankets), 14 (clocks), 18 (bags for toiletries), 20 (cushions, pillows, bathroom and other furniture), 21 (bathroom accessories such as containers and brushes, jugs), 25 (clothing, sleepware, slippers, boots), 26 (buttons) and 28 (toys).

I will refer to the trade mark appearing in the top left hand corner of this screenshot, (reproduced again below for ease of reference), as “the Line Logo”. This mark (and no other relevant mark) appears on each of the six screenshots:

I observe in passing that the webpage reproduced above cautions that one must order before 15 or 16 December respectively to ensure pre-Christmas delivery in the North Island or South Island of New Zealand (followed by the words, “We cannot guarantee delivery for rural delivery or delivery to surrounding islands”), but that there is no mention of any cut-off date for Australian-based purchasers. Christmas of what year is not immediately apparent, but on the face of it this would most likely be Christmas 2014, some two days after Brown 1 was made. This is confirmed by enquiries via the website (“Wayback”),[7] discussed in more detail below.
[7] Also known as “the Wayback Machine”, this website is a digital archive of the World Wide Web and other information on the Internet created by the Internet Archive, a non-profit organization, based in San Francisco, California. It contains over 373 billion web pages saved at various time intervals and is searchable via the relevant URL of interest.
I observe too that the “shopping cart” at the top of each of the six website pages is followed by the text “NZ$0.00 (0 items)” and that there is no apparent way indicated that an Australian-based consumer might pay in Australian dollars. Nevertheless, one of the six pages (reproduced below) does indicate that the business is willing to ship goods to customers in Australia. For ease of reference, the relevant text on the webpage shown below is:
All prices are for shipping within New Zealand. Currently we only ship within New Zealand & Australia.
…
For customers requiring delivery to Australia or outer islands (Chatham Island, Stewart Island, [etc]) we reserve the right to add a surcharge to the freight cost. We will contact you prior to dispatch for your approval.
Delivery Method
Online orders are delivered using couriers and require a signature upon delivery so they can be tracked. We only deliver to residential or business addresses – PO Boxes are not accepted for security reasons…

Attachment TB-3 to Brown 1 is a screenshot of data from “Google^® Analytics” for the NZ Website for the period 21 October 2013 to 21 April 2014 (being the last 6 months of the Relevant Period) indicating that 1.87% of “all sessions” on the site during this six month period originated from computers in Australia.
Attachment TB-4 to Brown 1 is “a copy of extracts from our Facebook page that show the prominent use of the Bed Bath & Beyond brand.” I note that all but three of the extracted posts are by “Bed Bath & Beyond NZ”, the three others being by people based in New Zealand. The sole, possibly relevant trade mark shown on the ten Facebook^® pages extracted, which I will refer to as “the Square Logo”, is reproduced (as best I can) below:

Attachment TB-5 to Brown 1 consists of three “relevant Facebook analytics pages for a selection of months in the Relevant Period” from the site < Unlike with Attachment TB-6 described below, however, the footer showing the date of download of the three pages is not shown. No dates are otherwise shown on the three pages in question, with the Facebook^® site simply stating on each page that the analytics are for “the past 28 days.” The data indicate 1,712 Australian computer users were “reached,” 27 were “engaged” and 276 were “fans” “in the past 28 days.”
Attachment TB-6, which the footer indicates was downloaded from < on 16 December 2014, (some seven days before Brown 1 was declared and some eight months after the Relevant Period ended), is a page providing Facebook^® definitions for two of these terms:
“reached” signifies “the number of people who have seen your post”; and
“engaged” signifies “the number of unique people who’ve clicked, liked, commented on or shared your Page posts.”
(“fan” is not defined on the attached page.)
Attachment TB-7 to Brown 1 is a list of some 324 names and corresponding <.au> email addresses, which Mr Brown says is an “extract from our customer databases that shows the Australian consumers that joined our database in the Relevant Period.” Mr Brown goes on to say:
32. Our [email] newsletter is sent to all customers on our database and on average we send out approximately 100 [email] newsletters per year. I attach marked as TB-8 a selection of [email] newsletters sent to such customers (including the Australian customers) in the Relevant Period.
I note that the Trade Mark is not used on any of the seven attached email newsletters. The Line Logo is used on all seven and the Square Logo is also used on one page.
While Mr Brown does not say that any Australian consumer has ever made a purchase via the NZ Website, or explain the significance of the term “capacity” or when this capacity was achieved, he does conclude the “Our online trading” section by saying:
35. While based in New Zealand, our online store has the capacity to ship any product to Australia on request by an Australian customer.
Under the heading “Expansion of our Australian activities” Mr Brown continues in Brown 1 as follows:
36. The interaction and engagement we have enjoyed with Australian customers through [the NZ Website] led us to re-visit our e-commerce strategy for both New Zealand and Australia.
37. On or around August 2012, we started to investigate plans to commence a new online trading platform for New Zealand and Australia. As part of this, Sirica Pty Limited (an Australian company in our group) registered the domain name bedbathbeyond.com.au. I attach marked TB-9 confirmation of the registration of this domain name. Our intent was to launch the new online trading platform for New Zealand and Australia in 2012/2013 but we ended up delaying this while we worked through the sale of the Shanton business and related matters.
[Annexure TB-9 is a nine page report by Domain Tools, LLC, a company which “offers the most comprehensive searchable database of domain name registration and hosting data.” The report indicates the <bedbathbeyond.com.au> domain name was registered on 17 August 2012 by Sirica Pty Ltd, that as at 17 December 2014 no corresponding website had been hosted or “taken live” and that, “This domain name is not currently registered.”]
38. In early 2014 we started to re-engage with our e-commerce project and investigate the scope for improvement and expansion of our online offering. In the period between March 2014 and June 2014 we began to develop this further and engaged external consultants to work with us in relation to our e-commerce strategy.
39. I attach marked as TB-10 a copy of relevant correspondence and extracts of a presentation by our external consultants that articulates this e-commerce strategy for New Zealand and Australia.
I interpose to describe and comment on Annexure TB-10, which contains copies of the following five documents, the fourth and fifth of which have direct relevance to my decision in this matter given the Relevant Period ended on 21 April 2014:
(1) an email dated 12 March 2014 to Mr Brown from the Managing Director of an organisation named “Foundation Partners” with the subject “25 March.” No trade mark is mentioned and the only reference to a marketing strategy is in the initial paragraph, which states “Andrew has confirmed that he is available for the first set of meetings regarding the 2014 web site project.”
(2) an exchange of emails dated between 25 March and 9 April 2014 between Mr Brown and Andrew Faris of “Total Communications Ltd” (“Total”), a marketing firm, which have the subjects “the BB&B brand story” or “Content Marketing – now with link.” There is otherwise no apparent reference to any trade mark, nor to any relevant website, nor to any discernible “e-commerce strategy.”
(3) a 39 page document dated 21 March 2014 prepared by Total, with the title “BED BATH & BEYOND Interactive eCommerce Workshop.” The title aside, there is otherwise no mention of any trade mark containing these words (or at all). The sole mention of Australia is on page 12:
Mission – Provide NZ and AUS low to middle income households with broad choice and unbelievable value in household soft goods
(4) a 22 page document dated 8 May 2014 (that is, after the Relevant Date) prepared by Andrew Faris of Total, with the Line Logo and the title “eCommerce Strategic Vision” on its first page. Of the many references to past trading activity by the business, all are unambiguously references to trading in New Zealand only, such as:
1.2.1 With the dramatic increase in NZ shoppers going online for product information and comparison shopping, [the online store on the NZ Website] has been identified as a major opportunity for improvement.
2.0 Online shopping has now matured to where it is a major force in the retail market place worldwide, and New Zealand is no exception. …there exists a very exciting and timely opportunity for BB&B to leapfrog its competition both in store and online, by embracing the merger of the online world with its own chain of stores throughout New Zealand…

I note too that the following passages in this fourth document regarding future plans are highlighted with a marker pen, presumably by Mr Brown:

2.0 Mission – Provide NZ and AUS financially astute households with a trusted brand, exceptional service, broad choice, and unbeatable value in Manchester and homewares.
2.4.3 International - Further B2B opportunities have been identified throughout Australia and the Pacific Islands. This leverages the retail operation and targets all accommodation providers in these territories. BB&B has the purchasing expertise and supplier network it needs to bring compelling offers to this area and will be able [sic] to extend its eCommerce initiative to service these markets.

The fourth document ends with the heading “Next Steps” and then refers to “Stages One, Two and Three” (also referred to as the first, second and third “sprints”), being the items addressed in the final annexed document described below:

(5) a 31 page document dated 2 June 2014 prepared by Total entitled “JBIZ + BB&B OMNI-CHANNEL RETAIL.” No trade marks are shown or mentioned in the document, which commences with:
1.0 BB&B agrees in broad terms [with] the principles outlined in the Vision described in the document presented in May 2014 [that is, document (4) described above]. Underpinning the vision is the drive to a new paradigm in customer engagement which emphasises experience over product, together with a new definition of how BB&B sees itself in the market place.
The next step is to outline a road map to achieve the described vision. This document is a specific proposal to deliver “stage one” within a certain timeframe, and it describes the follow-on stages.
Stage One is to implement an existing JBiz Enterprise eStore “Community Template” as a fast start, and to integrate this with the existing [NZ Website]. The integration is deliberately designed to be “loosely coupled” so that each system can operate independently from the other, and also so that either system could be replaced with minimum disruption to the other.
The Enterprise eStore is a highly sophisticated and stable core platform which delivers the aforementioned fast start and sets the tone for the business going forward. It is based on many years of experience in operating some of the most successful eStores in New Zealand and Australia and therefore BB&B is offered the opportunity to benefit from the experiences and successes of other companies.
…
1.5 There is no point in reinventing the wheel when there is an existing highly successful Community template which fits the vision and will enable a fast start for BB&B. Elapsed time to complete this phase to being fully operational is 10-12 weeks.

“STAGE TWO (2^nd SPRINT)” is then described as follows:
2.0 The second sprint is made up of those elements which fully merge the online experience with the in-store experience, whereby the local store owns the local online customer. … Once this sprint is completed then BB&B has achieved most aspects of the Happy Hybrid as described in the workshop.

“STAGE THREE (3^rd SPRINT) - AUSTRALIA HERE WE COME” is then described:
3.0 The third sprint consists of extending the eStore to service the Australian market. This would of course necessitate a warehousing 3PL service to be set up in that territory however the technology to service that territory is within the JBiz Enterprise eStore and just needs to be turned on.
The Australian BB&B eStore would be managed from the same administration system, based on the same instance of the eCommerce engine, and include Australian pricing. In this instance the site would have a single landing page and have all the elements and functionality of the NZ site.

Finally, document (5) goes on to outline stages four and five (the 4^th and 5^th “sprints”). The fourth sprint concerns optimising the proposed e-Store for use by smart phones and tablets. Relevantly, the fifth sprint “is to create another site which operates online only.” This is consistent with my understanding of document (5) as a whole, namely that it is proposing an e-Commerce website which would be fully integrated with the business’ current “bricks and mortar stores.” In this regard I note that all of the business’ 52 retail stores were in New Zealand at the times Brown 1 and 2 were declared.

For the sake of completeness I set out below the concluding paragraphs of Brown 1, noting however that Mr Brown refers either to activity after the Relevant Date (in the case of the domain name registration) or to activity which was not pursued (in the case of “the most recent example of bricks and mortar expansion in Australia”):
40. In June 2014, Sirica also registered the domain name bedbathandbeyond.com.au (see attached marked TB-11) at which point the earlier domain name registration for bedbathbeyond.com.au was allowed to lapse.
41. Over the years Fred Bart has also investigated the possible purchase of retail chains in Australia which would have provided the platform for a bricks and mortar presence for Bed Bath & Beyond in Australia. Fred’s presence in Australia has also increased awareness of the Bed Bath & Beyond business there.
42. The most recent example of potential bricks and mortar expansion in Australia for Bed Bath & Beyond concerned the possible acquisition of Robins Kitchen business after it went into voluntary administration in December 2013. I attach marked as TB-12 an example of e-mail correspondence between Fred Bart and myself discussing Robins Kitchen as a possible opportunity for acquisition and integration with the Bed Bath & Beyond business.
43. I also attach marked as TB-13 an extract of an Australian newspaper article from February 2014 which highlights Fred’s involvement with this opportunity (and his links to the Bed Bath and Beyond business) and e-mail correspondence between Fred and the Robin’s Kitchen business concerning a product opportunity for the Bed Bath & Beyond business.
44. Although the opportunity for the acquisition of Robin’s Kitchen did not ultimately crystallise, this recent activity shows our real and tangible interest in continued growth in Australia.
45. The expansion of our business interests into Australia has been incremental but has gathered momentum in recent years. This is typical of many New Zealand businesses that expand into Australia given the close connection between our countries and markets.
46. We are on the cusp of further development in Australia through the implementation of our e-commerce strategy and our ownership of the [Trade Mark] in Australia is an important part of this.
47. For the reasons stated in this declaration I consider the [Trade Mark] should remain on the register, and the Registrar should exercise its discretion to ensure it does so.

The Evidence in Answer

Rich McMahon is “the Chief Strategy Officer and Vice President, Corporate Operations” of Bed Bath & Beyond Inc (“BBB”), a public corporation in the United States, for which he has worked since August 1998. He is also “Chairman/Vice Chairman” and President respectively of BBB’s sister companies in Mexico and Canada. BBB is the parent company and sole shareholder of the Removal Applicant.
As he explains:
8. BBB operates a chain of domestic merchandise retail stores across the United States including Puerto Rico, Mexico, and Canada. In addition, BBB sells through distributors and via its website located at into other countries, including Australia.
9. BBB features mostly medium price-ranged and quality, but also a selection of higher-priced and high-quality domestic merchandise, including homeware items for bedrooms, bathrooms, kitchens and dining rooms.
Mr McMahon provides figures on a confidential basis for BBB’s worldwide revenue, which I note are in the order of several billion U.S. dollars, and for sales to Australian based consumers through its website from November 2014 to April 2015. He mentions too that the Removal Applicant is the owner of accepted Australian trade mark application 1624537 BED BATH & BEYOND covering retail store, mail order and computer on-line retail services in Class 35, which is currently being opposed by the Registered Owner.
Mr McMahon goes on to question in some detail various of the matters raised in Brown 1, including the licensing arrangements described by Mr Brown, the importance of the Tagline to the identity of the Trade Mark and, in particular, whether or not use of the Line Logo on the NZ Website constituted use of the Trade Mark in Australia during the Relevant Period. Most significantly, he makes the observations noted below concerning the NZ Website generally.
Annexing extracts from the NZ Website (presumably downloaded shortly before McMahon was declared on 1 May 2015), he points out that the site clearly indicates “gift vouchers can be purchased online, but redeemed only in store in New Zealand,” with the “store locator” facility on the site indicating there are stores in New Zealand only. As I have already noted, moreover, there appears to be no way for a purchaser to pay for goods other than in New Zealand dollars.
I have also already noted that many of the statements in Brown 1 are unclear or non-specific. Mr McMahon makes an effort forensically to examine some of those statements using Wayback:
29. Paragraph 25(d) of the Brown Declaration asserts that the “online store” has the “capability to sell into Australia”. Read in conjunction with paragraph 26 of the Brown Declaration, (which states that the “content of our website has been largely unchanged since establishment”), the clear implication is that [the Registered Owner] (or its predecessor) has had the capability to sell into Australia since the website was established.
30. In relation to paragraph 29 above, I have caused to be searched and recorded, various snapshots of the [NZ Website] at different times using [Wayback].
31. One snapshot shows that as at 2 January 2014, before the present non-use removal application was filed by Liberty, the relevant webpage in relation to “Shipping Information” sets out clearly that “[The Registered Owner’s business does] not ship to Australia”. Annexed hereto and marked RM5 is a copy of a snapshot taken from [Wayback] as at 2 January 2014.
[The relevant text on the annexed screenshot reads, “All prices are for shipping within New Zealand. Currently we only ship within New Zealand”.]
32. In addition as at 2 January 2014, the shipping information does not contain the words “to Australia”. Annexed hereto and marked RM6 is a copy of a snapshot taken from [Wayback] as at 2 January 2014.
33. A further snapshot taken as at 16 May 2014 contains the same information as set out in paragraphs 31 and 32 above.
34. However, snapshots of the [NZ Website] taken on 12 November 2014 (after the non-use removal application was filed by Liberty), shows that the shipping details had been amended to include, for the first time, “Australia”. Annexed hereto and marked RM7 is a copy of the archived webpage recorded as at 12 November 2014 and a document drawing a comparison of the archived webpages from 2 January 2014 and 12 November 2014.
[The relevant text on the annexed screenshot reads, “All prices are for shipping within New Zealand. Currently we only ship within New Zealand & Australia”.]
35. By reason of the matters set out in paragraphs 29 to 34 above, I consider the statements in paragraphs 25(d) and 26 of the Brown Declaration to the effect that [the NZ Website] has remained “largely unchanged” are incorrect and misleading. The website has changed in a very significant way as far as issues in relation to Liberty’s non-use removal application are concerned. In particular, the claimed “capability” in paragraph 25(d) to sell into Australia is a “capability” that was very likely added after Liberty’s non-use removal application was filed.
Paragraphs 27 to 34 of Brown 1 had annexed several documents said to demonstrate relevant use of the Trade Mark on the Internet,[8] with Mr Brown concluding at paragraph 35 with the statement that, “our online store has the capacity to ship any product to Australia on request by an Australian customer.”
[8] Annexures TB-2 to TB-8, which I described at paragraphs 19 to 28 above.
Referring to these annexures and to Mr Brown’s conclusion, Mr McMahon goes on to point out that the use of “the Bed Bath & Beyond Brand (as described)” is not use of the Trade Mark as registered and that “the references to ‘customers’ and the interaction with them is not supported by evidence of a single sale to an Australian ‘customer’.” He adds:
37. In relation to the reference in paragraph 35 of [Brown 1] of the “capacity to ship to Australia”, I repeat the matters set out in paragraphs 29 to 35 above and note that the “capacity to ship any product to Australia on request by an Australian customer”, appears only to have been possible in late 2014, and after the date the application for removal for non-use was filed by Liberty.
As I noted earlier, Brown 1 itself confirms that the Registered Owner’s initial registration for an Australian domain name in August 2012 (bedbathbeyond.com.au) was allowed to lapse without ever having being used, while its second registration (bedbathandbeyond.com.au) was obtained in June 2014, being after the Relevant Date. Mr McMahon adds that as at 24 April 2015[9] the <bedbathandbeyond.com.au> URL automatically redirects to the NZ Website.
[9] Being the date Mr McMahon accessed the website < a site dedicated to tracking the redirection path of URLs, to ascertain this information.

Referring to the statements at paragraphs 43 to 45 of Brown 1 (reproduced at paragraph 32 above), Mr McMahon says:
42. In answer to paragraph 43 (and Annexure TB-13) of [Brown 1], I note that there is only one reference to “Bed Bath & Beyond” in the newspaper article and that this use is merely a descriptive use of those words and not, in any sense, a trade mark use of those words.
43. In relation to paragraph 45 of [Brown 1], I consider that there has not been any relevant, incremental or appreciable expansion of [the Registered Owner’s] business interests in Australia, and to the extent that [the Registered Owner] asserts that there has been any, it has not included any trade mark use of the [Trade Mark] or the BED BATH & BEYOND mark, or any other similar mark.
Mr McMahon concludes his declaration by noting that the Australia-New Zealand Closer Economic Relations Trade Agreement, “a comprehensive bilateral free trade agreement” as he characterizes it, came into effect from 1 July 1990. Accordingly, he:
45. …consider[s] that there is no basis upon which [the Registered Owner] could claim that its delay in entering the Australian market was because of difficulties or obstacles affecting the trade, or for any circumstances beyond its control. Any delay in entering the Australian market was only because of matters directly connected with, or related to, [the Registered Owner] (or its predecessor in title).
Moreover, Mr McMahon says, neither should the Registrar’s discretion to retain registration 958768 be exercised in the Opponent’s favour, “for all the reasons set out in this [declaration] including but not limited to” the following:
(a) there has been no trade mark use by [the Registered Owner] (or a predecessor in title), either of [the Trade Mark] or of a BED BATH & BEYOND mark, or any similar mark;
(b) [The Registered Owner] (or its predecessor in title) has had the mark registered since June 2003 and has not provided evidence of a single sale to a consumer located in Australia;
(c) all of the matters set out in [Brown 1] can, at best, be characterised as use preparatory to trade mark use, but which preparatory use has not been followed through with any sales to consumers located in Australia;
(d) according to the pages captured by [Wayback], [the Registered Owner] amended its New Zealand website on or after the time the non-use removal application was filed by Liberty to make shipments to Australia appear possible;
(e) Liberty would be severely disadvantaged if the Registrar found that [the Registered Owner] had rights in relation to a mark which it has not used in Australia, particular[ly] in view of Liberty’s present use of its trade mark in Australia and its present trade mark application [1624537] (which [the Registered Owner] has opposed).

The Evidence in Reply

Most of Brown 2 is taken up with matters that do not bear on my ultimate decision, namely (1) responding to the questions raised by Mr McMahon regarding “authorized use” of the Trade Mark and (2) criticisms of the Removal Applicant’s own website. I do not believe the second of these issues has any relevance to the removal application at hand and I do not address it further in this decision. As to the issue of authorized use, in the absence of evidence to the contrary I accept Mr Brown’s statement that:
12. The fact the majority ownership of the companies is ultimately held by Fred [Bart] and [the Opponent] has also meant that no formal written licence agreement has been put in place between [the Registered Owner] and the subsidiary companies for Australia. The absence of a formal written licence agreement is not however unusual for a closely held company group of this nature. This is not to say that these companies do not have a licence or right to use the Bed Bath & Beyond trade mark[10] (and it is readily apparent from their historical and ongoing use of the trade mark that such a licence exists).
[10] Again, earlier in Brown 2 Mr Brown defined the Trade Mark as “[the] Bed Bath & Beyond Logo.” I accordingly infer he is here referring to some other mark containing or consisting of the words “Bed Bath & Beyond.”
More significantly as far as my decision is concerned is what Mr Brown has to say regarding actual use of any relevant trade mark in Australia. This he does under the heading “Capability to Sell into Australia” as follows:
13. Mr McMahon seems to be particularly focused in his statutory [sic] declaration (including in paragraphs 29-37) on our capability to sell into Australia.
14. The critical point is set out in paragraph 35 of [Brown 1] where I made the statement that our online store has the capacity to ship any product into Australia on request by an Australian consumer.
15. In the Relevant Period (i.e. 21 April 2011 to 21 April 2014), our website did not make explicit reference to Australia or the ability to ship product to Australia. I do not dispute that. However, my previous declaration also makes it clear that we did have ongoing engagement with various customers in Australia by virtue of our customer database and the newsletters we sent to such customers during the Relevant Period.
16. What I intended by the statements “capability to sell into Australia” and “capacity to sell into Australia”, was that, if requested, we would of course ship any product to Australia. Like any business, we are keen to make sales of product, regardless of the location of the customer. Yes, during the Relevant Period, our website may have said “we currently only ship within New Zealand” but that’s not the same as saying “we don’t ship to Australia” or “would never ship to Australia.” We never said that.
17. To this end, I attach marked as TB-1 details of a purchase and shipment of a product made to an Australian customer in the Relevant Period (on 10 June 2013) that we have recently located. Also included in TB-1 are details of a shipment to a customer in Australia after the Relevant Period but before the date of the application for removal was filed by Liberty on 21 May 2014.
[As far as the Relevant Period is concerned, Attachment TB-1 consists of a consignment note from a business named “International Economy Courier” and a receipt for NZ$25.27 issued by “New Zealand Post”, both dated 10 June 2013. The one item apparently couriered on that date to an Australian based purchaser is described on the consignment note as “clothing”, the value of which is indicated to be “NZ$25”. I note in passing that the name of the purchaser does not appear on the list of “Australian customers in [the Registered Owner’s] database in the Relevant Period” included as Attachment TB-7 to Brown 1. As Mr Seifried also noted in his submissions, no trade marks are shown on the documentation.]
18. This shows clear evidence of our capability to ship to Australia both in the Relevant Period and before we had any notice of Liberty’s application for removal.
19. The steps that we took to update our website were also a continuation of the ecommerce strategy for New Zealand and Australia as outlined in my previous declaration. This was not a new idea or knee-jerk reaction and was something that we had already been considering in the Relevant Period.
20. Our engagement with Australian consumers has continued and resulted in additional sales activity since the Relevant Period. I attach marked as TB-2 details of the sales to customers in Australia that have been made after the Relevant Period including email confirmation of orders and consignment notes. I also note that one of the sales (from 23 March 2015) was to Ms Margaret Allbut, who is one of the Australian customers in our database in the Relevant Period (see exhibit TB-7 of [Brown 1]).
Having described the parties’ evidence in some detail, I believe the merits of the removal application may now be quickly determined.

Discussion

Actual use

Despite what I would characterize as the opaque and tortuous nature of the Opponent’s evidence in Brown 1, my conclusion based on that evidence alone was that no actual sale of any of the Removal Goods was made in Australia during the Relevant Period, whether under the Trade Mark itself or under any similar mark.
Were there any doubt, that conclusion was effectively confirmed by Mr McMahon’s evidence in answer and by Mr Brown’s response in Brown 2. In particular, the only possibly relevant sale prior to 21 April 2014 claimed in Brown 2 was “a purchase and shipment of a product made to an Australian customer in the Relevant Period (on 10 June 2013) that we have recently located.” This transaction did not however involve any of the Removal Goods and there is no evidence before me that the single item of clothing it did involve bore the Trade Mark, or any similar mark. I would add in passing that, as Mr Seifried pointed out, there is likewise no evidence that the claimed sale was made via, or as a result of “engagement” with (to use Mr Brown’s terminology), the NZ Website.
As regards the NZ Website itself, as already indicated the Trade Mark as registered is not used on the site, nor is this claimed in Brown 1 or 2. What is used on the website is the Line Logo and, Mr Brown’s opinion to the contrary notwithstanding, in my view the Line Logo, to paraphrase s 100(3)(a), undoubtedly contains additions or alterations which substantially affect the identity of the Trade Mark. In this regard I cannot agree with the Opponent’s submission that, in making such an assessment:
5. …a two-stage analysis should be applied where, firstly, the points of difference between the mark as used and the mark as registered are identified and, second, once differences have been identified, it must be ascertained if the differences alter the distinctive character of the mark as registered.
To this end, the only difference to be identified is the addition of “Linen for Less”. However, this difference does not alter the distinctive character of the mark as registered.
In this regard I do not believe the phraseology used in s 100(3)(a) contemplates a different test from that which is routinely used when assessing whether marks are “substantially identical” for the purposes of, inter alia, ss 44 or 58 of the Act.[11] The accepted criteria for assessing substantial identity are generally found in the well known words of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd:[12]
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[11] Or for that matter that it contemplates a different test from what is indicated by s 7(1) or ss 65(2) and 83(1)(a) (which deal with amendments). See AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41; (2009) 82 IPR 356 at [10]-[21] and the cases cited therein for a fuller consideration of this point. See also Link Recruitment Pty Ltd v Employment and Training Inc [2006] ATMO 39; (2006) 69 IPR 614 at [21]-[22].
[12] (1963) 1B IPR 523 at 528.
The Trade Mark and the Line Logo are set out side by side below:

Obviously the Line Logo contains one of the “essential features” of the Trade Mark, being the words “bed bath & beyond.” However equally obviously it does not contain what I would also characterize as two of the Trade Mark’s other essential features, being the Tagline (which might indeed arguably be registrable in its own right), or the “textile-like” nature of the background employed in the Trade Mark (which to my mind gives the mark overall the look of an actual label which might be attached to, or sewn into, the relevant goods. While I do accept that the different fonts and capitalization used are not of great relevance to the issue and that the colour difference has no relevance at all (given registration 958768 is not limited to any specific colour or colours), I nevertheless have no hesitation in concluding that the marks as wholes are not substantially identical. That is to say, the Line Logo does in my view contain “alterations” which substantially affect the identity of the Trade Mark as registered, whether or not those alterations also “alter the distinctive character of the mark as registered” as submitted by the Opponent.
Even were I to have concluded the two marks are substantially identical, I am not in any event satisfied that use of the Line Logo on the NZ Website qualifies as use in Australia during the Relevant Period. In this regard, as both parties’ submissions noted, Merkel J said in the leading case of Ward Group Pty Limited v Brodie & Stone plc[13] concerning use via the Internet:
…the use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.
[13] (2005) 64 IPR 1 at [43]. The case concerned possible infringing use of a trade mark via the Internet, but appears to be just as relevant as far as assessing use for the purposes of s 92(4)(b) is concerned.
Notwithstanding the Opponent’s submissions to the contrary, I agree with Mr Seifried’s submission that there is no evidence before me that the NZ Website was specifically directed or targeted at Australian consumers during the Relevant Period. Indeed the opposite is indicated. To the extent that the website, like all websites, was accessible by Australian based consumers, this was incidental to the fact that it was accessible by, to use Merkel J’s phrase, “the world at large.”[14]
[14] His Honour uses this phrase at [6], [32], [37], [40], [41] and [52].
Again, were there any doubt in this regard Mr Brown has dispelled this to my satisfaction by what he says at paragraphs 15 and 16 of Brown 2, (reproduced in full at paragraph 45 above). In particular he says:
15. In the Relevant Period (i.e. 21 April 2011 to 21 April 2014), our website did not make explicit reference to Australia or the ability to ship product to Australia. I do not dispute that. …
16. …Yes, during the Relevant Period, our website may have said “we currently only ship within New Zealand” but that’s not the same as saying “we don’t ship to Australia” or “would never ship to Australia.” We never said that.
Unlike Mr Brown, I am unable to parse any wider meaning or implication from the apparently unambiguous statement on the NZ Website during the Relevant Period that “we currently only ship within New Zealand.” Comments, “likes” or other forms of similar “engagement” with the Registered Owner by Australian based computer users via the Internet do not alter this in my view and, contrary to the Opponent’s submissions in this regard, do not on the face of it constitute use of the Trade Mark (or any similar mark) in the course of trade in Australia in relation to the Removal Goods.

Preparations for Use

Preparations in good faith for future use of a trade mark may in principle qualify as “use” for the purposes of the Act, provided it is shown the preparations are well advanced and the trader concerned can be seen objectively to be committed to using its trade mark.[15] While the Opponent’s submissions only touch on this issue briefly, I would just add that I am not satisfied from the evidence that the Registered Owner’s preparations for entry into the Australian market were well advanced during the Relevant Period. I agree with Mr Seifried that what he described as “a relative flurry of activity” by the owner may have occurred after the non-use application was filed, but this falls short of what I would need to see. Registration 958768 dates from as long ago as 2003 and the Registered Owner has accordingly had many years to commence actual use of the Trade Mark. Moreover, of course, Mr Brown has indicated that the intention now is not to use the Trade Mark as registered in any event, but rather to use the Line Logo in its place.
[15] See for example Woolly Bull Enterprises Ltd and Anor v Reynolds (2001) 51 IPR 149 and Buying Systems (Australia) Pty Limited v Studio Srl (1995) 30 IPR 517.

Obstacles to Use

For the sake of completeness I note the Opponent has not provided evidence of any particular circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for any of the Removal Goods. I accordingly find no case under s 100(3)(c) of the Act has been established.

The Registrar’s Discretion

I have found that the ground raised pursuant to s 92(4)(b) has been established. In such circumstances s 101(1) gives the Registrar the discretion to remove the Trade Mark “in respect of any or all of the [Removal Goods]”, whilst s 101(3) explicitly provides that discretion may be exercised in the Opponent’s favour if the Registrar is satisfied it is reasonable to do so.
As Bennett J explained in Pioneer Computers Australia Pty Ltd v Pioneer KK:[16]
The discretion under s 101(3) 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 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.
In Kowa Co Ltd at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
In E & J Gallo at [202]–[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
• there had been no abandonment of the trade mark;
• the registered proprietors of the mark still had a residual reputation in the mark;
• there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
• the applicants for removal had entered the market without having taken steps to ascertain from the register whether anyone had a right to exclude their use of the mark;
• the registered proprietors were not aware of the applicant’s sales under the mark.
[16] (2009) 80 IPR 38 at [167]-[169].
While it need not show “exceptional circumstances” exist, an opponent must still satisfy the tribunal that it is reasonable that the Registrar’s discretion be invoked in its favour. As Yates J put it in Optical 88 Limited v Optical 88 Pty Limited (No. 2):[17]
However, as s 101(3) makes clear, the court (or the registrar, as the case might be) may only decide that the trade mark should not be removed from the register “if satisfied that it is reasonable to do so”. This requires, in my view, the court (or the registrar) to be positively satisfied of that condition. In my view it is the opponent for removal who bears the burden of persuasion on that issue.
[17] (2010) 89 IPR 457 at [273].
In the present matter the Opponent has not satisfied me that any facts or circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in its favour. Further and by its own admission in Brown 1 at [17], “the [Tagline] is no longer used in the business (including in the [Trade Mark]).” That is, the Trade Mark as registered was on the face of it abandoned at some point in any event. I am not satisfied on the evidence before me that the Trade Mark was used in Australia in relation to the Removal Goods, whether before, during or after the Relevant Period and the Opponent accordingly does not appear to be in a position to claim the mark as registered has garnered any significant reputation in Australia. In summary, this is not a case which I believe warrants exercise of the Registrar’s discretion in the Opponent’s favour pursuant to s 101(3) and I decline to do so.

Decision

The Opponent has not satisfied me that it used the Trade Mark in the course of trade for the Removal Goods during the Relevant Period, nor that there were any circumstances which were an obstacle to use. Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion not to remove the Trade Mark in respect of all of the Removal Goods. I accordingly direct that registration 958768 be removed from the Register one month from the date of this decision. If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

In the event that the opposition was unsuccessful Mr Seifried sought an award of costs on the Removal Applicant’s behalf. In the circumstances the Removal Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade MarksRegulations 1995.

Michael Kirov

Hearing Officer
Trade Marks Hearings
14 October 2016

[2016] ATMO 83

14 October 2016

Key Legal Topics

Areas of Law

Civil Procedure

Commercial Law

Legal Concepts

Abuse of Process

Res Judicata

Jurisdiction

Stay of Proceedings