Nature's Remedy Australia Pty Ltd v Nature's Remedy Pty Ltd

[1999] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Nature's Remedy Australia Pty Ltd to an application by Nature's Remedy Pty Ltd to remove trade mark registration number 1890

Background

The registered owner of trade mark registration number 1890 is Nature's Remedy Australia Pty Ltd (hereafter "the opponent").  The mark is shown below

 

The statement of goods, which has been amended since the mark was registered, now  reads:

"An ointment, cream, balm or salve including those containing flower extracts, or, an oral preparation for relieving stress or tension, for human use",

these goods being in class 5.  The mark has stood on the Register of Trade Marks since 3 September 1906.

On 22 April 1996, Nature's Remedy Pty Ltd ("the applicant") made an application, under paragraphs (a) and (b) of subsection 92(4) for removal of the registration for "all the goods for which the trade mark is registered excluding pain release (sic) cream for arthritis".  The application for removal was accompanied by two statutory declarations: by Les Dyne, a director of the applicant and by Glen Gillard, a natural therapist and a director of Gillard Health Company Pty Ltd.

The removal application was advertised for opposition in the Australian Official Journal of Trade Marks of 16 May 1996.  The registered owner opposed the removal, the grounds of the opposition being that the mark had been used within the period of 22 March 1993 to 22 March 1996.  Both parties filed evidence. 

The opposition was heard by me in Canberra on 9 February 1999.  Dr Kevin Pullen, a patent attorney, represented the applicant by telephone.  No appearance or written submissions were made on behalf of the opponent. 

Evidence

The following statutory declarations were served in evidence.

Stevan Pharaoh, the managing director of the opponent company, as

the evidence in support of the opposition;

Kevin Pullen, of Pizzeys, a patent attorney of Pizzeys, and

Leslie Septimus John Dyne, a director of the applicant company,

both declarations forming the evidence in answer; and

Stevan Pharaoh, the same declarant who filed the evidence in support,

filed a further declaration as the evidence in reply.

To all the above declarations, with the exception of the last-mentioned, are

annexed exhibits.

Submissions and discussion

As the opponent did not challenge the applicant's standing in the matter, or object to the removal application as not being according to the regulations, as required under subsections 92(1) and (2), it will be convenient to turn to consideration of the evidence and the applicant's submissions as they relate to the opponent's claim that the mark of this registration has, in fact, been used within the period as prescribed in paragraphs (a) and (b) of subsection 92(4), the period under the latter paragraph in the present case being from 22 March 1993 to 22 March 1996.   

Under the provisions of the Trade Marks Act 1995, the onus rests on the party opposing the removal of a mark to rebut the applicant's allegations as to non-use of the mark.  Those provisions are stated in the following terms:

Burden on opponent to establish use of trade mark etc.

100.(1)       In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a)   any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)        to use the trade mark in Australia; or

(ii)       to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the opposed application

relates (relevant goods and/or services); or

(b)any allegation made under paragraph 92(4)(a) that the trade mark has not,  

at any time before the period of one month ending on the day on which the
            opposed application was filed, been used, or been used in good faith, by its
            registered owner in relation to the relevant goods and/or services; or

(c)   any allegation made under paragraph 92(4)(b) that the trade mark has not,

at any time during the period of 3 years ending one month before the day    on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

1. For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods an/or services if:

(a) the opponent has established that the trade mark or the trade mark with

additions or alterations not substantially affecting its identity, was used in

good faith by its registered owner in relation to those goods or services
 before that period
….

1. For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a)   the opponent has established that the trade mark, or the trade mark with

additions or alterations not substantially affecting its identity, was used in
       good faith by its registered owner in relation to those goods or services
       during that period…  .

(c) the opponent has established that the trade mark was not used by its

registered owner in relation to those goods and/or services during that
 period because of circumstances (whether affecting traders generally or
 only the registered owner of the trade mark) that were an obstacle to the
 use of the trade mark during that period.

In outlining the history of use of the opponent's mark, in his declaration filed as the evidence in support, Mr Pharaoh says that his company has continuously used the mark since October 1988 in respect of cream or ointment that provides for the temporary relief of pain from arthritis, backache, headache, sciatica, sprains, sports injuries and R.S.I., adding that the cream or ointment is also effective in treating minor burns, insect stings and skin rashes.  In support of this use, Mr Pharaoh gives information on sales volume for every financial year beginning 1985 up to December 1996, and advertising expenditure amounts for almost the corresponding period.  Eight copies of sample invoices covering the period 22 March 1993 to 22 March 1996 are annexed to Mr Pharaoh's declaration concerning sales of "pain relief cream" or "first aid cream", all but two identifying the mark of the product as "NATURE'S REMEDY".  Two further exhibits show labels of the mark used earlier and "currently", while a page each from a catalogue and magazine serves as an illustration of the mark as it appears in advertising.  The latter corresponds to the mark represented in the second label.  Mr Pharaoh does not  specify when the opponent commenced using the altered label, simply saying that it is the label "currently applied to the goods".  The two labels are shown here:

 

Irrespective of the time when the opponent adopted the new mark for use, in comparing the marks of both labels with the mark under consideration, the essential element, the words NATURE'S REMEDY, are retained in all the three marks.  These words are featured in similar stylized lettering in the first label and the registered mark, whereas in the second label the words are rendered in plain type form.  The differences between the other elements in the marks' composition exist in the three flowers separating the words in the labels and the non-distinctive words "REG. U.S. PAT. OFFICE" in small type as well as a combination of more discernible letters and a word "NR-TABLETS-NR" inserted under the words NATURE'S REMEDY in the subject mark.  These additional features in each of the marks do not substantially alter the intrinsic nature of the marks.  The trade mark significance of the words NATURE'S REMEDY is emphasised by the inclusion of those words in ordinary type in both labels, the second label carrying the accepted abbreviation for a "trade mark".  It should also be recognized that a mark, which has been registered for over ninety years, is likely to undergo some minor alterations during such a long period of time, for the purpose of updating, modernising or adapting it to the changing market conditions.   

From the opponent's evidence, it appears that any use of the products under the above-identified labels, during the period considered, was in respect of "pain relief cream" or "first aid cream" only.  This has been conceded by the applicant, as was pointed out by Dr Pullen with reference to a declaration by Mr Les Dyne, which is annexed to Dr Pullen's declaration in the evidence in answer.  The declarant, Mr Glen Gillard, whose declaration is also exhibited by Dr Pullen, is aware of the opponent's pain relief cream, although no dates are stated.  If those marks have been used on other goods, then appropriate evidence of such use is lacking.

According to Mr Pharaoh's declaration, between February 1990 and June 1993, the opponent sold a product known as NATURE'S REMEDY anti-stress drops and NATURE'S REMEDY tension relieving drops.  The label applied to that product, in 1991, comprises words rendered in standard print letters.  Apparently, the format was changed in 1993, adopting the stylized form of the words and the flower device as depicted in the first label shown above.  In stating the approximate sales figures for the period from March to June 1993, Mr Pharaoh does not indicate whether the product was sold after 22 March 1993, nor has he provided any evidence as to the actual sales, for example, copies of invoices.  Having regard to these deficiencies in the opponent's evidence, no conclusion can be drawn as to use of the mark on the product in question.

Mr Pharaoh explains further that the product was temporarily removed from the market in June 1993 because of leakage problems around the dropper that formed part of the packaging.  Although the opponent's plans to reintroduce the product on the market are evidenced by some copies of correspondence concerning stability trials on the product, it seems that these plans had not been realized at the time of executing Mr Pharaoh's declaration in March 1997.   It has been submitted by Dr Pullen that the delays for placing the product back on the market fall within the circumstances that could be described as unfavourable economic conditions, lack of capital, or other self-induced delays.  I agree with his argument that such delays would not be consistent with the spirit of the circumstances contemplated under paragraph 100(3)(c) of the Act. 

Given the opponent's inability to provide clear and persuasive evidence as to use, during the relevant period, of the registered mark, or a mark which had substantially retained its identity following any changes, or to establish special circumstances that prevented it from using the mark, the opponent has failed to substantiate any claim that its mark has been used, within the meaning of paragraphs (a) or (b) of subsection 92(4), in relation to all the goods covered by the registration.  

Decision

Having regard to the foregoing, I find, in terms of paragraph 101(1)(b) of the Act, that the applicant has succeeded in the removal action to the extent that the mark in question should remain registered in respect of only one item.  However, as it is clear from the opponent's evidence that the pain relief cream can be used for afflictions other than arthritis, I do not think it is necessary to qualify the cream as being suitable only for relief from arthritic pain.  I will add here that, in his final comments, Dr Pullen conceded that the mark could be "at least limited to pain relief cream".  Consequently, I direct that, subject to any appeal, the trade mark of registration number 1890 be removed from the Register of Trade Marks for all the goods in respect of which it is registered with the exception of "pain relief cream for human use". 

The applicant sought costs.  Its application being partly successful, I have decided that each party should pay its own costs.  

Vija Zars

Hearing Officer

7 May 1999