Negro International Pty Ltd v Winstons Wine Pty Ltd
[2014] ATMO 102
•17 October 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Negro International Pty Ltd to an application under section 92 of the Act by Winston Wine Pty Ltd to remove trade mark number 706247(33) - WINSTONS - in the name of Negro International Pty Ltd
| Delegate: | Jock McDonagh |
| Representation: | Opponent: Mr Daniel Negro of the Opponent Applicant: Mr Christian Dimitriadis of counsel instructed by Shelston IP |
| Decision: | 2014 ATMO 102 Section 96 opposition to removal application - use established within relevant period only in relation to gin but no other Class 33 goods – registration to be partially removed. |
Background
This matter is a proceeding under the Trade Marks Act 1995 (‘the Act’) in which by an application filed on 5 October 2011, Winston Wine Pty Ltd (‘the Applicant’) has sought the removal from the Register of the trade mark appearing below in respect of all goods specified in Class 33 other than gin under the provisions of subsections 92(4)(a) and 92(4)(b) of the Act:
Registration No: 706247
Priority Date: 12 April 1996
Goods:Class: 33 Alcoholic beverages
Trade Mark: WINSTONS (‘the Trade Mark’)
The removal of the trade mark has been opposed by its owner, Negro International Pty Ltd (‘the Opponent’) as allowed by section 96 of the Act.
Also as allowed by the Act and regulations thereto, the Opponent has filed evidence in support of its opposition to the removal. The Applicant has filed evidence in answer. Opponent has filed evidence in reply. The evidence in answer and reply were not required to be served by the parties pursuant to the transitional provisions in the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) sch 7 item 4.
Both parties were informed of their right to be heard before me, a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 25 July 2014. On 15 July 2014, the Attorneys for the Opponent advised that the firm was no longer responsible for submissions or representing the Opponent at the hearing of this matter.
At the hearing, Christian Dimitriadis of Counsel, instructed by Shelston IP, appeared for the Applicant. The Opponent was represented by Daniel Negro, Assistant Manager of the Opponent.
The Law
Section 92 of the Act relevantly states:
92Application 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:
(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv)has not used the trade mark in Australia; or
(v)has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;;
(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.
Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s.92(4), which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz ) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.
As the application for removal was filed on 5 October 2011 the relevant period (‘the relevant period’) for the purposes of 92(4)(b) is the three years ending on 5 September 2011.
Finally, is section 101 of the Act, which deals, inter alia, with the Registrar’s discretion:
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.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:
[167] 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.
[168] In Kowa Company 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).
[…]
[171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.
[…]
[176] The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal (E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [4] per Flick J).
Evidence
The evidence in this matter is as shown below:
| 15. Declarant | Status | Date, Known as | Exhibits |
| Evidence in Support | |||
| Daniel Negro | Assistant Manager of Opponent | 18.07.12 “Negro 1” | DN-1 to DN-3 |
| Romilda Cutinelli | Office Manager Cardamone Supermarket | 22.10.12 “Cutinelli” | RC-1 and RC-2 |
| Daniel Negro | Assistant Manager of Opponent | 23.10.12 “Negro 2” | DN-4 to DN-8 |
| Evidence in Answer | |||
| Gerard James Skelly | Solicitor for Applicant | 18.07.13 “Skelly” | GJS-1 to GJS-39 |
| Craig Raymond Douglas | Investigator | 20.05.13 “Douglas” | CRD-1 to CRD-6 |
| Peter Harvey | Chartered Accountant | 22.07.13 “Harvey” | PH-1 |
| Francesca Gentilini | Manager Club Italia | 1.06.12 “Gentilini” | FG-1 and FG-2 |
| Morrie Fahd | Investigator | 10.07.13 ,“Fahd” | MF-1 to MF-3 |
| Norman John Currie | Investigator | 5.06.13, “Currie” | NC-1 to NC-3 |
| Evidence in Reply | |||
| Benito Negro | Director of Opponent | 20.01.14 “Benito 1” | |
| Damien Negro | General Manager of Opponent | 20.01.14 “Damian” | |
| Jim Paul Piperino | Manager Grand Cellars Brunswick | 21.01.14 “Piperino” | |
| Danny Giarratana | Sales representative Segafredo Coffee | 20.01.14 “Giarratana” | DG-1 |
| Benito Negro | Director of Opponent | 7.02.14 “Benito 2” | BSE |
| Daniel Negro | Assistant Manager of Opponent | 7.02.14 “Negro 3” |
Negro 1 and Negro 2 state that the Trade Mark was used in relation to wines during the relevant period and annexes alleged copy invoices and alleged sample wine labels.
Cutinelli states that her supermarket made payments to the Opponent that match the copy invoices that had been provided to her by the Opponent’s attorneys. She was unable to locate her supermarket’s copies of the invoices.
Douglas, Currie and Fahd are declarations made by investigators of an IP research company. Douglas and Currie relate conversations with members of the Opponent that suggest that the Trade Mark has only been used in relation to gin.
Currie also exhibits a price list dated August 2011 obtained from the Opponent, which does not include any wine under the Trade Mark but show product codes for TOSO vermouth that are identical to product codes appearing on the copy invoices exhibited by the Opponent. The price list does include WINSTONS LONDON DRY GIN.
Fahd deals with discussions with two customers of the Opponent, who were identified by copy invoices in Negro 1 Exhibit DN-1. Neither had ever ordered wine from the Opponent bearing the trade mark. One provided the declaration referred to in the following paragraph.
Gentilini is made by a customer of the Opponent and exhibits, at FG-2, a copy of an invoice from the Opponent that was rendered to the customer. That invoice (No. 33116 dated 18 May 2009) does not show any wine under the Trade Mark, unlike the copy provided in Negro 1, Exhibit DN-1. The invoice in Gentilini shows as the first item product code 80005 TOSO Extra Dry Vermouth. The corresponding item in DN-1 shows 80005 WINSTONS C/S SANGIOVESE.
Harvey is made by a chartered accountant who highlights anomalies and irregularities in the copy invoices exhibited by the Opponent, particularly when compared to the Opponent’s price list. It also points out that the product codes used to indicate wine sales on the Opponent’s copy invoices for the purported wine products appear to be 80003, 8004 and 80005 (though there was some inconsistency in application of those codes to particular purported wine products) It notes that those odes fall in between the product code range 80001 to 800032, which are codes used for TOSO products sold by the Opponent. He stated that in his opinion it was unlikely that product code ranges would be interrupted in such a manner.
Skelly addresses the tax treatment of wine and vermouth products, which are treated in the same way under the Wine Equalisation Tax regime. He also addresses the requirements for the labelling of wines and that the “illustrative samples” provided in Negro 1, Exhibit DN-2, do not comply with such requirements.
The evidence in reply attempts to provide some answers to the anomalies and irregularities in the evidence in support. For example, Benito suggests that some staff, especially [now deceased] Jan McColdrick, used vermouth codes for cleanskin wines (such as the Opponent’s) to make up for stock variations. Benito also admits that the invoice to Club Italia was “dodgy”.
None of the evidence in reply provides evidence of specific use of the Trade Mark independent of the Opponent’s records. Giarratana and Piperno assert vague and imprecise sales of wines under the Trade Mark, but provide no corroborative documentary evidence.
Discussion
Mr Negro, for the Opponent, submitted that in the ‘real world’ small businesses often made mistakes and that it was often very hard to reproduce evidence to support its case, especially when it was from a period prior to when the removal proceedings were underway.
Mr Negro submitted that the various declarants were honest and aware of penalties for false evidence. He also submitted some small business people were scared when approached by private investigators and gave confused responses. He accepted that the Club Italia invoice seems “dodgy” but that should not taint the remaining evidence of use as shown by the invoices.
At the hearing, Mr Dimitriadis submitted that I needed to note four things in relation to the evidence:
(a)The invoices are unreliable and I should give them no weight;
(b)Reference to a trade mark in an invoice by itself is not sufficient to constitute evidence of use – section 9(1)(c) of the Act also requires evidence of delivery of goods;
(c)Even if the invoices are taken at face value, there is slight use of the mark that is not consistent with genuine commercial use; and
(d)Apart from the Club Italia invoice, the customers indicated in evidence were from a comparatively small geographical area in Melbourne.
The Applicant further argued that the Registrar should not exercise her discretion to retain the registration for all the goods specified other than gin.
I note that the grounds under subsections 92(4)(a) and 92(4)(b) tend to merge once an impugned trade mark has been registered for 5 years[1] in that, except where circumstances prevented the use of the impugned trade mark, an owner’s intention to use a trade mark at the filing date may come to be reflected in the actual use of the trade mark with respect to goods claimed in the specification. That is, a broad claim at application for ‘alcoholic beverages’ which is then only used (within the relevant period) in respect of gin may be taken as an intention, at the time of filing, to use the Trade Mark only in respect of gin.
[1] See Shanahan's Australian Law of Trade Marks and Passing Off; 5th ed; paragraph 70.510
I am satisfied that such is the case here and that any consideration of the ground under section 92(4)(a) would, in view of any actual use of the Trade Mark, be otiose.
Having regard to the evidence with respect to section 92(4)(b), I am satisfied that the Opponent has in fact used the Trade Mark after the date of registration and throughout the relevant period on a genuine commercial basis in relation to gin. I can accept that the Opponent seems to have purchased some wine that could be sold as cleanskin. However, while I can accept that for some time from the relevant date, and probably after the relevant period, the Opponent has sold some wine bearing the Trade Mark, I find it difficult to accept that the evidence establishes sales of any wine bearing the Trade during the relevant period.
Every invoice exhibited by the Opponent as evidence of use shows the purported wine sales under the Trade Mark listed against a TOSO vermouth product code. The only invoice in evidence that has been obtained from a customer (that from Club Italia) is materially different from the Opponent’s counterpart in that it shows TOSO vermouth in the same location as the Opponent’s alleged sale of wine.
While I can accept that in the real world of small business, not all accounting demonstrates the acme of perfection; however, it is incredible to believe that it is an accident that every instance of use sought to be established contains the same accidental use of a product code relating to TOSO vermouth.
Contrary to Mr Negro’s submission that one “dodgy” invoice should not taint the remainder, I can only conclude that all of the invoices provided by the Opponent should be given little or no weight
I am not satisfied that alcoholic beverages other than gin have been used under the Trade Mark during the relevant period.
There is no evidence of circumstances that were an obstacle to use of the trade mark during the relevant period.
There is nothing in the evidence to persuade me to exercise the Registrar’s discretion not to remove a trade mark from the Register for goods other than gin.
Decision and Direction
Section 101 of the Act relevantly provides:
101Determination 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.
I have decided that the Trade Mark is to be removed from the Register for all goods in respect of which it is registered other than ‘gin’
Absent an appeal from either party filed within the required time, I direct that the Class 33 specification be amended to that in the preceding paragraph. If such an appeal is filed, the disposition of the application for removal should be in accordance with the Court’s order or direction.
Costs
The Applicant has been successful in relation to the application for removal of the Trade Mark. I direct that costs in relation to the opposition be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
17 October 2014
5
0