Nutrifield Pty Ltd v Smart Garden Products Limited

[2018] ATMO 178

TRADE MARKS ACT 1995

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

Re:Opposition by Nutrifield Pty Ltd to application under section 92 of the Act by Smart Garden Products Limited for removal of trade mark number 1165046 (1, 5, 7, 11, 16, 31, 44) – SMART GARDEN and Device- in the name of Nutrifield Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant: Adrian M Trioli, Registered Patent and Trade Mark Attorney
Decision:	2018 ATMO 178 Trade Marks Act 1995 (Cth) - section 96 opposition to s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 31 August 2016 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Smart Garden Products Limited (‘Applicant’) for removal of the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the good and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1165046
Lodgement date	8 March 2007
Goods and Services	Class 1: Chemicals used in industry agriculture, horticulture and forestry to aid plant growth Class 5: Preparations for destroying vermin, fungicides Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission component (except for land vehicles); agricultural implements other than hand operated; incubators for eggs Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes Class 16: Paper cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or house hold purposes; artist materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic material for packaging (not included in other classes); printers' type; printing blocks Class 31 Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruit and vegetables; seeds, natural plants and flowers; food stuffs for animals, malt Class 44: Agriculture, horticulture and forestry services (‘Registered Goods and Services)
Owner	Nutrifield Pty Ltd
Trade Mark	(‘Trade Mark’)

1. Nutrifield Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 13 September 2016 and a Statement of Grounds and Particulars (‘SGP’) on 23 September 2016.  The Applicant filed a Notice of Intention to Defend on 24 November 2016.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent chose not to file any evidence in reply.  The parties’ evidence will be discussed in more detail below. 

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 8 March 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar of Trade Marks for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to rely upon.  On 7 April 2018, the Applicant filed written submissions (‘Applicant’s Submissions’).  The Opponent did not file any submissions. 

   5. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support;

   ·The Applicant’s Evidence in Answer; and

   ·The Applicant’s Submissions.  

   The Law

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use and lack of intention to use. In respect of the present matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the 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 section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

3. Thus, the allegation under s 92(4)(b) is that the Opponent has not used the Trade Mark upon or in relation to the Registered Goods and Services at any time in the three year period ending on 31 July 2016 (‘relevant period’).

4. I note also that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the trade mark application,[1] and I confirm that five years since filing the trade mark application have in fact passed.

   [1] Per s 93(2) of the Act.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
   [...]

   (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.

   […]

   (3) 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; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (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.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

   11.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [4] Nodoz Trade Mark (1962) RPC 1, 7.

   Opponent’s Evidence

5. The Opponent’s evidence in this matter consists of a declaration made on 27 February 2018 by Mina Abdelmalek, Operations Manager of the Opponent.  This declaration annexes approximately 550 pages of material that is described generally in the declaration as evidence but is not marked, paginated or identified in any way (‘Abdelmalek Declaration’).    

6. The Abdelmalek Declaration is difficult to follow given that it contains much material that is undated, is dated outside the relevant date or is irrelevant, including tax returns of various corporate entities.  Much of the marketing material displaying the Trade Mark included in the Abdelmalek Declaration is either undated or in draft form and no context is provided about when or whether such material was used.  I limit my summary of the Opponent’s evidence below to material that could be relevant to this decision. 

7. The Abdelmalek Declaration contains the following information:

   ·The Opponent was founded in 2002.  In 2007 the Opponent developed the Smart Garden range of organically certified products.  In 2009 this range was promoted to the Big W, Bunnings and Dahlsens retail chains.  The Opponent produced product guides in 2009 and 2011 that feature the Smart Garden range. 

   ·An entity known as Dome Garden Supplies produced a 2013 catalogue that refers to the Smart Garden range. 

   ·At page 486 of the Abdelmalek Declaration there is a catalogue, again from Dome Garden Supplies, that although undated, refers to itself as the 2014 catalogue in which the Trade Mark appears in respect of certain gardening materials such as compost tea and plant starter, as well as a product described as water cleaner.

   ·At page 521 of the Abdelmalek Declaration there is an invoice dated 11 November 2014 to Cash Sales.  These sales include a lengthy list of products including certain products that contain the acronym ‘SG’ in their description, i.e. ‘SG Alaska Pure Label’, ‘SG Cargo Boost Label’.  There are other invoices dated before the relevant period to Dome Garden Supplies.

8. The Abdelmalek Declaration does not provide any context surrounding either the 2013 or 2014 Dome Garden Supplies catalogues including when they were produced or if and how they were used.  Equally the Opponent does not identify whether any of the products listed on the 11 November 2014 invoice featured the Trade Mark.  I note that none of the products containing the acronym ‘SG’ in their description are products featured in the Dome Garden Supplies catalogue.  Equally it is unclear why they are referred to as ‘labels’ if the invoice is for ‘cash sales’.

   Applicant’s Evidence

   17.     The Applicant’s evidence in answer consists of a declaration made on 24 July 2017 by Jonathan Stobart, Managing Director of the Applicant with Exhibit JS-1 (‘Stobart Declaration’). 

   18.     The Stobart Declaration indicates that the Applicant has applied to register a trade mark containing the words ‘Smart Garden’ surrounded by two curved stripes in an ellipse in respect of goods in classes 6, 9, 11, 14, 19, 20, 21, 22, 26, 27 and 31 (application number 1737964).  The Applicant holds applications for, or registrations of, similar marks in the United States, United Kingdom, China and in the European Union.      

   Discussion

9. To successfully oppose the removal application the Opponent must establish that it has used the Trade Mark (or a substantially identical mark) for the Registered Goods and Services during the relevant period (or per s100 of the Act that there were relevant circumstances that were an obstacle to use), failing which the Opponent would need to satisfy the Registrar that it was nevertheless ‘reasonable’ to exercise her discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

10. Having reviewed the EIS, the only dated material that could amount to use of the Trade Mark in the relevant period is the 2014 catalogue from Dome Garden Supplies that, at page 57 and 60 (or page 490 and 493 of the Abdelmalek Declaration) shows products bearing the Trade Mark.  However there is no evidence that this catalogue was ever actually printed or displayed.  Nor is there any evidence of whether this catalogue was targeted in Australia or elsewhere.  In essence, the Opponent relies on a single use of the Trade Mark in the Relevant Period (the catalogue), but the evidence supplied does not satisfy the requirement of ‘if not conclusive proof, overwhelmingly convincing proof’[5] of use since there is no evidence that the catalogue was ever printed or displayed in Australia and when.  

    [5] Nodoz Trade Mark (1962) RPC 1, 7.

11. I note that the burden of proof is placed on the Opponent pursuant to s100(3)(a) for the simple reason that if the Trade Mark was used in the relevant period, the Opponent would be in the best position to provide evidence to substantiate such use. The fact that the Opponent has not been able to put on any evidence of invoices, receipts or product guides showing use of the Trade Mark in the relevant period (when it was able to do so in respect of the period between 2007 and 2010), is a factor that tells against the Opponent in this case.

12. I find that the Opponent has failed to establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used in Australia for the Registered Goods and Services in the relevant period. The Opponent has failed to discharge its onus under s 100(3)(a) of the Act

    Obstacles to use

    23. The Opponent does not submit there were obstacles to use of the Trade Mark in the relevant period pursuant to s 100(3)(c) of the Act, nor does its evidence suggest this.

    Registrar’s Discretion

    24.     It is therefore necessary to consider whether the Registrar should exercise her discretion to allow the registration to retain its coverage of the Removal Goods.  As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[6] However s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [6] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    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 [or Registrar] 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.[7]

    [7] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    Her Honour also noted:

    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. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[8]

    [8] Ibid [171]-[172].

13. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[10] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[11]

    [9] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [10] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [11] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

    26.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered owner of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered owner of goods for which removal was sought since the relevant period ended;

    ·The applicant 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 owner was not aware of the applicant’s sales under the mark.[12]

    [12] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

14. In the present case the Trade Mark has been used in Australia prior to the relevant period.  The EIS, although it shows a considerable amount of marketing material featuring the Trade Mark, does not provide much detail about the breadth of sales or extent of the marketing of products featuring the Trade Mark prior to the relevant period.  As such I am unable to conclude that the Trade Mark had or continues to have any reputation in the market.  There is no evidence of the Trade Mark being used on the Registered Goods and Services after the relevant period.  Conversely I do accept that the Applicant’s private commercial interests would be affected adversely were I to allow the Trade Mark to remain on the Register for the Registered Goods and Services.

15. While the Opponent may have a limited private commercial interest in maintaining the registration of the Trade Mark as it stands, given the very limited to negligible reputation of the Trade Mark in Australia apparent from its evidence, the Opponent’s private commercial interest is insufficient to outweigh the private commercial interest of the Applicant and the public interest in the integrity of the Register.  In those circumstances I do not consider it reasonable to exercise the Registrar’s discretion in the Opponent’s favour.

    Decision

    29.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the goods and services for which it is registered.

1. Accordingly, I direct that registration 1165046 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   31. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 1165046 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   1 November 2018