NV Sumatra Tobacco Trading Company v Qantas Airways Limited

[2016] ATMO 107

TRADE MARKS ACT 1995

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

ReOpposition by NV Sumatra Tobacco Trading Company to application under section 92 of the Act by Qantas Airways Limited to remove trade mark number 826387 (14, 16, 18, 21, 24, 42) - JET - in the name of NV Sumatra Tobacco Trading Company

Delegate:

Robert Wilson

Representation:

Opponent: Blake Knowles of Cullens Patent and Trade Mark Attorneys

Removal Applicant: Hamish Bevan of Counsel instructed by Lynne Lewis of Minter Ellison

Decision:

2016 ATMO 107

Trade Marks Act 1995 (Cth) - section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) unsuccessful – no use of trade mark during relevant period – opponent relied on s 100(3)(c) obstacle to use – Tobacco Advertising Prohibition Act 1992 (Cth) potential obstacle – no relevant obstacle to use – trade mark to be removed from Register

Background

1. NV Sumatra Tobacco Trading Company (‘the Opponent’) is the registered owner of trade mark registration 826387, relevant details of which are as follows:  

Trade Mark Number:

826387

Filing Date:

3 March 2000

Goods and Services:

See Annexure

(‘the Challenged Goods and Services’)[1]

Trade Mark:

JET (‘the Challenged Trade Mark’)

[1] The Challenged Goods and Services are all of the goods and services for which the trade mark is registered.

2.     On 9 December 2014, Qantas Airways Limited (‘the Removal Applicant’) filed an application based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘the Act’) seeking removal of the Challenged Trade Mark from the Register, alleging that the Challenged Trade Mark was not used in good faith in relation to any of the Challenged Goods and Services during the three year period ending on 9 November 2014 (‘the Relevant Period’).

3.     The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose filed on 18 February 2015 and a Statement of Grounds and Particulars which was filed on 17 March 2015. The Removal Applicant filed a Notice of Intention to Defend on 13 April 2015.

Evidence

1. The Opponent filed Evidence in Support of its opposition on 20 July 2015. This evidence consists of:

   ·Statutory Declaration made on 16 July 2015 by Claude Paul Anese, Trade Mark Attorney at the Opponent’s representative, Cullens Patent and Trade Mark Attorneys, with Exhibit CPA1 (‘the Anese declaration’).

   5.     The Removal Applicant filed Evidence in Answer on 26 October 2015. This evidence consists of:

   ·Declaration made on 26 October 2015 by Mindaugas Skavronskas, solicitor employed by the Removal Applicant’s representative, Minter Ellison, with Exhibit MS‑1 (‘the Skavronskas Declaration’).

   6.     The Opponent filed Evidence in Reply on 12 January 2016. This evidence consists of:

   ·Declaration made on 9 January 2016 by Lewis Lionel Chanderson, the International Marketing Manager of the Opponent, with Exhibits LLC1 to LLC5 (‘the Chanderson Declaration’).

   7.     I heard the matter in Canberra on 16 November 2016 as a delegate of the Registrar of Trade Marks. Blake Knowles of Cullens Patent and Trade Mark Attorneys appeared for the Opponent. Mr Knowles’ oral submissions were supplemented by written submissions filed with IP Australia on 28 October 2016 (‘the Opponent’s submissions’). Hamish Bevan of Counsel, instructed by Lynne Lewis of Minter Ellison, appeared for the Removal Applicant. Mr Bevan’s oral submissions were supplemented by written submissions filed with IP Australia on 3 November 2016 (‘the Removal Applicant’s submissions’). Both representatives’ written submissions were filed in accordance with my earlier directions.

   The Removal Applicant

2. The Removal Applicant is an Australian airline. It is the owner of a number of trade marks including the pending trade mark applications shown below (‘the Removal Applicant’s Trade Marks’) :

Trade Mark Application:	1578652
Priority Date:	18 August 2011
Goods and Services:	See Annexure 2
Trade Mark:
Trade Mark Application:	1664146
Priority Date:	11 December 2014
Goods:	See Annexure 2
Trade Mark:

During examination of the above applications the examiner raised the Challenged Trade Mark as an impediment to the acceptance of the applications under s 44 of the Act.

The Opponent

1. The Opponent is a corporation organised and existing under the laws of Indonesia.[2] It manufactures tobacco products and sells those products internationally.[3] The Opponent also sells a range of other merchandise internationally.[4] In addition to the Challenged Trade Mark the Opponent is the owner of the registered trade mark shown below:

   [2] The Anese declaration [4].

   [3] The Chanderson declaration [4].

   [4] Ibid.

Trade Mark Number	480773
Priority Date:	4 February 1988
Goods:	Class 34: All types of cigarettes, including kretek (clove) cigarettes, tobacco (raw and manufactured), cigars, smokers' articles, cigarette paper and matches (‘the Tobacco Goods’)
Trade Mark:	JET (‘the Tobacco Trade Mark’)

References used in this decision

10.     For clarity, in this decision the reference ‘the Challenged Trade Mark’ is used to refer to the registration the subject of the present removal application; ‘the Tobacco Trade Mark’ is used to refer to the registration 480773 described above, and ‘the JET Trade Mark’ is used as a non-specific reference to the sign ‘JET’ whether or not its owned by the Opponent.

Legal Framework

11. Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

12. The removal application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:

Section 92. Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … 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.

…

(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.

13. 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 Challenged Trade Mark was used in good faith in Australia 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.[5]

[5] 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 recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

Obstacle to use?

14.     The Opponent has conceded that it has not used either the Challenged Trade Mark (or the Tobacco Trade Mark) in Australia during the Relevant Period.[6] Instead, it relies on s 100(3)(c) of the Act which indicates that the Opponent is taken to have rebutted the allegation of non-use if it establishes that the Challenged Trade Mark was not used by it in the Relevant Period because of circumstances (whether affecting traders generally or only the Opponent) that were an obstacle to the use of the Challenged Trade Mark during that period. The Opponent has stated that the Tobacco Advertising Prohibition Act 1992 (Cth) (‘the TAP Act’) constitutes the relevant obstacle. More specifically, the Chanderson declaration states:

Because of the Tobacco Advertising Prohibition Act 1992 in Australia, since JET is registered by [the Opponent] as a trade mark in Australia for tobacco products, [the Opponent] has been unable to publish advertisements or any sign or other visual image that promotes or is intended to promote the JET trade mark on labels, products and packaging for non-tobacco products in Australia.[7]

[6] The Opponent’s submissions [7]-[9].

[7] The Chanderson declaration [14].

15. Section 3 of the TAP Act indicates that its objects include limiting the exposure of the public to messages and images that may persuade them to start smoking, continue smoking or to use or continue to use tobacco products. It attempts to do this by prohibiting tobacco advertisements. Section 9 of the TAP Act provides, inter alia, the basic meaning of a tobacco advertisement—sub-s (1) is reproduced below:

Section 9 - Meaning of tobacco advertisement

Basic meaning

(1)    Subject to this section, for the purposes of this Act, a tobacco advertisement is any writing, still or moving picture, sign, symbol or other visual image, or any audible message, or any combination of 2 or more of those things, that gives publicity to, or otherwise promotes or is intended to promote:

(a)    smoking; or

(b)    the purchase or use of a tobacco product or a range of tobacco products; or

(c)     the whole or a part of a trade mark that is registered under the Trade Marks Act 1955[8] in respect of goods that are or include tobacco products; or

[8] It was not in dispute that the reference in this provision to the Trade Marks Act 1955 includes a reference to the Trade Marks Act 1995.

(d)    the whole or a part of a design that is registered under the Designs Act 2003 in relation to products that are or include tobacco products; or

(e)    the whole or a part of the name of a person:

(i)who is a manufacturer of tobacco products; and

(ii)whose name appears on, or on the packaging of, some or all of those products; or

(f) any other words (for example the whole or a part of a brand name) or designs, or combination of words and designs, that are closely associated with a tobacco product or a range of tobacco products (whether also closely associated with other kinds of products).

(emphasis added)

16. Section 15 of the TAP Act states, inter alia, that tobacco advertisements must not be published by a regulated corporation.[9] That the Opponent is a regulated corporation is not disputed. Section 10 of the TAP Act describes a number of different circumstances which constitute publishing a tobacco advertisement. The Opponent relies on some only of those situations and Mr Knowles submitted:

Section 10(1)(c) defines ‘publish’ in relation to tobacco advertisements as including the selling or supply of something containing the advertisement, to the public, or a section of the public. Section 10(1)(d) includes in the definition of ‘publish’ the displaying of the tobacco advertisement so it can be seen or heard in or from a public place (eg a shopfront). Section 10(1)(e) expands ‘publish’ to include any other conduct that would otherwise bring the tobacco advertisement to the notice of the public by any means.[10]

[9] Tobacco Advertising Prohibition Act 1992 s 15(1)(a).

[10] The Opponent’s submissions [22].

17. The Opponent relies in particular on the meaning of a tobacco advertisement given in s 9(1)(c) of the TAP Act and has submitted:

As [the Tobacco Trade Mark] covers tobacco, the doing of anything intended to give publicity to or promote the JET trade mark is therefore considered a ‘tobacco advertisement’ under section 9 of [the TAP Act].

The selling of any goods bearing the JET trade mark, or provision of any services under the JET trade mark, would inevitably promote or give publicity to [the Tobacco Trade Mark] and attract public attention, and therefore be considered the publication of a tobacco advertisement.

In the circumstances, the operation of [the TAP Act] posed a clear and insurmountable obstacle to use [the Challenged Trade Mark] during the entirety of [the Relevant Period].[11]

[11] The Opponent’s submissions [24]-[26].

18.   The Removal Applicant accepts that, in general, the TAP Act works as outlined by the Opponent in its submissions. However, the Removal Applicant does not accept that the TAP Act posed a relevant obstacle to the use of the Challenged Trade Mark.[12] The Opponent has submitted that there are four reasons that the TAP Act was not a relevant obstacle:

First, … the Opponent has not used the trade mark JET in Australia at all, including in respect of tobacco products in which the Opponent can lawfully trade. The Opponent has not given any evidence of any plans (historical, current or future) to launch the brand in Australia. The only inference is that there were and are none. In these circumstances, the non-use of the trade mark arose solely as a result of the Opponent’s own commercial or business decisions not to use the mark in Australia. (‘the Removal Applicant’s first proposition’)

Secondly, the Tobacco Advertising Prohibition Act was already well-established when the Opponent applied for the trade mark. The Opponent must have known this at the time that it applied for the mark. [The Removal Applicant] submits that a pre-existing regulatory regime applicable to the trade generally cannot constitute an obstacle to use of the mark within the meaning of s 100(3)(c). This is because it is not an event that arose that is capable of disrupting trade in the industry: see Woolly Bull[13] (at [55]). In other words, for a particular circumstance to amount to an obstacle to use, it would need to arise after the priority date of a trade mark, irrespective of whether it arises before, at or after the commencement of the non-use period.

Thirdly, irrespective of whether the Opponent had launched its JET brand of cigarettes in Australia, the Tobacco Advertising Prohibition Act would not have prevented the use of the mark beyond tobacco products themselves where that use was done in the context of trade communications. Section 10(3) of the Tobacco Advertising Prohibition Act provides for an exception for trade communications being to a group of people all of whom are involved in the manufacture, distribution or sale of tobacco products.[14] In other words, the Opponent could have used its mark in the course of trade, namely trade communications. It did not. (Of course, the use of the mark on tobacco products themselves falls within the exception in s 9(2),[15] subject also now to the plain-packaging legislation.)

Fourthly, and in any event, the Opponent cannot discharge its onus to establish the causal link. The Opponent must show that, but for the impediment (that is, the Tobacco Advertising Prohibition Act), it would have used the mark: see Woolly Bull (at [55]). The bare assertion in Chanderson is insufficient to establish the causal connexion. Indeed, properly understood, that evidence does not support the Opponent. Mr Chanderson refers to the effect of the statutory prohibition but, tellingly, he does not say that, but for that impediment, the Opponent would have used the mark.[16]

[12] The Removal Applicant’s submissions [21]-[22] (emphasis in original).

[13] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261.

[14] Section 10 of the TAP Act provides the basic meaning of ‘publish a tobacco advertisement’. The section provides for some exceptions including that found in sub-s (3) which states that:

the communication of information that is or includes a tobacco advertisement to a group of people all of whom are involved in the manufacture, distribution or sale of tobacco products does not, of itself, amount to a publication of the tobacco advertisement.

[15] Section 9 of the TAP Act provides the basic meaning of a ‘tobacco advertisement’. The section also provides for some exceptions to that definition including those found in sub-s (2). That sub-section states that words, signs or symbols which appear on certain items including tobacco products and the packaging of tobacco products do not, when so appearing, constitute a tobacco advertisement.

[16] The Opponent’s submissions [27]-[30].

The interplay between the trade marks

19. Notwithstanding that they consist of the same sign, the Challenged Trade Mark and the Tobacco Trade Mark are two separate registrations and, therefore, two separate trade marks: this distinction is important. The Removal Applicant is not seeking removal of the Tobacco Trade Mark, only of the Challenged Trade Mark. However, in the facts and circumstances of this matter there is an interplay between the two trade marks which is significant. This significance arises because of the relevance of the Tobacco Trade Mark to s 9(1)(c) of the TAP Act. Because of the wording of the start of s 9(1) the manner in which the Opponent intends or would desire to use the Challenged Trade Mark takes on a particular significance, which I will come to shortly.

20.   The Opponent has indicated that as well as selling tobacco products outside of Australia it sells a range of merchandise, also outside of Australia.[17] Exhibit LLC4 to the Chanderson declaration is declared to be ‘photographs of a selection of (non-tobacco) products sold internationally by [the Opponent] under the JET trade mark’.[18] The photographs typically show the word ‘JET’ in a somewhat stylised font, mostly, but not always, alongside a logo (which appears to be a winged lion’s head). The exhibit includes photographs of what appear to be calendars, polo shirts, t‑shirts, clocks, writing pads and a box of ball point pens; two examples are given below.

[17] The Chanderson declaration [4], [12].

[18] Ibid [12].

21.   When used in the manner shown in the examples above it is apparent, or at least arguable, that the use gives publicity to or is intended to promote the purchase of the Opponent’s tobacco products sold under the JET Trade Mark—rather than the use of the JET Trade Mark being to merely indicate the trade source of the goods. I am satisfied that it is the case, that the Removal Applicant’s intention when it applied to register the Challenged Trade Mark was that, if at some point in time it became possible, it would use the trade mark in connection with merchandise with the intention of promoting the sales of tobacco products in connection with the Tobacco Trade Mark in Australia.

22. It is my view that s 9(1) of the TAP Act is not worded so broadly that all manners of use of the Challenged Trade Mark would cause that use to fall within the basic meaning of a tobacco advertisement. Some examples might be:

·     The Opponent could manufacture and sell earrings where the Challenged Trade Mark appeared on the swing tag.

·     The Opponent could manufacture and sell paper plates in the manner that these goods are typically found in a supermarket; that is, wrapped in clear plastic with the Challenged Trade Mark appearing on the wrapper.

·     The Opponent could provide café services from a premises bearing the Challenged Trade Mark on the shopfront.[19]

[19] These goods and services are all encompassed by the Challenged Goods and Services.

23.   It is my view that use in any of the three ways described above could readily be carried out in a manner which does not give publicity to, or otherwise promote or be intended to promote the Tobacco Trade Mark. Therefore when used in those ways the Challenged Trade Mark would not fall within the basic meaning of a tobacco advertisement and the TAP Act would not be an obstacle to the use of the trade mark. However, it is not for the Registrar to dictate the manner in which the owner of a trade mark is to use its trade mark. If it is shown that there is a relevant obstacle to use which prevents the owner of the trade mark using its trade mark in the manner it wishes that is sufficient. I am satisfied that the manner in which the Opponent wished to (eventually) use the Challenged Trade Mark at the time it applied for it would bring it within the basic meaning of a tobacco advertisement found in s (9)(1)(c).

24.   For the sake of completeness, if I were not satisfied regarding the manner of the Opponent’s intended use of the Challenged Trade Mark—that is, that it wished to use the trade mark in a manner other than to promote the Tobacco Trade Mark—I would have concluded that that the TAP Act was not a relevant obstacle.

Was the TAP Act the cause of the non-use?

25.     It is not sufficient that I am satisfied that at the time it filed the application for the Challenged Trade Mark the Opponent’s intended use would have meant that the TAP Act would have prevented its use of the trade mark; I must be satisfied that the TAP Act was the reason the Opponent did not use the Challenged Trade Mark during the Relevant Period. In this regard I am persuaded by the Removal Applicant’s first proposition (at para 19, above). To support the proposition Mr Bevan referred me to the following apposite words of Drummond J from Woolly Bull:

[C]ircumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark.[20]

[20] [2001] FCA 261, [55] (emphasis added).

26.   It is conceded by the Opponent that the Challenged Trade Mark was not used during the Relevant Period. Further, there is no evidence that the Opponent has used the JET Trade Mark in Australia at all. It is reasonable to conclude, therefore, that at least until the end of the Relevant Period the Opponent has at no time used either the Challenged Trade Mark or the Tobacco Trade Mark in Australia. The Tobacco Trade Mark was applied for in February 1988, over 26 years before the Removal Applicant filed the subject removal application. It is assumed that at the time the Opponent filed the application for the Tobacco Trade Mark it intended to use it. However, there is no evidence to suggest, and it has not been submitted, that there has at any time been an obstacle to the use of the Tobacco Trade Mark, yet it has not been used by the Opponent in Australia.

27.   The Opponent applied to register the Challenged Trade Mark in March 2000, approximately 12 years after it filed its application for the Tobacco Trade Mark, and over 14 years before the Removal Applicant filed the subject removal application. It seems that the Opponent may have had some rekindled intention in respect of the JET Trade Mark at that time. However, as indicated above, 14 years later and in the absence of any obstacle the Tobacco Trade Mark has still not been used.

28.   Mr Knowles answered the Removal Applicant’s first proposition with the oral submissions reproduced below:

My friend has submitted that there is no express evidence to indicate that ‘but for’ the provisions of [the TAP Act] the Opponent would have engaged in sales of the product, but you need to look at the causative aspect and the relevant circumstances. So, for instance, where the actual trade itself is prohibited by very broad reaching regulatory prohibition it’s not reasonable to assume that there would be any objective evidence of the Opponent looking at or making plans to commence use of the trade mark during the Relevant Period, because it’s not possible to commence use during the Relevant Period. The prohibition is so extensive that unless there is anything to indicate that [in the short or medium term] there will be change in the regulatory environment then there is not going to be any evidence of preparations to commence use of the mark or discussions that use of the mark will commence. …

Conversely, if there is an obstacle in the way, a regulatory provision, such that removal of that obstacle is anticipated then you may start to see some evidence that the owner of the trade mark intends to commence use of the trade mark at some stage in the future. However, that’s not the case in this situation. There is no indication, there is no evidence, that [the TAP Act] is going to be repealed or amended in any significant way in the near future. The fact that there is no evidence on that point should not be deemed to torpedo the ground of opposition. Particularly in the light of Mr Chanderson’s statement that this was an obstacle to use during the relevant period. And there is no evidence to refute that point.

29.   I am not persuaded by Mr Knowles’ submissions. Due to what I have described as the interplay between the Challenged Trade Mark and the Tobacco Trade Mark, in the absence of any use of the Tobacco Trade Mark I am not satisfied that but for the TAP Act the Opponent would have used the Challenged Trade Mark. It is apparent that the principal business of the Opponent is the sale of tobacco products. There have been no obstacles to the use of the Tobacco Trade Mark yet for whatever reason that trade mark has not been used in Australia. I am not persuaded that in the absence of the TAP Act the Challenged Trade Mark would have been used. It is far more likely that the Challenged Trade Mark would not have been used for the same reasons that the Tobacco Trade Mark has not been used—whatever those reasons might be. Consequently, I am not satisfied that the TAP Act was a relevant obstacle to the Opponent’s use of the Challenged Trade Mark during the Relevant Period. The Opponent has therefore failed to rebut the allegation of non-use and the grounds on which the application was made have been established.

Registrar’s Discretion

30. Section 101(3) of the Act provides the Registrar with a discretion not to remove a trade mark from the Register even if the grounds on which the application was made have been established. There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[21] While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’) Flick J stated:

Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[22] 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.[23] 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.[24]

[21] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [172] (Bennet J).

[22] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

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

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

31.   Both parties referred to factors, taken from Gallo which may be relevant to the discretion, being:

·any abandonment of the trade mark

·any residual reputation in the trade mark

·any sales after the non-use period

·whether the removal applicant had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the trade mark

·whether the registered proprietor was not aware of the removal applicant’s sales under the trade mark

32.   The Opponent also drew my attention to following words from the judgment in Austin, Nichols & Co Inc v Lodestar Anstalt:

[I]t is a discretion limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act.[25]

[25] [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

33.   The Opponent submitted the following in respect of the discretion:

·There had been no abandonment of the Challenged Trade Mark as it is using the JET Trade Mark in relation to tobacco and non-tobacco goods overseas.

·The Removal Applicant is well resourced and would likely have been aware of the JET Trade Mark at the time it decided to file its trade mark applications. The Removal Applicant should not be permitted to obtain the benefit of the registration of the Removal Applicant’s Trade Marks when it likely had knowledge that the use of those trade marks might infringe the Challenged Trade Mark.

·The use of any trade mark consisting of the word JET by any other trader has the potential to breach the TAP Act, in view of the Tobacco Trade Mark. This is because such use would constitute the publication of a tobacco advertisement.

·Retaining the registration in the name of the Opponent is the course of action least likely to lead to breaches of the TAP Act. If some other trader were to register the JET Trade Mark in relation to the goods or services covered by the present registration, they may not be aware that any use of that trade mark would be in breach of the TAP Act.[26]

[26] The Opponent’s submissions [38]-[43].

34.   The Removal Applicant submitted that there were no factors that would favour the retention of the Challenged Trade Mark on the Register for reasons which include the following:[27]

·There is no evidence of any commercial activity at all in Australia with respect to the JET Trade Mark.

·There is no evidence to support any suggestion of any spill-over reputation.

·Contrary to the Opponent’s submissions at para 38 of its submissions, the evidence reveals that the Opponent has effectively abandoned the JET Trade Mark in Australia.

·While it may be accepted that the Removal Applicant entered the market without taking steps to remove the Challenged Trade Mark from the Register at that time, this does not tend against removal. Notoriously, the Removal Applicant’s Trade Marks enjoy a substantial reputation.[28] The Opponent must have been aware of the Removal Applicant’s sales under its JETSTAR trade marks. Even so, it has not used its own marks at all. The continued presence on the Register is merely an attempt to thwart the Removal Applicant.

·Given the lack of any reputation in the JET Trade Mark, removal would not be ‘potentially conducive to public confusion’.[29] If anything, it is to the contrary.

·The Opponent’s argument in its submissions regarding potential future breaches of the TAP Act is misconceived. The statute expressly makes an allowance for non-tobacco products that share a name with a tobacco product by coincidence.[30]

[27] The Removal Applicant’s submissions [38]-[43].

[28] See for example Qantas Airways Ltd v N V Sumatra Tobacco Trading Co [2012] ATMO 49.

[29] Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 224 (McLelland J).

[30] Tobacco Advertising Prohibition Act 1992 (Cth) s 9(3B).

35.   I find the Removal Applicant’s submissions persuasive—although I am not persuaded that the continued presence of the Challenged Trade Mark on the Register is merely an attempt by the Opponent to thwart the Removal Applicant. As at the end of the Relevant Period, the Opponent had not used its Tobacco Trade Mark in Australia in the over 26 years since it applied for that trade mark. Neither has it used the Challenged Trade Mark in the 14 years since it applied to register it. Other than its decision to oppose the present removal application there is no indication that the Opponent has any ongoing intention to use the JET Trade Mark in Australia either in connection with tobacco goods, or any other goods. The mere opposition of an application for removal is not sufficient, without more, to establish an ongoing intention to use a trade mark.

36.   A further consideration in respect of the exercise of the discretion is the balance of convenience to the parties. It is unlikely that in the foreseeable future the TAP Act will be either repealed or amended in a manner conducive to the use of the Challenged Trade Mark. This, coupled with the fact that the Opponent has not used the JET Trade Mark in Australia—and in the absence of any convincing evidence that it has any ongoing intention to do so—strongly suggests that any inconvenience that might be suffered by the Opponent as a result of the removal of the Challenged Trade Mark would be slight indeed.

37.   I am not satisfied that it is appropriate to exercise the Registrar’s discretion in favour of the Opponent and I decline to do so.

Decision

38.     As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that trade mark 826387 be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.

Costs

39.     The Removal Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to successfully oppose removal of the Trade Mark, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Robert Wilson

Hearing Officer

Trade Mark and Designs Hearings

28 November 2016

Annexure 1

The Challenged Goods and Services

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; precious stones; cigarette cases of precious metal; cigarette holders of precious metal; clocks, earrings; necklaces; statues of precious metal; ashtrays of precious metal for smokers; watches

Class 16: Paper, tissue paper, paper handkerchief, bags (envelopes, pouches) of paper or plastic for packaging; printed matter; bookbinding material; photographs; stationery; calendars; booklets; drawing materials; playing cards; none of the foregoing being related to airline transportation

Class 18: Leather and imitation of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas; bags of leather; belt; briefcases; handbags; pocket wallets; purses

Class 21: Household or kitchen containers; combs and sponges; brushes; glassware; porcelain and earthenware; glass (receptacles); paper plates; urns; dishes; vases not of precious metal

Class 24: Textiles and textiles goods; bed and table covers; cloth; fabric; handkerchiefs of textiles; pillowcases; banners; napkins; towels of textile; silk

Class 42: Hotel and motel services; restaurant and catering services; bar and cocktail lounge services; cafes, cafeterias, canteens, coffee shops and delicatessens; provisions of temporary accommodations; provision of dine-in and take away food and drinks and public house services; none of the foregoing being related to airline transportation

Annexure 2

The Goods and Services of trade mark 1578652

Class 16: Baggage and luggage tags; gift vouchers; model aeroplanes (ornaments)

Class 18: Luggage; bags for toiletry kits

Class 39: Transportation and delivery of goods and passengers by air; travel and transport reservation services; travel agency services; bonus, loyalty and reward programs being the supply of travel benefits, travel incentives, travel services and travel schemes

The Goods of trade mark 1664146

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; printed publications; magazines; periodicals; guides; catalogues; books; albums; programs; calendars; diaries; decals; posters; directories; pamphlets; brochures; newsletters; passport holders; postcards; colouring books; stickers; photographs; stationery and study materials; instructional and teaching material (other than apparatus); manuals; industrial packaging containers of paper; plastic materials for packaging (not included in other classes); writing instruments; baggage and luggage tags; gift vouchers; model aeroplanes (ornaments)

Class 18: Luggage straps; leather straps; leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags and accessories; beauty cases; garment bags; backpacks; school bags; sports bags; suitcases; briefcases; key cases; coin holders; credit card holders; wallets; purses; umbrellas, parasols and walking sticks; luggage; bags for toiletry kits