Opposition by Ambassador Apparel Group Pty Limited to application under section 92 of the Act by Kartell SpA to remove trade mark number 874952 (25) - CARTEL - in the name of Ambassador Apparel Group Limited

[2019] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Ambassador Apparel Group Pty Limited to application under section 92 of the Act by Kartell SpA to remove trade mark number 874952 (25) - CARTEL - in the name of Ambassador Apparel Group Limited

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Braddon Marx Lawyers Applicant: Spruson & Ferguson
Decision:	2019 ATMO 80 Trade Marks Act 1995 Opposition under section 96 to application for removal under section 92(4)(b). Trade Mark has been used by the Opponent during the Relevant Period.  Exercise of Registrar’s discretion. Opposition to removal application established.

Background

1. In these proceedings under section 96 of the Trade Marks Act 1995 (‘the Act’) Kartell S.P.A. (‘the Applicant’) filed an application on 28 October 2016 under section 92 of the Act seeking the removal of the trade mark hereunder from the Register of Trade Marks for all of the goods for which it is registered.

Registration No:           874952

Filing Date:                  8 May 2001

Goods:Class 25: Outerwear for men, women, boy's and girl's, including jackets, pants, tops, shirts, skirts, dresses, neckwear, footwear, headgear including caps, accessories in this class such as belts, socks and hosiery, sportswear and sports shoes

(‘the Goods’)

Trade Mark:                CARTEL

(‘the Trade Mark’)

2.     On 12 January 2017, the owner of the Trade Mark, Ambassador Apparel Group Pty Limited, (‘the Opponent’) filed a Notice of Intention to Oppose, followed, on 13 February 2017, by a Statement of Grounds and Particulars.

3.     On 28 April 2017, the Applicant filed a Notice of Intention to Defend.

4.     Thereafter, on 7 August 2017, the Opponent filed its Evidence in Support, this being a declaration by Mr Mark Secivanovic, solicitor for the Opponent, made on 7 August 2019, with Annexures A to E.

5.     The Applicant has not filed Evidence in Answer.

6.     Both parties have been informed of their right to be heard or to make written submissions.  Neither party has elected to do either.

7.     Now, in order that the Registrar of Trade Marks may decide this matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Principles

1. As the application to remove the Trade Mark from the Register was filed on 28 October 2016, the Relevant Period for the purposes of section 92(4)(b) of the Act is the three year period ending on 28 September 2016.

2. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

   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:

   (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.

3. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[1]

   [1] [2001] FCA 261; 107 FCR 166 at 172.

4. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (‘Nodoz’).[2]

   [2] [1962] RPC 1 at 7 per Wilberforce J.

5. The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [3]

   [3] [1977] RPC 131.

6. The relevant standard of proof that the Opponent bears is on the balance of probabilities.[4] In this regard, section 101 of the Act provides that if “the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …” [Stress added]

   [4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

7. In Blount Inc v Registrar of Trade Marks Branson J observed:[5]

   [5] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

8. It follows that unless the Opponent evidences “convincing proof” of use, or authorised use, of the Trade Mark “in the course of trade”:[6]

   1.Without alterations or additions which substantially affect its identity;[7]

   2.during the Relevant Period;

   3.in relation to the Goods;

   to the satisfaction of the Registrar, the opposition to removal will not be established.

   [6] See section 17 of the Act: What is a trade mark?

   [7] Subsections 7(1) and 100(3)(b)(i) of the Act apply.

9. Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the Goods if satisfied it is reasonable to do so.

   Evidence

   17.     In my view Mr Secivanovic’s declaration establishes that the Opponent makes a range of clothing which it supplies under contract to Transport for New South Wales, being uniforms for the employees of that department.  This clothing is comprised of:

   Men’s Trousers;

   Ladies Trousers;

   Three quarter sleeve jersey tops;

   Men’s short and long sleeve shirts;

   Women’s short and long sleeve shirts;

   Cufflinks;

   Men’s ties;

   Men’s and women’s knitwear including vests and jumpers; and

   Women’s skirts.

   (‘the Opponent’s Goods’)

   18.     In the material attached to Mr Secivanovic’s declaration, the Trade Mark does not appear on the above clothing (although it does appear on the cufflinks).  However, there is a declaration at Annexure C made by a Mr Lachlan Kew who is a Procurement Officer for Transport NSW who states:

   1. I am a procurement manager for Transport for NSW (hereinafter called TfNSW). I have held this position for nine years.

   2. TfNSW carries on the business of transport services to the state of NSW.

   3. TfNSW has purchased men's and women's clothing and accessories bearing the Cartel Trade Mark from [the Opponent] continuously since 2009.

   4. In particular, TfNSW's operating agency Roads and Maritime Services has placed many purchase orders with [the Opponent] for men's and women's clothing and accessories bearing the Cartel Trade Mark during the last 4 years.

   5. Clothing bearing the Cartel Trade Mark manufactured and supplied by [the Opponent] is purchased and issued to TfNSW staff around the state of NSW at various offices and facilities.

   6. Clothing and accessories bearing the Cartel Trade Mark manufactured by [the Opponent] is well accepted by TfNSW staff and I believe the Cartel Trade Mark has acquired a reputation in Australia.

   19.     Attachment E is comprised of various purchase orders/invoices for goods ordered by individuals within TfNSW who customarily order direct from the Opponent.  The Trade Mark does not appear on these purchase orders/invoices, most of which fall within the Relevant Period.

   Section 92(4)(b)

   20. Section 92 of the Act relevantly provides:

   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:

   […]

   (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.

   21.     The application for removal has been made in accordance with the Trade Marks Regulations 1995 (‘the Regulations’) and the Registrar has not been informed of an action concerning the Trade Mark in a prescribed court. I note 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 application,[8] and I confirm that five years since filing the application have in fact passed.

   [8] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018.

   22.     In my consideration, whilst the individual components of the Opponent’s evidence might not show use of the Trade Mark during the Relevant Period, when considered as a whole (and on the balance of probabilities) the evidence does show use of the Trade Mark in relation to the Opponent’s Goods during the Relevant Period.  In particular, the declaration of Mr Kew affirms that during the Relevant Period such articles were purchased by TfNSW employees under the Trade Mark and it may be safely inferred that the purchase orders or invoices from within the Relevant Period within the evidence refer to such sales.

   23.     The Opponent has established its Opposition to removal at least in relation to the Opponent’s Goods.  I will discuss any discrepancy between the Goods and the Opponent’s Goods under the heading Discretion, below.

   Discretion

Section 101 of the Act relevantly provides:

101Determination of opposed application—general

[…]

(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.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennett J observed:[9]

   [9] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [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.

   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).

   In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion :

   ·there had been no abandonment of the trade mark;

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

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

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

   ·the registered proprietors were not aware of the applicant’s sales under the mark.

   25.     There is no evidence filed by the Applicant so its interests in this matter are not known.

   26. I note that section 101(4) allows the Registrar to consider whether the goods for which use has been established by an opponent are “similar goods” to those for which a trade mark is registered. The expression “similar goods” includes both the same goods and “goods of the same description”.[10]  Considered broadly, most of the Goods, if they are not the same goods as the Opponent’s Goods, are goods of the same description as the Opponent’s Goods.

   [10] Section 14 refers.

   27.     The exception to the above discussion is “sports shoes”.  Inasmuch as “sports shoes” are frequently provided as a part of a uniform (such as the uniforms which are sold by the Opponent under the Trade Mark), I consider it appropriate to exercise the Registrar’s discretion in relation to those goods as, in the circumstances of this matter, the removal of the Trade Mark in relation to “sports shoes” has the potential to lead to confusion amongst the public.

   28.     Accordingly, it is appropriate to leave the registration intact.

   Decision

   29. 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.

   30.     I am satisfied that the Opponent has established its opposition to the removal of the Trade Mark from the Register.

   Costs

   31. The Opponent requested its costs in the event that it established its opposition to removal. As the Opponent has been successful, it is appropriate in terms of section 221 of the Act that I award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   23 May 2019