Opposition by Aqi Care Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Pure Beginnings (Pty) Ltd to remove trade mark number 1105548 (class 3) – PURE BEGINNINGS with device - in the...

[2021] ATMO 118

TRADE MARKS ACT 1995

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

Re:Opposition by Aqi Care Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Pure Beginnings (Pty) Ltd to remove trade mark number 1105548 (class 3) – PURE BEGINNINGS with device - in the name of Aqi Care Pty Ltd

Delegate:	Katrina Brown
Representation:	Opponent: Self-represented Applicant: Tom Rinder, MacMillan Trade Marks Attorneys
Decision:	2021 ATMO 118 Trade Marks Act 1995 (Cth) – application under section 92 – use shown within the relevant period for some goods – exercise of Registrar’s discretion not appropriate – registration to be removed for remainder of goods

Background

1. Aqi Care Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration no:                   1105548

   Trade mark:                   (‘Trade Mark’)

   Filing date:  3 April 2006

   Goods:Class 3: Baths (cosmetic preparations for-); cosmetic kits; cosmetics; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic-); greases for cosmetic purposes; lotions for cosmetic purposes; oils for cosmetic purposes; petroleum jelly for cosmetic purposes; skin care (cosmetic preparations for-); sun-tanning preparations (cosmetics); tissues impregnated with cosmetic lotions; wipes (tissues) impregnated with cosmetic lotions (‘Registered Goods’)

2. On 26 August 2019 Pure Beginnings (Pty) Ltd (‘Removal Applicant’) filed an application pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark from the Register. The removal application was made in respect of all the Registered Goods; that is for complete removal of the Trade Mark from the Register.

3. The Removal Opponent filed a Notice of Intention to Oppose the removal application on 27 October 2019, followed by a Statement of Grounds and Particulars on 21 November 2019.

4. The Removal Applicant filed a Notice of Intention to Defend the removal application on 11 February 2020.

5. In due course the Removal Opponent filed the following declarations as evidence in support and evidence in reply:

   ·Declaration of Brian Baldwin (Managing Director of Removal Opponent) made on 20 April 2020 with Exhibits 1 to 6 (‘Baldwin 1’); and

   ·Declaration of Brian Baldwin made on 28 September 2020 (‘Baldwin 2’).

6. The Removal Applicant filed the following declaration as evidence in answer:

   ·Declaration of Catherine Moore-Gordon (Financial Director of Removal Applicant) made on 31 July 2020 with Exhibits CAMG-001 to CAMG-007 (‘Moore-Gordon Declaration’).

7. After the period for filing evidence ended, the Removal Applicant requested a hearing by way of written submissions. The Removal Applicant filed written submissions. The Removal Opponent elected not to file written submissions.

   The relevant statutory provisions

8. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Section 92(4)(b) provides:

   (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.

9. I note that a removal 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] I confirm that the filing date of the application for the Trade Mark predates the removal application by more than five years.

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

10. In this matter, the Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in Australia in relation to the Registered Goods at any time in the three-year period ending on 26 July 2019 (‘Relevant Period’).

11. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting the allegation made under s 92(4)(b). The relevant standard of proof is the balance of probabilities.[2] The Removal Opponent can rebut the allegation by establishing that:

    ·it used the Trade Mark ‘as a trade mark’ in Australia during the Relevant Period in relation to the Registered Goods;[3] or

    ·it did not use the Trade Mark because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period.[4]

    [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

    [3] The Act, s 100(3)(a).

    [4] Ibid, s 100(3)(c).

12. In accordance with s 101 of the Act, if the requisite use is not established I may decide to remove the Trade Mark from the register in respect of any, or all, of the goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

    Evidence

    Removal Opponent’s evidence

13. Mr. Baldwin declares that the Trade Mark has been used in the course of trade since April 2006. Furthermore, he declares:

    Pure Beginnings Mark has been used in good faith and continues to be used on products sold under the mark person to person, from registration to the current day.

    …

    In March 2016 we renewed the mark in Class 3. We would not have gone to the trouble and expense of renewing if we had no intention of continuing to use the mark. During this period [Relevant Period], we actively used the mark Pure Beginnings in good faith as a product that was sold in Australia and also available in Australia for export.

14. The exhibits to Baldwin 1 consist of the following:

    ·Exhibit 1 – a page from an undated Amway Catalogue advertising the following products: Pure Beginnings Shampoo & Body Wash; Pure Beginnings Cornstarch Powder; Pure Beginnings Baby Lotion; Pure Beginnings Massage Oil; Pure Beginnings Nappy Rash Cream; Pure Beginnings Massage Cream; Pure Beginnings Nipple Cream; Pure Beginnings Starter Kit (‘Pure Beginnings Products’).

    ·Exhibit 2 – an undated pamphlet containing the features and benefits of the Pure Beginnings Products including retail and wholesale pricing.

    ·Exhibit 3 – an undated photograph, taken at what appears to be a trade show where the Pure Beginnings Products are on display. The advertising banners and product displays visible in the photograph are not in English, they appear to be in Korean.    

    ·Exhibit 4 – a document certifying that the Opponent is licensed by the Australian Made Campaign to use the Australian Made, Australian Grown logo on the ‘Pure Beginnings Range’. The licence expiry date is 30 April 2021.

    ·Exhibit 5 – an extract from the Australian Trade Mark Search system showing the details of the Trade Mark.

    ·Exhibit 6 – a copy of a presentation made at the Australian Industry Group Touch & Taste Product Showcase in Queensland. The presentation is dated 4 April 2018, contains the contact details of the Opponent, and a photograph of a product with the following label: Pure Beginnings Moisturising Baby Lotion. In Baldwin 2, the following is declared in relation to Exhibit 6:

    We presented Pure Beginnings to distributors at the Australian Industry Group Touch and Taste Product Showcase 4 April 2018 held [by] Australian Industry Group and Austrade. And aside from general trade show visitor discussions we made the specific presentation provided in Exhibit 6 to the following companies: Tigas Pharma (Malaysia), TK Maxx (NSW), Chempro Chemists (QLD).

    Removal Applicant’s evidence

15. The Moore-Gordon Declaration includes statements in the nature of submissions, rather than evidence. Such statements will be treated as submissions for the purpose of this decision.

16. Prior to filing the removal application, the Removal Applicant undertook an investigation into the use of the Trade Mark by the Removal Opponent. The declarant states that this investigation did not identify any use of the Trade Mark including on the website ‘ (‘Removal Opponent’s website’). An extract of the investigation report, dated 30 April 2018, forms Exhibit CAMG-002 to the Moore-Gordon Declaration.

17. It is also declared that the Removal Applicant undertook a review of the Removal Opponent’s Facebook account and could not find any reference to Pure Beginnings Products. Exhibit CAMG-006 consists of extracts from the Removal Opponent’s Facebook account from 6 May 2018, 16 May 2018 and 29 August 2018. Each of these relate to a product range referred to in the posts as AQI Baby Products, which is a different product line to the Pure Beginnings Products.  

18. Exhibit CAMG-007 consists of extracts of the Removal Opponent’s website sourced from a web archiving service. The extracts provide a snapshot of the full range of baby products available to purchase via the Removal Opponent’s website on 17 October 2016, 16 February 2017, 8 August 2017, 27 October 2017 and 19 July 2019. The Pure Beginnings Products are not shown in these extracts.

    Discussion

19. As this is a removal action, it is crucial that the Removal Opponent demonstrates that it used the Trade Mark in Australia in relation to the Registered Goods in the Relevant Period. Alternatively, the Removal Opponent must demonstrate that there was an obstacle to use of the Trade Mark during the Relevant Period. 

    Was the Trade Mark used during the Relevant Period?

20. Much of the evidence put forward by the Removal Opponent is not sufficient to rebut the allegation of non-use. Bald statements such as the Trade Mark has been used from registration until the current day, are not of themselves sufficient to establish use within the Relevant Period. Similarly, registration of the Trade Mark, or renewal of registration, does not demonstrate use (Exhibit 5 to Baldwin 1). Furthermore, examples of use which are undated or dated outside of the Relevant Period (Exhibits 1 – 4 to Baldwin 1) are also of little assistance to the Removal Opponent.

21. As detailed in [14] of this decision, Exhibit 6 to Baldwin 1 consists of a copy of a presentation given by the Opponent at a trade showcase in Queensland. The presentation shows the Trade Mark being used on baby lotion, it is dated within the Relevant Period, and the presentation was made in Australia; all of which are in the Removal Opponent’s favour in rebutting the allegation of non-use in respect of a subset of the Registered Goods.

22. The Removal Applicant has two main criticisms of Exhibit 6. Firstly, the Removal Applicant questions its authenticity, seemingly alleging that it is likely that the AQI Baby Products was the range of products discussed at the trade show because those were the products featured on the Removal Opponent’s website and Facebook page around that time. It may well be true that around April 2018 the Removal Opponent’s primary line was AQI Baby Products. However, that does not mean that use of the Trade Mark at the trade show is fictious or contrived. It is not uncommon for businesses to have multiple product lines with different branding and promotional strategies. Whilst promotion via the internet and social media are popular marketing strategies, there is no requirement that a trade mark must be used on those platforms to rebut an allegation of non-use. Additionally, in this particular matter the Removal Opponent has declared that its Pure Beginnings Range has been sold ‘person to person since inception and the use of the Trade Mark is not quantifiable by a simple internet search’.  

23. The Removal Applicant also submits that ‘mere production of an image of the [Trade] Mark displayed on a product is not sufficient to prove beyond a reasonable doubt that the [Trade] Mark has been used’. As explained at [11] of this decision, the requisite standard of proof in this matter is on the balance of probabilities not beyond a reasonable doubt. The Removal Applicant’s characterisation of Exhibit 6 is, in my opinion, overly simplistic. The Removal Opponent has not merely provided an image of the Trade Mark displayed on a product. Rather, the Removal Opponent has provided a copy of a presentation containing the Trade Mark and declared specific details about that presentation including: the date and location of the presentation; and the names of three companies who the presentation was made to.

24. Furthermore, use of a trade mark encompasses a ‘wider range of commercial transactions than the actual sale and purchase’ of goods.[5] A commercial dealing, such as a presentation at a trade show to solicit trade in the goods under, or by reference to, the trade mark is sufficient.

    [5]Oakley Inc v Franchise China Pty Ltd [2003] FCA 105 [29] (Drummond J).

25. Considering all the above, I am satisfied that Exhibit 6 to Baldwin 1 is sufficient to rebut the allegation of non-use in relation to a subset of the Registered Goods, namely baby lotion.

    Was there an obstacle to use in relation to the Remainder of the Registered Goods?

26. The Removal Opponent has not submitted that there was an obstacle to use of the Trade Mark during the Relevant Period. Nor does any of the information before me suggest that an obstacle prevented use of the Trade Mark in relation to the remainder of the Registered Goods during the Relevant Period.

    Is it reasonable not to remove the Trade Mark?

27. Section 101(3) of the Act provides:

    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.

28. In this matter, the question is whether it is reasonable not to remove the Trade Mark in respect of the remainder of the Registered Goods, even though the Removal Opponent did not establish that is had used the Trade Mark in relation to those goods.[6]

    [6] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28] (Jacobson, Yates and Katzmann JJ).

29. The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark in respect of the remainder of the Registered Goods.[7]

    [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273] (Yates J).

30. Neither party made submissions in respect of the discretion. Nor is there any evidence before me to suggest that the discretion should be exercised in the Removal Opponent’s favour. In the absence of submissions or persuasive evidence, I am not satisfied that it is reasonable to exercise the Registrar’s discretion in favour of the Removal Opponent.

    Decision

31. The Removal Opponent has rebutted the allegation of non-use in respect of a subset of the Registered Goods, namely baby lotion. The allegation has not been rebutted in relation to any other goods.

32. Accordingly, I direct that one month from the date of this decision the specification of goods be amended to:

    Class 3: Baby lotion

    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

33. Both parties have requested costs. However as both parties have had a degree of success each party should bear their own costs.

    Katrina Brown
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    11 October 2021