Opposition by Clive Wilson to an application under regulation 17A.48C of the Trade Marks Act 1995 (Cth) by Richard Gower for cessation of protection of International Registration Number 812242 (Australian...

[2021] ATMO 127

TRADE MARKS ACT 1995

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

Re:Opposition by Clive Wilson to an application under regulation 17A.48C of the Trade Marks Act 1995 (Cth) by Richard Gower for cessation of protection of International Registration Number 812242 (Australian designation 977870) (Classes 9 and 41) – RACEY - in the name of Clive Duncan Wilson.

Delegate:	Blake Knowles
Representation:	Opponent: Self-represented.   Applicant: Self-represented.
Decision:	2021 ATMO 127 Trade Marks Act 1995 (Cth) – application for cessation of protection under section 17A.48C – no evidence of use of trade mark or relevant obstacles to use during relevant period – discretion not exercised – protection of trade mark to cease.

Background

1. Richard Gower (‘Removal Applicant’) on 26 February 2020 filed an application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] (‘Removal Application’) for the complete cessation of protection of the protected international trade mark ‘RACEY’ (‘Trade Mark’) in the name of Clive Duncan Wilson (‘Removal Opponent’). The Trade Mark has been protected in Australia since 23 May 2003 for the following goods and services:

   Class 9: CD’s; CD covers; cassettes; cassette covers

   Class 41: Entertainment services; entertainment provided by musicians

   (‘Goods & Services’)

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995(the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’), respectively.

2. The Removal Opponent, after seeking and being granted an extension of time to the initial deadline to oppose of 12 May 2020, filed a notice of intention to oppose the Removal Application and a statement of grounds and particulars (‘SGP’) on 15 July 2020. The Removal Applicant filed a notice of intention to defend the Removal Application on 10 August 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 17A.48R. The Removal Opponent filed Evidence in Support (‘EIS’) on 11 February 2021. The Removal Applicant filed Evidence in Answer (‘EIA’) on 9 June 2021. The Removal Opponent filed Evidence in Reply (‘EIR’) on 1 September 2021.   

4. At the conclusion of the evidence stages of the opposition, the parties were given an opportunity to request an oral hearing or file written submissions. Neither party requested a hearing or elected to file written submissions. The Removal Applicant requested that the matter be decided based on the material filed and paid the relevant fee.

5. As the Removal Application was filed on 26 February 2020, for the purposes of deciding the opposition, the relevant period is the three-year period ending on 26 January 2020 (‘Relevant Period’).

   Evidence

6. The following evidence was filed:

   EIS

   Declaration of Clive Wilson, Removal Opponent and Holder, made on 9 February 2021 with seven annexures.

   EIA

   Declaration of Richard Gower, Removal Applicant, made on 31 March 2021 with thirteen annexures.

   EIR

   Second declaration of Clive Wilson, made on 31 August 2021 with ten annexures.

7. In summary, the evidence discloses that the Removal Application is part of a broader dispute between the parties regarding the ownership and use of the Trade Mark as a band name. Both the Removal Applicant and the Removal Opponent, together with Mr Philip Fursdon and Mr Peter Miller, were members of the United Kingdom musical group formed under the Trade Mark in the 1970s.

   EIS & EIR

8. The Removal Opponent states that the original band Racey split up in the mid-1980s, but during its initial run achieved some success, including three number one singles and a number one album in Australia and New Zealand.[2] The Removal Opponent explains that after the breakup, three of the original members, including himself, reformed Racey in the early 1990s (‘Reformed Band’). The evidence indicates that the Reformed Band was primarily active in the UK and Europe. One of the members, Mr Miller, subsequently passed away, leaving the Removal Opponent and Mr Fursdon as the remaining original members of the Reformed Band. The Removal Applicant was not asked, nor did he ask, to re-join the Reformed Band. The Removal Opponent states that the Removal Applicant instead chose to perform as a solo act under his personal name or under stage names such as Little Richie or Little Rock Star, and later as Richard Gower formerly of Racey.

   [2] I note from Wikipedia that the number one singles included “Lay Your Love on Me” and “Some Girls”.

9. The Removal Opponent states that the Reformed Band made several attempts to tour Australia and New Zealand, and that in 2016 a tour was booked for 2017 by an Australian promoter, W.L. Trout Promotions Pty Ltd (‘W.L. Trout’). Annexed to the Removal Opponent’s first declaration is a letter printed on W.L Trout letterhead, signed by Warren Trout on behalf of W.L. Trout and Mr Fursdon on behalf of the Reformed Band (‘2016 Agreement’). The 2016 Agreement is between the Reformed Band (with the Removal Applicant being designated as the ‘nominee’) and W.L. Trout and requires that the Reformed Band perform twelve shows in Australia between 9 March 2017 and 26 March 2017. The 2016 Agreement states that the ‘artiste s personal’ will be the Removal Opponent, Mr Fursdon, and two others, Mr Mark Kirby and Mr Ian Hewitt. The 2016 Agreement also contains provisions on remuneration, allowances, visas, union fees, and medical cover for the Reformed Band.  The 2016 Agreement additionally deals with the split of revenue from the anticipated sale of merchandise, and contributions towards the cost of producing CDs. The Removal Opponent states that the 2017 tour did not proceed due to claims made by the Removal Applicant which caused W.L. Trout to pull out.

10. The Removal Opponent states that later in 2017, discussions took place with a Sydney based agent, Roy Ortuso, regarding the Reformed Band being part of a tour called ‘70’s Hit Makers’. However, the Removal Opponent states that the Removal Applicant instead negotiated his way onto that particular tour. The Removal Opponent states that an Australian solicitor was engaged, and relying on the Trade Mark, the Reformed Band forced the Removal Applicant to refer to himself as ‘Richard Gower, formerly lead singer of Racey’ for the purposes of the tour.

11. The Removal Opponent states that before Covid restrictions, the Reformed Band were still performing in the UK and Europe. Further, the Removal Opponent attaches a letter dated 25 September 2020 from Ms Amanda Gaertner of ATT Touring and Events / Star Entertainment Pty Ltd. Ms Gaertner states that she was the tour promoter in Australia for the Removal Opponent and the Reformed Band. Ms Gaertner states that at the time of writing her letter, she was about to email Australian agents regarding a possible tour by the Reformed Band in November/December 2021. Ms Gaertner opines that the Removal Opponent is the owner of the Trade Mark and that use of the Trade Mark by the Removal Applicant (except as ‘Richard Gower formerly of Racey’) would be a misrepresentation and cause problems.

12. The Removal Opponent also annexes a further supporting letter from Mr Fursdon, who states that since 1990, the Reformed Band has toured Europe and the UK and released albums available on iTunes, Amazon, Spotify, and various other platforms. Mr Fursdon states that several promoters have approached the Reformed Band to tour Australia and New Zealand, but ‘took the view to not getting involved with the situation Mr Gower had put everyone in.’ Mr Fursdon also states that ‘The band name RACEY is a performance group and not a sole person/performer and this is where we have always tried to preserve the RACEY name which is our trade mark.’

13. The Removal Opponent in the EIR confirms that the Reformed Band has never played in Australia. The Removal Opponent states that the sole reason for this is that the Removal Applicant ruined promoter’s confidence and enthusiasm. The Removal Opponent refers to performances by the Removal Applicant in around 1998 as demonstrating the importance of the Trade Mark. The Removal Opponent also refers to the ongoing use of the Trade Mark by the Reformed Band in the UK and Europe, where the Removal Opponent states he also owns a corresponding trade mark. The Removal Opponent refers to a recent world-wide release of a single “It’s a Glorious Day” by the Reformed Band and opines that the Trade Mark will be critical in protecting the authenticity of the band. Annexed to the declaration are the following supporting documents:

    ·A letter dated 8 October 1998 from Australian Frontier Touring Company Pty Ltd to the Removal Applicant referring to a possible Australian tour by the Reformed Band.

    ·Facsimiles from 2002 which relate to a dispute with the Removal Applicant regarding use of the Trade Mark in Germany.

    ·An email dated 25 April 2002 from Mr James Rubinstein to the Removal Opponent, which encloses a draft fax to be sent to a third party on behalf of the Removal Opponent, Mr Fursdon, and Mr Miller.  The draft letter indicates that the name Racey is owned by the partnership that formed the original band, and the name could only be used with consent of a simple majority of the original partners.   

    ·An email dated 28 July 2008 from Showcase Entertainment Group Ltd to the Removal Opponent regarding a potential New Zealand and Australian Tour. The email indicates difficulties finding enough suitable venues in Australia to justify a tour. It also mentions that shows performed by the Removal Applicant attracted small crowds.

    ·An email dated 27 April 2009 from another agent (which is stated to be confidential) to the Removal Opponent expressing concern that another performer is using the Trade Mark and doing an unprofessional job.

    ·Email correspondence from 2012/2013 between the Removal Opponent and Roy Ortuso, a Sydney based agent, regarding a possible tour.

    ·An email dated 30 October 2016 sent to the Removal Opponent by a person holding themselves out to be a barrister on behalf of the Removal Applicant regarding proposed litigation to stop the tour subject of the 2016 Agreement.

    ·An email advice of 10 May 2017 from Australian lawyers to the Removal Opponent regarding the dispute over the proposed 2017 tour.  

    ·A list of ‘confirmed and contracted’ Australian tour dates in March for the cancelled 2017 tour.

    EIA

14. The Removal Applicant declares that he has ‘unbroken use of the Trade Mark in Australia from 1979 to 2020’. The Removal Applicant states that the Removal Opponent has never worked or performed in Australia, and that his services from the original band were terminated in 1979.

15. The Removal Applicant opines that the Trade Mark was protected in Australia by the Removal Opponent in bad faith, in the knowledge that the Removal Applicant had been using the Trade Mark including appearing on television, touring worldwide, and releasing records. Annexed to the declaration are various files which are not necessary to discuss in detail, as they have no bearing on the decision.

    Grounds, onus and standard

16. The Removal Application nominates grounds for removal under s 92(4)(b), which is reproduced below:

    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:

    (a)…

    (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.

17. The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[3] The Removal Opponent relies on use of the Trade Mark for the rebuttal.[4]

    [3] Trade Marks Act 1995 (Cth) s 100(1)(c).

    [4] Ibid s 100(3)(a).

18. The Removal Opponent also refers to a dispute with the Removal Applicant which he claims prevented use of the Trade Mark in Australia. While not specifically particularised in the SGP, I can consider whether this dispute constituted an obstacle to use under s 100(3)(c) of the Act.

19. Further, I also have a discretion to allow the Trade Mark to remain protected even if there has been no use of the Trade Mark during the Relevant Period.

20. Findings of fact in this decision are based on the civil standard of the balance of probabilities.

21. Both the Removal Opponent and the Removal Applicant each appear to have been self-represented in these proceedings. As neither party may have had the benefit of legal advice, I consider it is appropriate to mention at this stage that my decision is not a determination on ownership of the Trade Mark in Australia or elsewhere. For the most part, the history of the band, the circumstances behind the filing of the Trade Mark, and the various disputes between the parties have little direct relevance to these non-use proceedings. My only role is to determine whether the evidence establishes, on the balance of probabilities, that the Trade Mark was used in Australia during the Relevant Period by or under the authorisation of the Removal Opponent, and if not, whether there are other relevant reasons that I should not remove the Trade Mark from the Register.  

    Discussion

    Use of the Trade Mark during the Relevant Period

22. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user, in good faith, on or in relation to the Goods & Services during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Goods & Services, I must then decide whether to exercise discretion to allow the Trade Mark to remain protected for any of the Goods & Services for which use during the Relevant Period has not been established.

23. The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to or in relation to those goods or services.[5]

    [5] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

24. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[6] A trade mark may be used in relation to goods where it is included on an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[7] Use of a trade mark in relation to services includes use in physical or other relation to the services.[8] The use of a trade mark for goods or services may be direct use by the owner, or authorised use by an authorised user[9]. Authorised use is considered use by the owner of the trade mark only to the extent that such use is under the control of the owner.[10]

    [6] Trade Marks Act 1995 (Cth) ss 7(4), 92(4)(b).

    [7] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

    [8] Trade Marks Act 1995 (Cth) s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

    [9] Trade Marks Act 1995 (Cth) s 7(3).

    [10] Ibid s 8.

25. The EIS does not demonstrate any use of the Trade Mark by the Removal Opponent in Australia during the Relevant Period in relation to any of the Goods & Services. While the 2016 Agreement anticipated that the Removal Opponent and his fellow band members would perform in Australia during March 2017 (which was within the Relevant Period), those shows did not take place and there is no evidence of any promotional activity. The evidence regarding the 2017 tour consists only of preliminary correspondence sent outside of the Relevant Period. Further, the Removal Opponent’s statements relating to the proposal in late 2017 for the Reformed Band to participate in the ‘70’s Hit Makers’ show in 2018 are not supported by any evidence of use of the Trade Mark in Australia by the Removal Opponent. The only evidence containing the Trade Mark are posters which refer to the Removal Applicant.

26. The remainder of the EIS relevant to Australia indicates a few sporadic but ultimately fruitless attempts over a fifteen-year period (1998-2013) by the Reformed Band to tour Australia. The tours appear to have never advanced beyond preliminary discussions.

27. Further, even if the Trade Mark had been used in Australia during the Relevant Period, it is not clear from the EIS that any such use would have been solely by or under the authorisation of the Removal Opponent, or whether the use would have instead been attributable to a partnership of the Reformed Band. The 2016 Agreement indicates the Removal Opponent is a nominee for the Reformed Band. Further, the letter of Mr Fursdon indicates that ‘the band name RACEY is a performance group and not a sole person/performer and this is where we have always tried to preserve the RACEY name which is our trade mark’. This statement implies the trade mark was used (outside Australia) jointly by the Reformed Band members, and not solely by or under the authorisation of the Removal Opponent.

28. In addition to the lack of evidence regarding performances by the Reformed Band in Australia, I note that there is no evidence of any sale of CDs or music in any other form (such as sales via downloadable files or availability on streaming services) before, during, or after the Relevant Period.

29. For the reasons given above, I am not satisfied that the Removal Opponent has used the Trade Mark in Australia during the Relevant Period in relation to the Goods & Services.

30. I must now consider whether there were obstacles to use during the Relevant Period, or whether it is otherwise appropriate to exercise my discretion not to remove the Trade Mark.   

    Circumstances that were an obstacle to use

31. Section 100(3)(c) states that the Removal Opponent will have rebutted the allegation of non-use during the Relevant Period if:

    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 use of the trade mark during that period.

32. Circumstances that may constitute an obstacle to the use of a trade mark within the meaning of s 100(3)(c) of the Act were considered by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds (‘Woolly Bull’). Drummond J stated that:

    In my opinion, circumstances 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.

    Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.[11]

    [11] Woolly Bull Enterprises Pty Ltd and Another v Reynolds [2001] FCA 261, [55]-[56] (Drummond J).

1. The Removal Opponent blames the Removal Applicant for interfering with attempts by the Reformed Band to tour Australia. However, the correspondence regarding the proposed 2008 tour indicates there was a lack of interest from potential venues, and the correspondence regarding the proposed 2013 tour indicates that the tour would not have involved many shows or have been particularly lucrative. As such, while the Removal Applicant’s actions may have contributed to the decision by the Removal Opponent not to tour in 2017, it appears that the decisions not to proceed with earlier tours were probably driven more by economic factors. 

2. In any event, the circumstances which the Opponent considers prevented him from using the Trade Mark during the Relevant Period are of a personal character (being a legal dispute with the Removal Applicant), and not of a ‘trade character’ as described in Woolly Bull. The Removal Opponent has therefore failed to establish that there was a relevant obstacle to use of the Trade Mark during the Relevant Period.

   Discretion

3. The discretion available to the Registrar is ‘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’.[12] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[13] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[14]

   [12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

   [13] Ibid [69].

   [14] [2002] FSR 51 (Ch) 790, [19].

4. 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’, 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. 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.[15]

   [15] [2008] FCA 934, [210] (citations omitted) (‘Gallo’).

5. The Removal Opponent bears the onus of establishing that the discretion should be exercised in their favour: it is not for the Removal Applicant to establish that it should not.[16]

   [16] Austin Nichols & Co Inc v Lodestar Anstalt [2012] (n 13) [44].

6. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

   ·     whether there has been abandonment of the trade mark;

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

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

   ·     whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[17]

   [17] ‘Gallo’ (n 16) [202]–[203].

7. I am satisfied that the Removal Opponent, in the subjective sense, has not abandoned the Trade Mark, although objectively there is doubt over whether it is in fact the Removal Opponent who is using the Trade Mark in the UK and Europe, or whether such use is by a partnership made up of members of the Reformed Band. Regardless of the fact that the Trade Mark is still being used overseas, the evidence does not establish that the Trade Mark has a residual reputation in Australia. As mentioned above, the evidence indicates that there have only been sporadic attempts to tour Australia, and one of those attempts in 2008 failed to get off the ground due to a lack of interest from potential venues. Further, the evidence does not indicate any use of the Trade Mark in Australia following the end of the Relevant Period. While Covid undoubtedly would have been an obstacle to any attempt by the Removal Opponent to tour Australia in the last two years, the evidence indicates that even in pre-Covid times, any tour to Australia was a marginal economic venture at best. At its highest, the evidence infers that there is likely a small group of consumers in Australia who recall the Trade Mark and perhaps associate it with the Reformed Band. There is also likely a larger group of consumers who may recall the band’s number one songs but without necessarily recalling their origin. However, neither of these factors are strong reasons for exercising discretion.

8. I also do not think the actions of the Removal Applicant are particularly relevant in deciding the exercise of discretion. Given the relationship between the parties, there appears to be a genuine dispute over ownership of the Trade Mark in Australia and elsewhere.

9. On balance, I am not satisfied that there is sufficient justification to exercise the discretion in the Removal Opponent’s favour, and I therefore decline to exercise discretion to allow the Trade Mark to remain protected in Australia.

   Decision  

10. The Removal Opponent has not established use of the Trade Mark in Australia in relation to the Goods & Services during the Relevant Period, or that there were relevant obstacles to use, or that it is appropriate to exercise discretion to allow the Trade Mark to remain protected. As such, protection of the Trade Mark should cease in relation to the Goods & Services.  

11. Given it is the right of both parties to appeal this decision to the courts, the cessation of protection shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, protection of the Trade Mark shall not cease until the appeal has either been discontinued or the Removal Application has been otherwise dealt with as the Court sees fit.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    26 October 2021