Opposition by David Burmingham to an application made by Thomas Charles Reynolds, under section 92 of the

[1999] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by David Burmingham to an application made by Thomas Charles Reynolds, under section 92 of the Trade Marks Act 1995, for removal from the Register, on the grounds of non-use, of trade mark registration number 582424 owned by Woolly Bull Enterprises Pty Ltd.

Background

An application, under s.92 of the Trade Marks Act 1995, for the removal from the Register of registration number 582424, owned by Woolly Bull Enterprises Pty Ltd (WBE), was filed by Thomas Charles Reynolds (the applicant) on 17 September 1998.  That application was accompanied by two declarations - although only one is required by reg.9.1(b) - which set out the findings of inquiries made by the applicant, in reliance on which the application was made.  The trade mark in question is shown below.

Accordingly, the relevant three year period of alleged non-use, for the purposes of s.92(4)(b), was 17 August 1995 to 17 August 1998. A notice of opposition to that application was filed on 14 January 1999 by David Burmingham (the opponent) under s.96 of the Act. Following the grant of an extension of time to do so, the opponent served evidence in support of his opposition on 14 May 1999. The applicant advised the Registrar, on 13 August 1999, that it did not intend to serve evidence in answer in respect of the matter.

The applicant requested a hearing in the matter on 14 September 1999.  On 11 October 1999, formal hearing notices were sent to both the opponent and the applicant, at their respective addresses for service of documents, advising them of the time and place appointed for a hearing in the matter.  As stated in those notices, the matter was set down for hearing in Canberra on 26 October 1999.  I was delegated by the Registrar to hear and decide the case.

The applicant's attorneys, Wray & Associates of Perth, Western Australia, advised on 18 October 1999 that that firm would present the applicant's case at the hearing by telephone.  In a letter dated 21 October 1999 - but sent to the Trade Marks Office by facsimile at 5.19pm on Friday, 22 October 1999, Mr Burmingham requested that the Registrar either cancel the hearing, not allow the applicant to make submissions at the hearing, or allow Mr Burmingham to make further representations in relation to the matter and submit evidence in reply, at no fee to himself.  I replied to him in a letter dated Monday, 25 October 1999, which was also sent to him by facsimile at 1.15pm on that day, advising him that none of these options was possible in relation to the present matter.  I told him that the Registrar had put the matter down for hearing, at the request of the applicant, in accordance with reg.5(14)(2).  I said further that both parties had a right, under the regulations, to appear and make submissions at a hearing on a matter to be decided by the Registrar, providing that they had paid the fee for attendance at that hearing, as laid down in schedule 9 to the regulations.  I said that the Registrar may decide to defer a hearing but this may only be done with the written consent of both parties to a dispute, and that, unless this was forthcoming, then the hearing would go ahead as advised.

Mr Burmingham rang the Hearings Section at approximately 5.40pm on 25 October 1999 and spoke to Hearing Officer Williams seeking more information on the matter.  Mr Williams sent Mr Burmingham a facsimile, at 6.10pm on that day, giving him detailed information with respect to the hearings process, the telephone number to call at 10am on the following day if he wished to appear in that manner, and the fee to be paid under the regulations.

I believe that Mr Burmingham was given sufficient notice of the hearing, in accordance with the regulations, and had ample time to obtain legal, or other representation, or support.  An informal hearing notice was dispatched to both parties on 22 September, warning them of the hearing and the formal notice, as I have previously said, on 11 October 1999. Mr Burmingham's request to cancel the hearing was not received in the Hearing Section until after normal business hours on Friday 22 October 1999 - allowing only one working day before the matter was set down to be heard by the Registrar.  It is the Registrar's practice that each party to a dispute should be treated equally and that both sides should be given adequate notice of a hearing, or of any changes to its timing.  As I advised Mr Burmingham in my letter of 25 October 1999, none of the things he requested - including the cancellation of the hearing, or the exclusion of the other side from the process - were possible.  Any delays caused by one side in a dispute, at the eleventh hour, could result in extra costs to a party, especially where legal representation at a hearing had been arranged for some time in advance.

At the appointed time, both parties called respective telephone numbers in the hearing room where I was to conduct the hearing. Mr Martin O'Sullivan, of Wray & Associates, called to appear on behalf of the removal applicant, while Mr Burmingham also rang to make submissions on his own behalf. At that time, I explained to both parties that I would conduct the hearing in the following way. I said that I would allow both parties to make their submissions uninterrupted and that I would then give both participants another opportunity to make comment on any points raised by the other speaker. I believe that such a course allows both parties equal opportunity to make their submissions and is the fairest method, especially where a private applicant is presenting his or her own case, for all relevant matters to be placed before the delegate. I said that I would allow Mr Burmingham to make his submissions first, then Mr O'Sullivan to make his. I proceeded in this fashion, because s.100 of the Trade Marks Act 1995 places an onus on the opponent to removal (here Mr Burmingham) to establish use of his trade mark.  The foregoing procedure is the normal method by which delegates of the Registrar conduct trade mark opposition hearings, where it is usual for an opponent to present its case first.  This is consistent with reg.21.15(10), which says that the Registrar may give a direction that is reasonably necessary for the conduct of a hearing.

Mr Burmingham's initial submissions were, in my opinion, reasonably clear, coherent and well expressed - although he did appear somewhat nervous.  These submissions took approximately 25 to 30 minutes.  Following Mr O'Sullivan's arguments on behalf of the applicant, which took around 40 minutes, I asked Mr Burmingham if he wished to make any comments upon them.  At this point, he became obviously distressed and could not continue talking without some difficulty.  I thereupon adjourned proceedings for 30 minutes to give Mr Burmingham the opportunity to recover.  When the parties rang back, I invited Mr Burmingham to continue with his submissions.  He recommenced his comments upon Mr O'Sullivan's submissions in much the same manner as in his opening submissions, with no obvious signs of discomfort.  I am of the opinion that he had regained his composure and his ability to formulate argument.  His submissions were presented in a clear and assured fashion, and he made quite fulsome comments on points which had been raised by Mr O'Sullivan, referring to various sections of the Act and regulations which, he contended, supported his case.  This he did for approximately 40 minutes.  I then afforded the same opportunity to Mr O'Sullivan.  His comments were briefer but he did make a point which Mr Burmingham quite strenuously disagreed with.  When Mr O'Sullivan finished his summation, I allowed Mr Burmingham to submit argument on this point.  At the close of proceedings, I thanked both parties for their submissions and announced that I would reserve my decision and issue it in due course.

I am of the opinion that, at the hearing, both sides had equal opportunity to present their case.  Each speaker made extensive submissions and then were allowed to comment on the other side's arguments.  As I have said, Mr Burmingham requested, and was allowed, time at the end to make even further submissions on a matter raised by Mr O'Sullivan.  Mr Burmingham's closing comments were then related to seeking costs in the matter - should he be successful.  At the conclusion of the hearing, he did not indicate to me that there were any other relevant matters which he wished to raise.  I believe that both sides were afforded procedural fairness at the hearing and that neither side was disadvantaged by not being able to raise all relevant matters.

The evidence
There were two declarations which accompanied the application for removal - although only one is required to satisfy the requirements of reg 9.1.  The first of these was made by Thomas Reynolds, the sole trustee of the TCR Family Trust, trading as Bootleg Brewery.  Mr Reynolds declares that he had personally conducted investigations to determine whether the subject trade mark had been used in Australia and he lists various of these.  This research comprised inquiries made of Alan Richards, an historian and database compiler at the Victorian Beer Label Collectors Society; Martin Swan, Chief Brewer at Gold Coast Brewery; Henry Powers, Chief Brewer at Geelong Brewing company; and Richard Deery, a proprietor of the Storey Bridge Hotel in Brisbane and organiser of the Australian National Beer Awards.  All of these people allegedly had no knowledge of the opponent or the subject trade mark.  Mr Reynolds said that he concluded from all of this that there was a strong possibility that the mark had not been used.

Next is a declaration by Peytoo Khoo, a technical assistant employed by the applicant's attorney, who also says that she conducted various investigations into the use, or otherwise, of the subject mark in Australia in relation to any goods or services.  She says that she had had conducted on-line searches of the computer records of the Australian Securities and Investments Commission.  These were for the company name Woolly Bull Enterprises, and the business names RAGING BULL BITTER and Woolly Bull Enterprises.  She also says that she conducted, or had conducted, searches of various issues of such publications as the White Pages and Yellow Pages telephone directories, Trade Names Index of Australia, Business Who's Who Australian Buying Reference, Business Who's Who Products and Trade Names Guide, and Telecom National Business Directory, with respect to the business name, Woolly Bull Enterprises and also the subject mark.  She also says that there are no relevant entries in relation to these variables on several Internet data-bases.  She attaches, to her declaration, copies of the results of her searches.

The evidence, in support of the opposition to removal, comprised a statutory declaration by David Burmingham, who was later revealed at the hearing to be a director of WBE.  Mr Burmingham declares that he had examined the declarations accompanying the application for removal of the subject mark and found them to contain statements and contentions which were "materially incorrect, or even lies".  He provides information on a cartoon-like character called "Woolsy - The Original Raging Bull ™" (Woolsy), who is the mascot used in conjunction with several products, such as beer, soft drink, clothing, recordings and other merchandise "containing" (presumably marketed under) the name, RAGING BULL.  Mr Burmingham annexes examples of the use of the Woolsy character in the promotion of several projects.

Mr Burmingham takes issue, in his declaration, with numerous statements in Mr Reynolds' declaration, including the name of the chief brewer of the Geelong Brewing Company and also to remarks attributed to that person by Mr Reynolds. Mr Burmingham says that he entered into an agreement with that person - referred to as Henry Powers by Mr Reynolds and Henry Peeters by Mr Burmingham - in October 1992 with respect to the manufacture of RAGING BULL beer, and he discusses and annexes a beer label, bearing the words RAGING BULL and the Woolsy character, which, he says, has been in existence since the agreement was made, together with a copy of a letter from Mr Peeters.  He says that this beer was launched in 1992 at a venue called "The Bullring" and was distributed extensively throughout Victoria.  He includes an undated photograph said to be taken at that launch.  He says that inquiries had been made into entering the RAGING BULL beer in the Australian National Beer Awards, annexing a facsimile which, he says, demonstrates this.  He says further that the RAGING BULL beer was later withdrawn from the market for alcohol level adjustments but that plans to continue with certain projects had been hindered by his ongoing health problems.

Mr Burmingham disputes further statements made in Mr Reynolds' declaration, including details on the Gold Coast Brewery.  He claims discussions had taken place with Mr James Warner, the Chief Brewer there during 1996 and 1997, in relation to the manufacture of RAGING BULL beer and he annexes a letter which he says confirms this.  He further asserts that he suffered a fall in April 1996 which caused a deterioration in his health, and that this hindered a relaunch of the RAGING BULL beer.  He annexes copies of various reports from doctors and hospitals which he says confirms his illness and injuries.  He disputes claims that negotiations with the Gold Coast Brewery had not taken place, saying that the managers had changed since then and that an annexed letter from the previous manager demonstrated that talks had indeed taken place.

Mr Burmingham says that he has made several attempts to resurrect licensing arrangements for the manufacture of the RAGING BULL drink products and other cross-promotions, but that these had stalled because of his health.  He says that his ill health had prevented the lodging of annual returns by WBE, but that this was being attended to and was irrelevant in any event.  He says that the absence of listings of WBE, or the subject trade mark, in the references searched by the applicant was also not applicable because there was not a requirement for such listings.  He says that the applicant had not opposed the registration of the subject mark, despite him being aware of the application for registration.  Mr Burmingham said that the applicant also knew of the mark's use in relation to the subject goods.  He alleges that the applicant had used and is still using the subject trade mark in relation to his own goods, despite not having a legal right to it, and that he has made false statements in his declaration.  He says that any aural use of the trade mark by WBE equated to use and he annexes a copy of s.7 of the Act which, he alleges, supports this contention.

Mr Burmingham further declares that any non-use of the mark during the relevant period was attributable to his ill-health and that this constituted a circumstance which was an obstacle to the use of the trade mark, as contemplated by s.100(3)(c). He says that any removal of the mark would cause WBE significant grievance and financial loss. He alleges that the present removal application has been made with the ulterior motive of avoiding legal proceedings in relation to unauthorised use and he makes further accusations about the applicant's evidence.

Submissions
I propose to briefly summarise what I believe were the main arguments presented by Mr Burmingham and Mr O'Sullivan, which were relative to the matter being decided here.  I will then discuss the relevant issues and evidence, and finally give my decision with reasons.

In his initial submissions, Mr Burmingham talked about the registered trade mark and the character Woolsy who, he said, was an integral part of the mark and other marks owned by WBE.  He made several allegations regarding the alleged illegality of use of the words RAGING BULL by the applicant and the lack of justification for the present application.  He disputed the veracity of applicant's evidence, saying that the searches which were included in that evidence were incomplete and inaccurate.  He said that an example of this was the alleged inquiry made of the Chief Brewer of the Geelong Brewing who, he said, was Henry Peeters and not Henry Powers, as stated by the applicant, and who had denied that any such contact had taken place.

Mr Burmingham said that the subject mark had been used and was still used in relation to beer and various other products - both applied to the goods and aurally. He referred to s.7(2) of the Act regarding alleged aural use, saying that such use had been made by Woolsy on a recording called RAGING BULL, and through other verbal uses, during the critical period of alleged non-use. He said that it had always been the owner's intention to use and exploit the mark in good faith, and that any periods where the mark had not been in use had been when the RAGING BULL beer had been withdrawn temporarily from sale for adjustments to the alcohol level, or due to his own well-documented illnesses which, he said, constituted a circumstance that was an obstacle to the use of the mark, as contemplated by s.100(3)(c).

Mr O'Sullivan made his initial submissions, saying that the opponent's evidence failed to show any use of the trade mark, as registered, during the relevant period and that Mr Burmingham had thus failed to discharge the onus placed upon him by s.100(1)(c) of the Act. He said that the trade mark at issue comprised several components, including the words RAGING BULL BITTER, WOOLSY - THE ORIGINAL RAGING BULL, and the device of a bull standing on its hind legs and leaning on a stump Meanwhile, the opponent's evidence referred to a different label combination, which had been annexed to Mr Burmingham's declaration, and that any use referred to by the opponent of the registered mark appeared to be a different mark comprising what appeared to be a beer label. He said that, in any case, the only use which had been pointed in the evidence as having taken place, during the period in question, were discussions with the Gold Coast Brewery and some other attempts to resurrect licensing arrangements. He said that this use, referred to in the Burmingham declaration, was of the phrase "RAGING BULL ® beer", the words "RAGING BULL", and the phrase "WOOLSY - The Original Raging Bull". None of these comprised the subject mark, said Mr O'Sullivan, and in any event, any discussions relied upon as constituting use appeared to be preliminary only and no beer seemed to have been actually sold. He said that there had been some instances, in cases before the courts, where it had been held that trade mark use had occurred, in the absence of direct commercial use - such as in New South Wales Dairy Corp v Murray Goulbourn Co-op Co Ltd and Anor. (1989) 14 IPR 26 and Buying Systems (Australia) Pty Ltd v Studio Srl 30 IPR 517. However, all of these had had very specific facts which had included considerable exposure of the subject trade marks. This, he said, was not the case here, where it appeared that any discussions regarding use were not related to the specific mark, which is the subject of this decision. He submitted that the Trade Marks Office, in its own decisions, had previously held that, where there was an absence of clear evidence of which trade mark had been used in any preliminary activities, then it was difficult to designate such as being proper trade mark use - see opposition by Burger Ranch (Pty) Limited to an application to remove trade mark registration number 198312, by Steven Nicolaou dated 3 March 1999 - as yet unreported.

Mr O'Sullivan said that, apart from the fact that the notice of opposition was silent on the issue, there were no grounds for the exercise of the Registrar's discretion to leave the subject mark on the Register because of the opponent's ill health.  He said that the Act placed an onus on an opponent to show conclusively that the circumstances relied upon to explain the non-use of a trade mark were based on special facts and circumstances, or that there was an overriding question of public interest.  This, he said, had not been the case here.  He submitted that the evidence showed that this mark had not been used and that it was in the public interest that the Register accurately reflect the realities of use.  Additionally, he said, the opponent here was not the owner of the mark and it had not been established how his illness had prevented the registered owner from using the mark during the entire three year period of alleged non-use.  He said that, in any case, the opponent's evidence, said to support a case of an illness sufficient to prevent use, was not sufficient to show this.

Mr O'Sullivan concluded his submissions by seeking costs in favour of the applicant.

I then asked Mr Burmingham to make any comments he wished to, based upon Mr O'Sullivan's submissions.  At this point, Mr Burmingham said that his concentration levels had made it difficult to fully grasp what Mr O'Sullivan had said.  Mr Burmingham said that he had become ill and he began to find it difficult to speak.  Because he was having difficulty in putting his words together, I could not readily understand what he was saying.  Accordingly, I said that I would call an adjournment of 30 minutes to allow him to compose himself.  Both parties rang back at the cessation of that period and I invited Mr Burmingham to continue his summing up.  He proceeded to do this in what I considered to be a very competent manner.  He appeared to me to have fully understood the points which Mr O'Sullivan had made because he went on to make quite substantial comments and observations regarding Mr O'Sullivan's argument.  These remarks, in my opinion, often went beyond his brief of commenting on Mr O'Sullivan's submissions in chief.  I decided to allow some latitude here, given the circumstances and also the Registrar's practice of allowing both parties in a dispute the fullest opportunity to present their case.

Mr Burmingham said that the discussions which had taken place between himself and Carlton & United Breweries (Carlton) were far from preliminary, and that they were integral to the use of the trade mark in question here. He said that the contact between himself and that brewing company was in relation to the manufacture and sales of RAGING BULL products, and were necessary to further the matter. He said that he had commenced discussions with Carlton in March 1996, within the critical period, and had been referred to a subsidiary, the Gold Coast Brewery. He said that the words RAGING BULL had been used in relation to the Carlton talks and that such use was trade mark use as contemplated by s.7(2) of the Act. He said that the Woolsy character and the beer label were also used in these discussions and preparations for use, the latter being virtually identical to the mark under attack here. He said that the only difference between the two was that the registered mark had not been hand-drawn while the beer label had been professionally prepared. He said that the major components - the Woolsy device and the words RAGING BULL - were common and that this was use of the mark for the purposes of defeating a non-use action, as per s.100(3).

He further attacked the applicant's declarations which accompanied the removal application, giving several instances where he said that they were in error.  He said that, if the applicant had the resources to carry out extensive research into the mark's alleged non-use, they should have been able to find out that it had, in fact, been used during the critical period.  He said that Mr Peeters, of the Geelong Brewing Company had been misquoted in the Reynolds declaration and he referred to the letter from that gentleman, at Schedule 6 of his own declaration, which stated this.  He said that such misinformation had also been included in the applicant's declaration regarding the Australian National Beer Awards.

Mr Burmingham said that he was a director and integral part of WBE, and that he had full knowledge of its activities.  He said that, for this reason, much of the evidence in support referred to himself making attempts to exploit the mark.  He said that this was also the case where medical certificates in the evidence referred to himself.  These documents, he submitted, established his claims that ongoing problems with his health were the circumstances which might have prevented use of the present trade mark by WBE during the entire period, because it was also shown that he was the only person in WBE to deal with the matters relating to the mark.  He said that the Registrar did not have a discretion if circumstances had been established as having prevented an owner using a mark during a particular time period.

He said that his evidence showed that the Woolsy character had been involved in several promotions, including responsible drinking campaigns, and also on recordings and in relation to other media.  He reiterated strongly that the mark had been used verbally on many occasions during the relevant period, including during meetings with several entities, with a view to exploiting the mark.  He said that the use of the mark on clothing and recordings was interrelated to use on beer and related goods, and that the marketing and licensing of all of these products was also interconnected.

Mr O'Sullivan made a short response to Mr Burmingham's submissions, saying that there was no evidence of any proper discussions with Carlton and that, in any case, any talks with the brewery could only have been "preliminary" in nature because no beer was ever made by that company under the subject mark.  He said that, regardless of this, any discussions which ever took place in relation to beer being produced in collaboration with Mr Burmingham's company involved a totally different mark than the one in dispute here.  He said that it had also not been convincingly shown that Mr Burmingham's illnesses could have prevented use of the mark by the registered owner at all times during the critical period, as that party could have made other arrangements to exploit the mark.

Mr Burmingham demanded to clarify certain points at the end of Mr O'Sullivan's reply.  I agreed to let him do so.  He took great exception to any claims by Mr O'Sullivan that any talks with Carlton were preliminary in nature.  He said that they were anything but preliminary and that the parties attending discussed the production of beer under the present trade mark.

Mr Burmingham closed by seeking costs in the matter.

Discussion
The sections of Part 9 of the Trade Marks Act 1995 which are relevant here read as follows:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

...

(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)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 non-use application relates and that the registered owner:

(iv)has not used the trade mark in Australia; or

(v)has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(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.

Person aggrieved

The threshold question, which needs to be resolved in a matter of an application under s.92 for removal of a registered mark, is whether the applicant is a "person aggrieved" in terms of that section of the Act. Only such a person can make an application for removal. The criteria for determining whether the applicant is such a person under the present Act has not altered from that considered in relation to s.23 of the Trade Marks Act 1955.  The meaning of the term was defined, for the purposes of that section, by McLelland J in The Ritz Hotel Ltd v Charles of the Ritz and Another 12 IPR 417 at p.454:

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

The applicant here has applied for registration of the word trade mark RAGING BULL on application number 721838 and the statement of goods, "Beverages in this class including beers" in Class 32.  The present trade mark has been cited as a bar to the registration of application number 721838 and the opponent here has also accused the applicant that it is in breach of WBE’s registration.  These factors together are, in my opinion, enough to show that the applicant for removal has sufficient interest in the proceedings to be a “person aggrieved”.  Accordingly, I find that the applicant is such a person and qualifies to apply for removal of the present trade mark from the Register.

The declaration(s) accompanying the application for removal

9.1For the purposes of paragraph 92(2)(a) of the Act (which deals with applications), an application for the removal of a trade mark from the Register:

(a)   must be in an approved form; and

(b)must be accompanied by a declaration made by, or on behalf of, the applicant:

(i)stating that an inquiry into the use of the trade mark has been conducted by, or on behalf of, the applicant; and

(ii)setting out the findings of that inquiry that support either or both of the grounds for the application referred to in subsection 92(4) of the Act.

There is no requirement, under reg.9, that a convincing argument of non-use be included in the declaration (or declarations, as here) accompanying the application for removal.  The only necessity is that the declaration must state that an inquiry has been made by, or on behalf of, the applicant into the use of the mark in question, and that the findings that support the grounds relied should be set out.  I am of the opinion that this has been the case here.

However, much of Mr Burmingham's evidence in support and also submissions at the hearing were devoted to attacking the content of those declarations.  I will, therefore, briefly discuss his claims, lest he feel that I have not given his arguments full consideration.  The main focus of Mr Burmingham's complaints appear to be, in my opinion, that the person who was, and is, the Chief Brewer at the Geelong Brewing Company is Henry Peeters and not Henry Powers, as claimed by Mr Reynolds in his declaration.  Mr Burmingham said that Mr Peeters affirmed that he was never approached by Mr Reynolds, with respect to his knowledge of WBE, in any event.  This he supported with a copy of a letter from Mr Peeters with a statement to that effect.  He also took issue with claims by Mr Reynolds that there were no labels bearing the subject mark available in Australia and he produced, in rebuttal, a beer label which, he says, was placed on his products.  He also accused the applicant of making a misleading statement when Mr Reynolds had declared that Mr Swan or (Swann) of the Gold Coast Brewery had never heard of WBE either.  In answer, he said that the brewers there were changed every two years and he produced a letter from a Mr Warner, who he said was the brewer at the relevant time, who stated there that some discussions regarding RAGING BULL beer had taken place.

I take Mr Burmingham's point that Mr Peeters has claimed that he has been the Managing Director of the Geelong Brewing Company since 1986 and that he was not approached by Mr Reynolds at any time for information.  However, these are statements made in a letter to Mr Burmingham and they are not in declaratory form.  In contrast, Mr Reynolds has said, in his declaration, that he spoke to a Mr Powers of the same brewery who said to him that he had not heard of WBE.  In relation to the existence of a beer label bearing the subject mark, Mr Burmingham has produced what he says is a "true and correct copy" of a label featuring the Woolsy character which, he declares, appeared on bottles of RAGING BULL beer produced by the Geelong Brewing Company.  Mr Reynolds, in contrast, has declared that he believed there were "no beer labels available in Australia…" for RAGING BULL beer.  Neither of these contradictory statements include a time frame.  However, it could be possible that the label was used and then disappeared from public view when the particular beer was temporarily withdrawn from sale by Mr Burmingham.  He does not say when, or for how long this removal from sale took place and this could be the reason that it was not located when the later search was carried out by Mr Reynolds.  Lastly, there is the statement by Mr Swan(n), of the Gold Coast Brewery that he had not heard of WBE.  Mr Burmingham did not dispute the veracity of his words, merely saying that Mr Swan(n) could not have known of any discussions between Mr Burmingham and a previous Chief Brewer at the brewery.

All of the foregoing indicates to me that a reasonable inference was drawn by Mr Reynolds, from his research, that the subject trade mark had not been used on the goods covered by the registration during the period in question.  He accordingly included the results of his inquiry in a declaration to support the grounds of the removal application, as required by the regulations.  That being the case, the onus then correctly shifted to the opponent to the removal of the mark from the Register to show use, or otherwise, by the registered owner.

Opposition

Notice of opposition

96.(1) Any person may oppose an application under section 92 by filing a notice of opposition with the Registrar or the court, as the case requires.

...

In the present case, the applicant applied under s.92 for the trade mark’s removal from the Register, alleging that the registered owner did not use the trade mark for the period from 17 August 1995 to 17 August 1998. In accordance with the regulations, it also attached declarations to the effect that it had carried out an inquiry into the mark’s use and included the results of those investigations. The opponent filed a notice of opposition to this application under s.96, saying that the owner had used the mark during the critical period. I must now decide the matter, as the delegate of the Registrar, based upon whatever evidence has been served and also the submissions made at the hearing.

Onus

Burden on opponent to establish use of trade mark etc.

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

...

(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

...

(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

...

(c)the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

Under s.100, the onus is clearly upon the opponent to establish that the owner did use the trade mark during the s.92 period, or that circumstances existed that were an obstacle to that use. I must decide, as the Registrar’s delegate, whether the opponent has met that onus sufficiently.

Mr O'Sullivan argued at the hearing that I should not have regard to whether there were circumstances which precluded use during the critical period, as that was not one of the grounds of opposition relied upon. However, I think that I am entitled to take that factor into consideration, given that there is no requirement, under the legislation, that the grounds of opposition should be listed, merely that the opponent rebut any allegation made. Additionally, it would be against the intent of the legislation if a trade mark was removed from the Register merely because of an administrative oversight, especially if there was a genuine reason that it had not been not used during the s.92 period. The evidence in support in this case certainly purported to cover both claimed use during the s.92 period and also the reasons why it might not have taken place during the same period.

I believe that I would not be able to properly decide the matter if I could not take all the contributing factors into consideration.  I will therefore do so before coming to a decision in the present case.

Use

Section 7 of the Act says:

Use of trade mark

7.(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:For prescribed court see section 190.

(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

(3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

(4) In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5) In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

I have considered the evidence served by Mr Burmingham in support of his opposition to removal.  The only material in this evidence, said to specifically relate to use of the mark within the relevant three year period - 17 August 1995 to 17 August 1998 - appears to comprise the claim, in paragraph 17 of Mr Burmingham's declaration, that discussions had taken place, "with Mr. James Warner, who was Chief Brewer (at the Gold Coast Brewery) at the time, during 1996 and 1997", in relation to the brewery, "manufacturing the "RAGING BULL" ® beer, as well as soft drinks by the same name".  The annexed letter from Mr Warner, relied upon to support this claim, does refer to discussions related to, "the production of a range of beers and softdrinks using the registered trade mark 'RAGING BULL'".  He also says that, "(t)he labelling and promotional material featured a character by the name of "WOOLSY - The Original Raging Bull".  Mr Warner further says in his letter that, during the discussions, the "…possibilities of producing products under licence were raised, Gold Coast Brewery's concerns about producing product and contributing to another party's brand equity, and the situation of being left with stock in our warehouse were also discussed."  The latter statements seem to imply that the discussions had reached a sticking point, as does his final paragraph, which says that the brewery had undergone changes in strategic direction since that time and that it was not in a position to "pursue opportunities of the nature proposed by yourself."

However, what the material in the preceding paragraph does go towards indicating is that some moves had been made by Mr Burmingham - presumably on behalf of the registered owner - to exploit a trade mark, or marks, which include the words RAGING BULL and the Woolsy character during the period in question.  Mr Burmingham has included, in the evidence, a label showing Woolsy and also the words RAGING BULL which, he says, was used on the original beer which was launched in 1992 but was subsequently removed from sale at a later time.  Although the actual getup of the trade mark discussed with Mr Warner is not stated, it was, possibly but not certainly, the same label.  That label is reproduced below - together with the trade mark which is the subject of this decision:


           The subject mark  The beer label

Mr Burmingham has claimed that the registered owner used the beer label, in relation to the goods in the specification and during the s.92 period, during its efforts to exploit the mark. He said in his submissions that the beer label and the registered mark were extremely similar, the former being professionally drawn and the other merely a sketch, and that the two did not have any significant differences. I believe that the words in s.7, which state that, if a person uses a trade mark, "with additions or alterations that do not substantially affect the identity of the trade mark," then the Registrar or the court may decide that this equates to use, mean that the two marks in question must be substantially identical. This wording is echoed in s.100(3)(a) of the Act, which applies when an opponent is seeking to rebut an allegation of non-use.

The tests for substantial identity are conveniently laid out in such cases as Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, and Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407, where Windeyer J said, at 414-415:

(the marks should) be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In the present case, the registered mark and the beer label contain quite a number of obvious differences.  The significant items missing in the beer label, but which are included in the subject mark, include the stump on which Woolsy is leaning, the phrase WOOLSY THE ORIGINAL RAGING BULL, and the lower portion, including the hind legs, of Woolsy.  The items which have been added to the label device, and which are not in the subject mark, include a glass of beer in Woolsy's right hoof and the words THE BEER WITH A KICK.

All of the foregoing items would be separately listed in a description of the marks based on the "Constituents Particulars Index", used by Australian Trade Marks Office to describe trade marks for the purpose of searching the data base.  The differences pointed to above are, in my opinion, significant, and substantially affect the identity of the subject mark and the beer label.  I therefore find that these two marks are not substantially identical.

Notwithstanding the foregoing, I do agree that the two marks convey the same idea and that the marks could be considered deceptively similar.  The tests for this are also found in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, supra, where Windeyer J said:

The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

However, as I have said, deceptive similarity is not enough to satisfy the requirements of s.100(3)(a) which, in my opinion, requires that the marks in question be, at a minimum, substantially identical. I therefore cannot agree that any use of the beer label mark during the period in question can be regarded as equating to use of the registered trade mark in order to defeat an application under s.92 for removal for non-use.

Mr Burmingham has also claimed that he has made aural use of the trade mark during the negotiations with Mr Warner, and at other times during the critical period, and that this qualified as use under s.7 of the Act sufficient to defeat an action to remove the mark on the grounds of non-use.  Given that the mark is a composite one, which includes words and a device, it would seem that he is basing his claim of aural representation of the trade mark on the spoken use of the words RAGING BULL and/or the word WOOLSY in relation to the goods covered by the registration.

However, s.7(2) clearly restricts the type of marks that qualify under this section as being, "any combination of the following, namely, any letter, word, name or numeral".  As I have already said, the mark in suit is comprised of various constituents, including a device (my emphasis) and not just the words claimed to have been used.  Therefore it contains a component which is not included in s.7(2) - namely the device of a bull.  This particular bull, Woolsy, is the major portion of the trade mark as registered and it is accordingly not a mark which is one for which a claim of aural representation can be made.

Taking all of the foregoing into consideration, I believe that it has not been convincingly shown that the trade mark, the subject of this registration, was used during the period of claimed non-use and I accordingly find that this is the case.

Registrar’s discretion

Determination of opposed application—general

101.(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.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

(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.

In deciding an opposed removal application, the Registrar (or a court) is called on to exercise a discretion.  The Registrar or court "may" remove a registration.  The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz, supra, at 482:

If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.

However, the decision of the Registrar is an administrative one, unlike the decision of a court in what may otherwise be the same matter - see the decision of Jacobs J in The Queen v Quinn, ex parte Consolidated Food Corporation 138 CLR 1 at 10. Thus, there may be matters which affect the exercise of the discretion by a court but which are beyond the Registrar’s competence to decide.

Nevertheless, as was said by Deputy Registrar Hardie in the Office decision, Beltrami SpA v Figgins Holdings Limited issued on 1 July 1998:

Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist, is on the opponent to the removal application.

In relation to any non-use of the mark by the registered owner during the period in question, Mr Burmingham pointed to his own ill health as being the cause.  Mr O'Sullivan questioned why the illness suffered by Mr Burmingham precluded the owner, which is a company, from using the trade mark.  Mr Burmingham's answer to this was that he is an integral part of WBE responsible for the exploitation of the mark and he claimed that this was shown by the evidence.  Mr Burmingham is mentioned in the evidence as the person who dealt with Mr Warner and Mr Peeters in relation to utilising the words RAGING BULL and the Woolsy character.  However, Mr Peeters does say in his letter that he was approached in 1992 by "Mr David Burmingham and his partners" (my emphasis) in relation to the manufacture of beer.  This does suggest that there were other people involved in the business of looking for a suitable manufacturer.  There does not appear to be any corroborating evidence, in relation to Mr Burmingham's claim of having sole carriage of the matter, or as to why another member of the company which owned the trade mark could not have used the mark if Mr Burmingham was indisposed because of his illness.  I therefore cannot find that his illness was a valid reason for the mark not having been used by WBE during the appropriate period.

However, if I am wrong in finding that another member of that company could have taken steps to use the mark in trade, I will discuss the evidence, as it relates to Mr Burmingham's illness, to determine whether it could have precluded use of the mark by the registered owner during the entire period of alleged non-use.  Mr Burmingham has submitted some material which, he says, shows that, if the subject mark was not used during the critical period, then it was because he was ill.  He said in his declaration and at the hearing that he was, and is, suffering from Chronic Fatigue Syndrome and also from other injuries sustained in a fall in April 1996.  However, as Mr O'Sullivan pointed out at the hearing, there is nothing in the way of medical documentation which supports Mr Burmingham's claims that his ill health prevented the mark being used for the entire relevant period.  The medical certificates and other documentation included in the evidence only cite one-off occasions when Mr Burmingham was incapacitated

I must point out here that the documents in evidence are unclear photocopies, in poor handwriting and include the use of medical terms, jargon and acronyms, which all make it very difficult for me to read as a layman.  However, as far as I can ascertain, the following is an accurate record.

There is, firstly, a Treating Doctor's Report intended for the Department of Social Security, dated 18 September 1996 - that fails to identify Mr Burmingham as its subject - which says that the person's incapacity to work has been caused by "Post concussion syndrome…(unreadable) back, elbow and wrist…chronic fatigue syndrome" the latter being "of long standing but (unreadable) not by accident". The second document is a referral letter from the Emergency Department of the Geelong Hospital, dated 19 May 1997, (presumably written by a doctor in the Emergency Department) to the Local Medical Officer. That letter said that Mr Burmingham had complained of severe muscle fatigue "since (a) few days" and that he had been diagnosed as suffering from Chronic Fatigue Syndrome "4 years back" and "Gilbert Syndrome". The only other supporting document, dated as being within the s.92 period, is what appears to be a record of Mr Burmingham's admission to the Emergency Department of the Tweed District Hospital on 26 September 1997. It also mentions Chronic Fatigue Syndrome.

Whilst I have every sympathy for Mr Burmingham and his past and present suffering from his illnesses, there is simply nothing in all of the foregoing material which would indicate to me, as the delegate of the Registrar of Trade Marks, that the sicknesses he has suffered equate to "circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period" as mentioned in s.100(3)(c). All of the medical documentation, which he relies upon, records single instances. He does not say how long he has had the illness which he claims prevented him from using the trade mark but he seems to imply that he suffered from it for the entire critical period. However, the evidence does not support this to the degree where it could be convincingly determined that Mr Burmingham's illnesses were a bar to use for the entire period under s.92.

I cannot see any public interest in leaving a trade mark on the Register which appears, on the evidence and submissions before me, not to have been used during the critical period, or that there existed a persuasive reason why it was not used.  The public good would appear to be better served by the mark’s removal, in order to properly reflect commercial reality and to also avoid any possible misconceptions as to ownership of any deceptively similar trade marks.

Conclusion
The opponent has not, to my satisfaction, discharged the onus placed on it under the Trade Marks Act 1995 of showing why the mark should not be removed from the Register on the grounds of non-use during the period in question. Accordingly, I have no other option than to find that the opponent has been unsuccessful in his opposition to the applicant’s action under s.92.

Consequently, subject to any appeal from this decision, I direct that the registration should be removed for all the goods for which it is registered.

Costs
I can see no reason in the present case why costs should not follow the result.  I therefore direct that the opponent pay the costs of the applicant in this matter, the costs being taxed, allowed and certified by an officer of the Trade Marks Office, appointed by the Registrar for that purpose.

Ian Forno
Hearing Officer

30 November 1999