Opposition by Feelgood Lifestyle Brands Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Zambrero Australia Holdings Pty Ltd to remove trade mark number 1054675 (class 39, 43) -...
[2021] ATMO 72
•29 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Feelgood Lifestyle Brands Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Zambrero Australia Holdings Pty Ltd to remove trade mark number 1054675 (class 39, 43) - FeelGood- in the name of Feelgood Lifestyle Brands Pty Ltd
Delegate: Katrina Brown Representation: Opponent: Self-represented
Applicant: Contego Trade Mark AttorneysDecision: 2021 ATMO 72
Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – no use, or obstacle to use, of the trade mark during the relevant period – exercise of Registrar’s discretion not appropriate – registration to be removedBackground
Feelgood Lifestyle Brands Pty Ltd (‘Removal Opponent’) is the owner of the following trade mark registration:
Trade Mark No: 1054675
Trade Mark: FeelGood (‘Trade Mark’)
Filing Date: 11 May 2005
Registered Services: Class 39: Mobile food and drink delivery services
Class 43: Provision of food and drink services including but not limited to; cafe, restaurant, health and juice bar services, including services relating to the provision of fruit and vegetable juices, drinks containing energy and/or vitamin supplements, salads and health foods; catering services
(‘Registered Services’)
On 12 February 2020 Zambrero Australia Holdings 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. The removal application was made in respect of all the Registered Services; that is complete removal of the Trade Mark.
The Removal Opponent filed a Notice of Intention to Oppose the removal on 3 April 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 2 May 2020.
The Removal Applicant filed a Notice of Intention to Defend on 20 July 2020.
In due course, the Removal Opponent filed evidence in support. The Removal Applicant did not file evidence in this matter.
Once the period for filing evidence had finished, both parties were invited to request a hearing. Neither party did so. On 17 March 2021, the Removal Applicant requested that a decision be issued.
I will now decide this matter as a delegate of the Registrar of Trade Marks.
The relevant provisions
Part 9 of the Act deals with the removal of trade marks from the Register due to non-use. Section 92(4)(b) relevantly 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.The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time in the three-year period ending on 12 January 2020 (‘Relevant Period’).
Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The relevant standard of proof is on the balance of probabilities.[1] 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 Services;[2] 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.[3]
[1] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].
[2] The Act, s 100(3)(a).
[3] The Act, s 100(3)(c).
In accordance with s 101 of the Act, I may decide to remove the Trade Mark for all or some of the services identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register even if the Removal Opponent has not rebutted the allegation of non-use.
Removal Opponent’s evidence
The Removal Opponent’s evidence in this matter consists of the following declaration:
·Declaration of Paul Zisson (sole director and shareholder of the Removal Opponent) made on 21 October 2020 with Annexures 1a, 1b, 5a, 5b, 6 and 7 (‘Zisson Declaration’).
Mr Zisson declares that the Removal Opponent ‘has been continuously developing its business model, conducting market research and business development, determining its brand attributes and objectives, in preparation for market commercialisation’.
Annexures 1a to 5b to the Zisson Declaration consist of the following:
·Annexure 1a - an extract from the Australian Trade Mark Register showing the registration details of the Trade Mark.
·Annexure 1b – an extract from the Australian Securities and Investments Commission (ASIC) database showing the company summary for the Removal Opponent.
·Annexure 5a – a record of registration issued by ASIC showing that ‘FEELGOOD EATS’ was registered by the Removal Opponent as a business name on 20 October 2020.
·Annexure 5b – a screenshot of the Australian Business Register showing that ‘FEELGOOD EATS’ and ‘FEELGOOD TRAVEL’ were registered by the Removal Opponent as business names on 20 October 2020.
The Zisson Declaration also contains statements about the Removal Applicant including references to its financial position and its use of ‘FEEL GOOD MEX’ on the website ‘ (Annexures 6 and 7).
Discussion and reasons
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 Services 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?
The ‘use’ required to be demonstrated 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 those goods or services.[4]
[4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 [19].
The Removal Opponent has not submitted, nor does the evidence suggest, that services have been sold under the Trade Mark during the Relevant Period. This is not fatal to the Removal Opponent’s position; ‘use as a trade mark’ does not require an actual sale of the goods or services. A commercial dealing in the goods or services under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’. The only objective evidence put forward by the Removal Opponent is the registration of a company name (as evidenced in Annexure 1a to the Zisson Declaration), and registration of a business name (as evidenced in Annexures 5a and 5b to the Zisson Declaration). Neither of which, of themselves, demonstrate use as a badge of origin in the course of trade.[5] In this respect, I note the following observations in Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation:
There is a clear distinction, in my opinion, between conducting business under a particular name and using a mark in respect of goods and services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by another person. Because it was established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.[6]
[5] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 [308].
[6] [2005] FCA 1278 [73] (Lander J).
The Zisson Declaration also contains statements that the Removal Opponent, or its predecessor, undertook a variety of activities during the Relevant Period ‘in preparation for market commercialisation’. In relevant case law, a distinction is clearly drawn between use and mere preliminary discussions.[7] Justice Drummond made the following observation in Woolly Bull Enterprises Pty Ltd v Reynolds:
The owner will not use its mark unless it has acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.[8]
[7] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] FCA 261; Settef Spa v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402; Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939; Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd & Anor [2020] FCCA 1718.
[8] (2001) 107 FCR 166 [40].
The evidence in the present case is too imprecise to satisfy me that during the Relevant Period, the Removal Opponent had an ‘objectively ascertainable commitment’ to provide a vendible service under or by reference to the Trade Mark. At best, the evidence suggests preliminary steps preparatory to trading activity.
Consequently, I am not satisfied that the Trade Mark was used in the Relevant Period.
Was there an obstacle to use of the Trade Mark during the Relevant Period?
The Removal Opponent does not formally submit that there was an obstacle to use of the Trade Mark during the Relevant Period. However, the SGP states that the research and development activities associated with the Trade Mark have ‘slowed a little’ due to Covid-19.
For the sake of completeness, I am not satisfied, on the information before me, that there was an obstacle to use during the Relevant Period. The first case of novel coronavirus (2019-nCov) in Australia was not confirmed until 25 January 2020,[9] approximately 13 days after the Relevant Period ended. As such, it is not clear that the claimed obstacle existed during the Relevant Period. Notwithstanding, even if the claimed obstacle did exist during the Relevant Period, the Removal Opponent needs to demonstrate that they would have used the Trade Mark but for the obstacle.[10] There is nothing before me to suggest that, but for the slowing of research and development activities due to Covid-19, the Removal Opponent would have used the Trade Mark during the Relevant Period.
Is it reasonable not to remove the Trade Mark?
[9] See media release, ‘First confirmed case of novel coronavirus in Australia’, Greg Hunt MP (Minster for Health and Aged Care), Woolly Bull Enterprises Pty Ltd v Reynolds (n 7) [58].
My next consideration is whether it is reasonable not to remove the Trade Mark from the Register, notwithstanding that it had not been used during the Relevant Period. The discretion conferred by s 101 of the Act is broad and ‘is limited only by the subject matter, scope and purpose of Part 9 of the Act’.[11] In Austin, Nichols & Co Inc v Lodestar Anstalt the purpose of Part 9 of the Act was expressed as:
The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[12]
[11] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [35].
[12] Ibid [38].
The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[13] In this matter, the Removal Opponent has not 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. Furthermore, given that the evidence suggests that the Trade Mark has never been used during the 15 years it has been on the Register, exercising the discretion would seemingly be at odds with the purpose of Part 9 of the Act. In this respect I note the following observations of Heerey J in Conquip Holdings Pty Ltd v S & A Restaurant Corp:
There is moreover a powerful factor against the exercise of any discretion in favour of [the Removal Opponent]. I refer to the very long period, some eighteen years, in which the marks have remained on the register. Such a long period of non-use is destructive of the purpose of trade mark registration.[14]
[13] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273].
[14] [2000] FCA 256 [90].
In the absence of submissions or persuasive evidence, and considering the long period of non-use, I am not satisfied that it is reasonable to exercise the Registrar’s discretion.
Decision
The ground for removal under s 92(4)(b) of the Act has been established and I am not satisfied that it is reasonable to exercise my discretion to allow the Trade Mark to remain on the Register.
I direct that, one month from the date of this decision, registration number 1054675 be removed from the Register.
If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the Court.
Costs
Both parties have requested that costs be awarded. As the Removal Applicant has been successful, I award costs against the Removal Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 July 2021
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