Opposition by FFAUF ITALIA S.P.A. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Industria De Diseno Textil, S.A. (Inditex, S.A.) for removal of trade mark number 1028786 (29-33) – LA...

[2022] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by FFAUF ITALIA S.P.A. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Industria De Diseno Textil, S.A. (Inditex, S.A.) for removal of trade mark number 1028786 (29-33) – LA DELIZIE ZARA – in the name of FFAUF ITALIA S.P.A.

Delegate:	Nicholas Smith
Representation:	Opponent: Spruson & Ferguson Applicant: IP Solved (ANZ) Pty. Ltd.
Decision:	2022 ATMO 32 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 24 January 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Industria De Diseno Textil, S.A. (Inditex, S.A.) (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1028786
Priority Date	23 July 2003 (with a Convention Priority Date of 24 January 2003)
Goods	Class 29: Meat, poultry, game, meat extracts; salamis, hams, mortadella, sausages; tomato juice for cooking; preserved meat; edible oils; eggs, milk and milk by-products; jellies, jams, marmalades, compotes Class 30: Fresh, dried, frozen, deep-frozen, ready to use (semi-cooked) pasta; coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and cereal preparations, bread, pastries and confectionery, ice-creams; honey, treacle; yeast, salt, mustard, vinegar, sauces (condiments); spices; sauces for pasta Class 31: Agricultural and horticultural products; fresh fruits, malt Class 32: Beers; mineral and carbonated waters, non-alcoholic drinks, fruit drinks and fruit juices; syrups and preparations for making drinks Class 33: Wines, sparkling wines, draught wines, spirits, liqueurs (‘Registered Goods’)
Owner	FFAUF ITALIA S.P.A.
Trade Mark	LE DELIZIE ZARA (‘Trade Mark’)

1. FFAUF ITALIA S.P.A. (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 29 March 2019 and a Statement of Grounds and Particulars (‘SGP’) on 29 April 2019.  The Applicant filed a Notice of Intention to Defend on 21 May 2019.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

3. Neither party requested a hearing and the matter came before me, a delegate of the Registrar of Trade Marks, for a decision on the written record.  This record consists of the Notice of Intention to Oppose Removal, SGP, written submissions and the following evidence:

   Evidence in Support
   Evidence in Answer
   Evidence in Reply

   • Declaration by Francesca Colubriale, Principal of Spruson & Ferguson Patent & Trade Mark Attorneys, the Opponent’s representative, dated 22 August 2019 (‘Colubriale 1’) together with Annexures FC1 to FC6.
   • Declaration by Antonio Abril Abadin, General Counsel and Secretary to the Board of the Applicant, dated 27 November 2019 (‘Abadin declaration’) together with Exhibits 1 to 13.
   • Declaration by Francesca Colubriale, dated 29 January 2020 (‘Colubriale 2’) together with Annexures FC7 to FC10.
   • Declaration by Emanouel Gaganis, director of Gaganis Bros Imported Food Wholesalers, dated 29 January 2020 (‘Gaganis declaration’) together with Annexures EG1 to EG5.

   The Relevant Provisions

4. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   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.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

5. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 24 December 2018 (‘relevant period’).

6. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

7. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

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

   (a) ..
   (b)  ..
   (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
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; 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.

8. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

9. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

10. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    Discussion

11. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[5]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user is taken to be use of the Trade Mark by the Opponent.[6] 

    [5] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [6] Section 7(3) of the Act.

    Use of the Trade Mark in the relevant period

12. During the relevant period the Trade Mark was held by FFAUF S.A..  In 2019 the name of the owner of the Trade Mark was changed to the present Opponent. Colubriale 1 states that the Opponent is the successor in title to FFAUF S.A, which was a company incorporated in Luxembourg that moved to Italy and hence changed its name to the current Opponent on 2 May 2018.

13. In 2010 FFAUF S.A. entered into a licence agreement (‘2010 Agreement’) with Pasta Zara S.p.A (‘Pasta Zara’) allowing Pasta Zara to use the Trade Mark worldwide.   Colubriale 2 contains a copy of the 2010 Agreement between FFAUF S.A and Pasta Zara (including an English translation).  I also note that FAUFF S.A, the Opponent and Pasta Zara S.p.A. have at various points had directors in common.

14. Colubriale 1 annexes documents being invoices in the relevant period for the sale of pasta, gnocchi, pasta sauce, couscous and rice from Pasta Zara to Gaganis Bros Food Wholesalers, an Australian wholesale entity.  None of the invoices make any reference to the Trade Mark.  Colubriale 1 also attaches a catalogue of Pasta Zara products though it is undated.  Neither the invoices or the catalogue bear the Trade Mark but the catalogue refers to Pasta Zara’s ‘Le Delizie’ collection consisting of sauces, couscous, rice, flour products, olive oil and vinegar.  Colubriale 1 also attaches an undated photograph of a rice product bearing the Trade Mark.

15. Colubriale 1 also annexes printouts of a website published by Pasta Zara on that displays the image set out below and a printout of the website which suggests that a Pasta Zara pasta product was available for sale to the Australian public on or around March 3, 2018 but neither of these webpages show any use of the Trade Mark.

16. The Gaganis Declaration states that Gaganis Bros Food Wholesalers have distributed pasta products in Australia from Pasta Zara.  Mr Gaganis annexes invoices said to show the supply of products by Pasta Zara to his company bearing either the Trade Mark or what is described as the Pasta Zara Logo, as well as photographs of the Pasta Zara products distributed by Gaganis Bros Food Wholesalers (either in a warehouse, for the purpose of social media or as part of the Gaganis Bros catalogue).  I note that the photographs were taken in 2019 but Mr Gaganis states that the products depicted were the same or similar to the products supplied in the relevant period.  The photographs only depict use of the Trade Mark on rice products.   

17. Most of the Evidence in Answer is about the Applicant and hence unnecessary to summarise here as it is only relevant in respect of the exercise of discretion in the event that I find that the Opponent has not used the Trade Mark.  The EIA does assert that the license agreement between FFAUF S.A and Pasta Zara ceased to be valid upon the Opponent coming into existence.   The Deponent also provides evidence that as of 22 October 2019 products bearing the Trade Mark were not available for sale by Gaganis Bros Food Wholesalers.

18. In considering the evidence I reach the following conclusions:

    a)The only evidence of use of the Trade Mark before me is on packages of rice.  While the Pasta Zara catalogue refers to Pasta Zara’s ‘Le Delizie’ range which encompasses a broader range of goods than rice, there is no evidence that such goods have been sold in Australia, and in any event the use of ‘Le Delizie’ is not use of the Trade Mark, as it does not reproduce the ‘Zara’ element, being an essential feature of the trade mark[7].   In particular, while the Opponent’s evidence contains assertions that the Trade Mark was used on couscous, pasta sauce and breadsticks, I am not satisfied from the evidence before me that packaging on the Opponent’s ‘Le Delizie’ range displayed the Trade Mark rather than ‘Le Delizie’.

    b)While I am satisfied, from the invoices provided to me, that Pasta Zara has sold rice to Australia, I am not satisfied that the rice sold to Australia in the relevant period necessarily bore the Trade Mark.  I note that both the Pasta Zara catalogue annexed to both Colubriale 1 and Gaganis Declaration indicate that Pasta Zara has offered rice products in its ‘Le Delizie’ range that do not, on their face, bear the Trade Mark.  While, as noted in paragraph 11 above a single bona fide use of a mark is sufficient the evidence of such should be if not conclusive proof, at any rate overwhelmingly convincing proof.  In the present case I am being asked to accept that the rice products sold in Australia in the relevant period depicted the packaging photographed by Mr Gaganis in 2019, and not the packaging displayed in the Pasta Zara catalogue.  In the absence of specific evidence of what packaging was used in 2018, the Opponent’s evidence of use of the Trade Mark on rice products does not rise to the level of overwhelming convincing proof.  As such, the 2019 photo of the Pasta Zara rice product displaying the Trade Mark falls short of providing sufficient proof that the Trade Mark was used in relation to rice during the relevant period.

    [7] See the test for substantial identity set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J). I note the meaning of ‘le delizie’ absent the ‘Zara’ element is simply ‘the delicious’.

19. In summary I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period.

    Obstacles to use

20. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.

    Registrar’s Discretion

21. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[8] However, as indicated at paragraph 10, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[9]

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[10]

    [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    [9] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    [10] Ibid [171]-[172].

22. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[11] 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.[12] 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.[13]

    [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

23. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

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

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

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

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[14]

    [14] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

24. In the present case, the only evidence that the Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for any of the Registered Goods consists of photographs, taken after the relevant period, of a single rice product bearing the Trade Mark.  There is no evidence before me that there have been significant sales of goods or advertising featuring the Trade Mark and no broader evidence of reputation in the Trade Mark in Australia.  Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

    Decision

25. The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1028786 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Costs

1. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   8 March 2022