Opposition by FreshFood Holdings Pte Limited to application pursuant to section 96 of the Trade Marks Act 1995 (Cth) by Pablo Enterprise Pte. Ltd. to remove trade mark number 170010 (class 30) – Pablo (Word) - in...
[2020] ATMO 195
•17 December 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by FreshFood Holdings Pte Limited to application pursuant to section 96 of the Trade Marks Act 1995 (Cth) by Pablo Enterprise Pte. Ltd. to remove trade mark number 170010 (class 30) – Pablo (Word) - in the name of FreshFood Holdings Pte Limited
Delegate:
Kate Doherty
Representation:
Opponent: Herbert Smith Freehills
Applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Decision:
2020 ATMO 195
Trade Marks Act 1995 (Cth) – opposition pursuant to section 96 – ss 92(4)(a) and (b) application for removal - Removal Opponent’s evidence shows no use of the Trade Mark during the relevant period – no reasons to apply the Registrar’s discretion - Trade Mark to be removed from the Register
Background
This decision follows an oral hearing by way of video conference on 19 October 2020 for an application pursuant to s 96 of the Trade Marks Act 1995 (‘Act’) filed on 25 October 2017 by Pablo Enterprise Pte. Ltd (‘Removal Applicant’) to remove the following trade mark from the Register of Trade Marks (‘Register’):
Trade Mark No: 170010
Trade Mark: PABLO (‘Trade Mark’)
Filing date: 25 October 1961
Owner: FreshFood Holdings Pte Limited
Specification of Goods: Class 30: Coffee (‘Registered Goods’)
The Removal Applicant has applied for removal of the Trade Mark pursuant to ss 92(4)(a) and 92(4)(b) of the Act. The application for removal is made in respect of coffee, being the only goods for which the Trade Mark is registered.
FreshFood Holdings Pte Limited (‘Removal Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 23 July 2019 and a Statement of Grounds and Particulars (‘SGP’) on 16 August 2019. The Removal Applicant filed a Notice of Intention to Defend on 30 September 2019.
The following evidence was filed:
·Evidence in Support - Declaration of C Tan Peck Yee, the Director for FreshFood Holdings Pte Ltd [sic], declared on 24 December 2019 (‘Yee declaration’)
The Yee Declaration has 19 Annexures; Annexures Nine, Ten, 11, 15, 16 and 17 are marked as confidential.
No Evidence in Answer was filed, and no Evidence in Reply was filed. The above declaration constitutes the whole of the evidence filed in the proceedings.
Following the conclusion of the evidence stages both parties requested an oral hearing. The parties each filed written submissions. I decided this matter as a delegate of the Registrar of Trade Marks, the hearing was attended by Herbert Smith Freehills on behalf of the Removal Opponent, as well as Pizzeys Patent and Trade Mark Attorneys Pty Ltd for the Removal Applicant.
Legislation relating to non-use
Part 9 of the Act deals with removal of trade marks from the Register for non-use. Subsections 92(4)(a) and 92(4)(b) of the Act relevantly provide:
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) 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.
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.
Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4). The burden of proof is the ordinary civil standard of the balance of probabilities.[1]
[1] Pfizer Products Inc. v Karam [2006] FCA 1663, [9] and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
For the purposes of s 92(4)(a) the relevant period is any time before 25 September 2017. For the purposes of s 92(4)(b) the relevant period is the three-year period ending on 25 September 2017 (‘Relevant Period’). The central question to be resolved is whether the Removal Opponent has used the Trade Mark in the Relevant Period.
Assessment of Section 92(4)(a)
The Trade Mark was filed by in Australia by Bushell’s Pty Limited (Bushell’s) on 25 October 1961.[2] On 6 April 1998, the Trade Mark was assigned to FreshFood Holdings Pte Limited.[3] The assignment is recorded on the Register.[4] No use by the predecessor, Bushell’s, is before me other than the bare act of filing the Trade Mark. However, the application to file the Trade Mark is accompanied by a contemporaneous statement of the Director of Bushell’s addressed to the Registrar indicating the entity intends to use the Trade Mark in respect of the Registered Goods. For the purpose of s 92(4)(a) there is no limitation for intention to use within any specific time.[5]
[2] Yee Declaration, Annexure One.
[3] Yee Declaration, [9].
[4] s 108(2).
[5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401.
Both parties made a number of submissions about goodwill during the hearing as well as in their written submissions. Trademark law exists as opposed to laws solely for passing off or fraud because goodwill is associated with trademarks, however, it is not necessary to quantify the goodwill associated with a trademark. The High Court made the following observations about goodwill:[6]
There is interests of traders, both in protecting their goodwill through the creating of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment.15F[7]
[6] Austin, Nichols & Co Inc v Lodestar Anstal found those observations apply with equal force to the 1995 Act. See: (2012) 202 FCR 490 at 498 [36]-[37], per Jacobson, Yates and Katzmann J.
[7] Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at 65 [42] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
Goodwill may still exist where the goods are notorious or nefarious, there is no requirement to separately assign goodwill or reputation in a trade mark.
I find for the purposes of s 92(4)(a) the act of filing the Trade Mark and the statement by the Director of Bushell’s accompanying the application to file the Trade Mark show an intention to use by the Removal Opponent pursuant to s 8.[8] I also find that the assignment indicated a further intention to use. When I consider these actions along with the more recent actions of fully participating in the defense of this removal application, I find the very low threshold required to overcome this ground is met and s 92(4)(a) is not established.[9]
[8] Yee Declaration, Annexure Two – statement of intention to use.
[9] Structureco Inc v Starite Distributors Pty Ltd (2000) 49 IPR 209, 215.
Assessment of Section 92(4)(b)
An application pursuant to s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application.[10] The filing date and assignment are confirmed by the Register and I am satisfied that five years have passed since the trade mark application was filed.
[10] s 93(2) of the Act; see filing date at [1].
The Yee Declaration contains the following claims:
·The Trade Mark was filed and use began in the 1960’s.1F[11]
·The Trade Mark was previously ‘one of Australia’s most recognisable instant coffee brands’ and ‘has become an iconic Australian brand.’2F[12]
·An assignment of the Trade Mark occurred in 1998 to the current owner.3F[13]
·In 2012, steps were taken to internally review reintroducing the Trade Mark including steps generally related to design, quality control and production.4F[14]
·Notes associated with manufacturing are before me dated 17 May 2017, within the Relevant Period.5F[15]
·Some coffee was roasted in 2019.6F[16]
·An assessment report was completed in 2012 to ensure compliance with regulatory requirements.7F[17]
On 23 July 2019, shortly after the Relevant Period a sale was made, where 500kg of coffee was exported to Papua New Guinea.8F[18] A photograph of a box said to contain the 500kgs of coffee was provided in evidence.9F[19]
[11] See above at [1].
[12] Yee Declaration, [12].
[13] Trade Mark Registration Number 170010.
[14] Yee Declaration, Annexures 11, 15 and 16, these annexures are marked as confidential.
[15] Yee Declaration, Annexure 15.
[16] Yee Declaration, Annexures 12 and 13.
[17] Yee Declaration, Annexure 10.
[18] s 228.
[19] Yee Declaration, Annexure 17.
Use of the Trade Mark in the Relevant Period
To defeat an application for removal, use in ‘good faith’ relied upon by the registered owner must be ‘real commercial use’ or ‘ordinary and genuine use’ and not ‘some fictitious or colourable use’.[20] ‘The motives of the registered owner are largely irrelevant’ and ‘[u]se of a trade mark will still be use in good faith even if engaged in for the sole purpose of protecting the owner’s trade mark registration from attack for non-use provided that the use is real and genuine’.21F[21]
[20] Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 at 585-586 [120], per Nicholas J.
[21] Falconer J in Re Concord Trade Mark [1987] FSR 209.
The principles for determining use in good faith was set out by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd ‘(Lion Nathan’)22F[22] as follows:
…contriving use for the purpose of defeating a trade rival’s plans will lack the necessary quality of genuineness. However, a use does not cease to be genuine even if it only occurs after an appreciation that a registration was vulnerable to an attack on the grounds of non-use. In deciding that a use is not genuine, a court may be influenced by the quantum of sales.
[22] (2010) 241 CLR 144 at 168-169 [62]-[64] (French CJ, Gummow, Crennan and Bell JJ)
Re Concord Trade Mark (‘Concord’), like the application before me, concerned the re-launch of goods, in that case cigarettes, with a trade mark which had not been used for many years. It was found that the level of sales was ‘negligible’ and could not be regarded as substantial.[23] In Lion Nathan the High Court applied Concord and found:
A commercial quantity of wine, some 144 bottles, was imported and offered for sale under the registered trade mark by Beach Avenue during the statutory period. Some forty-one sales during that time were proven by reference to invoices and tax paid. There was no suggestion in the evidence that the offering for sale and selling either overseas or in Australia was for any purpose other than making profit and establishing goodwill in the registered trade mark. It was not contended that the use was fictitious or colourable. In all the circumstances the use was genuine and sufficient to establish use in good faith for the purposes of Lion Nathan’s application for removal.
[23] Re Concord Trade Mark [1987] FSR 209, per Falconer J.
Trident Seafoods Corporation v Trident Foods Pty Ltd examined good faith and non-use recently.24F[24] Use which occurred after the non-use period was found to be ‘a reaction to the non-use application’, ‘very limited’ and ‘unaccompanied by a formal relaunch of the kind that might have been expected if there was an intention to sell the relevant products on a large scale’. However, it was found ‘the sales were not unprofitable or otherwise contrived’ and the owner of the mark proved good faith use. On the facts before me I must consider a single sale with no information about profitability or evidence to support whether the sale was contrived.
[24] [2018] FCA 1490; 137 IPR 65, at 95 [175] Per Gleeson J.
Trademarks are not required to denote products which are high quality or held in any esteem. For example, a trader may astutely wish to own a mark which signifies austerity. The goods in this application were alleged to be served in correctional facilities, in those circumstances it is not difficult to accept that favourable characteristics might include value and safety. A trademark is a badge of origin rather than a badge automatically signifying any particular grade of quality. One of the early and enduring purposes of trademark law is to identify a supplier.
The Removal Opponent provided a newspaper article dated 28 May 2017 purporting to show 290 comments from members of the public.25F[25] Many of the comments are not complimentary, individual statements include:26F[26] ‘Pablo was indeed the worst saw dust’, ‘floor sweepings’,’…I consider Pablo repulsive’, ‘Pablo is unfathomably awful’, ‘Pablo. It’s worse than climate change’, and ‘The black stuff that is belched out by a volcano and covers everything in a layer of fine ash is preferable to Pablo’.
[25] Yee Declaration, Annexure Eight.
[26] Yee Declaration, Annexure Six.
Other reviews were more optimistic: ‘Drank PABLO [sic] for over 20 years, never had any complaints. True.’, and ‘…Pablo at least had an interesting label…’. Five reviewers state they have never had Pablo at all. The Removal Opponent has submitted that these comments do not to show use per se but infer that the product enjoyed an iconic status.27F[27] These comments are not use pursuant to s 7, but are discussed again later in this decision in relation to the Registrar’s Discretion under s 101.
[27] Yee Declaration, [12] to [22].
Pursuant to Dick Smith v Ramsay, it is possible to show trade mark use even where no sales have occurred.[28] The image which is associated with the newspaper article above does not show use as a trade mark.28F[29] A photograph of an empty screw top jar with the word ‘Pablo’ is shown. The word coffee is not displayed, the photograph is captioned ‘The worst’. I find this use is not relevant use of the Trade Mark and does not show use by the Registered owner.
[28] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939; 120 IPR 270, [125].
[29] Yee Declaration, Annexure Six – the article is undated but the Removal Opponent’s submissions at [16] state 28 May 2017, all comments purport to have been made ‘2 years ago’ with the exception of one comment marked ‘4 months ago’.
Goods may not need to be offered publicly for ‘use’ pursuant to s 7 to occur, for example many goods are wholesaled and the relevant public may be the distribution retailers rather than the community at large. The anonymised comments allege that the Pablo products were used for supply contracts such as to the Australian Defence Force, hospitals and correctional facilities. There is no evidence before me to support this notional use such as; copies of procurement contracts, records of stock inventory, manufacturing processes or invoices. The photographs before me do not show use by the Opponent or their subsidiaries. If those contracts were in existence the required evidence might have been different, I may not expect advertising expenditure where the customers are procurement contractors rather than the general public.
The Removal Applicant submitted that production reports do not prove the items were sold.29F[30] Though the items are not required to be sold, there is a question as to whether PABLO is genuinely intended to be remarketed or is merely being used as a functional name on internal goods and communications. Internal use of the name PABLO prior to a launch could conceal commercially sensitive information such as a new product name from manufacturing workers and ancillary staff. There is no information about to whom or how many persons the signage at the manufacturing facility or the photograph of the box is visible to.
[30] Removal Applicant submissions, [40].
If a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[31] The single use of the term PABLO on the goods sold after the Relevant Period appears to show the application of the mark to the shipper container not the Registered Goods.[32] Although the Trade Mark Registration is for a plain word mark, the Trade Mark as it is shown on the shipper container does not share the same distinct stylisation of the Trade Mark as it is displayed elsewhere such as on merchandise.[33] I find these considerations diminish any confusion and the use does not prove conclusively that the Trade Mark has not been abandoned. Incontrovertible evidence is required where the evidence of use is a single instance of use.[34]
[31] Nodoz Trade Mark (1962) RPC 1, 7.
[32] Yee Declaration, Annexure 17.
[33] Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593, [35].
[34] Structureco Inc v Starite Distributors Pty Ltd (2000) 49 IPR 209, [215].
I find that the Opponent has failed to establish that the Trade Mark was applied to, or used in relation to, the Registered Goods in Australia during the Relevant Period.
Obstacles to Use
To successfully oppose the Application under s 92(4)(b) of the Act the Opponent must establish that it has used the Trade Mark or that there were circumstances which were an obstacle to use.40F[35], There is no evidence or submissions before me indicating there was an obstacle to use of the Trade Mark.
[35] s 100 of the Act.
Registrar’s Discretion
Trade mark registration is not ‘use it or lose it.’[36] Where it is reasonable, I may decide not to remove the Trade Mark even if the grounds under which the application for removal was made are found to be established, s 101 of the Act relevantly provides:
[36] Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565, [1].
101 Determination of opposed application – general
(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.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
To those to which the application relates.
Note 1: If the registered owner of the trade mark has authorized another person to use it, any authorized use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3))
Note 2: For registered owner see section 6.
The Full Court in Austin, Nichols & Co Inc v Lodestar Anstalt stated that the purpose of Part 9 is:[37]
[T]o 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. Otherwise, there would be no need for the discretion.
[37] (2012) 202 FCR 490 at 498 [38].
The discretion under s 101(3) is broad, ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Pt 9 of the [Trade Marks] Act’.[38]
[38] Ibid. 497 [35] (Jacobson, Yates and Katzmann JJ).
Pursuant to Tivo Inc v Vivo International Corporation Pty Ltd, the public interest, and the private interests of the trade mark owner, as well as the private interests of the party seeking the Trade Mark’s removal may be considered.[39] The burden is on the Removal Opponent as the registered owner of the Trade Mark to show the removal is not reasonable, and the discretion is assessed at the time the decision is required to be made.[40]
[39] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [467] (Dodds-Streeton J).
[40] Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 221 (McLelland J)).
There is limited evidence before me to establish a residual reputation in the Trade Mark.32F[41] The Removal Opponent submits the inclusion of the term PABLO in an award winning Australian novel, the term is contained within the book four times but the first time it is used the word is described as ‘Pablo coffee’.33F[42] Introducing the term in this way, there is no implication that the reader would be familiar with the Trade Mark without the qualifying descriptor. The term may seek to induce nostalgia but there is no assertion that the use of the term is integral to the story and it appears the term may just as easily be invented for the purposes of fiction.
[41] See Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook, 6th ed, 2016) at 584 [7.2505] (Shanahan’s).
[42] Yee Declaration, Annexure Three.
The Trade Mark is depicted on a screenshot dated 16 December 2019 of an eBay® online platform listing for an empty jar labelled with the Trade Mark and the words ‘instant coffee’.34F[43] Screenshots of the same date for another website ‘Redbubble®’ show merchandise ostensibly displaying the word PABLO with a hat design and the words ‘Instant Coffee’. There is no evidence about how this website is accessed, or the level of visitors, and use on the Registered Goods is not shown. There are further screenshots of t-shirt designs featuring an empty jar, and a cup, which do not contain the words ‘instant coffee’.
[43] Yee Declaration, Annexure Four.
Further information about the Redbubble® platform is not before me, an oral submission was made about the stock exchange valuation for the entity without further characterisation. I am aware of the eBay® platform, and that a relevant reputation could not be inferred merely because a product is listed for sale amongst the many thousands of products available on the platform.35F[44]
[44] Yee Declaration, Annexures 4 and 5; Removal Opponent’s submissions, [56].
Stills are in evidence for a YouTube® video for Pablo Coffee from 1983 posted 15 December 2010, with just 6900 viewers.36F[45] One still image does show a photo of the product containing coffee, with cups of coffee next to it. The tagline ‘the ole in your day’ accompanies the image. An unidentified comment by ‘Laurie from 2 years ago’ states ‘At least the Pablo ads were effective. Ole!’ While awareness of a brand is closely linked to a trade mark, mere awareness of a brand such as the comments in the news article do not show knowledge of the origin of the goods in the sense of s 7.
[45] Yee Declaration, Annexure Seven.
Per Societe Anonyme des Eaux Minerales d’Evian v The Natural Yogurt Co evidence is required to discharge the onus of proof.[46] While the discretion at s 101(3) has been described as ‘unlimited’,[47] the discretion must be exercised ‘judicially on reasonable grounds that are capable of being clearly stated’.[48] The absolute paucity of any evidence of use on the Registered Goods in the Relevant Period, or in the first 58 years of Registration and until after the Relevant Period, does not enliven this provision and I decline to exercise the discretion pursuant to s 101(3).
[46] Societe Anonyme Des Eaux Minerales d’Evian v the Yoghurt Co Pty Ltd [2012] ATMO 53 [31].
[47] Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300 at [167], [172] and [173].
[48] Re Rawhide Trade Mark [1962] RPC 133 (Ch D).
Decision
The application for removal under section 96 of the Act has been successful. Pursuant to section 101(1) of the Act, I therefore direct that Trade Mark Registration Number 170010 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before the end of that period, the registration will be dealt with as the court sees fit.
Costs
The Removal Applicant has been successful in relation to the application for removal of the Trade Mark and has requested costs. I direct that costs in relation to trade mark registration 170010 be awarded against the Removal Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 December 2020
16
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