Opposition by Kevin Francis Darley to application under section 92 of the Trade Marks Act 1995 (Cth) by Godolphin Management Co. Limited to remove trade mark number 1543379 (class 41) - DARLEY - in the name of...
[2021] ATMO 140
•17 November 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kevin Francis Darley to application under section 92 of the Trade Marks Act 1995 (Cth) by Godolphin Management Co. Limited to remove trade mark number 1543379 (class 41) - DARLEY - in the name of Kevin Francis Darley
Delegate: Timothy Brown Representation: Opponent: Self-represented
Applicant: Francesca Colubriale of Spruson & FergusonDecision: 2021 ATMO 140
Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – opposition to removal under section 96 – no use, or obstacle to use, of the trade mark during the relevant period – Registrar’s discretion not exercised – trade mark registration removedBackground
Kevin Francis Darley (‘Removal Opponent’) is the owner of the following trade mark registration:
Trade Mark Number: 1543379
Trade Mark: DARLEY (‘Trade Mark’)
Filing Date: 27 February 2013
Specifications: Class 41: Horse training and racing services, including such services for thoroughbred horses (‘Trade Mark’s Services’)
On 10 April 2019 Godolphin Management Co. Limited (‘Removal Applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘Act’) seeking removal of the Trade Mark from the Register for all of the Trade Mark’s Services.
A Notice of Intention to Oppose the application for removal was filed by the Removal Opponent on 11 June 2019. A Statement of Grounds and Particulars was then filed on 11 July 2019.
The Removal Applicant filed a Notice of Intention to Defend the application for removal on the 19 September 2019.
Evidence in Support was filed by the Removal Opponent on 22 November 2019. The Removal Applicant then filed Evidence in Answer on 21 May 2020. No Evidence in Reply was filed by the Removal Opponent.
Following the end of the period for filing evidence, the parties were offered the opportunity to be heard. On 19 August 2020 the Removal Applicant requested a hearing. Written submissions were filed by the Removal Applicant on 2 July 2021. The Removal Opponent did not provide a written summary of submissions prior to the hearing. The matter was held before me, a delegate of the Registrar of Trade Marks, via video conference, on 6 July 2021. Francesca Colubriale of Spruson and Ferguson appeared for the Removal Applicant. The Removal Opponent was self-represented and accompanied by Petrina Eisenhauer.
Preliminary Matter
On 5 July 2021 the Removal Opponent made a request for new evidence to be considered under Trade Mark Regulations 1995 (Cth) (‘Regulations’) regulation 21.19. The evidence being:
·Information about descendants of the Darley Arabian stallion.
·An audit report of Darley Australia Pty Ltd, a company connected to the Removal Applicant.
·A collection of minutes and email correspondence from the Foreign Investment Review Board referencing both the Removal Opponent and the Removal Applicant.
Regulation 21.19 affords the Registrar of Trade Marks discretion to consider new information and whether it should be considered in making the decision. The party seeking admission of the new evidence needs to make a compelling case for its inclusion.
The Removal Opponent submitted that it was in the public interest to consider the evidence because of its existing common law rights in the Trade Mark, and the potential ‘flow on effect it will have if other wealthy Internationals come in and demand to take other Iconic Australian Trademarks.’. Additionally, the Removal Opponent argued that there was no need for the Removal Applicant to ‘have both Darley and Godolphin’ as trade marks. The new evidence was not filed as Evidence in Reply due to a set of exceptional circumstances that included issues with the Removal Opponent’s previous legal representation, hospitalization, flooding in New South Wales in late March 2021, and the ongoing disruptions caused by the COVID-19 pandemic.
I do not find the public interest argument advanced by the Removal Opponent persuasive. The admission of evidence one day before the hearing would significantly prejudice the Removal Applicant. Furthermore, the Removal Opponent’s case for the inclusion of the new evidence also does little to address the evidence’s relevance to the current matter. The new information does not concern the use of the Trade Mark, or in lieu of use, any obstacles to the use of the Trade Mark. The financial circumstances of the Removal Applicant are not relevant to the removal application, and there is no explanation about how the information regarding the descendants of Darley Arabian stallions pertains to the use of the Trade Mark. Accordingly, I have not exercised my discretion to consider the new evidence. The decision will be determined with regard to the evidence properly filed during these proceedings.
Evidence
Removal Opponent
The Removal Opponent’s evidence consists of the following declaration:
·Declaration made by Kevin Francis Darley on 21 November 2019 (‘Darley Declaration’) with Annexures KFD 1 to KFD 8.
The Removal Opponent states that Mr Darley is the owner of the business Darley Thoroughbred Syndications, and that his family first introduced thoroughbred horses to Australia in the early 1800s.
The Darley Declaration declares that the Removal Opponent first commenced breeding and training horses in 1964 and has since provided various horse racing services for many decades.
The Darley Declaration explains that the racing industry is comprised of many participants from a diversity of skill sets, including but not limited to, breeders, owners, trainers, stable staff, jockeys, veterinary surgeons, agistment managers, stock transporters, racecourse personnel, geneticists, buyers, and promoters. The Darley Declaration states that ‘the industry is founded on networks and reputations built over many years of networking and engagement of traders offering services within the network’. Consequently, the Removal Opponent’s business is initiated and largely conducted via phone and email where the Trade Mark is used phonetically and in documentation provided to customers.
The Darley Declaration includes the following claims regarding use of the Trade Mark:
·The Removal Opponent has used Trade Mark ‘for all the services specified in the registration but not necessarily concurrently’.
·For many years, the Removal Opponent has raced thoroughbred horses and stallions and continues to do so.
·The Removal Opponent has at any given time around 50 brood mares.
·Due to the Removal Opponent’s family history and business activities, the Trade Mark is well known in the racing industry and has a long-standing reputation.
The Removal Opponent relies on the following evidence to the support the above claims:
·Annexure KFD-2: A copy of a print of the picture The Darley Arabian by John Wootton, which is also used on the Removal Opponent’s invoices.
·Annexure KFD-4: Example of a letterhead featuring the Trade Mark.
·Annexure KFD-6: Third party trader invoices marked ‘Paid’ with a stamp of the Trade Mark dated from January 1995 to April 2016.
·Annexures KFD-5 and KFD-7: Copies of invoices issued by the Opponent from May 2016 to 10 October 2018. These invoices feature the Trade Mark in a letterhead at the top of the invoice.
·Annexure KFD-8: Photographs of signage featuring the Trade Mark on a fence, and an article from The Australian newspaper about the ongoing legal proceedings between the Removal Opponent and the Removal Applicant.
The Removal Opponent, and his son, TF Darley, were also the owners of the following lapsed trade mark application:
Trade Mark Number: 832039
Trade Mark:
Removal Applicant
The Removal Applicant’s evidence consists of a declaration by Ross Maxwell Murray Cole made on 20 May 2020 (‘Cole Declaration’) with Annexures A to X.
Mr Cole is the director of Godolphin Australia Pty Ltd (‘Godolphin Australia’), formerly named Darley Australia Pty Ltd. Godolphin Australia and the Removal Applicant are two of a number of companies within the Darley and Godolphin group of companies (‘Godolphin Group’) founded by HH Sheikh Mohammed, Vice President and Prime Minister of the United Arab Emirates.
The Cole Declaration declares that that the Godolphin Group provides horse stud services from its headquarters in the United Kingdom, as well as other countries, including Australia. Horses bred by, or through, the services offered by the Godolphin Group are predominantly used in the horse racing industry. In addition to providing horse breeding services to third parties, the Godolphin Group also provides horses for use within the Godolphin Group’s own racing operations.
The Cole Declaration declares that the Removal Applicant has been providing services in Australia since July 2000 with thoroughbred breeding services having been provided under the trade mark, DARLEY (‘DARLEY Trade Mark’), from 2003 to present. Additionally, the DARLEY Trade Mark has been used internationally by the Removal Applicant, and other companies falling under the Godolphin Group, in the United Kingdom, Ireland, the United State of America and Japan.
In support of the above claims, the Cole Declaration includes:
· A summary of the Removal Applicants marketing expenditure and promotional activities in connection with the trade mark DARLEY between 2016 and 2018.
· Results from horses bred by the Removal Applicant in racing seasons from 2013 to 2019.
· Demonstrated use of the DARLEY Trade Mark in YouTube videos, ANZ Bloodstock News issues, radio advertisements, Sky Racing Channel advertisements and the Removal Applicant’s own printed marketing material.
· Promotional events featuring the DARLEY Trade Mark, namely parades at the Kelvinside stud farm in 2016 and 2017, and at Northwood Park from 2014 to 2016.
The Cole Declaration also explains that horse trainers are required to apply for a licence in each state and/or territory in which they train horses, and notes that the Removal Opponent does not hold a horse trainer licence in New South Wales, Victoria, South Australia or Western Australia. Horse trainer licence records from the remaining states or territories were omitted because they were not available online. The Cole Declaration also includes a search of the ASIC Business Name Registry for the business name, ‘Darley Thoroughbred Syndications’, which shows that the business name was cancelled on 25 October 2018.
Grounds, Onus and Relevant Period
The Removal Applicant filed for removal under section 92(4)(b) of the Act, which 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.
The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time within the three-year period beginning on the 10 March 2016 and ending on the 10 March 2019 (‘Relevant Period’).
The Removal Opponent bears the onus of rebutting the allegation made under section 92(4)(b) of the Act.[1] The Removal Opponent may rebut the allegation by establishing that:
·The Trade Mark was used in good faith by its registered owner in relation to Trade Mark’s Services during the Relevant Period;[2] or
·The Trade Mark was not used because of circumstances that were an obstacle to use of the Trade Mark during the relevant period.[3]
[1] Trade Marks Act 1995 (Cth) section 100(1)(c).
[2] Ibid s100(3)(a).
[3] Ibid s100(3)(c).
The standard of proof required of the Removal Opponent is on the balance of probabilities.[4]
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
I note that I have discretion to allow the Trade Mark to remain registered even if there has been no use of the Trade Mark during the Relevant Period.[5]
Discussion and Reasons
[5] Ibid s101(3).
Use of the Trade Mark during the Relevant Period
The first issue to be determined is whether there has been use of the Trade Mark by the owner, or an authorised user, in good faith in relation to the Trade Mark’s Services during the Relevant Period.
The ‘use’ required is ‘use as a trade mark’. This 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 trade mark to the goods or services.[6]
[6] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
The Removal Applicant submits that the Removal Opponent has not demonstrated use of the Trade Mark in good faith and has failed to discharge its onus under section 100(3) of the Act. In support of its submission, the Removal Applicant notes that the majority of evidence provided by the Removal Opponent is either comprised of documents that can be regarded as internal documentation or is otherwise lacking in probative value or relevance.
Having reviewed all of the Removal Opponent’s evidence, I accept that the evidence establishes that the Removal Opponent has previously been active in the horse racing industry. What is less clear is whether the Trade Mark has been used by the Removal Opponent in relation to the Trade Mark’s Services. The Darley Declaration states that the racing industry should be distinguished from conventional trading industries because race horses are not typically badged with trade marks. Rather, business is conducted via phone conversation or email, and the reputation of a trader in the horse racing industry is built through word of mouth and networking. I acknowledge that it is necessary to consider use of the Trade Mark within the context of the relevant industry, and that the particular nature of the racing industry may present a challenge in demonstrating use of the Trade Mark. However, this does not discharge the Removal Opponent’s onus to demonstrate use of the Trade Mark in connection with the Trade Mark’s Services.
I note that Annexure KFD-8 of the Darley Declaration shows signage featuring the Trade Mark. The sign is leaning against a fence at one of the Removal Opponent’s breeding properties. The Darley Declaration states that the fence ‘is in public view’, but the use of the sign is not further contextualised. No information has been provided explaining the circumstances in which the sign has been used, and there is no further evidence demonstrating use of the sign on display to the public in a manner that would connect the Trade Mark to the provision of the Trade Mark’s Services. Accordingly, I am not satisfied that this signage constitutes use of the Trade Mark.
Annexure KFD-4 of the Darley Declaration consists of a letterhead featuring the Trade Mark. The Darley Declaration states that this letterhead was used around the year 2000 and has been used in the course of trade ‘over the years’. Despite this statement no examples have been provided of correspondence, or other public documents featuring this letterhead within the Relevant Period.
The Removal Opponent’s evidence includes a newspaper extract from The Australian that discusses the Removal Opponent’s dispute with the Removal Applicant over the Trade Mark and references ‘Kevin Darley’. The Darley Declaration draws attention to the picture of the Removal Opponent featured in the article. However, neither the reference to the Removal Opponent’s name or the photo can be considered evidence of Trade Mark use. Rather than demonstrating use of the Trade Mark in the course of trade, the article refers to the Removal Opponent in his capacity as the owner of the Trade Mark.
Annexures KFD-6 and KFD-7 of the Darley Declaration include a number of invoices issued by third parties that have been stamped with the Trade Mark, including remittance advices from Racing NSW. I do not consider these invoices to be use ‘as a trade mark’. The Darley Declaration states that the Removal Opponent returns these invoices to the third-party traders along with payment for the invoices, effectively reminding the third-party traders of the Trade Mark. However, these invoices are receipts for services offered by other parties. They do not demonstrate use of the Trade Mark in connection with the provision of the Trade Mark’s Services, and only serve to demonstrate that the Removal Opponent has engaged a number of third parties in a range of veterinary, stable, and equine services. Similarly, while the remittance advices for the prize money paid out by Racing NSW indicate the Removal Opponent is active within the racing industry, they do not demonstrate any use of the Trade Mark in respect of the Trade Mark’s Services.
Turning to the invoices issued by the Removal Opponent, the Darley Declaration states that the invoices are rendered by its business under the Trade Mark to consumers of the Trade Mark’s Services. Although the Trade Mark is displayed prominently in the top left of the invoices, I note that the majority of the invoices provided only reference the names or breeds of horses and do not clearly demonstrate a connection between the Trade Mark and the Trade Mark’s Services. The exception is one invoice dated 10 October 2018 (‘Invoice’) that specifies ‘horse racing services’ and ‘breeding stock’. The Removal Applicant contends that this evidence is of little probative value, noting that the date on the Invoice is hand written despite other details in the Invoice being printed and that the horse referenced, ‘The Apprentice’, last competed in 2010, 8 years before the date on the invoice.
As a general principle, the fewer acts of trade mark use relied on the more solidly they need to be established.[7] In the circumstances where a removal opponent relies on one, or a few, instances of alleged use, those instances should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’[8]. Although in this case, the Removal Opponent is not seeking to rely solely on a single invoice, in my view the Removal Opponent’s opposition relies heavily on this single piece of evidence.
[7] Re Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
[8] Ibid.
The fact that key details of the Invoice have been handwritten is not sufficient reason to dismiss it, particularly noting that the handwritten nature of the Invoice is consistent with the other invoices included in the Evidence in Support. However, the Removal Opponent did not sufficiently rebut the Removal Applicant’s concerns regarding the reference to the race horse, ‘The Apprentice’. Furthermore, there is inconsistency between the Invoice and the Darley Declaration. Despite the Invoice referencing ‘horse racing services’, the Darley Declaration specifically states that the Invoice was rendered ‘for the sale of a race horse named The Apprentice’. The Trade Mark is registered in respect of horse training and racing services, not horse sale or breeding services. Accordingly, in my view the Invoice cannot be regarded as conclusive or convincing proof of use of the Trade Mark in relation to the Trade Mark’s Services.
For these reasons I am satisfied that the Removal Opponent’s evidence does not establish that the Trade Mark was used in relation to the Trade Mark’s Services during the Relevant Period.
Obstacles to Use
Section 100(3)(c) of the Act provides that a removal opponent may rebut an allegation of non-use under section 92(4)(b) by establishing that the trade mark was not used by its registered owner during the period because of circumstances that were an obstacle to the use of the trade mark during the period.
While the Removal Opponent has made no explicit submissions regarding obstacles to the use of the Trade Mark, I note that the Darley Declaration contains statements concerning droughts that have affected business operations and the racing industry in general, and statements referring to issues with the Removal Opponent’s health from 2018 onwards.
The circumstances referred to under section 100(3)(c) exist when events arise that are ‘capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded’ [9]. Events such as droughts may have the potential to effect trade or commercial activity. However, the onus is on the Removal Opponent to demonstrate a causal link between the relevant circumstances and the non-use of the trade mark.[10] In this case, no evidence has been adduced by the Removal Opponent to demonstrate the impact of the droughts or otherwise substantiate the claims regarding the effects of the drought on the racing industry and the Removal Opponent’s business. In the absence of such evidence, I cannot be satisfied that these droughts were an obstacle to the use of the Trade Mark during the relevant period.
[9] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [55] (Drummond J).
[10] Ibid.
Turning to the Removal Opponent’s illness, I note the Darley Declaration contains the following claim:
In the last two years I have had illnesses and hospitalisations which have handicapped by capacity to conduct my business (from late 2018 to the present), to the extent that I have become accustomed to.
In support of this claim, Annexure KD-9 contains two medical certificates from the Opponent’s General Practitioner that state the Removal Opponent was receiving medical treatment during the months of December 2018, January 2019, November 2019 and March 2020.
As indicated above, the circumstances referred to within section 100(3)(c) are those capable of disrupting trade in an area of commercial activity. The health issues described in the Darley Declaration are personal to the Removal Opponent. They are not of a business nature, or circumstances that might otherwise affect or disrupt an area of trade. In Woolly Bull Enterprises Pty Ltd v Reynolds Drummond J stated:
Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.[11]
[11] Ibid [56].
Accordingly, I am satisfied that the Removal Opponent’s illness is not sufficient to rebut the allegation of non-use under section 92(4)(b) of the Act.
As the Removal Opponent has not established use of the Trade Mark or any circumstances that were an obstacle to the use of the Trade Mark, I will now consider whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered.
Discretion
Section 101 of the Act relevantly provides:
(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;
The Removal Opponent bears the onus of satisfying me that that the discretion under section 101(3) of the Act ought to be exercised.[12]
[12] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised the considerations relevant to the exercise of Registrar’s discretion:
In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).
In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants 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; and whether the registered proprietors were aware of the applicants’ sales under the mark.[13]
[13] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [467]-[ 468] (Dodds-Streeton J).
The Removal Opponent has made no submissions regarding the exercise of discretion. The Removal Applicant submits that the Removal Opponent has not discharged its onus of establishing grounds upon which the Registrar’s discretion ought to be exercised and that it is in the public interest for the Trade Mark to be removed for non-use. In respect to the latter point, the Removal Applicant emphasises the use of its own DARLEY Trade Mark in connection with thoroughbred breeding services and its successful operations under the DARLEY Trade Mark outlined in the Cole Declaration.
Despite submissions from the Removal Opponent regarding the Trade Mark’s extensive reputation and use in the horse racing industry, there is little evidence before me to substantiate the Trade Mark’s reputation or use of the Trade Mark outside of the Relevant Period in relation to the Trade Mark’s Services. I note that the invoices provided by the Removal Opponent do demonstrate the Trade Mark being used in relation to the sale of horses. However, in the absence of supporting submissions I do not consider this evidence persuasive. Accordingly, I am not satisfied that it is reasonable to exercise discretion to allow the Trade Mark to remain registered.
Decision
The Removal Opponent has not established its opposition to the removal of the Trade Mark. Accordingly, I direct that trade mark registration 1543379 be removed from the Register one month from the date of this decision.
Should the Registrar be served with a notice of appeal before the removal of the Trade Mark, I direct that the removal of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court’s orders or direction.
Costs
The Removal Applicant sought an award of costs. I award costs against the Removal Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 November 2021
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