Opposition by Little River Band Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Victor Marshall to remove trade mark numbers 502665 (CLASS 41) and 932810 (class 9) – LITTLE RIVER...
[2021] ATMO 39
•17 May 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Little River Band Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Victor Marshall to remove trade mark numbers 502665 (CLASS 41) and 932810 (class 9) – LITTLE RIVER BAND – in the name of Little River Band Pty Ltd
Delegate: | Jock McDonagh |
Representation: | Opponent: Siobhán Ryan and Melia Benn of Counsel instructed by O’Reilly Stevens Lawyers Pty Ltd Applicant: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Pty Ltd |
Decision: | 2021 ATMO 39 Trade Marks Act 1995 (Cth) – s 96 Opposition: application under s 92(4)(b) to remove trade mark from Register in respect of all goods and services – use demonstrated - s 92(4)(b) grounds not established. Trade Mark to remain on Register. |
Background
This matter is a proceeding under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) in which by an application filed on 14 January 2019, Victor Marshall (‘Applicant’) has sought the removal from the Register of the trade marks appearing below in respect of all the goods and services for which each is registered:
| Trade Mark No. | 502665 | 932810 |
| Trade Mark | LITTLE RIVER BAND | Little River Band |
| Registered from | 09.01.1989 | 01.11.2002 |
| Goods/Services | Class 41: Entertainment services | Class 9: Apparatus for recording, transmission or reproduction of sound and images, specifically records including compact discs, tape recordings, DVDs, and any other mechanical means of recording and transmitting sound and images |
On 13 March 2019, Little River Band Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose the removals. The Statement of Grounds and Particulars, filed 24 April 2019, asserted that the Opponent or an authorized user had used trade mark registrations 502665 and 932810 (collectively the ‘Trade Marks’) as registered or with additions and alterations not substantially affecting their identity, in Australia on the relevant goods during the three year period ending on 14 December 2018 (‘Relevant Period’), there were circumstances that were an obstacle to the use of the Trade Marks, or alternatively the Registrar should exercise her discretion not to remove the Trade Marks from the Register.
On 1 May 2019, the Applicant filed a Notice of Intention to Defend. The parties then commenced filing evidence in accordance with the Trade Mark Regulations 1995 (‘Regulations’).
I heard the matter, by way of video conference, in Canberra on 18 February 2021 as a delegate of the Registrar of Trade Marks. Siobhán Ryan and Melia Benn of Counsel, instructed by O’Reilly Stevens Lawyers Pty Ltd, appeared for the Opponent. Stephen Rebikoff of Counsel, instructed by Davies Collison Cave Pty Ltd, appeared for the Applicant.
Evidence
The parties filed and served the following declarations in evidence:
| Declarant | Status | Date, (Known as) | Exhibits |
| Evidence in Support | |||
| Kim Summer Cousins | Solicitor for the Opponent | 25.07.19 (Cousins 1) | KSC-1 |
| Kim Summer Cousins | Solicitor for the Opponent | 26.07.19 (Cousins 2) | KSC-A to KSC-W |
| Brian Adams | Founder, co-owner, managing director of The Store for Music (UK) | 6.07.19 (Adams) | A and B |
| Donna Nolan-Wilson | Owner ITS Promotions (USA) | 25.07.19 (Nolan-Wilson 1) | DN-W1 to DN-W8 |
| Stephen Housden | Director and sole Shareholder of Opponent | 29.07.19 Housden 1) | A to G |
| Steve Green | Founder and director of Artists International Management, Inc (USA) | 26.07.19 (Green 1) | A and B |
| Wayne Nelson | Director Half Nelson Music Inc. lead singer, bassist & tour manager extant LRB | 28.07.19 (W. Nelson 1) | A to G |
| Zoe Renee Frecklington | Paralegal for Opponent’s solicitors | 14.12.17 (Frecklington) | |
| Evidence in Answer | |||
| Victor Marshall | Applicant | 21.08.19 (Marshall) | |
| Karen Don | Director (of whom not specified in declaration) | 2.08.19 (Don) | A and B |
| Evidence in Reply | |||
| Wayne Nelson | Director Half Nelson Music Inc. lead singer, bassist & tour manager extant LRB | 19.10.19 (W. Nelson 2) | AI - AY |
| Donna Nolan-Wilson | Owner ITS Promotions (USA) | 19.10.19 (Nolan-Wilson 2) | DN-W9 to DN-W19 |
| Stephen Housden | Director and sole shareholder of Opponent | 18.10.19 (Housden 2) | J to K |
| Shane Sullivan | Long-time fan of LRB, Gold Member of LRB Fan Club | 18.10.19 (Sullivan) | SS1 to SS14 |
| Kim Summer Cousins | Solicitor for the Opponent | 21.10.19 (Cousins 3) | KSC-X to KSC-AS |
| Rhonda Nelson | Co-owner of Half Nelson Music Inc | 20.10.19 (R. Nelson) | |
| Mario de Riso | Manager of business affairs of Frontiers Records SRL (Italy) | 18.10.19 (de Riso) | MdR-1 to MdR-4 |
| Edward Gertler | Owner and manager of Digital Delivery Services (USA) | 17.10.19 (Gertler) | |
| Steve Green | Founder and director of Artists International Management, Inc (USA) | 17.10.19 (Green 2) | SG-1 and SG-2 |
| Michael Foley | Trading as ‘The Science of Social Media’ (USA) | 20.10.19 (Foley) | MF1 to MF5 |
By way of overview, evidence accepted by both parties includes that in the following paragraphs.
A band called the Little River Band (LRB) was formed in Melbourne Australia in 1975. The original members were Gerard Bartelkamp (‘Beeb Birtles’), Graham Davidge, Graeham Goble, Dave Orams, Derek Pellicci and Glenn Shorrock.
In due course it was decided that LRB should be “owned” by a trust of which the Opponent, (then called We Two Pty Ltd), would be the trustee and the members of LRB, or companies controlled by them, would be the beneficiaries. This arrangement was put into effect with the result that, among other things, the Opponent became registered as the proprietor of the Trade Marks.
The membership of the band changed over the years. The original six members have left and been replaced by new musicians. It seems that whenever a member of the band retired, his interest in the trust was sold to the remaining members or to the incoming musician. The documentation that was brought into existence when there was a transfer of the equitable ownership of an interest in the trust sometimes contained an acknowledgement that the Opponent was entitled to the trade mark.
The last of the original members of LRB, Glenn Shorrock, left LRB in 1997. He was involved in legal proceedings to wind up the Opponent. However, this resulted in a settlement in which Shorrock and his management company acknowledged that the Opponent (then called We Two Pty Ltd) was the sole and absolute beneficial owner of the Trade Marks and the goodwill arising from them, and that the Opponent had exclusive world rights to use the Trade Marks in relation the live performances, making recordings, and generally conducting business using the Trade Marks.[1]
[1] W. Nelson 1 at [38] and [39] and Annexure I.
In March 2000, the Opponent granted Euterpe Productions LLC (‘Euterpe’) a non-exclusive world-wide licence to use the Opponent’s intellectual property, including the Trade Marks.[2]
[2] Ibid, at [46].
In later years, a dispute emerged between the members of the original line-up and those now in control of the Opponent. In 2002 a group of original singer/songwriters – Beeb Birtles, Glenn Shorrock and Graeham Goble – sought to re-form in Australia under the name ‘Birtles, Shorrock and Goble, the Original Little River Band’. The Opponent brought proceedings against them for trade mark infringement which resulted in a settlement deed executed in June 2002 pursuant to which Birtles, Shorrock and Goble agreed that the Opponent was the owner of the Trade Marks and that they would not use the Trade Marks as their name or in the name of their band, but would be entitled to refer in promotional and advertising material to the fact that they were members of the original line-up of the band.[3]
[3] W. Nelson 1, at [53] to [57] and Annexure J.
In 2019, the line up of LRB was Wayne Nelson, Chris Marion, Rich Herring, Ryan Ricks, and Colin Whinnery.[4] This line up is resident in the USA.
[4] Ibid, at [52].
I note that much of the Marshall declaration as evidence in answer appears to be a combination of legal submissions and the declarants opinions, particularly premised on the basis that pre-2000 lineups of LRB are the only authentic iteration of the band and the current LRB is merely an American ‘cover band’ that does not deserve to bear the LRB name. However, where the Marshall declaration contains evidence relevant to my decision I shall take it into account.
I shall refer to specific elements of evidence under the various limbs of the decision.
Discussion
Section 92 relevantly states:
92.Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2)The application:
(a)must be in accordance with the regulations; and
(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:For prescribed court see section 190.
(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.
Section 100(1)(c) of the Act provides that an opponent bears the onus of rebutting the allegation made against it under s92(4)(b), which it may do by, inter alia, establishing that the Trade Marks, (or, per s 100(3)(a), the Trade Marks with additions or alterations not substantially affecting its identity), were used in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[5]. A single bona fide use of the trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[6]. However, Wilberforce J, in Nodoz Trade Mark[7] (Nodoz), said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”
[5] [1982] FSR 72.
[6] [2001] FCA 261; (2001) 51 IPR 149 at [17].
[7] (1962) RPC 1 at 7.
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark[8]; although one invoice, if genuine, will suffice: Geo W McPherson v Remington[9].
[8] [1977] RPC 131.
[9] (1999) 47 IPR 636.
As mentioned in [2], above, the relevant period for the purposes of s 92(4)(b) is the three years ending on 14 December 2018.
The Opponent points to the following areas of use of the Trade Marks for Class 9 goods:
Sales of CD, DVDs, vinyl LPs and digital downloads from various internet websites in Australia and overseas.
CDs, DVDs and vinyl LPs on sale in Australian stores.
The Opponent points to the following aspects of trade mark use in respect of the Opponent’s Class 41 services:
Live streaming of LRB concerts on LRB Facebook page.
Ticket to a LRB concert in New Zealand ordered in Australia with Australian credit card.
Live streaming of LRB concerts on third party Facebook pages.
Online forums, video entertainment services, online videos on LRB web page and LRB Fan Club Web page.
Music available on online music subscription services such as Spotify, iTunes, etc.
Mr Rebikoff submitted that I should not consider sale of digital downloads as use with respect to Class 9 good ‘specifically records including compact discs, tape recordings, DVDs, and any other mechanical means of recording and transmitting sound and images’, as they were not mechanical nor involving a ‘hard copy’ of the musical performance. I agree with this interpretation of the specification and I will only consider CDs, DVDs, tape recordings, and LPs as relevant goods. Digital downloads are more properly considered as entertainment services.
Mr Rebikoff also submitted that use of the band name on relevant goods and services did not amount to trade mark use rather it was merely descriptive of the music contained on any recording, citing Musidor BV v Robert William Tansing[10] (‘Musidor’).
[10] [1994] FCA 1242.
Ms Ryan pointed out that Musidor was decided on agreed facts from the first instance proceedings and involved an unauthorised ‘bootleg’ recording of a Rolling Stones concert. In Musidor the use of the band name was not trade mark use, rather it was a legitimate description that the recording contained songs performed by the band. The Court in Musidor accepted that a band name could function as a trade mark and distinguish the products of one band from another; however, it depended on the context of the packaging.
I agree with Ms Ryan’s characterisation of how the use of the LRB band name in respect of the relevant goods and services is trade mark use, in that it distinguishes LRB’s music and identity from other bands.
I am satisfied that Housden 1 and W. Nelson 1 provide evidence that the Opponent has licensed Euterpe to use the Trade marks and to further license other parties to distribute the Opponent’s goods and services bearing the Trade marks in the course of trade.
I am further satisfied that de Riso (at [6]) and W. Nelson 2 (at [15]) demonstrate that LRB CDs were distributed for sale in Australia during the relevant period.
Sullivan (at [19] and [26]) provides evidence of LRB CDs and vinyl LPs on sale in the Red Eye Record Store in Sydney. Cousins 3 (at [6(a)(ii)]) provides evidence of the LRB ‘Big Box’ CD/DVD set for sale on an Australian music website that sells musical recordings.
Turning to the Class 41 entertainment services, I note that there was no limitation to the specification. There is no requirement for in-person concerts on stage in front of a ticket-paying audience, for example. Consumers of music can choose to be entertained in various ways, attending in-person concerts, watching concerts broadcast on television or streamed on the internet, or purchasing subscriptions to online musical services for aural entertainment.
Nolan-Wilson 2 (at [29]) states that all LRB music is available to be streamed in Australia via subscriptions to providers such as Spotify, iTunes, Google Play, Pollstar.com and I Heart Radio. Gertler (at [3] to [5]), W. Nelson 1 (at [99] and Annex AH), and W. Nelson 2 (at [7] and [10] and Annex AJ) demonstrate such use in Australia during the relevant period.
While the Marshall declaration provides a detailed history of LRB, it seems fixated on a difference between the ‘original’ LRB and the ‘American’ LRB. It ignores the trust arrangement set up by the original band members that made the Opponent legal owner of the Trade Marks. As each band member departed, his interest was validly assigned to the new members of LRB. There is no basis to deem use non-use of the Trade Marks because the original members are no longer part of LRB.
Decision
The evidence satisfies me that there has been genuine commercial use of the Trade Marks with respect to the specified goods and services in the registrations during the relevant period. The grounds for removal have not been established and I therefore refuse to remove the Trade Marks.
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
The general rule is that costs follow the event. As the successful party, the Opponent is entitled to its costs and I award costs against the Applicant in accordance with Schedule 8 of the Regulations.
Jock McDonagh
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 May 2021
Key Legal Topics
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Intellectual Property
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Administrative Law
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