Opposition by Mark Robinson and Brenda Robinson to an application under section 92 of the Act by Horticulture Innovation Australia Limited for removal of trade mark number 1244726 (class 31) – SIT – in the names of...

[2019] ATMO 100

TRADE MARKS ACT 1995

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

Re: Opposition by Mark Robinson and Brenda Robinson to an application under section 92 of the Act by Horticulture Innovation Australia Limited for removal of trade mark number 1244726 (class 31) – SIT – in the names of Mark Robinson and Brenda Robinson.

DELEGATE:

Nicholas Barbey

REPRESENTATION:

Opponents: Self represented - written submissions

Applicant: Written submissions by Melinda Upton and Jessie Buchan, DLA Piper

DECISION:

2019 ATMO 100

Trade Marks Act 1995 (Cth) – Section 96 opposition: s 92(4)(a) and s 92(4)(b) application for complete removal – s 92(4)(b) successful – no use in relevant period – exercise of Registrar’s discretion appropriate in relation to some goods – trade mark to remain on Register for

  restricted specification.  

Background

1.   Mark Robinson and Brenda Robinson (‘the Opponents’) are the registered owners of trade mark registration 1244726, relevant details of which are reproduced below:

Trade Mark:  SIT (‘the Trade Mark’)

Registration Number:            1244726

Filing Date:  5 June 2008

Goods:Class 31: Agricultural, horticultural and forestry products and grains not included in other  classes, live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals including dehydrated foods, nutritional supplements and treats; malt (‘the Registered Goods’).

2.   On 30 May 2017, Horticulture Innovation Australia Limited (‘the Applicant’) filed an application based on ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking complete removal of the Trade Mark from the Trade Marks Register (‘the Register’).

3.   The Opponents filed a Notice of Intention to Oppose (‘NIO’) removal and a Statement of Grounds and Particulars (‘SGP’) on 19 July 2017. The Applicant filed its Notice of Intention to Defend on 22 August 2017.

4.   The Opponents subsequently filed Evidence in Support (‘EIS’) of their opposition to removal. This was followed by the filing of Evidence in Answer (‘EIA’) by the Applicant and Evidence in Reply (‘EIR’) by the Opponents.

5.   Both parties were advised of their right to request a hearing or to file written submissions. Each party chose to rely solely on written submissions. The Opponents prepared their own submissions and the Applicant filed written submissions prepared by Melinda Upton and Jessie Buchan of DLA Piper.

6. I am a delegate of the Registrar of Trade Marks and I am to decide whether the Trade Mark should be removed, either in its entirety or in part, from the Register as required by s 101(1) of the Act. In doing so I take account of the material comprised of the written record – namely, the removal application, the NIO, the SGP, the evidence and the written submissions filed.

The relevant provisions

7. Section 92 of the Act relevantly provides:

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.

Grounds, relevant period and onus

8. The application for the Trade Mark was filed on 5 June 2008 and the removal application was filed on 30 May 2017. Pursuant to s 92(4)(b), the removal application complies with s 93(2)1 because more than five years has elapsed since the application’s filing date.

9. Given the particularisation of s 92(4)(a), it has been accepted that this provision essentially merges with s 92(4)(b) once a trade mark has been registered for five years.2 Accordingly, I will proceed firstly to consider the matter under s 92(4)(b).

10.  Since the removal application was filed on 30 May 2017, the relevant period in which the Opponents must establish use of the Trade Mark in good faith is the three year period ending on 30 April 2017 (‘Relevant Period’).

11. Pursuant to s 100(1)(c) of the Act, the Opponents bear the onus of rebutting the non- use allegations under s 92(4)(b) of the Act. The relevant standard of proof required is on the balance of probabilities.3

Evidence

12.  The parties filed the following declarations as evidence in this proceeding:

EIS

1 See s 93(2) of the Act as it stood prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Schedule 1, Part 3).

2  See  M Davison Shanahan’s Australian  Law of  Trade  Marks and  Passing  Off  online edition, 2016

Thomson Reuters,  [70.510];  Opus RV Pty Ltd v  H Taylor &  Son (Brokley) Limited [2019] ATMO  9,

[10]   – [11]; Neil Pryde Limited v Callaway Golf Company [2018] ATMO 63, [20]; AIA Agricola Italiana Alimentare SpA v Borgo Developments Pty Ltd [2017] ATMO 152, [14]; Kathryn Hams v Indian Motorcycle International, LLC [2016] ATMO 78, [9].

3 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] in respect of oppositions under s 52 of the Act.

·     Mark Robinson dated 25 November 2017 together with twelve exhibits (‘Robinson 1’).

EIA

·     Sally Louisa Jane Holmes, general counsel and company secretary of the Applicant, dated 27 February 2018 (‘Holmes Declaration’).

EIR

·     Mark Robinson dated 20 April 2018 (‘Robinson 2’).

13.  Robinson 1 explains that the Opponents are the owners of several trade marks registered in Australia (see Annexure 1). Their trade mark portfolio includes the registered trade marks NATURES BLEND,4 LIVER SNAPS5 and NATURES PET Naturally.6

14.  Robinson 1 states that the Opponents have continuously used the Trade Mark to market and sell the Registered Goods through Australian wholesale and retail channels. Furthermore, it is declared that the target audience for the Registered Goods include ordinary consumers, retailers and members of the veterinary industry.

15.  Robinson 1 contains the following exhibits which purport to be evidence of use of the Trade Mark in relation to the Registered Goods:

·     Exhibit SIT 31-080 contains the following seven photographs of the Opponents’ use of the Trade Mark on packaging (see Annexure 2).

·     Exhibit SIT 31-088 contains several advertising extracts from the ‘PET INDUSTRY NEWS’ magazine. The extracts provided are from volume 25 (no. 4), volume 26 (nos. 1 to 3) and volume 27 (no. 3) of the magazine. Reproduced below is one extract which is representative of the extracts provided:

4 See Australian trade mark registration number 1026091.

5 See Australian trade mark registration number 766848 which I note Brenda Lesley Robinson, not the Opponents, is listed as the registered owner of this trade mark.

6 See Australian trade mark registration number 1055261.

·     Exhibit SIT 31-070 contains a commercial invoice dated 17 July 2016. The invoice is headed with the words ‘NATURES BLEND’ and below this header appears the phrase ‘A KISS OF NATURE’. The items listed in the “description” column include ‘SIT FLAXSEEDS 500G’, ‘SIT CHILLI RED’, ‘SIT LIVA SNAPS 100G’ and ‘SIT CHIA SEEDS 200G’. Meanwhile, the “item no.” column of the invoice includes a reference to ‘SIT050’ which corresponds to ‘STICK INSECT TOT’ under the “description” column.

·     Exhibit SIT 31-075 contains a commercial invoice dated 26 July 2016. The invoice is headed with the words ‘NATURES BLEND’ and below this header appears the phrase ‘A KISS OF NATURE’. Relevantly, the items listed in the “description” column include ‘SIT LIVER SNAPS 1KG’.

16.  According to Robinson 1, the Opponents’ use of the Trade Mark includes use in combination with its other registered Australian trade marks. Robinson 1 states that it is common retail industry practice for products to contain multiple trade marks. In alignment with such practice, the declarant acknowledges the Trade Mark is promoted both on its own and in combination with other trade marks. Further, the declarant believes the Applicant and Opponents are in direct competition due to the similar nature and trade channels of the Registered Goods.

17.  The Holmes Declaration outlines the Applicant’s sphere of commercial operations  and states that the Applicant operates in an entirely different market to the Opponents. The Applicant is a not-for-profit company which has a significant public status being an industry services body within the Australian horticulture industry. Its primary area of interest is the research and development of new technologies to control Queensland fruit flies in Australian horticultural production areas.

18.  The Applicant is the owner of currently pending Australian trade mark numbers 1870815 and 1870818, the details of which are set out below:

Trade Mark:  SITPLUS

Registration Number:                  1870815

Priority Date:  19 May 2014

Goods:Class 31: live sterile insects for use in biological control programs of insect pests in agriculture and horticulture; live sterile insects for

agricultural     and     horticultural     insect     pest eradication and control programs

Trade Mark:  

Registration Number:                   1870818

Priority Date:  19 May 2014

Goods:Class 31: live sterile insects for use in biological control programs of insect pests in agriculture and horticulture; live sterile insects for agricultural and horticultural insect pest eradication and control programs

(collectively the ‘SitPlus Applications’).

19.  The Holmes Declaration discusses what the Applicant believes are the differences between the goods provided by the parties. On the one hand, the Applicant’s business involves the provision of live sterile insects for a dedicated purpose. On the other hand, it believes the Opponents are a health food business which supplies health foods and pet treats. The Applicant is not aware of any marketplace confusion between the respective trade marks and it only became aware of the Trade Mark after it was cited as an objection against the SitPlus Applications.

20.  Robinson   2   largely   restates   information   previously   disclosed  in  Robinson   1

concerning use of the Trade Mark. It also outlines the Opponents’ view regarding the similar nature of the respective trade marks and the resulting likelihood of confusion arising from this. Robinson 2 also expresses the Opponents’ view that the Applicant would have, or should have, been aware of the Opponents’ registration prior to filing its own application for registration, given that the Australian database of trade marks may be searched by the public.

Section 92(4)(b)

21.  To successfully oppose the removal application, the Opponents are required to establish that they, or an authorised user, have used the Trade Mark (or a substantially identical mark) in good faith in Australia during the Relevant Period.

22. The amount of use required to rebut the non-use allegation need not be extensive. A single bona fide use of a trade mark during the Relevant Period may therefore be sufficient to successfully oppose an application for removal under s 92(4)(b).7 However, if reliance is so placed on a single bona fide use, the evidence substantiating such use ought to be ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.8

23.  The Applicant contends that none of the exhibits in Robinson 1 contain use of the Trade Mark. In particular, the Applicant’s submissions point to the fact that the totality of evidence demonstrates use of the Trade Mark with additions and alterations that substantially affect the identity of the Trade Mark.

24.  The evidence in Exhibit 31-080 does not assist the Opponents’ case because the photographs are undated. Thus, it is unclear whether the photographs reflect actual  use of the Trade Mark during the Relevant Period. Moreover, as the Applicant has pointed out, the photographs are low resolution images which make it difficult to discern their content. Some images do not illustrate any use of the Trade Mark and the remainder are ambiguous as to use of the Trade Mark.

25.  The evidence in Exhibit SIT 31-088 provides only limited assistance to the Opponents’ case. The extracts lack contextualisation as it is unclear what goods the Trade Mark is used in relation to. At best, the extracts refer to the Trade Mark. The ‘Specialities’ are listed as ‘Pet Products and natural remedies’, however, this reference appears to be in relation to the Natures Pet brand given it is listed directly under the domain name ‘ In addition, the term ‘pet products’ would include a diverse range of products such as pet feeding bowls, beds, brushes and collars. This range of products extend beyond the scope of the Registered Goods and it is ambiguous whether the Trade Mark has been used in relation to the actual items set out in the Registered Goods.

26.  Based on the extracts alone, it is difficult to discern the actual nature of the use of the Trade Mark. In the absence of further clarification, the extracts do not demonstrate

7 Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

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

convincing proof of use of the Trade Mark in relation to the Registered Goods during the Relevant Period.

27.  In relation to the commercial invoices in Exhibits SIT 31-070 and SIT 31-075, the invoice dates fall within the Relevant Period and the invoices are taken to be applied in relation to at least some of the Registered Goods.9 However, the invoices have been issued by an entity named ‘NATURE’S BLEND PTY LTD’ with ABN 27 126 406

488. The Opponents are not listed anywhere on the invoices. As such, even if these invoices are considered to demonstrate use of the Trade Mark, it would constitute use of the Trade Mark by a third party.

28. Section 7(3) of the Act provides:

An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

29. Section 8 of the Act relevantly provides:

Definitions of authorised user and authorised use

(1)    A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)    The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)    If the owner of a trade mark exercises quality control over goods or services:

(a)    dealt with or provided in the course of trade by another person; and

(b)    in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)    If:

(a)    a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

9 The Act s 9(1)(c)(ii).

30. The wording of s 8 of the Act makes it clear that ‘control’ is a central aspect of establishing authorised use. To this end, the examples of quality control over goods or services and financial control over trading activities provided for within the provision form a non-exhaustive list of the types of control required to establish authorised use.10

31. Turning to the matter at hand, the Opponents have not adequately addressed what, if any, commercial arrangement they have with ‘NATURE’S BLEND PTY LTD’. In Robinson 1, the Opponents state they are the registered owners of the Australian trade mark for ‘NATURES BLEND’ and this is used in conjunction with the Trade Mark to market the Registered Goods. The Opponents believe that the Trade Mark operates as a badge of origin irrespective of whether it is used on its own or in conjunction with other trade marks. This information does not establish that ‘NATURE’S BLEND PTY LTD’ is an authorised user within the meaning of the Act nor does it shed any meaningful insight as to the nature of this entity.

32.  The Opponents’ written submissions state:

NATURES BLEND is a registered trade mark and business of Mark Robinson and Brenda Robinson.

CLUB PET is a registered trade mark and business of Mark Robinson and Brenda Robinson.

NATURES PET is a registered trade mark and business of Mark Robinson and Brenda Robinson.

(emphasis added)

However, it is unclear whether ‘business’ is a reference to a separate legal entity or the Opponents’ partnership structure. Given the context in which this statement appears, being a recital of the Opponents’ trade marks, I consider the latter is likely.

33.  The Opponents’ written submissions further state:

Mark Robinson and Brenda Robinson have under licence authorised for NATURES BLEND to use their trade mark SIT 1244726 in Class 31 in conjunction with their registered trade marks NATURES BLEND, CLUB PET and NATURES PET …

This is representative of the inconsistent use of NATURES BLEND within the Opponents’ written submissions to refer to a) an apparent authorised user and b) a

10 The Act s 8(5).

registered trade mark. This inconsistency imports further ambiguity as to what meaning should be ascribed to NATURES BLEND.

34.  Furthermore, the mere assertion that a licence existed is not itself sufficient to conclude that the Opponents exercised any form of control over the use of the Trade Mark.11 Both Robinson 1 and Robinson 2 are silent with respect to the existence of ‘NATURE’S BLEND PTY LTD’ and any commercial arrangement that may exist. Meanwhile, the evidence filed is devoid of any licence agreement, documentation and/or information by which to impute that control ‘as a matter of substance’12 has in fact been exercised by the Opponents over the alleged use of the Trade Mark by ‘NATURE’S BLEND PTY LTD’.

35.  In consideration of the above, I am not satisfied that ‘NATURE’S BLEND PTY LTD’ is an authorised user of the Trade Mark.

36. It is therefore redundant to consider whether the use exhibited in the commercial invoices qualifies as use of the Trade Mark with additions or alterations that do not substantially affect its identity. This is because irrespective of the answer to this question, any such use would not be authorised use within the meaning of the Act.

37. The Opponents do not contend nor is there evidence to suggest that any obstacle to use of the Trade Mark existed during the Relevant Period. It follows that the Opponents are unable to rely on s 100(3)(c) of the Act.

38. Bearing the above in mind, I am satisfied that neither the Opponents, nor an authorised user as contemplated by the Act, has used the Trade Mark during the Relevant Period in relation to the Registered Goods.

39. The ground for removal under s 92(4)(b) of the Act has therefore been established in respect of all the Registered Goods. It follows that consideration of the matter under the s 92(4)(a) ground is not required. However, my finding under s 92(4)(b) is not fatal to the continued registration of the Trade Mark. In the circumstances, I am satisfied that it is reasonable to consider the Registrar’s discretion.

11 Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [97].

12 Ibid.

Registrar’s discretion

40. Section 101 of the Act relevantly provides:

Determination of opposed application--general

[…]

(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.

41. Section 101 of the Act bestows a broad discretion not to remove an unused trade mark if the Registrar is satisfied that it is reasonable to do so. This discretion ‘is limited only by the subject matter, scope and purpose of Part 9 of the Act’.13 To this end, the Full Federal Court observed:

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. Otherwise, there would be no need for the discretion.14

42.  Factors which 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 owner of the mark still had a residual reputation in the mark;

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

13 Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].

14 Ibid [38].

·     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 owner was not aware of the applicant’s sales under the mark.15

43. The evidence demonstrates the Trade Mark has been used during the Relevant Period, albeit not directly by the Opponents or by an authorised user within the meaning of the Act. While certain issues have been obscured by the Opponents’ use of identical terminology to indiscriminately refer to trade marks, business structures and corporate entities, it is clear to me that there has been no abandonment of the Trade Mark. The use of the Trade Mark is by a closely related entity of the Opponents, namely ‘NATURES BLEND PTY LTD’.

44.  While the evidence falls short of substantiating use of the Trade Mark in relation to all of the Registered Goods, it nevertheless provides a basis to infer the Trade Mark is being used in relation to a limited subset of the Registered Goods. Such use has occurred during and appears to have continued after the Relevant Period.

45.  The commercial invoices contained in Exhibits SIT 31-070 and SIT 31-075 itemise flaxseeds, chia seeds and sit liver snaps as products which have been sold during the Relevant Period. When the photographs contained in Exhibit SIT 31-080 are considered in light of this information, they serve to indirectly corroborate use of the Trade Mark in relation to such goods notwithstanding the evidentiary deficiencies previously highlighted. The statements within Robinson 1 and the magazine extracts further indicate that LIVER SNAPS and SIT are trade marks used by the Opponents to distinguish their goods. To this end, I concur with the sentiments expressed in Robinson 1 regarding the presence of multiple trade marks on packaging being a commercial reality of the retail industry.

46.  When the above factors are considered in conjunction with the alleged licensing arrangements between the Opponents and ‘NATURES BLEND’, I am satisfied that it is reasonable in the circumstances to exercise the Registrar’s discretion in favour of

15 Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005, [202], summarising Falconer J in Hermes Trade Mark [1982] RPC 425.

the Opponents for a limited subset of goods. I consider it appropriate to preserve the Trade Mark registration for the following goods:

Class 31: seeds; foodstuffs for animals being dehydrated foods, nutritional supplements and treats

Decision

47. The application for removal under s 92(4)(b) of the Act has been successful. However, I am satisfied that it is reasonable to exercise the Registrar’s discretion and allow the Trade Mark to remain registered for the following goods:

Class 31: seeds; foodstuffs for animals being dehydrated foods, nutritional supplements and treats

48.  Accordingly, I direct that the Registered Goods of trade mark registration number 1244726 be amended to those stipulated in the preceding paragraph.

49.  In the event of an appeal from this decision, trade mark registration number 1244726 will not be amended until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

Costs

50.  The parties have sought costs in their favour. However, in this case I find that each party has been partly successful and therefore it is appropriate for each party to bear its own costs.

Nicholas Barbey Hearing Officer

Oppositions and Hearings Trade Marks and Designs 28 June 2019

Annexure 1

Trade Mark Number	Trade Mark	Class(es)	Priority Date	Owner(s)
592358	NATURES PET	5	15 December 1992	Brenda Lesley Robinson
766848	LIVER SNAPS	31	8 July 1998	Brenda Lesley Robinson
820796	SNAPS	31	21 January 2000	Brenda Lesley Robinson
1026091	NATURES BLEND	31, 32	20 October 2004	Mark Robinson & Brenda Lesley Robinson
1055258	NATURES PET SNAP N SHARE	31	14 May 2005	Brenda Lesley Robinson
1055259	NATURES PET	31	14 May 2005	Brenda Lesley Robinson
1055261	NATURES PET Naturally	31, 35	14 May 2005	Mark Robinson & Brenda Robinson
1118070	NATURE'S BLEND NATURALLY	31, 32	9 June 2006	Mark Robinson & Brenda Robinson
1372844	LIVA SNAPS	31	19 July 2010	Brenda Robinson
1389783	Nature's Pet Treat Rewards	31	20 October 2010	Mark Robinson & Brenda Robinson

Annexure 2