Opposition by Scalvino Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Belgrove Holdings Pty Ltd and Millwood Holdings Pty Ltd to remove trade mark number 603096 (class 31) – AUS-AVO-...
[2022] ATMO 174
•5 October 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Scalvino Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Belgrove Holdings Pty Ltd and Millwood Holdings Pty Ltd to remove trade mark number 603096 (class 31) – AUS-AVO- in the name of Scalvino Pty Ltd
Delegate: | M Cooper |
Representation: | Opponent: Michael O’Sullivan of O’Sullivan’s Patent and Trade Mark Attorneys Applicants: Kevin Ashby of IP strategies |
Decision: | [2022] ATMO 174 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 – use demonstrated for some goods - s 92(4)(b) grounds partially established – discretion not exercised - Trade Mark to be removed for some goods. |
Background
Scalvino Pty Ltd (‘Opponent’) is the registered owner of the following trade mark:
Registration: 603096
Trade mark: (‘Trade Mark’)
Filing date: 26 May 1993
Specification: Class 31: Fruit and vegetables (fresh) (‘Goods’)
The Trade Mark is endorsed as follows:
It is a condition of registration that the word AUS-AVO will not be used as the name of a plant variety.
The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.
Registration gives no right to the exclusive use of the word AUS.
On 14 December 2020, Bellgrove Holdings Pty Ltd and Millwood Holdings Pty Ltd (‘Applicants’) applied under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) to remove the Trade Mark from the Register for non-use in relation to the Goods for which it is registered.
A Notice of Intention to Oppose the removal application was filed by the Opponent on 10 February 2021 and on 10 March 2021 it filed its Statement of Grounds and Particulars. A Notice of Intention to Defend was filed by the Applicants on 4 May 2021.
Evidence in Support was filed which comprises the declarations of:
Shane Bendotti, dated 29 August 2021, the Opponent’s Company Secretary, with Annexure SB-1 (‘Bendotti’) and
Martin O’Sullivan, dated 29 July 2021, the Opponent’s Trade Mark attorney, with Annexure MO-1 (‘O’Sullivan’) which attaches the declarations of
·Alfonso Sparacino dated 3 March 2021 (‘Sparacino’) and
·Thanh Tran of 12 March 2021 (‘Tran’).
No evidence was filed by the Applicants.
Following the evidence stages, the Opponent requested a hearing. The Opponent and Applicants provided written submissions in accordance with the Registrar’s direction. While both submissions contained material in the nature of new evidence, neither party objected to its introduction. As the material was of probative value, relevant to the issues before me, I was persuaded to allow it under r 21.15(4) of the Trade Mark Regulations 1995 (Cth).
On 20 September 2022, I heard the matter by videoconference as delegate of the Registrar. Martin O’Sullivan of O’Sullivan’s Patent & Trade Mark Attorneys appeared for the Opponent. Kevin Ashby of IP Strategies appeared for the Applicants.
Summary of Evidence
Bendotti maintains that the Opponent has used the Trade Mark (albeit in a slightly different format) in respect of avocados during the three-year period ending 14 November 2020, including on boxes for packaging, transporting and displaying avocados. He includes photographs of boxes, said to be in use around 2018-2020, in which the retailers present the avocados for sale to the public. Copies of remittance advices for 2018, 2019 and 2020 are annexed. Bendotti acknowledges they do not show the Trade Mark but claims they do demonstrate sales of avocados by the Opponent to third parties in the period December 2018 to January 2020.
The Tran and Sparacino declarations attest to their long-term engagement in the Australian fresh produce industry as wholesale fruit agents (Tran) and marketing agents (Sparacino) for the Opponent’s avocados. They both state that they have received the Opponent’s avocados, via its business Bendotti Avocados, since 2010. They further confirm that the avocados are sent in boxes clearly marked with the Trade Mark and are displayed and sold to customers from those boxes.
Onus
In respect of the proceedings under s 92(4)(b), s 100 of the Act provides that the Opponent bears the onus of rebutting the allegation of non-use. The relevant standard of proof is on the balance of probabilities.[1]
[1] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 [504] (Branson J).
Legislation
Section 92 of the Act relevantly provides as follows:
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:
[...]
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the nonuse 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.
If the Opponent establishes its good faith use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), or that there was a relevant obstacle to its use during the relevant period, it is taken to have rebutted the allegation.[2]
[2] s 100(3).
Alternatively, if the ground for removal is established, s 101(3) of the Act provides that, if the Registrar (or the court) is ‘satisfied that it is reasonable to do so’, it may decide the Trade Mark should not be removed from the Register.
Consideration
There is no evidence of any action concerning the Trade Mark pending in a court (s 92(3)). Based on the available records, the Trade Mark has been registered since 26 May 1993, that is, it has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application was filed (s 92(4)(b)). Self-evidently, it is over 5 years since the filing date of the application for registration (s 93(2))[3].
[3] Section 93(2) of the Act prior to the amendments made by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth).
As noted above, the Applicant sought that the Trade Mark be removed under s 92(4)(b) for all the Goods for which it is registered. The period of non-use was asserted to be from 14 November 2017 to 14 November 2020, that is, the three years ending one month prior to the filing of the non-use application on 14 December 2020 (‘the relevant period’).
Use of the Trade Mark
An opponent is required to show its use of the Trade Mark as a badge of origin indicating a connection in the course of trade between the goods/services and the person who applies the mark to them.[4] A single instance of bona fide use in the relevant period may suffice to resist a removal application[5] however that use requires ‘if not conclusive proof, at any rate overwhelming convincing proof’.[6]
[4] For example, see E&J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 [41] – [43]; (2010) 241 CLR 144 (French CJ, Gummow, Heydon, Crennan and Bell JJ) (‘Gallo’).
[5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J) (‘Woolly Bull’).
[6] Nodoz Trade Mark [1962] RPC 1,7 (Wilberforce J).
The Opponent asserts use of the Trade Mark, in the relevant period, with alterations not substantially affecting its identity, is established by the evidence of a photograph taken in 2019 showing the badged cartons of avocados for sale in a Woolworths store and one taken in or around December 2020 at a wholesale market in NSW. I observe that these photographs are not independently dated, however the use of the Trade Mark in such a manner throughout the relevant period is corroborated by the Tran and Sparacino declarations.
The use depicted in the photographs however is not identical to the Trade Mark as filed. The question therefore arises whether the depiction of ‘AUS-AVO’ on the Opponent’s materials can be characterised as use of the mark ‘with alterations or additions that do not substantially affect its identity’, such that the Opponent might be taken to have rebutted the Applicants’ allegation of non-use.
In Sports Warehouse, Inc v Fry Consulting Pty Ltd, Kenny J said:
Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]
[7] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [154] (Dodds-Streeton J) (’Sports Warehouse’). See also Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380, [256] (Yates J).
A side-by-side comparison between the Trade Mark as registered and its use as disclosed by the evidence appears below:
| Trade Mark | Evidence of use |
As used above, the double lines on top of and underneath the Trade Mark’s words are not present, nor are the angled sides. The Opponent acknowledges this but notes that the depictions of the Trade Mark in the relevant period show the word AUS-AVO with borders, either below and/or with an additional line appearing above it. It contends the lines are ‘more akin to conventional embellishments’ and as such do not make a meaningful contribution to the Trade Mark’s identity. The absence of the angular sides is also noted however it is submitted that these are not prominent design elements and the use identified should be regarded as use of the Trade Mark with alterations not substantially affect its identity. Conversely, the Applicants maintain these ‘embellishments’ are the distinctive elements of the Trade Mark and speculates that there is ‘no doubt the shape contributed to its successful passage through examination,’ adding ‘[h]ad the Opponent regarded the Trade Mark to be the same as the word mark it would have surely seen no need to apply for its registration in plain word format’[8]. Therefore, the Applicants contend, the absence of the double lines and the particular shape alters the identity of the Trade Mark such that any use identified is not appropriately characterised as use of the Trade Mark.
[8] A reference to the Applicant’s Trade Mark applications 1911762 (which lapsed) and 2135740, for the plain word mark ‘AUS-AVO’
As was found in Morny Ltd's Trade Mark,[9] the omission from a trade mark of a conventional form of embellishment does not substantially affect the identity of the trade mark. In Wagner Spraytech Australia P/L v Anest Iwata Australia P/L[10], when considering substantial identity under s 58 of the Act, the delegate compared the plain words ‘Paint Smart’ owned by the opponent with the same words, in fancy text and in a circular device, which the applicant sought to register. Finding for the opponent, the delegate stated:
I do not see, in the get-up of the opposed trade mark, anything other than use of a stylized border device and word font, designed to draw the eye to the words PAINT SMART, which are the only words in the trade mark. It follows that these are the words by which the trade mark would be identified by the public. Mr Hall emphasized the applicant’s claims about the highly discerning nature of its particular customer base of painting ‘enthusiasts’. Nevertheless, I believe it would be a wholly unrealistic expectation of those customers to imagine that they would readily (or ever) assume any difference in derivation between painting equipment bearing the plain words PAINT SMART, and that bearing the same words presented in a border device. The trade marks are substantially identical.[11]
[9] Re Morny’s Trade Mark (1951) 68 RPC 131 (Evershed M.R and Jenkins and Hodson L.JJ).
[10] [2009] ATMO 32.
[11] Ibid [16]. See also Spear & Jackson (Australia) Pty Ltd v Amalgamated Hardware Merchants Ltd [2012] ATMO 80 in respect of a similar analysis. See similarly for a more elaborate device Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, 293 (Kitto J).
Other decisions have also determined that the mere existence of a border device and other non-distinctive features are insufficient to detract from the substantial identity of trade marks.[12]
[12] See also Courier Luggage Pty Ltd v Wenger SA Inc [2015] ATMO 10, [26]; George Weston Foods Ltd v Peerless Holdings Pty Ltd (1999) 48 IPR 145, 152.
The evidence demonstrates use of ‘AUS-AVO’ in a lighter colour on a dark background, as in the Trade Mark. Similarly, there are border lines above and below the words, or just below the words, and they too are in the lighter colour. The words are identically presented. I am not persuaded that these relatively slight differences in the borders, or the absence of the angled corners, operate to separately distinguish the Goods or substantially affect the identity of the Trade Mark. This is because consumers are likely to identify goods sold under it by reference to the word/s AUS-AVO. That is, although the Trade Mark has been depicted with different or differently shaped borders, this use does not detract from the distinctive element, that is, the word/s AUS-AVO, which remain the essential feature in such references.
Given this, I am satisfied that use of the Trade Mark in the manner displayed in the evidence constitutes its use with alterations that do not substantially affect its identity, within the meaning of s 100(3)(a).
Furthermore, given the corroborated evidence, I am satisfied that Trade Mark use is in the relevant period. In addition, the remittance advices from Allcrops, as supported by Sparacino, the Director of Allcrops, demonstrate commercial transactions for sale of the Opponent’s badged avocados during the relevant period. That is, ‘real, as opposed to token, use in a commercial sense.’[13] Therefore I am also satisfied that the evidence establishes use of the Trade Mark in good faith.
[13] Ibid [16].
The Applicants observe that these remittance advices were not addressed to the Opponent but to ‘Bendotti Avocado (Joe Bendotti)’ which suggests any Trade Mark use was not use by the registered owner. In addition, the ABN data provided by the Opponent[14] indicates that it was not registered until 2014 which, the Applicants submit, is not reconcilable with the evidence of Sparacino and Tran that they had been buying avocados from the Opponent since 2010. I note in this regard that the ABN extract shows that ‘Bendotti Avocados’ is one of the Opponent’s business names, not a separate legal entity.[15] Pertinently, it is the Opponent’s ABN which is recorded on the remittance advices. Given this, I am satisfied that the identified use of Trade Mark at all relevant times is appropriately characterised as use by the Opponent. Furthermore, I do not consider there is any relevant discrepancy between its 2014 company registration and the Tran and Sparacino declarations that they had been buying avocados from the Opponent since 2010. The Register notes the various assignments of the Trade Mark since its registration in 1993 and nothing relevant turns on the declarants purchase of the avocados from the Opponent’s predecessors in title.
[14] As attached to the written submission.
[15] I do not consider that there is any pertinent difference between ‘Bendotti Avocado’ and ‘Bendotti Avocados’.
Was it use for the Goods?
As well as the above considerations, any Trade Mark use identified must be on or in relation to the Goods. As acknowledged by the Opponent, it has only used the Trade Mark for its avocados. It made no submission that the registration should be maintained for all the Goods.
As Gleeson J stated in Trident Seafoods Corporation v Trident Foods Pty Limited
if a description of the goods in the registration is broader that the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] – [306]. For example, in Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation [1990] FCA 81; (1990) 17 IPR 269, the Full Court amended the description “dairy products” to “flavoured milk and cheese”. [16]
[16] [2018] FCA 1490 [116] not disturbed on appeal.
And further in Hills Industries Ltd v Bitek Pty Ltd:
The power to excise goods from a statement of goods is consistent with the underlying policy of Part 9 of the Act which is to facilitate the removal of an unused trade mark. Removal of trade marks in respect of goods for which there is no evidence of use is warranted to ensure the integrity and accuracy of the Register: New South Wales Dairy Corporation v Murray Goulburn Co-op Corporation 14 IPR 75.’[17]
[17] [2011] FCA 94 [303] (Lander J).
This is not an opposition which requires a ‘fine distinction’ to be drawn between the type of goods on which use has been established.[18] While I am satisfied the Opponent has established use of the Trade Mark in good faith in the relevant period, that use is demonstrated only on or in relation to one fruit, that is, fresh avocados in class 31. It follows that I am satisfied the Opponent has discharged its obligation to rebut the allegation made by the Applicant under s 92(4)(b) in relation to ‘avocados’ in class 31, but not the broader category of Goods as designated. There is no evidence or claim that the Trade Mark has been relevantly assigned for the purposes of s 100(3)(b) nor of any circumstances that were an obstacle to its use under s 100(3)(c) in this regard.
[18] McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481 (Drummond J).
Given this, it is necessary for me to consider whether to exercise the Registrar’s discretion under s 101(3) to maintain the Trade Mark’s registration for the broader specification.
Registrar's discretion
Even where grounds for removal have been established, s 101(3) of the Act provides that, if the Registrar or the court is ‘satisfied that it is reasonable to do so’, it may decide the trade mark should not be removed from the Register. The Opponent bears ‘the burden of persuasion’[19] on this issue however it does not need to establish ‘exceptional circumstances’ before the discretion can be exercised in its favour.[20]
[19] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380 [273] (Yates J).
[20] Gallo (n 4) [193]-[213].
The Opponent’s written submissions in this regard relate only to use of the Trade Mark for avocados. After I raised the issue at the hearing, the Opponent acknowledged the lack of use for the broader category and did not add anything to its submissions.
The Applicants’ submissions are not directed specifically to the exercise of the discretion, but it strongly submits that the Trade Mark had been abandoned in favour of the Opponent’s deferred trade mark application no. 2225904. This contention is speculative and unsupported by the evidence.
Having regard to the (non-exhaustive) factors applied by Flick J in Gallo,[21] and the further similar factors considered in Austin, Nichols & Co Inc v Lodestar Anstalt, [22] in the circumstances of this opposition, while it cannot be positively stated that the Trade Mark has been abandoned in relation to the broad category of the Goods, there is no evidence of any sales other than for avocados. Further, while there is evidence of the Opponent’s reputation in the Trade Mark in Australia for avocados,[23] there is none for any other fruit or any vegetables nor is any intention to expand use of the Trade Mark to such goods suggested or claimed. The period of non-use for these broad categories is significantly greater than the relevant period. In the absence of further evidence or submissions, I am not persuaded that removing the registration of the Trade Mark for the broad range of Goods and substituting ‘avocados’ would give rise to any market confusion or public detriment, either in Australia or internationally. I have also had regard to s 101(4) of the Act, however there is no convincing evidence or claim that the Opponent has used the Trade Mark in respect of goods or services other than avocados.
[21] Ibid [202] as listed by Falconer J in Hermes.
[22] (2012) 202 FCR 490; 287 ALR 221; [2012] FCAFC 8 [9]-[12] (Jacobson, Yates and Katzmann JJ).
[23] See Sparacino and Tran
As noted above, it is the Opponent which bears the onus of satisfying the Registrar that the discretion ought to be exercised. While acknowledging the broad discretion available under s 101(3), having carefully considered all the claims and material before me, the Opponent has failed to satisfy me that it is reasonable to exercise the discretion not to remove the Trade Mark in respect of the broad range of Goods.
Decision
Section 101 of the Act relevantly provides:
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.
The Opponent has rebutted the allegation of non-use only for ‘Fruit, namely avocados (fresh)’ in class 31. It follows that the ground for removal of the Trade Mark in respect of vegetables and other types of fruit has been established.
I direct that the Trade Mark be removed from the Register after one month from the date of this decision for vegetables in Class 31. I further direct that the Specification of the Goods be amended to read as follows:
Fruit, namely avocados (fresh)
If the Registrar is served with a notice of appeal on or before that time, the registration will not be amended or removed unless the appeal is withdrawn or discontinued. Otherwise, the registration will be subject to the decision of the Court.
Costs
Both parties sought costs. Given that both parties have been partially successful, I make no orders in this regard.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
5 October 2022
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