Opposition by Spa Tech International Pty Ltd to application under section 92 of the Act by Decina Bathroomware Pty Ltd to remove trade mark number 856237 (11) - Indulgence - in the name of Spa Tech International Pty Ltd

[2019] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Spa Tech International Pty Ltd to application under section 92 of the Act by Decina Bathroomware Pty Ltd to remove trade mark number 856237 (11) - Indulgence - in the name of Spa Tech International Pty Ltd

Delegate:	Iain Thompson
Representation:	Opponent: Self represented Applicant: Michael Buck IP
Decision:	2019 ATMO 76 Trade Marks Act 1995 Opposition under section 96 to application under section 92(4)(b). Opponent has not established use of the Trade Mark during the Relevant Period – exercise of Registrar’s discretion not appropriate. Opposition to removal application not established

Background

1. In these proceedings under section 96 of the Trade Marks Act 1995 (‘the Act’) Decina Bathroomware Pty. Ltd. (‘the Applicant’) filed an application on 16 May 2017 seeking the removal of the trade mark hereunder from the Register under the provisions of section 92(4)(b) of the Act for all of the goods in respect of which it is registered:

Registration No:           856237

Priority Date:               6 November 2000
Goods:   Class 11: Spas and spa baths
Trade Mark:                Indulgence

(‘the Trade Mark’)

2.     On 13 June 2017, Spa Industries Global Pty Ltd filed a Notice of Intention to Oppose the application for removal.  On 14 August 2017, an application was made to amend the owner’s name to Spa Tech International Pty Ltd (‘the Opponent’).  On 14 August 2017 the Opponent filed a Statement of Grounds and Particulars asserting that the Trade Mark was “still in use for current product” attaching examples of such current use.

3.     On 10 November 2017, the Applicant filed a Notice of Intention to Defend.

4.     Thereafter, on 9 February 2018, the Opponent filed its Evidence in Support of its opposition to removal – this being a declaration by Danielle Kellar, Executive Assistant to the CEO of the Opponent made on 9 February 2018 with three attachments.

5.     The Applicant has not filed Evidence in Answer.

6.     Both parties have been informed of their right to request to be heard or to file written submissions.  Neither party requested to be heard.  The Applicant has filed written submissions by its attorneys Michael Buck IP – the Opponent has not filed written submissions.

7.     As a delegate of the Registrar of Trade Marks I am now to decide this matter based on the materials mentioned in the foregoing paragraphs.

Principles

1. As the application to remove the Trade Mark from the Register was filed on 16 May 2017, the Relevant Period for the purposes of section 92(4)(b) of the Act is the three year period ending on 16 April 2017 – and I stress now that unless the Opponent to removal establishes use during that three year period, it will not establish its opposition to removal of the Trade Mark from the Register.

2. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

   100  Burden on opponent to establish use of trade mark etc.

   (1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a)any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or

   (b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

   (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

3. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[1]

   [1] [2001] FCA 261; 107 FCR 166 at 172.

4. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (‘Nodoz’).[2]

   [2] [1962] RPC 1 at 7 per Wilberforce J.

5. The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [3]

   [3] [1977] RPC 131.

6. The relevant standard of proof that the Opponent bears is on the balance of probabilities.[4] In this regard, section 101 of the Act provides that if “the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …” [Stress added]

   [4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

7. In Blount Inc v Registrar of Trade Marks Branson J observed:[5]

   [5] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

8. It follows that unless the Opponent evidences “convincing proof” of use, or authorised use, of the Trade Mark “in the course of trade”:[6]

   1.Without alterations or additions which substantially affect its identity;[7]

   2.during the Relevant Period;

   3.in relation to the Goods;

   to the satisfaction of the Registrar, the opposition to removal will not be established.

   [6] See section 17 of the Act: What is a trade mark?

   [7] Subsections 7(1) and 100(3)(b)(i) of the Act apply.

9. Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the Goods if satisfied it is reasonable to do so.

   Evidence

   17.     In her declaration in support of the opposition Ms Kellar states:

   I, […] declare that our business is actively using Trademark No. 856237 (Indulgence) for the purposes of marketing and distributing current product range.

   Please see below copies of current marketing materials referencing the above mentioned Trademark. Marketing collateral is distributed as hard copy catalogues and brochures nationally and is also featured online on our website and across our Social Media platforms.

   18.     There are two pages which feature the Trade Mark appended to the declaration that are product information sheets which carry a picture of a spa and the Trade Mark along with product specifications.  There is no discernable information on these pages or elsewhere in the declaration as to the dates on which they were in circulation.  Similarly there is what I take to be a screenshot of an Internet webpage which again carries a picture of a spa and the Trade Mark but the date on which the webpage appeared is not apparent.

   19.     Each of the three pages appended to the declaration are apparently sourced from a business known as “Just Spas”.  The relationship between “Just Spas” and the Opponent is not stated in the declaration – it is thus not possible to determine whether this use of the Trade Mark was by the Opponent, or by its authorised user, or by another person.

   Section 92(4)(b)

   20. Section 92 of the Act relevantly provides:

   92Application 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 non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   21.     The application for removal has been made in accordance with the Trade Marks Regulations 1995 (‘the Regulations’) and the Registrar has not been informed of an action concerning the Trade Mark in a prescribed court. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[8] and I confirm that five years since filing the application have in fact passed.

   [8] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018.

   22.     As discussed under the heading ‘Principles’, above, the onus is on the Opponent to establish that the Trade Mark was used by the Opponent, or under its authorised user, during the period of three years ending on 16 April 2017. The Opponent has not established that the Trade Mark was used by it during that period but has evidenced its use on 9 February 2018 – the date on which the declaration filed as Evidence in Support was made. Neither the declaration nor its attachments refer to the Relevant Period. . Nor does the declaration provide any evidence to suggest, in terms of section 100(3)(c) of the Act, that there were circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.

   23.     Accordingly, the Opponent has not established its opposition to the removal of the Trade Mark from the Register.

   Discretion

   24. Section 101 of the Act relevantly provides:

   101Determination 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.

   Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:For registered owner see section 6.

10. In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennett J observed:[9]

    [9] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].

    The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

    In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

    In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion :

    ·there had been no abandonment of the trade mark;

    ·the registered proprietors of the mark still had a residual reputation in the mark;

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

    ·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;

    ·the registered proprietors were not aware of the applicant’s sales under the mark.

    26.     The Opponent has not filed evidence which addresses the above or similar factors.  The Opponent has only shown uses of the Trade Mark at indeterminate dates which could be before, during, or after, the Relevant Period by a person who may not be the owner of the Trade Mark or its authorised user. 

    27.     There is, accordingly, no cause for the exercise of the Registrar’s discretion.

    Decision

    28. Section 101 of the Act relevantly provides:

    101Determination 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.

    29.     I am satisfied that the ground on which the application was made has been established and that it is appropriate that the Trade Mark be removed from the Register.

    30.     If the Registrar has been served with a notice of appeal within the prescribed period, I direct that removal of the Trade Mark shall not occur until the appeal has been decided or discontinued and that the disposition of the application for removal should be in accordance with the court’s order or direction.

    Costs

    31. The Applicant has requested that costs be awarded against the Opponent. As the Applicant has been the successful party, it is appropriate in terms of section 221 of the Act that costs be awarded against the Opponent in the amounts allowed for by Schedule 8 of the Regulations.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    16 May 2019