Opposition by Winter Holding GmbH & Co KG to application under section 92 of the Trade Marks Act 1995 (Cth) by SASS Clothing Pty Ltd to remove trade mark number 803136 (class 25) – BETTY BARCLAY - in the name of...
[2021] ATMO 34
•30 April 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Winter Holding GmbH & Co KG to application under section 92 of the Trade Marks Act 1995 (Cth) by SASS Clothing Pty Ltd to remove trade mark number 803136 (class 25) – BETTY BARCLAY - in the name of Winter Holding GmbH & Co KG.
Delegate: | Mary-Ann Cooper |
Representation: | Opponent: Finn Roache Lawyers Applicant: Churchill Attorneys |
Decision: | 2021 ATMO 34 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 - s 92(4)(b) grounds not established. Trade Mark to remain on Register. |
Background
Winter Holding GmbH & Co KG Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:
| Registration | 803136 |
| Trade Mark | (‘Trade Mark’) |
| Filing date | 10 August 1999 |
| Goods | Class 25: Ladies’ fashion garments (‘Goods’) |
On 30 July 2019, SASS Clothing Pty Ltd (‘Removal Applicant’) 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 all the Goods for which it is registered.
A Notice of Intention to Oppose the removal application was filed by the Removal Opponent on 27 September 2019, as well as its Statement of Grounds and Particulars. A Notice of Intention to Defend was filed by the Removal Applicant on 15 November 2019.
On 17 August 2020, the Removal Applicant requested a hearing. The matter was heard by me, as delegate of the Registrar of Trade Marks (‘the Registrar’), via video conference on 17 March 2021. Meher Gaven of counsel instructed by Liam James of Finn Roache appeared for the Removal Opponent. The Removal Applicant did not appear, providing written submissions only.
Evidence
The evidence filed in relation to this removal opposition comprises:
· Evidence in Support
Ø Declaration of Christian Brinker, the Removal Opponent’s in-house legal counsel, dated 17 February 2020, with Exhibit WH2 (‘Brinker 1’).
· Evidence in Answer
Ø Declaration of Talitha Becker, Removal Applicant’s director and shareholder, dated 15 May 2020 (‘Becker declaration’).
· Evidence in Reply
Ø Declaration of Christian Brinker dated 7 July 2020 with exhibit WH2.1 (‘Brinker 2’).
Removal Opponent’s Evidence
Brinker 1 outlines the Removal Opponent’s history since 1955 as a manufacturer and worldwide distributor of womenswear. He states that it has been distributing the Goods in Australia, under the Trade Mark, since 1999. Exhibited documents including stationery, orders, invoices, website extracts and analytics are said to demonstrate that use. Brinker 1 notes that in late 2017 the Removal Opponent’s contract with its Australian distributor ceased however he attaches documents demonstrating that direct sales continued to Australia through local online stores and the Removal Opponent’s website. He states that sales resumed through the Australian distributor in mid-2019.
Removal Applicant’s evidence
The Becker declaration states that none of the attachments to Brinker 1 show use of the Trade Mark as registered. Becker conducts a side-by-side comparison of the Trade Mark with the Removal Opponent’s registered Australian trade marks 940176 and 1983881 (‘other Barclay marks’)[1] and, in summary, concludes that the stylisation of the Trade Mark ‘overwhelm[s]’ the use of the same words in those other Barclay marks.
[1] The Removal Opponent also owns Australian trade mark registration numbers 957312 (‘BETTY BARCLAY’), 1078841 (‘BETTY BARCLAY WEEKEND’), 1167584 (‘BETTY BARCLAY IN LOVE’), 1735777 (‘BETTY & CO BETTY BARCLAY’), 1971431 (‘Betty Barclay’).
Preliminary issue: late filed evidence
At the hearing, the Removal Opponent sought additional time to provide further evidence in response to the Removal Applicant’s submission that, to the extent any use of the Trade Mark was identified, it was not the Removal Opponent’s use. In the circumstances, and in view of the absence of the Removal Applicant, I issued directions after the hearing giving both parties time for further submissions in this regard.
In accordance with the directions, the Removal Opponent filed detailed documents including a further Brinker declaration (‘Brinker 3’) exhibiting a licence agreement and detailed company information as well as providing submissions supporting the admission of the material. The Removal Applicant also filed submissions, observing that the Trade Mark was not specifically referenced in the licence agreement and the company ownership materials failed to establish the Removal Opponent’s authorisation of use of the Trade Mark. Consequently, the material was not probative or crucial to the decision and it should not be admitted. It further observed that, given the Removal Opponent’s onus in this regard, it could have and should have provided the evidence during the evidence stages. While I accept the Removal Applicant’s submissions regarding the licence agreement, the material regarding company ownership, while complex, was detailed and supports the Brinker 3 claims that it relevantly authorised the Betty Barclay Group GmbH & Co. KG (‘BBG’) to use the Trade Mark. As discussed further below, this evidence is directly relevant to the determination of the Removal Opponent’s use of the Trade Mark.
The Registrar is not bound by rules of evidence and may be informed on any matter as he or she reasonably believes to be appropriate,[2] providing that the parties have an adequate opportunity to put their case. In this context I observe that the information conveyed in the Removal Opponent’s late filed evidence is not only highly probative but crucial to the determination of the removal application. Without it there is insufficient evidence to support Trade Mark use by the Removal Opponent in the relevant period. In addition, it is in the public interest in ensuring the accuracy of the Register that material pertinent to trade mark ownership and use is not excluded from consideration. Accordingly, I am satisfied that there are compelling reasons to accept this material in evidence under reg 21.15(4) of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
[2] Trade Marks Regulations 1995 (Cth) reg 21.15(4).
Onus
In respect of the proceedings under s 92(4)(b), s 100 of the Act provides that the Removal Opponent bears the onus of rebutting the allegation of non-use. The relevant standard of proof is on the balance of probabilities.[3]
[3] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498, 504.
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 Removal Opponent establishes its good faith use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity) in that period, or that there was a relevant obstacle to its use, it is taken to have rebutted the allegation: s 100(3). The period of non-use is the three years ending on 30 June 2019 (‘the relevant period’), that is, one month prior to the filing of the non-use application on 30 July 2019. A single instance of bona fide use in the relevant period is all that is required[4].
[4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [14]-[17].
Alternatively, if the grounds for removal are 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 and Reasons
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 10 August 1999 and it has remained registered for a continuous period of three years ending one month before the day on which the non-use application was filed. It is also clearly over five years since the filing date of the application for registration.[5]
[5] s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018.
In summary, the Removal Applicant submits there is no evidence of use, or authorised use by the Removal Opponent in the relevant period. If there has been use, it is not use of the Trade Mark as registered. It further contends that there are no reasonable grounds on which to exercise the discretion to maintain the Trade Mark on the Register.
Use of the Trade Mark in Australia
In relation to use, the comments of the Federal Court in Liquid Engineering[6] are pertinent, as follows:
Before proceeding any further, I first note in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; (2007) 163 FCR 530 at [53]- [54], Tamberlin J pointed out that under ss 7 and 9 of the TMA, a trade mark is taken to be used in relation to goods and services if it is applied to, among other things, packaging labels, signs, invoices, business letters, and business papers. Here, the word "Liquideng" was applied by Edwards and LFS in just such ways. It follows that application of that word was its use as a trade mark.
[6] Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970, [21], this finding not disturbed on appeal.
The Removal Opponent’s evidence included copies of orders and invoices relating to the sale of ladies’ fashion garments[7], under ‘Betty Barclay’, in the relevant period, as well as website extracts and analytics for over the same period which showed the volume and the value of sales to Australian customers. I am satisfied this evidence establishes use of ‘Betty Barclay’ in relation to the Goods in the relevant period.
[7] See in particular pp182-196 of Brinker 1, Exhibit WH2.
[8] Screenshots from show ladies’ garments branded ‘Betty Barclay’. While these are undated, Brinker 1 states they were from 2017 and, in combination with the detailed website analytics for the domain name, I am satisfied that an inference can be drawn that they were so displayed in the relevant period.
As the Removal Applicant observed however, the use demonstrated is not of the Trade Mark as registered. Furthermore, it is not use by the Removal Opponent but by BBG. This requires me to consider whether the use identified is use of the Trade Mark with additions or alterations that do not substantially affect its identity (s 7(1) and s 100(3)(a)) and, if it is, whether the Removal Opponent relevantly authorised BBG’s use within the meaning of s 8 of the Act such that its use might be taken as use by the Removal Opponent (s 7(3)).
Has there been use of the Trade Mark with alterations or additions that do not substantially affect its identity?
The use demonstrated is of the words ‘Betty Barclay’ in different fonts and absent any border. The question therefore arises, as noted above, whether the depiction of ‘Betty Barclay’ on the Removal 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 Removal Applicant’s allegation of non-use: s 100(3).
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.[9]
[9] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [154] (“Sports Warehouse”). See also Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380, [256].
A side by side comparison between the Trade Mark as registered and its use as disclosed by the evidence appears below:
| Trade Mark | Use of other Barclay marks as displayed in evidence |
| (Also Opponent’s trade mark 940176) | |
| (Also Opponent’s trade mark 1983811) |
The Removal Applicant undertakes a detailed, letter by letter comparison of the marks noting the differences between them and claims that the rectangular ‘devices’ have the appearance of a fabric tag, not a border definition. It submits that the numerous differences between the Trade Mark and the other Barclay marks renders them ‘as different as night and day’.
The Removal Opponent contends that the words ‘Betty Barclay’ are ‘the essential distinguishing feature used to market the goods in Australia in the past 20 years’. The name is unusual and the alliteration places focus on the phrase as the ‘sole dominant cognitive cue’ of each of the marks. It submits that the change of font does not operate to separately distinguish them, and the rectangular double border on the Trade Mark does ‘little to convey anything extra or affect the identity conveyed by the phrase’, and ‘consumers are likely to identify the Goods solely by reference to the phrase.’
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]
[10] [2009] ATMO 32.
[11] Ibid [16].
Furthermore, in relation to font and border differences, I note the delegate’s findings in Spear & Jackson (Australia) Pty Ltd v Amalgamated Hardware Merchants Ltd[12] in respect of a similar analysis[13]:
While each case should [be] assessed on its own merits, I do note the High Court found that the inclusion of a particular device (albeit one which is an “illustration of the word”) was not an addition that affected the identity of the trade mark. In the current matter, I find nothing distinctive about the font of the word ‘ATLAS’ as it appears in the trade marks. The border encasing the word ATLAS is a conventional embellishment and adds nothing of distinction to the trade marks as a whole. As a result, use of the trade mark absent that particular element is not an alteration that would substantially affect its identity.
[12] [2012] ATMO 80, [21].
[13] The delegate also referenced Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 where the Court found a similar border device surrounding the word OREGON did not give the trade mark any inherent adaptation to distinguish the designated goods. See similarly for a more elaborate device Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, 293.
Other decisions have also determined that the mere existence of a border device and other non-distinctive features are insufficient to detract from substantial identity of trade marks.[14]
[14] 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.
Similarly, I am not satisfied that the differing fonts or border used for BETTY BARCLAY operate to separately distinguish the goods or substantially affect the identity of the Trade Mark because ‘consumers are likely to identify goods sold under the trade mark’ by reference to the words BETTY BARCLAY. That is, although the Trade Mark is sometimes depicted in different fonts and without the border, this use does not detract from the distinctive element, that is, the words BETTY BARCLAY, which remains the essential feature in such references.
Given this, I am satisfied that use of ‘Betty Barclay’ in these other forms in the evidence constitutes use of the Trade Mark with alterations that do not substantially affect its identity, within the meaning of s 100(3)(a).
Is the use authorised?
In this regard I note the decision in Trident Seafoods Corporation v Trident Foods Pty Ltd[15], where the Full Court found that control could be established in circumstances where the two companies shared the same directors:
It must be inferred from the evidence that the two companies operated with a unity of purpose. … As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. …it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[16]
[15] [2019] FCAFC 100.
[16] Ibid. [45].
The Removal Opponent’s later provided evidence demonstrated a similar relationship between it and BBG. Although there was an intermediary company between the Removal Opponent and BBG, the official, translated documents demonstrate ultimate ownership of BBG by the Removal Opponent. The documents also demonstrate that the Removal Opponent and BBG shared common directors during the relevant period. On this basis I am satisfied that the material supports an inference that the two companies operated with a unity of purpose such that, for practical purposes, the Removal Opponent controlled the use of the Trade Mark by BBG within the meaning of s 8 of the Act and BBG’s use of it can be regarded as use by the Removal Opponent (s 7(3)).
Conclusions as to use
For the reasons above, having considered all the material provided, I am satisfied that the evidence supports the Removal Opponent’s claim to have used the Trade Mark in good faith in relation to the Goods in the relevant period.
Given this, it is unnecessary for me to consider the submissions relating to the exercise of the Registrar’s discretion under s 101(3).
It follows that I am satisfied the Removal Opponent has successfully rebutted the Removal Applicant’s allegations under paragraph 92(4)(b).
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.
I am not satisfied that the grounds for removal have been established. Accordingly, trade mark registration 803136 will remain on the Register.
Costs
Both parties sought costs. As the Removal Opponent has been successful, I award costs against the Removal Applicant under section 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Mary-Ann Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
30 April 2021
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