Opposition by Ziggy T Pty Ltd to application under section 92 of the Act by The Ritz-Carlton Hotel Company, LLC to remove trade mark number 1592734 (41) – RITZ - in the name of Ziggy T Pty Ltd.

[2020] ATMO 197

TRADE MARKS ACT 1995

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

Re:        Opposition by Ziggy T Pty Ltd to application under section 92 of the Act by The Ritz-Carlton Hotel Company, LLC to remove trade mark number 1592734 (41) – RITZ - in the name of Ziggy T Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Sharon Givoni of Sharon Givoni Consulting Non-Use Applicant: Raphaella Felton of Corrs Chambers Westgarth
Decision:	2020 ATMO 197 Trade Marks Act 1995 (Cth) –Application under section 92(4)(b) - Use established during the relevant period on some of the specified services– removal application partially successful.

Background

1. This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(b) filed on 3 December 2018, The Ritz-Carlton Hotel Company, LLC (‘the non-use applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of all the services in class 41 for which it is registered:

Trade mark:  RITZ

Trade mark number:  1592734

Date of registration:  21 November 2013

Goods:Class 41: Entertainment services; the management, establishment, co-ordination or operation of events at bars, nightclubs, pubs or similar venues; arranging and booking of music performances and musical entertainment; organisation of events, festivals, shows and performances for entertainment, recreation or cultural purposes; providing entertainment, recreation and cultural facilities (and services relating thereto); night clubs and discos; advisory, assistance, consultancy, examination, information (including online and over a global computer network), management, planning, rental and research services in relation to all of the foregoing; none of the foregoing in relation to gaming services, accommodation services, hotel reservation services, restaurant and cafe services

1. Ziggy T Ptd Ltd (‘the opponent’) filed a Notice of Intention to Oppose Removal on 31 January 2019 followed by a Statement of Grounds and Particulars on 28 February 2019.

2. The Statement of Grounds and Particulars asserted that the grounds on which the non-use applicant relied were not relevant because the opponent had been using the Trade Mark in relation to the registered services in Australia since 15 November 2012, and had used the Trade Mark in relation to the registered services in good faith during the relevant three-year period.  

3. On 1 April 2018 the non-use applicant filed their Notice of Intention to Defend. The opponent and the non-use applicant then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

4. The matter came before me, a delegate of the Registrar of Trade Marks on 7 August 2020. Sharon Givoni of Sharon Givoni Consulting appeared on behalf of the opponent.  Raphaella Felton of Corrs Chambers Westgarth appeared on behalf of the non-use applicant.

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Section 92 provides, inter alia, that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and services in respect of which the trade mark is registered. Subsection 92(4)(b) as it is relevant to this case provides the following:

   [1] Regulations 9.1 to 9.4 are relevant here.

   (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 authorize 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 to non-use application related 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 service at any time before the period of one month ending on the day in 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.

3. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:

   Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner 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 required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, 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.”

   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 [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

   [2] [2015] ATMO 10

4. Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:

   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.

   (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

   (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.

5. In Pioneer Computers Australia Pty Ltd v Pioneer KK[3]  Bennett J made the following observations concerning the Registrar’s discretion:

   [3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354

   [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.

   [168] 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).

   […]

   [171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

Evidence

Evidence in Support

• The declaration of Samuel Prosser (‘Prosser 1’) dated 2 July 2019 accompanied by Annexures SP-1 to SP-19 and SP-21 to SP-34

Evidence in Answer

• The declaration of Odette Margaret Gourley (‘Gourley’) dated 9 October 2019 including attachments A to J

Evidence in Reply

• The declaration of Samuel Prosser (‘Prosser 2’) dated 1 July 2019

Further Evidence from both parties taken into account under Regulation 21.15(4)

• Confidential exhibits SP-20 and SP-34 omitted by accident by the opponent during filing of Prosser 1

• Attachment K from Odette Gourley’s further evidence for the non-use applicant

Discussion

1. To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the services covered by the registration within the period of three years ending one month before the day on which the non-use application was filed (‘the relevant period’) being 31 December 2018. The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponent more likely than not used the Trade Mark during the relevant period. This arises by virtue of section 100(1)(c) of the Act.

2. The main arguments advanced by the non-use applicant in this case are that:

• The opponent has not used the Trade Mark on the registered services during the relevant period; and

• Even if the evidence was considered by the Delegate to demonstrate use by the opponent during the relevant period the use was only in regards to an irregular club dance event at one venue in Toorak, Victoria purported to be held on a small number of occasions in a 6 month period within 2017; and

• The opponent had only an indirect involvement in promoting two of three of these small dance club events and an associated birthday party guest list and dress code service

• Any use demonstrated by the opponent is not genuine commercial use, only tokenistic occasional activities which do not amount to use of the Trade Mark by the opponent in good faith.

1. Prosser 1 avers that Mr Prosser has been the sole shareholder of, and director of the opponent since its incorporation on 1 March 2007[4].  He states that commencing in or around 15 November 2012 the opponent adopted the Trade Mark in good faith. Accordingly, Mr Prosser alleges that the opponent has been offering a variety of entertainment, including at bars, nightclubs pubs or similar venues during the relevant period by reference to the Trade Mark or a trade mark with additions or alterations not substantially affecting its identity such as RITZ NIGHTCLUB, RITZ CLUB, RITZ FRIDAYS, RITZ THURSDAYS and RITZ SATURDAYS.

   [4] Annexures SP-1 accompanying Prosser 1

2. Mr Prosser states that the Trade Mark has been used in Australia in relation to all of the registered services which include:

• Leasing the relevant venue to conduct the event;

• Booking talent such as international DJs and live entertainment for the event;

• Promoting the events under the Trade Mark; and

• Authorising others to promote the events under the Trade Mark.

1. In support of Mr Prosser’s assertions I turn to consider the evidence. In considering the evidence I can tell that the Trade Mark was initially used more frequently by the opponent in 2012 and 2013 because there are a number of examples of dated use from that period. Unfortunately, the bulk of the opponent’s evidence of use is outside of the relevant period.  However, there are a number of annexures which support the opponent’s claim of use during the relevant period being:

• Annexure SP-15 accompanying Prosser 1 contains a receipt for booking an artist for the event “The Ritz” Night at Trak;

• Annexure SP-17 accompanying Prosser  1 contains a copy of a text message about the Ritz dance club event being held on the Public Holiday Eve which was sent to those on the “mailing list”  on 26 September 2017;

• Annexure SP-19 accompanying Prosser 1 contains a copy of an advertisement stating : “The Ritz is moving to Boutique Nightclub” dated 24 October 2018;

• Annexure SP-21 accompanying Prosser 1 contains photographs of dance parties dated within the relevant period bearing the word RITZ across them;

• Annexure SP-22 accompanying Prosser 1 being an advertisement for the Ritz reunion Good Friday Eve 2017 being held at the Trak Bar;

• Annexure SP-24 accompanying Prosser 1 is an advertisement and run sheet for a Ritz 2.0 Launch at Trak Lounge Bar;

• Annexure SP-25 accompanying Prosser 1 contains an advertisement/invitation to the Ritz Saturdays on 17 June 2017.

• Annexure SP-26 accompanying Prosser 1 contains an invoice dated 27 June 2018 for artwork design which features the Trade Mark.

1. Prosser continues to detail that during 2018 the opponent’s use of the Trade Mark stalled due to a change in the opponent’s business landscape whereby it became a shareholder in the Boutique Nightclub, with the intention of hosting RITZ events at this venue going forward. However, there were delays in hosting the events because the venue required renovations. In September 2018, the opponent commenced advertising for the re-launch of the RITZ events, which were intended to take place at Boutique Nightclub. I note that annexure SP-19 accompanying Prosser 1 is a copy of an advertisement dated 24 October 2018 stating that “The Ritz is moving to Boutique Nightclub”. However, Prosser states that the renovations at Boutique Nightclub were not completed until December 2018 and that in February 2019 the Boutique Nightclub was sold. Although I note that it appears that the opponent’s business has recommenced since the beginning of this removal action.

2. In considering all of the above, the non-use applicant faces a considerable challenge in asserting that opponent’s use of the Trade Mark is not authorised use of the opponent’s Trade Mark on some of the services during the relevant period.

3. The examples within the opponent’s evidence provide sufficient information to demonstrate genuine commercial use of the Trade Mark in relation to some of the registered services within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd[5]. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds[6].  I am satisfied the opponent has established use of the Trade Mark on some of the registered services. However, given the very broad nature of the services for which the Trade Mark is registered it is clear that the opponent has only used the Trade Mark on a limited range of those services.

   [5] [1982] FSR 72

   [6] (2001) 51 IPR 149

4. Careful consideration of the Prosser declarations and annexures reveals that the opponent has demonstrated use of its Trade Mark on a range of services being:

• Leasing the relevant venue to conduct the music and dance party event;

• Booking talent such as international DJs and live entertainment for the music and dance party event;

• Promoting the music and dance party events under the Trade Mark; and

• Authorising others to promote the music and dance party events under the Trade Mark.

Goods and services the opponent has used the Trade Mark on

1. The non-use applicant has argued that if there is any use demonstrated by the opponent of its Trade Mark it is severely limited and tokenistic. However, I believe the evidence demonstrates the opponent is a small event service business facing the normal rigors of fluctuating bookings and success.    

2. The opponent has argued that if the Registrar finds that the Trade Mark has not been used in respect of any or all of the registered services that section 101(3) permits the Registrar to decide not to remove a trade mark even if the grounds for removal have been established. Thus, the opponent has chosen to argue that the Registrar’s discretion should be used in this situation.

Registrar’s Discretion

1. There is a discretion embodied in subsection 101(3) of the Act. That particular part of the legislation reads as follows:

   (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.

2. The application for removal is for all of the registered services. The opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all those services because:

   ·The Trade Mark has been continuously used since 2012.

3. In considering the use demonstrated by the opponent of the Trade Mark, I am satisfied that the removal of the Trade Mark for non-use is not appropriate given that there is some demonstrated use of the Trade Mark during the relevant period on some limited services. However, in a similar vein, exercising the Registrar’s discretion to maintain the Trade Mark on the Register for all the broad range of advisory and entertainment services in class 41 is also not appropriate.

4. Drummond J commented on the issue of fine distinctions in respect of goods claims when he considered trade marks involving the word “Taipan” in McHattan v Australian Specialised Vehicle Systems Pty Ltd[7].  He said:

   The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.

   But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.

   But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

   [7] (1996) 34 IPR 537

1. Taking these judicial comments into account, I am satisfied that making too fastidious a distinction between services would be detrimental to the opponent and to consumers who may in the future then face the potential of confusion when faced with the same or similar trade marks on similar or related goods and services. If I am to exercise the Registrar’s discretion, it is in selecting a general word to describe the services the opponent has demonstrated use on through its evidence, rather than maintaining the registration for its incredibly broad claim for entertainment, consultancy and advisory services.

2. Therefore, the above broad categories that the opponent has demonstrated use of its Trade Mark on may be more appropriately summed up by the following limitation to the class 41 services:

   The management, establishment, co-ordination or operation of musical performances and musical entertainment events at bars, nightclubs, pubs or similar venues; arranging and booking of music performances and musical entertainment at bars, nightclubs, pubs or similar venues; organisation of music performances and musical events and shows for entertainment or recreation at bars, nightclubs, pubs or similar venues; none of the foregoing in relation to gaming services, accommodation services, hotel reservation services, restaurant and cafe services

Decision

1. I am satisfied that the Trade Mark has been used in the relevant period. However, this use has only been with respect to:

   Class 41: The management, establishment, co-ordination or operation of musical performances and musical entertainment events at bars, nightclubs, pubs or similar venues; arranging and booking of music performances and musical entertainment at bars, nightclubs, pubs or similar venues; organisation of music performances and musical events and shows for entertainment or recreation at bars, nightclubs, pubs or similar venues; none of the foregoing in relation to gaming services, accommodation services, hotel reservation services, restaurant and cafe services

2. Therefore, I refuse to remove Trade Mark registration no. 1592734 in its entirety but direct that unless this decision is appealed, after one month from the date of this decision the class 41 specification of services be amended to the above.

Costs

1. The non-use applicant has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
18 December 2020