Oppositions by Sprint Horticulture Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Lucas Finance Pty Ltd to remove trade mark numbers 1610264 (Class 31) and 1629273 (Class 35) - Hello...

[2021] ATMO 137

TRADE MARKS ACT 1995

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

Re:Oppositions by Sprint Horticulture Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Lucas Finance Pty Ltd to remove trade mark numbers 1610264 (Class 31) and 1629273 (Class 35) - Hello with device, in the name of Sprint Horticulture Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Sparke Helmore Lawyers. Applicant: Davies Collison Cave.
Decision:	2021 ATMO 137. Trade Marks Act 1995 (Cth) – applications under section 92(4)(b) for removal of trade marks – no use of trade marks in relevant period – discretion exercised in relation to trade mark number 1610264 – trade mark to be partially removed – discretion not exercised in relation to trade mark number 1629273 – trade mark removed.

Background

1. This is a decision regarding applications by Lucas Finance Pty Ltd (‘Removal Applicant’) to remove registered trade mark numbers 1610264 and 1629273 (‘Registrations’) owned by Sprint Horticulture Pty Ltd (‘Removal Opponent’). The Registrations are each in respect of the following Trade Mark:

   (‘Trade Mark’)

2. Trade mark number 1610264 is deemed to have been registered since 7 March 2014 for the following goods:

   Class 31: Agricultural products; horticultural products; plants; cuttings of plants; tissue cultures; flowers; cuttings (including rooted cuttings); seeds; bulbs; tubers; propagation materials; all other parts of plants including but not limited to root divisions; none of the foregoing being plants or plant material of the genus Lysionotus; none of the foregoing being plants or plant material of the genus Oryza, or relating to rice

   (‘Goods’)

3. Trade mark number 1629273 is deemed to have been registered since 18 June 2014 for the following Services:

   Class 35: Retailing and wholesaling of goods by any means in relation to plants, tissue cultures, flowers, cuttings, rooted cuttings, seeds, bulbs, tubers and other parts of plants; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means) in relation to plants, tissue cultures, flowers, cuttings, rooted cuttings, seeds, bulbs, tubers and other parts of plants

   (‘Services’)

4. On 8 October 2019, the Removal Applicant filed applications (‘Removal Applications’) for the complete removal of the Registrations from the Register.

5. The Removal Opponent filed notices of intention to oppose the Removal Applications on 10 December 2019 and statements of grounds and particulars (‘SGPs’) on 9 January 2020 in accordance with the Trade Marks Regulations 1995 (Cth).[1] The Removal Applicant responded by filing notices of intention to defend on 1 April 2020.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

6. The parties then had the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 3 July 2020. The Removal Applicant, after obtaining extensions of time, filed Evidence in Answer (‘EIA’) on 5 July 2021. The Removal Opponent did not file Evidence in Reply.

7. Once the evidence stage had ended, the parties were given the opportunity to request an oral hearing or be heard based on written submissions. Neither party elected to be heard or file written submissions. However, the Removal Applicant requested that the matters be decided based on the materials filed and paid the relevant fees. I have decided the oppositions based on the particulars set out in the SGPs, and the evidence filed by the parties.

8. As the Removal Applications were filed on 8 October 2019, for the purposes of deciding these oppositions, the relevant period is the three-year period ending on 8 September 2019 (‘Relevant Period’).

   Evidence

9. The following declarations were filed as evidence:

   EIS
   Declaration of Craig Bryson, CEO of Removal Opponent, made on 3 July 2020, with Annexures A-K.

   EIA
   Declaration of Christopher Lucas, director of Removal Applicant, made on 2 July 2021, with Exhibits CL-1 to CL-27.

   EIS

10. Mr Bryson declares that the Removal Opponent was incorporated in December 2002, and that it grows, propagates, produces, sells, and distributes plants and plant material in Australia and internationally. Mr Bryson states that the Removal Opponent is one of Australia’s largest distributors and suppliers of ornamental plants, with an extensive customer base in Australia and internationally.

11. Mr Bryson declares that the Removal Opponent created its ‘HELLO’ brand in around early 2014 for use in relation to plant products and retail, wholesale, and distribution of plant products. Mr Bryson states that the HELLO brand has been used since 2014 in several formats, including in the form represented in the Trade Mark, as a word mark, and the aforesaid combined with additional distinctive or non-distinctive material.

12. Mr Bryson declares that the HELLO brand has been promoted continuously since 2014, including on the Removal Opponent’s website (sprinthorticulture.com), catalogues, plant labels, at landscaping and garden shows and exhibitions, in printed material, and via distributors (including distributor websites such as domusnursery.com.au).

13. Mr Bryson declares that the HELLO brand has been used in relation to several products, including ‘Delosperma - Wheels of Wonder’, ‘Lagerstroemia - Crepe Myrtle’, and ‘Summertime Daisies’. Each of these products is a flowering plant. Mr Bryson provides revenue figures which indicate a level of sales of these products during the Relevant Period which are reasonable considering their relatively low price point and the fact that they are a subset of numerous different products sold by the Removal Opponent.

14. Mr Bryson annexes to the declaration copies of labels for plants marketed as ‘Wheels of Wonder’ and ‘Crepe Myrtle’ which he states have been sold continuously under the HELLO brand during the Relevant Period. Representative examples of these labels are below:

15. Mr Bryson annexes to the declaration catalogues from 2017 and 2019 which contain additional uses of the HELLO brand during the Relevant Period, namely:

16. Mr Bryson annexes to the declaration a redacted list of sales to distributors and customers who promoted and sold goods under the HELLO brand during the Relevant Period, in addition to price lists showing categories of goods sold under the HELLO brand. I note that the price lists refer to three items containing the HELLO brand, namely, ‘Hello ™ – with Love Babe’, ‘Hello ™ - With Love Eternal’, and ‘Hello ™ with Love Kiss’.

17. Mr Bryson annexes to the declaration marketing material produced by the Removal Opponent prior to the Relevant Period, including an in-store mock-up for Masters Home Improvement and an image used as a signboard by the Removal Opponent in Melbourne in December 2014. The HELLO brand is used with other material including secondary brands and descriptive words and imagery. Further, the HELLO brand was used in a presentation to a third-party household hardware chain during a presentation in May 2014. These uses are below:

18. Mr Bryson also provides examples of use of the HELLO brand after the Relevant Period, including a screen shot from the Removal Opponent’s ‘Hello Plants’ eBay store dated 3 July 2020. However, no further information is provided about the eBay store, other than the fact that it was launched in March 2020. The screenshot is reproduced below:

    EIA

19. Mr Lucas declares that the Removal Applicant is part of the ‘Hello Hello Group’, comprising numerous related entities. Mr Lucas declares that the Removal Applicant has applied for registration of trade mark number 1641407 for ‘Hello Hello’ (‘Removal Applicant’s Mark’) in respect of a range of goods and services, including live plants in Class 31 and retailing of goods in Class 35.

20. Mr Lucas goes on to provide a history of the Removal Applicant’s use of the Removal Applicant’s Mark (including authorised use by other entities within the Hello Hello Group) since January 2000 and provides examples of use between 2000-2020. The evidence indicates that the use is in respect of a retail nursery and garden supply business.

21. Mr Lucas states that the Registrations are posing an obstacle to the registration of the Removal Applicant’s Mark. I note that at the time of this decision, the Removal Applicant’s Mark was accepted for registration (with an endorsement indicating that the acceptance was based on the provision of evidence of prior and continuous use).

    Grounds, relevant period, onus and standard

22. The Removal Application alleges grounds for removal in relation to all of the Goods and Services under s 92(4)(b), which is reproduced below:

    92 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)…

    (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.

23. The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[2]

    [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

24. The Removal Opponent in its rebuttal relies on use of the Trade Mark during the Relevant Period under s 100(3)(a). Further, to the extent that I am not satisfied there has been use of the Trade Mark in relation to any of the Goods and/or Services, I may exercise discretion to not remove the Registrations from the Register for some or all of the Goods and/or Services.

    Discussion

    Use of the Trade Mark during the Relevant Period

25. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user, in good faith, on or in relation to the Goods and Services during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Goods or Services, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Goods or Services for which use during the Relevant Period has not been established.

26. The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to or in relation to those goods or services.[3]  

    [3] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

27. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[4] A trade mark may be used in relation to goods where it is included on an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[5] Use of a trade mark in relation to services includes use in physical or other relation to the services.[6] The use of a trade mark for goods or services may be direct use by the owner, or authorised use by an authorised user.[7] Authorised use is considered use by the owner of the trade mark only to the extent that such use is under the control of the owner.[8] Use of a trade mark may also include use of the mark with additions or alterations not substantially affecting its identity.[9]

    [4] Trade Marks Act 1995 (Cth) ss 7(4), 92(4)(b).

    [5] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

    [6] Ibid.

    [7] Trade Marks Act 1995 (Cth) s 7(3).

    [8] Ibid s 8.

    [9] Ibid ss 7(1) and 101(3)(a).

28. The Trade Mark consists of the word HELLO inside a speech bubble that sits at the top left of an empty square. It appears that the intention of the Removal Opponent was that the Trade Mark was to be a composite mark of word and getup, with the empty space in the getup being filled with either purely descriptive information (such as information or pictures on the flowering plant in question), or creatively expressed descriptive text (for example, text which resembles an online messaging chat between two people discussing the attributes of the plant in question). The inherent problem with these types of trade marks is that they will rarely if ever be used in the form they are registered. The inclusion of other material in the blank spaces has a tendency to either change the nature of the trade mark, or render the trade mark as not being recognisable (because consumers would not perceive the trade mark in the same form it has been registered).  

29. Having considered the examples put forward as use of the HELLO brand during the Relevant Period, I am not satisfied that the Removal Opponent has demonstrated any use of the Trade Mark in the form it is registered in the course of trade. However, it is still open for me to determine there has been use during the Relevant Period if I consider the Trade Mark was used with additions or alterations not substantially affecting it identity.

30. The test for whether two marks are substantially identical requires that they be compared ‘side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.’[10] In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’), the court held that a comparison of marks for determining whether they are substantially identical is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.[11] The court went on to find that the following two trade marks were substantially identical, based on the common presence of the word INSIGHT and a similar device, and notwithstanding differences in font, stylisation, and descriptive material:

    [10] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

    [11] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

31. The examples of use of the HELLO brand during the Relevant Period put forward by the Removal Opponent all contain additional word and/or device elements not included in the Trade Mark, or in some instances (such as in the 2019 catalogue), consist of the word HELLO by itself. For ease of reference, I compare the Trade Mark to the various iterations of use of the HELLO brand submitted as evidence of use during the Relevant Period below:

    v

a	b	c
d	e	f
‘Hello ™ – with Love Babe’ ‘Hello ™ - With Love Eternal’, ‘Hello ™  With Love Kiss’

1. When each of these examples of use of the HELLO brand is compared to the Trade Mark in a side by side comparison, the differences are readily apparent. In the case of examples (a), (b), and (c), the presence of the distinctive words ‘Sunshine’, ‘Babe’, and ‘Kiss’ within the speech bubble and the presence of other less distinctive words or imagery in the square create an appreciably different appearance when compared to the Trade Mark. With regards to examples (d), (e), and (f), I consider that each of these uses is sufficient to demonstrate use of the plain word HELLO (with the placement of the ™ in examples (d) and (e) indicating that HELLO is used as a trade mark independently of the words that follow). There are cogent arguments, having regard to Pham, that the plain word HELLO and the Trade Mark are substantially identical, as the plain word mark and the Trade Mark share the word HELLO as their most memorable essential feature. However, to conclude that the word HELLO and the Trade Mark are substantially identical would mean ignoring the device element in the Trade Mark. While I do not consider the device element in the Trade Mark to be highly distinctive, it is a relatively unusual combination of shapes and goes beyond merely being a simple border or background.

2. Overall, I consider that the impression that emerges between the Trade Mark and the various iterations of the HELLO brand put forward as evidence of use during the Relevant Period is one of dissimilarity, and I am not satisfied that any of these marks are substantially identical to the Trade Mark.  

3. As such, I do not consider that the evidence demonstrates use of the Trade Mark (including with additions or alterations not substantially affecting its identity) during the Relevant Period.

4. I must now consider whether to exercise discretion to allow the Trade Mark to remain registered for any of the Goods or Services.

   Discretion

5. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[12] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[13] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[14]

   [12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

   [13] Ibid [69].

   [14] [2002] FSR 51 (Ch) 790, [19].

6. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

   [15] [2008] FCA 934, [210] (citations omitted).

7. The Removal Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Removal Applicant to establish that it should not.[16]

   [16] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

8. In Gallo, Flick J referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

   ·whether there has been abandonment of the trade mark;

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

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

   ·whether 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.[17]

   [17] Gallo [2008] FCA 934, [202]–[203].

1. The Registrar may also take into account in deciding whether to remove a trade mark from the Register whether the trade mark has been used for similar services or closely related goods.[18] Further, the use of a similar trade mark by the registered owner can be taken into account in exercising discretion.[19]

   [18] Trade Marks Act 1995, s 101(4).

   [19] Soncini v Registrar of Trade Marks [2001] FCA 333, [19] (Sackville J).

2. I am satisfied based on the evidence that although there has not been use of the Trade Mark in the form applied for, there has been use of the HELLO word mark and variations thereof. While I do not consider that the examples of use of the HELLO brand provided are close enough to be considered substantially identical to the Trade Mark, I do consider that the word HELLO is an essential element of the Trade Mark and the one by which consumers will mainly recall the Trade Mark. The device elements in the Trade Mark, while sufficiently prominent to prevent me finding there has been use of the Trade Mark per se, are nevertheless not particularly distinctive and are clearly secondary in importance to the word HELLO.

3. The Removal Opponent has an ongoing interest in the HELLO brand, and I also consider that the use of the HELLO brand during the Relevant Period gives rise to some level of reputation which is a relevant factor in deciding the exercise of discretion. That being said, I also consider that the use of the HELLO brand during the Relevant Period and any reputation associated with such use was relatively narrow in scope and only extends to flowering plants, and not to any of the other Goods or Services. This factor is important in determining the extent to which discretion should be exercised.

4. Taking into account the use of the HELLO brand by the Removal Opponent, before, during, and after the Relevant Period, I consider that use by someone other than the Removal Opponent of a trade mark that is substantially identical or deceptively similar to the Trade Mark for flowering plants or similar goods (including flowers and seeds or bulbs for flowering plants) would likely give rise to a real, tangible, danger of confusion. The retention of the Trade Mark would serve the purpose of mitigating this risk of confusion and providing some level of effective protection for the HELLO brand which has been used by the Removal Opponent.

5. However, I am not satisfied that there is a potential for confusion if another trader were to use a substantially identical or deceptively similar trade mark for horticultural goods unrelated to flowering plants. As such, I consider it is appropriate (particularly in the absence of any submissions as to why I should exercise discretion more broadly) only to exercise discretion to retain a relatively narrow range of goods in Class 31.

6. For the reasons given above, I consider it is in the interest of both the public and the Removal Opponent that trade mark number 1610264 remain registered in respect of flowering plants; flowers; seeds for flowering plants; bulbs for flowering plants in Class 31.

7. I have also considered whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered in relation to the Services in Class 35. I am not satisfied that there has been any use of the HELLO brand in relation to the Services (including retail, wholesale, or distribution services) during the Relevant Period. The Removal Opponent uses ‘Sprint Horticulture’ as its primary brand, and it has only used the Trade Mark in relation to a narrow range of flowering plant products. This constitutes use in relation to goods, not use in relation to retail, wholesale, or distribution services more generally.   

8. Further, in considering the discretion in relation to the Services, I have taken into account that the Opponent has used the trade mark HELLO PLANTS & device as the name of an eBay store subsequent to the Relevant Period. The operation of an eBay store could in some circumstances be considered a retailing service. Whether this is the case would depend on the particular activities carried on by the operator of that eBay store. If the operator merely sells goods which bear the same trade mark as the eBay store, there are cogent arguments this is not a retail service at all, but merely use of the trade mark in relation to goods (with the eBay store simply being the trade channel through which those goods are sold). There is insufficient information (and no arguments advanced) regarding the nature and extent of the use of HELLO PLANTS & device as the name of the eBay store for me to give this evidence significant weight in considering the exercise of discretion.  

9. For the reasons given above, I am not satisfied that there are cogent reasons to allow the Trade Mark to remain registered for the Services. As such, I decline to exercise discretion to allow the trade mark number 1629273 to remain registered.

   Decision and costs

10. The Removal Opponent has not rebutted the allegation of non-use for any of the Goods registered under trade mark number 1610264. However, I am satisfied that it is reasonable to exercise discretion to allow the trade mark to remain registered for some of the Goods. As such, I direct that trade mark number 1610264 be partially removed, with that removal to be effected by amending the specification to:

    Class 31:  Flowering plants; flowers; seeds for flowering plants; bulbs for flowering plants; none of the foregoing being plants or plant material of the genus Lysionotus; none of the foregoing being plants or plant material of the genus Oryza, or relating to rice

11. The Removal Opponent has not rebutted the allegation of non-use in respect of trade mark number 1629273, and I am not satisfied that it is reasonable to exercise discretion to allow the trade mark to remain registered for any of the Services. As such, I direct that trade mark number 1629273 be removed in its entirety.

12. Given it is the right of both parties to appeal this decision to the courts, the removals shall not take place until at least one month from today. If the Registrar is served with a notice of appeal in respect of either of the Registrations, the relevant removal/s will not occur until the relevant appeal has either been discontinued or, the matter has been dealt with as the Court sees fit.

13. Both parties requested an award of costs. The usual rule is that costs follow the event.

14. As both parties have had a measure of success in relation to trade mark number 1610264, I decline to award costs in that matter.

15. However, as the Removal Applicant has been entirely successful in relation to trade mark number 1629273, I award costs against the Removal Opponent in that matter.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    15 November 2021