Orientis Gourmet v ABCDEX Pty Ltd and Burkhard Geiger

[2020] ATMO 134

TRADE MARKS ACT 1995

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

ReOpposition by Orientis Gourmet to application by ABCDEX Pty Ltd and Burkhard Geiger for cessation of protection of International Registration 1040748 (30) (Australian designation 1504642) – LØV ORGANIC - in the name of Orientis Gourmet

Delegate:                 Robert Wilson

Representation:       Opponent: Phillips Ormond Fitzpatrick

Applicants: Self-represented

Decision:                   2020 ATMO 134

Trade Marks Act 1995 (Cth) – Reg17A.48F opposition: opposition to application for cessation of protection pursuant to reg 17A.48C – no use of trade mark during relevant period – extension of protection to cease

Background

1. Orientis Gourmet (‘the Opponent’) is the Holder of International Registration 1040748 (‘the IR’). Protection of the IR was extended to Australia; relevant details are as follows:

Australian Designation:	1504642
Filing Date:	4 May 2012
Goods:	Class 30: Tea, non-medicinal infusions, coffee (‘the Goods’)
Trade Mark:	LØV ORGANIC	(‘the Trade Mark’)

2. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

3. On 5 April 2018, ABCDEX Pty Ltd and Burkhard Geiger (‘the Applicants’) filed an application (‘the Application’) seeking cessation of protection of the Trade Mark. The Applicants alleged that the Trade Mark was not used in good faith in relation to any of the Goods during the three year period ending on 5 March 2018 (‘the Relevant Period’). The Applicants also alleged that on the day on which the application for extension of protection to Australia was filed, the Opponent 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 that the Opponent:

(iv)has not used the Trade Mark in good faith in Australia; or

(v)has not used the Trade Mark in Australia;

in relation to the Goods at any time before the period of one month ending on the day on which the Application was filed.

4. The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose filed on 29 May 2018 and a Statement of Grounds and Particulars which was filed on 22 June 2018. The Applicants filed a Notice of Intention to Defend on 31 July 2018.

Evidence

5. The Opponent filed Evidence in Support of its opposition (‘EIS’) which consists of:

·Statutory Declaration made on 12 November 2018 by Marine Guillou, an employee of the firm Phillips Ormonde Fitzpatrick, the representative of the Opponent, with Exhibits MG-1 to MG-7 (‘the Guillou declaration’).

6. The Applicants filed Evidence in Answer (‘EIA’) which consists of:

·Declaration made on 22 January 2019 by Burkhard Geiger, the Managing Director of ABCDEX Pty Ltd, with Exhibits 1 to 6 (‘the Geiger declaration’).

7. The Opponent filed Evidence in Reply (‘EIR’) which consists of:

·Statutory Declaration made on 28 March 2019 by Candace Rebekah Williams, an employee of Phillips Ormonde Fitzpatrick (‘the Williams declaration’); and

·Statutory Declaration made on 29 March 2019 by Russell John Waters, a partner of Phillips Ormonde Fitzpatrick, with Exhibits RJW-1 and RJW-2 (‘the Waters declaration’).

8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party did so. Consequently, it has fallen to me as a Delegate of the Registrar of Trade Marks to decide the matter on the written record. The written record in this case consists of the material discussed in the preceding paragraphs. I note that some of the declarations filed as evidence include statements which are in the nature of submissions rather than simply evidence. Where necessary those statements will be treated as submissions.

EIS filed in time?

9. The Geiger declaration contains submissions regarding the filing of the EIS. Mr Geiger stated:

The due date for the lodgement of the Evidence in Support was 10 November 2018 and after 3 months of time to write and lodge the document, the Evidence in Support was not written until 12 November 2018, lodged in Object Connect on 12 November 2018 and received by IP Australia on 19 November 2018. I believe the late lodgement to be inadmissible and request a review regarding the late lodgement of the required documents, unless an application for an extension was submitted and granted, which no notifications were received by myself.

The due date for filing the EIS was, as indicated by Mr Geiger, 10 November 2018. It is also correct that the EIS was filed by the Opponent on Objective Connect on 12 November 2018. The date documents are uploaded to Objective Connect is taken as the date that the documents are filed. When the EIS was filed is the relevant date, when they might have been ‘received’ by the Trade Marks Office is immaterial.

10.     10 November 2018 was a Saturday. Section 223A(1) states:

If the last day of a period provided by this Act … for doing an act is a day when the Trade Marks Office … is not open for business, the act may be done in prescribed circumstances on the next day when the office … is open for business.

The Trade Marks Office is not open for business on Saturdays and Sundays. The due date for filing the EIS is ‘the last day of a period provided by this Act’. Therefore, as the due date fell on a Saturday, the EIS was filed in time as it was filed on the next day when the Office was open for business, being Monday, 12 November 2018.

Legal Framework

11.     Part 17A, Division 5, Subdivision D of the Trade Mark Regulations 1995 (Cth) concerns cessation of extension of protection to Australia of an International Registration on the basis of non-use. Regulation 17A.48D provides:

Reg 17A.48D. Cessation of protection

(1)    Part 9 of the Act and Part 9 of these Regulations apply in relation to an application for cessation of protection.

(2)    For that application, a reference in those Parts:

(a)    to a registered trade mark or a trade mark that is registered, or entered on the Register, is taken to be a reference to a trade mark that is, or may become, a protected international trade mark; and

(b)    to removing a trade mark from the Register is taken to be a reference to the cessation of protection of the trade mark; and

(c)    to an application for registration of a trade mark is taken to be a reference to an international registration designating Australia; and

(d)    to an applicant for registration of a trade mark is taken to be a reference to the holder of an international registration designating Australia; and

(e)    to a registered owner of a trade mark is taken to be a reference to the holder of a protected international trade mark; and

(f)     to an application under section 92 is taken to be a reference to an application for cessation of protection; and

(g)    to the date the application for registration of the trade mark was filed, or the filing date in respect of the application for the registration of the trade mark, is taken to be a reference to:

(i)   if the request for extension of protection to Australia was made under Article 3ter(1) of the Protocol--the date of international registration of the trade mark; or

(ii)if the request for extension of protection to Australia was made under Article 3ter(2) of the Protocol--the date of recording of the request; and

Note: The expressions date of international registration and date of recording are defined in regulation 17A.2.

(h)    to the date the particulars of the trade mark were entered into the Register under section 69 is taken to be a reference to the date the trade mark became a protected international trade mark under regulation 17A.36.

(3)    sections 96 to 101 of the Act apply in relation to the cessation of protection for non-use.

12.     Part 9 of both the act and the regulations governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

13.     The Application specified that it was made according to the provisions of both ss 92(4)(a) and 92(4)(b). Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … 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.

…

(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 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 non-use application relates 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/or services at any time before the period of one month ending on the day on 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. 

Note 1: For file and month see section 6.

14.     In the case of an allegation of non-use under s 92(4)(a) the Opponent needs to establish that, on the day on which the Application was filed, the Opponent had the intention to use the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity)[1] in good faith in respect of the Goods. Alternatively, the Opponent must establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used by the Opponent, in good faith, in relation to the Goods, at any time before the period of one month ending on the day on which the Application was filed.

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

15. 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 to register the Trade Mark,[2] and I confirm that that period has passed. Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Trade Mark was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is on the balance of probabilities.[3]

[2] Per s 93(2) as it was prior to the amendments made as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

[3] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

16.     Section 101(1) provides the Registrar with the discretion to remove the Trade Mark from the Register ‘in respect of any or all of the goods … to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the impugned trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the Application was made have been established.

Discussion

Merger of ss 92(4)(a) and (b)

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years. As extension of protection had been granted for more than five years as at the date of the Application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, unless the discretion available to the Registrar under s 101 is favourably invoked, to successfully oppose the Application the Opponent must establish that it has used the Trade Mark, or a substantially similar mark, in the Relevant Period.

   Assessment of the evidence

   18.     The Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Trade Mark upon, or in physical or other relation to, the Goods[4] within that period in order to rebut the allegation of non‑use. Undated examples of use carry little, if any, weight.

   [4] See s 7 of the Act.

   19.     The Guillou declaration states that the Opponent has been selling tea and infusions under the Trade Mark in Australia since at least 2013 and that the use has been ongoing since that date. It is further stated that the Opponent started selling its products ‘through Myer outlets’. Confidential Exhibit MG-1 is declared to be ‘copies of a vendor registration form in the name of ORIENTIS GOURMET with Myer, as well as invoices dated 2013 and 2014 to Myer which show use of the Trade Mark’. The documents in MG-1 are dated outside of the Relevant Period and, as a consequence, do not assist the Opponent.

   20.     Exhibit MG-2 is declared to be ‘an example of the goods that bear the Trade Mark with the label showing Myer Limited as the importer’. The exhibit consists of four pages. Each page shows four to six images of what appear to be packages of the type in which you might find tea. The images are low resolution making it difficult or, in many cases, impossible to read the writing on the packages, although the Trade Mark is apparent on some of the packaging. In the absence of submissions which indicate otherwise, it appears two only of the images bear dates. Those dates appear to be either ‘use by’ dates or dates of manufacture. While difficult to read, one date appears to be ‘01/2015’ which is outside of the Relevant Period. The other date is even more difficult to read but appears perhaps to be ‘04/2015’. Part of the image is provided below.

21.     The second dated image in Exhibit MG-2, shown above, appears to have had some text added to the image, perhaps by the use of image editing software. The date in the image—if that is what it is—appears upside down and slanted. The date could be ‘04/2015’—which would be within the Relevant Period—however, it is not clear enough to decipher accurately nor is it clear what this date might represent if it were legible. If, for example, it is a ‘use by’ date this would have little bearing on when the package was sold in Australia, if at all. I am not satisfied that Exhibit MG-2 supports a view that the Trade Mark was used in Australia during the Relevant Period.

22.     The Guillou declaration states that goods bearing the Trade Mark have been ‘advertised by the distributor Myer, in particular through Myer catalogues, website and social media accounts’. No examples of Myer’s website are provided.  Exhibit MG-3 is declared to be ‘examples of catalogues showing the goods bearing the Trade Mark, as well as a printout from the Myer Instagram account’. The catalogue examples are undated and do not assist the Opponent. There is no date apparent on the printout from the Myer Instagram account. In his declaration, Mr Geiger was critical of the Instagram printout, going so far as to suggest that ‘the evidence was deliberately modified by the Opponent to support their case’. Mr Geiger suggested that the date had been removed from the printout. This accusation was answered in the EIR by the Williams declaration. I am satisfied that no tampering of the evidence occurred but that the missing date occurred as a result of the limitations of the image scanners used in preparing the evidence. The Williams declaration indicates that the post on the Instagram social media platform is dated 17 July 2013. This date is outside of the Relevant Period. Exhibit MG-3 does not assist the Opponent.

23.     Ms Guillou declared:

Goods bearing the Trade Mark also appeared on Australian TV. The goods were supplied by Myer Limited and shown on an episode of The Block on Nine Network (season 9 which aired in 2014). Now produced and shown to me and marked Exhibit MG-4 is a copy of a supplied list in respect of The Block episode which showed that products bearing the Trade Mark were advertised though product placement during one episode of that program.

Leaving aside the question of whether such product placement is use of a trade mark in the course of trade, 2014 is outside of the Relevant Period; consequently, Exhibit MG‑4 does not assist the Opponent.

24.     It is stated in the Guillou declaration that:

Although the Opponent has stopped distributing its products in Australia through Myer, products bearing the Trade Mark are still offered for sale through the Opponent’s website Now produced and shown to me and marked Confidential Exhibit MG-5 are copies of invoices to Australian customers dated during [the Relevant Period] in respect of products bearing the Trade Mark.

The exhibit contains two invoices both which are dated during the Relevant Period—the first, 10 December 2017 and the second, on the final day of the Relevant Period. Both invoices show customer names and delivery addresses in Australia. The items listed in the invoice under the ‘Product’ column are in many cases clearly varieties of tea and in other cases seem likely to be varieties of tea.

25.     The Trade Mark appears in the invoices only as part of a domain name in text at the bottom of each invoice. The text appears in both English and French on the earlier invoice and in French only on the later invoice: the English version being:

The site is intended for use by individuals and not by companies. No reimbursement of VAT can be made for an order placed by a company …

Kenny J noted that ‘whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used’.[5] In the context used on the invoices the domain name is not used as a trade mark rather it is simply used as an address for a website. Exhibit MG-5 does not assist the Opponent.

[5] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [153].

26.     Exhibit MG-6 is declared to be ‘printouts from the Opponent’s website showing examples of some of the goods listed in the invoices showing use of the Trade Mark on the actual packaging’. The printouts are dated some six months after the Relevant Period. Exhibit MG-6 does not assist the Opponent.

27.     The Williams declaration in the EIR was concerned solely with answering Mr Geiger’s accusation of evidence tampering. This was discussed above, and the declaration need not be considered further. The Waters declaration answered some criticisms of Mr Geiger concerning the invoices provided in Exhibit MG-5 to the Guillou declaration. As I have found that those invoices do not assist the Opponent they need not be discussed further.

28.     To the extent that the Opponent relies on the website at to support use of the Trade Mark in Australia, I note that there are no examples of that website provided which are dated during the Relevant Period: examples which might, for example, have been obtained from an internet archive service.

29.     The Waters declaration does contain some examples of pages of another website at which were obtained from an archive service and which are dated during the Relevant Period. This evidence is, in my view, not correctly evidence in answer: this is entirely new evidence. If the Opponent wished to rely on this other website as evidence of use of the Trade Mark during the Relevant Period the evidence should have been filed during the evidence in support stage which would have given the Applicants an opportunity to file evidence in answer to it. This evidence will not be considered further.

30.     The Opponent’s evidence falls well short of satisfying me that the Opponent used the Trade Mark during the Relevant Period. I am satisfied, therefore, that the grounds on which the Application was made have been established.

The Registrar’s Discretion 

31.     Section 101 provides the Registrar with the discretion to allow a trade mark to remain on the Register in certain circumstances even where the grounds on which an application to remove a trade mark have been established. There is nothing before me that satisfies me that it is reasonable to exercise the discretion in favour of the Opponent.

Decision

32.     As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. Extension of protection to Australia of the IR shall cease after one month from the date of this decision. In the event of an appeal from this decision, protection will not cease until the appeal has been discontinued or dismissed, or in the event of a decision from the court, extension of protection will be subject to that decision.

Costs

33.     The Applicants have sought an award of costs in their favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
11 August 2020