Orlando Farese v Giacomo letto and Justin Lamattina

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Orlando Farese to application under section 92 of the Trade Marks Act 1995 (Cth) by Giacomo letto and Justin Lamattina to remove trade mark number 1375416 (41) – HEAVEN and device – in the name of Orlando Farese

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Ian Horak of Kings Counsel instructed by Collison & Co

Removal Applicants: Rebecca Jones of LegalVision IPL Pty Ltd

Decision:

2023 ATMO 180

Trade Marks Act 1995 (Cth) – application under section 92 – sections 92(4)(a) and 92(4)(b) – no use established – discretion not exercised – trade mark to be removed

Background

Orlando Farese (‘Removal Opponent’) is the registered owner of the following trade mark:
Registration Number:  1375416
Trade Mark:  (‘Trade Mark’)
Filing Date:  2 August 2010
Specification:  Class 41: Nightclub services; discotheques; musical entertainment; live stage shows (‘Registered Services’)
On 4 June 2021 Giacomo letto and Justin Lamattina (‘Removal Applicants’) filed a non-use application (‘Application’) based on ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’). The Application was made in respect of all the Registered Services.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Removal Opponent filed a Notice of Intention to Oppose the Application on 4 August 2021, followed by its Statement of Grounds and Particulars on 2 September 2021. On 19 November 2021 the Removal Applicants filed their Notice of Intention to Defend the Application.
The Removal Opponent filed the following declaration as evidence in support:
- Declaration of Orlando Farese, Owner, made on 17 February 2022, with Exhibits OF1 to OF12 (‘Farese 1’).
The Removal Applicants filed the following declaration as evidence in answer:
- Declaration of Giacomo letto, made on 19 May 2022, with Annexures Gl-1 to Gl-17.
The Removal Opponent filed the following declaration as evidence in reply:
- Declaration of Orlando Farese, made on 22 July 2022, with Exhibits OF13 to OF17 (‘Farese 2’).
Once the time for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. Both parties requested a hearing by way of written submissions. A notice was sent to the parties which contained a schedule for the provision of written submissions to be filed prior to the hearing. The Removal Opponent filed its written submissions on 11 October 2023. The Removal Applicants filed written submissions on 19 October 2023. The matter was set down for a hearing and allocated to me to determine as a delegate of the Registrar of Trade Marks based on the aforementioned materials.
Preliminary Matter
On 25 October 2023 the Removal Opponent filed a written submission in reply (‘WSR’). The Removal Applicants urged that I disregard the WSR as it was filed out of time. In response the Removal Opponent argues that it is entitled to be heard in relation to the matter and the WSR does not include any further evidence, but rather rebuttal arguments in reply to the Removal Applicant’s written submissions. Furthermore, the Removal Opponent argues that if it had a representative appear at an oral hearing, the representative would be entitled to make the rebuttal submissions orally.
Under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Regulation 21.19 provides the Registrar with a discretion to take into account information that is relevant to proceedings.
Central to any request for consideration of any material filed outside the statutory timetable is the need for the material to be of a high probative value and crucial to the outcome of the proceedings.[2] In my view, WSR does not meet that threshold. On this basis, I decline to consider the Removal Opponent’s WSR.
[2] Fed Square Pty Ltd v Federation IP Pty Ltd (2015) 113 IPR 453, 464 [50] (Hearing Officer Wilson).
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register due to non-use.
Sections 92(4)(a) and 92(4)(b) provides:
(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.
The Removal Opponent nominated grounds under ss 92(4)(a) and (b). However, given the way that s 92(4)(a) is expressed, this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years.[3] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
[3] See, eg, Moores MDP Pty Ltd v Moore Stephens International Licensing [2023] ATMO 86, [23]; Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173, [9]; Bangkok Broadcasting & TV. Co Ltd v Seven Network (Operations) Limited [2021] ATMO 78, [21]; Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3, [22].
Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the Trade Mark is the three year period ending on 4 May 2021 (‘Relevant Period’).
Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. [4] Provided the use is in good faith, a ‘single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6] In Nodoz Trade Mark, Wilberforce J 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’.[7]
[4] [2001] FCA 261, [16].
[5] Ibid [17].
[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
[7] (1962) RPC 1, 7.
I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[8]
[8] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
In accordance with s 101, if the grounds for removal are established, I may decide to remove the Trade Mark from the Register in respect of any or all of the services identified in the Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Use of the Trade Mark during the Relevant Period
In Farese 1, the Removal Opponent declares that a nightclub and entertainment venue associated with the Trade Mark was established in 1992. The Removal Opponent acquired the rights to the Trade Mark in 2009. Since acquiring the Trade Mark rights the Removal Opponent declares that it has authorised licensees and conducted events periodically in association with the Trade Mark.
The Removal Opponent deposes that it authorised the use of the Trade Mark at an event at the German Club in Adelaide, South Australia, which was held on 29 December 2018. Exhibit OF7 to Farese 1 comprises a tax invoice issued by Imagine (S.A.) Pty Ltd (‘Imagine’) to Daniel Michael dated 27 September 2018. The tax invoice details charges for use of the Trade Mark and business name for a Heaven Reunion event to be held on 29 December 2018. The Removal Opponent states that the invoice was issued on its behalf by Imagine who brokered the deal. The Removal Opponent claims that as part of the license agreement with the German Club it had final say over the design of any advertising work.
The Removal Opponent deposes that in June 2018 it planned to hold an event under the Trade Mark at the then HQ Complex venue on Hindley Street, Adelaide. The event never took place and the venue was placed into voluntary administration in 2019. Exhibit OF9 to Farese 1 comprises email correspondence between the Removal Opponent and event coordinators dated between December 2017 to May 2018. Exhibit OF8 to Farese 1 comprises a copy of a draft flyer for the event featuring the following trade mark:
The Removal Opponent declares that an event featuring the Trade Mark was scheduled to be held at Glenelg Beach, South Australia, on 29 August 2020. The event never took place due to COVID-19 restrictions imposed by the South Australian government in 2020. The event was rescheduled for 2021, however, due to the ongoing restrictions the Removal Opponent then planned to hold the event in 2022. Exhibit OF10 to Farese 1 comprises a copy of the draft flyer that was produced for the 2020 event which features the following trade mark:
Exhibit OF12 to Farese 1 comprises a post from John Morley’s Facebook account dated 27 March 2020. John Morley is a Disc Jockey (‘DJ’), and the post advises followers that Heaven Live Mixes from 2000 are available. The post features the following trade mark:
In Farese 2, the Removal Opponent declares that with its permission in 2020 Fresh FM an Adelaide Radio Station ran a series of Heaven Reunion Mixes which were produced by DJ John Morley and DJ Rmac. Exhibit OF13 to Farese 2 is a post from John Morley’s Facebook account dated 5 August 2020. The post asks listeners to tune in from 12 as ‘Rmac & JM in ze house with Heaven vibe!’.
In response to the Removal Opponent’s evidence the Removal Applicants argue that none of the evidence conclusively establishes that the Trade Mark was used by the Removal Opponent as an individual, nor that use of the Trade Mark was authorised use as defined in s 8.
In my assessment, the tax invoice issued by Imagine for use of the Trade Mark for an event at the German Club in December 2018 does not mention the Removal Opponent. Nor does the Removal Opponent provide any evidence that the Trade Mark as registered was used at the event for the Registered Services, or that it had final say over the design of any advertising work.
The evidence of draft flyers for the Removal Opponent’s proposed events in June 2018 and August 2020, and the Facebook post by John Morley dated March 2020 all feature a trade mark which consists of a five point crown device and the word HEAVEN inside a disc (‘Removal Opponent’s second logo trade mark’). Under s 100(3)(a), I must consider whether use of the Removal Opponent’s second logo trade mark is use of Trade Mark with additions or alterations not substantially affecting its identity. The test is the same as the test in respect of substantial identity and this requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[9] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:
[9] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Trade Mark

Removal Opponent’s second logo trade mark

On a side by side comparison there are clear differences between the trade marks. While both trade marks share the word HEAVEN, the crown device in the Trade Mark has devil horns and three points. In comparison the Removal Opponent’s logo trade mark is a five point crown which creates a clear visual difference between the respective trade marks. As such I find that the trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of similarity.
In relation to John Morley’s Facebook posts advising of Heaven Live Mixes and radio broadcasts, there is no evidence that the Trade Mark as registered (or a trade mark with additions or alterations not substantially affecting its identity) was used or that use of the Trade Mark was authorised by the Removal Opponent.
With regard to the use of the Trade Mark by other persons, Note 1 to s 100(3) states that if the registered owner of a trade mark has authorised another person to use it, any authorised use of the trade mark by that other person is taken to be a use of the trade mark by the registered owner.
Section 8 defines an ‘authorised user’ and ‘authorised use’ as follows:
8 Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
This makes it clear that use of the Trade Mark by an authorised user will only be taken to be use by the registered owner of the Trade Mark if the latter exercises control over the use of the Trade Mark during the Relevant Period so as to maintain a connection in the course of trade between the Registered Services and the owner. That can be achieved if, for example, either quality control or financial control is exercised.
In this case the Removal Opponent has provided no evidence that it exercised either quality control or financial control over the use of the Trade Mark in relation to the Registered Services. While the Removal Opponent states that as part of the license agreement with the German Club it had final say over the design of any advertising artwork, no evidence of any artwork or correspondence in relation to control has been produced. Likewise, there is no evidence that the Removal Opponent authorised the use of the Trade Mark to John Morley or Fresh FM. Therefore, I am not satisfied that the Removal Opponent or an authorised user as contemplated by the Act has used the Trade Mark during the Relevant Period in relation to the Registered Services.
Obstacles to Use
A removal opponent may rebut an allegation of non-use by establishing that a failure to use the trade mark in the relevant three year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[10]
[10] Woolly Bull Enterprises Pty Ltd v. Reynolds [2001] FCA 261, [47] (Drummond J).
The Removal Opponent submits that the planning of its event to be held in June 2018 at the HQ complex in Adelaide never went ahead because the owner of the venue was unwell during 2018. Further, the Removal Opponent states that due to COVID-19 restrictions imposed by the South Australian government in 2020 its planned event at Glenelg Beach was postponed, and that it planned to reschedule the event to 2021 however due to the ongoing restrictions it was planning on holding the event in 2022 if restrictions allow.
In my view the Removal Opponent has only given statements and provided no evidence in relation to obstacles to use. Moreover, the Removal Opponent has provided no reasons as to why it could not find a different venue to hold its June 2018 event. Regarding the COVID-19 restrictions, these restrictions were put in place two years into the Relevant Period and while I acknowledge that the provision of the Registered Services may involve in person attendance by customers, many in the entertainment industry got creative during COVID-19 lockdowns and dabbled in live streaming or used other platforms to provide similar services, for example DJ John Morley made Heaven Live Mixes available online. As such I am not satisfied by the bare statements in the Removal Opponent’s evidence constitute circumstances that amounted to matters that were an obstacle to use of the Trade Mark for the Registered Services in the Relevant Period, pursuant to s 100(3)(c).
As there is no obstacle to use of the Trade Mark it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for the Registered Services.
Registrar’s discretion
Section 101(3) provides:
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.
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as 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 Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[11]
[11] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

The Removal Opponent argues that it has a continuing interest in the Trade Mark and that this is objectively supported by its uses and attempts to hold functions during the Relevant Period.
The Removal Opponent states that the Removal Applicants have not shown that they would be disadvantaged by the continued registration of the Trade Mark. Furthermore, the Removal Opponent contends that given the continuous use of the Trade Mark over the period before the Relevant Period and the intention to continue to use the Trade Mark, it has established itself as the owner of the Trade Mark. The Trade Mark therefore signifies a connection to the Removal Opponent and it is in the public interest that the Trade Mark remain on the Register.
In response the Removal Applicants argue that any legitimate interest the Removal Opponent might have previously had in the Trade Mark ceased many years ago.
The Removal Applicants state that it would be disadvantaged by the continued registration of the Trade Mark particularly as:
- the Removal Applicants have accrued a significant and valuable reputation in their HEAVEN branding, based on their longstanding use since 2016;
- the Registration has been cited by IP Australia as an obstacle to acceptance of the Removal Applicants pending trade mark applications 2184405 and 2184406 in class 41; and
- the Removal Opponent has made threats of legal action against the Removal Applicants.
The Removal Opponent acquired the rights to the Trade Mark in 2009 and filed the trade mark application in 2010. However, there is no cogent evidence which allows me to confirm a residual reputation in the Trade Mark, or whether there has been use of the Trade Mark in relation to the Registered Services during or following the Relevant Period.
Overall, the public interest is not served by allowing the unused Trade Mark to remain registered in respect of the Registered Services for which the Removal Opponent has no demonstrated intention of providing. The Removal Applicants have directed me to their private interests in having the Trade Mark removed given their pending trade mark applications. By contrast the Removal Opponent has not drawn my attention to any circumstances that would favour the discretion available under the Act being exercised to preserve the Registration. I am unpersuaded that the removal of the Trade Mark would result in consumer confusion or practically impact on the interests of the Removal Opponent. As such I decline to exercise the discretion.
Decision
The ground for removal under s 92(4)(b) has been established in respect of the Registered Services.
I direct that trade mark registration 1375416 be removed from the Register. In the event of an appeal, the disposition of the removal will instead be subject to the decision made by the Court.
Costs
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
13 November 2023

[2023] ATMO 180

13 November 2023