P & T Basile Imports Pty Ltd v Aceto Balsamico Del Duca Di Adriano Grosoli S.R.L

[2011] ATMO 44

TRADE MARKS ACT 1995

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

Re:Opposition by P & T Basile Imports Pty Ltd to application under section 92 of the Act by Aceto Balsamico del Duca di Adriano Grosoli S.R.L to remove trade mark number 714911(29, 30) - Squisito Orecchiette and device - in the name of P & T Basile Imports Pty Ltd

Delegate:	Alison Windsor
Representation:	Non-use Opponent:  Ben Fitzpatrick of counsel, instructed by Allens Arthur Robinson Patent and Trade Mark Attorneys Non-use Applicant:  Amanda Caldwell of Spruson & Ferguson Patent and Trade Mark Attorneys
Decision:	2011 ATMO 44 S96 – opposed application to remove trade marks for non-use – use demonstrated within relevant period for some of the registered goods – trade mark to remain on register for restricted goods only – no costs award made.

Background

1. P & T Basile Imports Pty Ltd (‘Basile’) has a registered trade mark, current details of which are shown below:

   Number:  714911
   Registration date:     13 August 1996

   Goods:Class 29:  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

   Class 30:  Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, including pasta and pasta products, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice. (‘the goods’)

   Trade Mark:              (‘the trade mark’)

   Endorsement:           When the trade mark is used for items in the specification of goods other than ORECHIETTE, the word ORECHIETTE in the trade mark will be changed to accord with those other items.

   The applicant has advised that the translation of the ITALIAN word appearing in the trade mark is EXQUISITE.

2. On 7 May 2008, Aceto Balsamico del Duca di Adriano Grosoli S.R.L (‘Grosoli’) filed an application to have the trade mark removed from the Trade Marks Register for all the goods for which it is registered on the grounds of non-use. The application was filed pursuant to section 92 of the Trade Marks Act 1995 (‘the Act’) and specified grounds relevant to both paragraphs 92(4)(a) and 92(4)(b).

3. Basile filed a notice of opposition to the application on 27 May 2008.  The notice asserted that the grounds on which Grosoli relied were not relevant because Basile had both the intention to use the trade mark at the time of its filing as well as actual use of the trade mark during the relevant periods. 

4. Both parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

5. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 18 April 2011.  Amanda Caldwell of Spruson & Ferguson Patent and Trade Mark Attorneys appeared on behalf of Grosoli.  Benjamin Fitzpatrick of counsel, instructed by Allens Arthur Robinson, Patent and Trade Mark Attorneys, appeared on behalf Basile.  

   Evidence

6. The declarations filed and served as evidence in this matter are as follows:

   Evidence in support
   Evidence in answer

   • Patrizia Basile-Massarotti, made 12 August 2008, with Exhibits PBM-1 and PBM-2 and confidential Exhibit PBM-3 (‘Massarotti 1’)
   • Andrew Chambers, made 26 May 2009
   • Kim Michael Nicholson, made 26 May 2009, with Exhibits KMN-1 to

   KMN-4

   Evidence in reply
   Opponent’s further evidence
   Applicant’s further evidence

   • Patrizia Basile-Massarotti, made 21 December 2009, with Exhibits PBM-4 to PBM-7 (‘Massarotti 2’)
   • Patrizia Basile-Massarotti, made 22 March 2010, with confidential Exhibit PBM-8 and Exhibit PBM-9 (‘Massarotti 3’)
   • Patrizia Basile-Massarotti, made 2 June 2010 (‘Massarotti 4’)
   • Amanda Caldwell, made 9 December 2010, with Exhibit 1

7. Rather than provide a summary of the evidence here, I will refer to the appropriate sections during my discussions later in this decision. 

   Legal Framework

8. 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.

9. Section 92 provides for a person to apply to the Registrar to have a trade mark removed from the Register because it has not been used and/or there is not an intention for it to be used. The application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and/or services in respect of which the trade mark is or may be registered. Paragraphs 92(4)(a) and 92(4)(b) as they are relevant to this case provide the following:

   [1] Regulations 9.1 to 9.4

   (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. 

10. Section 96 makes provision for a person to oppose any application made under section 92 by filing a notice of opposition with the Registrar. This notice must be in an approved form and must be filed in accordance with the Regulations[2]. 

    [2] Regulation 9.3

11. Section 100 specifies that the burden is on the opponent to a non-use application to rebut allegations of non-use or lack of intention to use as the case may be. The opponent needs to establish that the applicant or registered owner of the trade mark has used the trade mark or the trade mark with additions or alterations not substantially affecting its identity in good faith in respect of the relevant goods and/or services, and that this use occurred within the relevant periods as specified in the Act.[3] 

    [3] Regulation 9.4 refers to the serving of evidence in the opposition proceedings.

12. Section 101 provides the Registrar with the discretion to remove the trade mark from the Registrar (or to retain it) in respect of all or any of the goods/services even if the grounds on which the application was made have been established.

    Discussion

13. The registration under attack in this case had been registered for approximately 12 years by the time the application for its removal was made.  Paragraph 70.510 of Shanahan’s Australian Law of Trade Marks and Passing Off (4^th ed, 2008), makes the following comments:

    Section 92(4)(a) and (b) provide distinct and alternative grounds for removal. Under para (a) it is necessary to establish: first, that the trade mark was registered without the necessary intention in good faith that it should be used; and secondly, that there had in fact been no use, or no use in good faith, earlier than one month before the application for removal. Under para (b) it is necessary to establish only that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal, subject to s 93(2) which provides that five years must have passed since the application for the registered trade mark was filed.

    Paragraph (a) thus merges with para (b) once the trade mark has been registered for five years, though it should be noted that the defence of "circumstances that were an obstacle to the use of the trade mark" which applies to para (b) is not available under para (a).

14. I am satisfied that this merging of the paragraphs is indeed what has happened, given the length of time which has passed since the trade mark was registered. Therefore, as provided for by section 100(c), the onus is on Basile to rebut the claim that there has not been any use of its trade mark in good faith within the three year period ending one month prior to filing of the application for removal on 7 May 2008 (‘the relevant period’). Basile’s intentions at the time it filed the trade mark in 1996 are not relevant to my considerations and I do not intend to investigate or consider them.

15. Patrizia Basile-Massarotti states (in Massarotti 1) that in August 2008 she had been employed by Basile for 16 years and was at the time the marketing manager.  She states her belief that Basile had made sales of products bearing the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, in good faith in Australia during the relevant period.  As exhibits to the declaration she has provided extracts from Basile’s product catalogue (Exhibit PBM-1) showing use of the trade mark in relation to a number of different products namely: a variety of different pastas; gnocchi, tortellini, extra virgin olive oil, balsamic vinegar, polenta and canned tomatoes of various types.

16. Exhibit PBM-2 provides copies of packaging showing the trade mark applied to two different kinds of rice, ‘Arborio’ and ‘Carnaroli’.  Neither the rice packaging nor the items from the product catalogue are dated.  However, Ms Massarotti has declared that these all show use of the trade mark during the relevant period.

17. Exhibit PBM-3 provides a number of copies (labeled in the top right hand corner as ‘re-printed’) of invoices to seven different purchasers who have ordered a variety of goods from Basile.  All invoices include goods identified as ‘Squisito’ products, though there is nothing on any of the invoices which shows the trade mark itself in use.

18. Grosoli’s evidence in answer, via both the Chambers and the Nicholson declarations, attempts to cast doubt on Basile’s claimed use of the trade mark in respect of both the mode of use and the goods on which it has been used.  The Chambers declaration refers to telephone calls, described as ‘pretext calls’, made to a number of food retailing outlets in and around Melbourne in relation to their stocking of products under the name ‘Squisito’.  The general thrust of the declaration is that Mr Chambers, a licensed private inquiry agent, was unable to find any goods stocked in any of the retailing outlets under that name.

19. The Nicholson declaration serves largely as a vehicle to put into evidence archived extracts from Basile’s website which were accessed through the Internet Archive’s Wayback Machine.  Mr Nicholson states his belief that, of the products listed on the website, the term ‘Squisito’ only appears in relation to polenta.[4]

    [4] This is not strictly correct, as the pages giving details of the polenta also refer to ‘Squisito Country Style Pasta’.

20. Massarotti 2 attempts to counter the suggestions of lack of use put forward in the evidence in answer by submitting detailed reports described as ‘sales analysis data’.  These reports are the results of searches conducted of Basile’s computer records for various products bearing the SQUISITO trade mark during the period 4 April 2005 to 4 April 2008.  The output from these searches totals over 300 pages and, for the period, lists in alphabetical order by customer name (via what I take to be Basile’s alphabetical reference codes) the SQUISITO branded goods which were sold.

21. It is clear from Basile’s evidence that a range of goods have been sold under the imprimatur of the word ‘Squisito’ during the relevant period.  Just what these goods were I will deal with later.  It is necessary to determine firstly whether these sales can be equated with use of the trade mark as filed.  Ms Caldwell’s submissions at the hearing put heavy emphasis on the mode of use of the trade marks in the evidence Basile provided, submitting that the use demonstrated was not use of the trade mark as filed and thus could not be regarded as ‘use’ for the purposes of the non-use action.

22. Section 7(1) of the Act provides:

    Use of trade mark

    (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

23. For convenience, I repeat the trade mark as it appears on the Register here:

24. Variations of the trade mark in use on the goods include the following examples taken from Exhibits PBM-1 and PBM-2 which were mentioned previously:

25. Ms Caldwell submitted that the following additions or alterations to the trade mark (amongst others not specified) substantially affect the identity of the trade mark:

    • variations in the crown logo element
    • the addition of a circle device around the crown logo
    • different arrangements and prominence given to the various elements comprising the composite mark and
    • omission of the variable descriptive element and corresponding lines device, as required by the endorsement

26. To my mind, the identity of this trade mark lies in the word ‘Squisito’.  On the Register, the word appears in a slightly stylized script.  The initial letter ‘S’ is black, with a thickened central curve which is highlighted with a thin white line.  In the examples shown in colour, the letter S appears in a number of different colours with the thin line shown in a contrasting colour – white if the letter S is coloured in a dark colour, and a dark contrast if the letter is white.  I note that all the examples of the word ‘Squisito’ shown above are presented in the same slightly stylized script which appears in the registered trade mark.

27. All the representations of the trade mark include the shield and crown device, though its positioning in respect of the word ‘Squisito’ changes from label to label.  Similarly, the description of the goods contained in the various packages changes in position and prominence.  The presence or absence of lines and circles in and around the various components of the trade mark appears to me to have little effect on the trade mark as a whole, despite some of them appearing in the trade mark as registered.

28. As I said previously, I consider that the word ‘Squisito’ largely creates the identity of the trade mark.  The other material is secondary and its positioning in respect of the word does not change the trade mark’s identity.  I am satisfied that the use demonstrated in the examples shown above shows use of the trade mark with additions and alterations which do not affect the identity of the trade mark. 

29. Ms Caldwell also made reference to the fact that all the goods sold under the ‘Squisito’ label appearing in the various invoices and in the sales analysis figures are referred to by the word ‘Squisito’ only, and that there is no indication whether the goods to which the invoices relate are goods which carry the registered trade mark.  I do not find this argument persuasive – it stands to reason that references to goods in an invoice covering several different brands are unlikely to be identified via a composite trade mark.  Some sort of shorthand will be used, in this case the word ‘Squisito”, the effective identity of the trade mark under attack.  I do not consider that these examples are necessarily unsupportive of Basile’s claims to have used its trade mark appropriately.

30. Another matter which I need to look into is the matter of the product catalogue pages and rice packages which form Exhibits PBM-1 and PBM-2.  These exhibits are crucial to Basile’s claim for appropriate use of its trade mark during the relevant period.  However, none of the examples provided in these exhibits contain any dates at all, although Ms Massarotti declares that the extracts from the catalogues and the rice packaging both show use of the trade mark during the relevant period. 

31. While it would be more persuasive for these exhibits to be clearly dated within the relevant period, I am satisfied that they demonstrate relevant use.  The evidence provided allows me to infer that Basile has used the same or very similar packaging for a number of years.  The Nicholson declaration provided, at Exhibit KMN4, a number of copies of archived pages of Basile’s website available through the Internet Archive’s Wayback Machine.  The earliest of these, Mr Nicholson says, is dated from 2004.  It shows Basile’s packaging for its 1 minute polenta product, and I note that the packaging is the same as that appearing in the catalogue page provided in Exhibit PBM-1.  Accessing Basile’s current web-site demonstrates that the packaging of that item is still the same.  Therefore, even if the catalogue from which the extracts were taken is more recent than the relevant period, the trade mark usage shown is the same as it was during that period.  I am prepared to infer that this applies to all the examples of catalogue pages provided.

32. There is another question, however, which does need some clarification.  Massarotti 1 states that ‘stock codes’ on the invoices provided correspond with the ‘product codes’ appearing on the product catalogue extracts annexed as Exhibit PBM-1.  Mr Nicholson points out that the stock code for ‘balsamic vinegar of Modena’ appearing in the product catalogue does not equate to that appearing in the invoices.  Massarotti 3 attempts to explain this anomaly.  Ms Massarotti says that a review of Basile’s records confirms that at some point after the date of the invoices in question (all of which are dated in early 2007) the product code for the balsamic vinegar was changed to bring it into line with other similar goods.  Exhibit PBM-8 provides copies of invoices dated in early July 2008 which show sales of the vinegar under the new product code.  In any event, the product description of the goods in question always appears both in the catalogue and in the invoices, so just what the goods are is never in question.  As far as the date of the catalogue page is concerned, it is within the bounds of possibility that the product code changed during the relevant period, but I refer to my earlier comments – the packaging of most of the products and therefore the trade mark in use during the relevant period had not altered greatly over a period of years.

33. I am satisfied that Basile has used its trade mark in respect of a part of the range of goods for which its trade mark is registered.  The next question then is what those goods are.

    The goods

34. From the more than 300 pages of sales figures provided, clear evidence of use of the mark has been shown in respect of the following goods only: 

    pastas of various kinds; gnocchi; tortellini (a pasta product); polenta; tinned tomatoes; virgin olive oil and balsamic vinegar. 

    While PBM-2 provided copies of packages for Arborio and Carnaroli rice, there are no invoices which show sales of rice under the ‘Squisito’ trade mark.  It is clear that Basile has demonstrated use of its trade mark on a range of goods which is much narrower than that for which its trade mark is registered.

35. Mr Fitzpatrick submitted that Basile has established very significant use of its SQUISITO trade mark in respect of a broad range of goods.  He said it would be clearly contrary to the opponent’s interests to restrict the registration because of the broad range of goods for which it has been used.  He also submitted that given the extent of the use it would be contrary to the public interest to restrict the goods covered by the registered trade mark as this would create a risk of public deception arising from Basile’s widespread use. 

1. The Registrar has some discretion in deciding the extent to which a trade mark registration may be restricted, or if indeed it should be restricted at all, and that is my next consideration.

   The Registrar’s discretion

2. Section 101 provides the Registrar with the discretion to decide whether or not to remove a trade mark from the Register even if a case for removal has been established. This discretion is embodied in subsections 101(3) and 101(4) of the Act which provide:

   (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. 

3. In this case, Basile has demonstrated use on what is a limited range of the goods for which its trade mark has been registered. Since Grosoli’s application for removal specified removal for all the goods involved in the registration, the goods for which the trade mark has not been used should arguably no longer form a part of the registration. The policy of the Act is to provide for the removal of unused trade marks from the Register unless it is reasonable not to do so. It is in the public interest in the integrity of the Register for unused trade marks to be removed.

4. There is no evidence that Basile has used its trade mark on goods other than those demonstrated in its evidence and there is no suggestion, beyond its initial registration, of an intention to extend use of the trade mark beyond its demonstrated use except, perhaps, into the sale of rice.  This is the situation as it appears to stand after 12 years of activity in the Australian food market and, because of this, I consider it appropriate to restrict the registration to the goods on which use has been demonstrated as well as a limited range of similar goods contained within the goods of the registration and which would be logical extensions of Basile’s current range.

   Decision

5. The non-use application has been partially successful.  The registration shall be restricted to the following goods after one month from the date of this decision:

   Class 29:  Preserved, dried and cooked fruit and vegetables; edible oils and fats

   Class 30:  Flour, and preparations made from cereals namely pasta and pasta products, gnocchi, polenta and rice; vinegars including balsamic vinegar.

6. If the Registrar is served with a notice of appeal on or before that time, the partial removal will not be effected until that appeal has been discontinued or dismissed, or the registration will be subject to a decision made by the Federal Court.

   Costs

7. Both parties requested their costs in the event of success.  Since neither party has achieved its aims in this matter, I consider that each should bear its own costs.  I decline to make any award of costs.

   Alison Windsor
   Hearing Officer
   Trade Marks Hearings
   30 May 2011