PDM Parthian Distributor & Marketing Adviser GmbH v BrewDog Plc

[2020] ATMO 142

TRADE MARKS ACT 1995

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

ReOpposition by PDM Parthian Distributor & Marketing Adviser GmbH to application by BrewDog Plc for cessation of protection (in Australia) of International Registration 1230659 (29, 32) (Australian designation 1667273) – Black Punk - in the name of PDM Parthian Distributor & Marketing Adviser GmbH

Delegate:                 Robert Wilson

Representation:       Opponent: FB Rice Pty Ltd

Applicant: Allens Patent & Trade Mark Attorneys

Decision:                   2020 ATMO 142

Trade Marks Act 1995 (Cth) – Reg17A.48F opposition: opposition to application for cessation of protection pursuant to reg 17A.48C (s 92(4)(a)) unsuccessful – no requisite intention to use – shift of onus – extension of protection to cease

Background

1. PDM Parthian Distributor & Marketing Adviser GmbH (‘the Opponent’) is the Holder of International Registration 1230659 (‘the IR’). Protection of the IR was extended to Australia; relevant details are as follows:

Australian Designation:	1667273
Filing Date:	15 October 2014
Convention Priority Date:[1]	17 April 2014
Goods:	Class 29: Protein-containing beverages Class 32: Mineral and aerated waters and other non-alcoholic beverages, including non-alcoholic energy drinks; vitamin-containing beverages; fruit beverages and fruit juices (the Challenged Goods’) [2]
Trade Mark:	Black Punk	(‘the Trade Mark’)

[1] Trade Marks Regulations 1995 (Cth) regs 17A.2 to 17A.4.

[2] The Challenged Goods are all of the goods and/or services for which the trade mark is registered.

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 22 December 2017, BrewDog Plc (‘the Applicant’) filed an application (‘the Application’) seeking cessation of protection of the Trade Mark. The Applicant alleged that on the day on which the application for extension of protection to Australia was filed, the Opponent lacked the requisite intention to use the Trade Mark in relation to the Challenged Goods. The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose, which was filed on 19 March 2018, and a Statement of Grounds and Particulars, which was filed on 18 April 2018. A cooling-off period was requested by both parties and was granted; this expired on 29 November 2018. The Removal Applicant filed a Notice of Intention to Defend on the day the cooling-off period expired.

Evidence

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

• Declaration made on 26 February 2019 by Bariz Soofizadeh, the Sales Director of the Opponent, with Annexures BS-1 to BS-5 (‘the Soofizadeh declaration’).

5. The Applicant did not file any evidence.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. As neither party requested a hearing they were informed that the matter would be decided on the material which was properly filed; the parties were also given three months to file written submissions. FB Rice Pty Ltd prepared and filed submissions on behalf of the Opponent. The Applicant’s submissions were prepared and filed by Allens Patent and Trade Mark Attorneys. 

7. It has fallen to me, as a Delegate of Registrar of Trade Marks, to decide the matter, which I have done on the material discussed above.

The Opponent

8. According to the Soofizadeh declaration:

The Opponent is a management and consultancy business which was established in Germany in 2010. The company distributes beverages all over the world and develops brands in specific areas.

The Applicant

9. There is nothing before me from which I might provide a background of the Applicant; however, a search of the Trade Marks Register reveals that the Applicant is seeking extension of protection to Australia of International Registration 1285220. Details of that application are provided below. At the time of writing this decision, that application has the status, ‘Under examination – Deferred’.

Application Number:	1748834 (IR 1285220
Filing/Priority Date:	8 December 2015
Goods:	Class 32: Beer, lager
Trade Mark:	PUNK

Legal Framework

1. 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.

1. Part 9 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.

2. The Application specified that it was made according to the provisions of s 92(4)(a). 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. …

3. 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 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

Onus in s 92(4)(a)

1. In the case of an allegation of non-use under s 92(4)(a), s 100(1)(a) provides that the Opponent bears the onus of rebutting any allegation that, on the day on which the Application was filed (‘the Relevant Date’), the Opponent had one of the intentions listed in ss 92(4)(a)(i) to (iii) (‘Requisite Intention’) in relation to the Challenged 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 Challenged Goods, at any time before the period of one month ending on the day on which the Application was filed (‘the Relevant Period’).

2. There is a line of authority which stretches back many years that holds that there is a presumption of intention to use a trade mark (or authorise the use of a trade mark, etc) which arises from the filing of an application to register that trade mark.[3] This approach has been followed in two Federal Court cases where it was found that this presumption was sufficient to shift the onus from an opponent to an applicant.[4]

   [3] See for example: Aston v Harlee Manufacturing Company (1960) 103 CLR 391, 401.

   [4] Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [59]; Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [232]–[236].

3. In a slightly more recent Federal Court decision than those just referred to, Yates J, stated that where there is an allegation of lack of intention to use a trade mark, an applicant ‘is entitled to stand squarely behind the allegations that are made to actuate s 92(4)(a)’ and thus ‘it is the opponent … who must make good the case, in all its dimensions, for a challenged mark to remain on the Register’.[5] Yates J stated further:

   For the purposes of the application made under s 92(4)(a) … the following issues arise:

   (a)    has the [opponent][6] rebutted the allegation that, on the day on which the application for registration … was filed … the applicant had no intention in good faith to use the mark in Australia [etc]? and

   (b)    has the [opponent] rebutted the allegation that the … mark has not at any time in the second relevant period been used or been used in good faith, in Australia, in relation to the goods and services in relation to which the removal application relates?

   [5] Optical 88 v Optical 88 (No 2) [2010] FCA 1380, [204].

   [6] The reference to ‘opponent’ here means the person opposing the removal of the trade mark and the term has been used for consistency, even though the ‘opponent’ is strictly the ‘applicant’ in this case.

4. Yates J’s statements may be construed as overturning the shift of onus principle, and some commentators appear to support this view.[7] However, Yates J’s decision was appealed to the Full Federal Court. The Court in that matter affirmed the long-standing approach, stating that, ‘[T]he primary judge’s reasons do not disclose any error of principle or fact. It may be accepted that the making of the application is itself prima facie evidence of an intention to use the mark’.[8] It is to be noted that the opponent to removal (the appellant at appeal) had filed evidence which was found to be ‘inconsistent with the existence of any intention to use [the challenged trade mark]’.[9] Notwithstanding the shift of onus, the evidence was found to have evinced a lack of Requisite Intention which warranted removal of the trade mark from the Register.

   [7] See for example: Robert Burrrell and Michael Handler, Australian Trade Mark Law (Oxford University Press, 2^nd ed, 2016) 350.

   [8] Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130, [88] (citations omitted).

   [9] Ibid.

5. There is a good reason why an opponent might choose to rely on the shift of onus which arises from the presumption, and yet decide to file at least some evidence in support. It is open to an opponent to request a hearing during the evidence in support stage of proceedings.[10] If an opponent has not filed evidence in support and has not requested a hearing during the period for filing evidence in support the opposition is taken to have ended.[11] In this circumstance, where the Registrar is also satisfied that the application was in order, the application is taken to be unopposed.[12] Validly filed evidence in support of any nature is sufficient to prevent the premature ending of an opposition; for example, the filing of a declaration which attested to nothing more than that the owner of the trade mark had the Requisite Intention would suffice.

   [10] Trade Marks Regulations 1995 (Cth) regs 9.17(1) and 17A.48S(1).

   [11] Trade Marks Regulations 1995 (Cth) regs 9.17(2) and 17A.48S(2).

   [12] Trade Marks Regulations 1995 (Cth) regs 9.17(3) and 17A.48S(3).

6. The filing of evidence in support which goes beyond a mere declaration of Requisite Intention may have the effect of weakening an opponent’s position to the point where a finding is made against it—even where the applicant for removal has filed no evidence. This appears to be the situation that arose in the matter discussed above. Yates J found that:

   Taking the evidence as a whole ... I am not satisfied that the [opponent’s] intention [at the relevant date], was anything more than ‘an uncertain or indeterminate possibility’[13] that the [opponent] might commence to operate stores in Australia. Even then the possibility of wholesaling … was, as I have noted, wholly speculative.[14]

   [13] Re Ducker’s Trade Mark (1928) RPC 397, 402.

   [14] Optical 88 v Optical 88 (No 2) [2010] FCA 1380, [268].

7. In my view, a better interpretation of Yates J’s statement, discussed from paragraph 16 above, is that, the shift of onus is alive and well; however, where an opponent has made the choice to file evidence in support which goes beyond a mere statement of Requisite Intention, the Registrar may make a finding that an opponent had no intention to use based on the material present in, and absent from, that evidence.

8. For the sake of clarity, where an opponent has filed evidence in support which is nothing more than a statement of Requisite Intention, the presumption of intention arising from the filing of the application to register is sufficient to shift the onus to the applicant for removal. In this circumstance, for the ground on which the application was made to be established it is necessary for the applicant to, at least, displace the presumption. It may be possible that this is done solely by submissions, but in many instances, this would require the applicant to also file evidence in answer. Where an applicant chooses to file evidence in answer, an opponent would have the opportunity to file evidence in reply.

9. In the matter at hand, I commence the discussion which follows from the position that the onus has shifted to the Applicant as a result of the presumption discussed above. As will be seen, the Soofizadeh declaration goes beyond a mere statement that the Opponent possessed the Requisite Intention. There are no submissions from the Opponent that any of the EIS establishes use of the Trade Mark in Australia during the Relevant Period: this aspect will not be considered further. It is, therefore, the state of mind of the Opponent at the Relevant Date that remains to be assessed. The Applicant has filed no evidence, so it must rely on its submissions to discharge its onus by persuading the Registrar that the EIS shows that the Opponent lacked the Requisite Intention. I proceed on the basis that the standard of proof required is the usual civil standard of ‘on the balance of probabilities’.[15]

   [15] 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 decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] which affirmed Gyles J’s approach.

Assessment of the evidence

1. As a general comment, the Applicant has submitted that:

   The Opponent’s evidence in support of its opposition against the removal of the Registration indicates an absence of intention in good faith to use [the Trade Mark] in respect of all of [the Challenged Goods] in Australia.

2. The Soofizadeh declaration states that the Opponent ‘adopted the Trade Mark in 2011 to be used in relation to a beverage product, being a non-alcoholic energy drink’. Annexure BS-1 to the Soofizadeh declaration is declared to be ‘details of the Opponent’s registrations and applications for the Trade Mark worldwide’. BS-1 lists 31 jurisdictions, including Australia, and indicates that applications to register the Trade Mark in 26 of them were made on the same date that the Application was made. In the European Union and Germany, the application date was 17 April 2014. The remaining application, to register the Trade Mark in Canada, post-dates the Relevant Date.

1. Mr Soofizadeh also states that:

   [I]n the months prior to filing the application to register the Trade Mark in Australia, the Opponent engaged with its Australian partner, Armanie’s Kitchen Pty Ltd, trading as HomeBarBeauty Pty Ltd, (Armanie’s Kitchen) importers, wholesalers and distributors regarding the launch of the Black Punk beverage product in Australia. The Australian distributor is a family member and former purchase director for the Woolworths supermarket chain in Australia. He resigned from his role there to assist the Opponent in developing the Black Punk brand in Australia.

Annexure BS-2 is declared to be

a copy of letter from Ms Mellissa Spaliviero of Armanie’s Kitchen dated April 2018. The letter confirms that initial discussion between the parties commenced in March 2014 by way of Skype conferences and telephone calls. In the letter, Ms Spaliviero confirms that, at the time of the letter, discussions about the product launch were ongoing. The letter also confirms that Ms Spaliviero travelled to Germany in December 2015 to meet with the client in order to discuss the product launch further and that a decision was made to launch the product in Australia in 2019.

1. Annexure BS-3 is declared to be, ‘an advertising presentation prepared by the Opponent’s German advertising firm, Rocket & Wink, which was presented to the Opponent on 24 November 2014’. The Soofizadeh declaration states that the presentation was provided to the Australian distributor on 22 December 2014.

2. Annexure BS-4 is declared to be

   copies of email correspondence between the Opponent and Rocket & Wink in the months leading up to the presentation on 24 November 2014 and which set out scheduled telephone calls regarding this presentation on 11 June 2014 and 20 August 2014. The emails are between Ms Nicole Rehder (book keeper) and personnel from Rocket & Wink.

3. I note that the presentation in BS-3 and BS-4 occurred shortly after the Relevant Date. However, the arrangement of the meeting began before the Relevant Date. The presentation and emails are largely in German. This is not surprising given the presentation was prepared by a German advertising firm for a German company. No adverse inference has been drawn from this aspect of the evidence. There is no indication that the presentation concerned specifically use of the Trade Mark in Australia, rather than it being, say, a presentation in connection with a local advertising campaign, a global advertising campaign, or a campaign in some jurisdiction(s) other than Australia.

1. Annexure BS-5 is declared to be

   photographs showing additional samples of packaging for the Opponent’s product bearing the Trade Mark. The samples were produced in July 2017 and photographs have been provided to the Opponent’s Australian distributor (July 2017).

I note that BS-5 exhibits samples from almost three years after the Relevant Date. These examples do not assist the Opponent in establishing the Requisite Intention.

1. It is stated in the Soofizadeh declaration that the Opponent has expended money on preparations for the launch of its product under the Trade Mark in Australia. The declaration lists a number of relevant items. There is no indication when this expenditure was made and there are no associated annexures. This bald statement does not assist the Opponent.

2. The Soofizadeh declaration includes a table which is declared to be ‘a table setting out the annual expenditure relating to product launch and/or advertising and promotion of the products with respect to the Trade Mark in Australia’. The declaration also states that ‘in addition, the Opponent has expended [a certain amount of money] on preparing a video production and on social media set up’. There is, again, no indication when this expenditure occurred and there are no supporting annexures. These statements do not assist the Opponent.

3. The Applicant has submitted a number of criticisms of the Opponent’s evidence. Amongst those are the lack of relevance of actions which took place after the Relevant Date. The Applicant submitted that ‘the actions taking place following this date should not be taken into consideration when determining the existence of any intention’. I disagree with this submission of the Applicant to the extent that simply because actions took place following the Relevant Date they should not be taken into consideration. The assessment of the state of mind of an opponent at a relevant date is somewhat different to the assessment of whether a trade mark was used during a relevant period. In the latter, use outside of a relevant period does not assist an opponent. In assessing the state of mind of an opponent, actions which take place after a relevant date may shed light on an opponent’s state of mind at that relevant date; for example, there may have been a statement made by an opponent to a meeting of shareholders to the effect that that opponent had no intention to use a challenged trade mark on a past relevant date. This is an extreme example, but were such an action to have taken place in the present matter it would almost certainly have been seized upon by the Applicant and held aloft, and quite reasonably so.

4. Actions which take place after the Relevant Date may be consistent with the presumption of Requisite Intention, or they may be inconsistent with the presumption (or have no bearing either way). The existence of actions which are not inconsistent with the presumption does not assist the Applicant. Conversely, actions which are inconsistent with the presumption do have the potential to assist the Applicant, whether or not they occurred after the Relevant Date. The aforementioned applies not only to actions but to any evidence. Caution must be exercised in assessing such evidence. It is important not to lose sight of the fact that it is the state of mind of the Opponent at the Relevant Date that is to be determined. For example, evidence which establishes that an opponent abandoned a trade mark, even one day, after a relevant date does not establish that an opponent lacked the requisite intention on that relevant date, nor is it necessarily inconsistent with the requisite intention.

5. The Applicant criticised BS-2, submitting:

   Although Ms Spaliviero’s letter references ‘initial discussions’ between Ms Spaliviero and the Opponent taking place in March 2014, there is no evidence submitted in relation to the specific time, place or content of these discussions.

The Applicant continued

Surprisingly, the Opponent has not provided any material evidencing its own correspondence during this period—only [Ms Spaviero’s letter] which is dated April 2018 ie years after [the Relevant Date]. There are no minutes of any meetings which allegedly took place between Ms Spaliviero and the Opponent, including the December 2015 meeting in Germany. If a ‘decision’ to launch an energy drink in Australia was made in December 2015 (after the [Relevant Date]), one would reasonably expect some type of record of the decision or meeting taking place. None has been provided. …

1. The Applicant’s submissions regarding Ms Spaliviero’s letter have merit. The Applicant’s submissions regarding the lack of evidence originating from the Opponent which pre-dates, or is concurrent with, the Relevant Date are persuasive. The balance of the EIS post-dates the Relevant Date, but is nevertheless instructive.

1. The Full Federal Court in Optical 88 Ltd v Optical 88 Pty Ltd stated:

   [It is not necessary] that the Applicant’s intention be to use the mark ‘immediately or within any limited time’. Nothing in in Aston v Harlee suggests, however, that ‘general intention’ to use the mark ‘at some future but unascertained time’ might suffice.[16]

The Court in Re Ducker’s Trade Mark found that it is necessary for an opponent’s intention to be more than ‘an uncertain or indeterminate possibility’.[17] It is telling that Mr Soofizadeh declared that Ms Spaliviero’s letter confirms that ‘Ms Spaliviero travelled to Germany in 2015’, which is after the Relevant Date, and that, ‘a decision was made to launch the product in Australia in 2019’. The Opponent’s evidence indicates that, at the Relevant Date, its intention had risen no higher than an uncertain or indeterminate possibility that it might use the Trade Mark in Australia. It may well be that today the Opponent has a firm intention to use the Trade Mark in Australia, but that is not relevant here.

[16] [2011] FCAFC 130, [88] (citations omitted).

[17] Re Ducker’s Trade Mark (1928) RPC 397, 402.

Conclusion on the evidence

1. The Opponent’s evidence indicates that on the Relevant Date it lacked the Requisite Intention. Consequently, I am satisfied that the ground on which the Application was made has been established. That is, however, not the end of the matter. Having made this finding, it is now necessary to consider the Registrar’s discretion.

Registrar’s discretion

1. Section 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so.[18]

Her Honour also noted:

By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[19]

[18] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

[19] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[20] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[21] 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.[22] 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.[23]

   [20] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.

   [21] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [22] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [23] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210]. (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point.)

2. With respect to the discretion, the Opponent has submitted:

   The removal of [the Trade Mark] in respect of [the Challenged Goods] and its use in Australia in respect of beverage products may cause a degree of confusion to the public. This risk also extends to the use and/or registration of a similar mark by a third party in relation to the same or similar goods or closely related services. (‘the First Submission’) …

   The Opponent’s Evidence in Support shows that it has invested significant time and resources in relation to the proposed launch of its Black Punk beverage product in Australia. These activities and investments have not been rudimentary or meagre. The removal of the Opponent’s registration for the Trade Mark would be detrimental to its commercial interests. (‘the Second Submission’)

3. I am not persuaded by the Opponent’s submissions. In respect of the First Submission, it was open to the Opponent to rebut the allegation against it by showing that it had used the Trade Mark in Australia during the Relevant Period. Where relevant use of a trade mark has occurred during a relevant period it is generally a simple task to provide evidence of such use. Establishing such use is also generally far simpler than trying to establish a state of mind—here, a requisite intention. Given the relative simplicity and efficacy of providing evidence of use, based on the lack of such evidence in the present matter, or any assertion to the contrary, it is reasonable to assume that the Opponent had not used the Trade Mark in Australia at any time up to at least 26 February 2019—a period of nearly five years since the application to register the Trade Mark was made. I fail to see how there can be any ‘confusion to the public’ arising out of the removal, from the Register, of a trade mark than has never been used.

4. In respect of the Second Submission, I am not satisfied that the Opponent has invested a significant amount of time and resources ‘in relation to the proposed launch of its Black Punk beverage product in Australia’. The evidence does not support such a view. As discussed above, it is not clear whether much of the evidence actually relates to a proposed launch in Australia, locally (in Germany), or some other jurisdiction. The expenditure statement and table, discussed above, does not assist the Opponent for the reasons discussed there.

5. I am not satisfied that the discretion available to the Registrar ought to be exercised in favour of the Opponent; consequently, I refuse to exercise the discretion.

Decision

1. As the Opponent has not rebutted the allegation made in the Application, the ground for removal has been established. I decide therefore that extension of protection to Australia of the IR 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

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, 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
28 August 2020