Peter Bell v the Melbourne Cricket Ground Trust

[2018] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Peter Bell to application under section 92 of the Act by The Melbourne Cricket Ground Trust to remove trade mark number 1193493 (25) - the G - in the name of Peter Bell.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Self represented – written submissions

Applicant: Ashurst Australia – written submissions

Decision:

2018 ATMO 73

Trade Marks Act 1995

Section 92: application for removal under paragraph 92(4)(b) - onus on Opponent to show use of the Trade Mark during Relevant Period - Opponent has not discharged that onus.

Opposition not established - Trade Mark to be removed from the Register.

Background

1. In these proceedings The Melbourne Cricket Ground Trust (‘the Applicant’) filed an application, on 18 November 2016, under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade mark which appears below in respect of all of the goods for which it is registered:

Registration No:              1193493

Priority Date:  17 August 2007

Goods:  Class 25: Men’s clothing; women’s clothing

Trade Mark:  the G

(‘the Trade Mark’)

1. On 30 January 2017, the owner of the Trade Mark, Mr Peter Bell (‘the Opponent’) filed a Notice of Intention to Oppose the removal of the Trade Mark.

2. On 22 February 2017, the Opponent filed a Statement of Ground and Particulars which states:

   Since losing my farm to the drought, I have used my Marketing-Business Uni Degree to start a new business.  This involves coming up with unique and desirable designs and names or logos and Australian nicknames.  I am committed to a vast array of trade marks in different areas from surfing to country clothing to sport and rock and roll clothing, I have put a lot of investment into this and it is the key part of my business for the rest of my life.  Some trade marks can be used in many ways.  ie The G can be used as a part of The G Sydney, The G Spot, The G footy enthusiasts, The G Bung Crew, etc, etc.  For further information see my letter dated 11-12-16 that is attached.

3. I note that there is both a letter and Statutory Declaration attached to the Statement of Grounds and Particulars.  Appended to the Statutory Declaration are photographs of some tee-shirts, a part of one of these is reproduced below:

4. The above appears on the chest area of the tee-shirt.  The Opponent’s hand-drawn arrow in the above picture points to where the letters ‘tm’ are said to occur.  It would appear, in view of the Applicant’s evidence which I will discuss later in this decision, that the above may not be a complete picture of the graphic that appears on the Opponent’s goods.

5. On 7 March 2017 the Applicant filed a Notice of Intention to Defend.

6. Thereafter the parties have filed Evidence in Support, Evidence in Answer, and Evidence in Reply.  I will further discuss this under the heading ‘Evidence’, below.

7. Both parties have been informed of their right to request a hearing or to make written submissions.  Neither party requested a hearing and both parties have made written submissions: the Opponent’s submissions have been framed by himself and those of the Applicant have been filed by Ashurst Australia.  I am a delegate of the Registrar of Trade Marks and I am to decide this matter on the basis of the written record which is comprised of those materials outlined in the foregoing paragraphs.

Nature of these Proceedings

1. Trade mark rights arise both under the Act and at common law. At common law rights arise by use of a trade mark. Under the Act rights arise via registration; however, if a registered trade mark is unused by its owner (or an authorised user) it becomes vulnerable to removal for non-use.

Onus, Standard, and Relevant Period

1. It is convenient to start with a discussion of where the onus lies, what the standard of proof is, and also the relevant period for the purposes of subsection 92(4)(b) as these considerations are crucial in removal proceedings.

2. As the application for removal was filed by the Applicant on 18 November 2016, the relevant period during which (in order to establish his opposition) the Opponent must show use of the Trade Mark is during the three year period ending on 18 October 2016.  Evidence of use which is from either before or after[1] that three year period (‘the Relevant Period’) will not establish the Opponent’s opposition to the removal of the Trade Mark.

   [1] I note that in some circumstances in which the opposition to removal has not been established by reason of use in the relevant period, the use of a trade mark after the relevant period can be a relevant factor considered by the Registrar when exercising her discretion under section 101 of the Act to leave a trade mark registered for some or all of the goods in respect of which removal had been sought.

3. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

   100Burden on opponent to establish use of trade mark etc.

   (1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

   […]

   (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

4. A single bona fide use of a trade mark in the relevant period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds[2] (‘Woolly Bull’).

   [2] [2001] FCA 261; 107 FCR 166 at 172.

5. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’: Nodoz Trade Mark (‘Nodoz’).[3]

   [3] [1962] RPC 1 at 7 per Wilberforce J.

6. The decision maker may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [4]

   [4] [1977] RPC 131.

7. The relevant standard of proof that the Opponent bears is on the balance of probabilities.[5] In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [Stress added]

   [5] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

8. In Blount Inc v Registrar of Trade Marks[6] Branson J observed:

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   [6] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

9. It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Mark, without alterations or additions which substantially affect its identity,[7] during the Relevant Period, in relation to the goods in respect of which it is registered to the satisfaction of the Registrar, the opposition to removal will not be established.

   [7] Subsections 7(1) and 100(3)(b)(i) of the Act refer.

10. Even if the Trade Mark has not been used and the ground for removal established, there remains a discretion for the Registrar to allow the Trade Mark to remain if satisfied it is reasonable to do so. The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.

Evidence

1. The evidence in this matter comprises declarations:

   In Support

   The Opponent, made on 8 June 2017, with attachments;

   The Opponent, made on 14 June 2017, with attachments;

   In Answer

   Kellech Nanette Smith, a Partner of Ashurst Australia, made on 19 September 2017, with annexures A to U;

   In Reply

   The Opponent, made on 24 November 2017, with attachments;

   The Opponent, made on 25 November 2017, with attachments;

   The Opponent, made on 27 November 2017;

   The Opponent made on 27 November 2017.

2. The Opponent has also filed a number of materials after the period in which to do so had elapsed.  I have read these materials and, in my view, they are not of assistance to the Opponent.  The materials contain a number of statements by the Opponent which lack relevance and/or have no probative value and as such are not information that the Registrar could take into account in terms of regulation 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’).  Keeping in mind the principle in Nodoz that a trade mark owner must establish use of a trade mark via ‘if not conclusive proof, at any rate overwhelmingly convincing proof’ it is appropriate that the Registrar weight these materials accordingly.

The Opponent

1. The Opponent is a sole trader who states that he sells tee-shirts at various venues around Australia.

2. The Opponent states in a letter dated 11 December 2016 attached to the Statement of Grounds and Particulars:

   I produce and sell clothing direct to the public at markets, at cricket grounds and around the City of Melbourne.  I have done this since getting my trade mark.  If you look at photos of t-shirts you can can [sic] see some cricket stumps on part of the letter “G”.  Just to the right of this and just below are the small letters of “TM”.

3. In the Statutory Declaration made on 12 December 2016 attached to the Statement of Grounds and Particulars, the Opponent declares:

   I produced “The G” clothing not long after getting the trade mark.  The design was done at Satimer productions[8] Geelong owned by Peter Beck.

   I sat with his partner and designed the art-work and their business, and have been selling the design on clothing for years.

   This can be verified at other sale points and at Satimer.

   [8] An invoice issued to the Opponent identifies this firm as Satimer Promotions Pty Ltd.

4. The Opponent explains in the letter of 11 December 2016 that he attended at the premises of ‘Satimer productions’ to obtain copy-invoices but that it was closed and enclosed with the letter is a photograph of the doorway of the premises.

5. In his Evidence in Support the Opponent states:

   The first evidence shows a large payment invoice to Satimer for screen printed ‘The G’ clothing.  This is not pocket money!!  Since using Satimer I have moved to a printer in South Melbourne and one in Elsternwick, as they offered better prices, which led to them going out of business.  I know [sic] use a new printer, for the last few years in Geelong.  He has written and signed a letter to this effect which is enclosed.  Other retailers have signed letters/notes regarding what I do and are enclosed.  There is also a Statutory Declaration enclosed.  It mentions that some Melbourne retailers have not signed off yet on new agreements for ‘The G’ clothing and I do not wish to jepardise [sic] these agreement by disclosing who the retailers are at the moment (because I might lose those agreements) and that is a normal part of business plus the marketing strategy you keep secret from your competitors (until you are ready to launch a new approach).

   When I took out ‘The G’ trade mark I knew I had many other options with it that would make it a valuable trade mark to me.  Examples are enclosed where I can approach the The G shop in Goulburn NSW, The G Sydney NSW and G Boards in Torquay VIC plus many other G businesses to negotiate a fee for using my trade mark.

6. The Tax Invoice issued to the Opponent by Satimer Promotions Pty Ltd is dated 23 November 2012, well before the Relevant Period.  The quantities of tee shirts have been redacted, the invoice includes payment for goods other than those bearing the Trade Mark and it is not possible to estimate what proportion of the invoice is related to the Trade Mark.  Neither is it possible to ascertain what exact trade mark might have been printed on these tee-shirts or whether the Opponent’s stocks of these tee-shirts were likely to have been exhausted before the Relevant Period.

7. Appended to the declaration are

   ·     a photograph of a utility vehicle, apparently at a country market along with trestle tables selling tee-shirts bearing designs other than the Trade Mark.

   ·     a letter, dated 7 June 2017, signed by Mr Barrie Sutherland of WaterMarks Photo Gallery stating that ‘We know [the Opponent] who produced his own range of unique clothing and stickers, and have stocked such in our shop’.

   ·     a letter, dated 8 June 2017, from the ‘store manager’ of Go Ride A Wave stating that ‘We know [the Opponent] who produces his own range of unique clothing and have stocked it in our shop.’

   ·     a letter, dated 25 May 2017, from Peter Beck of Satimer Promotions stating, ‘I Peter Beck of Satimer Promotions, 5 Roy St Geelong, Vic have known [the Opponent] as a customer for over 15 yrs.  He sells directly to a niche market he has created himself.  As I cannot give him an invoice copy due to software changes at my business, I can say my partner created the artwork for his clothing design top and our business screen printed a commercial quantity for him to sell of ‘‘The G” printed tops. This would have been 4 to 5 yrs ago.’

   ·     a letter, dated 30 May 2017, from Paul Howlett of the Rediscovery Shop in Ballarat stating, that he has ‘known [the Opponent] for decades who sells niche market clothing and stickers all over Australia.  He sells direct and mail order.  I have carried his clothing tops in my shop for many years including ‘The G’ t shirt.’

   ·     a letter, dated 9 June 2017, from an anonymous screen printer which states, ‘I have known [the Opponent] for three years.  He has brought his business to me to screen print his unique clothing designs, I am currently employed as his screen printer.  Statutory declaration can be supplied.’

   ·     a letter, dated 6 June 2017, from Corinne Nigro of Torquay Tattslotto stating ‘We know [the Opponent] who produces his own range of unique clothing and have stocked it in our shop.’

   ·     A letter dated 29 May 2017, from Wal of Boomer Bullbars & Clothing of Wilsonton, Queensland, stating, ‘Have known [the Opponent] for about 15 yrs and have stocked his clothing range and stickers in our business in Queensland. He travels all over Australia and is a market innovator and leader with his ideas. He is extremely well known everywhere and you may phone us to confirm this.’

8. The balance of the attachments to the declaration are certificates that relate to the Opponent’s medical problems and also material relating to his proposed future uses of the Trade Mark which are referred to in paragraph [26], above.

9. The Opponent’s declaration of 14 June 2017, also filed as Evidence in Support, qualifies some of the material submitted in the declaration of 8 June 2017.

The Applicant

1. Ms Smith declares that she is a partner of Ashurst Australia and has:

   […] the care and conduct of this matter on behalf of the Applicant. I also act on behalf of the Melbourne Cricket Club (the MCC).

   […]

   I am informed and believe that the [Applicant] was formed in 1861 and is the custodian of the Melbourne Cricket Ground located at Brunton Ave, Richmond, Melbourne VIC 3002 (the Melbourne Cricket Ground), including the property (real and intangible) associated with the Melbourne Cricket Ground, on trust on behalf of the people of Victoria. The [Applicant’s] role is to oversee the management and improvement of the Melbourne Cricket Ground for current and future generations.

2. Whilst I note that it is not a requirement that the Applicant be ‘a person aggrieved’, the Applicant has, states Ms Smith, the following trade mark registration to which the Trade Mark stood as an impediment to the acceptance thereof:

Application No: 1535414

Priority Date:  11 Jan 2013

Goods/Services:              Class 16: Paper goods; printed matter and publications; books, journals and almanacs; calendars; posters; photographs; stationery; instructional material; excluding car stickers

Class 28: Games and playthings, and sporting articles; playing cards

Class 35: Retail services, including retail of memorabilia, printed matter and publications, books, journal, almanacs, calendars, posters, pictures, photographs, stationery, instructional material, playing cards, bags, games, playthings and sporting articles, and excluding clothing, footwear, headgear and fashion accessories

Class 41: Entertainment, recreational, sporting and cultural activities and events; provision of facilities for events, including entertainment, recreational, sporting and cultural events; organisation and non-financial sponsorship of entertainment, sport, cultural and recreational events and competitions; publishing services; education and training services; provision of information relating to the aforesaid services over the Internet

Class 43: Provision of food and drink; cocktail lounge services; bars; cafes; snack bar; hospitality services; providing facilities for exhibitions

Class 45: Licensing and management of intellectual property

Trade Mark:  The ‘G

Endorsements:                Provisions of subsection 44(4)[9] and/or Reg 4.15A(5) applied.   Provisions of subsection 41(5) applied.

[9] The endorsement reflects the acceptance of the Applicant’s trade mark for registration on the basis of prior continuous use before and up to the priority date of the Trade Mark.

1. Ms Smith encloses a better quality copy of the Opponent’s tee-shirt from which I have copied the following:[10]

   [10] My understanding is that the Applicant obtained this in the course of dealings with the Opponent.

2. Ms Smith also refers to the Macquarie Dictionary definition of the expression ‘the G’ which was included on the trade mark examiner’s report on its now registered trade mark.  The examiner stated:

   The Macquarie Dictionary includes an entry for THE ‘G, and defines it as a colloquial noun referring to the Melbourne Cricket Ground.

3. Much the balance of Ms Smith’s declaration is an analysis and critique of the Opponent’s Evidence in Support and, accordingly, I view it as being in the nature of submission. The other material in the Evidence in Answer is couched in terms of subsection 101(3) of the Act and the exercise of the Registrar’s discretion.

Other

1. Most of the Opponent’s Evidence in Reply is also in the nature of submission, critiquing Ms Smith’s declaration and material therein.  Some of the declaration of 24 November 2017 (filed as Evidence in Reply) is concerned with dealings between the parties; however, I do not regard these dealings as directly bearing on the question of use of the Trade Mark, by the Opponent in relation to the goods for which it is registered, during the Relevant Period.  The balance of the Opponent’s declaration of 24 November 2017 concerns his use of trade marks other than the Trade Mark and also does not bear on the aforementioned use of the Trade Mark.

Subsection 92(4)(b)

1. Subsection 92(4)(b) of the Act provides:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be 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.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (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:

   […]

   (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.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   (5)If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first‑mentioned person as the applicant.

1. In regard to the above, I note that:

   ·    The application has been made in accordance with the regulations;

   ·    It has been made in respect of all of the goods for which the Trade Mark is registered;

   ·    The Registrar has not been notified of an action involving the Trade Mark which is pending in a prescribed court.

2. I also observe that, in terms of section 93 of the Act, the application under paragraph 92(4)(b) was filed on 18 November 2016 which is more than five years after the filing date of the Trade Mark on 17 August 2007.[11]

   [11] The ‘priority date’ and the ‘filing date’ of the Trade Mark are, here, one and the same.

The Opponent’s Submissions

1. The Opponent’s submissions do not address the question of his use of the Trade Mark, without alterations or additions that do not substantially affect its identity, in relation to the goods in respect of which it is registered during the Relevant Period.  Rather, the Opponent’s submissions go to his future use of the Trade Mark in combination with other indicia as mentioned in paragraph [26], above.

2. In further submissions the Opponent draws the attention of the Registrar to his state of health and his particular sales method through markets and at public events.

The Applicant’s submissions

1. The Applicant submits that none of the material on which the Opponent relies shows use of the Trade Mark during the Relevant Period.

The Ground of Opposition and the Opponent’s Evidence

1. An initial difficulty arises in the stated ground of opposition (above, at paragraph [3]) within the Statement of Grounds and Particulars: there is no express claim within the Statement of Grounds and Particulars that the Opponent used the Trade Mark within the Relevant Period.

2. The central difficulty with the Opponent’s evidence is that it is not such that it could satisfy the Registrar that the Opponent used the Trade Mark during the Relevant Period.

3. The letters in evidence from traders who the Opponent supplies with goods only show that there has been some trading activity by the Opponent in relation to tee-shirts at some unspecified times.  The letters are not in declaratory form; the letters do not (generally) mention the Trade Mark or the supply to the writers of those letters of goods bearing the Trade Mark by the Opponent during the Relevant Period.  Whilst the letter, dated 30 May 2017, from Paul Howlett does mention the Trade Mark, he does not state that he stocked goods bearing it during the Relevant Period or that he continues to do so.  Accordingly, the letters do not demonstrate use of any trade mark during the Relevant Period or go to the exercise of the Registrar’s discretion which I will briefly touch on, below.

4. The sole invoice in evidence (from Satimer Promotions Pty Ltd) is from a date well before the Relevant Period for an uncertain quantity of goods.  Whilst ‘The G’ is mentioned on the invoice, the form of the trade mark used in relation to those goods is not shown; and, accordingly, the invoice could not, I consider, establish use of the Trade Mark within the Relevant Period.

5. Another difficulty lies within subsection 7(1) of the Act which provides:

   7Use 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.

   Note:For prescribed court see section 190.

6. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[12] Yates J asked:

   Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival[13] at 391; Shell[14] at 414.

   [12] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].

   [13] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.

   [14] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407.

7. The test as to whether the registered Trade Mark has been used without alterations or additions substantially affecting its identity is thus the familiar one of ‘substantial identity’ in Shell:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see FraserHenleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig [1944] NSWStRp 28; (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

8. The comparison here is between the trade marks which appear below:

   the G  vs   or

9. I consider that it is possible that the tag-line ‘Worlds No.1 Cricket Stadium’ are obscured by a fold in the material in the left hand picture of the ‘cricket stumps’ trade mark, above, but this distinction does not affect the outcome of the discussion of the issue.

10. Whether or not the device of cricket stumps and the word ‘Melbourne’ within the trade mark appearing above function as ‘essential elements’ which substantially affect the identity of the Trade Mark does, in my consideration, depend (in the circumstances of this matter) on how they affect what the Trade Mark connotes.  Drawing on the judgments in PB Foods Ltd v Malanda Dairy Foods Ltd,[15] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[16] (‘Pham’) Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[17] (Accor’) and E & J Gallo Winery v Lion Nathan Australia Pty Ltd,,[18] (‘Gallo’) it is apparent that the Courts will find, in effect, that substantial identity exists where the essential element(s) of the trade mark in question are not altered by the presence of the additional indicia.  Thus, in Gallo, for example, the identity of the trade mark BAREFOOT was not altered by the addition of the graphical device of a bare footprint.

    [15] [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47.

    [16] [2017] FCAFC 83.

    [17] [2017] FCAFC 56.

    [18] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.

11. It logically follows that if an element or elements is/are imported into a trade mark such that the connotation/denotation of the registered trade mark is altered, the additional material has, in effect, changed the identity of the trade mark.

12. Here the Trade Mark, as registered (the G) could, as the Opponent infers in his evidence, refer to anything of note whose name begins with the alphabetical letter ‘G’.  However, the Applicant’s evidence is that (amongst these possibilities) the expression ‘the ‘G’ refers to the Melbourne Cricket Ground; this reference is strengthened by the presence in the trade mark as used by the Opponent of the representation of cricket stumps and the word ‘Melbourne’ as well as (possibly) the tag-line ‘Worlds No.1 Cricket Stadium’.  In other words, the additional indicia within the ‘cricket stumps’ trade mark that the Applicant has stated that he has used function as elements of that trade mark that alter its identity and the use of the ‘cricket stumps’ trade mark is, accordingly, not a use of the Trade Mark as it is registered.

13. It further follows that the Opponent cannot rely on any use of the trade mark that he states that he has used as being a use of the Trade Mark in order to establish his opposition to its removal.

Conclusion

1. The evidence before the Registrar is not such that it could satisfy her that the Opponent used the Trade Mark in relation to the goods for which the Trade Mark is registered during the Relevant Period without additions or alterations which do not substantially affect its identity.

Other

1. For the sake of completeness I note that subparagraph 100(3)(c) of the Act provides:

   (3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   […]

   (c)the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period 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.

2. The Opponent has made no formal submissions on this point but has submitted a number of medical certificates concerning his health and, should he view his health problems as falling within the ambit of the above subparagraph as preventing his use of the Trade Mark, I note the analysis of subparagraph 100(3)(c) by Drummond J under similar circumstances in Woolly Bull[19] after which he concluded:

   Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.

   [19] Op cit reading from [42].

Discretion

1. Subsection 101(3) provides:

   101Determination of opposed application—general

   […]

   (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.

2. In Pioneer Computers Australia Pty Ltd v Pioneer KK[20] Bennett J stated the principles arising from Hermes[21] and adopted by Flick J in E & J Gallo Winery[22] as follows:

   In E & J Gallo [2008] FCA 934; 77 IPR 69 at [202]- [203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

   there had been no abandonment of the trade mark;

   the registered proprietors of the mark still had a residual reputation in the mark;

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

   the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   the registered proprietors were not aware of the applicant’s sales under the mark.

   [20] [1988] FCA 384; (1988) 13 IPR 323 at [169].

   [21] Hermes Trade Mark [1982] RPC 425.

   [22] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; 77 IPR 69 at [202]-[203].

3. The above circumstances are not the only factors that may be taken into account in exercising the discretion and allowing the Trade Mark to remain on the Register.  In my view of the Opponent’s evidence, the above circumstances have not been satisfied nor are there any others.  Most significantly, as I have previously found, the Opponent’s evidence is not such that it would satisfy the Registrar of use of the Trade Mark before, during, or after the Relevant Period.  Neither is there evidence (apart from assertions) that the Opponent has plans or preparations in place to use the Trade Mark in the near future.

Decision

1. Subsection 101(1) provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. In my consideration the ground upon which the application was made has been established: the evidence before the Registrar is not such that it could satisfy her that the Trade Mark was used during the Relevant Period without alterations or additions which do not substantially affect its identity in relation to the goods in respect of which it is registered.

3. Accordingly, it is appropriate that the Registrar decides to remove the Trade Mark from the Register in respect of all of the goods for which it is registered which, as one of her delegates, I so decide.

4. The Trade Mark will therefore be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before the end of that period, the registration will be subject to the Court’s decision.

Costs

1. The Applicant sought an award of costs in its favour should it be successful in these proceedings. There is no reason to depart from the practice of awarding costs against the unsuccessful party and accordingly, in terms of section 221 of the Act, I award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

16 May 2018