Priceline Pty Ltd v FNS (Wholesale) Pty Limited

[2000] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by PRICELINE PTY LTD to the application to remove trade mark registration number 441607(9) - SAFELINE- under section 92 of the 1995 Act by FNS (WHOLESALE) PTY LIMITED.

Background

Priceline Pty Ltd ("the opponent") is the registered owner of trade mark registration no. 441607, which consists of the following series of trade marks:

SAFELINE

The registration comprises all goods in class 9 and dates from 4 March 1986.

On the 20 March 1998, FNS (Wholesale) Pty Limited ("the removal applicant") filed an application, under section 92 of the Trade Marks Act 1995 ("the Act"), to remove the trade mark from the Register. The grounds cited in the application for removal were based on subsection 92(1) and paragraphs 92(4)(a) and (b) of the Act.

In terms of subsection 92(1), the details provided by the removal applicant include a simple statement to the effect that FNS (Wholesale) Pty Limited is a person aggrieved by the registration of trade mark no. 441607. A statutory declaration of 11 March 1998 from Eddie Johnson, Managing Director of the removal applicant, supports the section 92 application. The declaration states that the removal applicant conducted enquiries into the use of the word SAFELINE by the opponent as a trade mark in Australia. Further, that these enquiries support the removal applicant's allegations of non-use and the opponent's lack of intention in good faith to use the trade mark. These allegations, as stated by the removal applicant, relate to all the goods covered by the subject registration, except for plastic rulers for measurement.

The opponent filed its notice of opposition to the removal application on 23 July 1998. The notice of opposition details six grounds of opposition. The first of these grounds challenges the applicant's standing as a person aggrieved within the meaning of section 92 of the Act. The next four grounds rebut the allegations made by the removal applicant, in terms of s92(4) of the Act, and the last ground relates to the Registrar's discretion, provided for by s101(1) of the Act.

The opponent's evidence in support was filed and served by 5 October 1999. The removal applicant did not file or serve evidence in answer to the opposition, despite having requested an extension of time in which to serve evidence. Both parties were then given the opportunity to be heard in the matter and the opponent responded to the Registrar's offer, requesting a decision on the written record. Ms Beverley Fagan of Davies Collison Cave (Melbourne) filed written submissions on behalf of the opponent.

Evidence and Submissions

The evidence in support of the opposition consists of two statutory declarations from Leslie Elliot Atlas, Merchandising Executive of the opponent. The first declaration is dated 22 January 1999 and includes: 'exhibit 1' - photocopies of packaging and invoices; 'exhibit 2' -copies of the opponent's existing Australian trade mark registrations for the mark safeline in classes 3, 8, 11, 16, 20 and 21; and 'exhibit 3' - copies of company records as at 7 January 1999, listing goods on which the said trade mark is used. The second declaration is dated 12 August 1999 and includes 'exhibit LEA1' - two sales catalogues (the sale of goods in each catalogue ending 27 April 1997 and 18 January 1998, respectively).

The first point of the written submissions, made on behalf of the opponent by Ms Fagan, relates to subsection 92(1) of the Act. Ms Fagan disputes the removal applicant's standing as a person aggrieved, submitting that a simple statement, to the effect that the removal applicant is a person aggrieved by the registration of the subject trade mark, is not sufficient to establish its position under subsection 92(1). The removal applicant, she says, must, by way of evidence, establish its position in this regard. Here, she refers to Kraft General Foods, Inc v Gaines Pet Foods, Inc[1] and to the recent decision of Hearing Officer Don Nancarrow in Puma Industrial Co. Limited v Uno Resourcing Inc[2].

[1] Kraft General Foods, Inc v Gaines Pet Foods, Inc (1995) 31 IPR 436.

[2] Puma Industrial Co. Limited v Uno Resourcing Inc (TMO decision, as yet unreported, issued 29 May 2000).

Ms Fagan then addresses the grounds of opposition that relate to subsection 92(4) of the Act, directing my attention to the opponent's evidence of use of its trade mark. The evidence, she says, indicates the opponent's intention, in good faith, to use the trade mark in Australia, in relation to the goods covered by the subject registration. Ms Fagan also submits that the evidence shows use of the trade mark safeline, on a range of goods in class 9, within the relevant period (ie. 20 February 1995 to 20 February 1998).

The latter part of Ms Fagan's submissions relates to the onus of proof under section 100 and the Registrar's discretion, as provided for by subsection 101(1). The evidence of use of the mark, she says, rebuts the allegations made by the removal applicant under section 92 of the Act. In the case that the opponent has not been able to successfully discharge its onus, Ms Fagan submits that the Registrar's discretion should be exercised in favour of the opponent, on the basis that the trade mark safeline is commercially valuable to the opponent and that it is a well known mark, which should remain registered on the grounds of public interest. In support of this statement, Ms Fagan points to the fact that the opponent owns a large chain of stores throughout Australia, is the owner of several trade mark registrations in Australia (in a variety of classes) and uses the trade mark safeline on a great range of goods.

Further, should I find that it is not reasonable for the trade mark to remain registered for all goods in class 9, the opponent has requested I consider allowing the trade mark to remain registered in respect of the following goods:

Batteries, battery chargers, binoculars, cameras, compact discs, calculators, cassette players, photographic film, electric door bells, eyeglasses, eyeglass cases, eyeglass chains, electric hair curlers, electronic organiser, magnifying glasses, magnets, measuring apparatus, radios, scales, sound recording tapes, smoke detectors, sunglasses, telephones, telephone accessories, video tapes.

Finally, Ms Fagan requested costs in the matter on behalf of the opponent.

Discussion

An application for removal for non-use of a registered trade mark is made under section 92 of the Act. Section 92, in so far as is relevant to the present application, reads:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be 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) …

(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note:  For file see section 6.

(5) …

Person Aggrieved

The starting point, in determining a matter under section 92, is whether the applicant is a person aggrieved in terms of subsection 92(1) of the Act. The application for removal, in the present case, was filed in an approved form for the purposes of regulation 9.1 and includes the statement:

F.N.S (Wholesale) Pty Limited …, a person aggrieved by the registration of trade mark no. 441607 ("the trade mark"),… - (my empahsis).

Prima facie, this claim to standing is all that is required of the removal applicant, to substantiate its position as a person aggrieved, under the provisions of section 92. If a removal application (under section 92) is not opposed and has been filed in an approved form, the Registrar will be satisfied by the statements made in the application and will not make any further inquiry into the applicant's standing (unless there is good reason to do so).

Once there is an opposition to the removal application and the opponent challenges the applicant's standing, the removal applicant will need to substantiate its claim that it is a person aggrieved by the continued registration of the trade mark in question. The applicant has an opportunity to provide evidence in support of its claim in its evidence in answer to the opposition[3].

[3] Figgins Holdings Pty Ltd v Beltrami SpA (unreported decision issued 1 July 1998).

The most recent discussion of the matter of 'a person aggrieved' (in terms of s92 of the Act) can be found in the decision of Hearing Officer Don Nancarrow in the Puma Industrial Co. Limited v Uno Resourcing Inc, supra. In his discussion of the matter, Hearing Officer Nancarrow refers to Ritz Hotel v Charles of the Ritz[4] and Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Food Corporation[5]. He states that the two aforementioned cases indicate that a range of reasons could exist to establish that an applicant has a 'real interest' in having the Register rectified and thus qualify as a person aggrieved. However, he goes on to state that this 'interest' must relate to an 'appreciable disadvantage' for the applicant if the Register remains unrectified.

[4] The Ritz Hotel Ltd v Charles of the Ritz and Another, 12 IPR 417.

[5] Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Food Corporation, 34 IPR 198.

McLelland J in Ritz Hotel v Charles of the Ritz, supra, said at 454:

It is sufficient for present purposes to hold that the expression ['person aggrieved'] would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

In the case of Kraft Foods Inc v Gaines, supra, it was shown that the filing of a trade mark application - that could have been blocked by the mark whose removal had been requested - may not be sufficient to establish the removal applicant's standing as a person aggrieved. In that case, the applicant was found not to be a person aggrieved because no clear evidence of either use of the mark or an intention to use the mark was submitted.

In the present case, the removal application has been opposed. Therefore, for me to find that the removal applicant qualifies as a person aggrieved, the removal applicant needs to show that it has a real interest in having the Register rectified and that it is a person aggrieved as at the date of application (refer Ritz Hotel v Charles of the Ritz, supra). The removal applicant has made a simple statement, as to its standing as a person aggrieved, in the removal application, and the opponent has challenged this. As per the findings in Figgins Holdings, supra, the removal applicant is now required to put some substance behind the statement (as to its standing) contained in the application documents. The onus on the removal applicant is not great. Nevertheless, it is necessary for it to show there is a reasonable possibility of it being appreciably disadvantaged in a legal or practical sense, by the continuing registration of the subject trade mark (Ritz Hotel v Charles of the Ritz, supra, and Kraft Foods Inc v Gaines Pet Foods, supra).

There is no evidence before me to confirm the removal applicant's status as a person aggrieved by the continuing registration of the subject trade mark. I find, therefore, that the applicant's claim to such status is not sufficiently supported. As such, I must find that the application to remove the subject trade mark was not properly made.

Conclusion

The applicant has failed to satisfy me that it is a person aggrieved within the meaning of subsection 92(1) of the Act. I, therefore, find that the application to remove trade mark registration 441607 was not properly made. As such the opponent has no case to answer.

Costs

The opponent has requested costs and, as I have found in the opponent's favour, I see no reason why costs should not follow this result. In my capacity as the delegate of the Registrar in this matter, I direct that the removal applicant pay the costs of the opponent in accordance with the Official scale.

Michelle Edlington
Senior Examiner

19 July 2000