R Conroy Pty Ltd v L'Oreal

[2004] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by R. Conroy Pty Ltd to application under section 92 of the Act by L'Oreal to remove trade mark number 569134(3) - DISCOVERY - in the name of R. Conroy Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: no appearance Applicant: Andrew Lockhart of Baldwin Shelston Waters, Attorneys
Decision:	1. Trade Mark to be removed from Register 2. Costs awarded against opponent

Background

1. Trade mark registration 560134 is registered in the name of R. Conroy Pty Ltd ("the opponent").  That registration has effect from 12 December 1991.  It is for the trade mark discovery, registered for the following goods:

   Perfumery; perfumes; soap; toiletries; toilet water; hair preparations of all kinds in this class; cosmetics; cosmetic preparations of all kinds in this class; bath preparations of all kinds in this class; skin preparations of all kinds in this class; essential oils; all other goods in this class

2. On 4 April 2002, L’Oreal ("the applicant") filed application for removal of the trade mark from the Register, on the basis of non-use in the period commencing three years and one month before the date of filing. This period ("the relevant period") is 4 March 1999 to 4 March 2002. The opponent filed Notice of Opposition to the application on 17 May 2002.

3. The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark or not used the trade mark in good faith during the relevant period.

4. In turn, the opponent alleged in the Notice of Opposition that the trade mark had been used by the opponent in Australia and used in good faith in Australia during the relevant period.

5. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 30 March 2004. The removal applicant was represented by Mr Andrew Lockhart of Baldwin Shelston Waters, Patent and Trade Mark Attorneys, of Sydney.

6. The opponent was not represented and its attorneys had earlier advised that they would not be filing written submissions or appearing; however, the proprietor (Mr Conroy) had advised them that he would appear by telephone.  The proprietor later advised this office that he would not appear at the hearing.

   Legislation

7. Section 92 of the Act provides as follows:

   92  Application for removal of trade mark from Register etc.

   (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)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 aggrieved 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:

   (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.

8. There are a number of elements of s.92 that must be satisfied before the Registrar will exercise his powers under the section, namely:

   (a)the applicant must be a "person aggrieved";

   (b)the application must be in the correct form and must relate to at least some of the goods for which the trade mark is registered;

   (c)there must be no Court proceedings pending which relate to the trade mark; and

   (d)at least one of the grounds referred to must be made out.

9. In the present case, the only contentious issue is (d), namely, whether the applicant is correct in its assertion that section 92(4)(b) has been satisfied. The application for removal is in the correct form and covers all the goods for which the trade mark is registered. The application alleges that the applicant is aggrieved by the registration of 569134 discovery. The application also states that it is the applicant's understanding that there are no pending court proceedings.

   The Evidence

10. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Ron Conroy	16 .09.2002	RC1 to RC5	Conroy 1
Further Evidence
Ron Conroy	9.05.2003	RC6 to RC14	Conroy 2

Standing

1. Section 92(1) of the Act requires a removal applicant to be a "person aggrieved". In its application for removal, the applicant has asserted that it is aggrieved by the registration of 569134 discovery. This assertion is substantiated by the declaration of Arlene Elayda, which establishes that the applicant has been unable to register its own trade mark lash discovery.

2. The standing of the applicant to file the removal action has not been brought into question in the opponent’s notice of opposition. 

3. I am satisfied that the applicant is a person aggrieved.

   Use During Relevant Period

4. The relevant legislation is contained in of section 100 of the Act. The relevant parts state

   100.

   (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.

   ...

   (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:

   `(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period

5. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark in the relevant period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

6. It should be noted that mere assertions of use without documentary support are generally given little weight: Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83.

7. The only purported supporting evidence of any use within the relevant period is exhibit RC3 to Conroy 1.  It is entitled “Analysis Sales (Item) 1/02/00 through 29/02/00”, refers to the sales of talc, deodorant, after shave balm and shaving gel, and has a handwritten notation “to Ron from Warren”, stating “this was the last month we sold Discovery, regards Warren ”.

8. In Conroy 1 it is explained that these goods were sold/distributed on behalf of the opponent by Australian Classic Brands, and this was the last moth Classic Brands sold goods bearing the discovery mark.  Conroy 1 further claims that Australian Classic Brands has since destroyed individual sales invoices, receipts, etc, making it impossible to provide such items to support the opposition.

9. There is no explanation of what RC3 is, or who “Warren” is, or what connects the goods mentioned on the report to the trade mark.  Further there is no supporting evidence from Australian Classic Brands, especially regarding the destruction of relevant records.

10. Having regard to the evidence and submissions by the applicant, I am not satisfied that the opponent has discharged the onus to prove that it has used the trade mark during the relevant period. Accordingly, I am not satisfied that the opponent has used its registered trade mark.  I dismiss this ground of opposition.

    Registrar's Discretion

    Determination of opposed application—general

    101. (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) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.
    (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.

11. In deciding an opposed removal application, the Registrar is called on to exercise a discretion: the Registrar "may" remove a registration or "may" decide that the trade mark should not be removed even if the grounds for removal have been established . The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at 482:

    If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.

12. What constitutes "sufficient reason" has been enunciated by Deputy Registrar Hardie in Figgins Holdings Limited v Beltrami SpA (1998) 46 IPR 411, at 418:

    Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist is on the opponent to the removal application.

13. I have had regard to the evidence served in this matter and to the submissions made by the attorney for the applicant at the hearing in deciding, as the delegate of the Registrar, whether there is sufficient reason to leave the present trade mark on the Register.

14. I am not satisfied on the evidence and submissions before me that there are any special facts and circumstances, or an overriding question of public interest.

    Conclusion

15. I find that the opponent has not discharged the onus placed on it under the Trade Marks Act 1995 of showing why trade mark registration number 569134 discovery should not be removed from the Register on the grounds of non-use during the period in question. Accordingly, I find that the opponent has been unsuccessful in its opposition to the applicant's action under s.92.

16. Therefore, I dismiss the opposition and direct that registration number 569134 discovery be removed from the register unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

    Costs

17. As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    29 June 2004