Radio & Records, Inc v Angela Veronica Dahlke

[2005] ATMO 42

TRADE MARKS ACT 1995

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

Re:Oppositions by Radio & Records, Inc to application under section 92 of the Act by Angela Veronica Dahlke to remove trade mark number 761746(16) - R&R - in the name of Radio & Records, Inc.

Delegate:

Mary Skivington

Representation:

Opponent:  Julia Baird of counsel instructed by Griffith Hack, Patent and Trade Mark Attorneys.

Applicant: Angela Veronica Dahlke, a Trade Marks Attorney, appeared on her own behalf.

Decision:

Section 92 removal – Application to remove dismissed. Costs awarded against the applicant.

Background

1.     Trade mark number 761746 is registered in the name of Radio & Records, Inc, (‘the opponent’). The registration has effect from 8 May 1998 and covers goods in class 16, namely printed publications. The trade mark is for a stylised rendering of the letters R&R as shown below.

2. On 7 August 2003, Angela Veronica Dahlke, (‘the applicant’), filed an application for removal of the trade mark from the Register, on the grounds set out in sections 92 (4) (a) and (b) of the Trade Marks Act 1995, (‘the Act’).

3. The applicant alleged that she was a ‘person aggrieved’ within the meaning of the Act and claimed that on the day the application to register the trade mark was filed Radio & Records, Inc had no intention in good faith to use the trade mark in Australia or to authorize another to use the trade mark in Australia or to assign the trade mark to a body corporate for that body to use in Australia. The applicant further alleged that during the period commencing three years and one month before the date of filing her application there had been no use in good faith of the trade mark. This period of alleged non-use, (the relevant period), is 7 July 2000 to 7 July 2003.

4.     Accompanying the application was a statutory declaration in which the applicant declares that an inquiry into the use of trade mark 761746 was conducted which did not reveal any use in good faith of the trade mark, in Australia, during the relevant period or that the opponent is known to representatives of the radio and record industry in Australia.

5.     The opponent filed Notice of Opposition to the application on 17 December 2003. The opponent alleged that the removal applicant was not a person aggrieved, that the application for registration of the subject trade mark was made with an intention in good faith to use the trade mark and that it has in fact been so used by the registered owner or an authorized user during the relevant period.

6.     As a delegate of the Registrar of Trade Marks I heard the matter in Canberra on 5 May 2005. The opponent was represented by Julia Baird of counsel instructed by Griffith Hack, Patent and Trade Mark Attorneys. The applicant appeared on her own behalf.

The legislation

7.     Under the provisions of section 92 of the Trade Marks Act 1995, (‘the Act’) the removal applicant must qualify as a person aggrieved and the application to remove the trade mark from the Register must be made in accordance with the regulations. The application may be made in respect of any or all of the goods or services in respect of which the trade is registered. An application may not be made to the Register if an action concerning the trade mark is pending in a prescribed court.

8.     The application, which is in the correct form, claims that the applicant is a person aggrieved and seeks removal of the trade mark for all the goods for which it is registered. It also states that proceedings concerning the trade mark are not pending in a court.

9. I must first determine if the applicant qualifies as a person aggrieved and if so, I must then determine if the provisions of sections 92(4)(a) or 92(4)(b) have been satisfied.

The evidence

10.   The evidence comprises statutory declarations with exhibits as set out below:

Evidence in support

Declarant	Date Declared	Exhibits
Nicola Winifred Scheepers, solicitor of Griffith Hack, Patent and Trade Mark Attorneys.	17 March 2004	NWS-1 to NWS-3
Page Beaver, Director of operations of Radio & Records, Inc.	27 May 2004	PB-1 to PB-6

Evidence in answer

Declarant	Date Declared	Exhibits
Angela Veronica Dahlke, Director of R4R Ltd.	1 September 2004	AVD2 –AVD13 AVD15- AVD20
Terry Rodney Grimberg, Director of R4R Ltd.	1 September 2004

Evidence in reply

Declarant	Date Declared	Exhibits
Page Beaver, Director of operations of Radio & Records, Inc.	1 December 2004	PB-1
Nicola Winifred Scheepers, solicitor of Griffith Hack, Patent and Trade Mark Attorneys.	10 January 2005	NWS-1

Evidence in support - Page Beaver           

11.   Ms Beaver declares that the opponent was founded in 1973 and that its trade mark is derived from the opponent’s name, Radio and Records, Inc. She avers the trade mark is used in respect of a weekly publication offering its readers a combination of business news, management, marketing and sales information, editorials and the most comprehensive music airplay data available for all current radio formats. Exhibit PB-6 contains the editions for 9, 16, and 23 May 2003 of the R&R magazine. Ms Beaver declares that the opponent’s clients pay a subscription fee to receive the publication. She reports that the trade mark was first used in Australia no later than 1993 and that a number of its subscribers in Australia constitute some of the largest music and media companies in Australia. Exhibit PB-2 contains subscription lists for Australian and New Zealand subscribers for various dates during the relevant period. Exhibit PB-3 contains a number of subscriber mailing address lists also for dates within the relevant period. The Music Network, an Australian publication, declares Ms Beaver, has non-exclusive rights to reprint certain copyrighted material from R&R and has done so consistently since 1996. Exhibit PB-5 contains the cover sheet of The Music Network for 9 June 2003 and an extract from the publication showing the opponent’s trade mark heading a page that contains the USA National Airplay Overview for 30 May 2003. Ms Beaver declares that R&R charts bearing the opponent’s trade mark have consistently appeared in The Music Network since 1996.

Nicola Winifred Scheepers

12.   In her statutory declaration of 17 March 2004 Ms Scheepers reports that she conducted an Internet search for the trade mark R4R and found the applicant’s website which contains several references to the trade mark. She also notes that the existence of registration 761746 was not an impediment to the acceptance of trade mark number 883990 and is not preventing use of the trade mark R4R. Ms Scheepers submits that the applicant is not a person aggrieved and cannot be appreciably disadvantaged by the continuing registration of R&R.

Evidence in answer – Angela Veronica Dahlke

13. Ms Dahlke’s declaration is largely given to a history of her trade mark, number 883990 for the mark R4R whose registration was opposed by the opponent in this matter and a history obtained under the Freedom of Information Act of the subject trade mark. Exhibit AVD-19 is the first page of a letter from Griffith Hack to Ms Dahlke which refers to an e-mail from her dated 29 September 2003. The letter goes on to state that before responding to the issues in that correspondence the writer notes that Ms Dahlke sent a proposal of settlement directly to the opponent but which the opponent had indicated it had not received. Exhibit AVD-20 is a copy of an Australia Post international tracking of a letter from Ms Dahlke to the opponent which shows that it was sent on 19 June 2003 and delivered on 23 June 2003.

Terry Rodney Grimberg

14. Mr Grimberg declares that he is an authorized user of the applicant’s trade marks including the R4R trade mark.

Evidence in reply – Page Beaver

15.   Ms Beaver declares that a search was conducted throughout the relevant departments of her company for the letter from Ms Dahlke and further declares that she does not know if the letter was received and mislaid in the opponent’s offices or whether it was not received at all. Exhibit PB-1 is a copy of an e-mail from Ms Dahlke to Griffith Hack in which she advises that a further copy of her letter will not be sent to them or to the opponent.

Nicola Winifred Scheepers

16. Ms Scheepers declares that the removal application was filed on 7 August 2003 so that the letter sent by Ms Dahlke on 19 June 2003 could not have related to settlement negotiations in respect of the removal application. She declares her belief that the letter was in response to an opposition filed by Radio & Records, Inc to the registration of application 883990, R4R, filed by Ms Dahlke. Ms Scheepers declares that so far as she is aware these were the only proceedings on foot at that time between Ms Dahlke and Radio & Records, Inc. Exhibit NWS-1 is a copy of a notice dated 23 December 2004 withdrawing opposition to registration of application 883990.

17.   On 4 May 2005 Ms Dahlke filed and served as further evidence another statutory declaration with attachments. I considered these to be either irrelevant or not of assistance to the matter and advised  that I would not rely on them.

Submissions and the law

Person Aggrieved

18.   Ms Baird submitted that the removal applicant had not established standing as a person aggrieved. She argued that in order to establish standing as a person aggrieved  the applicant must show that she will be ‘appreciably disadvantaged in a legal or practical sense’ per Ritz Hotel Ltd v Charles of the Ritz Ltd 12 IPR 417, by the continued registration of the opponent’s trade mark Ms Baird noted that in Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Foods Corporation 34 IPR 198 the Federal Court of Australia stated,

[T]he mere fact that a person has filed an application for registration of a trade mark, without more, is insufficient to establish that the person is appreciably disadvantaged, in a legal or practical sense, by the continued registration of an identical or deceptively similar mark.   

19. Ms Baird argued that the applicant was not disadvantaged in a legal sense by the continued existence on the Register of the opponent’s trade mark because the opponent’s trade mark did not prevent application 883990 from proceeding to acceptance. She noted that the applicant was in fact unaware of the opponent until served with a notice of opposition to registration of 883990. Ms Baird submitted that as the applicant is using its trade mark R4R she is not disadvantaged in a practical sense by the continuing registration of 761746. Ms Baird referred to the first Dahlke statutory declaration where she declares that the ‘R4R trade mark is ‘inherently distinguishable’ from the stylized logo that comprises the opponent’s trade mark and submitted that if Ms Dahlke believes this, there can be no concern that there will be confusion between the trade marks.

20.   In support of her claim to standing as a person aggrieved Ms Dahlke referred to authorities such as Ritz, and Gaines, above, and Continental Liqueurs Pty Ltd v GF Heublein and Bro Inc (1960) 103 CLR 422. She submitted that trade mark 883890 had been filed with an intention in good faith to use the trade mark and moreover it has been used in respect of some of the goods and services claimed. Registration of the trade mark was opposed by the opponent in this matter on grounds that included an allegation that R4R and the stylized mark R&R are substantially identical or deceptively similar. Ms Dahlke also took issue with the opponent’s conduct during the opposition to registration of trade mark 883890 which she claimed supported her standing as a person aggrieved.

21. Ms Dahlke filed her application to remove the trade mark from the Register on 7 August 2003 at which time an opposition to registration of her trade mark application 883890 was on foot. Trade mark 883890, R4R, was already in use with the applicant’s now registered series of trade marks, RAVE FOR RESEARCH and RAVE 4 RESEARCH, (Exhibit AVD2) and clearly she had a real interest in seeing it proceed to registration. The goods of 883890 include printed publications which are the goods in respect of which 761746 is registered. While Ms Dahlke did not consider that the stylized R&R and R4R are substantially identical or deceptively similar she had an understandable concern that as a result of the opposition, registration of her trade mark might be refused. She had conducted an investigation into the use of the opponent’s trade mark and was unable to find that the trade mark was in use in Australia and her attempt to negotiate with the opponent had, she believed, fallen on deaf ears.

22.   I do not think that any particular significance can be attached to the fact that 761746 was not cited during the examination of 883990. I think it is sufficient to give the applicant standing as a person aggrieved that she had a real interest in the continuing and unfettered use of her trade mark and that its registration had been opposed on a section 44 ground by a party who did not appear to be using its trade mark and who appeared to be unwilling to enter into settlement negotiations. Clearly Ms Dahlke would have been appreciably disadvantaged if 761746 remained on the Register and thereby prevented her own trade mark from proceeding to registration. Given that the opposition to registration of 883990 was withdrawn in December 2004 and it is now registered, the basis for the applicant’s aggrievement has been removed. However, I must determine this matter as it stood on the date the application  to remove the mark from the Register was filed when she quite certainly qualified as a person aggrieved.

Use during the relevant period

23. The relevant parts of section 100 of the Act provide that it is for the opponent to rebut any allegation that on the day on which the application to register the trade mark was filed the applicant had no intention to use or no intention in good faith to use or authorize the use of the mark in Australia or to assign the mark to a body corporate for that body to use in Australia and that there has been no use or no use in good faith during the relevant period.

24.   Ms Baird relied on the opponent’s continued use of its trade mark in Australia since ‘no later than 1993’, a date well before it applied to register the trade mark, as signifying an intention to use the trade mark in Australia on the date it filed its application to register R&R. She argued that the opponent had been in existence for twenty years and that its expansion into the Australian market was a natural progression of the business. Ms Baird observed that some of the opponent’s subscribers in Australia are large music and media companies, (Exhibit PB-2) and that during the relevant period they subscribed to the opponent’s printed publications bearing the R&R trade mark and that this qualifies as ‘use in the course of trade’ per R &A Bailey & Co Ltd v Boccaccio Pty Ltd 6 IPR 279. She argued that the opponent’s intention to use the mark in Australia and its actual use in Australia both before and during the relevant period constitute use and intended use of the trade mark in good faith.

25.   Ms Dahlke submitted that the onus lay with the opponent to persuasively show use in good faith of the trade mark and that it had failed to do this by way of evidence. She noted that the opponent does not have a physical presence in Australia and that it provided no evidence of market research or advertising and promotion in Australia, sales figures or invoices.

26.   The opponent’s lack of a physical presence in Australia is not an impediment to its ability to trade in Australia. The goods are produced in the United States and mailed to Australian subscribers. They are provided to a highly specialized niche market being aficionados of the music industry. While Ms Beaver’s evidence does not provide sales figures and invoices nor details of advertising, promotion and market research it does contain more than mere assertions as to use of the trade mark. Ms Beaver provides details of Australian subscribers for a number of editions of the publication during the relevant period, including their names, the companies they work for and the mailing addresses. I find this constitutes evidence of use during the relevant period and although the number of subscribers is not large I consider the use to be genuine commercial use. Exhibit PB-4 is a copy of a document entitled Permission to Reprint Copyrighted Material. This shows that permission was granted to The Music Network on 12 November 1996 and Exhibit PB-5 shows use in an edition of The Music Network dated 9 June 2003 of copyrighted material in the magazine under the opponent’s trade mark. The reprinted material also carries the following information, ‘Copyright © 2003 Radio & Records, Inc. Reprinted by permission Radio & Records. I believe this is evidence of use of the opponent’s trade mark by an authorized user of the trade mark.

Decision

27. I am satisfied that the opponent’s evidence shows that there has been genuine commercial use of its trade mark in relation to printed publications during the relevant period, albeit in a small and specialized market. The opponent has therefore discharged the onus placed on it under the Act of showing why trade mark registration number 716746 should not be removed from the Register on the grounds of non-use during the relevant period, 7 July 2000 to 7 July 2003. Accordingly, I dismiss the application under section 92 of the Act.

Costs

28.   Both parties sought their costs. I see no reason why costs should not follow the event. I direct that the applicant pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Mary Skivington

Hearing Officer

Trade Marks Hearings

4 August 2005