Rare Breed Distilling LLC v Lodestar Anstalt

[2013] ATMO 85

TRADE MARKS ACT 1995

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

Re:Oppositions by RARE BREED DISTILLING LLC to applications under section 92 of the Act by LODESTAR ANSTALT to remove trade mark numbers 1066646: WILD GEESE WINES (33) and 1066650: WILD GEESE (33) - in the name of SKYY SPIRITS LLC

Delegate:	Heath Wilson
Representation:	Opponent: Michael Hall of Counsel instructed by King & Wood Mallesons. Removal Applicant: Ben Fitzpatrick of Counsel instructed by Pizzeys Patent and Trade Marks Attorneys.
Decision:	2013 ATMO 85 Applications for removal under section 92(4)(b) of the Trade Marks Act 1995 – authorised use – not ‘under the control of the owner’ – registrations removed from the Register – costs awarded against Opponent.

Background

1. The abovementioned applications for removal involve trade marks that have been one subject of contention arising within a lengthy history of litigation. To better explain the reasons that follow, I have provided a brief summary of the major events involving the Trade Marks and parties appearing before me.

2. On 26 July 2005, the company Wild Geese Wines Pty Ltd applied for the registration of the following two trade marks (‘the Trade Marks’):

TM No.	Trade Mark	Class / Statement of Goods
1066646	WILD GEESE WINES	Class 33: Wine
1066650	WILD GEESE	Class 33: Wine

1. The Trade Marks were examined under section 31 of the Trade Marks Act 1995 (‘the Act’). In June 2007, the ownership of the Trade Marks was assigned to Austin Nichols & Co, Inc.

2. During the examination stages, a ground for rejection was raised under section 44 of the Act (citing prior trade mark registration no. 839740: WILD GEESE owned by Lodestar Anstalt). However, the Trade Marks were later accepted under the provisions of paragraph 44(3)(b) of the Act. Letters of consent had been provided by Lodestar Anstalt which allowed the Trade Marks to proceed to acceptance.[1] The acceptance of the Trade Marks was then advertised in the Australian Official Journal of Trade Marks on 4 June 2009.

   [1] See Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308 at [63].

3. Prior to the acceptance of the Trade Marks, Hearing Officer Williams issued a decision on 13 May 2009[2] in relation to an application for removal of trade mark registration no. 839740 (‘WILD GEESE’ in classes 32 and 33). As I have said, that trade mark registration was in the name of Lodestar Anstalt and the removal applicant in that case was Austin, Nichols & Co, Inc. Mr Williams directed that the WILD GEESE trade mark (no. 839740) be partially removed from the Register of Trade Marks, subject to an appeal to the Federal Court of Australia.

   [2] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.

4. In August 2009, the ownership of the Trade Marks by Austin Nichols & Co, Inc was assigned to Rare Breed Distilling LLC, a company based in the United States.

5. The abovementioned Hearing Officer’s decision for trade mark no. 839740 was appealed, and Rare Breed Distilling LLC joined the court proceedings as a second applicant. In Austin Nichols & Co Inc v Lodestar Anstalt[3] (a decision made on 4 February 2011), Cowdroy J exercised the discretion under section 101(3) of the Act for trade mark registration no. 839740 to remain on the Register.

   [3] Austin Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39.

6. The decision of Cowdroy J was appealed to the Full Bench of the Federal Court of Australia[4]. In the decision on appeal to the Full Court, Justices Jacobson, Yates and Katzmann overturned the decision of Cowdroy J and on 21 February 2012, ordered that trade mark registration no. 839740 in the name of Lodestar Anstalt be removed from the Register of Trade Marks.

   [4] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8.

7. Prior to the resolution of the above Federal Court matters, and on 27 September 2010, Lodestar Anstalt (‘the Removal Applicant’) filed an application under paragraphs 92(4)(a) and 92(4)(b) of the Act for the removal of the Trade Marks from the Register. Rare Breed Distilling LLC subsequently filed notices of opposition to the removal applications for both Trade Marks.

8. As evidence in support, the statutory declaration of Simon O’Sullivan (Director of Wild Geese Wines Pty Ltd) made 17 May 2011 with annexures A to H, was filed. The balance of the evidence in support of the opposition to removal comprised the statutory declaration of Nicholas Smith (Solicitor) made 20 June 2011 with exhibit A. 

9. The evidence in answer from the Removal Applicant included the statutory declaration of the Kenneth Philp (Solicitor) made 23 September 2011 with exhibit KP-1. The remaining evidence in answer is the statutory declaration of Jennifer Mackie (attorney for the Removal Applicant) made 19 July 2012 with exhibits JAM-2 to JAM-3. The contents of that declaration include material filed with IP Australia following a notice requiring production of a document or article under section 202 of the Act.

10. Subsequently, evidence in reply was filed consisting of the statutory declaration of Enzo Casati (Managing Director of Campari Australia Pty Ltd) made 23 November 2012 with exhibits EC-1 to EC-4.

11. Finally, Rare Breed Distilling LLC (who I will refer to hereafter as ‘the Opponent’) later merged with another company to become Skyy Spirits LLC, being the current owner of the Trade Marks. 

12. The matter was allocated to be decided by me in my capacity as a delegate of the Registrar of Trade Marks. After an exchange of written submissions, the hearing took place in Canberra on 4 September 2013. Michael Hall of counsel appeared on behalf of the Opponent, instructed by King & Wood Mallesons. Ben Fitzpatrick of counsel appeared on the Removal Applicant’s behalf under instruction from Pizzeys. At the outset, Mr Fitzpatrick made clear that the ground for removal under paragraph 92(4)(a) would not be pursued and relied solely on paragraph 92(4)(b) of the Act.

The Law

1. Section 7 of the Act provides:

7 Use 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.

(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

1. Section 8 of the Act provides:

8 Definitions of authorised user and authorised use

(1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)If the owner of a trade mark exercises quality control over goods or services:

(a)dealt with or provided in the course of trade by another person; and

(b)in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)If:

(a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

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

92Application for removal of trade mark from Register etc.

(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)…

(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.

1. Section 100(1)(c) of the Act makes clear that the Opponent carries the burden of rebutting an allegation of non-use under paragraph 92(4)(b). The current applications for removal were filed on 27 September 2010 and the Opponent must demonstrate use of the Trade Marks in the three year period ending 27 August 2010 (being ‘the relevant period’).

Reasons

1. In the current matter, the main issue of contention was not whether there had been use of the Trade Marks in the relevant period (although I address that issue below), but whether that use of the Trade Marks was made under the control of the owner of the Trade Marks.

Use of the Trade Marks in the relevant period

1. Mr O’Sullivan is the director of Wild Geese Wines Pty Ltd. In his declaration he states that his company produces and sells wine under the Trade Marks and did so within the relevant period. Wild Geese Wines Pty Ltd did not bottle any new wine for sale between 2005 and 2009 and opted instead to sell off its 2004 vintage. In around November 2009 their stocks ran out, but between 26 August 2007 and November 2009 he declares that around 700 bottles had been sold with reference to the Trade Marks. The label affixed to the wine bottles is depicted below:

1. There were brief submissions from Mr Fitzpatrick that the above example did not constitute use of the Trade Marks. Alternatively, if it was use, he argued that it was use of only one of the Trade Marks rather than both. Despite those submissions, I am satisfied that the above use constitutes use of WILD GEESE in relation to wine and also WILD GEESE WINES in relation to wine. The addition of the word WINES to the trade mark WILD GEESE would be an addition or alteration that does not affect the identity of the trade mark. I note that it is also possible for a label to contain several trade marks, each with their own branding function[5]. If there were any doubt that the word WILD GEESE WINES have been used as a trade mark, it is resolved by use of the expression “Wild Geese Wines 2004 Merlot” appearing on the invoices in the evidence. 

   [5] See Wellness Pty Limited v Pro-Bio Living Waters Pty Limited [2004] FCA 438; (2004) 61 IPR 242; (2004) AIPC 91-983; and Anheuser-Busch, Inc v Budejovicky Budvar, Nrodn Podnik & Ors [2002] FCA 390; 56 IPR 182 at [191].

2. In addition, I have before me supporting documents for the use of the Trade Marks in the relevant period. Mr O’Sullivan provides financial statements for his company in the years 2007 to 2010 which indicate sales of wine in those years. Mr O’Sullivan unequivocally declares that his company does not produce or sell wine under any trade mark other than the Trade Marks.

3. At annexure E to the declaration of Mr O’Sullivan, invoices and receipts for sale of wine from 2009 have been provided. The sales of the wine all occurred in August 2009 on the 7^th, 11^th, 18^th and the 24^th of that month - all within the relevant period. Mr O’Sullivan declares that Wild Geese wine was awarded medals in 2008 at wine shows in Cowra, NSW, at Adelaide Hills and at the Boutique Winemakers Shows.

4. One of the invoices was a sale of wine to David Martin (another director of Wild Geese Wines Pty Ltd) and arguably would not amount to use ‘in the course of trade’ as there is not an actual trade in the goods outside of the company itself. However, there are other invoices sufficient to establish that a significant quantity of ‘Wild Geese Wines 2004 Merlot” was sold in the course of trade and in the relevant period. For comparison, Mr Hall highlighted the comments made by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[6], where a commercial quantity of wine was referred to, with 41 sales proven in that case by references to invoices. The amount of wine sold in the matter before me exceeds that amount and I note in any event that a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards.[7]

   [6] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 at [65].

   [7] Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 at 36 per Sir Raymond Evershed MR.

5. The determinative issue is therefore whether the use of Trade Marks that has been established by Wild Geese Wines Pty Ltd was in fact ‘authorised use’ under the Act and amounts to use of the Trade Marks by the owner.[8]

   [8] See section 7(3) of the Act.

‘Under the control of the owner’

1. On 1 June 2007 (prior to the relevant period), Wild Geese Wines Pty Ltd and Austin Nichols & Co, Inc. entered into a Settlement agreement, an Assignment agreement and License agreement in relation to use and ownership of the Trade Marks. The effect of those agreements was to assign ownership of the Trade Marks to Austin Nichols with Wild Geese Wines Pty Ltd retaining a perpetual exclusive license to use the Trade Marks in Australia. The licensing agreement contains clauses 3.1 to 3.4 for quality control but the agreement does not mention any royalties for the use of Austin Nichols’ Trade Marks. The settlement agreement indicates that the intent of the agreement was to settle the dispute between Wild Geese Wines Pty Ltd and Austin Nichols, but mention is also made of both parties’ dispute with Lodestar Anstalt.[9]

   [9] Recitals G to J of the Settlement Agreement dated 1 June 2007.

2. A person is an authorised user under section 8(1) and 8(2) of the Act if that person uses the Trade Mark in relation to goods under the control of the owner of the trade mark. Subsection 8(5) indicates that this ‘control’ is not limited to an exercise of quality and financial control by the trade mark owner mentioned in subsections 8(3) and 8(4). As a consequence, the absence of evidence demonstrating quality or financial control is not necessarily the end of the matter.

3. The wording of the expression “exercises quality control” and “exercises financial control” in section 8 was also highlighted in the course of the hearing. Mr Fitzpatrick argued that there was no exercise of the quality control in the relevant period and the existence of those clauses in the Licensing Agreement was not sufficient.  Mr Hall argued that the existence of a provision for quality control in the agreement was sufficient to satisfy the meaning of the expression. He referred to the case of Global Brand Marketing Inc v YD Pty Ltd[10] and pointed out that the Court did not find it necessary to look beyond the agreement to highlight a specific instance where control had been exercised. 

   [10] Global Brand Marketing Inc v YD Pty Ltd [2010] FCA 323

4. I find that specific instances of “exercising” control are not necessary and the existence of a licensing agreement containing specific terms on the issue of control (whether it be quality, financial or some other form of control) would be sufficient in most cases to satisfy the provisions of section 8 of the Act. I agree with Mr Hall that the notion of “exercising control” looks to the relationship between the trade mark owner and licensee rather than specific events or actions. Under the Trade Marks Act 1955, Aickin J said in Pioneer Kabushiki Kaishi v Registrar of Trade Marks[11]:

   [T]he essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connection in the course of trade with the registered proprietor, even though the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary… [I]t is essential both that the user maintains the connection of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive.

   [11] Pioneer Kabushiki Kaishi v Registrar of Trade Marks (1977) 137 CLR 670; 17 ALR 43 at 683 (CLR) per Aickin J.

5. Having said that, the unique facts before me and nature of the relationship between Wild Geese Wines Pty Ltd and Austin Nichols warrants close attention. In a case where the Removal Applicant’s evidence effectively brings into doubt the true state of affairs or questions the bona fides of a licensing agreement and its terms (and therefore the relationship between the trade mark owner and licensee), the onus shifts to the Opponent to provide additional evidence and effectively refute the Removal Applicant’s evidence. Ultimately, the Opponent bears the onus of satisfying the Registrar that the use was in fact ‘authorised’ in the sense contemplated under the Act.

6. In the proceedings before the Federal Court, Mr Fitzpatrick had cross-examined Mr O’Sullivan regarding the relationship between Wild Geese Wines Pty Ltd and the Opponent. A copy of the court transcript is in the evidence before me and a relevant exchange between Mr Fitzpatrick and Mr O’Sullivan is as follows:[12]

   And that arrangement, which, you have indicated, included the licence agreement?  Yes.

   Does Austin Nichols have any financial interest in Wild Geese Wines Pty Ltd? In the – no.

   Has it ever had any financial interest in Wild Geese Wines Pty Ltd --- No.

   Does Rare Breed Distilling LLC have any financial interest in Wild Geese Wines Pty Ltd? ---No.

   Has it ever had any financial interest in Wild Geese Wines Pty Ltd? --- No.

   And has any person, either from Austin Nichols or on behalf of Austin Nichols, ever exercised any quality control over the production of your company’s Wild Geese Wine? --- No. 

   [12] Statutory declaration of Kenneth Philp (exhibit KP-1).

7. It was also pointed out that despite the existence of clauses relating to quality control (clause 3.1), the Licensing Agreement contains the following provisions at clause 7.1:

   Nothing contained in this Agreement shall be deemed to create a joint venture, partnership, agency or similar endeavour between the parties hereto…

8. Clause 7.2 of the Licensing Agreement is also of note:

   Without Austin Nichols’s prior written approval and subject to clause 4.1 above, WGW shall not identify itself in any way as a licensee of Austin Nichols or represent in any way that WGW or any of the Products or WGW’s packaging or advertising are sponsored or authorized by or affiliated with Austin Nichols.  

9. In summary, it appears that the Opponent does not desire to enter into any business relationship with Wild Geese Wines Pty Ltd, nor does it want to be identified in the marketplace as the owner or licensor of the Trade Marks unless it provides written approval for that to happen. It is also clear from Mr O’Sullivan’s testimony that within the relevant period, the Opponent had no financial involvement or any interest whatsoever in the business of Wild Geese Wines Pty Ltd or its use of the Trade Marks.

10. I further note that (in accordance with clause 7.2 of the Licensing Agreement) the true ownership of the Trade Marks is not evident from the labeling on the wine bottles or on the tax invoices supplied as evidence of use. The absence of the Opponent’s name on the label may be explained by the fact that it was a 2004 vintage and that label was affixed to the bottles before the Agreement. However, the demonstrated use of the Trade Marks does not indicate to the Australian consumers that there have been dealings with the product by the owner. As such, it is at odds with the definition of a trade mark under section 17 of the Act. In that regard, in “Bostitch” Trade Mark[13] Justice Lloyd-Jacob noted:

    The test of his actions is in consequence this: has he authorised such use of the mark as to deprive it of its very reason of existence, namely, as a mark which should distinguish his goods from the goods of other makers.

    [13] “Bostitch” Trade Mark [1963] RPC 183 at 197

1. Justice Graham stated in the decision of “GE” Trade Mark[14] that:

   The really important point is that the public should recognise that the symbol or word in question is being used as a trade mark by someone who is responsible for the product being what it is and having the quality which it in fact has. Provided such responsibility continues to exist and the mark continues to be recognised as indicating such existence, it remains a good mark. This is why it is important that proprietors of trade marks should retain adequate control over the quality of their product and should by careful advertising and use of their marks ensure that the public do not attribute to marks meanings which may lead to confusion.

   [14] “GE” Trade Mark [1969] RPC 418 at 488 (Ch D).

2. The use of the Trade Marks in the relevant period was not performing the function of distinguishing the goods of the Opponent from those of other traders. In effect, Austin Nichols (and by extension the Opponent) appeared to be owner of the Trade Marks on the Register of Trade Marks only, and did not exercise any form of control in relation to the demonstrated use in the relevant period.

3. I refer to the statutory declaration of Enzo Casati, Managing Director of Campari Australia Pty Limited, a subsidiary within the Campari Group. Rare Breed Distilling LLC was another company within the Campari Group.

4. On 4 April 2011, Campari Australia Pty Ltd wrote to Wild Geese Wines Pty Ltd requesting three bottles of wine for quality control prior to bottling and referred specifically to section 3.1 of the Licensing Agreement. On 6 April Mr O’Sullivan replied, also referring to the Licensing Agreement and indicated that once the 2010 vintage was bottled, he would send three bottles to Campari Australia. On 21 October 2011, Campari Australia wrote to confirm that it had received the bottles of wine and that it was of sufficient quality to obtain continuing approval to export. Once again, there was specific reference to the Licensing Agreement.   

5. It is noteworthy that the letters were written well after the current applications for removal were filed and prior to the removal of the Removal Applicant’s WILD GEESE trade mark from the Register. Mr Hall argued that this type of ‘quality control’ did not occur previously as there was no opportunity for it to occur. For the 2004 vintage sold in 2009, the wine had already been bottled and marketed. I am not convinced by that submission, and it is clear that Wild Geese Wines bottled its 2010 vintage prior to sending the samples to Campari Australia. In any event, this evidence of ‘quality control’ occurs outside the relevant period and does not relate to the demonstrated use of the Trade Marks.   

6. On the facts before me, I am not satisfied that there is a sufficient connection, or relationship with, the owner of Trade Marks and Wild Geese Wines Pty Ltd such that the use demonstrated can be defined as ‘authorised use’ under section 8 of the Act.

7. Under subsection 101(3), the circumstances under which the Registrar may exercise her discretion need not be exceptional and there are no particular circumstances that must (as opposed to ‘may’) be taken into account. For example, the factors considered in Pioneer Computers Australia Pty Limited v Pioneer KK[15] included:

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

   o    there had been no abandonment of the trade mark;
   o    the registered proprietors of the mark still had a residual reputation in the mark;
   o    there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
   o    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;
   

   [15] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 at [169].

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

8. While there does not appear to have been an abandonment of the Trade Marks, neither is there any evidence of a residual reputation in the Trade Marks existing in Australia. It has been conceded that the use of the Trade Marks has been intermittent over the years and the last demonstrated use of the Trade Marks was the sales of wine in 2009 from wine manufactured in 2004. There is no evidence of continuous use, aside from a mention of preparations for the production of the 2010 vintage Pinot Noir. In Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd[16] Woodward J decided:

   There are several points which emerge from this line of authority. The first is the importance of the public interest - whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked.

   [16] Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd [1988] FCA 384; (1988) 13 IPR 323; [1988] AIPC 38,580; [1988] ATPR 40-919 at [107].

9. The Removal Applicant’s trade mark has been removed from the Register and the public is not likely to be deceived if the Trade Marks remain on the Register. However, the second point made by Woodward J regarding title and continuous use is (for the reasons given earlier) problematic for the Opponent.

10. There is an absence of evidence of a reputation existing in the Trade Marks or evidence of the detriment that the Opponent would suffer were the Trade Marks to be removed from the Register. In short, the Opponent has not satisfied me that there are circumstances where the application of the discretion under section 101, and allowing the Trade Marks to remain on the Register, would be appropriate.

Decision

1. Section 101 of the Act:

Section 101: Determination 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)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.

(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)similar goods or closely related services; or

(b)similar services or closely related goods;

to those to which the application relates.

Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:For registered owner see section 6.

1. The applications for removal under section 92(4)(b) of the Act have been successful. Under section 101(1) of the Act I direct that trade mark registration nos. 1066646 and 1066650 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 registrations will be subject to the decision made by the court.

Costs

1. The oppositions to removal have not been established. I award costs against the Opponent to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995. 

Heath Wilson
Hearing Officer
Trade Marks Hearings
25 October 2013