Re: Opposition by Doreen Fielding to application under section 92 of the Trade Marks Act 1995 (Cth) by Sareen Holdings Pty Ltd to remove trade mark number 1208086 (classes 19 and 20) - Sareen Stone (stylised) in..

[2020] ATMO 127

TRADE MARKS ACT 1995

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

Re:Opposition by Doreen Fielding to application under section 92 of the Trade Marks Act 1995 (Cth) by Sareen Holdings Pty Ltd to remove trade mark number 1208086 (classes 19 and 20) – SAREEN STONE (stylised) - in the name of Doreen Fielding.

Delegate:	Louise Tuohy
Representation:	Opponent: Doreen Fielding Applicant: Sareen Holdings Pty Ltd; written submissions by Walsh & Associated.
Decision:	2020 ATMO 127 Trade Marks Act 1995 (Cth) – application under section 92 – subsection 92(4)(b) argued - use by the removal opponent or an authorised user not shown – discretion not exercised – trade mark to be removed from the Register.

Background

1. Sareen Holdings Pty Ltd (‘the Removal Applicant’) applied on 4 March 2017 under the provisions of sub-s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of trade mark 1208086 (‘the Trade Mark’) in the name of Doreen Fielding (‘the Removal Opponent’). Details of the Trade Mark appear below:

Registration No:    1208086
Filing Date:          1 November 2007
Trade Mark:   

Specification:             Class 19: Building materials (non-metallic) including but not limited to tiles, bricks, stones, block, slab, concrete tiles or ceramic material

Class 20: Furniture, benchtop, tabletops

1. A Notice of Intention to Oppose the removal application was filed by the Removal Opponent on 12 May 2017.

1. On 31 July 2018 the Removal Opponent filed its Statement of Grounds and Particulars (‘the SGP’) completing the Notices of Opposition.

2. A Notice of Intention to Defend the removal application was filed by the Removal Applicant on 4 August 2017.

3. Thereafter the Removal Opponent and Removal Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995.

4. In letters issuing from IP Australia on 16 July 2019 the parties were notified that as neither had requested a hearing, the matter would be given to a delegate of the Registrar of Trade Marks for a decision based on the written record.

5. The opposition was referred to me as the delegate of the Registrar of Trade Marks on 11 June 2020.

Evidence

Evidence in Support

• Declaration of Doreen Fielding, registered owner of the Trade Mark with Exhibits DF-1 to DF-4, made on 27 November 2018 (‘Fielding’).

Evidence in Answer

• Statutory Declaration of Duncan Blyth, Director of Sareen Stone Pty Ltd, made on 2 March 2019 (‘Blyth’).

Other Material

• Written submission by Walsh & Associates on behalf of Sareen Stone Pty Ltd, made on 16 October 2019 (‘the Removal Applicant’s submission’).

Legislative framework

1. Section 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (1)     … a person may apply to the Registrar to have a trade mark that is … 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.

   …
   (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.

2. The relevant period for the purposes of sub-s 92(4)(b) is the three year period ending on 4 February 2017 (‘the Relevant Period’).  

3. Concerning the onus in these proceedings, under s 100 of the Act it is for the Removal Opponent to rebut the allegation made under sub-s 92(4)(b) of the Act, either by establishing that the Trade Mark was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use.

4. The burden of proof is the ordinary standard of the balance of probabilities.[1]

   [1] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

5. In this regard, s 101(1) of the Act provides the Registrar with the discretion to remove the Trade Mark from the Register ‘in respect of any or all of the goods … to which the [removal] application relates’.

6. In the SGP the Removal Opponent particularises the sub-s 92(4)(b) ground as follows:

• During the Relevant Period the Opponent has exerted its rights as the Trade Mark owner, and use of the Trade Mark was under licence by an authorised user.

Use of the Trade Mark during the Relevant Period

1. In summary Fielding claims the following:

   • The Removal Opponent Doreen Fielding and her then business partner Jim White commenced a stone distribution business in 1999 which serviced the Queensland and Northern New South Wales market under the business entity Sareen Investments Pty Ltd.[2]

   [2] Fielding [1-2]

   • In late 2003 Jim White’s son-in-law Paul Connelly set up and ran a stone distribution business to service the southern New South Wales market which traded under the business entity Sareen Stone (NSW) Pty Ltd.[3]

   [3] Fielding [9-12]

   • Paul Connelly’s business partner was Duncan Blyth who became involved in the business about 12 months after it started.[4]

   [4] Fielding [13].

   • In June 2007 Sareen Stone (NSW) Pty Ltd applied to register SAREEN STONE as a trade mark. The application was withdrawn after objections from Doreen Fielding and Jim White. On 1 November 2007 Sareen Investments Pty Ltd applied for the Trade Mark which was subsequently registered.[5]

   [5] Fielding [14-16]

   • In March 2008 negotiations were conducted between the Doreen Fielding, James White, Paul Connelly and Duncan Blyth regarding Sareen Stone (NSW) Pty Ltd use of the Trade Mark. The end result of these negotiations was an informal licence agreement whereby Sareen Stone (NSW) Pty Ltd was permitted to use the Trade Mark in NSW for a period of ten years and no fee was payable by Sareen Stone (NSW) Pty Ltd for the licence. [6]

   [6] Fielding [18-19]

   • In 2013 the Queensland stone distribution business was wound down and Sareen Investments Pty Ltd was de-registered on 2 January 2013.[7] On 11 October 2012 the Trade Mark was assigned to Doreen Fielding.[8]

   [7] Fielding [5].

   [8] Fielding [2].

   • Doreen Fielding claims that since 2008 and throughout the period going back to 2014, Sareen Stone (NSW) Pty Ltd has continued to use the Trade Mark in NSW under the licence in the following ways[9]:

   [9] Fielding [21].

   othe name SAREEN STONE is incorporated into its registered company name;

   othrough the website domain < utilisation of the email domain @sareenstgone.com.au;

   osocial media accounts on Facebook, Twitter, Pinterest, LinkedIn, Google+, Houzz and Instagram, all under the name SAREEN STONE;

   obrochures and promotional materials under the branding SAREEN STONE. Exbibit DF-3[10] of Fielding provides 4 undated photocopies of brochures showing the Trade Mark and one copy of a page from Home Beautiful <homebeautiful.com.au> dated May 2013 referring to SAREEN STONE;

   othe incorporation of the Trade Mark on letterhead;

   othe incorporation of the Trade Mark on invoices;

   oadvertising and publicity material featuring the Trade Mark;

   othe incorporation of the Trade Mark on physical signage; and

   othe incorporation of the Trade Mark on all branding.

   • There is no agreement with Sareen Stone Pty Ltd, Sareen Stone Holdings Pty Ltd, nor Duncan Blyth, permitting use of the Trade Mark.[11]

   [10] Fielding [21-22] [Exhibit DF-3].

   [11] Fielding [32].

The Removal Applicant’s Evidence

1. In summary Blythe claims the following:

• On 3 December 2013 Paul Connelly sold his interests in Sareen Stone (NSW) Pty Ltd to Duncan Blyth.[12]
• Duncan Blyth operates his business interests through Sareen Stone Pty Ltd which was incorporated on 12 November 2013 and Sareen Stone Pty Ltd has never had any association with a licence or any other association with the Trade Mark proprietor.[13]

[12] Blyth [27].

[13] Blyth [16].

Discussion

1. With regard to the type of evidence that is regarded as sufficient to establish trade mark use, the authorities have determined that ‘the tribunal may not be persuaded by evidence that is solely from the internal files of the opponent’[14] or of a circumstantial nature,[15] although one invoice, if genuine, will suffice.[16] Little weight is to be given to assertions of use which are not supported by documentary evidence.[17]

   [14]  Re Nodoz Trade Mark [1961] RPC 1 [7].

   [15] Trina Trade Mark [1977] RPC 131.

   [16] Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425; Geo W McPherson Nominees Pty Ltd v Remington Arms Co. Inc. (1999) 47 IPR 636.

   [17] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8.

2. In reviewing the evidence, I find no evidence that the Removal Opponent has directly used the Trade Mark in the Relevant Period.

Authorised Use

1. Note 1 to section 100 states that if the registered owner of a trade mark has authorised another person to use it, any authorised use of the trade mark by that other person is taken to be a use of the trade mark by the registered owner.

2. Section 8 of the Act defines an ‘authorised user’ and ‘authorised use’ as follows:

   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. The Removal Opponent claims that in 2008 it negotiated an informal licence agreement whereby Sareen Stone (NSW) Pty Ltd was permitted to use the Trade Mark in NSW for a  period of ten years and that use of the Trade Mark in NSW has continued under licence during the Relevant Period.

2. As noted above the Fielding declaration provided a list of ways in which the Trade Mark was used by Sareen Stone (NSW) Pty Ltd. However, the Removal Applicant claims that use of the Trade Mark by Sareen Stone (NSW) Pty Ltd ended on 3 December 2013 when Paul Connelly sold his interests in Sareen Stone (NSW) Pty Ltd to Duncan Blyth. Thereafter the stone distribution business was operated through Sareen Stone Pty Ltd and the Removal Applicant claims it had no licence agreement with the Removal Opponent.

3. Section 8 of the Act makes clear that use of a registered trade mark by an authorised user, will only be taken to be use by the registered proprietor of the trade mark if the registered proprietor exercises control over the use of the trade mark during the period in question so as to maintain a connection in the course of trade between the goods and the registered proprietor. That can be achieved if either quality control or financial control is exercised.

4. In Lodestar Anstalt v Campari America LLC Besanko J observed:

   There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8...

5. In this regard, the Removal Opponent has not provided any supporting evidence of either quality control or financial control being exercised over the use of the Trade Mark during the Relevant Period.

6. I have not been provided with sufficient information to determine whether use of the Trade Mark during the Relevant Period was authorised use by the Removal Opponent. Accordingly, I am satisfied the Removal Opponent has not established use of the Trade Mark in the Relevant Period.

Obstacle to Use

1. The Removal Opponent does not claim nor does the evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the Relevant Period, pursuant to s 100(3)(c) of the Act.

2. The ground for removal under sub-s 92(4)(b) of the Act has been established.

Registrar’s discretion

1. Section 101 of the Act relatively provides:

   101  Determination 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.

   (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.

[…]

1. In this matter, the question to be asked is whether it is reasonable not to remove the Trade Mark, even though the Removal Opponent has not satisfied me that the Trade Mark was used by the registered owner, or an authorised user, during the Relevant Period.[18]

   [18] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28].

2. The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[19]

   [19] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273].

3. In Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd, the Delegate found that in the exercise of the Registrar’s discretion, there are three factors which fall under the following broad heading to be considered[20]:

   1.   the interests of the owner of the trade marks;

   2.   the interests of the applicant for removal; and

   3.   the public interest.

   [20] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33].

4. The Removal Opponent did not specifically address the discretion in its submissions however, according to Fielding the Removal Opponent, maintained ownership of the Trade Mark because she hoped to assign it to another member of her family at a later date. In this regard her grandson is doing an apprenticeship in landscape construction and it is possible he may want to go into the stone distribution business in the future.[21]

   [21] Fielding [26].

5. The Removal Applicant is seeking the removal of the Trade Mark so it can secure registration of its trade mark application number 1826853 which is pending and has not progressed to acceptance because the Trade Mark forms a barrier to its registration.[22]

   [22] The Removal Applicant’s Submission [4.1].

6. Furthermore, the Removal Applicant submits the Removal Opponent has not established any reputation in the Trade Mark and has no interest in the Trade Mark other than an attempt to reserve to the Trade Mark for a future possible use.[23]

   [23] The Removal Applicant’s Submission [4.2].

7. While the Removal Opponent wishes to reserve the Trade Mark for possible future use by a family member, the benefits of statutory ownership are conferred in contemplation of use. In this case there is no evidence before me to suggest that the Removal Opponent has abandoned the Trade Mark but to retain the Trade Mark on the register for possible future use would not be a proper exercise of the Registrar’s discretion under s 101 of the Act.

8. Whilst acknowledging the broad discretion available under s 101(3) of the Act, having carefully considered all the claims and material before me, and in the absence of any detailed submissions from the Removal Opponent in this regard, I am not satisfied that it is in the public interest to exercise the Registrar’s discretion in favour of the Removal Opponent.

Decision

1. Section 101 of the Act relatively provides:

   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.

1. The ground for removal under sub-s 92(4)(b) has been established and I am not satisfied that it is reasonable to exercise my discretion to allow the Trade Mark to remain on the Register.

2. I direct that the Trade Mark will be removed from the Register one month from the date of this decision. If the Registrar has been serviced with a notice of appeal on or before that time, I direct that the registration shall not be removed from the Register until the appeal is withdrawn or discontinued. Otherwise the registration should be in accordance with the decision of the Court.

Costs

1. Both parties have requested that costs be awarded. As the Removal Applicant has been successful, I award cost against the Removal Opponent in terms of Schedule 8 of the Trade Mark Regulations 1995.

Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 July 2020