Re: Opposition by G. & K. Fine Foods Pty Ltd to an application under section 92 of the Act by J DeLuca Fish Company, Inc. for removal of trade mark number 1304059 (29, 30) - by Delucas- in the name of Royal Foods..

[2020] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by G. & K. Fine Foods Pty Ltd to an application under section 92 of the Act by J DeLuca Fish Company, Inc. for removal of trade mark number 1304059 (29, 30) – by Delucas- in the name of Royal Foods Aust Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Griffith Hack Applicant: Spruson & Ferguson
Decision:	2020 ATMO 97 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 18 February 2018 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘Act’) by J DeLuca Fish Company, Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1304059
Lodgement date	14 June 2009
Goods	Class 29: Chilled foods consisting predominately of fish; chilled foods consisting predominately of game; chilled foods consisting predominately of meat; chilled foods consisting predominately of poultry; deep frozen foods; food preparations consisting principally of meat; food preparations having a base of milk; food preparations having a base of vegetables; food products containing fish; food products containing fruit; food products containing meat; food products containing poultry; food products containing vegetables; food products containing yoghurt; food products derived from meat; food products made from cooked vegetables; food products made from dried fruits; food products made from dried nuts; food products made from eggs; food products made from fish; food products made from meat; food products made from nuts; foods made from milk products; foods prepared from fish; foods prepared from milk; foodstuffs consisting of poultry; potato based snack food products; potato products in the form of snack foods; potato snack foods; pre-cooked tomato based foods; prepared foods consisting principally of cheese; prepared foods consisting principally of fish; prepared foods consisting principally of fruits; processed food products; smoked food products; snack foods made from potatoes and wheat (potatoes predominating); snack foods made from pre-cooked vegetables; vegetable food products Class 30: Candy for food; food products containing cereals; food products containing flour; foods produced from baked cereals; foods with a chocolate base; foodstuffs made from cereals; foodstuffs made from corn; foodstuffs made from dough; foodstuffs made from maize; foodstuffs made from oats; foodstuffs made of rice; foodstuffs made with cereals; foodstuffs made with flour; potato flour based snack food products; snack food products consisting of cereal products; snack food products made from cereals; snack food products made from maize flour; snack food products made from potato flour; snack food products made from rice; snack food products made from rice flour; snack food products made from soya flour; snack foods consisting principally of bread; snack foods consisting principally of confectionery; snack foods consisting principally of extruded cereals; snack foods consisting principally of grain; snack foods consisting principally of pasta; snack foods consisting principally of rice; snack foods consisting principally of vegetables; snack foods made from cereals; snack foods made from corn; snack foods made of wheat; snack foods made of whole wheat; snack foods prepared from cereals; snack foods prepared from grains; snack foods prepared from maize; snack foods prepared from potato flour; wafers (food) (‘Registered Goods)
Owner	Royal Foods Aust Pty Ltd[1]
Trade Mark	By Delucas (‘Trade Mark’)

[1] On 18 October 2019 the Trade Mark was assigned by G. & K. Fine Foods Pty Ltd to the present owner.

2.     G. & K. Fine Foods Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 20 April 2018 and a Statement of Grounds and Particulars (‘SGP’) on 10 May 2018.  The Applicant filed a Notice of Intention to Defend on 18 June 2018.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’), which will be discussed in more detail below.  The Applicant did not file any evidence in answer.

   4.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party requested a hearing and on 18 February 2019 a letter was sent to the parties providing them with an opportunity to file any written submissions in this matter.  Both the Opponent and Applicant filed written submissions on 17 May 2019 (‘Applicant’s Submissions’ and ‘Opponent’s Submissions’ respectively). 

   5. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application 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)  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 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 20 November 2017 (‘relevant period’).

   8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) of the Act.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(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 opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
   (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; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   11.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]

   [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [5] Nodoz Trade Mark (1962) RPC 1, 7.

   Opponent’s Evidence

2. The Opponent’s evidence in this matter consists of a declaration made on 21 September 2018 by Tony Sawers, Director of the Opponent, with Annexures 1-11 (‘Sawers Declaration’).    

3. The Sawers Declaration conveys the following information:

   ·The Opponent was established in the late 1980s and is a gourmet food wholesale and distribution company throughout Australia that distributes its own products as well as those of other traders.

   ·The Opponent commenced using the Trade Mark in 2009 in respect of packaged food products such as pasta-based meals.

   ·In 2015 the Opponent refreshed the ‘by Delucas’ brand and phased out the use of ‘by’.  The updated trade mark used was ‘DELUCA’S’ (‘DELUCA’S Mark’). 

   ·The Opponent has used the DELUCA’S Mark in the removal period including for ready to eat meals such as pastas and quiches which are sold both directly by the Opponent and through retailers such as IGA.   

4. The Sawers Declaration contains marketing material showing use of the DELUCA’S Mark for ready to eat meals such as pastas and quiches both on the Opponent’s social media pages and on third party websites, as well as evidence of annual turnover and marketing in the relevant period, the figures being not insignificant.

   Applicant’s Evidence

5. The Applicant has provided no evidence in this matter so I have no information about the Applicant’s business save that it has applied to register a trade mark (No. 1864120), containing the words ‘DeLuca Brand’ for fish products in class 29.  This application is currently deferred, presumably until the resolution of the present non-use application.     

   Discussion

6. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[6] As the Trade Mark had been registered for more than five years as at the date of the Application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the Application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by another person who was authorised by the Opponent taken to be use of the Trade Mark by the Opponent[7]. 

   [6] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

   [7] s 7(3) of the Act.

7. In the event that the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

   19.     Having reviewed the EIS, I am satisfied that the Opponent has used the DELUCA’S Mark  in Australia during the relevant period certain packaged meals (‘Used Goods’) but has not used the exact words ‘By Delucas’ during the relevant period, having ‘refreshed’ the brand in 2015. 

8. As such the question is whether the Opponent’s use of the DELUCA’S Mark on the Used Goods during the relevant period is use of the Trade Mark under s 100(3)(a) of the Act. Section 7(1) of the Act provides:

   Use of trade mark

   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. [emphasis added]

9. I must therefore be satisfied that the addition of the removal of the word ‘by’ and the change in spelling from ‘Delucas’ to ‘Deluca’s’ do not substantially affect the identity of the Trade Mark.  The test to be applied here is whether there is substantial identity between the Trade Mark and the DELUCA’S Mark[8] with the test for substantial identity being set out below

   [8] Link Recruitment Pty Ltd v Link Employment And Training Inc (2006) 69 IPR 614, 619 [21]-[22].

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

   [9] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

10. To assist the side by side comparison I have reproduced the Trade Mark and the DELUCA’S Mark below:

    By Delucas     DELUCA’S

11. While the marks share the prominent element ‘deluca’, on a side by side comparison there is a clear difference between the respective trade marks, being the removal of one of the two words, albeit the less prominent, and the change in spelling from ‘Delucas’ to ‘Deluca’s’.  These changes are not insignificant.  The removal of the first word renders the DELUCA’s Mark aurally and visually different to the Trader Mark.  Furthermore there are some conceptual differences between the respective marks; the Trade Mark implies that the product is created by an entity known as ‘Delucas’ while the DELUCA’S Mark implies that the product is possessed by an entity known as ‘Deluca’.  On balance, the differences between the respective trade marks are sufficient for me to conclude that the trade marks are not substantially identical and hence that the Opponent’s use of the DELUCA’S Mark during the relevant period was not use of the Trade Mark.

12. As the Opponent has supplied no evidence of use of the Trade Mark (as opposed to the DELUCA’S Mark) on the Used Goods during the relevant period I find that the Opponent has failed to satisfy the onus under s 100(3)(a) of the Act.

    Obstacles to use

    25. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Registered Goods to remain on the Register.

    Registrar’s Discretion

    26.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[10] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [10] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[11]

    [11] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[12]

    [12] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[14] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   28.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant 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;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[16]

   [16] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   29.     In the present case, the Opponent submitted that I should exercise the discretion not to remove the Trade Mark in respect of the Registered Goods on the basis that the DELUCA’S Mark had been used in respect of the Used Goods and hence the Opponent had not abandoned its trade mark and had commercial interests in the Trade Mark being retained on the register.

   30.     I am not persuaded by the Opponent’s submissions that this is an appropriate case to exercise the discretion.  The Opponent abandoned the Trade Mark in 2015 and there is no evidence as to the extent of the use of the Trade Mark between 2009 and 2015, or any residual reputation in the Trade Mark since that date.  The Opponent has since adopted a mark that is similar, but not substantially identical to the Trade Mark.  It may well be able to register that mark for the Used Goods.  However, given the lack of evidence of use of the Trade Mark on the Registered Goods either before, during or after the relevant period, the Opponent’s private commercial interest is insufficient to outweigh the public interest of the integrity of the Register.  In those circumstances I am not prepared to exercise the Registrar’s discretion.

   Decision

   31.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the goods for which it is registered.

2. Accordingly, I direct that registration 1304059 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   33. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 1304059 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   2 June 2019