Re: Opposition by Gail Margaret Austen to application under section 92 of the Act by Your Mates Brewing Company Pty Ltd to remove trade mark number 479506(32) - Goodtime Logo - and 569435(32) - Goodtime Logo (2),
[2019] ATMO 173
•5 December 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Gail Margaret Austen to application under section 92 of the Act by Your Mates Brewing Company Pty Ltd to remove trade mark number 479506(32) – Goodtime Logo – and 569435(32) – Goodtime Logo (2), both in the name of Gail Margaret Austen
DELEGATE:
Debrett Lyons
REPRESENTATION:
Opponent: Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys
Applicant: Thomas Bevitt of Redchip Lawyers Pty Ltd
DECISION:
2019 ATMO 173
Trade Marks Act 1995: section 96 opposition to application under s92
- opposition to removal unsuccessful in respect of trade mark number 569435 and partially successful in respect of trade mark number
479506. Goods of trade mark number 479506 to be restricted.
Background
In these proceedings, Your Mates Brewing Company Pty Ltd (‘the Applicant’) applied under the provisions of section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade marks which appear below in respect of all of the goods for which they are registered:
Registration No: 479506
Filing/Priority Date: 12 January 1988
Goods: Class 32: Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; fruit drinks and fruit juices.
Trade Mark:
(‘the 506 Mark’)
Registration No: 569435
Filing/Priority Date: 18 December 1991
Goods: Class 32: Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; fruit drinks and fruit juices, and all other goods included in the class.
(‘the Goods’1)
Trade Mark:
(‘the 435 Mark’)
Taken together, I will refer to the 506 Mark and the 435 Mark together as ‘the Trade Marks’.
As provided for by section 96 of the Act, the owner of the Trade Marks, Gail Margaret Austen (‘the Opponent’), filed a Notice of Intention to Oppose the removal application on 1 May 2018.
On 1 June 2018, the Opponent filed a Statement of Grounds and Particulars (‘the SGP’) after which the Applicant filed a Notice of Intention to Defend.
Both parties requested a hearing and the matter was heard in Canberra on 2 September 2019. I was delegated by the Registrar to take the hearing and so sent directions to the parties to ensure the orderly conduct of the hearing. In compliance with those directions both sides provided written submissions and advised that they would attend the hearing by telephone. The Opponent was represented by Ian Tannahill, of Ahearn Fox, Patent and Trade Mark Attorneys and the Applicant was represented by Thomas Bevitt of Redchip Lawyers Pty Ltd.
Evidence
The Opponent’s Evidence in Support of the Opposition comprises statutory declarations by:
1 For the purposes of this decision the goods of Registration No: 569435 are the defined Goods since they encompass everything of Registration No: 479506 and more.
Gail Margaret Austen made 17 October 2018, with exhibits (‘Austen’); Ian Robert Tannahill made 10 October 2018, with exhibits (‘Tannahill’); Stephen Townsend made 17 October 2018;
Luke Carkeet Baillie made 17 October 2018; and Jacob Lambert made 17 October 2018.
The Applicant filed Evidence in Answer comprising a declaration by Matt William Hepburn made 23 January 2019 together with exhibits.
The Opponent
Austen states that in 1971 the Opponent’s brother established a business in Brisbane selling surfboards by reference to the name “GOODTIME” (‘the Business’). Austen states that “GOODTIME” has since been used as a trade mark for surfboards and other surfcraft, surfing accessories and clothing.
Austen states that sometime later in the 1970’s the Opponent took over the running of the Business and acquired the “GOODTIME” name from the Opponent’s brother.
Austen asserts that the Opponent is the director of Goodtime Trading Pty Ltd (‘the Company’), and has been so since its incorporation on 16 October 1997.
Austen states that the name “GOODTIME” was first used by the Opponent’s brother, then by the Opponent and later by the Company, the Company use being with the Opponent’s permission and under the Opponent’s control.
Austen states that in or about 1988 it was decided to promote the Business in the leadup to festive occasions, such as Easter and Christmas / New Year, by giving members of the public a bottle of “GOODTIME” cordial if they made a purchase from the Business. It is said that in response to a later public demand for the cordial it could be purchased separately and that since October 2017 it can be bought online.
Further, Austen states that a Judith Anderson (‘Anderson’) was a business partner of the Opponent from 1973 until her death in 2013. Austin states that Anderson died whilst the Opponent herself was diagnosed with breast cancer and undergoing treatment.
The Applicant
The Applicant owns and operates a microbrewery on the Sunshine Coast in Queensland, established long after the Business and registration of the Opponent’s Trade Marks . It made application2 to register the trade mark, BREWING GOOD TIMES. Upon examination of that application, the Trade Marks were cited as a ground for rejection of that application. The Applicant sought a letter of consent from the Opponent. Consent was not forthcoming and these proceeedings were commenced.
Legislative framework
Section 92 of the Act relevantly provides, relevantly:
92 Application for removal of trade mark from Register etc.
(1) …
(2) …
(3) …
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:
[…]
2 No. 1760393 for registration of the trade mark BREWING GOOD TIMES in class 32, in respect of the following goods:
“Alcohol free beer; Alcoholic beers; Beer; Beer wort; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Extracts of hops for making beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Nonalcoholic beers; Non-alcoholic beverages (except non- alcoholic beer); Pilsner beer; Root beer.”
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:
used the trade mark in Australia; or
used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
The Opponent’s SGP claims that:
on the day the Goodtime Marks were filed, the Opponent had an intention in good faith:
(a) to use the Goodtime Marks in Australia in relation to the goods in class 32 respectively designated by each of the marks; or (b) to authorise such use; and
during the period from 21 January 2015 to 21 January 2018 Gail Margaret Austen, or an authorised user, used the Goodtime Marks, or the Goodtime Marks with additions or alterations, not substantially altering the identity of those marks, in respect of the goods in class 32 designated in each of the Goodtime Marks.
I note that part (i) of the SGP is irrelevant to section 92(4)(b) of the Act. As to part (ii), I observe that since the application to remove the Trade Marks from the Register was filed on 21 February 2018, ‘the Relevant Period’ for the purposes of section 92(4)(b) of the Act is the three year period ending on 21 January 20183.
The Applicant’s case, in summary, is that during the Relevant Period:
there is no proof of use (i) of the Trade Marks, or (ii) of marks with additions or alterations not substantially affecting the identity of the Trade Marks; and
in any case there was no use of such marks (i) by the Opponent, or (ii) an authorized user of the Opponent.
Section 100(1)(c) of the Act deals with the onus in these proceedings and provides:
100 Burden on opponent to establish use of trade mark etc.
3 For reasons given elsewhere, not necessarily the period defined by the exact same calendar date three years earlier.
In any proceedings relating to an opposed application, it is for the opponent to rebut:
…
…
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.
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)).
Thus, the Opponent bears the onus to rebut the Applicant’s allegations that within the Relevant Period there was no use, or authorised use, in relation to the Goods, of the Trade Marks or of marks with alterations or additions not substantially affect the identity of the Trade Marks.
The relevant standard of proof that the Opponent bears is on the balance of probabilities.9 In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [stress added]. In Blount Inc v Registrar
of Trade Marks10 Branson J observed:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
If the Opponent fails to rebut the allegation of non-use the Trade Marks will be removed from the Register unless it can shown that the Trade Marks were not so used because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use (section 100(3)(c)), or satisfy that Registrar that it is reasonable for the Trade Marks to remain on the Register (pursuant to section 101(3)) even if the grounds on which the removal application was made have been established.
Although not part of the Opponent’s SGP, it’s written submissions in part rely on the ill health of the Opponent and the death of Anderson as circumstances that were an obstacle to the use of the Trade Marks.
Section 100(3) provides, relevantly:
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:
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
…
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.
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)).
Consideration
The marks used
There is no evidence of use of the Trade Marks as registered. The examples of use provided by the Opponent appear below:
(1)
(2)
(3)
(‘the Variations’)
The question of whether the Variations qualify as use of the Trade Marks is not as simple as may be thought. Section 7 of the Act restates the relevant part of section 100(3)(a). It provides:
7 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.
In Optical 88 Ltd v Optical 88 Pty Ltd (No 2)4, Yates J5 observed that in order to determine whether two marks differed only by additons or alterations not substantially affecting their identity, “it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414”.6 The two registered marks at issue were:
The registrations covered optical goods and services. The use relied upon was of a mark appearing on a lens cleaning cloth, shown below:
4 [2010] FCA 1380; 275 ALR 526; 89 IPR 457.
5 at first instance but uphold on all grounds by Cowdroy, Middleton and Jagot JJ in the Full Federal Court.
6 [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
Justice Yates found that “a substantial impression of identity” did not arise and reasoned that although the compared marks displayed common elements:
the impression created is quite different because of the change in position of the applicant’s logo, which imparts a different orientation to the mark. This different orientation gives a sense of triangularity that also underscores the centrality and prominence of the name “OPTICAL 88” (in Chinese characters).
Justice Yates’ reference to Shell7 is a well known one. There, Windeyer J set out the test for “substantial identity” as follows:
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.15
As indicated, the Chinese characters in all of the marks means “optical” in English. Justice Yates noted that the word was descriptive of the goods and the business and that number “8” is considered to be lucky in Chinese culture and commonly used.
The Applicant pointed me to the High Court decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (“Lion Nathan”) where it was found that the addition of a foot device did not affect the identity of the registered word mark “Barefoot”. The High Court stated:
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. 8
7 Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR
304; 35 ALJR 355; 1B IPR 523 at [12].
8 E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 at 69.
The Applicant also pointed me to the case of Sports Warehouse, Inc v Fry Consulting Pty Ltd.9 That case reached Kenny J in the Federal Court in consequence of an appeal from my decision in Fry Consulting Pty Ltd v Sports Warehouse Inc10 to refuse registration of the word mark TENNIS WAREHOUSE for retailing of tennis goods because under section 41(5) of the Act (as it then stood11) the evidence of use was not of the trade mark which was the subject of the application. The bulk of the evidence showed the words, “Tennis Warehouse”, used in close association with a “TW” logo comprising those capital letters inside an oval shaped border. I considered whether or not section 7(1) might have nonetheless assisted the applicant and found it did not. The grounds of appeal to Kenny J included a challenge to that finding. Justice Kenny dismissed the appeal based on evidence which included that which had been considered by the Office.
For what follows later in my reasoning it is noteworthy that Kenny J did not ultimately decide whether the words TENNIS WAREHOUSE together with the “TW” logo amounted to the one composite mark, or whether the words and the “TW” logo were two marks placed together in close association. Nevertheless it was accepted in principle that (i) a sign may be registrable as a trade mark even though it is used together with another trade mark, and (ii) that there can still be use of a mark where it is a component of a larger composite mark (citing Lion Nathan amongst other cases) but “each case turns on its own facts and the trade mark in question viewed in the context of those facts.”12
The formulation, “with additions or alterations that do not substantially affect the identity of the trade mark”, which appears in section 7 of the Act, is used, essentially word for word in section 100(3)(a) and in other places in the Act. So, too, the same formulation appeared in several places in the Trade Marks Act 1955, the predecessor to the current Act. Some of the sections where it appears are provisions most frequently interpreted by the Registrar, other sections most times by the Courts. So, for example, when under the Trade Marks Act 1955 the Registrar came to consider an application to amend the form of a trade mark, it was done with considerable strictness. A touchstone test was whether the amended mark would have been examined according to the same search strategy as would have the registered trade mark. Other sections which contained the formulation were read in keeping with their (sometimes different) legislative intent.
9 [2010] FCA 664.
10 [2008] ATMO 21.
11 prior to the amendments to the Act introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 .
12 [2010] FCA 664 at [131-3].
Although the current Act is 15 years old I do not think it has yet reached a maturity where those same nuances have developed or occupied the present Federal Court’s attention. Justice Yates’ decision in Optical 88 – an infringement action – appears by its reference to Shell to track a “substantial identity” test and, indeed, there is perhaps no reason that the section 7(1) formulation should not be understood in the same way as the expression “substantially identical” as it appears in other sections of the Act (albeit that was not always so under the earlier legislation). If, then, I follow that direction and look to the Federal Court cases after Optical 88 which have considered what it is to be “substantially identical”, then for a period it appeared it seemed that the identification of “dominant cognitive cues” may have replaced Shell’s search for “essential features” but, as discussed elsewhere, matters have now settled to an appreciation of those terms as analogical13.
So, for example, in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, the Federal Court found the two marks shown below to be substantially identical.
In so doing it explicitly recognised that “a conclusion of substantial identity or not is one of fact about which reasonable minds may differ” and stated that:
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the
13 See, for example, in this Office, Real Estate Home Loans Pty Ltd v REA Group Ltd. [2019] ATMO 129 (28 August 2019); Juno Pharmaceuticals Inc v Juno Therapeutics, Inc., 2017 ATMO 160.; see also in the Federal Court, the cases of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 and Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56)
relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.
In the case before me the Applicant submits that:
each of the Goodtime Variations is a composite trade mark consisting of a highly distinctive logo and stylised version of the word “Goodtime”;
each stylisation of the word “Goodtime” in each of the Goodtime Variations is substantially different when compared to the registered form of the Goodtime Marks;
the logo device in each Goodtime Variation is not an illustration of the word “Goodtime” and, rather than being a representation of the word, is a significant distinguishing element of each composite mark.
The argument that the logo device in each of the Variations is not an illustration of the word “Goodtime” is unhelpful. To the extent that some analogy with Barefoot is sought to be drawn, clearly there is no unique image that might correspond with the abstract meaning of the expression “goodtime” or “goodtimes”. Nor am I in agreement that each of the Variations is a composite mark. Without doubt, the example shown above at [25(1)] is a composite mark but I consider that there is a compelling argument (albeit not one made by the Opponent) that the other examples show either two trade marks, or a trade mark accompanied by additional artwork of no source distinguishing value. In example [25(4)], “goodtime” appears above a complex logo which has as its central feature the word “goodtime” once more. In example [25(2)] what appears beneath the word “goodtime” is a graphic of a surfer set against the cross-section of an orange, an obvious cue to the flavour. In example [25(3)], what appears beneath the word “goodtime” is an image of either the Opponent or Anderson.
I do not find that the use of any of the Variations could help to preserve the place of the 435 Mark on the register. Whilst not an especially fanciful rendition of the word “goodtime”, the 435 Mark nevertheless has design features which remove it from the world of plain word marks and which do not remotely resemble any use of “goodtime” as it appears in the Variations.
On the other hand, the 506 Mark (shown below once more for convenience), though not a plain word mark, is an essentially regular lower case and italic rendition of the word.
When I take account of that slight stylization and section 70 of the Act which states in part that “to the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours”, I consider that there is substantial identity between it and the representation of “goodtime” as it appears at the top of each of examples [25(2)-(4)].
When I reconsider Kenny J’s direction that each case turns on its own facts and the trade mark in question be viewed in the context of those facts, I am minded to think that almost all bottle labels accompany the maker’s mark with myriad other visual cues, sometimes suggestive of the contents, sometimes purely aesthetic, other times promotional, and indeed sometimes with further iterations of the mark. Here, I find that examples [25(2)-(4)] show use of “goodtime” as a trade mark, distinct from the added matter. Further, I find that in terms of section 101(3)(a) of the Act, that the use is use of the 506 Mark with alterations or additions not substantially affecting its identity.
Authorised use
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. Section 8 then defines an “authorised user” and “authorised use” as follows:
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.
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.
If the owner of a trade mark exercises quality control over goods or services:
dealt with or provided in the course of trade by another person; and
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.
If:
a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
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.
Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
As indicated, the Company was formed in 1997. Both Austin and Tannahill refer to the Business being conducted by the Company. There is nothing to suggest that during the Relevant Period use of the Trade Marks was by another person or entity. The question arises as to whether the Company was an authorised user of the Trade Marks. The Applicant argues that it was not and recites the following authorities in its submissions, set out below:
… In Calico Global Pty Ltd v Calico LLC Rares, J provided (sic) that:
“...if another person uses a registered owner’s trade mark, the user must be authorised to do so by the “owner” and the use must be under the registered owner’s control, or the control of an assignee who is an owner of the trade mark within the meaning of s 8, and, through it, an authorised user so as to maintain, by the use, a perceived (and actual) connection between the goods or services and the person registered as the owner or who is, in fact, the owner of the trade mark.”
In Lodestar Anstalt v Campari America LLC Besanko, J of the Full Federal Court provided (sic):
“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...”
In Trident Seafoods Corporation v Tridents Foods Pty Ltd Gleeson, J of the Federal Court provided (sic) on the question of authorised use that it requires the “actual” control of the trade mark owner and that there must be control “as a matter of substance”.
So, as section 8 makes clear, use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. That can be achieved if either quality control or financial control is exercised.
Austen declares that the Trade Marks have been used by the Company with the “permission” and “control” of the Opponent. Tannahill declares that the Company use is “under licence” from the Opponent. Further, Austin states that the Opponent is a director of the Company although there is no supporting evidence of that connection.
Section 8 and the question of authorised use has been in vogue over the past few years. Several cases have considered the nature of the relationship between the owner of a mark and the purportedly authorised user of it. In Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, Basenko J stated that
actual control will be a question of fact and degree. …. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”. [98]
In the case of Scott-Dibben Pty Ltd v Canterbury District Health Board, [2016] ATMO 3, Hearing Officer Kirov wrote:
... I am mindful of the fact that the Full Federal Court, (in the context of ss 58 and 59 of the Act, it must be said), in Food Channel Network Pty Ltd v Television Food Network
GP (“Food Channel”) indicated one should not rush to reflect adversely on the claimed actions or intentions of a claimed user in circumstances where there are no formal arrangements in place between companies controlled by one individual. In this regard the Court advised at [61]:
The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.
In Food Channel the evidence before the Court was that a single person was “the founder and sole shareholder and director” of both of the companies concerned. The Federal Court accepted that person was the “directing mind” of both. Again, the issue of authorised use was recently considered by Hearing Officer Richards in Star Television Productions Limited v Star Entertainment Group Limited, 2019 ATMO 163 where he wrote that:
It may be fair to observe that the past has seen a relaxed attitude to authorised use when assessing the relationship between the registered owner and the actual user of a trade mark. This was most recently exemplified by a (reluctant) Federal Court finding that ‘a mere theoretical possibility of contractual control is sufficient to constitute authorised use’.14 The legal position significantly changed in 2016 when the Full Court of the Federal Court decided that a bare license was insufficient to establish control over, and therefore authorised use of, a trade mark.15 For the three years that followed that judgment there has been a very high level of scrutiny of the relationship between a registered owner of a trade mark and the user of it. This year saw some reprieve, with the Full Court of the Federal Court deciding that two companies ‘operated with a unity of purpose’ and through that inferred that one
14 Skyy Spirits LLC v Lodestar Anstalt (2015) 325 ALR 718, 732 [55].
15 Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 (‘Lodestar’).
company effectively exercised the requisite control over the other for the purposes of s 8 of the Act.16 The facts in Lodestar and Trident were very different. In Lodestar there was only a contractual relationship between user and owner, and the owner was found to have no
serious interest in the quality of the goods that the user was putting to market. In contrast, Trident involved two quite clearly related companies—one owned the trade mark and the other used it. It was also crucial to the reasoning in Trident that there was common directorship of the companies at all relevant times.
I am in agreement that these cases represent the correct approach and so I have informed myself of public records which show that the Opponent is and has always been the sole director of the Company. She was the single controlling mind and use by the Company, to borrow words above, involved instinctive and complete obedience to her as the trade mark owner.
It follows that otherwise qualifying use of the Trade Marks by the Company is authorised use which I can take into account. In that regard, I am content that there has been use of the 506 Mark on cordial products, within the relevant period. I am conscious that a single bona fide use of a trade mark may be sufficient to answer a subsection 92(4)(b) application17 provided the evidence is conclusive. I am conscious, too, that reduced weight is to be given to evidence coming only from the internal files of an opponent.18 However, I have read the evidence in this case bearing in mind the genuinely seasonal nature of the use, as described, and weighing how that would impact on the Opponent’s capacity to prove its case.
That said, I do not find any evidence of use of the 506 Mark in respect of any goods other than cordial products.
Section 100(3)(c) and obstacles to use
In Woolly Bull Enterprises Pty Ltd v Reynolds19, Drummond J discussed section 100(3)(c), noting that unlike its predecessor under the Trade Marks Act 1955:
It is now not necessary to show unusual or abnormal, as opposed to normal or usual, trading conditions (a difficult concept to comprehend and apply) before s 100(3)(c) can operate.
Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark. [46]
16 Trident Seafoods Corp v Trident Foods Pty Ltd (2019) 369 ALR 367, 380-1 [45]-[52] (‘Trident’).
17 Nodoz Trade Mark [1962] RPC 1 at 7 per Wilberforce J.
18 Trina Trade Mark [1977] RPC 131.
19 [2001] FCA 261.
Nevertheless, Drummond J considered that the circumstances relied upon “must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner” (at [47]). Whilst I might have thought that included serious ill health, Drummond J. went on to say that section 100(3)(c) did not contemplate circumstances such as “financial impecuniosity,” or “illness,” or a “falling out between joint registered owners” (as [48]), but only “circumstances of a trading nature” and that:
If the parliament intended any circumstance external to the owner to be capable of providing an excuse for non-use, little purpose would be served by the words in parenthesis in s 100(3)(c), viz, “whether affecting traders generally or only the registered owner of the trade mark”. The presence of these words is some indication that the circumstances comprising an obstacle to use of the mark must not only arise externally to the registered owner, but must also be circumstances of a trading nature. [49]
Austen states at one point that “some say the loss of Judith [Anderson] has been harder for the business to overcome than the fire of 1984 and me being diagnosed with breast cancer in August 2012.” So the circumstances which I might consider are (i) Ms Austen’s illness, (ii) Anderson’s illness, and (iii) the loss of Anderson. If, as I must, follow Drummond J’s reasoning then I should find that these circumstances do not fall within the ambit of section 100(3)(c) – the illness of both for the reasons given above and the loss of Anderson as (without any intented callousness) essentially equivalent to the falling out between business partners.
The Opponent is accordingly unable to rely on the section. It follows that, but for section 101 and the Registrar’s discretion, the Applicant has made a case for complete removal of the 435 Mark and partial removal of the 506 Mark from the Register.
Discretion
Section 101 of the Act relevantly provides:
101 Determination of opposed application—general
[…]
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.
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:
similar goods or closely related services; or
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.
In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennett J observed:20
The discretion under s 101(3) is 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 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.
In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
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 were of assistance in considering the exercise of the discretion :
there had been no abandonment of the trade mark;
the registered proprietors of the mark still had a residual reputation in the mark;
there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
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;
the registered proprietors were not aware of the applicant’s sales under the mark.
There are submissions before me that the Applicant entered the market without, at least sufficient, due diligence to ascertain from the Register the Opponent’s rights. There are some other, general, facts
20 [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].
which might fit within the matrix of factors listed above, none particularly compelling in my view. I have already found no circumstances that favour preservation of the 435 Mark and I have treated the 506 Mark as generously as the case law permits. I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the 435 Mark to remain on the register, or to maintain the 506 Mark on the register for any goods wider than those I have identified.
Decision
Section 101(1) of the Act provides:
101 Determination of opposed application—general
Subject to subsection (3) and to section 102, if:
the proceedings relating to an opposed application have not been discontinued or dismissed; and
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.
I am satisfied that the grounds on which the application for complete removal of the 435 Mark have been established. I order that registration number 569435 be removed from the register.
The application for removal of the 506 Mark has been partially established. The Opponent has shown use in respect of cordial products. The goods are “Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; fruit drinks and fruit juices.” Cordial products fall into this same class 32 of goods and within the description of “syrups and other preparations for making beverages”. Accordingly, I order that the Goods of registration number 479506 be amended to read:
“Cordial products in this class”.
I direct that, should the Registrar not be served with a notice of appeal within one month of the date of this decision, the Register be amended as indicated in the preceding paragraph. If the Registrar is notified of an appeal against this decision within one month of the date of this decision, the disposition of the matter should be in accordance with the court’s order or direction.
Costs
Both parties made submissions in respect of costs. Both had a measure of success and in the circumstances I make no award.
Debrett Lyons Hearing Officer
Trade Marks Hearings 5 December 2019
0
18
0