Re: Opposition by Live Fashion Group Pty Ltd atf Live Fashion Unit Trust to an application under section 92 of the Trade Marks Act 1995 (Cth) by Live Roupas Esportivas Ltda. for removal of trade mark number 681429

[2020] ATMO 179

TRADE MARKS ACT 1995

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

Re:Opposition by Live Fashion Group Pty Ltd atf Live Fashion Unit Trust to an application under section 92 of the Trade Marks Act 1995 (Cth) by Live Roupas Esportivas Ltda. for removal of trade mark number 681429 (42) – LIVE- in the name of Live Fashion Group Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Bennett + Co

Applicant: Michael Buck IP

Decision:

2020 ATMO 179

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark during the relevant period for registered goods – Trade Mark to remain on the Register

Background

1. This decision is pursuant to an application made on 25 February 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Live Roupas Esportivas Ltda. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

681429

Lodgement date

20 December 1995

Services

Class 42: Retailing and wholesaling services namely retailing of clothing and other fashion goods including handbags and jewellery; services rendered by clothing boutiques

(‘Registered Services’)

Owner

Live Fashion Group Pty Ltd

Trade Mark

LIVE

(‘Trade Mark’)

2.     Live Fashion Group Pty Ltd atf Live Fashion Unit Trust (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 5 April 2019 and a Statement of Grounds and Particulars (‘SGP’) on 19 April 2019.  The Applicant filed a Notice of Intention to Defend on 28 May 2019.

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.  On 28 July 2020 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 6 October 2020. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 3 August 2020 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 22 September 2020 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 29 September 2020 (‘Applicant’s Submissions’) and indicated that they would not be attending the hearing.  At the hearing David Stewart of Bennett & Co represented the Opponent, appearing by video conference. 

   5.  On 17 August 2020 the Opponent filed additional evidence, which it sought to rely upon in the hearing.  By direction on 24 August 2020, I indicated that the late filed material would not be considered.

   6.  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 and the submissions made at the hearing:

   ·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

   7. 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)  …;

   (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.

   8. 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 25 January 2019 (‘relevant period’).

   9. 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,[1] and I confirm that five years since filing the application have in fact passed.

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

   10. 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.

   11.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

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

   12.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods or services 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.

   13. 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),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

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

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

   Opponent’s Evidence

2. The Opponent’s evidence in this matter consists of a declaration made on 29 August 2019 by Dominic Carlos Zurro, Director of the Opponent, with Annexures DCZ1 to DCZ9 (‘Zurro Declaration’).    

3. The Zurro Declaration conveys the following information:

   ·The Opponent is a fashion retailer which sells fashion apparel, sports apparel, head wear, foot wear and accessories under the business name and trade mark LIVE (or LIVE CLOTHING).   

   ·The Opponent operates from 4 physical stores in Perth and has an online presence with 66,000 Facebook followers and 22,000 Instagram followers.  The Opponent has won a series of awards for its retail stores.

   ·The Trade Mark was first used in 1994 by the predecessor in title of the current owner and was transferred to the current owner as a going concern pursuant to a business sale agreement entered into in 2018.   

   ·The Opponent turnover in the non-use period was significant.   

4. The Zurro Declaration contains as annexures marketing material showing use of the Trade Mark on social media (noting that the Opponent’s Twitter page commenced in 2009 and the Facebook page in 2013), photos of the Opponent’s retail premises under which it retails clothing, a newspaper article dated in the relevant period confirming that the current owners bought the Live Clothing business as a going concern in 2018 (also enclosing a photo of one of the Opponent’s stores displaying the Trade Mark over the entrance), and a tax invoice confirming that an entity described as Live Clothing leased retail space in Perth in the relevant period.   

   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. 1982757), containing the word ‘Live!’ for clothing in class 25.  This application is currently deferred.     

   Discussion

6. 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 is taken to be use of the Trade Mark by the Opponent[5]. 

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

7. If 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

   20.     Having reviewed the EIS, I am satisfied that the Opponent has used the Trade Mark (without additions or alterations that substantially affect the identity of the Trade Mark) in Australia during the relevant period on the Registered Services.  The Opponent operated, and continues to operate a number of retail establishments in Australia selling clothing and fashion goods under the Trade Mark (or a logo consisting of the word LIVE with minor stylization which does not substantially affect the identity of the Trade Mark).  The Opponent’s turnover is far from negligible.

   21. The Applicant in its submissions has made a number of criticisms of the various annexures to the Zurro Declaration including that certain annexures are undated and other annexures do not demonstrate use of the Trade Mark on the Relevant Services. These criticisms are technically correct but are unpersuasive. What the Zurro Declaration, viewed as a whole, shows is that the Opponent did, during the relevant period, operate a business selling clothing and fashion goods under the Trade Mark. This is sufficient to satisfy the Opponent’s burden under s 100 of the Act.

8. As the Opponent has supplied clear evidence of use of the Trade Mark on the Registered Services during the relevant period I find that the Opponent has satisfied the onus under s 100(3)(a) of the Act.

   Decision

9. I decide that the Opponent has established its opposition to removal in respect of the Registered Services.  The Trade Mark shall remain on the Register.

   Costs

   24. The Opponent has been successful in opposing 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. 681429 be awarded against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Hearings and Oppositions

   17 November 2020