Re: Opposition by Ross Walmsley to application by Gopro Inc to remove trade mark number 1535525 (25, 32) - GOPRO G - in the name of Ross Walmsley

[2021] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Ross Walmsley to application by Gopro Inc to remove trade mark number 1535525 (25, 32) - GOPRO G - in the name of Ross Walmsley

Delegate:

Louise Tuohy

Representation:

Opponent: Shannon MacDonald of IP Wealth Pty Ltd

Applicant: Natalie Harre and Lucette Kuhn of AJ Park Intellectual Property

Decision:

2021 ATMO 76

Trade Marks Act 1995 (Cth) – section 96 opposition to sections 92(4)(a) and 92(4)(b) application for removal in respect of all goods – section 94(2)(b) pressed - no use in the relevant period – discretion not exercised – registration to be removed.

Background

1. Ross Walmsley (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration number:  1535525

   Trade Mark:  (‘Trade Mark’)

   Filing date:  14 January 2013

   Specification:  Class 25: Clothing; including sports clothing and swimwear; footwear; headgear; belts and gloves

   Class 32: Aerated drinks (non-alcoholic); Aerated drinks containing soya based products; Alcohol free drinks; Aloe vera drinks (non alcoholic); Bottled fruit drinks; Carbonated non-alcoholic drinks; Chocolate flavoured cola drinks; Concentrates for use in the preparation of fruit juice drinks; Concentrates for use in the preparation of soft drinks; De-alcoholised drinks; Energy drinks (not for medical purposes); Frozen concentrated fruit drinks; Fruit based drinks; Fruit drinks; Fruit flavoured non-alcoholic drinks; Isotonic drinks (not for medical purposes); Liquid mixtures for making soft drinks; Low alcohol drinks containing not more than 1.15% (by volume) of alcohol; Mixtures of fruit flavoured drinks; Non-alcoholic carbonated drinks; Non-fermented fruit drinks; Non-medicated mineral drinks; Part frozen slush drinks; Soft drinks; Sports drinks (non-medicated); Vegetable drinks; Vegetable extracts for use in the preparation of non-alcoholic drinks (‘Goods’)

2. Gopro Inc (‘Removal Applicant’) applied on 28 January 2020 under the provisions of ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark in respect of all of the Goods.

3. On 27 March 2020 the Removal Opponent filed a Notice of Intention to Oppose removal of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 27 April 2020.  On 24 July 2020 the Removal Applicant filed a Notice of Intention to Defend the removal application.

4. The Removal Opponent filed the following declaration as evidence in support:

   ·     Declaration by Ross Walmsley, made on 21 October 2020, with Exhibits RW-1 to RW-12 (‘Walmsley declaration’).

5. The Removal Applicant did not file any evidence.

6. I heard the matter in Canberra on 7 July 2021, as delegate of the Register of Trade Marks. Shannon MacDonald of IP Wealth Pty Ltd appeared via video link on behalf of the Removal Opponent. Natalie Harre and Lucette Kuhn of AJ Park Intellectual Property appeared via video link on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

Legal Framework

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use.

2. Section 92(4) of the Act 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.

3. In the removal application the Removal Applicant nominated the grounds under ss 92(4)(a) and 92(4)(b) of the Act. The Removal Applicant pressed the ground under s 92(4)(b) of the Act in its written submissions. For the purposes of s 92(4)(b) the relevant period is the three-year period ending on 28 December 2019 (‘Relevant Period’).

4. Pursuant to s 100 of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent can rebut that allegation by establishing that it used the Trade Mark in good faith in relation to the Goods in the Relevant Period.[1]

   [1] ss 100(2)(a) and 100(3)(a) of the Act.

5. In Woolly Bull Enterprises Pty Ltd v Reynolds,[2] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4]

   [2] [2001] FCA 261, [16].

   [3] Ibid [17].

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

6. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[5]

   [5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

7. In accordance with s 101 of the Act, I may decide to remove the Trade Mark from the Register in respect of any or all of the Goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. In the SGP the Removal Opponent particularises its rebuttal of the s 92(4)(b) ground as follows:

   2. Use or intended use of the Registered Mark (or the Registered Mark with minor alterations or additions that do not substantially affect its identity) on, or in relation to, the Goods

   a. The Opponent has used the Registered Mark (or the Registered Mark with minor additions or alterations that do not substantially affect its identity) on or in relation to the Goods during the relevant three year period, being 28 December 2016 to 28 December 2019 (Relevant Period).

   b. The use of the Registered Mark on or in relation to the Goods during the Relevant Period includes:

   i. an offer to trade in the Goods bearing the Registered Mark or an intention to offer or supply the Goods bearing the Registered Mark;

   ii. activity pursued with the primary intention of deriving a trading profit; and

   iii. not pretend or token use of the Registered Mark.

2. In the first instance, I will address the Removal Applicant’s submissions that the trade mark which appears in the Removal Opponent’s evidence is substantially different in identity to the Trade Mark. The question is whether use of the trade mark that appears in the Exhibits’ constitutes use of the Trade Mark under s 100(3)(a) of the Act. Use of a trade mark is in part described in s 7(1) of the Act which 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]

3. The test to be applied is whether there is substantial identity between the Trade Mark and the trade mark used in the Exhibits. The test for substantial identity requires that the trade marks be considered side by side while having regard to the essential features of the trade marks.[6] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [6] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414.

4. I have reproduced the Trade Mark and the trade mark used in the Exhibits to the Walmsley declaration in the table below:

Trade Mark Trade mark appearing in the Exhibits

1. While there are differences between the respective trade marks, principally the different font, I find that the essential features of the respective trade marks, being the words GOPRO and the letter G in a circle are identical. The alterations are de minimis (the different sizing of the words and font) and thus these alterations do not substantially affect the identity of the Trade Mark.

2. I now turn to the evidence of use of the Trade Mark. Here I must determine whether the Removal Opponent used the Trade Mark in good faith in Australia in relation to the Goods during the Relevant Period.

3. The Removal Opponent’s evidence includes a copy of an email and attachment from Kerry McIntosh of Dynamic Retail Solutions to the Removal Opponent dated 10 October 2017. The email attachment is a tax invoice issued to the ‘Gopro Group’ for consultancy services in relation to a market audit undertaken in August 2017. The Walmsley declaration states that the market audit was commissioned in relation to the development and dissemination of the Goods. However, the audit report has not been produced and there is no reference to the Trade Mark or to the Goods in the email or invoice.

4. In regard to the clothing goods in class 25 the Removal Opponent’s evidence includes a tax invoice issued to the ‘Gopro Group’ by Queensland Quality Embroidery dated 24 March 2016 (prior to the Relevant Period). The tax invoice is for an order of 10 t-shirts and 3 hoodies with the Trade Mark printed or embroidered on the front. However, this clothing sample was purchased prior to the Relevant Period, and there is no evidence the Removal Opponent had promoted these goods or that they were available for sale during the Relevant Period. Nor is there any evidence that the goods would be available in the future.

5. These two tax invoices and the undated evidence displaying carton artwork for the Removal Opponent’s beverage range of goods, are all the name of ‘Gopro Group’. Note 1 to s 100(3) of the Act 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.

6. 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).

7. This makes clear that use of a trade mark by an authorised user will only be taken to be use by the registered proprietor of the trade mark if the latter exercises control over the use of the trade mark during the Relevant Period so as to maintain a connection in the course of trade between the goods and the owner. That can be achieved if, for example, either quality control or financial control is exercised.[7]

   [7] See Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124; Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100; and Lodestar Anstalt v Campari America LLC [2016] FCAFC 92.

8. The Walmsley declaration states that he is the owner and founder of the business trading as ‘Gopro Group’. The Removal Opponent has not explained what form this business takes. For example, if it were a corporation, the business would have separate legal identity to him. If it were a mere business name, then his actions and the business would be the same. I am unable to conclude on this either way. This statement without any explanation or corroborating evidence is insufficient to demonstrate the necessary degree and type of control was exercised during the Relevant Period. I make this finding without hesitation since, for example, even a bare license, reduced to writing has been held to be insufficient to establish effective control.[8] Likewise, that the Removal Opponent had access to ‘Gopro Group’s’ records such as invoices and artwork does not, without more, establish any control was exercised by the Removal Opponent during the Relevant Period. For these reasons, I am unable to be satisfied what this ‘Gopro Group’ is, let alone that it was an authorised user of the Trade Mark for the purposes of the Act. Therefore, I have afforded Exhibits RW-2, RW-7, and RW-11 no weight.

   [8] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92, [184].

9. In regard to the remainder of the evidence in the Removal Opponent’s name and statements in the Walmsley declaration that the Trade Mark was used to refer to his upcoming line of clothing and sports themed beverage products, suggests that the Removal Opponent had not actually commenced trading in the Goods. However, I note that the use of a sign in the course of trade does not require an actual sale of goods. The precedent indicates that preparatory steps couple with ‘an existing intention to offer or supply the goods bearing the mark in trade’[9] may be sufficient to amount to trade mark use. The Removal Opponent must establish that it has objectively committed itself to offering or supplying the Goods bearing the Trade Mark.[10]

   [9] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2) 91984) 156 CLR 414, 433 (‘Mooregate’).

   [10] Buying Systems (Aust) Pty Ltd v Studio SrL (1995) 30 IPR 517, 520; Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, 175.

10. The Removal Opponent’s evidence in relation clothing goods in class 25 are emails detailing contact between the Removal Opponent and a business advisor in July 2018. The email discusses potential licensing opportunities. However, there is no evidence of any correspondence between the parties since the initial contact made in July 2018.

11. The Removal Opponent’s evidence in relation to the beverage goods in class 32 points to the Removal Opponent making initial enquires into the costs involved in manufacture of beverage goods in April 2018. However, these negotiations ended in August 2018 after the manufacturer provided the Removal Opponent with quote for co-packaging the beverage product and a credit application form, in addition to requesting a start date for production. In May 2018 and July 2018, the Removal Opponent made contact with two business advisors in relation to investment and licensing opportunities and was offered an introduction to a group of private investors. However, outside of the Removal Opponent’s initial contact with these advisors, the evidence does not show that the Removal Opponent actually met with potential investors nor that it negotiated with any prospective licensee. While steps to secure the manufacturing of the goods took place over a four-month period, no order had been placed for the beverage goods, since the Removal Opponent’s last contact with the manufacturer in August 2018, when the manufacturer sent through a form to establish a credit trading account and requested a start date for production. Moreover, there is no evidence of any promotion of or purchasers for the beverage goods. Therefore, it appears that the business has not progressed beyond those initial enquiries.

12. The Removal Opponent’s evidence establishes that he probably had an intention to use Trade Mark. However, there is no evidence to demonstrate that the Removal Opponent has reached the stage where he has objectively committed to offering or supplying the Goods bearing the Trade Mark in the course of trade. As such I conclude that the Removal Opponent’s contact with manufacturers and business advisors amounted to nothing more than mere enquiries and the sourcing of samples and add up to nothing greater than the preliminary discussions and negotiations along the lines of Moorgate.

13. The Removal Opponent has not submitted, and there is no evidence before me to suggest, that there was an obstacle to use of the Trade Mark. Accordingly, I find that the Removal Opponent has not used the Trade Mark in relation to the Goods in the Relevant Period.

14. The ground for removal under s 92(4)(b) of the Act has not been rebutted by the Removal Opponent.

15. Section 101(3) of the Act 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.

[…]

1. The Removal Opponent bears the onus of satisfying the Register that the discretion under s 101(3) ought to be exercised in its favour.[11]

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

2. The question to be asked is whether it is reasonable not to remove the Trade Mark in respect of the Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to the Goods.[12]

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

3. The Removal Opponent contends that there is a reputation in the Trade Mark and it would be ‘severely disadvantaged’ should it be removed. This is because ‘considerable business capital’ has purportedly been invested in the promotion and protection of the Trade Mark and the loss of registration would have ‘an extremely negative impact’ on the Removal Opponent’s business. However, none of these contentions are supported by the evidence filed which shows that the Removal Opponent never progressed beyond preliminary discussions about the intended use of the Trade Mark.

4. Further, I am not satisfied that there has been any public promotion of the Trade Mark in relation to the Goods within the relevant period, or a residual reputation resulting from use of the Trade Mark in relation to the Goods outside this time.

5. Whilst acknowledging the broad discretion available under s 101(3) of the Act, having considered all the claims and material before me, and in the absence of any detailed submissions or persuasive evidence from the Removal Opponent in this regard, I am satisfied that it is in the public interest for the Trade Mark to be removed from the Register in respect of all the Goods.

Decision

1. I direct that trade mark registration 1535525 be removed from the Register in respect of all Goods to which the registration applies, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.

Costs

1. The Removal Applicant asked that costs be awarded. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

2 August 2021