Re: Opposition by S & A Restaurant Corp. to an application for removal of trade mark number 376352 by Conquip Holdings Pty Ltd

[1998] ATMO 41

TRADE MARKS ACT 1955

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

Re:      Opposition by S & A Restaurant Corp. to an application for removal of trade mark number 376352 by Conquip Holdings Pty Ltd

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise indicated, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Trade mark details

Trade mark registration number 376352 consists of the word bennigan’s.  Its registration dates from 3 June 1982 and it is registered in the name of S & A Restaurant Corp. of Dallas, Texas in the United States of America (hereinafter S & A Restaurant).  The services covered by the registration are in class 42 and are specified as:

Services relating to restaurants, cafeterias, cafes, bars, taverns and hotels, consisting of preparation and service of foodstuffs and alcoholic and non-alcoholic beverages; retailing services; all being services in this class.

Removal application

On 9 March 1995, Conquip Holdings Pty Ltd of Melbourne (hereinafter Conquip) applied, under the provisions of section 23 of the Trade Marks Act 1955, to have trade mark 376352 removed from the Register.  The grounds for removal are based on paragraph 23(1)(b), and claim that during the period of three years from 9 February 1992 to 9 February 1995, S & A Restaurant did not use the trade mark in Australia, or use the trade mark in good faith in Australia, in relation to the services for which the registration relates.

Opposition

The application is opposed by the registered trade mark owner, S & A Restaurant.  Notice of opposition under Regulation 22 was lodged on 28 June 1995 on grounds stated as follows.

1.The trade mark the subject of registration A376352 (the Trade Mark) was not registered without an intention in good faith on the part of S. & A. Restaurant Corp. (the Proprietor) that it should be used in relation to the services in respect of which it is registered (the Services).

2.The Proprietor does not admit that up to one month before the date of the Section 23 Application for Removal a continuous period of not less than three years has elapsed during which there was no use in good faith by the Proprietor of the Trade Mark in relation to the Services.

3.The Proprietor does not admit that Conquip Holdings Pty Ltd is aggrieved by the existence of Registration A376352 on the Register.

4.The trade mark should not be removed in the exercise of the Registrar’s discretion.

5.It is not in the public interest for the Trade Mark to be removed.

6.The Proprietor has not abandoned the Trade Mark.

On 11 July 1995, Griffith Hack & Co (now Griffith Hack), patent and trade mark attorneys of Melbourne, acting for Conquip, lodged part of the evidence in support of the application and sought an extension of time of one month within which to serve the remainder of the evidence.  The application for extension of time was opposed by Phillips Ormonde & Fitzpatrick, patent and trade mark attorneys of Melbourne, acting for S & A Restaurant. Following a hearing, this extension  was allowed. A further extension was then sought and granted and, on 29 August 1995, the balance of the evidence in support was lodged.

The evidence in support consisted of two statutory declarations provided by:

·     Jacqueline Moutsias  - 10 July 1995 - with exhibit MM1 

·     Helen Batzios  - 22 August 1995 -  with exhibit HB-1.

Attorneys for S & A Restaurant were granted a number of extensions of time within which to lodge evidence in answer.  There was opposition by Conquip to one of these but, subsequent to a hearing, this extension too was allowed. S & A Restaurant’s evidence in answer was lodged on 18 February 1997.  It consists of five declarations provided by:

·     Todd Watson - 30 January 1997 -  with exhibit TW-1

·     Jody H. Armstrong  - 30 January 1997 - with exhibits JA-1 to JA-11

·     Cheree Sotolongo - 30 January 1997 - with exhibits CS-1 to CS-64

·     P. J. Evans - 4 February 1997

·     Graham Leslie Cowin - 5 February 1997 - with exhibits GLC-1 to GLC-7.

Evidence in reply was lodged on 22 December 1997. It is one declaration provided by:

·     Bill Lambropoulos - 19 December 1997 - with exhibit BL-3.

On 3 June 1998, I conducted a hearing in the matter of this removal application. The hearing took place in Melbourne.  Mr John McCormack of Griffith Hack represented the removal applicant Conquip.  Mr Graham Cowin of Phillips Ormonde & Fitzpatrick represented S & A Restaurant, the opponent and the registered proprietor of the trade mark.

The applicant’s standing as a person aggrieved

An application for removal under section 23 of the Act may only be made by a person aggrieved by the existence of the registration. Although Mr Cowin concedes this point, I too must be satisfied of the applicant’s standing. Mr McCormack here relies on information provided in the exhibit to the Lambropoulos declaration. Mr Lambropoulos is a director of Conquip and he has been associated with that company since shortly after its incorporation in 1992. He explains how Conquip devised the name bennigans and subsequently used it in relation to a restaurant operating at 352 Chapel Street, South Yarra, Victoria. The intention was to find a name which was easy to pronounce, easy to remember, and capable of distinguishing the Conquip restaurant from other ‘ethnically-derived’ names which, apparently, abound in the Chapel Street area. A further aim was to find a ‘non-European sounding name’. The company was inspired to use the word shannigans, which it associated with a Touchstone film entitled Cocktail (featuring the American actor Tom Cruise). For some uncertain reason, however, shannigans was not taken up, and Conquip settled instead on bennigans.  It began trading under the name bennigans in early 1994, and filed an application to register bennigans as a trade mark for restaurant and entertainment services on 9 March 1995. On that same day Conquip filed this application to remove S & A Restaurant’s trade mark bennigan’s from the Register. 

Between early 1994 and March 1995, Conquip’s restaurant business in South Yarra, prospered.  From the beginning, the restaurant has been promoted under the name bennigans.  It is described as a Bar & Bistro. It provides entertainment, food and beverages (including alcoholic beverages) and, according to Mr Lambropoulos, offers a selection of some 250 menu and beverage items. Retail sales figures through 1994 and 1995 are substantial, and so are the advertising figures. In short, Mr Lambropoulos’ evidence shows that by early 1995, Conquip had developed a significant business and that business was closely associated with the trade mark bennigans

As per the recognised authorities (Re Powell’s Trade Mark (1894) 11 RPC 4, The Ritz Hotel Ltd v Charles of the RitzLtd (1988) 12 IPR 417 at 454, and Kraft General Foods Inc v Gaines Pet Food Corporation (1995) 31 IPR 439) standing as person aggrieved is established if Conquip shows it has a clear business interest in the removal of the trade mark bennigan’s. Conquip, I have found, has a live business interest in this trade mark and reason to expect that the S & A Restaurant registration could interfere with its business interests. I am therefore satisfied that Conquip has standing as a person aggrieved.

The prima facie case

In an application for removal under sub-section 23(1)(b) of the Act, it is necessary for the applicant to establish a prima facie case showing non-use of the trade mark during the relevant three year period - Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966-67) 116 CLR 254. It is only when the prima facie case has been made out, that the onus shifts to the registered proprietor. Conquip’s evidence for its prima facie case is provided by the Moutsias and Batzios declarations.

Jacqueline Moutsias is a director of Moutsias Management Service Pty Ltd.  She has eight year’s professional experience in conducting investigations regarding use and non-use of trade marks.  Her exhibit MM1 is a letter to Griffith Hack which includes a report on enquiries she made on their behalf into the use of the trade mark bennigan’s in respect of restaurant services and in respect of a range of food and beverage products.  The breadth of this enquiry is presumably designed to accommodate the scope of the registration which, as mentioned above, comprehends services relating to restaurants, cafeterias, cafes, bars, taverns and hotels … preparation of foodstuffs and beverages … and … retailing services.  Her enquiries were made through four separate avenues.

• Yellow Pages and Telecom enquiries

Altogether seven Yellow Pages directories were checked for listings of bennigan’s under a range of headings such as ‘Hotels’, ‘Restaurants’, ‘Cafes’, ‘Take-aways’, ‘Catering’, ‘Hotel Restaurant and Club Supplies’, ‘Liquor Stores’ and ‘Importers’.  The directories searched were as follows:

Melbourne Yellow Pages for        -        -         -    1994    1995

Sydney Yellow Pages for         1991       -     1993    1994
Gold Coast Yellow Pages for    1991       -     1993        -

Enquiries were also made of Telecom directory assistance for listing under the name Bennigan’s in any “major state” other than Melbourne.  The only entry discovered in this search which included the name bennigan’s, was listed in Melbourne under Restaurants and was Bennigans Bar and Bistro, the establishment operated by Conquip. 

These enquiries were not, by any means, a comprehensive coverage of the Australian Yellow Page directories for the three years 9 February 1992 to 9 February 1995. Two directories, Sydney 1991 and Gold Coast 1991, fall outside this time. The balance constitutes a Melbourne search of 14 months,  a Sydney search of two years, and a Gold Coast search of one year. The limits of the geographic coverage are obvious. Mr McCormack argued that the metropolitan areas of Melbourne, Sydney and the Gold Coast represent the bulk of Australia’s restaurants, and that may be so. But as Mr Cowin  pointed out - there is no evidence to back this assertion. Moreover, Telecom directory assistance yields only current phone numbers and does not establish the situation over the relevant three years.  Looked at as a whole, all this evidence shows is that for part of the relevant period, S & A Restaurant had no presence in the two largest Australian state capitals, and no presence on the Gold Coast. To that extent, I am prepared to give this evidence a little weight. 

• Telephone surveys

  Enquiries were made of some 22 liquor and alcoholic beverage suppliers, food products manufacturers and processors, grocery wholesalers, department stores and supermarkets, and food importers. The location of businesses is not stated. The staff who responded to questions are not identified.  Their experience, competence and authority are not recorded.  The questions asked are generally unreported but are merely referred to as ‘our query’. Judging by the preamble and the replies, however, the questions appear to be premised on an assumption that the trade mark bennigan’s would be used on goods.  For example, under the section Nature of Brief set out at the beginning of her report, Ms Moutsias refers to beverages and “a wide range of food as registered in Class 30, Class 29”  … as then to “Class 25” and “Class 16” (clothing and paper products, respectively). She says “this report however does not cover all goods which are covered by the registrations”.  In view of the fact that the trade mark is not registered for goods but for services, I think that this part of the report is of dubious worth.  Responses such as the one from  Dan Murphy Cellars (location unspecified but described by Ms Moutsias as one of the largest retailers of “each type of beverage”) are fairly typical. Ms Moutsias reports their responses as follows:

  they indicated [bennigan’s] was not on their list of currently available products and we were advised that they had never heard of this product as having been available via Dan Murphy’s.

The information on a contact with “Exclusive Food House” reads

A female respondent advised she has never heard of a food product under the name of bennigan’s

Most responses are along this line — that the person contacted does not knew of a beverage, a food product, or a line of products marketed under the name bennigan’s.  Ms Moutsias does mention that some businesses surveyed supply goods to restaurants and of these none admit knowing any business that had the word Bennigan’s included in its name.

Mr Cowin points to the lack of detail supplied in respect of this telephone survey.  He challenges the competence of the declarants and further criticises the evidence on the basis that it does not cover the relevant three year period,  it lacks coverage in geographic terms, and it lacks coverage in terms of the relevant services.  He points out that none of those interviewed were directly involved in restaurant or retail services, or claimed significant expertise in that area.   

I do not think that I can give any weight to the evidence of the telephone surveys.  Although the questions are not in evidence, it seems they canvassed matters peripheral to the main issue and, instead of dealing with the nominated services, they focused instead on goods. Further, the geographic extent of the enquiry is uncertain.  The location of each business is given as a local telephone number … I assume (because it is not otherwise stated) that these are all Victorian numbers. If that is so, this part of the enquiry has been restricted to metropolitan Melbourne.  Then, as Mr Cowin submits, the authority and competence of those interviewed are entirely missing. At best, these people are identified only by a given name — Richard, David, Rebecca.  Over 85% of the respondents, however, are identified as nothing more than a male respondent or  a female respondent. There is no evidence that any person has expertise or knowledge of the restaurant and retail trade in Australia in the three years between 9 February 1992 and 9 February 1995.

I therefore disregard this part of the supporting evidence.

• The United States Consulate General

Ms Moutsias contacted with a United States Consulate General but was not able to obtain any information about S & A Restaurant’s operations. The negative result was apparently due to lack of relevant records and this evidence is of no account.

• Enquiries in the United States of America

Ms Moutsias made telephone contact a Bennigan’s  restaurant in Addison (apparently a suburb of Dallas) in Texas, U.S.A.  Ms Moutsias reports that she spoke to the manager. He said Bennigan’s is a restaurant chain (“of sorts”), that they do not trade in Australia, but had just started overseas franchising. Ms Moutsias does not name her informant, the person said to be the manager of the S & A Restaurant in Addison, nor does she identify the date of this contact but, from her statement that “they had just started overseas franchising approximately three months ago” and the fact that her report is dated 30 June 1995 it seems likely this contact was made outside the relevant period.

Mr Cowin submits that this evidence is inconclusive.  Again he points to the lack of information about the status of the person who claimed to be a manager, and the absence of any evidence establishing that he had either the authority or the credentials to pronounce on S & A Restaurant’s activities in Australia in the relevant period. 

As with the telephone survey, I find that this evidence does not stand up to scrutiny, and I give it no weight.

The second declarant, Ms Helen Batzios, is an articled clerk with Roussos & Dolkas, a firm of solicitors located in Windsor, Victoria.  This firm has acted for Conquip.  Ms Batzios  conducted enquiries with the Australian Securities Commission to determine whether any ACN (Australian Company Number) or ARBN (Australian Registered Body Number) is held in the name of S & A Restaurant, or in the name of an entity with the word Bennigan’s as its name, or as part of its name. She also made enquiries of the Liquor Licensing Commissions in each of the Australian States and the Australian Capital Territory as to whether S & A Restaurant or an entity having the word Bennigan’s as its name, or part of its name, held a current liquor licence.  The report of her enquiries is exhibited as HB-1.

• The Australian Securities Commission search

This search, which was conducted between 3^rd and 10^th August 1995,  revealed no registration for S & A Restaurant. One corporate body having Bennigan’s as part of its name was found.  This was Bennigan’s Restaurants Pty Ltd, a Queensland company unrelated to either S & A Restaurant or Conquip.  Further enquiry revealed that Bennigan’s Restaurants Pty Ltd, does not, at present, operate as a restaurant but uses the name Bennigan’s in connection with dry cleaning, laundries and souvenir shops.

Mr Cowin protests that this evidence has no bearing.  The fact that S & A Restaurant has no Australian Company Number or Australian Registered Body Number does not mean that it is not providing services under the trade mark bennigan’s in Australia … nor does it mean that S & A Restaurant has not authorised other parties to use the mark in respect of the registered services.  Further, Ms Batzios’ enquiries were made in August 1995 and  it is not evident what can be made of the relevance of ACNs and ARBNs  registered in August 1995 to business activities taking place in the three years between of 9 February 1992 and 9 February 1995.

I agree with Mr Cowin that an August 1995 search of ACNs and ARBNs is evidence of facts outside the critical three years. I am not shown how those facts can be relevant,  but I am invited to infer that they point to non-user between February 1992 and February 1995. The search result cannot sustain that inference and I find this evidence is not germane to S & A Restaurant’s use of bennigan’s during the relevant period.

I do not give any weight to the findings from enquiries with the Australian Securities Commission.

• Search of the Liquor Licensing Commissions

Again in August 1995, Ms Batzios made enquiries with the Liquor Licensing Commissions in each State.  The result showed that no licence was then held in the name either of S & A Restaurant or of an entity comprising or consisting of the name Bennigan’s.

Mr Cowin criticises this evidence again on the basis that it does not show what happened throughout the relevant period. There is nothing, he says, to explain the connection between Liquor Licensing Commission records current in August 1995, a business activities over the years February 1992 to February 1995.

Again, I agree with Mr Cowin’s point, and I must comment that it is less than helpful for material of this kind to be put forward without any indication of the provisions and responsibility imposed by the relevant legislation.  Nevertheless, I do not suppose that all licensing rights extant at 9 February 1995 expired prior to August 1995,  and I am prepared to accept this enquiry as indicating that, for a part of the relevant period, S & A Restaurant did not hold an Australian liquor licence. 

Having said that, however, the criticisms relating to the Australian Securities Commission data apply equally to this evidence.  Further, even if S & A Restaurant held no liquor licence during any of the relevant three years, they might still have provided restaurant and retail services through franchising or other arrangements, or have provided some services (for example, restaurant, cafeteria and cafe services) without the need of such a licence.  Altogether I am prepared to give this evidence nothing more than minimal weight.

The criteria which the evidence for the prima facie case is required to meet are set down by Justice Windeyer - Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966-1967) 116 CLR 254 at 258 - 259

It is for an applicant who seeks to have the mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods  for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user.  But if evidence be given for the respondent to controvert the applicant's prima facie case, then when all the evidence is complete the question is still, has the applicant proved his case?  I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it.

Conquip’s prima facie evidence depends on the declarations by Ms Moutsias and Ms Batzios. They themselves are not persons who, by reason of their connection with the restaurant and retail trade, might be expected to have seen or heard of bennigan’s  if it were used as a trade mark in relation to restaurant and retail services. Ms Moutsias has sworn that she interviewed persons with the relevant connection who responded that they had not seen or heard of the bennigan’s trade mark at any time during the relevant period.  That evidence, I have found, however, is seriously flawed.  The persons are not established to be persons who might be expected, by reason of their connections, to have knowledge of restaurant and retail services. As I have mentioned,  no person is identified, and neither their competence nor their authority is recorded. The records of the interviews are not in evidence and I have been left in doubt as to whether the questions asked referred to use of the trade mark bennigan’s on restaurant and retail services.  Furthermore, none of the respondents relate their evidence to the relevant period.

Considering the applicant’s evidence against Justice Windeyer’s concession that slight evidence may suffice I turn back to my findings against the various elements of Ms Moutsias’ report.  The Yellow Pages and Telecom investigation, I have given some small weight.  The results of the telephone survey I have dismissed.   I give no weight to the evidence of contact with a United States Consulate General and I have found that evidence based on a phone call to a “manager” in S & A Restaurant’s business in Texas cannot bear any weight. I have given no weight to the evidence based on the Australian Securities Commission search and only minimal weight to material disclosed in a search of the Liquor Licensing authorities.

The question then, subject to His Honour’s finding that a removal applicant carries the ultimate burden of proving non-use,  is whether the evidence disclosed in the search of the Yellow Pages and Telecom investigation, and the possible inference derived from the Liquor Licensing authorities,  measure up to the required slight  but necessary prima facie evidence. The evidence which I am prepared to accept shows that in three locations (albeit significant locations) and for various disconnected years within the critical three years, no restaurant (apart from the restaurant run by Conquip) was located under the name bennigan’s.  I have also accepted that in August 1995, S & A Restaurant had no liquor licence - and I am prepared to infer that for some part of the relevant three years, that is likely to have held true.  This evidence, however, leaves wide open the question of use of the trade mark, for the whole of the relevant period, in major population areas including Adelaide, Brisbane, Hobart, Perth  and Canberra. It also leaves open use of bennigan’s in respect of non-licensed restaurants and cafes.  Moreover, no person identified as having the requisite knowledge has been asked for a statement. Restaurant surveys are not uncommon — they are regularly conducted by newspaper and other media services.  Restaurants compete for awards. Restaurant guide books are published.  Persons in this line of business may well be qualified as persons who, by reason of their connection with restaurant services, might be expected to have seen or heard of the trade mark bennigan’s if it were used as a trade mark in connection with restaurant services. But no sworn evidence from a person with relevant connections to the restaurant trade  has been supplied as part of the applicant’s case.

In light of Justice Windeyer’s directives, I do not consider that Conquip has met the basic requirement of showing, through evidence, a prima facie case.  I am not prepared to hold that the Moutsias and Batzios declarations together add up to the slight evidence required. Conquip’s evidence in reply provided no further evidence to support the case of non-use.  It is,  apart from the exhibit I mentioned above which outlines Conquip’s history,  little more than Mr Lambropoulos’ opinion of the S & A Restaurant’s evidence in answer.  I find that the prima facie case is not established, and with its evidence complete,  the removal  applicant has still not established a case to be answered.   Hence, there is no requirement for me to consider the opponent’s case.

I refuse this application to remove trade mark 376352.

Costs were sought.  In the circumstance they must follow the cause   Accordingly I award them to the opponent, S & A Restaurant.

Helen R. Hardie
Deputy Registrar

25 August 1998