Re: Opposition by Schutz-Werke GmbH & Co. KG. to an application in the name of Forecast & Trading Pty Limited to remove trade marks numbers 423095(25) and 490301(25)
[1998] ATMO 55
•13 November 1998
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Schutz-Werke GmbH & Co. KG. to an application in the name of Forecast & Trading Pty Limited to remove trade marks numbers 423095(25) and 490301(25)
Trade mark registrations 423095 and 490301 stand registered in the name of Schutz-Werke GmbH & Co. KG., a company organized under the laws of the Federal Republic of Germany, located in Selters, Federal Republic of Germany (hereafter Schutz-Werke). Both trade marks are registered in respect of clothing in class 25.
423095 is the device mark shown below. It is registered from 1 March 1985.
490301 is simply the word fanatic. Its registration dates from 30 June 1988.
On 13 February 1997, Forecast & Trading Pty Limited of Chipping Norton, New South Wales, (hereafter Forecast & Trading) applied under the provisions of section 92 of the Trade Marks Act 1995 to remove both trade marks from the Register. The removal applications were filed on behalf of Forecast & Trading by the Sydney attorney firm of Anderson-Taylor & Associates. Forecast & Trading is stated to be aggrieved by the registration of these two trade marks. It applies under the terms of paragraphs 92(4)(a) and 92(4)(b) of the Act, to have both marks removed for all of the goods for which they are registered. Accompanying the applications is a declaration by Frans Wyling (11 February 1997), the managing director of Forecast & Trading (I refer to this as the 1st Wyling declaration).
The removal applications were advertised in the Australian Official Journal of Trade Marks of 15 May 1997 and, within the time allowed by the provisions of regulation 9.3, the Melbourne attorney firm of Phillips Ormonde & Fitzpatrick, acting on behalf of Schutz-Werke, the trade mark owner, filed notices opposing the removals. The grounds of opposition are:
(a) The section 92 applicant is not a person aggrieved within the meaning of section 92(1) of the Trade Marks Act 1995.
(b) The application is not in accordance with the regulations.
(c) The declaration in support of the application fails to support either of the grounds referred to in subsection 92(4) of the Act.
(d) The trade mark (or a trade mark with additions or alterations not substantially affecting the identity of the trade mark) has been used by the Registered Proprietor or an authorised user in respect of the relevant goods, within the period of three years up to one month prior to the date of the application for removal.
(e) Further, and in the alternative, in the circumstances the Registrar should exercise his discretion to refuse to remove the trade mark from the Register in respect of the relevant goods.
Evidence from both sides followed, and in July 1998, Forecast & Trading requested that the matter be set down for hearing. I then conducted that hearing in Canberra on 14 September 1998. Mr Russell Waters of Phillips Ormonde & Fitzpatrick appeared on behalf of the opponent. Mr Michael A. Taylor of Anderson-Taylor & Associates appeared on behalf of the applicant.
The evidence
The following six declarations were served in evidence.
Schutz-Werke's evidence supporting opposition to the removal application
Jürgen Hübbe - attorney and legal counsel for Schutz-Werke.. 7 November 1997
Steven John Hall - a manager of Arthur H. Hall Pty Ltd ......... 5 December 1997
Forecast & Trading's evidence answering the opposition
Hugh Williams - of Kooyong, Victoria..................................... 25 February 1998
Walter Sadlo - of Bringelly, New South Wales ............................. 2 March 1998Frans Wyling - of Chipping Norton, New South Wales.................. 6 March 1998
(I refer to this as the 2nd Wyling declaration)
Schutz-Werke's evidence in reply
Russell John Waters - attorney, Phillips Ormonde & Fitzpatrick....... 9 June 1998
The removal application
The law
Section 92 of the Trade Marks Act 1995 provides that an aggrieved person may apply, in accordance with the Regulations, to have a trade mark removed from the Register. As with the Trade Marks Act 1955, the Trade Marks Act 1995, maintains aggrieved status as a threshold requirement, and the Registrar, before allowing an application to proceed, must be satisfied that a removal applicant has this standing.
Regulation 9.1 requires the applicant to accompany the application with a declaration stating that an enquiry into the use of the trade mark has been conducted and setting out the finding of that enquiry. There is no requirement for the applicant to file any other evidence to support the removal application unless and until the removal application is opposed.
If section 92 and regulation 9.1 are satisfied, and if there is no opposition, then section 97 obliges the Registrar to remove the mark. On an unopposed removal application, so long as it is clearly specified that the applicant is aggrieved, and so long as the application is in the prescribed form, the Registrar is not likely to require anything further.
As I found in the beltrami case - Application by Figgins Holdings Pty Ltd for removal of trade mark number 460449 - (as yet unpublished);
… the claim to standing is all that is required under the removal provisions of the Trade Marks Act 1995. In contrast to the Trade Marks Act 1955, the removal applicant is not required to lodge any evidence in support of the removal application. Once there is an opposition to the application for removal, the onus is on the opponent to rebut an allegation that the trade mark has not been used by the registered owner - and to that purpose there is provision for the lodgment of evidence. If the opponent challenges the applicant's standing, the applicant has an opportunity to provide evidence to support its claim in evidence in answer. If the removal application is made in accordance with the Regulations, and there is no opposition, then as explained in the Trade Marks Office Draft Manual of Office Practice and Procedure, the trade mark registration will be removed without further enquiry.
The case law
While the question of whether a removal application under the Trade Marks Act1995 is in accordance with the Regulations has not yet been addressed by the court, the meaning of aggrieved person has had a great deal of consideration. In 1996, in an action concerning removal of trade marks from the Register, the question of what establishes aggrieved status was considered by the Full Bench of the Federal Court - Kraft Foods Inc v Gains Pet Food Corp, (1996) 34 IPR 198. In that case, the removal applicant, Kraft,
… bore the burden of establishing the facts necessary to show that it was a person aggrieved .
Justice Sackville says (p209 l18):
It was perfectly clear from an early stage of the proceedings that Kraft’s standing to claim relief was an issue. Yet in substance, the only evidence adduced by Kraft to support its claim to be a person aggrieved was proof that it had filed the application for registration of the gains mark on 22 June 1989 (the day before the removal application was filed) and that it had subsequently lodged a statement of user.
The Court there found that (p209 l43):
The filing of the application, of itself, does not necessarily require an inference to be drawn that the applicant intended to use the mark. If the application had been accompanied by a clear statement of such an intention, the position is likely to have been different. But Kraft’s application was accompanied by a statement of user that carried no probative weight in the present proceedings on the issue of intention to use. The evidentiary significance of the filing of Kraft’s application must be assessed by reference to the totality of the evidence (or lack of it) …
Further, at p210 l48:
.. the mere fact that a person has filed an application for registration of a trade mark, without more, is insufficient to establish that the person is appreciably disadvantaged, in a legal or practical sense, by the continued registration of an identical or deceptively similar mark. The position is likely to be different if the applicant for registration is accompanied by material that clearly demonstrates an intention to use the mark. If the application and supporting documentation are tendered in evidence in the removal proceedings, the inference would be (in the absence of further evidence) that the applicant for removal has a sufficient interest in the proceedings to be a person aggrieved. Of course, it is also open to the applicant in the removal proceedings to adduce independent evidence to establish that it had used or intended to use the trade mark at the relevant time. But the fact of filing the application, of itself, does not establish that the applicant is a person aggrieved ...
Standing
Here, as I have mentioned, Forecast & Trading states, in its removal applications, that it is aggrieved by the registration of trade mark 423095 and 490301, and Mr Wyling declares that the Forecast & Trading trade mark 702875, fanatic gear, faced an objection based on the citation of trade mark 423095.
The first ground of this opposition is that Forecast & Trading is not a person aggrieved within the meaning of section 92(1) of the Trade Marks Act 1995.
Mr Waters’ support of this ground focuses on the Kraft case. He points to the full Federal Court approval of the appeal judgment, Kraft General Foods Inc v Gains Pet Foods Corporation case, (1995) 31 IPR 439, and to its findings first, that a pending trade mark does not in itself demonstrate that the applicant holds a real business interest in that mark; and second, that the continued existence of a mark which is deceptively similar to the pending application, cannot be assumed, necessarily, to be adverse to that person’s business interest. The Court findings, he says, require that a removal applicant should be prepared to adduce evidence to show that a real commercial interest is at stake.
Schutz-Werke, says Mr Waters, has challenged Forecast & Trading, and Forecast & Trading has not responded. In the circumstances, he says, Forecast & Trading has not verified its standing.
Mr Taylor argues that the citing of 423095 against Forecast & Trading’s pending application 702875 is sufficient to show that it does have a commercial interest in achieving registration of its mark, and therefore a real business interest in the removal of 423095 and 490301. He indicated that Forecast & Trading could not produce evidence to show any use, because employment of the trade mark had been delayed in order to avoid provoking an infringement action. The filing and status of the fanatic gear application, he said, gave good reason for me to find that Forecast & Trading had standing as a person aggrieved.
Forecast & Trading evidence of its grievance ends with the 1st Wyling declaration. Its evidence in answer does not refer to standing or to the first ground of opposition. Nor does it address the issues raised in the Kraft case. It comprises the Williams, Sadlo and Wyling (2nd) declarations. Mr Williams is a member of the public who merely declares to an attempt to buy fanatic clothing. Mr Sadlo is a German-speaker who simply confirms his competence to translate German into English. Mr Wyling's 2nd declaration puts into evidence a number of Schutz-Werke price lists and brochures. There is nothing here to confirm Forecast & Trading’s claim that its impeded trade mark application represents a true business interest and that such interest is, or will be, adversely affected by the continued registration of trade marks numbers 423095 and 490301. There were no details of Forecast & Trading’s trade mark application, and no account of any commercial interest which that application may have represented. There was no evidence of a statement from any of Forecast & Trading’s executives or officers to establish that, at the date on which this removal application was filed, Forecast & Trading had a firm and fixed intent to use that trade mark in respect of clothing.
Mr Taylor submitted that the Registrar was not required to follow the Kraft case, and should not, in this instance, apply the findings of the Federal Court. He said that I should look to public policy and not allow unused trade marks to remain on the Register.
I note that at first instance, in the Kraft General Foods Inc v Gains Pet Foods Corporation case, (1995) 31 IPR 439, Kraft declined an opportunity to demonstrate that a genuine commercial interest lay behind its trade mark applications. The Court, I understand, allowed that opportunity to ensure that the removal applicant was not prejudiced by being caught unprepared. In the present case I cannot think that the challenge to standing, or the reliance on the Kraft case, could be judged a surprise, much less an ambush, and indeed Mr Taylor made no such claim. The objection to standing is plainly stated in Schutz-Werke’s notice of opposition. The Kraft case has stood as precedent for some three years and, moreover, has been considered by the Registrar in a number of published cases, including those cited by Mr Waters - Duco Magic (Australia) Pty Ltd v ICI Australia Operations Pty Ltd, (1998) AIPC 91-433; and Joose Apparel Pty Ltd v Great White Shark Enterprises Inc (1998) 41 IPR 208. Forecast & Trading had ample opportunity to respond to this ground in its evidence in answer. Standing is not equivalent to reputation, and the fact that Forecast & Trading delayed use may not have been critical. But it is clear from the Kraft case that a challenge to standing must be answered with probative evidence which establishes (as per Justice Sackville) that the removal applicant is appreciably disadvantaged, in a legal or practical sense, by the continued registration of those trade marks subject to removal. To this end, and assuming that it was available, Forecast & Trading could have provided evidence of the commercial interest which led to its filing of 702875. Again, subject to availability, it could have filed evidence of the use it intended for that mark, and of the adverse consequences it foresaw which would be brought about by the continued registration of 423095 and 490301. It did not do this, but instead relied on its removal application documents, and the fact of its own impeded trade mark application. In view of Schutz-Werke’s challenge to its standing and the directives of the Kraft case, that is not enough to uphold its claim.
I cannot agree with Mr Taylor's submission that Kraft Foods Inc v Gains Pet Food Corp. should not be followed. While there is clearly a public interest in clearing the Register of unused marks, the removal provisions have been framed to guard against vexatious applicants, and if standing is brought into question, there is, at the outset, a clear onus which the applicant must discharge.
I find that Forecast & Trading has failed to establish that it is a person aggrieved. It therefore has no standing on which to bring a removal application. Schutz-Werke has no case to answer.
Approved form
I will briefly deal here with the second ground - that is, that the removal applications were not in accordance with the regulations.
Mr Waters here took issue with the format of both the removal applications and the Wyling declaration. He protested that the words used were little more than a mirror of the sub-sections of the Act and this, he asserted, fell short of requirements. I do not agree. In contrast to the Trade Marks Act 1955, the removal provisions of the Trade Marks Act 1995 do not require the applicant to establish a prima facie case. In would run counter to that policy (and to the requirements) of the Trade Marks Act 1995 to require applicants to go beyond straightforward compliance with the terms of the provisions. Forecast & Trading’s applications and accompanying declarations comply with the provisions and I decline to find that they are not in accordance with the regulations.
Opposition to the removal application
Having determined that the removal applicant, Forecast & Trading, has no standing, it is not necessary for me to come to a decision on the evidence provided to show whether or not Schutz-Werke has used its trade mark either since filing - paragraph 92(4)(a), or within the three years from 13 January 1994 to 13 January 1997 - paragraph 92(4)(b). However, for the sake of completeness, and in order to deal adequately with matter relating to costs, I will briefly comment on the Schutz-Werke evidence put to establish use of these marks.
The evidence in chief is the Hübbe declaration, with its exhibited 34 pages of invoices, all of them written in German. The invoices are exhibited with a statement from Dr Hübbe, clause 2, that from commencement in 1987 Schutz-Werke
… sold clothing world wide under the trade mark fanatic . These sales have included sales in Australia. Now produced and shown to me and marked Exhibit 1 are copies of eleven invoices issued between February 14 1996, and December 16, 1996, which detail shipment of product[s] bearing the fanatic trade mark, …
Dr Hübbe provides no translation of these invoices.
Mr Taylor drew my attention to the Sadlo declaration where, under Exhibit B, Mr Sadlo provides translations of the Hübbe invoices. These translations shows no sales of any clothing items. They show sales of bags, sail-board and snow-board equipment, key rings, stickers and brochures, but, said Mr Taylor, no sales of clothing. Mr Waters, I believe tacitly agrees with this although he says items described as flags, image book and stickers would be for the purpose of promoting clothing. The Williams declaration ¾ also part of Forecast & Trading’s evidence in answer ¾ supports the view that clothing has not been included in the range of fanatic products marketed by Schutz-Werke in Australia. Mr Williams, in 1996, attempted to purchase garments from Schutz-Werke. His correspondence went unanswered. Mr Taylor submits that this was because Schutz-Werke had no fanatic clothing available for sale in Australia and, as indicated by the fact that Mr Williams’ correspondence went unanswered, Schutz-Werke had no interest in selling clothing in this country.
The Hall declaration makes up the balance of the Schutz-Werke evidence supporting its opposition to the removal applications. Mr Hall exhibits promotional material which shows clothing under a fanatic trade mark, but this material does not give any specific information on which goods are available for sale, and where they may be bought. This material is not material evidence of either sales, or offers to trade, in clothes.
Last, in the Schutz-Werke evidence in reply, is the Waters declaration. Mr Waters here cites the reference in the Sadlo translations, to an image book. One of these books is exhibited. In the main it is a promotion of sporting equipment, but the models are sometimes to be perceived wearing clothing with a fanatic label. As with the Hill exhibit, this material does not give any information on which goods are available for sale, and where they may be bought and is evidence neither of sales nor of offers of sales.
In sum,
§ Dr Hübbe indicates that the invoices he exhibits pertain to the sale of clothing but Mr Sadlo’s translation shows they relate to sporting equipment and not to clothing.
§ The Hall declaration fails to put forward any material evidence of sales, or offers for sale, of clothing under the fanatic label in Australia.
§ The Waters declaration also fails to put forward any material evidence of sales, or offers for sale, of clothing under the fanatic label in Australia.
Having found that the opponent, Schutz-Werke, has no case to answer, I do not intend to deal with this evidence in any further detail. However, I will say that I do not think that the evidence filed by Schutz-Werke would have succeeded in showing use, or circumstances sufficient for the purposes of sections 100(3).
There is, however, one further issue which Mr Taylor raised in respect of the Hübbe declaration. He protested that the Dr Hübbe’s exhibited invoices, being in German, were difficult for Forecast & Trading to deal with. Forecast & Trading needed this information in English. To that end a translation had to be acquired and this involved expense and inconvenience. Moreover, Mr Taylor submitted, having been filed in German, without translation, this evidence was held out to be evidence of sales of clothing. On translation, it was found not to be so.
I agree with Mr Taylor that the evidence filed under the Hübbe declaration is open to considerable criticism. Evidence must be in English (reg 21.18) Otherwise it must be accompanied by a certified translation. Failure to comply with that requirement has here occasioned both expense and inconvenience for the applicant and, I fear, has brought about a situation where the candour of Dr Hübbe is brought into question.
Decision on the application
My decision is that the applicant, Forecast & Trading, has failed to substantiate its claim to be a person aggrieved and on that finding, the removal application must fail.
Costs
On the question of costs, however, I take account of the opponent’s failure to comply with regulation 21.18 and the fact that this caused expense and inconvenience to the removal applicant, and raised doubts as to the weight of the Hübbe evidence. I also note, that, had there been a case to answer, the evidence of use would not have been sufficient for the purposes of section 100(3). I make no award to the opponent, but, in view of the way in which the evidence in support was served on the applicant, and taking into account the substance of that evidence, I consider it appropriate for the applicant Forecast & Trading, to have some of its costs and accordingly I award them two thirds of the costs allowed under Schedule 8 of the Regulations.
Helen R. Hardie
Deputy Registrar
13 November 1998