Re: Opposition by The Green Vineyards Pty Ltd to an application under section 92 of the Trade Marks Act 1995 by McWilliam's Wines Group Limited for removal of trade mark number 1471963 (33) - Winemaker's Cut in..

[2020] ATMO 118

TRADE MARKS ACT 1995

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

Re:Opposition by The Green Vineyards Pty Ltd to an application under section 92 of the Trade Marks Act 1995 by McWilliam's Wines Group Limited for removal of trade mark number 1471963 (33) – WINEMAKER’S CUT- in the name of The Green Vineyards Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Seneworth
Decision:	2020 ATMO 118 Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (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 2 February 2018 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘Act’) by McWilliam's Wines Group Limited (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks (‘Register’).  The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1471963
Lodgement date	31 January 2012
Goods	Class 33: Wine (‘Registered Goods’)
Owner	The Green Vineyards Pty Ltd
Trade Mark	WINEMAKER’S CUT (‘Trade Mark’)

2.     The Green Vineyards Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 5 April 2018 and a Statement of Grounds and Particulars (‘SGP’) on 7 May 2018.  The Applicant filed a Notice of Intention to Defend on 21 June 2018.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  Each of these will be discussed in more detail below.

   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.  Neither party requested a hearing and on 13 May 2019 a letter was sent to the parties providing them with an opportunity to file any written submissions in this matter.  Neither party filed any submissions. 

   5. 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:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s EIS;

   ·The Applicant’s EIA; and

   ·The Opponent’s EIR.

   The Relevant Provisions

   6. 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)  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.

   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.

   7. 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 2 January 2018 (‘relevant period’).

   8. 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 prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter.

   9. 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.

   10.     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].

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

   12. 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 EIS consists of a declaration made on 27 September 2018 by Sergio Carlei, Director of the Opponent, with several unidentified attachments (‘Carlei 1’).    

3. Carlei 1 conveys the following information:

   ·The Trade Mark is part of a range of wines offered by the Opponent including ‘The Cut’ and ‘Director’s Cut’.  Wines including ‘Winemaker’s Cut’ were introduced into the market after 2014 with the first vintage release being 2010.  They are sold to a limited customer list and are not advertised.  Sales are still continuing.

   ·The Opponent disagrees with having the Trade Mark removed as it would have a detrimental impact on its brand image.

4. Attached to Carlei 1 are a number of attachments including an undated photo showing a 2010 Carlei Estate Winemaker’s Cut Shiraz (‘Winemaker’s Cut 2010’) and an extract from a sales report purporting to show sales of the Winemaker’s Cut 2010 product to 3 businesses at various times during the relevant period, with a total of 151 bottles sold between 4 July 2015 and 1 January 2018.

5. The EIR, being a declaration made on 14 March 2019 by Sergio Carlei, attaches a series of exhibits.  They include:

   ·A letter explaining why the Winemaker’s Cut 2010 product is not listed on the Opponent’s website.

   ·A 2017 Cellar Door Order form prepared by the Opponent showing the Winemaker’s Cut 2010 product for sale;

   ·A pair of documents under the ‘sense of place’ trade name dated as 2015 and 2018 listing the Winemaker’s Cut 2010 product for sale.

   ·A pair of third party wine lists dated 2018 and 2017 listing the Winemaker’s Cut 2010 product for sale.  Relevantly, each of these third parties are listed as purchasers of the Winemaker’s Cut 2010 product in the sales report attached to Carlei 1.  The second of the two wine lists is dated 28 February 2017, within the relevant period.

   Applicant’s Evidence

6. The EIA consists of a declaration of Khajaque Kortian, Principal at Spruson & Ferguson, the Applicant’s former representatives, dated 7 January 2019, including Exhibits KK-1 and KK-2 (‘Kortian Declaration’).  The Kortian Declaration exhibits printouts from the Opponent’s website taken on 4 January 2019 and a Google search conducted by the deponent the same day.  Neither of these searches provide any indication that the Opponent offers any products for sale under the Trade Mark.        

   Discussion

7. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[5] As the Trade Mark had been registered for more than five years as at the date of the Removal Application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the Removal 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.[6] 

   [5] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510]

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

8. In the event that 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 in Australia during the relevant period on the Registered Goods.  In 2014 the Opponent released a wine with the label ‘2010 Carlei Estate Winemaker’s Cut Shiraz’.  The terms ‘2010’ and ‘Shiraz’ are descriptive and it is apparent from the manner of use that ‘Carlei Estate’ and ‘Winemaker’s Cut’ are separate marks, with ‘Carlei Estate’ being the house mark used across the range of wine produced by the Opponent and the Trade Mark being used to refer to the specific line brand (similar to INTEL PENTIUM).  The sale of the Winemaker’s Cut 2010 product would amount to use by the Opponent of the Trade Mark with additions or alterations not substantially affecting its identity.

   21.     The Opponent has annexed a sales report showing sales of 151 bottles of the Winemaker’s Cut 2010 product during the relevant period.  This is supported by evidence that the Opponent was offering the Winemaker’s Cut 2010 product for sale in 2017 through its cellar door and evidence that the purchasers of the Winemaker’s Cut 2010 product in the relevant period, being restaurants/bars, were themselves offering the Winemaker’s Cut 2010 product to the public. 

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

   Decision

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

    Nicholas Smith
    Hearing Officer
    Hearings and Oppositions
    7 July 2020