Re: Opposition by Urmila Investments Pty Ltd Atf Urmila Investments Trust to an application under section 92 of the Trade Marks Act 1995 (Cth) by Freshii One LLC to remove trade mark number 1659029 (class 29, 30 –...

[2020] ATMO 104

TRADE MARKS ACT 1995

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

Re:Opposition by Urmila Investments Pty Ltd Atf Urmila Investments Trust to an application under section 92 of the Trade Marks Act 1995 (Cth) by Freshii One LLC to remove trade mark number 1659029 (class 29, 30 – FRESHII (logo) - in the name of Urmila Investments Pty Ltd Atf Urmila Investments Trust

Delegate:

Jock McDonagh

Representation:

Opponent: Samuel Rees, Molly Flynn and Ania Salehirad of IP Partnersip

Applicant: Leanne Oitmaa, of Watermarks

Decision:

2020 ATMO 104

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) application for removal - Removal Opponent’s evidence does not show intention to use or actual use of the Trade Mark during the relevant period – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 29 March 2018 under s 92(4)(a) of the Trade Marks Act 1995 (‘Act’) by Freshii One LLC (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1659029

Lodgement date

20 November 2014

Goods

Class 29: Salads

Class 30: Sandwiches; Wrap (sandwich)

(‘Registered Goods’)

Owner

Urmila Investments Pty Ltd Atf Urmila Investments Trust

Trade Mark

(‘Trade Mark’)

2.     Urmila Investments Pty Ltd Atf  Urmila Investments Trust, through its predecessor in title Niraj Shekhawatia, (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 30 May 2018 and a Statement of Grounds and Particulars (‘SGP’) on 29 June 2018.  The Applicant filed a Notice of Intention to Defend on 25 July 2018.

3.     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’). This evidence will be discussed in more detail below. 

4.     On 30 January 2020, the Applicant’s legal representatives sought to submit further evidence (‘Further Evidence’) on the basis that the Opponent’s EIR contained substantial new evidence that was not strictly in reply to the Applicant’s EIA. In a covering declaration to the proposed further evidence, the declarant stated that the evidence sought had been provided to the Opponent on 6 December 2019 in relation to other opposition proceedings before the Registrar between the same parties. I will discuss this later in this decision.

5.     I heard the matter in Canberra on 14 February 2020 as a delegate of the Registrar of Trade Marks. Samuel Rees, Molly Flynn and Ania Salehirad of IP Partnership, appeared by video link for the Opponent. Leanne Oitmaa, of Watermark Patent and Trade Mark Attorneys, appeared in person for the Applicant.

The Relevant Provisions

6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. The relevant sections are ss92, 96, 100 and 101.

7. Section 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;        

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. Section 96 of the Act makes provision for any person to oppose an application made under s 92 by filing a Notice of Opposition with the Registrar. Section 100 specifies that the burden is on the person opposing an application to rebut any allegations made under s 92. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[1]

9. In the case of an allegation of non-use under s 92(4)(a) the Opponent needs to establish that, on the day on which the Application was filed, the Opponent had the intention to use the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity)[2] in good faith in respect of the Registered Goods. Alternatively the Opponent must establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used by the Opponent, in good faith, in relation to the Registered Goods, at any time before the period of one month ending on the day on which the Application was filed. Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[3] The demonstrated use must be ‘use in the course of trade’.[4]

10. In accordance with s 101 of the Act, 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.

The Evidence

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

[2] Trade Marks Act 1995 (Cth) s 7.

[3] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645, 660.

[4] Trade Marks Act 1995 (Cth) s 17.

1. The Opponent’s EIS consists of a declaration made on 30 October 2018 by Peter Thelwell, solicitor for the Opponent, with four pages attached (‘Thelwell Declaration’).    

2. The Thelwell Declaration states:

   1.That on the date of lodgement of the application for registration of TM 1659029 the Trade Mark Owner had an intention to use the Trade Mark

   2.That the Trade Mark Owner, as at today’s date, still intends to use TM 1659029 as the brand name for goods which will be released once approval for the sale of same is granted by the authorities.

   3.That examples of labels and packaging, bearing TM 1659029, are attached to this declaration as evidence the intended use of TM 1659029.

3. The Thelwell Declaration does not disclose how Mr Thelwell knows the information contained in the declaration or whether it is as a result of instructions from officers of the Opponent. I do accept that the declaration was made on the basis of instructions from the Opponent.

4. The attached pages to the Thelwell Declaration are undated and there is no reference in the Thelwell Declaration as to the date the proposed labels were devised and nothing to establish that the labels were created in the ordinary course of business prior to the application for removal.

5. Paragraph 2 of the Thelwell Declaration suggests that as at 30 October 2018 the Opponent had not yet received approval to sell the goods subject to the Trade Mark’s registration and therefore the Trade Mark had not yet been used on such goods. This is inconsistent with matters declared in the EIR.

6. The EIA was made on 8 February 2019 by Matthew Corrin, the Chief Executive Officer and founder of the Applicant. It contains Annexures MC-1 to MC-6.

7. Mr Corrin states that he established his business, FRESHII, in Canada in 2005. The business operates takeaway and catering restaurants that feature healthy foods that are environmentally responsible. Since its establishment, the Applicant has expanded to over 300 stores in 17 countries. It has operated under the flowing trade mark since 2009:

8. The EIA, at [11], states that the trade mark featured above is used by the Applicant in Australia for the following goods and services:

   ·     Quick service meals and beverages, including wraps, soups, salads, sandwiches, healthy snacks and the like;

   ·     Services for providing food and drink including restaurant services, food takeaway services and catering; and

   ·     Business services associated with the provision of a franchise structure, including advertising, business management, retail services, franchising, business assistance and business advisory services.

9. In the EIA at [14] to [16], Mr Corrin states that from 2007 the Applicant decided to expand its business into as many countries as possible by way of franchises. This included seeking franchisees in Australia. Ultimately, in 2014 an undisclosed Australian approached the Applicant and eventually signed a master franchisee agreement in 2016.

10. At [17] of the EIA, Mr Corrin advises that there are now seven FRESHII franchises in Western Australia and one in Dandenong, Victoria.

11. The EIR was made on 18 April 2019 by Dr Niraj Shekhawatia who states he is the owner of the Trade Mark, and the EIR includes Annexures A to U. I note that Dr Shekhawatia assigned ownership of the Trade Mark to the Opponent on 12 June 2019.

12. The EIR provides that the declarant is also the director of The Freshii Group Pty Ltd (‘the Company’) that owns seven IGA Supermarkets in Queensland that supply the Registered Goods. ‘THE FRESHII GROUP’, therefore, is the business name for the Opponent’s group of IGA supermarkets.

13. Paragraphs [8] to [14] essentially repudiate any suggestion that the Applicant had any prior use of its trade mark in Australia prior to the lodgement date of the Trade Mark, and that it had sent a trade mark infringement letter to the Applicant in May 2018.

14. In the EIR, Mr Shekhawatia declares that prior to the lodgement of the Trade Mark he had no knowledge of the Applicant’s business, nor of any commercial negotiations taking place in Australia in 2014 between the Applicant any other entity.

15. After stating that ‘THE FRESHII GROUP’ was substantially the same as the Trade Mark, the declarant introduces the various annexures as purported evidence of use of the Trade Mark.

16. I note that ‘THE FRESHII GROUP’ logo (‘the Logo’) is shown thus:

17. In the EIR, I note that Annexures A to F, I, O, S and T provide examples of the Company name and or the Logo used by the Company in relation to ‘supermarket retail services’, but not the Registered Goods.

18. Annexures J, K, L, M and N of the EIR show images of wraps, sandwiches and a salad bar taken on 15 April 2019, but stated to have been used in this way since November 2018.

19. Annexures P, Q and R purports to be screenshots of Freshii Group IGA Supermarket Facebook pages dated 23 January 2019, 14 June 2018, and 29 September 2019, respectively. The text in each post includes the word FRESHII introducing photographs of examples of Relevant Goods, none of which show the Trade Mark. I do note that in Annexure R, there is a price tag visible that only shows an IGA trade mark without the Trade Mark.

20. Annexures P and Q postdate the non-use application and therefore do not evidence use of the Trade Mark for the purposes of the Act. I will discuss Annexure R later.

21. Annexure U provides undated purported samples of proposed packaging, two of which have ‘use by dates’ in August 2008, which is well before the Trade Mark’s application was filed. It does not evidence use of the Trade Mark.

22. Annexure G provides copies of emails showing examples of the Registered Goods, but do not bear the Trade Mark.

23. Annexure H shows a copy of an email displaying the artwork for a chicken bag displaying the Trade Mark. Chicken is not a Registered Good.

24. The Further Evidence is a declaration by a legal practitioner employed by the Applicant’s legal representatives, Leanne Oitmaa. In it she states that she has examined the ‘Edit History’ feature on the Facebook accounts exhibited as Annexures P, Q and R to the EIR. This feature shows previous versions of Facebook pages that have been edited.

25. In the Further Evidence Ms Oitmaa declares that she accessed the ‘Edit History’ feature in each of Annexures P, Q and R. In each case it showed that the pages had been edited on 15 April 2019 to include the word ‘FRESHII’ to the text. In Annexure P, ‘All sandwiches made ..’ was edited to read ‘All Freshii sandwiches made ..’; in Annexure Q,  ‘INTRODUCING OUR NEW SALAD RANGE’ was edited to read ‘INTRODUCING OUR NEW FRESHII GOURMET SALAD RANGE’; and in Annexure R, ‘how about delicious fresh made Gourmet Salads …’ was edited to read ‘how about delicious fresh made Freshii Gourmet Salads …’. I note that the date of editing was three days before the execution of the EIR.

26. The Further Evidence also contains two reports made by an independent investigation service instructed by the Applicant’s legal representatives to make inquiries and investigate the various IGA supermarkets owned by the Opponent.

27. The usual practice in opposition matters is to consider only that evidence that has been filed within the statutory periods allowed. Nevertheless, it is recognised that there may be instances where the failure to consider further evidence is not in the public interest of the register being a true reflection of the marketplace. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. As the Registrar’s delegate I may do so as I am not bound by the rules of evidence, but may be informed on any matter in a way that I reasonably believe to be appropriate: reg 21.15(4) of the Trade Marks Regulations 1995 (‘the Regulations’).

28. I consider that the Further Evidence is directly relevant to the issue of the good faith of the application, the issue of use of the Trade Mark within the Relevant Period, and the credibility of the claims made in the EIR.

29. Further the EIR is clearly not in response to the EIA. Denying the Applicant to file evidence in response to the EIR would be unfair to it.

30. I am satisfied that the Opponent has been aware of the Further Evidence since 6 December 2019 as a result of parallel opposition proceedings between the same parties. I am further satisfied that the Opponent would be aware of the content of its Company Facebook pages tendered in evidence.

31. Therefore, I have decided to take the Further Evidence into account to inform my decision.

    Discussion

    42. As stated above, s 92(4)(a) of the Act provides that a non-use application may be made on the ground that on the day on which the application for registration of the Trade Mark was filed, the Applicant had no intention in good faith to use or to authorise the use, of the Trade Mark in Australia (or to assign it for use) in relation to the Registered Goods to which the non-use application relates and that the Applicant has not used the Trade Mark or used it in good faith, in Australia, in relation to the Registered Goods  at any time before the period of one month ending on the day on which the non-use application was filed (‘Relevant Period’).

    43. Though the onus is, in terms of s 100 of the Act, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[5] Fullagar J observed:

    [5] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].

    […] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

    44.   While this observation was made in proceedings under the Trade Marks Act 1955, where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[6] the Registrar’s delegate Mr Forno said:

    [6] [2000] ATMO 31.

    Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

    45.     Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst[7]:

    [7] [2003] FCA 816 [59]; [2003] AIPC 91-904, [232]-[236].

    I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4) are satisfied. However, in determining whether it is persuaded, the Court is entitled to take into account any absence of evidence of use, as well as any evidence that suggests the applicant for registration had an extraneous intention in applying for registration.

    46.     The EIS asserts that on the date of lodgement of the application, the Opponent had an intention to use the Trade Mark but had not yet received approval to do so. The EIR asserts an intention in good faith to use the Trade Mark on the Registered Goods but also that it has in fact has done so since 2015. The EIS is of limited value since it is sworn by a legal practitioner, who does not have direct knowledge of the intention, does not give evidence of the basis of his instruction, and is contradicted in a number of ways in the EIR.

    47.     The EIR shows an intention to use by the Company, but that is not the Opponent.  In any event the evidence is that the Company intended to use the mark for supermarket services.  Given the clearly manipulated evidence of use of the mark for salads, I am not satisfied that there was ever any intention to use the mark on salads.

32. Considering the EIS and EIR, the bulk of evidence of use within the Relevant Period is use of the Logo by the Company in respect of ‘supermarket services’ and use of the Company name ‘The Freshii Group Pty Ltd’ as a business name. If I accept that the Logo is the Trade Mark with additions or alterations not substantially affecting its identity, it still has not been established that the Opponent has used the Trade Mark within the Relevant Period on Registered Goods.

33. The only use on Registered Goods within the Relevant Period is that shown in Annexure R to the EIR. However, I do not accept this evidence as it has been manipulated.

    50.     Having reviewed the EIS and EIR, I am not satisfied that the Opponent has used the Trade Mark in Australia during the Relevant Period in respect of the Registered Goods. 

34. As the Opponent has not established any evidence of its intention to use or its actual use of the Trade Mark on the Registered Goods during the Relevant Period I find that the Opponent has failed to discharge its onus under s 100(1)(a) or (b) of the Act.

    Registrar’s Discretion

1. In the event that the Opponent fails to rebut any allegation under s 92(4)(a), the Registrar may exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   53.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[8] However, s 101(3) of the Act, as stated in [9] above, provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[9]

   [9] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[10]

   [10] Ibid [171]-[172].

2. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[11] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[12] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[13]

   [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   55.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark.

   ·The registered proprietor of the mark still had a residual reputation in the mark.

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended.

   ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[14]

   [14] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   56. In the present case, the Opponent submitted that I should exercise the discretion not to remove the Trade Mark in respect of the Registered Goods on the basis that the Opponent had intended to use the Trade Mark on the Registered Goods, and in fact the Trade Mark had been used in respect of supermarket services that are closely related to the Registered Goods, such latter use may be taken into account under s 101 (4) of the Act. I note that I have made the factual finding that the Opponent did not intend to use the Trade Mark on the Registered Goods and did not in fact use it hence I will not be considering this as a basis to exercise the discretion.

   57.   I am not persuaded by the Opponent’s submissions that this is an appropriate case to exercise the discretion.  The Opponent has only evidenced use of the Trade Mark by the Company on the Registered Goods following the application to remove it. any evidence of use prior to the Relevant Period having been manipulated evidence.

   58.   I consider that the Opponent never intended to use the Trade Mark, and has not in fact used the Trade Mark. For that reason, I am not prepared to exercise the Registrar’s discretion.

   Decision

   59.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the goods for which it is registered.

3. Accordingly, I direct that registration 1659029 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   61. The Applicant has been successful in relation 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. 1659029 be awarded against the Opponent in accordance with Schedule 8 of the Regulations.

   Jock McDonagh

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   10 June 2020