Re: Opposition by Wilsford Wines Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Family Wine Estates Pty Ltd to remove trade mark number 611508 (class 33) - Wilsford in the name of..

[2020] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Wilsford Wines Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Family Wine Estates Pty Ltd to remove trade mark number 611508 (class 33) – WILSFORD - in the name of Wilsford Wines Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent: A.P.T. Patent and Trade Mark Attorneys Applicant: Collison & Co., Patent & Trade Mark Attorneys
Decision:	2020 ATMO 77 Trade Marks Act 1995 (Cth) – application under section 92 – use demonstrated in relevant period for some goods – registration to be partially removed.

Background

1. Wilsford Wines Pty Ltd (‘Opponent’) is the owner of the following trade mark registration:

   Registration No:                   611508

   Trade Mark:  WILSFORD   (‘Trade Mark’)

   Registered Goods:                Class 33: Wines, spirits, liqueurs  (‘Goods’)

2. On 24 May 2018, Family Wine Estates Pty Ltd (‘Applicant’) filed an application pursuant to s 92(4)(b) of the Trade Marks Act 1995 Cth (‘Act’) seeking removal of the Trade Mark from the Register.  The removal application was made in respect of all of the Goods; that is complete removal of the Trade Mark from the Register.

3. The Opponent filed a Notice of Intention to Oppose the removal application, together with a Statement of Grounds and Particulars, on 20 June 2018.  The Applicant filed a Notice of Intention to Defend the removal application on 17 July 2018.

4. The parties filed the following declaratory evidence:

   Evidence-in-Support

   Declaration made 21 June 2018 by Richard John Burge (‘RJ Burge’), Director of Wilsford Wines Pty Ltd, together with Annexures RJB-1 to RJB-9.

   Evidence-in-Answer

   Declaration made 30 October 2018 by Trent Burge, Managing Director of Family Wine Estates Pty Ltd.

   Evidence-in-Reply

   Declaration made 27 November 2018 by Richard John Burge with Annexures RJB-9 to RJB-12.

5. The parties were invited to request a hearing. Neither party did so and accordingly both were notified that the matter would be decided on the evidence just described.   The parties were invited to file written submissions; both did so in a timely manner.

6. As a delegate of the Registrar of Trade Marks, I will now decide this matter.

   The legislative provisions

7. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Section 92(4)(b) of the Act provides:

   (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:

   …

   (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.

8. Pursuant to s 100(1)(c) of the Act, the Opponent bears the onus of rebutting an allegation made under s 92(4)(b) which it can do by establishing that it used the Trade Mark in good faith in Australia in relation to the Goods during the three year period ending on 24 April 2018 (‘Relevant Period’).[1]

   [1] Section 100(3) of the Act.

9. ‘Use in good faith’ has a well-established meaning in removal matters. It is ‘real, as opposed to token, use in a commercial sense’.[2]  Provided that 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] For example, one invoice, if genuine, may be sufficient.[4]  The relevant standard of proof is on the balance of probabilities.[5]

   [2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [16].

   [3] Ibid [18].

   [4] Geo W McPherson v Remington (1999) 47 IPR 636.

   [5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

10. In accordance with s 101 of the Act, if the requisite use is not established 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

11. The evidence in support is considered below but, in short, the Opponent alleges that it and its predecessors in business have used the Trade Mark in connection with wines since the 1950s and that the Opponent used it in connection with wine during the Relevant Period.  

12. The evidence in answer is essentially argumentative and is reiterated by the Applicant’s written submissions.  The Applicant alleges that the Opponent has not shown use of the Trade Mark in the Relevant Period.  It submits that “whilst Wilsford Wines Pty Ltd might be the registered entity for ASIC purposes, Burge Family Winemakers is the trading entity for the purposes of the winemaking business.”  It argues that evidence of awards or wine guidebook references to wines bearing the Trade Mark are all referable to the trading entity, Burge Family Winemakers and not the Opponent.  Further, it submits that much of the evidence falls outside the Relevant Period or is not trade mark use.  Furthermore, the Applicant is critical of the Opponent’s evidence in reply which exhibits price lists entitled ‘Wilsford’ Fortified Wines but fails to show use of the Trade Mark in a trading sense because those fortified wines are offered to the public under other names such as Shirappa, L.B. Vintage, Old Barossa, and V.O. Tawny. 

13. My first observation is that there is no evidence of use of the Trade Mark in relation to either spirits or liqueurs.  Further, I am in agreement with the Applicant’s assessment that there is evidence well outside the Relevant Period which is of no assistance to the Opponent and might only provide some reference point for me under s 101(3) should that be necessary.

14. When I limit my consideration to the relevant evidence, I am satisfied that Burge Family Winemakers is the trading name for the Opponent.  I therefore regard use of the Trade Mark by reference to that trading name as use by the registered owner.  In the evidence as presented, the use of the Trade Mark is most commonly shown as follows when it is used for price lists or invoices:

15. The Trade Mark has been used directly on wines labels as the Opponent claims.  In particular RJ Burge 1 states that “WILSFORD labels are applied to four fortified wines and three Port style wines and a Muscat.”  During the Relevant Period use of the Trade Mark is asserted in relation to Muscat.  Reference to the exhibits to RJ Burge 1 shows that to be so.  I am convinced that the use is genuine and is use as a Trade Mark.  Further, I find that the Trade Mark has been more generally in relation to the promotion and sale of wine by the Opponent.  Furthermore, there is independent evidence that the Trade Mark is recognized as designating wines.  

16. I find that the Trade Mark has been used in relation to wines within the Relevant Period.

17. Section 101(3) of the Act provides:

    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.

18. There were no submissions from either side on s 101(3) but in my discretion the Trade Mark could remain on the register for all the Goods were it reasonable so to allow.  On the evidence the Opponent is a winemaker and has never made spirits or liqueurs.  I am not satisfied that it is reasonable to exercise the Registrar’s discretion in favour of allowing those goods to remain on the Register.

    Decision

19. The Opponent has successfully rebutted the allegation under s 92(4)(b) of the Act in relation to wines only. I direct that one month from the date of this decision, the registration be removed from the Register in respect of spirits and liqueurs. If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the court.

    Costs

20. The general rule is that costs follow the event.  As both parties were, strictly speaking, partly successful I decide that each should bear its own costs.

    Debrett Lyons
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    7 May 2020