Recreational Tourism Group Pty Limited v Home-Lee Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Recreational Tourism Group Pty Limited to an application under section 92 of the Trade Marks Act 1995 (Cth) by Home-Lee Limited for partial removal of trade mark number 952515 (25, 39, 43) – X (Figurative) – in the name of Recreational Tourism Group Pty Limited

Delegate: Nicholas Smith

Representation: Opponent: Gorton IP
Applicant: Henry Hughes IP Ltd

Decision: 2023 ATMO 130
Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for partial removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for the goods for which it is registered
Background

This decision is pursuant to an application made on 8 May 2020 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) by Home-Lee Limited (‘Applicant’) for partial removal of the trade mark detailed below from the Register of Trade Marks.

Registration No. 952515

Lodgement date 2 May 2003

Goods and Services
Class 25: Clothing, footwear, headgear
Class 39: Travel agency services; travel arrangement services, including for backpackers; arranging and conducting tours, including for backpackers; tour operator services; arranging transportation of goods and of passengers by road, rail, sea and air; providing information in relation to all the aforementioned services

Class 43: Providing and arranging accommodation, accommodation and reservation services for travellers and backpackers; providing hostel, hotel and motel facilities and services for travellers and backpackers; providing of food and drink, including restaurant and bar services

Owner Recreational Tourism Group Pty Limited (‘Opponent’)

Trade Mark
(‘Trade Mark’)

The goods that are sought to be removed from the above specification are the class 25 goods, namely ‘clothing, footwear, headgear’ (‘Removed Goods’). If the application for removal is successful, the Trade Mark will remain registered for the class 39 and class 43 services for which it is currently registered.
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Opponent has opposed the application to partially remove the Trade Mark, filing a Notice of Intention to Oppose removal on 8 July 2020 and a Statement of Grounds and Particulars (‘SGP’) on 10 August 2020. The Applicant filed a Notice of Intention to Defend on 9 October 2020.
The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’). The Applicant chose not to file evidence in answer. This material will be discussed in more detail below.
Once the time allowed for filing evidence had ended the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 9 June 2022 the Applicant requested a hearing by submissions and paid the appropriate fee. The matter was set down for a hearing on 23 March 2023. In line with usual practice, a letter was sent to the parties on 3 February 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant filed written submissions on 16 March 2023 (‘Applicant’s Submissions’). The Opponent did not file any submissions.
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 and the evidence listed below:
·The application for partial removal;
·The Notice of Intention to Oppose and SGP;
·The Applicant’s Submissions.
EIS
- Declaration by Michelle Gorton, Principal of Gorton IP, the legal representative of the Opponent, dated 9 April 2021 (‘Gorton 1’) together with Annexures A to C. Annexures A to C consist of three declarations made in response to an earlier removal application by a third party, later withdrawn, to remove the Trade Mark (‘Earlier application’). These are:
- Declaration by Michelle Gorton dated 9 April 2021 (‘Gorton 2’) together with Annexures D to E.
The Relevant Provisions
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 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.
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 8 April 2020 (‘relevant period’).
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) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 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.
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 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
In accordance with s 101, I 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 partial removal was made are established.
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, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5]
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[5] Act s 7(3).
The principles of when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]
[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
Discussion
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.[7] As the Trade Mark had been registered for more than five years as at the date of the application, I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[8]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).
[7] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].
[8] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).
If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be partially removed from the Register.
Use of the Trade Mark in the relevant period
The Opponent’s evidence in this matter, in essence, consists of Earlier Gorton, Gorton 2 and the Cooney and Harper declarations.
The Cooney declaration states that the declarant has sold, between February 2013 and July 2016, footwear, caps and t-shirts bearing the Trade Mark, noting that this is outside the relevant period. The Cooney declaration annexes photos of the products allegedly sold, but contains no business records of their sale, such as receipts, or any evidence of the number of sales or advertising. In some cases the Trade Mark is displayed solus, and in others with additional wording such as ‘Base’.
The Harper declaration states that the declarant has sold in 2015 and 2016, footwear, t-shirts and other products bearing the Trade Mark, noting that this is outside the relevant period. The Harper declaration annexes photos of the products allegedly sold, but contains no business records of their sale, such as receipts, or any evidence of the number of sales or advertising. In some cases the Trade Mark is displayed solus, and in others with additional elements.
Earlier Gorton contains the bare statement that the declarant has been informed that New York Road Runners, Inc. has used the Trade Mark for the class 25 goods during the non-use period for the Earlier application, being 19 September 2014 to 19 September 2017. There is no explanation of the reference to New York Road Runners, Inc. or any connection between this entity and the Opponent. This may have been an error and Earlier Gorton intended to refer to the Opponent, the then and current registrant of the Trade Mark, but no explanation has been provided. Nor is there any explanation of who informed Ms Gorton of this statement and whether they are in a position to be able to factually verify the statement made.
Earlier Gorton states that products bearing the Trade Mark are sold through properties located in Australia and annexes material showing clothing and other products bearing the Trade Mark in some form from websites such as general photos showing use from 2014 to 2016, various other photos, invoices from 2014 and 2015 and screenshots from social media accounts. Having reviewed the annexures, all the photos or evidence purportedly showing use of the Trade Mark are either undated, dated from before the relevant period or have a copyright date of 2017, which does not establish whether it is from within the relevant period, which commenced on 8 April 2017, or from before the relevant period.
Gorton 2 makes the broad statement that the Opponent intends to continue to use the Trade Mark in respect of the Removed Goods and there would be confusion in the Australian marketplace should the Trade Mark be removed. It contains annexures from Facebook and other photos purportedly showing use of the Trade Mark for the Removed Goods in the relevant period. These annexures consist of two Facebook pages for the Base Backpackers company that displays a mark similar to the Trade Mark in connection with the accommodation services offered by the Opponent. It also displays a single Instagram photo, dated 21 November 2020, after the relevant period, depicting footwear with the trade mark XBASE on it.
I am unsatisfied that any of the EIS shows use of the Trade Mark for the Removed Goods in the relevant period. All of the documentary evidence in Gorton 1 either pre-dates the relevant period or does not conclusively show that it is from within the relevant period. The broad statement of use in Earlier Gorton refers to a company apparently unconnected with the Opponent and does not explain on what basis the declarant can make such a statement. The material in Gorton 2 either does not show use in respect of the Removed Goods or is from outside the relevant period.
Obstacles to use
The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Removed Goods in the relevant period, pursuant to s 100(3)(c) and, in the interests of completeness, I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Removed Goods.
Registrar’s Discretion
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 in the integrity of the Register will generally demand the removal of an unused trade mark.[9] In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):
[9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[10]
[10] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

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, Gummow, 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] (Lander J).
[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].
In the present case, while the Opponent may have used the Trade Mark for the Removed Goods prior to the relevant period, there is no evidence (such as evidence of sales or significant advertising) that the Trade Mark had acquired any significant reputation, such that removal would give rise to consumer confusion or practically impact on the interests of the Opponent. I note that the Opponent appears to primarily offer accommodation services under the Trade Mark and that the removal of the Removed Goods does not in any way impact on the protection of the Trade Mark for the class 39 and class 43 services for which the Trade Mark remains registered. Furthermore, notwithstanding the statement in Gorton 2, there is no documentary evidence of any significant use or intention to use the Trade Mark after the relevant period. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Removed Goods.
Decision
The Opponent has not established its opposition to partial removal. Accordingly, I direct that registration 952515 be amended one month from the date of this decision as set out below to remove the Removed Goods. It will remain registered for the services listed below. If the Registrar is served with a notice of appeal before then I direct that partial 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.
Class 39: Travel agency services; travel arrangement services, including for backpackers; arranging and conducting tours, including for backpackers; tour operator services; arranging transportation of goods and of passengers by road, rail, sea and air; providing information in relation to all the aforementioned services
Class 43: Providing and arranging accommodation, accommodation and reservation services for travellers and backpackers; providing hostel, hotel and motel facilities and services for travellers and backpackers; providing of food and drink, including restaurant and bar services
Costs
The Applicant has been successful in relation to the application for partial removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
5 September 2023

[2023] ATMO 130

5 September 2023

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Appeal

Costs

Jurisdiction

Remedies

Statutory Construction

Delegate:	Nicholas Smith
Representation:	Opponent: Gorton IP Applicant: Henry Hughes IP Ltd
Decision:	2023 ATMO 130 *Trade Marks Act 1995* (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for partial removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for the goods for which it is registered

Registration No.	952515
Lodgement date	2 May 2003
Goods and Services	Class 25: Clothing, footwear, headgear Class 39: Travel agency services; travel arrangement services, including for backpackers; arranging and conducting tours, including for backpackers; tour operator services; arranging transportation of goods and of passengers by road, rail, sea and air; providing information in relation to all the aforementioned services Class 43: Providing and arranging accommodation, accommodation and reservation services for travellers and backpackers; providing hostel, hotel and motel facilities and services for travellers and backpackers; providing of food and drink, including restaurant and bar services
Owner	Recreational Tourism Group Pty Limited (‘Opponent’)
Trade Mark	(‘Trade Mark’)