Richard James Pty Ltd v Aktielskabet AF21.November 2001

[2010] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by Richard James Pty Ltd to application under section 92 of the Act by Aktielskabet AF21.November 2001 to remove trade mark numbers 948206(25) - Jack & Jones - in the name of Richard James Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Carmen Champion, instructed by Pizzeys Patent and Trade Mark Attorneys Lawyers Applicant: Hamish Bevan, instructed by F.B. Rice & Co Patent and Trade Mark Attorneys
Decision:	2010 ATMO 49 Section 92 opposition – s92(4)(a) & (b) - opponent established use in good faith – trade mark to remain on register – costs awarded against applicant

Background

1. Richard James Pty Ltd (‘the opponent’) is the registered owner of a trade mark, current details of which appear below:

   Trade mark number:           948206
   Registered from:                  26 March 2003
   Goods:  Class 25: Mens, boys, womens and girls clothing

   Trade mark:  JACK & JONES       

2. On 27 March 2008, Aktielskabet AF21.November 2001 (‘the applicant’) filed an application under section 92(4) )(a) and (b) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade mark from the register.

3. On 15 July 2008 the opponent filed Notice of Opposition to the removal, claiming that its application was made in good faith, use of the trade mark in good faith, or seeking the Registrar’s discretion to retain the trade mark on the Register.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 10 March 2010.  The opponent was represented by Carmen Champion of Counsel, instructed by Pizzeys Patent and Trade Mark Attorneys Lawyers. The applicant was represented by Hamish Bevan of Counsel, instructed by F.B. Rice & Co Patent and Trade Mark Attorneys. Mr Bevan appeared by telephone.

   Evidence

5. The following evidence was filed and served pursuant to legislation:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Matthew Howe	Managing Director of Opponent	11.11.2008, Howe 1	MH-1 to MH-4
Evidence in Answer
Wayne Keith Willis	Solicitor of Applicant’s legal representatives	12.02.2009, Willis	Exhibit 1
Gitte Damgaard Sloth	In-house lawyer for applicant	3.03.2009	Exhibits 1 & 2
Evidence in Reply
Matthew Howe	Managing Director of Opponent	15.06.2009, Howe 2
Mark Dean Jones	Managing Director of Witco Enterprises (Aust) Pty Ltd	16.06.2009

Submissions

1. The opponent submitted that Howe 1 evidenced the opponent’s intention to use the trade mark on the goods the subject of its registration. Further, that it evidences commercial use of the trade mark on such goods within the relevant period.

2. Ms Champion also submitted that the opponent had been in bona fide settlement discussions with the applicant that included the possibility of assigning the trade mark to the applicant. However, these negotiations broke down thus prompting the opponent to commence use of its trade mark.

3. Ms Champion submitted that the trade mark use, while not extensive, was in good faith and sufficient to rebut the non-use contention, Further, the use cannot be described as pretended use, that is use other than in good faith, even if such use was made for the purpose of protecting the registration from a non-use challenge: Electrolux v Electrix Ltd (1953) 70 RPC 127, (1954) 71 RPC 23 (CA UK).

4. For the applicant, Mr Bevan submitted that there was insufficient evidence to support the opponent’s assertion that it intended to use the trade mark at the time it applied for registration. Mr Bevan submitted that other than the bald assertion in Howe 1, there was no supporting evidence.

5. As to the opponent’s claimed use, Mr Bevan submitted that the one order for 270 t-shirts exhibited in Howe 1 can only sensibly be regarded as colourable activity or token use and cannot constitute use in good faith.

6. Mr Bevan submitted that there was no evidence that the goods ordered were imported to Australia or even delivered to the purchaser, or, if so, when. He also pointed to the information in Willis that the purchaser of the 270 t-shirts was operating from premises known as “Mrs Bankrupt’s Dump House”. This, he submitted, further reinforces the submission that the trade mark use was not in good faith.

7. Ms Champion pointed out that Willis did state that there were 10 t-shirts, in two colours, bearing the trade mark displayed for sale in “Mrs Bankrupt’s Dump House”, from which an inference could be drawn that the goods were in fact ordered and purchased in the ordinary course of trade.

   Discussion and Reasoning 

8. Under section 100 of the Act, the onus of establishing use or the intention to use the trade mark lies with the removal opponent. To rebut the allegation of a lack of intention to use the trade mark (under s92(4)(a)), the opponent must either establish actual use at any time one month before the filing of the non-use application (27 March 2008), or a bona fide intention to use the trade mark in Australia at the time of filing the trade mark application (16 March 2003). To discharge the onus for s94(4)(b), the opponent must provide evidence of a bona fide use of the trade mark occurring in the three year period ending one month before the day on which the non-use application was filed. In this case that period ends on 26 February 2008 (“the non-use period”).

9. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark in the relevant period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

10. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

11. It should be noted that mere assertions of use without documentary support are generally given little weight: Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83.

12. The evidence satisfies me of the following:

    ·     that the opponent received an order from Witco Enterprises for various clothing items, including 270 “Jack” t-shirts, on 22 November 2007;

    ·     that the opponent ordered 270 “Jack & Jones” branded t-shirts from a supplier on 1 December 2007, the order requesting delivery on 20 February 2008; and

    ·     that on 16 January 2009 the applicant’s investigators located 10 t-shirts bearing the trade mark amongst clothing, general household goods, toys and furniture displayed for sale at “Mrs Bankrupt’s Dump House”.

13. I am satisfied that there has been genuine commercial use of the trade mark within the non-use period. I do not consider the name of the retail store that ultimately sold the goods militates against bona fide commercial activity, nor does the relatively small size of the order.

    Decision

14. I am satisfied that the opponent has used its trade mark with respect to the goods specified in the registration.  I therefore refuse to remove the trade mark.

    Costs

15. Both parties sought their costs. As the removal applicant has been unsuccessful I award costs against Aktielskabet AF21.November 2001 according to the scale found in Schedule 8 of the Trade Mark Regulations 1995.

    
    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    24 June 2010