Rudducks Pty Ltd v Tangerine Holdings Ltd

[2015] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Rudducks Pty Ltd to application under section 92 of the Act by Tangerine Holdings Ltd to remove trade mark number 1130734 - Vetzplus - in the name of Rudducks Pty Ltd

Delegate:

Deirdre O'Brien

Representation:

Opponent

Not represented

Removal applicant

Written submissions by Burns IP & Commercial

Decision:

2015 ATMO 19

Section 96 opposition to removal – allegation of non-use not rebutted – not reasonable to exercise Registrar’s discretion – trade mark to be removed from Register. Costs awarded against opponent.

Background

1. On 20 August 2012 Tangerine Holdings Ltd (‘the removal applicant’) applied under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade mark hereunder for non-use in respect of all the goods for which it is registered:

   Trade Mark No: 1130734

   Trade Mark:  Vetzplus             (‘the Trade Mark’)

   Filing Date:  22 August 2006

   Owner:   Rudducks Pty Ltd

   Goods:   Class 3

   Flea shampoos; medicated shampoos; sunscreen; toothpaste

   Class 5

   Flea powder flea collars flea skin and coat droplets, fly repellents, multi vitamins pastes and syrups calcium supplements wormers hygiene/sanitary preparations hygiene/sanitary preparations used as training aids for animals pet and vet products pet and vet products used as training aids for animals

2. Removal has been opposed by the owner of the Trade Mark, Rudducks Pty Ltd (‘the opponent’), as provided by section 96 of the Act.

3. The parties are relying on the following declarations as evidence in this proceeding.

4.	Declarant	Position	Date	Exhibits
Evidence in support	Simon Airey	General manager of opponent	20.02.2013	1
Evidence in answer	David Haythornthwaite	Chairman of removal applicant	03.02.2014	DH1 to 12

1. The parties were given an opportunity to be heard in the matter.  The removal applicant requested and paid for a hearing by way of written submission.  The opponent did not respond.

2. I am a delegate of the Registrar of Trade Marks and I am to decide on the basis of the parties’ evidence and the removal applicant’s submissions whether or not to remove registration 1130734 pursuant to section 101(1) of the Act which relevantly provides:

   (1)    Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

3. In Blount Inc v Registrar of Trade Marks[1] Branson J explained what is required for the Registrar to be satisfied of any matter: 

   Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   [1] (1998) 83 FCR 50, 56.

Ground for removal & onus

1. The ground for removal is that contained in paragraph 92(4)(b) of the Act. Section 92 relevantly provides:

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   […]

   (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.

2. Pursuant to section 100 of the Act the opponent has the burden of rebutting the allegation of non-use. Subsection 100(1) relevantly provides:

   (1)  In any proceedings relating to an opposed application, it is for the opponent to rebut:

   […]

   (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.

Evidence in support

1. In his declaration Simon Airey provides the following information about the opponent and the goods in which it trades:

   Rudducks Pty Ltd is a manufacturer, importer and wholesaler of Pet products into the Australian (sic). Rudducks supplies all types of Pet retailers including specialist pet chains eg Petstock and onto major mass merchants such as Coles, Woolworths etc. The Rudducks’ product range is tailor marketed for each market segment and as such whilst the majority of the specialist pet product is supplied under the Rudducks brand, product is also produced and supplied under sub brands owned by Rudducks such as Vetbasix and Li’l Friends. Rudducks purchased the Petzplus business around 7 years ago with a stated intent to utilize this brand as the primary brand for supply of product into the mass merchant market. This was to provide product differentiation between the Rudducks product being sold into Specialist Pet and the Mass Merchant customers.  The Petzplus product does not feature the Rudducks branding or brand name, sharing only the postal address as any link.  After a couple of years trading under Petzplus we reviewed options for expansion of this business and we made a decision to retain the fun factor of the Petzplus branding but to include a more serious offshoot, Vetzplus.

2. I note that trade mark 982981, depicted below, has been registered since 2003 and that while the opponent is recorded as the address for service it is not recorded as the owner of the trade mark.

1. Mr Airey continues:

   The main objective was for Rudducks to manufacture more of the registered products and medicinal type products under this brand [Vetzplus] and to ensure the correct instructions and precautions were followed.  We felt that a similar theme, but different marketing package was required.  We thus registered Vetzplus and began building pre-production product etc for presentation to our mass merchants. The success of our Petzplus branding and the subsequent market success of this product, led us to review the initial investment we had made with Vetzplus and we have now created a new template to take our medicinal and registered product to market again.  It is our intention to launch to market at the next range review season our newly revamped Vetzplus range of products. Please see attached a sequence of artwork demonstrating the original Petzplus designs and our revisions as well as illustrating where we are currently with our new look Vetzplus artwork template (Exhibit 1)

2. Exhibit 1 does not contain all the material described by Mr Airey but is limited to ‘our new look Vetzplus artwork template’ featuring the trade mark depicted on the following page:

1. I note that the unsworn material filed with the opponent’s notice of opposition to removal includes sales figures for the Petzplus product from 2010 to 2013 and the submission that the figures ‘demonstrate in part, the sales potential we have for the Vetzplus products, to sit as companion products on the shelf with our current product offer’.

Evidence in answer

1. David Haythornthwaite declares that the removal applicant is a registered company of England and Wales and that it has been trading in specialist veterinary nutraceutical products since 1995 in the United Kingdom and internationally including in Europe, China, Hong Kong, India, Israel, Malaysia, New Zealand, South Korea, Singapore, Taiwan, Thailand and the United Arab Emirates.

2. Mr Haythornthwaite continues:

   The Non-Use Applicant uses the trade mark VETPLUS in respect of equine, farm and home animals, which are sold directly to veterinary practitioners. Now shown to me and marked Exhibit "DH-8" is a list of products which are sold under the trade mark VETPLUS.  Now shown to me and marked Exhibit "DH-9" are examples of product catalogues and product specifications under the name VETPLUS.

   The Non-Use Applicant currently has registered trade marks in the UK, the European Community, Canada, China, Japan, South Korea and Taiwan.  Now shown to me and marked Exhibit "DH-10" is a list of current registered and pending trade marks for VETPLUS.

   In or around 2011 the Non-Use Applicant attempted to commence sales of products under the VETPLUS trade mark and to promote the goods under the trade mark through trade conferences.  Now shown to me and marked Exhibit "DH-11" is a brochure detailing the Non-Use Applicant's attendance at the AVA Annual Conference in Adelaide, South Australia in May 2011 [Attendee Number 88].

   As a result of it continued promotion and development of high quality products under the VETPLUS trade mark, the Non-Use Applicant has generated significant revenue.  Now shown to me and marked Confidential Exhibit "DH-12" are copies of the last three years director's reports which contain the profit and loss figures of the Non-Use Applicant.

3. I note that the exhibits to Mr Haythornthwaite’s declaration show the trade mark used by the removal applicant to be VetPlus.

Discussion

1. The period in which it is alleged the Trade Mark has not been used is the three years ending on 20 July 2012.[2]  As previously mentioned, the onus is on the opponent to establish that it, the registered owner, used (or authorized the use of) the Trade Mark in that period in relation to the goods for which it is registered.  It is not necessary to show that the Trade Mark was used continuously during that period but the use must be of the Trade Mark or of the Trade Mark with additions and alterations which do not substantially affect its identity.[3]  Furthermore, use of the Trade Mark must be use in good faith.  The latter expression has been taken by the courts to mean genuine commercial use as opposed to token use.[4]

   [2] The application was filed more than 5 years after the filing date as required by subsection 93(2). 

   [3] See sections 100(3)(a) and 7(1) of the Act.

   [4] See E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, 148.

2. Simply stated, the opponent only needs to establish ‘a single bona fide use of the mark in the relevant period’.[5]  The use does not necessarily require the ‘sale and purchase of marked goods’.[6]  It is sufficient if the goods to which the mark had been applied have been offered for sale.[7]

   [5] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, 172 [17].

   [6] Oakley Inc v Franchise China Pty Ltd (2003) 58 IPR 452, 459 [29].

   [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526, 566 [214].

3. The opponent has failed to provide any examples of use of its Trade Mark in the relevant period or indeed since it applied for registration.  It has undertaken preparations in order to sell goods under the Trade Mark including developing the product packaging but there is nothing before me to show that goods so packaged were offered for sale to the retailers which constitute the opponent’s customers.  I find that the opponent has not rebutted the allegation of non-use and that the ground for removal has been established. 

Registrar’s discretion

1. I turn now to the question of whether or not the Trade Mark should be allowed to remain registered.  Section 101(3) 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.

1. In his declaration Mr Airey states that the opponent wants the Trade Mark to remain registered as it intends to ‘offer and supply Australian manufactured product branded under this name into Mass Merchant stores next year.’  He anticipates that Vetzplus goods will be offered for sale by September 2013.

2. The removal applicant submits that:

   The Applicant has a real and genuine commercial interest to trade in goods under the trade mark VETPLUS in Australia.

   The Opponent’s trade mark is preventing the commercial use of VETPLUS by the Applicant and is a serious disruption to the Applicant’s business. The inability to use the trade mark VETPLUS limits the Applicant’s activities in Australia. The Applicant’s commercial activities have been and continue to be hindered by Australian Trade Mark No. 1130734.

1. The Full Federal Court in Austin, Nichols & Co Inc v Lodestar Anstalt considered the exercise of the Registrar’s discretion under section 101(3) and stated that:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion. [8]

   [8] (2012) 202 FCR 490, 498 [38].

2. In a subsequent Federal Court case, Jessup J noted the above finding of the Full Court and made the following observations:

   On the other hand, if there is some detriment to the public interest from allowing the applicant’s mark to remain on the register, it is not, in my view, in size or nature a matter of real, practical, concern. There is neither evidence nor suggestion that any other trader desires to use the mark, or anything similar to it. Neither does any member of the public — consumer or professional — stand to be adversely affected if the mark were to be allowed to remain on the register.[9]

   [9] UCP Gen Pharma AG v Mesoblast Inc (2012) 95 IPR 562, 572 [39].

1. In the present matter there is evidence that another trader ‘desires to use the mark’.  The removal applicant has used a substantially identical trade mark in overseas markets in relation to similar goods to those in class 5 of the opponent’s registration and wishes to expand its business to Australia.  I am not satisfied that it would be reasonable to allow an unused trade mark to remain on the Register when its presence is preventing another genuine trader from conducting its business here using the same trade mark as it uses elsewhere in the world.  I therefore do not intend to exercise the discretion.

Decision

1. I direct that after one month from the date of this decision has expired trade mark 1130734 be removed from the Register in respect of all the goods for which it is registered.  If the Registrar is served with a notice of appeal before removal occurs, I direct that removal not take place until the appeal is discontinued or, in the event of a decision by the court, if removal is contrary to any court order.

Costs

1. The removal applicant seeks its costs. Costs are generally awarded against the unsuccessful party. In this matter the unsuccessful party is the opponent. I therefore award costs against the opponent according to Schedule 8 of the Trade Marks Regulations 1995.

Deirdre O'Brien

Hearing Officer

Trade Marks Hearings

20 February March 2015