Sabeeca Marouf v Sonex International (Pvt) Ltd

[2019] ATMO 130

TRADE MARKS ACT 1995

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

ReOpposition by Sabeeca Marouf to application by Sonex International (Pvt) Ltd for removal of trade mark 1065123 (21) – Sonex Kitchenware - in the name of Sabeeca Marouf

Delegate:                   Robert Wilson

Representation:        Opponent: Jogias Patent and Trade Mark Attorneys

Applicant: IP Service International Pty Ltd

Decision:                   2019 ATMO 130

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to ss 92(4)(a) and 92(4)(b) – merger of provisions after three years – no use of trade mark during relevant period – mere appearance of trade mark in invoice issued by distributor not use of trade mark by distributor – trade mark to be removed from Register

Background

1. Sabeeca Marouf (‘the Opponent’) is the registered owner of the following trade mark registration:

Trade Mark Number:

1065123

Filing Date:

15 July 2005

Goods:

Class 21: Kitchen utensils, not of precious metal

(‘the Opponent’s Goods’)­

Trade Mark:

Sonex Kitchenware

(‘the Trade Mark’)

2. On 1 December 2017, Sonex International (Pvt) Ltd (‘the Applicant’) filed an application (‘the Application’) based on both ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The Application sought removal of the Trade Mark from the Register in respect of the Opponent’s Goods. The Opponent’s Goods are all the goods and services for which the Trade Mark is registered. The Application was advertised in the Australian Official Journal of Trade Marks on 14 December 2017. The Opponent filed a notice of opposition to the removal on 2 January 2018 and a Statement of Grounds and Particulars (‘the SGP’) on 8 January 2018. The Applicant filed its notice of intention to defend the Application on 20 February 2018.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) being a Declaration made on 26 April 2018 by the Opponent (‘the Opponent’s declaration’). The Opponent’s declaration included Appendices A, B, C, C1, D, E, F, G and H.

4. The Applicant did not file any evidence.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing: neither party did so. The parties were advised that as no hearing had been requested the matter would be decided on the written record. The parties were given one month to file any written submissions upon which they wished to rely.  The Opponent filed submissions prepared by Jogias Patent and Trade Mark Attorneys. The Applicant did not file any submissions.

6. The matter was allocated to me as a delegate of the Registrar of Trade marks to decide. In making my decision I will consider the material discussed above.

Legal Framework

7. Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

8. The removal application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.

(2)  The application: 

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

…

(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.

9. An application for removal on the ground mentioned in s 92(4)(a) may be made at any time after the filing date in respect of the application for the registration of a trade mark.[1] An application on the ground mentioned in s 92(4)(b) may only be made after a period of 5 years from the filing date of the application.[2] Section 96 makes provision for any person to oppose an application made under s 92 by filing a notice of opposition with the Registrar.

[1] Trade Marks Act 1995 (Cth) s 93(1).

[2] Trade Marks Act 1995 (Cth) s 93(2). Recent amendments made to the Act changed this period; however, the Act before amended applies to this matter.

10. Section 100 specifies that the burden is on the person opposing an application to rebut any allegations made under s 92. In the case of the allegation of non-use under s 92(4)(a) the Opponent needs to establish that, on the day on which the Application was filed, she had the intention to use the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity)[3] in good faith in respect of the Opponent’s 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 her, in good faith, in relation to the Opponent’s Goods, at any time before the period of one month ending on the day on which the Application was filed.

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

11. In the case of the allegation of non-use under s 92(4)(b) the Opponent needs to establish that she, as the registered owner of the impugned trade mark, used the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) in good faith in respect of the Opponent’s Goods and that this use occurred within the three year period ending one month before the Application was filed, in this case being 1 November 2017 (‘the Relevant Period’). Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[4] The demonstrated use must be ‘use in the course of trade’.[5] Alternatively, where there is no use during the Relevant Period the Opponent may rebut the allegation by establishing that the Trade Mark was not used during the Relevant Period because of relevant circumstances that were an obstacle to the use of the trade mark during that period.[6]

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

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

[6] Trade Marks Act 1995 (Cth) s 100(3)(c).

12.     If satisfied that the grounds on which the Application was made have been established—and subject to ss 101(3) and 102—section 101(1) provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any or all of the Opponent’s Goods. Section 101(3) explicitly provides that the discretion may be exercised in the trade mark owner’s favour (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.

Discussion

13.     I confirm that the Application was made after a period of 5 years from the filing date.

Merger of sections 92(4)(a) and (b)

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. However, because of the specifics of these provisions paragraph (a) merges with paragraph (b) once a Trade Mark has been registered for five years.[7] As the Trade Mark has been registered for a period longer than five years as at the date of the Application it is only necessary for me to consider the application for removal under s 92(4)(b).

   [7] Mark Davison, Tracey Berger and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4^th ed, 2008) [70.510].

   Application for removal under s 92(4)(b)

2. The Relevant Period is crucial. It is incumbent upon the Opponent to provide clearly dated evidence showing use by her of the Trade Mark upon, or in physical or other relation to, the Opponent’s Goods[8] within the Relevant Period in order to rebut the allegation of non-use.

   [8] See s 7(4) of the Act.

   16.     The particulars in the SGP are lengthy but in essence state the following:

   ·The Opponent is the sole director of Terra Pacific Developments Pty Ltd (‘TPD’).

   ·The Opponent acquired the Trade Mark from the previous registered owner, Sufyan Bhutta, on or around 18 August 2016. (I note that the letter of assignment on IP Australia’s file was executed on 20 July 2016 and the assignment was recorded in the Register on 11 August 2016.)

   ·Sufyan Bhutta was a director of MB International Pty Ltd (‘MBI’).

   ·MBI was using the Trade Mark up to the time the Opponent acquired it.

   ·TPD has continued to use the Trade Mark.

   17.     There is no assertion by the Opponent that there was relevant obstacle to her use of the Trade Mark during the Relevant Period. That aspect need not be considered further.

   18.     The Opponent’s declaration exhibits an ASIC Current Company Extract dated 19 April 2017 for TPD. The extract lists the Opponent as both the Director and Secretary of TPD.

   Use during the relevant period?

   19.     There is no assertion by the Opponent, and no evidence, that she, personally, used the Trade Mark. Nor is there any assertion, nor evidence, that the previous owner of the Trade Mark, Sufyan Butta, personally used the Trade Mark. Neither is there evidence provided to support the Opponent’s statements that MBI used the trade mark during the Relevant Period. The Opponent has provided statements, supported by evidence, claiming use by TPD. There is no asserted use by any other person. Therefore, it is only the use by TPD that might be relied upon by the Opponent to rebut the allegation of non-use.

   20.     The Opponent’s declaration exhibits a number of documents including invoices dated during the Relevant Period which include ‘SONEX KITCHENWARE’ as items. The invoices include many other items which either do not mention a trade mark or appear to bear some other trade mark, for example: ‘Mitchell Green Chilli Sauce 300g’, ‘Arabic Tawa 14 inch’, ‘chilli stemless 100 GMX 25’, ‘ginger whole’, and ‘Vatika coconut oil 300 ml’. Also exhibited are two letters signed by customers and dated 19 April 2017 and 21 April 2017 who state, in words which vary only slightly between the letters:

   This letter is to confirm that we are buying kitchenware products such as aluminium, non-stick and stainless steel products with the name of ‘Sonex Kitchenware’ from Sabeeca Marouf of Terra Pacific Development Pty Ltd since August 2016.

   I do not take these statements to support a view that the Opponent personally sold the items to the customers but instead that she was acting as an agent for Terra Pacific Development Pty Ltd when the sales were made.

   21.     The exhibited invoices were issued by either ‘Terra Pacific Development (sic) Pty Ltd’ or simply ‘Terra Pacific Development’. Similarly, the exhibited letters refer to purchases made from ‘Terra Pacific Development Pty Ltd’. All of: the SGP, the Opponent’s declaration, the Opponent’s submissions, and the ASIC extract refer to ‘… Developments …’. I note there is also a reference in the Opponent’s declaration to ‘Terra Pacific Pty Ltd’. A search for company names on the ASIC website shows that there is no company called ‘… Development …’ registered; however, there is a company called ‘Terra Pacific Pty Ltd’ registered. I note that TPD is registered at an address in Queensland and that Terra Pacific Pty Ltd is registered at an address in Western Australia. These anomalies have not been addressed by the Opponent. Nevertheless, as will be seen, nothing appears to turn on an explanation of these anomalies. I will assume, for the sake of the discussion that follows, that all of the invoices were issued by TPD and that the letters refer to TPD. I will also put aside the question of whether use by TPD constitutes use by the Opponent as this decision does not turn on the answer to that question either.

   22.     There is little information provided by the Opponent about the nature of TPD’s business. In particular, there is no assertion by the Opponent that TPD is a manufacturer of the Opponent’s Goods (or any goods). Statements in the Opponent’s declaration include:

   ·    ‘[TPD] offers a range of kitchenware products under the name Sonex Kitchenware’;

   ·    ‘All of the products are branded Sonex Kitchenware and are distributed directly [to various states and territories] or to local agents’; and

   ·    ‘Attached is a sample of the invoices and paid receipts for the delivery of the Sonex Kitchenware products to some of the businesses.’

   23.     The above statements, the diverse nature of the goods which appear on the invoices, and the items on the invoices which appear to bear trade marks other than Trade Mark, strongly suggest that TPD is a distributor of goods rather than a manufacturer. Sales by a distributor of goods which bear trade marks will not normally constitute use of those trade marks by the distributor: it is the manufacturer of those goods who will normally be the owner of those trade marks.  There is nothing before me to suggest that the sales of goods by the Opponent which bear the Trade Mark are other than simply sales by a distributor of goods produced by someone else. On that basis, I am not satisfied that the above sales by TPD constitute use of the Trade Mark by TPD. The Opponent has, therefore, failed to rebut the allegation of non-use.

   Registrar’s Discretion

   24.     As indicated above, notwithstanding that the grounds on which the Application was made have been established the Registrar may decide that the Trade Mark should not be removed from the Register. The Opponent has made no submissions which address this issue and there is nothing before me which satisfies me that it is reasonable to exercise the discretion in the Opponent’s favour.

   Decision

   25.     As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that the Trade Mark be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

   Costs

   26. The Removal Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to rebut the allegation of non-use, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

   Robert Wilson
   Hearing Officer
   Trade Marks and Designs Oppositions and Hearings
   28 August 2019