Saputo Dairy Australia Pty Ltd v Leprino Foods Company

[2022] ATMO 150

TRADE MARKS ACT 1995

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

Re:Opposition by Saputo Dairy Australia Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Leprino Foods Company for removal of trade mark number 1171772 (5, 29) – ASCEND – in the name of Saputo Dairy Australia Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Clayton Utz Applicant: Banki Haddock Fiora
Decision:	2022 ATMO 150 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for 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

Background

1. This decision is pursuant to an application made on 11 June 2020 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Leprino Foods Company (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1171772
Lodgement date	17 April 2007
Goods	Class 5: Dairy-based products for human consumption in this class; dietetic substances in this class; dietary food supplements; powders for dietary and/or medical purposes; vitamin and mineral supplements and preparations; muscle-building food supplements Class 28: Dairy-based products in this class; dairy-based sports nutrition products; dairy-based powders; dairy-based powders with added protein; dairy-based beverages; protein-based powders for human consumption (‘Registered Goods’)
Owner	Saputo Dairy Australia Pty Ltd
Trade Mark	ASCEND (‘Trade Mark’)

1. Saputo Dairy Australia Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 12 August 2020 and a Statement of Grounds and Particulars (‘SGP’) on 14 September 2020.  The Applicant filed a Notice of Intention to Defend on 14 December 2020.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  This material will be discussed in more detail below.  The Applicant did not file any evidence in reply.  

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 5 November 2021 the Applicant requested a hearing by submissions and paid the appropriate fee.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 30 March 2022 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 26 April 2022 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

4. 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 Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   Evidence in Support

   • Declaration by Mike Murray, General Manager Marketing of the Opponent, dated 16 Mach 2021 (‘Murray Declaration’) together with Exhibits 1-16

5. The Murray declaration at paragraph 3 states that ‘the business, financial and marketing information contained in this declaration and Exhibits…’ are confidential.  Such pro forma confidentiality claims are vague and clearly incorrect since the Exhibits include publicly available information such as the public use of the Trade Mark.  I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by the Opponent not specifically identifying that information as sensitive.  I have not disclosed information contained in exhibits that are specifically marked as confidential.

   The Relevant Provisions

6. 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 of the Act 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)  …

   (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.

7. 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 11 May 2020 (‘relevant period’).

8. 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) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter.  The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act 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) …:
   (b)  …
   (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.

10. 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).

11. 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 removal was made are established.

    Discussion

12. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[3]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period).  Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[4]  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),[5] 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’.[6]

    [3] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [4] Act s 7(3).

    [5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [6] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

13. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

14. The Opponent’s evidence in this matter consists of the Murray Declaration.  Mr Murray states that much of the use of the Trade Mark is in the form of the mark below (‘Ascend Logo’)

15. The Murray Declaration provides evidence that the Opponent’s predecessor in title commenced use of the Trade Mark in 2007 and annexes various documents from 2007-09 showing the promotion of the Trade Mark at the time, including sponsorship of various sports teams and individuals.  Mr Murray states that from May 2018 the promotion of the Trade Mark was not a priority for the Opponent, but that individual products under the Trade Mark were still sold by retailers, with sales in the relevant period being low but not insignificant.

16. Mr Murray states that protein bars under the Trade Mark were sold until January 2018 and attaches sales data for protein bars featuring the Ascend Logo.

17. The Murray declaration also contains a screenshot of the Opponent’s website at which during the relevant period continued to promote the Opponent’s protein based powders under the Trade Mark until it was decommissioned in September 2017.  I note that Mr Murray does not assert that the Opponent was actively selling or intending to sell protein based powders under the Trade Mark during the relevant period.

18. Finally the Murray Declaration notes that as of 2021 certain products sold under the Trade Mark are available from third parties and the Opponent intends to use the Trade Mark in respect of the Registered Goods in the future.

19. I am satisfied by the evidence in the Murray Declaration that the Opponent has sold protein bars under the Ascend Logo during the relevant period, as there are dated commercial records showing sales to an Australian distributor of the protein bars which bore the Ascend Logo.  Despite the Applicant’s submissions, these sales involved use of the Ascend Logo as a trade mark; the Opponent does not need to prove that the distributor resold the protein bars to a retailer who sold them to a customer (though I note it would be extraordinarily unlikely for a distributor who has purchased protein bars to store them for 3 years; it can be presumed that such sales occurred) for use as a trade mark to occur.

20. I am not satisfied that there was any other use of the Trade Mark in the relevant period; in particular I am not satisfied that two screen shots from websites operated by third party retailers taken in 2021 (apparently advertising sales of products the Applicant has ceased producing several years earlier) is sufficient proof that there was use of the Trade Mark in the relevant period.  Nor is the presence, early in the relevant period, of a soon-to-be decommissioned website operated by the Opponent advertising protein powder that the Opponent at the time did not offer nor apparently intended to offer amount to use of the Trade Mark.

21. The final question is whether use of the Ascend Logo is use of the Trade Mark with additions or alterations not substantially affecting its identity.  The respective marks are set out below.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

    [7] (1963) 109 CLR 407, 414.

    ASCEND

22. I consider that the Ascend Logo consists of two essential features, being the word ASCEND in a particular font as well as the device element, being 4 spheres of a different size that create a triangle shape.  While the device element does allude to the meaning of the word ascend, it is neither a direct representation of the meaning (such as a bare foot above a word BAREFOOT[8]) or a descriptive element.  Rather it is an essential feature of the trade mark by itself.  As such I consider that the addition of the device element (along with the minor stylisation of the word ASCEND) is sufficient for me to conclude that the respective trade marks are not substantially identical and hence the use of the Ascend Logo on the protein bars in the relevant period is not use of the Trade Mark with additions or alterations not substantially affecting its identity.

    [8] See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (Gummow, Heydon, Crennan and Bell).

23. In summary I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period.

    Obstacles to use

24. 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 Registered Goods in the relevant period, pursuant to s 100(3)(c) of the Act 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 Registered Goods.

    Registrar’s Discretion

25. 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 of the integrity of the Register will generally demand the removal of an unused trade mark.[9] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[10]

    [10] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[11]

    [11] Ibid [171]-[172].

26. 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’,[12] 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.[13] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, 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.[14]

    [12] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [13] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [14] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

27. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[15]

    [15] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203] (Bennett J).

28. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Remaining Goods.[16] The burden of persuasion falls in this regard falls on the Opponent.[17]

    [16] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

    [17] Ibid.

29. The Opponent has made no submissions in respect of the discretion. In any event, in the present case, while the Opponent has used the Trade Mark in the past, and provides the general statement (unsupported by any documentary evidence) that it intends to use the Trade Mark in the future, I am not persuaded that the Trade Mark had such a reputation  that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

    Decision

1. The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1171772 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that 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.

   Costs

2. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs.  I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   1 September 2022