Sartori Company v Consorzio per La Tutela Del Formaggio Asiago

[2023] ATMO 41

TRADE MARKS ACT 1995

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

Re:Opposition by Sartori Company to application under section 92 of the Trade Marks Act 1995 (Cth) by Consorzio Per La Tutela Del Formaggio Asiago to remove trade mark number 1680928 (29) – SARTORI ASIAGO – in the name of Sartori Company

Delegate:

Louise Tuohy

Representation:

Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Pty Ltd

Applicant:  David Larish of Counsel instructed by Bird & Bird

Decision:

2023 ATMO 41

Trade Marks Act 1995 (Cth) – application under section 92 – s 92(4)(b) application for removal – Removal Opponent’s evidence does not show use of the Trade Mark during the Relevant Period – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from Register

Background

1. The Sartori Company (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:  1680928

   Trade Mark:  SARTORI ASIAGO (‘Trade Mark’)

   Filing Date:  13 March 2015

   Specification:  Class 29: Asiago-style cheese (‘Registered Goods’)

2. On 1 June 2021 Consorzio Per La Tutela Del Formaggio Asiago (‘Removal Applicant’) filed an application seeking complete removal of the Trade Mark from the Register for non-use.

3. On 3 August 2021 the Removal Opponent filed its Notice of Intention to Oppose the removal of the Trade Mark, followed by its Statement of Grounds and Particulars on 2 September 2021. On 26 October 2021 the Removal Applicant filed its Notice of Intention to Defend the removal application.

4. The Removal Opponent subsequently filed the following declarations as evidence in support:

• Declaration of Sam Allison, Global Markets Manager of the Removal Opponent, made on 25 January 2022, with Exhibits 1 to 13 and Confidential Annexure A (‘Allison’).

• Declaration of Peter Heaney, Managing Director of Washed Rind Pty Ltd, made on 28 January 2022, with Exhibits PH-1 to PH-5 and Confidential Annexure A (‘Heaney’).

1. The Removal Applicant did not file any evidence.

2. Once the time allowed for filing evidence had ended the parties were given the opportunity to request a hearing. Both parties requested to be heard and the matter came before me, a delegate of the Registrar of Trade Marks, on 15 March 2023. Stephen Rebikoff of Counsel instructed by Davies Collison Cave appeared via video link on behalf of the Removal Opponent. David Larish of Counsel instructed by Bird & Bird appeared via video link on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated s 92(4)(b) of the Act as the ground for removal.

3. Section 92(4)(b) of the Act provides:

   (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.

4. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

5. For the purposes of s 92(4)(b) the relevant period is the three-year period ending on 1 May 2021 (‘Relevant Period’).

6. 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 24 February 2019 onwards.

7. The onus of rebutting an allegation of non-use lies with the Removal Opponent. This onus is articulated in s 100 which provides:

   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.

8. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

9. In accordance with s 101 of the Act, if the ground for removal is established, I may decide to remove the Trade Mark from the Register in respect of any or all of the goods identified in the application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

10. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. [3] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[6]

Use of the Trade Mark during the Relevant Period

[3] [2001] FCA 261, [16].

[4] Ibid [17].

[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

[6] (1962) RPC 1, 7.

1. The Removal Opponent is a cheese producer located in Wisconsin, United States of America. In the Allison declaration, Mr Allison states that the word ASIAGO describes a particular type of cheese, which may be fresh/soft, hard or old/aged. Mr Allison states that since the 1950s the Removal Opponent has produced ASIAGO style cheese sold under the descriptor ASIAGO.   

2. Confidential Annexure A to Allison comprises the Removal Opponent’s global sales figures for its ASIAGO style cheese products for the calendar years 2017 to 2021, and its sales to Australian distributors for ASIAGO style cheese products for the years 2013 and 2019.  

3. Mr Allison declares that on 14 September 2018, the Removal Opponent received an order from Say Cheese Wholesale[7] for its ASIAGO style cheese product. Confidential Exhibit 11 to Allison comprises copies of documentation in relation to the order and its fulfilment as follows:

   [7] Mr Allison declares that Say Cheese Wholesale is part of the same business as the Removal Opponent’s current Australian distributor Washed Rind Pty Ltd.

• a copy of an order form from Say Cheese Wholesale to the Removal Opponent dated 14 September 2018;

• a copy of the Removal Opponent’s commercial invoice and packing list issued to Washed Rind Pty Ltd (‘Washed Rind’) dated 4 October 2018;

• a copy of the Removal Opponent’s invoice issued to Washed Rind dated 4 October 2018;

• a copy of the Removal Opponent’s certificate of analysis (quality assurance) for the order issued on 4 October 2018;

• a copy of the Removal Opponent’s Customs Statement of United States Origin for the order dated 4 October 2018; and

• a copy of the United States Department of Agriculture, Animal and Plant Health Inspection Service certificate dated 5 October 2018 for the order.

1. In Allison, Mr Allison declares that at the time the goods were shipped to Australia they bore the following trade mark and packaging (‘Removal Opponent’s composite trade mark’):

1. In Heaney, Mr Heaney declares that Wash Rind is the Australian distributor of the Removal Opponent. Mr Heaney confirms that on 4 October 2018, Washed Rind imported the Removal Opponent’s ASIAGO style cheese products. Confidential Exhibit PH-4 is a copy of the Removal Opponent’s commercial invoice and packing list dated 4 October 2018. Mr Heaney declares that the Removal Opponent’s ASIAGO style cheese products bore the Removal Opponent’s composite trade mark.                 

2. Mr Heaney declares that Washed Rind subsequently offered the ASIAGO style cheese products bearing the Removal Opponent’s composite trade mark to Australian retailers. Mr Heaney declares that the goods were sold to three Australian retailers. Confidential Exhibit PH-5 to Heaney comprises a tax invoice issued by Washed Rind to Say Cheese Retail dated 16 August 2019. The tax invoice lists the item ‘Sartori Rosemary & Olive Oil Asiago 150g’.

3. In my assessment of the evidence before me, I find that on 14 September 2018 the Removal Opponent received an order from Say Cheese Wholesale for its ASIAGO style cheese products. The Removal Opponent fulfilled and shipped the order to Australian distributor Washed Rind in October 2018. On 16 August 2019 Washed Rind sold the Removal Opponent’s ASIAGO style cheese products to Say Cheese Retail.

4. The Removal Opponent’s shipping documents include two invoices. The first invoice is headed with the Removal Opponent’s device trade mark  and lists the Removal Opponent’s ASIAGO style cheese product as ‘ROSEMARY ASIAGO 150g EW WEDGE’. The second invoice is headed with the Removal Opponent’s plain word trade mark and lists the Removal Opponent’s ASIAGO style cheese product as ‘ASIAGO ROSMRY CHs EW 12.5.30OZ’. Under s 100(3)(a) of the Act, I must consider whether use of these trade marks is use of the Trade Mark with additions or alterations not substantially affecting its identity. The test is the same as the test in respect of substantial identity and this requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[8] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:

   [8] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Trade Mark	Removal Opponent’s SARTORI trade marks
SARTORI ASIAGO	(SARTORI device trade mark)
	(SARTORI plain word trade mark)

1. When I compare the Trade Mark with the Removal Opponent’s SARTORI device trade mark I find that the device elements in the SARTORI device trade mark are sufficient for me to conclude that the respective trade marks are not substantially identical.  However, I find that the Trade Mark is substantially identical with the SARTORI plain word trade mark, given the word SARTORI is the essential element in the Trade Mark and ASIAGO is utterly descriptive of the Registered Goods, and may be entirely discounted.[9] Therefore use of the SARTORI plain word trade mark on the second invoice involves use of the Trade Mark with additions or alterations not substantially affecting its identity.

   [9] See: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ); and PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 (Carr J).

2. While I consider that use of the SARTORI plain word trade mark in the heading of the second invoice is use of the Trade Mark, I am not satisfied it is use in relation to the Registered Goods. At its highest, the second invoice demonstrates use of the SARTORI plain word trade mark in connection with the wholesale or retail of the Removal Opponent’s ASIAGO style cheese product. Noting that when I am dealing with very limited evidence, such as a singular invoice, then the evidence needs to be clear and conclusive.  

3. Furthermore, both Mr Heaney and Mr Allison declare that the form of the trade mark physically applied to the packaging of the Removal Opponent’s ASIAGO style cheese product is the Removal Opponent’s composite trade mark. As such, I must consider whether use of this trade mark is use of the Trade Mark with additions or alterations not substantially affecting its identity. For the purposes of comparison, I have reproduced the respective trade marks below:

Trade Mark	Removal Opponent’s composite trade mark
SARTORI ASIAGO

1. The Trade Mark consists of the plain words SARTORI and ASIAGO. In comparison the Removal Opponent’s composite trade mark consists of the words ASIAGO, SARTORI, ROSEMARY & OLIVE OIL, the number 1939, and device elements. I consider that the additional wording and device elements in the composite trade mark are sufficient for me to conclude that the respective trade marks are not substantially identical.  Hence the use of the Removal Opponent’s composite trade mark on its ASIAGO style cheese products in the relevant period is not use of the Trade Mark with additions or alterations not substantially affecting its identity. 

2. The evidence also comprises of an invoice from Washed Rind to one of its retail customers which expressly describes the Removal Opponent’s product as SARTORI ROSEMARY & OLIVE OIL ASIAGO. Relying on PB Foods Ltd v Mandala Dairyfoods Ltd (‘PB Foods’)[10] the Removal Opponent submits that the words ROSEMARY & OLIVE OIL in the product description are purely descriptive additions to the Trade Mark, and therefore do not affect its dominant cognitive cues (the distinctive word SARTORI coupled with the category descriptor, ASIAGO) and that this involves use of the Trade Mark with additions or alternations not substantially affecting its identity.

   [10] [1999] FCA 1602, (Carr J).

3. On a side by side comparison I find that the Trade Mark is clearly not identical to SARTORI ROSEMARY & OLIVE OIL ASIAGO. In considering the judgement in PB Foods it is apparent that the court will find that substantial identity exists where the essential elements of the trade mark in question are not altered by the presence of the additional elements, such as CHOC in CHOC CHILL, which Carr J found to be utterly descriptive.[11] While I have found that the word ASIAGO is utterly descriptive of the Registered Goods, I do not consider that ROSEMARY & OLIVE OIL falls within the category of words that may be entirely discounted. In PB Foods the goods were ‘flavoured milk’, and CHOC described a flavour and was subject to change depending on the flavour of the beverage. In comparison the words ROSEMARY & OLIVE OIL imply the goods include these ingredients, they are not utterly descriptive of the Registered Goods. Therefore, the additional words ROSEMARY & OLIVE OIL function as elements that alter the Trade Mark’s identity and use of the product description SARTORI ROSEMARY & OLIVE OIL ASIAGO in the invoice issued by Washed Rind is not use of the Trade Mark as it is registered.  

   [11] Ibid.

Obstacle to Use

1. Mr Allison claims that Washed Rind intended to continue distributing the Removal Opponent’s ASIAGO style cheese products in Australia, however shipping issues in 2019 followed by the COVID-19 pandemic commencing in early 2020 delayed further rollout of the Removal Opponent’s Registered Goods. However, no supporting evidence has been provided that raise matters which could be regarded as obstacles to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act.

2. The ground for removal under s 92(4)(b) of the Act has been established.

Registrar’s discretion

1. Section 101 of the Act relatively provides:

   101 Determination of opposed application – general

   […]

   (3) 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.

   […]

2. To exercise the discretion under s 101(3) I must be positively satisfied that, despite the lack of use or obstacle to use, it is reasonable to not remove the Trade Mark in respect of the Registered Goods.[12]

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

3. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under section 101(3) ought to be exercised in its favour.[13]

   [13] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

4. In Societe Anonyme des Eaux Minerales d’Evian v The Yoghurt Co Pty Ltd,[14] the delegate found that in exercise of the Registrar’s discretion, there are three factors which fall under the following broad headings to be considered:

   ·the interest of the owner of the trade marks;

   ·the interests of the applicant for removal; and

   ·the public interest.

   [14] [2012] ATMO 53, [33] (Delegate Thompson).

5. The Removal Opponent submits that it has been using the SARTORI trade mark in relation to the Registered Goods since at least 1997. The Removal Opponent alleges a substantial reputation and goodwill in the Trade Mark can be inferred from its extensive global sales. The Removal Opponent submits that it first sold the Registered Goods in Australia in 2013 when it offered a variety of ASIAGO style cheese products via its former Australian distributor.

1. The Removal Opponent submits that it has not abandoned the Trade Mark in Australia and argues that on the projections of Mr Heaney its sales of ASIAGO style cheese product in Australia are only expected to increase. Moreover, the Removal Opponent retains a number of SARTORI trade marks on the Register in Australia including:[15]

   [15] As confirmed on the Australian Register of Trade Marks.

Trade Mark Numbers	Removal Opponent’s Registered trade marks	Goods
1574628	SARTORI	Class 29: Cheese
1680919	SARTORI PARMESAN	Class 29: Cheese

1. The Removal Opponent argues that having regard to its reputation and its continued presence in Australia, it is inconceivable that another trader could adopt the Trade Mark or any substantially identical or deceptively similar trade mark for the Registered Goods without causing confusion.

2. In response the Removal Applicant submits there is a public interest in maintaining the integrity of the Register, and that there is no evidence that the Removal Opponent intends to use the Trade Mark in the future. In regard to the Trade Mark’s reputation in Australia the Removal Applicant submits that the evidence does not establish that there is any reputation in the Trade Mark in Australia.

3. The Removal Applicant submits that the Removal Opponent has obtained Australian trade mark registration for trade mark number 1574739 and acceptance of trade mark application number 2193433, which I have reproduced below:[16]

   [16] As confirmed on the Australian Register of Trade Marks.

Trade Mark Numbers	Removal Opponent’s trade marks	Goods
1574739	Class 29: Cheese
2193433	Class 29: Asiago-sytle cheese

1. I am not persuaded by the Removal Opponent’s position. The Trade Mark has been registered since 2015 and the only shipment of ASIAGO style cheese products after the filing date was in 2018. Mr Allison claims that further orders from Australia of the Removal Opponent’s ASIAGO style cheese products were anticipated for 2022. However, at the time of the hearing in 2023 the Removal Opponent did not confirm any such order. It is also noted that the goods in the 2018 shipment all bore the Removal Opponent’s composite trade mark which is the subject of trade mark application number 2193433 as reproduced in the table above. Furthermore, I am not satisfied that the evidence before me demonstrates that the Trade Mark has acquired a reputation in Australia in relation to the Registered Goods. The Removal Opponent’s sales figures in Australia are de minimis and there is no evidence of any promotional materials featuring the Trade Mark targeting Australian audiences. Given the above factors, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Removal Opponent in any way.

2. Accordingly, I decline to exercise discretion to allow the Trade Mark to remain on the Register for the Registered Goods.

Decision

1. The Removal Opponent has not established its opposition to removal. I direct that trade mark registration 1680928 be removed from the Register one month from the date of this decision. If the Registrar is serviced with a notice of appeal within the relevant timeframe, the disposition of the removal application will instead be subject to the decision made by the Court.  

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 March 2023