Sealed Air Corporation (US) v Kvadrat A/S

[2013] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Sealed Air Corporation (US) to application under section 92 of the Act by Kvadrat A/S to remove trade mark number 721828 (17) - SOFTCELL - in the name of Sealed Air Corporation (US).

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Tony Lolis of Davies Collison Cave Applicant: Ms Carmen Champion of Counsel instructed by FB Rice
Decision:	2013 ATMO 69 S 92 opposition– non-use application unsuccessful – trade mark to remain on the register

Background

1. Sealed Air Corporation (US) has a registered trade mark in Australia, current details of which are shown below:

Trade mark:  SOFTCELL

Trade mark registration:      721828

Filing Date:  12 November 1996

Specification:  Class 17: Polyethylene foam in rolls or sheets

1. On 1 March 2011, Kvadart A/S (“the removal applicant”) filed an application to have the trade mark removed from the Trade Marks Register on the grounds of lack of intention to use and/or non-use for all the goods for which it is registered. The application was filed pursuant to section 92 of the Trade Marks Act 1995 (‘the Act’) and specified grounds pursuant to both paragraphs 92(4)(a) and 92(4)(b).

2. Sealed Air Corporation (US) (‘the opponent’) filed a notice of opposition to the application on 14 June 2011. The notice asserted that the grounds on which the removal applicant relied were not relevant because the opponent had the intention to use the trade mark for all relevant goods at the time of its filing and there had in any event been actual use of the trade mark for relevant goods during the relevant period. 

3. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Sydney on 17 June 2013. Mr Tony Lolis of Davies Collison Cave appeared on behalf of the opponent. Ms Carmon Champion of counsel instructed by FB Rice appeared on behalf of the removal applicant.

Evidence

1. The evidence provided for this matter consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Tyrone Petterd	Business Manager of Sealed Air Australia (Holdings) Pty Ltd	6 December 2011	TP-1 to TP-2
Evidence in Answer
Katrina Osgerby	Senior Trade Marks Attorney with FB Rice	9 March 2012	-
Evidence in Reply
Susie Paterson	Marketing Manager of Sealed Air Australia (Holdings) Pty Ltd	27 September 2012	SP-1
Andrew Jennings	Procurement and Supply Director of Signet Pty Ltd	18 October 2012	AJ-1 to AJ-2

Legal Framework

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

2. Section 92 provides that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years and/or the original trade mark applicant did not intend to use it in good faith for relevant goods or services as at the date the application for registration was filed. The removal application must be made in accordance with the Regulations[1] and may be made in respect of any or all of the goods and/or services in respect of which the trade mark is or may be registered. Paragraphs 92(4)(a) and 92(4)(b) as they are relevant to this case provide the following:

   [1] Regulations 9.1 to 9.4 of the Trade Marks Regulations 1995.

   (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. 

3. Section 96 makes provision for a person to oppose any application made under section 92 by filing a notice of opposition with the Registrar. This notice must be in an approved form and must be filed in accordance with the Regulations[2]. 

   [2] Regulation 9.3

4. Section 100 specifies that the burden is on the opponent to a non-use application to rebut allegations of non-use or lack of intention to use as the case may be. The opponent needs to establish that the applicant for, or registered owner of the trade mark has used the trade mark (or the trade mark with additions or alterations not substantially affecting its identity) in good faith in respect of the relevant goods and/or services, and that this use occurred within the relevant periods as specified in the Act.

5. Section 101(1) provides the Registrar with the discretion to remove the trade mark from the Registrar “in respect of any or all of the goods … to which the application relates”, whilst s 101(3) explicitly provides that discretion may be exercised in the trade mark owner’s favour even if the grounds on which the application was made have been established if the Registrar is satisfied it is reasonable to do so.

Discussion

1. The trade mark under attack in this case had been registered for approximately 14 years by the time the application for its removal was made.  Paragraph 70.510 of Shanahan’s Australian Law of Trade Marks and Passing Off  (4^th ed, 2008), makes the following comments:

   Section 92(4)(a) and (b) provide distinct and alternative grounds for removal. Under para (a) it is necessary to establish: first, that the trade mark was registered without the necessary intention in good faith that it should be used; and secondly, that there had in fact been no use, or no use in good faith, earlier than one month before the application for removal. Under para (b) it is necessary to establish only that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal, subject to s 93(2) which provides that five years must have passed since the application for the registered trade mark was filed.

   Paragraph (a) thus merges with para (b) once the trade mark has been registered for five years, though it should be noted that the defence of "circumstances that were an obstacle to the use of the trade mark" which applies to para (b) is not available under para (a).

2. I am satisfied that this merging of the paragraphs is indeed what has happened, given the length of time which has passed since the trade mark was registered. Therefore, as provided for by section 100(1)(c), the onus is on the opponent to rebut the claim that there has not been any use of its trade mark in good faith within the three year period ending one month prior to filing of the application for removal on 1 March 2011 (‘the relevant period’). The trade mark owner’s intentions at the time it filed the trade mark in 1996 are not relevant to my considerations.

3. The statutory declaration made by Tyrone Petterd (‘the Petterd declaration’) states that the class 17 goods were sold within Australia during the relevant period under the SOFTCELL trade mark through a distributor, Signet Pty Ltd (“Signet”). Exhibit TP-1 accompanying the Petterd declaration is a copy of Signet’s buyer’s guide or catalogue which states on the cover page that prices are guaranteed to June 2010. On page 89 of the catalogue the opponent’s SOFTCELL branded product is displayed. The words displayed next to a picture of the packaging product are SEALED AIR above the words SOFT CELL.

4. Ms Champion, counsel for the removal applicant, has argued that any of the opponent’s “supposed” evidence of use of the trade mark SOFTCELL was not trade mark use. She has asserted that in the above situation, “Sealed Air” constitutes an abbreviated version of the opponent’s corporate name which appears in other parts of the catalogue as a corporate brand. She has stated that the expression “SOFT CELL” in this context is used as a descriptor of the product being offered for sale and not as a trade mark. Her reasoning is that unlike the trade mark it is depicted as two words with only the words “Soft” having its first letter capitalized.

5. In addressing the removal applicant’s concern that the opponent has not used the exact same trade mark that is the subject of trade mark registration 721828 I turn to section 7 of the Act which states:

7Use of trade mark

(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:For prescribed court see section 190.

1. The opponent’s registered trade mark is the expression SOFTCELL. A close consideration of the opponent’s evidence does show that the opponent has used the expression in differing ways such as:

Soft cell

SoftCell

Soft-Cell

SOFT CELL

1. With reference to section 7 of the Act, I am satisfied that the opponent’s use of the above variations of the trade mark would not be considered an alteration which would substantially affect the identity of the registered trade mark. As such, I take use of the above trade marks by the opponent to be use of the registered trade mark.

2. In regards to Ms Champion’s submission that SOFTCELL is acting as a descriptor of the product in combination with a distinctive mark being either “Sealed Air” or “AIRLITE”. There is no reason the opponent cannot use one, two or several trade marks together in its advertising of the product. However, the essential consideration is that the expression SOFTCELL be operating, in its own right, as a trade mark. Ms Champion has argued that SOFTCELL is not being used as a trade mark but as a descriptor. I am hard pressed to understand how this is so. I am not aware of any meaning which can be attributed to SOFTCELL in regards to packaging material and I believe that SOFT CELL is distinctive of the goods. The fact that the opponent has used SOFTCELL in conjunction with other trade marks at times in its evidence does not diminish the fact that SOFTCELL has been operating and is used as a trade mark.

3. With all this in mind, I will consider the remainder of the opponent’s evidence. There are a number of other undated advertisements contained in exhibit TP-1 that show the opponent using the expression SOFTCELL. However, I am inclined to give very limited weight (if any) to undated evidence.

4. As mentioned earlier, the catalogue in exhibit TP-1 is undated but does have a statement on the cover which states “Prices guaranteed to June 30 2010”. In the statutory declaration of Andrew Jennings (“the Jennings declaration”), Mr Jennings states that Signet purchased SOFT CELL branded packaging products which it promoted through its catalogue (Exhibit TP-1). Mr Jennings further states that this catalogue is the February 2010 edition. Given Mr Jennings’ statement, the price guarantee on the cover and the substantial size of the catalogue, I am minded to agree with Mr Lolis’ submissions that the catalogue was likely published at considerable expense and was provided to potential consumers during the relevant period. There is no evidence to the contrary.

5. Further to this, accompanying the Jennings declaration is exhibit AJ-2. Exhibit AJ-2 comprises copies of invoices dated 12 February 2010, 13 September 2010 and 18 September 2011. While the invoice dated 18 September 2011 is outside of the relevant period, the other two invoices are dated within the relevant period. All of the invoices clearly make reference to the SOFT CELL trade mark and indicate that rolls of the SOFTCELL labeled packaging material were purchased by Australian consumers. These examples provide sufficient information to demonstrate genuine commercial use of the opponent’s trade mark in relation to its packaging product within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72. Even 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) 51 IPR 149. In this situation the opponent has made more than a single sale and has its product actively advertised for sale. I am satisfied the opponent has established use for its packaging goods in class 17 within the relevant period.

Decision

1. I am satisfied that the trade mark of registration No. 721828 has been used in the relevant period on all the goods in class 17.

Costs

1. 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 applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

28 August 2013