Shine Beauty Pty Ltd v Shine Ltd

[2015] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Shine Beauty Pty Ltd to application under section 92 of the Act by Shine Ltd to remove trade mark number 950089(41) - SHINE - in the name of Shine Beauty Pty Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Julie Simpson of Pizzeys Patent and Trade Mark Attorneys

Applicant: Gabriella Rubagotti of Counsel, instructed by Baker & McKenzie Lawyers

Decision:

2015 ATMO 21

Section 96 opposition to removal application  - no use established within relevant period – Registrar’s discretion not appropriate - registration to be removed

Background

1. This matter is a proceeding under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) in which by an application filed on 11 July 2013, Shine Ltd (‘the Applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of all of the services for which it is registered:

Regn No.	950089
Trade Mark	SHINE
Services	Class 41: Entertainment; sporting and cultural activities; health club and gymnasium services; recreation information and instruction services; organisation of competitions; physical education; providing sports facilities; arranging and conducting of seminars; rental of sports equipment; practical training and tuition; gymnastic instructions; none of the foregoing being booking and representation agency services for entertainment and sport

1. As the application for removal was filed on 11 July 2013 the relevant period (‘the relevant period’) for the purposes of 92(4)(b) is the three years ending on 11 June 2013.

2. On 8 October 2013, Shine Beauty Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose removal of the Trade Mark.

3. Thereafter, pursuant to Trade Mark Regulations 1995 (‘the Regulations’), the Opponent has filed evidence in support of its opposition to the removal, which I further detail below.  The Applicant has not filed evidence.

4. The parties elected to be heard.  I conducted a hearing in Canberra on 2 December 2014.  The Opponent was represented by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys.  The Applicant was represented by Gabriella Rubagotti of Counsel, instructed by Baker & McKenzie Lawyers.

The Law

1. Section 92 of the Act relevantly states:

92Application for removal of trade mark from Register etc.

(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.

(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.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:For prescribed court see section 190.

(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.

1. Section 100(1) of the Act provides that an opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period in relation to the goods or services for which it is registered.  I proceed on the basis that the applicable standard of proof is on the balance of probabilities.

2. The required use is as a trade mark, that is to say as a badge of origin indicating a connection in the course of trade between the relevant goods or services and the person who uses the mark in relation to those goods or services: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (‘Gallo’) at [41] – [43].

3. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the relevant period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (‘Nodoz’) at page 7, 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.” This has been approved by the High Court in Gallo at [64].

4. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

5. Finally, section 101 of the Act deals, with the Registrar’s (or Court’s, as the case may be)discretion:

Determination of opposed application—general

(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.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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) 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.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)  similar goods or closely related services; or
(b)  similar services or closely related goods;

to those to which the application relates.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For registered owner see section 6.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Court’s discretion, which are equally applicable to the Registrar’s discretion:

   [167] The discretion under s 101(3) is 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 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.

   [168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   […]

   [171] 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. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   [172] There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

Evidence

1. The evidence in this matter is as shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Joel Maxwell Turner	Director and Sales and Marketing Manager of Opponent	10.03.14 ‘Turner’	JT-1 to JT-18 (Confidential Exhibits JT-14 and JT-15)

1. Turner details the history of the Opponent, which opened its first beauty salon in Southport, Queensland, in June 1999 and a year later opened another beauty salon on the Queensland Sunshine Coast. The business is evidently very successful, and Turner provides examples of a number of business achievement awards between 2002 and 2011.

2. At paragraph 9, Turner tabulates a list of the Opponent’s other registrations for both word and device trade marks featuring the element SHINE. With the exception of the Trade Mark itself, the trade marks are registered in Classes 42 and 44 and relate to beauty and hairdressing salon services. The other trade marks are as follows:

Registration	Trade mark	Services
876227	SHINE MAKEUP AND BEAUTY	Class 42
1062935	SHINE	Class 44
1140254	‘the SHINE device’	Class 44

1. Turner asserts that the provision of the Opponent’s beauty salon services provides ‘pleasure, leisure, relaxation, fun, enjoyment etc to customers’. This is said to amount to be evidence of use in relation to Class 41 entertainment services.

2. At paragraph 26 Turner states that the Opponent supported charity events and also major event promotions. Exhibit JT-12 shows some of the Opponent’s employees supporting Daniel Morcombe Day in 2012 and the exhibit also includes a list of a number of charities (including RSPCA, Red Cross, Cancer Foundation) supported by the Opponent. This is said to evidence sporting and cultural activities.

3. At paragraph 35 and Exhibit JT-16, Turner provides details of competitions that it ran during the period 2002 to 2014.

4. At paragraph 17, Turner states that the Opponent produces an Operation Manual, Treatment Training Manuals, and Procedure and Sales Manuals for its staff, which it claims constitutes practical training and tuition. Exhibit JT-4 provides a photograph of folders bearing the SHINE device and entitled ‘Administration forms’, ‘Training Manual’, and ‘Marketing & Creative Manual’.

5. At paragraph 37, Turner states that the Opponent has run health and nutrition courses from time to time. It specifies a course run in September and October 2010, which incorporated fitness/sports activities together with health and nutrition. Exhibit JT-17 shows a printout (dated 6 March 2014) that is said to be a web page from 2010 showing that course. The exhibit also contains a photograph of three people in Adidas livery said to be ‘Premier Coaching 2013’, along with the SHINE trade mark and a reference to fitness, health and sports coaching.

6. Ms Rubagotti, for the Applicant, made two overall submissions regarding the Opponent’s evidence. The first was that there was no evidence of use of the Trade Mark, simplicter, or with additions or alterations not substantially affecting its identity.

7. The second submission was that, to the extent to which the Trade Mark was used, its use was plainly made in the provision of beauty salon and beauty therapy services (‘beauty services’) in Classes 42 and 44.

8. It should be noted that when trade mark 876227 was registered, there was no Class 44, so such services were accordingly registered in Class 42.

9. Ms Rubagotti submitted that claiming beauty services as ‘entertainment’ was untenable. She cited the principles of trade mark classification as detailed in Part 14 of the Trade Marks Manual of Practice and Procedure (published by IP Australia) to establish that the primary activity to which the Opponent’s demonstrated services relate is the provision of beauty services in. I concur with this characterisation.

10. Likewise, Ms Rubagotti submitted that the competitions conducted by the Opponent were ancillary to the primary activities of the Opponent and were a form of advertising or marketing the beauty services. Again, I concur with this characterisation.

11. The Opponent’s commendable support of national, state and local charities is again incidental to its primary business activities in relation to beauty services.

12. The Opponent’s training manuals are also internal documents that are incidental to the Opponent carrying out its beauty salon and beauty therapy business.

13. The evidence of the health and nutrition course in 2010 is problematic. The web page was printed in 2014. There is no other evidence to support it being the web page as it appeared during the relevant period. In any event, the web page displays only the SHINE device and reference to ‘Shine Health’, rather than SHINE, simpliciter.

14. Even if I accept that the web page is evidence of a course conducted within the relevant period, it is evidence only of a single course. It thus falls short of the ‘overwhelming convincing proof’ of use indicated as necessary in “Nodoz”. Again, this course would appear to be activity incidental to the Opponent’s beauty services rather than a separate or distinct service in its own right.

15. The photograph of persons in ‘Adidas’ livery on a sheet entitled ‘Premier Coaching 2013’ and containing the SHINE device is not sufficient evidence of use of the Trade Mark for services in Class 41 within the relevant period.

16. Having regard to the evidence and submissions, I am not satisfied that the Trade Mark has been used in respect of any of the services specified in registration 950089 during the relevant period.

17. There is no evidence of circumstances that were an obstacle to use of the Trade Mark during the relevant period.

18. There is nothing in the evidence to persuade me to exercise the Registrar’s discretion not to remove the Trade Mark from the Register for any of the services for which it is registered.

Decision and Direction

1. Pursuant to Section 101 of the Act, I have decided that the Trade Mark is to be removed from the Register for all services in respect of which it is registered.

2. Absent an appeal from either party filed within the required time, I direct that the Trade Mark is to be removed from the Register for all services in respect of which it is registered.  If such an appeal is filed, the disposition of the application for removal should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has been successful. I direct that costs in relation to the opposition be awarded against the Opponent in accordance with Schedule 8 of the Regulations.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

23 February 2015