Showroom X Pty Ltd v Christine Fay Doughty

[2024] ATMO 109

TRADE MARKS ACT 1995

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

Re:Opposition by Christine Fay Doughty to an application under section 92 of the Trade Marks Act 1995 (Cth) by Showroom X Pty Ltd for removal of trade mark number 504609 (25) – SHOW-ROOM (Figurative) – in the name of Christine Fay Doughty

Delegate:	Nicholas Smith
Representation:	Opponent: Mills Oakley Applicant: Self-represented
Decision:	2024 ATMO 109 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 appropriate for a subset of registered goods – Trade Mark to be removed from the Register for a subset of the registered goods

Background

1. This decision is pursuant to an application made on 22 January 2021 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Showroom X Pty Ltd (‘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.	504609
Lodgement date	10 February 1989
Goods	Class 25: All goods in this class  (‘Registered Goods’)
Owner at the time of removal application	Christine Fay Doughty and Leslie Maxwell Doughty (‘Owner’)
Trade Mark	(‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. At the date the removal application was filed and through the relevant period (defined later in this decision) the owners of the Trade Mark were Christine Fay Doughty and Leslie Maxwell Doughty.  Leslie Maxwell Doughty passed away on 30 September 2016. On 9 February 2022 ownership of the Trade Mark was assigned from Christine Fay Doughty and Leslie Maxwell Doughty to Christine Fay Doughty.  The following endorsement, which had applied to the Trade Mark until that date, was removed: ‘It is a condition of registration that the mark shall be used only in relation to goods with which both applicants are connected in the course of trade* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*’

3. Christine Fay Doughty (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 2 March 2021 and a Statement of Grounds and Particulars (‘SGP’) on 31 March 2021.  The Applicant filed a Notice of Intention to Defend on 2 June 2021.

4. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Christine Fay Doughty, the Opponent (‘Doughty declaration’)	14 September 2021	CD-1 to CD-14
Evidence in answer (‘EIA')
Richard James Charles Poulson, co-founder and Director of the Applicant	8 February 2023	RP-1 to RP-14
Evidence in reply
None filed

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 24 May 2023 the Opponent requested a hearing by video conference.  The matter was set down for a hearing on 7 May 2023 and,  in line with usual practice, correspondence was sent to the parties on 16 February 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 23 April 2024 (‘Opponent’s Submissions’).  At the hearing Lisa Egan and Eden Tsiaples of Mills Oakley represented the Opponent.  The Applicant chose not to participate in the hearing or provide submissions.

2. 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, any oral submissions made by the parties and the evidence listed earlier in this decision:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions. 

   The Relevant Provisions

3. 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 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.

4. 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 22 December 2020 (‘relevant period’).

5. 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 for the Trade Mark,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

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

   (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.

7. 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) in respect of oppositions under s 52.

8. 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 ground under which the application for removal was made is established.

9. 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),[3] 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’.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5]  Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Owner.[6] 

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

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

   [5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

   [6] Act s 7(3).

10. The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

    Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

    The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]

    [7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

    Discussion

11. Therefore, to successfully oppose the removal application the Opponent must establish that the Owner has used the Trade Mark (or a substantially identical trade mark[8]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

    [8] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

12. If the Opponent fails to establish such use or an obstacle to 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

13. The Opponent’s evidence in this matter consists of a declaration by the Opponent.  The Doughty declaration states that the Opponent created the Trade Mark with her late husband and that the Trade Mark has been connected with a boutique knitwear label.  In 2006 the Opponent and her husband, through a company (Show Room Fashion Marketing Agencies Pty Ltd ACN 006 866 691 [‘Show Room’]), opened a clothing retail store called Et Al which currently has three physical stores and operates an online store.  The Opponent sells her products under the Trade Mark through the Et Al stores.  The Opponent gives evidence that she is  the sole director and company secretary of Show Room which she has permitted to use the Trade Mark..  The Opponent states that the Trade Mark has been used in relation to knitwear items including tops, cardigans, tunics, vests, wraps, sweaters, ponchos and hoodies.  The Doughty declaration provides evidence of sales figures during the relevant period, which although small, are not insignificant.

14. In support of the statements made, the Doughty declaration provides a copy of a licence agreement between the Opponent and Show Room though this is of little value as it postdates the relevant period.  It provides undated photos of products said to bear the Trade Mark as well as an e-mail dated 31 January 2018 for an order for 3000 labels featuring the Trade Mark.  It provides the result of searches on the Et Al website which are said to depict knitwear products sold by reference to the Trade Mark however these results (Exhibits CD-12 and CD-13) are undated. 

15. In response the EIA provides evidence from the Applicant about its business under the mark  ‘SHOWROOM X’, which is currently being prevented from being registered by the presence of the Trade Mark on the Register.  This includes advertisements and press articles about the Applicant.  The EIA also contains submissions criticising the EIS and suggesting that the Opponent presently has a limited line of products and engages in no advertising and marketing featuring the Trade Mark.  The EIA also makes submissions about the descriptive nature of the Trade Mark.  

16. The onus under s 100 is for the Opponent to show evidence of use or authorised use of the Trade Mark by the owner of the mark in the relevant period.  The owner of the mark in the relevant period was Christine Fay Doughty and Leslie Maxwell Doughty and any use during that period was subject to the endorsement that the mark should only be used in relation to goods with which both applicants are connected in the course of trade.  The assignment of the Trade Mark to Christine Fay Doughty and removal of the endorsement took place in 2022 and neither the assignment on the Register nor removal of the endorsement operates retrospectively.  The Opponent submitted that upon the passing of Leslie Maxwell Doughty ownership of the Trade Mark passed automatically to the Opponent; regardless of whether that is the case the endorsement on the Register was not removed until 2022.

17. I am not satisfied that the EIS shows evidence of use of the Trade Mark for the Registered Goods in the relevant period that will satisfy the requirements of s 100(3).  Any use of the Trade Mark by the Opponent during the relevant period was not in compliance with the endorsement and hence was not use by the (then) Owner.  The question of to what extent any use by the Opponent in the relevant period should prevent removal of the Trade Mark is a matter for the exercise of the discretion of the Registrar.

    Obstacles to use

18. The Opponent does not submit or particularise 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).  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

19. 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 in the integrity of the Register will generally demand the removal of an unused trade mark.[9]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

    [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

    The following propositions are relevant to the exercise of this discretion:

    (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

    (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

    (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

    (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

    (5) The range of factors considered in the exercise of the discretion has included whether or not:

    (a) there has been abandonment of the mark;

    (b) the registered proprietor of the mark still has a residual reputation in the mark;

    (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

    (d) the applicant for removal had entered the market in knowledge of the registered mark;

    (e) the registered proprietors were aware of the applicant’s sales under the mark;

    (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[10]

    [10] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

1. 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”,[11] 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.[12] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.[13]

   [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

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

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (emphasis in original).

2. The present case is an unusual one and raises the following issues:

   -If I were satisfied that the Opponent had used the Trade Mark in the relevant period, it would be an injustice to remove the mark on the basis of a technicality, namely that the Register was not updated to remove reference to her late husband (and the defunct endorsement) until after the relevant period notwithstanding that she had clearly inherited the business previously operated by her and her husband; indeed until the assignment and removal of endorsement, it would have been impossible to use the Trade Mark from the date the Opponent’s husband passed away.

   -The evidence of use of the Trade Mark by the Opponent in the relevant period is very slim.  While the statements in the EIS have a ‘ring of truth’ to them, little weight is to be given to assertions of use which are not supported by documentary evidence.[14] The exhibits to the Doughty declaration are undated (or photos stated to have been taken in the relevant period but not supported by documentary material in any way) and to the extent that they are dated (such as a dated receipt showing the sale of a product from the Et Al store), do not show use of the Trade Mark.  At the same time, it would appear unlikely that there was no use whatsoever of the Trade Mark; it would be implausible that the Opponent ordered 3000 labels bearing the Trade Mark shortly before the relevant period and maintained a website showing a number of knitwear tops apparently offered under the Trade Mark after the relevant period, absent any use at all in the relevant period.

   -With respect to the private commercial interests, it is apparent that the Applicant is a significant commercial business that is both being prevented from operating under its mark, and is the subject of trade mark infringement claims from the Opponent by reason of the continued registration of the Trade Mark.  Alternatively, while the Opponent clearly wishes to continue to sell a limited range of goods under the Trade Mark, I am unsatisfied that there is any significant advertising, sales or reputation in the Trade Mark held by the Opponent; the stated sales figures are unimpressive.

   -The Trade Mark is registered for all goods in Class 25.  The Doughty declaration suggests that it has been used for tops, cardigans, tunics, vests, wraps, sweaters, ponchos and hoodies but there is no documentary evidence that the Trade Mark is used for tunics, ponchos and hoodies.  There is no evidence that the Trade Mark has ever been used or was intended to be used for the vast majority of the Registered Goods.

   -The issue of any licence or implied authorisation between the Opponent/Owner and Show Room is not relevant to my consideration.  Show Room operated the retail stores but does not appear, on the evidence before me, to be the entity that uses or has used the Trade Mark for the Registered Goods; that would be the Opponent or Owner.

   [14] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

3. 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 Registered Goods.[15] The burden of persuasion in this regard falls on the Opponent.[16]  Given the unique nature of this matter, I consider it reasonable to exercise my discretion to not remove the Trade Mark for the following narrow categories of goods that I am satisfied the Trade Mark has been used for (by either the Opponent or Owner) for some period of time: knitted tops, knitted cardigans, knitted vests, knitted wraps and knitted sweaters.  The Trade Mark shall be removed for all remaining Registered Goods.

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

   [16] Ibid.

   Decision

4. The Opponent has partly established its opposition to the removal application. Accordingly, I direct that registration 504609 be removed from the Register in respect of all Registered Goods save the goods listed out below one month from the date of this decision. It will remain registered for the following:

   Class 25:  knitted tops, knitted cardigans, knitted vests, knitted wraps and knitted sweaters

5. If the Registrar is served with a notice of appeal, 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.

6. The Opponent has also sought that this office issue a Certificate of Use.  As I have not found that the Trade Mark was used by the Owner in the relevant period, I decline to issue such a certificate.

   Costs

7. Neither party has been entirely successful in respect of the application for removal of Trade Mark 504609.  As such I make no order as to costs. 

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   18 June 2024