Sleepcraft Distributors Pty Ltd v Sleepeezee Bedding Australia Pty Ltd

[2016] ATMO 50

TRADE MARKS ACT 1995

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

ReTrade Mark No. 718385 (DREAMMAKER series trade mark in Class 20) in the name of Sleepcraft Distributors Pty Ltd

- and -
Application for Removal for Non-Use by Sleepeezee Bedding Australia Pty Ltd
- and -
Opposition thereto by Sleepcraft Distributors Pty Ltd

DELEGATE:Robert Wilson

REPRESENTATION:         Applicant: James Samargis of Counsel instructed by PGC Legal

Opponent: Phillips Ormond Fitzpatrick

DECISION:2016 ATMO 50

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal for some goods only – trade mark used on relevant goods during relevant period – restriction under s 102 considered – opposition to removal successful – trade mark to remain on Register for all goods.

Background

1. This is an opposition by Sleepcraft Distributors Pty Ltd (‘the Opponent’) to an Application for Removal of a Registered Trade Mark for Non-Use (‘the Application’) under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘the Act’) by Sleepeezee Bedding Australia Pty Ltd (‘the Applicant’). The Application is in respect of the trade mark detailed below which is registered in the name of Sleepcraft Distributors Pty Ltd :

Trade Mark Number:

718385

Filing Date:

26 September 1996

Goods:

Class 20: Pillows and bedding (excluding bed linen)

 (‘the Opponent’s Goods’)

Trade Mark (word series):

DREAMMAKER
DREAM MAKER
DREAMAKER

(‘the Challenged Trade Mark’)

2. The Application was filed on 11 November 2014 and advertised in the Australian Official Journal of Trade Marks on 27 November 2014. The Application was in respect of the following goods only:

Class 20:        bedding being mattresses (‘the Relevant Goods’)

3. The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose filed on 22 January 2015, and a Statement of Grounds and Particulars (‘SGP’) filed on 20 February 2015. The Applicant filed a Notice of Intention to Defend on 18 March 2015.

Evidence

4. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 June 2015. This evidence consists of:

• Statutory Declaration made on 19 June 2015 by Ibrahim Sahin, Managing Director of the Opponent, with Exhibits IS-1 to IS-9 (‘the Sahin declaration’);

• Statutory Declaration made on 19 June 2015 by Cihan Ozbilgin, customer of the Opponent, with Exhibit CO-1 (‘the Ozbilgin declaration’);

• Statutory Declaration made on 23 June 2015 by Benjamin Gordon Armstrong, Managing Director of Bengo Industries Pty Ltd t/a Bed Collect, with Exhibit BA-1 (‘the Armstrong declaration’);

• Statutory Declaration made on 23 June 2015 by Christopher David Schlicht, partner of Phillips Ormond Fitzpatrick, the trade mark attorneys of the Opponent, with Exhibits CDS-1 and CDS-2 (‘the Schlicht declaration’);

• Statutory Declaration made on 23 June 2015 by Sally Anne Wilson, customer of the Opponent, with Exhibit SAW-1 (‘the Wilson declaration’); and

• Statutory Declaration made on 23 June 2015 by Margaret Mary Ryan, consultant to the Opponent’s attorneys, with Exhibits MMR-1 to MMR-6 (‘the Ryan Declaration’).

5. The Applicant did not file any evidence in answer to the EIS.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Applicant requested a hearing by way of written submissions only. The Opponent also chose to rely only on written submissions.

7. I am a delegate of the Registrar of Trade Marks and have been appointed to decide this matter. By correspondence dated 23 May 2016 I issued directions outlining the timetable for the parties to provide their written submissions. Both parties provided their written submissions as required.

The Applicant

8. The Applicant is the owner of the trade mark detailed below:

Trade Mark Application:

1711797

Filing Date:

4 August 2015

Goods:

Class 10: Support mattresses for medical use; Support mattresses for preventing pressure sores; Therapeutic mattresses

Class 20: Bed mattresses; Beds incorporating inner sprung mattresses; Latex mattresses; Mattress bases; Mattresses; Spring mattresses; Beds; Children's beds

 (‘the Applicant’s Goods’)

Trade Mark word series:

DREAMMAKERS
DREAM MAKERS
DREAMAKERS

(‘the Applicant’s Trade Mark’)

9. As at the date of issuing this decision the status of the Applicant’s Trade Mark is ‘Under Examination  - Extension Fees Not Required’.

The Opponent

1. According to the Sahin declaration:

   [The Opponent] manufactures and sells a range of bedding supplies such as pillows, quilts, magnetic overlays, mattress protectors and pillow protectors. It also supplies mattresses which are manufactured by a third party. …

   I invented the trade mark DREAMAKER … It was first used by [the Opponent] on pillows in approximately 1988. After that time the range of products sold under the [DREAMAKER trade mark] gradually expanded until today [the Opponent] sells a wide range of bedding supplies such as pillows, quilts, mattresses, underlays, magnetic overlays, mattress protectors and pillow protectors under the [DREAMAKER trade mark].

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100, 101 and 102.

2. The Application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:

   Section 92.  Application for removal of trade mark from Register etc

   (1)  … a person may apply to the Registrar to have a trade mark that is … 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.

   …

   (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: 

   …

   (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.

3. Section 96 makes provision for a person to oppose any application made under s 92 by filing a Notice of Opposition with the Registrar. Section 100 specifies that the burden is on the person opposing the application to rebut any allegation of non-use. Accordingly, the Opponent needs to establish that it has used the Challenged Trade Mark (or the Challenged Trade Mark with additions or alterations not substantially affecting its identity) in good faith in respect of the Relevant Goods, and that this use occurred during the three year period ending on 11 October 2014 (‘the Relevant Period’) as per s 92(4)(b). Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[1] The demonstrated use must be ‘use in the course of trade’.[2]

   [1] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645, 660.

   [2] Trade Marks Act 1995 (Cth) s 17.

4. Subject to ss 101(3) and 102, s 101(1) provides the Registrar with the discretion to remove a challenged trade mark from the Register ‘in respect of any or all of the goods … to which the application relates’. Section 101(3) explicitly provides that the discretion may be exercised in the Opponent’s favour (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.

5. Section 102 allows the Registrar, inter alia, to impose a geographical restriction on a registration, where certain conditions are met, such that the registration would no longer extend to the use of a challenged trade mark in a specified place. Section 102 is reproduced in its entirety below:

   102 Determination of opposed application—localised use of trade mark

   (1) This section applies if an application for the removal of a trade mark (challenged trade mark) from the Register is made on the ground referred to in paragraph 92(4)(b) and:

   (a) the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark and is registered in respect of the goods and/or services specified in the application subject to the condition or limitation that the use of the trade mark is to be restricted to:

   (i) goods and/or services to be dealt with or provided in a particular place (specified place) in Australia (otherwise than for export from Australia); or

   (ii) goods and/or services to be exported to a particular market (specified market); or

   (b)the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.

   Note 1: For registered owner see section 6.

   Note 2: For deceptively similar see section 10.

   (2) If the Registrar or the court is satisfied:

   (a) that the challenged trade mark has remained registered for the period referred to in paragraph 92(4)(b); and

   (b) that during that period there has been no use, or no use in good faith, of the challenged trade mark in relation to:

   (i) goods or services dealt with or provided in the specified place; or

   (ii) goods or services to be exported to the specified market;

   the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:

   (c) goods or services dealt with or provided in the specified place; or

   (d) goods or services to be exported to the specified market.

   Note: For limitations see section 6.

Discussion

Use of one of series is sufficient for all marks in series

1. The Attorneys for the Opponent have submitted the following:

   [The Challenged Trade Mark] is a series mark … It is accepted that the Opponent has only used the form DREAMAKER. However, that is sufficient to maintain the whole registration, in accordance with the decision of Landers J in Hills Industries Ltd v Bitek Pty Ltd:

   Hills argued that because the series of words DGTEC; DGTEK; DGTECH were registered under s 51(1)(d) of the Act on the basis that the differences between them do not substantially affect their identity and because Bitek has not challenged that aspect of the registration, Hills need only establish the use of the mark dgtec to rebut the allegation of non-use of the series of marks. I accept that argument. Because the three marks were registered as a series of marks it is enough for Hills to establish that one of the marks has been used in the relevant period.[3]

   [3] [2011] FCA 94, [258].

2. I note that the Trade Marks Amendment Act 2006 amended s 51 of the Act including entirely repealing sub-s (1)(d). Prior to the amendment the repealed provision read:

   51(1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

   (a) …

   (d) any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.

3. I am satisfied that because the Challenged Trade Mark was registered as a series of marks prior to s 51(1)(d) being repealed it is sufficient to rebut the allegation of non‑use if the Opponent establishes that one of the marks comprising the series has been used during the relevant period.

Use during the relevant period

1. As the Application is in respect only of the Relevant Goods (bedding being mattresses), to successfully oppose the Application it is necessary only that the Opponent establish that it has used the Challenged Trade Mark in the course of trade in respect of the Relevant Goods, in good faith, during the relevant period. The Opponent has provided six declarations in its EIS. Three of the declarations are from customers of the Opponent. It is useful to deal firstly with these.

2. The Wilson declaration states:

   Between the end of 2012 and the beginning of 2013, I ordered one DREAMAKER mattress and base from [the Opponent].

   The mattress ensemble was delivered to my home address …

   The mattress was purchased by Frazer Dale, a Carlton Football Club player, who rented a room in my home.

   I recall that the mattress ensemble would have been purchased between the end of 2012 and the beginning of 2013, as Frazer Dale was drafted into the Carlton Football Club in 2012.

   Now produced and shown to me and marked EXHIBIT SAW-1 is a copy of a consignment note dated 16 February 2012. This relates to the one queen bed DREAMAKER mattress that was purchased from [the Opponent]. I recognise my signature on the document where I signed for the delivery of the mattress.

Exhibit SAW-1 is as described by Ms Wilson and includes the word ‘SLEEPCRAFT’ and the Opponent’s details displayed prominently at the top of the consignment note. There are three items listed on the note, one of which is ‘QB DREAMAKER MATTRESS’.

1. I find there is a significant anomaly with Exhibit SAW-1. The date shown on the consignment note is, as declared, 16 February 2012. This date is well outside of ‘the end of 2012 and the beginning of 2013’ indicated by Ms Wilson as the period in which she most likely ordered the mattress. Relevantly, Ms Ryan, at Exhibit MMR-6 of her declaration, has provided a print out of a page from the Carlton Football Club website relating to Frazer Dale. This page indicates under the heading ‘Draft History’, that Mr Dale was a ‘2012 Rookie Draft selection (Carlton) No. 50.’ The page also indicates that Mr Dale made his debut with his club in round 17 of 2012. My own research indicates that the 2012 rookie draft was held on 13 December 2011.[4] My conclusion is that Ms Wilson has honestly mistaken the time period and has confused the end of 2011 with the end of 2012. The period from the end of 2011 to the beginning of 2012 better correlates with the date when Mr Dale was drafted and the date on the consignment note.

   [4] 2011 AFL Draft (28 June 2016) Wikipedia <>

   The Ozbilgin declaration states:

   In September 2013, I purchased one queen sized DREAMAKER mattress from [the Opponent].

   I made the purchase in September 2013, which fell within the school holidays, which I recall as I am a teacher.

   I recall that the mattress had the word ‘DREAMAKER’ on it.

   Now produced and shown to me and marked EXHIBIT CO-1 is a copy of a consignment note dated 23 September 2013. This relates to the queen sized DREAMAKER mattress that I purchased from [the Opponent]. I recognise my signature on the document where I signed for the delivery of the mattress.

Exhibit CO-1 is as described by Mr Ozbilgin. There are three items listed on the note, one of which is ‘DREAMAKER MATTRESS QB’.

1. The Armstrong declaration states:

   I am the Managing Director of my company, Bengo Industries Pty Ltd trading as Bed Collect, (Bed Collect). The main business of Bed Collect is to receive used mattresses, sanitise and refurbish them and either:

   (a)distribute them to charities at heavily discounted prices or as a donation;

   (b)sell mattresses at Bed Collect’s online store at heavily discounted prices; or

   (c)dismantle the mattresses and recycle the components. …

   In mid-2014 Bed Collect had a shortage of mattresses for charities. I contacted [the Opponent] and arranged for the purchase of DREAMAKER mattresses which Bed Collect then sold to welfare and affordable housing clients. I have made enquiries of my staff and they have informed me and I believe that the mattresses from [the Opponent] were labelled DREAMAKER. Now produced and shown to me and marked EXHIBIT BA-1 are true copies of an invoice and consignment note dated 20 May 2014 and an invoice and consignment note dated 16 June 2014 which have been obtained from Bed Collect’s records which evidence the purchase of these mattresses from [the Opponent].

2. Exhibit BA-1 to the Armstrong declaration consists of four documents largely as described in the declaration. However, the second invoice and consignment note appear to be dated 26 June 2014 rather than 16 June 2014 as indicated in the declaration. The documents dated 26 June 2014 are clearly marked with the Opponent’s details, in a manner typical of such documents, and list three items being two ‘Dreamaker Ensemble Queen Size’ and one ‘Dreamaker Ensemble Double Size’. The invoice dated 20 May 2014 is clearly marked with the Opponent’s details and lists a total of 12 items sized variously from single sized to king sized. These are listed in the manner ‘Dreamaker Ensemble Single Size’ to ‘Dreamaker Ensemble King Size’. I believe it is well understood that an ‘ensemble’ in connection with such goods includes a mattress and base combination. The consignment note dated 20 May 2014 reflects the items in the invoice.

3. Section 7(4) of the Act states that:

   In this Act ‘use of a trade mark in relation to goods’ means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)

   (emphasis in original)

4. Section 9 of the Act states that a trade mark is taken to be applied in relation to goods if it is used:

   in an invoice … or other commercial document and goods are delivered … to a person following a request or order made by referring to the trade mark as so used.

5. There is little doubt—and the Applicant has not suggested otherwise—that a consignment note falls within the definition of a commercial document. On the face of it, therefore, the three declarations discussed above appear to show use the Challenged Trade Mark in connection with the Relevant Goods during the Relevant Period.

6. Two of the declarations forming part of the EIS were made by the Opponent’s attorneys. Mr Schlicht and Ms Ryan visited the Opponent’s premises during the relevant period. Mr Schlicht has declared:

   On 15 May 2014 I attended the premises of [the Opponent] with Margaret Ryan of my firm and was met by the Managing Director … Amongst other things Mr Sahin showed me two mattresses which bore the trade mark DREAMAKER. Now produced and marked Exhibit CDS-1 are three photographs of those mattresses which I took with my mobile phone.

Ms Ryan declared similarly:

On 15 May 2014 I attended the premises of [the Opponent] with Chris Schlicht … We were met by the Managing Director … He showed us two mattresses bearing the trade mark DREAMAKER on large labels attached to the mattresses. … Chris Schlicht took photographs of these products on his mobile phone.

Exhibit CDS-1 clearly shows labels attached to mattresses as described by Mr Schlicht and Ms Ryan. The Schlicht and Ryan declarations are on the face of it strong evidence that the Challenged Trade Mark was used in connection with the Relevant Goods during the Relevant Period.

1. The EIS discussed above shows far from copious use of ‘DREAMAKER’ in connection with the Relevant Goods. However, it was stated by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds that a single use of a trade mark in good faith during the relevant period is sufficient to rebut an allegation of non-use,[5] and there have been several occasions where this has been sufficient.[6] However, it is to be noted that it was stated relatively recently by the High Court that:

   Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute ‘ordinary and genuine’ use judged by commercial standards.[7]

   [5] [2001] FCA 261, [14].

   [6] See for example: Settef Spa v Riv-Oland Marble Co (Vic) Pty Ltd (1998) 10 IPR 402, 439 (VSC); PD Licensing Ltd v Brunswick Corporation (2001) 54 IPR 64 (ATMO).

   [7] E&J Gallo Winery v Lion Nathan Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ) (citations omitted).

1. Taken at face value, the EIS discussed above is sufficient to establish use of ‘DREAMAKER’ in good faith by the Opponent in relation to the Relevant Goods during the Relevant Period. However, the Applicant has criticised the evidence, submitting:

   It is noted that the Opponent and registered trade mark owner has filed evidence that purports to show use on mattresses which is only from its retail premises in Melbourne and which is only for sales by word of mouth in the Melbourne metropolitan area in the relevant period.

   The Applicant Sleepeezee believes that the evidence should not be accepted at face value and there is not sufficient proof of use in good faith because:

   (a)the documentation being consignment notes and invoices and computer printouts is entirely self-generated by [the Opponent];

   (b)the documentation being consignment notes is redacted and not corroborated by the driver Andrew and/or the writer of the consignment notes;

   (c)the evidence does not have any corroborating evidence to prove manufacture of mattresses by a third party, nor sale and delivery of said mattresses from the third party to [the Opponent] as alleged by Ibrahim Sahin at paragraphs 3 & 9;

   (d)the evidence does not have any corroborating evidence to prove by when and from whom were the mattress labels themselves made and printed up;

   (e)mattress labelling is highly regulated and there is no proof of the affixation of mattress labels to the mattresses allegedly sold with labels thereon. Ibrahim Sahin at paragraph 10, merely asserts that the label was attached by the (unknown) manufacturer and bears an old address for [the Opponent].

   (f)no date is given for when [the Opponent] moved from its old premises in North Coburg to its new premises in Campbellfield. The consignment notes and tax invoices dating from January 2012 show the address as Campbellfield. Schlicht does not state the premises of [the Opponent] that he attended but it must follow that he went to Campbellfield. This glaring omission concerning dates and the old address for [the Opponent] on [the Opponent’s] mattress label is not consistent with its evidence of sales and its current trading premises. This invites the strong inference that the labels are not in good faith but printed to give the impression of old age and to a time pre 2012 for which there is no corroborated documentary evidence of sales. …

   (g)the evidence does not have any corroborating evidence to prove actual trading and money exchange such as banking records from the vendor ([the Opponent]) or from the purchasers;

   (h)there is no corroborating evidence from Frazer Dale the alleged purchaser of a mattress and no payment records;

   (i)there is no identification of, nor corroborating evidence from, “staff” in the vague reference to staff by Benjamin Armstrong at paragraph 3 of his declaration concerning the alleged purchase of mattresses and the memory or recall of labelling on those mattresses;

   (j)The business records of Bed Collect are the records of [the Opponent] only and there are no bank records of Bed Collect for the alleged purchases nor records of Bed Collect for the alleged forward sales to welfare and affordable housing clients. The receiver signature on the Consignment note is not identified;

   (k)Ibrahim Sahin at paragraph 9 has said he has sold mattresses since the 1990’s but this bald statement is not supported by any dated or datable evidence going back to the 1990’s. The earliest evidence of sales put forward is redacted consignment note 003451 dated 20/1/12.

   The evidence at best is incomplete and de minimis and fails to adequately show mattresses sold in trade.

2. I am not persuaded by the Applicant’s submissions that the EIS should not be taken at face value. However, it is necessary that I address the objections and have done so below. The Applicant’s submissions include criticisms of parts of the EIS which I have not yet discussed but which I will refer to as necessary. I have adopted the numbering used by the Applicant and my comments should be read in conjunction with the submissions:

   (a)That the consignment notes and invoices are created by the Opponent is not surprising and the Applicant has not indicated why this might affect their veracity. Indeed, it would be surprising if a customer generated either of those documents. The signatures on the consignment notes which acknowledge receipt of the goods appear to be hand written. In the cases of Ms Wilson and Mr Ozbilgin, both have declared that they recognise their signatures and have verified, to a sufficient degree, the date of the notes.

   (b)There are a number of consignment notes provided as Exhibit IS-9 to the Sahin Declaration which have had parts redacted. Mr Sahin declared that this was done to protect the privacy of his customers; such redaction is not unusual with evidence of this type. The consignment notes provided in Exhibits SAW-1, CO-1 and BA-1 are not redacted and have been verified by the respective declarants.

   (c)Proof of manufacture of mattresses is not necessary to rebut the allegation: the evidence provided and discussed above is sufficient.

   (d)Evidence as to the manufacture of the mattress labels is not necessary: the evidence provided and discussed above is sufficient.

   (e)The evidence provided is sufficient to satisfy me that labels were attached to the mattresses sold. In any event, use of ‘DREAMAKER’ in connection with mattresses on invoices and other commercial documents is sufficient.

   (f)the appearance of the North Coburg address on the mattress labels has been satisfactorily explained by Mr Sahin in his declaration where he stated at para 10:

   I note that [the mattress label] bears the old address of [the Opponent], namely 22-24 Mercier Street, North Coburg. … I have not had this label changed to reflect the change of address because the labels are expensive and [the Opponent] still has a stock of these labels. … When [the Opponent’s] stock of DREAMAKER labels is exhausted a new set will be printed showing [the Opponent’s] current address.

   (g)Proof of ‘actual trading and money exchange’ is not necessary: the evidence provided and discussed above is sufficient evidence of use in the course of trade.

   (h)Ms Wilson has declared that she ordered the mattress and signed for its receipt: it is not necessary that Mr Dale verify his purchase.

   (i)The identification of, and corroboration by, the staff referred to in para 3 of the Armstrong declaration is not necessary: the evidence provided and discussed above is sufficient.

   (j)The evidence provided by Mr Armstrong, when taken in conjunction with the other evidence discussed is sufficient.

   (k)It is only necessary that the Opponent establish use during the Relevant Period to rebut the allegation of non-use.

3. The Opponent has submitted the following:

   [The Applicant] has not filed any evidence in these proceedings. … There is no evidence that [the Challenged Trade Mark] has been used otherwise than in good faith. Mr Sahin has made a statutory declaration, rendering him liable to penalty if the declaration were not true, that mattresses bearing [the Challenged Trade Mark] were sold for profit during [the Relevant Period] and there is ample corroboration of these sales.

   This is not a case which turns on one piece of evidence. There are six different statutory declarations providing evidence of use in [the Relevant Period], all signed by persons who would be the subject of a penalty if the declaration were shown to be false. It is submitted that the Opponent has established on the balance of probabilities that [the Challenged Trade Mark] has been used in good faith in [the Relevant Period].

4. I am satisfied by the EIS that the Opponent has used the Challenged Trade Mark in connection with the Relevant Goods during the Relevant Period and has rebutted the allegation of non-use raised under s 92(b) of the Act.

Should the registration be restricted?

1. The Applicant has submitted that:

   [I]f the evidence were to be accepted at face value … the geographic use is limited and localised to the Melbourne metropolitan area and the registration 718385 should be restricted to the localised area of the Melbourne metropolitan area with respect to mattresses.

   This restriction is allowed under the application of section 102 of [the Act] in that the Applicant Sleepeezee has on 4 August 2015 filed its own trade mark application 1711797 for the marks DREAMMAKERS, DREAM MAKERS and [DREAMAKERS] for inter alia, mattresses and beds and seeks registration for these its marks based on Australia-wide sales of mattresses under the mark DREAMMAKERS since the early 1990s.

   The Applicant Sleepeezee will achieve a registration based on that use Australia‑wide based on first use and/or prior continuous use and/or honest concurrent use. If the registration is restricted, based on any claim by Sleepcraft, that claim can be no greater than to the use shown herein, being the Melbourne Metropolitan area since 20/1/2012.

   That use is not honest concurrent use nor is it prior use.

The Opponent has made no submissions in respect of s 102.

1. The Applicant has submitted that a restriction be imposed upon the Challenged Trade Mark limiting the protection provided by its registration to ‘the localized area of the Melbourne metropolitan area with respect to mattresses’. Such a restriction would require an endorsement be entered on the Register in terms similar to the following:

   Registration of this trade mark does not extend beyond the Melbourne metropolitan area. This geographical restriction applies only in respect of mattresses.

The complementary restriction for the Applicant’s Trade Mark would be along the lines of:

Registration of this trade mark does not extend to the Melbourne metropolitan area. This geographical restriction applies only to mattresses.

1. While seemingly theoretically possible, these endorsements appear problematic. The first difficultly, it seems to me, is the uncertainty of what constitutes ‘the Melbourne metropolitan area’. Even were it to be determined at a particular point in time the geographical area is likely to change over time with urban growth. This may have the effect of increasing the scope of the Opponent’s registration and decreasing the scope of the registration of the Applicant’s Trade Mark. The second difficulty in my mind is that such finely tuned endorsements partially restricting the scope of trade mark registrations in the hope of enabling them to co-exist while at the same time aiming to limit the risk of confusion seems equally problematic: the Act is a tool of broad strokes rather than a scalpel. Consequently, I am not satisfied that it would be appropriate to exercise the discretion under s 102(2) to impose limitations upon the Challenged Trade Mark, were the discretion available to me. Whether the discretion is available to me, is moot, and it is unnecessary that I decide the issue.

Decision

1. As the Opponent has successfully rebutted the allegation of non-use, and the Applicant has not satisfied me that the discretion available to me under s 102 should be exercised, the Applicant has not been successful in its application. I decide therefore that the Trade Mark not be removed from the Register.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has successfully opposed removal of the Trade Mark, I award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Robert Wilson
Hearing Officer
Trade Mark and Designs Hearings
13 July 2016