South African Airways (Proprietary) Limited v Virtuoso Ltd

[2007] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by South African Airways (Proprietary) Limited to application under section 92 of the Act by Virtuoso Limited to remove trade mark number 644176(35, 39) - VOYAGER - in the name of South African Airways (Proprietary) Limited

Delegate:	Alison Windsor
Representation:	Opponent:  Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys Applicant:  Wayne Willis of F B Rice & Co, Patent and Trade Mark Attorneys
Decision:	2007 ATMO 66 S92 opposition: Applicant does not have standing as person aggrieved – registration to remain on the register for all services

Background

1. Virtuoso Limited, a Delaware corporation, (“the applicant”) filed an application under the provisions of section 92 of the Trade Marks Act 1995 (“the Act”) in respect of the following trade mark registration:

   Registration no.:       644176
   Owner:                      South African Airways (Proprietary) Limited
   Registered from:       28 October 1994

   Services claimed:      Class 35:  Administering the allocation of "Frequent User" credits to customers

   Class 39:  Transportation services in this class
   Trade Mark:             VOYAGER

2. The application for removal was made under the provisions of paragraph 92(4)(b), and sought removal only of the services claimed in class 39.  Class 35 was to remain in the registration.  As the application was received in the Trade Marks Office on 20 October 2005, the relevant dates for the purpose of the application are 20 September 2002 to 20 September 2005.

3. On 10 February 2006, South African Airways (Proprietary) Limited (“the opponent”) filed a notice of opposition to the removal application.  The notice challenged the applicant’s status as a person aggrieved, and claimed use of the trade mark within the relevant period.  Evidence in support, in answer and in reply were filed in due course and on 5 April 2007 the opponent requested a hearing.

4. The matter came before me as a delegate of the Registrar in Sydney on 17 May 2007.  The applicant was represented by Wayne Willis of F B Rice & Co.  Trevor Stevens of Davies Collison Cave represented the opponent.

   Evidence

5. The evidence from both parties in this matter is brief.  Evidence in support consists of a declaration by Thevandra Krishna, regional manager of South African Airways (Proprietary) Limited of Sydney.  Mr Krishna states that his company is a wholly owned subsidiary of the opponent, a company based in South Africa, and is an authorised user of the trade mark VOYAGER in Australia.

6. Mr Krishna states that the opponent operates a wide-ranging loyalty and awards program under the trade mark which has been in operation in Australia and in many other countries since 1994.  He notes there are offices of the company in Australia, specifically in Sydney, Melbourne and Perth.

7. Attached as Exhibit A to the Krishna declaration is a copy of the “Member Programme Guide”, dated 2004, for the services offered under the VOYAGER trade mark.  This guide details how members of the program are able to accrue “miles” in order to receive awards.  The award system includes air line flights, arrangements for car rentals, excess baggage allowances and check-in services, all of which appear to be offered only by the opponent’s own offices.  Other awards, such as accommodation and other forms of transport, are provided by the individual organization upon production of a member’s VOYAGER card.

8. The declaration states that the frequent flyer program became global in extent following the opponent’s joining STAR alliance, an affiliation of eighteen airlines around the world, in April 2006.  Current membership figures are given for Australia, however these figures appear to be outside the relevant period.

9. The evidence in answer consists of a declaration made by Wayne Keith Willis, solicitor and partner of FB Rice & Co, patent and trade mark attorneys.  Mr Willis notes that the non-use applicant has applied for a trade mark registration in Australia, details of which follow:   

   Application no.:         963873
   Owner:                      Virtuoso Ltd
   Filing Date:               29 July 2003

   Services claimed:      Class 35:  Business marketing consultation services for others in the field of travel, including marketing for travel agencies, cruise-lines, and packaged travel services

   Class 39:  Travel agency services, including making reservations and bookings for transportation; arranging travel tours; travel guide services; travel information services; providing information in the field of travel by means of a global computer network
   Class 43:  Travel agency services, including making reservations and bookings for temporary lodging, restaurants, and meals

   Trade Mark:             VOYAGER CLUB

10. This application is still under examination, and the opponent’s registration has been cited as an obstacle to its acceptance.  Mr Willis states that the conflict lies within the claim for services in class 39, and appends a copy of the examiner’s third report as evidence of the reasoning behind the citation.  The remainder of the declaration refers to the opponent’s frequent flyer program, placing it into class 35 and noting that it appears to be administered from South Africa and that there is no Australian web site for the company.  No information about the applicant’s services either in Australia or elsewhere is provided.

11. The evidence in reply consists of a second declaration by Thevandra Krishna.  Mr Krishna refers to the opponent’s web site, being accessible globally; notes the number of on-line ticket sales in Australia for the years 2004 to 2006 inclusive and refers back to some of the information in his first declaration in response to specific issues raised in the Willis declaration.

    Discussion and Reasons

12. As the opponent has challenged the applicant’s standing as a person aggrieved, it is necessary that I consider this matter first.  The applicant’s standing under the legislation applicable to this non-use application[1] is a threshold matter – if the applicant does not have the requisite standing, the application fails at that point, without consideration of whether the trade mark under attack has or has not been used.

    [1] Subsection 92(1) was amended by the Trade Marks Amendment Act 2006 to remove the requirement for the removal applicant to be a person aggrieved. Removal applications filed prior to 23 October 2006 proceed under the provisions which applied at the time of filing. In this respect, refer to the discussion of the effects of legislation amendments (in respect of section 60, but applicable to section 92) in the MACRON decision, Apple Computer Inc v TodayTech Group Ltd, 2007 ATMO 40.

13. Mr Willis referred me to the statements of the law from Unilever v Karounos[2] where Hill J said the following:

    The principles upon which the Court has determined whether a person is a "person aggrieved" within the meaning of the Act were stated by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-196 ("Ritz Hotel") and have been approved by Full Courts of this Court in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 113 and Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363. Relevantly, they may be expressed as follows:

    (a) The expression "person aggrieved" has no special or technical meaning and is to be liberally construed.

    (b) The expression includes any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the mark remaining on the Register.

    (c) The question whether an applicant for relief is a "person aggrieved" cannot be divorced from the nature and extent of the relief claimed. A person must be aggrieved in relation to the category of goods and services in respect of which they are seeking to have the trade mark cancelled.

    (d) The material time at which a person must be aggrieved is the date of application. That is, the date of the commencement of the proceedings in which the claim for that relief is made.

    [2] Unilever Australia Ltd v Karounos (2001) 52 IPR 361

14. Mr Stevens referred to Kraft Foods and to Woolly Bull[3] where Drummond J observed:

    It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods.  Such a person cannot be said to be “appreciably disadvantaged in a legal or practical sense” by a mark he wishes to attack remaining on the Register …

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166; 51 IPR 149

15. At the hearing, Mr Willis provided the following as part of his written submission:

    If the principles of McLelland J as restated by Hill J. in Unilever (supra) are applied in the present matter it is difficult to conclude that the removal applicant is a “person aggrieved” in relation to the continuing existence of registration 644176 for the specification of “transportation services” per se in class 39.  The removal applicant is not seeking registration in respect of such services and does not intend to use its own trade mark in relation to such services.  Its interest is limited solely to the extent to which registration 644176 prevents the acceptance of application 963873 and it is this interest that has been put into evidence by way of the third examination report for application 963873.  In reality it is the decision of the examiner for application 963873 that the description “transportation services” for registration 644176 encompasses certain services that may be regarded as services of the same description as some of the services specified in class 39 for application 963873 that caused the removal applicant to be a person aggrieved and it is, of course only aggrieved in relation to the continuation of those certain services in the class 39 description for 644176.  Clearly the removal applicant has no “interest” in the removal of any services in class 39 other than those that prevent the acceptance of application 963873 and it cannot establish any wider interest by simply evidencing its intention to use its own trade mark. 

16. It is clear from the above submissions that the applicant has a wish to at least co-exist with the opponent in the Australian market, and considers that its services in class 39 and those of the already registered trade mark do not conflict. I am thus left wondering why the applicant chose to mount a non-use attack without providing supporting evidence of use or intended use, in circumstances where other options were available: options such as an ex-parte hearing in the matter of the section 44 ground for rejection; negotiation with the trade mark owner over the service claims in class 39 or, if practicable, use of the provisions afforded by subsection 44(3) (honest concurrent use or other circumstances). The scheme of the Act is the registration of rights – not the establishment of rights by registration: PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.

17. In any event, in non-use matters the case law is clear – the mere existence of a trade mark application which has been blocked by a pre-existing registration is insufficient, without more, to give a non-use applicant standing.  The applicant here has not provided that extra information required to show it is “appreciably disadvantaged in a legal or practical sense”.  I have been provided with nothing, apart from the pending application, to show the applicant has even an intention to use its trade mark within Australia, let alone any evidence of current use.  Under these circumstances, it is simply not possible for me to afford the applicant the status of a “person aggrieved”, and this application therefore fails at the threshold.

    Decision

18. The non-use applicant does not have the standing as a person aggrieved that was required by section 92 of the Act as it applied at the time this application was filed. The application therefore fails at the threshold. I refuse to remove registered trade mark 644176 from the register.

    Costs

19. The opponent has requested its costs, and having been successful is so entitled.  I award costs against Virtuoso Ltd according to the official scale.

    Alison Windsor
    Hearing Officer
    Trade Marks Hearings
    09 October 2007