Southcorp Brands Pty Ltd v Can Industries Pty Lt

[2014] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Brands Pty Ltd to registration of trade mark application 1444788 (35) – 707 estate - filed in the name of CNA Industries Pty Ltd

Delegate:	Debrett Gordon Lyons
Representation:	Opponent: Peter Wallis of Counsel, instructed by Allens, Patent & Trade Mark Attorneys Applicant:  No appearance and no written representations
Decision:	2014 ATMO 27 S 52 opposition: sections 42(b), 44, 59, 60 and 62A pressed; s59 established – no intention to use the trade mark. Costs awarded against Applicant

Background

1. CNA Industries Pty Ltd (‘the Applicant’) made application under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, details of which follow:

   Application No:         1444788
   Priority Date:             25 August 2011

   Goods/Services:         Class: 33 Beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified wines; ginger wine; mulled wines; non-sparkling wines; red wine; sparkling fruit wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet sparkling wine; sweet white wine; sweet wine; vintage wines; white wine; wine. 

   Class: 35 Export agency services; export promotion services; export services, not being transport services; export-import agency services; import-export agencies; import-export agency services  

   Trade Mark:               707 estate       (‘the Trade Mark’)

2. The application was examined as required by section 31 of the Act and an examiner raised a ground for rejection of the application under section 44 on the Act by reason of earlier registration 867037 for the trade mark “BIN 707” in class 33 owned by Southcorp Brands Pty Ltd (‘the Opponent’). The examination report stated that the Applicant could overcome the objection by deleting the class 33 claim in its entirety and proceeding only with the class 35 claim.

3. On 2 November 2011, the Applicant notified the Trade Marks Office that it would delete the claim in class 33 and on 4 November 2011, the Registrar accepted the amended application, with acceptance publicly advertised on 15 December 2011.

4. On 15 March 2012, the Opponent filed Notice of Opposition to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds pursued by the Opponent under sections 42(b), 44, 59, 60 and 62A.

5. The Opponent has filed evidence as detailed below.

   ·     statutory declaration of Sandra Elizabeth Forman made 15 June 2012;

   ·     statutory declaration of Sandra Elizabeth Forman made 17 December 2012;

   ·     statutory declaration of Owen John Malone made 7 February 2013;

   ·     statutory declaration of Francis James Halliday made 20 February 2013; and

   ·     statutory declaration of Sandra Elizabeth Forman made 14 February 2013.

6. The Applicant has not filed any evidence or taken any part in the proceedings.

7. The Opponent asked to be heard.  A hearing was convened and conducted in Melbourne on 17 March 2014 before me, Debrett Lyons, acting as a delegate of the Registrar of Trade Marks.  At the hearing, the Opponent was represented by Peter Wallis of Counsel, instructed by Allens, Patent & Trade Mark Attorneys, who also relied on written submissions he had prepared and filed prior to the hearing.  Nothing was received from the Applicant and there was no appearance by the Applicant.

   Decision

8. At the Priority Date, subsection 55(1) of the Act provided:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

9. It is normal for a decision to be reserved when an opposition is heard but in this case and for reasons which follow hereunder a decision was made at the hearing. 

10. The Opponent has established a ground on which the application was opposed, namely, section 59 of the Act. I therefore refuse to register the trade mark application.

    Reasons for Decision

11. Section 59 of the Act provides:

    59Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)to use, or authorise the use of, the trade mark in Australia; or

    (b)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 specified in the application.

    Note:For applicant see section 6.

12. The Opponent’s evidence shows use of the Trade Mark on wines, but no use in relation to services of any kind.  It is the Opponent’s contention that the Applicant does not intend to use the Trade Mark in respect of the services nominated by the application.  In particular, the Opponent relies on the Applicant’s lack of evidence, lack of response to written and telephoned offers to negotiate a settlement, and absence of submissions.

13. Generally, the Opponent bears the onus of establishing a ground of opposition on the balance of probabilities and the relevant time at which the ground must be proven is the Priority Date of the application. In the case of section 59, those general statements are subject to certain qualifications, the first being that the Opponent bears the onus of showing a prima facie case of lack of intention to use the Trade Mark.  A mere allegation of non-use is not enough by itself to shift the onus but once a prima facie case has been made out, the evidentiary onus moves to the Applicant.   Secondly, whilst the ground must be established at the Priority Date, action or inaction on the part of the Applicant afterwards can cast light on the Applicant’s intentions at that relevant time.

14. The Opponent referred me to the decision of Hearing Officer Thompson in Adbri Masonry Group Pty Ltd v Ecopave Australia Holdings Pty Ltd [2011] ATMO 42 in which case the opponent was the registered owner of the trade mark ECOPAVE in class 19 for building materials. The applicant in that case had previously applied to register the trade mark ECOPAVE AUSTRALIA in class 19 for asphalt, pitch and bitumen. Following an adverse report issued by the examiner, the applicant filed further trade mark applications for ECOPAVE AUSTRALIA, culminating in the opposed application in class 42 for services described as “design and development of products; scientific, technological, research and design services”.  The evidence showed that the applicant was developing an asphalt bitumen for use as a surface on roads, pavements and pathways that would compete with the opponent’s products and that this was the only product mentioned on the applicant’s website.

15. Hearing Officer Thompson wrote:

    24.    The applicant enjoys a prima facie presumption that he intends to use the opposed trade mark which arises from the act of filing the application for registration:  Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391. This presumption arising from filing may be challenged by evidence from the opponent that establishes the contrary: Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254, thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.

    25. The evidence of the opponent has put the applicant on notice that a ground under section 59 of the Act would be argued at the hearing of the matter: Phillip Morris Products SA v Sean Ngu [2002] ATMO 96. The evidence of the opponent (and, indeed, the applicant’s own evidence) in regard to section 59 is also sufficient to establish a prima facie case that the applicant does not intend to use the opposed trade mark in relation to the nominated services. Thus the onus is transferred onto the applicant to show that it intends to use the opposed trade mark in relation to the nominated services. The applicant has had an opportunity to respond to the opponent’s allegation and discharge this onus and has not done this.

    26.    Further, in Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 Kitto J said at 312:

    (i)that the absence of the defendant Hegedus as a witness cannot be used to make up any deficiency of evidence;

    (ii)that evidence which might have been contradicted by the defendant can be accepted the more readily if the defendant fails to give evidence;

    (iii)that where an inference is open from facts proved by direct evidence and the question is whether it should be drawn, the circumstance that the defendant disputing it might have proved the contrary had he chosen to give evidence is properly to be taken into account as a circumstance in favour of drawing the inference.

    27.    I take the inference from the evidence of the parties that the applicant has not responded to the opponent’s evidence that the applicant does not intend to use the opposed trade mark in relation to the services nominated on the application because it cannot do so as it has no intention of using the opposed trade mark in relation to the nominated services, ie to design and develop products for clients rather than on its own behalf.

    28.    In my consideration, the applicant’s evidence establishes that if it has any intention to use the opposed trade mark it is in relation to the bituminous asphalt product which it is development and not in relation to the nominated services.

16. Put another way, it is imperative that the Applicant have a real and definite intention to use the Trade Mark and to do so the Applicant must intend to offer the nominated services to third parties, rather than just undertaking such activities in respect of its own goods. 

17. Here, the Applicant has been put on notice that its intention to use the trade mark is in issue.  It chose not to respond to that challenge and so it is open to me to draw certain inferences therefrom having regard to the evidence as a whole.

18. In that respect, the Applicant originally sought to register the Trade Mark for wine and other related class 33 goods as well as export and import agency services and related services in class 35.  The evidence shows that the Opponent has a considerable reputation in the trade marks BIN 707 and 707 in respect of table wines.  The evidence also shows that the Applicant is using the Trade Mark in respect of wine only.   The Notice of Opposition raises lack of intention to use the Trade Mark as a ground of opposition.  The Applicant’s failure to file any evidence in these proceedings means that there is no evidence as to its intention to use the Trade Mark in respect of the nominated services.  There is no evidence of any actual use of the Trade Mark in respect of those services and given the Applicant’s willingness to delete from its application the very goods in respect of which there has been use of the Trade Mark, I draw the inference that any intention to use which did exist at the Priority Date was an intention to use the Trade Mark in respect of services incidental to the sale of those class 33 goods not being use of the Trade Mark in connection with the offer of services to third parties.  Nothing in the evidence shows a different intention after the Priority Date.

19. The ground under section 59 of the Act is established.

    Costs

20. Having been successful in this matter the Opponent is entitled to its costs at the official scale.

    Debrett Gordon Lyons
    Hearing Officer
    Trade Marks Hearings
    28 March 2014