Starite Distributors Pty Ltd v Nordstrom, Inc

[2004] ATMO 75

TRADE MARKS ACT 1995

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

Re:Oppositions by Starite Distributors Pty Ltd to an application under section 92 of the Act by Nordstrom, Inc to remove trade mark number 745906(24 and 25) - NORDSTROM - in the name of Starite Distributors Pty Ltd

Delegate:

Mary Skivington

Representation:

Opponent: Stephen Wilson of Griffith Hack, Patent and Trade Mark Attorneys.

Applicant: Ben Fitzpatrick of counsel instructed by Susan Spicer of Davies Collison Cave, Patent and Trade Mark Attorneys.

Decision:

Trade mark to be removed from the Register for ‘Ladies’ dresses and ladies’ knitwear.’

Background

1.     Trade mark registration 745906, for the trade mark NORDSTROM, is registered in the name of Starite Distributors Pty Ltd, (‘the opponent’). The registration has effect from 9 October 1997. The trade mark is registered for goods in two classes, namely, Manchester in class 24 and Men’s shirts, men’s jackets, ladies’ dresses and ladies’ knitwear in class 25.

2.     Nordstrom, Inc, (‘the applicant’), filed an application for removal of the trade mark from the Register on 19 December 2002 in respect of all the goods in class 25. The applicant claimed standing as a ‘person aggrieved’ within the meaning of the Trade Marks Act 1995, (‘the Act’), and the grounds upon which the application was made fall within the provisions of subsection 92(4)(b) of the Act.

3.     The declaration that accompanied the application states that an investigation was conducted to ‘ascertain if Starite Distributors Pty Ltd is using or has used the trade mark during the relevant period’ and that despite extensive enquiries no use of the trade mark NORDSTROM was disclosed. These findings support the application in terms of subsection 92(4)(b) of the Act. The relevant period is from 19 November 1999 to 19 November 2002.

4.     The application was advertised for opposition purposes in the Australian Official Journal of Trade Marks on 23 January 2003. The opponent filed a Notice of Opposition to the application on 19 February 2003 in which it claimed that:

·the applicant was not a person aggrieved within the meaning of section 92;

·The conditions required by subsection 92(4)(b) had not been fulfilled;

·the trade mark has been used within the relevant period; and

·The Registrar’s discretion should be exercised in favour of the registered trade mark.

5.     Both parties filed and served evidence in support of their respective positions and in due course the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne, on 17 September 2004. The removal applicant was represented by Mr Ben Fitzpatrick of counsel instructed by Ms Susan Spicer of Davies Collison Cave, Patent and Trade Mark Attorneys. The opponent was represented by Mr Stephen Wilson of Griffith Hack, Patent and Trade Mark Attorneys.

The Evidence

6.     Statutory declarations as set out in the table below were filed by the respective parties.

Evidence in support

Date	Declarant	Exhibits
11 July 2003	Douglas Zapelli, Director of Starite Distributors  Pty Ltd	DZ-1 to DZ-4
16 July 2003	Anthony Iudica, menswear buyer for Dimmeys Stores Pty Ltd	none

Evidence in answer

Date	Declarant	Exhibits
13 November 2003	Maree Milner, secretary, employed by Davies Collison Cave	MM1
14 November 2003	Susan Spicer, trade mark attorney employed by Davies Collison Cave	SS1 to SS5

Evidence in reply

Date	Declarant	Exhibits
6 May 2004	Brian Swersky, formerly a Director of Dimmeys Stores Pty Ltd	none
13 May 2004	Douglas Zapelli, Director of Starite Distributors  Pty Ltd	DZ-5 to DZ-7

Supplementary declarations

Date	Declarant	Explanation
13 September 2004	Stephen H Wilson Patent Attorney of Griffith Hack.	To correct an error in drafting declarat -ions in support and in reply.
14 September 2004	Brian Swersky, formerly a Director of Dimmeys Stores Pty Ltd.	To confirm that a date error made in the declaration of 6 May 2004.
14 September 2004	Anthony Iudica, menswear buyer for Dimmeys Stores Pty Ltd	To confirm that a date error made in the declaration of 16 July 2003.
11 October 2004	Douglas Zapelli, Director of Starite Distributors Pty Ltd	To offer a reason for a discrepancy in two exhibits.

Evidence in support

Douglas Zapelli

7.     Mr Zapelli declares that his company adopted the trade mark NORDSTROM in mid 1997 and filed an application to register the trade mark on 9 October 1997. He declares that over the next few years his company investigated manufacturers and other suppliers of clothing. Mr Zapelli avers that in June 2000, his company commissioned a shipment of clothing made in accordance with his directions in China and trade marked, NORDSTROM. Exhibit DZ-1 is an invoice dated 28 June 2000 for men’s shirts and jackets bearing the NORDSTROM trade mark. Exhibit DZ-2 is an invoice dated 3 October 2000, from the same company, for boots, men’s polo shirts and t-shirts, the latter two items trade marked, NORDSTROM. Exhibit DZ-3 is an invoice for a consignment of clothing from India. Mr Zapelli declares that these goods were sold in Australia by Dimmeys Stores Pty Ltd from July 2000 to January or February 2002. Exhibit DZ-4 is a photocopy of a clothing label showing the NORDSTROM mark which Mr Zapelli declares was attached to clothing.

Evidence in answer

Maree Milner

8.       Milner declares that between 31 October 2003 and 12 November 2003, almost twelve months after the filing of the removal application, she telephoned thirty-seven Dimmeys stores to make inquiries about NORDSTROM branded men’s clothing and except in three cases was informed that the NORDSTROM brand had never been stocked. (The enquiries were, I expect, limited to men’s clothing only, to accord with the evidence in support that did not indicate that there had been any use in respect of clothing for women).  Ms Milner does not identify the persons with whom she spoke or their positions in the company except in respect of three persons who were identified as sales assistants. Ms Milner reports that a sales assistant at the Gosford store recognized the brand as one for men’s business shirts but informed her that if the brand had been purchased at his store it must have been ‘a long time ago’. Ms Milner reports that she also spoke to sales assistants at the Geelong and Richmond stores both of whom recognized the brand, although one stated that the store ‘may have stocked business shirts in the past’ and the other said, ‘We had them a long time ago – it was just a special line we got in.’

Susan Spicer

9.     Ms Spicer declares that the applicant is the owner of trade mark application number 852813 which was divided out from now lapsed trade mark application number 776591. The subject mark was cited against both of these trade marks.

10.   Ms Spicer declares that by letter dated 11 December 2000, (Exhibit SS2), the applicant was warned that any use of its trade mark would be an infringement of the NORDSTROM registration and would accordingly be prosecuted. The writer claimed that he acted on behalf of Starite Distributors Pty Ltd and identified himself as Brian Swersky, Joint Managing Director of Dimmeys Stores Pty Ltd.

11.   Ms Spicer provides a brief history of the applicant’s beginnings as a shoe store founded in 1901 by John W Nordstrom and a partner, through to its present position of being a large, fashion retailer in the United States of America with 147 stores that offer a wide variety of clothing, shoes and accessories for men, women and children. It is also a provider of clothing mail order services and online retailing services within the United States of America.

12.   Ms Spicer declares that on 1 October 2002 she commissioned Moutsias Management Services Pty Ltd to conduct an investigation into use by the opponent of the trade mark NORDSTROM in respect of men’s shirts, men’s jackets, ladies’ dresses and ladies’ knitwear.

13.   Exhibit SS3 is a copy of the report prepared by Michael Moutsias. Mr Moutsias reports that he made inquiries at eight Dimmeys stores in Victoria where the majority of respondents advised that they knew of the mark in respect of manchester but none of them recognized the mark in respect of clothing. Mr Moutsias then extended his search to nineteen menswear retailers, seven clothing retailers and twelve camping equipment or disposal store outlets. While several respondents, when questioned as to their knowledge of the trade mark NORDSTROM, made inconclusive statements such as ‘it rings a bell’ or ‘it’s vaguely familiar’ and three recognized the mark as an American trade mark the majority of respondents had never heard of the trade mark in respect of clothing of any kind.

Evidence in reply

Brian Swersky

14.   Mr Swersky declares he is currently a consultant to Dimmeys Stores but that during the period July 2000 to February 2003, (subsequently amended to 2002), he was a Director of Dimmeys Stores. He reports that Dimmeys Stores Pty Ltd is a wholesale customer of the opponent and although Mr Zapelli is a Director of both companies they are otherwise independent companies. Mr Swersky asserts that clothing bearing the NORDSTROM trade mark was sold in Dimmeys Stores during the relevant period and that Ms Milner’s lack of success in finding staff awareness of the trade mark may have been due to her failure to speak to the appropriate people. He reported that Dimmeys have a high turnover of staff about two thirds of whom are casuals who may only work for a few hours or a few days per week. He declares that such people only process sales and generally have very little product knowledge. Additionally, Mr Swersky avers that it is possible that NORDSTROM marked clothing was only distributed to certain stores at different times depending on factors such as store needs, promotions or events occurring at particular times within the region of a store.

Zapelli (2)

15.   Mr Zapelli’s second declaration is comprised of exhibits being customs documentation related to the importation of clothing referred to in his first declaration. 

The Legislation

16.   In accordance with section 100 of the Act when an application is made under the provisions of section 92(4)(b) the onus falls to the opponent to rebut any allegation 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.

17.   Section 101 authorises the Registrar to remove the trade mark from the Register in respect of any or all of the goods to which the application relates providing the Registrar is satisfied that the grounds on which the application was made have been established.

Person Aggrieved  

18.   Mr Wilson submitted that the mere lodgment of an application to register a trade mark does not establish that the applicant has a real business interest in trading under the mark and does not give a person standing as a person aggrieved in a removal action.

19.  Kraft Foods v Gaines Pet Foods Corporation, 34 IPR 198, found that the filing of an application to register a trade mark along with a statement of intention to use are not sufficient to establish that a removal applicant qualifies as a person aggrieved. While the similarities in the markets of Australia and the United States are such that an extension of the applicant’s trade to Australia could be a serious prospect I have no evidence to show that the applicant does in fact intend to use the trade mark in Australia.

20.   However, Mr Swersky, acting on behalf of the opponent, has threatened the applicant with prosecution for infringement if it should use its trade mark in Australia and this does have an effect the applicant’s standing as a person aggrieved. In Continental Liqueurs Proprietary Limited v G F Heublein and Bro Inc, (1960) 103 CLR 422 Kitto J held that in respect of being a person aggrieved,

It is enough to say that the respondent has shown an intention of preventing the applicant from using the word, if by any means it can do so, and on some future occasion it may well rely for this purpose on the trade mark now in question. The applicant has applied for registration …and the examiner has made adverse reports under s33(2) on the ground, amongst others, that …the proposed  …mark …so closely resembles the [opponent’s] mark as to be likely to deceive. … In all the circumstances it seems to me too clear for argument that the applicant has a substantial business interest in getting the trade mark removed from the register, and accordingly is entitled to maintain the application as a person aggrieved.

21.   For this reason I find that the removal applicant is entitled to claim that it is a person aggrieved.

Use During The Relevant Period

22.   Mr Wilson submitted that the opponent had established use of its trade mark during the relevant period and referred to the sale of goods by the opponent to Dimmeys Stores and through that entity to their customers. He noted that the declaration of Anthony Iudica confirms that sales of NORDSTROM marked clothing were made through Dimmeys Stores. Mr Wilson argued that the customs documentation confirms use of the trade mark during the relevant period.

23.   Exhibit DZ-3 is supposedly a true copy of the invoice for goods purchased from India in December 2001. However, it is in fact an amended invoice reissued in February 2003 at the opponent’s request which indicates that the goods carried the NORDSTROM trade mark. The subsequently provided customs documentation, (DZ-7) does not in fact refer to the mark. It may be the case that the consignment of clothing was trade marked NORDSTROM but the reissuing of an altered invoice looks like a clumsy attempt to correct what may have been an oversight in the original document.

24.   Mr Fitzpatrick submitted that evidence of importation of goods to which a trade mark has been affixed, without more is not evidence of use of the trade mark in the course of trade in Australia and was critical of the opponent’s failure to provide documentary evidence of actual sales in Australia. In support of his submissions he referred to authorities such as Re Munch’s Application,(1883) 50 LT (NS) 12, Jackson & Co v Napper, (1886) 4 RPC 45, Re Meeus’ Application , (1891) 1 Ch 41, Re Registered Trade Mark “Yanx”, Ex Parte Amalgamated Tobacco Corp Ltd, (1951) 82 CLR 199, Oakley Inc v Franchise China Pty Ltd, [2003] AIPC 91-868 and Armci steel Corp & Armco, Inc v Road & Construction Supplies of Australia,(2000) AIPC 91-647.

25.   He further argued that it would be unsafe to rely on the statutory declarations of Mr Swersky and Mr Iudica. This was because in subsequent declarations, filed shortly before the hearing, each stated, ‘I am told that it was the intention of the person preparing the draft declaration for execution to refer to a date of July 2000 to February 2002.’ I am not persuaded that the drafter of the original declarations was doing other than reflecting the facts as known by Messrs Swersky and Iudica. I consider that a typographical error was made and that all parties failed to observe the declarations referred to February 2003 instead of February 2002.

26.   While the opponent’s evidence is not as detailed or complete as it could have been I consider it is sufficient to establish that bona fide trade under the NORDSTROM trade mark has occurred during the relevant period. As a menswear buyer for Dimmeys Stores Mr Iudica declares that on the basis of his own knowledge of the facts and the records of Dimmeys Stores Pty Ltd he is able to state that clothing purchased from the opponent, with the NORDSTROM trade mark was sold at Dimmeys Stores during the relevant period. Mr Swersky also declares that clothing under the NORDSTROM trade mark was purchased from the opponent for sale at Dimmeys Stores. Mr Zapelli declares that the imported goods were sold to Dimmeys Stores Pty Limited for sale in Australia through its network of stores. Exhibits DZ-5 and DZ-6 comprise the customs documentation for the importation by the opponent of NORDSTROM men’s shirts and jackets from China in 2000. The first invoice is dated June 28, 2000 and the second is dated Oct.3, 2000. In total the opponent imported almost forty-six thousand shirts and jackets during the relevant period. From my own knowledge I know that Dimmeys Stores is one of the oldest retailers in Australia which seems to focus on a rapid turnover of bargain priced items. I think it is likely that the NORDSTROM goods sold to it by the opponent could have been sold in a relatively short space of time before staff had developed any real awareness of the mark let alone fixed it in the memory.

27.   Nonetheless, I find that there has been genuine commercial use of the mark in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal, Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 ("Woolly Bull") at paragraph 17. The use however, has only been in respect of men’s shirts and jackets. The opponent has shown no use in respect of clothing for women.

Decision

28.   I find that the opponent has satisfied the onus put upon it to demonstrate use of its trade mark during the relevant period for men’s shirts and jackets. I therefore refuse to remove the registration in respect of these goods and dismiss Nordstrom, Inc’s application in respect of them.

29.   For the remaining goods, being ladies’ dresses and ladies’ knitwear the removal applicant has been successful in this matter. I now direct that ladies’ dresses and ladies’ knitwear be removed from registration number 745906 unless the Registrar is served with a notice of appeal within one month from the date of this decision. If this decision is appealed I direct that the registration in respect ladies’ dresses and ladies’ knitwear shall not be removed until the appeal has been decided or discontinued.

Costs

30.   Both parties have claimed costs and as each has been partially successful I consider it appropriate that each party bears its own costs.

Mary Skivington

Hearing Officer

Trade Marks Hearings

15 December 2004