Steen Petersen v Daniel Baden and Garth Harris

[2003] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by STEEN PETERSEN to application under section 92 of the Act by DANIEL BADEN and GARTH HARRIS to remove trade mark number 615105(42) - BIOMEDICA AUSTRALIA and ELLIPSE BORDER DEVICE - in the name of STEEN PETERSEN

Delegate:

Claudia Murray

Representation:

Opponent

David Yates, Senior Counsel, instructed by Hunt & Hunt, Lawyers.

Applicant

Julia Baird, of Counsel, instructed by Milne Berry Berger, Solicitors.

Decision:

1. Section 92 Removal Application: trade mark to be removed from the Register in respect of "retailing of natural herb medicine".

2. Each party to bear its own costs.

Background

1. 
   Trade mark number 615105 is registered for the word and device trade mark:

1. The registration is in class 42 of the International (Nice) Classification of Goods and Services, for "retailing and wholesaling of natural herb medicine". The date of registration is 1 November 1993, and the trade mark owner is Steen Petersen.

2. Application under section 92 of the Trade Marks Act 1995 (the Act), for removal of the trade mark from the Register for non-use was made on 10 October 2001, by Daniel Baden and Garth Harris (the removal applicants). It was advertised for opposition purposes in the Australian Official Journal of Trade Marks dated 1 November 2001. On 1 March 2002, after one month's extension of the opposition period, notice of opposition was filed by the trade mark owner, Steen Petersen (the opponent).

Application for removal

1. The grounds cited in the removal application were those set out in paragraph 92(4)(b) of the Act:

   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.

2. The removal application form indicated that the applicants were aggrieved by Mr Petersen's registration, and that removal was sought for all the services it covered. A statutory declaration by Mittu Gopolan, the applicants' legal representative, accompanied the removal application. It detailed several trade enquiries made by Mr Gopolan for the purpose of establishing whether the opponent had in fact used his trade mark within the relevant period set out in paragraph 94(2)(b). That period was 10 September 1998 to 10 September 2001.

Notice of opposition

1. In his notice of opposition, Mr Petersen indicated that the trade mark had been in constant use by him since its registration in November 1993, and that it was still in use, not only in Australia, but "around most of the western world". Under the heading "further information", he added that the removal applicants were known to him as prospective business associates. Although no arrangement had eventuated between them, the removal applicants had begun using his trade mark, Mr Petersen had requested them to remove the trade mark from their goods, and they had then tried to register the name "Bio-medica" under trade mark application number 807933, since lapsed.

Evidence

1. Mr Petersen served and filed evidence in support of his opposition to removal. His evidence comprises two statutory declarations.

2. The first declaration, dated 25 November 2002, is made by Glenn Paul John Desertine. He declares himself to be a director of Pagle Pty Limited, a company having as its main business the wholesale distribution of vitamin, herbal and health products purchased from importers and manufacturers of such goods. Mr Pagle explains that, during the relevant period, his company purchased from a company by the name of Biomedica Switzerland Pty Limited (Biomedica Switzerland), several thousand dollars worth of "Biomedica Australia goods". Also during that period, his company distributed an almost equivalent value of those goods for retail sale to pharmacies, health food stores and practitioners. Mr Pagle declares that he was the primary individual who represented his company in the purchase of goods from Biomedica Switzerland, and that Mr Steen Petersen was the primary individual representing the latter in those transactions.

3. Mr Desertine's declaration is accompanied by Exhibits A and B, being some copies of 1998 to 2000 purchasing and sales transaction records extracted from Pagle Pty Limited's electronic database.

4. The second declaration in evidence was made by Steen Selsoe Petersen on 27 November 2002. His declaration is accompanied by Exhibits A to J. Mr Petersen explains in his declaration that a Swedish incorporated company, Biomedica Norden AB has owned the trade marks BIOMEDICA and BIOMEDICA NORDEN in various European countries for over twenty years. These countries included, during the relevant period, Denmark, Sweden, Norway, Germany, France, Switzerland Canada and the USA. Mr Petersen declares that he obtained an exclusive written licence from Biomedica Norden AB to use and register the trade mark in Australia (Exhibit A, "Confirmation - sole sale Australia - Asia" dated 10 January 1994). He further declares that, during the relevant period, he was one of two directors, the only Executive Officer, and a fifty percent shareholder of Biomedica Switzerland, and was therefore responsible for the financial affairs of that company. Biomedica Switzerland purchased the "Biomedica Australia business" from a further Biomedica company, Biomedica Scandanavia Pty Limited, of which Mr Petersen was also a director, on 18 May 1996. During the relevant period, declares Mr Petersen, the primary business of Biomedica Switzerland was "the importing, packaging and wholesaling of products manufactured by Biomedica Norden AB".

5. Exhibits A to J accompany Mr Petersen's declaration. One of these exhibits is a copy of an insurance assessor's report of a claim made by Mr Petersen relating to water damage to items caused by the bursting of a water heater in the storage cellar of his Tasmanian home, on 13 April 2001. The report does not specifically refer to damage to documents. However, Mr Petersen declares that this unfortunate flooding in his cellar resulted in the destruction of all the relevantly dated documentary evidence he held there of:

• Annual returns and other information for Biomedica Switzerland from the relevant period

• All records of transactions between Biomedica Norden and Biomedica Switzerland

• All documentary evidence that Biomedica Switzerland leased two premises in suburban Sydney, which contained "plant and equipment appropriate for TGA approved and Pharmacy Guild of Australia endorsed products", during the relevant period

• All records of transactions between Biomedica Switzerland and its "primary wholesale distributor used during the relevant period", Pagle Pty Limited.

1. Mr Petersen's declaration comes, therefore, largely unsupported by any independent, dated, documentary evidence demonstrating his use of the trade mark on wholesaling or retailing of natural herb medicine during the period September 1998 to September 2001. However, Mr Desertine's declaration provides limited corroboratory evidence of the wholesaling activities of Biomedica Switzerland. Exhibit J to Mr Petersen's declaration is a copy of a faxed letter signed by pharmacist R. S. Taylor, of Winmalee Pharmacy, Winmalee NSW to Mr Petersen, dated 6 August 2002. The letter states: "This letter is to certify that we have been selling Biomedica products continuously, and still sell a small range, since 1995." While this is an indication of some retailing activity, there is no suggestion that this has occurred under the control of Mr Petersen.

Hearing

1. The removal applicants elected not to serve or file any evidence in answer to Mr Petersen's evidence. After some postponement by the parties, the matter eventually came to a hearing in Canberra before me, as a delegate of the Registrar, on 19 September 2003. Mr David Yates, Senior Counsel, instructed by Hunt & Hunt, Lawyers, of Hobart, represented Mr Petersen by telephone. Ms Julia Baird, also of Counsel, instructed by Milne Berry Berger, Solicitors, of Sydney, represented Mr Daniel Baden and Mr Garth Harris in person.

Applicants' standing as persons aggrieved

1. Section 92 of the Act specifies that "a person aggrieved by the fact that a trade mark is or may be registered" may apply for that trade mark to be removed from the Register. This is a threshold test, the interpretation of which has been the subject of considerable attention by the courts. For example, see Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417 at page 454, Kraft General Foods Inc v Gaines Pet Foods Corporation (1995) 31 IPR 439 at page 206, and the analysis in Lahore, Patents, Trade Marks and Related Rights (2001), Chapter 7, especially at page 62025:

   McLelland J in Ritz Hotel v Charles of the Ritz [supra] was reluctant either to reconcile the authorities or give a precise definition of a "person aggrieved" stating that "the expression has no special or technical meaning and is to be liberally construed".

2. Both Ms Baird and Mr Yates made submissions at the hearing regarding the standing of the removal applicants. Mr Yates argued that there was no evidence whatsoever to suggest that they were persons aggrieved by Mr Petersen's registration. Ms Baird countered that this was the first occasion on which the issue of standing had been raised by the opponent, and that he himself had made clear in the notice of opposition his acceptance of the real interest of the applicants in the removal of the trade mark. Further, she submitted, the standing of the applicants was sufficiently verified by their making application under section 92. Citing Hearing Officer Williams' comments in Lifinia Pty Limited v Zero International Holding GmbH [2001] ATMO 106, Ms Baird concluded that "it would be at best redundant and at worst unfair for the Registrar to instigate at the final hearing an enquiry into the applicants' standing".

3. The Trade Marks Office Manual of Practice and Procedure clearly supports Ms Baird's arguments. At Part 48, paragraph 2.1, citing Figgins Holdings Pty Limited v Beltrami SpA (1998) 46 IPR 411 at page 418, it says:

   If removal is opposed, the onus is on the opponent to rebut the assumption that the application is proven. Accordingly, the Registrar will not initiate any investigation into a claim that the removal applicant has standing as a person aggrieved. Such a claim will still be taken at face value unless the opponent disputes the right of standing and addresses this in its evidence in support. The applicant for removal will then have the opportunity to rebut any challenge to its standing in its evidence in answer

4. The applicants for removal here elected not to put in evidence in rebuttal of Mr Petersen's evidence, which focused solely on the BIOMEDICA AUSTRALIA trade mark. There had been no challenge of their own position to be answered. In these circumstances, the onus of these proceedings must properly weigh upon the opponent to make his case against removal of his trade mark. Belated criticisms of the standing of the removal applicants cannot be given credence at this point. I find the opponent's challenge to the removal applicants' entitlement to make their application to be unsuccessful.

Burden on the opponent to establish use of the trade mark

1. Absent a successful challenge to the standing, in terms of section 92, of a removal applicant as a person aggrieved, section 100 of the Act places the onus squarely upon the opponent. In order to rebut the grounds for removal cited in the removal application, Mr Petersen's evidence here was required to demonstrate either:

• That he, his authorised user, or his assignee, had used the trade mark, or a substantially identical mark on the services specified in the registration, during the relevant period (paragraphs 100(3)(a) and (b)), or

• That he did not use the trade mark in relation to those services during the relevant 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 time (paragraph 100(3)(c)).

1. Failing either of these options, a third possibility was open to Mr Petersen under subsection 101(3). This was to establish special facts or circumstances, or an overriding public interest, which might convince the Registrar's delegate that it was reasonable not remove the trade mark from the Register even if the grounds on which the application was made had been established.

2. Mr Yates argued the first and last options for Mr Petersen. Acknowledging at the outset that the opponent's evidence was of "short compass", he sought to explain the connections between Mr Petersen, Pagle Pty Limited, and the various Biomedica entities referred to in the declarations. He submitted that the evidence showed Biomedica Switzerland was, during the relevant period, an "authorised user" of Mr Petersen's trade mark, in terms of subsection 8(1), such that its use of the trade mark should be taken attributed to him, in terms of subsection 7(3). Mr Yates also submitted that the opponent's undated pictorial evidence showing use of the word BIOMEDICA in ellipse, without the word AUSTRALIA, depicted use of a substantially identical trade mark. Finally, acknowledging that much of the undated material related to use on goods, rather than wholesaling and retailing services, Mr Yates submitted that such use on goods was "probative" in relation to use on the relevant services.

3. In the alternative, Mr Yates argued that, if I was satisfied that the grounds on which the removal application had been made were established, I should nevertheless decide not to remove the trade mark from the Register. He said that no useful purpose would be served by removing the trade mark from the Register and its removal would not be in the public interest.

4. Mr Baird, for the removal applicants, observed that the opponent's evidence contained assertions of use of the trade mark that were "generalised, lacking in detail and specificity as to time, place and activity". She argued that that the opponent was seeking to rely on "a combination of bald assertions, sweeping generalisations and inference" which should not be accorded any weight as a substitute for documentary evidence of use. Further, Ms Baird submitted that Mr Petersen had not demonstrated that he exerted any relevant control over Biomedica Switzerland independently of and separately from his co-director and other shareholders, nor that he exerted any control as trade mark owner over the company. She said that, to the contrary, the relationships described were those of a person owing fiduciary duties to the company and answerable to it for performance of his responsibilities. And in any event, the exhibits to the evidence, none of which could be reliably dated, all showed use of a trade mark, not substantially identical to that registered, and used in relation to goods, not services.

5. Regarding whether my discretion should be exercised to keep the BIOMEDICA AUSTRALIA trade mark on the Register, notwithstanding success of the case for removal, Ms Baird submitted that there was "no public interest in allowing the Register to be crowded with dead trade marks - that is, marks with no currency". She argued that the opponent's own evidence suggested that Biomedica Switzerland had ceased trading altogether at some point during the non-use period. Certainly, she said, this had occurred before 13 April 2001, as at that date, all its relevant documentation was located in Mr Petersen's storage cellar in Tasmania, not at either of the addresses which the company was supposed to have leased in Sydney. She said that the public interest would best be served by removal of the registration from the Register.

6. I have carefully considered all the evidence available to me here, and the respective submissions by counsel for the parties. I cannot be satisfied that Mr Petersen has in any way discharged the onus upon him to demonstrate his own use, or use authorised by him, of the registered trade mark in relation to "retailing of natural herb medicine", during the relevant period. The only document I have that relates to retailing of these products by any party is the brief letter I have described above, from a person apparently unconnected to Mr Petersen, the pharmacist of Winmalee Pharmacy.

7. The situation is a little different in relation to the service of "wholesaling of natural herb medicine". Despite the somewhat fragmented nature of Mr Petersen's case, I believe there is sufficient basis for me to determine that, under his control, Biomedica Switzerland did conduct a limited amount of wholesaling activity, in the provision of goods to Pagle Pty Limited, during the relevant period. Mr Petersen has declared that he had both financial responsibility for the activities of Biomedica Switzerland and also that he exercised quality control over the packaging of the herbal medicine supplied by it, during the relevant period. He has provided photographs (Exhibit E) in support of the latter claim. I accept Mr Yates' submission that I should be satisfied that use of the trade mark by Biomedica Switzerland may be taken as use by Mr Petersen, within the meaning of the Act. Accordingly, I find that the opponent has succeeding in rebutting the applicant's case for removal in relation to "wholesaling of natural herb medicine".

Registrar's discretion

1. Mr Yates' hearing submissions briefly covered the scenario where I might find that the applicant's grounds for removal had been established, as I indeed have done in relation to use of the trade mark on "retailing of natural herb medicine". He submitted that, in such a case, I should nevertheless exercise the discretion afforded the Registrar under subsection 101(3), not to remove the trade mark from the Register. Deputy Registrar Hardie, in Figgins Holdings Pty Limited v Beltrami SpA, supra, at page 418, described the circumstances under which such a discretion might be exercised:

   Under s 101(3) the registrar needs to be "satisfied that it is reasonable" to leave a mark on the register even when the grounds on which the removal application is made have been established. This requires the registrar to be satisfied that there is sufficient reason for leaving it there. The reason would need to be based on special facts and circumstances, or an overriding question of public interest. The onus for showing that those circumstances exist, is on the opponent to the removal application.

2. Mr Yates' submissions have not persuaded me that any special circumstances exist to justify Mr Petersen's registration being permitted to remain on the Register in respect of services for which he has provided no evidence of use whatsoever. I decline to exercise my discretion in relation to those services.

Decision

1. I have found that the opponent has been partially successful in rebutting the applicant's grounds for removal of his trade mark. I therefore direct that, six weeks from the date of this decision, trade mark number 615105 be removed from the Register in respect of "retailing of natural herb medicine". Should the Registrar be served with a notice of appeal within six weeks from the date of this decision, I direct that the registration shall not be removed in respect of those services until the appeal has been decided or discontinued.

Costs

1. It is usual for costs to be awarded against the unsuccessful party to an opposition. As the parties to this opposition have each enjoyed a partial success, I consider it is appropriate for them to bear their own costs.

Claudia Murray

Hearing Officer

Trade Marks Hearings

23 December 2003