Steven Nicolaou v Burger Ranch (Pty) Limited

[1999] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by BURGER RANCH (PTY) LIMITED to an application to remove trade mark registration number 198312, under section 92 of the Act, by STEVEN NICOLAOU.

Background

On 7 January 1997, Steven Nicolaou (the applicant) filed an application, under s.92 of the TradeMarks Act 1995, for the removal from the Register of registration number 198312, for the trade mark BIG STEER in the name of Burger Ranch (Pty) Limited. The trade mark registration covers a specification of "meat; foodstuffs and preparations made wholly or partly of meat; all the foregoing made of or containing beef" in class 29. The application specified both grounds under s.92 as outlined in paragraphs 92(4)(a) and 92(4)(b) of the Act. Accordingly, the three year period of alleged non-use, for the purposes of s.92(4)(b), was 7 December 1993 to 7 December 1996. A Statutory Declaration of 7 January 1997 from Gregory James Bartlett, a patent attorney and partner of the firm of Wray & Associates supported the application. The declaration detailed the various investigations and searches conducted by the applicant to support the allegations of non-use and lack of intention in good faith to use the trade mark made under s.92. The applicant had searched for the names BIG STEER and BURGER RANCH in various White Page telephone directories for the years 1994 to 1996 and in five separate business directories covering the years from 1981 to 1992. Telephone enquiries were made to the Food & Beverage Importers Association in Melbourne requesting knowledge of either BIG STEER or BURGER RANCH. Telephone enquiries were similarly made to some of the largest retail and wholesale businesses in Australia for information on use of either name. The applicant also conducted a series of searches via the Internet including the Australian Yellow Pages.

The applicant claimed that none of these searches or enquiries located any use of either BIG STEER or BURGER RANCH in the marketplace in Australia.

Burger Ranch (Pty) Limited (the opponent) filed a notice of opposition to the removal action on 15 August 1997. The notice of opposition detailed seven grounds, four major areas of which were argued at the hearing. These four issues are set out under the four sub-headings of the Discussion section of this decision.

The evidence in support of the opposition was filed and served by 15 June 1998. The removal applicant then indicated that it did not wish to serve any evidence in answer. The opponent requested to be heard in the matter and it came before me, as a delegate of the Registrar, in Canberra on 7 December 1998. Mr. Ben Fitzpatrick of Davies Collison Cave, Patent & Trade Mark Attorneys, represented the opponent, whilst Mr. Martin O'Sullivan of Wray & Associates, Patent and Trade Mark Attorneys, represented the removal applicant.

The Evidence

The evidence in support consisted of a Statutory Declaration, dated 5 June 1998, from Panagiotis Halamandaris, the Chairman of Steers Holdings Limited, to which was appended exhibits “PH 1” to “PH 11” (the Halamandaris declaration).

I note, at this stage, that the Register shows the present mark is owned by Burger Ranch (Pty) Limited. The Halamandaris declaration shows that Burger Ranch (Pty) Limited has undergone, an as yet unrecorded, change of name to Firststeer Fast Food Franchise Company (Pty) Limited. This latter company is a subsidiary of Steers Holdings Limited (Steers), the holding company for the group of operating companies, of which Mr. Halamandaris is Chairman. I shall refer to the opponent as Steers rather than Burger Ranch (Pty) Limited for this reason.

The exhibits attached to the Halamandaris declaration consisted of Steers Annual Report for 1995 (PH 1); a list of countries in which Steers have either already registered marks or have filed applications to do so (PH 2); copies of both the applicant's and opponent's marks (PH 3 and PH 4); a Steers introductory brochure (PH 5); a specimen Steers menu (PH 6); a report from Ernst & Young, the international accounting firm, commissioned by Steers, analysing opportunities in the Australian market (PH 7); a copy of a letter to the Australian Trade Commission from Steers (PH 8); a copy of a letter from Richard Ellis International Property Consultants to Mr. R. G. Bolton (PH 9); a copy of an itinerary for a representative of Steers, Mr. Nick Galatis, to visit Australia (PH 10); an affidavit from Nick Galatis confirming the accuracy of statements regarding his trip to Australia (PH 11).

Submissions

In his opening submissions on behalf of the opponent, Mr. Fitzpatrick claimed that the applicant for removal had not shown that it was a person aggrieved in terms of s.92 of the Act. On this basis he claimed that both legs of opposition under s.92 must fail. He directed my attention to two Court decisions and a decision of the Registrar dealing with accepted conditions and requirements for the applicant to be a person aggrieved. The cases relied upon were: The Ritz Hotel Limited v. Charles of the Ritz Limited and Another (1988) 12 IPR 417, Coors Brewing Company v. Carlton and United Breweries Limited (1997) 38 IPR 477 and Kraft Foods Inc. v. Gaines Pet Foods Corporation (1996) 34 IPR 198.

Mr. Fitzpatrick next turned to the first leg of the removal application involving the lack of intention of the applicant to use the mark at the time that the application was made, in terms of s.92(4)(a) of the Act. He stated that the making of the application for registration was sufficient, in itself, to show intent to use. Settled law to support this contention could be found in Aston v. Harlee Manufacturing Company (1960) 103 CLR 391, he claimed. Additionally, Mr. Fitzpatrick submitted that no proof had been given in any evidence from the removal applicant that the registered owner had no intent to use mark.

With regard to the removal action under s.92(4)(b), Mr. Fitzpatrick sought to rely on New South Wales Dairy Corporation v. Murray-Goulburn Co-operative Co. Limited and Anor. (1989) 14 IPR 26. He claimed that this case provided a clear precedent that use of a mark did not have to be limited by any concept of the physical use on the goods but is wide enough to cover steps necessary to produce the goods. He said that the Halamandaris declaration showed a clear preparation to use the mark and therefore qualified in the same manner as the use outlined by Gummow J in that case. A second case relied upon by the opponent in relation to s.92(4)(b) was Buying Systems (Australia) Pty Ltd v. Studio Srl 30 IPR 517. Mr. Fitzpatrick pointed out that activities, which were preliminary to actual commercial use of the mark, were considered evidence of bona fide conduct evidencing a real commitment to use the mark. In the present case, he said, similar activities and circumstances to those listed above were outlined in the Halamandaris declaration and showed substantial and relevant activities indicating an intent to commence business in Australia and real, genuine steps toward commencing commercial use of the mark in the relevant three year period.

The opponent also relied upon a decision of the Registrar, Kronborg Isager v. Boboli International Inc. 18 IPR 526. Mr. Fitzpatrick argued from that decision that the supply of samples in the course of trade was sufficient use of the mark to constitute prior user even although the goods were not for resale.

The attorney for the opponent then went on to discuss several exhibits to the Halamandaris declaration, in detail, to support the opponent's claim that use of the trade mark had occurred during the relevant three year period. These exhibits, he submitted, included a highly detailed 80 page consultant's report on business opportunities in Australia in relation to franchise food sales, correspondence to the Australian Trade Commissioner in relation to suppliers for the opponent's business, information regarding the itinerary for the visit of the Financial Director of the opponent to Australia in August 1996, correspondence with Real Estate agents in Australia in relation to the selection of suitable commercial sites, brochures given to possible business partners or franchisees in Australia (including use of the mark BIG STEER in two menus) and a paper detailing a franchising conference held in South Africa on 10 May 1996.

Mr. Fitzpatrick added that it was not a simple matter to set up a network of franchise fast food businesses. The opponent needed to organise a range of sites, franchisees and food sources in Australia to name just some of the preliminary arrangements. Due to quarantine problems, particularly concerning meat products from Africa, it was not possible to simply put pre-prepared food in a box and ship it to Australia, he said. For this reason it was quite difficult to expect the opponent to have supplied samples due to the nature of the goods themselves. Mr. Fitzpatrick was also critical of the tactics of the removal applicant in trying to delay the commencement of commercial use of the present mark by the owner. The history of this activity, particularly involving the appropriation of the opponent's marks, he said, was set out in exhibit PH 2 - the business report from Ernst & Young.

Mr. Fitzpatrick also submitted that the removal action should not succeed at the discretion of the Registrar. The circumstances relevant to this request involved the obvious appropriation of the opponent's marks by the removal applicant, leading to the applicant's hands being far from clean in this matter, he claimed. Mr. Fitzpatrick continued his submissions that the removal applicant had not established his credentials for his action, had appropriated the opponent's marks (as shown in exhibits PH 3 and PH 4) and that the Registrar at his discretion should seize on the slightest evidence of use to protect the legitimate rights of the overseas owner of the trade mark.

Mr. O'Sullivan introduced submissions on behalf of the removal applicant with a strong assertion that removal action under the 1995 Act differed markedly from such action under the 1955 Act. He stated that there had been a shift of onus from the applicant to the opponent, as s.100 clearly outlined. His further submissions revolved around the opponent's evidence only being relevant to restaurant services, rather than class 29 goods, and in support of the applicant's position in relation to being a person aggrieved. The attorney then introduced material from three recent decisions of the Registrar to support his argument concerning onus under the 1995 Act. These removal decisions (as yet unpublished) were The Upjohn Company v Sanofi S. A. (issued 22 September 1998), Beltrami S.p.A. v Figgins Holdings Limited (issued 1 July 1998) and Gavin James O'Mahoney v Intencity Pty Ltd. (issued 16 June 1998). He claimed this led to the conclusion that once an allegation had been made by the removal applicant, it was only necessary to provide evidence if a point was contested by the opponent. It was up to the opponent to defend the removal of the mark from the Register under the present Act, he said. In the present instance, he added, because the opponent has not provided information concerning the intentions at the date of filing, it must suffer removal of the mark under s.92(4)(a).

In relation to the removal action under s.92(4)(b), Mr. O'Sullivan submitted that BuyingSystems (supra), a Federal Court decision on which Mr. Fitzpatrick sought to rely, involved use of a mark in respect of opposition to registration rather than in a non-use matter and that this was a different test. He also pointed out that the relevant comments from Kronborg Isager (supra) were obiter and could not be considered as direct precedent. In relation to NewSouth Wales Dairy Corporation (supra), Mr. O'Sullivan claimed that the preliminary activities in that case were in relation to goods, whereas any preliminary activity in the present case was in respect of services. These activities were not relevant to retain a mark on the Register in respect of a goods registration, he claimed.

The attorney for the removal applicant also made lengthy submissions regarding the Halamandaris declaration. He claimed that nowhere had it been shown that there was an actual offer to trade in the goods. At best, the declaration indicated an intention to trade in restaurant services by use of the composite STEERS mark, whereas s.92(4)(b) required proof that the opponent had used the trade mark BIG STEER in relation to class 29 meat products, he said. It was not possible to source the relevant class 29 goods for this registration from the evidentiary material and nowhere in the evidence, claimed Mr. O'Sullivan, can there be found a clear identification of an offer to trade in the goods.

In addition, he claimed that the Halamandaris declaration was directed toward showing activity relative to some sort of business venture but not directly to the use of the present trade mark. The only references to BIG STEER were menu entries as a type of hamburger for restaurants run by Firststeer in South Africa, Mr. O'Sullivan concluded.

In relation to the opponent's submissions that the Registrar's discretion should be invoked to allow the mark to remain on the Register, there was not evidence to produce this result, he said. Mr. O'Sullivan then directed my attention to Beltrami S.p.A. (supra), made in respect of a removal action under the current Act, in which the discretion of the Registrar was considered. He said that the principles discussed by Deputy Registrar Hardie in that decision, indicated that the opponent would need to show that either special facts or circumstances, or an overriding public interest existed, which allowed the Registrar to exercise his discretion and not remove the mark from the Register. None of these existed in the present circumstances, he said. He added that the removal applicant was the first user in Australia and the registered proprietor of the STEERS trade marks, and that the allegation of appropriation of trade marks should have been raised in opposition to registration rather than in the present circumstances.

Thus, he concluded, there were no grounds existing for the exercise of the Registrar's discretion not to remove the mark.

Following the primary submissions from both parties, I briefly informed them that I was interested to gain more information, if it was available, concerning the situation here in relation to s.92(4)(b). I was particularly interested in any further material from the opponent as to what prevented it from making full commercial use of the mark. Mr. Fitzpatrick addressed this issue as part of his following submissions.

Mr. Fitzpatrick's second round of submissions, on behalf of the opponent, attacked the removal applicant's position concerning its status as a person aggrieved. He stated that Mr. O'Sullivan's comments regarding s.100 of the Act were not relevant to a consideration of the applicant being a person aggrieved. He argued that s.100 only deals with the burden on the opponent to rebut allegations, rather than what must be shown by the applicant to be a person aggrieved. He also stressed that there must be some requirement on the applicant to conduct relevant investigations as to the opponent's intention to use the mark, in respect of s.92(4)(a). He submitted that if the applicant claimed that the opponent had no intention to use the mark at the date of lodgement, in 1965, then relevant investigations to the opponent's intentions should have been made concerning activities around that date. As no investigations were undertaken close to 1965, or specifically in relation to 1965, he claimed that the removal action under s.92(4)(a) must fail. Mr. Fitzpatrick also disagreed with the notion that Mr. O'Sullivan tried to distinguish use of a trade mark in decisions dealing with different parts of the Act. He added that where use was discussed for purposes of proprietorship and use was discussed for the purposes of non-use actions both should be equally considered. He claimed that use of a trade mark is defined in the Act and this applies to all circumstances. Accordingly, a single instance of bona fide use is all that is required for either situation. Thus, he claimed the case law established in New South Wales Dairy Corporation and Buying Systems (both supra) are entirely relevant. He also made submissions in relation to the present registration being in class 29 and the applicant's arguments that, if any use was shown, it was in terms of services in class 42. Mr. Fitzpatrick directed me to the opponent's exhibits PH 5 and PH 6, attached to the Halamandaris declaration, in this regard. Both exhibits, he said, detail use of BIG STEER burgers, similar to McDonald's Big Mac. Class 29 goods are clearly included within the scope of use for franchising chains involving a trade in such food and it is almost impossible to differentiate the use of a mark on goods and services in such actions, he said.

In response to my comments concerning the apparent lack of full commercial use of the mark and the circumstances that may have prevented such use in the relevant non-use period, Mr. Fitzpatrick directed me to the Halamandaris declaration and specifically to exhibit PH 2. This exhibit details a report from a franchising conference of the opponent in South Africa on 10 May 1996. He said that full commercial operations using the mark had been severely hampered because of the use of the mark STEERS ROAST by the removal applicant and the resultant on-going dispute. Authority for this contention was provided in Stylesetter International Company Pty Ltd v. Le Sportsac, Inc 17 IPR 59 - a decision of the Registrar.

Mr. O'Sullivan then presented the final submissions on behalf of the removal applicant. He addressed the issue of proving the lack of intention of the applicant to use the mark, as at the time of filing, by asserting that the opponent's own declaration (the Halamandaris declaration) stated that the first time that it planned to use the mark in Australia was in the early 1990's. Thus there could not be an intention to use the mark at the time of application in 1965.

He further argued the issue of the difference between use in the earlier cited cases and use in the present case. He commented that some small amount of use by means of an offer to supply goods or order to buy goods or similar under the mark existed in the cited cases which did not exist here. He said that, in the present circumstances, samples of the hamburgers could have been made in Australia or the owner could have used the mark at any time since registration. However, it had chosen not to do so and at no time has the applicant prevented the opponent from using the mark BIG STEER, he said. Mr. O'Sullivan concluded his submissions by stating that the opponent had the legal right to use the mark, as the registered proprietor, from as far back as 1965 but had chosen not to do so despite there being no impediment to such action.

Both parties requested that costs should follow the decision.

Discussion

(a) Person Aggrieved

The relevant material in the Act and Regulations in relation to a person aggrieved for non-use applications is found at s.92(1), s.92(2)(a) and Regulation 9.1.This material reads as follows:

s.92(1)

A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

s.92(2)(a)

The application must be in accordance with the regulations

Regulation 9.1

For the purposes of paragraph 92(2)(a) of the Act (which deals with applications), an application for the removal of a trade mark from the Register:

(a) must be in an approved form; and

(b) must be accompanied by a declaration made by, or on behalf of, the applicant;

(i) stating that an inquiry into the use of the trade mark has been conducted by, or on behalf of, the applicant; and

(ii) setting out the findings of that inquiry that support either or both of the grounds for the application referred to in subsection 92(4) of the Act.

Both parties strenuously argued the case involving where the onus of proof lay in connection with the applicant being a person aggrieved. I have not outlined all of these lengthy submissions. I will initially summarise comments made concerning this onus from decisions of the Registrar previously made under the current Act and then I will briefly address some specific issues raised by both parties.

The removal applicant who claims that it is a person aggrieved under s.92(1) must apply in an approved form, and accompany the application with a declaration setting out the findings of the inquiry undertaken, as outlined in Regulation 9.1. At the time of application for removal the applicant need not provide any further material. No provision exists, in the legislation, for the applicant to file evidence to further support its standing as a person aggrieved. Accordingly, the Registrar will not go behind an applicant's claim of being a person aggrieved. Even where the removal applicant makes no such direct claim, the making of an application implies such an aggrieved status. The applicant, in this instance, met these requirements.

Once the application for removal has been opposed, the evidence phases begin. If the opponent provides material in the evidence in support of the opposition, challenging the status of the applicant as a person aggrieved, then that allegation must be appropriately answered. The criteria to be met for determining whether the applicant is a person aggrieved have not altered from the repealed Act to the present Act. The timing of the chain of events has, however, changed quite markedly. Under the repealed Act, it was up to the removal applicant to first lodge evidence to show why the mark should be removed from the Register. This was an appropriate stage to present material relevant to it being a person aggrieved and the opponent could provide material to the contrary in the evidence in answer. Under the current legislation, the removal applicant is not required to provide such evidence, relative to its standing as being aggrieved, until the opponent has challenged the status in its opposition. In the present circumstances, this did not occur in the evidence in support beyond an unsupported allegation in the notice of opposition. The Halamandaris declaration, submitted as the opponent's evidence in support, alleges a misappropriation of the opponent's trade marks and presents some detail concerning the activities of the removal applicant but is silent on the issue of whether the applicant is a person aggrieved.

Although the removal applicant was not required to provide evidence that it was a person aggrieved prior to the hearing, Mr. Fitzpatrick raised the issue during a submission at the hearing. He sought to rely on The Ritz Hotel, Coors Brewing and Kraft Foods (all supra). These cases were all decided under s.23 of the 1955 Act. As I indicated above, under s.92 of the current Act, the onus of proof initially lies with the opponent and has not been shifted in the present instance, because the opponent led no evidence on the issue. Thus, the applicant has no direct case to answer. For completeness, however, I will comment that even if it did, the history of the opposition concerning the removal applicant's own trade mark application (603696) is sufficient to satisfy me that it is a person aggrieved in the present situation. The two parties clearly have a conflict of their interests in use of trade marks, as at the date that the non-use application was filed. This is sufficient to justify to me, that the applicant is disadvantaged in either a legal or a practical sense, as at the date that the application was made.

In passing, I add that I agree with Mr. Fitzpatrick that s.100 does not directly mention the standing of a person aggrieved. The section indicates that an opponent faces the onus of rebutting an allegation under s.92(4)(a) (at s.100(1)(a) and (b)) and of rebutting an allegation under s.92(4)(b) (at s.100(1)(c)). The claim concerning being a person aggrieved, however, is found at s.92(1). As I have discussed above, the opponent to the removal of the registration faces the first evidence stage. If it intends to argue that the applicant is not a person aggrieved, then that is the appropriate time to lead evidence, but not as a specific requirement of, or reaction to s.100.

(b) s.92(4)(a) - Lack of Intention to Use the Trade Mark

As detailed in the Submissions above, the attorney for the applicant claimed that there was no intention, on the part of the opponent, to use the mark as at the date of filing, on 1 November 1965. Further, the applicant claimed that no evidence had been led by the opponent to clearly indicate that it had any intention to do so; it had been silent on conditions at filing and therefore failed to discharge the onus imposed by s.100(1)(a) in relation to s.92(4)(a).

Mr. Fitzpatrick had earlier directed my attention to the fact that, as an application had been made then this indicated that the opponent had a clear intention to use the mark. I am prepared to agree that this is a major factor in deciding whether there is a prima facie intention to use a trade mark in the course of trade, but it may not be the full picture. It may be that an applicant could file an application with the goal of attempting to prevent another trader from using the mark, for a set period of time, without any real intention of wanting to use that mark itself. I am not suggesting that that is the case here, but I believe that more support than the application alone is available, in this instance, to provide substance to a claim of an intention to use the mark.

Firstly, under the repealed Act, it was necessary to specifically lodge a statement of user before the application could be accepted for registration. I note that Mr. George Halamandres signed this statement, which was made on 23 November 1965. The Halamandres' name (sic) comes to further prominence in the evidence, in the Halamandaris declaration, where exhibit PH 5 provides a photograph of Mr. John Lee Halamandres and exhibit PH 7 includes a newspaper article detailing the contribution that the Halamandres family has made to the opponent's business in South Africa and in other markets. Mr. George Halamandres signed the statement of user. The evidence submitted indicates the involvement of his family since that time in the expansion of the business into many other countries. From this detail, I believe that sufficient material is available to convince me that there was a real intention to use the mark in Australia (by means of a future expansion of the business) at the time that the application was made.

The second factor to assist in this conclusion, lies in the third point in the notice of opposition. At this point, the claim is clearly made that the trade mark was applied for with the bona fide intention of using the mark. I am inclined to accept what Mr. Fitzpatrick said in relation to this statement, that it is difficult to provide further proof of what was the state of mind of the opponent on making the application more than 33 years ago, in 1965. In addition, the same claim for intention to use the mark is made in the Halamandaris declaration at 5.2. Thus, I find that sufficient material is before me to find that the opponent is successful in showing that it had an intention to use the mark at the time of the application. The removal applicant had not led any evidence on the issue but had argued that the opponent had not provided sufficient proof that it had any intention to use the mark. However, I believe that the opponent has made out a prima facie case for its intent to use the mark and succeeds in terms of s.92(4)(a).

(c) s.92(4)(b) No Use of the Mark in the Relevant Three Year Period

I believe that it is common ground that the opponent has not shown actual commercial use of the trade mark during the relevant three year non-use period from 7 December 1993 to 7 December 1996. Rather the opponent sought to rely on circumstances similar to those outlined in New South Wales Dairy Corporation, Buying Systems and Kronborg Isager (all supra) where, in each case, use of the mark was said to have occurred despite the lack of a direct commercial use being shown. The circumstances of those cases indicated that such activities as evidence to show expenditure on packaging, promotional videos for distributors, presentations to trade and potential customers (New South Wales Dairy Corporation), the obtaining of business cards and the printing of letterheads, approaching of potential advertisers and soliciting them for advertisements (Buying Systems), and the supply of samples in the course of trade, even though the goods were not for resale (Kronborg Isager), were sufficient to constitute use of the mark in those cases.

The evidence indicated that the opponent had been involved in many and varied activities to begin commercial operations in Australia. As detailed in the Submissions section, the opponent had commissioned a detailed business management report, had corresponded with the Australian Trade Commission and an Estate agent in Sydney, had the opponent's Financial Director visit Australia, held a franchising conference in South Africa and distributed written information concerning its possible business operations.

Mr. O'Sullivan argued that the three decisions relied on by the opponent were not relevant for the present proceedings for the various reasons outlined in the Submissions above. He further commented that the only indication of the trade mark BIG STEER was in two menus in exhibits PH 5 and PH 6.

I do not accept Mr. O'Sullivan's initial comments concerning use in a removal action being different from use in an action involving opposition to registration. Trade mark use is defined in s.6 and s.7 of the Act, and no distinction is made on what constitutes use in the two situations. I also have a degree of difficulty accepting Mr. O'Sullivan's argument that the opponent's evidence indicates that the opponent is simply claiming use in respect of services rather than class 29 goods. Where a restaurant and take-away food service is being offered, it is extremely difficult to differentiate where the service ends and trade in relation to the goods begins. These two uses of a trade mark can be virtually impossible to separate, especially where the goods are obtained from a supplier and then cooked or prepared in some way, and are then sold in bags or boxes, with only the trade mark of the service provider prominent. Who does the purchaser believe to be the source of the goods? In practical terms, the service provider is the only answer available to the vast majority of purchasers, unless an individual had special information concerning the source of supply to the service provider. It must also be remembered that, in 1965, at the time when the application was made, no provision existed for the registration of service marks in Australia. Trade mark owners were often forced to register a mark in a class that covered the goods in relation to which their services operated or, alternatively, on the paper goods (such as stationery or invoices) used in connection with the supply of their services. In the present circumstances, I believe that it would be unfair to the opponent if I found that its activities could only be considered in relation to their restaurant services and not be considered in relation to the food goods that are necessary to deliver the services.

However, a major part of the evidence does disturb me considerably. Mr. O'Sullivan raised this aspect briefly and I find that I am in agreement. Although it is clear that the opponent has expended much effort in activities preliminary to setting up a business in Australia, it is not at all clear which trade mark is involved in this activity. In all three earlier decided matters cited by the opponent to support its case, it was clear, in each instance, which trade mark was involved in the various preliminary activities. The nature of the activities in those cases themselves required the trade mark to be involved. Whether it was providing promotional videos, printing business cards and letterhead or providing samples of goods, there was no question about the actual trade marks involved in each case.

In the present matter, the evidence is not at all clear and could readily be interpreted to indicate that the opponent was hoping to trade in Australia using the STEERS trade mark. The Annual Report, attached as exhibit PH 1 of the Halamandaris declaration, prominently displays a composite trade mark using the scripted word STEERS with a device of a representation of a BULL'S HEAD, all superimposed across a TRIANGLE. No mention can be found of the BIG STEER mark. In a further paragraph in the Halamandaris declaration, at 6.3, reference is made concerning exhibit PH 4. This exhibit shows another of the opponent's marks incorporating the words STEERS ROAST and a device similar to that shown in PH 1, but without the TRIANGLE device. Exhibits PH 5 and PH 6 both indicate use of the same mark as exhibit PH 1. The use of BIG STEER in these exhibits is unconvincing. The words BIG STEER appear in use in the menus as "BIG STEER BURGER" side by side with such items as cheese burger, big cheese burger, mushroom burger and garlic burger. This is the only clear use in the evidence, and it is arguably a description of a line of large burgers which form part of goods sold under the STEERS and BULL'S HEAD device trade marks and contain beef. I also note that the letter to the Australian Trade Commission (exhibit PH 8) was produced on letterhead for the composite trade mark mentioned in PH 1. In addition, it is not clear what connection exists between Mr. R. G. Bolton (the person to whom the Real Estate agency directed their letter indicating suitable commercial sites) and the opponent (exhibit PH 9). This letter could have been written to anyone with some interest in developing a business venture in the Darling Harbour area of Sydney. Furthermore, despite submission of the information from the franchising conference held in 1996, detailing the probable use of various trade marks in Australia (exhibit PH 2), no direct comment is made concerning the trade mark BIG STEER. The situation is similar for exhibit PH 7, the business report commissioned through the consultancy of Ernst & Young. This is an extremely detailed 80 page report. However, I note that the specific reference to the trade mark found in the franchise application refers to the composite mark of the word STEERS with the device of a BULL'S HEAD superimposed across a TRIANGLE device.

Whilst I am convinced that the opponent had, and still has, every intention of expanding its business operations into Australia at some time in the future, I am not convinced that the evidence indicates that the plans include using the present mark.

On some earlier decided cases, the provision of one item or sample has been taken to be use of the mark. I take Mr. Fitzpatrick's point that it may be difficult to provide samples from South Africa of the goods under the mark due to quarantine restrictions and the very nature of the goods themselves, because they are perishable items. I must, however, point out that such samples were not produced to support the opponent's case. I do not believe that I can determine that, because the action was difficult, that I should assume that any use could be attributed to the mark due to these circumstances.

The opponent also argued that the lack of commercial use was, in part, caused by the use of other STEERS marks in Australia by the removal applicant. It had argued that this had resulted in opposition action to an application for registration filed by the removal applicant and had produced some concern of possible infringement if the BIG STEER mark was used. Mr. Fitzpatrick had cited Stylesetter (supra) to support this view.

The present registration for BIG STEER pre-dates anything that the removal applicant had done by way of use or of applications for registration. Accordingly, the opponent clearly had the right to use the mark. It may have suffered infringement difficulties had it attempted to use the other STEERS marks that it uses in South Africa, but that would be a matter for another forum. As far as the use of the present mark goes, no impediment existed. This is an entirely different set of circumstances from Stylesetter (supra) where a lack of commercial use by the opponent occurred despite some definite moves to establish common law rights by the opponent prior to the applicant's filing date. The opponent in that case, however, did not have a registered trade mark on which to rely and was not prepared to attempt to establish common law rights in the face of possible infringement action.

From the material before me, and as discussed above, I find that the opponent has not made out a sufficient case to indicate that the mark BIG STEER was used in the relevant three year non-use period, from 7 December 1993 to 7 December 1996 in the Australian market.

(d) The Discretion of the Registrar

In the event that I found against the opponent on either ground under s.92(4)(a) or s.92(4)(b), Mr. Fitzpatrick requested that I find that the mark could remain on the Register at the discretion of the Registrar, as claimed in the notice of opposition, because there existed special circumstances involving the business of the removal applicant which prevented the mark's use.

The issues concerning the Registrar's discretion to leave a mark on the Register, when grounds supporting the removal action have been established, have been clearly outlined in Beltrami S.p.A. (supra) where Deputy Registrar Hardie concluded:

Under subsection 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 action.

The submission supporting the exercise of the Registrar's discretion revolved around the appropriation of the opponent's STEERS trade marks by the removal applicant. Mr. Fitzpatrick submitted that the removal applicant came to the Registrar with "unclean hands".

I note that Mr. Fitzpatrick did not claim misappropriation of the opponent's STEERS trade marks by the removal applicant but simply appropriation of the marks. The present position at law in these circumstances is as expressed in The Seven Up Company v. O. T. Limited and Another, (1947) 75 CLR 203, where Williams J. commented at 211:

...in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Mark Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration.

Further to this situation, another full Federal Court decision, Conagra Inc. v. McCain Foods (Aust) Pty Ltd 23 IPR 193, Lockhart J. had considered the issue of use of an overseas trade mark where no commercial use had been made in Australia, with the following comments at 234:

... reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...

The Register should present an accurate as possible picture of the realities of trade mark usage in the marketplace in Australia. In the present circumstances, I cannot see any relevant reason to leave the mark on the Register due to, "any special facts or circumstances", or "an overriding public interest". There has been no evidence presented that the trade mark BIG STEER has ever been used in Australia by the opponent from the time of lodging the application in 1965. Nor can I find any evidence to support a reputation for the opponent in relation to the mark in Australia by any other activities. Despite some material to support a claim that the opponent has an intention to commence business operations in Australia, I find that this is not sufficient to demonstrate that I should exercise the discretion of the Registrar and allow the mark BIG STEER to remain on the Register.

Decision

I have found that the removal applicant is a person aggrieved relevant to s.92(1). I have further found that the opponent is successful relevant to s.92(4)(a) in showing that there was an intention to use the mark as at the date of application. However, I have also found that the removal applicant is successful under s.92(4)(b), in indicating that the mark BIG STEER has not been used during the three year period from 7 December 1993 and 7 December 1996. I have also found that there are no grounds for applying the Registrar's discretion in allowing the mark to remain on the Register.

As the removal applicant was successful under s.92(4)(b) of the Act, subject to an appeal from this decision, I direct that this trade mark be removed from the Register in respect of all of the goods for which it is registered.

Costs

As I consider that each party has been partly successful in its prosecution of the removal action or its opposition to it, I direct that both parties should bear their own costs.

Don Nancarrow
Acting Hearing Officer

3 March 1999.