Superior Gold Bananas Australia Pty Ltd v National Foods Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Superior Gold Bananas Australia Pty Ltd to application under section 92 of the Act by National Foods Limited to remove trade mark number 888748(29,31) – “SUPERIOR GOLD” - in the name of Superior Gold Bananas Australia Pty Ltd

Delegate: Alison Windsor

Representation: Opponent: Kerry Chrysiliou of Chrysiliou IP
Applicant: not represented

Decision: 2010 ATMO 112
S92(4)(b) opposition: Use demonstrated on limited goods during relevant period – trade mark to remain on register for these goods only –certificate under s105 to be issued after appeal period has passed and goods claim restricted – no award of costs.
Background

Superior Gold Bananas Australia Pty Ltd (‘the opponent’) is the owner of a registered trade mark, current details of which are as follows:
Trade mark number:           888748
Registered from:                  11 September 2001
Registered goods:                 Class 29: Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and veges, jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats
Class 31: All fruit including bananas
Trade Mark:  SUPERIOR GOLD
On 3 December 2007, National Foods Limited (‘the non-use applicant’) applied to have the trade mark removed from the Register for all the goods for which the trade mark is registered under the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The relevant period for the purposes of paragraph 92(4)(b) is thus the three year period ending on 3 November 2007.
On 31 March 2008 the opponent filed a notice of opposition to the removal application.
Evidence in support, in answer and in reply were filed in due course. The opponent requested to be heard, and the matter came before me as a delegate of the Registrar in Sydney on 15 September 2010. Kerry Chrysiliou of Chrysiliou Law appeared for the opponent. The non-use applicant neither appeared, nor provided any written submissions.
Evidence
Evidence in support
The opponent provided the following declaration as evidence in support:
· Franco Lagudi, director of the opponent, made 10 December 2008 with Annexures A to H
Mr Lagudi states that the SUPERIOR GOLD trade mark has been used during the relevant period but mostly in relation to bananas, where it is used on the fruit boxes in which the bananas are packed and transported to wholesalers and retailers. During the relevant period, Mr Lagudi estimates that his company has sold several hundreds of thousands of boxes of bananas to wholesalers and retailers.
In addition to bananas, Mr Lagudi says that the opponent has used the trade mark ‘continuously and extensively’ during the relevant period in respect of a range of preserved, dried and cooked fruits, particularly dried and glacé fruits. In addition, he says that during the relevant period, and specifically during the Christmas and Easter periods, the trade mark has been used in respect of preserved and smoked meat and fish products. All of these goods are sold in packaging which, Mr Lagudi says, bears a sticker showing the trade mark. He has provided examples of these stickers, shown below:
Various photographs showing goods bearing the trade mark were provided as annexures to the declaration. These photographs were not taken during the relevant period. Mr Lagudi states that the photographs of goods bearing the trade mark and shown in place upon the shelves of a store were taken shortly prior to making his declaration, but he says they are indicative of the use which occurred during the relevant period. He has not provided any physical examples of trade mark use in respect of goods other than bananas during the relevant period.
Evidence in answer
The non-use applicant provided the following declaration:
· Annika Kerstin Barrett, made 21 July 2009, with exhibits AKB-1 to AKB-3
Exhibit AKB-1 to Ms Barrett’s declaration consists of the results of investigations undertaken by the non-use applicant into use of the opponent’s trade mark during the relevant period. The investigator’s initial report, which is dated 27 November 2007, states that he did not find any use of the opponent’s SUPERIOR GOLD trade mark in respect of bananas or fish or any products.
Exhibit AKB-3 contains the results of a second investigation, dated 17 June 2009, into the opponent’s use of its trade mark, specifically in this case in respect of fish. Again, the investigator did not find any evidence of trade mark use in respect of the particular goods.
Ms Barrett gives her opinion that the opponent’s evidence contains assertions of sales rather than any documentary evidence during the relevant period, and is therefore not sufficient for it to successful defend the removal application. She also comments on the non-use applicant’s earlier dated registration, number 609107[1] for the trade mark SUPERIOR GOLD, which is registered in class 29 for ‘fish’. She states that the two marks are clearly substantially identical and that the opponent’s trade mark should not have been accepted for the item ‘fish’.[2]
[1] I note in passing that assignment of this registration to a third party was recorded on 5 March 2008.
[2] Ms Barrett’s comments here have some validity. However, I note that no opposition was filed after the application was advertised as accepted, and neither was there any other attempt to have the matter rectified at the time. This matter is not a relevant consideration in this action.
Evidence in reply
The opponent’s evidence in reply consists of the following four declarations:
·     Alexander Cruz made 25 February 2010
·     Maria Gentilomo made 19 February 2010
·     Maria Luisa Needham made 25 February 2010
·     Tony Luca made 25 February 2010
All four of these declarants are employed at Harris Farm Markets at Edgecliff in Sydney, New South Wales. This establishment is a retail outlet operated by the opponent.
The declarants all attest to having seen various products sold under the trade mark during the relevant period. The products to which they refer are smoked salmon and smoked trout; cold meats such as salamis and hams; a range of dried fruits and also glacé fruits. All declarants state that these goods are generally sold only at Christmas and Easter.
The law
Section 92, as it is relevant to this matter provides:
Section 92. Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note: For prescribed court see section 190.
(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) …
(b) 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.
Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Section 100 places the burden on the opponent to establish use of its trade mark within the relevant period. To discharge its onus under section 92(4)(b), the opponent must provide evidence of a bona fide use of the trade mark during the relevant period. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72.
Section 101 of the Act gives the Registrar discretion in deciding whether to remove the trade mark from the Register, even in a case where actual use has not been demonstrated.
At the hearing the opponent requested issue of a certificate under the provisions of section 105 which section provides as follows:
Section 105. Certificate-use of trade mark
(1) If in any proceedings relating to an opposed application the Registrar or the court has found that:
(a) a trade mark has been used in good faith during a particular period; or
(b) a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use;
the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.
(2) In any subsequent proceedings in which non-use of the trade mark is alleged:
(a) the certificate is, on being produced, evidence of the facts stated in it; and
(b) if the proceedings are determined in favour of the opponent and, on or before filing the notice of opposition, the opponent notified the applicant of the contents of the certificate-the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent's full costs paid by the applicant.
I will refer to this matter later in this decision.
Discussion
The opponent submitted that its evidence demonstrated sales of bananas at both retail and wholesale levels under the trade mark and within the relevant period. I am satisfied that this is the case. Annexure C to the Lagudi declaration is dated within the relevant period and shows use on a banana box of the following trade mark as well as use of the opponent’s company name ‘Superior Gold Bananas Australia’:
The trade mark shown here is the subject of registration 845200 which is registered for preserved, dried, cooked and fresh bananas. It is obviously a composite trade mark, containing features other than the words ‘SUPERIOR GOLD’. I am satisfied, however, that use of this composite trade mark is also use of the trade mark for the words ‘SUPERIOR GOLD’[3], as the other features of the trade mark consist of descriptive material and images of the goods relevant to the registration.
[3] Whereas registration 888748 is for the words ‘SUPERIOR GOLD’ enclosed by double inverted commas, I agree with Ms Barrett’s opinion (cf paragraph 11 above) that the trade marks SUPERIOR GOLD and “SUPERIOR GOLD” are substantially identical or, as s 100(2)(a) puts it, that use of these words without the double inverted commas is use of the registered mark “with additions or alterations not substantially affecting its identity”.
In addition, the opponent has provided at Annexure D examples of dated invoices which, while they do not demonstrate the actual trade mark in use, go to supporting the claim that the opponent has sold bananas in the boxes referred to previously within the relevant period.
The opponent also refers to use of the trade mark in respect of preserved, dried and cooked fruits and in respect of meat, meat extracts and fish. The use of the trade mark in respect of these goods is not well supported at all. Mr Lagudi mentions that this range of goods is generally sold only at Christmas and Easter.
There is no hard evidence provided to support use of the trade mark on these goods during the relevant period. Mr Lagudi has provided photographs of some of the goods bearing the trade mark in place on shelves within his store at Edgecliff. He states that the photographs were ‘taken recently’, that is, prior to making his declaration on 10 December 2008. He says that the samples depicted in the photographs are typical of the opponent’s preserved food products which were offered for sale during the relevant period and using the trade mark.
His claims in this matter are supported by the declarations provided as evidence in reply. The declarants are all staff members at the Edgecliff store. Alexander Cruz says that he is the assistant manager of the store and has been with the store since 1996. He says that during the relevant period he has seen salmon and trout sold under the trade mark at Easter and Christmas.
Maria Gentilomo is the store supervisor of the Edgecliff store. She says that she supervises staff members in packaging and labeling products which are offered for sale at the store. She attests to her awareness of the sale under the trade mark of smoked salmon and smoked trout at Christmas and Easter during the relevant period.
Maria Needham is second in charge to the store supervisor at the Edgecliff store. She states that for several years, including during the relevant period, she has applied the trade mark on labels to the following goods, all of which were offered for sale at Christmas and Easter:
cold meats, namely Danish salami, other types of salami, ham and smoked turkey; dried fruits, namely, apricots, pitted prunes, sultanas, ginger, raisins and mango; glace fruits, apricot slice and apricot delight (which is apricot combined with coconut) and fish, namely, smoked salmon and smoked trout.
Tony Luca is manager of the Edgecliff store. He states that he has observed the sale of salmon, trout, dried fruits and cold meats under the SUPERIOR GOLD trade mark at Christmas and Easter over several years, including during the relevant period.
While this evidence is far from ideal, I am prepared to take the declarant’s comments at face value. All of these people have been prepared to describe their relationship with the store and the goods they have observed which were sold under the trade mark. Failing evidence to the contrary, or something which would cause me to question the veracity of the statements given, I am satisfied that the opponent has demonstrated use of the trade mark within the relevant period in respect of the following goods only:
· Class 29: Cooked, preserved and dried meat and poultry; smoked salmon and trout; dried and glace fruits
· Class 32: Bananas
Registrar’s discretion – section 101
This brings me to the matter of the Registrar’s discretion. Subsection 101(1) states that if the Registrar is satisfied that the grounds on which the application was made have been established, the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods to which the application relates. Subsection 101(3) states that if the Registrar is satisfied that it is reasonable to do so, she may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. Subsection 101(4) does not limit what matters the Registrar may take into account when making her decision, but specifically she may consider whether the trade mark has been used by its registered owner in respect of similar goods or closely related services to those claimed.
In this case, the opponent has demonstrated use on only some of the goods encompassed by the registration. The examples of use provided leave much to be desired, especially in respect of any goods other than bananas. That aside, the opponent requested that the Registrar exercise her discretion in the opponent’s favour in retaining all of the goods for which the trade mark is registered.
In this respect, the opponent submitted that bananas are similar goods to other fresh fruits, which are sold side by side in retail outlets and used as substitutes for each other in, for example, children’s lunch boxes. Similar arguments were provided for the remaining goods in the specifications. Paragraphs 13 and 14 of the Lagudi declaration state the following:
Although … my Company’s direct use of the “SUPERIOR GOLD” Trade Mark (by means of packaging, boxes, advertising and the like) in respect of fruit (being bananas) , meat, fish, meat extracts, preserved, dried and cooked fruits, my Company has also, by way of its corporate name, Superior Gold Bananas Pty Ltd, extensively sold at a retail level during the Relevant Period a wide variety of other goods and vegetables including, by way of example, poultry and game, preserved, dried and cooked veges, jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats by way of my Company’s Edgecliff premises and my company’s Coffs Harbour premises.
I have been in the business of wholesaling and retailing food products generally (and, in particular, “meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and veges, jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats” and “all fruit including bananas” for in excess of 25 years. I believe that, as a result of my experience, I have acquired a significant knowledge and understanding of the wholesale and retail fruit and vegetable market in Australia generally and, in particular, the retail (consumer) and wholesale demands therefore. (sic) In my opinion, each of “meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and veges, jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats” and “all fruit including bananas” the subject of the “SUPERIOR GOLD” Trade Mark could broadly be described as goods of the same description, being in the nature of fresh produce (including meats and fish, etc.) in that those goods are often (if not generally) sold through similar retail outlets such as supermarkets, delicatessens, speciality food stores and corner stores and displayed side-by-side by those retail outlets …
I do not agree with Mr Lagudi’s arguments, nor with the submissions made in respect of the purported similarity between the broad range of goods and those actually sold under the trade mark. In a retail establishment which sells a range of different foodstuffs, and sells these different foods under a variety of trade marks, the fact that some goods are labeled SUPERIOR GOLD does not mean that the buying public expects the whole range of goods to bear that trade mark. Food buyers, and especially domestic food buyers, will not necessarily expect the producer of dried fruits or preserved meats to also sell cooking oil, margarine or milk. Neither will they assume that the label on a packet of smoked fish should also appear on a fresh rump steak, on a lamb roast or on a bottle of jam. In the Australian market, I do not consider there is a general expectation that apple or orange growers and sellers also grow and sell bananas. They appear to me to be completely separate markets.
Mr Lagudi has not provided any examples of advertisements using his trade mark or even using his company name, and nothing has been provided to show that the trade mark SUPERIOR GOLD has been placed before the consumers in such a fashion that it would create in their minds an expectation of the availability of a broad range of goods under that banner. I therefore do not intend to exercise the Registrar’s discretion to retain all the goods in the registration as he has requested. The registration will be restricted to those goods for which use has been demonstrated.
Decision
The opponent has satisfied me that it has used its trade mark within the relevant period for a limited part of the broad range of goods for which it is registered. I direct that one month from the date of this decision the registration be amended to remove all the goods for which it is registered except for the following goods which are to remain:
· Class 29: Cooked, preserved and dried meat and poultry; smoked salmon and trout; dried and glace fruits
· Class 32: Bananas

If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.
Certificate under section 105
The opponent has requested that the Registrar issue a certificate under the provisions of section 105 of the Act in the event that the Registrar had made a finding of use in good faith during the relevant period. I have found that there has been use of the trade mark for a limited range of goods. If and when the Register is amended as I have directed, the opponent may request that the certificate be issued.
Costs
The opponent requested its costs in the event of success. Neither party has been completely successful in its endeavours in this matter. I decline to make any award of costs.
Alison Windsor
Hearing Officer
Trade Marks Hearings
19 November 2010

[2010] ATMO 112

19 November 2010

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Remedies

Costs

Statutory Construction

Delegate:	Alison Windsor
Representation:	Opponent: Kerry Chrysiliou of Chrysiliou IP Applicant: not represented
Decision:	2010 ATMO 112 S92(4)(b) opposition: Use demonstrated on limited goods during relevant period – trade mark to remain on register for these goods only –certificate under s105 to be issued after appeal period has passed and goods claim restricted – no award of costs.