Suzanne Malone v Stance Global Pty Ltd

[2014] ATMO 115

TRADE MARKS ACT 1995

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

Re:Oppositions by Suzanne Malone to applications under section 92 of the Act by Stance Global Pty Ltd to remove trade mark registrations 1196989, 1209464(3, 25) - COCONUT CULTURE AND DEVICE - in the name of Suzanne Malone

Delegate:	Jock McDonagh
Representation:	Opponent: No representation nor submissions Applicant: Michelle Calder and Karla Brummell of IP Wealth Pty Ltd
Decision:	2014 ATMO 115 Section 92(4)(b) opposition: No relevant use shown and opposition not established. No reason for exercise of discretion in Opponents’ favour. Trade marks to be removed.

Background

1. This matter is a proceeding under subsection 92(4)(b) of Trade Marks Act 1995 (‘the Act’) in which by an application filed on 8 July 2013, Stance Global Pty Ltd (‘the Applicant’) has sought the removal from the Register of the trade marks (‘Trade Mark’) appearing below in respect of all of the goods for which they are registered:

Regn No.	1196989	1209464
Trade Mark
Goods	Class: 3 Cosmetics; skin care products (cosmetic); facial cleansers; lotions for cosmetic purposes; oils for cosmetic purposes; sun block; nourishing creams (cosmetics); oils for the body (cosmetics); cosmetic kits; cosmetic creams; soap; scrubs (preparations), other than for medical use; hair care products; bath crystals, not medicated; salts for bath use; powders for cosmetic purposes; topical preparations for promoting hair growth	Class: 25 Clothing; headwear; headgear for wear; footwear

1. On 13 August 2013, Suzanne Malone (‘the Opponent’) filed Notices of Intention to Oppose.

2. On 10 September 2013 the Opponent filed her Statement of Grounds and Particulars (‘Grounds’) which is generally couched in terms of rebutting the ground cited by the Applicant.

3. On 18 October 2013 the Applicant filed Notice of Intention to Defend.

4. Thereafter, the parties have filed evidence as allowed by the Trade Mark Regulations 1995 (‘the Regulations’), which I further detail below.

5. The parties elected to be heard.  I conducted a hearing in Brisbane on 16 September 2014.  The Opponent was not represented, nor did she file written submissions to be considered.  The Applicant was represented by Michelle Calder and Karla Brummell of IP Wealth Pty Ltd.

6. In the absence of submissions from one of the parties, I consider that I have a general duty to ensure a fair hearing.  However, I must be careful not to become the advocate of an unrepresented party and must keep in mind the need to afford procedural fairness to all parties.

The Law

1. Section 92 of the Act relevantly states:

92Application 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.

1. Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

2. The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

3. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz ) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

4. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

5. As the application for removal was filed on 8 July 2013 the relevant period (‘the relevant period’) for the purposes of 92(4)(b) is the three years ending on 7 June 2013.

6. Finally, section 101 of the Act deals, inter alia, with the Registrar’s discretion:

Determination of opposed application—general

(1) Subject to subsection (3) and to section 102, if:

(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) 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 and/or services to which the application relates.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3) If satisfied that it is reasonable to do so, the Registrar or the court 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.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)  similar goods or closely related services; or
(b)  similar services or closely related goods;

to those to which the application relates.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For registered owner see section 6.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:

   [167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   [168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   […]

   [171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

   […]

   [176] The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal (E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [4] per Flick J).

Evidence

1. The evidence in this matter is as shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Suzanne Malone	Opponent	2.01.14 ‘Malone 1’	Attachments 1 to 9
Evidence in Answer
Dr Timothy Kempton	Managing Director of Applicant	18.07.13 ‘Kempton’	1 to 3
Evidence in Reply
Suzanne Malone	Opponent	20.01.14 ‘Malone 2’	Attachment 1

1. Malone 1 states that the Trade Mark was used in relation the specified goods during the relevant period and attaches copies of the following:

   • Business name registration for COCONUTCULTURE
   • ATMOSS entry for Application 1196989
   • List of goods supplied to Opponent by a supplier, Nature Pacific Pty Ltd
   • Copies of various labels and business cards bearing Trade Mark
   • Business insurance statement of currency in the name of Opponent
   • Photograph of a marquee bearing the Trade Mark and the URL
   • Photograph of a vehicle bearing the Trade Mark
   • Photograph of bags, purses and sarongs and an item marked ‘coconut’.

2. Kempton provides a background to the business activities of the Applicant, particularly relating to coconut oil products. It also states that it has owned since 30 October 2012 and since 7 July 2013.

3. Kempton relates some details of negotiations with the Opponent and provides what are effectively submissions in response to the Opponent’s Evidence in Support. It also attempts to impeach that evidence insofar as the declaration does not include the required paragraph numbers and that it is not witnessed.

4. Of more relevance to the proceedings, Kempton provides evidence suggesting that the website was not in use during the relevant period.

5. Malone 2 repeats her ownership of the Trade Mark since 2007 and that she has operated a permanent stall site at both the Byron Bay and Lennox Markets regularly between 2008 to August 2012. She attaches a declaration from the Assistant Manager of Byron Markets confirming that the Opponent operated a permanent stall between 2008 and 2012.

6. Notwithstanding comments in Kempton and submissions by Ms Calder for the Applicant, I am satisfied that the Opponent’s declarations are substantially compliant with the Regulations and are admissible in these proceedings. The declaration form provided by IP Australia does not require a witness. While the form does state that each paragraph must be numbered consecutively, to reject the evidence on that basis would be an exercise of Dickensian-era bureaucracy.

7. However, the evidence is insufficient to meet the onus required to establish use of the Trade Mark on the relevant goods within the relevant period.

8. While the opponent asserts in general terms that the Trade Mark was used during a broad time period, there is no identification of any particular date any on which the photographs of the goods or the Trade Mark were taken.

9. There is no evidence demonstrating the Trade Mark being used on any of the specified goods of the registrations at any time, let alone during the relevant period.

10. Attachment 3 to Malone 1 does establish sales of Class 3 goods to the Opponent during the relevant period. However, the customer detail is listed as ‘Suzanne Malone’ and there is no reference at all to the Trade Mark. There is no evidence to suggest that these goods were carrying the Trade Mark or were labelled with the Trade Mark by the Opponent.

11. While the authorities cited in paragraph 15 state that an opponent is not required to point to exceptional circumstances, in the present matter the Opponent has not satisfied me that any circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in her favour.  There is no evidence before me that the Opponent used the Trade Mark to any significant extent at any time (if at all) in relation to the goods for which it is registered. On the other hand, the Applicant has given evidence of a business application for using coconut oil and has sought to register the trade mark COCONUT CULTURE; however, the Trade Mark is cited as grounds for rejecting the application.

12. In my view this is not a case, on the face of it, which warrants exercise of the Registrar’s discretion in the owner’s favour pursuant to s 101(3) and I decline to do so.

Decision and Direction

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)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 and/or services to which the application relates.

2. I find that there was neither use of the Trade Mark by the Opponent in the course of trade in Australia for any of the goods during the relevant period, nor were there any circumstances which were an obstacle to use.  Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion not to remove the Trade Mark in respect of all the goods.  I accordingly direct that registrations 1196989 and 1209464 be removed from the Register one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

Costs

1. The Applicant has been successful in relation to the application for removal of the Trade Marks. I direct that costs in relation to the opposition be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
9 December 2014