Swole Gym Wear Group Pty Ltd v Swole O'Clock Ltd
[2018] ATMO 129
•16 August 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Swole Gym Wear Group Pty Ltd to an application under section 92 of the Act by Swole O'Clock Ltd to remove trade mark number 1702160 (14) - SWOLE - in the name of Swole Gym Wear Group Pty Ltd
| Delegate: | Aaron Walters |
| Representation: | Opponent: Mr Derrick Murphy of Swole Gym Wear Group Pty Ltd Applicant: Mr Andrew Sykes of Counsel, instructed by Ms Jacqui Pryor of Mark My Words Trademark Services Pty Ltd |
| Decision: | 2018 ATMO 129 |
Background
This is a matter concerning an application made by Swole O'Clock Ltd (‘the Removal Applicant’) on 29 June 2017 for the removal of a trade mark from the Register under s 92(4)(a) of the Trade Marks Act 1995 (‘the Act’) and the subsequent opposition to that removal by Swole Gym Wear Group Pty Ltd (‘the Removal Opponent’) under section 96 of the Act. The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark. The details of the trade mark registration subject of the application for removal (‘the removal application’) are:
Trade Mark No: 1702160
Trade Mark: SWOLE (‘the Trade Mark’)
Owner: Swole Gym Wear Group Pty Ltd
Filing Date: 23 June 2015
Specification of Goods:
Class 14
Alarm watches; Bands for watches; Bracelets and watches combined; Bracelets for watches;
Chronographs (watches); Clocks and watches, electric; Containers especially adapted for presentation and display of jewellery or watches; Divers' watches; Electronic watches; Faces for watches; Mechanical watches with automatic winding; Mechanical watches with manual winding; Pendant watches; Pocket watches; Quartz watches; Sports watches; Stop watches; Table watches; Watches; Watches bearing insignia; Watches for nurses; Watches for sporting use; Watches made of gold; Watches made of plated gold; Watches made of precious metals; Watches made of rolled gold; Wrist straps for watches; Wrist watches; Wristlet watches
(‘the registered goods’)
The Removal Opponent filed its Notice of Intention to Oppose on 13 July 2017 and its Statement of Grounds and Particulars (‘SGP’) on 17 July 2017. The Applicant filed its Notice of Intention to Defend on 3 August 2017.
The parties filled evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The evidence before me consists of:
Evidence in Support
Declaration made by Derrick Murphy, Owner and Director of the Removal Opponent, on 10 August 2017 together with Attachments 1 to 9 (‘Murphy 1’).
Evidence in Answer
Declaration made by Agnieszka Chen-Dadura, Administration and Operations Manager of the Removal Applicant, on 21 August 2017 together with Exhibits 1 to 9 (‘Chen-Dadura 1’).
Evidence in Reply
Declaration made by Mr Derrick Murphy of the Removal Opponent on 6 November 2017 together with Attachment 1 to 5 (‘Murphy 2’).
On 30 November 2017, the Removal Opponent requested an oral hearing. The matter was set down for hearing in Canberra on 7 June 2018. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks. In response to my schedule for submissions, sent 26 April 2018, the Opponent provided its written submission on 23 May 2018 (‘the Removal Opponent’s submissions’) and the Removal Applicant provided its submissions on 31 May 2018 (‘the Removal Applicant’s submissions’).
I heard the matter on 7 June 2018. Andrew Sykes of Counsel instructed by Jacqui Pryor of Mark My Words Trademark Services appeared on behalf of the Removal Applicant. Derrick Murphy appeared on behalf of the Removal Opponent.
Authority to decide the matter
As a delegate of the Registrar of Trade Marks,[1] I provide the ensuing reasons for the decision that follows, which is made under s 101 of the Act based on the material referred to above as well as the written and oral submissions made by the parties at the hearing on 7 June 2018.
[1] Pursuant to s 206 of the Act.
The Legislative Framework
An application for removal of a trade mark is made under s 92 of the Act. Section 92 provides two grounds, either under s 92(4)(a) or s 92(4)(b), by which an application for removal can be made. While both grounds may be pursued, the application in the present matter is confined to s 92(4)(a) of the Act, which provides:
92 Application for removal of trade mark from Register etc.
…
(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) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non-use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed
Section 100 of the Act makes clear the onus to rebut an allegation of non-use made under s 92(4)(a) of the Act lies with the Removal Opponent. The requirements for successful rebuttal pertinent to the current application are set out in ss 100(1)(a)-(b) and 100(2)(a) of the Act, which provide:
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services;
(c) …
(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period;
For guidance, s 7(4) of the Act provides:
"use of a trade mark in relation to goods" means use of the trade mark upon, in physical or other relation to, the goods (including second-hand goods).
The definition of a trade mark “applied in relation to” goods is defined in s 9 of the Act:
9 Definition of applied to and applied in relation to
(1) For the purposes of this Act:
(a) a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b) a trade mark is taken to be applied in relation to goods or services:
(i) if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii) if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c) a trade mark is taken also to be applied in relation to goods or services if it is used:
(i) on a signboard or in an advertisement (including a televised advertisement); or
(ii) in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
Finally, even if a lack of intention to use the Trade Mark has been established, the Registrar may nevertheless apply discretion in reasonable circumstances and allow the Trade Mark to remain on the Register. In that regard, s 101 of the Act relevantly provides:
101 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) ...
(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.
With the legislative framework in place, I turn now to my consideration of this matter.
The Evidence
I shall first deal with some procedural matters, before discussing the evidence led by the parties in support of this opposition. These matters arose out of the Removal Applicant’s submissions and consist of:
i. A question of procedural fairness pertaining to the Removal Opponent’s evidence in reply (‘the procedural fairness matter’); and
The introduction of Annexure A, being new material submitted outside of the evidence stages (‘the annexure matter’).
The procedural fairness matter
The Removal Applicant requested certain material in Murphy 2 be ignored as it forms impermissibly late Evidence in Support. The Removal Applicant’s submissions claim the basic matter of the Removal Opponent’s intention to use the Trade Mark in relation to the registered goods is a principal matter to be covered in Evidence in Support and contend:
… the extent this alleged evidence in reply is found to somehow evidence a prima facie intention to use it should be ignored as a matter of procedural fairness..[2]
[2] The Applicant’s submissions, paragraph 18.
As the Removal Applicant’s submissions did not clearly define the extent to which the Removal Opponent’s Evidence in Reply should be ignored I invited Mr Sykes to clarify this at the hearing. Mr Sykes confirmed the following statement as the passage in Murphy 2 which the Removal Applicant objects to:
The [Removal] Opponent had also been researching potential manufacturers of watches via the manufacturing website Alibaba.com and has targeted emails in support of this from Alibaba, the first of these dated 18 August 2014 which is 7 months prior to the Removal Applicant commencing business. The [Removal] Opponent has clearly made sound business research and business decisions before the Removal Applicant’s business existed. When the [Removal] Opponent registered [the Trade Mark] in June 2015 it was to ensure that current Swole Gym Wear products were covered by [a] trade mark and for future product development of watches as previously researched.[3]
(‘the Murphy 2 statement’)
[3] Murphy 2, paragraph 6.
The Removal Applicant’s written and oral submissions argue the Murphy 2 statement, in particular Mr Murphy’s comment pertaining to registering the Trade Mark for coverage of “future product development of watches”, is an abuse of process as:
(i) it is not truly evidence that replies to the evidence in answer; and
(ii) the Non-use Applicant is deprived its usual opportunity of addressing such matters in its evidence in answer.[4]
[4] Supra., 2.
I do not agree with the Removal Applicant’s submission. As the last phase of the evidence process, Evidence in Reply provides an opposing party with an opportunity to respond to or clarify matters raised by the Evidence in Answer. I have reviewed Chen-Dadura and note it discusses, at length, the Removal Opponent’s Evidence in Support and SGP relating to its intention to use the Trade Mark and product research.[5] I do not consider the Murphy 2 statement steps beyond its purpose as Evidence in Reply.
[5] For example, see Chen-Dadura, paragraph 14 to 21.
The annexure matter
The Removal Applicant’s submissions provide:
… I attach at Annexure A a screen shot along with the first few pages of search results from Alibaba taken by my instructor Jacqui Pryor on 31 May 2018.
As Annexure A formed new material submitted outside of the evidence stages, I gave both parties at the hearing an opportunity to make representations on whether Annexure A should be considered.
In oral submissions, Mr Sykes submitted that Annexure A was not new evidence, but rather, further information which clarified evidence contained in the Evidence in Reply. He submitted that Annexure A corrected an assertion in Murphy 2 that items could only be purchased in bulk from the website Alibaba.com. Mr Sykes noted that as I am a delegate of the Registrar, I am not bound by the rules of evidence,[6] and submitted Annexure A should be allowed in for consideration. In particular, Mr Sykes submitted that there was no prejudice in allowing Annexure A in as it was a small fact to address and the Removal Opponent had sufficient time, being one week before the hearing, to provide submissions on it. In response, Mr Murphy claimed he had not had time to consider Annexure A and it should not be included.
[6] Reg 21.15(4), the Regulations.
Mr Sykes made a point that it is reasonable for the Applicant’s submissions to be used to respond to matters contained in the Removal Opponent’s Evidence in Reply, as there has not been an opportunity for the Applicant to respond otherwise. However, I do not consider this affords the right to introduce new evidence into the proceeding. As Annexure A has been introduced to address and assert fact (albeit a small one), I am of the opinion Annexure A is new evidence.
Despite the material being evidence provided outside of the usual evidentiary period, it is open for the Registrar to consider this information under reg 21.15(4) of the Regulations. However, in establishing the Removal Opponent’s intention to use the Trade Mark at the relevant date, evidence of a screen shot taken on 31 May 2018 has low evidential value and I need not consider it in deciding this matter.
The procedural matters dealt with, I consider my decision rest on the properly filed evidence.
The Removal Opponent’s Evidence
The Removal Opponent is an Australian company incorporated in April 2017. Including the Trade Mark, the Removal Opponent is the registered owner of the following trade marks:
| Trade Mark 1379762 Filing date: | Goods & Services |
| Trade Mark 1610881 Filing Date: | Goods & Services |
| Trade Mark 1629144 Filing Date: | Goods & Services |
(Collectively, referred to as ‘the Removal Opponent’s Trade Marks’)
Prior to incorporation, the Removal Opponent’s trade marks were registered and held in the name of its sole owner and director, Mr Murphy, who operated his business in his capacity as an individual.[7] I note the Removal Applicant has raised a question over alleged instances of use of the Trade Mark having been by Mr Murphy, rather than the Removal Opponent.[8] I acknowledge, throughout Murphy 1 and the evidence contained therein, statements are made either in the first person by Mr Murphy or in reference to himself as the Trade Mark owner. However, I do not consider this weighs heavily, if at all, against the Opponent’s evidence. Mr Murphy clarifies he transferred his business assets over to the Removal Opponent in 2014.[9] As both the predecessor in title and sole director of the Opponent, I accept Mr Murphy is best placed to evidence any alleged use, or intended use, of the Trade Mark.
[7] Murphy 2, paragraph 2.
[8] Chen-Dadura, paragraph 30-32.
[9] Supra., 7
Mr Murphy claims he first used his wristband products, which bore the words “SWOL Strength With Out Limits”,[10] in July 2014 and that he sought registration of the Trade Mark in Class 14 to protect his brand.[11] Mr Murphy further notes the Removal Applicant did not oppose registration of the Trade Mark, despite having alleged knowledge of the application. This point is raised again as part of the Evidence in Reply as well as during the hearing. Regardless, I do not intend to consider this argument any further. There is perhaps any number of reasons for the Removal Applicant choosing, if it did indeed so chose, not to oppose the Trade Mark’s registration. However, this is an entirely unrelated issue and should not impede focus on more relevant matters pertaining to a removal for non-use proceeding.
[10] Murphy 1, Attachment 9.
[11] Murphy 1, paragraph 11.
Mr Murphy provides email correspondence between himself and Fran Belkind of Simply Wristbands to evidence an order of wristbands one year prior to registering the Trade Mark (‘the wristband correspondence’).[12] The wristband correspondence occurs on 16 June 2014 and shows Mr Murphy correcting the spelling of SLOW to SWOL regarding the sample artwork for an order of wristbands, just before these were to be produced.[13] I am further provided a series of images posted to social media which are described by Mr Murphy as “showing clients and sponsored athletes wearing Swol wristbands” (‘the social media images’).[14] Of the images provided, only four show clear depictions of a yellow silicon wristband bearing the words “SWOL Strength With Out Limits” (‘the SWOL wristbands’). Of these four, three have been posted between July to October 2014, with the remaining image posted in July 2016.[15]
[12] Murphy 1, paragraph 3.
[13] Murphy 1, Attachment 3.
[14] Murphy 1, paragraph 9.
[15] Murphy 1, Attachment 9.
Around this time, Mr Murphy also received emails from Alibaba.com which he describes as “targeted emails from Alibaba based on previous searches made for jewellery (sic) and watches as potential product lines.”[16] As indicated by the Murphy 2 statement, the Removal Opponent places heavy reliance on these emails in evidencing its intention to provide watches under the SWOLE brand. It is therefore necessary to describe them in detail, though I will discuss their probity later in my reasons. For ease, I will refer to them collectively as ‘the Alibaba emails’.
i. The first email, received on 14 August 2014, notifies Mr Murphy that his “favorite Group Deals are on sale from Preferred Brand Suppliers from 12-18 August.” No further information is provided as to what a “Group Deal” is, nor am I provided further comment on how such deals become a “favorite”. Following this notification are a series of products including jewelry, watches and hair extension, all marked with discounted prices and all featuring their own brands. There is no express mention or indication within the email that these products are being targeted towards Mr Murphy based on previous searches or enquiries.
The second email, received on 25 January 2016, informs Mr Murphy of Alibaba’s “first campaign of 2016 is designed to help you save money and source safely.” The email continues to promote an order placed in a set timeframe could win a set amount of money off the order amount. Immediately following, and under the heading “Instant Quotations on Bestselling Products”, are a series of goods, including jewelry, watches and sunglasses. Again, there is no express mention or indication that would help discern whether these “bestselling products” are being targeted specifically to Mr Murphy based on searches or enquiries, or are simply a range of bestselling products being promoted.
The third email, received 11 March 2016, is similar to the second email in that it again promotes another timeframe in which to place an order with a “participating Trade Assurance Supplier” for the chance to win another discount on the order amount. A series of products follow (primarily watches), though this time under the heading “Top Products from Selected Trade Assurance Suppliers”. Like with the preceding two emails, there is no express mention or indication that these have been targeted towards Mr Murphy.
[16] Murphy 1, paragraph 5.
Mr Murphy refers to his alleged use since 2014 as a basis for not applying for the trade mark in bad faith.[17] Mr Murphy contends the Removal Opponent has “only ever acted in good faith in relation to the Trade Mark” and refers to a definition of ‘good faith’ taken from law.com,[18] as well as an article, entitled “Good Faith, Bad Faith? Making An Effort in Dispute Resolution”[19] when discussing his actions regarding the Trade Mark. However, this evidence does not carry much weight with regards to use in good faith as they relate to rebutting an allegation of non-use under the Act.[20]
[17] Murphy 1, paragraph 11.
[18] Murphy 2, paragraph 6.
[19] Murphy 2, Attachment 4.
[20] It has been observed that the expression “use in good faith” in the context of s 92 of the Act has a well understood meaning, namely “real” as opposed to token use in a commercial sense: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [16]; [2001] 107 FCR 166, [153]-[154]; see also Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7, [52].
It appears Mr Murphy has also been engaged in an ongoing dispute with to the Removal Applicant (or its representatives) over alleged trade mark infringement. Mr Murphy discusses this dispute at length in evidence and provides several examples of correspondence sent by him. In particular, I note in a letter sent on 20 July 2015 to the Removal Applicant’s (then) legal representative RSA Law (‘the RSA Law letter’), Mr Murphy claims:
I have a history or email correspondence with manufacturers to make my products bearing the SWOLE mark. I have clothing lines yet to be manufactured of which I have spent countless hours developing the brand along with the hundreds of hours of artwork bearing both SWOL and the SWOLE marks.[21]
[21] Murphy 1, Attachment 7
However, I consider the Removal Applicant’s alleged infringing conduct to be largely unrelated to the current proceedings and shall only refer to this evidence where relevant to the opposition.
The Removal Applicant’s evidence
The Removal Applicant is a company based in Taiwan and is the applicant of trade mark no. 1834779 for the words SWOLE O’CLOCK. The Removal Applicant provides detailed commentary on the Removal Opponent’s Evidence in Support and SGP. In particular, Ms Chen-Dadura does not consider the Removal Opponent’s evidence includes any use of the Trade Mark, nor demonstrates an intention to use the Trade Mark, in relation to the registered goods.[22]
[22] Chen-Dadura 1, paragraph 18.
Ms Chen-Dadura highlights silicon wristbands are not included as part of the registered goods and contends the wristband correspondence and social media posts do not suggest the Removal Opponent had any intention to use the Trade Mark on, or in relation to, the registered goods. Rather, the SWOL wristbands were provided to simply promote the Removal Opponent’s clothing apparel.[23]
[23] Ibid., paragraph 21.
According to Ms Chen-Dadura, the Alibaba emails do not evidence any enquires or searches carried out in relation to the Trade Mark. These are instead alleged to be generic emails which are sent to a database of subscribers or customers. Ms Chen-Dadura does note some of the goods promoted are in relation to watches. However, this does not support the notion that Alibaba had been sending ‘specific product information’ to the Removal Opponent, nor do they suggest any connection to or intention to use the Trade Mark.[24]
[24] Ibid.
I am provided examples of evidence which Ms Chen-Dadura alleges “clearly supports the Removal Applicant’s view that the [Removal Opponent] had no intention in good faith to use the [Trade Mark] for the [registered goods]… and that Mr Murphy’s creditability (sic) in his evidence must be questioned as they can be demonstrated false in several places.”[25] Notably, in a message to the Removal Applicant, Mr Murphy informs that he is the registered owner of two trade marks, these being SWOLE (TM 1610881) and SWOL (TM 1379762) within class 25. He further claims:
This gives me the exclusive right to use the mark. It also means the marks cannot be used by anyone else in any variation bearing the name SWOLE or SWOL on any apparel [in] Australia (sic). Watches fall under this category. The only way the mark can be used is if I considered a licensing agreement. Any use of the marks with out (sic) this is a trade mark infringement.[26]
[25] Ibid., paragraph 22.
[26] Ibid., Exhibit 5.
Chen-Dadura 1 continues to describe instances of contact between Mr Murphy and the Removal Applicant as well as its distributor.[27] It appears Mr Murphy contacted the Removal Applicant’s distributor Jym Locker via a series of emails, sent on 18, 20 and 22 June 2015. In these, Mr Murphy makes clear his intention to pursue legal action if Jym Locker did not cease distributing watches bearing the Removal Applicant’s trade mark for SWOLE O’Clock.
[27] Ibid., paragraph 25.
I am provided further correspondence between Mr Murphy and Ms Pryor, sent between 25 May 2017 and 27 June 2017. Having reviewed this correspondence it conveys primarily the assertion of each party’s position regarding their rights to use the SWOLE brand in relation to watch products in Class 14.[28]
[28] Ibid., Exhibit 8 & 9.
Reasons
Section 92(4)(a) of the Act provides the means by which to remove a trade mark based on an alleged lack of intention to use it at the time of filing. Having reviewed the evidence, the answer to this question is appears strongly contested by the parties. While I am aware there exists an on-going infringement dispute between the parties, the determinative question rests on what meaning the concept of use of a trade mark has within the Act and in particular s 92(4).[29] It remains necessary for the question to be objectively answered.[30]
[29] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939, [97].
[30] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144, [33].
The relevant allegation in this proceeding is that, as at 23 June 2015, the Removal Opponent had no intention in good faith to use or authorize the use of the Trade Mark, and, at no time prior to 29 May 2017, being one month before the non-use application was filed (‘the relevant period’), did the registered owner use the Trade Mark in good faith in Australia. To rebut the allegation the Removal Opponent bears the onus of demonstrating that any use of the Trade Mark was in good faith or, failing that, demonstrate the requisite intention to use or authorise the use of the Trade Mark in good faith.
Use of the Trade Mark
The Removal Opponent’s SGP particularises its use of the Trade Mark in following way:
In May 2014 I contacted a rubber wristband manufacturer to make some wristbands bearing my SWOL mark. I had them manufactured and received them in July 2014. The wristbands are given away to potential clients and to customers who purchase garments from my company.
I have email evidence of the order process with Simply Wristbands and I have photographic evidence of the wristbands worn by clients since October 2014.
The Removal Opponent contends the Trade Mark has been used since July 2014. In support, reliance is placed upon the SWOL wristbands which Mr Murphy procured in 2014 and has since distributed as part of Removal Opponent’s business. Mr Murphy argues:
The [Removal] Opponent registered a trade mark in relation to class 14, this class includes both wristbands made of rubber or silicon and watches. Class 14 includes several hundred product definitions, which as the owner of a trade mark in that class entitles the [Removal] Opponent to use any of them. The [Removal] Opponent had use of the wristbands, a class 14 item, since July 2014, 11 months prior to registering the [Trade Mark].[31]
[31] Murphy 2, paragraph 6.
I do not accept this argument for clear reasons. The registration of a trade mark for goods in a particular class does not afford a broad entitlement to all goods listed in that class. Furthermore, I find the argument put forward by Mr Murphy incongruent with the ‘concept of use of a trade mark’, referred to above. This concept is inherently linked to the definition of a trade mark,[32] provided under s 17 of the Act:
[32] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144, [41]
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6
It is clear the Removal Opponent heavily relies on its use of the SWOL wristbands to evidence use of the Trade Mark, as shown by the following statement:
The Removal Applicant seems to believe… that the use of the rubber wristbands by the [Removal] Opponent is not relevant to these proceedings when in fact the whole argument hinges upon the [Removal] Opponent’s use of the wristbands as a class 14 good.[33] [My emphasis]
[33] Murphy 2, paragraph 20.
The Removal Opponent incorrectly conflates use of the SWOL wristbands with the registered goods, on the basis they are both found in Class 14. Notably, and as highlighted by the Removal Applicant,[34] the registered goods do not include wristbands as an item. Therefore, use of the Trade Mark upon or in relation to the registered goods cannot be accepted based on the evidence provided.
[34] Chen-Dadura, paragraph 21.
Moreover, the Removal Opponent conceded during the hearing that the SWOL wristbands were not the same goods as watches. However, argued they were similar as both could be worn on the wrist and are made available through the same trade channels.[35] I am provided no evidence to support the alleged similarity in trade channels. Even if such evidence had been tendered, I am not inclined to accept that wristbands and watches would be considered the “same kind of thing”[36] if their sole shared attribute is to be worn on the wrist.
[35] The Removal Opponent’s submissions briefly discuss this at paragraph 10.
[36] Re Hick’s Trade Mark ; Ex parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636, at 640.
Accordingly, I do not find the Removal Opponent has established use of the Trade Mark prior to the relevant period. Having so found, it follows that I consider whether the Removal Opponent has established the requisite intention to use, or authorise use of the Trade Mark.
Intention to use the Trade Mark
The Removal Opponent’s SGP particularises its intention to use the Trade Mark in following way:
In August 2014 I researched jewellery and watches as possible products for sale. Subsequently, I was sent a number of emails from Alibaba.com sending me specific product information relating to jewellery and watches based on my enquiries. This shows forethought and intent to sell a product in class 14, further evidence that there was not bad faith in my registration of Swole in class 14…
Believing that the owner of Swole O’Clock had understood that I had prior use of the mark, I decided it was a practical decision to further protect my product and brand by formally registering the trade mark SWOLE 1702160 in class 14 which includes wristbands made from rubber or silicon…
I have evidence of prior use and I did not apply for the trade mark SWOLE 1702160 in bad faith. Whilst my product and the Swole O'Clock watches are not similar, they fall in the same class and I have prior use to class 14 as evidenced by the stock of wristbands I hold...
While Section 27 of the Trade Marks Act 1995 states that a person who is registering a trade mark must either use or intend to use the trade mark, which I have every intention to do so, Section 92 further states that the owner of the trademark has three years in which to make use of it. It has only been two years for Swole 1702160 class 14 and I still have stock of Swol wristbands.
The onus placed on the Removal Opponent to demonstrate its intention to use the Trade Mark is not high, given the mere act of applying for a trade mark is prima facie evidence of an intention to use it.[37] A further positive declaration made by the Removal Opponent, regarding its intention, may be sufficient to shift the onus to the Removal Applicants.[38] As held by the Delegate in Structureco Inc v Starite Distributors Pty Ltd:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[39]
[37] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391, at 401.
[38] Secondment Pty Ltd v MCI Group Holdings SA [2013] ATMO 71, [9].
[39] (2000) 49 IPR 209; [2000] ATMO 31.
The Removal Applicant’s submissions contend “such a statement must be clear or unequivocal or it will fail for this purpose.”[40] It is argued the Removal Opponent’s alleged intention falls short of overcoming this onus as:
The evidence in support focuses on intention to provide promotional wrist bands and there is a brief and very vague reference to alleged research conducted through the Alibaba website.
Later, in the evidence in reply, Mr Murphy provides a little more specific evidence on this point. However it is still short of even a clear statement on intention and, in particular, it should be noted that evidence of a mere idea that one may use a trade mark (as opposed to being committed to using a trade mark) is not enough to satisfy this onus.[41] [References omitted]
[40] The Removal Applicant’s Submissions, paragraph 13; Citing Stuart McDonell & Adrian Maxwell Bunter v Hobarama LLC [2005] ATMO 49.
[41] Ibid., paragraph 16-17.
Noting the threshold for displacing the onus requires only a positive declaration as to its intention, Mr Murphy contends the Removal Opponent had an intention or interest in contacting manufactures and refers to the “future product development of watches.”[42] Such comments potentially construe an intention to expand into the registered goods. Though the evidence provided on this point is sparse and what is available appears inconsistent.
[42] Murphy 2, paragraph 6
In Murphy 1, Mr Murphy indicates the inspiration for researching jewelry and watches as potential products came in 2014.[43] Mr Murphy further explains:
The wristbands bore the mark SWOL to complement a clothing line trademarked as SWOL (in class 25). The trademark which is the subject of the removal application was trademarked in the name of SWOLE to complement the move towards another clothing line branded as SWOLE (in class 25).[44]
[43] Murphy 1, paragraph 5.
[44] Murphy 2, paragraph 5.
However, the Removal Opponent gives no further evidence on this move towards providing any of the registered goods as a complement to its SWOLE clothing. However, Mr Murphy suggests his research shows an intent to sell a product in class 14, which evidences that he did not attempt to register the Trade Mark in bad faith, and leads the Alibaba emails to corroborate this intention.
As discussed earlier, the Alibaba emails are alleged to contain “specific product information relating to jewellery (sic) and watches” as a result of Mr Murphy’s enquiries into these products. The Removal Applicant contends these are merely generic emails sent by Alibaba to its database of subscribers.[45]
[45] Chen-Dadura, paragraph 21.
Mr Murphy further elaborates on the Alibaba emails:
… [Alibaba.com] is a venue for product manufacturers to provide product information to wholesale buyers. The manufacturers give indications of the wares that they make and companies can contact them to arrange for the manufacture of specific items. All products within the Alibaba emails… marketed to the [Removal] Opponent are within the Jewellery (sic), Watches and Accessories category. These specific products were marketed to the Opponent based on previous searches made, although it is impossible to prove this as it is not the type of thing one expects to be able to prove evidence of. However, there is no reason for the [Removal] Opponent to have been sent these promotional emails if interest had not been shown in the products at an earlier date. Given that the earliest email is dated 14 August 2014, this also proves intent, or certainly interest, in contacting manufacturers in relation to class 14 products well prior to registering the Trade Mark…[46]
[46] Murphy 2, paragraph 17.
I do not accept Mr Muprhy’s interpretation of the Alibaba emails as containing specific product information relating to watches. Having described their content earlier, I view these as standard marketing emails sent for the primary purpose of promoting discounts on potential product orders so as to entice the recipient into placing an order. While Mr Murphy states the products contained within are targeted to him, due to his prior research, this is not described within the Alibaba emails.
Further, it cannot be said that the mere receipt of the Alibaba emails evidence an intention to sell a product bearing the Trade Mark as claimed. At best, the Alibaba emails provide a thin inference of an intention to buy a product. Though whether this relates to the Trade Mark rests primarily upon the Removal Opponent’s assertion that it does. As it stands, I do not find the Alibaba emails support an intention to use the Trade Mark on or in relation to the registered goods.
Further inconsistency is apparent in the Removal Opponent’s evidence. I note as part of the RSA Law letter, sent in July 2015 and just after lodging the application for the Trade Mark, the Removal Opponent provides:
I have wristbands bearing the SWOL mark. I have a history of email correspondence with manufacturers to make my products bearing the SWOLE mark. I have clothing lines yet to be manufactured… bearing both SWOL and SWOLE marks. [My emphasis]
The Removal Opponent has not tendered any such email correspondence into evidence. The email correspondence I have been provided relates either to the procurement of the SWOL wristbands, or in the case of the Alibaba emails, does not feature the Trade Mark at all. In fact, I am provided no evidence which demonstrates the Removal Opponent has taken any steps to correspond with or manufacture any goods falling within the registered goods and bearing the Trade Mark.
In Optical 88 Limited v Optical 88 Pty Limited (‘Optical 88’), the Full Federal Court upheld the primary judge’s decision to remove the trade mark, referred to as the ‘966 mark, as the Appellant’s intention was merely one of “speculative possibility” and “had risen no higher than a general intention to expand at some future but unascertained time.”[47] Their Honours concluded:
Contrary to the appellant’s submissions, the primary judge’s reasons do not disclose any error of principle or fact. It may be accepted that the making of the application is itself prima facie evidence of an intention to use the mark (Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 (Aston v Harlee) at 401). Nor is it necessary that the applicant’s intention be to use the mark “immediately or within any limited time” (Aston v Harlee at 401). Nothing in Aston v Harlee suggests, however, that “general intention” to use the mark “at some future but unascertained time” might suffice. [The] evidence was inconsistent with the existence of any intention to use the ‘966 mark in Australia at the time of the application for registration. For this reason, the primary judge’s finding that the ‘966 mark should be removed from the Register in relation to services pursuant to ss 92(4)(a) and 101(2) must stand.[48]
[47] [2011] FCAFC 130. [87]
[48]Ibid., [87-88].
Parallel to their Honours’ reasoning, I am of the opinion the Removal Opponent’s assertions reflects only a speculative possibility or general intention for using the Trade Mark at some future but unascertained point in time. I do not consider this sufficient to rebut the allegation when viewed in light of the limited evidence available. This is particularly so in such cases where what has been provided either lacks probity or is inconsistent with the existence of an intention to use the Trade Mark as of the filing date.
Discretion under s 101(3)
The Removal Opponent has not requested an exercise of the Registrar’s discretion available under s 101(3) of the Act. In any event, I am disinclined to exercise the discretion as the Removal Opponent has not shown use of the Trade Mark in respect of similar goods.[49]
[49] Section 101(4)(a) of the Act.
Decision
Accordingly, the ground for removal under s 92(4)(a) of the Act has been established and I direct that trade mark registration 1702160 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before the end of that period, the registrations will be subject to the court’s decision.
Costs
An award of costs normally follows the event. The Removal Applicant has sought costs and has been successful. I award costs against the Removal Opponent under s 221 of the Act in the allowable amounts set out in Schedule 8 of the Regulations.
Aaron Walters
Hearing Officer
Oppositions and Hearings
16 August 2018
Key Legal Topics
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Commercial Law
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Intellectual Property
Legal Concepts
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Injunction
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