Team Brands Pty Ltd v Rotenburg Pty Ltd as Trustee for the DMG Trust and Modrej Pty Ltd as Trustee for the ATTT Trust and Provolone Pty Ltd as Trustee for the DJWC Trust

[2022] ATMO 216

TRADE MARKS ACT 1995

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

Re:Opposition by Team Brands Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Rotenburg Pty Ltd as trustee for the DMG Trust and Modrej Pty Ltd as trustee for the ATTT Trust and Provolone Pty Ltd as trustee for the DJWC Trust for partial removal of trade mark number 858390 (9, 14, 16, 18) – BOLT (Figurative) – in the name of Team Brands Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: IP Partnership

Applicant: Clifford Gouldson Lawyers

Decision:

2022 ATMO 216

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for partial removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period for the goods sought to be removed or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the goods for which it is registered

Background

1. This decision is pursuant to an application made on 7 June 2021 under s 92(4) (b) of the Trade Marks Act 1995 (‘Act’) by Rotenburg Pty Ltd as trustee for the DMG Trust and Modrej Pty Ltd as trustee for the ATTT Trust and Provolone Pty Ltd as trustee for the DJWC Trust (collectively ‘Applicant’) for partial removal of the trade mark detailed below from the Register of Trade Marks. 

Registration No.

858390

Lodgement date

24 November 2000

Goods

Class 9: Optical products including sunglasses and spectacles, cases, frames, cords, chains and parts and accessories for the foregoing; optical glass, optical lenses

Class 14: Horological and chronometric instruments including clocks and watches; jewellery, precious stones

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs and photo albums; stationery

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas

(‘Registered Goods’)

Owner

Team Brands Pty Ltd

Trade Mark

(‘Trade Mark’)

1. The goods sought to be removed from the above specification are all the class 16 goods for which the Trade Mark is registered, namely the goods listed below (‘Removed Goods’)

   Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs and photo albums; stationery

2. Team Brands Pty Ltd (‘Opponent’) has opposed the removal application, filing a Notice of Intention to Oppose removal on 9 July 2021 and a Statement of Grounds and Particulars (‘SGP’) on 5 August 2021.  The Applicant filed a Notice of Intention to Defend on 5 October 2021.

3. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result, the matter has been allocated to a delegate of the Registrar for a decision based on the written record. This record consists of the Notice of Intention to Oppose Removal, SGP and the following evidence:

   Evidence in Support

   • Declaration by Stephen Clive Briggs, Director and Secretary of the Opponent, dated 23 December 2021 (‘Briggs 1’) together with Annexures A-F.

   Evidence in Answer

   • Declaration by Benjamin James Gouldson, Director of the Applicant, dated 6 April 2022 (‘Gouldson declaration’) together with Annexure A and Exhibits BJG-1 and BJG-2.

   Evidence in Reply

   • Declaration by Stephen Clive Briggs, dated 26 May 2022 (‘Briggs 2’).

   The Relevant Provisions

5. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly 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)  …

   (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.

6. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 7 May 2021 (‘relevant period’).

7. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

8. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   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) …

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during 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 during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

9. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

10. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

11. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4]

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    Discussion

12. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[5]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period) in respect of the Removed Goods. Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[6] 

    [5] s 100(3)(a) of the Act and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [6] Act s 7(3).

13. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

14. The Opponent’s evidence in this matter consists of two declarations by its Director, Stephen Clive Briggs.  Mr Briggs gives evidence that the Opponent owns numerous trade marks in Australia featuring the ‘bolt’ element that comprises the Trade Mark.   He then states, in Briggs 1, that the Trade Mark was used, in the relevant period, on catalogues, printed materials used to place orders, cardboard notepads, and advertising material.  In addition, the Opponent has licensed the Trade Mark to another entity, Teamwork Australia Pty Ltd to allow it to use the Trade Mark for the Removed Goods.  

15. Before discussing the annexures it is important to note a couple of relevant matters.  The Opponent provides no documentary evidence of the licence between it and Teamwork Australia Pty Ltd, nor does it provide any evidence that Teamwork Australia Pty Ltd has applied the Trade Mark to any of the Removed Goods during the relevant period.  Secondly, 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.  The fact that an entity may display its trade mark on receipts, order forms, and other packaging materials does not mean it using the trade mark in respect of printed material in class 16, unless the goods that it is offering to the public are those receipts, order forms or packaging material (i.e. that is its business line).

16. I have carefully reviewed the annexures to Briggs 1, which include various catalogues and order forms featuring clothing offered by reference to marks incorporating the Trade Mark.  Noting the point made in paragraph 16 above, neither the catalogue, nor the order forms (Annexures A, B, D and E to Briggs 1) provide any evidence of the Trade Mark being applied to the Removed Goods during the relevant period.  Rather, taken at its highest (and noting that there are other evidentiary concerns raised by the Applicant about this material) this material may indicate that the Opponent offered clothing (which is not a Removed Good) under the Trade Mark in the relevant period.  

17. Annexure C consists of a photo of a notepad and Annexure F consists of a photo of a set of stickers.  Both of these display a mark (‘Lightning Bolt Mark’) consisting of the word ‘Lightning’, the Trade Mark (featured prominently), and the tag-line ‘a pure source’, so the trade mark reads ‘LIGHTNING BOLT A PURE SOURCE’.

18. The test to be applied here is whether there is substantial identity between the Trade Mark and the Lightning Bolt Mark[7] with the test for substantial identity being set out below:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

    [7] Link Recruitment Pty Ltd v Link Employment And Training Inc (2006) 69 IPR 614, 619 [21]-[22].

    [8] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

19. To assist the side-by-side comparison I have reproduced the Trade Mark and the Lightning Bolt Mark below:

20. In the present case while the Trade Mark is indeed the most significant element of the Lightning Bolt Mark, being significantly larger than the other elements, it is impossible to simply dismiss the ‘lightning’ and ‘a pure source’ element of the Lightning Bolt Mark and their presence results in a mark that is simply not substantially identical with the Trade Mark.  Use of the Lightning Bolt Mark is not use of the Trade Mark with additions or alterations not substantially affecting its identity.  

21. I am unsatisfied that the EIS or the EIR shows evidence of use of the Trade Mark for the Removed Goods in the relevant period.  Given my conclusion above it is not necessary to summarise the EIA in any great detail other than noting that it mostly consists of criticisms, some of which are noted above, of Briggs 1.

    Obstacles to use

    23. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Removed Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Removed Goods.

    Registrar’s Discretion

    24.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Removed Goods.[9] The burden of persuasion falls in this regard falls on the Opponent.[10]

    [9] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

    [10] Ibid.

    25.     The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Removed Goods.

    Decision

    26.     The Opponent has not established its opposition to partial removal. Accordingly, I direct that registration 858390 be amended one month from the date of this decision as set out below to remove the Removed Goods.  It will remain registered for the goods listed below. 

    Class 9: Optical products including sunglasses and spectacles, cases, frames, cords, chains and parts and accessories for the foregoing; optical glass, optical lenses

    Class 14: Horological and chronometric instruments including clocks and watches; jewellery, precious stones

    Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas

    27.     If the Registrar is served with a notice of appeal 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

    28.     The Applicant has been successful in relation to the application for partial removal of the Trade Mark and has requested its costs.  I accordingly award costs against the Opponent under s221 in the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    13 December 2022