Tessa Turok v Deluxe Holding AG

[2012] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Tessa Turok to application under section 92 of the Act by Deluxe Holding AG to remove trade mark number 940661 (25) - International - Gold Medal POINTER Perfection in Leather (and Device) - in the name of Tessa Turok

Delegate:

Heath Wilson

Representation:

Opponent: Written submissions from Davies Collison Cave, Patent and Trade Mark Attorneys.

Applicant: James Maxwell of Peter Maxwell & Associates, Patent and Trade Mark Attorneys.

Decision:

106 ATMO 2012

Application under section 92(4)(b) of the Trade Marks Act 1995 – allegation of non-use rebutted for some goods – trade mark removed for remaining goods – no award of costs.

Background

1. This matter concerns an application filed on 11 July 2008 under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the following trade mark registration from the Register of Trade Marks:

Trade Mark Registration No: 940661

Trade Mark:

(‘the Trade Mark’)

Specification of Goods: Class 25: Clothing, footwear and headgear including leather garments included in this class

Owner: Tessa Turok

2.     The application for removal was filed by Deluxe Holding AG (‘the Applicant’) for all the goods of the Trade Mark. The removal application was subsequently opposed by Tessa Turok (‘the Opponent’) on 23 October 2008.

3.     On 19 January 2009 the separate statutory declarations of the Opponent and Claude Sedacca (Director of the Australian company Leather & Suede Pty Ltd and member of the South African company, Gauteng Leather Manufacturers CC) were made.  Those declarations form the entirety of the Opponent’s evidence in support.

4.     The evidence in answer from the Applicant consists firstly of the statutory declaration of James Maxwell (Legal representative of the Applicant) made 9 October 2009 with exhibit JVM-1 and secondly the statutory declaration of Walter Faeh (Company Director of the Applicant) made 22 March 2010 with exhibits WF-1 to WF-11. No evidence in reply or further evidence was filed by the parties.

5.     I heard the opposition to the removal action in Sydney on 17 October 2012 as a delegate of the Registrar of Trade Marks. James Maxwell of Peter Maxwell & Associates, Patent and Trade Mark Attorneys appeared in person on the Applicant’s behalf. The Opponent’s trade mark attorneys Davies Collison Cave relied on written submissions in lieu of appearing at the hearing.

The Law

6. Subsections 92(4)(b) and 100(1)(c) of the Act relevantly provide:

Section 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.

Section 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:

…

(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before 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.

7. Section 100 of the Act provides that the Opponent bears the onus of rebutting the allegation of non use made by the Applicant. Under subsection 92(4)(b), the period in which use of the trade mark must be established is three years ending one month before the day on which the non-use application was filed. In the current matter, the non-use application was filed on 11 July 2008, and the relevant period is three years immediately prior to 11 June 2008 (‘the relevant period’). The Opponent must establish use of the Trade Mark in relation to the registered goods in Australia within the relevant period.

Discussion

8.     After assessing the entirety of the evidentiary material, it is clear to me that the Opponent’s evidence of Trade Mark use is not substantial. However, as the High Court of Australia commented in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[1]:

Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards.

…

On the facts here, it is not necessary to decide whether a single use of the registered trade mark in good faith would have been sufficient to resist removal

[1] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15: at [64].

9.     The Opponent declares that in August 2006 an oral agreement was concluded between herself, the South African company Gauteng Leather Manufacturers CC (‘Gauteng’) and the Australian company Leather & Suede Pty Ltd.[2] The Opponent states:

[I]n terms of the agreement, Gauteng Leather Manufacturers CC would procure the manufacture of a range of leather jackets on my behalf bearing my trade mark POINTER INTERNATIONAL GOLD MEDAL PERFECTION IN LEATHER & device which would then be sold by his company Leather & Suede Pty Ltd through its “Persuede” retail outlet in Victoria, Australia.

[2] Statutory declaration of Tessa Turok, paragraph 6.

10.   The declaration of Claude Sedacca confirms this oral agreement between the parties and then exhibits three tax invoices that fall within the relevant period. The invoices are issued by Gauteng to Leather & Suede Pty Ltd based in Victoria. The sale of goods in the three invoices total 45 black or burgundy leather jackets, described therein as “Zip Front Bunny Jkt Pointercow Nappa” and “Shirt Style Jkt Pointercow Nappa”.

11.   The invoices do not feature the registered Trade Mark, but Mr Sedacca does make the sworn declaration that the invoices confirm the sale of jackets “bearing the trade mark POINTER INTERNATIONAL GOLD MEDAL PERFECTION IN LEATHER & Device owned by Tessa Turok, the proprietor of Australian trade mark registration No. 940661, to my company Leather & Suede Pty Ltd in Victoria, Australia”[3]

[3] Statutory declaration of Claude Sedacca, paragraph 6.1.

12.   The remaining exhibits from the Opponent comprise undated photographs of the Opponent’s leather jackets (declared to be the same style as those mentioned in the invoice) with labels and swing tags bearing the Trade Mark or (with one exception being the word ‘POINTER’ solus) the Trade Mark with additions or alterations not substantially affecting its identity[4]. The question before me is whether the invoices and photographs are sufficient evidence of Trade Mark use in the period to rebut the allegation of non-use.

[4] See subsection 100(3)(a) of the Act.

Authorised Use

13. The Opponent declares that Gauteng was authorised to use the Trade Mark on her behalf and it follows from the evidence that Leather & Suede Pty Ltd as the Australian distributor was similarly authorised. For the purposes of establishing trade mark use by the owner, use conducted by an authorised user (in this case, Gauteng) should be under the control of the owner of the trade mark (Tessa Turok). Section 8 of the Act provides the examples of financial or quality control over the goods but the expression ‘under the control of’ in that section is not limited to those forms of control. However, the Opponent does not supply proof or declare that the provision of goods in relation to which the Trade Mark was used was controlled by her.

14.   This deficiency in the evidence reduces the probative value that may be placed on the invoices and if I were considering a single instance of trade mark use only, this deficiency may have been fatal. This is not the case here and I do not think that the invoices can be disregarded simply on a possible inference that may be drawn from the lack of explanation given by the Opponent. I also note that the two companies (Gauteng and Leather & Suede Pty Ltd) are related (with Mr Sedacca being the link between the two) but there is no suggestion that the invoices relating to the sale of products are not bona fide.  

Use in the Course of Trade

15.   The further issue is whether the sale of goods from the South African company to the Australian company is use of the Trade Mark in the course of trade. The High Court of Australia in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd[5] found:

[W]hen an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. Indeed, in this case, the respondent is the only person who has the right to use the mark, and the retailer to whom goods have been sold for resale does not, in any relevant sense, use it.

[5] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254 (at 271).

16.   To establish use in the course of trade, the sale of goods does not have to be to the customer who proposes to use or deal with the goods for which they are designed.[6] I am satisfied that the sale of leather jackets to the Australian distributor Leather & Suede Pty Limited is use in the course of trade and in the relevant period.  

[6] See relevantly, Thunderbird Products Corporation [1974] HCA 51; (1974) 131 CLR 592 at [16]; Blackadder v Good Roads Machinery Company Incorporated [1926] HCA 57; (1926) 38 CLR 332.

17. Drummond J discussed the application of section 92(1) of the Act in McHattan v Australian Specialised Vehicle Systems Pty Ltd[7]: 

…if that provision is construed to permit fine distinctions to be drawn between two items, eg between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz that between armoured military vehicles of greater than 8 tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s 92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods.

[7] McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 (at 544).

18.   In the current circumstances, to permit fine distinctions to be drawn between leather jackets and other leather garments encompassed in the Opponent’s specification of goods would unduly erode the value of the trade mark registration, as such products would amount to the ‘same kind of thing’ as leather jackets. I will now consider whether it is appropriate to apply the Registrar’s discretion for the other goods in relation to which use has clearly not been established.     

The Discretion of the Registrar

19. In relation to the discretion allowed under section 101(3) of the Act, the Opponent bears the onus of convincing the Registrar that it is reasonable to allow the Trade Mark to remain on the Register despite a successful removal action. As Kitto J stated in Re Carl Zeiss Pty Ltd’s Application[8]:

It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. (Emphasis added).

[8] Re Carl Zeiss Pty Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1 per Kitto J (at 11).

20.   The evidence establishes that while the Victorian store of the Distributor closed at the end of September 2008, the Opponent declares:[9]

I wish to confirm that I have an ongoing, definite and bona fide intention to continue with the sale of articles of clothing in Australia in the future under my registered trade mark POINTER INTERNATIONAL GOLD MEDAL PERFECTION IN LEATHER & Device.

… I am actively involved in negotiations with other third parties in connection with the manufacture and sale of articles of clothing under my registered trade mark…

[9] Statutory declaration of Tessa Turok, paragraphs 10-11.

21.   The Opponent has not provided any further information regarding the negotiations with third parties apart from the assertion made above. I have no information regarding whether the stated intention will be on goods other than leather garments, and if so, what those items of clothing might be. However, the fact that the Trade Mark contains the words “Perfection in Leather” makes it unlikely that it would be applied to items of clothing made from material other than leather. In a general sense, it may be commonplace for a single brand to be used in relation to clothing and footwear as well as headgear but in the current matter it is beyond doubt that the Opponent has only ever used the Trade Mark on leather jackets. The Opponent appears to have, at best, an unresolved intention to use the Trade Mark in relation to clothing in general at some point in the future. 

22.   With reference to the non-exhaustive circumstances taken into account in Hermes Trade Mark[10], I can find no evidence of residual reputation in the Trade Mark and there have been no sales of the Opponent’s goods since the relevant period ended. Once again, the use of the Trade Mark in Australia is minimal and this is reinforced by the investigative report into the use of the Trade Mark exhibited to the statutory declaration of James Maxwell.

[10] Hermes Trade Mark [1982] RPC 425 (Considered in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 (at 202)).

23.   From the Applicant’s perspective, the declaration of Walter Faeh is relevant to the exercise of the discretion. In that declaration the Applicant demonstrates use of various trade marks incorporating the word ‘POINTER’ which have been used in relation to footwear in Australia. While there is a lack of evidence of confusion between the Applicant’s and the Opponent’s trade marks, that can be explained by the minimal use of the Trade Mark in the Australian marketplace.  

24. As the attorneys for the Opponent argue, it is true that leather garments may be similar goods to other items of clothing within the specification of the Trade Mark and the Registrar may take this into account when exercising the discretion under the Act.[11] However, the Registrar must be satisfied that it is reasonable to exercise the discretion under section 101(3) of the Act and trade mark use in relation to similar goods is only one consideration that may be taken into account.

[11] Subsection 101(4)(a) of the Act.

25.   Given the above circumstances, I am not satisfied that the Trade Mark can be described as an established trade mark[12] and the consequences of removing it from a public interest point of view are minor. Neither is there any public interest in maintaining a trade mark’s presence on the Register in relation to goods for which use has not been demonstrated. I find that the Opponent has not discharged the onus of satisfying me that it is reasonable to apply the discretion under section 101(3) of the Act.

[12] See Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323 (at 345).

Decision

26. Section 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)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.

27.   The Opponent has rebutted the allegation of non-use in the relevant period in relation to some of the goods in the registration. I therefore allow the Trade Mark to remain on the Register for the class 25 goods of Leather garments. I direct that the trade mark be removed from the Register after one month from the date of this decision in relation to all the goods specified apart from Leather garments.

Costs

28.   Both Opponent and Applicant have enjoyed a measure of success in this matter. I decline to make an award and find that each party should bear their own costs of the proceedings.

Heath Wilson

Hearing Officer

Trade Marks Hearings

9 November 2012