The Coca-Cola Company v Garth Stanley

[2023] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by The Coca-Cola Company to application under section 92 of the Trade Marks Act 1995 (Cth) by Mr Garth Stanley to remove trade mark number 1513392 - LEMON CARTOON (Device) (30, 32) - in the name of The Coca-Cola Company

Delegate:

Louise Tuohy

Representation:

Opponent: Phillips Ormonde Fitzpatrick

Applicant: Garth Stanley

Decision:

2023 ATMO 3

Trade Marks Act 1995 (Cth) – application under section 92 – s 92(4)(b) application for partial removal – Removal Opponent’s evidence shows no use of the Trade mark during the relevant period for class 32 goods – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register with respect to class 32 goods

Background

1. The Coca-Cola Company (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:  1513392

   Trade Mark:    (‘Trade Mark’)

   Filing Date:  10 September 2012

   Convention Priroity Date:  4 April 2012 (United States of America Convention Number: 85/589229)

Specification:   Class 30: Ready to drink tea, iced tea and tea based beverages; ready to drink flavored tea, iced tea and tea based beverages

Class 32: Non-alcoholic beverages, including, non-carbonated fruit juice beverages; non-alcoholic fruit beverages; lemonade; fruit flavored lemonade

1. On 6 April 2021 Garth Stanley (‘Removal Applicant’) filed an application seeking partial removal of the Trade Mark from the Register for non-use. The goods for which the Removal Applicant seeks removal are all goods in Class 32.

2. On 8 June 2021 the Removal Opponent filed its Notice of Intention to Oppose the partial removal of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 25 June 2021. On 17 September 2021 the Removal Applicant filed its Notice of Intention to Defend the partial removal application.

3. The Removal Opponent subsequently filed the following declarations as evidence in support:

   • Declaration by Yoo-Sun Park, Senior Counsel at the Removal Opponent made on 22 December 2021 with Annexures YSP-1 to YSP-19 (‘Park’).

• Declaration of Rodney Ian Lindsay Cruise, Principal of Phillips Ormonde Fitzpatrick made on 20 December 2021 (‘Cruise’).

• Declaration of Magda Khalil Bramante, Senior Associate of Phillips Ormonde Fitzpatrick made on 22 December 2021 with Annexures MKB-1 to MKB-7 (‘Bramante’).

1. The Removal Applicant filed the following declaration as evidence in answer:

   • Declaration by Garth Stanley, made on 15 June 2022.

2. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. The Removal Applicant requested a decision without hearing. The matter came before me, a delegate of the Registrar of Trade Marks. I make my decision based on the particulars in the SGP and the evidence.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with partial removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated s 92(4)(b) of the Act as the ground for removal.

3. Section 92(4)(b) of the Act provides:

   (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.

4. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

5. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 6 March 2021 (‘Relevant Period’).

6. 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 as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

7. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. [2] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J 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’.[5]

   [2] [2001] FCA 261, [16].

   [3] Ibid [17].

   [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [5] (1962) RPC 1, 7.

8. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

   [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

9. In accordance with s 101 of the Act, if the ground for partial removal is established, I may decide to partially remove the Trade Mark from the Register in respect of any or all of the goods identified in the application, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Mark from the Register.

Use of the Trade Mark during the Relevant Period

1. In Park, Ms Park declares that the Trade Mark is displayed on all Hubert’s Lemonade branded products. I have reproduced examples of how the Trade Mark appears on Hubert’s Lemonade branded products below:

2. Ms Park declares Monster Energy Company (‘Monster’) first sold Hubert’s Lemonade in around August 2010. In June 2015, the Coca-Cola Company acquired ownership of the juices and non-energy beverage business of Monster. The acquisition from Monster comprised an assignment of all the intellectual property rights in Hubert’s beverages which includes Hubert’s Lemonade. The acquisition was affected by an Assignment and Assumption Agreement dated 12 June 2015 and an Asset Transfer Agreement dated 14 August 2014. Confidential Annexure YSP-2 to Park comprises extracts of those Agreements.  

3. Confidential Annexure YSP-5 to Park is a table which details the number of cases of Hubert’s Lemonade sold in the United States of America (‘USA’) and Canada between 2016 and 2021.

4. Confidential Annexure YSP-7 to Park is a document setting out the marketing expenses for Hubert’s Lemonade over 2019. Confidential Annexure YSP-12 to Park is a document setting out the marketing expenses in 2018 for Branded Influencer Content. However, it is not clear what percentage of these expenses relate to Australia.  

5. Annexures YSOP-9 to YSP-16 to Park comprise details of promotional campaigns undertaken by the Removal Opponent featuring the Trade Mark. The Annexures include details of the Removal Opponent’s exhibitions in the USA and advertising activities on social media and via its website ‘hubertslemonade.com’.

6. Annexure YSP-6 to Park is an undated screenshot of the Deliveroo website for the CrystalMart Warterloo store (‘CMW’) which is a convenience store located in Waterloo, New South Wales. The screenshot shows CMW’s offer for sale of Hubert’s Lemonade in Australia. I have reproduced the offer below:

1. In Cruise, Mr Cruise declares that on 9 June 2021 he conducted searches online and located Hubert’s Lemonade being offered for sale on Deliveroo by CMW. I have reproduced a copy of the offer below:

1. In Bramante, Ms Bramante states that Mr Gregory Chambers a consultant, conducted investigations into the offer for sale of Hubert’s Lemonade by CMW. Mr Chambers telephoned CMW on 10 November 2021 and spoke to a person named Daniel who stated that CMW has previously imported and sold Hurbert’s Lemonade. Daniel then provided Mr Chambers with the details of CMW’s distributor Remas Distributions Pty Ltd (‘Remas’). Mr Chambers telephoned Remas and spoke to Mr Hanza Ahsam on 2 December 2021 who stated that Remas had imported and sold Hubert’s Lemonade. However, neither Daniel or Mr Ahsam were able to provide any invoices confirming the importation or sale of Hubert’s Lemonade products.  

2. In my assessment of the evidence, I find that the Trade Mark was not used in Australia in relation to the registered goods in Class 32 during the Relevant Period. The evidence provided shows that the Trade Mark (or a composite trade mark containing the lemon device) has been promoted in the USA however there is no evidence that the Removal Opponent’s promotional activities or advertising campaigns were specifically directed or targeted at Australian consumers.

3. The evidence before me includes two offers for sale of Hubert’s Lemonade, on the Deliveroo website by CMW in Australia. However, the evidence of Ms Park is undated and the evidence of Mr Cruise is from a search conducted after the Relevant Period. In addition, there is no evidence of the importation or sales of Hurbert’s Lemonade bearing the Trade Mark during the Relevant Period in Australia proven by reference to invoices or other advices.

4. Further the Removal Opponent does not claim nor does the evidence raise matters which could be regarded as obstacles to use of the Trade Mark in relation to the goods in Class 32 in the Relevant Period, pursuant to s 100(3)(c) of the Act.

5. The ground for partial removal under s 92(4)(b) of the Act has been established in respect of all the registered goods in Class 32.

Registrar’s discretion

1. Section 101(3) of the Act provides:

   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.

2. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[7]

   [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

3. In this matter, the question is whether it is reasonable not to partially remove the Trade Mark in respect to all or some of the registered goods in class 32, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[8]

   [8] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

4. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd,[9] Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark[10] were of assistance in considering the exercise of the discretion:

   [9] [2008] FCA 934, [209].

   [10] [1982] RPC 425.

• there had been no abandonment of the trade mark;

• the registered proprietors of the trade mark still had a residual reputation in the mark;

• there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

• the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and

• the registered proprietors were not aware of the applicant’s sale under the mark.

1. The public interest and the interests of the parties are inherent in the above factors. In this regard Austin, Nichols & Co Inc v Lodestar Anstalt provided the following guidance:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[11]

   [11] [2012] FCAFC 8, [38].

2. While the Removal Opponent has not addressed these factors in full, in Park, Ms Park declares that the Removal Opponent plans to sell its Hubert’s Lemonade product bearing the Trade Mark directly to Australia in the future. As such I am satisfied that the Removal Opponent has not abandoned the Trade Mark.

3. Ms Park also declares that the Removal Applicant sought removal of the Trade Mark in order to advance its own trade mark application 2224609 which includes lemonade goods in Class 32. As such the Removal Opponent is concerned about the risk of damage to its reputation as a result of confusion.

4. The Removal Opponent acquired the Australian rights in the Trade Mark from 14 October 2016, and the Trade Mark has been registered from 10 September 2012. However, there is scant evidence before me that demonstrates that the Removal Opponent has a reputation in the Trade Mark in relation to the registered goods in Class 32 in Australia. 

5. Under the circumstances, where there is no detailed information of the nature and extent of the use, or intended use of the Trade Mark, I am not satisfied that the Removal Opponent’s ongoing interest in the Trade Mark for the registered goods in Class 32 is sufficient to justify the exercise of the discretion. Accordingly I decline to exercise the discretion to retain the Trade Mark on the Register for the registered goods in Class 32.

Decision

1. I direct that trade mark registration 1513392 be removed in respect of all the registered goods in Class 32 one month from the date of this decision. The Trade Mark shall remain registered for the Class 30 goods.

2. In the event of an appeal, I direct that the removal of the registered goods in Class 32 shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court see fit.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

12 January 2023