The Grape Organisation Pty Ltd v A.C.N 123732516 Pty Limited (ACN 123732516)
[2024] ATMO 215
•5 November 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Grape Organisation Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by A.C.N 123732516 Pty Limited (ACN 123732516) for removal of trade mark numbers 1938040 (9) – Fraternity, 1960308 (9) – Headband (Musical Band), 1984553 (9) – The Valentines, and 1961113 (9, 16, 25, 41) – Fraternity all in the name of The Grape Organisation Pty Ltd
Delegate:
Nicholas Smith
Representation:
Opponent: Self-represented with submissions by Victor Marshall
Applicant: Rahul Shah of Sharon Givoni Consulting
Decision:
2024 ATMO 215
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) application for removal – intent to use inherent in filing of Trade Mark applications – opponent asserts its intention at the filing date to use the Trade Marks – evidence of actual use of the Trade Marks for the Registered Goods – Trade Marks to remain on Register in its current form
Background
This decision is pursuant to applications made on 30 November 2022[1] under s 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) by A.C.N 123732516 Pty Limited (ACN 123732516) (‘Applicant’) to remove the trade marks detailed below (collectively ‘Trade Marks’) from the Register of Trade Marks. The applications are made in respect of all the goods for which the trade marks are registered, that is, the applications are for complete removal of the Trade Marks.
[1] This decision only concerns the applications made 30 November 2022, not the applications made 10 October 2023 by a related company of the Applicant with the same legal representation.
Registration No.
1938040
Lodgement date
2 July 2018
Goods
Class 9: Music recordings; Pre-recorded compact discs (disks)(CDs)
Owner
The Grape Organisation Pty Ltd
Trade Mark
Fraternity
(‘1938040 Mark’)
Registration No.
1960308
Lodgement date
7 October 2018
Goods
Class 9: Digital music (downloadable) from the Internet; Digital music (downloadable) provided from MP3 web sites on the internet; Downloadable music files; Music cassettes; Music recordings; Music tapes; Musical cassettes; Musical recordings in the form of discs; Musical recordings in the form of tapes; Musical recordings in the form of wires; Pre-recorded music videos; Tape recordings of music; Films for sound recordings; Films prepared for exhibitions; Motion picture films (recorded); Motion picture films for television use; Motion picture films for theatrical use; Photographic media (films, exposed); Pre-recorded films; Pre-recorded video films; Printed motion picture film; Recorded film; Recorded films; Video films; Video films prepared for exhibitions; Pre-recorded DVDs; Vinyl pressed records; Vinyl records; Pre-recorded compact discs (disks)(CDs); Record albums (discs); Digitally stored images; Discs for bearing video images; Downloadable image files
Owner
The Grape Organisation Pty Ltd
Trade Mark
Headband (Musical Band)
(‘1960308 Mark’)
Registration No.
1961113
Lodgement date
11 October 2018
Goods
Class 9: Pre-recorded compact discs (disks)(CDs); Digital music (downloadable) from the Internet; Digital music (downloadable) provided from MP3 web sites on the internet; Downloadable music files; Music cassettes; Music recordings; Music tapes; Musical recordings in the form of discs; Musical recordings in the form of tapes; Musical recordings in the form of wires; Pre-recorded music videos; Tape recordings of music; Pre-recorded DVDs; Films prepared for exhibitions; Motion picture films (recorded); Motion picture films for television use; Motion picture films for theatrical use; Photographic films for exhibitions; Photographic films prepared for exhibition; Photographic media (films, exposed); Pre-recorded cinematographic films; Pre-recorded films; Pre-recorded motion picture films; Pre-recorded video films; Recorded film; Vinyl records; Record albums (discs); Record discs bearing sound recordings; Recorded compact discs; Recordings on discs; Recordings on tapes; Records (sound recordings); Records bearing songs; Records in the form of discs; Sound recordings; Records bearing entertainment material
Class 16: Framed posters; Posters; Posters being publicity material; Posters made of paper; Souvenir posters; Books; Music books; Non-fiction books; Photo books
Class 25: Apparel (clothing, footwear, headgear); Printed t-shirts; T-shirts; Clothing
Class 41: Live entertainment; Musical entertainment services; Live band performances; Live music services; Presentation of live performances
Owner
The Grape Organisation Pty Ltd
Trade Mark
Fraternity
(‘1961113 Mark’)
Registration No.
1984553
Lodgement date
23 January 2019
Goods
Class 9: Pre-recorded audio records; Records (sound recordings); Records bearing entertainment material; Records bearing recorded sound; Records bearing sound recordings; Records in the form of cassettes; Records in the form of discs; Sound records; Vinyl records; Pre-recorded compact discs (disks)(CDs); Pre-recorded DVDs; Digital music (downloadable) from the Internet; Digital music (downloadable) provided from MP3 web sites on the internet; Downloadable music files; Music recordings; Pre-recorded audio discs; Pre-recorded audio tapes; Pre-recorded cassette tapes; Pre-recorded cassettes; Pre-recorded data carriers for use with computers; Pre-recorded discs; Pre-recorded films; Pre-recorded music videos
Owner
The Grape Organisation Pty Ltd
Trade Mark
The Valentines
(‘1984553 Mark’)
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Grape Organisation Pty Ltd (‘Opponent’) has opposed the applications to remove the Trade Marks, filing Notices of Intention to Oppose removal on 20 December 2022 and a Statement of Grounds and Particulars (‘SGP’) on 21 December 2022. The Applicant filed Notices of Intention to Defend on 14 February 2023.
The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support (‘EIS’)
Victor Marshall, Co-Director of the Opponent (‘Marshall 1’)
22 May 2023
Bruce Howe, Band Founder, Leader and bassist of Fraternity (‘Howe declaration’)
18 December 2022
Evidence in answer (‘EIA')
Damien Reilly, chief executive officer of the Applicant (‘Reilly declaration’)
23 August 2023
DR-1 to DR-14
Colin Laird Seeger, business advisor of the Applicant (‘Seeger declaration’)
24 August 2023
CS-1 to CS-7
Evidence in reply (‘EIR’)
Victor Marshall (‘Marshall 2’)
28 October 2023
On 13 November 2023 the Applicant requested a hearing by video-conference. The matter was set down for a hearing by video conference on 24 September 2024 and the matter was allocated to me. In line with usual practice, an email was sent to the parties on 4 July 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 10 September 2024 (‘Opponent’s Submissions’). The Applicant filed written submissions on 17 September 2024 (‘Applicant’s Submissions’). At the hearing Rahul Shah of Sharon Givoni Consulting represented the Applicant (with Sharon Givoni also present) and Victor Marshall appeared for the Opponent.
I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed earlier in this decision:
· The Applications for Removal;
· The Notices of Intention to Oppose and SGP;
· The Opponent’s Submissions
· The Applicant’s Submissions.
The Relevant Provisions
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 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) 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;…
The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 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) 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; or[…]
(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 during that period; or…
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.
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.
Opponent’s Evidence
The relevant claims/statements in Marshall 1 are summarised below:
· The Trade Marks refer to 3 Australian rock bands from the 1960s and 70s, namely Fraternity, The Valentines and Headband. The Opponent has agreements with numerous companies who are authorised by it to use the Trade Marks, photos, sound recordings, publishing copyrights and other IP in relation to the bands.
· The Opponent maintains official websites for the bands Fraternity, The Valentines and Headband as manager of each of these bands. The band Fraternity is particularly well known for its former member Bon Scott, later a member of AC/DC.
· The Fraternity website advertises the band, the music and offers memorabilia, CDs and streaming music for sale. The Opponent, acting on behalf of the band Fraternity, released a 3 CD box set for Fraternity in 2021. Fraternity has been the subject of significant media coverage in the last few years including a piece on ‘Australian Story’. The Opponent continues to sell promotional material including books, apparel, CDs and posters under the Fraternity mark. The Opponent has held a number of live events promoting the band Fraternity, including an event in Thebarton Theatre, Adelade on 18 March 2021, in which various Australian artists paid tribute to the band.
· The Valentines website advertises the band, the music and offers memorabilia, CDs and streaming music for sale. The Opponent, acting on behalf of the band The Valentines, continues to offer music for sale under the The Valentines trade mark, including CDs, DVDs, and recordings through streaming platforms.
· The Headband website advertises the band, the music and offers memorabilia, CDs and streaming music for sale. The Opponent, acting on behalf of the band Headband, continues to offer music for sale under the Headband trade mark, including CDs, DVDs, and recordings through streaming platforms.
· The Opponent has been recognised by the Bon Scott estate as owners and representatives of intellectual property connected to Fraternity.
Marshall 1 contains an extensive number of detailed screenshots supplying documentary evidence supporting the various statements made above.
The Howe Declaration is made by Bruce Howe, stated to be the founder, leader and bassist of the band Fraternity. This declaration states that the Opponent has been the manager of the band since its inception and uses the Fraternity marks. The declaration also states that the Bon Scott estate has also confirmed that the Applicant is not authorised to act for them and have been misleading the public.
The relevant claims/statements in Marshall 2 are summarised below:
· The Applicant no longer has any interest in the Trade Marks and has sold any rights it claims in the marks to a third party, which has brought a similar non-use action against the Opponent.
· The fact that each of these bands has not recently performed and/or released new music does not prevent the ongoing use or intention to use the Trade Marks for the various goods and services for which they are registered.
Applicant’s Evidence
The relevant claims/statements in the Reilly declaration are summarised below:
· Each of the bands referred to in the EIS is presently defunct and not releasing new music. The Opponent is only selling old music from each of their websites.
· The Opponent has a history of applying to register the name of defunct Australian bands as trademarks. The Opponent has done so for the purpose of preventing third parties from using these marks and are deceiving the Australian public into believing that the bands remain active in the Australian music industry.
The relevant claims/statements in the Seeger declaration are summarised below:
· In the case of defunct bands, it is usual for the estate to own the rights in any trademarks and the proper owner of the Trade Marks should be the band members and not the Opponent. The declarant expresses the view that the music industry would be severely affected if distributors of legitimate products could not describe the product using the trade marked artist’s name.
Discussion
Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[3] Fullagar J observed:
[…] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.
[3] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].
While this observation was made in proceedings under the Trade Marks Act 1955 (Cth), where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[4] the Registrar’s delegate Mr Forno said:
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.
[4] [2000] ATMO 31.
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)(a),[5] 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’.[6] Little weight is to be given to assertions of use which are not supported by documentary evidence.[7] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[8]
[5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[6] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[7] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).
[8] Act s 7(3).
Finally, the phrase ‘use in good faith’ has been taken by the courts to mean genuine commercial use as opposed to token use.[9] Furthermore, the issue of whether the Opponent is the proper owner of the Trade Mark does not bear on the ultimate question under s 92(4)(a) of the Act. In Edward v Liquid Engineering 2003 Pty Ltd, Gordon J stated (with emphasis added):
Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA). However, during the course of the hearings it became apparent that what LE 2003 really wanted, and should have applied for in the first place, was the expungement of the registrations by Edwards under s 88 of the TMA on the basis that Edwards was not the owner of the unregistered marks: ss 52 and 58 of the TMA. I therefore delayed giving judgment in VID 934 of 2006 so that a separate application could be brought on that basis and the matters resolved together.[10]
[9]See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 265 ALR 645, [60]-[65] (French CJ, Gummow, Crennan and Bell JJ).
[10] [2008] FCA 970 [8].
The Applicant seeks to persuade me otherwise by reference (in paragraph 22 of the Applicant’s Submissions) to the case of William M Edwards v Liquid Engineering 2003 Pty Ltd[11], being the specific case referred to, and in essence overturned, by the Federal Court decision referred to above. The Full Court in in Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd upheld Justice Gordon’s reasoning.[12]
[11] [2006] ATMO 70 (Hearing Officer Thompson).
[12] [2009] FCAFC 7; 175 FCR 26; (2009) 79 IPR 437 [54]-[57] (Tamberlin, Sundberg and Besanko JJ).
As addressed by Gordon J[13] above, an action under s 92 of the Act is not the appropriate place to determine the ownership of a registered trade mark. That question must be litigated in an action for cancellation brought under ss 58 and 88 of the Act.
[13] [2008] FCA 970 [8].
In the present case, I am provided with extensive evidence indicating that each of the Trade Marks has been used by the Opponent for the class 9 goods, being the recordings of the various bands that the Opponent manages. In addition, I have been provided with extensive evidence of use of the 1961113 Mark for the additional memorabilia and live events for which this mark is registered.
The Applicant in the Applicant’s Submissions makes a number of curious and often legally irrelevant submissions. Firstly, it makes numerous submissions that the Opponent is not the owner of the Trade Marks and hence cannot use the mark in good faith. The Applicant variously submits that the proper owner of the Trade Marks are the bands themselves, and that there is something improper about the bands’ manager owning the marks. The Applicant submits that as the name of the Opponent appears on the various websites, it cannot be using the Trade Marks as trade marks as only one trade mark can be used at a time. Furthermore, the Applicant in its submissions makes much of the statement made by the Opponent that it has entered into agreements with third parties where it authorizes them to use the Trade Marks, and states that this illustrates that the Opponent is not the owner of the mark. Similar statements are made in the Seeger declaration.
These statements do not appear to be supported by any binding case law and in any event as noted in paragraphs 20-22 above questions of ownership are separate to the present opposition; this is not a forum to question whether the Opponent is the proper owner of the Trade Marks, only whether the Opponent has satisfied the burden placed upon it under s 100 to show use or intention to use in good faith (being for commercial purposes and not merely to maintain the registration).
I am satisfied that the evidence does exactly that. I note that the EIA does not suggest that the documentary evidence of use supplied in the EIS was false in any way, rather much of the EIS simply consists of allegations regarding the conduct of the Opponent that have no relevance to the question of intention to use under s 94(2)(a).
I do not accept the Applicant’s argument that use for class 9 depends on the bands being active and continuing to record (a vast number of trade marks, from the Beatles to Nirvana, remain active and registered notwithstanding that the bands are defunct); what is relevant is if the Trade Marks are used or intended to be used as a trade mark in respect of the goods for which it is registered. The Applicant appears to submit that the Opponent registering a domain name corresponding to the mark and streaming music for sale under that mark is somehow not use of a trade mark by the Opponent for streaming music; this submission is not accepted.
I do not accept the Applicant’s somewhat curious arguments that the title of a book or album cannot be registered as a trade mark and that a t-shirt displaying a band name is not use as a trade mark; the Opponent has effectively drawn my attention to cases rebutting each of these propositions and, as noted above, what is relevant is if the Trade Marks are used or intended to be as a trade mark in respect of the goods for which each mark is registered. Finally, I do not accept the scurrilous and unsupported allegations in the EIA that ‘the Opponent has a history of applying to register the name of defunct Australian bands as trademarks’. Rather the Opponent is the long-time manager of each of the bands and uses and has provided extensive evidence of its use of the Trade Marks for the relevant goods and services. I do not accept the Applicant’s Submissions that such use was token; i.e. conducted for the purposes of maintaining the mark; such submissions are simply not supported by the EIS.
While the evidence does not support a claim that the Trade Marks were used for all of the goods and services registered (for example there is insufficient evidence that the Trade Marks were used for ‘Musical recordings in the form of tapes’); I am satisfied from the EIS that at the time these marks were registered the Opponent had the intention to use these marks in connection for the respective goods and services for which they were eventually registered and as such the limited onus placed on the Opponent under s 100 is satisfied.
Finally and for completeness, I note that while much of the evidence of use and intention to use surrounding the band Headband consisted of use of ‘Headband’ rather than the 1960308 Mark which is for ‘Headband (Musical Band)’, I am satisfied that the use of the word ‘Headband’ as a trade mark is use of the 1960308 Mark – the marks are substantially identical as the additional element ‘(Musical band)’ is purely descriptive.
I am satisfied that at the relevant dates the Opponent intended to use each of the Trade Marks for the goods and/or services for which they are registered (and indeed has actively used the Trade Marks for many of the goods and/or services for which each mark is registered). The Opponent has established its opposition in relation to the application for removal under s 92(4)(a).
Decision
The Opponent has established its opposition to removal in respect of each of the Trade Marks. Accordingly, I decide not to remove trade mark registrations 1938040, 1960308, 1984553 and 1961113 from the Register in relation to any of the goods and services for which they are registered.
Costs
The Opponent has been successful in its oppositions to removal of trade mark numbers. 1938040, 1960308, 1984553 and 1961113 and has requested its costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1938040 against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 1960308 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[14]. In respect of trade mark number 1984553 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[15]. In respect of trade mark number 1961113 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[16].
[14] [2001] ATMO 78 (Hearing Officer Williams).
[15] Ibid.
[16] Ibid
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
5 November 2024
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