The Mentholatum Company v Innoxa Marks Limited
[2008] ATMO 61
•13 July 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Mentholatum Company to application under section 92 of the Act by Innoxa Marks Pty Ltd to remove trade mark number 736454(5) - LIPICE series - in the name of The Mentholatum Company
Delegate: Debrett Lyons Representation: Opponent: Felicity Marks of Counsel, instructed by Watermark, Patent and Trade Mark Attorneys.
Applicant: No appearanceDecision: 2008 ATMO 61
Sec. 92 opposition – removal application not supported by a statutory declaration in compliance with Regulation 9.1. Removal applicant’s use enquiries incompatible with its ground of opposition. Section 92(4)(a) allegations rebutted. Some goods to be removed.
Opposition partially successful.Background
The Mentholatum Company (Mentholatum) is the registered owner of the trade mark number 736454 for LIPICE; LIP ICE; LipIce (series of 3) in class 5 for “Lip care preparations included in class 5, including lip balm and lip moisturiser; sun block and sun screen preparations”. The trade mark was registered on 10 June 1997.
On 13 July 2006 Innoxa Marks Pty Ltd (Innoxa) filed an application for removal of the trade mark from the register for non-use under section 92 of the Trade Marks Act 1995 (the Act). The application was accompanied by the statutory declaration of Kenneth John McInnes made 13 July 2006. A further statutory declaration in support of the application was made by Claire Fitzpatrick on 28 July 2006.
On 13 July 2006 the trade mark was owned by Mentholatum Australasia Pty Ltd (Mentholatum Australasia). On 17 November 2006 Mentholatum Australasia filed a Notice of Opposition to the removal application.
The matter came before me, Debrett Lyons, as a delegate of the registrar of trade marks, for hearing in Melbourne on 19 June 2008. Innoxa was not represented and relied on the written submissions of its patent and trade mark attorneys, Hodgkinson McInnes Patents. Mentholatum was represented by Felicity Marks of Counsel, instructed by Watermark, Patent and Trade Mark Attorneys.
Evidence
The parties relied on the following declaratory statements:
Statutory Declarations filed by Innoxa
Kenneth John McInnes made 13 July 2006;
Claire Fitzpatrick [1] made 28 July 2006;
Claire Fitzpatrick [2] made 13 April 2007.
Statutory declarations filed by Mentholatum Australasia
Mark Lindsay Elliott [1] and Annexures MLE-1 to MLE-16 made 14 February 2007;
Mark Lindsay Elliott [2] and Annexures MLE-17 to MLE-34 made 17 January 2008;
Kelly-Anne Evans and Annexures KAE-1 to KAE-19 made 17 January 2008;
Mark Lindsay Elliott [3] and Annexure MLE-35 made 18 June 2008.
Assignment of the Trade Mark
Mentholatum is the parent company of Mentholatum Australasia. On 11 July 2007 Mentholatum Australasia assigned the trade mark to Mentholatum. An application to the Trade Marks Office to record the assignment was filed on 8 August 2007 and was recorded on 21 August 2007. The recordal of the assignment was advertised on 30 August 2007. The trade mark is now registered in the name of Mentholatum.
Discussion
The Removal Application
Section 92 of the Act has been amended by the Trade Marks Amendment Act 2006. The amendments are effective only in relation to those removal applications filed on or after Royal Assent of the Amendment Act on 23 October 2006. At the date on which the removal application was filed, section 92 of the Act provided:
92 Application for removal of trade mark from Register etc.
(1) A person aggrieved by the fact that a trade mark is or may be registered may,
subject to subsection (3), apply to the Registrar for the trade mark to be removed
from the Register.(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person
aggrieved may apply to the court for an order directing the Registrar to remove
the trade mark from the Register.
Note: For prescribed court see section 190.(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;(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: For file see section 6.
The removal application does not use the subsection numbering of the Act but it uses the identical wording of section 92(4)(a). Section 92(4)(b) is not in any way comprehended by the removal application.
The written submissions made on behalf of Innoxa do not made direct reference to either section 92(4)(a) or (b). Notably, those submissions state that the relevant non-use period is 13 June 2003 to 13 June 2006. That submission, and other evidence to which we will come, strongly suggest that Innoxa laboured throughout this opposition under the misconception that its removal application had been premised on section 92(4)(b).
In its submissions, Mentholatum accurately identified the removal application as premised solely on section 92(4)(a), but then also proceeded on the basis that the relevant non-use period was 13 June 2003 to 13 June 2006.
To be clear on this fundamental point of law, section 92(4)(a) has (ignoring, for the moment, subsidiary wording) two main elements. First, that on the day on which the application for the registration in suit was filed, the applicant had no good faith intention to use the trade mark in Australia and secondly, that the registered owner has not used the trade mark in Australia at any time before the period of one month ending on the day on which the non-use application is filed.
The first element is clear enough but there has been debate about the second in terms of the non-use period. Clearly that period ends a month before the filing date of the removal application, in this case, 13 June 2006. What is less clear is whether the non-use period runs only from the filing/registration date of the trade mark, in this case, 10 June 1997, or whether there is in effect no earliest date. The latter interpretation is favoured by the authors of Trade Mark Law in Australia, Elkington, Hall & Kell (Butterworths 2000, at page 109) and finds support in the facts that, unlike section 92(4)(b), there is no specific reference to use whilst the mark has been registered and additionally by use of the phrase “at any time”. So, it can be argued that use before the filing date of the application for registration is qualifying use.
On the other hand, an interpretation which admits qualifying use prior to the filing date of the application might be seen as somehow inconsistent with the first element which requires a good faith intention to use on that filing date. Moreover, the second element is prefaced by the requirement that it is the registered owner who has not used the mark. Since this decision does not, in the result, turn on one or other of those positions, there is no need for me to decide that point of law and so I will as a matter of convenience only treat the relevant non-use period as 10 June 1997 – 13 June 2006.
Section 92(2)(a) states that the application may be made in respect of any or all of the goods and/or services in respect of which the trade mark is registered. Innoxa’s application states that it is for the removal of some of the goods in respect of which the trade mark is registered, but the goods then listed in the application are in fact all of the registered goods.
Section 92(2)(a) states that the application must be in accordance with the regulations. Innoxa’s section 92(4)(a) application must be in accordance with Regulation 9 of the Trade Marks Regulations 1995 (the Regulations). On 13 July 2006, Regulation 9.1 specified that the application:
(a) must be in an approved form; and
(b) must be accompanied by a declaration made by, or on behalf of, the applicant:
(i) stating that an inquiry into the use of the trade mark has been conducted by, or on behalf of, the applicant; and
(ii) setting out the findings of that inquiry that support the grounds referred to in subsection 92(4) of the Act in reliance on which the application is made.
Fitzpatrick [1] was dated 28 July 2006. Contrary to Regulation 9.1(b), it did not accompany the application, filed 13 July 2006. Whether that might or might not be fatal to the admissibility of the evidence need not delay me since Fitzpatrick declares that proceedings concerning the trade mark are not pending in a court. The Regulations do not require this information to be in a declaration and I presume that the material is provided for the purposes of s 92(3), simply to satisfy me that, so far as Ms Fitzpatrick might be aware, there were no court proceedings pending at the time the application was filed.
The McInnes declaration was filed with the removal application. McInnes declares that :
On 10 July 2006, I received instructions from [Innoxa] to under take (sic.) marketplace and internet investigations to ascertain whether or not the trade mark LIPICE, LIP ICE or Lip Ice (series) subject of registration No. 736454 (“the mark”) was currently in use and whether or not the trade mark (sic.) had been used within the preceeding (sic.) three year period in Australia in respect of any of the goods claimed under registration No. 736454, but specifically, there had been no use (sic.) of the mark during the requisite period in respect of “lip care preparations included in class 5, including lip balm and lip moisturiser; sun block and sun screen preparations”.
On the basis of the investigations, I understand that during the three years ending prior to the date the application for cancellation was filed, no evidence could be located that the registrant had used the trade mark LIPICE, LIP ICE or Lip Ice (sic.) for any of the goods claimed under registration No. 736454 and specifically no use in respect of “lip care preparations included in class 5, including lip balm and lip moisturiser; sun block and sun screen preparations”.
Mentholatum submitted that the McInnes declaration did not satisfy the requirements of Regulation 9.1. It submitted that the declaration was defective because there is no statement as to the specific investigations carried out, nor does it address both primary elements of section 92(4)(a).
Shanahan’s Australian Law of Trade Marks and Passing Off (3rd ed.; Law Book Co. 2003), states at paragraph 15.25:
A removal applicant must assert aggrievement (and should state the basis for it) and declare that inquiries indicate that the trade mark has not been used for any or all of the goods or services for which it is registered during the three years up to one month before the date of filing of the expungement action; and/or that the owner had no intention to use the trade mark on the day the application for registration of it was filed, and has not in fact used it. If the declaration does not support both grounds, the unsupported ground must be deleted or the application may be taken as not having been filed in relation to the unsupported ground.
Few decisions have considered in any detail what is required by Regulation 9.1. The case of Figgins Holdings Pty Ltd v Beltrami S.p.A [1998] ATMO 32 (1 July 1998) involved an application under paragraph 92(4)(b) of the Act to remove trade mark 460449 from the register in respect of "shoes". The removal application identified Figgins as a person aggrieved. It was accompanied by a declaration from Adelina Colangelo, an employee of Figgins. Ms Colangelo's declaration stated that in her position as marketing manager of Figgins, a position she had held since 1986, she had responsibility for monitoring the use and possible infringement of Figgins trade marks. Ms Colangelo declared that the monitoring process entailed scrutiny of relevant printed matter from the trade and reports from Figgins' managers and buyers who had regular contact with manufacturers, importers and suppliers to the footwear industry. From this she had no record of the sale of any footwear in Australia bearing the relevant trade mark.
Deputy Registrar Hardie said:
Section 92 deals with the making of an application for removal which must be in accord with regulation 9.1. The regulation requires that the application must be in an approved form and must be accompanied by a declaration stating that an inquiry into the use of the mark has been conducted. It must also set out the findings of the inquiry that support the grounds for removal. As already discussed above, the application has been made in an approved form. The accompanying declaration by Ms Colangelo does not state that an inquiry has been made specifically for the purpose of inquiring into the use of trade mark number 460449. However, Ms Colangelo claims that, since 1986, in her monitoring of marks which are likely to infringe Figgins' registered trade marks she has accessed information from the footwear industry and has no record, nor is she personally aware, of any use of the mark BELTRAMI other than through the Figgins' retail outlets. It was Mr Connor's submission, with which I agree, that the declaration meets the requirements of regulation 9.1 and supports removal grounds under paragraph 92(4)(b).
I find that the removal application is in accordance with both the Regulations and paragraph 92(2).
In the slightly earlier case of Forecast & Trading Pty Limited v Schutz- Werke GmbH & Co. KG [1998] ATMO 55 (13 November 1998), removal applications relying on both subparagraphs 92(4)(a) and 92(4)(b) were opposed by Schutz-Werke. The grounds of opposition included claims that the removal applications were not in accordance with the regulations because “the declaration in support of the application fails to support either of the grounds referred to in subsection 92(4) of the Act.
Deputy Registrar Hardie said:
Regulation 9.1 requires the applicant to accompany the application with a declaration stating that an enquiry into the use of the trade mark has been conducted and setting out the finding of that enquiry. There is no requirement for the applicant to file any other evidence to support the removal application unless and until the removal application is opposed.
Section 100 makes plain how the burden of proof falls upon Mentholatum. Nonetheless, section 92 also makes it clear that the removal application must be in accordance with the Regulations. Regulation 9.1 required Innoxa to support its application, at the time of filing, by a declaration stating that an inquiry into the use of the trade mark has been conducted. The declaration must set out the findings of that inquiry that support the grounds in subsection 92(4) in reliance on which the application is made. The application is made under subsection 92(4)(a) which, as we have examined, allows for removal of the registration if (i) Mentholatum Australasia had no intention to use the trade mark in Australia on 10 June 1997, and (ii), Mentholatum / Mentholatum Australasia did not use the trade mark at any time between 10 June 1997 and 13 June 2006.
McInnes declares:
v that Innoxa instructed marketplace and internet investigations;
v that those investigations were for the purpose of ascertaining whether the trade mark was currently in use and whether or not the trade mark had been used within the preceding three year period;
v that on the basis of the investigations, “I understand that during the three years ending prior to the date the application for cancellation was filed, no evidence could be located that the registrant had used the trade mark.”
Mentholatum’s objections to the McInnes declaration were that:
v it merely restates the client’s instructions – it does not specify the nature of the inquiries undertaken on behalf of Innoxa, as is required by Regulation 9.1;
v it is questionable whether the declaration could be said to set out the findings of those inquiries, as is required by Regulation 9.1;
v missing is any enquiry touching on the matter of whether Mentholatum Australasia had an intention to use the trade mark in Australia on 10 June 1997.
Direction on compliance with section 92 and Regulation 9.1 has been the object of an Official Notice published in the Official Journal of Trade Marks in 2002. The body of the Official Notice read:
An application for removal must be filed together with a declaration which meets the requirements of reg. 9.1 of the Trade Marks Regulations 1995 by:
• stating that an inquiry into the use of the trade marks in respect of the goods/services specified in the removal application has been made by or on behalf of the applicant, and
• setting out the findings of the enquiry that support the ground or grounds relied on in the application. This may be a simple statement to the effect that the inquiry has revealed no use of the trade mark or no use during the relevant period.
For example, if both the grounds in subsection 92(4) are relied on, a declaration along the following lines will satisfy the requirements of reg 9.1.
I have conducted an investigation (on behalf of the applicant - if this is appropriate) into the use of the trade mark in respect of the goods/services specified in the application and the investigation has revealed that:
(a) on the day the application for registration was filed, the applicant for registration had no intention in good faith to use the trade mark in Australia or to authorise the use of the trade mark in Australia; and the applicant for registration has not used the trade mark in good faith in Australia; and
(b) during the 3 years ending one month before the day this removal application was filed, the registered owner did not use the trade mark in Australia, or did not use the trade mark in good faith in Australia.
Taken within the context of that Official Notice and the practice of the Trade Marks Office in connection with other section 92 applications supported by similar declarations to that of McInnes, I must discount Mentholatum’s first two criticisms.
The third criticism is more serious. Although the Official Notice would suggest that a bare assertion of lack of good faith intention to use the trade mark is adequate, the McInnes declaration fails to do even that.
Moreover, there is a fundamental flaw in the declaration, a by-product of Innoxa’s apparent misconception of its own removal ground. Innoxa’s instructions were to make use investigations into the period subsequent to July 2003. Critically, in terms of the degree to which the enquiries must correlate with the removal ground, what is missing altogether is any use enquiry into the six year period between 10 June 1997 and July 2003.
I am conscious that the structure of the removal provisions requires a non-use applicant to make only a sworn statement as to certain matters and I bear in mind the words of Deputy Registrar Hardie in the Forecast & Trading Pty Limited v Schutz- Werke GmbH & Co. KG case, set out above. Nevertheless, the stated limitations of the scope of the investigations make it evident that the requirements of section 92(4)(a) were not in mind during the enquiries and were not met by the declaratory statement made in support of the application. For these reasons I find that the removal application was not made in accordance with section 92(2).
The Notice of Opposition
For other reasons, that does not conclude the opposition. I observe that the Notice of Opposition did not recite non-compliance with the Regulations as a ground of opposition.
The Notice of Opposition claims that Innoxa is not a person aggrieved but I do not think that failure to properly frame the non-use application, in particular, failure to properly detail the non-use enquiries made, can be said to fall under the claim that Innoxa is not an aggrieved party.
On the other hand, neither section 96 nor the Regulations prescribe what is required of the Notice of Opposition.
Submissions concerning non-compliance with section 92 were made by Mentholatum at the hearing and in their written submissions. Nothing in Innoxa’s written submissions touches on the point.
Whilst I note that regulatory non-compliance was made a ground of opposition in the Forecast & Trading Pty Limited v Schutz- Werke GmbH & Co. KG case, it seems to me open to Mentholatum to have raised, for the first time at the hearing, an objection based on a formal deficiency. Had Innoxa been represented at the hearing, it would have had the opportunity to reply. As it happened, it chose not to attend.
The question immediately before me is whether, accordingly, the opposition succeeds. That is to say, should this opposition now succeed because of failure to comply with a filing requirement, being at the time a remediable defect in the set of documents which the Trade Marks Office studied for compliance at the time of filing? I think that the answer must be “no”. No doubt, the Trade Marks Office might properly have identified the deficiency and notified the removal applicant (in which event it would have been given time to submit a supplementary declaration), but the opposition having gone this far without that matter being been raised as an issue, through rounds of evidence from both parties and over the course of two years, leads me to decide that it would be improper to allow the opposition on the basis of the deficiencies in the supporting declaration.
I move on to Mentholatum’s claim that Innoxa is not a person aggrieved.
Person Aggrieved
Innoxa must be a person aggrieved in order to have standing to bring a removal application. The amendment to section 92 brought about by the Trade Marks Amendment Act 2006 was to abolish that requirement but, as noted earlier, it has no impact of this application.
Mentholatum submitted that an aggrieved person is one who has a real interest in having the trade mark removed from the register or one in respect of whom there is a reasonable possibility of his being appreciably disadvantaged in a legal or practical sense if the trade mark remained on the register. (Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198 at 207 Sackville J (“Kraft Foods”); Ritz Hotel Ltd v Charles of the Ritz and Anor (1998) 12 IPR 417 at 454 McLelland J). Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 419 at 151. An application for registration of a trade mark, without more, is insufficient to establish that a person is appreciably disadvantaged in a legal or practical sense by the continued registration of an identical or deceptively similar mark (Kraft Foods at 210; Woolly Bull Enterprises at [6 -7]).
Turning to those authorities, Sackville J noted in Kraft Foods Inc. v Gaines Pet Foods Corporation, at 209 that:
In Lever Brothers, Port Sunlight Limited v Sunniwhite Products Limited
(1949) 66 RPC 84 (Ch D, Romer J) the manufacturers of a soapless
detergent powder cross-claimed in an infringement suit to remove registration of a mark registered in respect of soap, detergents and cosmetic goods. Romer J held that the cross-claimants were not persons aggrieved by the registration of the mark in respect of cosmetics. His Lordship commented (at 101) that if the cross-claimants:…. entertain, or have at any time entertained, any notion of embarking upon an enterprise so far removed from their present one, I cannot but think that it was incumbent upon them to call evidence to that effect. This they were singularly coy about doing.
The term ‘person aggrieved’ was defined by McLelland J in Ritz Hotel Limited v Charles of the Ritz, at 454 in the words:
It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. In my opinion, the concept does not admit of further refinement.
On the basis of McLelland J’s words, it has been argued that it is an interest in the ‘trade mark’ which must be demonstrated rather than an interest in particular goods or services (as suggested by Sackville J.).
Those same passages were considered in the recent decision of Nordstrum Inc. v Starite Distributors Inc.(2008 ATMO 11; 24 January 2008), in connection with which Hearing Officer Nancarrow said:
I do not accept that to be disadvantaged ‘in a legal or practical sense’ a party simply needs to show an interest in a trade mark in respect of any goods or services whatsoever under that trade mark (as the applicant had implied) – but, equally, I do not accept that a party would have to demonstrate an interest in every single item listed in the opponent’s specification to bring about removal of an unused registration (as the opponent submitted). A practical view must be taken, one that looks at the implications from the evidence provided by both parties.
In the present matter I believe that the non-use applicant is trading in at least some goods that are the focus of the opponent’s specified retailing services and also has a registration to clearly support its stated interest. It also has a separate pending NORDSTROM application in respect of goods in classes 24 and 25 – some of which are listed as being obtainable by means of the opponent’s retail services in the present registration.
I also note that in the Ritz case, supra, Justice McLelland’s comments at 455 on a similar issue to that for decision here in the words:
The question whether an applicant for relief is a “person aggrieved” cannot be divorced from the nature and extent of the relief claimed. For example, the relief available under s 23(1) is expressly defined in terms of removal of a trade mark “in respect of any goods or services in respect of which it is registered”, which in its context means “in respect of any category of goods or services specified in the registration”. If a mark were registered in respect of goods in specified categories A and B, and an applicant for relief under s 23(1) were to show that he was a “person aggrieved” in respect of registration of the mark in relation to goods in category A, but not in relation to goods in category B, then he would have standing to claim removal of the mark in respect of goods in category A, but not in respect of goods in category B: Lever Brothers, Port Sunlight Ltd v Sunniwhite Products Limited (1949) 66 RPC 84. If, however, the mark were registered only in respect of goods in specified category C and the applicant were to show he was a “person aggrieved” in respect of the registration of the mark in relation to some kinds of goods in category C but not other kinds in that category, he would nevertheless have standing to claim removal of the mark in respect of goods in category C without distinction: “Kodiak” Trade Mark [1987] RPC 269.
Innoxa has filed trade mark application 1116034 for LIP ICE for “cosmetics including lip balm” in class 3. I note that the application was filed on 30 May 2006, just prior to the filing of the removal application. The passage of that application is blocked by the registration in suit.
Fitzpatrick [2] declares that Innoxa “always had a genuine intention to use the trade mark in Australia and has expended some effort and financial cost in connection with that intention”. She also declares that Innoxa “has expended time and incurred costs in relation to the selection of this trade mark”.
There are no corroborating statements from Innoxa’s executives or officers. There is no documentary evidence in support of those claims. Indeed, there is no documentary evidence of any kind filed on behalf of Innoxa from which inferences of fact might be drawn.
Nonetheless, there are aspects of Mentholatum’s evidence which deserve attention. Elliott [2] declares:
I am aware of an application for registration in Australia of the trade mark LIP ICE in the name of Innoxa Marks Pty Ltd in class 3, in respect of cosmetics including lip balm.
My role within the Company requires me to be aware of my Company’s competitors and the products they sell.
Elliott [1] declares that he is sales and marketing director of Mentholatum, a position he has held for 16 years, and that he has been involved in the over-the-counter (OTC) pharmaceutical and health care industry for 21 years. He states once more his awareness of Innoxa’s trade mark application 1116034 and declares that:
By virtue of my experience in the OTC pharmaceutical and health care industry, I am aware that cosmetic products are generally sold in close proximity to facial skin care products such as moisturisers and sun-screen preparations. Cosmetics such as cream foundation may actually incorporate or include a sun-screen. Often in supermarkets, department stores, discount retail chain stores or pharmacy outlets these products are self selected from displays of many similar products by consumers and paid for at a check out similar to supermarkets. The prospect of my company’s or the associated group of Mentholatum companies’ LIP ICE products and a similar product also labelled LIP ICE (if marketed by Innoxa Marks Pty Limited) being confused by customers in these retail outlets appears to be high.
The statements by Elliott show the respective goods to be similar and sold side by side. They also carry the inference that the parties are known to each other and are competitors in the same market.
When those statements are read together with the declaratory statements of Fitzpatrick [2] set out in para 46, it seems to me fairly plain that Innoxa is a party with a real interest in having the register rectified and so I find it to be a “person aggrieved” as that expression has been understood in the context of section 92.
Mentholatum’s Use of the Trade Mark
Section 92(4)(a) sets out the elements to be shown. By making the removal application, Innoxa makes allegations that those elements are satisfied. Section 100 puts the onus of proof on the opponent to meet those allegations. If the opponent rebuts one or other allegation of section 92(4)(a), the opposition succeeds. The first allegation is that on the day the application for registration of the trade mark was filed, Mentholatum Australasia had no intention in good faith to use the trade mark in Australia.
Elliott [1] declares that Mentholatum owns subsidiary companies thoughout the Asia Pacific region, including Mentholatum Australasia. He declares that Mentholatum Australasia is a manufacturer and marketer of products “within the topical analgesics, laxatives, skin care, anti-acne, lipcare and diagnostic markets”.
Elliott [1] declares to the long term success of the trade mark and the product in the Asia Pacific region. Products bearing the trade mark were first sold in Hong Kong in 1987, and later in 1991 in Taiwan, 1992 in China, 1995 in Malaysia and Singapore and in 1996 in Thailand. I note in the evidence details of Mentholatum’s foreign trade mark registrations for LIP ICE which carry filing dates commensurate with those claims to first use.
Elliott [2] declares that in 1997 he attended a marketing conference of the Mentholatum group companies in Beijing at which he was introduced to the trade mark. Presentations made by the group showing the marketing, promotion and sale of LIP ICE lip balm by members of the group is shown in evidence.
Mentholatum Australasia had existing customers in Australia to which it sold similar products. Elliott [2] states that in 1997, Mentholatum Australasia had an existing range of products which it sold under the trade mark SOFTLIPS. Following the Beijing conference, Mentholatum Australasia formulated a plan to sell goods bearing the trade mark, sourced from the Asia Pacific group companies, in Australia either alongside its existing SOFTLIPS range or in substitution for it.
My finding is that the opponent has put forward convincing evidence of an intention by Mentholatum Australasia to use the trade mark in Australia on 10 June 1997. It has discharged the onus of proof under section 100(a)(i) of the Act.
That said, the evidence only shows that the requisite intention existed in respect of lip balms. Restating here for convenience, the trade mark is registered for “Lip care preparations included in class 5, including lip balm and lip moisturiser; sun block and sun screen preparations”. The intention to use is established in relation to balms and moisturisers and I see no reason to interfere with the registration in relation to the goods described as lip care preparations.
On the other hand, whilst the evidence shows that various lip care preparations, balms or moisturisers may contain a sun protection agent, the goods of the registration are framed in a manner which gives Mentholatum a monopoly over sun block and sun screen preparations generally. The evidence of intention to use as at 10 June 1997 does not support “sun block and sun screen preparations”.
Accordingly, I find that the opposition is partially successful. In particular, one limb of the section 92(4)(a) allegations has been successfully rebutted, albeit not in relation to the full range of goods covered by the registration.
Decision
Trade mark 736454 is to be removed from the register in respect of the following goods: “sun block and sun screen preparations”. Removal of those goods from trade mark 736454 will occur after one month from the date of this decision. In the event of an appeal from this decision, removal shall not occur until either the appeal is withdrawn or the court makes orders to that effect.
Costs
The opposition having being partially successful, I direct that the parties bear their own costs.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
11 July 2008
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