Tip Top Ice Cream Company Limited v Peters Foods Australia Limited and Petersville Limited

[1996] ATMO 4

TRADE MARKS ACT 1955

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

Re:      Opposition by Peters Foods Australia Pty Limited and Petersville Limited, to an application by Tip Top Ice Cream Company Limited to remove the trade marks trumpet and trumpetgolden, registration 175908(30) and 175909(30), from the Register

Background

Trade marks number 175908(30) and 175909(30) are the word marks trumpet and golden trumpet. These marks have been on the Register since September 1962 and both are registered in respect of ice cream and frozen confections. 

On 12 January 1993, Tip Top Ice Cream Company Limited, a New Zealand company located in Auckland, (hereafter Tip Top) applied for the removal of these marks. On 22 February 1993, it served notice of the applications on Davies Collision Cave, agents for the registered proprietor, and on 29 April 1993 the removal applications were advertised in the Australian Official Journal of Trade Marks. 

The registered proprietors of these marks are Peters Foods Australia Pty Limited and Petersville Limited jointly trading as Australian United Foods.  They are located in Melbourne.  On 29 July 1993, the proprietors, under the names Peters Foods Australia Pty Limited and Petersville Limited jointly opposed the removal. I shall refer to the opponents as Peters.

The grounds for removal, stated under 2 headings, are quite brief.  They are

1.   The trade marks were registered without an intention in good faith on the part of the applicant, that they should be used in relation to the goods covered by the registration, and there has been no use in good faith of the trade marks in relation to those goods by the registered proprietors or a registered user of the trade marks prior to this application - s23(1)(a)

2.   Up to one month before the date of this application, a continuous period of not less than three years has elapsed during which the trade marks were registered trade marks and during which there was no use in good faith of the trade marks in relation to those goods by the registered proprietors or a registered user of the trade mark for the time being - 23(1)(b)

3.   We are aggrieved by the said registration because we are the proprietors of the trade mark TRUMPET and we wish to be free to use our trade mark in Australia for the relevant goods.

Tip Top thus relies on paragraphs 23(1)(a) and 23(1)(b) of the Trade Marks Act 1955.

Evidence was duly served by both parties, and the matter came to a hearing in Canberra on 2 June 1995. 

The opponent to the removal application, Peters, was represented at the hearing by Mr Graeme Clarke of Counsel. 

The removal applicant, Tip Top, was represented by Mr Peter Grey of Counsel, assisted by Mr Trevor Stevens of Davies Collison Cave, patent and trade mark attorneys.

Evidence

A substantial number of declarations were served as evidence by both sides. 

Five declarations were served by Tip Top in support of the removal.  These are from Richard Graeme Tait, David Francis Gerald Brennan, Peter Neave, John Patrick Byrne and Graeme Wyber.

Twelve answering declarations were served by Peters.  These are from Jan Keys, Jennifer Trembath, Ian Jackson, Beryl White, Desley Stafford, Despina Zaharopolous, Shaun Daniel McVicar, Arthur John Meddings, Donald Henry Collis, Karen Lisa Schooling, Ron Ian Klein, Johanna Marie Hetherington and Evonne Maree Kent. 

In reply to this evidence, Tip Top served two declarations, these from Lavinia Jeanne Strachan and Raymond Gwillym O’Connor.

On receipt of this service, Peters successfully sought a grant of special leave to adduce further evidence, and served a second declarations from Shaun Daniel McVicar. Tip Top, replied with a declaration from Jayne Elizabeth Retchford.

Mr McVicar’s declaration constituting part of Peters’ evidence in answer, is dated 17 March 1994.  I refer to it as McVicar 1. His second declaration in further evidence  is dated 13 February 1995, and I refer to it as McVicar 2.

Person aggrieved

Application for removal under the provisions of section 23 of the 1995 Trade Marks Act, is confined to persons aggrieved.  Tip Top claims to have this standing.  It says in the third ground that it is proprietor of the mark TRUMPET and that it wishes to use this mark in Australian. 

The basis of this claim for locus standi is expanded in Tip Top’s supporting evidence, particularly through the Tate declaration.  Mr Tate deposes that Tip Top is the dominant ice cream manufacturer in New Zealand, that TRUMPET is one of its leading brands, and that it wishes to use the same brand in Australia. Peters’ registrations for trumpet and golden trumpet impeded these plans. 

Mr Clarke argues that Tip Top does not have the standing of person aggrieved.  He points out that in all the evidence put in support of the removal application, there is no evidence that Tip Top has conducted any business in Australia.  Tip Top’s intention, he says, may simply be described as a ‘bootstrap’ argument and is, in essence, no more than a tentative plan to remove the registrations and then, if successful, move in on the Australian market.  On this basis he says Tip Top is not aggrieved at all.

Both counsel referred to a number of references but I do not consider that I need to go any further than the directions of Justice McLelland in The Ritz Hotel Ltd -v- Charles of the Ritz Ltd and another,12 IPR 417 at 454:

The meaning of the expression “person aggrieved” in legislation cognate with ss22(1) and 23(1) of the Act has been the subject of consideration in numerous cases, the reconciliation of which I do not propose to attempt, even if it were thought possible.  Decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed: ... William Powell (trading as Goodall, Backhouse & Co.) v Birmingham Vinegar Brewery Co Ltd [1894] AC 8;  “Daiquiri Rum” Trade Mark [1969] RPC 600; Crean & Co v Dobbs & Co [1930] 3 CLR 22.  It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having  ... 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 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.  ...  I reject the defendant’s submission that “the plaintiff must show a trade rivalry by demonstrating that it is either in trade or has a fixed and present intention to enter trade in Australia in goods sufficiently similar to those covered by Classes 3 and 26 as to be likely to cause confusion”...

Tip Top holds a significant place as a New Zealand ice cream manufacturer and Australia is an obvious target for its exports.  It already has some trade with this country and it wishes to extend this trade to include TRUMPET ice creams, its top New Zealand  performer.  Its aim to get its top selling brand into the Australian market is plainly a logical business proposal. Marketing this product under its New Zealand trade mark, however, will bring Tip Top into conflict with Peters’ trade marks and gives rise to the appreciable practical disadvantages referred to by Justice McLelland. Tip Top therefore has a “real interest”  in seeking to have the Peters trade marks removed, and I find that it stands as a person aggrieved. 

The prima facie case

Once it is established that Tip Top is a person aggrieved, the next question is whether Tip Top has shown that there was no use in good faith by Peters of its marks during either one or both of the periods prescribed under paragraphs 23(1)(a) and (b). In Estex Clothing Manufacturers Pty Limited -v- Ellis and Goldstein Limited, (1966-67) 116 CLR 254, Windeyer J, at p258, gives directions which establish the onus and the criteria which the Tip Top is expected to meet. His judgement reads:-

It is for an applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were  used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user.

In respect of Tip Top’s prima facie case, Mr Stevens drew attention to the Tait, Brennan, Neave, Byrne and Wyber declarations.  In summary, these declarants depose the following. Mr Tate has been export manager for Tip Top for 5 years.  His company exports ice cream to Australia, he is familiar with the Australian market, and he monitors its activities.  He discovered that Peters has TRUMPET registered in Australia but, he says, on enquiry found it was not in use and he believes that it has not been in use since 1988. Messrs  Brennan, Neave, Byrne and Wyber have all been employed at some time by Peters, or one of their related companies.  Mr Brennan was employed as National Sales Manager for Australian United Foods from 1984-88; Mr Neave was employed as Grocery Sales Manager from 1989-92; Mr Byrne was State Manager for Victoria from 1987-92; and Mr Wyber was Manager of Sydney Metropolitan Sales from 1984-91.  All four declarants have stated categorically, that for the 4 years 1988-92 they knew of no use by Peters or Australian United Foods of either of the subject marks. 

Mr Clarke submits that these deponents are not a position to provide relevant comment.  He pointed out that Mr Tate operates in the New Zealand market but, he says, this is not warrant to comment on the Australian market.  Mr Brennan, he points out, has not worked for Peters since 1988 and therefore cannot be assumed to have knowledge after that date. Messrs Neave and Byrne operated in the grocery trade, and would not have experience of trade marks used in respect of  frozen confectionery.

I do not agree, however, that  Mr Clarke’s criticisms discredit Tip Top’s deponents.  Mr Tate has a live interest in the Australian market. His company exports ice cream to this country. I accept that through that activity he would have the necessary connexions to make enquiries of appropriate specialists.  Mr Brennan has continued to work in connection with ice-cream manufacturing, and I see no reason to hold that his knowledge is not relevant and appropriate.  Messrs Neave,  Byrne and Wyber all held responsible positions with Australian United Foods over the years 1984 - 1992. I consider that if these positions were in groceries, the deponents would be very well placed to comment on trade marks applied to ice creams. Ice cream, after all, is a stock item for supermarkets and small mixed businesses alike.  All told I find these deponents are exceptionally well placed to comment on Peters’ use of trade marks in respect of its food products.

Tip Top’s removal applications, being lodged on 12 January 1993, establish that, for the purpose of paragraph 23(1)(b) the relevant three years run from 12 December 1989 to 12 December 1992. Messrs Tate, Brennan, Neave, Byrne and Wyber all depose that Peters did not use the marks during these three years. These, I find, are persons who, “by reason of their connexion with the relevant trade, ... might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered.”In consequence, I find that Tip Top has established a prima face case of non use for the purposes of paragraph 23(1)(b).

Peters’ Evidence of use

I turn then to Peters’ evidence in answer, and the extent to which this evidence addresses the challenge that that from 12 December 1989 to 12 December 1992 neither the trade mark trumpet nor golden trumpet was used in relation to ice cream products.

The Meddings declaration gives the following history. 

Mr Meddings is retired.  Throughout a long career he was associated with  ice cream manufacturing.  In the 1950s, he commenced work as a sales representative for Toppa Ice Cream Pty Ltd (Toppa) the original owner of the trumpet and golden trumpet trade marks. (I note that Toppa Holdings was the original registered proprietor of these two trade marks.) Toppa, at that time, sold ice cream only in Victoria.  Mr Meddings became Northern Sales Manager, and in the early 1960s, he then became Sales Manager supervising, amongst other things, all of the art-work associated with point of sales advertising.  In 1965 Toppa extended distribution to Tasmania, New South Wales, Queensland and South Australia, and some products were distributed to Western Australia.  In the 1960s the Toppa businesses were acquired by QUF Industries Pty Ltd which moved into partnership with Petersville Limited (and, after a number of transmissions, the subject marks came to be registered in the name of the present proprietor).

Before Toppa and the various Peters ice cream business merged, they were in competition.  Mr Meddings recounts that in about 1961 Peters commenced manufacture of a sugar cone ice cream product which it sold under the trade mark drumstick.  Toppa   responded with its own sugar cone product and marketed it under the trade mark TRUMPET.  This was a vanilla ice cream with a rounded top and chocolate and nut coating.  Twelve months later this product was renamed as GOLDEN TRUMPET and a line of other flavours -  mint-chip, strawberry and banana - were put out under the TRUMPET brand.  These products were a “huge success” and became Toppa’s most important product.  Production continued through the ’70s and ’80s  and at peak production, sometime in the 1970s, some 60,000 ice cream cones were sold each week.  Sales were accompanied by prominent point-of-sales advertising, and extensive promotion through the print media, radio and drive-in-theatres. 

The result of this success is that many people have a strong recall of the product.  This is evident from the Keys, Trembath, Jackson, Stafford and Zaharopolous declarations.  These declarants all recollect, with a touch of nostalgia, buying and enjoying TRUMPET ice creams as children.  Ms White recalls selling them in her milkbar that she ran in Auburn Victoria, from 1963 - 1969.

However, there is nothing in the Peters’ evidence that indicates, contrary to Tip Top’s claim, that it used the marks trumpet and golden trumpet in respect of ice cream products - sugar cone or otherwise - over the critical years from 12 December 1989 to 12 December 1992.  The nearest, comes in Mr Collis’ declaration.  Mr Collis is General Manager for Peters Foods Australia Pty Limited (a business formerly known, he says, as Australian United Foods). He says, clause 2, that the marks trumpet and golden trumpet, 

have been extensively used by the Proprietors and their predecessors in business and are presently being used by the Proprietors.

However,  Mr Collis is not able to support this statement because, as he says, clause 3,

the entire operation of the proprietor’s business has been the subject of a substantial reorganisation over the last year or two.  This reorganisation has involved numerous staff changes as a result of which many long-standing officers of the Proprietors who had an intimate knowledge of the trumpet and golden trumpet trade marks are no longer associated with the Proprietors.  In addition the reorganisation involved the shift of the head office of the Proprietors’ business from Queensland to Victoria.   In the course of that shift many documents which were not considered to be of vital importance ... have been destroyed or otherwise misplaced. 

In short, apart from Mr Collis’ unsupported claim that trumpet and golden trumpet  “have been extensively used by the Proprietors and their predecessors in business and are presently being used by the Proprietors” there is no evidence of use of  these marks after the early 1980s.  Mr Meddings says,  “[t]he number of retailers of TRUMPET products throughout Australia increased quite significantly in the late 1970s and early 1980s.  But there is no evidence to support Mr Collis’ statement that use is now under way - nor is there any evidence that the use he refers to occurred during the three years of 12 December 1989 to 12 December 1992. 

In coming to this conclusion, I have not disregarded the supporting statements from Mss Keys, Trembath, White, Stafford, Zaharopolous, Schooling, Hetherington and Kent, and from Messrs McVicar, Jackson and Klein. The evidence from these declarants goes both to use in the critical three years, and to circumstances relating to a plea for exercise of the Registrar’s discretion.  The discretion I will come to shortly, but in respect of use from 1989 to 1992, I make the following observations.

• The information in the Keys, Jackson, Stafford and Zaharopolous declarations relates to unspecified childhood recollections of the trade mark TRUMPET.  The age of the declarants is not known, and a time frame for the recollections is not established.

• The Trembath declaration refers to knowledge of the trade mark TRUMPET during a 1970s childhood.  This is clearly outside the critical three years.

• The White declaration testifies to knowledge of TRUMPET whilst running a milkbar in the 1960s.  This is outside the critical three years.

• The McVicar, Schooling, Hetherington and Kent declarations relate to a survey organised by Mr McVicar.  He is a solicitor acting on behalf of Peters. The survey addressed a number of questions to a sample of Peters’ retail customers regularly contacted on a rota basis. This group was asked how long they had been retailing ice cream, whether they recalled the trade marks trumpet and golden trumpet, and whether they had ever sold or bought these products.  The results, tabulated in McVicar 1, show a high level of positive responses. However, no use is identified as occurring through 1989 to 1992, and therefore this evidence likewise fails to address the critical three years.

• The Klein declaration describes the results of a second survey.  Here, 100 respondents were chosen from the Melbourne telephone pages, all of them being at least 35 years old.  They were asked similar questions and it appears, some 22% acknowledged that they knew TRUMPET as a brand of ice cream.  Again, however, there is no evidence to support the contention that this knowledge extended to use through 1989 to 1992.

In sum, it is clear from Mr Meddings’ evidence, that through the 1960s and 1970s either the current proprietor or a predecessor had a substantial trade in ice creams which it marketed under the trade marks trumpet and golden trumpet. There is no issue regarding bona fides. This use then answers the removal action so far as the paragraph 23(1)(a) ground is concerned. However, the paragraph 23(1)(b) ground demands evidence that shows a continuation of this use into the three years 12 December 1989 to 12 December 1992. Peters has not been able to satisfy this. On the contrary, as Mr Clarke has pointed out, the evidence served in support of Peters’ opposition to the removals, tends, instead, to confirm that during that time there was, in fact, no use. Certainly, except for the lone and unsupported statement from Mr Collis, the issue is not addressed head on. The implication of this neglect, taken in conjunction with the inference to be drawn from the Medding declaration, is that Peters had no use of the mark in those three years. Moreover, the survey questions, having avoided all reference to time frames, not only fail to fill this gap, but beg the question of why this critical information was so consistently excluded.

I am satisfied that Tip Top has established that at least from 1988, Peters has not used its trade marks trumpet and golden trumpet.   This time frame runs across the three years 12 December 1989 to 12 December 1992, on which the s23(1)(b) ground depends. Peters have failed to counter this ground.

I come to the conclusion that, in respect of the s23(1)(b) ground, Tip Top has successfully established its case.

Registrar’s discretion

In view of the evidence that these marks, in their day, have been very successful trade marks, and as Peters claim that they still constitute valuable and important property, Mr Clarke submits that should I decide that the registered proprietors are not able to show the necessary use, I should, in the exercise of the discretion specified under section 23, decline to remove the marks.

The criteria that determine whether it is proper for the Registrar to exercise the discretion, are discussed in Paragon Shoes Pty Ltd -v- Paragini Distributors (NSW) Pty Ltd and Others, 13 IPR 323, Woodward J, says at p345

There are several points which emerge ... The first is the importance of the public interest - whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it.  Finally  if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. 

Public interest - deception and confusion

The evidence submitted by Peters demonstrates that during the 1970s and 1980s, one or more of its predecessors had a prosperous trade in ice cream products marketed under the trade marks trumpet and golden trumpet.  The evidence appears to show, moreover, that a significant level of residual renown derives from that use.  This, at first blush, appears to indicate that deception and confusion is a prospect of some real magnitude, and mitigates in favour of exercising the discretion.  However, the declaration from Ms Strachan, raises some questions regarding the amount of weight that can be attached to this evidence.  Ms Strachan is a market research consultant, and comments on the methodology used in the course of the surveys included in Peters’ evidence.

First, in respect of the Klein, McVicar, Hetherington, Kent and Schooling evidence, Ms Strachan points out that the questions put in the surveys are not neutral.  They included a reference to the trade marks and are framed in a way that invites a positive response. Such questions are: 

“Thinking about brand names for ice creams, have you heard of the brand name TRUMPET ?”(Klein declaration)

or

“Do you recall the ice cream called GOLDEN TRUMPET?”(the Heatherington declaration).

The questions as they were asked are therefore likely to have elicited a higher number of positive responses than would have been the case had the respondents been presented with a number of trade marks and asked to nominate those which they knew to be trade marks used in relation to ice cream.

Second, Ms Strachan comments on Mr Klein’s survey of 100 people, aged 35 or more, who were selected from the Melbourne telephone listings.  She says that this is a small sample and submits that it may not be representative of 35 year olds in Melbourne.  The questions put by Mr Klein’s team both included mention of the trade marks and thus, says Ms Strachan, precluded “the opportunity to measure spontaneous awareness of either brand name.”  Furthermore, there was no opportunity for the respondent to say if the use they knew took place in Australia. Mr O’Connor, a managing director of Tip Top, points, for example, to many New Zealand expatriates living in Australia, and to the high level of travel between the two countries. TRUMPET, says Mr O’Connor,  is a household word in New Zealand, and thus many people in Australia would recognise it as Tip Top’s trade mark.  Ms Strachan’s view is that given Tip Top’s prominent use of  TRUMPET in the New Zealand market, respondents with a New Zealand connections should have been excluded from the research. 

Third, the restriction of the Klein survey to over 35 year olds, introduces an age bias which Ms Strachan points out, is not consistent with the age group of the primary target market.  She says that the main purchasers of ice cream, one would assume, would be under rather than over 35 years of above.

These criticisms seem to me on the whole to be well founded. I agree with Ms Strachan, that it is likely that the number of positive reposes is overstated both through operation of a predisposition to agree, and through failure to exclude New Zealand connections.  I also accept her point that to focus on the 35+ age group, is likely to have produced a picture that does not accurately reflect the awareness of trumpet and golden trumpet in the most active segment of market.   The 1970-80 use of these marks was in relation to sugar cone ice cream products, and I agree that it is common general knowledge that in the main, these products are more likely to be bought by young people, than by those who are 35 years of age and over.  

The effect of these moderating factors is, I think, to diminish the prospect of deception and confusion brought about by a goodwill developed through Peters’ earlier use of trumpet and golden trumpet.  As far as I can see, the last of this use occurred in early to mid 1980s, now some 10 years before present.  In the interim there is likely to have been a considerable turnover in the makeup of the purchasing public, numerous ice cream products would have come and gone, and there has been nothing to keep the goodwill alive or to transfer it to the current generation of the less than 35s.  There is certainly  no evidence  that this group has any knowledge of the Peters trade marks.

On the whole, I do not consider that the residual renown shown to exist in the trade marks trumpet and golden trumpet, is sufficiently strong to constitute a significant risk in terms of public deception and confusion, and I am not prepared to attach any great weight to the public interest argument put forward by Mr Clarke to justify an exercise of discretion in favour of allowing  these marks to remain registered.

Unimpeached title and continued use in good faith

In respect of the second criterion mentioned by Justice Woodward, Mr Clarke draws attention to clauses 20 - 23 of the Meddings declaration.  These clauses are headed up The Ice Cream Industry and the Revitalisation of Ice Cream Products.  Mr Medding here describes how, because the market is highly competitive, ice cream products often perform well for a shorter or longer time, but then fade in popularity and are discontinued.  Products that have been shelved, however, may subsequently be revived, either because the product has more life in it, or, the trade mark was strong, and the product has been re-engineered.  Mr Medding quotes two trade marks, skona  and monaco which, he says, were successfully relaunched in this way.   I note, then, Mr Collis’ comment at clause 4 - 6 of his declaration.  He says that trumpet and golden trumpet are extremely valuable and important to the Proprietors and asserts that Peters has not abandoned these trade mark.  Currently, he says, Peters are making plans for the launch of a new and revitalised trumpet and golden trumpet ice cream product.  The possibility of this launch has been under serious consideration since 1989.  The proprietors believe, moreover, that the marks are memorable and attractive and are distinctive of the proprietors. 

In respect of the matter of unimpeachable title, however, Mr O’Connor’s declaration shows that the mark TRUMPET  has been in use in Victoria by a company called Dairy Bell Ice-Cream (Australia) Pty Limited (hereafter Dairy Bell).  This use has taken place from about 1988.  The products, says Mr O’Connor, are sold in numerous outlets.  An ice cream product packaged in a container bearing the trade mark TRUMPET  was purchased at a Dairy Bell ice cream store on the corner of Elizabeth and Flinders Streets in Melbourne. A label from that purchase is exhibited to Mr O’Connor’s declaration and a copy of it is shown below.

Ms Retchford, an articled clerk in Melbourne, confirms in her declaration, that Dairy Bell sold ice cream under the trade mark TRUMPET during 1989 and 1990. She is personally aware of use that occurred from the Dairy Bell premises  at 60 Belgrave Road, East Malvern.

In McVicar 2, Mr McVicar responds to the evidence concerning Dairy Bell, with the information that in June 1994, the company was notified that use of the trade mark TRUMPET was an infringement of his clients’ trade mark, that it constituted passing off, and that it was misleading and deceptive and contravened section 52 of the Trade Practices Act.   This brought forth an apology, an assurance that the use of another’s trade mark was unintentional, and that all Dairy Bell stores had been given instruction to stop selling any ice creams under the TRUMPET  mark.

Considering this state of affairs in the context of Justice Woodward’s comments, I come to the following conclusions.

First, the likelihood of deception is not high. In coming to this point of view I accept that a significant residual renown resides with the trade marks trumpet and golden trumpet.   But taking into account:

·     the facts that renown has been demonstrated only amongst persons of 35 years or more,

·     the general knowledge that ice creams are frequently purchased by persons much younger than 35 years,

·     the acknowledged high turnover of trade marks to distinguish ice cream products, and

·     that it now some 10 since the 35 year olds have actually seen these marks in use,

I do not think that use of the marks by another company is likely to cause a significant number of people to wonder whether an ice cream sold under the trade mark trumpet or golden trumpet, comes from Peters.

I therefore reject the submissions that the public interest lies in the preservation of these registrations.

Second, it is very clear that there has not been continuous use in good faith by Peters of the trade marks trumpet and golden trumpet.  The use in the 1970s and early 1980s is established.  However, there is no evidence of any use over the years 1988 to present, apart from Mr Collis’ unsupported statement that

trumpet and golden trumpet trade marks ... are presently being used. 

This is not enough.  I note that circumstances have put certain records beyond reach, but any current use, or any use that took place in the critical three years,  could surely have been attested to, had it been of any commercial significance.  On the other hand, Messres Tate, Brennan, Lee, Byrne and Wyber, all with knowledge of the trade, and four of whom have been employed by Peters, attest to knowing that there was no trade, under these marks, from 1988 to 1992.   The balance here is clear. On the evidence, I can only hold that there has not been continuous use.

Further, while Peters claim not to have abandoned their trade marks, their protestations falter in the face of Dairy Bell’s apparently unchallenged liberty to use the TRUMPET mark, in Victoria (home of the original Toppa products) from 1988 - 1994.

In sum, there has not been continuous use, and Peters’ claim to an unimpeachable title stretching from 1962 to 1992 seems to me, to be seriously open to question.

Third, the matter of technicalities mentioned by Justice Woodward does not have any relevance to the present case.

Decision

The first ground, per paragraph 23(1)(a), that the trade marks trumpet and golden trumpet were registered without an intention in good faith that they should be used in relation to ice cream products,  and there has been no use of them, clearly fails.  The marks were used with notable success during the 1970s. This use is well established by the Peters’ evidence, and this ground for removal therefore is not made out.

The second ground, as per paragraph 23(1)(b), that up to 12 December 1989 a continuous period of three years elapsed during which the trade mark trumpet and golden trumpet were registered and during which there was no use in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being, has, I consider, been satisfactorily established.  Experts from the trade, and indeed experienced specialist with knowledge in the Peters group of companies, attest to this. Peters’ answering evidence does not show than any use took place.  I hold therefore, that this ground has been made out.

The plea for the exercise of the discretion has failed.  The circumstances do not meet the tests laid out by Justice Woodward in the Paragon Shoes case (supra).  And although the trade marks may still have some latent potential, the facts seem to me that trumpet and golden trumpet have been neglected since 1988 or before.  If a trader has a registered trade mark that has proved to be valuable, and  which it wishes to maintain, then it is incumbent on the proprietor to use that mark or otherwise face the risk of a successful attack on the grounds of non use.  It is not appropriate for a proprietor to salt away trade marks which it thinks it may use, or may revive, when the time comes.  The legislation does not provide for stockpiling of marks in this way. I find no circumstances here which warrant the exercise of the discretion.  It seems to me simply to be the case that the trade marks have not been used for more that the critical three years, and that their existence on the register is impeding trade. I do not consider that the registrations should be allowed to remain on the Register, and I find there is no reason to exercise discretion and decline to remove them.

My decision is that, through the operation of paragraph 23(1)(b), the removal applications succeed in respect of trade mark 175908(30) and trade mark 175909(30), and I direct that, subject to any appeal, both marks be removed from the Register.

Costs

Both parties sought costs.  These I award, in accordance with my findings, to the section 23 applicant.

Helen R. Hardie
Deputy Registrar

24 January, 1996