Toppy Company (Hong Kong) Limited v C & a

[1997] ATMO 10

Trade marks act 1955

decision of a delegate of the registrar of trade marks with reasons

Opposition by c&a to an application for the removal of trade marks 372206 and 521146 from the register pursuant to s23 of the act made by toppy company (hong kong) limited

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995 the provisions of the Trade Marks Act 1955 continue to govern these oppositions.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

The applications

On 20 August 1993 Toppy Company (Hong Kong) Limited (Toppy) lodged applications pursuant to s23 of the Act seeking the removal from the Register of trade marks nos 372206 and 521146 registered in the name of C&A, a British company.  The former mark consists of the word JESSICA and is registered in respect of all goods included in International Class 25, mainly articles of clothing.  Trade mark 5221146 is registered in respect of the goods “clothing, footwear, headgear and parts of and accessories therefor as are included in this
class” being also Class 25.  That mark is shown below:

Both marks are registered in Part A of the Register 372206 as from 26 February 1982 and 521146 as from 12 October 1989.

The grounds on which the applications were made were those set out in paragraphs 23(1)(a) and 23(1)(b) of the Act, namely:

(a) that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods or services by him or, if it was registered under sub-section (1) of section 45, by the body corporate or registered user concerned, and that there has, in fact, been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being earlier than 1 month before the application; or

(b) that, up to 1 month before the date of the application, a continuous period of not less than 3 years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being.

The opposition

Notification of the lodgment of the applications was advertised in the Official Journal of 25 July 1996 and in accordance with subreg 22(4) of the Trade Marks Regulations 1955 the registered proprietor of the trade marks, C&A, gave, on 5 August 1996, a notice of opposition to the applications for removal in which it denied both of the allegations in Toppy’s applications.

The evidence

Evidence in support of the removal applications was served on C&A on 20 August 1996.  It consisted of a declaration of Lynette Merrin Meston-Watson, an employee of Carter Smith & Beadle, patent attorneys.  C&A’s evidence in answer therefore became due on 20 November 1996 (reg 55).  However, on 8 October 1996 C&A advised the Registrar, by its attorneys Spruson & Ferguson, that it did not intend to lodge evidence in answer.  The matter was therefore set down for hearing.

At the hearing, on 6 February 1997, in Melbourne, Mr Trevor Beadle of Carter Smith & Beadle appeared for Toppy.  As previously notified to the Registrar C&A did not appear or lodge written submissions.

Submissions

Mr Beadle stated at the hearing that he did not intend to make submissions as to the lack of bona fides on the part of C&A in applying to register its trade marks.  The question for decision then is whether C&A had used its trade marks in the relevant three year period as specified in s23(1)(b).  In this case that period is 20 July 1990 to 20 July 1993.

Mr Beadle then addressed the question whether Toppy was a “person aggrieved” for the purposes of s23.  He pointed out that Toppy had applied to register the trade mark JESSICA in respect of “clothing, footwear, headgear” on 12 December 1991 and that an objection had been raised by an examiner of trade marks in terms of s33 of the Act that the mark was “substantially identical’ to C&A’s trade mark under 372206.  For this reason, he said, Toppy was a person aggrieved by the registration: Re Oehlschlager 27 IPR 663. As to 521146, no objection had been taken but, he said, perhaps one should have been. In any case, he submitted, the expression “person aggrieved” was not a technical term and was to be liberally construed. He submitted that even 521146 was a bar to the registration of its mark by Toppy even though no objection had been taken and that therefore Toppy was a person aggrieved by the registration of that trade mark.

On the matter of the onus of proof in removal proceedings Mr Beadle conceded that it was established law that the onus was on the applicant for removal to make out a prima facie case of non-use: Estex Clothing Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254. He submitted, however, that the investigations carried out by Toppy’s agents and embodied in its evidence in support of the applications more than adequately made out such a case. He also pointed to the lack of prosecution of the opposition, the opponent’s failure to put in evidence in answer, to appear at the hearing or lodge written submissions. All of this showed, he argued, that C&A had no interest in the preservation of its trade marks.

Mr Beadle further submitted that the Registrar had a discretion in the matter of the removal of marks from the Register and that there was no reason why that discretion should be exercised against the s23 applicant particularly in the absence of any interest on the part of the registered proprietor of the trade marks and given that the applicant was a person aggrieved in respect of the trade marks in question.

Decision

I will deal first with the threshold question whether in fact Toppy is a person aggrieved as required by s23 in respect of both of the trade marks at issue.  The meaning of the expression “person aggrieved” was considered by McLelland J in Ritz Hotel v Charles of the Ritz (1988) IPR 417, where he said, at 455:

Meaning of "person aggrieved"

The meaning of the expression "person aggrieved" in legislation cognate with ss 22(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:  see Attorney-General (NSW) v Brewery Employes Union of NSW (1908) 6 CLR 469; WilliamPowell (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 DLR 22. 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. In deference to a submission by the defendants based on, inter alia, "Consort" Trade Mark [1980] RPC 160 at 166, I would merely add that in my view there is no legitimate basis for introducing into the concept of "person aggrieved" for the purposes of ss 22(1) or 23(1) any restriction based on the conditions required to be fulfilled by an applicant for registration of a trade mark. I reject the defendants' 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 in Classes 3 and 26 as to be likely to cause confusion.

In the present case the question whether the plaintiff is a person aggrieved in relation to any of the claims made in the proceedings has no necessary relationship to the question whether the plaintiff could itself successfully apply for registration of any of the subject marks: for example, see Re Riviere's Trade Mark (1884) 26 Ch D 48; Re Trade Mark of La Societe Anonyme des Verreries de L'Etoile (1984) 11 RPC 142; Pink v J A Sharwood & Co Ltd (1913) 30 RPC 725.

Although there may be no necessary relationship to the question whether the s23 applicant could itself successfully apply for the registration of the same trade mark it would seem a fortiori  that if its attempt to do so were to be blocked by the existence on the Register of the mark sought to be removed then it would have a “real interest” in having the Register rectified.  This applies in the case of 372206 which is identical to the subject of Toppy’s application.  In the case of 521146 no objection has been raised by the examiner of Toppy’s application based on that trade mark.  Moreover, both marks in the name of C&A are not associated trade marks in terms of s36 of the Act.  The implication of these two facts is that a view had been taken that the two trade marks were not deceptively similar   However, I am inclined to agree with Mr Beadle that perhaps an objection under s33 should have been taken in respect of that mark also.  At least I think it is a reasonable conclusion that some persons could be led to wonder whether goods bearing the two trade marks derived from the same source.  That is all that is necessary.  I therefore believe that in the case of 521146 also Toppy is entitled to be considered a person aggrieved

It is well established, as Mr Beadle conceded, that the onus of proof of the non-use of a trade mark rests with the applicant for removal: the Estex case ,supra, per Windeyer J at 258:

"It is for the 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. ...slight evidence may suffice at this stage, for the applicant has the task of proving a negative ...but ...when all the evidence is complete, the question is still, has the applicant proved his case?"

In her declaration Ms Meston-Watson declares that on instructions from Toppy’s Hong Kong attorneys, Carter Smith & Beadle directed an investigating agent, Moutsias Management Services Pty Ltd to undertake investigations to determine whether the trade mark JESSICA had been used during the period July 1990 to September 1993 in respect of any or all of the goods for which it was registered in class 25 and also whether the trade mark YESSICA in the name of C&A had been used during the period July 1990 to September 1993 in respect of any or all of the goods for which it was registered in class 25.  A copy of the report received from Moutsias is attached to the declaration.

Moutsias’ investigations included enquiries of the British Consulate General’s Office in Melbourne and Sydney as to the presence of C&A in Australia, searches of relevant telephone directories, enquiries of the trade magazine “Ragtrader” in Sydney and Melbourne, direct enquiries of a number of retail clothing outlets as well as a company search.  None of these enquiries elicited a positive assertion of an association between C&A and a trade mark consisting of or including the words JESSICA or YESSICA.  This evidence does not positively establish a lack of use by C&A during the relevant period but it does, I believe, make out a prima facie case of non-use.  As Fullagar J observed in the Estex case, ibid:

It is for the 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.

Although the evidence may not be as complete as might be expected it is of the sort described by Fullagar J.  The persons of whom enquiries were made were such as who by their connection with the relevant trade might have been expected to have heard of the trade marks had they been used during the relevant period.  Even if slight the evidence nevertheless suffices to make out a prima facie case of non-use of the trade marks.  In that case the evidentiary onus passed to the opponent C&A to prove use of the trade marks in Australia during the relevant period.  It has failed to discharge that onus.

Conclusion

I have found that the applicant for removal, Toppy, is a person aggrieved in accordance with s23 of the Act and that it has made out a prima facie case of non-use of the trade marks which it seeks to remove.  In the absence of evidence in answer to that of Toppy I therefore find that Toppy has been successful in its applications.  I therefore direct that, subject to the opponent’s right of appeal from this decision, trade marks 372206 and 521146 be removed from the Register.

I award costs to the s23 applicant.

Michael Homann
Hearing Officer

4 April 1997