Tru Blu Beverages Pty Limited v TGLSC Holdings Pty Ltd

[2018] ATMO 107

TRADEMARKSACT 1995

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

Re:Opposition  by  Tru  Blu  Beverages  Pty  Limited  to  registration  of  trade  mark application 1610135(32) – BLU logo – in the name of TGLSC Holdings Pty Ltd.

DELEGATE:

Debrett Lyons

REPRESENTATION:

Opponent: Samuel J. Hallahan of Counsel, instructed by Wallington- Dummer, Patent & Trade Mark Attorneys

Applicant: not represented; no appearance

DECISION:

2018 ATMO 107

Trade MarksAct1995

s52 opposition to registration – s58 established; Applicant not the owner of the trade Mark; opposition successful and registration refused.

Background

1. On 18 March 2014 (‘the Filing Date’) Gillian Lee Cohen (‘Cohen’) made application under the Trade Marks Act 1995 (‘the Act’) for the registration of the trade mark shown below in class 32:

   (‘the Trade Mark’)

2. The Trade Mark was examined as mandated by section 31 of the Act and on 1 May 2014 a first examiner’s report raised a ground for rejecting the application under section 44 of the Act on the basis of certain earlier trade marks on the Register.

3. Of the several earlier trade marks cited by the examiner, only one1 remained of residual concern to the examiner during the course of examination and it was addressed to the examiner’s satisfaction by a declaration made by Cohen on 15 October 2015 (‘the Cohen Declaration’) asserting use of the Trade Mark since 2009.

1 Registration 1474439 with a priority date of 14 February 2012.

1. The Trade Mark was accepted for possible registration subject to an endorsement that the “[p]rovisions of paragraph 44(3)(b) an/or Reg 4.15A(3)(b) applied” and advertised as such on 24 March 2016 in the Australian Official Journal of Trade Marks for the following goods:

   Class 32: Aerated beverages (non-alcoholic); Alcohol free beverages; Beverages consisting of a blend of fruit and vegetable juices; Beverages containing not more than 1.15% (by volume) of alcohol; Beverages made from fruit concentrates; Edible essences for making beverages; Electrolyte replacement beverages for general and sports purposes; Essences for making beverages; Fruit beverages; Fruit concentrates for making beverages; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Isotonic beverages; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Non-alcoholic beverages; Non-alcoholic fruit juice beverages; Preparations for making beverages; Soya based beverages (not being dairy substitutes); Syrup for making beverages; Syrups for beverages; Aerated water; Bottled water (not for medical purposes); Carbonated water; Water for drinking (other than for medical purposes); Frozen fruit juices; Part frozen slush drinks

   (‘the Goods’)

2. On 24 May 2016, Tru Blu Beverages Pty Limited (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 24 June 2016, by a Statement of Grounds and Particulars (‘the SGP’).

1. On 26 July 2016, Cohen filed a Notice of Intention to Defend.

1. On 29 November 2017 the Trade Mark was recorded as having been assigned to TGLSC Holdings Pty Ltd (‘the Applicant’).

1. The Opponent filed Evidence in Support of its opposition, detailed shortly. There was no Evidence in Answer from the Applicant.

1. The parties were advised of their right to be heard or to make written submissions and on 27 December 2017 the Opponent asked to be heard and paid its hearing fee. There was no formal request to be heard from the Applicant and no hearing fee was paid.

1. A hearing was convened in Canberra on 22 June 2018 where the Opponent was represented by Mr. Samuel J. Hallahan of Counsel, instructed by Wallington-Dummer, Patent & Trade Mark  Attorneys.    In attendance  from that  firm  were Peter  Dummer  and  Jennifer  Song.

Following directions I gave prior to the hearing the Opponent had filed written submissions to which I will refer. The Applicant did not appear or file written submissions, nor was it represented in any other manner.

1. At the hearing the Opponent pressed grounds of opposition based on sections 42(b), 44, 58, 59 and 60 of the Act and having considered the written and oral submissions I will decide this matter under section 58 which concerns ownership of the Trade Mark.

Evidence

1. The Evidence in Support comprises the declarations of:

·Harris Spyrou made 22 August 2017, Marketing Manager for the Opponent; and

·Two declarations of Peter Chamberlayne Dummer, a Trade Mark Attorney with the Opponent’s representatives, both made 22 August 2017.

1. Of that material it is only one of the declarations made by Mr Dummer which touches on ownership and matters germane to section 58. For simplicity I will refer to information therefrom as coming from “the Dummer Declaration”. I add that, in part, the Opponent has also relied on certain material filed with the Cohen Declaration not resubmitted in the evidentiary stages of the opposition proceedings, but I indicated at the Hearing that in the circumstances I had no objection to reliance on that material which was already before the Office and of which the Applicant was fully aware.

Discussion

1. Section 58 of the Act provides:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. The guiding principles of law relevant in this case are these. For the purposes of section 58 the date at which ownership is to be determined is the Filing Date of the application.2    To

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 [14], [31]-[43].

succeed, the Opponent bears the onus of proof3 to show that on 18 March 2014 Cohen was not the owner of the Trade Mark. The Opponent need not positively identify who was the rightful owner of the Trade Mark at that time, only that on the balance of probabilities4 Cohen was not. Moreover, later assignment of the Trade Mark to a party which might have been the rightful owner is of no assistance since it is the named applicant at the Filing Date which is critical.5

1. Where, as here, there is evidence of use of the Trade Mark before the Filing Date the owner of the Trade Mark will be the person who first adopted and used the Trade Mark in Australia in relation to  the Goods.6 In the case of goods bearing the Trade Mark  manufactured overseas and distributed in Australia by another party, the general rule of law is that the overseas manufacturer uses the Trade Mark in Australia in relation to the relevant goods and is the owner.7

2. In relation to the section 58 ground of opposition, the SGP states that:

1. The evidence shows that on 14 September 2009 Cohen applied to register two logo-style marks, BLU Energy Drink, and BLU Your Mind, for class 32 goods.8 Those applications matured to registration. Cohen claims to have used both those marks and the Trade Mark since September 20099, but there is no evidence of use going back  to  that date. The registrations presently stand in the name of Blu Australia Pty Ltd (“Blu Australia”), the result of an assignment request made by Cohen contemporaneous with the request that the

3 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

4 Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

5 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, cited at footnote 2 above.
6 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432.

7 Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254, 271; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, [52]; Settef SpA v Riv Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 418.

8 Registrations 1320628 and 1320629 respectively.

9 Cohen Declaration [5].

Trade Mark be assigned to the Applicant. It is not clear from the evidence why the registrations went to one company and the present application went to another.

1. The Cohen Declaration references a trade mark licence agreement with Blu Australia10 but there is no evidence of the alleged agreement and the description is too vague to be of assistance to me.

1. Cohen declares that in August 2010, 650,000 cans of drink bearing the Trade Mark were imported into Australia. In support thereof is exhibited11 a pro-forma shipping invoice in Euros dated 4 May 2010 between Blu Drinks International 2009 Ltd (“Blu Drinks International”) and Blue Australia for 42,192 cans of “Blu Energy Cranberry 250 mls” and approximately 300,000 cans of “Blu Energy Drinks”. As part of the same exhibit is an import agent’s invoice dated 19 August 2010 for presumably the same consignment.  On that

   invoice the “supplier” is named as EKO VIT SP and the recorded voyage of the vessel was from Gdansk to Brisbane. There is evidence that Blu Australia subsequently sold those cans to retailers for sale in retail outlets in Australia.12

1. The Dummer Declaration states that “the Trade Mark relates to an energy drink product which my research indicates is manufactured and distributed by a Polish beverage maker, EKO-VIT Sp. Z.o.o.y (“Eko-Vit”).”13 My reading of the information available about that company is that it makes and sells non-alcoholic beverages under some of its own brand names but is primarily set up to produce soft drinks to order. Finally, there is evidence that Blu Drinks International is an Israeli company in the drinks business.

1. Together with other evidence, including proof of ownership of registrations for the Trade Mark in other jurisdictions, the inference which can be reasonably drawn is that Blu Drinks International is at the centre of an international business in the Goods bearing the Trade Mark which are produced and distributed under order by Eko-Vit in Poland.

10 Id.

11 Ex. D1.
12 Cohen Declaration, Ex. G1, H1.

13 Dummer Declaration [12]; Ex. PCD-3.

1. The  Opponent’s  written  submissions14   are  worth  reproducing  at  length  since  in  my assessment they accurately state the law and asses the evidence:

On no reasonable view of the evidence can it be concluded that Ms Cohen was the owner of the BLU Trade Mark on the priority date (or at any other time).

The evidence indicates that the manufacture and distribution arrangements for the products that have been sold in Australia under or by reference to the BLU Trade Mark (BLU Products) are as follows:

(a)      The BLU Products are manufactured by a Polish company called Eko-Vit.

(b)      The BLU Products are (or at least were, in 2010, when the Blu Products were first imported into and sold in Australia) distributed by Blu Drinks International. …

(c)      The BLU Products are imported into Australia by Blu Australia.

(d)      The BLU Products are sold by Blu Australia, as wholesaler, to retailers in Australia.

Cohen is completely absent in the manufacture, importation, distribution and sale of the BLU Products. [The Applicant] is also completely absent from that picture (however, as discussed below, the position of an assignee to an assignment purportedly made after the priority date is irrelevant to the question of ownership of the trade mark as at the priority date).

There is no evidence of any relationship (i.e. ownership, directorship, or otherwise) between Cohen and … Eko-Vit [or] Blu Drinks International, ….

There is no evidence of any relationship (i.e. parent/subsidiary, or otherwise) between Blu Australia and … Eko-Vit [or] Blu Drinks International, ….

There is no evidence of any relationship (i.e. ownership, directorship, or otherwise) between Cohen and Blu Australia.

On the basis of that evidence, it is apparent that either Eko-Vit or Blu Drinks International (e.g. if it were the case that Eko-Vit is a contract manufacturer producing the Blu Products on behalf of Blu Drinks International) is the owner of the BLU Trade Mark.

This conclusion  is  supported by reference to the decision  in Settef15,  where the  overseas

manufacturer of the relevant goods was found to have become the owner of the trade mark through the sale of products to its Australian distributor and the subsequent promotion and distribution of those products by the distributor in Australia. On the issue of ownership, McGarvie J said (at 418, emphasis added):

14 Redacted for brevity in some places.

15 See footnote 6 above.

I consider that in the course of the transactions which followed Mr Ferraro's visit to Italy in 1967 Settef used its trade mark in Australia.

Between late 1967 and the middle of 1968 Settef sold to the defendant two consignments of granular marble which it sent to the defendant in Melbourne in drums marked “Riv- Oland”. Over the period Settef also provided the defendant with brochures and samples which referred to the materials as “Riv-Oland”. From early 1968 to at least late 1968 the defendant used the brochures and samples to promote sales of the material and sold the material and applied it in the course of its building business under the name “Riv- Oland”.

In this way Settef used its trade mark in Australia. In the words of the Full High Court in The Estex case (1967) 116 CLR 254 at 271: “When an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. Indeed, in this case, the respondent is the only person with a right to use the mark and the dealer to whom the goods have been sold for resale does not in the relevant sense use it”.

See also per Windeyer J in the same case at 268 and The Seven Up Co v O T Ltd (1947) 75 CLR 203 at 208–11.

I accept Mr Forsyth's submission that property in the materials sold to the defendant passed to it from Settef in Italy. The materials were sold under FOB contracts. There is no inconsistency between this and the conclusion that Settef used the trade mark in Australia: see the Estex case, supra, at 266–9 (Windeyer J) and 271–2 (Full Court).

It follows that in late 1968 Settef was at common law the proprietor of the trade mark RIV-OLAND in Australia and the defendant had not in the relevant sense used the mark and had no proprietary right to it.

The conclusion that all subsequent sales of BLU Products by retailers in Australia constituted use of the BLU Trade Mark by Eko-Vit or Blu Drinks International is also supported by the decision in E&J Gallo, where sales of bottles of wine in a bottle shop in Australia was found to involve use of the trade mark by person who produced the wine overseas and sold it to a distributor overseas (notwithstanding that that person was unaware that the wine was subsequently sold in Australia), as the trade mark continued to function as a badge of origin for

that person while the bottles of wine remained in the course of trade in Australia.16

Accordingly, either Eko-Vit or Blu Drinks International has been the owner of the BLU Trade Mark since the time that the BLU Products were first imported into and sold in Australia. It follows that Cohen was not the owner of the BLU Trade Mark when she filed the Application. The defect created in the Application by it being filed in Ms Cohen’s name when she clearly has no basis for a claim to ownership of the BLU Trade Mark is a defect that is incapable of being rectified, because ownership of the trade mark must be determined as at the priority date. The strictness of this principle is demonstrated in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379. In that case, the trade mark application was filed in the name of the director of a company, but it was in fact the company that had used and would continue to use the trade mark. The application was therefore successfully opposed under section 58, and the applicant’s attempts to “save” the application by purporting to assign the trade mark to the company were found by the Full Court to have been in vain, because the director was not the owner when he filed the application and nothing could change that fact.17

1. My decision is not made easier because the Applicant has not responded to the case made against it. However, my findings relevant to ownership are that there is no evidence of any connection between Cohen and the Trade Mark other than her act of application. Nor, so far as it matters, is there any legal connection between Cohen and the Applicant, a company with a lone director and shareholder – Yoram Cohen, perhaps a family member, but immaterial – which itself has no shown connection with the Trade Mark. As already stated, it is the Opponent which bears the onus of proof but under section 58 it is not required to conclusively prove the identity of the actual owner of the Trade Mark. Weighing the evidence I find that the Opponent has done all that is required of it – show on the balance of probability that the Applicant was not the owner of the Trade Mark.

1. I find that the section 58 ground has been established.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

16 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [50]-[52].

17 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 at [44]-[45].

(b)    to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. For the reasons given I refuse to register the Trade Mark.

Costs

1. The Opponent requested costs in the event that the opposition to registration was established. As the Applicant was the unsuccessful party it is appropriate that costs be awarded against it at the Official Scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Debrett Lyons Hearing Officer

Trade Marks Hearings 5 July 2018