Truline (Australia) Pty Ltd v Malcolm Walter Atwell

[1998] ATMO 48

TRADE MARKS ACT 1955

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

Re:Opposition by MALCOLM WALTER ATWELL to an application under section 23 of the Trade Marks Act 1955 by TRULINE (AUSTRALIA) PTY LTD to remove, on the grounds of non-use, trade mark registration number 508240 from the Register

As set down in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act1955 continue to govern these proceedings.  Accordingly, unless otherwise specified, the authority I refer to is the 1955 Act.

Background

On 10 September 1993, TRULINE (AUSTRALIA) PTY LTD (the applicant) lodged an application under s.23 of the Trade Marks Act 1955 to remove trade mark registration number 508240 from the Register.  MALCOLM WALTER ATWELL (the opponent) opposed the application for removal on 14 August 1997.  The mark comprises the following:

and is registered for the statement of goods “All goods in this class including, dart boards, and tables including pool tables, snooker tables and billiard tables, and parts and accessories for all of the aforementioned goods” in Class 28.

The applicant relied upon the grounds, under paragraph 23(1)(a) and (b) of the Act, that the applicant for registration of the mark had registered it without an intention to use it in good faith in Australia on the goods in the specification; that the registered proprietor or a registered user had not used it in good faith; and also that, up to one month before the date of the application, 10 September 1993, a period of three years had elapsed during which the mark had not been used by the proprietor or registered user in relation to those goods.  Hence, the critical period of alleged non-use was from 10 August 1990 to 10 August 1993.

The opponent countered these assertions in his notice of opposition to removal, by submitting that the mark had not, in fact, been registered without an intention to use it in good faith in Australia on the goods included in the specification and that there had been use in good faith by the proprietor or a registered user.  He also said that, up to one month before the date of the s.23 application, a period of three years had not elapsed during which time the 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 by the registered proprietor or a registered user.  He further said that, as the mark had been used in Australia during the critical period, then it would be wrong to cancel the registration.  He said that it would be against the public interest in any event, as such a cancellation would lead to deception and confusion given the large reputation enjoyed by the registered proprietor.  He concluded by submitting that, in all of the circumstances, the Registrar should exercise his discretion to refuse the s.23 application.

The evidence

The applicant lodged evidence in support in the matter.  This comprised a statutory declaration by Mark A Wakeham, dated 25 August 1997 (the first Wakeham declaration).  In this declaration, Mr Wakeham said that he had commissioned market research into use of the subject mark by Malcolm Walter Atwell and he attached a letter from Moutsias Management Services Pty Ltd, dated 8 April 1997, as an exhibit.  Mr Moutsias listed, in that letter, inquiries which he said he had made in Western Australia, Victoria and New South Wales, and which he said did not reveal use of the trade mark.

The opponent’s evidence in answer comprised a declaration by Malcolm Walter Atwell, dated 24 November 1997.  Mr Atwell, the registered proprietor of the trade mark in question, declared that the mark had been used during the period 10 August 1990 to 10 August 1993 on "a wide range of sporting goods including pool tables, billiard tables, snooker tables, equipment for playing pool, billiards and snooker, dart boards and golf balls and other goods".  He gave details of various methods for promoting these goods and sales figures for "TRUELINE products" during the critical period.

The applicant's evidence in reply comprised a further declaration by Mr Wakeham (the second Wakeham declaration), this time dated 3 December 1997, which covered another letter and other material from Moutsias Management Services Pty Ltd dated 28 February 1997.  This letter listed inquiries made regarding use of the mark by the Mal Atwell Leisure Group.  The additional material included copies of certain Perth Yellow Pages of 1990, 1994, 1996 and 1997.

The applicant subsequently sought a hearing and the matter came before me, as the Registrar’s delegate, in Canberra on 12 August 1998.  Both parties elected to make representations on the telephone.  Mr Gary Nock of Carter Smith & Beadle represented the applicant.  Appearing for the opponent was Mr Kelvin Lord of Lord & Company.

Submissions

At the hearing, both attorneys made extensive submissions in the matter.  I have attempted to summarise here what I believe to be the main points raised.

Mr Nock, for the applicant, said that there was a long history of disputation between the parties.  He said that the present mark had been initially cited by an examiner against his client's own application for registration for the trade mark, TRULINE in class 28.  However, once the objection had been overcome to the Office's satisfaction, the opponent here had launched opposition to the registration of TRULINE.  Again, this matter had been resolved to the Registrar's satisfaction.  Despite this, more correspondence in the long running dispute between the parties had then been exchanged.  From all of this, Mr Nock said that the applicant was a "person aggrieved", as contemplated by the Act.

Mr Nock said that the present registration covered a statement of goods which opened with the words, "All goods in this class…".  This statement covered a wide range of goods and listed some items included in Class 28 which, he said, were quite diverse.  He said that it was difficult to envisage any trader selling all of these goods under a single trade mark registration.  He said that it was true that the onus, under s.23, was on the applicant for removal to prove its assertions of an absence of use in good faith,  However, it was important to note that, as had been found in the case of Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited (1967) 116 CLR 254, "(s)light evidence may suffice at this stage…," to move the onus to the opponent, as the registered proprietor of a mark was in a better position to show that it had used the mark than an applicant for removal who had to establish non-use. Mr Nock then submitted that the evidence provided by the applicant was sufficient to meet this criterion. He said that it had consequently established a prima facie case of non-use by the proprietor of the, "vast majority of the goods covered by the registration" during the critical period.

Mr Nock then went on to discuss the applicant's evidence in support, referring to the first Wakeham declaration of 25 August 1997.  Exhibited to this declaration was a report, said to be market research carried out by Moutsias Management Services Pty Ltd into whether there had been any use of the subject mark by the proprietor.  He discussed the report in detail, saying that it could be inferred from it that no use had taken place on the wide range of goods covered by the registration, save snooker and pool tables and associated equipment.  However, even that alleged use was unclear and unsubstantiated.  Mr Nock said that the evidence in answer did not establish the extent of sales of products by the proprietor during the critical period.  He further discussed the other investigations made by Mr Moutsias regarding the alleged use, or otherwise, of the mark by the registered proprietor, the report of which was included as an exhibit to the second Wakeham declaration dated 3 December 1997.  Mr Nock said that, although Mr Moutsias had found some relationship between the opponent and the Mal Atwell Leisure Group, this latter entity apparently only dealt in pool and snooker tables.  He said that, in any case, these inquiries had not conclusively shown any use on the goods in the specification by the registered proprietor and that no use at all had been found for the wider range of goods claimed.

Mr Nock said that, although it could be alleged that the evidence of non-use was slight and could be described as hearsay, there was ample Office precedent for successful removal action on this basis, citing for support the Office decision in Major League Baseball Properties, Inc vs Murray (1996)AIPC ¶91-235.  He said that, in the present case, the evidence presented was even more compelling.  He submitted that a prima facie case had therefore been established.  He said that the evidence submitted in answer, which attempted to show use, was seriously flawed for a number of reasons.  These included that the evidence did not give any details of the products sold, or give details of sales of the goods for which the mark was registered.  Thus, he said, the mark should be removed for all of the goods for which it was registered or, at the very least, restricted to pool and billiard tables and the like.

Mr Nock said that s.23 of the Act allowed the Registrar to exercise his discretion in removing trade marks or in allowing them to remain on the Register.  He said that such a discretion should be exercised in favour of removal in cases where the public interest would be best served by such an action.  He looked for support here to the words of McLelland J. in Ritz Hotel Ltd v Charles of the Ritz & Anor (1988) 12 IPR 417 at 418. He said that, in the present case, "all goods" in Class 28 were claimed as being part of the specification and although the present application to remove had been made under the Trade Marks Act 1955, the Trade Marks Act 1995 did not allow such a wide range of goods.  Mr Nock submitted that Parliament had clearly stated in the later Act that it was in the public interest to preclude such claims.  He said that, in cases such as the present, this interest would further be served by not allowing such statements of goods to remain on the Register if the validity of the registrations were challenged.  He said that it followed that the Registrar should exercise his discretion here in favour of the removal applicant to, at the very least, remove the expression, "all goods in class 28" from the present statement of goods.

Mr Nock added that, as the applicant's evidence showed that the registered proprietor had not used the trade mark on all goods in class 28 for a period of approximately four years and four months from the filing date of 7 April 1989 to 10 August 1993, then it showed that the original application for registration was made without a bona fide intention to use the mark on all the goods for which it was registered.

He submitted that the applicant should be awarded its costs if I decided to remove the mark for all of the goods for which it was registered, and that this should also be the case if I found that the goods covered by the registration should be restricted to those for which the applicant had claimed some use.

In his submissions in reply, Mr Lord conceded that the parties had been in dispute for a considerable time and that correspondence had taken place between the parties which could well lead to a conclusion that the applicant could, in terms of s.23, be considered as a "person aggrieved".

He said that the present application had been made under the Trade Marks Act 1955.  Under this Act, he said, the onus was squarely on the applicant for removal to prove its case.  He cited for support here the words of Justice Windeyer in the judgment in Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited, supra.  Mr Lord said that the applicant here had not discharged its onus to show non-use, its evidence falling far short of even a prima facie case of non-use sufficient to shift the onus to the opponent.  He said that there were many defects in the applicant’s evidence.  This material, he said, only consisted of the Wakeham declarations and exhibits.  These declarations had been made by a patent attorney with no knowledge of the trade and covered letters from a Mr Moutsias whose reported investigations were insufficient to show use.  Thus, the present instance could be distinguished from the case of Major League Baseball Properties, Inc vs Murray, supra, where the person making the inquiries was knowledgable in the trade.  He said that Mr Moutsias, as the person making the inquiries, should have been the one to put his findings in a declaration.  Instead, his reports were vague, imprecise and did not cover fully the critical period of alleged non-use.  Mr Lord said that a so-called market survey conducted by Mr Moutsias should be totally disregarded because it had only been made by telephone, did not properly identify respondents and any supposed comments by them were vague.  Additionally, no details had been given on the method of respondents' selection or expertise, and there had been no proper reference to the critical period.  He said that mention had been made by Mr Moutsias of a Mr Rankin's alleged involvement in the matter and attributed statements to him regarding use of the trade mark.  However, nothing had been shown as to Mr Rankin's position, his relationship to the opponent, or his knowledge of the mark during the statutory period.

Mr Lord said that, in fact, the only thing that the applicant's evidence did show was that the mark had certainly been used on pool and billiard tables and the like, and that it did nothing to show any lack of use on any particular goods during the relevant period.  He said that, in contrast, the evidence in answer comprising the declaration of Mr Atwell, fully addressed the period of alleged non-use, gave sales figures of goods under the mark, and had clearly asserted that use had taken place during the period in question.  This use, he said, had not only been on the pool and billiard tables, but also on other goods included in the specification.  Mr Lord said further that the applicant's evidence in reply was not in response to the evidence in answer and included new information which must have been available earlier than the time of the service of the evidence in support.  The opponent had not had the chance to answer such material and it was therefore not admissible.  He said that, in any case, the evidence in reply also suffered the deficiencies previously referred to as being present in the evidence in support.

Mr Lord submitted that the Registrar should not exercise his discretion to remove the trade mark for non-use unless the evidence clearly showed such to be the case.  He said that any suggestion that the mark should be removed for some of the goods because the current legislation did not allow claims of "all goods" was not tenable.  He said that the present application for removal had been made under the Trade Marks Act1955 and that any decision made here should be on the basis of that Act.  In any case, removal of the wider claim would be inequitable given the vast number of registrations including "all goods" currently on the Register.  He said that there was no suggestion whatsoever that the mark had been registered in anything but good faith.

Mr Lord concluded his submissions by seeking costs in the matter in favour of the opponent, should I find that the goods of the registration be left intact.  However, should I find that the goods covered by the specification be restricted in some way, then he requested that each party should bear its own costs.

Discussion

Section 23 of the Act reads:

23. (1) Subject to this section and to section 93, a prescribed court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered, on the ground:

(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.

Person aggrieved

The threshold question, which needs to be resolved in a matter of an application under s.23 for removal of a registered mark, is whether the applicant is a “person aggrieved” in terms of that section of the Act.  Standing as an aggrieved person has been found by Justice McLelland in Ritz Hotel Ltd v Charles of the Ritz Ltd, supra, at 454, to 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 this 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.

The applicant here was the applicant for registration of trade mark number 611542. An Examiner of Trade Marks cited the present registration under s.33 of the Act as a bar to registration. However, that citation was subsequently overcome and the mark was accepted on 27 September 1994. Notwithstanding this, the opponent here had then opposed registration of that mark. The opposition was dismissed by the Registrar's delegate and it was subsequently registered. As Mr Nock described and Mr Lord concurred, there is also a history of correspondence between the parties regarding the use, or otherwise, of the respective marks. I am also aware that the expression, “person aggrieved” for the purposes of s.23(1) of the Act has no special or technical meaning and is to be liberally construed - Kraft Foods v Gaines Pet Foods, 31 IPR 439; 34 IPR 198. Given the combination of these factors, I am willing to accept that the applicant has demonstrated at least, “a reasonable possibility of being appreciably disadvantaged in a legal or practical sense...,” by the mark remaining on the Register - Kraft Foods v Gaines Pet Foods, supra, and Ritz case, supra.  I therefore find that the applicant was a person aggrieved as at the time of applying for the present mark’s removal and was, accordingly, a proper applicant under the provisions of s.23.

Having so found, I move on to consider the onus on the parties in dispute.

Onus

As both Mr Nock and Mr Lord agreed, it is well established that, under the Trade Marks Act1955, the onus of proof of the non-use of a trade mark rests with the applicant for removal.  In this respect, I refer to the Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited case, supra, at 258 and 259:

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?

This means that, whilst the prima facie case put by the applicant for removal does not need to be extensive, it must be convincing enough for the matter to proceed.  However, if the applicant does succeed in establishing a prima-facie case of non-use, the onus in the matter shifts to the opponent to demonstrate that it has used its mark on the appropriate goods during the specified period, or that there are grounds for the favourable exercise of the Registrar’s discretion under s.23.

The prima facie case

The applicant’s prima-facie case in this matter depends entirely on an investigator’s report, dated 8 April 1997, lodged under cover of the first Wakeham declaration as part of the evidence in support.  That investigator, Mr Moutsias, appears from this letter to be a principal of Moutsias Management Services Pty Ltd, described on its letterhead as "Research Consultants".  No details are given in that letter as to what experience Mr Moutsias has had in such matters, or about the nature of his brief.  He does refer to an earlier report from his firm, dated 28 February 1997, which I am aware is attached as an exhibit to the second Wakeham declaration filed as evidence in reply.  There he does give some details of his assignment although, again, nothing is said about his competence or experience in this field.  Notwithstanding this, whilst I might have some reference to the evidence in reply in assessing the full merits of the applicant's case - providing the opponent is not denied natural justice - my main concern, in assessing the applicant's prima facie case, is the evidence in support.  Mr Moutsias' report gave brief summaries of inquiries which he said he had made in Western Australia, Victoria and New South Wales.  He also referred to inquiries allegedly made in relation to Trueline Billiards, B & K Amusements, and Mal Atwell Leisure Group.  At the end of his letter there was an N.B. (sic).  This was in the form of a P.S. to the letter and actually seemed to confirm some use of the mark "TRUELINE" on pool tables.  Attached was a "Market Survey" which listed what were said to be telephone inquiries made to various stores in Melbourne, Sydney and Perth.  In all of this, not one mention was made of the critical period that non-use was alleged under s.23.

The four inquiries made in Perth, which were listed in the Market Survey, elicited no responses at all in relation to the alleged non-use of the mark.  I find it hard to understand why the record of these calls was included in the evidence.  It appears to show nothing other than the lack of success of the investigator in contacting anyone at all in Western Australia in relation to use of the mark on sporting equipment.  The listings of telephone contacts made in Melbourne and Sydney only revealed one respondent's surname in 13 calls.  Of the 12 others, two were to answering machines and the remainder listed respondents who were only identified by their given names, and as male or female.  There were no details given of the questions asked, the respondents' experience, including how long they had worked in the trade or their position in their firms, or to the time-frame under consideration.  The reported answers were vague and many of them seemed concerned with the use of the mark TRULINE - not the mark in question.

It would have been much more helpful if several independent people in the trade had been prepared to declare as to their lack of knowledge of the mark.  It also might have carried more weight if Mr Moutsias had made a declaration himself giving an account of the questions he had asked, the full names of respondents with experience and positions listed, whether these respondents were made aware of the actual mark in question and also the period of alleged non-use.  His present "Market Survey" is, as I have said, less than helpful in allowing me to come to a conclusion regarding the allegations of non-use.

I am quite aware that the rules regarding evidence in such matters are not as strict as in a court of law and that the applicant has the difficult task of proving a negative.  Mr Nock drew my attention to the Office decision, Major League Baseball Properties, Inc vs Murray, supra, saying that was precedent which I should follow.  He said that, in that decision, the Registrar's delegate accepted similar evidence as being sufficient to shift the onus to the registered proprietor to show use.  However, I am not satisfied that the information assembled here is sufficiently on par with that case to shift the onus to the opponent to demonstrate use of its mark for the subject goods during the s.23 period.  In the Major League Baseball case, the delegate found that the declaration relied upon in the evidence in support, "just (my emphasis) meets the slight evidence required to shift onus…".  The declarant there was the person who had made the inquiries, while here there is only a letter from Mr Moutsias, albeit under cover of another person's declaration, which contains details of the investigations made.  Mr Wakeham does not even say in that declaration that he believes the report to be true, only that he commissioned the research and that the results were attached.  Additionally, Mr Moutsias' credentials, which might allow me to assess his competence to make such inquiries, are missing.  Also, the delegate in the Major League Baseball case was satisfied that the declarant had contacted people with knowledge in the trade.  In the present instance, I cannot accept that unidentified people who might answer the telephone in a sporting store, and whose position and experience are unstated, could be described as people with "knowledge of the trade".  Additionally, the evidence in the Major League Baseball case revealed that the declarant had made other investigations beside telephone calls to likely outlets.  In contrast, Mr Moutsias' letter, which is virtually the entire of the evidence in support, merely lists 17 phone calls to sporting outlets - four of which were to answering machines - which, as I have previously said, were unsatisfactory in showing non-use.  Given the foregoing, I am prepared to give very little weight to the so-called Market Survey contained in the evidence in support.

For the sake of completeness, I have had some regard to the material contained in the evidence in reply - being mindful of the opponent's rights in the matter in not having been able to answer such evidence.  Here, the second Wakeham declaration covers another letter from Mr Moutsias which is dated before that which was included in the evidence in support and I find it difficult to accept that it is intended to be in response to the evidence in answer.  It would appear that this material should more properly have been included in the evidence in support.  However, even after a reading of that letter I am led to conclude that it suffers the same shortcomings as that in the evidence in support.  It reveals that inquiries were made regarding the Mal Atwell Leisure Group and also about general use of the trade mark TRUELINE.  It can be inferred from all of this that some use had occurred of the word TRUELINE, at least in relation to pool tables and accessories.  This is further supported by annexed copies of entries in the Perth Yellow Pages over four years, albeit only one of which was within the critical period.  The majority of respondents in the "Market Survey" were not even identified by their given names and the entire exercise does not appear to show anything conclusive about the non-use of the mark in question, on any goods, during the critical period.  I give all of the material in the evidence in reply no weight at all.

In light of Justice Windeyer’s directives in the Estex case, supra, I do not consider that the applicant has even met the basic requirement of showing, through evidence, a prima facie case.  I am not prepared to hold that the first Moutsias' report in the evidence in support is sufficient to be considered as even the slightest evidence required to shift the onus to the opponent.  The evidence in reply provided no further support to uphold a case of non-use.  There was, additionally, no evidence to support the applicant's ground that the proprietor had registered it without an intention to use it in good faith in Australia on the goods included in the specification.

With respect to Mr Nock's submission that, as an alternative to removing the mark for all of the goods, then I should exercise the Registrar's discretion to remove the words, "All goods in this class…" from the statement of goods contained in the specification - leaving only what he regards as the goods of interest, I refuse to follow such a course. As I have said, the applicant's prima facie evidence falls far short of what is required in showing the non-use of the mark on anything. A case backed up by more compelling evidence might have allowed me to find that the mark should be restricted to whatever goods the opponent could point to as having been used in relation to the mark during the s.23 period. However, the mark was registered under the 1955 legislation, when such a claim as all goods in a particular class was allowable. Also, the present application to remove it was made under s.23 of that legislation and I am simply not prepared to find that, merely because the Trade Marks Act 1995 follows a different line, then I should make a retrospective ruling based on the later Act.  It would seem unfair to the present proprietor to the extreme, given the number of other marks on the Register for "all goods" in a particular class which had been registered under the Trade Marks Act 1955, that I should restrict the goods merely because it was under a challenge which was as flawed as the present one.  Additionally, it has not been shown to me here that the public interest would best be served by any narrowing the goods claimed in the specification.

Decision

I therefore find that the prima facie case for removal has not been made out and that, with its evidence complete, the removal applicant has still not established a case to be answered.  Hence, there is no requirement for me to consider the opponent’s case.  Accordingly, I refuse this application to remove trade mark 508240 for any or all of the goods for which it is registered.

Both sides sought costs in the matter and I believe that, in the circumstances, they must follow the cause.  I therefore award them to the opponent.

Ian Forno

Hearing Officer

22 October 1998