Unilever Australia Limited/and Jointly by Unlilever Australia Limited and Unilever Plc. v the Protor and Gamble Company
[2014] ATMO 8
•29 January 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions (1) by Unilever Australia Limited and (2) jointly by Unilever Australia Limited and Unilever plc to registration of trade mark applications 1442728 (3) - PODS and 1449301 (3, 11) - POWER PODS (STYLISED) – respectively, both filed in the name of The Proctor & Gamble Company
Delegate: | Cristy Condon |
Representation: | Opponent(s): Phoebe Arcus of Counsel, instructed by Brian Elkington of Adams Pluck, Patent & Trade Mark Attorneys Applicant: Malcolm Bell of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys 2014 ATMO 8 |
Decision: | Section 52 opposition: ss 41 and 59 pursued – neither ground established – application to proceed to registration. Costs: Costs awarded against the Opponent |
Background
This is an opposition brought by (1) by Unilever Australia Limited and (2) jointly by Unilever Australia Limited and Unilever plc. As nothing turns on the issue I will for simplicity refer hereafter to both the first opponent and the second (joint) opponents collectively as ‘the opponent’. Pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) the opponents are opposing the registration of the trade marks PODS and POWER PODS (stylised) (hereafter ‘the Trade Marks’) subject of application numbers 1442728 and 1449301 respectively in the name of The Proctor & Gamble Company (‘the applicant’).
The details of these applications are:
1442728 PODS
Class: 3 Laundry stain removers; laundry detergents
This application (‘the PODS trade mark’) was lodged on 19 August 2011 but claims a convention priority date of 7 March 2011.
1449301
Class: 3
Laundry stain removers; laundry detergents
Class: 11Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
This application (‘the POWER PODS trade mark’) was lodged on 16 September 2011 but claims a convention priority date of 9 June 2011.
Notices of Opposition to applications 1442728 and 1449301 (‘the Notices’) were filed on 16 September 2011 and 10 February 2012 respectively, following which the parties served and filed evidence.
The matter was set down for hearing on 22 October 2013 in Canberra. As a delegate of the Registrar of Trade Marks I heard oral submissions that day from the parties’ representatives. The opponent was represented by Phoebe Arcus of Counsel, instructed by Brian Elkington, a Trade Mark Attorney in the employ of Adams Pluck Patent & Trade Mark Attorneys. The applicant was represented by Malcolm Bell, Patent & Trade Mark Attorney and partner of the legal firm Phillips Ormonde Fitzpatrick. Prior to the hearing both parties also filed and served written submissions.
Discussion
The Notices list a number of grounds of opposition but the opponent only pressed those grounds dependent on sections 41 and 59 of the Act. I treat the remaining grounds listed in the Notices as abandoned. However, should the matter be appealed it is open to the opponent to plead any ground it sees fit.
In order to succeed the opponent bears the onus of establishing at least one of the grounds pressed on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13].
The relevant date in terms of the section 41 and section 59 grounds for opposition are the respective filing dates of each application, which are 19 August 2011 for application 1442728 and 16 September 2011 for application 1449301. I note paragraph 4 of the opponent’s written submissions states:
The grounds of opposition are to be judged as at the priority date as defined by the Act: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 (my emphasis)
In the above case, Kitto J in fact said at 595 (following Romer J in re Jellinek's Application (1946) 63 RPC 59, at 78):
In applications for registration, the rights of the parties are to be determined as at the date of the application.
The words “priority date” or “convention date” are not mentioned by his honour. To clarify, convention applications give earlier priority but do not change the filing date. Only divisional applications are able to claim the filing date of the parent application as their own. I also note that his honors comments in this decision were primarily concerned with the notion of deception and confusion in regard to section 44. The matter before me is concerned with section 41 and section 59 where the relevant date, pursuant to the Act, is the filing date, that is, the lodgment date of each application.
That being said, the relevant dates for the Trade Marks are 19 August 2011 (1442728) and 16 September 2011 (1449301).
The Evidence
The evidence submitted by each party applies to both of the Trade Marks. A summary of this evidence is below:
The opponent’s Evidence in Support
(a)declaration of Lana Taylor of 16 March 2012 (‘the first Taylor declaration’);
(b)declaration of Lana Taylor of 15 June 2012 (‘the second Taylor declaration’);
(c)declaration of Brian Elkington of 16 March 2012 (‘the first Elkington declaration’);
(d)declaration of Brian Elkington of 18 June 2012 (‘the second Elkington declaration’);
(e)declaration of Margo Cashman of 18 June 2012 (‘the Cashman declaration’).
The applicant’s evidence:
(a)declaration of Malcolm Bell of 16 April 2013 (‘the first Bell declaration’)
(b)declaration of Malcolm Bell of 5 September 2013 (‘the second Bell declaration’).
The opponent’s Evidence in Reply:
(a)declaration of Brian Elkington of 18 June 2013 (‘the third Elkington declaration’).
The Opponent’s Evidence
In support of the opponent’s case, Lana Taylor has provided two declarations. Ms Taylor is in the employ of the opponent as a marketing manager of OMO branded products.
The first Taylor declaration describes the opponent’s first use of the term ‘pods’ as dating from August 2011. ’Pods’ appeared on a new OMO branded product. Prior to this time the opponent’s various laundry detergent products were not referred to as ‘pods’ but as ‘capsules’.
Ms Taylor also describes an internal marketing research study conducted by third party market research agency Bread & Butter Pty Ltd. This is dated November 2010. According to Ms Taylor the study shows that Australian consumers preferred the words ‘pods’ or ‘wash pods’ as descriptors for small individual single dose laundry liquid sachets to the term ‘capsules’. The 2010 study is in Annexure A to the first Taylor declaration and is relied on heavily to discharge the onus under both grounds for opposition.
The second Taylor declaration describes Ms Taylor’s background and the basis of her knowledge of the Australian laundry detergent products market, as well as including various advertising and promotional material[2].
[2] See Exhibit A and Annexures LT-5 to LT-11 to the second Taylor declaration.
Most importantly I note that the opponent’s central argument under both grounds is that the word ‘pods’ is used descriptively by the opponent (and not as a badge of origin). Some of its products are: ‘OMO sensitive pods’, ‘OMO alpine fresh pods’ and ‘OMO active clean pods’. The opponent’s SURF brand also used the word ‘pod’ in relation to SURF liquid unit dose products. These are said to have been available on supermarket shelves from August 2011. (No specific date in August is mentioned.)
Ms Taylor states in her second declaration at [19]:
As set out in paragraphs 9 and 10 of my first declaration, from about August 2011 to December 2011, OMO conducted a nationwide advertising campaign describing the OMO liquid unit dose products as ‘pods’ in the advertising and promotion materials.
The second Taylor declaration further states that the opponent’s United Kingdom PERSIL brand was using the word ‘pods’ as a description in relation to laundry detergents. Ms Taylor describes the background to unit dosage liquid detergent products and she deposes that from August 2011 the opponent has used the word ‘pods’ in relation to the OMO branded liquid unit dose products. The opponent also claims that third parties use the word ‘pods’ to refer to OMO liquid unit dose products,[3] and that a third party uses the word ‘pods’ on the packaging of its GRAB GREEN branded laundry detergents.[4] There is nothing in evidence to show that this product was available for sale in Australia.
[3] See and ‘Today Tonight’ television programme found in the second Taylor declaration at [53]-[56], Annexures LT-17 to LT-19.
[4] See the second Elkington declaration, Annexures A, B and C.
In addition to Ms Taylor, Mr Brian Elkington and Ms Margo Cashman have also provided declarations in support of the opponent’s case.
Attached to the first Elkington declaration (in Annexures A and B) the opponent provides copies of websites showing use of the word ‘pods’ as a descriptor for relevant goods and a copy of search results obtained through the Australian Trade Mark Online Search System (“ATMOSS”) extracting trade marks currently on the Register that include or comprise the word ‘pod’ in various classes.
Attached to the third Elkington declaration are copies of media releases from the Australian Competition & Consumer Commission which relate to the safety of single unit dose laundry detergents and of an announcement by Australian tea company Dilmah regarding its launch of a new product described as “a tea pod”, which will be available for sale from July 2013.[5]
[5] See Annexures A, B and C attached to the third Elkington declaration.
Margo Cashman is a partner and director of a market research agency named Bread & Butter Pty Ltd. This Agency prepared the 2010 marketing study referred to above and the Cashman declaration attests to how the research was conducted and its results. The final report to the opponent is annexed to the Cashman declaration.
The Applicant’s Evidence
Mr Malcolm Bell is a Patent and Trade Mark Attorney and partner of Phillips Ormond Fitzpatrick and is representing the applicant. He has submitted and filed two declarations in support of the applicant’s case.
In the first Bell declaration, Mr Bell discusses the results of various ATMOSS searches for trade marks which contain synonyms of the word ‘pod’, including ‘capsule’, ‘sphere’ and ‘cocoon’.[6] In addition Mr Bell states:
I am informed by Proctor & Gamble and believe that it has secured registration for the “PODS” trade mark in a number of countries around the world.
[6] See the first Bell declaration at [2] to [16] and Annexures MNB-1 to MNB-26.
He includes a table in his first declaration which details a number of countries around the world that have registered the applicant’s PODS trade mark for Class 3 goods.
In the second Bell declaration, Mr Bell contests the evidence that the opponent’s United Kingdom PERSIL brand was using the word ‘pods’ in relation to laundry detergents. Annexure MNB-23 consists of copies of the web pages Mr Bell viewed and downloaded from the persil.co.uk website. He also provides copies of the applicant’s two patent applications which relate to water soluble packages containing laundry detergent, and he annexes copies of pages from Dilmah Tea websites. In regard to these he says:
Upon receiving the Evidence in Reply I carried out an internet search for Dilmah. That search brought up a Wikipedia page for Dilmah and two company websites and The Wikipedia page refers to the launch of “tea caps” by Dilmah in June 2013. That statement is supported by two other website references. These pages indicate that product to be launched by Dilmah is not called “tea pods” but rather “tea caps” or “tea capsules”. A subsequent search of the Dilmah website revealed the offer for sale of a Dilmah “tea capsules” product.
…
Upon receipt of the Evidence in Reply I visited a local supermarket to see whether it stocked the Dilmah tea product referred to in Mr Elkington’s declaration. It did not. However, whilst at that supermarket I noticed there was a Radiant brand “liquid Capsules” product on the shelf. This product is a competitor to the Unilever “PODS” product. It’s relevance is that this is an example of, in effect, the same product as the Unilever product but one which does not use the term “PODS”; rather it uses the term “capsule” and “liquid capsule” as the product description.
I note also that the opponent submits:
Noticeably absent from the Applicant’s evidence, is any evidence of use by the Applicant of either the PODS Mark or the POWER PODS Mark before, or even after, the priority dates of the Applications.
Mr Bell also refers to a few other traders who are using ‘pods’ as (or forming part of) a badge of origin across different classes of goods, for example, confectionery “Pods” and “Cheese pods”.
This completes my summary of the most relevant details within each party’s evidence.
For the sake of convenience I will turn to the section 41 ground for opposition first. Should the opponent succeed under this ground it is not necessary for me to consider the remaining ground.
Section 41
I must initially address which form of wording should be applied in this case having regard to the fact that section 41 has recently been amended.
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect on 15 April 2013. It repealed section 41 of the Act and substituted a new section 41.
The Registrar’s position is that the new iteration of section 41 applies to trade mark applications filed on or after 15 April 2013 and that the repealed provisions continue to apply to trade mark applications filed before 15 April 2013.[7]
[7] See, for example, Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
As mentioned, the opposed applications were lodged on 19 August 2011 (1442728) and 16 September 2011 (1449304) and accordingly the now repealed version of section 41 is applicable in this case.
Section 41 as it then stood is reproduced below:
41 Trade mark not distinguishing applicant’s goods or services
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
I must firstly consider the extent to which the Trade Marks are inherently adapted to distinguish the designated goods from those of other traders, a matter to be:
[t]ested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise … of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[8]
[8] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514 per Kitto J.
The word ‘pod’ is defined by the online Macquarie Dictionary[9] to mean, inter alia:
pod [1] noun 1. a more or less elongated, two valved seed vessel, as that of the pea or bean. 2. A dehiscent fruit or pericarp with several seeds. 3. Aeronautics a streamlined structure suspended under the wing of an aircraft for housing a jet engine, cargo, missiles, or other weapons. 4. A protective housing for a nuclear reactor. 5. An office designed to be shared by a small group to encourage a collaborative work practice. – verb (i) 6. To produce pods. 7. To swell out like a pod. – verb (t) 8. To remove the shell from. – phrase 9. In pod, Colloquial pregnant.
pod [2] noun 1. a small herd or school, especially of seals or whales. 2. a small flock of birds.
pod [3] noun pad [3] (def.2).
[9] type="1">
As I see it, none of these definitions is on the face of it directly descriptive of the goods claimed by the Trade Marks. Notwithstanding the opponent’s submissions to the contrary, I thus agree with Mr Bell that the Trade Marks might reasonably be considered sufficiently inherently adapted to distinguish all of the goods covered by the applications. My reasons are further explained below.
Re: Trade Mark 1442728 PODS
Annexed to the second Elkington declaration and marked “B” are copies of printouts from ATMOSS for trade marks comprising the word ‘pod’. I note that the opponent has provided me with the details of three trade marks solely consisting of the word ‘pod’ registered for goods in classes 6, 16, 20 and 30. These trade marks were all considered prima facie registrable for goods including metal containers for storage, paper and cardboard packing boxes, and wooden boxes. [10]
[10] I refer to trade mark registrations 970310, 1076513 and 1187990.
At best, I can only see the PODS trade mark as promoting an illusory description of a vessel or some form of protective housing, but I am not satisfied it is clearly descriptive of the applicant’s goods and I find that my conclusion is consistent with the state of the Trade Marks Register and what appears to be office practice, particularly in regard to goods that are containers or boxes which are arguably closer to the definition of a ‘pod’ than the relevant goods.
I recognise that the opponent has attempted to show me that the word ‘pod’ may be an emerging trendy marketing term. However, and most importantly, the opponent’s use of the word ‘pods’ as a descriptive term is not definitively before the earlier relevant date in August 2011 and the use of the word ‘pod’ as a descriptor in association with the PERSIL brand and GRAB GREEN brand shown in the opponent’s evidence is not use in Australia.
I note the opponent’s detailed evidence, particularly in the declarations of Ms Taylor. However, there is a lot of general information in these about the opponent’s dominance in the market when it was still using the word ‘capsule’ as the relevant descriptor. Just when the opponent began using the word ‘pods’ as a descriptor is not clear. Suffice to say it seems to be sometime in August 2011.
The opponent’s 2010 marketing survey conducted by Bread & Butter Pty Ltd involved eight different focus groups and it is anything but clear to me that each group found the word ‘pod’ to be descriptive of the relevant goods. What matters is whether the focus groups considered the word ‘pod’ to be descriptive or not, not whether the group preferred ‘pod’ to a ‘sachet’, ‘pillow’ or ‘power bubble’.
Although the opponent has tried to establish that the word ‘pod’ has become a trendy marketing term that other traders would desire to use without improper motive, I remain unconvinced. I am satisfied that at the respective filing dates none of the applicant’s goods in either class 3 or class 11 would ordinarily be referred to as ‘pods’.
Accordingly, I am satisfied that the section 41 ground has not been established in relation to trade mark application 1442728.
Re: Trade Mark 1449304
First of all, Trade mark 1449304 is sufficiently stylised to allow prima facie acceptance. In fact, the stylised ‘o’ element in the trade mark is arguably prima facie acceptable in its own right for goods in Classes 3 or 11. The addition of the other elements fails to subsume this ‘o’ element and does not subtract from the level of adaptation to distinguish which is inherent in the POWER PODS trade mark as a whole.
In terms of Kitto J’s test in Clark Equipment[11] which is used for assessing the degree of inherent distinctiveness a claimed mark has, I think it most unlikely other traders in similar goods acting only with proper motives would want or need to use the word combination ‘power pods’ (and much less the stylised version applied for) for legitimate descriptive purposes in relation to the designated goods.
[11] See paragraph 37 above.
Indeed, as the applicant’s attorney submitted at [43] – [46]:
The POWER PODS logo mark is to be assessed as a whole. The Opponent seeks to have the mark assessed by taking the individual components separately. This is impermissible.
The Opponent’s argument against the PODS application is that PODS is a? descriptive term of a particular shape. The combination POWER PODS is not a normal or usual expression, nor one that other traders would legitimately wish to use in relation to the designated goods.
No examples have been put forward of other traders using such a combination or as to why they would want to.
This is not an example of a “common combination” such as Mister or Doctor.
As mentioned, there is no directly relevant dictionary meaning of the word ‘pods’ of which I am aware and based on the evidence and arguments before me I have no reason to believe the word was being used in Australia in a descriptive manner in relation to the designated goods as at the relevant priority date(s).
I find that the opponent has failed to discharge its onus under the section 41 ground and, as such, this ground of opposition has not been established in regard to either of the Trade Marks under opposition.
Section 59
Section 59 provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
As a general principle, the act of applying for registration is taken to be evidence of an intention to use the trade mark in relation to all the goods and services listed.[12] However, if a prima facie case is made out to the contrary, the onus shifts to the applicant to establish the requisite intention I accordingly proceed on the basis that for the applicant to have a case to answer the opponent first needs to satisfy me that it is more likely than not that the applicant lacked the requisite intention to use as at the relevant priority dates.”
[12] Aston v Harlee Manufacturing Co (1960) 103 CLR 391; Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 at 456 (“Food Channel”).
With the above in mind, at this point I think it is useful to set out the definition of ‘use as a trade mark’ as prescribed by the Act:
7 Use of trade mark
(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5) In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
I will now turn specifically to the opponent's arguments relevant to the section 59 ground, which rely almost solely upon the same arguments it presented under the section 41 ground. For convenience, I shall collectively deal with both Trade Marks.
I note in particular the following submissions made by Mr Bell at [57]-[60] concerning the opponent’s argument under s 59:
The allegation is not that the applicant does not intend to use the marks as such, rather that they will not be used as trade marks because they are purely descriptive.
Even if the marks are to be considered to in a sense “be descriptive” (which is denied) that does not mean they are not used as trade marks.
This argument presupposes how the applicant will use the marks – i.e. that they will be used in a descriptive sense. There is no basis for that assumption. It ignores the normal use, such as “PODS” brand detergent, analogous to “PODS” brand confectionery, or “CHEESE PODS” brand cheese.
I also agree with Mr Bell that the Opponent has not by its evidence displaced the Applicant’s presumed intention to use the Trade Mark for the opposed goods. I do accept that, as Dodds-Streeton J said in Suyen[13] at [190], “where [an opponent] makes a prima facie case for lack of intention in proceedings under s 59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.”[14] However, as was noted by Dodds-Streeton J in Suyen and by the Full Court in Food Channel, lack of the requisite intention to use cannot be inferred from lack of use per se. For the reasons submitted by Mr Bell I do not consider the opponent’s evidence has made out a prima facie case for lack of intention, nor can I be satisfied on the evidence that the applicant’s intention was not sufficiently definite or immediate as at the priority date(s).
[13] in Suyen Corporation v Americana International Limited [2010] FCA 368 [229]; (2010) 87 IPR 262 (“Suyen”)
[14] For a more detailed discussion on the “shift of onus” under s 59 see Foxtel at [34] to [39].
Accordingly, I have assessed the opponent’s evidence and submissions as a whole[15] and, the evidence does not satisfy me that the onus should shift to the applicants. The applicant accordingly has no case to answer on the issue.
[15] The consideration of whether or not, at the relevant date, the applicant intended to use the opposed trade marks, “must be determined on the evidence as a whole” per Dodds-Streeton J in Suyen.
The section 59 ground has not been established for either of the Trade Marks under opposition.
Decision
The Trade Mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice/notices of appeal before that time, I direct that registration shall not occur until the appeal(s) has/have been decided or discontinued.
Costs
The applicant has requested its costs. As costs normally follow the event, I award costs against the opponent in accordance with to Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
Cristy Condon
Hearing Officer
Trade Marks Hearings
29 January 2014
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