Unilever Australia Limited v Arrow Export Services Pty Limited

[1997] ATMO 74

TRADE MARKS ACT 1955

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

Re:Opposition by ARROW EXPORT SERVICES PTY LIMITED to applications under section 23 of the Act by UNILEVER AUSTRALIA LIMITED to remove the trade marks of registrations numbers 343795 and 343796 from the Register

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 this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

The trade marks of registrations numbers 343795 and 343796, in the name of Arrow Export Services Pty Limited, are the word UNIFOOD, registered for “all goods included in this class”, being classes 29 and 30, respectively.

Applications under the provisions of section 23 of the Act to remove the trade marks from the Register were lodged on 21 September 1995 by Unilever Australia Limited (the applicant).  The applications were opposed on 11 December 1995 by Arrow Export Services Pty Ltd (the opponent).

In the applications for removal, the applicant has relied on the grounds that the trade marks were registered without an intention in good faith that they should be used by the registered proprietor or by registered user in relation to the goods in respect of which the marks are registered and that, in fact, there has been no use in good faith of the trade marks earlier than one month before the date of the applications.  Alternatively, that up to one month before the date of the applications, a continuous period of not less than three years has elapsed during which the trade marks were registered and during which there was no use in good faith of the trade marks in relation to the goods of the registrations.

Evidence

The evidence comprises:

Evidence in support:

• Statutory declaration by Murray John Barry

• Statutory declaration by Ian Dunn

• Statutory declaration by Phillip John Seibuhr

• Statutory declaration by Peter Davis

• Statutory declaration by Robert John Kent

• Statutory declaration by Ian Brown

• Statutory declaration by Nick Carni

Evidence in answer:

• Statutory declaration by George Assaf with exhibits A - AV

• Statutory declaration by Alfred John Moss with exhibits A - V

• Statutory declaration by Andrew Hartley Moss with exhibits A - E.

A hearing on the matter was held on 8 July 1997 in Sydney.  The applicant, Unilever Australia Limited, was represented by Mr Ron Webb of Counsel.  Mr David Yates of Counsel appeared for the opponent, Arrow Export Services Pty Limited.

Submissions

At the outset of his submissions Mr Webb informed me that the applicant did not wish to pursue the claim that there had been no use in good faith or no intention in good faith to use the trade marks, in terms of para 23(1)(a) of the Act.  The applicant proposed to show that, of the goods in class 30, the mark had only been used in respect of honey during the section 23 period and that there had been no use whatsoever in respect of the goods in class 29.

It was significant to note, Mr Webb said, that the opponent’s evidence supported this assertion.  Relying on the opponent’s evidence, he had prepared a table, copies of which he presented to Mr Yates and me, which illustrated use of the marks by the opponent on various of the opponent’s products in both classes prior and subsequent to the non-use period.  Of those products, Mr Webb submitted, use of the marks in the relevant period had occurred only in respect of honey and food wrap, the latter not falling in either of the classes of the present registrations.  Mr Assaf’s declaration showed that honey bearing the mark had been sold both domestically and for export in the non-use period.  Mr Webb pointed out that the reference to the continuing supply of margarine and oils in the facsimile of 20 October 1995, attached to Mr Assaf’s declaration, did not fulfil the test as to use of a trade mark, as outlined in Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414. In any event, it was outside the relevant period. Similarly, the communications with Mr Andrew Moss in the non-use period from February 1995 to August 1995 did not demonstrate use of the mark in respect of shortening products in the necessary sense, i.e. more than preparing for, considering, or contemplating use of the marks. From the correspondence annexed to Mr Assaf’s declaration in relation to jams, jelly crystals and creme caramel, it may be inferred, Mr Webb said, that there was no use of the mark in the relevant period as per the test of Moorgate Tobacco v Philip Morris.  Further, from that declaration it appeared that, well outside the non-use period, plans had been made to implement use of the mark UNIFOOD on canned fruits, but that the declaration had indicated only an intention to use the mark.  Referring to the declaration of Mr Andrew Moss, Mr Webb commented that it too failed to show use of the subject mark in the required period.

Overwhelmingly the cases make it plain, Mr Webb continued, that, if the grounds for non-use of a mark are made out, then the mark must be removed, unless the opponent can establish positive reasons why the Registrar’s discretion ought to be exercised, as stated, for example, in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417. In relation to other principles of discretion, Mr Webb cited New South Wales Dairy Corp v Murray-Goulburn Co-op (No.2) (1989) 14 IPR 75, J Lyons & Co Ltd’s Appn [1959] RPC 120 and Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323.

Before commencing his submissions, Mr Yates tendered the exhibits referred to in the declarations by Mr Assaf and Mr Andrew Moss, which had not accompanied those declarations at the time of their lodgment.  These exhibits had been made available earlier to the applicant for inspection.

Mr Yates stated that the application for removal not only failed so far as it concerns honey, but that each of the applications failed generally.  He turned to comments on the opponent and its activities, noting the declarations by Mr Assaf and Mr Alfred Moss.  From these, the opponent was a company which, since its establishment in 1982 and its commencement of business in that year, had dealt in a fairly broad way in relation to food stuffs, in particular in honey, margarine, edible oils, shortening, mayonnaise and cake mixes.  Since 1982, or within a relatively short period thereafter, the evidence would establish, for example, its dealings in honey and margarine and in 1985 it also commenced dealing in edible oils, shortening, mayonnaise, cake mixes.  Certainly in each of those cases, Mr Yates observed, its manner of dealing with those foods had included use of the word UNIFOOD as a trade mark, both on goods and in an ancillary way.  It was reasonably clear on the evidence, he said, that during the period 1982 to 1992 the opponent had a substantial business in those goods.  It had been a trader, perhaps more at the wholesale level, and it had sought to exploit the mark wherever and whenever it could in respect of the goods of the kind in respect of which the mark is registered, and one could only appreciate that in that period, 1982 to 1992, it had built up a considerable reputation by its use of the trade mark in relation to those goods.  It was acknowledged that in the relevant non-use three years it had not used the mark on all those goods. That was not because it intended to abandon use of the mark, but simply because the opportunities to exploit the mark had not been available.  In the non-use period it continued to have a substantial business under the trade mark in relation to honey and within the relevant period evidence showed that its export trade had amounted to something in the order of 1.65 million dollars.  It was also clear from the declarations that the export use had involved the application of the mark in Australia by the opponent, acting through its contract manufacturers and, undoubtedly, in relation to honey there was a significant local reputation in the mark residing in the registered proprietor.  Since 1 January 1993, the use had been licensed use through Mr Alfred Moss’ honey ventures.  As to margarine, fats and oils, the declarations of Mr Assaf and Mr Andrew Moss also indicated that, certainly within the non-use period, there had been at least substantial commercial activity in seeking to promote and use the mark.  There was the appointment of Mr Andrew Moss as either him or a firm associated with him as a distributor, and the commercial negotiations had certainly resulted in actual sales since early 1996 for shortening and, subsequently, for vegetable oil.  In relation to jams and jellies, the evidence showed that the negotiations with the contract manufacturer, commenced in 1994, unfortunately did not bear results.  For reasons beyond the control of the opponent, the plans had to be put on hold in January 1996, because the contract manufacturer was unable to have the production lines in such a state so as to have the product start rolling off.  Concerning the evidence on canned fruit, since 1994 there had been discussions with SPC to manufacture canned fruits for the opponent and, as at the date of making his declaration, Mr Assaf expressed the anticipation and hope that UNIFOOD canned fruit will be manufactured by SPC in the near future.

Mr Yates said that the application for removal should fail in each case for principally two reasons: first, it always remained incumbent on the applicant to prove a prima facie case for removal of the mark, and that required it to establish prima facie that it was a person aggrieved by registration of the mark in respect of each of the goods for which it sought to have the trade mark removed.  In the present case the applicant had not met those requirements, the importance of which had recently been emphasized by the Full Federal Court in Kraft Foods Inc v Gaines Pet Food Corporation 34 IPR 198.

In responding to the submissions by Mr Yates on this point, Mr Webb argued that the applicant was not “a mere common informer or officious interferer”, to use the words of Sackville J in Kraft v Gaines Pet Foods, supra, at p 211, but that the applicant belonged in the class of persons positively identified as having the relevant interest sufficient to establish it as a person aggrieved in the sense discussed in Ritz Hotel v Charles of the Ritz 12 IPR 417, at pp 454-455. The word Unifood, Mr Webb explained, had been used extensively and, although it had not strictly been used as a trade mark, this did not mean that the applicant had not been disadvantaged in the practical sense by the unused trade marks remaining on the Register. The fact that the applicant had not applied for registration of the marks in the relevant classes did not tell against the applicant’s standing, although he did not think it controversial that Unilever Plc was the applicant’s parent company.

Mr Yates asserted that the applicant simply had not discharged the burden on it of demonstrating a prima facie case for removal of the marks.  He intended to refer to only one of the applicant’s declarations, Mr Brown’s.  In common with the other declarations, there was a reference by Mr Brown to use of the mark by the Unifoods division of Unilever Australia Limited, but that was not evidence of use by the applicant of the UNIFOOD trade marks in relation to the goods.  Moreover, there was nothing in any of the declarations to the effect that the applicant had any intention to use the mark in respect of the goods for which it was now seeking removal of the marks.  The opponent was aware of the applications for registration of the marks UNIFOODS in classes 29 and 30, numbers 669233 and 669234, in the name of a company called Unilever Plc, but there were no pending applications, of which the opponent was aware, in the name of the applicant for removal.

Mr Yates then addressed the question of discretion, submitting that there were very strong discretionary grounds why each mark should not be removed for the other goods besides honey.  If the marks were removed, then, as the declarations showed, particularly that of Mr Assaf, not only would the considerable work the opponent had undertaken in developing the mark in respect of the goods in the two classes be lost, but also the future markets and future business activities would be severely affected.  The evidence showed that the opponent’s considerable export business would be lost, either in whole or in part, because the opponent was required by its overseas agents and distributors to be the proprietor of any brand which it offered to those persons on an exclusive basis.  A further matter to be considered concerning discretion was the opponent’s use of the mark in relation to honey which, prima facie, should give an entitlement to the opponent to seek to invoke the provisions of sub-section 23(2).  The opponent acknowledged that it was incumbent on it that the goods should be of the same description.  However, the opponent submitted that, having regard to the level of trade at which the opponent operated, the goods were clearly distributed by the same wholesale house, in the same general line of trade, which were two very important considerations to be taken into account on the authority of Jellinek’s Appn (1946) 65 RPC 59 and John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 to determine whether it can be said that the goods are of the same description.

Mr Yates then turned to the residual discretion referred to in Carl Zeiss Pty Ltd’s Appn (1969) 122 CLR 1, which, he said, has been applied in a succession of cases both in Australia and, importantly, in the United Kingdom. There the approach of the Australian courts had been taken as illustrating that the discretion was much more broadly based than in the earlier English cases, for example, “Hermes” Trade Mark [1982] RPC 425. Consequently, even if the Registrar was not satisfied that the specific discretion referred to in sub-section 23(2) could be invoked, that was really of little moment, because there was a general overriding discretion which should be applied favourably to the opponent. The opponent had not abandoned the mark and had certainly not evinced any intention to do so. It had shown by its activities, including during the non-use period, a desire to exploit the mark in relation to the goods covered by its two registrations as and when the opportunity presented itself. Thirdly, the opponent had a significant reputation in relation to some of the goods and certainly in relation to honey. In the opponent’s opinion, there must also be and remain a significant residual reputation in its trade as far as it related to the trade up to 1992. And there was at present continuing trade in edible oils and shortening. The trade in relation to food wrap must also be taken into account. So far as the purchasers were concerned therefore, there would be a considerable reputation in a person who supplied the goods under the trade marks.

Another point for consideration, Mr Yates said, was the fact that the remaining of the marks on the Register would not lead to deception or confusion.  On the other hand, removal of the marks either wholly or partially was likely to lead to confusion and deception, particularly if registration was secured in the name of another person in respect of some or all of the goods covered by the existing registrations.  That factor itself was a strong discretionary ground in favour of the opponent, as illustrated in “Astronaut” Trade Mark (1972) RPC 655, at p 672. Furthermore, even if the Registrar was satisfied that the applicant had established, at least at the prima facie level, that it was a person aggrieved, the fact remained that there was no evidence that the applicant itself used the mark, or intended to use it. Finally, the evidence showed that, when the opponent had become aware of use which might conceivably be infringing use of its marks, it had taken steps to stop it, as was evident from Mr Assaf’s declaration. The opponent therefore had been anxious to protect its position as the registered proprietor in relation to the goods.

In response to the opponent’s submissions on discretion, Mr Webb commented that the opponent utilized the marks as the opportunity presented itself and that there was not any overarching considered or formulated marketing which involved or contemplated the exploitation of the marks in a systematic way for all the goods.

Concerning the argument that honey represents a good which is of the same description as all the other products identified simply because of the use and trade channels, Mr Webb submitted that, retail sales in Australia aside, use of the mark in respect of honey had been in relation to sales to the very few overseas customers who themselves engage in marketing of their products in their own jurisdictions.  Even if the goods were of the same description, that merely satisfied the threshold requirement provided in sub-section 23(2). 

Whilst the applicant acknowledged reputation of the mark UNIFOOD in respect of honey, Mr Webb said, there was no evidence available to suggest that that reputation would necessarily result in confusion in the event that the mark was used by other traders for food products.  In fact, the evidence showed that the applicant was content to allow the word ‘Unifoods’ to be used as a business name in the food trade by another person, and in 1995 the applicant had become aware of the mark UNI-FOODS being used by a third party in respect of olives.

So far as residual reputation was concerned, arising out of the historic use of the marks on the products other than honey, Mr Webb said that, as the goods were produced and packaged in Australia for shipping to overseas markets, one would not expect any residual reputation to cause any relevant deception or confusion to consumers, should there be another entrant, so that any reputation that might exist did not coincide with the necessary public interest to allow discretion. 

Discussion

Person aggrieved

The applicant who seeks removal of a mark from the Register bears the onus of establishing that it is a “person aggrieved” - Kraft v Gaines Pet Foods, supra, at p 206.  Moreover, as stated by Gummow J in NSW Dairy v Murray Goulburn, supra, this is a threshold issue.  The time for determining whether the applicant is a person aggrieved is the date of the application for removal of the mark - Ritz Hotel v Charles of the Ritz, also supra.

In the passage from Ritz Hotel v Charles of the Ritz to which Mr Webb referred in support of the contention that the applicant was a “person aggrieved”, McLelland J said, at pp 454-455:

“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.”

However, in the Federal Court case, Kraft v Gaines Pet Foods, which, as Mr Yates pointed out, is the latest and highest authority on the matter, Sackville J stated, at pp 210-211:

“In my view, the mere fact that a person has filed an application for registration of a trade mark, without more, is insufficient to establish that the person is appreciably disadvantaged, in a legal or practical sense, by the continued registration of an identical or deceptively similar mark.  The position is likely to be different if the application for registration is accompanied by material that clearly demonstrates an intention to use the mark.  If the application and supporting documentation are tendered in evidence in the removal proceedings, the inference would be (in the absence of further evidence) that the applicant for removal has a sufficient interest in the proceedings to be a “person aggrieved”.  Of course, it is also open to the applicant in the removal proceedings to adduce independent evidence to establish that it had used or intended to use the trade mark at the relevant time.  But the fact of filing the application, of itself, does not establish that the applicant is a person aggrieved for the purposes of proceedings under s 23(1) of the TM Act.”

In order to discharge the onus that rests on the applicant in relation to a “person aggrieved” under the provisions of sub-section 23(1) then, the filing of an application for registration of the same mark would not be sufficient to draw an inference that the applicant intended to use the mark.  The applicant would also need to establish that it had used its mark or intended to use it.  In the present case, there are no applications for the mark UNIFOOD or UNIFOODS in the name of the applicant.  The applicant’s claims of it being disadvantaged in the practical sense by the subject marks remaining on the Register are based on the applications in classes 29 and 30 for the mark UNIFOODS in the name of Unilever Plc, and the word ‘Unifoods’ being used as a business name by a division of the applicant company.

While, from my personal knowledge, I am aware that Unilever Plc is the applicant’s parent company, I think it is a tenuous question as to whether the applicant may then claim a standing in the matter on the basis of the parent’s pending applications which, presumably, are blocked by the existence of the opponent’s present registrations.

Concerning the question of use of the mark, in the applicant’s evidence use of the word ‘Unifoods’ is reflected in seven statutory declarations where the declarants indicate that, to the best of their recollection, they have never seen the word UNIFOOD used by any other company than by Unifoods, a division of Unilever Australia Limited on products, packaging or promotional material in respect of class 29 and class 30 goods, which goods are specified by the declarants.  From Mr Assaf’s declaration and exhibits, which constitute part of the opponent’s evidence, it emerges that the word ‘Unifoods’ is, in fact, used only as a business name, not as a trade mark.  This was not denied at the hearing and no evidence has been presented by the applicant to the contrary.  It is apparent therefore that the applicant itself has not used either the word ‘Unifood’ or the word ‘Unifoods’ as a trade mark, nor has it expressed the intention to do so.  However, even though the word has not been used in the trade mark sense by the applicant, its use as a business name has occurred in close connection with the actual trading of the relevant goods produced by the applicant’s food division, as is obvious from the said declarants’ statements in the evidence in support.  Despite the fact that the seven declarants might have been confused as to the distinction between a trade mark and a business name, they do nevertheless associate the word UNIFOOD solely with the products of the applicant’s business.  Viewed in this light, I believe the applicant qualifies as a party with a real interest in having the subject marks removed from the Register and is entitled to consider itself as a person appreciably disadvantaged in a practical sense, should the marks remain registered. 

Being mindful of what constitutes a “person aggrieved”, as enunciated by McLelland J in Ritz Hotel v Charles of the Ritz, supra, I am satisfied that the applicant has overcome the hurdle in establishing that it is such a person in the sense required under the provisions of sub-section 23(1) of the Act.

Prima facie case

It is long established that the onus of proof of non-use of a trade mark rests with the applicant for removal.  In Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1966) 116 CLR 254, Windeyer J outlined the appropriate criteria, at p 258:

“It is for an applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connection 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 in a better position to prove its user than is the applicant to prove non-user.”

To prove its case, the applicant has relied on seven statutory declarations, three from the state of New South Wales and one each from the states of Victoria, Queensland, South Australia and Tasmania.  The declarants, who are identified, have been engaged in the grocery industry for a considerable period of time and hold responsible positions in their respective companies.  The declarations originate from the major states of Australia.  None of the seven declarants, according to their testimony, has ever seen the word UNIFOOD being used by any other person than Unifoods, the division of the applicant company, during the critical period from 21 August 1992 to 21 August 1995, on the products which, in each case, are listed, i.e. “meat, fish, poultry, game or meat extracts; preserved, dried or cooked fruits or vegetables; salad dressings, preserves, jellies, jams or fruit sauces; or eggs, milk or milk products; coffee, tea, cocoa, sugar, rice, tapioca, sago or artificial coffee; flour or preparations made from cereals, bread, pastry or confectionery; ices honey or treacle; yeast, baking powder, salt or mustard; vinegar, sauces, spices or ice; or any other products”.  The specified goods virtually cover the class headings of classes 29 and 30.  This evidence, in my opinion, is adequate for the applicant to make out a prima face case of non-use of the mark during the period prescribed under the provisions of section 23.

In these circumstances, the onus has shifted to the opponent to prove use of the mark during the same period.  As shown in the evidence and confirmed in the submissions, of the opponent’s major trading activities in relation to the products in question, i.e. goods classified in classes 29 or 30 bearing the subject marks, which had concentrated mainly on exporting the goods from Australia since 1982, the only trade which continued during the relevant period was in respect of honey.  For most of that period honey under the mark UNIFOOD was also sold in Australia.  As use of the opponent’s trade mark in relation to exported products constitutes use under the provisions of section 117 of the Act, the opponent has discharged its burden of proving use of the mark in respect of honey during the relevant period.  As Mr Webb pointed out, the correspondence between Mr Assaf and Mr Andrew Moss from February 1995 to the end of the relevant period concerning Mr Moss’ interest in distributing the shortening products under the mark UNIFOOD does not qualify as use of the mark but merely preliminary discussions and preparation - see Moorgate v Philip Morris, supra, at pp 433-434.

Discretion of the Registrar

In Ritz Hotel v Charles of the Ritz, supra, McLelland J states at, pp 481-482:

“The court’s powers to order rectification of the register under s 22(1) and to order removal of a trade mark under s 23(1) are in each case of a discretionary nature.  This is the natural and ordinary meaning of the words used and promotes the underlying policy of the Act by giving the court a sufficient degree of flexibility to give effect to public interest considerations.

...

The proper approach under both ss 22(1) and 23(1) is that if the condition of exercise of the court’s power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, “unless sufficient reason appears for leaving it there”: cf Carl Zeiss at 11; Astronaut at 672.”    

It is clear that the reasons for refusing removal of the mark from the Register even if a case has been successfully made out need to be persuasive and the public interest should be given the most important consideration - see Astronaut, supra.

The substantial part of the opponent’s trading activities in relation to a number of products took place before 1992.  It appears from the evidence that, with the exception of honey and food wrap, the business in relation to other products, such as cake mix (export), mayonnaise, margarine, vegetable oils and shortening (both for export) has ceased.  Since the end of the three year non-use period, apart from the continued use of the mark UNIFOOD in respect of honey and food wrap, use of the mark has been extended only to domestic sales of vegetable oils and shortening.  In such circumstances, it seems to me that the ground for seeking exercise of the Registrar’s discretion based on the opponent’s loss of the effort invested in developing the marks in respect of many of the goods in both classes and the adverse effect on its future markets and business activities in the event of removal of the marks from the Register does not hold much weight.  Similarly, the fact that the overseas agents require the opponent to be the proprietor of “any mark or brand” the opponent offers to its agents to market on an exclusive basis, rather than the particular trade mark UNIFOOD, is not quite relevant to the issue.

In relation to the exercise of discretion, the opponent has also referred to the provisions of sub-section 23(2) which allow discretion to refuse removal of the mark in relation to particular goods or services if there has been, before the relevant date or during the relevant period, use in good faith in relation to other goods or services that are of the same description or closely related.  The opponent’s claim in this regard is based on use of the mark in respect of honey during the relevant period and use of the marks in respect of cake mix, mayonnaise, margarine, vegetable oils and shortening before the relevant date.  Considering the products concerned in light of the tests set out in Jellinek’s case, supra, i.e. the nature of the goods, their uses and the trade outlets through which the goods are bought and sold, I find the goods not to be of the same description, even though they are foods products.  In considering this matter, I applied all the three criteria to the goods in question as I was not satisfied that the distribution of the goods by the same wholesale house and in the same line of trade are sufficient determinant factors. 

As will be obvious from the previous comments, use of the opponent’s mark has been continuous since 1982 in respect of export honey and the opponent’s evidence supports considerable reputation in that product.  The opponent has stated that residual reputation in the marks must also exist in the products the trading of which was either interrupted or discontinued in 1992, as well as the significant trade in food wrap since 1987 which has continued.  Some reputation would be expected from use of the mark on those products which lasted for periods ranging from approximately five to nine years, as well as from the trade of food wrap since 1987, but, as the opponent has not provided persuasive evidence in that regard, it is impossible to assess whether that reputation has subsisted.

Both marks under consideration have existed on the Register for over seventeen years and, having been registered in respect of all the goods in each of the classes 29 and 30, the statements of goods embrace a wide range of food products.  Over that period the opponent has traded only in a limited number of those products, the trading activity having taken place in the least number of the products during the critical three year period.  Although it has been submitted that the opponent has not abandoned the marks, nor does it propose to do so, history of the actual use of the marks does not convince one of the opponent’s earnest attempts to ensure protection of the marks against potential removal actions.

It has been established that the public interest in the integrity of the Register will generally require the removal of a mark that is unused - NSW Dairy v Murray Goulburn, supra.  In view of my previous comments, I do not think the circumstances upon which the opponent has relied in seeking the exercise of the Registrar’s discretion are so positive as to justify a case for retention of the registrations for any goods other than honey.  

Conclusion

I have found that the applicant for removal has the necessary standing as a person aggrieved in accordance with the provisions of section 23 of the Act and that the applicant has succeeded in establishing non-use of the mark UNIFOOD, in each case, of registration number 343795, during the period 21 August 1992 to 21 August 1995, in respect of all the goods in class 30 with the exception of honey and in relation to registration number 343796 in respect of all the goods in class 29.  Concerning the matter of the exercise of the Registrar’s discretion, the opponent has failed to provide sufficient reasons as to why the marks should be allowed to remain on the Register for all the goods in respect of which they are registered.  I therefore direct that, subject the opponent’s right of appeal from this decision, the Register be amended so that the statement of goods of registration number 343795 reads “honey” and I order that trade mark number 343796 be removed from the Register. 

As the applicant for removal has succeeded in total removal of trade mark number 343796 and only partial removal in relation to trade mark number 343795, I award the applicant 75% of costs. 

Vija Zars

Hearing Officer

28 November 1997