Unilever Australia Ltd v Karounos - [2001] FCA 1717

FEDERAL COURT OF AUSTRALIA
Unilever Australia Ltd v Karounos [2001] FCA 1717
UNILEVER AUSTRALIA LIMITED v GEORGE KAROUNOS and SABRE INTERNATIONAL LIMITED
NG 732 OF 1998
HILL J
7 DECEMBER 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 732 OF 1998

BETWEEN:

UNILEVER AUSTRALIA LIMITED (ACN 004 050 828)

APPLICANT/CROSS-RESPONDENT

AND:

GEORGE KAROUNOS

SECOND RESPONDENT/SECOND CROSS-CLAIMANT

SABRE INTERNATIONAL LIMITED

THIRD RESPONDENT/THIRD CROSS-CLAIMANT

JUDGE:

HILL J

DATE OF ORDER:

7 DECEMBER 2001

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.   The Registrar of Trade Marks remove the word and device mark “Real Fish’n Chips” from the Register of Trade Marks in respect of goods and services in classes 29, 30, 35 and 42 except fish in class 29 and fish and chips in class 42.
2.   Mr Karounos pay the costs of Unilever.
Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 732 OF 1998

BETWEEN:

UNILEVER AUSTRALIA LIMITED (ACN 004 050 828)

APPLICANT/CROSS-RESPONDENT

AND:

GEORGE KAROUNOS

SECOND RESPONDENT/SECOND CROSS-CLAIMANT

SABRE INTERNATIONAL LIMITED

THIRD RESPONDENT/THIRD CROSS-CLAIMANT

JUDGE:

HILL J

DATE OF ORDER:

7 DECEMBER 2001

WHERE MADE:

SYDNEY

REASONS FOR JUDGMENT

On 17 August 2001 I delivered judgment in these proceedings. I ordered, inter alia, that the Registrar of Trade Marks remove the word and device mark “Real Fish’n Chips” (No. 649764) (the “word and device mark”) from the Register in respect of goods and services in class 16. That judgment is Unilever Australia Ltd v Karounos [2001] FCA 1132 (“the judgment”). These reasons should be read with that judgment.
The word and device mark is also registered in respect of goods and services in classes 29, 30, 35 and 42 as follows:
Class Goods or services in respect of which the mark is registered

3           29

4           Take-away foods and beverages in this class including meats, fish, poultry and seafood and game whether processed or not; dairy products; salads.

5           30

6           Take-away foods and beverages in this class including baked products, confectionary, ices, bread and pastries.

7           35

8           Licensing services; licensing and franchising services.

9           42

10          The provision of food and beverages including but not being limited to restaurant, café, canteen, snack bar, fast foods, take-away and catering services.

In my reasons for judgment, I indicated that I would not at that time order the removal for non-use of the word and device mark in respect of goods and services in the above classes as the question had not been fully argued. I gave leave to Unilever Australia Ltd (“Unilever”) to make such submissions as it may be advised within 14 days of the delivery of the judgment. Unilever has now filed written submissions in support of its application to remove the word and device mark in respect of goods and services in each of the remaining classes. No submissions have been received from the current registered owner of the word…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2001] FCA 1717
Decision Date: 7 DECEMBER 2001

CaseChat Overview and Summary

Unilever Australia Ltd brought a claim against Karounos in relation to the alleged non-use of a trade mark. The primary dispute centred on whether Karounos had used the word and device mark "Real Fish'n Chips" in relation to the specified goods and services. The case was heard in the Federal Court of Australia. The central legal issues were whether the respondents had provided sufficient evidence to satisfy the onus of showing on the balance of probabilities that the word and device mark was used in the relevant period and for the relevant classes, and if so, what classes should be covered by the mark.

The court found that the only evidence of use was that a Real Fish’n Chips shop operated during the relevant period. However, there was no evidence as to what the shop sold beyond fish and chips. The court inferred that the shop provided take-away meals or consumption of fish and chips, which fell within classes 29 and 42. Consequently, the court ruled that the mark should be removed from the register except for fish in class 29 and fish and chips in class 42. The court also ordered Karounos to pay Unilever's costs.

This case underscores the importance of providing clear and sufficient evidence of trade mark use to maintain registration. The court emphasised that mere business cards or agreements do not suffice to prove use of a trade mark. The court's decision highlights the necessity for registrants to demonstrate actual use of their marks in commerce to justify their continued registration.

Orders

Orders of the court

1. The Registrar of Trade Marks remove the word and device mark “Real Fish’n Chips” from the Register of Trade Marks in respect of goods and services in classes 29, 30, 35 and 42 except fish in class 29 and fish and chips in class 42.

2. Mr Karounos pay the costs of Unilever.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The transcript is perhaps equivocal on the question whether Unilever did concede that there was evidence of use of the word and device mark. However, I am prepared to give leave to Unilever to waive any concession it may have made and to consider afresh the evidence adduced.Evidence of use Unilever submits (and I agree) that the only evidence before me that could amount to evidence of use as a trade mark of the word and device mark was that given by Mr Karounos. As I noted in my previous reasons, the evidence of Mr McEntegart, including the annexures to his affidavit, said by the respondents to amount to evidence of use did not relate to use of the word and device mark but rather the word mark “REAL”. If that evidence was capable of establishing any relevant use, that use would relate solely to the word mark. The market research conducted by Mr Hancock in April/May 1999 was unrelated to the word and device mark. The only other evidence led by the respondents that could be said to go to the use of the word and device mark is the various agreements, the business card and the letterhead that were tendered. As I noted in my previous reasons, mere business cards or letterhead cannot suffice to prove on their own any use of a trade mark as a mark in relation to goods or services. The various agreements tendered in evidence do not constitute any evidence of use of the word and device mark. The mere entry into a licence agreement is not evidence of use. The licence agreements in evidence merely conferred the right to the use of intellectual property, which included the word and device mark, in all classes except class 35. While the licence agreements contemplate the grant of franchises, as Unilever submits no evidence of the existence or grant of any such franchise was adduced. It would be inappropriate to infer the grant or operation of any such franchise, whether by Bacalon Pty Ltd or some other person, from the mere fact that a fish and chips shop operated under the name “Real Fish’n Chips”. At best, this evidence shows an intention to confer rights to use the word and device mark for a contemplated real fish and chips franchise. This is not sufficient to establish any relevant use. The Agency and Management Agreements in evidence give rise to the same problem. The Management Agreement was entered into as a prerequisite to a contemplated sublicence agreement between Mr Maxwell and Jilahk Pty Ltd. The Agency Agreement merely appoints Mr Maxwell as Mr Karounos’ agent for the negotiation of licences and assignments of intellectual property including the word and device mark. Further, there is no evidence linking any of these agreements with the registered owner of the word and device mark. They are accordingly not evidence of use by the registered owner of that mark. Mr Karounos gave evidence that the last time a Real Fish’n Chips shop had operated in Adelaide was 1998 or early 1999 and that this shop had been operated by Bacalon Pty Ltd. I accepted the truth of this evidence in my previous reasons for judgment. Unilever had submitted in its “Supplementary Submissions in Reply” that this evidence should not be accepted because Mr Karounos was uncertain in choosing between 1998 and 1999 and because when he pleaded to the non-use allegation in the defence he stated that there was no use by Maxwell (including its sub-licensees) in the non-use period. It will be recalled that tendered in evidence was a sub-licence agreement between Mr Maxwell and Bacalon Pty Ltd (“Bacalon”), the company said to have been operating the last Real Fish’n Chips shop.

Decision

Reasons for decision

HILL J

The rule does not permit inferences to be drawn where the evidence otherwise does not leave it open to draw such inferences. In particular, it does not follow from the rule that the failure of a party to call evidence, where such evidence would be required to satisfy the onus cast on the party, leads to the conclusion that such evidence as the party has adduced is to be disbelieved. The question in the present case is and remains whether the respondents have adduced sufficient evidence to satisfy the onus upon them to show on the balance of probabilities that there has been use of the word and device mark in the relevant period and in respect of the relevant class. CONCLUSION The only evidence of use is that a Real Fish’n Chips shop operated at a time during the relevant non-use period. I am prepared to accept that this was the case. I accept Unilever’s submission, however, that there was no evidence that anything other than fish and chips was sold. Indeed, there was no evidence adduced as to what this shop sold. However, it may readily be inferred that cooked fish and chips were sold to the public for take-away meals or, perhaps, consumption in the shop. Anything further would not be an inference but would be mere conjecture. The provision of take-away fish and chips does not, as submitted by Unilever, merely fall within class 42. Class 29, which covers “take-away foods … including fish”, also encompasses the provision of take-away fish. Consequently, I would order the removal of the word and device mark in respect of all classes except fish in class 29 and fish and chips in class 42. I would also order that Mr Karounos pay the costs of Unilever.

Ratio Decidendi

Legal Principle Established

Established by: HILL J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 732 OF 1998

BETWEEN:	UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) APPLICANT/CROSS-RESPONDENT
AND:	GEORGE KAROUNOS SECOND RESPONDENT/SECOND CROSS-CLAIMANT SABRE INTERNATIONAL LIMITED THIRD RESPONDENT/THIRD CROSS-CLAIMANT
JUDGE:	HILL J
DATE OF ORDER:	7 DECEMBER 2001
WHERE MADE:	SYDNEY

3 29	4 Take-away foods and beverages in this class including meats, fish, poultry and seafood and game whether processed or not; dairy products; salads.
5 30	6 Take-away foods and beverages in this class including baked products, confectionary, ices, bread and pastries.
7 35	8 Licensing services; licensing and franchising services.
9 42	10 The provision of food and beverages including but not being limited to restaurant, café, canteen, snack bar, fast foods, take-away and catering services.