USANA Health Sciences Ltd

[2012] ATMO 28

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1416487(5, 32) - REV3 ENERGY- and 1422666 (5, 32) – REV3 ENERGY SURGE - in the name of USANA Health Sciences Inc.

Delegate:

Alison Windsor

Representation:

Applicant:  Written submissions by Fisher Adams Kelly Patent and Trade Mark Attorneys

Decision:

2012 ATMO 28

Exparte matter pursuant to s 33(4): section 44 – trade marks deceptively similar to cited registration - ground established for goods in class 32 – applications may proceed for goods in class 5 if request to amend received within time allowed.

Background

1. USANA Health Sciences Inc (‘the Applicant’) of Utah in the United States of America filed applications to register two trade marks (“the Trade Marks”) under the provisions of the Trade Marks Act 1995 (‘the Act’).  Current details of the applications are shown below:[1]

   [1] The Applicant requested amendment to the goods specifications in classes 5 and 32 of both applications prior to any examination having taken place.  The requests in both cases resulted in entry into the specifications of the exclusions of certain goods which can be seen in the above details.

Application No: 1416487

Filing date:  26 March 2011

Goods:Class 5:  Nutritional supplements; excluding all products containing milk or other dairy products

Class 32:  Non-alcoholic beverages; preparations for making beverages; excluding coffee or chocolate flavoured beverages and beverages containing milk

Trade Mark:  REV3 ENERGY

Application No: 1422666

Filing date:  30 April 2011

Goods:Class 5:  Nutritional supplements; excluding all products containing milk or other dairy products

Class 32:  Non-alcoholic beverages; preparations for making beverages; excluding coffee or chocolate flavoured beverages and beverages containing milk

Trade Mark:  REV3 ENERGY SURGE

1. The Registrar has examined and reported on the applications as is required by section 31 of the Act. Grounds for rejecting both applications were found under the provisions of section 44 of the Act. The Applicant responded as allowed for by regulation 4.9 of the Trade Mark Regulations 1995 (‘the Regulations’) contesting the beliefs which the Registrar expressed in the initial report. The Registrar reported a second time maintaining that a section 44 ground for rejection was still applicable. The Applicant, through its representative Fisher Adams Kelly Patent and Trade Mark Attorneys, requested that the matter be decided on the written record.

2. I am a delegate of the Registrar of Trade Marks and this matter had come to me for decision.  I will decide this matter on the basis of the materials on the official file, the relevant legislation and case law and the various other official documents (such as manuals and reference works) which are relevant to the ground for rejection.

The written record

1. The materials on the official file for each application consist of the following:

Application no 1416487

Application no 1422666

w Examiner’s work file, research file and search results
w Examiner’s reports dated:
         w 25 July 2011
         w 31 October 2011
w Representative’s responses dated:
         w 29 September 2011
         w 17 February 2012
            (including Statutory Declaration
            of Angeline Peta Behan made

           16 February 2012)
w Representative’s written submissions dated:
w14 March 2012

w Examiner’s work file, research file and search results
w Examiner’s reports dated:
         w 18 August 2011
         w 31 October 2011
w Representative’s responses dated:
         w 29 September 2011
         w 17 February 2012
            (including Statutory Declaration
            of Angeline Peta Behan made
           16 February 2012)         

w Representative’s written submissions dated:

w14 March 2012

Ground for rejection raised

1. The ground for rejection under section 44 of the Act is stated in the first official reports on both applications in the following words:

   Trade marks which are similar to other trade marks

   A trade mark is used to distinguish the goods or services sold by one trader from those sold by other traders.

   A trade mark will more easily meet the requirements of section 44, and will be easier to register, if it is sufficiently different from other trade marks already applied for or registered for the same or related goods or services.

   A trade mark will be more difficult to register if it is too similar to other such trade marks for the same or related goods or services. This is because consumers are likely to be confused by the similarities between the trade marks.

   Your trade mark is identical to or closely resembles the following trade marks. These trade marks have earlier priority dates and are for the same or similar goods or services:

   357091, 1142363, 1326584

   ·     Your trade mark closely resembles the earlier trade marks because each has the essential and prominent word element REV.

2. Before considering the additional material which appeared in the report, it is convenient to provide brief details of the cited trade marks.  These appear in the table below:

Number	Priority date	Goods	Trade Mark
357091	26/02/1981	Class 29:  Milk and other dairy products	REV
1142363	20/10/2006	Class 29:  Milk, including low fat milk, flavoured milk and milk-based beverages; and all other dairy products in this class; soya-based dairy substitutes in this class
1326584	18/10/2009	Class 32:  Aerated mineral waters; mineral water (beverages); natural mineral water (not for medical purposes); preparations for making mineral water; concentrates for use in the preparation of soft drinks; liquid mixtures for making soft drinks; peanut milk (soft drink); sarsaparilla (soft drink); soft drinks; carbonated non-alcoholic drinks; fruit flavoured non-alcoholic drinks; non-alcoholic drinks (other than for medical use); vegetable extracts for use in the preparation of non-alcoholic drinks; bottled fruit drinks; frozen concentrated fruit drinks; fruit drinks; non-fermented fruit drinks; aerated fruit juices; bottled fruit juices; concentrates for use in the preparation of fruit juice drinks; fresh fruit juices; frozen concentrated fruit juices; frozen fruit juices; fruit juice beverages; fruit juice concentrates; fruit juice extracts (beverages or for making beverages); fruit juice extracts for use as a beverage; fruit juice nectar (beverages or for making beverages); fruit juices; low calorie fruit juices; multi-vitamin fruit juice beverages (not for medical use); non-alcoholic fruit juice beverages; non-fermented fruit juices; unfermented fruit juice; bottled water (not for medical purposes); sports drinks (non-medicated	REV

1. The remainder of the first official reports gave brief explanations of the reasons for the perceived conflict between the trade marks, as follows:

   The additions of the number 3 and words ENERGY [ENERGY SURGE] in your trade mark, and LOW FAT MILK in trade mark 1142363, are insufficient to differentiate them as the differences are likely to be seen as brand variation by the ordinary customer.

   AND

   The goods are similar because the conflicting trade marks 357091 and 1142363 have claims in Class 29 which are considered to be closely related to your claims in Class 5 for Nutritional supplements; excluding all products containing milk or other dairy products because dietary supplements (Class 5) and food supplements (Class 29), regardless of their dairy content (or lack of) are considered to be related. There is also a conflict with your claims in Class 32 because soya-based beverages and whey beverages (which your claims in Class 32 encompass) are considered related to milk products and beverages in Class 29.

   The goods are similar because the conflicting trade mark 1326584 has claims in Class 32 for various drinks, extracts and juices which overlap with your goods in Class 32, and also closely related goods in Class 5.

2. The Applicant responded to the first official reports by letters dated 29 September 2011.  These letters are, to all intents and purposes, identical. 

3. The Applicant submitted that the exclusions of milk and dairy products from the specifications of the Trade Marks removed any similarity with the goods of the cited registrations 357091 and 1142363 and that these citations should accordingly be withdrawn.

4. In respect of registration 1326584, the Applicant submitted that the Trade Marks were neither substantially identical nor deceptively similar.  It argued that while the three trade marks all contained the word/syllable REV, more regard should be paid to the other components in the trade marks, namely 3 ENERGY and 3 ENERGY SURGE. 

5. The Applicant also submitted that the word REV has a defined dictionary meaning as an engine revolution or as a reference to a sharp acceleration of the speed of an engine or the like.  It submitted that the trade mark REV3 had no meaning at all, and does not share a meaning with the cited trade mark REV. 

6. On 31 October 2011 the examiner issued the second official reports on both applications. In these reports he advised that he had withdrawn registrations 357091 and 1142363 as citations under the provisions of section 44, but advised that the citation of registration 1326584 as a ground for rejection remained. He argued that the word REV was a distinctive element or word in all three trade marks and that the words ENERGY and ENERGY SURGE were suggestive of energy drinks or similar goods. He stated that the presence of the number 3 in the Trade Marks neither detracted from the word REV nor suggested a different identity to that of the cited trade mark. He specified that he was satisfied that there were sound reasons for the grounds for rejection based on the provisions of section 44 and as a result the Applicant’s insistence that the presumption of registrability should be applied in its favour did not apply. He suggested that the Applicant might provide evidence of use suitable for consideration under subsections 44(3) and/or 44(4). He noted that any further submissions from the Applicant which did not introduce new material would be of little help in furthering the progress of the applications.

7. On 18 November 2011 the Applicant filed a request for the matter to be decided on the written record.  On 17 February 2012 the Applicant filed the Behan declarations referred to in paragraph 4.  Written submissions were filed on 14 March 2011.

8. Angeline Behan is a trade mark attorney employed by the Applicant’s legal representatives, Fisher Adams Kelly.  She made the declarations on 16 February 2012, and they include Exhibits APB1 – APB20.[2]

   [2] The declarations are very similar in content.  The order of some of the paragraphs and of the Exhibits differ according to the trade mark which is the subject of the specific declaration. 

9. Ms Behan states that she has made her declaration based on information taken from the Applicant’s website, its Facebook® pages and its Twitter® accounts.  In addition she has relied upon various internet searches and from other general information accumulated during the course of prosecution of the Applicant’s Australian and New Zealand applications.

10. Ms Behan says that the Applicant is a publicly listed company based in Salt Lake City in the State of Utah in the United States of America which sells its goods under the Trade Marks by way of direct and network marketing through distributors located throughout the world.  To a lesser extent goods are sold under the Trade Marks online by way of its website.  Network marketing is, however, its primary method of retailing its goods.

11. Extracts from the Applicant’s website form the greater part of the Exhibits to the Behan declarations.  Exhibits APB-2 consist of a page which states that the Applicant’s REV3 ENERGY product was launched in 2008.  Exhibits APB-5 contain a short history of the Applicant and include a list of various business awards which it has received.  Exhibits APB-6 consist of a copy of a page entitled ‘Express shopping’ which shows a list of the Applicant’s goods which I infer can be purchased on-line.  This list includes an item with the product code 939 which is described as ‘Rev3 Energy Surge Pack’.  The date of download of the list is found on the bottom of the page and is 14 December 2011.

12. Ms Behan says that she has conducted Google® searches and believes as a result of these that the Applicant was trading in Australia prior to April 2008.  She bases this belief on Exhibits APB-8 which consist of a document entitled ‘USANA Health Sciences Australian Preferred Customer Price List, April - June 2008’.  The document is annotated at the bottom with the note ‘Revision April 2008’.  Ms Behan infers from this annotation that the Applicant had been trading in Australia prior to issue of the price list.  

13. Extracts from its website provide information about the Applicant’s global sales figures for 2008 which Ms Behan states supports her belief that the Applicant has a global reputation.  Other Exhibits to the declarations are said to support Ms Behan’s belief that the Applicant promotes and advertises the Trade Marks by way of direct marketing, use of the Internet (specifically its website) and via social media such as Facebook® and Twitter®. 

Discussion and Reasons

1. The ground for rejection relevant to these applications is based on section 44 of the Act. The section relevantly provides:

   Section 44. Identical etc. trade marks

   (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if: 

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to: 

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)  …

   (3)  If the Registrar in either case is satisfied: 

   (a) that there has been honest concurrent use of the 2 trade marks; or

   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period: 

   (a) beginning before the priority date for the registration of the other trade mark in respect of: 

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark. 

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

2. The ground for rejection has been maintained because registration 1326584 has an earlier priority date and is for goods the same as or similar to those covered by the Trade Marks.  I note that the Trade Marks have claimed goods in classes 5 and 32.  I am satisfied that the Applicant’s goods of interest in class 32 are similar[3] to the goods covered by registration 1326584.  However, the Applicant’s goods in class 5, namely ‘nutritional supplements’, are to my mind different in purpose and market from those of the cited registration.

   [3] As defined in s 14 of the Act, namely the same goods or goods “of the same description”.

3. Therefore, in respect of subsection 44(1), the remaining matter to be considered is whether the Trade Marks are substantially identical or deceptively similar to the registered trade mark.

Substantial identity

1. Neither of the terms ‘substantially identical’ or ‘substantial identity’ is defined in the Act. However, the accepted test for substantial identity is that articulated by Windeyer J in the Shell decision:[4]

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.  "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is …

   [4] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415:

2. On a side by side comparison, it is obvious that all three trade marks contain, as a part or as the whole, the word element REV.  The Trade Marks contain additional components – the number 3 and the words ENERGY and ENERGY SURGE.  The Applicant’s goods specification consists of goods described as ‘non-alcoholic beverages’ and ‘preparations for making beverages’.  The first of these descriptions implicitly includes so-called ‘energy’ drinks, while the second implicitly includes preparations for making such energy drinks.  The words ENERGY and ENERGY SURGE are thus apt descriptions of the expected effects on the consumer of the kind of beverages in respect of which the Trade Marks might be used.  The essential feature of the Trade Marks is thus the word/number combination REV3.  In the case of the cited trade mark the essential (indeed, the only) feature is the word element REV.

3. Despite this, on a side by side comparison neither of the Trade Marks is substantially identical with the cited trade mark in my view given the additional material they contain.  It is thus necessary to decide if the trade marks are deceptively similar.

Deceptive similarity

1. Section 10 of the Act defines the term ‘deceptively similar’ in the following words:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. The accepted test for deceptive similarity is also found in the Shell decision:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

1. In comparing trade marks with a view to assessing whether they are deceptively similar, Dixon and McTiernan JJ provided the following guidance in Australian Woollen Mills Limited v F S Walton and Co Limited[5]:

   In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

   [5] (1937) 58 CLR 641

2. The Applicant submitted that that the Trade Marks are not deceptively similar to the cited trade mark and gave a number of examples which it said supported this decision.  Its submissions are summarized below:

   ·     It is inappropriate to base an objection on the mere fact that both trade marks contain the same word/syllable REV.

   ·     More regard must be had to the components of the trade marks other than the common denominator – 3 ENERGY and 3 ENERGY SURGE – (re Evershed MR in Broadhead’s Application (1950) RPC 209

   ·     In respect of Sargant LJ’s comments about “the first syllable of a word is, as a rule, far more important for the purpose of distinction”[6] there are exceptions to that rule.  There are cases where the end of a word is not slurred and in these cases the rule should be disregarded.  The endings of the Trade Marks cannot be slurred because of their nature.

   ·     The first word element of the Trade Marks (REV3) does not have a meaning while the cited trade mark is a common English word. (See paragraph 11 where these meanings are mentioned.)

   ·     The fact that all three trade marks share the same prefix carries less weight in the situation where the additional material in the applicant’s trade marks creates a construction in which the concluding syllables cannot be discounted.[7]

   ·     Trade marks composed of a number of elements should be viewed as a whole, and when viewed in this manner, the cited trade mark and the Trade Marks are very different.[8]

   [6] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264

   [7] See Penta Hotel Holdings v Tomas Floden [2009] ATMO 76 – (PENTA and PENTAGO). See also Beecham Group Plc v ADM Kao LLC [2009] ATMO 61 (ENO and ENOVA) and Tripp Limited v Import Manteau Pty Ltd [2008] ATMO 66 (TRIPP and TRIPMATE)

   [8] Relying upon Nerrin and Glen Warr’s Appn [2011] ATMO 68 (WHITE LINE SKUNK) and CMA Corporation Ltd v CMA CGM [2011] ATMO 95 (A number of trade marks including the letters CMA)

3. Despite these submissions and the examples of trade marks demonstrated in the references the Applicant has provided I am satisfied that the Trade Marks are deceptively similar to the cited trade mark.  I consider that there is a real tangible danger of deception or confusion between the three trade marks because the Trade Marks are likely to be seen as variations of the registered trade mark.  This kind of confusion is described as ‘contextual confusion’ and it is discussed in John Fitton & Co Ltd’s Application[9] where the Assistant Comptroller Mr S.E. Chisholm commented:

   With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks `Jests' and `Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element `Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and the same trade source.

   …

   [T]he Registrar is required to postulate a simultaneous use of the two marks under consideration, whether or not one is already in use, and to assess to the best of his ability the likelihood of ensuing confusion or deception, and no limitation is, to my mind, placed upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods.

   [9] 66 RPC 110 at 113

4. The likelihood of contextual confusion between the trade marks is, to my mind, exacerbated by the manner in which the Applicant uses the Trade Marks upon its goods.  Exhibits APB-2, APB-9, APB-11 and APB13 to the Behan declaration filed in respect of application 1416487 contain images of the trade mark REV3 ENERGY in use upon cans of the goods.  The trade mark is shown in use in the following form:

1. In respect of application 1422666, Exhibit APB-14 provides images of packs of the goods labeled with that trade mark.  A picture of one of the packs is shown below:

1. This manner of use stresses the essential part of the trade mark (the word element REV) which changes the whole balance of the elements within the trade mark.  The word element REV becomes much more prominent while the remaining elements become much less so.  In addition, the use of the number 3 as a superscript introduces into the trade mark the idea of goods which are a third variant of the cited owner’s REV branded goods.  Alternatively, it introduces the idea of a variant of the cited owner’s goods which are stronger or provide more energy than the original.  It does this via the mathematical concept of the superscript 3 having a well understood meaning as ‘cubed’. 

2. Taking these matters into account, I am satisfied that the provisions of subsection 44(1) apply in respect of both of the Trade Marks for all of the goods claimed in class 32. 

3. However, subsection 44(1) is subject to the provisions of subsections 44(3) and 44(4).  It is necessary to determine if the evidence the Applicant has provided allows me to apply either of these subsections in its favour.

Subsection 44(3)

1. Subsection 44(3) consists of two paragraphs.  Paragraph 44(3)(a) provides for a trade mark which has met the criteria set out in subsection 44(1) to proceed to acceptance in the face of a conflicting trade mark on the basis of honest concurrent use within the relevant market before to its priority date.  Paragraph 44(3)(b) allows acceptance in the face of a conflicting trade mark on the basis of other circumstances which make it proper to do so.

Paragraph 44(3)(a) – Honest concurrent use

1. In respect of honest concurrent use, the main factors to be considered in assessing the Applicant’s case are the following:

   ·     the honesty of the concurrent use;

   ·     the extent of the use in duration, area and volume;

   ·     the degree of confusion likely to ensue;

   ·     whether any instances of confusion have in fact been proven; and

   ·     the relative inconvenience which would be caused to the parties by the allowance or denial of registration.

2. In order to make a case for honest concurrent use, the Applicant must demonstrate real commercial use over a period of time before the priority date of the application concerned.  The evidence the Applicant has provided for the Trade Marks under consideration does not demonstrate such use.  Ms Behan infers from the document forming Exhibit APB-6 to her declarations that the Applicant had a market presence in Australia in 2008, the year in which the products sold under the Trade Marks were actually introduced to the market.  I note, however, that the price list which forms the Exhibit does not mention any REV3 branded products at all.   

3. In addition, while later price lists are provided which do include the products, no sales figures have been provided for the Australian market.  The mere advertisement of goods in a catalogue is not sufficient grounds on which to base a claim for honest concurrent use.  Within all the information provided there is nothing which attests to the sale of a single item of goods under either of the Trade Marks.  Without any indication of sales in the Australian market, consideration of others of the factors noted previously becomes irrelevant.  The Applicant cannot rely on the provisions of paragraph 44(3)(a).

Paragraph 44(3)(b) – other circumstances

1. The evidence provided in respect of the two applications under consideration does not point to any other circumstances which I could consider and apply in the Applicant’s favour.  Ms Behan states that she conducted Google® searches to determine whether there was any evidence of use of the cited trade mark within the Australian market.  As her searches did not reveal any such use, she expressed her belief that the cited trade mark was not in use, nor had it been in use within Australia. 

2. The Applicant submitted that it has made extensive use of the Trade Marks because its goods are available internationally.  It submitted that the Trade Marks were widely advertised including via a Facebook® page and Twitter® account devoted to them and commented that the owner of the cited trade mark had never moved to prevent the Applicant’s international use of the Trade Marks.  It submits that there has clearly been no consumer confusion between the trade marks because the goods of both parties are fundamentally different.  In addition the Applicant submits that it would suffer considerable hardship if it is unable to use the Trade Marks in Australia, especially significant financial hardship if it had to develop a new trade mark solely for the Australian market.

3. This kind of information is not persuasive and it is insufficient for the provisions of paragraph 44(3)(b) to be applied. The owner of the registered trade mark has the prior right and whether or not its mark is in use is not relevant to consideration of s 44. If the cited mark is indeed unused then the Applicant might instead consider its options under s 92 of the Act. That aside, the submissions and evidence the Applicant has provided do not satisfy me that there are any other circumstances which would make it proper to allow acceptance of the Trade Marks under the provisions of paragraph 44(3)(b).

Subsection 44(4) – prior continuous use

1. Ms Behan expresses her belief that the existence of documents entitled ‘Australian Preferred Customer Price List’ exhibited to her declarations and which are dated from dates earlier than the priority date of the cited registration up until 2011 indicate that the Trade Marks have been used on a continuous basis since at least July 2009.  However, as I noted previously, no sales figures or information which identifies actual sales of any kind within Australia have been provided.  Prior use is not a matter which can be inferred – it must be demonstrated.  The Applicant has failed to do this and therefore the provisions of subsection 44(4) cannot be applied in its favour.

Decision

1. Grounds for rejecting applications 1416487 and 1422666 exist in respect of all the goods claimed in class 32.  However, the applications may proceed to acceptance for the goods claimed in class 5, namely “nutritional supplements, excluding all products containing milk or other dairy products”. 

2. I will allow the Applicant one month from the date of this decision to file a request to delete class 32 from both applications.  If no request is received within the time frame allowed, I will reject the applications in their entirety.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that rejection shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the applications be subject to that order. 

Alison Windsor

Hearing Officer

Trade Marks Hearings

16 March 2012