Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited

[2023] ATMO 137

TRADE MARKS ACT 1995

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

Re:Opposition by Village Roadshow IP Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by VUR Village Trading No 1 Limited for removal of trade marks numbered 596853 (9), 596854 (35) and 596855 (41) – VILLAGE (Figurative) – in the name of Village Roadshow IP Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Sonia Stewart of Counsel instructed by Thomson Geer Applicant: David Franklin of Actuate IP
Decision:	2023 ATMO 137 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence show use of the Trade Mark during the relevant period for a subset of the services for which it was registered - no obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for all of the goods and some of the services for which it is registered

Background

1. This decision is pursuant to three applications made on 6 September 2019 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) by VUR Village Trading No 1 Limited (‘Applicant’) to remove the trade marks detailed below from the Register of Trade Marks.  The applications were made in respect of all the goods and services for which the trade marks are registered, that is, the applications are  for complete removal of the trade marks.

Registration No.	596853
Lodgement date	23 February 1993
Goods	Class 9: All goods in this class, including amusement apparatus, amusement machines, audiovisual apparatus, coin operated mechanisms for entertainment apparatus, compact discs, optical discs, magnetic discs, films, games adapted for use for television receivers, juke boxes, apparatus and equipment for entertainment purposes, magnetic tapes, monitors, musical automata, phonograph records, projection apparatus, audio and video receivers, sound reproduction apparatus, tapes, video tapes, video recorders, and accessories and parts thereof
Owner	Village Roadshow IP Pty Ltd
Trade Mark	(‘Trade Mark’)

Registration No.	596854
Lodgement date	23 February 1993
Services	Class 35: Advertising and promotion of cinematographic films, video recordings, radio entertainment and amusement services, including the commissioning, offset printing, production, exhibition, display and distribution of pamphlets, posters and other promotional material; provision of cinematographic films, video recordings and radio broadcasts for promotional and/or advertising purposes; conduct of promotional activities in relation to cinematographic films, video recordings or radio entertainment; display and exhibition of promotional items or displays
Owner	Village Roadshow IP Pty Ltd
Trade Mark	Trade Mark

Registration No.	596855
Lodgement date	25 February 1993
Services	Class 41: Educational, entertainment and amusement services, including television and radio entertainment, amusement parks, cinematographic film, video and radio programme production, rental leasing and exhibition of cinematographic films or video recordings; rental and leasing of apparatus for producing, reproducing or viewing video recordings; display and exhibition of cinematographic films, whether constituted as optical film on magnetic data carriers or on recording discs
Owner	Opponent
Trade Mark	Trade Mark

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  As the applications involve three registrations for the same trade mark, albeit registered for different goods and services and the parties have otherwise filed identical documents in respect of each of the applications, I shall, for most of this decision, treat the proceeding in the singular, namely as an application to remove the Trade Mark, registered for a selection of goods and services (collectively ‘Registered Goods and Services’) in classes 9, 35 and 41.

2. The Opponent has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 8 November 2019 and a Statement of Grounds and Particulars (‘SGP’) on 5 December 2019.  The Applicant filed a Notice of Intention to Defend on 21 March 2022, the delay being caused by multiple cooling off periods being sought so that the parties could negotiate an outcome to this matter.

3. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  No other evidence has been filed.  This material will be discussed in more detail below.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 8 November 2022, the Opponent requested a hearing by video-conference.  The matter was set down for a hearing on 15 August 2022 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 16 June 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 1 August 2023 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 9 August 2023 (‘Applicant’s Submissions’).  At the hearing David Franklin of Actuate IP represented the Applicant and Sonia Stewart of Counsel instructed by Diane Beer of Thomson Geer represented the Opponent.

5. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions;

   ·The Applicant’s Submissions. 

   EIS

   • Declaration by Clark Johnathan Kirby, Chief Executive Officer of Village Roadshow Pty Limited, dated 28 June 2022 (‘Kirby declaration’) together with Exhibit  CJK-1.

   The Relevant Provisions

6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 6 August 2019 (‘relevant period’).

8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the applications have in fact passed.

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) …
   (b) …
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

10. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

    [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

11. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods and services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5] 

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    [5] Act s 7(3).

13. The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

    Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

    The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

    [6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

    Discussion

14. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).  

    [7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

15. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

16. The Opponent’s evidence in this matter consists of the Kirby declaration.  Mr Kirby states that:

    ·     Village Roadshow Pty Limited ACN 010 672 054 (‘VR’) is the sole shareholder and parent company of the Opponent which holds the Trade Mark and all intellectual property for use by VR and the related corporate entities comprising the Village Group.  These related entities, being wholly owned subsidiaries of VR, operate with a unity of purpose.  The use of the Trade Mark is at all times under the control of the Village Group and the Opponent in particular.  The Opponent, VR and the various other entities that make up the Village Group shared numerous common directors during the relevant period.  In addition, a licence agreement was in place between the Opponent and Village Roadshow Pictures International Pty Ltd ACN 080 186 250 (a member of the Village Group) who further sublicensed the Trade Mark to other entities in the Village Group.  There was a series of internal controls and brand guidelines in place to govern the use of the Trade Mark and other brands used within the Village Group.

    ·     The Opponent is also the owner of a variety of other marks featuring the word ‘village’ or the chevron V element that comprises the Trade Mark.  The Trade Mark is used a ‘house brand’ across the operations of the Village Group.

    ·     During the relevant period Village Group conducted its operations across a number of areas, including:

    o   Cinema operations by Village Cinemas;

    o   Film distribution by Roadshow Films;

    o   Theme parks by VR Theme Parks.

    ·      The Village Group has a significant history and reputation in Australia across the film and entertainment industry, having been founded in 1954.

    ·     The Trade Mark has been used for the Class 9 goods in the relevant period by reason of the operation of a chain of amusement arcades under the name of Intencity which are operated by Village Roadshow Leisure Pty Ltd ACN 061 400 824, a wholly owned subsidiary of VR.  These five arcades are branded with Intencity’s own logo and design but Village Roadshow Leisure Pty Ltd also operates a set of 55 unstaffed locations in the foyers of cinemas and theme parks that are branded with the Village Group’s brand and trade dress which includes the Trade Mark.

    ·     The Trade Mark has been used for the Class 35 services in the relevant period by reason of the operation of the Village Group’s chain of cinemas under the Village Cinemas brand. 

    ·     The Trade Mark has been used for the Class 41 services in the relevant period by reason of

    o   The operation of the Village Group’s chain of theme parks in the Gold Coast which includes marketing material featuring the Trade Mark.

    o   The production of a weekly podcast and short videos focusing on films.

    o   The Village Group’s cinema business, which provides for the display and exhibition of cinematographic films and various advertising services.

    o   The operation of a film production business at Village Roadshow Studios which offers various film production apparatus for hire.

    ·     The Trade Mark has been used in the relevant period for significant promotional activity in respect of the Village Group’s theme parks, cinema and film distribution businesses.

    ·     The Village Group has plans to construct and operate a hotel as part of the Warner Bros. Movie World complex which will incorporate the use of the chevron V element that is part of the Trade Mark.  

17. Having reviewed the detailed evidence of the structure and level of control across the Village Group, I am satisfied that any use of the Trade Mark by members of the Village Group in the relevant period was authorised by the Opponent.  The test is whether the use by Village Group was under the control of the trade mark owner.  I am satisfied that the Opponent has demonstrated that control existed through the combined effect of the licence agreement, the detailed brand guidelines and reporting mechanisms across the Village Group, and the practical reality that the Opponent and the various companies across the Village Group shared common directors.  In the Full Federal Court decision of Trident Seafoods Corporation v Trident Foods Pty Ltd,[8] the Full Court at paragraph 45 noted that as a matter of practicality control could be found in circumstances where the two companies shared the same directors:

    It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. … [I]t is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[9]

    [8] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

    [9] Ibid [45].

1. The Applicant, in its submissions, challenges the Opponent’s reference to and use of the term ‘Village Group’ in its submissions and suggests that the Opponent’s group operates under the ‘Village Roadshow’ brand.  This is not a matter that I need to decide and while I refer to the Opponent’s group as the ‘Village Group’ in this decision, this is not determinative of the question of authorisation (which I have decided above) and use (which I discuss below).

2. The Village Group has registered and used a diverse array of marks that contain either or both ‘village’ or the ‘chevron V’ element that comprises the Trade Mark.  To simplify the submissions, the Opponent submits that use of any mark containing the village and chevron V element (such as V Village Roadshow and V Village Cinemas) is use of the Trade Mark while the Applicant submits that such use is not use of the Trade Mark as such marks contain additions and alterations substantially affecting the identity of the Trade Mark.

3. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’), Windeyer J said:

   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.[10]

   [10] [1963] HCA 66, [12].

4. I reach the following broad conclusions based on the principles in Shell:

   a)The use of either the chevron V element or the word ‘village’ by themselves is not use of the Trade Mark.  Each element forms an essential feature of the Trade Mark and absent the other element, the mark used is not substantially identical to the Trade Mark.  By that logic the oral use of the term ‘village’ is also not use of the Trade Mark.

   b)The use of the marks ‘V Village Cinemas’ in connection with the Village Group’s cinema business and ‘V Village Theme Parks’ in connection with the Village Group’s theme parks business is use of the Trade Mark without additions or alterations substantially affecting its identity.  In each case the additional word or words is broadly descriptive of the services offered.  Equally, I consider that the use of these marks where the Chevron V element is placed on top of the ‘village’ element is use of the Trade Mark; the placement change is effectively de minimus.

   c)I do not reach the same conclusion with respect to any of the other marks used by the Opponent and in particular ‘V Village Roadshow’.  While the words ‘road show’ do have a dictionary descriptive meaning, being a show presented by a set of travelling actors, the term does not appear to be descriptive of any services offered in the present or the past by the Opponent.  Nor is it a term in particularly common current use, the practice of a travelling road show being relatively uncommon during the relevant period.  Moreover, the Opponent uses the word ‘roadshow’ and not ‘road show’ which further distances the term from the dictionary meaning.  While I accept that a consumer would view the marks ‘V Village Cinemas’ and ‘V Village Theme Parks’ as denoting cinemas and theme parks under the V Village brand, I consider it improbable that any consumer in Australia would view the ‘V Village Roadshow’ mark and consider that it referred to an offering of road shows under the V Village brand; ‘roadshow’ is a distinctive element of the trade mark rather than a description of the Registered Goods and Services.    

5. Given my conclusions in the paragraphs above I now review the evidence of use which is set out in pages 538A to 594 of Exhibit CJK-1, which the Opponent submits is evidence of its use of the Trade Mark for the Registered Goods and Services in the relevant period.  In considering the Opponent’s evidence and submissions, I note that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.  The Opponent has asserted at various points in its evidence and submissions but in particular with respect to class 35 services that it is using the Trade Mark for particular goods and services when all it is doing is purchasing inputs, advertising or administering its own business.  For example, a trade mark displayed on or inside an annual report is not use of a trade mark as it does not indicate a connection in the course of trade between a company’s goods and services and the company who applies the mark to the goods.  Equally a trade mark displayed on advertising material is not used in respect of advertising services (unless it is advertising the supply of advertising services).  A trade mark is used for goods and services dealt with or provided in the course of trade to third parties; the advertising of those goods or services is not a good or service provided in the course of trade to third parties.

6. I am  not satisfied that the EIS shows evidence of use of the Trade Mark for Class 9 goods in the relevant period.  The operation of a chain of amusement arcades and placing various gaming machines in the foyer of its cinemas does not amount to the use of the Trade Mark for the Class 9 goods as the Opponent is not using its Trade Mark in connection with those goods; those goods are ancillary to its the gaming arcade services offered under the Intencity brand which are best characterised as entertainment services.  The Opponent also submits that its role in the production of movies such as ‘Sully’ is use of the Trade Mark for optical and magnetic discs.  Not only does the Opponent not produce the physical discs, but it does not use the Trade Mark for its film production services; its film production services are offered under the ‘V Village Roadshow’ mark which, as discussed above, is not substantially identical to the Trade Mark.

7. Through the operation of its cinema business which provides previews and advertising of third-party films, the Village Group is using the Trade Mark (or a substantially identical version of the trade mark, namely the Trade Mark with the addition of the descriptive term ‘cinemas’) in connection with the advertising and promotion of cinematographic films including the exhibition, display and distribution of pamphlets, posters and other promotional material which it displays publicly as part of its business.  The Village Group also conducts promotional activities in relation to cinematographic films.  It does not provide advertising services other than advertising of cinematographic films for third parties; any other advertising it does (such as in respect of its amusement parks) is to promote its amusement park service or its own cinema service, nor does it provide cinematograph films, video recordings and radio broadcasts for promotional or advertising purposes; rather it exhibits, distributes and promotes third party films and previews.

8. With respect to the use of the Trade Mark for the Class 41 services, while I am satisfied that the Opponent, in the operation of its cinema and amusement park business, has used the Trade Mark for some of the Class 41 services, I consider that the breadth of the specification for the Class 41 services, being ‘educational, entertainment and amusement services including…’ is far broader than the proven use by the Opponent in this case.  In Trident Seafoods Corporation v Trident Foods Pty Limited, Gleeson J stated, ‘if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven’.[11]  The Class 41 services offered by the Opponent under the Trade Mark in the relevant period are best characterised as ‘amusement parks; display and exhibition of cinematographic films, whether constituted as optical film on magnetic data carriers or on recording discs’.  The Opponent has provided some limited evidence of use of a mark consisting of the V chevron and the words ‘village theme parks’ in connection with the Opponent’s amusement parks business and, as noted earlier in the decision, that use is use of the Trade Mark.  Equally, the use of the V Village Cinema mark for the Opponent’s Village Cinemas business is use in connection with the display and exhibition of cinematographic films.  There is no evidence of use of the Trade Mark in connection with film, video and radio program production or the rental or leasing of apparatus; such business to the extent that it is conducted, is conducted under a mark containing the ‘roadshow’ element.

   [11] [2018] FCA 1490, [116] (citation omitted).

9. In summary, I am satisfied that the Opponent has used the Trade Mark for the following services in the relevant period (‘used services’)

   Class 35: Advertising and promotion of cinematographic films, including exhibition, display and distribution of pamphlets, posters and other promotional material; conduct of promotional activities in relation to cinematographic films; display and exhibition of promotional items or displays

   Class 41:  amusement parks; display and exhibition of cinematographic films, whether constituted as optical film on magnetic data carriers or on recording discs

10. I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods and Services other than the used services (‘Remaining Goods and Services’) during the relevant period. 

    Obstacles to use

11. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Remaining Goods and Services in the relevant period, pursuant to s 100(3)(c) and, in the interests of completeness, I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Remaining Goods and Services.

    Registrar’s Discretion

12. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off , the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[12]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

    [12] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

    The following propositions are relevant to the exercise of this discretion:

    (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

    (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

    (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

    (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

    (5) The range of factors considered in the exercise of the discretion has included whether or not:

    (a) there has been abandonment of the mark;

    (b) the registered proprietor of the mark still has a residual reputation in the mark;

    (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

    (d) the applicant for removal had entered the market in knowledge of the registered mark;

    (e) the registered proprietors were aware of the applicant’s sales under the mark;

    (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[13]

    [13] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

13. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[14] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

    [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

    [15] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

14. In the present case, while I am satisfied that the Opponent has a considerable reputation in Australia and it both holds and has used a family of marks that contain the V chevron element and the term ‘village’, I am unpersuaded that this provides a justification to allow the retention of the Trade Mark on the Register for any of the Remaining Goods and Services. 

15. There is no evidence that the Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for any of the Remaining Goods and Services. There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing a mark to remain registered for a wider variety of goods and services than used or intended to be used by the Opponent.  If I were to remove the goods and services for which there is no evidence of use, the Opponent would still retain the protection of the Trade Mark for the remaining registered services and (both in respect of any opposition or infringement matters) any similar services or closely related goods, which would be expected to prevent any instance of consumer confusion that could arise where, for example, a third party to seek to register a substantially identical mark for film production services (to the extent that these services are seen to be similar services to the film exhibition services for which the Trade mark remains registered for).

16. In addition, the Opponent retains the registration of a significant range of trade marks consisting of the word ‘Village’ and the V Chevron, registered for a wide range of goods and services.  As such, I do not consider that the private commercial interests of the Opponent would be significantly impacted by the removal of the Trade Mark for the Remaining Goods and Services.  Nor would there be a significant risk of consumer confusion; the scope of the protection granted to the Opponent would (absent any defenses) prevent the use of deceptively similar marks for the remaining registered services and any similar services or closely related goods; it is not necessary for the protection of the public to retain the registration of the Trade Mark for a wider range of goods and services than those for which it has actually been used. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods and Services.

17. Finally, and for completeness, I note that both parties, but in particular the Opponent, made submissions to the effect that in my exercise of discretion I make various speculative inferences about the Applicant and its private commercial interests in the matter deriving from various applications it has made to register trade marks on the Register, the timing of the application for the removal, and the decision of the Applicant not to file evidence in the present matter.  While I acknowledge that the discretion is unfettered in the sense that there are no express limits on it, I note that it would be generally inappropriate for the Registrar to make findings based on speculative inferences arising from a decision made by a party to apply or not apply for a particular registration or through forensic decisions made in the course of a proceeding before the Registrar.  A decision of a party to apply to register a mark is just that.  A decision of a party to decide not to file evidence means that it does not have the benefit of any evidence that it wishes to rely upon.  Nothing further should come from that.  

    Decision

18. The Opponent has not established its opposition to removal of trade mark registration 596853. Accordingly, I direct that registration 596853 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

19. The Opponent has partly established its opposition to the removal application in respect of trade mark registration 596854.  Accordingly, I direct that registration 596854 be removed from the Register in respect of all the Remaining Goods and Services that fall within Class 35 one month from the date of the decision.  It will remain registered for the services listed below. 

    Class 35: Advertising and promotion of cinematographic films, including exhibition, display and distribution of pamphlets, posters and other promotional material; conduct of promotional activities in relation to cinematographic films; display and exhibition of promotional items or displays

20. The Opponent has partly established its opposition to the removal application in respect of trade mark registration 596855.  Accordingly, I direct that registration 596855 be removed from the Register in respect of all the Remaining Goods and Services that fall within Class 41 one month from the date of the Decision.  It will remain registered for the services listed below. 

    Class 41:  amusement parks; display and exhibition of cinematographic films, whether constituted as optical film on magnetic data carriers or on recording discs

    Costs

21. The parties have filed the same evidence and made the same submissions in respect of each of trade mark registrations 596853, 586854 and 596855.  While the Applicant has been successful in obtaining removal of trade mark 596853 from the Register, considering the applications as a whole neither party has been entirely successful in respect of the application for removal of Trade Mark.  As such I make no order as to costs.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    12 September 2023