WADREF Humified Compost Pty Ltd v Collison & Co

[2014] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by WADREF Humified Compost Pty Ltd to application under section 92 of the Act by Collison & Co to remove trade mark number 1449503(1) - HUMUSCOMPOST Mother Nature's Dirty Secret (and device) - in the name of WADREF Humified Compost Pty Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Victor Ng of Cooper Mills Lawyers Applicant: Written submissions from Collison & Co.
Decision:	2014 ATMO 73 Application for removal under paragraph 92(4)(a) of the Trade Marks Act 1995 – Opposition successful – Trade Mark to remain on the register.

Background

1. This is an opposition to an application for removal of a trade mark under paragraph 92(4)(a) of the Trade Marks Act 1995 (‘the Act’). The application for removal was filed on 29 April 2013 by Collison & Co and is in relation to all goods of the registration:

   Trade Mark No: 1449503

   Owner: WADREF Humified Compost Pty Ltd

   Trade Mark:(‘the Trade Mark’)

   Filing Date: 1 October 2011

   Specification of Goods:

   Class 1: Compost; compost mixtures enriched with organic substances; horticultural growing media composts; potting composts

2. On 24 May 2013, a notice of intention to oppose the removal application was filed by WADREF Humified Compost Pty Ltd (‘the Opponent’). The statement of grounds and particulars that followed from the Opponent provided assertions of use of the Trade Mark along with one regarding the intention in good faith to use the Trade Mark at the time of filing.

3. The evidence stages followed and they comprised:

Evidence in Support

• Statutory declaration of Wendy Bartel (Director of the Opponent) dated 4 October 2013 with exhibits WB-1 to WB-13 (‘Bartel declaration’).

Evidence in Answer

• Statutory declaration of Fiona Nguyen (Legal representative of the Applicant) dated 10 January 2014 with exhibits to (‘Nguyen declaration’).

1. Both parties had filed a written outline of their submissions prior to the hearing. On 24 July 2014, in my capacity as a delegate of the Registrar of Trade Marks, I heard the opposition to the application for removal in Canberra. Victor Ng of Cooper Mills Lawyers made submissions on behalf of the Opponent via telephone. The Applicant did not appear.

2. As a preliminary matter, the applicant for removal is recorded as the law firm Collison & Co. While the applicant for removal is later referred to in the applicant’s submissions as Daly Pty Ltd as Trustee for the Daly Family Trust, the applicant does not appear to have requested under section 92(5) of the Act that the name of the applicant be substituted. I will therefore refer to Collison & Co as ‘the Applicant’ throughout my decision.

The Law

1. Paragraph 92(4)(a) of the Act relevantly provides:

2. 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)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

3. Section 100 of the Act indicates that the Opponent bears the onus of rebutting an allegation made under paragraph 92(4)(a). In the end, as a delegate of the Registrar of Trade Marks, I will decide the opposition under section 101 of the Act, which relevantly provides:

101Determination of opposed application—general

(1)       Subject to subsection (3) and to section 102, if:

(a)       the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b)       the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)       similar goods or closely related services; or

(b)       similar services or closely related goods;

to those to which the application relates.

Reasons

1. As outlined above, the Opponent bears the onus of establishing either an intention in good faith to use the Trade Mark on 1 October 2011 and/or use of the Trade Mark in good faith prior to 29 March 2013 (‘the relevant date’).

2. The statement of grounds and particulars for the opposition provides:

   On 1 October 2011, the Opponent applied for its trade mark registration no. 1449503. As at the date of the trade mark application, the Opponent intended to use the trade mark in connection with a compost business in good faith.

   The Opponent has used the mark in Australia in good faith.

3. Wendy Bartel is the director of the Opponent and declares that in February 2010 the Opponent was incorporated for the business of making and supplying compost. On 1 October 2011, the Opponent applied to register the Trade Mark, and in July 2012 it registered the Australian domain name >

   The Bartel declaration sets out purported instances of use of the Trade Mark. There is no requirement for there to be extensive use of the Trade Mark for the application under paragraph 92(4)(a) to be rebutted or indeed any actual use at all. A trade mark owner may be able to demonstrate an intention in good faith to use the trade mark arising simply from preparations and preliminary activities that are genuine and commercial in nature.

4. Furthermore, it is important to note that the Trade Mark is not ‘HUMUS COMPOST’ and use of that expression solus is not use of the Trade Mark. Neither is it use of the Trade Mark with alterations not substantially affecting its identity.[1] The Trade Mark comprises those words accompanied by a distinctive plant device along with the slogan “Mother Nature’s Dirty Secret”. The Opponent cannot (for example) claim use of the registered Trade Mark on the basis of use of the expression HUMUS COMPOST solus.  

   [1] Section 100(2)(a) of the Act.

5. Exhibited to the Bartel declaration is a screenshot of the Opponent’s Facebook page and “the Opponent’s current website home page.”[2] However, the Facebook page does not display the Trade Mark in the registered form depicted above and appears to be dated after 29 March 2013. The Opponent’s current website home page contains the Trade Mark; however its “currency” is at the time of making the Bartel declaration.[3]

   [2] Bartel declaration, paragraph 13.

   [3] This is approximately seven months after the relevant date.

6. Exhibits WB-3 to WB-6 to the Bartel declaration comprise photographs of promotional stalls bearing the Trade Mark displaying examples of the Opponent’s compost product. They are described by Ms Bartel as stalls for events taking place between March 2012 and April 2013. As such, it is possible that one or more of the events took place after the relevant date. However, there are instances of use occurring at the ‘Seymour Alternative Farm Exhibition’ (taking place on 15 February 2013) and attendance at the ‘Weekly Times Rural Lifestyle Exhibition’ (taking place on 31 March 2012 and 6 April 2013).

7. Exhibit WB-7 is an online advertisement from a third party website. While the exhibit itself is undated, the Trade Mark is present and Ms Bartel declares that the advertisement was placed on that website in February 2013. Following this exhibit are advertisements featuring the Trade Mark in the ‘Country News’ newspaper (dated 25 February 2013), ‘Australian Organics’ (Autumn and Spring 2013) and the ‘Weekly Times Farm Magazine’ (April 2013 edition).

8. The evidence in the Bartel declaration is criticized by the Applicant as not amounting to use of the Trade Mark. It may be true that the registration of a business name, registration of a domain name, and the production of business cards are not, assessed individually, use of a trade mark. However, those actions are indicative of an intention to use the Trade Mark in good faith.

9. After assessing the totality of the Bartel declaration, I find that the evidence establishes use of the Trade Mark prior to the relevant date and at the very least an established intention to use the Trade Mark at the time of filing borne out by the subsequent business activities of the Opponent. Such activities are relevant to the determination in line with Burchett J’s observations in Conde Nast Publications Pty Ltd v Virginia Taylor[4]:

   But it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

   [4] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509).

10. Turning now to the contents of the Nguyen declaration, I firstly note the emphasis on the business activities of Daly Pty Ltd trading as YLAD Living Soils (‘YLAD’). Ms Nguyen declares that YLAD was the first business to adopt the name HUMUS COMPOST for use in Australia. According to the declaration, YLAD began making their compost product in April 2006 and invoices are annexed which aim to establish use of the expression HUMUS COMPOST as a trade mark.

11. The majority of the evidence in the Nguyen declaration is not relevant for the purposes of this removal application, and in any event there is some doubt that HUMUS COMPOST is being used by YLAD as a badge of origin. For example, some of the exhibits display its use in the following context:

    “...Alan Dale an Illinois Farmer who has used humus compost to increase productivity and profitability on his farm...”

    “The most efficient compost turners in the world producing high quality Humus Compost”[5]

    “Humus Compost and Compost Mineral Blends”’...learn how you can set up on-farm humus composting”

    “Young – the base of Australia’s humus compost technology experts”

    “Humus Compost Production & Agronomy Seminar”

    [5] Exhibit to the statutory declaration of Fiona Nguyen

12. The Applicant argues that its evidence of prior use of ‘HUMUS COMPOST’ is not irrelevant but creates the inference that the Opponent did not adopt the Trade Mark in good faith and that taints any subsequent use by the Opponent. I am not convinced by this argument for the reasons set out below.  

13. The Applicant’s evidence also indicates that Ms Bartel (of the Opponent) had personal involvement with the Managing Director of YLAD. Ms Bartel purchased composting equipment from YLAD in 2006 and received information packs and assistance in answering her composting questions. Some of the information supplied to Ms Bartel includes references to the product the Applicant calls ‘Humus Compost’. This involvement with the Applicant is not denied by the Opponent.

14. Mr Ng submitted that these facts are nevertheless irrelevant to a determination under paragraph 92(4)(a) of the Act and certainly do not affect any finding of “good faith” on the part of the Opponent. This is because the notion and meaning of “good faith” under section 92 refers to a bona fide intention to use or actual commercial use of the Trade Mark. It is not concerned with subjective good intentions. Neither is the demonstrated use “fictitious or colourable”[6]. In the decision at first instance of Edwards v Liquid Engineering 2003 Pty Ltd[7] Gordon J stated (with my emphasis):

    Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187] - [192] (examining the meaning of "good faith" under related provisions of the TMA).

    [6] In the sense that it is not ‘real and genuine’ – See Electrolux Ltd v Electrix Ltd (1954) 71 RPC 23 (per Morris LJ at 42).

    [7] Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 at [8].

15. This interpretation was affirmed by the Full Bench in Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd[8] and the High Court of Australia in E & J Gallo Winery v Lion Nathan Australia Pty Ltd.[9]

    [8] Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7; 175 FCR 26; (2009) 79 IPR 437 at [54].

    [9] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 86 IPR 224 at [62].

16. The Applicant submits that there is not a bona fide intent in good faith to use the Trade Mark from the time of filing, being 1 October 2011. However, there is nothing in the evidence to suggest that the use or intention has been manufactured or is anything other than a genuine commercial use of the Trade Mark or an intention to use it in such a manner.

17. Given the interpretation of the expression “in good faith”, it is evident that section 92 is not the appropriate place to determine whether a trade mark application was made in ‘bad faith’. That is a question more suited to section 62A of the Act. Such an action was available to the Applicant during the opposition period under section 52 and may still be available via an application to the court under section 88 of the Act. On a similar point, Gordon J said in Edwards v Liquid Engineering 2003 Pty Ltd[10]:

    LE 2003 contends that such an approach would have the effect of discouraging parties from availing themselves "of the opportunities afforded by the TMA to resolve [trade mark disputes] by application to the Registrar, rather than by the more expensive alternative of Federal Court litigation." That submission, while perhaps unobjectionable as a general proposition, is not appropriate here, where it was apparent that s 92 of the TMA was not apt to raise the real issue between the parties in this case. Parties should not be encouraged to bring inapposite claims on the grounds that they are cheaper; such a strategy may, as this case shows, backfire and if that occurs, it will result in more costs being incurred than if the best claim was brought in the first place. If a dispassionate analysis suggests that the client’s only realistic chance of success requires resort to a more expensive forum, then that is the advice an independent adviser should give. Whether the client in those circumstances wishes to pursue the claim is then a matter for the client. If it chooses not to follow that course or the advice, then it does so at its own risk. In the present case, that risk was realised in the form of the costs of the unsuccessful proceeding or application.

    [10] [2008] FCA 970 at 11.

18. The Applicant places much reliance on the Opponent’s prior knowledge of YLAD and ‘HUMUS COMPOST’ and the fact the Opponent has not provided an explanation for the adoption of this particular Trade Mark. The Act and the legal precedent set out previously establishes that an owner need not provide an explanation if it can demonstrate a genuine bona fide intention to use the Trade Mark at the time of filing. In the current matter and on the material before me, I am satisfied that the Opponent has accomplished this task.  

Decision

1. The Opponent has discharged the onus of establishing an intention to use the Trade Mark in good faith as at the time of filing for registration and subsequent use of the Trade Mark before the relevant date of the removal application. The opposition to the application for removal under paragraph 92(4)(a) of the Act is therefore successful and the Trade Mark is to remain on the Register.

Costs

1. The Opponent has been successful and I award costs against the Applicant in accordance with the Official Scale set out in Schedule 8 of the Regulations.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
18 August 2014