Xtreme Sports Importacao Exportacao E Comercio Ltda v National SIDS Council of Australia Ltd

[2010] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by Xtreme Sports Importacao to application under section 92 of the Act by National SIDS Council of Australia Limited to remove trade mark number 881185(25) - Red Nose - in the name of Xtreme Sports Importacao

Delegate:

Alison Windsor

Representation:

Opponent:  Not represented

Applicant:  Ian Drew of Davies Collison Cave patent and trade mark attorneys

Decision:

2010 ATMO 63

Section 92(4)(b) proceedings: No evidence of use within Australia during relevant three year period –Registrar’s discretion not applied – trade mark to be removed from the register for all goods – costs awarded against trade mark owner.

Background

1. Xtreme Sports Importacao, Exportacao E Comercio LTDA, a Brazilian company, has a trade mark registered in Australia, current details of which are shown below:

Trade mark number:     881185

Priority date:       3 July 2001

Goods and Class:  Class 25 – clothing and headgear excluding footwear

Trade mark:  

1. On 10 December 2008, National SIDS Council of Australia Limited (“the removal applicant”) applied under the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (“the Act”) to have the registration removed from the register because of non-use of the trade mark in respect of all the goods for which it is registered.[1]

   [1] I note that these parties had an earlier appearance before the Registrar in respect of the removal applicant’s opposition to the initial registration of this trade mark.  See National SIDS Council of Australia Ltd v Xtreme Sports Importacao Exportacao e Comercio LTDA (2005) 68 IPR 146.

2. On 15 April 2009 the trade mark owner (“the opponent”) filed a notice of opposition to the non-use application.  Its evidence in support of the opposition followed on 15 July 2009. 

3. On 30 November 2009, the removal applicant advised that it did not intend to file any evidence in answer, and on 4 January 2010, requested that the matter be heard.

4. I was delegated to hear the parties in Melbourne on 8 June 2010.  The non-use applicant was represented by Ian Drew of Davies Collison Cave.  The opponent’s representative had previously advised that the opponent would not be represented at the hearing and neither would it be providing any written submissions.

Evidence

1. The evidence consists of a single declaration, being that of Michael Squires, with attached exhibits MPS1 to MPS 14.  Mr Squires is a registered patent and trade marks attorney and a partner of Phillips Ormonde Fitzpatrick, the firm responsible for representing the opponent in Australia.

2. Mr Squires states that he has been provided with materials relevant to the opponent by its Brazilian attorney firm.  The evidence shows use of the opponent’s trade mark on various items of clothing, on packaging and swing tags, and in magazines which feature articles on so-called “extreme sports”.  Also included is a book which I gather is a company prospectus of some kind outlining the history of the brand and providing examples of the trade mark in respect of the goods. 

3. Mr Squires says that he has been informed by his instructing attorneys based in Brazil that the opponent is actively seeking licensees to use the Red Nose logo in relation to the goods throughout the world on an on-going basis.  He provides a copy of an agency agreement with a Melbourne company, Gaffney International Licensing Pty Ltd, (“Gaffney”) who were contracted to promote the intellectual property rights, negotiate license agreements relating to those rights, and service such license agreements in Australia.  He also notes that Gaffney is being voluntarily wound up, and that the opponent’s attempts to contact it have been unsuccessful.

4. Mr Squires also refers to his belief that the opponent is engaged in on-going efforts to secure a licensee for use of the Red Nose logo in Australia and other countries.  He provides examples of the trade mark’s exposure at the Licensing International Expo in New York city in June 2008 and at the Annual International Industry Merchandisers Association Gala and Awards Ceremony in the same month (and I assume in the same city) where it was a nominee in one of the “best sports brand”  advertising categories.

Onus

1. The onus is on the opponent to establish that it has used its trade mark in Australia within the three year period ending one month before the date the non-use application was filed.  Therefore, the opponent must demonstrate use within Australia in the three year period ending on 10 November 2008.

Discussion

1. Section 92 of the Act allows for the making of applications for trade marks to be removed from the register because they have not been used, or in the case of paragraph 92(4)(a), there was no intention in good faith that the trade mark would be used. Since the section was amended by the Trade Marks Amendment Act 2006 (Cth) there is no longer any requirement that an applicant for removal be an aggrieved person. There is no restriction on who may apply to have a trade mark removed from the Register on the basis of lack of use.

2. Section 96 allows for the removal application to be opposed.  As with any opposition, the opponent bears the onus of establishing that there has been appropriate use of the trade mark within the period relevant to the grounds under which the non-use application has been made.  In most cases, the expectation is that any use demonstrated would be in the Australian market. 

3. Section 101 allows the Registrar a degree of discretion in determining the opposition.  If satisfied that it is reasonable to do so, the Registrar may decide not to remove the registration even if the grounds on which the application was made have been established.

4. In general, the evidence the opponent has provided is not supportive of a claim to having had any use of the trade mark in Australia.  Most of it is undated and there is no indication that any of the advertising material has been distributed within Australia.  The strongest piece of evidence which may indicate that the opponent has had a commercial presence in Australia is Exhibit MPS-10 which is a copy of the agency agreement between it and Gaffney. 

5. The document is dated 2 September 2002 and is an agreement appointing Gaffney as an agent who has the ability to negotiate the terms of license agreements with prospective licensees relating to advertising rights, merchandising rights and publishing rights in respect of goods which bear the trade mark. 

6. However, subparagraph 2(a) of the agreement states the following:

   Period of Agreement.  The period of this Agreement shall commence on September 1, 2002 and end on August 31, 2005.  No extension of this Agreement beyond September 30, 2005 shall occur except through a formal written amendment to this Agreement signed by both parties.

7. The period of the agreement is thus wholly outside the relevant period for the purposes of paragraph 92(4)(b). Given that there is nothing within the information provided which allows me to even infer the establishment of any licencees within Australia, the opponent has not demonstrated that it has had any use within this jurisdiction during the relevant period. It has failed to establish its opposition.

Registrar’s discretion – subsection 101(3)

1. Subsection 101(3) provides that if the Registrar is satisfied that it is reasonable to do so, she may decide that the trade mark should remain on the Register even if the grounds on which the application was made have been established. 

2. The intent of the legislation is that trade marks which have not been used should not remain on the Register.  The trade mark owner has not provided any evidence which would satisfy me that it is appropriate to exercise the Registrar’s discretion and maintain the trade mark on the register.  The removal applicant is therefore successful in its action.

Decision

1. It is my decision that registration number 881185 shall be removed from the Register for all the goods for which it is registered after one month from the date of this decision.  If the Registrar is served with notice of an appeal to the Federal Court before that time, the removal shall not take place until such time as the appeal is discontinued, or, in the event of a decision from the Court, the matter will be subject to the Court’s direction.

Costs

1. The removal applicant has requested its costs and, having succeeded, is so entitled.  I award costs against the opponent according to the official scale.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

19 July 2010