Ya-Ya Shirt Company Holding B.V. v YAYA CO., Ltd

[2024] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by Ya-Ya Shirt Company Holding B.V. to an application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by YAYA CO., LTD for cessation of protection of Protected International Trade Mark number 1093350 (International Registration number 835786) (class 25) – (YA-YA) – in the name of Ya-Ya Shirt Company Holding B.V.

Delegate:	Nicholas Smith
Representation:	Opponent: Spruson & Ferguson Applicant: Accolade IP Limited
Decision:	2024 ATMO 57 Trade Marks Act 1995 (Cth) – application for cessation of protection under reg 17A.48C - Opponent’s evidence shows use of the Trade Mark during the relevant period for a subset of the goods – exercise of Registrar’s discretion not appropriate – protection to cease for some goods

Background

1. This decision is pursuant to an application made on 8 September 2022 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) by YAYA CO., LTD. (‘Applicant’) for cessation of protection of the protected international trade mark detailed below from the Australian Register of Trade Marks (‘Register’).[1]  The application is made in respect of all the goods for which the trade mark is protected, that is, the application is for complete cessation of protection of the trade mark.

   [1] Technically an application to cease protection of a protected international trade mark is to be made pursuant to reg 17A.48C of the Trade Marks Regulations 1995 (Cth). However, reg 17A.48D provides that Part 9 of the Trade Marks Act 1995 (Cth) (being the part of the Act dealing with an application for removal) applies in relation to an application for cessation of protection and, in particular, reg 17A.48D(f) provides that an application under s 92 to remove a trade mark is taken to be a reference to an application for cessation of protection.

Registration No.	1093350
International Registration (‘IR’) number	835786
Lodgement date	28 October 2005
Goods	Class 25: Clothing, footwear, headgear (‘Registered Goods’)
Holder	Ya-Ya Shirt Company Holding B.V.
Trade Mark	YA-YA (‘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.

2. Ya-Ya Shirt Company Holding B.V. (‘Opponent’) has opposed the application for cessation of protection of the Trade Mark, filing a Notice of Intention to Oppose cessation of protection on 4 November 2022 and a Statement of Grounds and Particulars (‘SGP’) on 16 November 2022.  The Applicant filed a Notice of Intention to Defend on 17 January 2023.

3. The following evidence was filed in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Niels A. Staller and Patrick J.A. Draijer, Board Members of the Opponent (‘Staller-Draijer declaration’)	12 April 2023	Annexures A-F
Evidence in answer
N/A
Evidence in reply
N/A

1. 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 10 August 2023 the Opponent requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 1 February 2024.  In line with usual practice, a letter was sent to the parties on 28 November 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 17 January 2024 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

2. 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 and the evidence listed earlier in this decision:

   ·The Application for Cessation of Protection;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions.

   The Relevant Provisions

3. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

4. 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)  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;

   (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.

5. 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 8 August 2022 (‘relevant period’).

6. 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,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (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.

7. 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) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
   (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.

8. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] 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.

9. In accordance with s 101 I may decide to cease protection for all or some of the goods identified in the application for cessation of protection, or if satisfied it is reasonable to do so, decide not to cease protection even if the grounds under which the application for cessation of protection was made are established.

10. 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),[4] 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’.[5] 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.[6] 

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

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

    [6] Act s 7(3).

11. 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.[7]

    [7] 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

12. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[8] As the Trade Mark had been registered for more than five years as at the date of the application for cessation, I need only consider s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[9]) 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)). 

    [8] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

    [9] 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).

13. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide not to cease protection of the Trade Mark.

    Use of the Trade Mark in the relevant period

14. The Opponent’s evidence in this matter consists of the Staller-Draijer declaration.  The declaration states that the Opponent has offered Registered Goods bearing the Trade Mark in Australia in the relevant period.  The Staller-Draijer declaration contains dated documentary evidence of the Opponent selling clothing under the Trade Mark to its Australian distributor as well as dated documentary evidence of Australian websites offering clothing bearing the Trade Mark to Australian consumers in the relevant period.  This is more than sufficient to establish use of the Trade Mark in respect of clothing. 

15. The evidence of use of the Trade Mark in respect of footwear is far less compelling however I have been able to identify a limited number of sales of footwear (particularly snake leather boots) under the Trade Mark to its Australian distributor.  The Opponent also displayed footwear under the Trade Mark in the relevant period from its international Instagram page and in its ‘Instore Season Guides’ which it distributed to its Australian distributors and retailers.  In summary I am satisfied that the Staller-Draijer declaration shows evidence of the use of the Trade Mark for clothing and footwear (‘Used Goods’) in the relevant period.  There is no evidence that the Opponent has offered any headgear under the Trade Mark in the relevant period.  I am unable to identify any advertising material featuring headgear, and the Opponent’s invoices showing sales of straw hats to Australia predate the relevant period by several years.  As such I am not satisfied that the Opponent has used the Trade Mark for headgear (‘Remaining Goods’) during the relevant period.

    Obstacles to use

16. 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 in the relevant period. Pursuant to s 100(3)(c) and in the interest of completeness I note that 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 protected for any of the Remaining Goods.

    Registrar’s Discretion

17. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable not to cease protection of the Trade Mark in respect of the Remaining Goods.[10] The burden of persuasion in this regard falls on the Opponent.[11]

    [10] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

    [11] Ibid.

The Opponent has made no detailed submissions in respect of the discretion, especially in respect of headgear.  In the present case, the evidence of past use of the Trade Mark for the Remaining Goods is minimal and there is no evidence that the Opponent intends to use the Trade Mark in the future in Australia for the Remaining Goods.  Given that, I am unpersuaded that the cessation of protection of the Trade Mark in respect of the Remaining Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to cease protection of the Trade Mark in respect of any of the Remaining Goods.

Decision

1. The Opponent has partly established its opposition to the application for cessation of protection. Accordingly, I direct that protection cease in respect of all Remaining Goods of protected international trade mark number 1093350 (IR 835786) one month from the date of this decision. It will remain protected for the goods listed below. 

   Class 25:  Clothing, footwear

2. If the Registrar is served with a notice of appeal, I direct that cessation of protection shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the protected international trade mark be dealt with as the Court sees fit.

   Costs

3. Neither party has been entirely successful in respect of the application for cessation of protection of protected international trade mark 1093350 (IR 835786).  As such I make no order as to costs.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   April 2, 2024