Zhun-An Ma v Geographe Bay Brewing Co Pty Ltd

[2024] ATMO 207

TRADE MARKS ACT 1995

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

Re:Opposition by Zhun-An Ma to an application under section 92 of the Trade Marks Act 1995 (Cth) by Geographe Bay Brewing Co Pty Ltd. for removal of trade mark number 1762079 (18, 20, 35) – SHELTA (fig.) – in the name of Zhun-An Ma

Delegate:

Bianca Irgang

Representation:

Opponent: Chelsea Peters of Spruson and Ferguson

Applicant: Karen Hayne of OMOI IP Intellectual Property Trade Mark and Brand Protection

Decision:

2024 ATMO 207

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal – Opponent’s evidence demonstrates Authorised User and use for all goods and services – trade mark to remain on Register.

Background

1. This decision is pursuant to an application made on 14 July 2022 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Geographe Bay Brewing Co Pty Ltd. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1762079

Lodgement date

31 March 2016

Goods and Services

Class 18: Umbrellas; umbrella sticks, umbrella covers, umbrella rings

Class 20: Umbrella stands; tent pegs not of metal

Class 35:  Wholesale and retail services

(‘Relevant Goods and Services’)

Owner

Zhun-An Ma

Trade Mark

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. Zhun-An Ma (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 9 September 2022 followed by the Statement of Grounds and Particulars (‘SGP’) on 7 October 2022.  The Applicant filed a Notice of Intention to Defend on 23 November 2022.

1. The evidence filed in this matter is the following:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Graham Brake, CEO of Philips & House Pty Ltd (‘Brake declaration’)	1 March 2023	1 to 8
Evidence in answer
Karen Anne Hayne, Partner of Addisons, solicitors for the Applicant (‘Hayne declaration’)	9 June 2023	KAH-A
Evidence in reply
David House, CEO of Phillips & House Pty Ltd (‘House declaration’)	3 August 2023	1

5. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 12 September 2023 the Opponent requested a hearing and paid the appropriate fee.  The matter was set down for a hearing on 3 September 2024.  The Opponent filed written submissions on 20 August 2024 (‘Opponent’s submissions’). The Applicant filed written submissions on 26 August 2024 (‘Applicant’s Submissions’). 

6. I am a delegate of the Registrar and I heard the matter on 3 September 2024. I have now made my decision on the basis of the following relevant material and the evidence listed earlier in this decision:

·The Application for Removal;

·The Notice of Intention to Oppose and SGP;

·The Opponent and the Applicant’s oral and written Submissions. 

The Relevant Provisions

7. Part 9 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) 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);

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.

8. 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 14 June 2022 (‘Relevant Period’).

9. 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 application 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.

10.     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.

11.     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.

12.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the 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.

13. 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] 

14.     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]

Discussion

[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).

[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).

1. 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[7] years.[8] As the Trade Mark had been registered for more than five years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application for removal 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)).

   [7] Or three years for trade marks filed from 24 February 2019 onwards. See changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

   [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off (7th edition, 2022 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).

2. 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

   17.     Ms Hayne, legal representative for the Applicant, has argued that any of the Opponent’s “supposed” evidence of use of the Trade Mark is not sufficient to rebut the allegation of non-use as it is use of a different mark to the Trade Mark. Ms Hayne also states that the entity giving evidence of use is Phillips & House Pty Ltd (‘Phillips & House’) and not the Opponent. She states there is no evidence that Phillips & House is, in fact, an authorised user in respect of the alternate trade mark pursuant to the Act. The Applicant submits that the License Agreement contained in Annexure 1 accompanying the House declaration would prohibit any use by Phillips & House of an alternate trade mark such as the one in the evidence. As such, any use of the alternative trade mark is simply irrelevant and insufficient to resist the removal application.

   18.     Firstly, in addressing the Applicant’s argument that Phillips & House is not an authorised user of the Trade Mark, I turn to the License Agreement located in Annexure 1 of the House declaration. The Applicant contends that as the License Agreement is dated 28 October 2021 that it cannot act to retrospectively authorise use of the Trade Mark by Phillips & House, including by virtue of the Licence Agreement. The Applicant referred me to the decision in Golden Cala Trading Est v Florian Mack (‘Golden’)[10] where it was upheld in that decision that the License Agreement could not act retrospectively to make first use by Sky Optical use by the Holder. However, the Golden decision is not analogous to the situation before me.

   [10] [2020] ATMO 173.

   19. In Golden, the Hearing Officer was faced with a License Agreement between Sky Optical and the Holder which was dated in 2018 and purported to act retrospectively to mean that any use of the Golden trade mark by Sky Optical in 2015 was taken to be use by the Holder. The Hearing Officer was faced with the same requirements for an Authorised User under section 8 of the Act that I am, as well as a retrospective License Agreement but this is where the similarities end. In Golden, the Holder asserted that Sky Optical was the Holder’s ‘corporate alter ego’ but there was insufficient evidence provided by the Holder to establish what relationship the Holder actually had, if any, with Sky Optical at the purported time of first use of the trade mark.

   20.      In the situation before me, Annexure 1 accompanying the Brake Declaration contains a copy of a current company extract from ASIC demonstrating that the Opponent is a current director of Phillips & House and has been since the company’s creation on 30 June 2015. I refer to the authority in Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’)[11] which concerned two companies. The first, Trident Foods, held certain trade marks and was a wholly owned subsidiary of the second company, Manassen. The companies had common directors. The Court stated:

   The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had 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 trademarks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks … 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. This is not a case like Lodestar in which there was no relationship between the owner and user of the marks beyond a licence. This case is at the other end of the spectrum. As Trident Foods submitted, it 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. The fact that this must also have been Manassen’s purpose simply confirms the unity of purpose between the corporate entities. But unity of purpose is not inconsistent with the existence of control in a case such as the present.

   [11] [2019] FCAFC 100.

   21. I am satisfied that the authority in Trident is applicable to the situation before me and that taken together with the License Agreement, I find that Phillips & House use of the Trade Mark or any substantively identical mark would be use authorised by the Opponent as per section 8 of the Act.

   22. In regards to the second concern raised by the Applicant that the Opponent/Phillips & House has not used the exact same trade mark as the Trade Mark, I turn to section 7 of the Act which states:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   23.     The Opponent’s registered trade mark is the stylized word SHELTA. A close consideration of the Opponent’s evidence does show that the Opponent has used the expression in a differing way being the second example below:

   Trade Mark  Example from the Opponent’s evidence

   24.     When I compare the respective trade marks side-by-side, I am satisfied that the Opponent’s use of the above variation would not be considered an alteration which would substantially affect the identity of the registered Trade Mark. The trade marks are the same apart from the addition of a common and descriptive geographical indicator being the word Australia. As such, I take use of the above trade mark by the Opponent to be use of the Trade Mark.

   25.     With all the preceding in mind, I will consider the use of the Trade Mark in the Opponent’s evidence. There are a number of undated photographs contained in Annexures 2 and 4 accompanying the Brake declaration which do show use of the Trade Mark on outdoor furniture. However, I am inclined to give very limited weight (if any) to undated evidence.

   26.     Annexure 5 accompanying the Brake declaration contains print outs from Phillips & House’s website according to the WayBackMachine from the years 2016 until 2021. While a number of the screenshots of the website are dated outside of the Relevant Period, there are a number of screenshots of the website which are dated within the Relevant Period being dated 27 February 2020, 6 March 2020, 24 February 2021, 4 March 2021. These demonstrate use of the Trade Mark on and in relation to a number of goods being outdoor furniture being dining sets, sofa sets and bar settings (wicker settings, acrylic cushions, bench settings of wood, metal) and shade umbrellas (cantilever, centrepost), beach umbrellas and rain umbrellas including umbrella bases and covers and accessories. All of these goods were offered for sale to the Australian public on the website prominently featuring the Trade Mark.

   27.     In Annexure 3 accompanying the Brake declaration, there are a number of photos of physical catalogues printed by Phillips & House for the years 2015 through to 2022. While these photos are just of the covers of the catalogues and I cannot determine all the goods advertised in the catalogues, I can see the Trade Mark is located prominently on the cover and the goods on the covers for those catalogues dated within the Relevant Period are outdoor furniture, rain umbrellas and outdoor shade umbrellas. Mr Brake asserts that these catalogues were distributed by Phillips & House in Australia during the Relevant Period. Given Mr Brake’s statement, dates on the covers and the goods on the cover which correspond with the goods on the website based on the WayBackMachine screenshots, I am satisfied that the catalogues were likely published and provided to potential Australian consumers during the Relevant Period. I further note the Opponent has provided copies of invoices, issued by the Phillips & House and addressed to Australian customers for the sale of goods under the Trade Mark during the Relevant Period[12]. While some of these invoices are dated outside of the Relevant Period, others are dated within the Relevant Period and demonstrate use of the Trade Mark.

   [12] Confidential Annexure 8 accompanying the Brake declaration.

   28.     I am satisfied from the evidence that sufficient information has been provided to demonstrate genuine commercial use of the Trade Mark in relation to the Relevant Goods and Services within the Relevant Period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd[13]. In this situation the Opponent has its products actively advertised for sale through an authorised user’s website which provides the retail and wholesale services all bearing the Trade Mark. I am satisfied the Opponent has established use of the Trade Mark during the Relevant Period.

   [13] [1982] FSR 72.

   Decision

   29.     I am satisfied that the trade mark of registration No. 1762079 has been used during the Relevant Period on all the Relevant Goods and Services. The Trade Mark should remain on the Register.

   Costs

   30. The Opponent has been successful in relation to defending the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   23 October 2024