… Australian Trade Mark owners should not become complacent, as a trade mark that is not being used may be vulnerable to removal.
Reproduced by kind permission of Fisher Adams Kelly
IP IN DEPTH
Link to original article for attributions and active references.
By Jacqui Symonds – firstname.lastname@example.org – 04.09.2013
A trade mark, once registered, remains in force for 10 years from the filing date of the application. The registration can be renewed indefinitely upon the payment of renewal fees. Unlike some countries, such as the United States, there is no requirement under Australian Trade Marks Law to file evidence of use at regular intervals. However, this does not mean that Australian trade mark owners can become complacent, as a trade mark that is not being used may be vulnerable to removal.
Section 92(4)(b) of the Trade Marks Act 1995 (Cth) (“the Act”) provides that an application may be made to have a trade mark removed from the Register if the trade mark has been registered for a period of 3 years and, during that time, has not been used in relation to the goods and/or services. An application for removal cannot be made until 5 years after the filing date of the application.
The purpose of Section 92 of the Act is to prevent the Trade Marks Register from becoming cluttered with unused registrations that other traders may legitimately wish to use. Removal applications are commonly filed by third parties that have had a registered trade mark cited against their own trade mark application. As indicated above, a registered trade mark may be removed if it has not been used for a continuous period of 3 years. This period ends one month before the day on which the removal application is filed. The purpose of the one month is to allow a prospective removal applicant to contact the trade mark owner to request consent, or invite it to limit or cancel the registration voluntarily, without running the risk of the trade mark owner immediately commencing use of the trade mark in order to defeat a subsequent removal application.
If a removal application is filed and the Trade Mark Owner wishes to defend its registration, the Trade Mark Owner must oppose the removal application. The onus is then on the Trade Mark Owner to establish use of its trade mark in relation to the goods and services for which the mark is registered. Failure to oppose the removal application will lead to partial or complete removal of the trade mark from the Register.
Various aspects of the removal process have been highlighted in recent Australian Trade Marks Office hearing decisions including what constitutes use of a trade mark in the course of trade, the importance of the Registrar’s discretion in deciding whether or not to remove a trade mark, and obstacles to use of a trade mark.
Use in the course of trade
In order to be successful in an opposition to a removal application, the trade mark owner must establish that the trade mark was used as a badge of origin in the course of trade on or in relation to the goods and services. What constitutes “use in the course of trade” was discussed recently in Toddler Kindy Gymbaroo Pty Ltd v Gym-Mark, Inc.
Gym-Mark, Inc (“the Removal Applicant”) applied for the partial removal of the trade mark GYMBAROO (“the Trade Mark”) for various goods and services in classes 16 and 35. The Trade Mark was also registered in class 41; however these services were not challenged. Toddler Kindy Gymbaroo Pty Ltd (“the Trade Mark Owner”) opposed the removal application on the basis that the Trade Mark was used in good faith during the relevant 3 year period.
With regards to the class 16 goods, the Trade Mark Owner stated that it regularly used the Trade Mark in relation to paper, cardboard and goods made from these materials, printed matter; photographs, stationery, and stickers in the provision of instructional and teaching material, children’s books, newsletters, pamphlets and advertising to its relevant markets.
Whilst the Trade Mark Owner conceded the Trade Mark was not used on goods such as bookbinding material, artists’ materials, paint brushes, adhesives for stationery or household purposes, it submitted that these goods were commonly used in connection with many of the goods to which the Trade Mark is applied, such as instructional and teaching material, children’s books, newsletters, pamphlets, and advertising.
The Hearing Officer spent some time discussing the meaning of use of a trade mark “in the course of trade”. In this regard he referred to Oakley Inc v Franchise China Pty Ltd in which Drummond J stated that “the term “trade”…encompasses a wider range of commercial transactions than the actual sale and purchase of marked goods.” Such transactions may include advertising the goods, providing the goods free of charge, and distributing marked samples and brochures to prospective customers.
The Hearing Officer provided a number of examples that did not constitute use in the course of trade, including:
A business may have company cars bearing its trade mark; however the business is not using its trade mark in relation to cars, as it is not dealing in cars in the course of trade.
A newsletter may advertise gardening services but this would not constitute use of a trade mark, as the publisher is advertising the gardening services of a third party rather than providing the actual services.
A publisher using a trade mark in relation to a book composed of paper, printing ink, bookbinding glue etc is not using the trade mark in relation to the raw materials; it is using the mark in relation to books.
Not surprisingly, the Hearing Officer found that the GYMBAROO trade mark had not been used in relation to paper, cardboard and goods made from these materials; printed matter; photographs; stationery; and stickers as the Trade Mark Owner does not deal in these goods. Whilst these goods were used in the provision of the Trade Mark Owner’s newsletters, this does not constitute use of the goods “in the course of trade”.
Further, in relation to bookbinding material, artists’ materials, paint brushes, adhesives for stationery or household purposes, the Hearing Officer stated that the use claimed was not a use in the course of trade because the Trade Mark Owner is merely a consumer of the goods.
The class 16 goods mentioned above were therefore removed from the trade mark registration.
Upon reviewing the evidence, Hearing Officer Thompson was satisfied that the Trade Mark Owner established use in relation to business management and business administration in relation to the provision of franchise services in class 35. The Hearing Officer therefore suggested an appropriate amendment to the class 35 specification.
This decision highlights some common misconceptions in relation to use of a trade mark. An application for registration of a trade mark should only be filed in relation to goods and services for which the trade mark is, or will, be used. For example, it is not necessary for a company to apply for registration in relation to advertising services in class 35, if they are only advertising their own goods and services. If unnecessary goods and services are included in the application, the registration may be vulnerable to removal for non-use down the track.
Section 101(1) of the Act provides the Registrar with the discretion to remove a trade mark “in respect of any or all of the goods and/or services” to which the removal application relates. Provided the Registrar is satisfied it is reasonable to do so, he or she may decide that the trade mark should not be removed from the Register even if the removal grounds have been established.
The application of the Registrar’s discretion was recently discussed in General Mills, Inc v Maria Christofis and Nikitas Christofis. General Mills, Inc (“the Trade Mark Owner”) is the registered owner of NATURE VALLEY (“the Trade Mark”) which is registered for all goods in class 30. Maria Christofis and Nikitas Christofis (“the Removal Applicants”) filed an application for full removal of the Trade Mark. The Trade Mark Owner opposed the removal application on the basis the Trade Mark was used in respect of the goods during the relevant 3 year period.
Upon reviewing the evidence, Hearing Officer Michael Kirov was satisfied that the Trade Mark Owner had established use in relation to granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars in class 30.
However, the Trade Mark is registered for all goods in class 30. The Hearing Officer looked to the class heading for class 30 to determine the nature of goods covered by “all goods in class 30”. As an aside, we note that it is no longer acceptable to nominate “all goods/services” in a particular class.
The Trade Mark Owner submitted that it was appropriate to leave the registration unamended despite it not having been used for all goods falling within class 30. In support of this submission, the Trade Mark Owner argued that it is one of the world’s largest food companies and has the capacity to produce any of the goods that fall within class 30, the Trade Mark is used for a wider range of goods overseas, and there has been significant and substantial use of the Trade Mark in Australia in relation to snack products. The Trade Mark Owner also submitted that the Removal Applicants’ trade mark, NATURE’S VALLEY, is deceptively similar to NATURE VALLEY and confusion in the marketplace could occur if its registration was limited to only the goods for which use was shown.
In deciding whether or not to exercise the Registrar’s discretion and leave the registration unamended, Hearing Officer Kirov looked to section 101(4) of the Act which provides that the Registrar may take into account whether the trade mark has been used in respect of goods similar to the other registered goods. The Hearing Officer decided to leave the Trade Mark registered for “similar goods” such as rice, flour, bread and confectionery.
The Hearing Officer also considered the likelihood of confusion if other traders adopted a similar mark for the other registered goods in class 30. Despite the different nature of goods such as granola (muesli/cereal) bars, health food snacks, nut clusters, trail mix and yoghurt-dipped snack bars and goods such as coffee, tea, salt, mustard and sauces, Hearing Officer Kirov stated that the goods have similar trade channels and thus there may be confusion if another party used a similar trade mark in respect of such goods. On this basis, the Hearing Officer decided to exercise the Registrar’s discretion and leave the NATURE VALLEY mark registered for all goods in class 30.
In making his decision, the Hearing Officer noted that the Removal Applicants did not provide any evidence as to why the removal of the registration was sought, or why it would not be reasonable to exercise the Registrar’s discretion.
This decision shows that trade mark owners with registrations for broad ranges of goods and services may be able to successfully defend a removal application, even if use cannot be established across the range of goods and services. However, this will not always be the case and each situation will be considered on its merits.
Obstacles to use
As outlined above, the fact that a trade mark owner cannot establish use of the trade mark does not necessarily mean the trade mark will be removed from the Register. The trade mark owner may request that the Registrar’s discretion is exercised in its favour which may lead to the registration being limited or remaining unamended. Section 100(3)(c) of the Act provides another “saving grace” for trade mark owners. This provision states that a trade mark owner can successfully defend a removal application, even if the trade mark was not used in the relevant period, if there were circumstances that were an obstacle to use of the trade mark. The recent decision in Karoun Dairies S.A.L. v Karoun Dairies Inc looks at obstacles to use.
Karoun Dairies Inc. (“the Removal Applicant”) filed an application for removal of the trade mark KAROUN which is registered for dairy products in class 29. Karoun Dairies S.A.L. (“the Trade Mark Owner”) opposed the removal application on the basis that the trade mark was used in the relevant 3 year period ending 17 May 2009, or failing this, there were obstacles to use of the trade mark.
The Trade Mark Owner asserted that the Trade Mark had been used in Australia by way of a visit to Australia in 2004 for the purposes of establishing a local distributor for the goods. Further, the Trade Mark Owner maintained a website at www.karoun.com since 1999 and a “trade enquiry” from Lion Nathan in Australia was received via this website in 2006.
The Hearing Officer noted that a single bona fide use of the Trade Mark in relation to the goods during the relevant 3 year period may be sufficient to rebut an application for removal. However, the Trade Mark Owner could not provide evidence relating to the Australian distributors, and the “trade enquiry” appeared to be a private enquiry from an employee of Lion Nathan, rather than an enquiry from the company itself. In light of this, Hearing Officer Debrett Lyons found there had been no use at all of the Trade Mark in the relevant 3 year period.
The Trade Mark Owner argued that there were obstacles to use of the Trade Mark in Australia. Specifically, the Trade Mark Owner submitted that its plans to export the goods to Australia were initially blocked and subsequently delayed because of political turmoil in Lebanon.
The Trade Mark Owner also asserted that plans for expansion were impeded by ongoing litigation in the United States.
In relation to obstacles to use, the Hearing Officer referred to the following comments made by Drummond J in the Woolly Bull case:
“… circumstances [that constituted an obstacle to use] will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. … [T]hose circumstances must cause … non-use of the particular mark by the owner. … There must be a causal link shown between the relevant circumstances and the mark’s non-use.”
The Hearing Officer went on to find that the US litigation did not excuse non-use, as the Trade Mark Owner is not actually party to those proceedings (an affiliated Canadian company was involved in the proceedings). In any event, the Hearing Officer decided that such circumstances did not satisfy the requirements put forth in the Woolly Bull case and more recently in Austin Nichols & Company Inc and Another v Lodestar Anstalt.
In relation to the political turmoil in Lebanon, the Removal Applicant submitted evidence that hostilities in Lebanon were short lived and ended in August 2006, which was very early in the relevant 3 year period. The Hearing Officer considered there was no reason to doubt that the Trade Mark Owner’s production in Lebanon ceased in 2006; however he noted that there is no evidence that this excuses non-use of the Trade Mark up to May 2009. In deciding that the political turmoil in Lebanon did not excuse non-use, Hearing Office Lyons noted that evidence of attempts to find an Australian distributor was not provided, there was no use of the Trade Mark since the end of the relevant period in 2009, and there was no evidence of war related damage to the Trade Mark Owner’s plant or equipment in Lebanon. The Hearing Officer was not satisfied that there was a causal link between the political turmoil and the non-use in Australia.
The Trade Mark Owner therefore failed to establish use or provide sufficient reasons for non-use and the Hearing Officer directed that the Trade Mark be removed for all goods.
This decision shows that a long term intention to use a trade mark is not sufficient to rebut an application for removal for non-use. Trade mark owners should conduct regular reviews of their trade mark portfolios in order to identify important trade marks and ensure these marks are used in the course of trade in relation to the goods and services covered by the registration.
  ATMO 15 (1 March 2013).
  FCA 105.
 The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  HCA 75; (1963) 109 CLR 407 at 422; Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402.
 Section 101(3) of the Act.
  ATMO 18 (14 March 2013).
 As defined by the Nice Classification.
  ATMO 28 (13 May 2013)
 Woolly Bull Enterprises Pty Ltd v Reynolds  FCA 261 (the “Woolly Bull case”)
 Woolly Bull Enterprises Pty Ltd v Reynolds  FCA 261
 (No 1) 2012 FCR 490. In this case, it was found that involvement in worldwide litigation did not excuse non-use.