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Australian Trade Marks Office=S96 oppositions unsuccessful – no genuine commercial use of trade marks demonstrated – registrations to be removed from the Register.


Peter and Diane Biden v C4Waterman Inc [2011] ATMO 120 (29 November 2011)

Last Updated: 16 December 2011


TRADE MARKS ACT 1995

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

Re: Oppositions by Peter Maxwell Biden and Diane Biden to applications under section 92 of the Act by C4Waterman Inc to remove trade mark numbers 678898(25) – Waterman – and 705390(28) – Waterman logo – in the name of Peter Maxwell Biden and Diane Biden

DELEGATE:
Alison Windsor
REPRESENTATION:
Opponent: Written submissions provided by Tony Sowden of Sajen Legal
Applicant: Carmen Champion of Counsel, instructed by FB Rice & Co
DECISION:
2011 ATMO 120
S96 oppositions unsuccessful – no genuine commercial use of trade marks demonstrated – registrations to be removed from the Register.

Background

  1. On 9 December 2009, C4Waterman Inc (‘the Non-Use Applicant’), a corporation based in Hawaii, filed applications under the provisions of section 92of the Trade Marks Act 1995 (‘the Act’) to remove two registered trade marks from the Register on the ground of non-use. Details of the registrations appear below:
Number:
678898
705390
Owners:
Peter Maxwell Biden and Diane Biden
Registered from:
22 November 1995
28 March 1996
Goods:
Class 25: Casual clothing, footwear and headgear; all of the foregoing not being designed specifically for surfing.
Class 28: Surfing apparatus; surfing articles; surfing accessories in this class.
WATERMAN
2011_12000.jpg [1]
– collectively “the Waterman Marks”.
  1. On 31 March 2010 the owners of the registrations, Peter and Diane Biden (‘the Opponents’) filed notice of opposition to the removal applications. Their evidence in support was served and filed on 2 August 2010.
  2. The evidence consists of a declaration by Timothy Borham (who describes himself as a trainee solicitor) with Exhibits AGS-1 to AGS-7. I will refer to this evidence in more detail during my discussions later in the decision.
  3. The Non-Use Applicant elected not to file or serve any evidence in answer and requested to be heard on both matters in a single hearing.
  4. As a Delegate of the Registrar of Trade Marks I heard the parties on both matters in Sydney on 12 August 2011. Carmen Champion of Counsel instructed by FB Rice & Co appeared on behalf of the Non-Use Applicant. The Opponents were not represented but relied upon written submissions from Tony Sowden of Sajen Legal.

Legislative framework

  1. The Non-Use Applicant specifically relies upon the grounds provided by paragraph 92(4)(b), and it requests removal in respect of all the goods for which each trade mark is registered. Subsection 92(4) as it is relevant to these matters provides the following:

(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) …

(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.

  1. Section 100 of the Act specifies that the onus is on the Opponents to rebut any allegations made under section 92. In particular, the Opponents must, on the balance of probabilities, prove that they used the Waterman Marks in good faith and in respect of the registered goods during the period of three years ending one month before the day on which the removal applications were filed. As the removal applications were filed on 9 December 2009, the relevant period for the purposes of section 92(4)(b) is the three-year period ending on 9 November 2009 (“the Relevant Period”).

Discussions and reasons

  1. The Opponents provided a single Notice of Opposition incorporating both registration numbers. The reason for opposing removal of the trade marks is given as follows:

The registered owner has used the trade marks in good faith with respect to the registered goods during the period in which non-use is alleged.

  1. The Borham declaration is quite brief, and it is convenient for me simply to quote the greater part of its contents:Tony Sowden for the Opponents submitted that the Opponents were conducting their business in a modest manner but that they had endeavoured to sell as many surfing and clothing related products with the Waterman Marks as time would permit. Mr Biden’s goal, Mr Sowden said, has always been to retire from his permanent occupation at 60 years of age and then to allow himself to devote more time to the business and commercial exploitation of the Waterman Marks. Mr Sowden also stated that in recent times the opportunity to exploit the name commercially through licensing or consent arrangements had been considered and time and money had been invested in investigating this possibility in order to further the business without expending additional time on it.
    1. Registered trade mark nos 678898 and 7105391 (the Waterman Marks) were registered in Australia in 1995 and 1996 respectively
    2. Since that time the opponent has continually used the Waterman Marks on products ranging from surfboards, surfboard accessories to various items of casual clothing.
    3. Evidence contained in the opponent’s invoice book of sales made during this period are provided in Exhibit AGS-1.
    4. Further evidence of trade and commerce are provided for in testimonial letters from customers provided in Exhibit AGS-2.
    5. Evidence of business operations are contained in income tax returns from the financial years ending 2008 and 2009 as seen in Exhibit AGS-3.
    6. Evidence of invoices from suppliers providing materials/products that contain the Waterman Marks is shown in Exhibit AGS-4.
    7. The engagement of legal services by the opponent to explore the opportunity of licensing or attaining a commercial benefit to consent to use of its name is evidenced in Exhibit AGS-5.
    8. Business name registration renewal documents are provided in Exhibit AGS-6.
    9. Miscellaneous use of the Waterman Marks can be evidenced by the photographs contained in Exhibit AGS-7.
  2. The major exhibit upon which the Opponents rely is the original sales invoice book for the Opponents’ business provided as Exhibit AGS-1. This book contains carbon copies of issued sales invoices numbered from 0201 to 0260 and with dates from 2 April 2005 to 3 May 2010. Invoices issued during the Relevant Period are those numbered 0232 to 0258, 27 in all. All invoices contain two logos, one incorporating the words ‘Malahini Australia’ and the second which is as follows:

2011_12001.jpg

  1. Exhibit AGS-2 consists of five letters of support from persons who claim to have been aware of the Waterman Marks and/or to have purchased or been provided with goods which contained one or both of the Waterman Marks. The letters are generally pro forma with fixed text and spaces left vacant for the entry of information specific to the signatory. All five letters claim awareness of the Waterman Marks within the Relevant Period. The letters refer to the goods purchased or provided as being caps, t-shirts, rash shirts, postcards and stickers.
  2. Exhibit AGS-3 consists of copies of sections from tax returns for the years 2008 and 2009 for a partnership known as Waterman Enterprises Australia. The document from the 2008 financial year describes the main business activity as ‘greeting cards and surfing memorabilia’.
  3. Exhibit AGS-4 consists of a number of invoices from suppliers of goods to the Opponents. Only one actually refers to the word ‘Waterman’, as follows:

Supply of 500 Waterman logos for Surfboard Decals exactly as per Waterman Artwork supplied as per Peter Biden’s instruction as quoted.

  1. Exhibit AGS-5 consists of a photocopy of part of a letter from Sajen Legal setting out the agreement between that firm and the Opponents in respect of the trade mark matter. The major instruction from the Opponents appears to have been a request for Sajen Legal to open negotiations with the Non-Use Applicant in respect of use of the Waterman Marks and, failing success in that matter, to consider further appropriate actions and advice.
  2. Exhibit AGS-6 consists of three applications to renew the business name Waterman Enterprises Australia in the State of Queensland.
  3. Exhibit AGS-7 consists of a USB ‘flash drive’ containing 51 dated photographs. Of these, 25 are photographs taken within the Relevant Period. The photographs taken within the Relevant Period show the word ‘Waterman’ presented in a number of different ‘get-ups’ some of which are shown here:

2011_12002.jpg 2011_12003.jpg 2011_12004.jpg 2011_12005.jpg

There is no information included with the photographs to explain their relationship to the goods, except in those instances where it is clear that the photograph is one of a surf ski or surfboard on which one of the Waterman images is displayed.

  1. The Non-Use Applicant’s submissions consist largely of criticism of the Borham declaration and its Exhibits, in part raising the suggestion that the declaration consists of hearsay evidence to which little weight should be given. Mr Borham was prepared to attest to certain matters in a Statutory Declaration and I am prepared to take his attestations at face value. The Exhibits will be weighted each according to its merit as evidence of use of the Waterman Marks.
  2. The Non-Use Applicant submitted that the invoices forming Exhibit AGS-1 feature the logo (shown at paragraph 12 previously) which it says is neither one of the Waterman Marks, nor is it a trade mark which is used in relation to any of the goods covered by the Opponent’s two registrations. It contends that the logo is used as an identifier of the business issuing the invoice, rather than as a trade mark for any of the relevant goods.
  3. The Non-Use Applicant also submitted that the value of goods sold with reference to the word ‘Waterman’ during the Relevant Period and as indicated by the invoices which are in evidence amounts to $170.22 only. As I have had access to the original invoice book, both the description of the goods sold and the sales figures are easier to read. However, even with the additional clarity available to me the total figure for goods sold and identified as ‘Waterman goods’ is not much larger, being only $235.20 for the Relevant Period.
  4. Of particular importance to this matter is the nature of the goods which were sold under the reference ‘Waterman goods’ or ‘Waterman products’ during the Relevant Period. Invoice 0253 is dated 12 February 2009 and it refers to goods sold to Phil Hood of Brisbane.[2] The goods described as ‘Waterman’ goods consist of two t-shirts at an item price of $20 each, one cap at $20, and an item which appears to be a vest of some kind at a price of $45. The handwritten invoice is somewhat difficult to decipher.
  5. Invoice 0254 is made out to Mark Power who has also provided a supporting letter. The invoice refers to the provision of two t-shirts, a rash shirt and two caps as well as six stickers. The value of the goods would have come to $222, but the invoice is clearly annotated as “provided for advertising”, and no indication of money received is recorded on the invoice. I infer from this invoice that the goods were not actually sold to Mr Power, but rather that they were provided to him as examples for him to use in advertising the Opponents’ goods. There is no indication as to where or how this advertising was to take place or if it did indeed take place.
  6. Invoices 0256 and 0257 both record sales of goods simply referred to as ‘Waterman products’. The purchaser on each invoice is illegible. The products all have an item price of $1.55, which suggests to me that they are either cards or stickers of some kind as there are references in different places within the invoice book to the sale of these goods.
  7. The Waterman Marks are registered for various goods in classes 25 and 28 which I have listed in paragraph 1 of this decision. In respect of the goods claimed in class 28, no evidence has been provided of any sales within the Relevant Period. A number of photographs dated within the Relevant Period show use of the word ‘Waterman’ in its various embodiments on items which are either surfboards or surf skis, but these photographs are insufficient to establish that sales of the goods actually took place during the Relevant Period. Given the information which I have to hand, it appears just as likely that in relation to sporting goods in Class 28 the Opponents may have provided stickers rather than having provided the goods themselves. Neither of the Waterman Marks are registered in respect of stickers or cards.
  8. In respect of the clothing goods in class 25, the evidence supports the sale of two t-shirts, one cap and one vest within the Relevant Period. However, while the invoice book contains a reference to the word Waterman, there is no indication of any relevant trade mark use in relation to the clothing items themselves. The Opponents have not provided any examples of swing tags or other kinds of labelling used in relation to the goods within the Relevant Period which would have allowed the purchaser of the clothing to identify the trade source of the goods or indeed which would demonstrate appropriate trade mark use in respect of those goods. A number of photographs dated in May 2010 do show t-shirts, caps and rash shirts bearing the word Waterman in one or more of the forms to which I have referred in earlier parts of this decision. However, I cannot simply infer that these examples of the word equate to use of the Waterman Marks during the Relevant Period.
  9. The testimonial letters refer to each signatory’s knowledge of the Waterman Marks during the relevant period. They state that goods were purchased or provided during the period. However, these letters are, as I noted previously, pro-forma letters and the information provided is not persuasive. In addition, unless the Opponents have used multiple invoice books, the claims in these letters simply do not match up with the Opponents’ record of sales during the Relevant Period.
  10. The pertinent case law for non-use matters can be summarized by the following propositions. Use relied upon by the Opponents must be genuine commercial use: Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. That said, a single instance of bona fide use of the Waterman Marks during the Relevant Period is sufficient to resist the removal applications: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 at paragraph 17. However, if the Opponents are relying on a single act of use, that act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (1962) RPC 1 at 7, per Wilberforce J. Finally, the Act requires use of the Waterman Marks in good faith and Drummond J made clear in Woolly Bull Enterprises Pty Ltd v Reynolds that good faith entailed “real, as opposed to token, use in a commercial sense”.
  11. The onus is on the Opponents to substantiate their claim for real commercial use of the Waterman Marks during the Relevant Period and in respect of the range of goods for which they are registered. On the balance of probabilities the Opponents have not satisfied me that they have met this onus.

Decision

  1. As the Opponents have not rebutted the allegation of non-use I direct that Registrations 678898 and 705390 be removed from the Register in their entirety after one month from the date of this decision. If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Alison Windsor
Hearing Officer
Trade Marks Hearings
29 November 2011


[1] On the original application form this trade mark is shown in red and white and the word ‘Australia’ forms a part of the trade mark. It is written in very small upper case letters under the letters ‘MA’ in the word ‘WATERMAN’ but it does not appear in the image on the Register or in the image which appears on the copy of the registration certificate on the examination file. This outcome is a result of the copying process at the time when the images were captured for the Register.
[2] Mr Hood has also provided one of the pro forma supporting letters which form Exhibit AGS-2.



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