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Thursday, April 17, 2014

Grounds for complaint? Section 59 of the Trade Marks Act

By Sandi Forman, Senior Associate

A ground of opposition that is sometimes overlooked in trade marks is the applicant's lack of intention to use the trade mark.

Section 59 of the Trade Marks Act 1995 provides that an application may be opposed on the ground that the applicant does not, at the time of filing the application, intend to use the mark in relation to the specified goods and/or services. This ground can be difficult to establish, but can be usefully employed given the right circumstances.

In a recent Australian Trade Mark Office decision concerning an opposition to registration of the trade mark '707 estate', the Hearing Officer found in favour of the opponent, Southcorp Brands Pty Limited, on the basis that the section 59 ground had been established.

A brief summary of the facts: the opposed application originally specified alcoholic goods in class 33, and import/export agency services in class 35. Southcorp Brands' prior registration for 'Bin 707' for wines in class 33 was cited by the Examiner as an obstacle to acceptance. The applicant deleted class 33 from its application, enabling the application to proceed to acceptance in respect of the class 35 services.

To establish the section 59 ground, an opponent must show a prima facie case of lack of intention by the applicant to use the mark in relation to the applied goods/services, measured as at the time the application was filed.

Southcorp Brands' evidence in support of its opposition showed use of '707 estate' on wines, but no use in relation to any services.

The evidentiary onus then moved to the applicant, but no evidence to rebut the opponent's contention was filed by the applicant. In this regard, the Hearing Officer referred to the decision in the similar case Adbri Masonry Group Pty Ltd v Ecopave Australia Holdings Pty Ltd [2011] ATMO 42.

The Hearing Officer noted that whilst the section 59 ground must be established as at the priority date, the applicant's subsequent action or, in this case, inaction, can be relevant in determining the applicant's intention as at the relevant date.

The applicant in this case remained silent throughout the entire proceeding and did not rebut the opponent's allegation even though it had the opportunity to do so. As such, it was open to the Hearing Officer to infer, from the applicant's failure to respond, and from the evidence as a whole, that there was a lack of intention to use the mark for the nominated import/export agency services.

The Hearing Officer further noted that the applicant must intend to offer the specified services to third parties, rather than merely undertake such services in respect of its own goods.

In summary, the Hearing Officer found that, having regard to all the factors, the section 59 ground had been made out. The opponent provided evidence that the opposed mark was being used on wines only, and the applicant did not file any evidence to show either use of, or any intention to use, the mark in respect of import/export agency services. 

That the applicant willingly deleted from its application the very goods in respect of which it was using its mark enabled the Hearing Officer to infer that any intention to use the mark as at the priority date was in respect of services incidental to the sale of the applicant's goods, and not in connection with the offer of such services to other parties.

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