This was an application for removal for non-use of the trade mark depicted below. The trade mark owner was unable to show use in the non-use period but discretion to not remove the mark from the register was exercised by the hearing officer.
The evidence showed that the mark had not been used by the owner since 2002 but it had been used by private individuals who had purchased wine prior to 2002 and subsequently sold it during the non-use period. There was evidence of a dozen bottles that had been sold by individuals in this way for an average price of $2 to $3 each.
The hearing officer considered that:
- The significant delay between the initial purchase of bottles and before they were offered for sale in the marketplace makes the link between the opponent and use of the Trade Mark within ‘the course of trade’ somewhat tenuous. Most of the very limited number of wines were essentially ‘off the market’ for a period of decades before they were sold at minimal prices during a time when the opponent was not promoting the Trade Mark on wine in the marketplace. While the wine was clearly not consumed while it was ‘off the market’ how long can goods be off the market and still remain in the course of trade for the purpose of defeating applications for removal for non-use? This is the question before me. While the wine before me has not been consumed, it has been off the market for many years before it was eventually sold at a public auction for what appears to be less than the wine originally may have been purchased for. The bottles were also sold individually rather than in cases by individuals. Given this substantial time lapse and the low reward for selling, I am not satisfied that those wines did remain in the course of trade over this period.
The hearing officer concluded that this did not amount to trade mark use in the relevant sense.
However, s 101(3) provides a discretion for the Registrar to elect to not remove a mark from the register even if the grounds for removal have been established.
The hearing officer considered that in this case it was appropriate to exercise that discretion (and not order removal) because:
- The opponent does have a significant and enduring reputation in its QUEEN ADELAIDE branded wines. It has adopted a refreshed and new label for its wine which is at least deceptively similar to the Trade Mark. The respective trade marks both prominently contain a graphic device depicting Queen Adelaide and contain the words QUEEN ADELAIDE. These are the most prominent and striking features of the respective trade marks. I also note that it is common for traders that have been trading in the marketplace for a long time to update and alter their trade marks to make themselves more marketable in a constantly changing marketplace. Some traders which come to mind are Adidas ® and Kentucky Fried Chicken ®.
- The opponent is actively selling its QUEEN ADELAIDE wine under the refreshed label in the Australian market place and individuals are still clearly buying and selling wine bearing the Trade Mark. This is much more than a case of the opponent having a residual reputation in the Trade Mark. The opponent has an active and ongoing reputation in its QUEEN ADELAIDE branded wine and it is selling that wine under a trade mark which is at least deceptively similar to the Trade Mark.