Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited

1. The appeal be allowed.
2. The decision of the delegate of the Registrar of Trade Marks dated 17 December 2020 be set aside.
3. The first respondent pay the costs of the appeal and the opposition proceedings before the Registrar of Trade Marks. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Introduction 1 This proceeding was commenced on 29 January 2021 by the appellant (FreshFood) filing a notice of appeal pursuant to s 104 of the Trade Marks Act 1995 (Cth) (TMA). FreshFood appeals from a decision of a delegate of the Registrar of Trade Marks: Pablo Enterprise Pte Ltd v Freshfood Holdings Pte Ltd [2020] ATMO 195 (the Decision). The Decision concerned an application filed by Pablo Enterprise Pte Ltd, a Singapore-based company, pursuant to s 96 of the TMA to remove FreshFood's Australian Registered Trade Mark No 170010 for the word PABLO filed on 25 October 1961 in class 30: coffee (the PABLO Mark). The delegate held pursuant to s 101 of the TMA that the PABLO mark should be removed for non-use pursuant to s 92(4)(b) of the TMA and, therefore, that Pablo Enterprise succeeded in its non-use application (the Non-Use Application). 2 Orders confirming service of FreshFood's notice of appeal on Pablo Enterprise in Singapore were made on 26 March 2021: Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited [2021] FCA 323. Orders were also made to join the Registrar as a party if Pablo Enterprise had not taken any steps in the proceeding by 16 April 2021. Pablo Enterprise did and has never taken any steps in this proceeding. The Registrar has been joined as the second respondent. On 10 May 2021, the Registrar filed a notice indicating that she submits to any order the Court may make in the proceeding, save as to costs. 3 Orders have been made for the appeal to be heard on the papers. 4 FreshFood has filed and relies on three affidavits and a considerable number of documents. FreshFood has also filed detailed submissions. The Registrar has filed a "Statement of Position" in accordance with orders made by the Court on 11 May 2021. The Registrar does not oppose the final orders sought by FreshFood. The Registrar indicated she did not wish to take an active role in the matter or make submissions in respect of the evidence filed by FreshFood. She indicated she did not consider it to be appropriate for her to actively prosecute the removal application in the absence of Pablo Enterprise's participation in the proceeding, appropriately drawing to the Court's attention the decision of Burley J in Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883. 5 In Hungry Spirit, the parties had asked the Court to make an order by consent allowing the appeal. The parties provided to the Court a letter from IP Australia stating that the Registrar did not object in principle to the orders sought by the parties. Fit n Fast had filed a non-use application pursuant to s 92(4)(b). Burley J summarised the operation of the statutory scheme from that point in the following way (emphasis in original): [8] The Registrar is obliged to give notice of an application under [s] 92, including by advertising the application in the Official Journal: s 95. The application for removal may be referred by the Registrar to a prescribed court for determination: s 94. That step was not taken in this case. Any person may oppose an application for removal by filing a notice of opposition with the Registrar in accordance with the regulations and within the prescribed period: s 96. If the application for removal is unopposed, or the opposition has been dismissed, the Registrar (or the court, if the application is referred to it) must remove the trade mark from the Register in respect of the goods and/or services specified in the application: s 97. If the application is opposed, the registrar must deal with the opposition in accordance with the regulations: s 99. The Trade Marks Regulations 1995 (Cth) provide that the applicant must file a notice of intention to defend the application, if a notice of intention to oppose the application is filed: reg 9.15. If a notice of intention to defend is not filed within the period required, the Registrar may decide to take the opposition to have succeeded, and refuse to remove the trade mark from the Register: reg 9.15(3). [9] Section 100(1) provides that it is for the trade mark owner (as the opponent to the non-use application) to rebut any allegation that the trade mark has not been used or was not intended to be used. [10] Section 101(1) provides that if the proceedings have not been discontinued or dismissed, and the Registrar is satisfied that the ground on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. Section 101(2) similarly provides that if, at the end of the proceedings relating to the opposed application the court is satisfied that the grounds on which the application was made have been established the court may order the Registrar to remove the trade mark from the register in respect of all or some of the goods or services to which the application relates. However, the Registrar (or the court) may elect not to effect any removal if she (or the court) is satisfied that it is reasonable to decline to do so: s 101(3), (4). [11] If the application is determined by the Registrar (or her delegate) an appeal lies to this Court or the Federal Circuit Court from the decision: s 104. It is by that route that the present appeal is before the Court. As a hearing de novo, the Court stands in the shoes of the Registrar to consider afresh whether or not the non-use application should be allowed. Accordingly, although in its submissions Hungry Spirit drew specific attention to s 101(2), it is the language of s 101(1) that is directly applicable. 6 Burley J explained the nature of the "appeal" to the Court in the following way at [13]: As a hearing de novo, the Court considers the application for removal brought pursuant to s 92 afresh. The use of the word "appeal" in s 56 and in s 104 does not confer appellate jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the delegate as an executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; 141 FCR 1; 62 IPR 510 at [44] (Kiefel, Allsop (as their Honours then were) and Crennan JJ); Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132; 154 FLR 97; 235 ALR 698; 70 IPR 25 at [137] (Heerey, Allsop (as his Honour then was) and Young JJ); Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 (Burley J at [228], Greenwood J agreeing generally at [18]). 7 His Honour continued: [14] The [TM] Act and Regulations make clear that it is the applicant for removal that remains the moving party, despite the fact the appeal was initiated by Hungry Spirit and despite the reversal of onus effected by s 100. In this regard it is significant that the applicant is obliged to file a notice of intention to defend. If it does not do so, then the opposition may be taken to have succeeded and the removal application will fail. Whilst Hungry Spirit was obliged to file a notice of appeal in this Court, because it did not succeed before the delegate, the substantive moving party in the proceeding remained Fit n Fast, as the applicant for removal. [15] Further, s 101(1) requires the Registrar to be satisfied that the grounds upon which the non-use application was made have been established. Accordingly, despite the reversal of onus, ultimately it is for the applicant for removal to persuade the Registrar of the appropriateness of any order made. [16] In these circumstances, it is apparent that despite the different scheme set out in the Act and Regulations, the application for non-use must be initiated and prosecuted by the non-use applicant. The position is analogous to that which I considered in Hungry Spirit 1 [Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277]. [17] In the present case, Fit n Fast and Hungry Spirit have reached a compromise, with the consequence that Fit n Fast no longer wishes to prosecute its application for non-use. Hungry Spirit maintains its opposition to the non-use application. Were that to have been the position before the delegate of the Registrar, she could pursuant to reg 9.15 have moved, in effect, to dismiss the application for non-use. Having been notified of the parties' position, the Registrar does not oppose the orders sought, which will remove the limitation placed on the designation of goods and services. Furthermore, having regard to my consideration of the reasons given by the delegate, I can see no self-evident reason why, in these circumstances, the orders should not be made. 8 The present case differs from Hungry Spirit in that the parties do not seek an order by consent. Nevertheless, the position is analogous in that the non-use applicant, Pablo Enterprise, has not participated in the proceeding, putting forward no evidence or argument as to non-use or as to exercise of the discretion under s 101(3). 9 FreshFood made two broad submissions: (1) First, it submitted that the ground under s 92(4)(b) is not established because FreshFood used the PABLO Mark as a trade mark in relation to the goods and services to which the non-use application relates during the relevant period, namely 28 April 2016 to 28 April 2019. (2) Secondly, it submitted that the Court should exercise its discretion under s 101(3) of the TMA not to remove the PABLO Mark from the Register.