Opponent: Written submissions by Griffith Hack Lawyers

Applicant: Sonia Stewart of Counsel instructed by Clayton Utz

Trade Marks Act 1995 (Cth) - application under section 92 - sections 92(4)(a) and 92(4)(b) - no use of the trade mark or obstacle to use - exercise of discretion not appropriate - trade mark to be removed from the register

1. International IP Holdings, LLC ('IIPH') is the registered owner of the following trade mark registration ('Registration'):

Specification: Class 5: Dietary supplements; energy supplements in liquid form

Endorsement: Provisions of subsection 41(5) applied

1. On 1 February 2024 a non-use application ('Application') based on ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth)[2] was filed in the name of Liquefy Health Pty Ltd ('Removal Applicant'). The Application is for the removal of the Trade Mark from the Australian Register of Trade Marks ('Register') in respect of all the Registered Goods.
2. On 4 April 2024 Innovation Ventures, LLC ('Removal Opponent')[3] filed a Notice of Intention to Oppose the Application, followed by its Statement of Grounds and Particulars on 2 May 2024. On 13 May 2024 the Removal Applicant filed a Notice of Intention to Defend the Application.
3. The Removal Opponent filed the followings declarations as evidence in support:
   • Declaration of Kellie Stonier, Principal of Griffith Hack Lawyers for the Removal Opponent and International IP Holdings, LLC, made on 9 August 2024, with Annexures KAS-01 to KAS-06 ('Stonier').

• Declaration of Shawn McCue, Chief Financial Officer of the Removal Opponent and International IP Holdings, LLC, made on 14 August 2024, with Annexures SM-01 to SM-04, ('McCue').

1. The Removal Applicant did not file evidence in answer.
2. Once time for filing evidence had ended, the parties were given an opportunity to either request an oral hearing or a hearing by way of written submissions. The Removal Applicant requested an oral hearing via videoconference. The Removal Opponent requested a hearing by way of written submissions. Both parties filed written submissions prior to the hearing. As a delegate of the Registrar of Trade Marks I heard the matter on 7 April 2025. Sonia Steward of Counsel instructed by Dean Gerakiteys and Antonia Wayne-Boyle of Clayton Utz appeared on behalf of the Removal Applicant.

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use.
2. The Removal Opponent nominated grounds under ss 92(4)(a) and 92(4)(b) which provides:

(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) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(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:

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. Given the way that s 92(4)(a) is expressed, this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years and I confirm that five years since filing the application have in fact passed.[4] Accordingly, it is only necessary to consider the s 92(4)(b) ground.
2. Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the Trade Mark is the three year period ending on 1 January 2024 ('Relevant Period'). It is relevant to note there that during the Relevant Period, the Removal Opponent was the owner of the Trade mark and hence any use must be by it or authorised by it.
3. Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent must show on the balance of probabilities[5] that it has used the Trade Mark, or a trade mark with additions or alterations not affecting the identity of the Trade Mark in relation to the Registered Goods, in good faith in Australia within the Relevant Period.
4. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression 'use in good faith' has a well understood meaning in terms of s 92, namely it is 'real, as opposed to token, use in a commercial sense'. [6] Provided the use is in good faith, 'a single bona fide use of the mark' may be enough to rebut an allegation of non-use.[7] Little weight is to be given to assertions of use which are not supported by documentary evidence.[8] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[9]
5. The principles regarding use as a trade mark were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[10]

1. In accordance with s 101, if the ground for removal is established, I may decide to remove the Trade Mark from the Register in respect of any or all of the goods identified in the Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

1. McCue declares that the Removal Opponent and IIPH are part of the same corporate group. McCue states that the Removal Opponent was incorporated in the United States of America (State of Michigan) on 7 July 2000 and operates a retail business which produces a range of dietary supplements, energy supplements and beverages.[11] McCue attests that IIPH was incorporated in the United States of America (State of Michigan) on 18 June 2012 for the purpose of holding the global portfolio of intellectual property related to the 5-HOUR ENERGY brand.[12]
2. McCue states that on 2 August 2012 the Removal Opponent and IIPH entered into a deed of assignment in which the Removal Opponent assigned its rights title and interest in the Trade Mark to IIPH.[13] McCue claims that on or about 2 August 2012 the Removal Opponent and IIPH entered into a licence agreement in which IIPH granted the Removal Opponent a licence in respect of the Trade Mark. The licence agreement permits the Removal Opponent and Living Essentials to use the Trade Mark in relation to the Registered Goods in Australia. A copy of the assignment deed is annexed to McCue.
3. McCue declares that the Removal Opponent has an international distribution network in place, whereby its goods are offered for sale and sold in a range of overseas countries. At the time of filing the Trade Mark in Australia the Removal Opponent had an intention to expand its use of the Trade Mark in relation to the Registered Goods in Australia.
4. Stonier declares that during the Relevant Period, the Registered Goods were offered for sale and sold in Australia, under or by reference to the Trade Mark. Annexure KAS-01 to Stonier comprises two screenshots from the Internet Archiving Service Wayback Machines for the Bruce Super Convenience ('BSC') website https://brucesuper.com.au/collections/drinks ('BSC Website') dated 3 November 2022 and 22 February 2023. The screenshots show use of the Trade Mark in relation to energy drinks/dietary supplements.
5. Annexure KAS-02 to Stonier comprises screen captures from the BSC Facebook account dated 22 November 2023 and the BSC Instagram account dated 20 and 22 November 2023. The screen captures show use of the Trade Mark in relation to energy drinks/dietary supplements.
6. Stonier declares that the Trade Mark remains in use on the BSC Website. Annexure KAS-03 to Stonier comprises a sample of screenshots from the BSC Website and the websites of Ubuy at www.u-buy.com.au and Amazon at www.amazon.com.au, dated 22 February 2024. The screenshots all show use of the Trade Mark in relation to the sale of energy drinks/dietary supplements.
7. McCue states that in early 2024 he instructed Griffith Hack Lawyers to purchase goods bearing the Trade Mark from the websites of independent third party distributors, namely Bruce Super Convenience, Lakesideshipper on the Ubuy store and supermartusa on the Amazon store. Stonier states that McCue caused the following purchases of the Registered Goods in February 2024:

• Annexure KAS-04 to Stonier comprises a copy of an order confirmation for energy drinks/dietary supplements under the Trade Mark from BSC dated 23 February 2024 and an undated photograph of the product packaging which lists the distributor as Living Essentials, LLC. Annexure KAS-04 to Stonier also comprises a copy of a commercial invoice for energy drinks/dietary supplements under the Trade Mark from Ubuy dated March 2024.

• Annexure KAS-05 to Stonier comprises a copy of an invoice from Amazon.com.au dated 27 February 2024. The invoice details an order for energy drink/dietary supplement products under the Trade Mark. Annexure KAS-05to Stonier also comprises an undated photograph of the energy drink product packaging which lists the distributor as Living Essentials, LLC; and

• Annexure KAS-06 to Stonier comprises a copy of an order confirmation for energy drink/dietary supplement products under the Trade Mark from Ubuy dated 27 February 2024.

1. McCue attests that the Removal Opponent inspected the goods referred to in the above purchases from third party distributors and confirmed that the goods were genuine products.

1. In my assessment of the evidence, the Trade Mark has been used in relation to energy drink/dietary supplement products in Australia during the Relevant Period. However, there is no evidence that this use was by the Removal Opponent. The evidence of use during the Relevant Period shows use of the Trade Mark on a third party website and social media accounts, namely, the BSC Website and the BSC Facebook and Instagram accounts. There is no evidence that these products are the Removal Opponent's products or that BSC is an authorised user of the Trade Mark.[14] Indeed there is no evidence of the Removal Opponent distributing any of its products to Australian wholesalers or retailers during or before the Relevant Period.
2. Even if I were to accept that the evidence of use in Australia after the Relevant Period which includes a photograph showing the energy drink/dietary supplement products sold by BSC were distributed by Living Essentials, LLC, an entity McCue claims has a licence agreement with IIPH which permits it to use the Trade Mark, the terms of any such licence are not in evidence, nor is there any evidence of any quality or financial control being exercised by IIPH.[15] For completeness, the Removal Opponent claims that at all times it and IIPH operated with a 'unity of purpose'.[16] However, Trident relied on common directorship of two companies to conclude that those entities were acting with a 'unity of purpose'.[17] The company extracts annexed to McCue lists the Directors/Officers of the Removal Opponent as Shawn McCue and the Directors/Officers of IIPH as James J Giszczak. The individuals named in the company extracts are not in common and the evidence leaves me unable to reasonably conclude that the Removal Opponent and IIPH operated with 'unity of purpose'.
3. Therefore, I am not satisfied that the Removal Opponent or an authorised user as contemplated by the Act has used the Trade Mark during the Relevant Period in Australia in relation to the Registered Goods.

1. The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the Relevant Period, pursuant to s 100(3)(c) and in the interests of completeness I have been unable to identify any such obstacles.
2. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Goods.

1. Section 101(3) provides:

If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

1. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[18]
2. In this matter, the question is whether it is reasonable not to remove the Trade Mark in respect to the Registered Goods even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[19]
3. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd,[20] Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark[21] were of assistance in considering the exercise of the discretion:
   • there had been no abandonment of the trade mark;
   • the registered proprietors of the trade mark still had a residual reputation in the mark;
   • there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
   • the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and
   • the registered proprietors were not aware of the applicant's sale under the mark.

1. The public interest and the interests of the parties are inherent in the above factors. In this regard Austin, Nichols & Co Inc v Lodestar Anstalt provided the following guidance:

The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[22]

1. The Removal Opponent submits that it is clear from its evidence that the Trade Mark has not been abandoned and that the Trade Mark has been used in respect of the Registered Goods, both during the Relevant Period, and since the Relevant Period has ended. The Removal Opponent opines that use of the Trade Mark in connection with the Registered Goods or goods of the same description during the Relevant Period, is such that confusion is likely to arise if the Registration is not maintained in its entirety.
2. In response the Removal Applicant submits that the Removal Opponent's evidence does not contain any assertion that it would be disadvantaged by removal of the Trade Mark or experience any commercial disruptions. Moreover, there is no evidence that the Removal Opponent projects or directs any of the Registered Goods under the Trade Mark to the Australia Market or intends to do so. Further, the Removal Applicant submits that any products that the Removal Opponent would wish to sell under the Trade Mark cannot be sold legally in Australia. The Removal Applicant also states that the Removal Opponent has not demonstrated use of the Trade Mark in respect of similar goods or services closely related to the Registered Goods.
3. On balance, taking into account each of the above factors into consideration both individually and together, I am not persuaded that the Removal Opponent has met its burden of persuasion. The Trade Mark has been registered for over fifteen years and there is no evidence that the Removal Opponent has any residual reputation in the Trade Mark in relation to the Registered Goods or similar goods that would result in consumer confusion or practically impact on the interests of the Removal Opponent. Given the importance of the integrity of the Register I consider that the public interest would be served if all the Registered Goods were removed from the Register. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

1. I direct that trade mark registration 1281037 be removed from the Register in respect of all the Registered Goods, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed for all the Registered Goods until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.

1. Both parties sort costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Regulations.

[1] Convention details: United States of America, number 77/522602.

[2] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') or regulation of the Trade Marks Regulations 1995 (Cth) ('Regulations').

[3] On 2 August 2012, the Removal Opponent and IIPH entered into a deed of assignment. A request for full assignment of the Trade Mark was recorded on the Register on 21 August 2024 from International Ventures LLC to International IP Holdings, LLC.

[4] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

[6] [2001] FCA 261, [16].

[8] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

[9] (1962) RPC 1, 7.

[10] ('Self Care') [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

[15] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; (2016) 244 FCR 557 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ) ('Lodestar').

[16] Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100; (2019) 369 ALR 367, 380-1 [45]-[52] (Reeves, Jagot and Rangiah JJ) ('Trident').

[18] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

[19] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

[20] [2008] FCA 934, [209].

[21] [1982] RPC 425.

[22] [2012] FCAFC 8, [38].