application
226�������������������������������������� The determination of the present appeal raised several unsettled questions of law, including the relevant date for assessing intention under s�59, whether the intention may be presumed from making the application, the shifting of the evidentiary onus and the standard of proof on opponent must meet.
227�������������������������������������� The Full Court in Food Channel has recently clarified several of those issues.� Moreover, ultimately, the disposition of the appeal did not depend on their resolution.� On any view, Americana bore the onus of establishing the ground of opposition, but in my opinion, it failed to prove that Suyen lacked the requisite intention whether at the date of filing the application or thereafter, either on the balance of probabilities or according to the higher standard that the trade mark, if granted, clearly should be expunged.
228�������������������������������������� As in the hearing before the delegate, in which Suyen filed no evidence, Americana on appeal sought to rely on particular evidence to shift to Suyen the evidentiary burden which, it contended, was not discharged.
229�������������������������������������� The utility of that approach in the context of an appeal by rehearing in which both parties file evidence is questionable, as whether the applicant lacked the requisite intention must be determined on the evidence as a whole.� The significance of discrete elements of evidence led by the opponent and unanswered by the applicant below must be viewed in the context of any different and additional evidence filed in the appeal by rehearing.
230�������������������������������������� If, however, an analysis based on shift of onus is apt where the applicant files evidence in response, in my view, the specific matters relied on by Americana did not suffice on appeal to shift the evidentiary onus.� In the present case, the delegate considered that the limited references to Australia in Suyen's 2006 USA notice of opposition, as a legal document prepared when the parties were engaged in litigation (including the opposition proceeding in Australia in relation to the bench_BODY trade mark) was a principal factor shifting the evidentiary burden to Suyen which (having filed no evidence) it failed to discharge.
231�������������������������������������� The delegate's decision commands respect as that of a skilled and experienced person, but its correctness is not presumed.� Moreover, its relevance in this case was greatly diminished by the introduction of considerable evidence on appeal which was not before the delegate.
232�������������������������������������� The limited references to Australia in the 2006 USA notice of opposition, in the context of the parties' litigation, in the delegate's view cast sufficient doubt on the presumed intention to require an explanation, but the notice of opposition was not, in my opinion, highly compelling evidence against Suyen.
233�������������������������������������� It was not directed at the Australian litigation in relation the bench_BODY trade mark but to the removal of Americana's B�BENCH mark from the USA Register.� The history it provided to that end was inclusive (ie: "some aspects") rather than exhaustive, and emphasised Suyen's existing activities rather than its intentions for the future.� Australia was referred to as the locus of a Filipino customer base which could receive advertisements on a Filipino cable television, consistently with Suyen's evidence on appeal of its plan to expand its commercial operations to Australia in the future.
234�������������������������������������� The limited focus on Australia on Suyen's website and online shop bespeaks a lack of commitment to achieving online sales to Australian customers.� The freight charges for purchases of small quantities are high, the range of bench_BODY items available for purchase from Australia appears small (although not necessarily as limited as the investigations of Ms Pathi and Ms Saunders suggested as the dates of their examinations were limited, and the range of sizes and colours may not have been comprehensively checked).� Further, there was no evidence that any sales to Australia had been achieved other than for the purposes of this litigation.� On appeal, however, the evidence (which was not before the delegate) established that there had been several thousand visits to the online site from Australia and the possibility of online purchase of goods bearing the bench_BODY trade mark from Australia.
235�������������������������������������� The delegate concluded that the reach of the website could not illuminate Suyen's intention to use the mark in Australia.� Although the additional evidence on�appeal may not suffice to establish use of the mark in Australia (see Ward Group Pty Ltd v Brodie & Stone Plc (2005) 143 FCR 479) it does not disprove an intention to use it there in future.
236�������������������������������������� In my view, neither the 2006 USA notice of opposition nor the content of Suyen's website and online store constituted compelling evidence of the absence of the requisite intention. �To the extent that either or both matters required an explanation, it was provided by the positive evidence advanced by Suyen of its intention to use the bench_BODY trade mark in future expansion of its commercial operations to Australia.
237�������������������������������������� Americana challenged the credibility and consistency of Suyen's evidence on various bases but did not, in my view, vitiate its effect.
238�������������������������������������� Bryan Lim, a member of the Executive Committee charged with making decisions as to the use and registration of trade marks, testified that Suyen had the requisite intention to use the bench_BODY trade mark in Australia, both at the date of filing the application and at all other times thereafter.� Mr Lim was, in my view, an impressive and credible witness.
239�������������������������������������� His evidence was not rendered implausible because he was unable to specifically recall the making of the decision or because there was no documentary record of it.� Nor, on a fair construction of his testimony, did Mr Lim retract the assertion that he visited Australia to assess the potential market for Suyen.� Rather, he stated that he had two purposes, of which market assessment was one.� Mr Lim's failure to take particular investigatory steps which were not his routine practice, or to identify a business partner or franchisee during his visits to Melbourne or thereafter, did not, in my opinion, negative his testimony.� Similarly, as the intention need not be to use the trade mark immediately or at any particular time in future, and its registration has been opposed since 2004, the failure to implement the expansion as yet does not contradict Mr�Lim's evidence.
240�������������������������������������� His reference to an "option" which, on fair reading in context, referred to the expansion by use of the bench_BODY trade mark as in China after, and additionally to, its principal BENCH trade mark did not constitute a retraction of his testimony that Suyen definitely intended to use the trade mark.
241�������������������������������������� In my opinion, Suyen's overseas activities established its capacity and propensity to use its trade marks, including the bench_BODY mark, in relation to goods including clothes in bona fide large scale commercial activities.� Further, its international expansion of trade marks and business operations, while flexible and individual, was not merely ad hoc, but was typically, if not exclusively, associated with Filipino migrant populations and ability to sell at lower prices.
242�������������������������������������� While Suyen's trading activities and use of trade marks in other countries cannot in themselves establish its intention to use a trade mark in Australia, they are consistent with, and reinforce, the presumption of intention to use arising from the filing of the application and the direct evidence of Mr�Lim, which I accept, of intention to use the mark in Australia.� The contrast in scale between Suyen's overseas activities and those in Australia reflects the distinction between expansion which is already implemented and that which is intended.
243�������������������������������������� Although Suyen's approach to the start up and development of business in different countries varies, BENCH brand stores were converted to or supplemented by bench_BODY brand in some countries, Suyen routinely applied to register new sub‑brands such as bench_BODY in countries where BENCH was registered, and the sales of bench_BODY products have risen.ďż˝ Those circumstances are also consistent with an intention to use the bench_BODY mark in Australia.
244�������������������������������������� Although there was no evidence of sales of clothing bearing the bench_BODY trade mark prior to the date of the application, and the sales of the products bearing related marks were on a modest scale, I was not persuaded that they were, as Americana contended, token or merely colourable.
245�������������������������������������� I accept the evidence of Mr Breva and Ms Jayona (which the investigations of Msďż˝Vella‑Xureb did not controvert) and am not persuaded that their sales were not genuine commercial transactions.ďż˝ Mrs Jayona, the principal of Solid Trading, had an arm's length relationship with Suyen of some years of duration, and independently solicited a supply of clothing due to customer demand.ďż˝ The Brevas, as relatives of Suyen's controllers, had interrelated business and family dealings, and while their earlier transactions with Suyen were informal and undocumented, reliance on family connections is a feature of Suyen's business practices. ��The sales of Suyen products bearing related trade marks prior to the application date is, in my view, consistent with, and fortifies rather than confutes, the probability that Suyen intends to use the bench_BODY mark in the context of expanding its commercial operations in Australia in future.
246�������������������������������������� Further, I was not persuaded that the post-2008 trade in clothing bearing the bench_BODY trade mark was solely directed at securing evidence to obtain an advantage in this litigation.ďż˝ The evidence does not suggest that Suyen has registered bench_BODY on an undiscriminating basis throughout the world.ďż˝ Mr Lim frankly acknowledged that in 2008 Suyen provided free samples, requested the Brevas to move from home‑based sales to consignment and documented the transactions partly in order to evidence use to assist it in the opposition proceeding. ďż˝That did not exclude his asserted coexistent purpose of stimulating interest in, and sales of, the products, consistently with the intention.
247�������������������������������������� While it was not alleged in its notice of contention, Americana, at the hearing of the appeal, alternatively submitted that any intention to use the bench_BODY trade mark related only to underwear.� In my view, the evidence did not establish that limitation.� The past use of the mark in other countries at most illuminates rather than delimits the scope of intended future use in Australia.� Mr Lim testified that the bench_BODY mark was applied to clothing which could be worn as outerwear.� He conceded that in the Philippines it was not as yet applied to shoes or boots, but did not retract his evidence that Suyen intends to use the bench_BODY trade mark in respect of the specified goods in Australia in future.