Woolly Bull Enterprises Pty Ltd v Reynolds

Woolly Bull Enterprises Pty Ltd v Reynolds - [2001] FCA 261 - FCA 2001 case summary — Zoe

[10]

7 To be capable of registration as a trade mark, a sign must be "used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person" from the goods or services of others (s 17). Only a person so using or intending to use a sign is entitled to apply for its registration as a trade mark (s 27). It is a ground of opposition to registration of a trade mark that the applicant does not intend to use the mark "in relation to the goods and/or services" specified in the application. An object of the 1995 Act is to create, by registration of trade marks, a species of tradeable property - see ss 21 and 22 - but only where such marks are connected with actual or contemplated trade in goods or services. It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods. Such a person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark he wishes to attack remaining on the Register, though he might wish to traffick in marks as distinct from to trade in marked goods. 8 But the respondent is the trustee of a family trust which operates the "Bootleg Brewery", a mini-brewery in the Margaret River district of Western Australia. Since 1995, the respondent has made a beer which he has sold under the name "Raging Bull". He intends to pursue this activity. By application filed 14 November 1996, he sought registration of the word mark "Raging Bull" in respect of all goods in Class 32. On 27 April 1997, the Registrar cited the first applicant's registered mark as a bar to the registration of the respondent's trade mark application. Moreover, in July 1998, Mr Burmingham advised the respondent's solicitor that any use by the respondent of the first applicant's mark or any similar mark would require its permission and, in the course of this litigation, the first applicant, by Mr Burmingham, has alleged that the respondent's activity in producing his beer under the name "Raging Bull" infringes its rights in its registered mark. 9 In these circumstances, there can, in my opinion, be no doubt that the respondent is "a person aggrieved" for the purposes of s 92 of the 1995 Act. In Continental Liqueurs Pty Ltd v GF Heublein and Bro Inc (1960) 103 CLR 422 at 427 - 428, an applicant for removal of a mark was held to be a "person aggrieved" within s 72 the Trade Marks Act 1905 (Cth) ("the 1905 Act") on the following basis:

[12]

10 See also Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198 at 210 and New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (No 2) (1989) 14 IPR 75 at 77. 11 The argument of the applicants that, by failing to search the Register and thus to discover the existence of the first applicant's mark before he commenced to use his own "Raging Bull" mark in 1995 or before he applied for registration of that mark in 1996, the respondent disentitled himself from the discretionary remedy of removal of the first applicant's mark is unsupported by authority. The dictum of Whitford J in "ASTRONAUT" Trade Mark (1972) 89 RPC 655 at 669 - 670 relied on by the applicants relates solely to the issue whether the Registrar's decision to reject the removal application was invalidated by bias by reason of the comment the Registrar made about the applicant for removal's conduct in not searching the Register. I can see no reason in principle why a person whose existing trade may be disrupted because the owner of a registered mark is threatening to enforce his rights against the former should not have standing to challenge the continued registration of an allegedly unused mark, whether that person commenced his trade with or without knowledge of the registered mark. The applicants' submission is in conflict with Kitto J's ruling in Continental Liqueurs Pty Ltd v GF Heublein and Bro Inc at 428 that, in seeking to deny an applicant for removal the status of a "person aggrieved" within s 72 of the 1905 Act, it was irrelevant to inquire into whether the applicant had engaged in reprehensible conduct in establishing the business upon which he relied to show that he had a real interest in having the offending mark removed from the Register. The reason is the same as that given by Kitto J for refusing to exercise the residual discretion to allow the non-used mark nevertheless to remain on the Register on the ground of allegedly unconscientious conduct of the applicant for removal in building up its business. His Honour said, at 433, that that discretion:

[17]

16 There are differences in the wording of s 23(1)(b) of the 1955 Act and s 92(4)(b) of the 1995 Act. In contrast to s 23(1)(b) of the 1955 Act, which required proof of no use in good faith to justify removal of a mark, s 92(4)(b) provides for removal either where the registered owner has not "used the trade mark in Australia" or where the registered owner has not "used the trade mark in good faith in Australia". Section 92(4)(b)(i) deals with no use at all; s 92(4)(b)(ii) deals with use, but a use which is not in good faith. Consistently with s 92(4)(b), s 100(1)(c) casts the burden on the opponent to removal of rebutting any allegation by the applicant for removal that the mark has not "been used, or been used in good faith"; s 100(3)(a) then declares that the opponent is taken to have rebutted "the allegation that the trade mark has not … been used, or been used in good faith" only if he establishes that the mark "was used in good faith". Proof by the opponent of use within the relevant three year period is not sufficient to rebut the allegation of non-use: only proof of use in good faith will suffice. But s 92(4)(b)(i) and (ii) only restate, in verbose fashion, the ground for removal for non-use in s 23(1)(b) of the 1955 Act. (The expression "use in good faith" has a well understood meaning in this context, viz, real, as opposed to token, use in a commercial sense: see New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 45 and Shanahan, Australian Law of Trade Marks and Passing Off, 2nd ed, 1990, at pp 272 - 274.) 17 Though s 92(4)(b) is differently expressed from s 23(1)(b), I do not consider the changes in wording are enough to justify any different approach to the operation of the new provision in the respect now relevant. Section 23(1)(b) of the 1955 Act, which exposed a registered mark to removal where "a continuous period of not less than 3 years had elapsed … during which there was no use in good faith of the trade mark", is similarly worded in this respect to s 92(4)(b). An application for removal could not properly be brought on the basis of almost continuous user under s 23(1)(b), just as a removal application cannot now be brought under s 92(4)(b) on such a basis. A single bona fide use of the mark in the relevant period is sufficient to answer an application for removal under both provisions. 18 Both counsel relied upon Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 as showing what was required for there to be a use of the applicants' mark sufficient to answer the respondent's allegation of non-use. Moorgate was concerned with whether what had been done in the course of establishing trading relations between an overseas trader and an Australian trader amounted to a use in Australia of the trade mark of the overseas trader. The specific issue for determination was whether, at the time Philip Morris applied for registration of the mark in question, Moorgate was already the proprietor of that mark for the purposes of s 40 of the 1955 Act because it had previously used the mark as a trade mark in Australia. Moorgate relied on the fact that, in connection with discussions with Philip Morris about the possible introduction of its low tar cigarette in Australia, Moorgate's overseas predecessor, Loew's, sent packets of cigarettes and associated advertising material displaying a version of the mark to representatives of Philip Morris in Australia. In the leading judgment, Deane J said at 433 - 434:

[19]

19 At the hearing, attention was concentrated on the second applicant's dealings in the period March-April 1996 with Mr Warner of Sanctuary Cove Brewery, a subsidiary of Carlton United Breweries ("CUB"), as establishing that the mark (or the mark with relevant additions or alterations) was used in good faith by the first applicant during the relevant three year period. The applicants submitted that Mr Burmingham's dealings with Mr Warner of CUB showed that the first applicant had used its mark during the course of those discussions in that it then had an existing intention to offer or supply goods bearing the mark in trade within the second limb of Deane J's dictum in the passage in emphasis in Moorgate. 20 The applicants, in my opinion, misunderstand what Deane J said. His Honour made the comment relied on in the context of explaining what was necessary to establish use of a mark in Australia by an overseas trader, though there was no actual dealing in goods bearing the mark in this country in the sense of no actual sales or offers of sale of the goods here. The dictum cannot be read in isolation from this context. Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here. Further, where such a commitment of the goods has occurred, there will be "an existing intention etc", sufficient to show use of the mark in Australia where the mark has been used, in advertising in this country their future availability for purchase here, though none of the goods earmarked for export to Australia have yet arrived. Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark. What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country. 21 McGarvie J understood Deane J's dictum as being to this effect in Settef. One issue there was whether an Italian company, Settef, had used its "Riv-Oland" word mark in Australia before 1978 so as to become the proprietor of the mark here and thus entitled to the registration of the mark which it obtained in 1978. McGarvie J said at 417:

[21]

22 His Honour held, however, that by late 1968, Settef had made a sufficient use of the mark here to entitle it to be recognised as the proprietor of the mark. But, according to McGarvie J, a present intention to offer goods with the mark on them is not sufficient to constitute use of the mark unless there then exists "a trading channel which in a business sense had already been opened to Australia". 23 But Moorgate has been accepted as establishing in other contexts that there is a line of demarcation between use of a mark in trade and activities with respect to the mark which are preliminary to actual use of the mark. In Settef at 437 - 440 and Conquip Holdings Pty Ltd v S & A Restaurant Corp [2000] FCA 256 at [76] to [85], this distinction was applied to determine whether a mark had been used by the registered owner so as to defeat an application for its removal from the Register for non-use. In Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517, the distinction drawn in Moorgate between acts of user of a mark and acts preliminary to user was applied to determine whether an opponent to an application for registration of a mark had a good ground of objection to registration because the opponent had itself used the mark prior to the date of the other's application. 24 In Settef, in the course of considering the defendant's counter-claim for removal from the Register of the plaintiff's mark under s 23(1)(b) of the 1955 Act for non-use, McGarvie J referred to the evidence of a visit by a Mr Tessarallo to a principal of Settef in Italy during the course of which Tessarallo said he was interested in distributing Settef products in Australia. The Settef principal said he would visit Tessarallo early the following year and, in the meantime, would send him publicity material to enable him to research the market. Soon after, he sent Tessarallo sample books and catalogues of Settef's "Riv-Oland" marked products and, a little later, visited Tessarallo in Australia, but did not think he would be a suitable distributor, so Settef took the matter no further. McGarvie J, at 439, concluded:

[25]

26 In Conquip, the only evidence of any activity that took place in Australia in the relevant three year period that was relied on to show use here of the mark was the despatch to Australia on a confidential basis of standard menus used in an American restaurant chain operated under a trade mark name by the American owner in response to an inquiry from an Australian resident interested in discussing the possibility of opening up restaurants in Australia under that same name by agreement with the American owner. The evidence was that negotiations were unsuccessful and did not result in the opening of any such restaurant here. Not surprisingly, Heerey J held that these negotiations were "as their terms plainly indicate" of a preliminary nature and did not lead to any use of the marks in Australia. It can be inferred that the American owner, by sending his marked menus to Australia in response to the inquiry then intended to use his mark as a trade mark in Australia, if agreement were reached with the Australian inquirer for the opening of a restaurant here. But that was not enough to show use of the mark in this country. 27 In Buying Systems (Australia) Pty Ltd v Studio SRL, the question was whether Buying Systems had used the mark (the word "Studio" in relation to fashion and hairdressing magazines) prior to the use of that mark by Studio SRL so as to defeat the latter's claim to registration as proprietor of the mark within s 40 of the 1955 Act. The critical date was 8 December 1983. In the period September to November 1983, Grand, the principal of Buying Systems, decided to set about publishing a new fashion magazine under the name "Studio Collections". He had business cards and letterheads with the word "Studio" printed. He contacted potential advertisers and solicited advertisements for the new magazine. Two of the organisations approached in this period ultimately took up advertising space in the first issue, which appeared in mid-1984. Gummow J concluded at 520:

[27]

28 Buying Systems not only had an existing intention to trade in the magazine, it had gone beyond making preliminary arrangements to use the mark by December 1983. It had an objectively ascertainable commitment to offering to supply the magazine in trade demonstrated by its having purchased and used appropriate business cards and letterheads in connection with the proposed offering of the magazine and by having solicited advertisers for the magazine. (In the absence of evidence as to the subsequent publication of the magazine, however, it may well have been difficult for Buying Systems to satisfy the Court that, by December 1983, it then had an intention to offer or supply goods bearing the mark in trade and had done things sufficiently unambiguous to objectively show that it had that intention.) 29 Mr Burmingham says that it was in August 1994 that he collapsed and suffered a severe relapse of his chronic fatigue syndrome sufficiently severe to disable him from working at that time. This necessitated postponement of surgery on his knee planned for September 1994 until February 1995. It was not until December 1995 that he says his health gradually began to improve "for the first time in a number of years". By about March 1996, he says his health had improved sufficiently to allow him to hold his discussions with Mr Warner of CUB in relation to the manufacture and distribution of "Raging Bull" drinks, including beer and soft drinks. It appears he took the initiative in contacting a Mr Murphy of the CUB plant at Yatala. Murphy referred him to Mr Warner, the manager of the CUB brewery at Sanctuary Cove, which acted as a development base for new products for CUB, including beer and soft drink. In April 1996, Mr Burmingham says he had a number of discussions with Mr Warner. These involved "the manufacturing and distribution of the range of 'Raging Bull' drinks, including beer and soft drinks". Mr Warner sought an assurance that Woolly Bull Enterprises was the registered owner of the "Raging Bull" trade mark. Mr Burmingham provided Mr Warner with a range of promotional material. I accept that this consisted of material substantially identical to that contained in exhibit 14 to Mr Burmingham's first affidavit. None of this material depicts the registered mark, though, in various places, it depicts both word and pictorial elements of that mark. Mr Burmingham describes the course of discussions with Mr Warner as follows:

[36]

32 Mr Warner did not reply: he said in his letter of 29 August 2000 that, "as he had advised previously", he did not receive Mr Burmingham's letter of 5 April 1996 addressed to him, though Mr Burmingham subsequently provided him with a copy in 1999. 33 Mr Burmingham's discussions with Mr Warner came to a halt for the reason, according to Mr Burmingham, that soon after writing to Mr Warner on 5 April 1996, he sustained a fall which caused a range of orthopaedic injuries and another relapse of his chronic fatigue syndrome. Soon after that, he spoke to Mr Warner about these problems and gave evidence that: "We agreed that it was not appropriate to proceed with any arrangement until I recovered my health." Mr Burmingham also says that "due to my on going medical problems I found myself in a state of extreme impecuniousness in 1996". The consequence was that in November 1996 he entered into a Deed of Arrangement with his creditors under Pt X the Bankruptcy Act 1966 (Cth), a step which resulted in him having to resign as a director of the first applicant and to "refrain from any activities on behalf of the Company which may have been deemed to be activities of a director". It was not until January 1998 that the trustee of the Deed certified that the arrangements had been carried out. 34 Notwithstanding what he said was his obligation under the Deed of Arrangement, between February and May 1997 (when he again collapsed and had to cease all work activities), Mr Burmingham says he "commenced discussions with various parties regarding 'Raging Bull' licensing opportunities which would complement and cross-promote the 'Raging Bull' beer". So far as they are relevant to the issue of use of the trade mark in relation to Class 32 goods during the relevant period, these activities included meetings and discussions with a licensing agency, a graphic designer and a costume designer (regarding the preparation of 'Raging Bull' costumes for use in promoting 'Raging Bull' products, including its beer). Quotes were obtained from some of these organisations for promotional and other work to be done for the applicants but, on the evidence, they were never followed up by the applicants. In February 1997, Mr Burmingham also had discussions with the Wool Exchange Night Club in Geelong which made an offer to Mr Burmingham to hire the night club venue to him "at a discounted rate of $1,000" for the relaunch of "Raging Bull" drinks. The principal of the Wool Exchange also offered his services as production assistant with respect to the production of a promotional video "at a nominal rate of $300 per week". These offers were not followed up either by Mr Burmingham. 35 In July-August 1997, Mr Burmingham was in England "for family matters", but on his return in September 1997 again collapsed with a relapse of his chronic fatigue system. The only actions he took up to August of that year in 1998 with respect to the first applicant's registered trade mark involved communications with the Trade Marks Office with respect to keeping up the application for registration of the mark (a registration which the first applicant obtained in June 1998) and in taking action to protect his mark in the face of the activities of the respondent. 36 Mr Warner was not called as a witness, though his letters of 13 April 1999 and 29 August 2000 to Mr Burmingham, which the latter solicited for use in this litigation, were put into evidence as original evidence. Mr Warner, in his earlier letter, says:

[41]

38 The tenor of Mr Burmingham's own affidavit evidence and what he had to say in the letter of 5 April 1996 which he wrote to Mr Warner was to the effect that he was proposing that CUB enter into a licence arrangement for the use by it of the first applicant's mark in connection with goods to be produced and sold by CUB. Counsel for the applicants, however, sought to develop an argument on the basis of Mr Burmingham's oral evidence and of Mr Warner's letter of 13 April 1999 that something rather different to that was discussed between Mr Burmingham and Mr Warner, viz, an arrangement under which CUB would dedicate part of its production capacity to producing beverages to be sold to consumers under the first applicant's mark either by the first applicant alone or by a joint venture between CUB and the first applicant. Mr Warner's letter was admitted as original evidence only and so cannot provide a foundation for any such finding. But even if the letter were admissible without qualification, it would not be capable of supporting the finding contended for, given what Mr Burmingham himself has to say in his affidavit about his discussions with Mr Warner turning on licensing arrangements and what Mr Warner himself says in confirmation of that in the opening words of the letter. Nor would that finding, if made, advance the applicants' case that Mr Burmingham's dealings with Mr Warner showed a use of the applicants' mark. 39 In oral evidence, in contrast with his affidavit testimony and contemporaneous letter to Mr Warner, Mr Burmingham suggested that the discussions he had with Mr Warner in early 1996 were with a view to CUB entering into an arrangement with the first applicant for the production by CUB of beverages for the first applicant which would be sold to consumers by the first applicant under its mark. I am not prepared to accept this late-emerging evidence. But even if I were, it would not assist the first applicant's case that it then used its mark. 40 Though I have no doubt that Mr Burmingham was, at least in the period March-April 1996, trying hard to persuade Mr Warner to commit CUB to an arrangement with the first applicant under which CUB would produce and sell beer under the first applicant's registered mark or a version of it, his efforts were unsuccessful. His subjective intention, no doubt bona fide, was that the first applicant's mark be used in trade. But that is as far as the case for the applicants goes. It does not involve any use of the mark sufficient for the purpose of s 100(3)(a). Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect. Mr Burmingham was never able to get beyond attempting to establish a means for the first applicant to use its mark in trade. That does not amount to any use of the first applicant's mark in trade sufficient to defeat the removal application. It goes no further than discussions preliminary to the first applicant actually committing itself to the use of the mark in the course of trade. 41 Given this conclusion, it is unnecessary to consider whether the provision by Mr Burmingham to Mr Warner in April 1996 of the folder containing the "beer label" version of the registered mark, though not the mark itself, was the use of the registered trade mark "with additions or alterations not substantially affecting its identity" within s 100(3)(a).

[49]

46 It can be accepted that the wording of s 100(3)(c) was deliberately adopted to give the sub-section a wider operation than the narrowly worded provision contained in s 23(4) of the 1955 Act. It is now not necessary to show unusual or abnormal, as opposed to normal or usual, trading conditions (a difficult concept to comprehend and apply) before s 100(3)(c) can operate. Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark. 47 In the context of s 100(3)(c), there are, however, good grounds for reading "circumstances" as not embracing any event of any kind. The circumstances must be "an obstacle to the use of the trade mark by the registered owner". This suggests that they must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner. 48 But if any circumstance external to the owner, in the sense of being a circumstance not brought about by the voluntary act of the owner, is within the provision, the Court would be drawn into inquiries of a kind that it is difficult to accept were in the contemplation of the Parliament. Financial impecuniosity could excuse non-use of a trade mark, irrespective of how enduring and intractable the owner's impecuniosity might be. Illness of the registered owner could also excuse non-use of the registered trade mark (as is the contention of the applicants here). A falling out between joint registered owners of a mark that disrupts the use by either of the mark might also be capable of excusing non-use. In all such situations, questions could arise requiring investigation by the Court into whether the obstructing circumstances were due to the conduct of the registered owner. 49 If the Parliament intended any circumstance external to the owner to be capable of providing an excuse for non-use, little purpose would be served by the words in parenthesis in s 100(3)(c), viz, "whether affecting traders generally or only the registered owner of the trade mark". The presence of these words is some indication that the circumstances comprising an obstacle to use of the mark must not only arise externally to the registered owner, but must also be circumstances of a trading nature. 50 Section 100(3)(c) is, in my opinion, sufficiently obscure to permit recourse to extrinsic materials as an aid to its interpretation: see s 15AB(1)(b) the Acts Interpretation Act 1901 (Cth). 51 In his second reading speech on the Trade Marks Bill 1995, the Minister said (Hansard, 27 September 1995 at p MC1910):

[57]

54 It is apparent from these extrinsic materials that s 100(3)(c) was not intended by the Parliament to provide a defence to an attack on a registered trade mark for non-use on any grounds, including grounds entirely personal to the trade mark owner that do not bear any trading character, so long only as they do not arise from the voluntary actions of the owner. 55 In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner's mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark's non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner "because of" circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark. Cf In re James Crean & Son Ld's Trade Mark at 162. 56 Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use. 57 I mention that s 46(1)(a) the Trade Marks Act 1994 (UK) now permits revocation of a trade mark on the ground that "within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor … in relation to the goods or services for which it is registered, and there are no proper reasons for non-use". This Act was introduced in order to implement the first Trade Marks Directive of the Council of the European Communities; the reason why the expression "proper reasons" appears in s 46 is not because the draftsman decided that the expression "special circumstances in the trade" in s 26 of the 1938 UK Act should be replaced by a different one, but because he was required to implement the EC Directive. See Magic Ball Trade Mark (1999) 117 RPC 439 at 441 and 442. Decisions in which this provision has been considered are collected in Kerly's Law of Trade Marks and Trade Names, 13th ed, 2001, at par 9-62. They are, however, of little assistance in seeking the meaning of s 100(3)(c) because of the different genesis of the UK legislation and the different wording of that provision. 58 There is also a question whether circumstances that constitute an obstacle to use of the mark must exist throughout the whole of the three year period if they are to be sufficient for the purposes of s 100(3)(c) or whether it is enough that they exist during a part (no doubt, during more than a de minimis part), of that period. The latter view is, in my opinion, the better reading. For the reasons given, a single bona fide use of the mark during the relevant three year period is, by force of s 100(3)(a), an answer to an application for removal for non-use. An obstacle of the kind referred to in s 100(3)(c) to the use of the mark that operates only for part (ie, more than a de minimis part) of the three year period provides the same justification for non-cancellation as does a single user of the mark in the relevant three year period, but only provided the opponent to removal establishes that the mark would have been used during that part of the three year period but for the existence then of the obstacle. A use of the mark which it is shown would have occurred during part of the three year period, but for the existence of the obstacle during that part of the period, has, in my opinion, the same claim to be recognised as excusing non-use that an actual use during that particular part of the period has. 59 But even if the evidence were sufficient to establish that for some time more than a de minimis period in the three years 17 August 1995 to 17 August 1998 Mr Burmingham was seriously ill and that, but for his illness, he would have ensured that the first applicant used its mark during the period of his disability that, for the reasons given, is incapable of providing the first applicant with an answer, pursuant to s 100(3)(c), to the respondent's allegation of non-use of the first applicant's mark throughout that three year period. 60 The appeal must be dismissed. I certify that the preceding sixty (60) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Drummond.

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