FEDERAL COURT OF AUSTRALIA

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Suyen Corporation v Americana International Limited [2010] FCA 638

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THE COURT ORDERS THAT:

1.����������������� The decision of Delegate Debrett Lyons made 31 January 2008 be set aside.

2.����������������� The appeal be allowed.

3.����������������� The applicant’s application number 968981 for trade mark registration proceed to registration.

4.����������������� The respondent pay the applicant’s costs of the hearing before the Delegate and the costs of this appeal, such costs to be taxed if not agreed.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

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REASONS FOR JUDGMENT

introduction

1�������������������������������������������� In this appeal by way of rehearing under s�56 of the Trade Marks Act 1995 (Cth) (“the�Act”), it is necessary to determine whether registration of a trade mark should be refused on the ground that the applicant, Suyen Corporation (“Suyen”), lacked the intention to use it in Australia as alleged by the opponent, Americana International Limited (“Americana”), pursuant to s�59 of the Act.

2�������������������������������������������� Suyen, by a notice of appeal dated 21�February 2008, appeals from the decision of the Registrar of Trade Marks made on 31�January 2008 by Delegate Debrett Lyons.� Delegate Lyons upheld the respondent Americana’s opposition based on s�59 of the Act, and refused Suyen’s application number 96891 filed on 5�September 2003 for registration of the following trade mark:

(“the bench_BODY trade mark”)in relation to clothing, including boots, shoes and slippers in class 25.� Delegate�Lyons dismissed Americana’s opposition based on ss�58 and 60 of the Act.

3�������������������������������������������� The notice of appeal seeks, inter alia, orders that the decision of the delegate be set aside, the appeal be allowed and the trade mark be registered.

4�������������������������������������������� Americana’s notice of contention dated 11 April 2008 (which alleged that the delegate erred in rejecting its opposition based on ss�58 and 60 of the Act) was, in substance, withdrawn by a notice of withdrawal dated 11 May 2009.

5�������������������������������������������� For the reasons that follow, I have found that the ground of opposition is not made out and that the appeal should be allowed.

facts and evidence

6�������������������������������������������� Suyen is a large clothing and marketing company principally based in the Philippines.� It is a successful enterprise which has won a number of Philippines national retail awards.� It sells clothes, footwear, headgear and other goods such as toiletries and accessories. Suyen has three subsidiary companies which manufacture clothing and accessories.� It has approximately 3000 employees and is one of the largest clothing companies in the Philippines.

7�������������������������������������������� Suyen was founded in the Philippines in 1987 by Ben�Chan, his sister, Nenita Lim, and his brother in law, Virgilio Lim.� Ben Chan, Nenita Lim and Virgilio Lim remain “owners” of the company and together constitute the Board of Directors.

8�������������������������������������������� Since 1996, Suyen has had an executive committee below the Board, which makes corporate decisions and manages the general affairs of the company.� The�directors, the Vice President for Business Development, Bryan�Lim (son of Virgilio and Nenita Lim) and the General Manager, Jude�Ong, are the current members of the Executive Committee.

9�������������������������������������������� Suyen’s original brand and trade mark was BENCH (derived from a combination of syllables of Ben Chan’s first name and surname).� BENCH�remains Suyen’s principal brand and trade mark.

10����������������������������������������� In 1987 to 1988, Suyen opened the first BENCH retail outlet in Manila.

11����������������������������������������� Thereafter, Suyen significantly expanded the scale and geographical reach of its operations.� It diversified the kinds of products and product lines it manufactured and sold, and the trade marks applied to them were increased.� New sub‑brands and additional trade marks were developed or acquired.� Suyen also expanded its business internationally, extending its operations to various countries outside the Philippines, although its principal business remains there.

12����������������������������������������� Since its first use of the BENCH trade mark in the Philippines in 1987, Suyen has continued to use the BENCH trade mark, together with other trade marks, in the Philippines and in various other countries.� Suyen currently uses a number trade marks incorporating the word Bench, including the following:

(a)��������������� BENCH

(b)��������������� bench

(c)��������������� bench/

(d)��������������� �

(e)��������������� bench_BODY

(f)���������������� BENCH BODY

13����������������������������������������� Suyen has also acquired or developed a number of non‑BENCH brands and trade marks, including Human, Kashieca, Celio and Greyhound.

14����������������������������������������� Suyen’s development and diversification of the BENCH products and brands and the expansion of its business to different countries occurred broadly as follows:

(a)��������������� The first BENCH retail outlets sold BENCH branded clothing outlets in the Philippines.

(b)�������������� In 1990, Suyen began selling BENCH branded cosmetics and toiletries.

(c)��������������� In 1993, Suyen introduced the “HERBENCH” line of apparel, aimed at the women’s clothing market.

(d)�������������� In 1994, a BENCH franchise retail outlet was opened in Saudi Arabia.

(e)��������������� In 1995, a BENCH franchise retail outlet was opened in Kuwait.

(f)���������������� In about 2001, Ben Chan (inspired by a “Gap Body” concept he had observed in the USA) proposed the introduction of the bench_BODY sub‑brand to the Executive Committee.� Suyen subsequently opened a�bench_BODY store in Makati in the Philippines on 20 November 2002.� In approximately July 2003, the bench_BODY trade�mark was first used on swing tags and labels on clothing, including t-shirts, singlets and underwear.� According to Bryan Lim, who gave evidence on behalf of Suyen, bench_BODY products currently comprise undergarments and thinner shirts that can be worn as either inner or outerwear, but do not yet, in the Philippines, include shoes and boots.

15����������������������������������������� The sale of bench_BODY products has increased over time.� Over 3.3�million items bearing the bench_BODY trade mark were sold in 2003 and over 3.9�million were sold in 2007.

16����������������������������������������� In 2002, Suyen opened BENCH boutiques in Guam, USA, Florida, USA and in Xiamen and Shanghai in China.� The Shanghai BENCH store did not succeed as expected and in about 2004, was converted to a bench_BODY store.� It was the first bench_BODY store to open outside the Philippines.

17����������������������������������������� In 2004, Suyen opened two BENCH franchise outlets in the United Arab Emirates.� There are currently no bench_BODY stores in the Middle East.

18����������������������������������������� Goods displaying BENCH and BENCH sub‑brands are sold in a variety of ways.� They are sold through stores owned by Suyen, through franchises in department stores and clothing stores, and through authorised distributors and wholesalers.� BENCH products are sold in over 500 boutiques in various countries throughout the world.

19����������������������������������������� Mr Lim deposed that goods displaying the BENCH brand and BENCH sub‑brands are currently sold in the following countries:

�������� The United States

�������� The United Arab Emirates

�������� Saudi Arabia

�������� Kuwait

�������� China

�������� Taiwan

�������� Hong Kong

�������� Singapore

�������� Japan

�������� Brunei

�������� Canada

�������� Australia

�������� Israel

�������� Palau

�������� Bahrain

20����������������������������������������� In 1998, Suyen established a BENCH website.� Since approximately October 2006, the website has included an online store which offers BENCH and BENCH sub‑brand goods for sale.� The�prices of the goods, which can be paid for through the “Pay Pal” service, are given in US�dollars, representing the equivalent of Philippines pesos.

21����������������������������������������� Suyen obtained registration of the BENCH trade mark in Australia in 1992 in relation to class 25.� It obtained registration of BENCH trade marks, and marks incorporating the words “bench_BODY”, which are registered in class 25 for clothing and other articles in various countries, as follows:

�������� The United States (filed 3 February 2005);

�������� Saudi Arabia (filed 19 December 2004);

�������� The United Arab Emirates (filed 25 December 2004);

�������� Japan (filed 5 July 2004);

�������� Kuwait (filed 26 December 2004);

�������� Republic of China (filed 1 August 2004);

�������� Taiwan (filed 8 September 2003);

�������� Vietnam (filed 17 March 2003);

�������� Canada (filed 4 September 2003).

22����������������������������������������� Suyen registered the BENCH and/or the bench_BODY trade mark, or trade marks incorporating those words, in class 25 for clothing and other articles in the Philippines, Oman, Quatar, Hong Kong and Lebanon.

23����������������������������������������� Suyen has also registered the bench_BODY trade mark (or similar marks) in relation to other classes of goods in various countries.

24����������������������������������������� In August 2002 in Australia, one Saul Bliss filed an application to remove for non‑use Suyen’s trade mark BENCH registered in relation to specific goods in class�25 (“Bliss non-use proceeding”).

25����������������������������������������� On 5 September 2003, Suyen filed an application to register the bench_BODY trade mark in Australia in relation to class 25: clothing including boots, shoes and slippers.� It also filed an application to register the bench_BODY trade mark in relation to class 35: business services relating to the operation and management of boutique, retail outlets; promotion of clothing, cosmetics and personal care products.

26����������������������������������������� In 2004, disputes between Americana and Suyen commenced, and subsequently they were party to trade mark litigation in, inter alia, Australia and the USA.

27����������������������������������������� In August 2004, Americana filed in Australia an application to remove for non‑use Suyen’s trade mark BENCH registered in relation to the specified goods in class 25.

28����������������������������������������� On 10 September 2004, Americana filed under s�52 of the Act its notice of opposition (the subject of the present appeal) to the registration of the bench_BODY trade mark in Australia in relation to class�25, based on ss�58, 59 and 60 of the Act.� (Suyen’s application to register the bench_BODY trade mark in relation to class 35 was not opposed).

29����������������������������������������� In 2006, Suyen filed in the USA a notice of opposition dated 24�March 2006 (“2006 USA notice of opposition”) to the registration of Americana’s stylised trade mark “B BENCH”.

The Delegate’s Decision

30����������������������������������������� In support of its notice of opposition to the registration of the bench_BODY trade�mark, Americana (which claimed to be the owner of the trade mark “BENCH”) filed a number of statutory declarations.

31����������������������������������������� Suyen did not file any evidence in answer.

32����������������������������������������� Delegate Lyons rejected Americana’s opposition based on s�58 of the Act. �In reliance on Computer Business Works Inc v Johnston [2005] AIPC 92-083, Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (“Shell Co”) and Effem Foods Pty Ltd [1999] ATMO 80, he concluded that, on a side by side comparison of the BENCH and the bench_BODY trade marks, they were not substantially identical.

33����������������������������������������� The delegate upheld Americana’s opposition under s�59 of the Act, which was supported by the evidence of a number of declarants.� Americana’s patent and trade mark attorney, Ms Shanks, exhibited a printout of Suyen’s website which gave its address as Manila, the Philippines, to which telephone, fax or mail enquiries and consumer complaints were to be directed.� The law of the Philippines was stated to govern the terms and conditions of sales.� The website stated that stores were located in the Philippines, China, the Middle East and the United States, but did not mention Australia.� Ms Shanks declared that her inquiries had not identified any trading presence by Suyen in Australia.

34����������������������������������������� Americana also relied, inter alia, on the statutory declarations of Mr Karpathios and Mr Haese who conducted businesses importing fashion clothing and negotiated for, or imported, Americana’s�BENCH trade mark goods.� Each declared that although the use of the bench_BODY trade mark in relation to clothing in Australia during the period 1998 to 2006 would have caught his attention, he was unaware of any such use.

35����������������������������������������� Americana also relied on Suyen’s 2006 USA notice of opposition to Americana’s registration of the B�BENCH trade mark. �The notice of opposition set out an account of Suyen’s sales, marketing, advertising and activities in relation to the BENCH trade mark, which included only two references to Australia.

36����������������������������������������� Before the delegate, Americana generally submitted that the references to Australia in the 2006 USA notice of opposition were merely “excursive”.� Further, any intention to use the mark in Australia implied by filing the application was deflated by the lack of actual user and by the representation of the geographical reach of trade of goods in the website and the USA opposition action.

37����������������������������������������� The delegate, having found that the ground of opposition in s�59 was made out, refused Suyen’s application to register the bench_BODY trade mark.

Notice of Appeal

38����������������������������������������� The notice of appeal dated 21 February 2008 alleges that the delegate erred on a number of grounds.� As discussed below, the appeal is a rehearing and its determination does not depend upon the identification of error below.

Suyen’s evidence on appeal

39����������������������������������������� In contrast to its failure to file evidence for the hearing before the delegate, in the appeal Suyen filed the following affidavits:

(a)��������������� The affidavits of Francisco Breva sworn 10 October 2008 and 12 August 2009.

(b)�������������� The affidavit of Amelita Fabro Jayona sworn 14 October 2008.

(c)��������������� The affidavit of Magda Khalil sworn 15 October 2008.

(d)�������������� The affidavits of Brian Lim sworn 20 October 2008 (“first Lim affidavit”), 12�February 2009 (“second Lim affidavit”), 27 March 2009 (“third Lim affidavit”) and 18 September 2009 (“fourth Lim affidavit”).

(e)��������������� The affidavits of Kristine Helen Baird Van Ruiten sworn 15�October 2008 (“first Van Ruiten affidavit”) and 16 February 2009 (“second Van Ruiten affidavit”).

40����������������������������������������� Mr Breva, Mr Lim and Ms Jayona gave oral evidence and were cross‑examined.� The affidavits of the other deponents were read.

Mr Breva’s Evidence

41����������������������������������������� Francisco Breva, the brother-in-law of Ben Chan and Nenita Lim, gave evidence on behalf of Suyen.� Mr Breva was a frank, forthcoming and detailed witness, whose testimony I accept.

42����������������������������������������� Mr Breva emigrated with his family to Australia from the Philippines in about 1989.� Prior�to that, from late 1987 to 1989, he was employed full time by Suyen in the Philippines to promote BENCH brand clothing to large department stores.

43����������������������������������������� On settling in Australia from 1990 to 1993, Mr Breva and his wife operated a general store in Blacktown, New South Wales, where they sold Asian style food and products, including BENCH brand clothing, such as t-shirts, pants and underwear imported from Suyen.� Mr�Breva generally maintained full time employment while his wife conducted the shop.� The dealings between Suyen and the Brevas were principally conducted by Mrs Breva and her sister, Nenita Lim.

44����������������������������������������� The Brevas established their store in Blacktown because it had a significant Filipino and Asian population to which they considered the BENCH clothing was likely to appeal, due to its cut and style.

45����������������������������������������� After closing their store in 1993, the Brevas purchased and imported BENCH brand clothing at wholesale prices from Suyen.� Mr�Breva deposed that the BENCH brand could be seen in Australia on the Filipino cable television channel ABS‑CBN.� The�Brevas sold the clothing to Filipinos or Asians from their home, at church group gatherings and by word of mouth.

46����������������������������������������� In the financial year 2006 to 2007, the Brevas sold only about 20�items and made personal use of left over items.� For the decade after their store closed, the average annual number of sales was about 20 pieces.� The Brevas sold modest amounts of clothing that they could carry as hand luggage when returning from visits to the Philippines.� When cross examined as to whether he investigated the price and style of competing products, Mr�Breva stated: “in terms of price, BENCH product is much cheaper” and testified that there was nothing similar to BENCH in terms of design or styling.� Mr�Breva testified that he investigated the extent and whereabouts of Filipino migrants in New South Wales before opening his store at Blacktown.

47����������������������������������������� In early 2003, the Brevas forwarded, on request, some samples of Suyen’s clothing to Suyen’s solicitors in Melbourne.� Mr�Breva testified that he was told that the samples were required because “someone was trying to take over the BENCH trade mark”.� Mr Breva agreed that he had also made a statutory declaration on behalf of Suyen in February 2006.

48����������������������������������������� Since July 2006, the Brevas have also imported and sold toiletries bearing the bench_BODY trade mark, which they consigned to the Masagana Oriental Variety Store in Glenwood, Blacktown (“Masagana store”) and to businesses in Blacktown, Mt Druitt and Parkleas Markets, on terms that the Brevas would receive a proportion of the sale proceeds.

49����������������������������������������� Prior to 2008, the Brevas did not keep records of their sales of BENCH and BENCH sub-brand clothes and Mr�Breva could not recall whether they sold bench_BODY clothing prior to 2008.� In March 2008, however, the Brevas purchased about 120 items of BENCH and BENCH sub‑brand (including bench_BODY) clothes which Suyen sent by airfreight on terms that payment was due on ultimate sale.� The Brevas consigned the goods by invoice dated 19�June 2008 to the Masagana store, on terms that they would receive a proportion of the proceeds of sale.

50����������������������������������������� Mr Breva testified that since the Brevas began consigning goods, they realised that they required “some sort of paperwork”.� He denied that Suyen suggested that the Brevas begin to use invoices.

51����������������������������������������� On 21 April 2008, Mr Breva delivered the clothing (including bench_BODY brand) to the owner of the Masagana store, Leonie�Martirez.� Mr Breva photographed the clothing display there in May 2008, at the request of Suyen’s solicitors.

52����������������������������������������� Mr Breva deposed that the BENCH and bench_BODY and other sub‑brand products, including clothing, had sold well. �The Brevas placed an order with Suyen for 250 t-shirts with BENCH and sub‑brand marks, and they received clothing, including some items other than t-shirts, in November 2008.

53����������������������������������������� Mr Breva deposed that the Brevas hoped to open a BENCH store in Australia in order to sell BENCH and bench_BODY clothing, and had discussed their plan with Suyen’s Vice President, Mr Lim.

54����������������������������������������� Mr Breva deposed that the Brevas continued to sell BENCH, including bench_BODY clothes.� In�September 2008, they discussed expanding the volume of BENCH sales with the Lims in the Philippines.

55����������������������������������������� Mr Breva deposed that between August and December 2008, the Masagana store changed ownership.� As the new owners wished to sell foodstuffs rather than clothing, he retrieved the unsold items and refunded a small overpayment to the former owner.� The Brevas then consigned the clothing to an acquaintance, Grace�Lumanglas, and the Asian Food Store.

56����������������������������������������� Mr Breva testified that in 2009 he requested that Suyen supply some promotional CDs and booklets.� He also contacted Myer and Westpoint Shopping Centre to enquire whether there was an interest in consignments of BENCH products.

Mr Lim’s Evidence

57����������������������������������������� Bryan Lim, the son of Nenita and Virgilio Lim and the nephew of Ben�Chan, gave evidence on behalf of Suyen.� Mr�Lim has been Suyen’s Vice�President for Business Development since 2007.� He was authorised to make affidavits on its behalf.

58����������������������������������������� Mr Lim was subjected to rigorous and lengthy cross‑examination.� He�spoke English competently, although he did not know the meaning of certain words.� Mr�Lim was a careful and responsive witness, who displayed a detailed recollection.� He was prepared to acknowledge points which did not assist his case.� I�considered Mr�Lim to be a consistent, frank and credible witness.� I�accept his evidence.

59����������������������������������������� Mr Lim is a qualified industrial engineer who commenced work with Suyen in 1996 in Product Development in Manila.� In February 2002 he became General Manager and in February 2005 was appointed Vice President.� Since 2002, he has been a member of the Executive Committee.

60����������������������������������������� Mr Lim resides in the Philippines but travels extensively on Suyen’s behalf.� His current responsibilities include:

identifying and evaluating opportunities for business grown and expansion of both in the Philippines and overseas.� I oversee local and overseas distribution, creating new product lines, finding new applications for existing brands and identifying successful brands from overseas and arranging for Suyen to import and distribute those brands through Suyen trade channels.� Included in my responsibilities is supervising the Franchises and Export Manager.� I pre‑approve all overseas franchises and retail outlets including their locations, before final approval by the President of Suyen, my father, Virgilio Lim.

61����������������������������������������� According to Mr�Lim, Suyen’s approach to expanding into overseas countries varies.� It may involve an initial supply of a relatively small number of goods to a small number of individuals in order to test the likely success of that market.� Alternatively, Suyen might:

(a)��������������� appoint a distributor or authorised retailer;

(b)�������������� enter into a franchise arrangement;

(c)��������������� appoint a wholesaler (a purchaser who did not signify that it would distribute in particular territories);

(d)�������������� open its own BENCH or bench_BODY branded store; or

(e)��������������� establish a concessionaire within a department store.

62����������������������������������������� Mr Lim gave evidence that Suyen currently had wholesalers and distributors in a number of countries, although not every market would justify the appointment of a franchisee or a branded store.

63����������������������������������������� Mr Lim deposed that Suyen’s international expansion policy was generally based on recognition that the size and fit of BENCH and BENCH sub‑brand clothing suited persons of Filipino and Asian build, and was thus directed to countries:

(a)��������������� where there were Filipino and other Asian migrant populations; and

(b)�������������� where Suyen could sell at a lower price than market rivals.

64����������������������������������������� Mr Lim deposed that the usual key considerations of a Filipino population and ability to sell at a lower price were not invariably decisive.� They did not apply to the exceptional case of Suyen’s expansion into China, which was inspired by its booming economy and large market, and the presence of a relative who could assist in establishing the business.

65����������������������������������������� Mr Lim testified that Suyen was “a very close knit family corporation” which valued family connections in its business dealings and in expanding frequently, but not invariably, dealt with an established connection or acquaintance.

66����������������������������������������� Mr Lim was cross‑examined extensively on whether there was a pattern to Suyen’s expansion of brands in particular countries.� He�testified that Suyen did not necessarily first try a concept in the Philippines which if successful, it would introduce overseas, or vice versa.� Rather, Suyen assessed different countries independently, recognising that products which succeeded in one location would not necessarily succeed in another.� In that context, the variation in seasonal requirements for clothing in different countries was a relevant factor.� The Philippines and the Middle East did not have four seasons.� Expansion to countries with four seasons, such as China and Australia, required time for the development of clothing appropriate for colder weather.

67����������������������������������������� Further, according to Mr Lim, Suyen’s initial start‑up activities and their subsequent development did not follow the same pattern in all countries.� In China, Suyen had first opened in major commercial centres and then extended to franchises and local department stores.� It followed a different course in the Middle East, where it had franchisees.� The Middle East was an independent case and expansion was “treated on a case [by] case basis”.� In the United States, Suyen had a BENCH store, but its products were also sold to Filipino customers through wholesalers in Asian supermarkets.

68����������������������������������������� By the second Lim affidavit, Mr Lim exhibited printouts dated 27�January 2009 from the BENCH website which depicted clothing, including some with the bench_BODY trade mark, and stated whether units were available or in stock.� Mr Lim deposed that the packaging in which the items are sold also displayed the bench_BODY trade mark.

69����������������������������������������� In cross-examination, Mr�Lim agreed that as general manager since 2002 or 2003, he oversaw Suyen’s legal department which maintained the trade marks and would “oversee the reports the other legal departments reports furnished”.� The Executive Committee made decisions in relation to trade mark disputes.� Mr Lim did not, however, personally communicate with or instruct the lawyers or trade mark attorneys.

70����������������������������������������� In cross‑examination, Mr Lim acknowledged that Suyen’s 2006 USA notice of opposition to Americana’s application to register the B�BENCH trade mark was “part of the action to protect our trade name Bench in the United States”.

71����������������������������������������� Mr Lim deposed that in 2002 prior to September, Suyen’s Executive Committee, which was aware that there was a significant number of Filipinos in Australia, discussed the Australian market.

72����������������������������������������� Mr Lim testified that the Executive Committee met quite often, whenever there were matters to be dealt with, rather than on set dates. �Minutes of its meetings and decisions were not taken or circulated, although sometimes Mr Lim or Mr�Ong took notes of the directors’ instructions.� At�other times, they acted on verbal instructions.� Mr�Lim testified that Suyen, although large, was a family-run company which functioned in “the way Chinese families do” and business matters were also discussed informally over meals.� Mr�Lim’s evidence was that the Executive Committee’s decisions were arrived at collectively and consensually.

73����������������������������������������� Mr Lim deposed that Suyen’s Executive Committee decided on the countries in which particular trade mark applications would be filed.� The applications were filed under the instructions of Mr�Lim or Mr�Ong.

74����������������������������������������� In September 2002 and March 2003, Mr�Lim visited Melbourne.� He gave evidence that the objectives of his visits included investigating the Australian market for BENCH brand and BENCH sub‑brand goods.� He did not visit Sydney, as he was already informed by the Brevas of the significant Filipino populationliving there.� On his visits to Melbourne, Mr�Lim sought market information, including the size of the Filipino population in Australia and where large numbers of Filipinos and Asians lived.� In�cross‑examination, Mr Lim acknowledged that he did not look at potential store locations or make appointments with personnel at department stores, but stated that Suyen was not seeking a concessionaire.� He did not investigate whether Suyen could sell at lower prices, but did not need to, as he already knew that “we are definitely lower�Australia being a first world country”.� He did not meet with the Filipino Consul General or visit franchise associations, but stated that such visits were not his routine practice.� He testified that he interviewed Filipino migrants and potential business partners, including potential franchise partners and distributors, but did not identify a suitable franchisee or distributor.

75����������������������������������������� Mr Lim deposed:

Following my visits to Melbourne, my view was that Australia provided good prospects for expansion of the BENCH brand and BENCH sub‑brands including the bench_BODY logo.

�

As stated above, when the application for registration of the bench_BODY trade mark was filed in Australia, Suyen intended to sell bench_BODY clothing in Australia and to use the bench_BODY (logo) in relation to clothing in Australia.� My visits to Australia and my investigations have not lead me to the opinion that Suyen should abandon this intention.� The Executive Committee and the Board have at no stage abandoned this intention.� Suyen has considered, and continues to consider, Australia a good market to sell bench_BODY clothing.� Suyen will continue its sales in Australia through wholesale distributors such as the Brevas and Solid Trading until it establishes franchise outlets and other distribution means such as department stores and clothing stores.

76����������������������������������������� Mr Lim deposed that, on this return to the Philippines, he reported his views to the Executive Committee which considered that Australia’s growing Filipino population made expansion there worthwhile.� It�decided to register the bench_BODY trade mark in Australia and, as a result, the application was filed in September 2003.

77����������������������������������������� When it was put to Mr Lim in cross‑examination that “as at 2003�Suyen had no current intention to trade in clothing under the bench_BODY name”, he said:

It’s seen as an option as well, just like in China. �We came in as Bench but eventually came in as bench_BODY, same as with Australia. � bench_BODY would have been an additional trademark for us�which option we can use.

78����������������������������������������� In cross‑examination, Mr Lim conceded that he could not pinpoint the exact date of the Executive Committee’s decision.� He acknowledged that he had no specific recollection of the making of the decision, but testified that Suyen’s usual procedure was to seek to register new trade marks it developed in countries where the BENCH trade mark was already registered, and the Executive Committee regularly approved applications to register trade marks.

79����������������������������������������� Mr Lim deposed to Suyen’s trading activities in Australia.� He�referred to Suyen’s online store which permitted a shopper in Australia to purchase BENCH and BENCH sub‑brand goods by creating a user account with a new user registration, which contains a “drop‑down” box showing various countries (including Australia) that a user must select to order goods.� Mr Lim agreed that most countries were added to the selection range at the stage of developing the website.

80����������������������������������������� A printout of the website showed that from 1�August 2005 to 30�April 2008, it was accessed on 5714 occasions by persons based in Australia.� Suyen kept records of the online sales but, as far as Mr�Lim knew, the only sales to Australia were those in evidence in this case.� He conceded that the range of stock for online sale was limited and did not replicate that of a retail store.� Stock changed from time to time and particular items might not be available.� Mr�Lim conceded that the freight costs were very expensive in relation to the price of a small online purchase.

81����������������������������������������� Mr Lim deposed that in 2004, Suyen exported BENCH and BENCH sub‑brand goods, including clothes, to Grandwell Holdings Pty Ltd (“Grandwell”) in Australia.

82����������������������������������������� Mr Lim gave evidence that following the Brevas’ migration to Australia, Suyen supplied them with clothing to provide “livelihood opportunities”.� He did not know the details of the transactions prior to 2003, which were typically handled by his mother, Nenita Lim, and her sister, Mrs�Breva.� In cross‑examination, Mr�Lim agreed that the dealings were an extension of family arrangements outside Suyen’s usual business operations.

83����������������������������������������� Mr Lim conceded that Suyen had not retained documentary records of its supply of products to the Brevas prior to 2003 and he was unable to say what records had existed. He deposed that in March 2008, Suyen consigned to the Brevas 120 items of clothing for sale, including clothing bearing the bench_BODY trade�mark.� Suyen documented the consignment to the Brevas.� Mr�Breva also imported Suyen toiletries bearing the bench_BODY trade mark.�

84����������������������������������������� Mr�Lim also conceded that in 2009, Suyen requested the Brevas to consign goods to retailers, instead of selling them from home, and may have requested that the Brevas provide receipts.� Mr�Lim denied that receipts were requested “for this proceeding” but stated that “the trademark law is also a learning process for us, we learned slowly also what are requirements so that it would come in as an evidence for us accompanying documents�” (sic).

85����������������������������������������� Mr Lim testified that the consignment to the Brevas was supplied without charge pursuant to Suyen’s occasional, but not routine, practice to do so in order to generate activity or interest in, or to test, a market.� He acknowledged that the consignments to the Brevas were also to assist Suyen to show that there was trade under the trademark on the goods in Australia and stated “it would be part to spark trade to entice people to buy products, but at the same time, we learned documentation procedures would be necessary”.

86����������������������������������������� Mr Lim deposed that, shortly after 30 April 2009, Suyen’s Franchise and Export Department sent the Brevas promotional material, including a booklet and CD, to assist their promotion of BENCH and BENCH sub‑brand sales.� Suyen sent such promotional material either at the request of the trader or on Suyen’s initiative.� Mr Lim denied that the promotional material was sent solely to establish trading for the purpose of this litigation, rather than to assist the Brevas in selling the products.

87����������������������������������������� Mr�Lim deposed that in May 2009, Suyen shipped more clothing to the Brevas, and in July 2009, a further shipment of clothing was sent.� He deposed that Suyen is encouraging the Brevas to continue with their sales.

88����������������������������������������� Mr Lim deposed that since November 2004, Solid Trading Group (Australia) Pty Ltd (“Solid Trading”) had imported BENCH goods (fragrances and toiletries) and in 2007, Suyen exported clothing bearing the bench_BODY trade mark to Solid Trading without charge, in order to test whether it could expand its business to include goods other than cosmetics.

89����������������������������������������� Mr Lim also deposed to Suyen’s promotion and marketing activities, exhibiting brochures showing bench_BODY brand clothing Suyen offers for sale.

90����������������������������������������� Mr Lim deposed:

Suyen’s intention at the time of filing was to use bench_BODY (logo) as a trade mark in Australia in relation to clothing.� That intention has never been abandoned.� Since the date of filing of the application to register bench_BODY as trade mark in Australia, Suyen’s intention to use bench_BODY (logo) as a trade mark in Australia has continued, and continues still.

91����������������������������������������� Mr Lim reiterated:

As stated in my first affidavit, when the application for registration of the bench_BODY (logo) trade mark was filed in Australia, Suyen intended to use the trade mark in respect of bench_BODY (logo) clothing in Australia.� This application has never been abandoned.� Australia is a market in which Suyen has sold, and continues to sell, bench_BODY (logo) brand clothing.

92����������������������������������������� Mr Lim conceded that in 2008 and 2009, Suyen had no current plan to open a Suyen store for BENCH products in Australia but did not agree that it would necessarily plan to commence business in Australia by opening a flagship store.� He denied that Suyen’s activities in Australia had been token and speculative or that its application to register the bench_BODY trade mark was merely a precautionary measure.

Ms Jayona’s Evidence

93����������������������������������������� Ms Amelita Fabro Jayona gave evidence on behalf of Suyen.� She presented as a careful, conscientious and responsive witness, whose evidence I accept.

94����������������������������������������� Ms Jayona emigrated to Australia from the Philippines in 1979.� She is the principal and sales co‑ordinator of Solid Trading, a business first registered in 1979 as an importer and distributor of goods.� Ms�Jayona conducted the business part-time from her home with her son and brother.� The total sales revenue for 2009 was about $2,000.� BENCH products, principally cosmetics and personal care, accounted for about $500 to $600 of the total revenue of the business.

95����������������������������������������� After establishing her business, Ms Jayona sold products principally to Filipino buyers.

96����������������������������������������� Ms�Jayona deposed that she returned to the Philippines regularly and was aware of the BENCH brand.� She often purchased BENCH products, including clothing, on her regular visits to the Philippines.

97����������������������������������������� In early to mid‑2004, Ms Jayona contacted Suyen’s head office in the Philippines and applied to become an authorised retailer and distributor of BENCH and BENCH sub-brand products. �Since�September 2004, Solid Trading has been an authorised retailer and distributor for Suyen.

98����������������������������������������� In November 2004, Solid Trading placed its first order for, and imported, BENCH products, which were principally fragrances and toiletries.� In�2005 and 2007, Solid Trading imported more BENCH products.

99����������������������������������������� Ms Jayona deposed that she sold Suyen products by word of mouth, at parties and, from 2006 to December 2007, at Parklea Markets where she hired a stall once a month.

100�������������������������������������� In May 2007, Solid Trading set up a website to sell products, including BENCH products imported from Suyen.� From that time, most sales were made through the website.� At the time of trial, the website was being updated and goods were not currently available for online sale.

101�������������������������������������� In 2007, as a result of the requests and inquiries of Filipino customers who wished to purchase Suyen t‑shirts, jeans or underwear, Ms Jayona telephoned Suyen’s export franchise manager and requested samples of clothing and a banner with the name “BENCH”, because people recognised the name “BENCH”.� Ms Jayona agreed that her main reason for requesting the banner was to help sell the personal care products.� Suyen subsequently forwarded 23 free sample items of clothing to Ms Jayona by sea cargo.

102�������������������������������������� Ms Jayona sold the clothes at her stall at Parklea Market in 2007.� In September 2007, she displayed the Suyen banner at the stall and, in October 2008, hired a stall at the Filipino Festival in Parramatta.� The sample clothing sold out on the day, save for one item.

103�������������������������������������� Ms Jayona testified that she always initiated the contact with Suyen.� She denied that Suyen had requested her to take photographs of the banner.

104�������������������������������������� Ms Jayona testified that she intended to continue selling BENCH and bench_BODY clothing in future.� She had not currently placed a further order due to a concern about the sizing, but denied that there had not been a sufficient customer response to the product.

Ms Van Ruiten’s Evidence

105�������������������������������������� By the first Van Ruiten affidavit, Ms Van Ruiten, a trade marks attorney and private investigator retained by Suyen, deposed that on 8�July 2008 she visited the BENCH online store on the BENCH website.� Exhibiting relevant printouts, she described the selection of three pairs of underwear, the creation of an account, the selection of “Australia” from the drop‑down menu and the purchase of the selected goods.

106�������������������������������������� On 15 July 2008, Ms�Van Ruiten received the bench_BODY underwear she had selected online in packaging displaying the bench_BODY trade mark.

107�������������������������������������� On 26 September 2008, Ms Van Ruiten visited the Australian Bureau of Statistics website to ascertain the population of Philippines born people resident in Australia.� She also exhibited a report by her company, IP Organisers Pty Ltd, containing the ASIC company searches, business name searches and website print-outs relating to Grandwell and Solid Trading.

108�������������������������������������� In her second affidavit, Ms Van Ruiten deposed that on a review on 27�January 2009 of the clothing offered for sale on the Suyen website, she found 36�items available for purchase from Australia, some marked “in stock” and some “few units available”.

respondent’s evidence

109�������������������������������������� On appeal, Americana relied on:

(a)��������������� The affidavit of Devita Pathi affirmed 13 October 2008.

(b)�������������� The affidavit of Larisa Vella-Xuereb sworn 3 July 2009.

(c)��������������� The affidavits of Eliza Saunders sworn 14 April and 15 April 2010.

(d)�������������� The statutory declaration of Jed Arboleda dated 17 September 2003 filed in the Bliss non‑use proceeding (admitted only for the purpose of demonstrating that Suyen’s franchise manager had made a statutory declaration in the proceeding).

110�������������������������������������� Ms Saunders was cross‑examined.� The other affidavits were read.

Ms Pathi’s Evidence

111�������������������������������������� Ms Pathi, a solicitor and associate of Americana’s lawyers, deposed that on 13�October 2008 she visited the Suyen website and clicked the item “store locater”, which took her to a “new registration” page offering a selection of four regions, being the Philippines, the Middle�East, the USA and China, for each of which store locations were listed.� Ms�Pathi looked through all the locations, but saw no reference to Australia.

112�������������������������������������� When Ms Pathi clicked the “collections” item, no collections were displayed.� When she clicked the online store, “Men”, “Women” and “Body and Bath” selections were shown.� On clicking the “underwear” item on the “Men” section, Ms�Pathi found that three out of fourteen listed underwear items were marked “Bench Body”.� The first was “out of stock”.� The second and third were listed as “available for shipping in the US only”.

113�������������������������������������� On clicking on the “Panties” item in the “Women” section, Ms�Pathi found eight items, two of which were marked “Bench Body”.� The first item was marked “in stock”.� The second was marked “few units available” and “available for shipping the US only”.

114�������������������������������������� On clicking on the “Bras” in the “Women” section, she found only one item, which was marked “out of stock”.

115�������������������������������������� Ms Pathi deposed that she searched the whole website and found that the only item marked “Bench Body” available for purchase in Australia was a women’s bikini brief for USD3.99, with a shipping cost of USD46.

116�������������������������������������� Eliza Saunders, a lawyer and patent and trade mark attorney employed by Americana’s solicitors, by an affidavit sworn 14 April 2010, deposed that she had visited the BENCH website on 17 July 2008 and 9 September 2008 to determine the number of goods bearing the bench_BODY trade mark. Ms Saunders deposed that, on clicking the “underwear” item in the “Men” section, she found that one of the seven or eight pairs of underwear listed was marked “Bench Body” and that when she clicked through to that item it was listed as “out of stock”. A�number of pairs of underwear which Ms Pathi exhibited to her affidavit did not appear to Ms Saunders to be available at the times of her searches of the website.

117�������������������������������������� On clicking the “Panties” item in the “Women” section on each of her visits to the BENCH website, Ms Saunders found five items available to purchase, in contrast to the eight items found by Ms Pathi, and only one pair marked “Bench Body”.

118�������������������������������������� Like Ms Pathi, Ms Saunders deposed that, on each of her searches of the website, she found only one item marked “Bench Body” and available for purchase in Australia, being the women’s bikini brief for USD3.99 with a shipping cost of USD46.

119�������������������������������������� In cross-examination, Ms Saunders stated that she had also conducted a number of other searches but had not referred to them in her affidavit.

120�������������������������������������� Ms Saunders initially stated that she could tell that items of underwear shown on the website did not bear the bench_BODY trade mark by looking at the photographs close‑up, but ultimately conceded the possibility that marks were affixed to the back of the garment, which would not be visible.� Further, she was unable to recall whether she had checked all the various size and colour options for the garments.

Ms Vella-Xuereb’s Evidence

121�������������������������������������� Ms Vella-Xuereb, a licensed private inquiry agent employed by an agency retained on behalf of Americana, exhibited three reports dated 12�November 2008 (“first report”), 2 February 2009 (“second report”) and 19 June 2009 (“third report”) on investigations into the sale of Suyen’s BENCH and bench_BODY products in Australia.� The reports indicated that attempts to contact parties identified by Suyen as traders in its goods were unsuccessful, and that no obvious trade was conducted in the premises by such parties controlled or with which they were associated.

122�������������������������������������� The first report stated that the investigators attended at Parklea Markets on Sunday�21, Saturday 27 September, Sunday 5�and Saturday 11 October 2008.� Their “thorough perusal” of the market stalls did not reveal any evidence of use of the BENCH trade marks.�

123�������������������������������������� The second report stated that there were no references to “Grandwell” in the telephone directories dating back to 2003 or to “Grandwell” as a brand owner.� Further, Grandwell was listed for deregistration in the ASIC Gazette dated 25 November 2008.� The history revealed that Grandwell traded as Red Ribbon Cakes until 28 January 2005.� Various telephone numbers listed for its premises were disconnected or belonged to unassociated persons.� The directors of Grandwell, Allan and Loryvi Bantiles, could not be contacted and did not return messages.� Grandwell’s registered office at 27�Kidman Street, Glenwood, appeared to be a private residence, with no one at home.

124�������������������������������������� The investigators visited various Masagana stores at Ingleburn, Ashfield and Glenwood, which were small Asian grocery stores.� They did not observe clothing of any description.

125�������������������������������������� The third report stated that the investigators visited Grandwell’s Kidman Street address on three occasions, but found no one at home, and their messages were not returned.� Grandwell’s former directors were not listed in telephone directories in New South Wales, although other searches gave another address for Mr�Bantiles, at which there were unsuccessful attempted contacts.� Attempts to locate or contact other former officers of Grandwell were unsuccessful and the investigators’ messages were not returned.

126�������������������������������������� The third report confirmed that the investigators attended Masagana stores in Ingleburn, Ashfield and Glenwood, at which they saw no clothing, and Parklea Markets, at which they observed no BENCH or bench_BODY trade marks on class 25 goods.�

2006 USA Notice of Opposition

127�������������������������������������� Americana also relied on the 2006 USA notice of opposition (Exhibit R3) submitting that its limited reference to Australia was inconsistent with the intention to use the bench_BODY mark there.

128�������������������������������������� The 2006 USA notice of opposition set out the background to the opposition and relevantly stated:

BENCH BODY (standard character format) – Serial No. 76/630,261 – in use in commerce at least prior to December 28, 2004 with respect to the following goods in International Class 25: Clothing, namely jackets, coats, capes, pants, shirts, skirts, dresses, t-shirts, sweaters, vests, shorts, sport shirts, blouses, neckwear, belts, socks, underwear, lingerie, pajamas, robes, gloves, swimwear, sweatpants, sweatshirts and wristbands; Footwear, namely, shoes, boots and sandals; Headwear, namely, scarves, hats, caps and headbands.

�

10.������� Opposer has adopted and has continuously used its BENCH trademarks and service mark in commerce as set forth herein in connection with clothing, accessories, cosmetics and stores since at least as early as August, 2002, and since at least as early as 1987 outside the United States, to the present.

11.������� Opposer’s Marks have been used in connection with numerous goods and services, including but not limited to, in foreign and interstate commerce for many years, and a number of them prior to the filing date of the application for Applicant’s Mark on December 28, 2004.� Applicant has not made use in commerce of Applicant’s Mark prior to the date Opposer’s Mark were registered and/or applied for with the United States Patent and Trademark Office.

�

15.������� The goods and services used in connection with Opposer’s Marks are sold and offered for sale in the United States, inter alia, via its BENCH stores and via its Internet website.� Opposer has an Internet website having an Internet domain name of “www.benchtm.com” which is used to sell and offer for sale Opposer’s goods bearing Opposer’s Marks.

�

129�������������������������������������� Paragraph 21 stated:

Opposer has since 1987 continuously used BENCH as its main trademark on and in relation to a progressively widening range of goods and services including clothing, headwear, footwear and retailing.� Some aspects of the history of Opposer and development of its BENCH trademarks and service marks are as follows:”.

130�������������������������������������� A chronological list of developments followed.� They typically included the opening of stores, the appointment of official distributors and the opening of franchise outlets.

131�������������������������������������� Relevant references to Australia were:

22.������� Opposer’s BENCH marks are registered in numerous countries or jurisdictions in connection with goods that people wear, including Australia, Brunei, Canada, China, Hong Kong, Indonesia, India, Japan, Korea, Kuwait, Lebanon, Malaysia, Philippines, Saudi Arabia, Singapore, Taiwan, Thailand, United Arab Emirates and the United States.

�

24�������� Opposer extensively advertises its goods and services under the trademark BENCH in The Philippines and in other countries.� Opposer advertises its BENCH goods and services in many ways including television, the Internet, radio, newspapers, magazines, outdoor signs, shop fronts, point‑of-sale signs, brochures, pamphlets and handbills.� ABS-CBN, the largest television network in The Philippines, has a branch station in San�Francisco, California.� This television company also has since 1995 operated an on-line retail store called STARRY STARRY in San Francisco that advertises and sells via cable and satellite television transmissions a range of Filipino goods.� This STARRY STARRY television sales channel transmits its signal throughout the Philippines and to San Francisco and to Japan and through its various affiliated transmission facilities to most other Asia Pacific countries including via satellite to Australia where there are located substantial numbers of Filipino customers.� This television and sales channel and online facility provides a mechanism for advertising and selling Opposer’s BENCH goods in many countries including, but not limited to, the United States.

[emphasis added]

132�������������������������������������� Relevantly to Suyen’s export expansion the notice stated:

26.������� With the resources available, Opposer initially concentrated on establishing in the Philippines its business under its trademark BENCH.� Subsequently, Opposer also began addressing the export market involving other countries.� This export expansion has included Saudi Arabia, Kuwait, UAE, the United States and the Peoples Republic of China.� In 1998, Opposer also established its website on the Internet and has advertised with substantial success through that medium.� Through all of Opposer’s endeavours, the knowledge of travellers, migration from The Philippines, and other means, Opposer’s trademark BENCH has become well known.

27.������� Arising from and responsive to its various activities, Opposer receives from many countries around the world numerous communications, the purpose of which generally is to purchase BENCH products online or by mail order of the like, or to establish a business relationship with Opposer as an appointed BENCH distributor or franchisee in the country from which the communication originates.

�

31.������� In entering the export markets, Opposer targeted Saudi Arabia and then Kuwait, because the population in the Middle East includes more than a million Filipinos who are familiar with BENCH clothing and other goods.� Also the Middle East climate is such that autumn and winter style and weight clothing items are not generally required.� In addition, there are about a million Filipinos in various parts of the United States, and this also has provided a suitable market into which Opposer has expanded with its exports.� For four season countries, Opposer need to develop and to provide for reliable manufacturing and supply facilities, especially of satisfactory autumn and winter items.� Opposer is progressively doing this and this has enabled Opposer to enter the Chinese market.

32.������� Opposer’s Marks are famous and distinctive, and they are well known to the public and to the trade based upon widespread marketing and advertising and extensive sales in the United States and numerous other countries, including but not limited to The Philippines, Australia, Saudi Arabia, Kuwait, China and the United Arab Emirates.

[emphasis added]

relevant LEGISLATION AND legal principles

Principal statutory provisions

133�������������������������������������� Section 27 of the Act provides:

27������� Application—how made

(1)������� A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)������� the person claims to be the owner of the trade mark; and

(b)������� one of the following applies:

(i)�������� the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)������� the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)������ the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

(2) The application must:

(a)������� be in accordance with the regulations; and

(b)������� be filed, together with any prescribed document, in accordance with the regulations; and

(c)������� be made by a person or persons having legal personality.

(2A)���� Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality.

(3)������� Without limiting the particulars that may be included in an application, the application must:

(a)������� include a representation of the trade mark; and

(b)������� specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark.

(4)������� Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and its sub-offices.

(5)������� An application may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3).

134�������������������������������������� Section 35 of the Act provides:

The applicant may appeal to the Federal Court against a decision of the Registrar:

(a)������� to accept the application subject to conditions or limitations; or

(b)������� to reject the application.

135�������������������������������������� Section 52 of the Act provides:

52� Opposition

(1)������� If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

(2)������� The notice of opposition must be in an approved form and must be filed within the prescribed period or within that period as extended in accordance with the regulations or in accordance with subsection (5).

(3)������� The opponent must serve a copy of the notice on the applicant.

(4)������� The registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.

(5)������� If:

(a)������� a person is granted an extension of time in which to file a notice of opposition; and

(b)������� before the notice of opposition is filed, the right or interest on which the person could have relied to file the notice of opposition becomes vested in another person; and

(c)������� the other person notifies the Registrar in writing that the right or interest is vested in him or her;

then:

(d)������� the other person is taken to have been granted an extension of time in which to file the notice of opposition; and

(e)������� that extension ends when the extension mentioned in paragraph (a) ends.

136�������������������������������������� Section 56 of the Act provides:

Appeal

The applicant or the opponent may appeal to the Federal Court from a decision of the Registrar under section�55.

137�������������������������������������� Section 197 of the Act provides:

On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following:

(a)������� admit evidence orally, or on affidavit or otherwise;

(b)������� permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;

(c)������� order an issue of fact to be tried as it directs;

(d)������� affirm, reverse or vary the Registrar’s decision or direction;

(e)������� give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f)������� order a party to pay costs to another party.

138�������������������������������������� Section 59 of the Act provides:

59� Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)������� to use, or authorise the use of, the trade mark in Australia; or

(b)������� 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 specified in the application.

139�������������������������������������� Section 92(4) of the Act 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:

(i)�������� to use the trade mark in Australia; or

(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:

(iv)������ has not used the trade mark in Australia; or

(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:

(i)�������� used the trade mark in Australia; or

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

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

140�������������������������������������� Section 108 of the Act provides:

108� Recording of assignment etc. of trade mark whose registration is sought

(1)������� If the application complies with this Act, the Registrar must:

(a)������� at, or within, the time provided for in the regulations, record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the assignment or transmission; and

(b)������� publish the particulars of the assignment or transmission in accordance with the regulations.

(2)������� On and after the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of this Act, to be the applicant for the registration of the trade mark.

Nature of appeal from decision of the Registrar

141�������������������������������������� In Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50, Branson�J considered the nature of an appeal from the Registrar pursuant to s�35 of the Act.

142�������������������������������������� Her Honour observed that the Act and its predecessor did not contain a provision equivalent to s�44(2) of the Trade Marks Act 1905 (Cth), which led the High Court in Jafferjee v Scarlett (1937) 57 CLR 115 to conclude that on such an appeal the court must decide the matter as an original application, and not merely on whether the Registrar’s decision could be supported.

143�������������������������������������� Her Honour stated at 59:

Nonetheless, I accept the contention of both parties that it is for the Court to determine, on the material before it, whether the applicant's application to register its trade mark should be accepted or rejected. Section 197 of the Act, like s 115A of the 1955 Act, discloses, in my view, a clear intention that the established practice of an appeal of this kind being conducted as a rehearing is to be maintained.

144�������������������������������������� In Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257 (“Austereo”), Finn�J affirmed that an appeal from the Registrar is to be conducted as a rehearing of the matter by the court in its original jurisdiction.� His�Honour stated (at [3]):

����������� It is clear from the provisions of s 197 of the Act (which enumerates the powers of the court on hearing an "appeal") that the court is to conduct a re-hearing of the matter in its original jurisdiction: see Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 59; 40 IPR 498 at 506-7; Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525; 56 IPR 152 at 455 and, in lieu of the Registrar, is itself to apply the provisions of the Act in determining whether the application for registration should be granted. It is not necessary to decide whether the Registrar’s decision was correct in law and fact although weight should be given to the Registrar’s opinion, it being the decision of a skilled and experienced person: Malibu Boats West Inc v Catanese (2000) 180 ALR 119; 51 IPR 134 at [6], [30].

145�������������������������������������� In Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [16], Wilcox�J stated:

It is well-settled, and common ground between the parties, that an appeal to this court under s�35(b) of the Trade Marks Act is a hearing de novo in which the court must decide the matter as upon an original application.

146�������������������������������������� In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, French J (with whom Tamberlin J agreed) analysed the nature of the appeal in detail at [32] -[34] as follows:

The nature of the appeal

The jurisdiction conferred upon this Court to entertain an appeal from the Registrar is of the same character as that formerly conferred upon the High Court under s�45 of the Trade Marks Act 1905 (UK) (the 1905 Act) and s�51 of the 1955 Act. Being an ``appeal'’ from an administrative decision it is an exercise of the original jurisdiction of the court: Jafferjee v Scarlett. Dixon�J said of the jurisdiction of the High Court in that case (at 126):

� the nature of the jurisdiction under s�76 of the Constitution and the terms of the subsection alike show that the court is to determine judicially whether the application should succeed on the merits, and not whether an administrative officer has lawfully discharged his duties. Of course weight will be given to the registrar's opinion as that of a skilled and experienced person.

The subsection referred to was s 44(2) of the 1905 Act which provided that on appeal the Court was to ``hear the applicant and the opponent, and determine whether the application ought to be refused or ought to be granted with or without any modification or conditions'’. The approach adopted in Jafferjee v Scartlett was reiterated in the joint judgment of Dixon�CJ, Williams and Kitto�JJ in Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 308. Again in that case the court which was exercising, albeit with three justices, its original jurisdiction on appeal from the Registrar under the 1905 Act, said that (at 308): “� due weight will of course be given to the opinion of the Deputy Registrar as that of a skilled and experienced person.”

In respect of the 1955 Act see also Rowntree plc v Rollbits Pty Ltd (1988) 90 FCR 398; 10 IPR 539 and the comment by Needham�J that while giving due weight and respect to the decision of the Registrar as an experienced and skilled person ``the court must approach the matters afresh and without undue concern as to the ratio decidendi of the Registrar”: at 403; 545.

If there were any doubt the provisions of s�197 and its statutory antecedents authorising the court to receive evidence and to examine and cross-examine witnesses, inter alia, make plain that in exercising its jurisdiction on appeal from the Registrar, it is to determine the question of acceptance of the application on its merits.

�

There is therefore no presumption in favour of the correctness of the Registrar's decision save that weight will be given to the Registrar's opinion as that of a skilled and experienced person. But the Court on appeal from the Registrar must, in determining the question of acceptance of the application, apply to it the same legal criteria that the Registrar is required to adopt. That is to say the application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is left in doubt, then the application should be accepted. That is consistent with the possibility, adverted to earlier, that after a contested opposition registration may eventually be refused. Weight can be given to the Registrar's opinion without compromising the duty of the Court to construe the relevant legal criteria.

When must the intention to use the mark in Australia exist?

147�������������������������������������� There has been conflicting, albeit relatively sparse, authority and commentary on whether the requisite intention under s�59 is to be assessed at the date of filing the application to register the trade mark or at the time of the opposition proceeding (whether it be on the date of filing the notice of opposition, the hearing of the notice of opposition or the last filing of evidence in relation to it).� Very recently, after the hearing of this appeal but before the publication of these reasons, the Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (“Food Channel”) held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non‑use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application” (at [74]).� The resolution of the issue is, for reasons discussed below, unnecessary to the determination of this appeal.� Nevertheless, in deference to the extensive submissions of counsel, I consider it briefly.

148�������������������������������������� In Sapient Australia Pty Ltd v SAP�Aktiengesellschaft (2002) 55 IPR 638 (“Sapient”), Hearing Officer Williams held that the intention was to be assessed at the date of the opposition proceeding, a view shared by the delegate in the present case and endorsed by the learned authors of Lahore, Patents Trade Marks and Related Rights, Lexis Nexis, Butterworths, Sydney, 2006 (“Lahore”).

149�������������������������������������� Hearing Officer Williams stated (at 646) that s�59 of the Act:

� is a ground written in the present tense and looks at the present state of the intention of the applicant.� The introduction of such a ground is consistent with the creation of s�108, which had no counterpart under the 1955 legislation.� Under s�108, a party defending an application may well be a different entity from the one who initially filed the application.� Thus, s�59 deals with current defects in intention to use, interlocking with s�58, under which the intention and facts at the time of filing are the relevant elements.

150�������������������������������������� In the present case, the delegate referred to the analysis in Sapient and concluded that s�59 had a continuing operation.� He�observed that it was unclear whether the relevant date was the date of filing the notice of opposition or, as some other cases suggested, the date of the hearing.� The delegate concluded:

it seems to be that the correct ‘cut off’ date is when the last evidence is filed.� In some cases for example, when further evidence is admitted at a hearing, that might be the hearing date.� In very rare cases, it might even coincide with the filing of the notice of opposition but what seems to me to be critical is the time when the record of admissible evidence closes.

151�������������������������������������� Lahore, at para�55,�580, also observed that s�59 of the Act was concerned with intention at the time of the opposition proceedings.� Lahore states:

The use of the words “does not” are important as the enquiry under this section is concerned with the intention of the applicant at the date of the opposition proceedings, rather than the date on which the application was made.� This ensures that the section is consistent with the provisions of s�108 of the 1995 Act which permits the assignment of the application.� If a valid assignment has taken place, the assignee is the “applicant” for the purpose of the opposition proceedings.� It�would therefore create an unnecessary tension between s�59 and s�108 if the fact that the assignor has no intention of using the mark of the application, was to provide a ground of opposition against the assignee.

(footnote omitted)

152�������������������������������������� In Television Food Network GP v Food Channel Network (No 2) (2009) 80 IPR 314 (“Television Food”), Collier�J at first instance stated that the intention described in s�59 must exist at the filing date, citing as authority Nikken Wellness Pty Ltd v Van Voorst [2003] AIPC 91-904 (“Nikken”).

153�������������������������������������� It would appear that her Honour was not referred to Sapient, Lahore or s�108 of the Act.� Further, Nikken did not involve opposition pursuant to s�59 but an application for removal of the trade mark from the Register of Trade Marks under s�92(3) of the Act.� The observation in Nikken that the date for assessing the lack of intention to use the mark was the date of filing the application thus related to s�92(4), which expressly so provides.

154�������������������������������������� In Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 (“Health World”),Jacobson�J at first instance considered the s�59 ground of opposition in the context of an application for rectification.� His Honour stated (at [158]):

In order to make good the s 59 ground in its application for rectification under s 88(2)(a), Health World must establish that, as at 7 May 2001, Shin‑Sun did not intend to use or authorise the use of the HEALTHPLUStrade mark in Australia: see s 59(a).

155�������������������������������������� As 7 May 2001 was the date on which the application to register the trade mark was filed, it may be inferred that Jacobson�J considered that it was the relevant date for assessing lack of intention to use the trade mark under s�59 of the Act.

156�������������������������������������� In Food Channel, the Full Court allowed the appeal from the decision of the primary judge in Television Food but confirmed her Honour’s holding that the intention must exist at the date of the application.� Nevertheless, none of the relevant judicial decisions contains a consideration of the contrary arguments advanced by Lahore and in Sapient.

157�������������������������������������� A requirement that the intention must exist at the date of the application appears inconsistent with its use of the present tense in relation to the disqualifying circumstance (“does not intend to use”).� The express use of the present tense in s�59 contrasts most obviously with the express stipulation in s�92(4)(a) of the Act (s�92 provides for removal for non-use) that the relevant date for the existence of a bona�fide intention to use the trade mark is the date on which the application to register it was filed.

158�������������������������������������� Before me, counsel for both parties nevertheless submitted that the intention to use the mark must exist at the date of the filing of the application.� Counsel contended that the contrary construction espoused by Lahore and in Sapient was inconsistent with s�27 of the Act, which provides that an application to register may be made if a person claims to be the owner of the trade mark and intends to use the mark, to authorise its use or to assign it to a body corporate that is about to be constituted with a view to using it.� Counsel submitted that if the intention required under s�27 were absent at the date of filing the application, it followed that opposition to registration based on lack of intention must succeed.

159�������������������������������������� That argument assumes that any failure to satisfy a requirement for making an application to register is mirrored in a corresponding ground of opposition; and further, that the absence of the requisite intention when making application is too fundamental to be cured by the subsequent acquisition of the intention, albeit prior to registration.

160�������������������������������������� It is not, however, clear that (despite considerable overlap) every failure to satisfy the requirements for applying for registration is precisely reflected in a ground of opposition.

161�������������������������������������� Section�33 of the Act distinguishes between a ground under the Act for rejecting the application and a failure to make the application in accordance with the Act.� Although the Registrar must reject an application on either basis, lack of intention to use, authorise or assign the trade mark is not a “Ground of Rejection” set out in Part 4 General Division 1 of the Act.� Thus, it would not appear to be imported by reference into s�57 as a ground of opposition.� While other grounds of opposition could potentially apply to at least some cases in which the intention was absent at the date of filing the application, s�59 is the ground of opposition which deals expressly and solely with the absence of intention, and it is expressed in the present tense.

162�������������������������������������� Section 17 of the current Act defines a “trade mark” as “a sign used or intended to be used�”.� In Re Ducker’s Trade Mark [1929] 1 Ch 113, Lord Hanworth MR considered that an intention to use the mark at the date of registration was an essential element of its very definition (emphasis added).

163�������������������������������������� His Lordship stated:

the very definition of a trade-mark means that there must be at the time it is registered a resolve to use it in connexion with goods for the purpose of such trade-mark by manufacture, selection, and so on.� That is what a trade-mark is.� A “registerable trade-mark” means a trade-mark which is capable of registration under the provisions of the Act. ([121])

164�������������������������������������� That analysis (albeit of prior legislation) is consistent with the possibility that an initial absence of the requisite intention (while a non‑compliance) might be remedied if the intention is acquired prior to registration.

165�������������������������������������� Counsel submitted that the registration of a trade mark in respect of which the intention was initially absent, but has since been acquired, would jeopardise the purity of the Register on which the interests of the public and other parties depend. �Provided, however, that intention were acquired prior to registration, the Register would maintain its function as “an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied”: Health World Ltd v Shin Shun Australia Pty Ltd (2010) 265 ALR 265; [2010] HCA 13 at [22].

166�������������������������������������� A construction of s�59 which gives effect to its present tense may also avoid a potentially anomalous interaction with s�108 of the Act.

167�������������������������������������� Section 108(1) of the Act, introduced in 1995, provides that the Registrar must record and publish an assignment or transmission of a trade mark whose registration is sought.� Section 108(2) provides that the assignee or transferee is taken to be the applicant for the purposes of the Act “on or after the day” on which the assignment or transmission is recorded.� Section�6 of the Act provides that “the applicant in relation to an application means the person in whose name the application is for the time being proceeding.”� Section�59 requires “the applicant” to have the intention.� An�assignee would rarely have the requisite intention at the date of filing the application, but could subsequently be the applicant for the purposes of s�59, with an intention to use the mark as at the date of the opposition proceedings.� The position of such an assignee (even if the assignor had the intention at the date of filing the application) in defending an opposition is unclear.

168�������������������������������������� Lahore suggests that s�108(2) may serve to ameliorate the assignee’s vulnerability:� It states (at 64,020):

Section 108(2) of the 1995 Act provides that, on and after the day on which the registrar records the particulars of an assignment or transmission of a pending application, the new owner is to be treated as the applicant for registration of the trade mark. Under the 1955 Act it was not uncommon for an application for registration to be assigned, even though the Act did not recognise such assignments. There was some doubt as to whether the ultimate registration was valid on the basis that the assignee had no intention of using the mark at the time when the application was made. The current provisions do not specifically deal with this issue but the clear inference is that the legislature intended the application to be valid even though it has been assigned. If the assignee intends to use the mark, or to comply with the provisions of s�27(1)(b)(i) or (ii) of the 1995 Act, that may obviate any lack of intention on the part of the assignor. However, whether the application might be open to challenge on the ground that the original applicant had no intention of using the mark, and intended to deal with the trade mark "in gross" is not altogether clear.

169�������������������������������������� The Explanatory Memorandum states in relation to s�108:

If a trade mark whose registration is being sought is assigned or transmitted, either the applicant for the registration of the trade mark or the person to whom it has been assigned or transmitted must apply in the prescribed manner to the Registrar to have the assignment or transmission recorded.� If the application complies with the Act, the Registrar must, in accordance with the regulations, record (but not in the Register) and publish the particulars of the assignment or transmission.� From the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken to be the applicant for the registration of the trade mark.

170�������������������������������������� The implicit statutory recognition of the validity of such assignment or transfer tends against the defeat of the assignee’s application on the basis of its past lack of the requisite intention.� If “the applicant” in s�59 referred to the person who originally made the application, the assignee could rely on the latter’s intention to use, but that construction does not accord with the definition of an “applicant” or the terms of s�108(2).� The difficulty associated with the timing of an assignee’s intention under s�59 did not arise, and was hence not addressed, in Food Channel,as both the corporate assignor and assignee had the same controller with the requisite intention.

171�������������������������������������� Counsel submitted that the Act generally expressly specifies if the date for assessment of a relevant matter is other than the date of filing the application, consistently with the fact that the rights conferred by registration extend back to that date.� It was submitted that other grounds of opposition, such as s�58 (lack of ownership) and enquiries under ss�41(3) and (5) are, by longstanding principle, assessed at the date of filing the application, although it is not expressly specified.�

172�������������������������������������� In Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161 (“Global Brand”), however, Sundberg�J (at [131]) rejected the contention that ownership under s�58 (which states that registration may be opposed on the ground that “the applicant is not the owner of the trade mark”) is to be tested as at the date of filing the application.� His�Honour adopted the analysis of Allsop�J in Mobileworld Communications Pty Ltd v Q & Q Global Enterprise (2003) 61 IPR 98 who held that where the application was amended to substitute, prior to registration, a new applicant for the original applicant, the new applicant should be regarded as the owner for the purposes of opposition under s�58.� Allsop�J stated (at [83]) that the new applicant “claimed to be the owner during the registration process.� It was an applicant.� Section 27(1)(a) was satisfied”.� Allsop�J’s reasoning on that issue was approved by the Full Court in Crazy Ron’s Communications Pty Ltd v Q & Q Global Enterprises (2004) 61 IPR 212 (“Crazy Ron’s”), although his decision was set aside.

173�������������������������������������� Sundberg�J followed Crazy Ron’s in preference to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (which was decided under earlier legislation) and Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413 (“Lomas”) (in which the question of the relevant date for testing ownership was not squarely raised).� His�Honour concluded that although, in Global Brand, the original applicant assigned the applications to another party prior to registration, the assignee was to be considered the applicant and the owner of the mark.� The opposition based on s�58 of the Act thus failed, although the applicant as at the date of the opposition was not the owner of the mark as at the date of filing the application.

174�������������������������������������� The analysis of Sundberg�J appears consistent with a construction of s�59 which gives effect to its present tense.

175�������������������������������������� Suyen also submitted that unless the relevant date for the purposes of s�59 were the date of filing the application, uncertainty would result, as it would be unclear whether the date was the date of filing the notice of opposition or some later date.

176�������������������������������������� While Americana submitted that s�59 contemplated an “ongoing” intention from the date of filing the application, Suyen submitted that the date of application was the only relevant date for the assessment of intention under s�59 of the Act.� It contended that if the intention were lost by the time of opposition, redress would lie only in a non‑use application under s�92.

177�������������������������������������� While the Full Court has now confirmed that the intention under s�59 must exist at the date of the application, the arguments in support of the contrary view were not addressed and a number of potential inconsistencies and uncertainties remain.

The nature of the onus

178�������������������������������������� Although it was common ground that the opponent bore the onus in the appeal, there is conflicting authority on its nature.

179�������������������������������������� One line of authority indicates that an opponent bears a special onus, according to which it cannot succeed unless it is clear that the trade mark should not be registered. �Another line of authority, advocated by Americana, applies the ordinary standard of the balance of probabilities.

180�������������������������������������� In Lomas,the Full Federal Court (Cooper, Kiefel and Emmett JJ) considered that an application for leave to appeal under s�195(2) of the Act was comparable to an application for leave to appeal against an interlocutory decision of a single judge of the Federal Court under s�24(1A) of the Federal Court of Australia Act 1976 (Cth).

181�������������������������������������� In Lomas, their Honours considered that (although the grant of leave was discretionary and depended on the special circumstances of each case) the Court should be cautious in refusing an applicant leave to appeal from a single judge’s decision to uphold opposition to registration of a trade mark.� The Full Court applied to an appeal under s�56 of the Act the reasoning in F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 (“F Hoffman-La�Roche”), which held that the opponent in a patent opposition bears the onus to establish that the patent, if granted, would be clearly invalid.� The Full Court stated:

The Court should be slow to shut out an applicant for a trade mark who has had only one judicial consideration of entitlement to the grant of the trade mark. Before refusing leave, the Court should be satisfied that it is clear beyond doubt that there has been no error and that any trade mark, if granted, should be expunged - see Imperial Chemical Industries PLC v EI Dupont De Nemours & Co [2002] FCAFC 264 para [7] to [10].

No submissions were addressed to the Court concerning the standard to be applied by a single judge in considering an appeal under s 56 of the Act. The presence of s�195(2) suggests that a parallel should be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth). On that basis, on appeal under s�56, the Court should consider whether the trade mark should clearly not be registered. Only if so satisfied should the Court decide to uphold an opposition.

The fact that leave to appeal from the decision of a single judge is required indicates the quasi summary nature of an opposition proceeding. An unsuccessful opponent would always have the opportunity to bring an expungement proceeding if the opposition proceeding fails. In an expungement proceeding, the validity of a trade mark can be fully explored. That is a reason for concluding that there should not be a full exploration of the prospective validity of a trade mark on an appeal in an opposition proceeding.

Thus, it would be inappropriate for there to be a full exploration of the validity of the trade mark in two separate proceedings in the Court, first in an appeal in an opposition proceeding and then, subsequently, if the opposition proceeding failed, in an expungement proceeding. Those considerations emphasise the need for the Full Court, before refusing leave to appeal pursuant to s�195(2) of the Act, to be satisfied that a decision by a single judge upholding an opposition is undoubtedly correct.

182�������������������������������������� In a number of subsequent decisions, it has been held, in accordance with Lomas, that the opponent bears an onus with a higher standard than the usual balance of probabilities: Austereo at [4]-[5]; Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty (2003) 132 FCR 326 at [16]-[22], and Kowa Co Ltd v NV Organon (2005) 66 IPR 131 at [123]-[141]. �In contrast, other judges have questioned or rejected the application of a special or higher standard: See Clinique Laboratories Inc v LuxurySkin Care Brands Pty Ltd (2003) 61 IPR 130 at [10]-[13]; Pfizer Products Inc v Karam (2006) 70 IPR 599 (“Pfizer”) at [6]-[26]; BP plc v�Woolworths Ltd (2004) 62 IPR 545 at [8]; Woolworths Ltd v BP plc (2006) 150 FCR 134 at [80]-[84] Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 at [26].

183�������������������������������������� In Pfizer, Gyles�J analysed the conflicting authorities on whether an opponent under s�55 of the Act must establish a ground of opposition “as any other matter is to be established in civil proceedings of an administrative character” or whether, on the Lomas approach, the court should uphold opposition only if satisfied that the mark should clearly not be registered ([601]).

184�������������������������������������� Gyles J rejected the application of any special onus.� He�considered it contrary to the language of the statute and regarded the transposition of a test from patents law as problematic, given the different proprietary nature of trade marks.� His Honour also observed that the test in patents oppositions was novel when imposed in F�Hoffman-La Roche and remained controversial.

185�������������������������������������� Gyles J doubted that an opposition was a summary means of weeding out obviously bad trade marks, because prior to an appeal pursuant to s�56 of the Act, a mark had already been accepted and survived a contested opposition before the Registrar, resulting in the delivery of the delegate’s reasons which, on appeal, should be accorded due respect.

186�������������������������������������� Gyles J concluded (at [26]):

I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. � I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

187�������������������������������������� In Food Channel, the Full Court recently affirmed the correctness of Lomas in relation to the incidence of the onus.� The Full Court considered that (even if the presumption of registrability in s�33 of the Act applied only at the stage of the Registrar’s examination and did not carry through to opposition proceedings) it did not follow that the applicant bore the onus on opposition.� Rather, the Full Court held that, on the basis of a statutory language, Lomas was “clearly right” in casting the onus on the opponent.

188�������������������������������������� The Full Court did not, however, resolve the uncertainty as to the standard of the onus borne by the opponent, as it was unnecessary in order to determine the case before it.� Their Honours observed that “[i]t was sufficient for present purposes to say that it is clear that Gyles�J accepted as correct the proposition in Lomas that the onus in opposition proceedings lies squarely upon the opponent” ([32]).

189�������������������������������������� Similarly, in this appeal, for reasons set out below, it is unnecessary to resolve the question of the standard an opponent must satisfy.

190�������������������������������������� Irrespective of the standard of an opponent’s onus, where it makes a prima facie case for lack of intention in proceedings under s�59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.

191�������������������������������������� In Health World, Jacobson�J stated:

[161] The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; A Dufty and J Lahore�, Lahore, Patents Trade Marks and Related Rights, LexisNexis Butterworths, Sydney, 2006 at [55,580].

[162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

[163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

[164] Shin-Sun was on notice that its intention to use the mark was in issue from 21 July 2006 when the statement of claim in the rectification proceeding was amended. This was pleaded in [20] of the amended statement of claim, and was particularised in the second further amended statement of claim on 21 August 2007 upon the basis that the healthplus mark was not used until a date well after 7 May 2001.

192�������������������������������������� The Full Court in Food Channel (at [38]) took the view that the shift in onus referred to in Health World was not appropriate in proceedings involving a ground of opposition under s�58 of the Act, but acknowledged that it could apply in proceedings under s�59 due to the peculiar difficulties of showing intention to use.

Presumption of Intention

193�������������������������������������� Historically, an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists.� In Aston v Harlee Manufacturing Co (1963) 103 CLR 391 (“Aston”), Fullagar�J stated at�401 that:

I do not regard his Honour [Dixon J in Shell Co] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it.� There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.

194�������������������������������������� Aston concerned the proprietorship of an unused trade mark under the 1955 Trade Mark Act, of which the applicant’s intention to use the mark upon or in connexion with goods was an essential element.

195�������������������������������������� In the present case, Americana submitted that under the 1995 Act, the traditional presumption of intention to use by reason of filing of an application no longer applied.

196�������������������������������������� A number of recent authorities have, however, endorsed its continuing application.� Most significantly, in Food Channel, the Full Court affirmed, in reliance on Aston, that “the very act of making the application is, without more, sufficient to establish the requisite intention” ([67]).� See also Television Food at [95] where Collier J stated that:

making an application for registration is prima facie evidence of an intention to use: Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401; [1960] ALR 605 at 611; [1960] HCA 47 per Fullagar J, Kimberly-Clark Worldwide Inc v Goulimis (2008) 253 ALR 76; 78 IPR 612; [2008] FCA 1415 at [10].

197�������������������������������������� The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability.� Although the applicant no longer bears that burden, nothing in the language of s�27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long‑established presumption of intention to use recognised under previous legislation.� To the contrary, as possession of the requisite intention is a pre‑condition of entitlement to apply, it may readily be presumed from the fact of application.

Nature of the Intention

198�������������������������������������� In Ritz Hotel Ltd v Charles of Ritz Ltd and Another (1988) 15 NSWLR 158 (“Ritz Hotel Ltd”) at 203 E-F, McClelland�J stated that: “[i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time”.

199�������������������������������������� In Ritz Hotel Ltd, the plaintiff, as a person aggrieved, sought rectification of the Register and removal for non‑use of five registered trade marks, including Charles of the Ritz, Ritz and Ritz Liqui Cr�me, in relation to various goods, including toiletries, perfumes and soaps.� The plaintiff alleged that the first defendant lacked “a bona fideintention to use the mark” and was therefore not the proprietor of an unused mark under the 1955 Act.� McLelland�J regarded “intention to use” in that context as a paraphrase of the statutory phrase “proposed to be used�in relation to goods”.

200�������������������������������������� His Honour referred to Aston and Re John Batt & Co’s Registered Trade Marks [1898] 2 Ch. 432 (“John Batt”) at 439-440.� In John Batt, the applicant had registered a large number of trade marks, had offered many of them for sale, had never traded in the relevant goods and declined to submit to cross‑examination. �Lord�Lindley MR for the English Court of Appeal stated (at 439-440):

Can a man properly register a trade-mark for goods in which he does not deal or intend to deal? – meaning by intending to deal having at the time of registration some definite and present intention to deal in certain goods�and not a mere general intention of extending his business at some future time to anything which he may think desirable.

201�������������������������������������� McLelland�J also referred to Re Ducker’s Trade Mark, supra, at 121 where Lord Hanworth MR stated that “I think that the words ‘proposed to be used’ mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered”.

202�������������������������������������� McLelland J held that the original registration of one of the trade marks (“Ritz Liqui Cr�me”) was obtained by fraud, because correspondence in evidence revealed that the application was actuated only by fears that an application to register a different trade mark might be unsuccessful.

203�������������������������������������� On the basis of that evidence and the managing director’s concession that the applicant had no intention to sell products or license use of the name in Australia until many years later, McLelland�J found that there was no bona fide intention to use the mark at the date of the application.

204�������������������������������������� His�Honour did not, however, find that there was no intention to use two other opposed marks, in the absence of such a direct concession or evidence to the contrary. �His Honour stated at 205:

there is no evidence from which I would be prepared to conclude that the first defendant did not as at the date of the respective applications � propose to use those marks.� The fact that the mark CHARLES OF THE RITZ was never used in Australia in relation to any of the goods in respect of which [one mark] is registered � does not to my mind establish the absence of any proposed use of that mark at the relevant date.� In the case of [the other mark] there was some actual use by the first defendant in Australia in relation to at least some of the goods in respect of which it is registered�

205�������������������������������������� In Aston, Fullagar�J also discussed the nature of the intention.� His Honour stated at 401 that:

A manufacturer of (say) confectionary would, I should suppose, be entitled to register three trade marks in relation to confectionary, though he intended only to use two of them and had not made up the mind as to which two he would use.

206�������������������������������������� Fullagar�J’s frequently reiterated observation qualifies the absolute requirement for a real and definite intention to use each particular mark, at least in the context of multiple related applications in respect of the same goods.

Absence of intention not inferred from non-use per se

207�������������������������������������� There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

208�������������������������������������� In Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1915 (which concerned opposition to an application to register a never used trade mark), the delegate stated at 1921:

I think that the applicants have shown that they have an honest intention to use their trade mark and that the fact that they have not yet used the mark (although a period of four years has passed since they lodged their application) does not in my opinion establish that they have been dilatory in exploiting their inchoate rights.� In his evidence before what is well-known as the Herschell Committee, Edmund Johnson showed that many applicants prefer not to use a mark practically in trade until it is registered.

209�������������������������������������� In Crew v Newcastle Permanent Building Society Ltd (2009) 83 IPR 112, Hearing Officer Wilson stated:

�mere non-use on the part of the applicant does not in itself imply a lack of intention to use the trade mark: Aston; Torrag Pty Ltd v PAH Pty Ltd (2006) 70 IPR 349; [2006] ATMO 59.” (at [21])

It is not uncommon for traders to delay use of a trade mark pending the outcome of an application for registration (see Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1915 at 1921), in order to avoid any lost expenditure on the marketing of the trade mark. (at [25])

210�������������������������������������� In Coca Cola Company v Cox (1992) 25 IPR 429 at 435, Hearing Officer Williams stated:

There may be reasons why the applicant has elected not to serve evidence, but they are not my concern.� All that matters is that the applicant has elected not to rely on evidence of use, and must accept the consequences of that gamble, but in this instance the opponent has failed to present a prima facie case that the original statement of user was false.

As to any use since that date, I note that from the Paintmaster case (1955) 25 AOJP 1915, this office has recognised that there are good commercial reasons for not commencing use of a trade mark until registration is certain.

211�������������������������������������� Although non‑use does not, in itself, imply a lack of the intention, the intention would usually accompany genuine use in Australia, which accordingly may constitute evidence of its existence.� As confirmed by the Full Court in Food Channel and Burchett�J in Conde Naste Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509, use of the mark after the date of filing the application may also throw light on the existence of the intention at that earlier time.

212�������������������������������������� Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s�59 of the Act.� Opposition has nevertheless succeeded in a number of cases. �The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. �In�other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark. See also John Batt at 439-440.

213�������������������������������������� In Food Channel, the Full Court observed that “only a low threshold has been set with regard to intention to use” (at [67]).� Their�Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of “cybersquatting” and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

214�������������������������������������� Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

215�������������������������������������� In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark.� The person who did constitute “the controlling mind” of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class.� Rather, he testified that “we wanted to widen our business” to use the mark on any goods or products the company might make.� [Jacobson J’s decision was upheld by the Full Court, which did not consider the intention issue (although it was a ground of appeal).� The High Court allowed an appeal from the decision of the Full Court and has remitted the proceeding to the Full Court for determination of the remaining issues.]

216�������������������������������������� In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and “controlling mind”) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was “some evidence not found to be unreliable” that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods ([82]).� The Full Court concluded that “in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s�59 issue”: [83].

Suyen’s principal evidence and submissions on appeal

217�������������������������������������� In contrast to its failure to adduce evidence below, on appeal Suyen adduced a substantial body of evidence to establish the existence of the requisite “real and definite intention” to use the bench_BODY trade mark in Australia in relation to the specified goods, both at the date of the application and at all times thereafter.

218�������������������������������������� That evidence included the following broad categories:

(a)��������������� Direct evidence of Suyen’s intentions given by its authorised officer, Bryan Lim, including evidence of Suyen’s preliminary attitudes, approach, investigations, policies and decision‑making practices and processes.

(b)�������������� Evidence of Suyen’s use of its trade mark BENCH and other related BENCH trade marks in relation to clothing and other goods in Australia prior to the filing of the application.

(c)��������������� Evidence of Suyen’s use of the BENCH and bench_BODY trade marks in relation to clothing and other goods in Australia after filing the application, by the promotion, marketing and sale of products imported by traders based in Australia and by Suyen’s online store.

(d)�������������� Evidence of Suyen’s development and expansion of its brands, trade marks and the product lines to which they are applied, and its commencement of businesses entailing their use and sale both in the Philippines and thereafter in various other countries, including the policies and considerations relevant to the time, place and means of such expansion.

219�������������������������������������� Suyen submitted that the following evidence established its clear and definite intention (both at the date of the application and currently) to use the bench_BODY trade mark trade mark in Australia; and that the application was filed to support its existing business in Australia and to allow for expansion:

��������� Suyen’s history and capability in respect of the goods subject of the application,

��������� Suyen’s development of the brand including the bench_BODY (logo) trade mark within the Philippines,

��������� Suyen’s internationalisation of the brand,

��������� Suyen’s registration of the bench_BODY (logo) trade mark in international jurisdictions,

��������� Suyen’s specific investigation of Australia as a potential market for the brand,

��������� Suyen’s corporate decision to market the brand in Australia and the associated decision to file an application for the bench_BODY (logo) in Australia, and

��������� the actual use of the bench_BODY (logo) in Australia authorised by Suyen subsequent to filing the application.

220�������������������������������������� Suyen submitted that its application to register the bench_BODY trade mark filed on 5 September 2003 was consistent with its practice of brand expansion; its growth and international expansion of BENCH and BENCH sub‑brands in various locations throughout the world, conferring the option to use it in addition to BENCH or as occurred in China, instead of BENCH; its use in other markets; and its use in fact in Australia after the filing date.�

221�������������������������������������� Suyen denied that its application was actuated by defensive, speculative or other illegitimate purposes.� It submitted that although it had used the bench_BODY trade mark in countries, including China, the USA and Canada despite and during its dispute with Americana over BENCH trade marks, the trade mark had been registered in the relevant countries, in contrast to the situation in Australia.

Americana’s principal submissions

222�������������������������������������� Americana submitted that two circumstances shifted the evidentiary onus to Suyen.

223�������������������������������������� First, Suyen’s 2006 USA notice of opposition was silent “as to any business plans regarding trade mark use of the logo in Australia filed by its USA attorneys,” although it was drawn after Americana had filed a non‑use application in Australia in August 2004, Suyen’s BENCH mark was “under attack in Australia” and Americana had filed a notice of opposition in the present proceeding.

224�������������������������������������� Secondly, as at 13�October 2008, 17 July 2008 and 9 September 2008, Suyen’s website did not evidence any intention to use the bench_BODY trade mark in Australia.� It did not target, and was not accessed by, Australian‑based purchasers.� Suyen’s contact details on the website gave a Philippines address and the prices of items available for sale were in US dollars based on Filipino retail cost.� The online store was “an offer to world”, in the sense that goods would be sold to any locations to which they could be freighted.� Australia was not stated to be part of any particular “region of interest”.� The range of goods available for online purchase from Australia was also very limited.� As at 13�October 2008, 17 July 2007 and 9�September 2008, the only item bearing the bench_BODY trade mark was a bikini brief, the shipping costs of which greatly exceeded the price of a single item.

225�������������������������������������� Americana further submitted that the evidence advanced by Suyen on appeal did not discharge the evidentiary burden which had shifted to it.� It did not support Suyen’s asserted intention to use the bench_BODY trade mark in Australia in relation to the specified goods, either at the date of filing the application in September�2003 or at any time thereafter, for the following reasons:

(a)��������������� Mr�Lim’s evidence that Suyen intended to use the trade mark was not credible.� It was inconsistent with his inability specifically to recall the decision to apply to register the bench_BODY trade mark, the evidence that his visits to Australia were for unrelated dealings with a business named The Natural Source, his failure to follow the pattern of his preliminary visits to the USA, or to explore possible locations, locate a partner in Australia or return to Australia for six years.

(b)�������������� Suyen’s use of BENCH and bench_BODY trade marks and products both internationally and within Australia not only failed to support the existence of the intention, but positively indicated the contrary.

(c)��������������� Suyen’s international business activities evinced no consistent pattern.� Rather, its overseas expansion had been “ad hoc, reactive and in large part built on pre‑existing personal relationships”.� Similarly, there was no consistent pattern of expansion on a brand by brand basis, as, for example, some BENCH sub‑brands were not used outside the Philippines.� Nor did Suyen’s filing for the registration of a range of trade marks in various countries cast light on its intention to use the bench_BODY mark in Australia.

(d)�������������� Suyen’s use of the bench_BODY trade mark in Australia after filing the application was limited in time, character and quantity and did not extend to the range of goods specified in the application.� Ms Vella-Xuereb’s enquiries revealed an absence of genuine business activity in apparel by the traders relied on by Suyen.� Any use was “merely personal, ad hoc and desultory, if not token and contrived”.� When contrasted with the size and scope of Suyen’s activities in other countries, it appeared responsive to litigation, rather than based on a genuine intention to use the mark.

(e)��������������� Suyen documented transactions to the Brevas and supplied free sample products to Solid Trading only after an unsuccessful settlement meeting between Americana and Suyen in July�2007 in Los Angeles, indicating that the supplies were not in the ordinary course of trade but for the purposes of the litigation.

(f)���������������� The sales of Suyen’s products in Australia in the period from 1990 to 2007 did not include bench_BODY brand products and, in any event, the sale of BENCH and BENCH sub‑products prior to 2007 constituted a mere extension of family relations outside usual business operations.

(g)��������������� There was no evidence that Suyen had postponed expansion to Australia in relation to the bench_BODY trade mark by reason of the opposition proceeding.

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.� 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 Ms�Vella‑Xureb did not controvert) and am not persuaded that their sales were not genuine commercial transactions.� 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.� 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.� The evidence does not suggest that Suyen has registered bench_BODY on an undiscriminating basis throughout the world.� 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. �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.

conclusion

248�������������������������������������� In my opinion, the appeal should be allowed.

Associate:

Dated:�������� 21 June 2010