Societe Anonyme des Eaux Minerales d'Evian v The Yoghurt Co Pty Ltd [2012] ATMO 53 (4 June 2012)

Evian has successfully defended its Australian registrations for Evian trade marks from attacks for removal for non-use, despite no proof of use for a wide variety of goods and services. This is the latest in a line of decisions in which the Registrar's discretion has been exercised liberally.

Scope of Evian trade mark registrations

Evian owns a number of Australian trade mark registrations and International Registrations Designating Australia for Evian and stylised logos incorporating the word Evian which are protected collectively in the classes listed in the table below:

Click here to view table.

The Yoghurt Co Pty Ltd filed applications for removal/cessation of protection of Evian's registrations on 5 September 2008 in respect of all the goods and services for which the marks are registered, other than mineral water and facial sprays, on the basis the marks had not been used for such goods and services in the preceding 3 year period. The Yoghurt Co Pty Ltd is a family run dairy company that sells yoghurt under the trade mark EVIA.

Use of Evian trade marks

It was clearly established that Evian had used its trade marks for mineral water and a facial spray containing mineral water. The marks were also found to have been used in relation to café services through Evian's annual opening of a café at the Australian Tennis Open.

Promotional goods - are they goods in the course of trade?

The Evian trade marks had been used on a variety of free promotional gifts which included aprons, bottle openers, caps, coolers and carrying bags, fridges, glassware, hand towels, ice buckets, pens, polo shirts, tee-shirts, sweat bands, umbrellas, waiter's friends and knives. This was considered relevant use in the course of trade based on non-binding comments of Drummond J in the Federal Court1 that the promotional use of a pharmaceutical product trade mark on a t-shirt was trade mark use in relation to clothing. In the present case the Hearing Officer considered this an indication of how the Courts would presently treat the question of whether promotional goods are goods in the course of trade. Arguably, however, such use is promotional use in relation to the core goods only, in this case Evian mineral water, particularly where the promotional gifts are not provided for the purpose of maintaining or creating a market to trade in those items.

The Hearing Officer then turned his mind to whether or not to exercise the Registrar's discretion to allow the marks to remain on the Register for the goods and services in respect of which the allegation of non-use had not been rebutted.

Registrar exercises discretion to keep Evian marks on Register

The Registrar's discretion is unlimited, and it is not necessary that exceptional circumstances exist before the discretion be exercised in favour of the trade mark owner. The Hearing Officer considered the interests of both parties to the dispute and the public interest, before exercising discretion in favour of allowing the trade marks to remain registered because:

  • Many of the goods and services in respect of which Evian's marks were registered were considered similar to those in respect of which it had used its mark;
  • The Evian trade marks were found to have a considerable reputation which was associated with exclusiveness, of being water from a spa resort, fashionable and a celebrity brand, and of being French and, owing partly to Evian's sponsorship of major sporting events, was found to be associated with major sports events, television, entertainment, health, well-being and activity. That is, Evian's reputation was thought to extend beyond mineral water products.
  • It was considered difficult to see how a third party could use the Evian trade mark in relation to most of the registered goods and services without confusion occurring since consumers would wonder whether the goods or services are connected with Evian;
  • The removal of the trade marks from the Register would tend to increase the likelihood of deception and confusion rather than decrease it (owing largely to the reputation of the Evian marks); and
  • The Yoghurt Co's interests in the continued pursuit of the removal actions were said to be unclear since Evian had amended its registrations to exclude dairy products and hence the Yoghurt Co's goods of interest. The Hearing Officer was critical of this aspect, and stated that where the interests of the applicant for removal were not in evidence, the interests of the registered trade mark owner might take some precedence.

Implications for brand owners and removal applications

This decision highlights the broad nature of the Registrar's discretion to allow trade marks to remain registered even where use has not been established.

Trade marks with a strong reputation, particularly where promotional activity has occurred across a variety of events and by virtue of an array of promotional items, may receive broad protection similar to that afforded by a defensive trade mark registration.

While the discretionary nature of removal actions for non-use can make outcomes unpredictable, this decision highlights the importance for removal applicants to put in evidence of their interests in removing the registration.