The recent case of Toddler Kindy Gymbaroo Pty Ltd v Gym-Mark Inc  ATMO 15 (1 March 2013) saw a Hearing Officer of the Australian Trade Marks Office consider the meaning of ‘in the course of trade’ in the context of an application for removal on the basis of non-use.
Specifically, the Hearing Officer examined use of the trade mark GYMBAROO1, as Gym Mark (‘the Removal Applicant’) sought to have it partially removed from the Register on the basis of non-use by Toddler Kindy Gymbaroo (‘the Opponent’) in relation to the majority of the goods/services within Classes 16 and 35 2. Toddler Kindy Gymbaroo opposed the application, alleging that they had used the trade mark in good faith in the relevant period 3.
The Removal Applicant was found to be largely successful.
What you Need to Know
To survive a removal application on the basis of non-use, you must be able to demonstrate a connection in the course of trade between the goods/services and the person who applies the mark to the goods/services. Otherwise, an applicant can seek an amendment to the class specification of goods/services, thereby removing your mark from the Register in respect of those goods/services to which you cannot establish a connection.
In deciding to partially remove the Opponent’s trade mark from the Register on the basis of non-use ‘in the course of trade’, the Hearing Officer clarified that use 'as a trade mark'4 is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between the goods/services and person who applies the mark to the goods/services.
Thus the Hearing Officer dismissed Toddler Kindy Gymbaroo's claims that they used the trade mark in relation to the following goods/services:
- That newsletters constituted “paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; stationery; and stickers”; there was no evidence that the Opponent dealt in these items in the course of trade.
- That they sold goods ‘plastic materials for packaging, personal organisers, clothing, toys, footwear, games, soaps, cosmetics, toiletries, food products and bags’ during the relevant period; there was no evidence in support of this.
- That the Opponent appeared to be not a producer, but rather a consumer of ‘bookbinding material, artists’ materials, paint brushes, adhesives for stationery or household purposes, printers’ type, printing blocks’.
- That the trade mark had been used in relation to retail sales of goods; noting that there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods, is use in relation to the goods themselves (or vice versa)5.
- That ‘exercise equipment’ could be construed as ‘toys’; there were no concrete examples of goods sold in the course of trade during the relevant period which constituted ‘toys’ , nor of such goods that are both obviously and simultaneously both toys and exercise equipment.
However, the Hearing Officer did find:
- That the Toddler Kindy Gymbaroo's newsletter provided an ‘advertising service’, and probably provided business management and business administration services in relation to its franchise operations.
- Therefore, the Opponent had established its opposition in relation to the following services in Class 35: ‘business management and business administration in relation to the provision of franchise services’.
The Hearing Officer therefore suggested an appropriate amendment to the Class 16 and 35 specifications of goods/services. The Removal Applicant was found to be largely successful and costs were awarded against the Opponent at the official scale.
The case also considered the secondary issue of the exercise of the Registrar’s discretion in determining an opposed application for removal of a trademark from the Register6.
Toddler Kindy Gymbaroo sought the exercise of the Registrar’s discretion in relation to the impugned goods and services, and to determine that the trade mark should not be removed from the Register. The Hearing Officer determined, however, that the Opponent had not established a sufficient basis on which to invoke such discretion, and that the retention of the Trade Mark on the register for the impugned goods and services might actually increase the likelihood of deception or confusion.