Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 12 November 2021
• Neutral Citation: [2021] FCA 1404
• Court: Federal Court
• Date: 12 November 2021

Federal Court of Australia

Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2) [2021] FCA 1404

Appeal from:	Pablo Enterprise Pte Ltd v Freshfood Holdings Pte Ltd [2020] ATMO 195
File number:	NSD 62 of 2021
Judgment of:	THAWLEY J
Date of judgment:	12 November 2021
Catchwords:	TRADE MARKS – appeal from a decision of a delegate of the Registrar of Trade Marks – whether non-use of trade mark within relevant period under s 92(4)(b) of the Trade Marks Act 1995 (Cth) established – whether Court should exercise discretion under s 101(3) of the Trade Marks Act 1995 (Cth) – appeal allowed
Legislation:	Trade Marks Act 1995 (Cth) ss 7(4), 17, 92(4)(b), 96, 100(3)(a), 101(3), 104, 228(1)
Cases cited:	Austin Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490; [2012] FCAFC 8 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144; [2010] HCA 15 Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited [2021] FCA 323 Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883 Pablo Enterprise Pte Ltd v Freshfood Holdings Pte Ltd [2020] ATMO 195 PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 391 ALR 608; [2021] FCAFC 128 Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261; [1995] FCA 35 Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd (2019) 141 IPR 463; [2019] FCA 719 Trident Seafoods Corporation v Trident Foods Pty Limited (2018) 137 IPR 65; [2018] FCA 1490 Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 369 ALR 367; [2019] FCAFC 100
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	41
Date of last submissions:	25 August 2021
Date of hearing:	Determined on the papers
Counsel for the Appellant:	Mr JS Cooke
Solicitor for the Appellant:	Davies Collison Cave Law
Counsel for the First Respondent:	The First Respondent did not appear
Counsel for the Second Respondent:	The Second Respondent filed a submitting notice, save as to costs

ORDERS

		NSD 62 of 2021
BETWEEN:	FRESHFOOD HOLDINGS PTE LIMITED Appellant
AND:	PABLO ENTERPRISE PTE LIMITED First Respondent ; REGISTRAR OF TRADE MARKS Second Respondent

order made by:	THAWLEY J
DATE OF ORDER:	12 November 2021

THE COURT ORDERS THAT:

1. The appeal be allowed.

2. The decision of the delegate of the Registrar of Trade Marks dated 17 December 2020 be set aside.

3. The first respondent pay the costs of the appeal and the opposition proceedings before the Registrar of Trade Marks.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THAWLEY J:

Introduction

1. This proceeding was commenced on 29 January 2021 by the appellant (FreshFood) filing a notice of appeal pursuant to s 104 of the Trade Marks Act 1995 (Cth) (TMA). FreshFood appeals from a decision of a delegate of the Registrar of Trade Marks: Pablo Enterprise Pte Ltd v Freshfood Holdings Pte Ltd [2020] ATMO 195 (the Decision). The Decision concerned an application filed by Pablo Enterprise Pte Ltd, a Singapore-based company, pursuant to s 96 of the TMA to remove FreshFood’s Australian Registered Trade Mark No 170010 for the word PABLO filed on 25 October 1961 in class 30: coffee (the PABLO Mark). The delegate held pursuant to s 101 of the TMA that the PABLO mark should be removed for non-use pursuant to s 92(4)(b) of the TMA and, therefore, that Pablo Enterprise succeeded in its non-use application (the Non-Use Application).

2. Orders confirming service of FreshFood’s notice of appeal on Pablo Enterprise in Singapore were made on 26 March 2021: Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited [2021] FCA 323. Orders were also made to join the Registrar as a party if Pablo Enterprise had not taken any steps in the proceeding by 16 April 2021. Pablo Enterprise did and has never taken any steps in this proceeding. The Registrar has been joined as the second respondent. On 10 May 2021, the Registrar filed a notice indicating that she submits to any order the Court may make in the proceeding, save as to costs.

3. Orders have been made for the appeal to be heard on the papers.

4. FreshFood has filed and relies on three affidavits and a considerable number of documents. FreshFood has also filed detailed submissions. The Registrar has filed a “Statement of Position” in accordance with orders made by the Court on 11 May 2021. The Registrar does not oppose the final orders sought by FreshFood. The Registrar indicated she did not wish to take an active role in the matter or make submissions in respect of the evidence filed by FreshFood. She indicated she did not consider it to be appropriate for her to actively prosecute the removal application in the absence of Pablo Enterprise’s participation in the proceeding, appropriately drawing to the Court’s attention the decision of Burley J in Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883.

5. In Hungry Spirit, the parties had asked the Court to make an order by consent allowing the appeal. The parties provided to the Court a letter from IP Australia stating that the Registrar did not object in principle to the orders sought by the parties. Fit n Fast had filed a non-use application pursuant to s 92(4)(b). Burley J summarised the operation of the statutory scheme from that point in the following way (emphasis in original):

[8] The Registrar is obliged to give notice of an application under [s] 92, including by advertising the application in the Official Journal: s 95. The application for removal may be referred by the Registrar to a prescribed court for determination: s 94. That step was not taken in this case. Any person may oppose an application for removal by filing a notice of opposition with the Registrar in accordance with the regulations and within the prescribed period: s 96. If the application for removal is unopposed, or the opposition has been dismissed, the Registrar (or the court, if the application is referred to it) must remove the trade mark from the Register in respect of the goods and/or services specified in the application: s 97. If the application is opposed, the registrar must deal with the opposition in accordance with the regulations: s 99. The Trade Marks Regulations 1995 (Cth) provide that the applicant must file a notice of intention to defend the application, if a notice of intention to oppose the application is filed: reg 9.15. If a notice of intention to defend is not filed within the period required, the Registrar may decide to take the opposition to have succeeded, and refuse to remove the trade mark from the Register: reg 9.15(3).

[9] Section 100(1) provides that it is for the trade mark owner (as the opponent to the non-use application) to rebut any allegation that the trade mark has not been used or was not intended to be used.

[10] Section 101(1) provides that if the proceedings have not been discontinued or dismissed, and the Registrar is satisfied that the ground on which the application was made have been established the Registrar may decide to remove the trade mark from the...