Calico Global Pty Ltd v Calico LLC  FCA 2096 (21 December 2018)
Unsuccessful appeal by Calico Global from the Registrar’s decision to remove its trademark registration for CALICO for all the registered class 44 services on the ground of non-use during the 3 year period ending 15 April 2014.
At the time of filing the non-use removal application on 15 May 2014, Kevin Owens was the registered owner of the CALICO trademark. Under a deed dated 19 July 2011, rights to this trademark were assigned to Calico Pty Ltd which, in turn, granted Calico Global an exclusive licence to use the CALICO trademark. The assignment, however, was not recorded until 22 May 2014. Under a further deed dated 20 May 2014 Calico Pty Ltd assigned its rights in the CALICO trademark to Calico Global and, by late May 2014, Calico Global became the registered owner of this mark.
To rebut the allegation of non-use, Calico Global had to establish that the CALICO mark had been used in good faith for the relevant class 44 services by its registered owner, Kevin Owens, or by a person whom he authorised in the period between 15 April 2011 and 19 July 2011 (the first period), or, by a person whom he had authorised, namely his assignee, Calico Pty Ltd, or its licensee, Calico Global, in the period between 19 July 2011 and 15 April 2014 (the second period).
Calico Global essentially relied on use of the CALICO mark on the website at www.calico.com.au and the Calico iPhone app for a free online fitness and nutrition program used in conjunction with fitness totem poles that Calico Global had erected in parks in three local government council areas in Perth. These poles were no more than a post or sign placed at set distances apart and had no electronic or other connectivity with the app.
Calico LLC launched its services in the USA on 19 September 2013. This was publicised worldwide. Its business was directed to health and well-being, particularly services relating to anti-ageing, treatment of degenerative conditions and the promotion of life extension.
After Calico LLC’s well publicised launch, Calico Global began to seek to create a nexus between it and health, ageing and medicine.
Rares J was not satisfied any of the evidence relied upon by Calico Global showed use of the CALICO trademark in relation to health or research services so as to fall within the class of medical services in class 44. Rather, this evidence was confined to the provision of advice and information regarding exercise, fitness and nutrition in relation to an exercise, fitness and nutrition website, mobile software application and totem poles used as distance indicators. The references on the website and social media relating to medicine and ageing were deployed after 19 September 2013 and were not genuine commercial uses of the CALICO trade mark. His Honour found that Calico Global engaged in this actively in order to obtain benefits derived from a colourable and false assertion of it being a source or provider of services that it did not provide.
Further, on the evidence, neither Kevin Owens, nor Calico Pty Ltd, exercised any actual or other control over Calico Global’s use of the CALICO trademark at any time during the first or second periods.
Calico Global sought, during the appeal to amend the registered class 44 services to “provision of advice and information regarding diet, nutrition, exercise and fitness” (proposed services). However, this amendment was refused because the proposed services were inconsistent with any use of CALICO as a trademark during the relevant period. His Honour concluded that it is not reasonable, in all the circumstances, to treat the use of the CALICO trademark during any of the first and second periods as a use by Kevin Owens (in the first period) or Calico Pty Ltd, as assignee (in the second period) (either by themselves or by Global as an authorised user) in relation to any of the proposed services as a use by the registered owner.
Rares J was not prepared to exercise discretion in favour of Calico Global. His Honour considered that Calico Global’s conduct after the launch of Calico LLC was “calculated, deliberately, to create confusion and to interfere with Calico LLC’s bona fide use of the CALICO mark”. Calico Global “sought to generate the confusion by claiming or feigning the provision of services” that it did not actually provide in order to create, what it hoped would be, a situation in which Calico LLC would be forced to come to terms with it. Moreover, this “disingenuous, and indeed dishonest, behaviour” continued during the appeal.