369 Labs Pty Ltd v BP plc
[2024] ATMO 209
•24 October 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by 369 Labs Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by BP plc to remove trade mark number 1673078 (classes 9 and 35) - PULSE - in the name of 369 Labs Pty Ltd
Delegate: | Jonathon Galloway |
Representation: | Opponent: Ed Heerey KC and Ryan Maguire of counsel Applicant: Frances St John of counsel |
Decision: | 2024 ATMO 209 Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) – no use during relevant period established – no obstacles to use established – discretion not exercised – trade mark to be removed |
Background
This decision concerns an application made on 12 May 2022 by BP plc (‘Applicant’) under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Act’) seeking removal of the trade mark detailed below from the Australian Register of Trade Marks:
Registration Number: 1673078
Trade Mark: PULSE (‘Trade Mark’)
Filing Date: 6 February 2015
Registered Owner: 369 Labs Pty Ltd (‘Opponent’)
Registered Goods and Services:
Class 9: Electric apparatus and instruments for measuring, analysing and controlling energy consumption; electrical control units and switches; electrical metering apparatus; electrical appliance control apparatus; power supply control apparatus; apparatus for measuring and reducing energy consumption; computer hardware for measuring, analysing and controlling energy consumption; apparatus for collecting, processing and analysing data; apparatus for control of heating and lighting (‘Registered Goods’)
Class 35: Wholesaling and retailing of energy; promotion of energy supply services; data collection services; data management services (‘Registered Services’)
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995(Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The application for removal of the Trade Mark is made in respect of all the Registered Goods and Services.
The Opponent filed a Notice of Intention to Oppose removal of the Trade Mark on 11 July 2022 and a Statement of Grounds and Particulars (‘SGP’) on 9 August 2022. The Applicant filed a Notice of Intention to Defend on 14 September 2022.
On 13 December 2022 the Opponent filed its Evidence in Support (‘EIS’) being a declaration of Domenico Gelonese, Co-Founder and CEO at the Opponent, dated 13 December 2022, with exhibits DG1 to DG27 (‘Gelonese 1’).
On 22 March 2023 the Applicant filed its Evidence in Answer (‘EIA’) being a declaration of Kellech Nanette Smith, Partner at Ashurst Australia, dated 21 March 2023, with annexures KNS-1 to KNS-8.
On 23 May 2023 the Opponent filed its Evidence in Reply (‘EIR’) being a declaration of Domenico Gelonese, dated 1 May 2023, with exhibits DG28 to DG34 (‘Gelonese 2’).
Both parties requested to be heard by video conference and filed written submissions prior to the hearing. As a delegate of the Registrar of Trade Marks, I heard this matter on 25 July 2024. Frances St John of counsel appeared for the Applicant. Ed Heerey KC and Ryan Maguire of counsel appeared for the Opponent.
Relevant Provisions
Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly 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.
Subsection 92(4)(a) requires two elements to be established, the first being that the trade mark was registered with no intention to use it in good faith, and the second being that the trade mark has in fact not been used, or not been used in good faith. However, s 92(4)(b) is established simply where no use in good faith can be shown within a particular three year period. Section 93(2), adds a requirement to applications under s 92(4)(b) these cannot be filed until five years after the filing date of the trade mark, but the application meets this requirement as it was filed on 6 February 2015.[2]
[2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[3] As the Trade Mark had been registered for more than five years as at the date of the non-use application, I need only consider the application for removal under s 92(4)(b) in this matter. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark) pursuant to s 100 either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).
[3] Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3 [20]-[22] (Hearing Officer Richards).
Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 12 April 2022 (‘Relevant Period’).
The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which relevantly provides:
100 Burden on Opponent to establish use of trade mark etc.
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
…
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
…
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:
(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or
(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.
The standard of proof required to rebut the non-use allegation is the ordinary civil standard being on the balance of probabilities.[4]
[4] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J) in respect of oppositions under s 52.
In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the Registered Goods and Services, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.
Further, I note that a single bona fide use of the Trade Mark in the course of trade during the Relevant Period may be sufficient to rebut the allegation under s 92(4)(b),[5] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[6] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[7]
[5] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) FCA 261, [17] (Drummond J) (‘Woolly Bull’).
[6] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[7] s 7(3).
EIS
The EIS consists of Gelonese 1. This declaration explains that the Trade Mark was assigned to the Opponent by Embertec Pty Ltd (‘Former Owner’) and, details of this assignment were entered on the Register on 20 November 2020. The Opponent is declared to be a wholly owned subsidiary of Quattro Group Australia Pty Ltd (‘QGA’). Beat Energy Pty Ltd (‘Beat Energy’)[8] is also a wholly owned subsidiary of QGA and is described as the Opponent’s ‘sister energy retailer brand’.[9]
[8] Gelonese 1, DG2; DG3.
[9] Gelonese 1, [4].
Mr Gelonese states that the Opponent owns the following trade marks:
| Trade mark number | Trade mark | Registered Owner | Goods and services |
| 1668156 | Opponent | Class 9: Electric apparatus and instruments for measuring, analysing and controlling energy consumption; electrical control units and switches; electrical metering apparatus; electrical appliance control apparatus; power supply control apparatus; apparatus for measuring and reducing energy consumption; computer hardware for measuring, analysing and controlling energy consumption; apparatus for collecting, processing and analysing data; apparatus for control of heating and lighting Class 35: Wholesaling and retailing of energy; promotion of energy supply services; data collection services; data management services | |
| 1708860 | Former Owner | Class 9: Powerboards; portable electric sockets; electronic power controllers, electrical controllers and switches; remote controlled electrical switches Class 11: Apparatus for ventilating, namely, ventilation apparatus with remote control and energy usage optimization features; air conditioning apparatus; apparatus for lighting, namely, LED (light emitting diode) lighting fixtures and light bulbs, and lighting fixtures with remote control and energy usage optimization features; lighting apparatus utilizing light emitting diodes (LEDs); installations for lighting; apparatus for heating, namely, heating installations with remote control and energy usage optimization features; control devices for heating and air conditioning installations, namely, control devices used in air intakes, air ducts, air vents to regulate the intake, flow, and exit of air Class 35: Wholesaling and retailing of energy, namely, wholesale and retail energy provider services that allow customers to purchase energy at varying rates in dependence on usage and demand; promotion of energy supply services; data collection services in the field of energy usage for business purposes; data management services for use in tracking and monitoring energy consumption for others for cost accounting purposes Class 36: Financial services, namely, financing; insurance brokerage services; insurance advisory services; futures trading; energy trading; energy brokerage; futures brokerage; brokerage of carbon credits; commodities brokerage; financial investment brokerage; traded options brokerage |
As part of its product and services suite, the Opponent offers consumers a hardware device,[10] (‘physical unit’) that measures energy consumption, and related software (‘analytics platform’) that gives consumers insights into their energy consumption. The physical unit and analytics platform are referred to jointly throughout the Opponent’s evidence as the Opponent’s ‘energy management system’.
[10] Displayed at [23] of this decision.
Gelonese 1 states that, since May 2016, the physical unit has been offered under the trade mark ‘EMBERPULSE’. Following the assignment of the Trade Mark to the Opponent, Mr Gelonese explains that it has been phasing out use of ‘EMBERPULSE’ in order to transition to the use of the Trade Mark in connection with the physical unit and the analytics platform.
As part of the Opponent’s preparation to use the Trade Mark, it began to update the packaging for the physical unit in July 2021 to replace ‘EMBERPULSE’ with the Trade Mark. As of September 2021, the Opponent is said to have prepared a full rebrand of the packaging, manuals and other inserts which would be used once existing stock bearing ‘EMBERPULSE’ had been sold.
The evidence includes screenshots of the Opponent’s website and the social media pages of the Opponent and Beat Energy. There are multiple exhibits in the nature of promotional collaborations between Beat Energy and other entities such as Mitre 10, the Adelaide United Football Club, and the Opponent’s ‘energy solutions partner’ International Hardware Group. The evidence also includes industry specific publications such as a document shown at exhibit DG 18 which is said to be an ‘info sheet’ published at the Independent Hardware Group Online Expo in February 2021. In addition, the evidence includes manuals and images of the Opponent’s updated packaging that reflects the Opponent’s stated intention to begin using the Trade Mark in connection with the physical unit.
Gelonese 1 states that ‘[a]s of 1 April 2022, there were 3,360 PULSE systems deployed in Australia’.[11] It is not stated whether this figure includes the physical unit bearing the Trade Mark or if it relates to existing stock of the physical unit with the EMBERPULSE branding.
[11] Gelonese 1, [17].
The evidence also includes copies of slides from presentations,[12] that were delivered to potential customers and industry partners. The presentations were given by Mr Gelonese or Nick Demourtzidis, Co-Founder and Marketing Director of the Opponent and Beat Energy. According to Gelonese 1, the presentations were provided online or at offices within South Australia between September 2021 and December 2021. Mr Gelonese believes the following slide, which appeared in each presentation, demonstrates use of the Trade Mark:
[12] Gelonese 1, DG20; DG21; DG22; DG23; DG24.
In relation to demonstrating use in relation to the promotion of energy supply services and the data collection and management services, the Opponent relies on instances of the Trade Mark appearing alongside the word ‘analytics’ in its advertising material. Examples of such use includes:[13]
Let Pulse® Analytics find you the cheapest energy plan each year, based on your unique energy usage requirements. (average $451 saving per year).
Install Pulse® before installing solar and let Pulse® Analytics calculate the perfect solar system for your energy needs.
[13] Gelonese 1, DG17.
The Opponent submits that, ‘analytics’ inherently involves the collection and management of data. The Opponent also claims that its ‘energy management system’ is the conduit by which it provides wholesaling and retailing of energy as well as the promotion of energy supply services.
EIA
The EIA disputes the Opponent’s claim that the Trade Mark has been used in respect of the physical unit.
The Smith declaration annexes screenshots obtained from searches of the Opponent and Beat Energy’s web and social media presence. The screenshots include many examples where the Opponent has continued using EMBERPULSE, not the Trade Mark, in connection with the physical unit after the Relevant Period.
The Smith declaration further asserts that during and after the Relevant Period, the Trade Mark has been used only in respect of goods that do not fall within the scope of the Registered Goods and Services.
EIR
Gelonese 2 replies to the alleged deficiencies in the Opponent’s evidence, set out in the EIA. Specifically, the Opponent claims that use of the Trade Mark in relation to the physical unit has not commenced because it is still in the process of selling through existing stock bearing the EMBERPULSE branding. Gelonese 2 states that the Opponent retained references to EMBERPULSE hardware in conjunction with PULSE Analytics to minimise any customer confusion.[14]
[14] Gelonese 2, [7].
Use of the Trade Mark in the Relevant Period
The evidence includes captures of the Opponent’s website between April 2021 and February 2022 which have been sourced from a webpage archive service.[15] The Opponent submits these captures show use of the Trade Mark as well as EMBERPULSE in connection with its offering of goods and services. These screenshots show the physical unit consistently being referred to by the EMBERPULSE trade mark. For example, the text with the captures describes the physical unit as being ‘[t]he Emberpulse® unit (pictured)’ and that it is ‘a smart home control hub’.[16] The Trade Mark only appears among these captured webpages in relation to the analytics platform. This is a common issue throughout the Opponent’s evidence, which shows that the physical unit and the analytics platform are related but offered under different trade marks.
[15] Gelonese 1, DG4; DG5; DG6.
[16] Gelonese 1, DG6.
Other exhibits to Gelonese 1 do not have sufficient context to establish that use of the Trade Mark is a reference to the physical unit. For example, a post made from the Facebook account of Beat Energy, dated 25 August 2021, includes the words ‘Run your dishwasher when Pulse is flashing’ underneath the heading ‘Quick Tip’.[17] The Opponent submits that this post would be interpreted as a reference to something physical in nature. However, this Facebook post does not include sufficient detail or any other context that would assist in determining that this is use of the Trade Mark in connection with the physical unit. Indeed, another post made from Beat Energy’s Facebook page on 15 October 2021, which states ‘Beat Energy™ together with Pulse™ Analytics software monitors and advises you how to reduce your energy costs’, indicates that any use of the Trade Mark made by Beat Energy is in relation to the analytics platform.[18]
[17] Gelonese 1, DG7; Gelonese 2, DG32.
[18] Gelonese 1, DG7 (emphasis added).
As noted above, the evidence suffers a common issue, being that the Trade Mark is often used in relation to goods for which it is not registered. In addition, I note that exhibit DG8 does not provide sufficient context, in that where the Trade Mark appears, it is not specifically in relation to the physical unit. Exhibits DG9 and DG10 do not show any use of the Trade Mark. Exhibits DG11 and DG12 suffer the same issue in that they appear to show use of the Trade Mark in relation to the analytics platform. Exhibits DG14 and DG25 are dated after the Relevant Period. Exhibit DG16 is an undated document being a copy of the ‘EMBERPULSE & PULSE Analytics User Manual’,[19] which consistently describes the physical unit as the ‘Emberpulse® unit’. I note seven other exhibits are also undated.[20]
[19] Gelonese 1, [13].
[20] Gelonese 1, DG13; DG15; DG17; DG18; DG19; DG26; DG27.
As noted above the Opponent submits that it has deployed 3,360 ‘PULSE systems’ as at 1 April 2022. Having regard to the fact that the evidence shows that the physical unit and the analytics platform were referred to under different trade marks and the ‘existing stock of EMBERPULSE branded hardware’ was still in circulation as at September 2021,[21] it is not clear what amount, if any, of the ‘PULSE systems’ deployed included the Trade Mark being affixed to, or otherwise used in relation to, the physical unit.
[21] Gelonese 1, [20].
The Opponent drew attention to the presentations delivered to prospective customers, and claimed that the slide, which was reproduced above, is sufficient to establish use of the Trade Mark in connection with the physical unit. However, the text within the slide indicates that the goods provided under the Trade Mark are intended to provide ‘energy advice via a simple real time energy usage interface’. When this is considered as a whole, it is not clear that the Trade Mark is used to refer to the physical unit, and when it is considered in the context of all of the evidence it is not sufficient by itself to rebut the non-use allegation. I also note that there appears to be some discrepancy in relation to the copyright notices appearing in each slide in the presentations, the copyright notices inconsistently apply the years 2020, 2021, and 2022 despite having been delivered in 2021. As such, whatever instances of alleged use might be garnered from the exhibits, they do not amount to proof that the Trade Mark was used during the Relevant Period given all the deficiencies.
The Opponent bears the onus of establishing it has used the Trade Mark in relation to all of the Registered Goods and Services during the Relevant Period. As far as the Registered Goods are concerned, the Opponent submits that each of the Registered Goods are comprised in the physical unit. The Applicant’s main contention is that the Opponent’s evidence only shows use of the Trade Mark in relation to software, namely the analytics platform, which the Trade Mark does not have registration for.
I note the Applicant’s submissions that evidence of use by Beat Energy is not authorised use of the Trade Mark within the meaning of the Act. However, it is not necessary to consider this issue as there is no evidence before me that is sufficient to rebut the non-use allegation in relation to the Registered Goods.
I am not satisfied that the evidence establishes that there was any use of the Trade Mark during the Relevant Period in relation to the Registered Goods.
In relation to the Registered Services, the Opponent submits that data collection and management services are an intertwined component of the ‘Opponent’s energy management system’. The evidence relating to the Registered Services includes various claims that the data that can be collected from use of the physical unit, which is displayed through the analytics platform, and this will assist the user in terms of how they use energy and allow them to make more informed decisions about installing a solar power system. Numerous exhibits to Gelonese 1 claim that the physical unit will result in savings through collection and management of data relating to the energy consumption of the individual consumer.[22]
[22] Gelonese1, DG4; DG15; DG17; DG18.
The evidence is not sufficient to show use of the Trade Mark in connection with data collection and management services. It appears the physical unit is plugged in to a power point at that specific premise.[23] The information from that function of the physical unit is then relayed to the consumer along with suggestions of power plans that the consumer might find to be better value for money. There is no evidence to suggest that the Opponent is engaged in the collection and management of data in a commercial sense. For example, the Opponent has not submitted evidence that shows it offers discrete data collection or management services to third parties per se. The evidence suggests that both data management and data collection are background functions that are necessarily performed by the physical unit when it is installed and operated normally. In other words, these are a byproduct of the unit’s main function, which I describe immediately below.
[23] Gelonese 1, DG16, is the manual for the physical device branded with EMBERPULSE; Gelonese 2, DG27 is the manual for the physical device branded with the Trade Mark.
The Opponent submits that its ‘energy management system’ is the conduit by which it provides wholesaling and retailing of energy as well as the promotion of energy supply services. The evidence indicates that the physical unit and the analytics platform work together to give insights which consumers can then use to inform other decisions such as when they might switch energy providers or when they might consider investing in solar panels or a solar battery. That is, the evidence does not support that the Opponent is an energy retailer or wholesaler nor does it provide promotional services to third parties.
The Opponent also refers to a slide from the presentations provided to prospective customers.[24] Page 4 of the presentations contains the following reference:
‘This is made possible via the energy retail plan provided by Beat Energy’.
[24] Discussed at [24] of this decision.
The evidence is not sufficient to establish that the Trade Mark is used in connection with these services. The evidence, as a whole, points to the physical unit and its functionality as a device that can help consumers save money. The Opponent claims that the wholesale and retail of energy is provided by Beat Energy, but there is no evidence to support that the Opponent or a related entity has used the Trade Mark in connection with the wholesaling and retailing of energy. None of the evidence before me establishes that the Trade Mark was used in relation to the Registered Services during the Relevant Period.
Obstacles to Use of the Trade Mark
The SGP claims that there were circumstances that were an obstacle to the use of the Trade Mark in the Relevant Period.
The Opponent’s written submissions explain that the Opponent was waiting to clear existing stock branded with EMBERPULSE before it commenced trading the physical unit under the Trade Mark.
Justice Drummond said in Woolly Bull Enterprises Pty Ltd v Reynolds that the ‘circumstances’ referred to in the Act did not embrace events of any kind. Rather they must arise from or comprise events external to the registered owner, and not have been brought about by the voluntary act of the owner.
In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark. Cf In re James Crean & Son Ld’s Trade Mark at 162.
Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.[25]
[25] Wolly Bull (n 4) [55]-[56].
I am not satisfied that there was an obstacle to use of the Trade Mark by the Opponent during the Relevant Period. The Opponent’s hesitation to begin using the Trade Mark in connection with the physical device was a business decision made by the Opponent, as opposed to an obstacle that prevented the Opponent from using the Trade Mark in connection with the physical unit. As such, the Opponent has not rebutted the s 92(4)(b) ground for removal. Therefore, it is necessary for me to consider whether I should exercise my discretion to allow the Trade Mark to remain on the Register in respect of any of the Registered Goods and Services.
Registrar’s Discretion
The Act provides the Registrar with a broad discretion not to remove the Trade Mark from the Register in respect of any or all of the goods and services for which removal has been sought.[26] If satisfied that it is reasonable to do so, the Registrar may decide that the Trade Mark should not be removed from the Register, even if the ground on which the removal application was made has been established.[27]
[26] s 101(3).
[27] Ibid.
The broad and unfettered nature of the discretion involves a consideration of a large and non-exhaustive list of propositions as observed by the Full Court in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd.[28] In Societe Anonyme des Eaux Minerales d’Evian v The Yoghurt Co Pty Ltd, the delegate considered that the fact relevant to discretion broadly fall into three categories:
· The interests of the owner of the trade mark;
· The interests of the Applicant for removal; and
· The public interest.[29]
[28] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
[29] [2012] ATMO 53, [33] (Hearing Officer Thompson).
The Opponent bears the onus of persuading me that it is reasonable to exercise the discretion.[30] Use of the Trade Mark after the Relevant Period can be considered.[31]
[30] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).
[31] Austin Nicholls & Co Inc v Lodestar Anstalt (No1) [2012] FCAFC 8, [41] (Jacobson, Yates and Katzmann JJ).
The Opponent submits that the public interest is served by maintaining the registration in full. The evidence shows that the Trade Mark is used as part of an interrelated offering of goods and services in relation to energy consumption. The Opponent further submits that if the Trade Mark Registration is not maintained in respect of all of the Registered Goods and Services, the resulting fragmented ownership may lead to confusion.[32] All of this needs to be balanced against the public interest in maintaining the integrity of the Register, by ensuring that unused trade marks do not remain as a barrier to other traders who may wish to use a substantially identical or deceptively similar trade mark in respect of good and/or services that are similar or closely related.[33]
[32] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [471] – [472] (Dodds- Streeton J).
[33] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (Flick J).
The Opponent submits that its own interests in maintaining the registration are highly relevant in the exercise of discretion. Gelonese 1 states:
Overall, the PULSE brand is essential to 369 Labs. The product and service offering associated with PULSE is intertwined and comprises energy generation/distribution, power data gathering, power data analytics and power control platforms. The initial offering involved the EMBERPULSE device and PULSE analytical system. Over time we have expanded this into other areas of energy using the PULSE brand and rebranding of the device to PULSE. In the future, we plan to further expand on the offering as the technology, solar and energy storage industries continue to grow.[34]
[34] Gelonese 1, [23].
The Opponent submits that it has acquired a reputation in the Trade Mark such that if a third party was to use it in respect of the Registered Goods and Services, the Australian public would at least be caused to wonder whether the goods or services had some connection or affiliation with the Opponent. Evidence such as collaborations and partnerships with third parties such as Mitre 10 and Adelaide United Football Club, and evidence of presentations to prospective customers indicates at least some degree of reputation in relation to goods and services that relate generally to the consumption of energy and, specifically, savings to consumers through tailored solar energy solutions. That said, given my discussion above, it is difficult to see how any such reputation connects to the Trade Mark. For example, in relation to the physical unit, it would appear that any reputation of this general nature would be enjoyed by EMBERPULSE, and perhaps personally by the Opponent and Beat Energy.
The Opponent’s evidence indicates that the delay in using the Trade Mark on the physical unit was due to a backlog of existing stock. Exhibit DG 14 to Gelonese 1 is a screenshot of the Mitre 10 website from 10 July 2022, which offers for sale, as part of three different solar power bundles, the ‘Pulse Smart Home Energy Device’. Further down this screenshot the Trade Mark is referred to as ‘an intelligent in-home system’. A screenshot from the Opponent’s web page dated 26 March 2023 appears to use EMBERPULSE in connection with the physical unit, while the Trade Mark refers to the analytics platform.[35] This supports the Applicant’s contention that the Trade Mark has only been used in relation to the analytics platform and any instances of use that the Opponent may point to where the Trade Mark is not used specifically in relation to the analytics platform are vague, and not definitively in relation to any of the Registered Goods and Services. I note the Opponent has indicated an intention to use the Trade Mark in the future, however the evidence does not provide sufficient detail, as far as when the Opponent expects to commence trading the physical unit under the Trade Mark.
[35] Gelonese 2, DG29.
The evidence of intended use of the Trade Mark does not appear to go beyond a bare statement that the Opponent is waiting to sell through existing stock. Whilst the evidence contains undated photographs of packaging displaying the Trade Mark as well as an updated User Manual, there are no statements around when the Opponent expects the rebranding to take effect in terms of offering the physical unit to consumers under the Trade Mark. There is also evidence that supports the Applicant’s assertion that the Opponent has persisted with use of EMBERPULSE on the physical unit after the Relevant Period.[36]
[36] Smith, KNS-1; KNS-2; KNS-5 KNS-7; KNS-8.
The Applicant states that its interests in the removal of the Trade Mark are legitimate and it is currently blocked from trading in relation to similar goods and services and substantially identical and deceptively similar trade marks. The legitimate interests of other traders is a relevant factor in the decision not to exercise the discretion. The EIA establishes that during and after the Relevant Period the Trade Mark was not used on or in connection with the Registered Goods and Services. I note that use of the Trade Mark after the Relevant Period is a factor that can be considered in the exercise of discretion, however, in the current matter I consider that the Opponent has persisted with use of EMBERPULSE in connection with the physical unit and its reasons for doing so do not go beyond an internal business decision.
I consider that the Opponent has consistently used the Trade Mark in relation to its analytics platform, and not for the Registered Goods and Services. I note the Opponent’s submission that the analytics platform and the physical unit are an interrelated offering, however they are different goods, and as the Applicant submits the Trade Mark has only been used in relation to goods which do not form part of the Registered Goods and Services.
I note that s 101(4) provides that another relevant factor in the exercise of discretion is whether the Opponent has made use of the Trade Mark on similar goods, closely related services, or similar services or closely related goods. As discussed above the evidence of use of the Trade Mark is primarily in relation to goods in the nature of software offerings which on the established tests would be dissimilar to the Registered Goods and not closely related to the Registered Services.
For the reasons set out above, I am not satisfied that it is reasonable to exercise my discretion not to remove the Trade Mark in respect of the Registered Goods and Services.
Decision
Subsection 101(1) provides:
101 Determination of opposed application – general
(1)Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
The ground for removal under s 92(4)(b) has been established in respect of all the Registered Goods and Services, and I am not satisfied that it is reasonable to exercise the Registrar’s discretion. Accordingly, I direct that trade mark registration number 1673078 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then, I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.
Costs
Both parties have requested an award of costs. Costs generally follow the event, and I see no reason to depart from that principle in this matter. As such, I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.
Jonathon Galloway
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
24 October 2024
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