369 Labs Pty Ltd v BP plc

This decision concerns an application by BP plc to remove the trade mark PULSE, registered by 369 Labs Pty Ltd, from the Australian Register of Trade Marks. The application sought removal of the trade mark in respect of all registered goods and services, which included electrical apparatus for measuring and controlling energy consumption, and services related to the wholesaling and retailing of energy and data management. The matter was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the trade mark PULSE had been used in Australia in good faith by the registered owner during the relevant three-year period preceding the application for removal, or if there were circumstances that constituted an obstacle to its use. Under section 92(4)(b) of the Trade Marks Act 1995 (Cth), an application for removal on the grounds of non-use can be made if a trade mark has remained registered for three continuous years without use in good faith in relation to the registered goods and services. The onus was on the opponent, 369 Labs Pty Ltd, to rebut the allegation of non-use.

The delegate considered the evidence presented by both parties. The opponent argued that it had been phasing out the use of a previous trade mark, EMBERPULSE, to transition to using PULSE for its energy management system, comprising a hardware device and an analytics platform. Evidence was provided of updated packaging, promotional materials, and presentations between September 2021 and December 2021, and a statement that 3,360 PULSE systems were deployed by April 2022. However, the delegate found that the evidence did not sufficiently establish use of the trade mark PULSE in good faith in relation to the registered goods and services during the relevant period. Specifically, the evidence regarding the deployment figures was unclear as to whether it referred to the PULSE branded unit or existing EMBERPULSE stock, and the use of "Pulse Analytics" in advertising was considered insufficient to demonstrate use of the trade mark for the broader range of registered goods and services.

Consequently, the delegate determined that the opponent had failed to rebut the allegation of non-use. The delegate ordered that the trade mark PULSE be removed from the Register of Trade Marks in respect of all registered goods and services.