Abaco Machines (Australasia) Pty Limited v Aardwolf Australia Pty Ltd

[2015] ATMO 55

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Abaco Machines (Australasia) Pty Limited to registration of trade mark applications 1544186 and 1544189(7) - AARDWOLF and AARDWOLF Logo - in the name of Aardwolf Australia Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Sean McGuire of Watermark Patent & Trade Mark Attorneys
Applicant: Andrew Sykes of Counsel instructed by Tony Grujovski of Actuate IP

Decision:

2015 ATMO 55

s52 opposition to registration - s62(b) conceded - exercise of the Registrar's discretion if any is not appropriate. Registration of trade marks refused

Background

1. These applications were filed by Aardwolf Australia Pty. Ltd. (‘the Applicant’) under the Trade Marks Act 1995 (‘the Act’) as detailed below:

Application No:  1544186
Priority Date:  4 March 2013

Goods:Class 7: Equipment for use in the stone and construction industry; including material handling equipment, lifters, spreader-bars for slings, forklift booms, transport frames, dollies and trolleys; site saws, brick saws, cement mixers and linishers

Trade Mark:  

Registration No:  1544189
Priority Date:  4 March 2013

Goods:Class 7: Equipment for use in the stone and construction industry; including material handling equipment, lifters, spreader-bars for slings, forklift booms, transport frames, dollies and trolleys; site saws, brick saws, cement mixers and linishers

Trade Mark:  Aardwolf

1. I will refer to the above collectively as ‘the Trade Marks’.

2. The Trade Marks were examined as prescribed by section 31 of the Act and the trade mark appearing below was cited under section 44 of the Act as a ground for rejection:

Application No:  945207
Owner:   Herdgraph Pty Ltd
Priority Date:  26 February 2003

Goods:Class 7: Equipment for use in the stone and construction industry; including material handling equipment, lifters, spreader-bars for slings, forklift booms, transport frames, dollies and trolleys; site saws, brick saws, cement mixers and linishers

Trade Mark:  AARDWOLF

(‘the Citation’)

1. The Applicant furnished a letter of consent executed by James Edmund Corbett in the following terms:

   As owner of trade mark Aardwolf (logo) & Aardwolf (word) in Class 7, I hereby consent to the use and registration of the trade mark Aardwolf (logo) 7 Aardwolf (word in Class 7 by Aardwolf Australia Pty Ltd filed under application 1544186 and 1544189 in respect of:

   Equipment for use in the stone and construction industry; including material handling equipment, lifters, spreader-bars for slings, forklift booms, transport frames, dollies and trolleys; site saws, brick saws, cement mixers and linishers.

2. The examiner applied the provisions of paragraph 44(3)(b) of the Act and the applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 June 2013.

3. On 27 August 2013 Abaco Machines (Australia) Pty Limited (‘the Opponent’) filed Notices of Intention to Oppose the registration of the Trade Marks. Further, on 27 September 2013 the Opponent filed Statements of Grounds and Particulars alleging under subsection 62(b):

   The application is defective in that the Registrar accepted the application for registration on the basis of evidence or representations by Herdgraph Pty Ltd in the letter of consent that were false in material particulars, namely that James Edmund Corbett was able to perform or exercise a function or power of Herdgraph Pty Ltd by providing consent when he could not under s 471A of the Corporations Act 2001.

4. The Applicant has filed a Notice of Intention to Defend and subsequently amended the specifications of goods to read ‘linishers’.  The Applicant has also filed divisional applications in respect of the goods deleted from these applications.

5. Thereafter, the parties have filed evidence in support of the opposition and evidence in answer as allowed by the Trade Mark Regulations 1995. 

6. The matter came before me for a hearing as a delegate of the Registrar of Trade Marks in Melbourne on 29 May 2015.  The Opponent was represented at the hearing by Sean McGuire of Watermark Patent and Trade Mark Attorneys and the Applicant was represented by Andrew Sykes of Counsel instructed by Tony Grujovski of Actuate IP.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].

2. The relevant date at which the grounds must be considered is the filing date of the Trade Mark.[2]

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Reasoning

1. Subsection 62(b) of the Act provides:

   62Application etc. defective etc.

   The registration of a trade mark may be opposed on any of the following grounds:

   […]

   (b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

   Note:For file see section 6.

2. These matters are unusual in that the Applicant concedes that the ground under subsection 62(b) is made out but argues that the ground is a technical one since the Citation has now been removed from the register for non-payment of the renewal fee. The Applicant concedes that James Edmund Corbett had no authority to execute the letter of consent since Herdgraph Pty Ltd was then under external administration. The Applicant however argues that section 55 provides the Registrar with a discretion to register the Trade Marks even though the opposition has been established and points to the decision of one of the Registrar’s delegates in Osgaig Pty Ltd v Shigemitsu Industry Pty Ltd [2006] ATMO 41 (‘Osgaig’) as an authority for the proposition.

3. At the relevant date subsection 55(1) of the Act provided:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

4. It is not necessary to debate whether section 55 confers a discretion upon the Registrar of the type argued by the Applicant.  This is because I consider in the circumstances of this matter that (if such a discretion exists) it would be inappropriate to exercise the Registrar’s discretion in favour of the Applicant.  Osgaig was not a case of a false representation and decided on its particular facts.  However, the Applicant has, in effect, executed a falsehood upon the Registrar of Trade Marks which has led to two applications being accepted for registration when they ought not to have been.  It is not in the public interest that this behavior be in any way condoned or encouraged.  The Registrar must be able to place full reliance on material placed before her, or one of her delegates.  If the discretion were open to me I would therefore decline to exercise it in favour of the Applicant.

5. The Oppositions to registration are established under subsection 62(b) of the Act.

Decision

1. I refuse to register the Trade Marks.

Costs

1. The Opponent, having been successful, is entitled to its costs which I award against the Applicant at the Official Scale set out in Schedule 8 of the Regulations.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
24 June 2015