AEGIR Marine Pty Ltd v AEGIR-Marine B.V

[2018] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by AEGIR MARINE PTY LTD to application under section 92 of the Act by AEGIR-Marine B.V. for removal of trade mark number 1677426 (9, 41, 42, 45) – AEGIR MARINE (Device) - in the name of AEGIR MARINE PTY LTD

Delegate:

Nicholas Smith

Representation:

Opponent: Peter Whitehead of Hazan Hollander

Applicant: Michael Martin of Acumen Intellectual Property

Decision:

2018 ATMO 45

Trade Marks Act 1995 (Cth) – section 96 opposition to s 92(4)(a) application for removal – intent to use inherent in filing of Trade Mark application – opponent asserts its intention at the filing date to use the Trade Mark – evidence of actual use of the Trade Mark for a subset of the Registered Goods and Services – Trade Mark to remain on Register in its current form

Background

1. This decision is pursuant to an application made on 23 August 2016 under s 92(4)(a) of the Trade Marks Act 1995 (‘Act’) by AEGIR-Marine B.V. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1677426

Filing date

26 February 2015

Goods and Services

Class 9: Apparatus for the safety of persons in distress at sea; Inflatable (safety) clothing; Maritime safety apparatus; Safety apparatus for use at sea; Safety life jackets; Waterproof safety clothing specifically adapted for the prevention of accident; Waterproof safety clothing specifically adapted for the prevention of injury

Class 41: Adult training; Advisory services relating to training; Arranging and conducting of workshops (training); Business training consultancy services; Business training services; Commercial training services; Conducting training seminars; Conducting workshops (training); Consultancy services relating to training; Fire training; Industrial training; Occupational health and safety services (education and training services); Organisation of training courses; Practical training (demonstration); Providing courses of training; Provision of training; Provision of training courses; Staff training services; Technical training; Training; Training consultancy; Vocational training services

Class 42: Cargo surveying; Conducting surveys; Engineering surveys and inspections; Provision of surveys (scientific); Provision of surveys (technical); Surveying; Technical survey services; Accident investigation (engineering or forensic science services)

Class 45: Life saving and life guarding services (safety and security patrols); Safety services; Accident investigation; Consultancy services relating to private investigations; Criminal investigations; Forensic advice for criminal investigations; Legal investigation services; Missing person investigations; Personal background investigations; Private investigation services

(‘Registered Goods and Services’)

Owner

AEGIR MARINE PTY LTD

Trade Mark

(‘Trade Mark’)

1. AEGIR MARINE PTY LTD (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 7 October 2016 and a Statement of Grounds and Particulars (‘SGP’) on 19 October 2016.  The Applicant filed a Notice of Intention to Defend on23 November 2016.

2. The Opponent subsequently filed evidence in support of its opposition to removal.  The Applicant filed evidence in answer and the Opponent filed evidence in reply.  The parties’ evidence will be discussed in more detail below. 

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 17 August 2017 the Opponent requested an oral hearing. The matter was set down for a hearing in Canberra on 21 February 2018.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).  In line with usual practice, an email was sent to the parties on 21 November 2017 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 6 February 2018 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 13 February 2018 (‘Applicant’s Submissions’).  At the hearing Peter Whitehead of Hazan Hollander represented the Opponent and Michael Martin of Acumen Intellectual Property represented the Applicant. Both appeared by telephone.   

4. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of oral submissions and the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support;

   ·The Applicant’s Evidence in Answer;

   ·The Opponent’s Evidence in Reply;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions.

   The Law

   6. Part 9 of the Act deals with removal of trade marks from the Register for non-use. In respect of this matter, s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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;

   7. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   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:

   (a)  any allegation made under paragraph 92(4)(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 opposed application relates ( relevant goods and/or services ); or

   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or

   […]

   (3) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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

   [...]

   8.  I proceed on the basis that the standard of proof is the ordinary civil standard of the balance of probabilities.[1]

   [1] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

   9.  In accordance with s 101 the Registrar may decide to remove the Trade Mark for all or some of the goods identified in the application for removal, 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.[2]

   [2] s 101(3) of the Act.

   Opponent’s Evidence

   10.     The Opponent’s evidence in support filed in this matter consists of a declaration made on 20 February 2017 by Stuart McDonald, the Managing Director of the Opponent (‘McDonald 1’) with Annex SM-1 to SM-25.  It contains the following claims/statements:

   ·As at the date of filing the Trade Mark application, 26 February 2015, the Opponent had an intention to use the Trade Mark for all the Registered Goods and Services.   

   ·During the non-use period, being the period between the filing date and 23 July 2016 (1 month prior to the application for removal) (‘non-use period’), the Opponent used the Trade Mark extensively in Australia.  In particular the Trade Mark was used on the Opponent’s website which promotes the Opponent’s marine training, survey, consultation and investigation services.  The Opponent further used the Trade Mark on social media, staff clothing and equipment and advertising brochures, again in respect of its services relating to marine training, survey, consultation and investigation services.

   11.     The Opponent’s evidence in reply filed in this matter consists of a declaration made on 11 July 2017 by Stuart McDonald, the Managing Director of the Opponent (‘McDonald 2’) with Annex A.  It annexes a letter from the Opponent’s representatives dated 4 March 2015 in reply to communication annexed in the Gravendeel Declaration, referred to below.

   Applicant’s Evidence

   12.     The Applicant’s evidence in answer filed in this matter consists of a declaration made on 9 June 2017 by LJ Gravendeel, a lawyer employed by Gravendeel Advocaten, a firm that acts for the Applicant (though not in respect of this application) (‘Gravendeel Declaration’) with Annexures LJG-01 to LJG-03.  The Gravendeel Declaration annexes communications between the Applicant and Opponent in which the Applicant, who (according to the communications) trades under and has registered the trade mark ‘AEGIR Marine’ in the Netherlands/Benelux, and demands that the Opponent cease any use of the Trade Mark.

   Discussion

   13. Though the onus is, in terms of s 100 of the Act, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[3] Fullagar J observed:

   […] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

   [3] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].

   14.   While this observation was made in proceedings under the Trade Marks Act 1955, where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[4] the Registrar’s delegate Mr Forno said:

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

   [4] [2000] ATMO 31.

   15.     Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst[5]:

   I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.

   [5] [2008] FCA 100; [2003] AIPC 91-904, [232]-[236].

   16. The Managing Director of the Opponent has provided a statutory declaration to the effect that it was the intention of the Opponent at the time of filing to offer the Registered Goods and Services. Moreover there is evidence that during the non-use period the Opponent engaged in genuine commercial use of Trade Mark for a significant portion of the Registered Goods and Services. I find that the Opponent has satisfied its onus under s 100(1)(a) and has therefore established its opposition in relation to s 92(4)(a) of the Act.

   17. The Applicant’s Submissions appear to rely entirely on the fact that in McDonald 1, the Managing Director of the Opponent stated that the Opponent had an intention to offer the Registered Goods and Services but omitted to add ‘in good faith’. Hence, according to the Applicant, the Opponent fails to satisfy the onus under either s 100(1)(a) or s 100(1)(b) to rebut the allegation that the Opponent lacked an intention to use the Trade Mark in good faith and/or actually used the Trade Mark in good faith.

   18. I do not accept the Applicant’s Submissions. It is not a requirement that a party uses the words ‘in good faith’ in its evidence for it to satisfy s 100(1)(a), rather the Registrar will consider whether the Opponent’s evidence as a whole satisfies that requirement. The Opponent has provided a clear explanation for why it adopted the Trade Mark and provides clear evidence of genuine commercial use of the Trade Mark[6] during the non use period for a significant portion of the Registered Goods and Services.  The Applicant has provided no evidence of any rights or reputation in Australia or any basis for me to conclude that the Opponent’s evidence of an intention to use the Trade Mark, and evidence of actual use of the Trade Mark, was for any purpose other than a good faith purpose.

   [6] Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use, see E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 265 ALR 645, [60]-[65].

   Decision

   19.     I am not satisfied that the ground on which the Application was made has been established.  Accordingly, the opposition is successful and trade mark registration 1677426 is to remain on the Register in its present form.

   Costs

   20.     The Opponent has been successful in relation to its opposition to the application for removal of the Trade Mark and has requested its costs.  I direct that costs in relation to trade mark registration no. 1677426 be awarded against the Applicant in accordance with Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Hearings and Oppositions

   3 April 2018