AgCare Biotech Pty Ltd v Crop Smart Pty Ltd

[2015] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by AgCare Biotech Pty Ltd to registration of trade mark application 1312370(5) - SMART - filed in the name of Crop Smart Pty Ltd

and

Opposition by AgCare Biotech Pty Ltd to application under section 92 of the Act by Crop Smart Pty Ltd to remove trade mark registration 1223747(5) - SMART 450 - in the name of AgCare Biotech Pty Ltd

Delegate:

Claudia Murray

Representation:

Opponent: Ms Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys, Sydney.

Applicant: Mr Tim O’Callaghan, Partner, Piper Alderman, Lawyers, Adelaide.

Decision:

2015 ATMO 7

Section 52 opposition: section 58A ground pressed at hearing – opponent’s earlier use of similar trade mark established – opposition successful - registration refused.

Section 92 opposition: removal application made on basis of s92(4)(b) – use established within relevant period – evidence under reg 21.19 allowed - trade mark to remain on the Register.

Background

1.     This decision relates to two opposition matters between AgCare Biotech Pty Ltd and Crop Smart Pty Ltd. It is convenient to deal with the matters together as the issues and evidence are related and, at the request of the parties, were the subject of a single hearing before me, as a delegate of the Registrar, in Canberra on 24 September 2014. Ms Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys, Sydney, represented AgCare Biotech Pty Ltd. Mr Tim O’Callaghan, Partner, Piper Alderman, Lawyers, of Adelaide, represented Crop Smart Pty Ltd. I will deal with the respective oppositions here in the chronological order in which the actions were initiated.

2.     Application number 1312370 was filed by South Australian company Crop Smart Pty Ltd (‘Crop Smart’) on 29 July 2009, for the trade mark:

SMART

3.     The application covers the following goods in Class 5 of the Nice Classification of Goods and Services:

Preparations for destroying vermin; pesticides, insecticides, parasiticides; fungicides, weed killers and herbicides.

4.     Grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. However, the applicant provided evidence of use of the trade mark, which was eventually advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 August 2012. It was subject to the following endorsements:

Provisions of subsection 41(5) applied.

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

5.     Victorian company AgCare Biotech Pty Ltd (‘AgCare’) filed notice of opposition to registration on 23 November 2012. Thirteen grounds of opposition were listed in the notice.

6.     Registration number 1223747 is registered for the trade mark:

SMART 450

7.     The registration covers ‘Non-selective herbicides’ in Class 5 of the Nice Classification of Goods and Services. The trade mark was registered from 12 February 2008 and the trade mark owner is AgCare. As with Crop Smart’s application described above, AgCare’s registration was also originally accepted subject to the following endorsements:

Provisions of subsection 41(5) applied.

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

8. Crop Smart made application under section 92 of the Act for removal of the trade mark from the Register, on 3 September 2013. The removal application sought removal for all of the goods covered by the subject registration and cited grounds for removal under paragraph 92(4)(b) of the Act. For the purposes of paragraph 92(4)(b), the relevant three-year period is 3 August 2010 to 3 August 2013.

9.     Notice of opposition to the removal application was filed by AgCare on 12 November 2013.

Evidence

10.   The evidence for the opposition proceedings regarding registration of trade mark number 1312370 comprises:

Evidence in support

ØStatutory declaration of Chris Fraser, with Exhibits CF-1 to CF-4, dated 22 July 2013.

ØStatutory declaration of Chris Fraser, with Exhibits CF-1 to CF-4, dated 2 September 2013.

Evidence in answer

ØStatutory declaration of Eilish Mary Gigney, with Exhibits EG-1 to EG-7, dated 9 December 2013.

ØStatutory declaration of Matthew Durden, dated 11 December 2013.

Evidence in reply

ØDeclaration of Marion Heathcote, with Exhibits MH1 to MH4, dated 13 March 2013.

ØDeclaration of Katherine Louise Kemp, with Exhibits KK1 to KK11, dated 14 April 2004.

11.   The evidence in relation to opposition proceedings regarding removal of trade mark number 1223747 comprises:

Evidence in support

ØDeclaration of Marion Heathcote, with Exhibits MH1 and MH2, dated 6 May 2014 (Exhibit MH1 incorporating the Statutory Declaration of Chris Fraser, dated 2 September 2013 and filed in support of the opposition to 1312370.)

Evidence under regulation 21.19

ØDeclaration of Matthew Joseph Gallagher, with Exhibits MJG1 to MJG4, dated 24 September 2014.

12.   The evidence shows that the two parties have been controlling weeds in the same field (so to speak) for a considerable period of time. At the hearing, Ms Ryan described them on more than one occasion as ‘fierce competitors’, to which Mr O’Callaghan demurred, protesting that in reality Ms Ryan’s client did not command anything like a sufficiently high profile for that to be the case.

13.   Mr Fraser, on behalf of Agcare, declares its use of the word ‘SMART’ as a trade mark for its herbicide product since August 1998. Mr Fraser is the ‘Company Lead’ of Intec Industries Pty Ltd (‘Intec’). He describes the business relationship of the two companies as ‘related companies which operate within a coordinated business structure from the same place of business’. AgCare’s herbicides labelled with the ‘SMART’ trade mark are provided to Intec, which then arranges the sale of the herbicides to established distributors of agricultural chemicals for re-sale to customers. Mr Fraser provides significant Australian sales figures for the years 1998 to 2012, noting that nil sales were recorded in the year 2011, due to the closure of the rural stores of their largest customer, but that sales were again rebuilding from 2012 onwards.[1]

[1] Statutory declaration of Chris Fraser, dated 22 July 2013, paras 1-7.

14.   Mr Fraser provides details of the trade mark registration at issue, together with two other AgCare trade marks, neither of which are currently registered:

TM No.	Filing Date	Class	Status	Trade Mark
824645	22 Feb 2000	1, 5	Removed for non-use
1223745	12 Feb 2008	5	Lapsed	SMART
1223747	12 Feb 2008	5	Registered Non-use action pending	SMART 450

15.   Mr Durden is the Managing Director of Crop Smart. He provides details, set out below, of trade marks owned by his company. He declares that at the time his company commenced use of its ‘SMART’ trade mark on herbicides, in August 2006, he was not aware of AgCare’s use of its ‘SMART 450’ trade mark. He declares that his company’s use of its trade marks has been continuous since 2006.[2]

[2] Statutory declaration of Matthew Durden, dated 11 December 2013, paras 1-6.

TM No.	Filing Date	Class	Status	Trade Mark
1101246	1 Mar 2006	1	Registered
1125656	25 Jul 2006	31, 44	Registered
1125714	26 Jul 2006	1, 31, 44	Registered
1210733	16 Nov 2007	5	Registered
1210735	16 Nov 2007	5	Registered
1312370	29 July 2009	5	Opposed	SMART

TM No. 1312370 - Onus and grounds of opposition under s52

16.   The onus is upon an opponent to registration of a trade mark to establish one or more grounds of opposition, according to the balance of probabilities.[3] The point at which the grounds of opposition must be established is the date of filing of the application for registrationhttp:// - .[4]

[3] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12].

[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595; E & J Gallo Winery v Lion Nathan Australia [2009] FCAFC 27.

17.   Prior to the hearing, AgCare indicated that the grounds of opposition it wished to press were those under sections 41, 44, 58A, 60 and 62(b). All five grounds were debated at length during the course of the hearing. However, an opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds pressed, although all grounds of opposition are available to an opponent in the event of an appeal from a delegate’s decision. For reasons that will soon become apparent, I will confine my deliberations to the ground of opposition under section 58A.

Section 58A - opponent’s earlier use of similar trade mark

18.   Section 58A provides:

(1)      This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)      subsection 44(4); or

(b)      a similar provision of the regulations made for the purposes of Part 17A.

Note:    Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)      The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)      first used the similar trade mark in respect of:

(i)           similar goods or closely related services; or

(ii)          similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)      has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:    For predecessor in title see section 6.

19.   Section 58A therefore enables the owner of a prior registered (or pending) trade mark to oppose registration of a substantially identical or deceptively similar mark previously accepted under the prior use provisions of subsection 44(4). In order to succeed under this ground, the opponent needs to establish that its (continuous) use of its trade mark predates the use of the trade mark which is the subject of the accepted application.

20.   Ms Ryan submitted that the criteria for section 58A were satisfied on the evidence, because:

AgCare's prior registration No. 1223747 SMART 450 in respect of non-selective herbicides with a priority date of 12 February 2008 (the Cited Mark), was cited against the Opposed Application pursuant to s 44(1): Heathcote [4]; MH2.

The Applicant relied on a first use date of ‘September 2006’ to overcome the objection based on the Cited Mark: Durden 23/7/12 [11] and [13].

AgCare continuously used the Cited Mark in relation to herbicides from before September 2006 to at least 29 July 2009, being the priority date of the Opposed Application: Fraser[6]; CF-2.

Use in relation to herbicides is use in relation to similar goods as the goods claimed under the Opposed Application, namely preparations for destroying vermin; pesticides, insecticides, parasiticides; fungicides, weed killers and herbicides.

21.   Mr O’Callaghan’s submissions in response were as follows:

The Opponent may only oppose on this ground if it has ‘continuously used the similar trade mark...since [the first use]’ (section 58(4)(b)).

The Opponent's Notice of Opposition was filed on 22 November 2012.

There is no direct evidence from the Opponent as to use of the trade mark. Instead, the Opponent relies upon evidence of an officer of a third party. Fraser's evidence as to the Opponent's use of the trade mark is hearsay, at least as to matters occurring prior to the date Fraser commenced his position (2008). Therefore, on the issue of when the Opponent commenced use of the trade mark, the evidence is unreliable and should be disregarded.

In any event, the Opponent's evidence (Fraser I and 2, both at paragraph 8) demonstrates that use of the trade mark ceased at least during 2011 (the Applicant asserts that the trade mark should be removed for non use). Therefore, the Opponent has not established the right to rely upon section 58A.

If section 58A did apply, the application should nevertheless be accepted pursuant to:

·     section 44(3)(a) (honest concurrent use); and/or,

·     section 44(3(b) (because of other circumstances, including that the Opponent subsequently ceased to use the trade mark in which it claimed reputation, it is proper to do so).

22.   Mr O’Callaghan raised the question on more than one occasion during the hearing as to why, under the circumstances, the opponent had not produced ‘knockout’ evidence against the applicant. He was particularly critical of the ‘unreliable, third party’ evidence presented in Mr Fraser’s declarations. While I have noted his concerns, I am satisfied with the explanations offered in those declarations for AgCare’s choice of declarant. As Ms Ryan pointed out, the veracity of the opponent’s evidence is also corroborated by the findings of the delegate in his decision in relation to AgCare’s unsuccessful opposition to removal of its trade mark number 824645, for the trade mark .[5] In that decision, made in 2009, while the hearing officer did not accept that AgCare’s evidence showed use of the  trade mark, he clearly indicated his understanding that it had used the trade mark ‘SMART 450’ ‘since August 1998’, and that the use was continuing.[6] Further, I note his observation that, at least for the purposes of the opposition before him, Crop Smart had not disputed AgCare’s longstanding use of the ‘SMART 450’ trade mark.[7]

[5] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41 (9 June 2009); Exhibit MH2, declaration of Marion Heathcote, dated 6 May 2014.

[6] Ibid., at [29].

[7] Ibid., at [10].

23.   Taking all of the above into account, I am persuaded that, the sales figures and other material provided in evidence by AgCare are sufficient to make its case in terms of section 58A.

24.   AgCare has established first use from 1998 of its deceptively similar trade mark ‘SMART 450’ on similar goods to the Class 5 goods subject of Crop Smart’s application. That use has been continuous in terms of yearly sales figures at the very least until the accepted date at which opposition grounds must be established, that is, the filing date, 29 July 2009, of the subject application. I do not accept that the ceasing of sales for one year in 2011, for which a plausible explanation has been given, with sales resuming in 2012, is sufficient reason to deny AgCare the right to rely on its evidence as a whole for the purposes of section 58A.

25.   Further, Crop Smart’s argument that, even in the face of AgCare’s success under section 58A, its application should still be allowed under the provisions of section 44(3)(a) or (b) cannot be supported. Those provisions, like those of section 44(4), provide valid exceptions to grounds of rejection and opposition raised under subsections 44(1) and (2). However, no such exceptions apply within the wording of section 58A. The requirements of section 58A have been met, and the opponent has succeeded under this ground.

TM No. 1312370 - Decision and costs

26. Section 55(1) of the Act provides:

(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.

27.   I find here that the opponent has met the onus upon it and has established its ground of opposition argued under section 58A. I therefore refuse to register trade mark number 1312370.

28. AgCare has requested its costs. It is usual for costs to follow the event, and the opponent has succeeded in one of its grounds of opposition. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, (and taking into account that the hearing also covered a removal opposition, for which costs are dealt with separately below), against the trade mark applicant, Crop Smart.

TM No. 1223747 - Onus on opponent to establish use of trade mark or otherwise rebut grounds of removal under s92

29. The majority of removal applications are pursued under paragraph 92(4)(b) of the Act, which creates a relevant non-use period of 3 years ending a month before the non-use application is lodged. It provides:

(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.

30. By virtue of subsection 93(2), such an action may not be brought before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark. In this case, as stated above and agreed between the parties, the relevant period runs between 3 August 2010 and 3 August 2013. These provisions (in opposition) are squarely focused upon determining the true extent and nature of a removal opponent’s use of what, by that time, should be a well-established trade mark registration. Section 100 places the burden squarely upon an opponent to rebut a removal applicant’s allegations made under section 92(4)(b). Section 101 provides for the Registrar’s delegate, should they find they have been convinced by the opponent’s evidence that circumstances exist making this reasonable, to decide not to remove the trade mark from the Register, even though the ground on which the removal application was made has been established.

Evidence under regulation 21.19

31.   Ms Ryan’s news that, as of that morning, AgCare was now seeking permission to file new evidence in support of its position, caused general consternation at the commencement of the hearing. The new evidence took the form of a declaration by Matthew Joseph Gallagher, with Exhibits MJG1 to MJG4, dated 24 September 2014. It was quickly agreed between the parties that as the opposition to removal was filed on 13 November 2013, post commencement of the provisions of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), the further evidence provisions previously available to opposing parties under the legislation were no longer available in that matter. However, they were available in relation to the opposition to registration to registration of trade mark number 1312370, as that opposition was filed prior to the commencement of the new provisions.[8] In the absence of formal further evidence provisions, Ms Ryan submitted that her client’s evidence should in any case be admitted under the provisions of regulation 21.19, which states:

[8] The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation repealed the general opposition provisions of Part 5, including those relating to further evidence, which were not replaced by any similar provisions.

Registrar may use information available

(1) If:

(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c) the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d) provide the information to the party; and

(e) give the party a reasonable opportunity to make representations about the information.

(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

32. Having adjourned the hearing for a period, to allow Crop Smart to consider AgCare’s request and the new material, I opened the floor for both sides to debate whether that material should be in or out, in relation to one, both or neither of the oppositions. I indicated my inclination to let the material in, given its direct relevance in particular to the section 92 opposition. At the end of the parties’ lengthy submissions upon the topic, I reserved my decision on the matter, promising to deal with it in my written reasons for decision. This I will now do.

33.   It will have been noted that I did not discuss the new declaration in my earlier findings on the opposition to registration of trade mark application 1312370. After due consideration, I did not find the new material to be crucial to the complete picture of the opponent’s evidence in that matter, and so did not find it necessary to touch on it at that point. However, the circumstances were different in relation to the opposition to removal of trade mark registration 1223747.

34.   For a proper understanding of the issue, it is necessary to describe the new evidence in some detail. Perhaps this is most easily done by quoting the words of the declarant, Matthew Gallagher, himself:

I am the Legal Counsel ANZ and Global IP Manager of Nufarm Limited (hereinafter referred to as “my Company”) and I have been associated with my Company for 26 years and have held my position for 8 years. AgCare Biotech Pty Ltd and Intec Industries Pty Ltd are related companies which operate within a co-ordinated business structure operating from the same principal place of business, namely 17 Raymond Road, Laverton North, Victoria 3026, and are affiliated companies with Nufarm Limited with the registered office of AgCare Biotech Pty Ltd being within Nufarm Limited at 103-105 Pipe Road, Laverton North, Victoria 3026. I have full access to the relevant records of my Company and its affiliated companies and am authorised to make this declaration on its behalf.

I have been provided with and read a copy of the Statutory Declaration of Chris Fraser dated 2 September 2013 comprising evidence in support of the opposition to registration of trade mark application No. 1312370 SMART (hereinafter “Fraser Declaration”) and also filed as evidence in support of the opposition to removal of trade mark registration 1223747 SMART 450. I was the authorised witness of that Statutory Declaration. This Declaration is in reference to two (2) invoices which are incorporated in the Fraser declaration at Exhibit CF4. The invoices are attached hereto as Exhibits MJG1 and MJG2.

I am aware that these invoices carry the print date of 19 June 2013 but refer to invoices previously rendered on 23 February 2010 and 23 July 2012. In annexing these invoices to the declaration of Chris Fraser I am aware that these invoices were, in the interest of commercial confidentiality, part redacted so as to remove reference to the value of each unit and the multiplication of number of units bar the cost. The information retained in the invoices for the purposes of the referenced proceedings were details as to the products, the quantities shipped to the customer and ‘net line total’ of the invoice as it related to that product, namely the item identified as SMART 450.

Now shown to me and attached here as Exhibits MJG3 and MJG4 are copies of the original invoices as printed on 19 June 2013 unredacted.[9]

[9] Declaration of Matthew Joseph Gallagher, dated 24 September 2014, paras 1-4.

35.   The written submissions from both parties, tendered prior to the hearing, correctly identified that amongst the significant collection in evidence of purchase orders and invoices showing use of the ‘SMART 450’ trade mark between the period 2006 to 2012, only one invoice fell within the relevant period during which AgCare was required to demonstrate use of its trade mark. That invoice was the subject of Exhibit CF4 of the declaration by Chris Fraser, originally filed in support of AgCare’s opposition to registration of Crop Smart’s ‘SMART’ trade mark (number 1312370), then later annexed to Marion Heathcote’s declaration in support of AgCare’s opposition to removal of its own ‘SMART 450’ trade mark (number 1223747).

36.   Crop Smart had not challenged any of AgCare’s evidence with evidence in answer of its own. However, Mr O’Callaghan’s written submissions for the hearing observed:

For the purpose of determining whether there has been use of the trade mark in the Relevant Period, evidence of use of the trade mark outside of the Relevant Period should be disregarded.

The Opponent's evidence of use within the Relevant Period is limited and unreliable. In particular:

Fraser l and 2 (both at paragraph 8) evidence, constituting a schedule of sales figures in various years, is unreliable in establishing use of the trade mark in the Relevant Period and should be disregarded.

The single tax invoice upon which the Opponent relies (Exhibit CF-4 dated 23 June 2012) does not on its face demonstrate use of the trade mark in the manner suggested in the Opponent's submissions at paragraphs 7(c) or 10. There is no evidence to explain this document, or to demonstrate how the document is evidence of bona fide use of the trade mark in the Relevant Period …

[T]he single document on which the Opponent relies (the Tax lnvoice dated 23/07/12) falls far short, and leaves substantial reason to question whether the single sale claimed by the Opponent actually occurred at all, or occurred as stated on the uncorroborated internal document (in terms of date and payment).

The Opponent's submissions (at paragraph 12) seek to reverse the onus of proof to the Applicant.

The Applicant cannot be expected to establish that the sale alleged by the Opponent (being an alleged cash sale to an unnamed purchaser) did not occur.

The Applicant is in the best position to demonstrate bone fide use of the trade mark in the Relevant Period with direct and unequivocal evidence, and it has failed to do so. The evidence relied upon is indirect and tenuous. While it has been recognised that uncorroborated internal documents can accepted as evidence, such documents should be treated with caution.

To the extent that the Opponent seeks to elaborate on this part of the evidence with further evidence in the form of submissions (for instance at paragraph 10), such elaboration should be disregarded.

37.   Ms Ryan explained that it was as a consequence of her client’s reconsideration of the single invoice, in light of the above submissions, that the fact that redactions had been made to the invoice came suddenly to light. The potential for the invoice to be critically and individually scrutinized, and the corresponding necessity for any redactions made to it, and indeed any other deficiencies, to be properly and thoroughly explained, had apparently been entirely overlooked by AgCare’s representatives until that point. This was a direct consequence of the Fraser declaration as a whole having originally comprised part of the opposition to registration evidence, that was later incorporated in its entirety (and, it appears, somewhat uncritically) into the removal opposition evidence.

38.   Mr O’Callaghan reasonably protested the inclusion of the new declaration, and also disputed the standing of Mr Gallagher to make any declaration on behalf of AgCare. He concluded that, whether the Gallagher declaration was in or out, the single Fraser invoice did not prove a genuine commercial use, by AgCare, in good faith, of the ‘SMART 450’ trade mark in Australia.

39.   I have closely considered the lengthy submissions of both sides on the matter of the admissibility of AgCare’s new declaration. The important principles of natural justice set out in regulation 21.19, namely provision of the information to the other party, and opportunity given for it to comment, have been satisfied. Under these circumstances, I believe the close relevance of the declaration to existing critical evidence supporting AgCare’s opposition must tip the balance in AgCare’s favour. I accept the explanation of Mr Gallagher’s qualifications as a person with the requisite standing to make such a declaration. And while Mr Gallagher’s declaration adds minimal extra information about the total value of the ‘SMART 450’ herbicide sold under the invoice, as that figure was always apparent (if a little obscure and minus GST) as the ‘Net line total’ on the invoice copy provided in the original evidence, it nevertheless provides an important and potentially decisive verification of its authenticity, in the face of a very late challenge by the removal applicant.

40.   My decision is to allow the material in, under the provisions of regulation 21.19, in relation to the opposition to removal of trade mark number 1223747. A serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision.[10] This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under the legislation that has the potential to exclude evidence crucial to an opposition outcome.[11]

[10] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.

[11] See also Seven Network (Operations) Limited v Giorgio Armani SPA, Milan, Swiss Branch Mendrisio [2013] ATMO 70 (29 August 2013), para 16.

Opponent’s use of trade mark in the relevant period

41.   Discussions canvassed above have effectively preempted long debate here about Agcare’s use in good faith of the trade mark SMART 450 during the relevant period. Both sides have referred to the relevant case law determining that a single bona fide use during the relevant period can be sufficient.[12] As may have been inferred from my earlier observations, I accept that the invoice previously discussed represents such an example of AgCare’s bona fide use of its trade mark. I would add, however, that I do not consider the invoice to stand entirely on its own. It is supported by the other information attested to by Mr Fraser, for example his explanation of the reason for there being nil sales in 2011, his declaration that his company has ‘subsequently been rebuilding the sales of AgCare’s herbicides’, and the examples of a currently used label and booklet for the ‘SMART 450’ product.[13] In the context of this evidence of use, the simple existence of the two current oppositions being prosecuted by AgCare is another indication that it has not abandoned its trade mark.

[12] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149; ‘Nodoz’ Trade mark [1962] RPC 1 at 7; Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd, 9 IPR 425 at 431; Bickford’s Australia Pty Ltd v Tata Sons Limited [2013] ATMO 100 (3 December 2013) at para 27.

[13] Statutory Declaration of Chris Fraser, dated 22 July 2013, at para 9 and Exhibit CF-2.

Discretion not to remove trade mark from the Register

42. Both sides also made submissions about whether, if I found that AgCare had not used its trade mark within the relevant period, it would nevertheless be appropriate to exercise my discretion under the provisions of section 101, to preserve the registration. As AgCare has made its case under section 100 to my satisfaction, and rebutted Crop Smart’s ground of removal under section 92(4)(b), section 101 is not enlivened, and I am not obliged to exercise any discretion under that provision.

TM No. 1223747 - Decision and costs

43.   I have found here that AgCare has made its case and the ground for removal has been rebutted. Accordingly, I refuse to remove trade mark number 1223747 from the Register.

44.   I would add an observation that the particular circumstances of this case and that of trade mark number 1312370 have led me to the conclusion that it is appropriate at this point to allow a coexistence of trade marks owned by each party to continue on the Register, as envisaged under section 23.[14] It will be remembered that both parties represented here initially secured acceptance for registration based on evidence of prior use at common law in the face of their competitor’s earlier filing. It may well transpire that the present scenario where both parties hold competing valid trade mark rights dissipates at some point in the future, but that cannot be my concern here.

[14]Section 23: Limitation on rights if similar trade marks etc. registered by different persons

If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first‑mentioned owner is authorised to do so under the registration of his or her trade mark.

45.   On the question of costs, I do not propose that these follow the event. The actions of the successful party, AgCare, in producing additional evidence at the commencement of the hearing, placed a considerable impost on Smart Crop’s representative, and resulted in a significant portion of the lengthy hearing (for both matters) being hijacked by debate about the admissibility of the new declaration. Under these circumstances I decline to award costs against Crop Smart. It is appropriate that each party bears its own costs in this removal opposition matter.

Claudia Murray

Hearing Officer

Trade Marks Hearings

29 January 2015