AirWair International Limited and GFM GmbH TRADEMARKS v VISITEC Australia Pty Ltd

[2010] ATMO 127

TRADE MARKS ACT 1995

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

Re:Oppositions by AirWair International Limited and GFM GmbH TRADEMARKS to applications under section 92 of the Act by VISITEC Australia Pty Ltd to remove trade mark numbers 520052 (25) , 766924 (25) - AirWear & Device and AIRWAIR - in the name of AirWair International Limited and 734954 (14, 16, 18, 25) - Dr Mertens AirWair & Device - in the name of GFM GmbH TRADEMARKS

Delegate:

Jock McDonagh

Representation:

Opponent: Anthony Norris of Collison & Co Patent and Trade Mark Attorneys

Applicant: No appearance

Decision:

2010 ATMO 127

Section 92(4)(b) opposition – insufficient evidence to establish use on other than footwear in relevant period – not satisfied that Registrar should exercise discretion – registration in respect of other than footwear in class 25 to be removed from Register – costs awarded against opponent

Background

1. AirWair International Limited and GFM GmbH TRADEMARKS (‘the opponent’) are the registered owners of three trade marks, current details of which appear below:

Trade mark number:     520052

Registered from:  26 September 1989

Goods:  Class 25 Articles of outer clothing and footwear

Trade mark:  

520052

Trade mark number:     734954

Registered from:  21 May 1997

Goods:Class: 14 Precious metals and their alloys and goods in precious metals or coated therewith; jewellery; horological and chronometric movements

Class: 16 Paper, cardboard and goods made from these materials not included in other classes; printed matter; photographs; stationery; instructional and teaching material; plastic materials for packaging; playing cards

Class: 18 Goods made from leather and imitations of leather; trunks and travelling bags; umbrellas, parasols and walking sticks

Class: 25 Clothing, footwear, headgear and hand coverings

Trade mark:       

Trade mark number:     766924

Registered from:  8 July 1998

Goods:Class 25 Articles of clothing; footwear; headgear; hats; caps; gloves; mittens; scarves; wraps; heels, soles, welts, inner soles, uppers and metal fittings; all for footwear

Trade mark:  AIRWAIR

1. On 14 August 2008, VISITEC Australia Pty Ltd (‘the applicant’) filed applications under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for partial removal of the trade mark from the Register. The applicant seeks removal of registration in respect of “Articles of outer clothing” in class 25 for registration 520052, and “Articles of clothing; footwear; headgear; hats; caps; gloves; mittens; scarves; wraps” in class 25 for registrations 734954 and 766924.

2. It should be noted, however, that the class 25 registration for 734954 is for” Clothing, footwear, headgear and hand coverings”; therefore, I take it that the removal application is for goods in the class other than footwear.

3. On 3 December 2008 the opponent filed Notices of Opposition to the removal, claiming that the applications did not comply with section 92 of the Act, claiming use of the trade marks during the relevant period, and seeking the Registrar’s discretion to retain the trade marks on the Register.

4. The matter came before me, via video-link, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 9 September 2010.  The opponent was represented by Anthony Norris of Collison & Co Patent and Trade Mark Attorneys. The applicant was not represented at the hearing nor did it provide submissions. However, the applicant relied on previous correspondence to the effect that the opponent’s evidence did not establish the requisite use of the trade marks and seeking costs.

Evidence

1. The following evidence was filed and served pursuant to legislation:

Declarant	Status	Date	Exhibits
Evidence in Support
Anthony Norris	Trade Marks Attorney	3.09.2009	AJN-1 to AJN-15
Anthony Norris	Trade Marks Attorney	3.11.2009	AJN-16 to AJN-18

Discussion

1. Section 92 relevantly states:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2) The application:

(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:  For prescribed court see section 190.

(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) …;
(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.

Note:  For file see section 6.

(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

1. Under section 100 of the Act, the onus of establishing use of its trade mark lies with the removal opponent. To discharge the onus for s94(4)(b), the opponent must provide evidence of a bona fide use of the trade mark during the three year non-use period (“relevant period”). In this case, the relevant period ends on 14 July 2008. The use must be in relation to the goods or services to which the application refers.

2. The opponent has provided extensive evidence demonstrating the background to the trade marks and their “iconic” status internationally and in Australia. There is evidence of significant sales receipts of the opponent’s goods in Australia and New Zealand during the relevant period, along with substantial advertising expenditure worldwide during the relevant period.

3. The opponent has provided evidence of the products available for sale in Australia during the relevant period under each of the trade marks. These products are all footwear. There is no evidence of trade mark use of goods other than footwear. Proof of use of goods of the same description will not suffice: McHatton v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537; however, use of similar goods is relevant in the Registrar’s exercise of discretion under section 101 of the Act.

4. No use of the trade marks with respect to goods other than footwear during the relevant period has been supported by the evidence before me. The non-use of the trade mark has been established with respect to those goods other than footwear. Therefore, I am required to determine the matter pursuant to section 101 of the Act, which relevantly provides:

Determination of opposed application—general

101.(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.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)  Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)  similar goods or closely related services; or

(b)  similar services or closely related goods;

to those to which the application relates.

1. Counsel for the opponent asked me to exercise the discretion under section 101(3), with particular attention to section 101(4).

2. Counsel for the opponent submitted that use of the trade mark on footwear is use on similar goods to the clothing goods for which removal is sought. My attention was drawn to paragraph 4.6 of Part 26 of the Trade Marks Office Manual of Practice and Procedure (“the manual”). This paragraph deals with rationale and considerations for citing footwear against clothing (and vice-versa) under section 44 of the Act during examination of an application to resister a trade mark.

3. The manual discusses the contemporary situations where clothing and footwear can be constituents of a particular fashion outfit, such as a sporting outfit, that are likely to be sold in close proximity in the same store by the same trade mark owners and potential purchasers would expect the goods to come from the same source.

4. Counsel for the opponent submitted that the origin of its footwear was as an industrial brand of footwear; that is, as protective footwear in industry. Therefore, the footwear is clearly targeted to the industrial “workwear” market.

5. Counsel for the opponent further submitted that it was important to consider the motives and actions of the removal applicant. It was noted that the removal applications were in response to a trade marks examiner’s citation with respect to the removal applicant’s application to register AIRWEAR in class 25 for “clothing; head gear for wear”. It was submitted that the removal applicant’s trade mark application was in respect of goods that could be described as industrial or work wear.

6. Counsel for the opponent expressed concern that the applicant’s AIRWEAR trade mark would be in the same marketplace as the opponent’s AIRWAIR trade marks. Counsel considered this an important consideration.

7. For the reasons that follow, I am not satisfied that it is reasonable to exercise the discretion not to remove the trade marks’ registration in respect of goods other than footwear.

8. The policy of the Act is to provide for the removal of unused trade marks from the Register unless it is reasonable not to do so. It is in the public interest in the integrity of the Register for unused trade marks to be removed.

9. There is no evidence that the opponent has ever used its trade marks on goods other than footwear. Thus there is no residual reputation of use with other goods from a time before the relevant period. There is no suggestion, beyond the initial registration for other goods, of an intention to extend use of the trade marks beyond the footwear market.

10. The opponent has been using its trade marks in Australia and worldwide on footwear for decades. This is well established by the evidence. However, the evidence does not show any use of the marks on other goods in Australia or elsewhere during the same period, let alone the relevant period.

11. The removal applications do not affect the opponent’s registrations with respect to footwear, nor goods other than class 25. All other intellectual property rights attached to the trade marks on the goods that the opponent deals with are maintained.

Decision

1. The removal opponent has not discharged the onus of establishing use of its trade marks for goods other than footwear in class 25. Nor am I satisfied that that it is reasonable to exercise the discretion not to remove the trade marks’ registrations in respect of goods specified in Class 25 other than footwear.

2. Accordingly, I direct that the following goods in class 25 will be removed from the specifications of the following trade marks:

• No. 520052 - Articles of outer clothing;

• No. 734954 -  Clothing, headgear and hand coverings; and

• No. 766924 -  Articles of clothing; headgear; hats; caps; gloves; mittens; scarves; wraps.

after a period of one month from the date of this decision. If the Registrar is served with a notice (or notices) of appeal on or before that time, the partial removals will not be effected until that appeal has been discontinued or dismissed, or the registration will be subject to a decision made by the Federal Court.

Costs

1. The applicant is the successful party and is entitled to its costs. Accordingly, I award costs against the opponent as per Schedule 8 of the Regulations, with costs for the second and third of the three oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

20 December 2010