Akt Consultants Pty Ltd v Alfa Laval Lund AB

[2005] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by AKT Consultants Pty Ltd to an application under section 92 of the Act by Alfa Laval Lund AB to remove trade mark number 515492(11) - AKT - in the name of AKT Consultants Pty Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Jose Ruiz-Avila & Janelle Irvine, officers of the Opponent

Applicant: Christian Dimitriadis of counsel, instructed by Spruson & Ferguson Patent & Trade Mark Attorneys

Decision:

1. Removal of  “and all other goods in this class”.

2. Costs awarded against opponent.

Background

1.     Trade mark number 515492 is registered in the name of AKT Consultants Pty Ltd ("the opponent").  That registration has effect from 24 July 1989.  It is for the trade mark AKT represented as shown below,

and for the following goods in Class 11:

Dehydrators including dehydrators of organic material; apparatus and machines for separating fat, oil, tallow or water from organic materials; dehydrators and dehydrators of organic material incorporating such separating apparatus and machinery; all the aforementioned goods being goods included in this class; and all other goods in this class

2.     On 29 April 2003, Alfa Laval Lund AB, ("the applicant"), filed application for removal from the Register of some of the goods in respect of which the trade mark is registered, on the basis of non-use in the period commencing three years and one month before the date of filing. This period, ("the relevant period"), is 29 March 2000 to 29 March 2003. Removal was sought only in respect of “and all other goods in this class”.

3.     The opponent filed Notice of Opposition to the application on 28 August 2003.

4.     The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark or not used the trade mark in good faith in relation to “and all other goods in this class” during the relevant period.

5.     In turn, the opponent alleged in the Notice of Opposition that the trade mark had been used by the opponent in Australia and used in good faith in Australia constantly since 1981.

6.     The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Sydney on 16 March 2005. The applicant was represented by Mr Christian Dimitriadis of counsel, instructed by Spruson & Ferguson Patent & Trade Mark Attorneys.

7.     The opponent was represented by its officers Jose Ruiz-Avila and Janelle Irvine.

Legislation

8. Section 92 of the Act provides as follows:

92  Application for removal of trade mark from Register etc.

(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)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;

(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.

9. There are a number of elements of s.92 that must be satisfied before the Registrar will exercise her powers under the section, namely:

(a)the applicant must be a "person aggrieved";

(b)the application must be in the correct form and must relate to at least some of the goods for which the trade mark is registered;

(c)there must be no court proceedings pending which relate to the trade mark; and

(d)at least one of the grounds referred to must be made out.

10.   The application alleges that the applicant is aggrieved by the registration of 515492 AKT.  The standing of the applicant has not been disputed by the opponent. Additionally, a supporting declaration provides evidence of the applicant's grievance.

11.   The application for removal is in the correct form and covers only some of the goods for which the trade mark is registered: “and all other goods in this class”. The application also states that it is the applicant's understanding that there are no pending court proceedings.

12. In the present case, the only contentious issue is (d), namely, whether the applicant is correct in its assertion that section 92(4)(b) has been satisfied in respect of “all other goods in this class”. 

The Evidence

13.   Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Joe Ruiz-Avila	03.05.04	Three loose annexures	Ruiz-Avila 1
Evidence in Answer
Tommy Noren	17.09.04	TL1 to TL3	Noren
Evidence in Reply
Jose Ruiz-Avila	22.12.04	CRD1 to CRD9	Ruiz-Avila 2

Use During Relevant Period

14. The relevant legislation is contained in of section 100 of the Act. The relevant parts state:

100(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

...

(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before 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.

...

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

15.   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark in the relevant period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

16.   It should be noted that mere assertions of use without documentary support are generally given little weight: Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83.

17.   The opponent’s evidence in support consists of declarations made by Jose Ruiz-Avila.  In Ruiz-Avila 1, in so far as it is relevant, Mr Ruiz-Avila declares that the opponent makes, and has done so continuously for the last 23 years, dehydrating machines that undertake all the processes described in the statement of goods.  He also adverts to the applicant's trademark application that gives rise to its grievance.  The declaration also encloses a copy of the opponent's letterhead, the business card and a copy of a trade brochure for the opponent's dehydrators, all of these bearing the opponent's trade mark.

18.   Ruiz-Avila 1 also includes a great deal of information in respect of business dealings between the applicant and the opponent, much of which is irrelevant to the removal of application and largely unhelpful. 

19.   The Noren declaration details the goods for which it seeks to apply the trade mark ART, the application for which forms the basis of its grievance that qualifies it to seek removal of the opponent's trade mark.  It also touches upon attempts to negotiate with the opponent.

20.   Ruiz-Avila 2 repeats and expands upon the details of business dealings between the opponent and applicant since 1991.  Again it is largely unhelpful and irrelevant to the central issue of this hearing.

21.   The opponent has, apparently, not had the benefit of legal, or other professional, advice since it filed its notice of opposition.  Very little of the material filed as evidence assists it for the purposes of rebutting the applicant's allegations.

22.   However, I am satisfied that the opponent has established that it has used its trade mark during the relevant period in respect of “dehydrators including dehydrators of organic material; apparatus and machines for separating fats, oil, tallow or water from organic materials; dehydrators and dehydrators of organic material incorporating such separating apparatus and machinery”.  While there was no supporting documentary material, such as invoices, exhibited with the opponent's evidence, I have no reason to doubt Mr Ruiz-Avila's statement at paragraph 5 of Ruiz-Avila 1 that the opponent currently makes, and has done so continuously for the last 23 years, dehydrating machines.

23.   The material filed by the opponent, however, does not satisfy me that its trade mark has been used for anything else.  Consequently, the opponent has been unable to rebut the applicant's allegations.

Registrar's Discretion

24.   In deciding an opposed removal application, the Registrar is called on to exercise a discretion: the Registrar "may" remove a registration or "may" decide that the trade mark should not be removed even if the grounds for removal have been established:

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.

25.   The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at 482:

If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there”: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.

26.   What constitutes "sufficient reason" has been enunciated by Deputy Registrar Hardie in Figgins Holdings Limited v Beltrami SpA (1998) 46 IPR 411, at 418:

Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist is on the opponent to the removal application.

27.   I have had regard to the evidence served in this matter and to the submissions made by the parties at the hearing in deciding, as the delegate of the Registrar, whether there is sufficient reason to leave the present trade mark on the Register without amendment to the statement of goods.

28.   I am not satisfied on the evidence and submissions before me that there are any special facts and circumstances, or an overriding question of public interest.

Conclusion and Costs

29.   I find that the opponent has not discharged the onus placed on it under the Trade Marks Act 1995 of showing why trade mark registration number 515492 akt should not have the description “all other goods in this class”  removed from the Register on the grounds of non-use during the period in question.

30.   Therefore, I dismiss the opposition and direct that registration number 515492 akt be amended to remove the following statement of goods from the Register - “all other goods in this class” - unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal. If the Registrar is so served, I direct that removal shall not occur until the appeal has been decided or discontinued.

31.   As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

29 June 2005