Ansell Healthcare Products LLC v Molnlycke Health Care AB

[2011] ATMO 109

TRADE MARKS ACT 1995  

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

Re:      Opposition by Ansell Healthcare Products LLC to application under section 92 of the Act by Molnlycke Health Care AB to remove trade mark number 732286 (9) -BARRIER - in the name of Ansell Limited

DELEGATE: Bianca Irgang REPRESENTATION: Opponent: Mr Russell Waters of Phillips Ormonde Fitzpatrick Applicant: Not present at the hearing.

DECISION:         2011 ATMO 109 S 92 opposition–use shown for some class 9 goods – s101(3) ­Registrar’s discretion – non-use application unsuccessful – trade mark to remain on the register

Background

1.        Ansell Limited (‘the trade mark owner’) has a registered trade mark, current details of which are shown below:

Trade mark:      BARRIER

Trade mark registration:       732286

Filing Date:     15 April 1997

Specification: Class 9: Gloves and disposable gloves in this class, including gloves for protection against accidents; gloves for industrial, scientific and emergency work and services

2.        On 7 September 2009, Molnlycke Health Care AB (‘Molnlycke’) filed an application to have the trade mark removed from the Trade Marks Register on the grounds of lack of intention to use and/or non-use for all the goods for which it is registered except “multilayer flat film gloves offering chemical protection, but excluding latex, rubber and vinyl gloves”. The application was filed pursuant to section 92 of the Trade

Marks Act 1995 (‘the Act’) and specified grounds pursuant to both paragraphs 92(4)(a) and 92(4)(b).

3.        Ansell Healthcare Products LLC (‘the opponent’) filed a notice of opposition to the application on 4 January 2010. The notice asserted that the grounds on which Molnlycke relied were not relevant because the original trade mark applicant had the intention to use the trade mark for all relevant goods at the time of its filing and there had in any event been actual use of the trade mark for relevant goods during the relevant period.

4.        The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Melbourne on 9 March 2011. Russell Waters of Phillips Ormonde Fitzpatrick Intellectual Property appeared on behalf of Ansell. Molnlycke was not represented at the hearing but relied on written submissions.

Evidence

5.        The evidence provided for this matter consists only of the following declaration:

Legal Framework

1           Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2           Section 92 provides that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years and/or the original trade mark applicant did not intend to use it in good faith for relevant goods or services as at the date the application for registration was filed. The removal application must be in accordance with the Regulations¹ and may

¹ Regulations 9.1 to 9.4 of the Trade Marks Regulations 1995.

be made in respect of any or all of the goods and/or services in respect of which the trade mark is or may be registered. Paragraphs 92(4)(a) and 92(4)(b) as they are relevant to this case provide the following:

(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.  

1           Section 96 makes provision for a person to oppose any application made under section 92 by filing a notice of opposition with the Registrar.  This notice must be in an approved form and must be filed in accordance with the Regulations².

2           Section 100 specifies that the burden is on the opponent to a non-use application to rebut allegations of non-use or lack of intention to use as the case may be.  The opponent needs to establish that the applicant for, or registered owner of the trade mark has used the trade mark (or the trade mark with additions or alterations not substantially affecting its identity) in good faith in respect of the relevant goods

² Regulation 9.3

and/or services, and that this use occurred within the relevant periods as specified in the Act.³

10. Section 101(1) provides the Registrar with the discretion to remove the trade mark from the Registrar “in respect of any or all of the goods … to which the application relates”, whilst s 101(3) explicitly provides that discretion may be exercised in the trade mark owner’s favour even if the grounds on which the application was made have been established if the Registrar is satisfied it is reasonable to do so. 

Discussion

11. The trade mark under attack in this case had been registered for approximately 12 years by the time the application for its removal was made.  Paragraph 70.510 of Shanahan’s Australian Law of Trade Marks and Passing Off (4^th ed, 2008), makes the following comments:

Section 92(4)(a) and (b) provide distinct and alternative grounds for removal. Under para (a) it is necessary to establish: first, that the trade mark was registered without the necessary intention in good faith that it should be used; and secondly, that there had in fact been no use, or no use in good faith, earlier than one month before the application for removal. Under para (b) it is necessary to establish only that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal, subject to s 93(2) which provides that five years must have passed since the application for the registered trade mark was filed.

Paragraph (a) thus merges with para (b) once the trade mark has been registered for five years, though it should be noted that the defence of "circumstances that were an obstacle to the use of the trade mark" which applies to para (b) is not available under para (a). 

12. I am satisfied that this merging of the paragraphs is indeed what has happened, given the length of time which has passed since the trade mark was registered.  Therefore, as provided for by section 100(1)(c), the onus is on the opponent to rebut the claim that there has not been any use of Ansell Limited’s trade mark in good faith within the three year period ending one month prior to filing of the application for removal on 7 August 2009 (‘the relevant period’). The trade mark owner’s intentions⁴ at the time it

³ Regulation 9.4 refers to the serving of evidence in the opposition proceedings. ⁴ I note in passing that the current registered owner was not the original applicant for registration.

filed the trade mark in 1997 are not relevant to my considerations and I do not intend to investigate or consider them.

13. The statutory declaration made by Jerome Feuvrier (‘the Feuvrier declaration’) states that the class 9 goods (gloves and disposable gloves) were sold within Australia during the relevant period in packaging which shows the trade mark. There are clear examples of the trade mark in use on the goods demonstrated by documents attached at Exhibit JF-2 (third party letter confirming it has continuously sold the trade mark owner’s BARRIER branded gloves since 1999) and Exhibit JF-3 (packaging for the gloves). Confidential Exhibit JF-5 and exhibit JF-6 respectively consist of the revenue generated from sales of BARRIER gloves during the relevant period and invoices for purchases and sale of the gloves. These invoices clearly refer to the trade mark. All these documents are dated within the relevant period. 

14. These examples provide sufficient information to demonstrate genuine commercial use of the trade mark in relation to protective (and disposable) gloves within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72. Even 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) 51 IPR 149. I am satisfied the opponent has established use for protective (and disposable) gloves in class 9 within the relevant period.

Registrar’s Discretion

15. There is a discretion embodied in subsection 101(3) of the Act.          That particular part of the legislation reads as follows:

(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. 

16. The application for non-use requested removal for all goods within the class 9 claim, except for multilayer flat film chemical resistant gloves which Molnlycke argued were the only goods on which Ansell had used its BARRIER trade mark. Ansell has indeed demonstrated use on flat film chemical resistant gloves which less than the range of goods encompassed by the description “gloves and disposable gloves”.  As the onus was on the Ansell to show use on the registered goods, not on a subset of them, it is therefore open to me to decide to order removal for all the goods except

those for which use has been demonstrated.  It is not my intention to do so, and my

reasons for this decision follow.

17. I consider the overall market in Australia for “gloves and disposable gloves” in Class

9 (that is, for protective gloves) is one in which the gloves the trade mark owner is

selling may be used for other purposes other than just their resistance to chemicals

(Exhibit JF-4). It appears that the gloves may be used as a liner under heavier gloves

and also used for dealing with micro-organisms as well as chemicals. This would

produce a situation where trade mark confusion is a distinct likelihood if the goods

within the description “gloves and disposable gloves” are divided up amongst a

number of producers.

18. Drummond J commented on the issue of fine distinctions in respect of goods claims

when he considered trade marks involving the word “Taipan” in McHattan v

Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537. He said:

The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.

But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non­use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non­use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.

But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

19. Taking these judicial comments into account, I am satisfied that the distinction

between “gloves and disposable gloves” in general and “Flat film gloves that are

chemically resistant, for use in industrial, scientific and emergency work, but

excluding latex, rubber and vinyl gloves” would be akin to the distinction between the

various species of motor cars and military vehicles to which Drummond J referred.

Therefore, it would be inappropriate for me to restrict the goods claim of the

registered trade mark to only those goods for which actual use has been shown.  I do

not intend to order the trade mark goods specification in class 9 be restricted.  

Decision

20. It is my decision that, the opponent having shown use by the trade mark owner on

slightly less than the complete range of goods its specification in class 9 encompasses,

and technically Molnlycke having made out a case for removal for at least some of the

goods, it is not appropriate to restrict the goods specification to that demonstrated in

the evidence in support. The application for removal is therefore unsuccessful.   

Costs

21. The opponent has requested its costs. Having been successful, it is so entitled.  award costs against Molnlycke at the official scale.

Bianca Irgang Hearing Officer Trade Marks Hearings 08 November 2011