Arrow Research Corporation Pty Ltd v Kabushiki Kaisha Tokyo Torihikisho (Tokyo Stock Exchange Inc.)

[2014] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Arrow Research Corporation Pty Ltd to application under section 92 of the Act by Kabushiki Kaisha Tokyo Torihikisho (Tokyo Stock Exchange Inc.) to remove trade mark number 821824(9) - ARROWNET - in the name of Arrow Research Corporation Pty Ltd

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Andrew Sykes of Counsel instructed by Wantrup & Associates

Applicant:  Fiona Brittain of Davies Collison Cave

Decision:

2014 ATMO 97

s92 application for removal: trade mark not used; no cause for exercise of Registrar’s discretion – Trade Mark to be partially removed.

Background

1. In these proceedings under section 92 of the Trade Marks Act 1995 (‘the Act’) Kabushiki Kaisha Tokyo Torihikisho (Tokyo Stock Exchange Inc.) (‘the Removal Applicant’) applied on 22 May 2013 under subsections 92(4)(a) and (b) of the Act for the partial removal from the Register of Trade Marks of the trade mark which is detailed below:

Registration No:              821824

Owner:  Arrow Research Corporation Pty Ltd

Priority Date:  1 February 2000

Goods:  Class 9: Computer software

(‘the Goods’)

Trade Mark:  ARROWNET

(‘the Trade Mark’)

1. The application for removal seeks restriction of the Goods by the exclusion of ‘computer software for trading of financial instruments’ so that the Goods read, ‘Computer software excluding computer software for trading financial instruments’.

2. On 4 July 2013 Arrow Research Corporation Pty Ltd (‘the Removal Opponent’) filed Notice of Intention to Oppose.

3. On 31 July 2013 the Removal Opponent filed its Statement of Grounds and Particulars (‘Grounds’) which is generally couched in terms of rebutting the grounds cited by the Removal Applicant. These Grounds were subsequently amended to include grounds and particulars relating to subparagraph 101(c) of the Act which invokes the Registrar’s discretion to allow a trade mark to remain on the Register.

4. On 27 August 2013 the Removal Applicant filed Notice of Intention to Defend.

5. Thereafter, the parties have filed evidence as allowed by the Trade Mark Regulations 1995 (‘the Regulations’) which I further detail below.

6. The parties elected to be heard.  I heard the submissions of the parties at a hearing in Melbourne on 5 September 2015.  The Removal Opponent was represented by Andrew Sykes of Counsel instructed by Patrick Toscano of Wantrup & Associates.  The Removal Applicant was represented by Fiona Brittain, a partner of Davies Collison Cave.

Onus and Relevant Dates

1. Subsection 100(1) of the Act places the burden on the Removal Opponent to establish its opposition to removal in the following terms:

100Burden 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

(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.

Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:For file, month and registered owner see section 6.

1. The relevant date for the purposes of paragraph 92(4)(a) is the date that the Trade Mark was filed: 1 February 2000.  The relevant period for the purposes of paragraph 92(4)(b) is the three years ending on 22 April 2013.  The relevant date for the exercise of the Registrar’s discretion the date upon which the order for the removal of the Trade Mark is made: Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 per Bennett J at [176].

Evidence

1. The evidence filed by the parties is comprised of the following declarations:

   In support

   Affidavit of Lucas Olde and Annexures thereto made on 7 November 2013 ("Olde Affidavit");

   Affidavit of Leith Temperton and Annexure thereto made on 7 November 2013 ("Temperton Affidavit");

   Affidavit of Dave Milward and Annexures thereto made on 8 November 2013 (''First Milward Affidavit");

   Affidavit of Malcolm White made on 13 November 2013 ("White Affidavit");

   Affidavit of Mark Stretch dated 19 November 2013 (''Stretch Affidavit");

   In Answer

   Declaration of Sakamoto Shinobu and Annexures thereto made on 13 March 2014 (''Sakomoto Declaration");

   In Reply

   Affidavit of Sean Stephens and Exhibits thereto made on 11 April 2014 (''Stephens Affidavit"); and,

   Affidavit of Dave Milward and Annexures thereto made on 15 April 2014 ("Second Milward Affidavit").

Has the Trade Mark been used?

1. The Removal Opponent’s evidence may be accurately characterised as demonstrating extended consideration by the Removal Opponent of the use of the Trade Mark.

2. Mr Milward is a director of the Removal Opponent.  In the First Milward Affidavit he states:

   Arrow first announced its ArrowNet brand at a reseller conference at the Hyatt Regency Resort - Coolum in 1999. The said conference was attended by in excess of three hundred accountants and consultants, all of whom were fully sponsored by Arrow. In this regard, now produced and shown to me and marked "DM-4" is a true copy of a letter of invitation from Arrow to Mr. Benn Gregory of Arrow Software Consultants in relation to the said reseller conference.

   Subsequent to such reseller conference, Arrow announced its ArrowNet brand to the market, to Arrow resellers and to the existing users of Arrow's software. In particular, it more prominently did so again in or around 2001 in a series of product road shows.

3. Email correspondence from some attendees at the above events and also press releases support the above claims.

4. The Trade Mark is, states Mr Milward, intended to be one of a family of trade marks owned by the Removal Opponent; these include:

   a) ArrowSQL - an SQL based version of the existing Arrow Financials.

   b) ArrowShop - an e-commerce shopping facility.

   c) ArrowSAM - an enterprise-level sales and marketing tool.

   d) ArrowLink- a product integration facility.

   e) ArrowVDF - as originally launched in the early 1990's, resulting in excess of forty-thousand users throughout Australasia.

5. Mr Milward states:

   [The Removal Opponent] has successfully managed to complete and launch all of the products that are referred to in paragraph 14) above over the past ten years or so, with the exception of the ArrowNet brand. At the present time [the Removal Opponent] is in the process of finalising the internet or cloud-based framework in which the ArrowNet product is to be developed, as a result of knowledge obtained through the release of the [Removal Opponent's] higher-level Tencia product. As such, [the Removal Opponent’s] reseller network has promoted the ArrowNet brand in an effort to maintain the existing customer base, since about 1999.

   In this regard:

   Now produced and shown to me and marked "DM-9" is a true copy of a Research and Development Grant Press Release of [the Removal Opponent] dated 1 March 2001.

   Now produced and shown to me and marked "DM-10" is a true copy of the relevant parts of [the Removal Opponent’s] Business Plan dated July 2000. The information that is contained at annexure "DM-10" is Commercial-in-Confidence.

6. Mr Milward explains that the Removal Opponent has been developing the TENCIA product and that because of this the Removal Opponent:

   … has not been in a position to finalise the development of the ArrowNet brand to date because of the unforeseen extended development of the Tencia product. In this regard, I particularly reiterate that, as stated in paragraph 17) above, much of the technology which Arrow has utilised as part of the Tencia product is similar to the technology which Arrow needs to utilise to be able to finalise the ArrowNet range. The development of Arrow's Tencia product was initially scheduled to be completed by 2007, but due to the unforeseen additional resource required to bring a product of this size and nature to market, it will now not be completed until the end of 2013. Thereafter, as is also mentioned in paragraph 8) above, Arrow presently expects to finalise the development of the ArrowNet product by the end of 2014, with a migration path then being offered to existing and potential new customers shortly thereafter.

7. Mr Lucas Olde is a partner in C-View Computer Systems.  He does not state that Goods have been provided to him under the Trade Mark but expresses concern that the Removal Opponent might ‘lose the ArrowNet brand.’

8. Mr Leith Temperton is a director of Arrow Software Consultants Pty Ltd which is a reseller of the Removal Opponent’s products.  Mr Temperton confirms his attendance at the Removal Opponent’s previously mentioned conference at the Hyatt Regency Resort at Coolum in 1999 and states:

   At the said reseller conference [the Removal Opponent] more particularly announced and displayed the ArrowNet Trademark, and announced its intended ArrowNet brand (to which the said ArrowNet Trademark relates). More particularly, at the said reseller conference the product concept of [the Removal Opponent’s] ArrowNet Range was launched, and resellers were encouraged to actively engage and market the ArrowNet range to their respective existing customer bases.

9. Mr Temperton further states:

   Since the said reseller conference Arrow Software has been actively marketing Arrow's ArrowNet range, to its client base in anticipation of Arrow's ArrowNet range being released to the market. It has particularly been marketing the ArrowNet range to small and medium-sized organisations in Australia, with a particular emphasis on the South-East Queensland software market where Arrow Software is most active. Arrow Software has been doing this on an ongoing basis ever since attending the reseller conference in 1999.

10. I must admit to some confusion as to what Mr Temperton means by ‘marketing’ and how it is possible to market under a trade mark when there is no product.  This is not in the nature of being an introductory campaign to immediately launch a product or service under the trade mark onto the market.

11. Mr Malcolm White is a director of Comunicat Business Solutions (‘Communicat’).  He states that the Removal Opponent engaged Communicat to assist:

    … in the process of developing its ArrowNet brand, in respect of which the ArrowNet trademark relates.  [The Removal Opponent] first engaged Communicat to resell and consult in its product ranges in or around 1993 which is about two decades ago.

12. Mr White states that Communicat has carried out the following work for the Removal Opponent in relation to its range under the Trade Mark since around 1999:

    Communicat has had a number of discussions with Arrow for the purpose of obtaining Arrow's instructions on the scope of the ArrowNet product range.

    Communicat has promoted the ArrowNet range, utilising the ArrowNet trademark, to the marketplace in anticipation of the ArrowNet range coming onto the market.

    Communicat has conducted a number of seminars and other events in respect of the ArrowNet range, utilising the ArrowNet trademark. Commmunicat has been doing this on an ongoing basis ever since becoming aware of the ArrowNet product range. It has more particularly done so at a reseller conference at the Hyatt Regency Resort – Coolum in 1999, at which Arrow first announced its ArrowNet brand (utilising the ArrowNet trademark).

13. I would infer that Communicat has not done any work for the Removal Opponent in relation to the Trade Mark since 1999.

14. Mr Mark Stretch is a director of Citywest Solutions Pty Limited which is a computer software installation and training organisation.  Mr Stretch states:

    In 2001 I attended a roadshow event in Sydney, which was organised by [the Removal Opponent] in conjunction with Microsoft and IBM. At such event [the Removal Opponent] more particularly announced its intended ArrowNet brand (to which the ArrowNet Trademark relates) and promoted the said ArrowNet brand to the attendees (utilising the ArrowNet trademark).

    Subsequent to such roadshow event in Sydney CityWest then conducted a significant level of follow-up and promotion of Arrow's ArrowNet product to those of its customers and other associates who were unable to attend same. CityWest particularly did so by way of conducting a number of customer seminars, and conducting a number of individual one-to-one discussions and meetings with the said customers and other associates of CityWest.

15. I infer that the roadshow and subsequent promotion occurred in 2001 and Mr Stretch has not attended any event connected with the Trade Mark since then.

16. Mr Sakamoto Shinobu is the director of the Removal Opponent.  He explains that the Removal Opponent:

    … was established on 17 October 2007 and is based in Tokyo. It is the second largest stock exchange in the World by aggregate market capitalisation of its listed companies. It had 3,417 listed companies with combined market capitalisation of US$4.5 trillion as at December 2013.

    [The Removal Opponent] uses the arrownet and double arrowhead device as set out below:

    ("the arrownet device"),

    in relation to the provision of a communication network which allows high volume market data communication and the trading of financial instruments. It combines high speed and high capacity transmission with two access points and a back up site which ensures back up continuity even in a wide-area disaster, such as an earthquake. It connects trading participants and market users to TSE systems using expanded bandwidth.

    The communication network was launched in Japan by reference to the arrownet device on 7 October 2011. TSE has promoted the network to global network service vendors to improve overseas access.

17. Mr Sakomoto states:

    TSE filed International Registration 1051214 [the] arrownet device on 30 April 2010 in classes 36, 38 and 42 in relation to:

    "Class 36: Acceptance of deposits (including substitute bond issuance) and acceptance of fixed interval instalment deposits; loans (financing) and discount of bills; domestic exchange settlement; liability guarantee and acceptance of bills; securities lending; acquisition and transfer of monetary claims; safekeeping of valuables including securities and precious metals (safe deposit services); money exchange (exchanging money); trusteeship of financial futures contracts; trusteeship of money, securities, monetary claims, personal property, land, rights on land fixtures, surface rights or lease on land; agencies for bond subscriptions; foreign exchange transactions; letter-of-credit relating services; brokerage for hire-purchase; issue of tokens of value; agencies for collecting gas or electric power utility payments; consigned collection of payment for goods; buying and selling of securities; trading of securities index futures; trading of securities options; trading of overseas market securities futures; agencies or brokerage for trading of securities, securities index futures, securities options, and overseas market securities futures; agencies or brokerage for entrusting agents with on-commission trading in domestic markets of securities, securities index futures and securities options; agencies or brokerage for entrusting agents with on-commission trading in overseas markets of securities, and securities index futures; agencies or brokerage for forward agreement of securities, for forward agreement of securities index futures, for forward agreement of securities options, spot and forward transaction of securities index futures; brokerage for securities liquidation; securities underwriting; securities offering; transaction of securities subscription or offering; providing stock market information; agencies for commodity futures trading; establishing financial instruments markets where trading of securities or market trading of derivatives are conducted; establishing markets for commodity derivatives or commodity index derivatives; establishing markets for emissions trading or derivatives trading based on them; establishing markets for emissions trading in the field of greenhouse gases or derivatives trading based on them; providing facilities and management of facilities for financial instruments markets where trading of securities or market trading of derivatives are conducted; providing facilities and management of facilities for markets of commodity derivatives or commodity index derivatives; providing facilities and management of facilities for markets of emissions trading or derivatives trading based on them; providing facilities and management of facilities for markets of emissions trading in the field of greenhouse gases or derivatives trading based on them; providing management services for trading for securities or market trading of derivatives; providing management services for trading for commodity derivatives or commodity index derivatives; providing management services for emissions trading or derivatives trading based on them; providing management services for emissions trading in the field of greenhouse gases or derivatives trading based on them; providing services of supervision and administration for trading of securities or market trading of derivatives; providing services of supervision and administration for trading of commodity derivatives or commodity index derivatives; providing services of supervision and administration for emissions trading or derivatives trading based on them; providing services of supervision and administration for emissions trading in the field of greenhouse gases or derivatives trading based on them; establishment and provision of investment products regarding securities, claims based on monetary contracts, currencies or other financial instruments; establishment and provision of investment products whose reference numerical values are prices or interest rates of financial instruments, weather observation numerical values, securities index, commodity prices, commodity index or other financial indicators; establishment and provision of investment outlets; establishment and provision of investment products regarding commodity derivatives or commodity index derivatives; establishment and provision of investment products regarding emissions trading or derivatives trading based on them; establishment and provision of investment products regarding emissions trading in the field of greenhouse gases or derivatives trading based on them; managing and conducting of listed securities, listed claims based on monetary contracts, listed currencies, other listed financial instruments or financial instruments derivatives; managing and conducting of listed prices or interest rates of financial instruments, listed weather observation numerical values, listed securities index, listed commodity prices, other listed financial indicators or financial indicator derivatives; managing and conducting of listed commodity derivatives or listed commodity index derivatives; managing and conducting of listed emissions trading or listed derivatives trading based on them; managing and conducting of listed emissions trading in the field of greenhouse gases or derivatives trading based on them; managing of members who trade in financial exchanges; planning, provision and operation of systems regarding financial instruments markets where trading of securities or market trading of derivatives are conducted; planning, provision and operation of markets regarding commodity derivatives and commodity index derivatives; planning, provision and operation of markets regarding emissions trading or derivatives trading based on them; planning, provision and operation of markets regarding emissions trading in the field of greenhouse gases or derivatives trading based on them; research and compiling of statistics of financial instruments markets where trading of securities or market trading of derivatives are conducted; research and compiling of statistics of markets regarding trading of commodity derivatives or commodity index derivatives; research and compiling of statistics of markets regarding emissions trading or derivatives trading based on them; research and compiling of statistics of markets regarding emissions trading in the field of greenhouse gases or derivatives trading based on them; providing information on trading of securities or market trading of derivatives; providing information on trading of commodity derivatives or commodity index derivatives; providing information on emissions trading or derivatives trading based on them; providing information on emissions trading in the field of greenhouse gases or derivatives trading based on them; providing information on financial instruments markets where trading of securities or market trading of derivatives are conducted; providing information on overseas financial instruments markets where trading of securities or market trading of derivatives are conducted; providing information on markets regarding commodity derivatives or commodity index derivatives; providing information on markets regarding emissions trading or derivatives trading based on them; providing information on markets regarding emissions trading in the field of greenhouse gases or derivatives trading based on them; providing information regarding credit and finance of investment companies to investors; broking for clearing regarding trading of securities or market trading of derivatives; broking for clearing regarding trading of commodity derivatives and commodity index derivatives; broking for clearing regarding emissions trading or derivatives trading based on them; broking for clearing regarding emissions trading in the field of greenhouse gases or derivatives trading based qn them; agencies or brokerage for trading of trading of securities or market trading of derivatives; agencies or brokerage for trading of commodity derivatives or commodity index derivatives; agencies or brokerage for trading of emissions trading or derivatives trading based on them; agencies or brokerage for trading of emissions trading in the field of greenhouse gases or derivatives trading based on them; account management regarding emissions trading; account management regarding emissions trading in the field of greenhouse gases

    Class 38: Telecommunication (other than broadcasting); providing access to communications telecommunication apparatus networks; broadcasting; news agencies; equipment including telephones and rental of facsimile

    Class 42: Computer software design, computer programming, or maintenance of computer software; computer software design for trading of financial instruments, computer programming for trading of financial instruments, or maintenance of computer software for trading of financial instruments; design, programming and maintenance of a network for trading of financial instruments; design, building, or maintenances of communication network system, and consultation on these; technical advice relating to performance, operation, of computers, automobiles and other machines that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; providing computer programs; rental of computers; rental of computer programs; providing computer programs for trading of financial instruments; rental of computer programs for trading of financial instruments; rental of computers for trading of financial instruments; rental of storage area of servers on websites; rental of access time to computer databases; computer database time sharing services.

1. The International Registration designates, inter alia, Australia.  The Examiner issued a provisional refusal based on a citation of the Trade Mark on 20 October 2010.  The Examiner has subsequently stated that the provisional refusal will be withdrawn if the Goods are restricted as sought by the removal application.

2. Mr Sean Stephens (whose affidavit is in evidence in reply for the Removal Applicant) is an economist.  He provides his answer to a question concerning possible overlaps or similarities between the respective business areas in which the Removal Opponent and the Removal Applicant operate.  This sort of evidence might go to exercise of the Registrar’s discretion.  However, rather than detail Mr Stephens’s evidence, I will observe that the wrong question has been asked of him: the question ought to have been couched in terms of the trade marks in suit (rather than the business entities or types) and in particular the goods and/or services in question looked at from the respective points of view of ‘deceptive similarity’ and ‘goods of the same description’.  The answers to such properly stated questions would, in my consideration, be outside Mr Stephens’s stated area of expertise.

3. Further, it does not appear that Mr Stephens was properly instructed that the Removal Opponent’s goods are, according to First Milward Affidavit, an accounting package for small and medium-sized businesses (rather than financial software in general).  It is described at Annexure "DM-7" to the First Milward Affidavit in an IBM customer newsletter dated December/January 1999 as being:

   ArrowNet, a fully-integrated financial software solution, currently consists of the following modules: Cashbook, Debtors, Creditors, Stock, General Ledger, Payroll, Job Costing, Sales Orders, Purchase Orders, Bill of Materials and Fixed Assets. ArrowNet will be sold through ARC's existing professional dealer network.

4. I accordingly place low weight on the evidence of Mr Stephens.

5. The Second Milward Affidavit is submission based on Mr Milward’s perceptions of the Stephen Affidavit and how it addresses the Sakomoto Declaration.  As it is founded on the Stephens Affidavit which is of low weight, I also accord the Second Milward Affidavit low weight.

Discussion

1. Section 17 provides:

   17What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:For sign see section 6.

And subsection 7(4) provides:

(4)         In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

1. It logically follows from the above definitions that (in the circumstances of this matter) if the Goods have never been in existence, there can have been no use of the Trade Mark.  This is not a case where, for example, the existence of the Goods was dependent on orders for them such as in contract manufacturing: the Goods here had to be in existence for orders to be made.

2. It is clear from the evidence that, while the Removal Opponent had the requisite intention to use the Trade Mark at the filing date of the Trade Mark, that has not matured into actual use in the sense referred to in, for example, Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91-119 in that there has been no order or transaction in relation to the Trade Mark. It is plain that while the Trade Mark was promoted around the year 2000 or 2001, there have been no orders for goods under the Trade Mark: accordingly, as Ms Brittain put it, “… the evidence does not show any use of the ARROWNET mark in the course of trade in relation to computer software, as the Opponent was not in a position to take orders for the software product before, during or after the Removal Period as product development has not yet been finalised:” I further note that any preliminary activities or discussions concerning the Trade Mark have, in any event, taken place well before the three year period ending on 22 April 2013.

3. The promotion of the Goods and Trade Mark at Hyatt Regency Resort – Coolum in 1999 and at the subsequent roadshows over a decade ago did not result in orders for goods: it could not have – there was, and still is, no product in existence to be ordered under the Trade Mark.  Despite the promotion of the Trade Mark and Goods, there was no offer for sale or orders under the Trade Mark thus I distinguish this matter from Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414; 56 ALR 193; 59 ALJR 77; 3 IPR 545; [1984] Aust Torts Reports 80-314; [1984] AIPC 90-141.

4. It follows that the Removal Opponent has established its opposition to removal under paragraph 92(4)(a) because it intended in good faith to use the Trade Mark, but it has not established its opposition to removal under paragraph 92(4)(b) of the Act as it has not used the Trade Mark during the three year period ending on 22 April 2013.

Discretion

1. Subsection 101(3) of the Act provides:

   (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.

2. In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J said at [167]:

   The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   In Kowa Company[1] at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo[2] at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   In E & J Gallo[3] at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

   there had been no abandonment of the trade mark;

   the registered proprietors of the mark still had a residual reputation in the mark;

   there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

   the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   the registered proprietors were not aware of the applicant’s sales under the mark.

   [1] Kowa Co Ltd v NV Organon [2005] FCA 1282; (2005) 66 IPR 131; [2005] AIPC 92-131; (2005) 223 ALR 27

   [2] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69; [2008] AIPC 92-293

   [3] Op Cit.

3. In support of the Removal Opponent’s argument that I should allow the Goods to remain intact, Mr Sykes submitted:

   … the issue of an absence of abandonment is particularly relevant in this case where the evidence establishes the software product is in long term development

   Similarly when exercising his discretion to leave a trade mark on the register under s.101(3) for a pharmaceutical product that had been in long term development Jessup J stated in UCP Gen Pharma AG v. Mesoblast, Inc[4] (‘Mesoblast’):

   Although I have rejected the applicant's case under s 100(3)(c), it cannot be gainsaid that, over a period of some years, Canyon had demonstrated a determination to bring desirudin to the market. Not specifically the Australian market as such, but I consider it be reasonable for Canyon to have taken the approach that the establishment of REVASC in Europe should be given priority. The point is that this is not a case in which the product to which the applicant's mark would be applied was well-established and commonly used elsewhere. Rather, I must recognise that the manufacture of the product itself was in the course of development and that, as we have seen, was not without its challenges (albeit not "obstacles").

   [4] [2012] FCA 509.

4. Here the Trade Mark has not been used by the Removal Opponent in order that it might be abandoned – there has been no abandonment only because abandonment of the Trade Mark is impossible: one cannot abandon something one has never had.  Accordingly, there is no residual reputation in the Trade Mark arising from its use.  Neither have there been any sales under the Trade Mark after the removal period ended.

5. In Mesoblast the section 92 opponent had a product and could not find a factory to make it in. Here the Removal Opponent in effect has a ‘factory’ and no product. It is not a case where the opponent has been frustrated in its plans to bring its product to market – the Removal Opponent must have made a conscious decision to put off the development of the product to which the Trade Mark relates.

6. However, as Ms Brittain observed, the main difference between the circumstances before me and those in Mesoblast is that in Mesoblast the removal applicant was silent about the reason for its application to remove the trade mark.  Accordingly, in Mesoblast, when it came to balancing the interests of the parties, there were no interests of the removal applicant to balance against those of the removal opponent.  Consequently, I distinguish the circumstances before me from those in Mesoblast.

7. I consider that, if the Removal Opponent was far advanced in its plans to put an accounting software package onto the market under the Trade Mark, this ought to be an easy thing to demonstrate to my satisfaction via declarations from programmers and marketers, the submission of beta programs/instruction manuals, the showing of dummy marketing material and so forth.  These sorts of materials have not been forthcoming.

8. The Removal Applicant, on the other hand has, according to the evidence of Mr Sakomoto, a product ready to go onto the market and a trade mark it wishes to use immediately – not at some undetermined and unspecified time in the future.  The Removal Applicant has applied to register its trade mark, the arrownet device, and has been told by the Examiner that if its goods are slightly amended and the goods ‘computer software for trading of financial instruments’ are excised from the Goods, its application may be accepted for possible registration.

9. The balance swings, quite obviously, in my consideration, in favour of removing the Trade Mark from the Register for the goods ‘computer software for trading of financial instruments’.

Decision

1. Subsection 101(1) provides:

   101Determination of opposed application—general

   (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. The Removal Opponent has not established its opposition to the partial removal of the Trade Mark from the Register of Trade Marks.  Accordingly, I am satisfied that the ground on which the removal application was made has been established.

3. I direct that, should there be no appeal from this decision, the Goods of registration 821824 be amended to read:

   ‘Computer software excluding computer software for trading financial instruments’

Costs

1. Having been successful, the Removal Applicant is entitled to its costs which I award at the Official Scale against the Removal Opponent.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

9 October 2014