Assa ABLOY AB v Tenyale Industry & Trade Group Co., Ltd

[2012] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by ASSA ABLOY AB to protection of international registration designating Australia 1270995(6) (IR 980385) - TENYALE - filed in the name of Tenyale Industry & Trade Group Co., Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Ian Horek of counsel instructed by Phillips Ormonde Fitzpatrick, patent and trade mark attorneys

Holder: No appearance or submissions

Decision:

2011 ATMO 21

Reg. 17A.29 opposition – Ground pursued under section 59 established – IRDA refused protection. Costs awarded against holder

Background

1. Tenyale Industry & Trade Group Co., Ltd (“the holder”), a company based in China requested protection in Australia for the following international registration designating Australia (“IRDA”):

Application number:	1270995 (IRDA 980385)
Filing date:	19 May 2008
Advertised accepted:	11 December 2008
Goods:	Class 6: Parts for furniture of metal; equipments for building of metal; door handles of metal; locks of metal, non-electric; works of art of common metal; hardware; chests of metal; parts for chests and boxes; containers of metal for storage and transportation; memorial plaques, of metal
Trade Mark:

1. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs. This section makes provisions for the Trade Marks Regulations (“the Regulations”) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Regulations.

3. On 11 March 2009, ASSA ABLOY AB (“the opponent”) filed a Notice of Opposition (“the notice”). The notice canvassed most of the grounds of opposition allowable under the Act. These grounds are applicable to an IRDA by virtue of regulations 17A.31(1) to 17A.31(3). However, at the hearing, Mr Horek advised that the opponent would only be pursuing grounds under the provisions of sections 42(b), 58, 59 and 60 of the Act. For completeness, as they were not pressed by the opponent, I note that none of the other grounds claimed on the notice have been established.

4. The onus is upon the opponent to establish one or more of its grounds of opposition on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

5. Therefore, the grounds remaining for my consideration are those under sections 42(b), 58, 59 and 60 of the Act. Should the opponent establish any one ground of opposition, there is no requirement for me to consider the other ground(s) of opposition.

6. The opponent served and filed evidence as shown below:

• Declaration of Michael O’Donnell, Partner of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys of 1 March 2011 with Exhibits MOD-1 to MOD-5 (“O’Donnell 1”)

• Declaration of John E Payne, owner Brighton Security Centre, of 1 March 2011 (“Payne)

• Declaration of Hans Esser, consultant to Opponent, of 31 March 2011 (“Esser”)

• Declaration of Michael O’Donnell of 9 November 2011 with Exhibit MOD-1 (“O’Donnell 2”)

1. The holder did not serve or file any evidence.

2. I heard the matter as delegate of the Registrar of Trade Marks on 14 November 2011 in Melbourne.  Ian Horek of counsel, instructed by Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys, appeared for the Opponent. The holder has not corresponded in any way about this opposition and was not represented at the hearing.

Discussion

1. The first ground of opposition argued by counsel for the opponent was that under section 59 of the Act, which states:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.

Note:  For applicant see section 6.

1. The requisite intention is a resolved and settled purpose to use the trade mark[2]. The relevant date for determining the existence of that intention is the filing date of the application[3], although any use or non-use may be relevant for drawing inferences as to that at the filing date[4]. Counsel for the opponent submitted that the opponent reserved its right to argue that section 59 is assessable at the date of determining the opposition in any appeal.

   [2] Ducker’s Trade Mark [1928] 45 RPC 397 at 402, per Lord Howarth MR

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58

   [4] Suyen Corporation v Americana International Limited (2010) FCA 638 (21 June 2010)

2. As a general principle, the act of applying for registration or requesting protection is prima facie evidence of an intention to use the trade mark in relation to all of the goods and services listed in the application.[5]^.  Here the opponent submits that if a case is made to the contrary, the onus shifts to the holder to establish the requisite intention.  I note that in order to shift the onus to the holder the opponent first has to make out a prima facie case[6]. 

   [5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391; Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 at 456

   [6] Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478, being the decision of Jacobson J at first instance

3. In this case, the opponent has done more than merely plead section 59 in its opposition. O’Donnell 1 states that attorneys for the opponent directly contacted the legal representatives of the holder with a view to negotiating settlement of the proceedings. Exhibit MOD-5 is the email response from the legal representatives that states that the holder does not wish to proceed with the extension [of a Madrid Protocol application] and that they were aware of opposition proceedings deadlines but were not making any responses.

4. O’Donnell 1 also establishes to my satisfaction the following:

• there is no evidence of use or intended use of the trade mark on the holder’s website;

• investigations have not located any use of the trade mark in Australia or any distributors, wholesalers or retailers of any of the holder’s goods sold under the trade mark;

• the holder has not represented itself in this or any foreign oppositions. The opponent has opposed registrations of the holder in Australia, Denmark, Finland, France, Germany, Poland, Portugal, Romania, Spain, Switzerland, Sweden, United Kingdom and the United States of America where the holder has not participated or engaged local representatives.

1. I am satisfied that the opponent has established a prima facie case that is one where a failure to respond to it can be used to infer that the opponent’s allegation is correct. The allegation stands unrebutted in circumstances where the holder could simply and effectively have rebutted it by serving and filing the appropriate evidence in answer[7].

   [7] Jones v Dunkel (1959) 101 CLR 298 at 312, and Danjaq, LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18

2. I am satisfied that the opponent has established the section 59 ground of opposition in relation to all the holder’s goods and services. Having found in favour of the opponent in terms of section 59 there is no need for me to discuss the other grounds set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. The section 59 ground of opposition has been made out. Pursuant to regulation 17A.34 of the Regulations I refuse protection of IRDA 1270995 – International Registration 980385 – in respect of the goods listed in the IRDA.

Costs

1. The opponent has sought its costs.  It is usual for costs to follow the event and I see no reason why this approach should not apply in the present matter. I award costs against the holder according to Schedule 8 of the Regulations.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

14 February 2012