Baggio Holdings Pty Ltd v Kaba AG

[2010] ATMO 130

TRADE MARKS ACT 1995

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

Re:Oppositions by Baggio Holdings Pty Ltd to applications under section 92 of the Act by Kaba AG to remove trade mark numbers 515245 (42), 552300(42) - KABA INTERNATIONAL - in the name of Baggio Holdings Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: no appearance Applicant: Andrew Sykes of Griffith Hack, Patent and Trade Mark Attorneys
Decision:	2010 ATMO 130 Section 92 opposition – s92(4)(b) - opponent established use in good faith – trade marks to remain on register – costs awarded against applicant

Background

1. Baggio Holdings Pty Ltd (‘the opponent’) is the registered owner of two Trade Marks (collectively ‘the trade marks’), current details of which appear below:

   Trade Mark number: 515245
   Registered from:                   20 July 1989

   Services:Class 42: Wholesaling and retailing of electronic security video intercoms and automatically operated doors and gates

   Trade Mark:  KABA INTERNATIONAL  

   Trade Mark number: 552300
   Registered from:                   20 July 1989

   Services:Class 42 Wholesaling and retailing of security devices, namely video intercoms, audio intercoms, closed circuit television, automatically operated doors and gates including boom gates and automatic parking barriers

   Trade Mark:  KABA INTERNATIONAL

2. On 13 February 2009, Kaba AG (‘the applicant’) filed applications under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade marks from the Register, alleging it had not been used for any of the registered services during the three year period ending 13 January 2009 (‘the relevant period’).

3. On 11 June 2009, the opponent filed Notices of Opposition to the removals, claiming the trade marks were in fact used in good faith during the relevant period.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 22 September 2010.  Andrew Sykes of Griffith Hack, Patent and Trade Mark Attorneys appeared for the applicant by video link. The opponent was not represented, but relied upon on the evidence filed.

   Evidence

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

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Camillo Baggio	Director of Opponent	8.10.2009, Baggio	A to C
Evidence in Answer
Tracey Joanne Murray	Librarian for attorneys for applicant	14.12.2009, Murray	TJM1

1. Baggio states that the opponent has used the trade marks continuously throughout all states and territories of Australia during the relevant period. Annexed to Baggio are:

   ·    Annexure A - is a bundle of invoices for the period January 2006 to June 2007;

   ·    Annexure B - a schedule of fees paid to Metro Yellow pages for 2007/2008, and

   ·    Annexure C - a photocopy of the opponent’s labels and a business card.

2. Murray states that a search of capital city Yellow Pages for the relevant period failed to locate any reference to KABA INTERNATIONAL. However, entries using a different trade mark (‘BPT’, one that appears on the opponent’s business card in evidence) using the opponent’s address and telephone number are exhibited.

3. On 1 February 2010, at the request of the applicant, the Registrar issued a notice to the opponent to produce “all documents in its possession, custody or control [with respect to] advertisements in the Metro Yellow Pages referred to in [Baggio]” by 1 March 2010. The opponent had not complied with the notice as at the hearing date.

   Discussion

4. Section 92 relevantly states:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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 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 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

5. Section 100(1)(c) of the Act provides that the Opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

6. 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 during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 ("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.”

7. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

8. Counsel for the applicant sought to challenge the invoices provided in Baggio, Annexure A, by submitting that:

   ·    they appeared to be for miscellaneous items that were not clearly for the goods in respect of which the specified services were provided,

   ·    they did not clearly show whether or not they were provided to the customer or were internal documents;

   ·    it was unclear whether the invoices were provided before or after the provision of the services – if after the delivery of the services this would not operate to distinguish those services from other the similar services of traders;

   ·    the invoices alone do not amount to use in relation to the relevant wholesaling and retailing services;

   ·    there was no information on the total amount of sales attributed to the trade marks;

   ·    the above failings and limited number of invoices fail to establish the “overwhelmingly convincing proof” of use required by the Nodoz case (cited above).

9. Counsel for the applicant submitted that Baggio, Annexure B did not evidence any use of the opponent’s trade marks and referred to the findings in Murray summarized in paragraph 7 above.

10. Counsel for the applicant also criticized the probative value of the label and card show in Baggio Annexure C, because they did not evidence how and when they were used.

11. Counsel for the applicant further submitted that the opponent’s failure to respond to the notice to produce documents undermined the credibility of Baggio and that I should not draw any inferences favourable to the opponent where use is not clearly demonstrated by incontrovertible documentary evidence.

12. I have examined the evidence, particularly Baggio, in detail.  While I can appreciate Mr Sykes’ submissions regarding Annexures B and C of Baggio, I do not share his absolute rejection of the probative value of Annexure A.

13. Annexure A to Baggio contains 21 invoices covering the period 2 February 2006 to 12 June 2007. I have not taken into account one dated 1 January 2006. Each invoice is headed with the words “KABA INTERNATIONAL”, and some device element. Each is clearly a “tax invoice” as required by the Goods and Services Tax regime in force in Australia. Each is marked “Paid”.

14. The invoices are made out to a variety of individuals and business entities, some of which appear to be in the security industry and some in the electronics industry.

15. Each invoice contains item codes and descriptions of goods sold. While the descriptions are brief and best translated by the cognoscenti of the security industry, it is clear to me that the items include security monitors, cameras, keypads, audio/visual devices, boom gates and sliding gates, and various accessories that would be used in conjunction with those items.

16. The invoices also have imprinted upon them trade marks BPT VIDEO INTERCOM and CAME AUTOMATIC GATES. I note that both of those marks also appear on the business card exhibited in Annexure C to Baggio. Further, I note from Murray Exhibit TJM1 that the Metro Yellow Pages entries each display an advertisement for BPT in entries for “Intercommunication Equipment & Systems” and “Security Systems &/or Consultants”. In most cases, the address listed for BPT was the opponent’s address.

17. Despite the fact mentioned in the previous paragraph, I am satisfied that the opponent has discharged its evidentiary onus with regard to its use of the trade marks for relevant services within the relevant period. While the opponent failed to comply with a notice to produce documents, there was already sufficient evidence of use such that any inference I might otherwise draw with respect to the non-production of other material would not alter my decision.

    Decision

18. The evidence satisfies me that there has been genuine commercial use of the trade mark with respect to the services specified in the registration during the relevant period.  The oppositions are accordingly established and I therefore refuse to remove the trade mark.

    Costs

19. As the successful party, the opponent is entitled to its costs and I award costs against the applicant as per Schedule 8 of the Trade Marks Regulations 1995, with costs for the second of the two 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
    22 December 2010