Baruch Enterprises Limited v Smart Storage Pty Ltd

[2020] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Baruch Enterprises Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Smart Storage Pty Ltd to remove trade mark number 1527950 (class 9, 11) – ULTRA MAX - in the name of Baruch Enterprises Limited

Delegate:	Katrina Brown
Representation:	Opponent: Pizzeys Patent & Trade Mark Attorneys Pty Ltd Applicant: Franke Hyland
Decision:	2020 ATMO 68 Trade Marks Act 1995 (Cth) – application under section 92 – use demonstrated in relevant period for some goods – discretion exercised in relation to some goods – registration to be partially removed.

Background

1. Baruch Enterprises Limited (‘Removal Opponent’) is the owner of the following trade mark registration:

Registration No:                   1527950

Trade Mark:  ULTRA MAX (‘Trade Mark’)

Filing Date:  27 November 2012

Registered Goods:                Class 9: Batteries; Battery chargers; Battery holders; Audio compact discs; Compact discs (audio-video); Flash bulbs; Videos; Audio tapes; Photographic cameras

Class 11: Flashlights (torches)

(Collectively the ‘Registered Goods’)

1. On 2 February 2018 Smart Storage Pty Ltd (‘Removal Applicant’) filed an application pursuant to s 92(4)(b) of the Trade Marks Act 1995 Cth (‘Act’) seeking removal of the Trade Mark from the Trade Mark Register (‘Register’). The removal application was made in respect of all of the Registered Goods; that is complete removal of the Trade Mark from the Register.

2. The Removal Opponent filed a Notice of Intention to Oppose the removal application on 20 March 2018, followed by a Statement of Grounds and Particulars on 16 April 2018.

3. The Removal Applicant filed a Notice of Intention to Defend the removal application on 18 May 2018.

4. In due course the Removal Opponent filed the following declaration as evidence in support:

• Declaration of Emil Baruch (Director of Removal Opponent) made on 24 August 2018 with Annexures EB-1 to EB-13 (‘Baruch Declaration’).

1. The Removal Applicant did not file evidence in answer.

2. Once the period for filing evidence in answer had expired, both parties were invited to request a hearing. Neither party did so. On 21 January 2019 both parties were informed via letter that the matter would be decided based on the material properly filed in the opposition proceeding. The parties were also invited to file any written submissions within one month of the date of that letter.

3. Neither party filed written submissions.

4. As a delegate of the Registrar of Trade Marks, I will now decide this matter.

The relevant provisions

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use.

2. Section 92(4)(b) of the Act provides:

   (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:

   …

   (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.

3. The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time in the three year period ending on 2 January 2018 (‘Relevant Period’).

4. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The Removal Opponent can rebut the allegation by establishing that during the Relevant Period it used the Trade Mark in good faith in Australia in relation to the Registered Goods.[1]

   [1] Section 100(3) of the Act.

5. ‘Use in good faith’ has a well-established meaning in removal matters. It is ‘real, as opposed to token, use in a commercial sense’.[2] Provided that the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] For example, one invoice, if genuine, may be sufficient.[4] The relevant standard of proof is on the balance of probabilities.[5]

   [2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [16].

   [3] Ibid [18].

   [4] Geo W McPherson v Remington (1999) 47 IPR 636.

   [5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

6. In accordance with s 101 of the Act, if the requisite use is not established I may decide to remove the Trade Mark from the Register in respect of any or all of the goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. As stated above, as this is a removal matter it is crucial that the Removal Opponent demonstrates that during the Relevant Period it used the Trade Mark in good faith in Australia in relation to the Registered Goods.

2. In the Baruch Declaration it is declared that the Removal Opponent markets its products to Australian companies via weekly emails. Confidential Annexure EB-10 contains examples of such emails. One of the examples is within the Relevant Period and shows use of the Trade Mark in relation to the following Registered Goods: torches and batteries.

3. Mr. Baruch also declares that the Removal Opponent sells products branded with the Trade Mark to customers in Australia via the website Annexure EB-12 consists of the response from an employee of the Removal Opponent to an enquiry from an Australian customer made via this website. The response is dated within the Relevant Period, includes a list of batteries which the Removal Opponent can supply, all of which include the Trade Mark in the description, and confirms that the batteries can be sent to Australia.

4. I am satisfied that the above examples demonstrate that the Removal Opponent did use the Trade Mark in good faith within the Relevant Period in Australia in relation to batteries and flashlights (torches).  

5. However, I have reached a different conclusion in relation to the other Registered Goods namely: battery chargers; battery holders; audio compact discs; compact discs (audio-video); flash bulbs; videos; audio tapes; photographic cameras (‘Remainder of the Registered Goods’).

6. The evidence before me does not establish that the Removal Opponent has ever used the Trade Mark in relation to compact discs (audio or audio-video), flash bulbs, videos, audio tapes or photographic cameras, let alone done so within the Relevant Period. 

7. The evidence does contain two examples of the Removal Opponent using the Trade Mark in relation to battery chargers and battery holders. Annexure EB-6 consists of sample brochures which are offered to customers at trade exhibitions. The date at the top of the specific brochure is 19 December 2012 which is well before the Relevant Date. Furthermore, [15] of the Baruch Declaration lists the location of the trade exhibitions at which the Removal Opponent markets goods bearing the Trade Mark. None of the locations are in Australia and whilst it is declared that these trade exhibitions ‘attract a number of traders from Australia’, there is no evidence to support this assertion.

8. Annexure EB-11 contains a screen capture of the Removal Opponent’s YouTube channel showing a product described as an ‘Ultra Max Wireless Charger’. Once again, I am unable to conclude that this use is within the Relevant Period because the screen capture is undated and the Baruch Declaration does not provide any supporting information such as when it was taken, or when the video was uploaded to YouTube. As such I am unable to conclude that the above examples demonstrate use in Australia during the Relevant Period.

9. Furthermore, there is no evidence before me to establish that there was an obstacle to use of the Trade Mark in the Relevant Period.

10. For the reasons above, the Removal Opponent has only rebutted the allegation made under s 92(4)(b) of the Act in respect of batteries and flashlights (torches).

Discretion

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

   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. The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[6] Notably, although the Removal Opponent did not file submissions, the SGP does provide some particulars in relation to why the discretion should be exercised.

   [6] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273].

3. In this matter, the question is whether it is reasonable not to remove the Trade Mark in respect of the Remainder of the Registered Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[7]

   [7] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28].

4. In answering the question, I may take into account whether the Trade Mark has been used by the Removal Opponent in respect of similar goods.[8] The evidence supports that the Removal Opponent has used the Trade Mark in Australia during and after the Relevant Period in respect of batteries, which I consider to be similar to battery chargers and battery holders. Furthermore, this use demonstrates that the Trade Mark has not been abandoned.

   [8] Section 101(4) of the Act.

5. I am satisfied that it is reasonable to exercise the Registrar’s discretion in relation to battery chargers and battery holders.

Decision

1. The Removal Opponent has successfully rebutted the allegation under s 92(4)(b) of the Act in relation to batteries and flashlights (torches).

2. Furthermore, I am satisfied that it is reasonable to exercise the Registrar’s discretion in relation to battery chargers and battery holders.

3. Therefore, I direct that one month from the date of this decision, registration number 1527950 be removed from the Register in respect of class 9: Audio compact discs; Compact discs (audio-video); Flash bulbs; Videos; Audio tapes; Photographic cameras.

4. If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the court.

Costs

1. The general rule is that costs follow the event. As both parties were, strictly speaking, partly successful I believe it is appropriate in this case that each party bears its own costs.

Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 April 2020