Battery World Australia Pty Ltd v Axon Enterprise Inc

[2022] ATMO 153

TRADE MARKS ACT 1995

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

Re:Opposition by Axon Enterprise, Inc to applications under section 92 of the Trade Marks Act 1995 (Cth) by Battery World Australia Pty Ltd for removal of trade marks numbered 1438324 (9, 13) and 1698200 (9) – Lightning breaks circle (Figurative) – in the name of Axon Enterprise, Inc

Delegate:	Nicholas Smith
Representation:	Opponent: Wrays Pty Ltd Applicant: Griffith Hack
Decision:	2022 ATMO 153 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) applications for partial removal - Removal Opponent’s evidence shows use of the Trade Marks during the relevant period for a subset of goods – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register for some of the goods for which they are registered

Background

1. This decision is pursuant to applications made on 4 September 2020 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Battery World Australia Pty Ltd (‘Applicant’) to remove the trade marks detailed below[1] from the Register of Trade Marks.  The applications are made in respect of all the class 9 goods for which the trade marks are registered (‘Relevant Goods’), that is, the applications are for complete removal of trade mark 1698200 but only a partial removal of trade mark 1438324.

   [1] I note that the trade marks as registered are identical, so this decision will refer to them in the singular (i.e. Trade Mark) when appropriate.

Registration No.	1438324
Lodgement date	19 July 2011
Goods	Class 9: Electronic modules for installation as a component part of, on or in a weapon, including modules including battery or data storage for operation of the weapon or recording operation of the weapon; and parts, fittings and accessories in this class, for any of the aforementioned goods Class 13: Weapons, including weapons that deliver an electrical current through muscle to cause pain and/or to interfere with operation of the muscle, hand-held weapons having terminals for coupling an electrical current through muscle proximate to the terminals to cause pain and/or to interfere with operation of the muscle, and weapons that launch probes to muscle to conduct an electrical current from the weapon through the probes to cause pain and/or to interfere with operation of the muscle; projectiles for use with any of the aforementioned weapons; cartridges for use with any of the aforementioned weapons; holsters for carrying any of the aforementioned weapons; holsters for carrying any cartridges for any of the aforementioned weapons; and parts, fittings and accessories in this class, for any of the aforementioned goods
Owner	Axon Enterprise, Inc
Trade Mark	(‘Trade Mark’)

Registration No.	1698200
Lodgement date	8 June 2015
Goods	Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; recording apparatus, including apparatus for recording video and audio, including cameras and digital recorders, body-worn video cameras, head-mounted video camera, and body worn recorders; electrical recharging apparatus, including battery chargers; recorded media, including pre-recorded electronic media having recorded video, audio, and photographic evidence (excluding computer software), and recorded media having recorded video, audio, and photographic evidence of incidents and recorded actions and communications; software, including downloadable software applications (apps), computer software, computer software for video games, computer application software for mobile phones, mobile phone application software for video playback, mobile phone application software for audio playback, mobile phone application software for recording of narration, mobile phone application software for editing, mobile phone application software for a user to move data from one recording device to another device; films, including motion picture films about less-lethal electronic weaponry used in the fields of law enforcement, professional security, and consumer security; eyewear, including sunglasses, and eyeglasses; eyeglass cases; consumer electronics carrying cases; protective clothing; parts, fittings and accessories related to any of the aforementioned goods, including holsters and accessories for body wearing and carrying recording apparatus (such as video cameras and battery packs), clips for attaching video and audio recording apparatus to clothing, eyeglasses, or headwear (such as clips for attaching a video camera to eyeglasses), eyeglass frames, and eyewear accessories (such as neck straps, cords, and side guards for eyeglasses)
Owner	Axon Enterprise, Inc
Trade Mark	(‘Trade Mark’)

1. Axon Enterprise, Inc (‘Opponent’) has opposed the applications to remove the trade marks, filing  Notices of Intention to Oppose removal on 6 November and 4 December 2020, and Statements of Grounds and Particulars (‘SGPs’) on 4 December 2020 and 4 January 2021.  The Applicant filed Notices of Intention to Defend on 4 February 2021.

2. The Opponent subsequently filed evidence in support of its oppositions to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  The same evidence was filed in connection with both removal applications.  This material will be discussed in more detail below.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. On 12 November 2021 the Applicant requested a hearing by written submissions and paid the appropriate fee.  The matter was set down for a hearing and I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 22 March 2022 which contained a schedule for the provision of written submissions. The Opponent filed written submissions on 19 April 2022 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 26 April 2022 (‘Applicant’s Submissions’).

4. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed below:

   ·The Applications for Removal;

   ·The Notices of Intention to Oppose and SGPs;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions.

   Evidence in Support
   Evidence in Answer
   Evidence in Reply

   • Declaration by Isaiah Fields, Vice President and Associate General Counsel of the Opponent, dated 7 May 2021 (‘Fields 1’) together with Annexures IF-1 to IF-19.
   • Declaration by Jack Leo Collings, Senior Associate at Griffith Hack, legal representative for the Applicant, dated 10 August 2021 (‘Collings declaration’) together with Exhibits JLC-01 to JLC-04.
   • Declaration by Isaiah Fields dated 8 October 2021 (‘Fields 2’) together with Annexures IF-20 to IF- 23.

   The Relevant Provisions

5. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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.

6. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 4 August 2020 (‘relevant period’).

7. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the applications,[2] and I confirm that five years since filing the applications have in fact passed.

   [2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

8. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden 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) …
   (b) …
   (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.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

9. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

10. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the applications for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the applications for removal were made are established.

    Discussion

11. To successfully oppose the applications the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[4]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[5] I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[6] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[7]

    [4] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [5] Act s 7(3).

    [6] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [7] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

12. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

13. The Opponent’s evidence in this matter consists of two declarations by Isaiah Fields.  Fields 1 states that the Opponent is engaged in developing, manufacturing and distributing electrical weapons and body cameras and provides digital evidence manufacturing solutions.  The Opponent was formerly known as TASER International, Inc and is commonly associated with the supply of the well-known TASER conducted electrical weapon.

14. Fields 1 states that during the relevant period, the Opponent has supplied, under the Trade Mark a variety of on-person tactical computers (being body cameras) as well as various accessories and related services to those body cameras.  These body cameras were supplied to a number of Australian police agencies.  Fields 1 also states that the Opponent supplies electrical weapons (and assorted battery packs) under the TASER brand but ‘by reference’ to the Trade Mark during the relevant period.

15. Fields 1 states that the Opponent adopted a new logo in 2016 but continued to sell some of the Relevant Goods in Australia under the Trade Mark during the relevant period and uses the Trade Mark as part of its brand identity to promote the Opponent and its suite of goods and services.

16. Finally, Fields 1 provides evidence of a number of marketing presentations and other promotional activities featuring the Trade Mark however many of these activities were undertaken before the commencement of the relevant period.

17. Fields 1 contains a number of annexures which include:

    ·     Examples of the packaging of the Opponent’s body cameras which include both the Trade Mark and the TASER Mark.  Furthermore, the camera itself displays the Trade Mark in a prominent position;

    ·     Purchase orders from various police forces in the relevant period for the Opponent’s products; and

    ·     Dated copies of various websites featuring the Trade Mark but they generally pre-date the relevant period.

18. In response the EIA contains evidence from the Opponent’s webpages taken during the relevant period that suggest that the Opponent did not display the Trade Mark on the Opponent’s au.axon.com website in the relevant period.  In particular it suggests that the body cameras offered by the Opponent on the au.axon.com website did not display the Trade Mark, rather they displayed the newer logo adopted by the Opponent in 2016.   

19. Fields 2 responds to the EIA and suggests that the images displayed on the Opponent’s website as supplied in the EIA do not represent the full suite of products available and supplied by the Opponent across all jurisdictions at a particular time.  Furthermore the declarant states that certain goods identified in purchase orders and invoices at Annexure IF-3 to Fields 1 bore the Trade Mark, either on the packaging or on the goods themselves.

20. Fields 2 also states that one of the Opponent’s software applications, Evidence Sync, which was distributed to Australian customers, bore the Trade Mark in the product itself.  I note that the annexure displaying the screenshot of the Evidence Sync product is undated.

21. The Applicant’s Submissions criticise the Opponent’s evidence as being overly general in asserting use for the Relevant Goods during the relevant period instead of specifying exactly what goods were advertised and sold, containing evidence of use of marks other than the Trade Mark and for much of the material being outside the relevant period.  

22. The Applicant’s Submissions have considerable force.  In particular I am satisfied that any use of the Trade Mark on electric weapons does not show use of the Trade Mark for the Relevant Goods as electric weapons are class 13 goods, not the class 9 goods that are the subject of the removal applications.  Furthermore I am not satisfied that one undated screenshot showing the Trade Mark in the Opponent’s Evidence Sync software is sufficient proof (noting that the burden rests on the Opponent) that the Opponent has used the Trade Mark on software products in Australia during the relevant period.

23. Having reviewed the evidence I note that the battery and other accessories for the Opponent’s electric weapons do not clearly display the Trade Mark on them and I am unsatisfied, based on the limited evidence before me, that packaging of the battery and other accessories sold by the Opponent in Australia during the relevant period bore the Trade Mark, noting that the Opponent had in 2016 adopted a new trade mark.  It is also apparent that, based on the evidence of the Opponent’s various websites, by the commencement of the relevant period, the Opponent had ceased to use the Trade Mark on almost all of its pages.  To the extent any use remained, it would have been as a result of a failure to update the website which does not amount to use of the Trade Mark as a trade mark for any particular good.

24. I am satisfied, notwithstanding my concerns about the evidence, that the Opponent had sold body cameras to Australian police forces during the relevant period, and that, on the balance of probabilities, such body cameras either displayed the Trade Mark on the physical products or on the packaging.   Based on this conclusion I am satisfied that the Opponent has used the Trade Mark in Australia in respect of the following goods in class 9:

    Class 9: body-worn video cameras, head-mounted video camera, and body worn recorders (‘Used Goods’)

    I am not satisfied that the Opponent has used the Trade Mark for the Relevant Goods other than the Used Goods (‘Remaining Goods’) during the relevant period.

    Obstacles to use

25. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Remaining Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Remaining Goods.

    Registrar’s Discretion

26. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[8] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, 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 [or Registrar] 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.[9]

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[10]

    [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

    [9] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    [10] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[11] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[12] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[13]

   [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

2. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant 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 proprietor was not aware of the applicant’s sales under the mark.[14]

   [14] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203] (Bennett J).

3. In the present case, I am not satisfied from the evidence before me that the Opponent plans to continue to use the Trade Mark in any significant way.   The Opponent adopted a new logo in 2016 and has transitioned to use of the new logo on its products and marketing materials.  Given that, I am unpersuaded that the removal of the Trade Mark for the Remaining Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods.

   Decision

4. The Opponent has partly established its opposition to the removal applications. Accordingly, I direct that registration 1438324 be amended to remove all the class 9 goods one month from the date of the Decision.   This mark shall remain registered for the class 13 goods.

5. I also direct that registration 1698200 be removed from the Register in respect of all Remaining Goods one month from the date of the Decision. It will remain registered for the goods listed below. 

   Class 9:  body-worn video cameras, head-mounted video camera, and body worn recorders

6. If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

   Costs

7. The Applicant has been successful in relation to the application for partial removal of Trade Mark 1438324 and has requested its costs.  I accordingly award costs against the Opponent in respect of Trade Mark 1438324 under s 221 in the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995 (Cth).

8. With respect to the application for removal of Trade Mark 1698200, both parties have had a degree of success and as such I make no order as to costs.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   6 September 2022