Bisset Automation Pty Ltd v Seagate Technology LLC

[2008] ATMO 70

TRADE MARKS ACT 1995

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

Re:Oppositions by Bisset Automation Pty Ltd to applications under section 92 of the Act by Seagate Technology LLC to remove trade mark numbers 832946 (9 and 42) - Circle device - in the name of Bisset Automation Pty Ltd

Delegate:

Rowena Beal

Representation:

2008 ATMO 70

Opponent: Bisset Automation Pty Ltd

Applicant: Seagate Technology LLC

Decision:

s.92 opposition: Grounds for removal under section 92(4)(b) partially successful. Opponent has not discharged onus of showing use in relevant period but registration to remain for some goods and services due to exercise of registrar’s discretion.

Background

1.     The following trade mark is registered under trade mark number 832946.

2.     The trade mark was registered from the 26^th April 2000 in the name of Bisset Automation Pty Ltd (“Bisset”). The registration is in respect of the following goods and services;

Class 9: Computer software and hardware, including computer software, instrumentation, controllers, sensors for project management, instrumentation and process control, network integration, operation of engineering specifications, hazard and operability studies, commissioning of plant and business processes, management and control of buildings, management and control of facilities (such as golf courses, sporting and entertainment stadiums, swimming pool and aquatic facilities, convention centres, concert halls), and training

Class 42: Consultancy services in this class relating to computing, computer hardware and computer software; computer programming; maintenance of computer software; updating of computer software; computer software design; computer system analysis; consultancy services in this class relating to management, design and engineering services; engineering services relating to computer hardware, computer software, instrumentation, for the purposes of control and management of industrial and mineral processing, building management and facilities  

3. The grounds cited in the removal application were those set out in s92(4)(b) of the Trade Marks Act 1995 (“the Act”). The relevant period covered by the removal application, in terms of s92(4)(b) of the Act, is the 9^th April 2002 to 9^th April 2005 and the application sought the removal of  all goods and services.

4.     The application was opposed by Bisset by way of a notice filed the 28^th July 2005. Evidence was lodged according to the following schedule:

Evidence in Support and Reply

Statutory Declaration of John Bisset (first Bisset declaration) dated 24^th October 2005, with exhibits JB 1; examples of Bisset and Futureproof business cards, JB2; Futureproof letterhead, JB3; Bisset promotional leaflet,  JB4 and 5; Fururegolf promotional leaflet, JB6; Bisset Powerpoint presentation, JB 7 Futureproof compact disc Futureproof Solutions Corporate,  JB8; Futureproof Solutions Applications CD, JB9; Futureproof correspondence dated 23 December 02, 19 January 05, 24 January 05 and 24 February 05, JB10; Business Activity Statements.

Statutory Declaration of John Bisset (Second Bisset declaration) dated 12^th September 2007, with exhibits JB 1; copies of medical reports, JB2; printout from web.archive.org/web (Wayback machine) for bisset.com.au from 1999 to date, JB3; printout of bisset.com.au website and futureproofsolutions.com website, JB4; ASIC historical company extracts.

Evidence in Answer

Statutory Declaration of William Hudson dated 4^th June 2007.

Statutory Declaration of Sally Foreman dated 8^th June 2007, with exhibits SEF 1; company extract for Bisset Automation Pty Ltd, SEF 2: internet printouts for bisset.com.au dated 10 and 11 May 2004, SEF 3: Yellow Pages search dated 10 May 2004, SEF 4: extract from bisset.com.au website dated 15 June 04, SEF 5; investigator’s report dated 21 July 04, SEF 6; extract from bisset.com.au website dated 9 May 05.

Further Evidence filed at the hearing

Updated ASIC report for both Bisset and Futureproof

Further Evidence filed as a result of query at hearing

Statutory Declaration of John Bisset (third Bisset declaration) dated 30^th May 2008 with exhibit JB 1; web.archive.org/web (‘Wayback machine’) for bisset.com.au dated 25^th May 2008.

Additional Evidence filed in response to further evidence

Statutory Declaration of Sally Erica Foreman (second Foreman declaration) dated 19 June 2008 with exhibit SEF 1; error messages resulting from clicking the Futureproof Solutions link on the Bisset web page for each date appearing in the Wayback machine site during the relevant period.

5.     The matter came before me as a delegate of the Registrar of Trade Marks in Canberra on the 15^th May 2008. The applicant was represented by Mr Ben Fitzpatrick of Counsel, instructed by Ms Sally Foreman of Davies Collison Cave in Melbourne. The opponent is represented by Mr Richard McCormack of Counsel and instructed by Wrays of Perth. Mr John Bisset, Managing Director of the opponent company, was also in attendance at the hearing.

Submissions

6. The opponent opened the bulk of its lengthy submissions with a statement that it did not oppose nor concede the status of the non use applicant as a ‘person aggrieved’. The submissions then moved on to the first contentious issue between the parties, being the onus of proof in non use matters under the Act. Whilst the opponent accepted the onus of establishing use of the registered trade mark during the relevant period, it claimed that the ultimate burden of proving the ultimate case fell to the non use applicant. In support of this view the opponent referred to the High Court decision in Purkiss v Crittenden (1965) 114 CLR 164 at 167 where the difference between the burden of establishing a case and the shifting burden of introducing evidence was discussed. The opponent claimed that, where evidence is led or adduced before the Hearing Officer, unless that evidence is proven to the contrary or thrown into doubt, the Hearing Officer should proceed on the basis that the evidence will support the opponent in discharging its onus.

7.     The opponent also relied on the principle in Jones v Dunkel (1959) 101 CLR 298, in what it described as the non use applicant’s failure to respond to matters referred to in the second Bisset declaration (evidence in reply) and issues with the admissibility of the investigator’s report. The opponent has objected to the private investigator’s report as inadmissible as it contained hearsay content which was not probative. In addition, the opponent claimed that significant issues raised in the second Bisset declaration were not gainsayed by the non use applicant despite ample opportunity to do so.

8.     The submissions then moved to the subject of use of the trade mark by Bisset and Futureproof and the relationship between the two companies. The companies were described as being ‘related’ and ‘associated’ within the meaning of the Corporations Act2001. The opponent stated that it was not necessary for there to be an actual dealing in goods or services before there can be said to be use of that trade mark. This was because preparatory steps coupled with an existing intention to offer or supply the goods and services will suffice. I was referred to Winton Shire Council v Lomas (2002) 56 IPR 72 and Buying Systems (Australia) Pty Ltd v Studio SrL (1995) 30 IPR 517 (FC) in this regard.

9.     The opponent took issue with the claim by the non use applicant that the website link between the Bisset and the Futureproof sites was not functioning on dates tested in the relevant period. The opponent claimed that an incomplete examination of the website by the non use applicant’ representative led to the failure to detect use of the trade mark.

10. In conclusion, the opponent requested that, should I not be satisfied that the opponent had established use allowing the trade mark to remain on the register, I should exercise the discretion allowed under section 101(3) of the Act. This discretion should be exercised having regard to all the relevant circumstances, including the trade mark’s residual reputation, and the subject trade mark not be removed.

11.   The non use applicant opened its submissions with a statement that there was no requirement for Seagate to substantiate its claim of being a ‘person aggrieved’ as this status had not been properly challenged by the opponent. The non use applicant then went on to discuss how Bisset had failed to discharge its onus for establishing use in the relevant period on four fronts. The first of these was that the use of the circle device had not occurred in relation to class 9 goods but rather in relation to business automation services. The physical use on class 9 items was only in relation to promotional or ancillary products to the services. The non use applicant referred me to many cases on this point and stated that the policy basis for the doctrine of ancillary use is that traders would be unfairly exposed to the risk of inadvertent infringement if their use of their trade marks on promotional goods such as CDs were considered actual trade in those promotional goods. Accordingly, the evidence had failed to establish a trade in class 9 goods.

12. Secondly, the circle device was always used together with another word being Bisset, Futureproof or FutureGolf. The non use applicant submitted that the addition of these words contravenes section 100(3) which provides that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used during the relevant period then the opponent will be have rebutted the allegation of non use. Where there had been use of the trade mark as registered the trade mark representation was incomplete and use was also ‘de minimus’.

13.   Thirdly, the evidence did not demonstrate use by the registered owner, and further, where use was by another legal entity that use was not authorised. In this regard it was submitted that, at all relevant times, Futureproof was the user of the trade mark and that Bisset had not filed any evidence that it exercised quality or financial control over Futureproof’s use. Accordingly, it was claimed, any relevant use did not inure to Bisset. The applicant also did not accept that Futureproof was a subsidiary of Bisset. 

14.   Lastly, it was submitted that the evidence of use was minimal and uncorroborated and could not resist an application for at least partial removal for non use. The non use applicant reminded me that mere assertions of use without sufficient corroboration could be given little weight and that any use demonstrated must be substantial enough to be properly characterized as commercial use. I was referred to Imperial Group Ltd v Phillip Morris & Co Ltd [1982] FSR 72 CA UK at 83 and other cases in this regard. The non use applicant also discussed the fact that broad claims in class 9 should be limited to the particular goods where a bona fide intention to use could be demonstrated. This approach was consistent with international practice, and particularly in relation to computer goods.

15. The applicant finished with the statement that, to the extent that Bisset is entitled to retain a registration, it should be limited to a subset of goods and services related to the field of business automation, an offer already made by Seagate in a letter to Bisset in November 2007. It was requested that the Registrar’s discretion under section 101(3) should not be exercised so as to retain the registrations as there was insufficient reasons for leaving it there, and certainly no basis for allowing an extremely broad registration to remain.

16.   In the event that the registration was allowed to remain with a restricted specification then the non use applicant sought its costs on the basis that it had previously attempted to negotiate such a limitation but Bisset had declined the offer.

17.   As part of the evidence in answer the non use applicant tendered a report from a private investigation firm who claimed to have visited the private address of the Managing Director in July 2004. This report outlined several conversations between Mr Bisset and the investigation firm. The report claimed that Mr Bisset had stated that, due to a personal tragedy, Bisset Automation Pty Ltd were no longer trading and did not have official trading premises. He was asked for a business card but claimed to not have any available any longer as he was not currently working. The investigator also claimed that Mr Bisset made it quite clear he had removed himself from the automation industry and had no intention of returning but rather was considering new business ventures.

18.   This report was challenged by the opponent, both by declaration and at the hearing, on the basis that it contained factual errors and also that Mr Bisset had no recollection of having spoken to the private investigator.

19.   The opponent also challenged the fact that the non use applicant had undertaken investigations into the use of the trade mark by Bisset, including a review of the website, and found no use of the device during the relevant period. The opponent responded with the claim that a link taking viewers to another web page had not been appropriately investigated. This link was to the Futureproof website, which showed use of the trade mark, however the extract demonstrating this was dated after the relevant period. At the hearing there ensued a discussion over whether the link was active during the relevant period. Further evidence was later adduced by both sides on this point. This evidence from the opponent declared that the link to the Futureproof site was present in the Bisset.com.au webpage, as shown on dates in the relevant period through the web.archive.org/web website (Wayback machine). The non use applicant responded to this material with a declaration that the archive web pages did not demonstrate an active link that resolved to the intended website. Material was presented which showed that the only updating of the website during the relevant period was in relation to the wording of the error message generated through activating the Futureproof link. Moreover, the non use applicant submitted, the opponent’s further evidence also did not constitute use in relation to the goods and services of the registration.

Discussion

20. There are a number of elements of section 92, as constructed at the date of application, that must be satisfied before an application for removal under the section can be considered, namely:

(a)the applicant must be a “person aggrieved”;

(b)the application must be in the correct form and must relate to at least some of the goods for which the trade mark is registered;

(c)there must be no court proceedings pending which relate to the trade mark; and

(d)at least one ground must be made out.

21. In relation to the ground pressed in this matter, being section 92(4)(b), the registered trade mark should have been used in good faith in Australia during the relevant period and in relation to the goods and services to which the application relates. At the hearing the non use applicant conceded the point of use ‘in good faith’.

“Person aggrieved”

22.   The application alleges that the applicant is aggrieved by the registration of 832946, which has blocked the acceptance of its trade mark by an Examiner of Trade Marks. The standing of the applicant, on the basis of that fact, has not been challenged by the opponent but rather has been left to my discretion to decide the matter.  I consider that this requirement is made out. The term was defined in relation to s23 of the 1955 Act by McLelland J in The Ritz Hotel Ltd v Charles of the Ritz and Another 12 IPR 417 at 454, however, it is just as relevant under the current Act:

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

23.   Further, in Kraft Foods Inc v Gaines Pet Foods Corporation 34 IPR 198, Sheppard, Tamberlin and Sackville JJ held that the mere fact that a person has filed a non use application is insufficient to establish them as ‘disadvantaged in a legal or practical sense’ by the continued registration of a deceptively similar or substantially identical mark. In the present situation, the non use applicant has declared its intention to use its trade mark in relation to similar goods. However, that desire is thwarted by the opponent’s trade mark registration remaining on the Register and accordingly Seagate’s standing as a ‘person aggrieved’ has been made out[1].

[1] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166 at 169; 51 IPR 149 at 151

Onus

24.   The matter of onus was contentious between the parties. The opponent argued that there are two standards to be considered: firstly the burden of proof of establishing a case on the balance of probabilities and secondly, the burden of proof in the evidentiary sense, which may shift constantly accordingly as one scale of evidence or the other preponderates. The argument went that as evidence had been elicited by the opponent, unless some other material to prove the contrary or throw the matter into doubt was adduced by the applicant, the opponent had discharged its burden and the evidentiary burden had then moved back to the applicant. At the hearing the non use applicant challenged this view.

25.   The applicant has submitted that the onus is on the trade mark owner to show that the mark has been used in the course of trade in Australia in respect of the relevant goods or services, and during the relevant period.

26. At the hearing Mr McCormack accepted that the onus fell to the opponent to demonstrate use during the relevant period. However, the opponent also claimed that, having discharged that onus through its evidence it remained for the applicant to discharge the ‘ultimate burden imposed upon it, of proving its case’. I accept this proposition to some extent. The ultimate burden of pressing the non use application falls to the non use applicant, however, the initial evidentiary burden rests with the opponent. The wording of section 100(1) of the current Act is quite specific as to where the burden lies for establishing there has been use of the trade mark in relation to the goods and services. Whether the opponent has done enough to discharge this onus will be assessed on the basis of the evidence. I note the opponent’s references to Windeyer J in Estex Clothing v Ellis & Goldstein (1966) 116 CLR 254 at 258, however, this is clearly a reference to the onus under the prior Act where the non use applicant did indeed have the burden of establishing its case for non use. The opponent’s onus can be discharged only if use in the relevant period can be established on the balance of probabilities, or on the basis of circumstances preventing that use.

Use during the relevant period

27. Section 100(3)(a) and (c) require that Bisset, or an authorised user, had used the trade mark, or one substantially identical, on the goods and services specified in the registration. It should be noted that mere assertions of use without documentary support are generally given little weight: Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83. Also, evidence may not be persuasive where it consists only of internal company files (Nodoz Trade Mark [1962] RPC 1 (Ch D)) or evidence of a circumstantial nature (Trina Trade Mark [1977] RPC 131).

28.   In addition, the use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. As discussed in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, even a single instance of genuine use will be sufficient to resist an application for removal, however, where the quantum of use is small then that use relied on ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’ (Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7). This would be particularly so in a case such as the current one where the fact that there had been use prior to the relevant period is not in dispute but clear evidence of genuine use during the relevant period, a period which has coincided with a dramatic change in business activity, must be established.

29.   Section 100(3)(a) requires that use of the trade mark can be considered only where there are no additions or alterations that substantially affect the identity of the mark as registered. The evidence submitted demonstrates use of the device in tandem with the word Bisset in one case, or the words Futureproof or Futuregolf. The arrangement of the elements is not consistent across the documents, with the word and device elements in different positions relative to each other, but nevertheless their arrangement suggests to me that the mark is usually used as part of a composite mark. The word elements Futureproof and Futuregolf are usually followed by the letters “TM” although use of the word Bisset is not so indicated. In many cases the device component is present in an unchanged form, is separate and clearly visible, and to most consumers would be identifiable as the mark as registered. While the wave device trade mark is frequently used with other words the fact remains that the device as registered has been used and this would be sufficient to rebut an allegation of non use (see Levi v Shah [1985] RPC 371, George Weston Foods Ltd v Manildra Flour Mills Pty Ltd [1999] ATMO 41). Where the device is used in the CD presentations it appears in the background as three moving concentric circles that spin for several seconds before settling in the configuration of elements shown on the register. Again I would see this as use of the device as registered.

30.    The exception to this is the ‘watermark’ renditions of the device where large parts of the image have been sliced off by the edge of the business cards and stationary. While the device is arguably recognisable as the mark as registered it is altered to such a degree that its identity is substantially affected, as assessed by the usual tests (QH Tours Ltd v The Mark Travel Corporation [1999] ATMO 31, Lawson’s Appn 2001 AIPC 91-693). I do not consider that the device used in this way would constitute use for the purposes of section 100.

31.   In its submissions the applicant argued that the opponent had not used its trade mark in relation to class 9 goods because these goods are only ancillary to the opponent’s engineering services and automation services. I agree that the use of the trade mark on the CDs and Powerpoint presentations falls in this category. There is some evidence, however, that the opponent at some stage offered software applications in relation to automation of business processes under the trade mark. For instance, FutureGolf is described in advertising as ‘a hardware/software solution, developed by Futureproof Solutions Pty Ltd…. which can be applied to all facets of golf resort operations…..’. Certainly the bulk of evidence relates to the provision of engineering and automation services before the relevant period, however, there is sufficient reference to software applications to justify some of the class 9 claim if not the current broad claim.

32.   The opponent filed evidence which it contends demonstrates use of the trade mark before and throughout the relevant period. This evidence consists of Mr Bisset’s business cards under the business name of Futureproof Solutions Pty Ltd. These cards bear the trade mark device but also incorporate the word Futureproof followed by the letters ‘tm’. The watermark effect previously described is also present. The trading address shown on each card is an address in Joondalup Western Australia in one case, and Mr Bisset’s home address in the other. Mr Bisset has submitted that a number of these cards, in fact 5000 in total, were distributed between April 2002 and 2005 although there is no corroborating evidence for this statement. Evidence such as printer’s orders, invoices, receipts, or other dated records relating to the ordering or supply of these cards could be expected to support such a statement. Blank letterhead stationery bearing the combination Futureproof and device trade marks and listing the Joondalup trading address at the bottom of the page is included. The partial watermark device is also present.

33.   The opponent also relied on promotional pamphlets detailing its services in one instance and those of the authorised user in two other instances. These also bear the Joondalup address. The trade mark device is used in close proximity to the word Bisset, Futureproof or Futuregolf. These documents are undated, save for a photocopy of one exhibit which carries an indication of copyright in the year 2000. Again there is no evidence in the form of invoices or receipts, and no placed advertisements in trade publications, advertising directories and the like. The evidence of the business cards, promotional brochures and stationery shows there has been use at some point but does not demonstrate use in the relevant period.

34.   Also submitted is a hard copy of a Powerpoint presentation, undated but showing the device in close association with the word Bisset and again with Futureproof. The presentation lists the major contracts which either or both companies have been associated with. I note that these contracts cover the period of 1994 up to 2000 but no later. There are two CDs containing an audiovisual presentation of Futureproof’s activities. Again these are undated but the file history shows that they were last updated in 2000 and 2001 respectively. The opponent has provided a list of companies to whom it was claimed the compact disc presentation had been made but I note there is no express statement that these presentations occurred during the relevant period.

35.   The opponent has presented copies of four letters written on Futurproof letterhead and addressed to different local Western Australian businesses. These letters carry dates in 2002 and 2005 and are written in relation to Futureproof accepting goods and or services offered by the other businesses. These four letters are signed by Mr Bisset himself.  These letters appear to comprise the only evidence that is clearly dated within the non use period, however, there is no indication they were dispatched or received by the addressees. The other issue I note with these letters is that three of them appear to bear an incorrect address for the opponent. Mr Bisset, in his second declaration, states that he left his Joondalup place of business ‘on or around 12 December 2002’ and relocated Bisset to [address in WA]. ‘In March 2003 Aussie Cash moved into the former Bisset offices as tenants, and retained the telephone number formerly belonging to Bisset’. Despite this, three of the four letters submitted as evidence of trading activity for Bisset are dated 2005 and still carry this Joondalup address and also the phone number for this address. This seems a relevant point when the issue of genuine trading activity is being considered. A business that was genuinely trading could be expected to send correspondence with correct contact details as soon as there was a change of business address or at least shortly after.

36.   In addition, the content of these letters are such that the addressee companies are being asked to supply IT services to Futureproof rather than there being any offer to trade from Futureproof or any reference to the services provided by Futureproof. The opponent claimed that the letters contained the elements of a contractual agreement between the parties and further, were corroborating evidence for ongoing web site useage by Bisset. The non use applicant has referred to the fact that the opponent has claimed the letters indicate a contractual arrangement was in existence between the parties but no evidence of the actual agreement has been forthcoming, nor was there any update to the opponent’s website until 14 June 2005 (as shown by the Wayback machine evidence in Bisset’s second declaration) despite the letter of 23 December 2002 being a contractual agreement that the web design company proceed with the design of the ‘new look’ simplified website for both Bisset and Futureproof.

37.   To the extent that the correspondence carried the opponent’s trade marks, this use does not constitute use in relation to the provision of the goods and services claimed, and therefore does not support the opponent’s case.

38.   At the hearing Mr McCormack reiterated the opponent’s claims that use had occurred during the relevant period and presented a Powerpoint demonstration via a CD which had formed part of the evidence in support. Also submitted were copies of Business Activity Statements for Futureproof for the periods October 2004 – December 2004 and January 2005 – March 2005. Whilst these statements may indicate some form of minimal business activity they do not confirm the nature of that activity nor the circumstances or extent of the trade mark use.

39.   The only documents submitted claiming to show the trade mark in use are internal company documents and there has been no corroborating documents from external sources presented. Neither has the opponent submitted any supporting declarations from those in the trade declaring as to use. If there had been any use during the period then it should have been a relatively easy task to produce copies of enquiries from potential customers in response to the distribution of pamphlets or business cards, or declarations attesting to dealings with the opponent in even small measure.

Authorised use

40.   Mr Bisset, in his first declaration, stated that the trade mark was used by his company and a subsidiary company described as an authorised user. ASIC reports were submitted to support this contention.

41.   Section 8(2) provides that use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark. The concept of control is defined in subsection 8(3) and (4) to include;

the exercise of quality control over the goods or services in relation to which the trade mark is used; and

the exercise of financial control by the trade mark owner over the other person’s relevant trading activities.

The critical element to authorised use is therefore control of the use of the trade mark.

42.   The non use applicant’s submissions claimed that there was no relevant control established by the opponent to qualify Futureproof as an authorised user. It is a fact that there was no evidence of agreements between the companies to formally acknowledge the intellectual property of the opponent and its use by the other company, however, in the given circumstances of the matter this may not be relevant.

43.   The ASIC reports show that Mr Bisset is the managing director of both Bisset and Futureproof and he and his wife are the only shareholders in both companies in equal proportion. Mr Bisset has held his office since each company’s inception in 1985 and 2000 respectively. In the circumstances it would be difficult to see a situation where Futureproof’s use of the trade mark were not authorised and controlled by the opponent. I note several indirect references to this control on business operations through the notation of copyright of the Futureproof presentation CDs belonging to Bisset Automation in 2001. Whilst this is not indicative of trade mark control it does indicate that Bisset is in a position to control the material presented by Futureproof to potential customers. Consequently, despite the lack of formal documentation to support the assertion of authorised use I find that, in the particular circumstances of this case, the necessary control over use of the trade mark in relation to the goods and services did exist.

44.   Whilst I am satisfied that Futureproof was an authorised user of the trade mark I am not of the opinion that the evidence demonstrates that Bisset or Futureproof was ready and willing to supply its goods and services to the marketplace between April 2002 and April 2005. In the words of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR at 179, the owner can only have used the mark ‘where it can be seen objectively to have committed itself to using the mark, ie to carrying its intention to use the mark into effect’. The probative evidence relates to use prior to the relevant period and what little evidence there is that is clearly dated from within the relevant period does not convince me that there was a clear intention to engage new customers or actively promote the goods and services. Whilst the Bisset web site was maintained throughout the relevant period there was no use of the trade mark on this site. There is no evidence of an active link to the Futureproof website although clearly the button for the link existed on the Bisset site. The mere presence of a button on the Bisset site offering to take users to the Futureproof site does not indicate an intention to trade without more evidence that the company was actually trading or offering to trade during the relevant period. I cannot infer a continuation of the business activity that existed prior to 2001, during the relevant period, on the basis of the material before me. I am therefore not satisfied that the opponent has done enough to discharge the onus placed upon it by section 100 of the Act.

Registrar’s Discretion

45. The opponent finished its submissions by stating that this was a circumstance where the Registrar’s discretion under section 101(3) should be exercised to not remove the trade mark from the register. The basis of this exercise was the special circumstances that Mr Bisset found himself in from October 2001 when his son was killed in an accident and the consequent health problems that he and his wife have since experienced. There was sufficient medical support for this assertion, and this was also a likely interpretation from the abrupt ‘contraction’ of business activity for both Bisset and Futureproof at about that time.

46.   Subsection 101(3) provides the Registrar with the discretion not to remove a trade mark from the Register. Deputy Registrar Helen Hardie, in Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411 at 418 described the circumstances under which such a discretion might be exercised:

Under section 101(3) the registrar needs to be ‘satisfied that it is reasonable’ to leave a mark on the register even when the grounds on which the removal application is made have been established. This requires the registrar to be satisfied that there is a sufficient reason for leaving it there. The reason would need to be based on special facts and circumstances, or an overriding question of public interest. The onus for showing that those circumstances exist, is on the opponent to the removal application.

47.   Mr McCormack’s submissions and the evidence indicate that the trade mark was in use on some of the goods and services nominated in the registration up to some point in 2001.  

48.   The evidence is strongly suggestive of the fact that it was never the opponent’s intention to abandon its trade mark or even to wind up its business activities as it was an actively expanding business employing a number of staff up until 2001. Some of the material printed in 2000 listed the applicant as one of Australia’s fastest growing top 100 private companies and referred to other small business awards. The evidence also contained a record of the contracts with customers prior to and including 2001. The value of these contracts at that time was substantial. While it seems clear that the opponent and its subsidiary have ‘drifted’ for several years due to the inattention of the managing director, the company registrations have been maintained, a web presence has been maintained for Bisset, and there is evidence of basic trading activity provided through the taxation statements. On the basis of the material provided I can also infer the opponent’s reputation in its specialised market prior to the relevant period, although how much of this reputation remains after the contraction of the business activity cannot be concluded from the evidence. This reputation may be reinvigorated by new trading activity and promotion as demonstrated by the recently updated Futureproof website.  I accept that the dramatic change in the opponent’s personal circumstances occurred at a critical time in terms of the non use period. However, it seems clear that there is a public interest in retaining a trade mark registration for the goods and services it has established some use and significant reputation in prior to the change in the owners personal circumstances.

Conclusion and Costs

49. I find that the opponent has not discharged the onus placed on it under the Act of showing why trade mark registration number 832946 should not be removed. However, I am also of the opinion that there is sufficient reason to exercise the Registrar’s discretion and allow the registration to remain on the Register for the following goods and services;

Class 9: Computer software and hardware, for use with instrumentation, controllers, sensors for project management, instrumentation and process control, network integration, operation of engineering specifications, hazard and operability studies, commissioning of plant and business processes, management and control of buildings, management and control of facilities (such as golf courses, sporting and entertainment stadiums, swimming pool and aquatic facilities, convention centres and concert halls), and training

Class 42: Consultancy services in this class in the use of computer hardware and software for use in relation to business automation; computer programming services, computer maintenance services, computer software updating services, computer software design; computer system analysis; consultancy services in the fields of engineering, management and design; engineering services relating to computer hardware, software and instrumentation for the purposes of control and management of industrial and mineral processing, buildings and facilities; all of these services being provided in relation to business automation

50.   As to costs, I note from the Office files that the applicant wrote to the opponent on the 13^th November 2007 and attempted to negotiate the above limitation in the broad claim of goods and services of the registration. The opponent refused this offer. In such circumstances the applicant is entitled to its costs. I direct that the opponent pay the costs of the non use applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

51.   I will allow 21 days from the date of this decision for the opponent to request an amendment to the specification of goods and services as nominated above at paragraph 49. If the Registrar has been served with a notice of appeal before that time, I direct that removal shall not occur until the appeal has been decided or discontinued. If no request for an amendment is received, and the Registrar is not served with a notice of appeal in that timeframe, registration 832946 will be removed from the Register.

Rowena Beal

Hearing Officer

Trade Marks Hearings

12^th  August 2008