Bodiguard Pty Ltd v Draeger Safety UK Ltd

[2018] ATMO 127

TRADE MARKS ACT 1995

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

Re:Opposition by Bodiguard Pty Ltd to application under section 92 of the Act by Draeger Safety UK Ltd to remove trade mark number 1552494 (9, 42) - BODIGUARD - in the name of Bodiguard Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: Watermark
Decision:	2018 ATMO 127 Trade Marks Act 1995 Section 96 opposition to application for removal under para 92(4)(a): Opponent intended to use the Trade Mark: opposition to removal application established

Background

1. In these proceedings Draeger Safety UK Ltd (‘the Applicant’) applied on 18 August 2016 under paragraph 92(4)(a) of the Trade Marks Act 1995 (‘the Act’) for the removal from the Register of Trade Marks of the trade mark which appears below:

Registration No:         1552494

Priority Date:             26 April 2013

Goods/Services:         Class 9: Audio and video receivers; Automatic emergency reporting devices; Electronic surveillance apparatus; Electronic surveillance apparatus for articles; Emergency call telephone apparatus; Global positioning system (GPS) apparatus; Video surveillance apparatus; Video surveillance cameras; Devices for converting image information to digital signals for computers; Visual monitoring apparatus; Security surveillance apparatus; Electronic hardware for image processing; Signalling apparatus for use in emergencies; Panic buttons; Target surveillance apparatus (satellite); Telecommunications devices; Television cameras for surveillance; Transmitters being emergency electrical communications apparatus; Transmitters for use in emergency communications; Apparatus for recording; Video devices; Communications devices; Intercommunication apparatus; Microphones; Remote control apparatus; Magnetic data carriers; Recording discs; Data carriers for use with data processing apparatus; Data carrying materials; Data compact discs; Connecting devices for data collection; Connecting devices for data transfer; Sensors for real time data input apparatus; Sensors for real time data output apparatus; Data processing equipment; Computers; Real-time data processing apparatus; Data communications hardware; Data processing apparatus; Computer software; Application software; Computer software for business purposes; Computer software packages; Computer software products; Computer software programs; Interfaces between application programs and firmware on real-time computers

Class 42: Development of electronic surveillance apparatus; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Provision of information relating to information technology; Computer security services (design and development of secure computer hardware, software and systems); Computer security services (programming and software installation repair and maintenance services); Computer security services (testing and risk assessment of computer networks)

Trade Mark:               BODIGUARD

(‘the Trade Mark’)

1. On 23 September 2016 the owner of the Trade Mark, Bodiguard Pty Ltd (‘the Opponent’), filed a Notice of Intention to Oppose the removal followed, on 26 September 2016, by a Statement of Grounds and Particulars.

2. On 22 November 2016 the Applicant filed a Notice of Intention to Defend.

3. On 24 March 2017 the Opponent filed its Evidence in Support being a declaration by Jamie Polkinhorne, Director of the Opponent.

4. Both parties have been advised of their right to be heard or to make written submissions; the Opponent has done neither and the Applicant has filed written submissions by its attorneys, Watermark.

The Evidence

1. In his declaration Mr Polkinghorne, for the Opponent, states:

   Bodiguard is a trading entity undertaking exploratory work in security technologies;

   Has been engaged to develop personal security devices and software to protect and support lone workers;

   Has invested in and is developing working prototypes and pilot software for testing application.

Legal Framework

1. Section 92 of the Act relevantly provides:

   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)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)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 to which the non‑use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

2. Section 100 of the Act relevantly provides:

   100Burden 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)any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)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 to which the opposed application relates (relevant goods and/or services); or

   (b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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. Accordingly, the onus is on the Opponent to establish either:

   At the time of filing the application for registration of the Trade Mark (26 April 2013) it had an intention to use it in good faith in relation to the Impugned Services; or that

   It used the Trade Mark in relation to the Impugned Services before 18 July 2016 (ie one month before the filing date of the application for removal).

4. As regards the nature of the onus born by the Opponent, subsection 101(1) provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

5. In Blount Inc v Registrar of Trade Marks[1] Branson J stated of the word ‘satisfied’:

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   [1] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

6. I further note now that in terms of sections 92(2)(a) and (3) of the Act:

   The application for removal has been made in accordance with the regulations;

   The Registrar has not been notified of an action concerning the trade mark pending in a prescribed court.

Consideration

The Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The BODIGUARD trade mark is the registered trade mark for the parent company BODIGUARD Pty Ltd.  BODIGUARD Pty Ltd is an ongoing concern of more than 3 years with tens of thousands of hours invested into marketing the brand and the trade mark is what clients associate with the company.

Submissions

1. The Applicant’s submissions are that:

   The onus is on the [O]pponent (Bodiguard Pty Ltd) to establish its case, namely that it had a bona fide intention as at 26 April 2013 to use the BODIGUARD mark in relation to all the goods and services covered by the then application to register the BODIGUARD mark and that it has actually used the mark in relation to all the registered goods and services or there are special circumstances justifying non-commencement of use of the trade mark. As per s100(1), it is for the opponent to validly rebut the non-use allegations made by the Applicant.

   The act of filing an application for registration of a TM is in and of itself not evidence of an intention to use the TM, Aston v Harlee Manufacturing Co (1960) 103 CLR 391 [(Tastee Freez case)].

   Furthermore, it is also accepted law that ‘an uncertain or indeterminate possibility’ or ‘speculative intention’ to use will not be sufficient to establish the required intention in good faith to use the sign as a TM in relation to the goods / services, see eg Optical 88 Pty Ltd v Optical 88 Pty Ltd (No 2) 89 IPR 457.

   Equally, and acknowledging that the registered owner carries in its company name the word ‘Bodiguard’, the mere fact that the registered owner’s name includes the sign ‘Bodiguard’ is in and of itself not evidence nor an indicator that the same sign (Bodiguard) is being used as a trade mark in relation to the relevant goods and services for which the mark is registered; the registered goods and services are extremely expansive and include numerous ‘generic’ goods / services in classes 9 and 42, as noted below.

   The Declaration contains assertions about what the company Bodiguard Pty Ltd is intending to do as at the date the Declaration was made, i.e. exploratory work in security technologies, development of personal security devices and software to protect and support lone workers, and that it has invested in and is developing “working prototypes and pilot software for testing application”. The nature of such products remains fuzzy at best.

   The Declaration does equally not contain any statement that can be construed as indicating that actual use has taken place of the BODIGUARD mark in relation to the goods / services covered by the TM registration.

   Finally, the Declaration does not contain any indications concerning the existence of ‘special circumstances’ that have precluded the owner of the TM registration from commencing use after the registration date of 26 April 2013, ie at the time of making the Declaration, 3 months shy of the initial 5 year ‘grace period for non-use’

Discussion

Intention to use the Trade Mark:

1. The Applicant’s submissions, as far as they relate to the Tastee Freez case, appear to be based upon a misinterpretation of Fullagar J’s judgment; His Honour stated:[2]

   There is another element mentioned by Dixon J. in the Shell Co.'s Case (1949) 78 CLR, at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.[3]

   [Stress added]

   [2] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at [21].

   [3] I note that the current position is that the burden lies on an opponent to a removal application.

2. And in Secondment Pty Ltd v MCI Group Holdings SA[4] the Registrar’s delegate observed:

   The act of applying for a trade mark is prima facie evidence of an intention to use it[5], or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Limited[6]: “[A]s possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.” Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark. In Structureco Inc v Starite Distributors Pty Ltd the Hearing Officer found:[7]

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith.

   [4] [2013] ATMO 71 at [9].

   [5]  Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 (at 401).

   [6] Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 at [197].

   [7] Structureco Inc v Starite Distributors Ltd (2000) 49 IPR 209; and see Bunter v Hobarama LLC [2005] ATMO 49; (2005) 67 IPR 216 at 222.

3. In Mr Polkinghorne’s declaration he refers to the investment in time and money that the Opponent has made in its research after the filing date.  These assertions may be taken as reflecting upon the Opponent’s intention to use the Trade Mark at the time of application; therefore I consider more probable than not that this continuing intention to use the Trade Mark reveals its intentions at the Trade Mark’s filing date.  In Conde Nast Publications Pty Ltd v Virginia Taylor[8] Burchett J observed:

   But it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

   [8] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (at 509).

Use of the Trade Mark

1. I consider that the Applicant’s submissions concerning the use of the Trade Mark may be based upon a misapprehension of the way in which section 92(4)(a) operates. To defeat an application under section 92(4)(a) an opponent need assert either intention to use the trade mark in question at the date upon it was filed (‘intention’) or establish that it has used the trade mark in the period ending one month before the application for removal was filed (‘use’).

2. The word ‘and’ within the expression ‘in relation to the goods and/or services to which the non‑use application relates and that the registered owner …’, which occurs within section 92(4)(a), is capable of being read either conjunctively or disjunctively. If it were to be read conjunctively, a registered owner would have to prove both intention and use; however, if it were to be read disjunctively, a registered owner would need to establish either intention or use.

3. The disjunctive operation of the word ‘and’ within section 92(4)(a) is affirmed by the use of the word ‘or’ within phrase ‘in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or …’ that occurs between sections 100(1)(a) and 100(1)(b) of the Act which casts the onus onto an opponent in establishing its opposition to removal under either of these provisions.

4. It follows that if a registered owner establishes either intention or use, it will found its opposition to an application for removal under section 92(4)(a).

5. Here, the Opponent has established intention to my satisfaction.

Decision

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. As the Opponent has founded its ground under section 92(4)(a), I am not satisfied that the ground on which the application was made has been established.

3. The opposition to removal has been established.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
10 August 2018