Bremick Pty Ltd v SSAB Technology AB - [2023] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by Bremick Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by SSAB Technology AB for partial removal of trade mark number 1937804 (6) – GREENCOAT – in the name of Bremick Pty Ltd

Delegate:

Louise Tuohy

Representation:

Removal Opponent: not represented

Removal Applicant: Michael O’Donnell of Phillips Ormonde Fitzpatrick

Decision:

2023 ATMO 110

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(a) application for partial removal – intention to use demonstrated – opposition to partial removal application successful

Background

Bremick Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:
Registration Number:  1937804
Trade Mark:  GREENCOAT (‘Trade Mark’)
Filing Date:  29 June 2018
Specification:  Metal materials for building and construction; small items of metal hardware including fasteners and screws (‘Registered Goods’)
On 29 April 2021 SSAB Technology AB (‘Removal Applicant’) filed an application (‘Application’) seeking partial removal of the Trade Mark from the Register for non-use. The goods sought to be removed from the specification are listed below:
Metal materials for building and construction excluding small items of metal hardware including fasteners and screws (‘Removal Goods’)
On 1 July 2021 the Removal Opponent filed a Notice of Intention to Oppose the partial removal of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 2 August 2021. On 5 October 2021 the Removal Applicant filed a Notice of Intention to Defend the Application.
The Removal Opponent filed the following declaration as evidence in support (‘EIS’):

Declaration of Matthew Augimeri, Manufacturing and Supply Executive of the Removal Opponent, made on 21 December 2021 with Exhibits MA-1 to MA-21 (‘Augimeri’).

The Removal Applicant filed the following declaration as evidence in answer (‘EIA’):

Declaration of Michael O’Donnell, Principal of Phillips Ormonde Fitzpatrick the Removal Opponent’s representative, made on 16 February 2022, with Exhibits 1 to 8 (‘O’Donnell’).

Once time for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. On 4 May 2022 the Removal Applicant requested a hearing by written submissions. The matter was set down for a hearing and the matter was allocated to me. Michael O’Donnell of Phillips Ormonde Fitzpatrick filed written submissions on behalf of the Removal Applicant on 14 March 2023. This record consists of the Application, SGP, the EIS, the EIA and the written submissions filed by the Removal Applicant.

Legal Framework

Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with removal of trade marks from the Register due to non-use.
The Removal Applicant nominated s 92(4)(a) of the Act as the ground for partial removal. Section 92(4)(a) provides:
(4) An application under subsection (1) or (3) (non‑use application) may be made…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 110
Decision Date: 8 August 2023

CaseChat Overview and Summary

Bremick Pty Ltd, the registered owner of the trade mark GREENCOAT, successfully opposed an application by SSAB Technology AB for the partial removal of the trade mark from the Register. SSAB Technology AB sought to remove the trade mark in relation to "Metal materials for building and construction excluding small items of metal hardware including fasteners and screws," arguing non-use. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether SSAB Technology AB had established grounds for the partial removal of the trade mark under section 92(4)(a) of the *Trade Marks Act 1995* (Cth). This section requires proof that, on the filing date of the trade mark application, the applicant had no intention in good faith to use the trade mark in Australia, or authorise its use, in relation to the specified goods, and that the registered owner had not used the trade mark in good faith in Australia in relation to those goods prior to the relevant period. The onus was on Bremick Pty Ltd, as the removal opponent, to rebut these allegations.

The delegate found that the onus on a removal opponent under section 92(4)(a) is not arduous, particularly when the opponent provides a clear statement of its intention to use the mark. Bremick Pty Ltd provided a declaration from its Manufacturing and Supply Executive stating an intention to use the GREENCOAT trade mark as a brand name for a range of metal hardware products with an anti-corrosive coating, without limiting its application to items of a particular size. Evidence was presented demonstrating Bremick's manufacture and sale of both small and large metal hardware items, and industry practice supported the commonality of such a product range. The delegate concluded that Bremick Pty Ltd had satisfied its onus in showing an intention to use the trade mark for the goods in question, and SSAB Technology AB had provided insufficient evidence to suggest otherwise.

Consequently, the delegate determined that the grounds for partial removal under section 92(4)(a) had not been established. The application for partial removal was unsuccessful, and the trade mark registration was directed to remain on the Register for all registered goods. Bremick Pty Ltd was awarded costs against SSAB Technology AB.

Orders