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

1. 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’)

2. 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’)

3. 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.

4. 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’).

1. 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’).

1. 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

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with removal of trade marks from the Register due to non-use.

2. 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 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;

3. The onus of rebutting an allegation made under s 92(4)(a) lies with the Removal Opponent. This onus is pursuant to s 100 of the Act which provides:

   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)  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; or

   […]

   (2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before 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 in relation to those goods or services before 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 before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

4. In the SGP the Removal Opponent relies on its intention in good faith to use the Trade Mark in Australia or authorise the use of the Trade Mark in Australia or to assign the Trade Mark to a body corporate to a body corporate for use by the body corporate in Australia in respect of the Removal Goods as at the filing date of the Application on 29 June 2018 (‘Relevant Date’).

5. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

6. Though the onus is, in terms of section 100 of the Act, on the Removal Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed:

   [,,,] 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. Again, I do not think that “intention” in this connexion ought to be regarded as meanings an intention to use immediately or within any limited time. [2]

   [2] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALIR 242, [21].

7. While this observation was made in a proceeding under the Trade Marks Act 1955 (Cth), where the onus was on an applicant for removal, the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd, Hearing Officer Forno said:

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. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[3]

[3] [2000] ATMO 31.

1. In accordance with s 101 of the Act, if the grounds for partial removal are established, I may decide to partially remove the Trade Mark from the Register in respect of any or all of the Removal Goods, or, if satisfied it is reasonable to do so, decide not to partially remove the Trade Mark from the Register.

Discussion

1. The Removal Opponent is an Australian company established in 1965 and is a wholesaler and manufacturer of fasteners, screws and other metal hardware products for the industrial, roofing, construction, petrochemical and retail trade markets. The Removal Opponent’s products are used in major Australian skyscraper, bridge, mining and critical infrastructure projects and are sold through national retailers including Bunnings Warehouse, Mitre 10 and Stratco.

2. In Augimeri, Mr Augimeri states that the Removal Opponent’s intention at the filing date, and continuing to the present day, is to use the Trade Mark as the brand name for a range of metal hardware products with a particular anti-corrosive coating. Mr Augimeri states the Removal Opponent never had an intention to limit the use of this brand to items of metal hardware of a particular size. Rather the Removal Opponent envisioned and continues to envision the applicability of the Trade Mark to metal hardware for which anti-corrosion is a desirable property.

3. Mr Augimeri declares that the Removal Opponent manufacturers and sells an extensive portfolio of metal hardware items that range in size from small to large. Exhibit MA-2 to Augimeri comprises a screenshot from Bunnings Warehouse website dated 17 December 2021. The screenshot shows the Removal Opponent’s 40-millimetre screws offered for retail sale. Exhibits MA-3 and MA-5 to Augimeri comprises screenshots from the Removal Opponent’s website dated 17 December 2021. Exhibit MA-3 provides a sample of the Removal Opponent’s threaded rod products with lengths ranging from 1 metre to 3.6 metres. Exhibit MA-5 provides a sample of the Removal Opponent’s bolt range including stud bolts up to 1.125 metres long.

4. Exhibits MA-4 and MA-6 to MA-14 to Augimeri are photographs of the Removal Opponent’s national distribution centre and showroom taken by its employees on 16 December 2021. The photographs show a selection of the Removal Opponent’s small and large metal hardware products including stud bolts, hold down bolts, U bolts, hot forged bolts, stud bars, hoop iron, brackets, turnbuckles and chains.

5. Mr Augimeri also makes the following observations of industry practice in relation to metal hardware goods:

• it is common for manufacturers in the metal hardware industry to manufacture and sell metal hardware goods of all sizes;[4]

• it is common for retailers to display metal hardware goods of all sizes in close proximity, such that small and large metal hardware goods are often displayed adjacent to one another or in the same aisle;[5] and

• it is plain that metal hardware product of all different sizes are used together in construction projects.

  [4] Augimeri [14] to [16], Exhibits MA-15 to MA-17.

  [5] Augimeri [17] to [20], Exhibits MA-18 to MA-21.

1. In my assessment, the Removal Opponent has filed the Application for trade mark registration, and Mr Augimeri has made a clear statement that the Removal Opponent had an intention in good faith to use of the Trade Mark as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.

2. The Removal Applicant’s submissions submit that the Removal Opponent’s statement in Augimeri does not specifically states that the Trade Mark was intended to be used in relation to all of the goods covered by the trade mark registration.

3. The Removal Applicant submits that Exhibits MA-2 to MA-14 to Augimeri were obtained on 16 and 17 December 2021, and do not establish that large items of metal hardware were part of the Removal Opponent’s product range as at the Relevant Date or that such goods were part of the Removal Opponent’s range as of 29 March 2021.

4. The Removal Applicant provides a list of 17 trade mark applications filed by the Removal Opponent in the years leading up to and following the Relevant Date.[6] The Removal Applicant argues that from at least 2017 the Removal Opponent has filed trade mark applications in class 6 for a variety of trade marks which cover not only its core goods of interest being items of metal hardware such as bolts, screws, fasteners and rivets, but also a general much broader claim for metal building materials in class 6.

   [6] See Annexure A.

5. Exhibits 2, 3 and 5 to O’Donnell comprises copies of the Removal Opponent’s product catalogues and pamphlets, dated between 2011 to 2013.  The Removal Applicant submits that the actual use of its trade marks 1506219 B8; 722122 TOPGRIP; 1506218 REVOLUTION B8; 973049 BG; 802049 ARMOURCOAT; 2031459 VORTEX and 2031460 MULTIONE, do not extend across the whole range of the Removal Opponent’s product catalogue.

6. In my assessment, the Removal Applicant has provided no basis either in the form of evidence or submissions for me to conclude that the clear evidence given by Mr Augimeri as to the intention of the Removal Opponent at the Relevant Date to be false or inaccurate.  

7. I note that the Removal Opponent’s evidence includes photographs, which show a sample of its small and large metal product range, which are dated after the Relevant Date. However, the product catalogues provided by the Removal Applicant are dated between 2011 and 2013 being 7 to 5 years before the Relevant Date and do not provide an accurate picture of the Removal Opponent’s product range as at the Relevant Date. 

8. The Removal Opponent has been a manufacturer and wholesaler of engineering products sold in industrial, roofing, building, construction, petrochemical and retail trade markets for over 55 years. These products include fasteners and hoop iron in a range of sizes as well as goods other than metal including pvc wall plugs and sealants. The Removal Opponent’s operations also include product development teams that monitor industry trends and end user needs[7] and I am satisfied that any resulting innovation could expand the Removal Opponent’s product range of metal materials with application in the building and construction industry.

   [7] O’Donnell, Exhibit 8.

9. Noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use the Trade Mark for the Removal Goods and the Removal Applicant has provided insufficient evidence or submissions to suggest otherwise.

10. The grounds for partial removal under s 92(4)(a) of the Act have not been established in relation to the Removal Goods.

Decision

1. The Removal Applicant has been unsuccessful in its Application. I direct that trade mark registration 1937804 is to remain on the Register for all of the Registered Goods. If the Registrar is served with a notice of appeal within the relevant timeframe, I direct that the disposition of the Application should be in accordance with the Court’s order or direction. 

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Applicant under s 221 of the Act in line with Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

9 August 2023

Annexure A

Number	Trade Mark	Filing Date	Goods
722122	TOPGRIP	18 November 1996	Screws; metal hardware including nuts, bolts and washers
802049	ARMOURCOAT	29 July 1999	Small items of metal hardware including threaded fasteners
973049	BF	3 October 2003	Small items of metal hardware; fasteners
973050	B4	3 October 2003	Small items of metal hardware; fasteners
974082	VORTEX	13 October 2003	Metal building materials in this class; small items of metal hardware including thread fasteners; goods of common metal not included in other classes; all the foregoing excluding waterproof membranes, pipes and containers for underground drainage and seepage, made of metal
1506218	REVOLUTION B8	1 August 2012	Small items of metal hardware being thread fasteners and self-drilling screws
1506219	B8	1 August 2012	Metal building materials in this class; small items of metal hardware including thread fasteners; goods of common metal not included in other classes
1684679	B4	31 March 2015	Metal building materials in this class; small items of metal hardware including thread fasteners; goods of common metal not included in other classes
1710350	B8	29 July 2015	Self drilling screws for metal and timber excluding bolts and threaded bars
1841820	SHARKS TOOTH	2 May 2017	Metal materials for building and construction; small items of metal hardware including fasteners and screws
1920448	MADDOX	17 April 2018	Metal materials for building and construction; small items of metal hardware including fasteners and screws
1920449	FIXCONN	17 April 2018	Metal materials for building and construction; small items of metal hardware including fasteners and screws
1989029	SUREQUIK	13 February 2019	Metal materials for building and construction; small items of metal hardware including fasteners and screws
2031459	VORTEX	20 August 2019	Small items of metal hardware; screws; bolts; nuts; fasteners and parts therefor in this class; washers; hardware anchors; rivets; fixtures and fittings of steel or alloy
2031460	MULTIONE	20 August 2019	Small items of metal hardware; metal materials for building and construction; screws; bolts; nuts; fasteners and parts therefor in this class; washers; hardware anchors; rivets; drill bits; iron mongery; pipes and tubes of metal; non-electric cables and wires of common metal; fixtures and fittings of steel or alloy
2109665	ULTRA FAST	6 August 2020	Small items of metal hardware; metal materials for building and construction; screws; bolts; nuts; fasteners and parts therefor in this class; washers; hardware anchors; rivets; drill bits; iron mongery; pipes and tubes of metal; non-electric cables and wires of common metal; fixtures and fittings of steel or alloy
2117325	ENVIRO PACK	3 September 2020	Small items of metal hardware; metal materials for building and construction; screws; bolts; nuts; fasteners and parts therefor in this class; washers; hardware anchors; rivets; iron mongery; pipes and tubes of metal; non-electric cables and wires of common metal; fixtures and fittings of steel or alloy