British Telecommunications v Telstra Corporation Limited

[1998] ATMO 22

TRADE MARKS ACT 1955

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

Re:Application by British Telecommunications Plc to remove trade mark registration 443769 from the Register,  and opposition to that removal by the registered owner, Telstra Corporation Ltd

Trade mark 443769 is the word skyphone, registered in class 38 for aeronautical telecommunications services.  The trade mark has been registered since 15 April 1986.  It stands in the name of Telstra Corporation Limited.  It stood previously in the names first of The Overseas Telecommunications Commission (Australia), and then in the name of OTC Limited.

On 11 May 1994, British Telecommunications Plc applied to have this mark removed from the Register under the terms of section 23 of the Trade Marks Act 1955.  It claims to be a person aggrieved  It seeks removal of the trade mark skyphone, the subject mark of 443769(38).  The first ground is that skyphone was registered without an intention that it should be used and that it has not been used.  The second ground is that for the three years from 11 April 1991 to 11 April 1994, Telstra Corporation Limited did not use the trade mark skyphone.  

Both sides filed their evidence, and, on 13 March 1998, the opposed removal action was heard before me in Sydney. The removal applicant, British Telecommunications Plc (hereafter British Telecom) was represented by Mr David Yates of Blackstone Chambers, instructed by Mr Sean McManis of Shelston Waters, Patent and Trade Mark Attorneys of Sydney. The opponent, Telstra Corporation Limited (hereafter Telstra) was represented by Ms Annette Freeman of Spruson and Ferguson, Patent and Trade Mark Attorneys of Sydney.

This application to remove skyphone from the Register was lodged under the provisions of the Trade Marks Act 1955, and it was pending immediately before 1 January 1996. Consequently, in accordance with section 251 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to apply.  Any further reference to the Act will therefore be to the Trade Marks Act 1955.

The evidence

In all, there are ten declarations in evidence.  They are as follows.

British Telecom’s evidence in support of the removal application

Anthony Gregory Mulcahy          7 November 1995     with exhibits 1-2
Kenneth James Taylor                17 January 1996       ............................................. Taylor(1)
 Paul Murton  29 January 1996       ........................................... Murton(1)
Katherine Ann Howett Thorpe     3 July 1996              ............................................ Thorpe(1)
Kenneth James Taylor                24 July 1996            ............................................. Taylor(2)
Katherine Ann Howett Thorpe     2 August 1996         with exhibit 1........................ Thorpe(2)

Telstra’s evidence in answer

Peter Dwyer  8 January 1997
David Brooks  20 January 1997       with annexures A-H

British Telecom’s evidence in reply

Paul Sydney Murton                27 October 1997     with exhibits PSM1-PSM9..... Murton(2)
David Thomas Wilson              28 October 1997

Person Aggrieved

The first question is whether or not British Telecom is a person aggrieved.  It claims this standing by virtue of its pending trade mark applications, 526370 and 526382.  Both applications are for the word skyphone - 526370 is in respect of a wide statement of goods in class 9, largely electrical, electronic and optical signalling, radio and telecommunications apparatus. 526382 was an application to register the trade mark in respect of class 38 services, for another wide statement which here encompasses a range of telecommunication, transmission, broadcasting and radio services.  These applications are now merged and are proceeding under number 526370 in classes 9 and 38.  Mr Murton, in Murton(1), declares British Telecom’s intention to use skyphone in respect of all these services.  Ms Freeman concedes that British Telecom stands as a person aggrieved. 

Taking account of British Telecom’s pending trade mark application and its unchallenged statement of intended use, it seems to me that British Telecom has established a business interest that is likely to be affected by the continued registration of 443769.  I too accept that British Telecom stands as a person aggrieved.

The Prima Facie Case

Justice Windeyer in Estex v Ellis & Goldstein[1] states:

[1] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd  (1966) 116 CLR 254 at 258

It is for an applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period … slight evidence may suffice at this stage, for the applicant has the task of proving a negative …  but ... when all the evidence is complete, the question is still, has the applicant proved his case?   

The prima facie evidence in this case is challenged by Ms Freeman.  She submits that it does not meet the test. 

The evidence constituting the prima facie case is set down in four declarations - Mulcahy,  Taylor(1) and Thorpe(1) and (2).

Mr Mulcahy is managing director of a company called Navitron Avionics Pty Ltd.  He has held similar positions with this company for some 22 years.  In all he says he has had 40 years’ experience in the avionics industry in Australia, dealing with airline companies, with military aviation and with general aviation.  He is a licensed aircraft maintenance engineer qualified to carry out repairs, overhauls, modifications and certifications of avionics equipment.  Avionics equipment must be approved by the Civil Aviation Authority. Mr Mulcahy is required to keep his qualifications up to date. He knows of new developments.  Over the years he has encountered use of the trade mark skyphone, but that use was not by Telstra. In the 1950s Mr Mulcahy was aware that an American business used the name. From 1962 to 1994 he knew that another company, Amalgamated Wireless (Australia) Ltd (AWA), used this trade mark in relation to their transceivers.  He declares, however, that he has never known the trade mark skyphone to be used by Telstra.

Mr Taylor manages an investigation agency.  His agency undertook enquiries to discover any use of the trade mark skyphone in the non-use period between April 1991 and April 1994.  Mr Taylor reports contacting a number of people. Mr Stuart Low was one.  He is a systems designer with Optus Communications. He says he has no knowledge of the trade mark. Mr David Campbell was another.  He is a senior technician with Systems Services in Telstra’s Melbourne office. He reportedly told Mr Taylor that Telstra, for some time, had operated a service under the name skyphone.  It is a direct telephone dialling service which operates air to ground, while an aircraft is in flight. The equipment for this service, Mr Campbell told Mr Taylor, is manufactured by Codan Communications, a Victorian company. Mr Taylor then contacted Mr Peter Dwyer, a senior partner with Codan Communications.  Mr Dwyer told him that the equipment used in the skyphone service was approved in about October 1994, and was put into service in about April 1995.

The last declarations that go to establishing a prima facie case are Thorpe(1) and (2).  Ms Thorpe is a solicitor.  She reports that in mid 1996, she visited a number of travel agencies and personally asked staff  at those agencies what they knew of a direct telephone service available to inflight passengers.  She spoke to travel agency staff in Jetset Travel, George Street, Sydney; in the Qantas Office, Hunter Street, Sydney;  and in the Flight Centre in Wynyard, Sydney.   The person she spoke to in Jetset Travel did not know of any such service, and did not know the trade mark skyphone.  The person in the Qantas office did not know the skyphone trade mark and said that Qantas did not have a service of this kind but one was being developed.  The person in the Flight Centre said that an inflight telephone service was available on Singapore Airlines, but did not know what it was called.  He recognised the name skyphone as the name of a service offered by one of the American airlines. Thorpe(2) exhibits a completed questionnaire which merely says that the respondent does not know any trade marks in the telecommunications industry.

Ms Freeman submits these declarations do not establish the slight evidence required by Windeyer J (supra). She says that Mr Mulcahy is not a person with particular expertise in the provision of telecommunications services, that his business is installing equipment, and that, although he may be familiar with the use of trade marks on equipment, he is not qualified to comment on telecommunications services. Further, Ms Freeman suggests that because Mr Mulcahy’s report of AWA’s use of the trade mark skyphone from 1962 was use in respect of transceivers - that is, in respect of goods - he may not have appreciated that the issue here was whether skyphone had been used by Telstra in relation to services.  If so, his replies could be misleading.  She points out that there is only one declaration from the industry, and that is Mr Mulcahy’s.  Moving on to the Taylor declaration, Ms Freeman points to a number of matters.  First, she says that the investigations undertaken by Mr Taylor’s company disclosed that Telstra did use the trade mark skyphone.  Second, she submits that the time this use occurred is not established by the Taylor enquiries. Mr Campbell has only a general recollection of the commencement date. Further, Telstra’s use may have commenced prior to any involvement with Codan Communications - in which case, Mr Dwyer may not know when Telstra started to use the mark skyphone.  Ms Thorpe’s declarations, says Ms Freeman, should be completely discounted because the people she contacted have not been verified as competent to speak about telecommunications services, are not answering in relation to the relevant three year period, and in any case comment only in relation to passenger airline services.  Telstra, says Ms Freeman,  does not claim to have provided skyphone services to airline passengers.

Having considered the evidence and the persons who have provided it, I think that the declarations do add up to the slight evidence necessary to shift the onus onto Telstra.  Mr Mulcahy is an aircraft maintenance engineer with 40 years’ experience with avionics equipment.  He repairs and certifies avionics equipment. To do this he must keep abreast of Civil Aviation Authority approvals of avionics equipment. This is a specialist field and I am prepared to regard Mr Mulcahy as an expert whose qualifications and responsibilities do place him in an appropriate position to comment on the occurrence of trade marks in the avionics industry.  He speaks both of services and equipment and it seems to me quite improbable that a person of his experience would not comprehend the difference between the two.  I reject the suggestion that Mr Mulcahy might have failed to understand the difference between a transceiver and a communications service, and I attach significant weight to his statement that in his experience he has not known Telstra to use the trade mark skyphone.

The Mulcahy declaration is British Telecom’s only declaration from the trade, and while I note findings in the REVUE case[2] that one declaration is not likely to constitute a prima facie case, there is, as well, the evidence of the Taylor(1) declaration.  This evidence indicates that while Telstra now offers a service under the trade mark skyphone, that service was not available till shortly after the relevant three years period. Certainly Mr Campbell is not precise about commencement dates, but he is a senior technician with Telstra with knowledge of Telstra’s skyphone services and accordingly I do give due weight to his report of events. Mr Dwyer, however, of Codan Communications, is more specific.  He reported that approval of the service was not granted till October 1994 - some five months after 11 April 1994, the closing date of the relevant three years - and that the service came into use after that time.  The general enquiry that Mr Taylor’s company  made confirms this. Taken all together, I think that the information in the Mulcahy and Taylor declarations establishes a prima facie case.   I do not put any weight on the Thorpe declarations.

[2] REVUE trade mark [1979] RPC 27

Having come to the conclusion that British Telecom has discharged its onus to show a prima facie case of non-use, I turn now to Telstra’s evidence and the submissions from Ms Freeman that the trade mark should not be removed.

The opponent’s submissions

Ms Freeman began submissions on the substantive matter by mentioning that Telstra had some difficulty locating records for the three years 11 April 1991 to 11 April 1994.  This was due to British Telecom’s failure to serve notice of the removal action until March 1996 - some two years after filing. To some extent at least, she said, British Telecom must be held responsible for some of the difficulties Telstra faced in getting together information for a period as far back as 11 April 1991 to 11 April 1994.

The history of Telstra’s use is set down in the Brooks declaration.  The facts, as I understand them are, that in 1986, when the trade mark application was lodged, it was intended that the trade mark skyphone would be used in respect of a radio-telephone service which allows in-flight passengers (domestic and international) to connect with established networks and make telephone calls to ground destinations. This service required building, developing and staffing a network of ground station facilities to receive and relay radio messages. It also depended on persuading airlines to purchase, install and operate the in-flight facilities. The new technology, moreover, was not fully developed and continuing practical problems included the incompatibility of United States and Australian equipment, and variations in the radio frequencies used within Australia. There was some unwillingness on the part of the airlines to embrace this new service. Nevertheless, according to correspondence exhibited under Brooks annex “B”, in 1988, some limited use of the mark skyphone was achieved on air to ground telephone facilities for the use of air crews. 

In February 1990, twelve months after registration, British Telecom lodged an application to remove it.  Telstra was then on notice of British Telecom’s pending applications for the trade mark skyphone. It decided to wait the outcome of this removal application before putting further effort into promoting skyphone for its new service.  That removal application was refused in 1994 and, says Mr Brooks, Telstra immediately returned to the task of promoting the skyphone service. The marketing direction, in the mean time, appears to have changed with small remote operations being the objective, rather than the passenger airlines.  In Paragraph 8 Mr Brooks says:

Telstra has been running advertisements in alternate issues of a prime aviation magazine, “AOPA” (Aircraft Owners and Pilots Association of Australia), promoting Telstra services for air phone traffic under the trade mark skyphone, in conjunction with advertisements promoting codan high frequency radio equipment.  The codan  radio and the skyphone service have been promoted to pilots, aircraft owners and commercial operators doing business in remote areas of Australia, which need a phone as well as an HF radio.  The markets for this service include any operator that requires phone contact in the outback, any recreational aircraft owners who venture far afield, aircraft operators who are removing obsolete equipment, Government departments who use aircraft in remote areas,  cattle station properties who require inter-station contact and mining companies in remote areas.

Evidence of this use and promotion comes under Brooks per annex “D” in an order form dated 26 April 1995;  annex “E”, in an advertisement for skyphone in AOPA - run from August 1994;  annex “F”, in an AOPA advertisement for codan and skyphone for May 1995;  annex “G”, a Telstra facsimile dated 22 July 1994, confirming use of the trade mark in association with codan products; annex “H”, Telstra memos dated January, May and September 1995 detailing customer enquiries about the skyphone product. 

Ms Freeman submits that on this evidence, the removal application should be denied.  She says that clearly it was always Telstra’s intention that the trade mark skyphone would be used on aeronautical telecommunications equipment, and that it is clear that the mark has been used for that purpose.  In the special circumstances of this trade, however, the nature of the new technology and the special requirements for government approval meant that there was a long lead time before the product could be successfully marketed.  The final developmental stages of the technology had to be achieved, the use of different radio frequencies had to be resolved, clients had to be persuaded to appropriately equip their aircraft,  and the new service had to be successfully promoted. Not least of all, before a service of this kind could be offered and maintained, a ground network with an appropriate administrative infrastructure had to be established.  These, claim Ms Freeman, are special circumstances in themselves.  However, in addition, there is the 1990 British Telecom attack on the trade mark.  The deferment of the plans to promote the trade mark skyphone was a direct result of the uncertainty brought about by this removal attack, and, says Ms Freeman,  the fact of the first removal application constitutes a further special circumstance. 

The applicant’s submissions

Before turning to Mr Yates’ submissions, I think it would be useful to give a brief account of the British Telecom evidence in reply.  There is a second declaration by Mr Murton (Murton(2)) and one by  Mr David Wilson. The facts brought to light in Murton(2) confirm that for some time British Telecom has had an interest in acquiring the trade mark skyphone. Mr Murton claims that British Telecom is a global leader in telecommunications and offers all types of telecommunications products and services. One of its principal trade marks is the word skyphone. The skyphone products were launched in the United Kingdom in 1989 and were first offered by Singapore Airlines in 1991.  Since then the service has become available on other international carriers and plans are afoot to introduce it to Qantas.  Revenue and advertising figures from 1990 to 1997 are substantial and rising, and, with the promotional material exhibited under Murton(2), bear out the significance and  growth of British Telecom’s skyphone service. The evidence in the Wilson declaration responds to Telstra’s claim that it was unaware that British Telecom had an interest in acquiring the trade mark skyphone. Mr Wilson acknowledges that the current removal application was lodged on 10 May 1994, and not served on Telstra until January 1996. However, he says, proposals were put to Telstra’s agents through 1994 and 1995 which made it clear that British Telecom had a continuing interest in acquiring the trade mark.  The material facts put by Mr Wilson are not in contention. Ms Freeman did, however, object that it could not be classed as evidence in reply.  Mr Yates responded that it was in reply to the Brooks declaration, and in particular went to the question of discretion - a matter that I will come to in due course.

I first turn to Mr Yates’ principal submissions supporting the removal action.

Mr Yates, at the outset, broadly criticises the character of Telstra’s evidence. Although the strict rules of court do not apply to matters before the Registrar, evidence, he says, must be probative and declarations comprising mere argument or assertion will not do. Much of the Telstra’s evidence he says, is nothing more than unsupported assertion, and much of Ms Freeman’s submission does not find any expression in the evidence itself.  There is, for example, nothing to show that British Telecom’s delay in serving Telstra with notice of the removal disadvantaged Telstra  in the preparation of its case.  If there was disadvantage, evidence should have been lead - but it was not.  There is nothing save Ms Freeman’s assertion that it did.  Similarly there is no evidence verifying the problems claimed to have beset the new technology, nor any evidence from airline companies of their reluctance to participate in the service. Nor is there evidence of the ground station network. Mr Yates submits that Telstra’s evidence, on the whole, is furnished at a level of generality which is of very little probative use and altogether of dubious worth in determining these proceedings. 

Mr Yates then critically analyzed the Brooks declaration. It is largely by way of this evidence that Telstra seeks to demonstrate its use. Mr Brooks says he commenced work with Telstra sometime in 1994.  Mr Yates’ criticism against the value and relevance of his declaration is broadly as follows.

·   In paragraph 3 Mr Brooks purports to give evidence on the principal reasons for Telstra’s delay in using skyphone  and prays in aid a declaration drafted in the name of Don Koulaouzos (annex “A”). This declaration is not acknowledged by Mr Koulaouzos and there is no explanation why he chose not to execute it. The draft was prepared in 1993 - that is - before Mr Brook was employed by Telstra. Mr Brooks is therefore not able to say from his knowledge whether the statements in that draft are correct- but he nevertheless seeks to adopt it.

·   In paragraph 4, as annex “B”, is a letter to Spruson and Ferguson with pages from the March 1988 edition of Aeronautical Satellite News with mention of the trade mark skyphone.  This letter however is dated 19 April 1988 - well before the relevant period - and the reference there to skyphone is to a service available through British Airways provided by British Telecom. This, says Mr Yates, is no evidence that Telstra used skyphone  within the relevant period.

·   Paragraph 5 annexes (at “C”) more correspondence with Spruson and Ferguson.    This letter, dated 24 January 1990, outlines difficulties with the skyphone service, and indicates that another trade mark, skycoms, is in use. Again, this letter is outside the relevant period.  It is not evidence of use.  Moreover, it  acknowledges non-use of skyphone during the years 1987 - 1990 and predicts no use in the year 1990 - 1991.

·   Paragraph 7 refers to a letter to a Tasmanian customer (annex “D”).  This letter encloses a Telstra Skyphone & Radphone Selcall - Registration Form which bears a print date of 26 April 1994.  Mr Yates submits that a form with a print date on it, is not evidence that the form was in use at that date. At most annex “D” shows that in May 1995, more than twelve months after the relevant period, one such form was mailed out to one customer.  If this form was in use between 11 April 1991 and 11 April 1994, evidence should have been given - but it was not. 

·   Paragraph 8 refers to advertisements run in AOPA[3]. Dates of the advertisements are not specified, no advertisements are in evidence, and, says Mr Yates, the paragraph is largely unsupported.

·   Paragraph 9 refers to an AOPA advertisement annexed “E”.  It bears the date of April 1995. Mr Brooks asserts here that such advertisements ran from August 1994,  but only provides proof of a 1995 advertisement.

·   Paragraphs 10 annexes under “F” advertising material dated May 1995:  paragraph 12 annexes under “H” three inter-office memos dated respectively July 1994, January 1995  and September 1995. None of these dates are within the relevant period.  Further, Mr Yates points to a September 1995 memo.  It is from David Brooks (presumably the declarant) to a Cherrie Parker and contains the comment

[3] Aircraft Owners and Pilots Association of Australia 

2.35 Codan 8528 HF radios have been sold since we launched Skyphone (Apr 95)

This, says  Mr Yates, is a business document. It comes with Telstra’s own evidence, and being a business record is untainted by the need to justify the oppositions.  It indicates that the first use capable of detection was in 1995, and vindicates the information gathered by Mr Taylor[4] which showed that the first use that could be located was use in mid 1995.

[4] Taylor(1)  declaration - paragraphs 7 and 8

Mr Yates finally comments on paragraph 13 of the Brooks declaration which states:

My enquiries amongst the personnel of Telstra indicate that the mark skyphone has been in use by Telstra and/or its predecessors, in relation to aeronautical telecommunications services, continuously since at least as early as March, 1994... 

This, he says, is an assertion and nothing more. It addresses the essential question of use, but it is vague, it is not supported by any factual material whatsoever, and in light of other evidence, it is contentious. 

Decision

Section 23(1), so far as it is relevant, says:

Subject to this section and to section  93, a prescribed court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered, on the grounds -

(a) that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods or services by him … and that there has, in fact, been no such use in good faith of the trade mark in relation to those goods or services by the registered proprietor….earlier than 1 month before the application;   or

(b) that, up to 1 month before the date of the application, a continuous period of not less than 3 years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor….

Evidence and submissions go only to section 23(1)(b) that, for the continuous period between 11 April 1991 to 11 April 1994, there was no use, by Telstra, of the trade mark skyphone,  in relation to aeronautical telecommunications services.  

There are, in the main, three issues which I must decide.   First is the question whether there is evidence of any use of the trade mark in that period. Second is whether any failure to establish use was due to special circumstances in the trade. Third is whether any discretion should be exercised in favour of leaving this trade mark on the Register.

First then, evidence of use. Telstra here relies on the Dwyer and Brooks declarations. 

The Dwyer evidence is of little use. Mr Dwyer declares that he knows that Telstra used the mark, and that, in 1997 when he executed his declaration, it was known to aviation dealers in Australia.  However he says that he has known this use only since 1995.  This statement is consistent with the information he reportedly gave to Mr Taylor.  Mr Taylor, in January 1996  says (Taylor (1) paragraph 8):

In October 1995 we asked Peter Dwyer how long the service had been around.  He advised that the equipment used in relation to the skyphone services had only received approval twelve months ago and that the skyphone service had been in use for six to seven months.

Mr Dwyer’s evidence then, is that Telstra did not commence use of its skyphone  trade mark until early 1995, more than six months after the relevant period.

The Brooks declaration has been subject to severe criticism from Mr Yates and, generally, I find I am in agreement with him. In the final assessment I do not find this declaration establishes than any use occurred within the critical three years. The failures of the Brooks declaration, I find, are essentially as follows.

·   The draft Koulaouzos declaration put forward under annex “A” has all the deficiencies identified by Mr Yates - including that it is in reference to a time prior to Mr Brooks’ employment and therefore outside his knowledge. Mr Brooks’ paragraph 3 is thus little more than anecdotal. I give this draft Koulaouzos declaration, together with Brooks paragraph 3,  no weight.  In any case, nothing in it shows use of the mark in the relevant three years.

·   Annex “B”, a letter dated after the relevant period, means to show use through pages of a publication known as Aeronautical Satellite News.  This edition is published in March 1988 - three years before the relevant period - and as Mr Yates point out, it refers to British Telecom’s use, not to Telstra’s.  This annex does not help Telstra at all.

·    Annex “C” is a letter sent in January 1990, some twelve months before the relevant three years - it attests to the fact that the service was not then viable, that it had not been in operation for the previous three years, and was not expected to be operable for at least another year.  This evidence does not show any use in the relevant period.

·   Annex “D” is the letter to a Tasmanian customer and the order form.  The form only shows that some forms were printed on 26 April 1994, some two weeks after the relevant period. Printing forms is not use of a trade mark - the forms, at least, have to be put to the public.  Mr Brooks’ evidence does not show this happened before May 1995, when one form was sent to one customer. This is not evidence of use in the relevant period.

·   At paragraphs 8 and 9 Mr Brooks claims that advertisements for skyphone  appeared in AOPA[5] from August 1994. One of these advertisements is in evidence under annex “E”- it is dated April 1995. The advertisements of August 1994 are not in evidence, but in any case, August 1994 is after April 1994. This is not evidence of use in the relevant period.

[5] Aircraft Owners and Pilots Association of Australia

·   Paragraph 10 shows the trade mark in an advertisement of May 1995.  This is not use in the relevant period.

·   Paragraph 11 shows reference to the trade mark in correspondence of July 1994 (annex “G”). This is an instruction from Telstra to Codan Communications indicating the way in which the mark skyphone  is to be employed.  The letter implies that initial use is about to commence.  But, be that as it may, it does not show use took place within the relevant period.

·   Paragraph 12 and annex “H” suffer, as Mr Yates points out, from the fact that the memo dated 4 September 1995 contains the comment indicating skyphone was launched in April 1995.  Ms Freeman protests that this, being only an office memo, is subject to clerical error. She says the details of intended use in annex “G” upholds this explanation. She has a point, office memos frequently contain errors. However, this memo is in the Telstra’s own sworn evidence, and to conclude that the reference to April 1995 should read April 1994, would be nothing more than conjecture. As for consistency with annex “G”, I have already found the effect of that evidence to be inconclusive. In the circumstance I think I must take the memos in annex “H” at face value, and I cannot hold that this evidence stands up as confirmation of any use in the relevant period.

In sum, the Brooks evidence, I find, fails entirely to show that Telstra used the trade mark skyphone in 11 April 1991 - 11 April 1994.  So does the Dwyer declaration.  In answer to the first question then, I find there is no evidence of any use by Telstra of the trade mark skyphone in this relevant period of 11 April 1991 to 11 April 1994.

The second question is whether this failure to use the mark was due to circumstances in the trade. The provision relied on here is sub-section 23(4):

An application is not entitled to rely for the purposes of paragraph (b) of sub-section (1) ... on failure to use a trade mark if the failure is shown to have been due to special circumstances in the trade and not to an intention not to use or to abandon the trade mark in relation to the goods or services to which the application relates. [My emphasis].

The general principle here is that a circumstance only meets the standard of being special, if it is peculiar and abnormal and is experienced by persons engaged in a particular trade as the result of some external forces as distinct from the voluntary acts of any individual trader[6].  [Again, my emphasis].

[6] Aktiebolaget Manus v R.J.Fullwood and Bland Ltd  (1949) 66 RPC 71 at 79

The circumstances Telstra relies on are twofold.  First there is the claim of a long lead time to production this being brought about by reason of a preliminary need to deal with various obstacles namely, government approval, the perfection of the technology, the different radio frequencies, the development and manning of numerous ground station facilities, and the need to persuade customers to adopt the service and install new equipment.  These obstacles do seem to fall within the ambit of external forces. However, by 1991 this trade mark had been entitled to registration rights for some five years, and by the close of the relevant period this had extended eight years. This is a substantial period of time, and whereas I would be prepared to accept that reasons of this kind justified some delay, I cannot accept that they justify a delay of eight years. Then there is the question of whether in terms of the service generally, the need to deal with these issues could be held a result of peculiar or abnormal circumstances.  It seems to me that in developing a new, sophisticated, capital intensive, aeronautical, telecommunications service, they are not peculiar or abnormal but are the kind of circumstances which would confront any enterprise of this kind. Furthermore, Mr Yates is largely right when he complains that evidence of the circumstances is without substance. Mr Brooks lists the obstacles but he provides no supporting material. In the end, his evidence is largely assertion - and, what is more, assertion about events that took place before Mr Brooks was in a position to personally witness them.

All told, I agree with Mr Yates that the evidence relied on by Telstra to show special circumstances does not succeed.  While I do not doubt the sincerity of the Brooks declaration, I find it seriously weakened by its anecdotal character and by the lack of support. Technical and infrastructure obstacles are not peculiar or abnormal for services of this kind, but, had I found otherwise, I could not have agreed that a lead time of some eight years to use was justified.

Then there is the question of how I should regard the effect of the first removal application. In principle I find reliance on this fact at odds with the policy of section 23. If a trade mark comes under attack and is discovered to be vulnerable on account of use, then a registered proprietor intent on maintaining that registration, should ensure that the vulnerability in not allowed to persist. Telstra, however, made a conscious decision not to respond in that way. It decided, to delay use. It made a business decision not to further invest in the trade mark skyphone until such time as the first removal action was defeated. As a consequence there was no significant use between 1988 and 1994[7]. I cannot agree that a pending removal action justifies a decision of this kind.  Moreover, a conscious decision to not use a trade mark is an intention not to use the trade mark, and consequently the provisions of subsection 23(4) do not apply.   

[7] Brooks - exhibit “B”

All told, I find that there are no special circumstances  which operate to save this trade mark registration in terms of subsection 23(4).

Finally there is the matter of discretion.  Here Ms Freeman asks me to have regard to the effect of the applicants delay in serving notice of the subject removal application till January 1996. This, she says, to some extent at least, accounts for the scant nature of the Telstra’s  evidence.  The claim is, I think, that because Telstra was unaware that a second removal application was in train, it was not alert to the need to keep on hand, records demonstrating use.  In light of the particulars established by British Telecom’s evidence in reply, I find this submission unconvincing.  The Wilson declaration shows the parties were communicating in May 1994, soon after the first removal application was dismissed. It also demonstrates that in May 1994 Telstra was advised by an examiner of trade marks, that the British Telecom trade mark applications were still active and pending.  This is only one month after the relevant period ended.  At that time I would expect records for much of the relevant period to be readily to hand. Then the evidence of Murton(2) shows that as early as 1989, British Telecom proceeded to establish an international aeronautical telecommunications service which it identified with the trade mark skyphone. Mr Yates submits that British Telecom has developed a significant international reputation in its skyphone service, and now has a clear need to protect its goodwill in the Australian market. British Telecom’s use of skyphone does not appear to me to be of the kind which opens them to the charge of being an assiduous infringer (as Ms Freeman would have me hold).  On the evidence British Telecom is an independent international user. In knowledge of this and of  British Telecom’s interest in achieving an Australian trade mark registration, Telstra still failed to use its mark.

In light of the Wilson declaration, I do not think that the lapse of two years to notice of the removal, had any really deleterious bearing on Telstra’s ability to assemble its evidence. The facts seem to be that in May 1994 Telstra knew that the issue of the first removal action had not concluded matters. Taking this into account along with the evidence that, in the knowledge of British Telecom’s interest in the skyphone trade mark, Telstra continued to hold off on use, I find there is no ground for an exercising of discretion.

In sum:

• I find on the evidence, that this trade mark is not shown to have been used in the three years from 11 April 1991 to 11 April 1994. 

• I find that Telstra’s failure to use the trade mark in this period was not due to any special circumstances.

• I find that there is no ground for exercising my discretion in favour of allowing the trade mark to remain on the Register

• Consequently, I find that the application to remove trade mark number 443769 from the Register, succeeds.

Costs here should follow the event. Accordingly I award them to the removal applicant.

Helen R. Hardie
Deputy Registrar

11 May 1998