Cobber International Tradeing Pty Ltd v Uniflow Power Ltd

[2023] ATMO 152

TRADE MARKS ACT 1995

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

Re:Opposition by Cobber International Trading Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Uniflow Power Ltd to remove trade mark number 1762674 (7) - COBBER - in the name of Cobber International Trading Pty Ltd

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Dr Steven Borovec of Churchill Attorneys

Removal Applicant: Dunja Poljak of Adams Pluck

Decision:

2023 ATMO 152

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) ground for partial removal – no use established – discretion not exercised – goods removed

Background

1. Cobber International Trading Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark (‘Registration’):

   Registration Number:  1762674

   Trade Mark:  COBBER (‘Trade Mark’)

   Filing Date:  4 April 2016

   Specification:  Class 7: Stapling machines (other than for surgical or stationery use); cartridges of staples for industrial stapling machines; stapling presses (other than for surgical or stationery use); machine tools; mechanical tools; tools for use with machine tools; parts of machines

2. On 8 June 2021, Uniflow Power Ltd (‘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 all the registered goods for the generation of power, machine tools not being fastening devices, mechanical tools not being fastening devices, tools for use with machine tools not being tools for use with fastening machine tools, and parts of machines not being parts of fastening machines (‘Removed Goods’). As such the Removal Applicant seeks the following amendments to the specification:

   Class 7: Stapling machines (other than for surgical or stationery use); cartridges of staples for industrial stapling machines; stapling presses (other than for surgical or stationery use); machine tools being fastening devices; mechanical tools being fastening devices; tools for use with fastening machine tools; parts of for the aforementioned machines; none of the aforementioned being for the generation of power  (‘Amended Goods’)

3. On 19 August 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 16 September 2021. On 8 November 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 Christopher John Lacy, Director of the Removal Opponent, made on 4 February 2022, with Exhibits CL-1 to CL-5 (‘Lacy’).

1. The Removal Applicant did not file evidence.

2. Once time for filing evidence had ended the parties were given an opportunity to request a hearing or a decision without a hearing. Both parties requested a hearing by way of written submissions. The matter came before me, a delegate of the Registrar of Trade Marks. I make my decision based on the particulars in the SGP, the EIS and written submissions filed by both parties.

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)(b) of the Act as the ground for partial removal. Section 92(4)(b) of the Act 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)…

   (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)  used the trade mark in Australia; or

   (ii)  used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

3. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

4. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 8 May 2021 (‘Relevant Period’).

5. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application for the registration of the Trade Mark have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The amended s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

6. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. [2] Provided the use is in good faith, a ‘single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5]

   [2] [2001] FCA 261, [16].

   [3] Ibid [17].

   [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [5] (1962) RPC 1, 7.

7. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

   [6] 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.

8. In accordance with s 101 of the Act, if the ground for partial removal is established, I may decide to remove the Trade Mark from the Register in respect of any of the goods identified in the Application, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Mark from the Register.

Use of the Trade Mark during the Relevant Period

1. The Removal Opponent is an Australian company incorporated in 2009. The Removal Opponent manufactures and supplies staple guns and staples to the Australian public.

2. Exhibit CL-1 to Lacy comprises two screenshots from the Internet Archive Wayback Machine of the Removal Opponent’s website dated 27 February 2019 featuring the Trade Mark. The first screenshot promotes the Removal Opponent’s Cobber staple gun series 2. The second screenshot is taken from the Removal Opponent’s ordering guide for Cobber staples.

3. Exhibit CL-2 to Lacy comprises a copy of a brochure made available by the Removal Opponent, dated in January 2020, featuring the Trade Mark. The brochure promotes the Cobber staple gun.

4. Exhibit CL-3 to Lacy comprises copies of tax invoices issued by the Removal Opponent to Australian customers, dated between November 2018 to May 2021. The invoices show sales for the Cobber staple gun and staples.

5. In my assessment of the evidence, the Removal Opponent has used the Trade Mark in relation to staple guns and staples during the Relevant Period. However there is no evidence before me that the Trade Mark was used in relation to the Removed Goods during the Relevant Period.

Obstacles to use

1. The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Removed Goods in the Relevant Period pursuant to s 100(3)(c) of the Act. I note that I have been unable to identify any such obstacles. As there are no obstacles to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Removed Goods.

Registrar’s discretion

1. Section 101(3) of the Act provides:

   If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

2. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   The following propositions are relevant to the exercise of this discretion: 

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act. [emphasis added] 
   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. … 
   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. … [emphasis added] [citation omitted]
   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark. [emphasis added] 
   (5) The range of factors considered in the exercise of the discretion has included whether or not: 

   (a) there has been abandonment of the mark; 

   (b) the registered proprietor of the mark still has a residual reputation in the mark; 
   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended; 
   (d) the applicant for removal had entered the market in knowledge of the registered mark; 
   (e) the registered proprietors were aware of the applicant’s sales under the mark; 
   …
   

   [7] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[7]

3. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[8]

   [8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

4. In this matter, the question is whether it is reasonable not to partially remove the Trade Mark in respect of the Removed Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[9]

   [9] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

5. In Lacy, Mr Lacy states that significant confusion on the part of Australian consumers would result if a party other than the Removal Opponent used the Trade Mark in regards to goods that are similar or related to staple guns and/or staples. Mr Lacy states that there are many circumstances in which a person that is involved in the procurement of staple guns and/or staples for a specific project would also be involved in the procurement of a power generator for a given project.  

6. Mr Lacy explains that road, tunnel and infrastructure projects and residential building construction projects require the use of at least one power generator or non-mains source of electricity to provide electricity for equipment including ambient lighting, illuminated signage, battery charging, communications, power tools, air compressors, computers and security cameras.[10]

   [10] Lacy [13] to [20] Exhibit CL-4. 

7. Mr Lacy further notes that hardware retail outlets such as Bunnings Warehouse supply matting to prevent soil erosion, staple guns, staples used for anchoring matting to the ground, and power generators.[11] Mr Lacy states that each of these items are available to domestic builders whom he states would likely consider that a power generator featuring the trade mark COBBER was produced by the same company that produced the soil stabilisation equipment.

   [11] Lacy [21] Exhibit CL-5.

8. Mr Lacy argues that partial removal of the Trade Mark would undoubtedly be detrimental to the Removal Opponent given that the Trade Mark is the only means by which its products are known in the Australian market.

9. In response the Removal Applicant states that it manufactures power generators and argues that power generators perform a different function to the staple guns and staples and are manufactured by different traders.

10. My general observations are that the Removal Opponent has been operating since 2009 and the Trade Mark was registered in 2016. As such the Removal Opponent has been operating for 12 years and since Registration has had 5 years to use the Trade Mark in relation to the Removed Goods. It has not done so. Moreover, the Removal Opponent has not provided any sales or advertising figures which would allow me to come to a sensible conclusion in relation to its alleged reputation. On the evidence before me I do not agree with the Removal Opponent that if the Trade Mark is partially removal from the Register this would result in fragmented ownership. The Removal Opponent’s specification in class 7 is very broad and if I were to limit the specification as proposed, the scope of protection that remains would incorporate the Amended Goods and similar goods which would be sufficiently broad to prevent consumer confusion and would not practically impact on the interest of the Removal Opponent.  

11. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion.  

Decision

1. The Removal Opponent has not established its opposition to the partial removal. I direct that registration 1762674 be amended one month from the date of this decision as set out below to remove the Removed Goods:

   Class 7: Stapling machines (other than for surgical or stationery use); cartridges of staples for industrial stapling machines; stapling presses (other than for surgical or stationery use); machine tools being fastening devices; mechanical tools being fastening devices; tools for use with fastening machine tools; parts of for the aforementioned machines; none of the aforementioned being for the generation of power

2. In the event of an appeal, the disposition of the Application will instead be subject to the decision made by the Court.

Costs

1. Both parties sought an award of 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 Opponent as set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

5 October 2023