Combined Group of Companies Pty Ltd v Reln Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Combined Group of Companies Pty Ltd to application under section 92 of the Act by Reln Pty Ltd to remove trade mark number 1040954(11) - Rainmate - in the name of Combined Group of Companies Pty Ltd

Delegate:

Iain Campbell Thompson

Representation:

Non-use Opponent: Shaun Griffin, patent attorney of Fraser Old & Sohn

Non-use Applicant: Russell Waters, a partner of Phillips Ormonde Fitzpatrick assisted by Natasha Marshall, trade mark attorney of that firm

Decision:

2014 ATMO 20

s92 proceedings – expression ‘water supply installation’ broad enough to include the goods ‘plastic water tanks’ on its ordinary English meaning. Goods to be restricted to reflect use of trade mark and Classification amended under section 81.

Background

On 20 February 2012, Reln Pty Ltd (‘the removal applicant’) applied under subparagraph 92(4)(b) of the Trade Marks Act 1995 seeking removal of the trade mark which appears below in respect of all of the goods for which it is registered:
Registration No:              1040954
Priority Date:  9 February 2005
Goods:  Class 11: Water supply installation
Trade Mark:  Rainmate
On 17 July 2012, after seeking and receiving an extension of time in which to do so, Combined Group of Companies Pty Ltd (‘the removal opponent’) served and filed Notice of Opposition stating that the trade mark has been used during the specified three year period (that being the three years ending on 20 January 2012) (‘the relevant period’).
The removal opponent has filed evidence in support and evidence in reply; the removal applicant has filed evidence in answer.
The parties elected to be heard and, as a delegate of the Registrar of Trade Marks, I heard their submissions in Sydney on 10 February 2014. Shaun Griffin, patent attorney, of Fraser Old & Sohn represented the removal opponent; Russell Waters, a partner of Phillips Ormonde Fitzpatrick, assisted by Natasha Marshall, trade mark attorney, represented the removal applicant.
The Evidence
The evidence comprises a declaration in support of the opposition by Joby Cronkshaw (‘Cronkshaw 1’), declarations in answer to the opposition by Natasha Marshall and Kristine van Ruiten and a further declaration by Mr Cronkshaw in reply.
Mr Cronkshaw is Managing Director of the non-use opponent. Material exhibited to Cronkshaw 1 show the non-use opponent’s use of the trade mark on plastic water tanks which are sold as a flat-pack along with a child-proof lid, plastic tap and plastic stand (‘the plastic tank kit’). As I understand it, the ‘tank’ portion of the goods is a flat sheet of flexible plastic which is formed into a tube by the purchaser.
There is a Tax Invoice at exhibit JC4 to Cronkshaw 1 which evidences the sale of two of these plastic tank kits with reference to the trade mark RAINMATE by Evo Building Products (which the Tax Invoice states to be a division of the removal opponent) on 28 September 2010.
Other materials appended to Cronkshaw 1 show advertisements of the trade mark in relation to the plastic tank assembly within the relevant period in Gardening Australia magazine. In these advertisements the trade mark takes the form below:
The goods are described in the advertisements in the following way:
"The only flat-packed water tank in Australia!"
1. Large 200 litre capacity
2. Complete with its own integral stand and tap
3. Childproof lid with leaf grill
4. Lightweight (only 8Kg) and UV proof
5. Dimensions – 160mm x510mm x 1130mm
In evidence in answer, Ms Marshall in her declaration draws attention to the International (Nice) Classification of Goods and Services (‘The Nice Classification’) in which all goods and services in respect of which trade marks may be registered are divided up into different Classes. Ms Marshall states:
My research revealed that Australia acceded to the Nice Agreement on 8 April 1961. Attached to this declaration as Exhibit NM-3, is a copy of a list of the Treaties, Conventions and Agreements relevant to the World Intellectual Property Organisation to which Australia is a contracting party, including the Agreement. The Nice Classification of goods and services is therefore applicable and adhered to under Australian trade mark practice.
The eighth edition of The Nice Classification was entered into force on 1 January 2002 and is the applicable edition at the point in time when trade mark No. 1040954 - "Rainmate" was filed.
My research indicates that the eighth edition of The Nice Classification classifies relevant comparable goods as follows:
a. Tanks, not of metal nor of masonry, in International Class 20.
b. International Class 20 covers goods of "furniture ... of plastic"
c. The Explanatory Note for International Class 20 explains that "class 20 includes mainly furniture and its parts and plastic goods, not included in other classes"
Attached to this Declaration under Exhibit NM-4 are copies of pages from the eighth edition of The Nice Classification relevant to the classification of goods mention in paragraph 16, sub paragraphs a.-c.
I note that trade mark No. 1040954 - "Rain mate" covers "water supply installation" [sic] which it lists in class 11.
The research I have conducted shows that the eighth edition of The Nice Classification classifies the following kind of goods in International class 11:
"apparatus for fighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes".
Attached to this declaration under Exhibit NM-5 are copies of pages from the eighth edition of The Nice Classification with descriptions of goods found in International class 11.
The Australian trade mark classification system adheres to The Nice Classification system.
I searched on the "Classification Search and List of Class Headings" search function on IP Australia's website for the term "water tanks", and my search revealed a result of:
"Class 20 Plastic water tanks"
I also searched on the same website for the term "water storage", and my search revealed a result of:
"Class 20 Water storage tanks of plastic"
Kristine van Ruiten is a private security investigator and registered Trade Marks Attorney employed by IP Organisers Pty Ltd. Ms van Ruiten attests to her investigations into the use of the trade mark by the non-use opponent. Mr Cronkshaw’s further declaration is argument seeking to rebut certain assertions made by Ms van Ruiten and Ms Marshall.
Mr Cronkshaw argues that the opponent’s plastic water tank kit falls within the description ‘water supply installation’.
For reasons that will become obvious, it is not necessary to elaborate upon the evidence in answer of Ms van Ruiten or evidence in reply of Mr Cronkshaw as it does not affect the outcome of these proceedings.
Reasoning
As regards the onus in these proceedings, section 100 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:
(…)
(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before 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.
The onus is thus on the removal opponent to establish on the balance of probabilities use of the registered trade mark on, or in relation to, the goods in respect of which it is registered.
Section 92 of the Act provides, relevant to subparagraph 92(4)(b):
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:
(…)
(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.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
In my consideration the evidence before me establishes that the non-use opponent used its trade mark in relation to the plastic water tank kit during the relevant period. The Tax Invoice evidencing sale of two of the tanks (and presumably the stand and other fittings which the advertisements state to be integral as part of the plastic water tank kit) appear to me to be bona fide, particularly within the context of the evidence of the advertisements of the plastic tank kit in Gardening Australia. While Mr Russell argued that the use of the trade mark as it appears in the magazine advertisements is not a use of the trade mark as registered, I consider that these advertisements lend corroborative support to the evidenced use of the trade mark on the Tax Invoice. Further, if the circular device which encloses the alphabetical letter ‘R’ in the magazine advertisement is regarded as being a depiction of a water tank as viewed from above, it is not obvious to me why the use of the trade mark in the magazine advertisements should not be regarded in the same way as the footprint device in the BAREFOOT RADLER trade mark by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.
In my consideration the use of the trade mark in the Tax Invoice was bona fide use in relation to the plastic tank kit. But the non-use applicant argues that such use was not in relation to the goods in respect of which the trade mark is registered.
The nub of the non-use applicant’s proposition is that the non-use opponent, while it may have used the trade mark on the plastic tank kit, could not have used the trade mark on ‘water supply installation’ as the expression ‘water supply installation’ in Class 11 does not include the plastic tank kit which lies in Class 20.
The non-use opponent’s counter to this argument is that the plastic tank kit is an assemblage of components such as a tank, lid, tap and stand and thus should be regarded as a ‘water supply installation’ (and, indeed that the correct classification for such goods is Class 11).
In my consideration the correct view is that the plastic tank kit, ‘plastic water tanks which are sold as a flat-pack along with a child-proof lid, plastic tap and plastic stand’, should be classified where the major items – the tanks – occur (Class 20), or follow the convention that kits are classified where the major item or purpose of the kit occurs (Class 20). While such items as taps for plastic water tanks might occur in Classes other than 20 (for example metallic taps fall in Class 6 and faucets fall in Class 11), as long as the taps, plastic tanks, stands, etc are sold together, the correct Class is Class 20.
It follows that plastic tank kits are not, under the Nice Classification scheme, a water supply installation in Class 11. It is apparent that if a tank (plastic or otherwise) is made as, and sold as a part of, some other piece of Class 11 apparatus as in, for example, distillation apparatus, a boiler tank reservoir or as a part of a sanitary installation, then such tanks will be regarded as falling in Class 11. However, a plastic water tank kit as a stand-alone item, which is not made as a part of such a Class 11 apparatus, and not sold as a part of Class 11 apparatus, is a Class 20 good.
Conversely, tanks made of metal and not being parts of Class 11 apparatus, occur in Class 6 of the Nice Classification, fuel tanks for vehicles fall in Class 12 and tanks of masonry or concrete occur in Class 19. It is correct, therefore, to regard tanks as occurring in the Class appropriate to the predominant material of manufacture unless they are specialised tanks which are sold as a part of other goods.
However, the question is how the expression ‘water supply installation’ should be read and whether it is broad enough in the context of a specification of goods in Class 11 to include the plastic tank kits, bearing in mind such goods in fact are Class 20 goods.
Some guidance is offered by Wilcox J in Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816; [2003] AIPC 91-904 at [38] to [45]:
38       Mr Smith contends the description in the certificate of registration has to be read in the light of his client's previous business activities. He said the evidence shows Mr van Voorst has never manufactured magnets; he has always purchased them from others. Mr van Voorst's business has always been the conduct of classes and clinics and the sale of magnets for promoting wellness and alleviating pain. Accordingly, anyone would understand that the application for registration was intended to obtain a trade mark in respect of the goods themselves, not their manufacture.
39       Mr Smith says Nikken Wellness sells magnets intended to be used for medical purposes, including pain relief; therefore, it infringes Mr van Voorst's trade mark.
40       Counsel for Nikken Wellness argue Mr van Voorst is not entitled to have the Court read the certificate in the way suggested by Mr Smith. They point out that s 27 of the Act governs the making of an application for registration of a trade mark. Section 27(3)(b) requires that the application `specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark'. It is for the applicant to nominate the class number that is appropriate to the goods or services in each group: see reg 4.4(4) of the Regulations. Counsel refer to authority supporting the proposition that a description is strictly construed: ‘Daiquiri Rum’ Trade Mark [1969] RPC 600, Ind Cooper Ltd v Paine & Co Ltd [1983] RPC 326 and Unilever Plc v Johnson Wax Ltd [1987] FCR 145.
41       In Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, Sheppard J set out rules of construction of a patent specification. They include a rule that ‘the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right'. Counsel say the same principle must apply to an applicant's description of the goods or services in relation to which he or she seeks a trade mark registration.
42       Counsel for Nikken Wellness submit it is not permissible for the Court to have regard to the previous conduct of the trade mark holder. They draw an analogy with the conduct of an alleged infringer and cite the rule that the certificate of registration must be construed ‘as if the infringer had never been born': see Nobel's Explosives Co Ltd v Anderson (1894) 11 RPC 519 at 523. Counsel contend:
‘Whether or not the trade mark owner has specified appropriately or comprehensively the use or proposed use for which he or she claims a monopoly is not to the point. The trade mark owner is bound by the statement he or she has made in the application and the rights arising upon registration are defined accordingly. It would not be appropriate, for example, to construe the specification so as to make it useful for the trade mark owner; still less would it appropriate to construe the specification "with an eye to infringement" in a given case. Similarly, it should not be assumed that the specification does describe an actual activity in trade. The meaning and scope of the specification are to be determined by the words actually used by [the] trade mark owner.'
43       Counsel also argue it does not matter that the wrong class is claimed. They quote the statement in Kerly's Law of Trade Marks and Trade Names (12th ed) at para 5-05:
‘Classification is primarily a matter of convenience in administration ... What is of real importance in determining the rights of the parties, as has been pointed out, is the specification of goods or services entered on the Register and the validity of the registration.’
44       The submissions made by counsel for Nikken Wellness must be accepted. The Register is an official record open to inspection by members of the public: see s 209 of the Act. The Register is prima facie evidence of any particular matter entered in it: see s 210. A certified extract from the Register is admissible in legal proceedings: see s 211(2). Parliament must have intended the Register to speak for itself. People who peruse the Register, or an extract from it, must be able to act on the basis of what it says, without being obliged to make inquiries about the business history or previous conduct of the registered owner of the trade mark.
45       Although it is incongruous that class 10 was chosen, as the relevant class for the first category for which the subject trade mark was to be registered, this category must be construed according to its description. So construed, it clearly does not cover the goods themselves.
Thus, in my consideration, I am to set aside any knowledge of what the removal opponent’s goods actually are and ask the question whether a person who peruses the Register would understand the specification ‘water supply installation’ as including ‘plastic water tanks’ and act on that basis.
The Macquarie Dictionary defines an ‘installation’ as:
1. ‘something installed’;
2. ‘a system of machinery or apparatus placed in position for use’.
In my consideration, on its ordinary meaning, the word ‘installation’ in relation to the goods includes, I consider, flat-pack plastic water tanks kits designed to be put together and installed by the purchaser, handyman or tradesperson.
The removal opponent has thus established use in relation to goods for which its trade mark Rainmate is registered but only as far as plastic water tanks are concerned.
It appears that in this instance, the applicant made an inadvertent error in his application, in both the description of its goods and the classification that followed from that description, which while not apparent at the time, has now been highlighted by the removal opposition proceedings. Under these circumstances, it is imperative that, as well as restricting the goods to reflect the usage of the trade mark by the removal opponent, the Register should also be corrected to reflect the correct classification of those goods.
Thus, it is appropriate to limit the goods ‘water supply installation’ to ‘plastic water tanks and parts therefor’. It also follows, as mentioned, that the registration sits in Class 11 which is the wrong Class – it will thus be necessary to amend the Class number to Class 20.
Decision
Subsection 101(1) of the Act 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.

I direct that, should no appeal against this decision be filed within the requisite period of time, registration 1040954(11) Rainmate be removed from the Register in respect of all of the goods to which the registration relates except for ‘plastic water tanks’ one month from the date of this decision.
I further direct that, one month from the date of this decision, the Class number of registration 1040954(11) Rainmate be amended to Class 20 under the provisions of section 81 of the Act.
Costs
The non-use applicant, having been successful in having the removal opponent’s goods restricted, is entitled to its costs as set out in the official scale.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
28 February 2014

[2014] ATMO 20

28 February 2014

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