CSL Limited v Hong Kong CSL Limited

[2008] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by CSL Limited to application under section 92 of the Act by Hong Kong CSL Limited to remove trade mark number 708561(5,9,10,31,37,40) - CSL - in the name of CSL Limited

Delegate:	Debrett Lyons
Representation:	Opponent:  Ed Heerey of Counsel, instructed by Allens Arthur Robinson, Solicitors Applicant:  Ben Fitzpatrick of Counsel, instructed by Griffith Hack, Patent and Trade Mark attorneys
Decision:	2008 ATMO 23 Sec. 92 opposition – purported use of the trade mark within the relevant period not sufficient to establish opposition – trade mark to be removed in part from the register.

Background

1. CSL Limited (‘the opponent’) is the registered owner of a trade mark, current details of which appear below:

   Trade mark number:  708561
   Registered from:                   15 May 1996

   Goods / Services:                  Class: 5 Pharmaceutical and veterinary preparations and substances in this class; preparations for destroying vermin; pesticides; herbicides; fungicides and other agrochemicals in this class; blood products in this class; products derived from blood and products derived from recombinant DNA technology; serums; antibodies; test kits in this class

   Class: 9 Scientific, electric, electronic, weighing, measuring, monitoring and technical apparatus and instruments in this class; computer software and hardware

   Class: 10 Surgical and medical apparatus and instruments; analysis apparatus and instruments in this class; medical apparatus and instruments in this class

   Class: 31 Agricultural, horticultural and forestry products; foodstuffs for animals; additives to fodder

   Class: 37 Machinery installation, maintenance and repair; electric appliance installation and repair; servicing of medical apparatus and instruments; servicing of scientific apparatus and instruments

   Class: 40 Treatment of biological products namely custom manufacturing and fractionation of blood

   Trade mark:  CSL                 (‘the registered trade mark’).

2. On 21 April 2006, Hong Kong CSL Limited (‘the applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for partial removal of the trade mark from the register in relation to certain class 9 goods, being:

   electric and electronic apparatus and instruments in this class; computer software and hardware

   (‘the relevant goods’)

3. On 10 August 2006 the opponent filed Notice of Opposition to the removal.  The only ground of opposition is that ‘[t]he trade mark has been used in relation to the relevant goods during the relevant period.’

4. Section 100 of the Act places the burden of establishing use of the registered trade mark during the relevant period on the opponent. In this case the relevant period is 21 March 2003 to 21 March 2006. The opponent must show that the registered trade mark has been used in the course of trade in Australia during the relevant period in respect of the relevant goods: Structureco Inc v StariteDistributors Pty Ltd [2000] ATMO 31.

5. The matter came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 5 March, 2008.  The opponent was represented by Ed Heerey of Counsel, instructed by Allens Arthur Robinson, Solicitors and the applicant was represented by Ben Fitzpatrick of Counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys.

   Evidence

6. The opponent filed the following evidence in support of its opposition:

   v  Statutory Declaration of Rachel Smith  dated 10 April 2007

   v  Statutory Declaration of Daniela Arturi  dated 5 April 2007.

7. The applicant filed the following evidence in answer:

   v  Statutory Declaration of Lau Wai Har  dated 6 July 2007

   v  Statutory Declaration of Stephen Langmaid  dated on 25 July 2007.

8. The opponent filed the following evidence in reply:

   v  Statutory Declaration of Ann Nicholson  dated 18 December 2007.

   Discussion

9. At the date the non-use application was filed, section 92 of the Act relevantly provided:

   (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

   …

   (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.

10. A threshold requirement is that the applicant be a person aggrieved.  The opponent conceded that the applicant was a person aggrieved.

11. The opponent was founded in Australia in 1916 as Commonwealth Serum Laboratories and has since that time been involved in the development, manufacture and marketing of biopharmaceutical and diagnostic products of biological origin.  Following a public flotation, the opponent was listed on the Australian Stock Exchange in May 1994.  

12. The opponent relied on three pieces of evidence:

    (i)An Excel™ database containing information relating to its antigen products provided either on a floppy disc or as an email attachment (‘the Antigen Database’).  The registered trade mark is applied to the floppy disc and is incorporated into the Excel database.

    (ii)A CD-ROM containing information on influenza, in particular Powerpoint™ slides and video clips, plus a means for calculating the cost to business of having an unvaccinated workforce (‘the Flu CD-ROM’).  The registered trade mark is applied to the CD-ROM disc and is part of the data encoded on the CD-ROM.

    (iii)A CD-ROM containing information on travel health and vaccination in the form of a Powerpoint presentation (‘the Travel Health and Vaccination CD-ROM’).  The registered trade mark is applied to the CD-ROM disc and is part of the data encoded on the CD-ROM.

13. In her declaration, Ms Smith states that the Antigen Database is offered by the opponent to those who buy the opponent’s Phenocell™ or Abtectell™ products.  It can be used to hold information which supplements the Phenocell or Abtectell diagnostic product kits.  There is no evidence that the Antigen Database is supplied other than in association with the Phenocell and Abtectell products.  There is no evidence that a charge is made for it.  The Antigen Database is provided in Microsoft™ Excel format.  It enables users to build up a databank of the antigen profile of each donor. It is supplied to customers either as a floppy disc or as an email attachment.  Ms Smith declares that in the relevant period she sent the Antigen Database to ‘approximately 4 to 5 customers per year’.  There is documentary evidence of a single supply via email.  There is no evidence of actual supply by way of floppy disc. 

14. The Flu CD-ROM appears to be a marketing tool intended to promote the sale of the opponent’s influenza vaccine.  The evidence shows it to have been distributed to healthcare professionals and companies, being the target market for the vaccine.  There is no evidence of a charge made for the Flu CD-ROM. Both on the CD-ROM itself and on the screenshots from the CD-ROM shown in evidence, the registered trade mark is used in the following way:  “CSL Vaccines – ‘Flu at work CD-ROM”.  The CD-ROM is described as a “multimedia presentation”.  It is divided into sections including ‘About influenza’, ‘Consequences of influenza’ and ‘Vaccination benefits’.

15. The Travel Health and Vaccination CD-ROM is again a marketing vehicle intended to promote the opponent’s travel vaccines.  In her declaration, Ms Aturi recalls that it was used ‘as a selling tool for various vaccines sold by CSL.’  There is no evidence of its distribution to potential customers or any charge for its supply.  Both on the CD-ROM itself and on the screenshots from the CD-ROM shown in evidence, the registered trade mark is used in the following ways: “CSL Vaccines” and “CSLink – vaccine network”.  The CD-ROM carries a PowerPoint presentation where the pages are each entitled ‘Travel medicine in general practice’ and can be described as a best practice protocol for those administering travel vaccinations.

16. The applicant did not dispute that the evidence existed in the relevant period, nor dispute that the registered trade mark appears on the materials, but submitted that the use of the registered trade mark is not use in the course of trade in connection with the relevant goods.  It submitted that the only use of registered trade mark in the course of trade was in connection with the diagnostic or biopharmaceutical products to which the Antigen Database or the CD-ROMs relate.  The applicant submitted that the use of the registered trade mark on the Antigen Database and the CD-ROMs constitutes use on either promotional or ancillary products.

17. Secondly, the applicant argued that, even if I considered that there was use of the registered trade mark in the course of trade with the Antigen Database and the CD-ROMs, neither are electric and electronic apparatus and instruments in class 9, nor are they computer software and hardware.

18. Finally, the applicant submitted that, in any event, the evidence of use was de minimus and insufficient to resist the application for partial removal.

19. For its part, the opponent submitted that customers require detailed information as to the proper use of its biopharmaceutical and diagnostic products.  It stated that lack of information regarding their proper use carried a danger to customers and patients.

20. The opponent reasons that the use of the registered trade mark is not limited to biopharmaceutical and diagnostic products per se, but extends to the informational and administrative products which it provides to customers.  It was claimed that the opponent uses the registered trade mark in this way ‘to vouch for the reliability and authority of the information and administrative functionalities contained in such products and the authenticity of the product which contains such information and administrative functionalities’.

21. The opponent argued that since the Flu CD-ROM carries a software program to enable potential customers to calculate the cost to their business of having an unvaccinated workforce and since the registered trade mark appears in and on the CD-ROM, the use of the registered trade mark is comparable to the way “Microsoft” is used on the screen of a computer when a consumer uses “Microsoft Word” software.

22. The remainder of the evidence and submissions address whether the Antigen Database and the CD-ROMs fall within the description of the relevant goods.

23. There are a handful of legal propositions which might be laid out usefully here.  The first is that use as a trade mark in the course of trade does not necessarily require a sale of goods under the trade mark: see Shanahan’s Australian Law of Trade Marks and Passing Off (Law Book Co.,3rd ed) at [2.185].

24. If an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims: “Nodoz” Trade Mark [1962] RPC 1.

25. A group of cases has considered the question of whether or not use of a trade mark on goods that are distributed freely to promote trade in other goods is trade mark use in respect of the freely distributed goods.  Those cases are collected together and discussed in detail in Shanahan’s Australian Law of Trade Marks and Passing Off at [2.220 – 2.239] and do not require amplification here.  The weight of those cases goes against the opponent.  It is overtly clear that both CD-ROMs only exist to promote the opponent’s trade in its biopharmaceutical and diagnostic products.  The functionality of the Flu CD-ROM, which enables the calculation of loss to business through an unvaccinated workforce, is such a trivial piece of programming that it can not elevate the Flu CD-ROM above its character as a marketing instrument for other goods.

26. The Antigen Database is ancillary to the Phenocell and Abtectell products.  It is not an essential adjunct to those products.  It is far from being the only means by which health care professionals could manage donor profiles.  It does not use bespoke software.  There is no charge for it.  Presumably there are customers of the opponent’s Phenocell and Abtectell products who do not want it or use it.  Questions of degree are involved in these matters but I regard the Antigen Database as something merely ancillary to the actual product traded under the registered trade mark.

    Registrar’s Discretion

27. In this case the application for removal (21 April 2006) was filed before the Trade Marks Amendment Act 2006 received Royal Assent on 23 October 2006.  It follows that the case falls to be determined under section 101 as it stood prior to the amendments made by that legislation: Nordstrom Inc v Starite Distributors Inc [2008] ATMO 11 at [44]; Apple Computer Inc. v Todaytech Group Limited [2007] ATMO 40.

28. As such, the applicable form of s 101 is as follows:

    101     Determination 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 ground 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.

    (2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

    (3)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.

29. Under section 101(3) of the Act, the Registrar may decide not to remove the registered trade mark even when grounds for removal have been established.

30. The opponent educated me about its history.  Clearly, the registered trade mark is an acronym for Commonwealth Serum Laboratories.  The opponent postulated that it was reasonable to infer that the acronym had been used for most, if not all, of the 92 year history of the organisation.  Given its long history and former status as the Commonwealth government organisation responsible for developing biopharmaceutical and diagnostic products, together with its more recent life as a publicly listed company, it was submitted to me that the registered trade mark enjoyed a substantial reputation.  I bear those comments in mind when coming to exercise of the Registrar’s discretion.

31. As set out above the registered trade mark protects the following class 9 goods:

    scientific, electric, electronic, weighing, measuring, monitoring and technical apparatus and instruments in this class; computer software and hardware.

32. The applicant seeks removal of:

    electric and electronic apparatus and instruments in this class; computer software and hardware  

33. A successful removal application would reduce the class 9 specification to:

    scientific, weighing, measuring, monitoring and technical apparatus and instruments in this class.

34. It was the opponent’s submission that the distinction between the goods sought to be removed and the goods which would remain in the registration would be very fine.  For example, non-electronic measuring instruments would remain within the registration, whilst electronic measuring instruments, outside.

35. It is common ground that these proceedings arose from the refusal by the Trade Marks Office to register the identical trade mark in class 9 in the name of the applicant unless the relevant goods were deleted from the registered trade mark.  It is the opponent’s assumption that later trade mark application will proceed to registration if this removal action succeeds.  

36. On the basis of that assumption, the opponent argues that the ownership by different persons of the same mark for such similar goods would lead to the type of confusion described by Drummond J in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 at 543-4 and Hearing Officer Windsor in Nordstrom Inc v Starite Distributors Pty Ltd (2006) 71 IPR 152 at [22]. As in those authorities, the Registrar’s discretion under s 101(3) ought to be exercised against removal.

37. Drummond J held that it was inappropriate to draw fine distinctions between goods which ought to be removed and goods which ought to remain specified in a registered trade mark:

    The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.
    But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.
    But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression "any or all of the goods ... in respect of which the trade mark ... is registered" in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

1. In Nordstrom Inc v Starite Distributors Pty Ltd (2006) 71 IPR 152, Hearing Officer Windsor applied Drummond J’s words and refused to remove ‘manchester’ from the registration in question, notwithstanding that the registered owner could only establish use of the registered trade mark in respect of towels and not any other type of manchester.

2. Notwithstanding those authorities I think that there are distinctions to be drawn in this case. International class 9 is an exceptionally ‘crowded’ class. Many of the terms used to describe goods in that class are ambiguous and/or involve overlap with goods described by other terms. Whether the remaining class 9 goods might be too close to goods later claimed by the applicant or another party is a question better answered by Examiners applying section 44 of the Act. The evidence before me is that the Examiner of the applicant’s later filed trade mark is satisfied that removal of the relevant goods from the registered trade mark is what is needed to satisfy section 44 and I have no reason to interfere with that determination.

   Decision

3. I am satisfied that there has been no use of the trade mark on the relevant goods within the non-use period.  I therefore direct that the relevant goods be excised from registration 762353 one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that amendment of the registration shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, the registration be subject to its orders.

   Costs

4. The applicant has claimed its costs and having been successful is so entitled.  I award costs against the opponent according to the official scale.

   Debrett Lyons
   Hearing Officer
   31 March 2008