CSR Limited v XChina South Locomotive & Rolling Stock Corporation - [2014] ATMO 33

TRADE MARKS ACT 1995

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

Re:Oppositions by CSR Limited and CSR Building Products Limited to applications under section 92 of the Act by China South Locomotive & Rolling Stock Corporation to remove trade mark numbers 527385(3) CSR in the name of CSR Limited and 1114793(37) CSR DRIVEWAY SOLUTIONS and 1114795(37) CSR DRIVEWAY SPECIALISTS in the name of CSR Building Products Limited.

Delegate:

Iain Campbell Thompson

Representation:

Removal Opponent: Sue Chrysanthou of Counsel instructed by Hodgkinson McInnes Patents

Applicant: Regan Gourley, a partner in the firm of Cullens, Patent & Trade Mark Attorneys

Decision:

2014 ATMO 33

s92 applications for removal; trade marks used in relation to services; exercise of the Registrar’s discretion in relation to each of the impugned trade marks.

Oppositions to removal established.

Background

In these proceedings under section 92 of the Trade Marks Act 1995 (‘the Act’), China South Locomotive & Rolling Stock Corporation (‘the Removal Applicant’) applied on 3 April 2012 for the removal from the Register of Trade Marks of the following trade mark registrations which are owned by CSR Limited (‘CSR’) or CSR Building Products Limited (‘CSRBP’) as indicated:

Registration No: 527385

Owner: CSR

Priority Date: 22 January 1990

Services:Class 37: Construction, repair and maintenance services associated with the production of buildings materials, construction materials, timber products and sugar

Trade Mark: CSR

Registration No: 1114793

Owner: CSRBP

Priority Date: 23 May 2006

Services: Class 37: Installation services

Trade Mark: CSR DRIVEWAY SOLUTIONS

Endorsement: Provisions of paragraph 44(3)(b) applied

Registration No: 1114795

Owner: CSRBP

Priority Date: 23 May 2006

Services: Class 37: Installation services

Trade Mark: CSR DRIVEWAY SPECIALISTS

Endorsement: Provisions of paragraph 44(3)(b) applied

The applications for removal invoke subparagraph 92(4)(b) of the Act and thus the ‘relevant period’ is the three years ending on 3 March 2012. I note that while the removal applications sought removal of all services in respect of which the trade marks are registered, those removal applications have subsequently, by letter dated 21 February 2013, been amended by seeking, in effect, an exclusion by the addition of the following restriction to the respective specifications of services of the three impugned registrations (rather than their complete removal):
"; none of the aforesaid relating to vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts, fittings and accessories "
On 27 April 2012, CSR Limited and CSR Building Products Limited (‘the Removal Opponent’) filed Notices of Opposition to the removal of the trade marks from the Register. The Notices state:
The Opponent denies any allegation made by the Applicant for Removal under paragraph 92(4)(b) that the 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 services.
Further, if as alleged by the Applicant for Removal, there instead has been no use of the Mark within the period alleged, any failure to use was due solely to special circumstances and not to an intention to abandon the Mark or not use it in connection with the services for which it is registered.
Further, in the circumstances, the Registrar of Trade Marks should exercise discretion by refusing to remove the Mark from the Register
Further, in the circumstances, the Registrar of Trade Marks should in justice exercise or apply any available provisions of the Trade Marks Act, Regulations or practice that favour retention of the Mark on the Register.
The parties have filed evidence in support, evidence in answer, evidence in reply and further evidence as detailed below.
In due course the matter came before me as a delegate of the Registrar of Trade Marks to hear the submissions of the parties. The hearing was in Canberra on 28 March 2014. Sue Chrysanthou of Counsel instructed by Hodgkinson McInnes Patents represented the Removal Opponent; Regan Gourley, a partner in the firm of Cullens, Patent & Trade Mark Attorneys, represented the Removal Applicant by telephone.

Onus

In terms of section 100 of the Act, the burden of proof lies on the Removal Opponent to establish its oppositions to the removals of the registered trade marks.

Evidence

The evidence in these matters comprises:
Evidence in support
Statutory declaration of David Andrew French (‘French 1’) made on 26 November 2012 with Exhibits DAF-1 to DAF-11.
Statutory declaration of David Andrew French (‘French 2’) made on 27 February 2013 with Exhibits DAF-12 to DAF-45.
Statutory declaration of David Andrew French (‘French 3’) made on 27 May 2013 with Exhibits DAF-46 to DAF-60.
Evidence in Answer
Declaration of Wu Jianxing (‘Wu 1’) made on 29 August 2013.
Evidence in Reply
Statutory declaration of David Andrew French (‘French 4’) made on 6 November 2013 with Exhibits DAF-61 to DAF-62.
Further Evidence
Declaration of Wu Jianxing (‘Wu 2’) dated 9 December 2014 (filed following the hearing).
The Removal Applicant, as became apparent at the hearing, erroneously believed it had previously filed Wu 2 as it sought to rely on it to rebut certain submissions of the Removal Opponent which went to the Registrar’s discretion. However, Wu 2 was filed on 28 March 2014 following the hearing, without an accompanying application or fee or explanation of why it had not been properly filed in the proceedings. The fee, application and explanation were subsequently filed on 11 April 2014 after the Removal Opponent had made submissions on 9 April 2014 concerning the admission into evidence of Wu 2 and the Removal Applicant’s non-compliance with these formalities.
This second declaration of Mr Wu does not introduce any fresh material but corrects various factual errors in Wu 1 which the declarant states arose from mis-translations which I gather to be either from English to Chinese or vice versa. Naturally, the Removal Opponent objected to the admission of this evidence into these proceedings but the evidence does add clarity to the assertions in Wu 1. Accordingly, I will treat the factual errors in Wu 1 as having been corrected and observe that they would have had no bearing on the outcome of these decisions.
Mr French, the declarant for the Removal Opponent, is legal counsel of CSR, the parent company and ultimate holding company of CSRBP.
Mr French details the history of CSR as follows:
CSR was originally called the Colonial Sugar Refining Company and started business in 1855. The company was formally registered under the Colonial Sugar Refining Company name in 1887. The company changed its name to CSR Limited in 1973.
CSR began by refining imported raw sugar and gradually over the next twenty years it set up sugar refining mills in Queensland and in Fiji, which began to process Australian grown sugar. Additional mills in other parts of Australia were subsequently established to process the raw sugar.
Some of the major milestones in CSR's sugar business are:
(a) 1901 - after Federation was proclaimed, the Commonwealth Government placed protective duties on sugar and an excise and rebate system was established to foster sugar in Australia;
(b) 1904 - CSR was responsible for breeding the first significantly successful commercial variety of sugar cane, known as Clark's Seedling
(c) 1915 - the Commonwealth Government and the Colonial Sugar Refining Company entered into a written agreement under which the Commonwealth government took over control of the sugar industry. The agreement provided for the fixing of prices of sugarcane in accordance with the "commercial cane sugar" ("CCS") content of the cane. The formula for the CCS was identical with the CSR's original formula;
(d) 1923 - the Queensland state government entered into an agreement with CSR to refine all of Queensland's sugar and this monopoly continued in that state until 1989;
(e) 1970s - the sugar refining business was rationalised with sugar mills outside Queensland being sold off however CSR continued to operate sugar mills in Queensland.
Until strategic decisions were taken by CSR in 2009 to focus on its building products business, CSR remained active in the sugar industry including the conducting of research, refining, manufacturing and marketing sugar and the sale of these products under the CSR brand.
In 1936 CSR initiated research into, and in 1939 the manufacture of, wall-panels made of bagasse – a by-product of sugar cane milling. Mr French details the milestones in the growth of CSR’s non-sugar business as being:
(a) 1945 - CSR purchases Fletcher Holdings Ltd, a large New Zealand building and construction company;
(b) 1946 - CSR's first Gyprock® plasterboard factory in opened at Concord, Sydney;
(c) 1948 - CSR Chemicals Ltd, previously a division of the Colonial Sugar Refining Company Limited is formed;
(d) 1949 - asphalt flooring tile factory begins production at Concord, Sydney;
(e) 1959 - CSR expands its presence in the building and construction industry by acquiring the Bradford family's interest in Bradford Insulation, Masonite Holdings Ltd, manufacturers of hardboard and a controlling interest in Pyneboard Pty Ltd which was formed to manufacture particleboard;
(f) 1962 - the vinyl flooring group was established;
(g) 1965 - additional Gyprock® plasterboard factories opened in Adelaide and Victoria and CSR and Blue Metal Industries take equal shares in Ready Mixed Concrete Ltd;
(h) 1969 - CSR enters the Australian roof tile industry with its acquisition of Wunderlich Ltd, a manufacturer of terracotta roof tiles, cement products and architectural metal products;
(i) 1973 - company name change from the Colonial Sugar Refining Co Ltd to CSR Limited;
(j) 1974 - CSR enters the cement industry and the CSR sugar division was formed;
(k) 1975 - the CSR building and construction materials division was formed;
(l) 1980s and 1990s - CSR continued to expand and consolidate its operations in relation to its rockwool, hardwoods, insulation, aluminium, concrete and brick and roof tile businesses as well as CSR's sugar milling operations.
Mr French’s declarations are well-supported with exhibits and the following paragraphs are a summary of what I consider to be the salient points concerning the use of the trade mark CSR during the relevant period.
The building materials and other goods which were manufactured during the relevant period by companies owned by CSR and in relation to which the trade mark CSR[1] is used[2] include:
Tile and metallic roofing;[3] bricks and pavers;[4] plasterboard and plaster products;[5] insulation;[6] fibre cement sheeting;[7] lightweight cement building blocks, panels and acoustic barriers;[8] ventilation;[9] commercial and residential glass;[10] ceiling tiles.[11]
[1] As well as the trade mark CSR being Australian registered trade marks in various forms, the other trade marks mentioned in these footnotes are also Australian registered trade marks owned by CSR.
[2] These uses occur on the CSR or CSR owned companies’ websites in evidence at DAF-9. The trade mark CSR is used therein as a ‘house mark’.
[3] Under the trade marks CSR and MYSTEEL, TOPCAT Safety Rail, Colorbond, Monier and Wunderlich.
[4] Under the trade marks CSR and PGH.
[5] Under the trade marks CSR and Gyprock.
[6] Under the trade marks CSR and Bradford.
[7] Under the trade marks CSR, Cemintel and Fricker (DAF-45).
[8] Under the trade marks CSR and Hebel.
[9] Under the trade marks CSR and Edmonds.
[10] Under the trade marks CSR and Veridian.
[11] Exhibit DAF-13: CSR 2012 Annual Report Inside Cover under the trade marks CSR and Ceilector.
Services which were offered by CSR under the trade mark CSR and one of its product trade marks during the relevant period included:
Tile roofing services;[12] insulation services;[13] installation of safety platforms;[14] steel roofing installation,^[15]installation of lightweight cement building blocks, panels and acoustic barriers.[16]
[12] Under the trade marks CSR and Wunderlich, CSR accredits roofing specialists.
[13] Exhibit DAF-14. Under the trade marks CSR and Bradford, CSR offers accreditation and advisory services.
[14] Exhibit DAF-15. Under the trade marks CSR and TOPCAT Safety Rail, CSR offers installation of working platform safety systems.
[15] Exhibit DAF-15. Under the trade marks CSR and MYSTEEL, CSR offers installation of steel roofs.
[16] Exhibit DAF-33. Under the trade marks CSR and HEBEL, CSR accredits installers of lightweight concrete panels.
In addition, during the relevant period, CSR has built its own display house at Schofields in Sydney using, inter alia, the above materials to both showcase its products and services and to identify market niches.[17]
[17] Exhibit DAF-24, DAF-25, DAF-26, DAF-27.
In Wu 1 the declarant states that the Removal Applicant makes railway locomotives, passenger trains, freight wagons, bullet trains, metro vehicles and their parts. Mr Wu Asserts that the Removal Applicant:
… uses proprietary rail transit equipment technologies to develop and expand the market of extended products, including electric vehicles, wind generation equipment, automotive parts, marine crankshafts and diesel engines, large power semiconductor devices, construction machinery, etc.
The Removal Applicant has, states Mr Wu, delivered 7800 railway trucks to Australia, railway resistance braking equipment worth S2.9 million and at the time of making the declaration expected to deliver a further $6.2 million of such equipment during 2013.
I note now that the Removal Applicant does not expressly claim to have used any particular trade mark in relation to the goods in the preceding paragraph and that it is seeking registration of the trade mark immediately below:

Application No: 1281817 (IR 989099)

Filing Date: 26 August 2008

Goods/Services: Class 7: Internal-combustion engines (not including engines for steamers, automobiles, tractors, corn combine harvesters, motor vans, chain saws); diesel engines; compressors (machines); engines; generators of electricity; metalworking machines; shaft couplings (machines); crank shafts; connecting rods for machines, motors and engines; springs (parts of machines); taps (parts of machines, engines or motors); valves (parts of machines); agricultural machines; woodworking machines; foundry machines
Class 9: Computers; weighing apparatus and instruments; measures; surveying apparatus and instruments; steering apparatus, automatic, for vehicles; regulating apparatus, electric; mechanisms for counter-operated apparatus; optical communication devices; distribution boxes (electricity); rectifier apparatus (electricity); controlling devices for locomotives (electron) [sic]
Class 11: Refrigerating appliances and installations; cooling appliances and installations; water purifying apparatus and installations; purification installations for sewage; sanitary apparatus and installations; boilers (other than parts of machines); cooking apparatus and installations
Class 12: Locomotive for railway; special vehicles for railway; mine vehicles for railway; engineering vehicles for railway; underground vehicles; locomotive units; tram vehicles; railway cars (namely bullet train); locomotive running devices; propulsion mechanisms for locomotive vehicles; adjusting and controlling apparatus (engines) for locomotive vehicles; brake apparatus for locomotive vehicles; locomotive vehicle bodies; locomotive vehicle hitches; motorcycles; cable transport apparatus and installations; ships; aeronautical apparatus, machines and appliances; luggage trucks; tires for vehicle wheels; transmission apparatus for locomotive vehicles
Class 35: Advertising agencies; advertisement designing; business management and organization consultancy; hotel business management; import-export agencies; sales promotion (for others); auditing; systemization of information into computer databases; organization of exhibitions for commercial or advertising purposes; advertisement planning
Class 37: Electric appliance installation and repair; motor vehicle maintenance and repair; rust proofing; heating equipment installation and repair; dry cleaning
Class 39: Vehicle rental; tourist offices (except for hotel reservation); courier services (messages or merchandise)
Class 40: Laminating; soldering; metal plating; metal tempering; metal treating; boiler-making; waste treatment (transformation); air purification; water treating; textile treating
Class 41: Mobile library services; tuition; arranging and conducting of conferences; organization of competitions (education or entertainment); publication of books (other than publicity texts); production of shows; entertainment; providing sports facilities; club services (entertainment or education); providing models for artists
Class 42: Technical research; engineering; research and development (for others); computer programming; computer software design; quality control; consultation in environment protection; industrial design; consultancy in the field of computer hardware; computer databases rental for data processing

Trade Mark:

Subparagraph 92(4)(b)

Section 92 relevantly provides:
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.
What constitutes use of a trade mark is defined by section 7 of the Act:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

The scope of what may constitute use of a trade mark is informed by the provisions within section 9 of the Act:
9Definition of applied to and applied in relation to
(1)For the purposes of this Act:
(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b)a trade mark is taken to be applied in relation to goods or services:
(i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c)a trade mark is taken also to be applied in relation to goods or services if it is used:
(i)on a signboard or in an advertisement (including a televised advertisement); or
(ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
(2)In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper, lid or cap.
label includes a band or ticket.
Thus, for example, the evidenced use by the Removal Opponent of the trade mark CSR on the sides of delivery trucks also bearing the trade mark VERIDIAN is, in essence, an advertisement or signboard for the glass that the trucks are delivering and hence a use by the Removal Opponent of the trade mark CSR in relation to high performance sheet glass for domestic and commercial buildings.
The Removal Applicant seeks removal of 527385(37) CSR in relation to all services in respect of which it is registered except:
Construction, repair and maintenance services associated with the production of buildings materials, construction materials, timber products and sugar; none of the aforesaid relating to vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts, fittings and accessories
The Removal Applicant also seeks removal of 1114793(37) CSR DRIVEWAY SOLUTIONS and 1114795(37) CSR DRIVEWAY SPECIALISTS in relation to all services for which they are registered except:
Installation services; none of the aforesaid relating to vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts, fittings and accessories.
The specification of services of 527385(37) CSR was the subject of submission by the Removal Applicant who argued for a narrow interpretation of the scope of the specification. The Removal Applicant submitted:
… the specification of services of trade mark no. 527385 must be considered carefully, namely: construction, repair and maintenance services associated with the production of buildings materials, construction materials, timber products and sugar. The words “associated with” cannot be ignored. They clearly tie the relevant construction, repair and maintenance services as being associated with the ‘production’ of building materials. This would not include construction, repair or maintenance services provided to an end user of building materials or construction materials as such services are not associated with the production of the building materials or construction materials.
However, I consider that the interpretation the Removal Applicant wishes to me place upon the above specification would, if I adopted it, render the specification meaningless for the following reason. Section 6 provides:
services of a person means services dealt with or provided in the course of trade by the person.
Accordingly, the ‘construction, repair and maintenance services’ offered or performed by the Removal Opponent would, if restricted in the way sought by the Removal Applicant, be only offered or performed to itself, within its own factories or facilities and not ‘in the course of trade’ to another person. That is, if the Removal Applicant’s interpretation were adopted, the services offered under the registration would not be in return for consideration flowing to the Removal Opponent from a person other than itself.
Such an interpretation obviously unduly restricts the specification of 527385(37) CSR and leaves it without any practical application. Although the meaning of the specification might have been better put, it must, in my consideration, refer to the production of building materials and their subsequent provision to end users of building materials or construction materials.
However, in my view the exclusions sought by the Removal Applicant are problematic as they do not seek the removal of particular services but services as they generally relate to specific goods or their uses. It appears to logically follow that if the Opponent can demonstrate that it has performed or offered services that relate to any of the goods or uses within those sought to be excluded, ‘vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts, fittings and accessories’, it has done enough to show that the restrictions are not appropriate and hence to defeat the applications for removal.
Moreover, the expression ‘railway infrastructure’ must also, in my consideration, be read widely. The principle is akin to that in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 adapted to the Act in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411 where French J said at [50]:
The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
The Macquarie Dictionary defines the word ‘infrastructure’ as meaning:
infrastructure
noun 1. the basic framework or underlying foundation (as of an organisation or a system).
2. the roads, railways, schools, and other capital equipment which comprise such an underlying system within a country or region: *MPs had called for the government to spend its share on country roads and telecommunications infrastructure. –aap news, 2000.
3. the buildings or permanent installations associated with any organisation, operation, etc.
–infrastructural, adjective
–infrastructurally, adverb
It appears to logically follow that the expression ‘railway infrastructure’ includes not only the rails, railbeds, sleepers, bridges, tunnels, embankments, signals and so forth of the track-ways themselves but also the wider installations associated with railways such as passenger stations, platforms, waiting rooms, signal-boxes and control-rooms, loading facilities, sheds, shunting yards and so forth. Thus the ‘exclusion’, ‘none of the aforesaid relating to vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts, fittings and accessories’ includes railway infrastructural buildings, structures and their related parts, fittings and accessories which are to all intents the result of all those commercial building services in relation to which the Removal Opponent (or its accredited installers) has/have used the impugned CSR trade mark including at least ‘Tile roofing services; insulation services; installation of safety platforms; steel roofing installation, installation of lightweight cement building blocks, panels and acoustic barriers.’ The acoustic barriers referred to are those one commonly sees alongside roads and railways which act as large barriers to the egress of sound from within transport corridors.
Thus the Opponent has demonstrated that it has performed or offered services that relate to ‘railway infrastructure or related parts, fittings and accessories’, and has done enough to show that the restrictions are not appropriate and hence to defeat the application for removal, at least in relation to registration 527385(37) CSR.
The Removal Opponent to all intents concedes that it has not, per se, used registrations 1114793(37) CSR DRIVEWAY SOLUTIONS and 1114795(37) CSR DRIVEWAY SPECIALISTS (‘the driveway registrations’) but argues firstly that the use of the trade mark CSR is a use of the driveway registrations and secondly for the driveway registrations’ retention on the Register of Trade Marks under the Registrar’s discretion.
The Removal Opponent points to the decision in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117 (‘Malanda’) wherein the trade marks CHILL and CHOC CHILL were found to be substantially identical. Thus, the argument runs that the use of the trade mark CSR should be a use of the driveway registrations as allowed under subsection 7(1) which provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
For its part, the Removal Applicant argues:
The concept of “substantially identical” requires a side-by-side comparison, taking into account the respective features of the trade marks. Clearly, the addition of two words that are not entirely lacking in inherent adaptation to distinguish moves these trade marks from beyond the realm of ‘substantial identity’ with CSR solus. While the trade marks may be ‘deceptively similar’, this is not sufficient to establish that use of CSR effectively equates to use of CSR DRIVEWAY SPECIALISTS or CSR DRIVEWAY SOLUTIONS with additions or alterations not affecting their identity. Therefore, use of the Trade Mark “CSR” cannot be considered use of “CSR DRIVEWAY SOLUTIONS” or “CSR DRIVEWAY SPECIALISTS”.
It is not necessary that the CSR and driveway trade marks fit an established definition of ‘substantially identical’. Only that the driveway trade marks are the CSR trade marks with additions or alterations that do not substantially affect the identity of the CSR trade marks.
The question thus arises whether the elements DRIVEWAY SPECIALISTS and DRIVEWAY SOLUTIONS are alterations or additions which do not substantially affect the identity of the trade mark CSR. Malanda has been positively applied in, inter alia, FetchTV Pty Ltd v LemonStone Group Pty Ltd [2014] ATMO 2 (FETCH and FETCHTV), Greg Buckley v South Cone Inc [2013] ATMO 29 (REEF CLOTHING COMPANY LOGOS), Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 (WORLD’S NEXT TOP MODEL and AMERICA’S NEXT TOP MODEL), Control Technology Inc v Complete Technology Integrations Pty Ltd [2012] ATMO 23 (CTI and CTI AUSTRALIA), Abercrombie & Kent Group of Companies, S.A. v Carnival plc [2011] ATMO 102 (SPINIFEX and SPINIFEX WINE), The Body Corporate of the Phoenician Cts 27745 v Mantra IP Pty Ltd [2011] ATMO 96 (PHOENICIAN RESORT APARTMENTS and PHOENICIAN), Doteasy Technology Inc v Dot Easy Australia Pty Ltd [2011] ATMO 88 (DOTEASY and DOTEASYAUSTRALIA Logo), South African Airways (Proprietary) Limited v Virtuoso, Ltd [2011] ATMO 30 (VOYAGER and VOYAGER CLUB), OrangeTee.com Pte Limited v OrangeTee Australia Pty Ltd [2011] ATMO 21 (ORANGETEE trade marks with descriptive matter), Boost Juice Holdings Pty Ltd v Boost Foods Pty Ltd [2010] ATMO 93 (BOOST and BOOST FOOD), EXPRESS, LLC v Euromode Australia Pty Ltd [2010] ATMO 71 (EXPRESS WORLD BRAND and EXPRESS ONE OF A KIND).
In Malanda Carr J stated at [38]:
The question to be decided in each case is largely one of fact, provided that the test is properly applied. Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark. Bearing in mind the relative importance of CHILL I give ve1y little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY. In the end, I found myself in agreement with the delegate's reasoning and conclusion which is set out at p 10 of her reasons as follows:
When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison. P B Foods' mark is not simply CHOC CHILL. PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature. In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product. When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a 'total impression of similarity' and the proprietorship claim is supported.
The Removal Opponent referred me to E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (‘Gallo’) where French CJ, Gummow, Crennan and Bell JJ stated at [67]-[69] (with footnotes omitted):
Lion Nathan contended before the primary judge that use of a trade mark consisting of the word BAREFOOT in combination with the device was not use of the registered trade mark, which was the word BAREFOOT simpliciter. The primary judge correctly rejected this submission. The Full Court did not deal with this issue.
In support of this contention Lion Nathan relied on Colorado Group Ltd v Strandbags Group Pty Ltd. The registered trade mark in that case was for the word "Colorado", which, by reason of its geographical significance, was not inherently adapted to distinguish the owner's goods from the goods of other persons as required by s 41(3) of the Trade Marks Act. As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the Trade Marks Act 1955 (Cth) by reason of s 24(1)(d) of that Act. The trade mark for the word "Colorado" had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.
This is to be contrasted with the position in this case. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).
A conclusion that the use of the CSR trade mark is a use of the railway trade marks appears to be to be inevitable.
However, the Removal Applicant submits:
… if the delegate believes that CSR is substantially identical to CSR DRIVEWAY SPECIALISTS and/or CSR DRIVEWAY SOLUTIONS, this could only be in relation to ‘driveway’ related services. Clearly in the context of roofing or insulation related services, the words DRIVEWAY SPECIALISTS and DRIVEWAY SOLUTIONS are arbitrary, and therefore constitute an addition or alteration to CSR solus that affects the identity of the CSR trade mark. As the Opponent has not demonstrated any use of CSR solus in relation to driveway related services, the issue of substantial identity is therefore moot.
However, it is probable, in my view, that the question is better expressed as, ‘has the Removal Opponent used the driveway trade marks or those trade marks with alterations or additions that do not substantially affect their identity in relation to the services for which they are registered?’
The Removal Opponent has used its trade mark CSR in relation to ‘Tile roofing services; insulation services; installation of safety platforms; steel roofing installation, installation of lightweight cement building blocks, panels and acoustic barriers’ all of which may be characterised as installation services. It would have been appropriate, in my consideration, that the driveway registrations be removed from the Register for all but those services however, the adjusted specifications would be wider than those currently sought by Removal Applicant as the CSR services are implicitly offered to all construction or installation services, which includes those relating to ‘railway infrastructure’.

Registrar’s Discretion

If I am wrong in relation to whether all or some of the Removal Opponent’s trade marks have been used, I would exercise the Registrar’s discretion and not remove them from the Register for the following reasons.
Section 101 of the Act relevantly provides:
(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.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
The nature of the discretion afforded to the Registrar under section 101 was discussed by Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69; [2008] AIPC 92-293 at [198]:
The discretion presently conferred by s 101(3) of the 1995 Act, it has been said, confers a "broad discretion": C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [72], 52 IPR 42 at 73. And it is a discretion, it is considered, no longer constrained by any requirement to establish "exceptional circumstances"; it is a discretion which may be exercised "when it is reasonable to do so": Kowa Co Ltd v Organon [2005] FCA 1282, 223 ALR 27. Lander J there indicated that he was of the view that it was not reasonable not to remove the mark in issue. Of the discretion, his Honour concluded:
[97] ... There are significant differences in the section considered by the Court of Appeal in Lyons [(1959) 76 RPC 120] and s 101(3). In the English section, regard had to be had to the bona fide use of the trade mark during the relevant period. No such regard is had in s 101(3). It is always dangerous to have regard to a statement of principle in relation to the exercise of a discretion in a section in an Act which is not in pari materia with a section of a second Act for the purpose of considering the way in which a discretion should be exercised in that second Act. [98] In Upjohn [(1998) 42 IPR 576] it was said that the power may be applied in "exceptional circumstances". Section 101(3) does not say that. There is no warrant to read the expression "exceptional circumstances" into the subsection. That would be to give the subsection a construction contrary to its express terms. In my opinion, the discretion which is to be exercised under s 101(3) is to be exercised as the subsection itself says, "when it is reasonable to do so". To suggest that the party against whom the non-use has been put in a case such as this should establish exceptional circumstances is to put too high a hurdle in that party’s path.

As observed by Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 (‘Pioneer’) at [167]:
In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
othere had been no abandonment of the trade mark ;
othe registered proprietors of the mark still had a residual reputation in the mark;
othere had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
othe applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
othe registered proprietors were not aware of the applicant’s sales under the mark.
Bennett J also noted at [173] in Pioneer that the discretion is not limited and also at [176] that the date at which the decision-maker should consider the facts relevant to the discretion is as at the date upon which the decision-maker would make the order for removal (E & J Gallo Winery v Lion NathanPty Ltd (No 2) (2008) 78 IPR 334 at [4] per Flick J).
Here the Removal Opponent’s argument has two main thrusts. Firstly, that the Removal Opponent’s CSR brand has a significant history and reputation in Australia. Secondly, that if the impugned trade marks had not been used in relation to the impugned services, the trade marks had been used for ‘similar services’ and that, ‘even if the Hearing Officer determines that use in relation to certain items of the Specified Services now sought to be excluded by the Removal Applicant has not been proved, such items can still be retained on the Register on the basis that they are "similar" services to the other services: Spear & Jackson (Australia) Pty Ltd v Amalgamated HardwareMerchants Ltd [2012] ATMO 80; [2012] 98 IPR 261; [‘Spear’].’
In Spear the Registrar’s delegate referred to the following passage in McHattan, Geoffrey James v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481; (1996) 34 IPR 537:
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 s 92, 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.
The Registrar’s Delegate then permitted the trade mark ATLAS to remain registered in respect of ‘goods of the same description’ as those for which use had been shown. I also note that subsection 101(4) makes express provision in this regard.
In the instance before me there are similar considerations in regard to registration 527385(37) CSR: the Removal Opponent has shown use of that impugned trade mark in relation to ‘Tile roofing services; insulation services; installation of safety platforms; steel roofing installation, installation of lightweight cement building blocks, panels and acoustic barriers’. If such installation services do not include those in relation to ‘railway infrastructure or related parts, fittings and accessories’ then those services which the Removal Opponent has performed during the relevant period are similar services to those that do relate to ‘railway infrastructure or related parts, fittings and accessories’.
However, I consider that the better view is that the Removal Opponent’s accredited installers presumably install the Removal Opponent’s products on all types of structures which may or may not be included under the general description ‘railway infrastructure’.
I also observe that the exclusion might be viewed as impractical for the Removal Opponent to enforce as it appears to place an obligation on the Removal Opponent to monitor all of its accredited installers to ensure that they do not install on behalf of the Removal Opponent or under its aegis on any structure which could be construed as being ‘railway infrastructure’.
The submission that the driveway registrations should be preserved because of the reputation of the CSR trade mark in relation to building products and services is problematic. Without deciding one way or another, I observe that an obvious reservation is that if the Removal Opponent believes that its trade marks have such a reputation, it should register its trade marks as defensive trade marks which are immune from removal for non-use.
However, I consider that the argument has considerably more strength when the Removal Opponent has had use and reputation in the relevant period of a closely similar[18] trade mark in relation to closely related or identical services as those of the impugned registrations. Thus, if the use by the Removal Opponent during the relevant period of the CSR trade mark in relation to ‘Tile roofing services; insulation services; installation of safety platforms; steel roofing installation, installation of lightweight cement building blocks, panels and acoustic barriers’ is not a use of the driveway trade marks (with alterations or additions which do not affect their identities), I would, because those trade marks are closely similar to the CSR trade mark which was both used in relation to ‘installation services’ during the relevant period and had a reputation in relation to building products and related installation services, exercise the Registrar’s discretion in relation to those trade marks and retain them on the Register.
[18] That is, the use of the trade mark CSR with alterations or additions which do not affect its identity.
Thus, if I am wrong in relation to whether the CSR and driveway trade marks have been used, I consider that it is appropriate to exercise the Registrar’s discretion in relation to each of the impugned registrations and to retain them on the Register.

Decision

Section 101 of the Act relevantly 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 am not satisfied that the grounds on which the applications were made have been established; I am satisfied that the Removal Opponent has discharged the burden on it under section 100 of the Act in relation to both use and why the exercise of the Registrar’s discretion is appropriate.

Costs

It is appropriate that costs follow the event and I award costs to the Removal Opponent at the official scale.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

29 April 2014