Cypher Pty Limited v Halliburton Energy Services Inc

[2015] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Cypher Pty Limited to removal application filed by Halliburton Energy Services Inc of trade mark registration 1201540(17, 19, 40, 42) – CYPHER Logo – owned by Cypher Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Removal Opponent: Peter Madigan of Counsel instructed by Erin Eagles of James Tuite & Associates, Lawyers

Removal Applicant: Robert Kelson of Callinans

Decision:

2015 ATMO 37

s92(4)(b): trade mark has been used during relevant period only in relation to certain services - exercise of the Registrar's discretion.  Opposition to removal partially established; trade mark to remain registered for the goods but for restricted services.

Background

1. In this matter Halliburton Energy Services Inc., (‘the Removal Applicant’), made application on 30 July 2013[1] under subparagraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the registration appearing below from the Register of Trade Marks (‘the Register’) in respect of all goods and services for which it is registered:

   [1] Thus the period of time (‘the Relevant Period’) for the purposes of subparagraph 92(4)(b) is the three years ending on 30 June 2013.

Registration No:  1201540

Priority Date:  10 October 2007

Goods/Services:  Class 17: Composite plastics materials for use in manufacture; extruded plastics (semi-finished products); extruded plastics for use in manufacture; plastics for use in manufacture; plastics in extruded form for use in manufacture; recycled compound plastics; recycled compound plastics for use in manufacture; recycled plastic materials for use in manufacture; recycled plastics; glass reinforced plastics (semi-worked or semi-finished); glass reinforced polymers (semi-worked or semi-finished)

Class 19: Barriers of plastic materials for civil engineering purposes; barriers of plastic materials for construction purposes; boards made of plastic materials for use in building; building boards of plastic materials; building materials of concrete reinforced with plastics and glass fibres; building materials of plastic material; foam plastic for use in building; non-metallic building materials in the form of plastic extrusions; plastic articles for use in building (construction); plastic articles for use in civil engineering construction; plastic articles for use in construction; plastic barriers (structures); plastic building boards; plastic materials for constructional purposes; plastic panels for use in building; plastic panels for use in construction; plastic pipes (rigid) for water; sections of plastics for use in building; building materials consisting of glass; building materials made of glass fibres; building materials of glass; glass building materials; non-metallic building elements incorporating glass

Class 40: Extruding of plastics; forming or moulding of plastics; moulding of plastics; recycling of plastics; treatment of plastics

Class 42: Management of scientific research projects; scientific and technical analysis; scientific and technological services; scientific research into the development of new products

(‘the Good and Services’)

Trade Mark:  

(‘the Trade Mark’)

1. On 26 November 2013 the owner of the Trade Mark, Cypher Pty Ltd (‘the Removal Opponent’), filed Notice of Intention to Defend having previously filed its Statement of Grounds and Particulars (‘the Statement’) on 1 November 2013.  The Statement asserts that the Trade Mark was used in good faith during the Relevant Period in relation to the impugned Goods and Services.

2. The parties filed their evidence (as is further discussed below) in accordance with the Trade Mark Regulations 1995.  Subsequently, both parties requested to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 16 April 2015.  The Opponent was represented by Peter Madigan of Counsel instructed by Erin Eagles of James Tuite & Associates, Lawyers.  The Applicant was represented by Robert Kelson of Callinans, Patent & Trade Mark Attorneys.

Evidence

1. The evidence filed by the parties comprises the following declarations:

In Support

Ronald Weyman Belle Isle made on 26 February 2014 with Exhibits RWBI-1 and Confidential Exhibit RWBI-2

In Answer

Daniel James Wilson made on 20 June 2014 with Exhibit DJW-1 (‘Wilson 1’)

Daniel James Wilson made on 20 June 2014 with Exhibits DJW2-1 and DJW2-2 (‘Wilson 2’)

Onus

1. Section 100 of the Act provides that the burden is on the Removal Opponent to establish the use of the Trade Mark:

Evidence

1. Before discussing the evidence, it is convenient to observe that the Removal Applicant has a pending (deferred) application for registration the details of which are:

Application No:                1553059

Priority Date:  22 April 2013

Goods/Services:  Class 42: Oil and gas well services, namely, analyzing and developing optimal geophysical and geological parameters, tailored treatments and material volumes, for purposes of providing a comprehensive geophysical and geological earth model for well and fracture location, well spacing, and completion design 

Trade Mark:  CYPHER

1. Mr Kelson in his submissions on behalf of the Removal Applicant stated:

   The Applicant is not disputing the evidence of use of the […] Trade Mark in relation to the goods identified in the Evidence-in-Answer or the evidence of use of the […] Trade Mark in relation to the services in Class 40 identified in the Evidence-in-Answer.

2. What the Removal Applicant debates is whether the Removal Opponent’s evidence shows use of the Trade Mark in relation to the specified scientific and technical research services in Class 42 and thus it is appropriate to discuss the evidence only in relation to those services.

3. Mr Belle Isle, having identified the Removal Opponent as ‘Cypher’, explains:

   I established the Cypher business in 2000 and I have been a director of Cypher since its registration on 15 July 2003. A copy of an ASIC Historical Company Extract for Cypher dated 21 February 2014 is located at Tab B of Exhibit RWBI-1.

   I am also the sole director of Cypher Energy Pty Ltd (Cypher Energy) and am authorised to make statements on its behalf having access to its books and records. A copy of an ASIC Historical Company Extract for Cypher Energy dated 24 February 2014 is located at Tab C of Exhibit RWBI-1.

   Cypher is an intellectual property holding company and does not trade. Business under and by reference to the Trade Mark is conducted by Cypher Energy.

   Cypher Energy is authorised by Cypher to use the Trade Mark.

   Cypher Energy conducts business primarily under its entity name, and also operates its waste management business under the business name 'Cypher Plastics Recyclers', which was registered in Australia on 19 May 2000 (the Business Name). A copy of Current and Historical Business Name Extract for the Business Name dated 3 February 2014 is located at Tab D of Exhibit RWBI-1.

   Cypher Energy's key business activities since incorporation include the design, development and implementation of effective resource management solutions across the following core capabilities under and by reference to the Trade Mark:

   (a) energy management

   (b) electrical and refrigeration contracting

   (c) environmental management

   (d) facility management

   (e) waste management

   (f) product development

4. Mr Belle Isle says of the impugned services in Class 42:

   Cypher Energy's other business activities since incorporation involve product development and commercialisation stemming from scientific research and technical analysis performed as part of ongoing resource management projects under and by reference to the Trade Mark. These projects include product development of plastic and composite plastic materials for use in civil engineering applications.

   […]

   At Tab H of Exhibit RWBI-1 is a CD containing a video testimony of the proprietor of Good Guys, Capalaba and published by Redland Shire Council. In that video, the proprietor refers to the Trade Mark aurally in the context of a trial of a new Power Plateau product developed by Cypher Energy. The Power Plateau is an energy conservation product developed as part of Cypher Energy's research and development into new products. This particular product optimises the incoming power to an energy using facility to reduce the volume of energy required to be delivered from the electricity network and thus reducing the associated energy costs.

   At Tab 4 of Confidential Exhibit RWBI-2 is a bundle of Cypher Quotations. The quotations utilise the Trade Mark. The quotations relate to the Power Plateau product referred to in paragraph 29 above, which was developed by Cypher Energy and provided as part of Cypher Energy's scientific and technological services. The quotations also relate to:

   (a) proposal for facility asset monitoring and remedial recommendations (at pages 40-41, 71 and 74 inclusive);

   (b) Cypher's energy efficiency project, which involves the development and implementation of a carbon monoxide control system utilising proprietary software to control the volume of toxic gases present in the facility car park and regulate the speed of ventilation equipment accordingly to optimise energy consumption (at pages 8-9, 19-27, 42-44, 68-70, and 75-77 inclusive);

   (c) an assessment and later design, building, supply, installation and commissioning of a measurement and analysis system for on-billing separate lots within the facility (at pages 13-14, 33, 45, and 59-60 inclusive);

   (d) development of noise abatement equipment control solution to control key equipment at a facility so that it provided both the required performance levels and also quiet operation (at pages 80-83 inclusive);

   (e) a product designed and developed by Cypher Energy for the purpose of reducing supply voltage during normal operation and overall power consumption (at pages 4-5 inclusive);

   (f) scientific and technological services required to diagnose, design a remedial solution and project manage build and installation of solution (at pages 84-85 inclusive); and

   (g) scientific and technical analysis services to determine opportunities for developing energy conservation products and solutions (at pages 64-67 inclusive).

   At Tab 5 of Confidential Exhibit RWBI-2 is a bundle of reports prepared and commissioned by Cypher Energy throughout the 2012 year. All reports utilise the Trade Mark. The reports are primarily technical analysis documents and relate to:

   (a) facility asset monitoring and remedial recommendations or calibrations (see report at pages 193-258, 271, 285, 288-303, and 306-323 inclusive);

   (b) projection of energy savings with respect to the Power Plateau product (see report at pages 326-327 inclusive);

   (c) an analysis of gas consumption (see report at pages 328-332 inclusive);

   (d) an analysis of an energy efficiency project and estimated projected energy savings (see report at page 325). This energy efficiency project involved the development and implementation of carbon monoxide control system utilising proprietary software to control the volume of toxic gases present in the facility car park and regulating the speed of ventilation equipment accordingly to optimise energy consumption;

   (e) energy audit reports (see report at pages 92-98, 134-150 and 153-183 inclusive);

   (f) analysis for electrical safety systems at a facility (see report at pages 87-89 inclusive);

   (g) a power consumption survey (see report at pages 86 and 324 inclusive);

   (h) facility asset safety management and improvements (see report at pages 286-287, and 304-305 inclusive);

   (i) electrical test reports (see report at pages 90-91, and 187-192 inclusive);

   (j) non-destructive facility asset safety condition monitoring (see report at pages 259-270 inclusive).

5. The balance of Mr Belle Isle’s addresses of the Class 42 use of the Trade Mark is largely supporting comments and materials for the above.

6. Mr Wilson is a trade mark attorney for Spruson & Ferguson who then acted for the Removal Applicant.  Wilson 1 exhibits the results of a search of the register of trade marks – the object or purpose of this search is not clear.  Wilson 2 is a critique of the declaration of Mr Belle Isle and observations addressing the differences between the services of the parties in Class 42.

Section 92(4)(b)

1. Relevant to the ground under section 92(4)(b), section 92 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.

2. It is convenient to continue to focus on the Class 42 services that the Removal Opponent claims to have offered or performed, the use of the Trade Mark in relation to other goods and services not being challenged.

3. I note in passing while commencing my discussion that, in my consideration, the evidence does not establish that the Removal Opponent performs ‘scientific research services’ in Class 42.  The services in Class 42 that the Removal Opponent performs may be more properly described as ‘technological research services’.  The words ‘science’ and ‘technology’ can be, and often are, used interchangeably.  But the goal of science is the pursuit of knowledge for its own sake while the goal of technology is to create products or processes that solve problems and improve human life.  Simply put, technology is the practical application of science.[2]

   [2] >

   With the foregoing in mind, the Removal Opponent has shown that it has performed technological research services in relation to energy management, electrical and refrigeration contracting, environmental management, facility management, waste management and also product development as far as that relates to the preceding services.  It is appropriate that the Trade Mark be removed from the Register for its registered services in Class 42 which do not fall within the scope of the foregoing services.

The Registrar’s Discretion

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   […]

   (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.

   (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.

2. In Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94; (2011) 90 IPR 337; [2011] AIPC 92-409 Lander J said of the discretion:

   Once non-use has been established the trade mark should be removed “unless sufficient reason appears for leaving it there”. In Re Carl Zeiss Pty Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1, Kitto J said at 11:

   It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung’s omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there.

   In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I rejected a contention that s 101(3) required the party seeking the exercise of the discretion to show “exceptional circumstances”. Flick J arrived at the same conclusion in E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at [198] which was not overturned by the Full Court on the appeal. So also did Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 at [168].

   Section 101(4) informs the Registrar (and, on appeal, the Court) of the matters that the Registrar may take into account in exercising the discretion under subsection (3) not to remove a trade mark from the Register. However, s 101(4) does not purport to limit any other matters to which the Registrar (or the Court) may take into account. In determining whether it is reasonable for the mark to remain on the Register under s 101(3), s 101(4) permits the court to take into account the trade mark owner’s use of the mark on goods which are “similar to” the goods specified in the registration.

3. Further, the discretion is unlimited.[3]

   [3] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300 at [167], [172] and [173].

4. The Removal Opponent’s use of the Trade Mark in relation to goods (mainly of plastic) in Classes 17 and 19 and the extrusion of plastics in Class 40 are unchallenged by the Removal Applicant.  These particular goods and services are likely to be the subject of some technological research services by the Removal Opponent even though such services may not be explicitly referred to in its evidence.

5. Further, there may be some blurring of the distinction between ‘scientific research’ and ‘technological research’ services.  The article previously referred to (fn 2) states:

   One source of confusion [between science and technology] is the undoubted relationship that exists between science and technology and Sparks pointed out that even though science and technology overlap in an area which might be referred to as “applied science”, there are a number of important differences between the two, even though these differences might not be self-evident to an average member of the general public who, through neglect and through repeated use of the phrase “science and technology” has lost the distinction between “science” and between “technology”. The two cannot be told apart, which is hardly surprising given that, as Mayr put it: “ . . . practical usable criteria for making sharp neat distinctions between science and technology do not exist.”

1. It is therefore appropriate that any restriction to the Removal Opponent’s services in Class 42 reflects the actual use of the Trade Mark; the Opponent’s use of the Trade Mark on research services related to extruded plastics and plastics extrusion services; and the confusion between science and technology which I have discussed.

Decision

1. Subsection 101(1) 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.

2. The application is relevantly related to all services in Class 42 in respect of which the Trade Mark is registered.

3. I direct that the Trade Mark be removed from the Register for all services in Class 42 in respect of which is registered with the exception of the following:

   Scientific and technological research services in relation to energy management, electrical and refrigeration contracting, environmental management, facility management and waste management; scientific and technological research services in relation to plastics extrusion and plastics extrusion services; and, product and process development services that directly relate to all of the foregoing services.

4. I will add, for the Removal Applicant’s benefit that, in my consideration, none of the amended services are closely related to the geophysical and geological services which it offers or performs under its CYPHER trade mark.

Costs

1. Both parties may be regarded as having had a measure of success in this matter and I accordingly direct that each bear its own costs.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

6 May 2015