Dalmec Pty Ltd v Dalmec S.p.A

[2018] ATMO 103

TRADE MARKS ACT 1995

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

Re:Oppositions by Dalmec Pty Ltd to applications under section 92 of the Act by Dalmec S.p.A. to remove trade mark numbers 551446 and 551447(7, 9) - DALMEC (Logo) - in the name of Dalmec Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions only Applicant: Andrew Fox of Counsel, instructed by Davies Collison Cave
Decision:	2018 ATMO 103 Trade Marks Act 1995 Section 96 opposition to removal application - no use established in Classes 7 & 9. ­ Registrar’s discretion not applied –   registrations to be removed for all goods.

Background

1.These matters are proceedings under subsection 92(4) of the Trade Marks Act 1995 (‘the Act’) in which by applications filed on 20 July 2016, Dalmec S.p.A. (‘the Applicant’) has sought the removal from the Register of the trade marks appearing below (‘the Opposed Marks’) in respect of all of the goods for which they are registered:

Trade Mark number	551446	551447
Trade Mark
Registered from	5 May 1991	5 May 1991
Goods	Class 7: Machines for pneumatic manipulation, materials handling, manipulating, balancing in a weightless condition, moving, transporting, lifting, holding and generally handling materials, goods and objects	Class 9: Electronic control devices for machines for balancing in a weightless condition, pneumatic manipulation, materials handling, manipulating, transporting, lifting, holding, and general handling of materials, goods and objects
Endorsements	Registration gives no right to the exclusive use of the letter D except as represented in the mark.* Registered under provisions of paragraph 45(1)(b).* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*	Registration gives no right to the exclusive use of the letter D except as represented in the mark.* Registered under provisions of paragraph 45(1)(b).* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*

1. On 15 September 2016, by Dalmec Pty Ltd (‘the Opponent’) filed Notices of Intention to Oppose the removals. On 12 October 2016 the Opponent filed Statements of Grounds and Particulars.

2. The matters came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 1 March 2018.  The Opponent did not appear at the hearing and relied on written submissions. The Applicant was represented by Andrew Fox of Counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys.

   Evidence

3. The parties filed and served the following declarations in evidence:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
John Allan Czinner	Director of Parent Company of Opponent	1.02.17 “Czinner 1”	Attachments 1 to 3
Evidence in Answer
Luciano Dallago	Chief Executive Officer of Applicant	5.05.17 “Dallago”	LD-1 to LD-13
Evidence in Reply
John Allan Czinner	Director of Parent Company of Opponent	11.07.17 “Czinner 2”	JC-1 to JC-18

Legal Principles

5.Section 92 relevantly states:

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:

(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)to use the trade mark in Australia; or

(ii)to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)has not used the trade mark in Australia; or

(v)has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(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.

1. Paragraph 92(4)(a) consists of two elements: no intention to use in good faith, and no use in good faith. In contrast, s 92(4)(b) is established simply where no use or use in good faith can be shown within a particular three year period. Section 93 of the Act adds a requirement to applications under s 92(4)(b) - these cannot be filed until five years after the filing date of the trade mark, but the Opposed Marks meet this requirement.

2. If the Opposed Marks were shown to have been used in good faith in the period from 20 June 2013 to 20 June 2016 (‘the Relevant Period’), neither of the grounds for removal would be established. Alternatively, should no use in good faith be shown in the Relevant Period, s 92(4)(b) would have been completely established but s 92(4)(a) would require further enquiry into whether the Opponent (or its predecessor in title) held a subjective intention on 5 March 1991 to use the Opposed Marks, and whether the Opponent (or its predecessor in title) had used the Opposed Marks between 5 March 1991 and 19 June 2013. But embarking on the extra enquiries required by s 92(4)(a) would be pointless here, since the object of the provision - establishing a ground for removal - would have already been done under s 92(4)(b). Given this, I have limited my consideration below to the ground for removal under s 92(4)(b) of the Act.

3. Section 100(1) of the Act provides that the Opponent bears the onus of rebutting the allegation made against it under s 92(4), which it may do by, inter alia, establishing that the Opposed Marks, (or, per s 100(3)(a), the Opposed Marks with additions or alterations not substantially affecting their identities), were used in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

4. The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (Gallo).[1]

   [1] (2010) 241 CLR 144 at [41] – [43]

5. In Gallo the Court also cited its  Full Court decision in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (Estex) [2]:

   "[W]hen an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer."

   [2] (1967) 116 CLR 254 at 271.

6. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[3].  A single bona fide use of a trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[4].  However, Wilberforce J, in Nodoz Trade Mark[5] (Nodoz), said that if a registered owner relies on one single act of use of a trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   [3] [1982] FSR 72

   [4] [2001] FCA 261; (2001) 51 IPR 149 at [17]

   [5] (1962) RPC 1 at 7.

7. The tribunal may not be persuaded by evidence that is solely from the internal files of an opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark[6]; although one invoice, if genuine, will suffice: Geo W McPherson v Remington[7].

   [6] [1977] RPC 131.

   [7] (1999) 47 IPR 636

8. Although not raised by the Opponent in its submissions, in the event that I do not find use established I may be required to consider s 101 of the Act, which deals, inter alia, with the Registrar’s discretion:

   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 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) 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.

9. In Pioneer Computers Australia Pty Ltd v Pioneer[8] Bennett J made the following observations concerning the Registrar’s discretion:

   [8] KK [2009] FCA 135; (2009) (2009) 80 IPR 38.

   [167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   [168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   […]

   [171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

   […]

   [176] The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal (E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [4] per Flick J).

   Discussion

   15.I am satisfied that Dallago establishes that the Applicant is an Italian manufacturing company that manufactures mechanical and hydraulic hoists, manipulators, and balancers. These goods are technical and specialised, and used in industries such as automobile manufacture, textile manufacturing, and food, wood and ceramic manufacturing.  The goods are as described in the classes 7 and 9 specifications for the Opposed Marks.

10. The Applicant has been manufacturing its goods in Italy since the 1960s, when it first coined its business name – ‘Dalmec – based on the surname of the company’s owners combined with the Italian word ‘meccanica’.

11. The Applicant adopted a stylised logo, identical to the Opposed Marks, in Italy in 1972/1973, and has applied it to its goods thereafter.

12. Dallago states, and I accept, that on 21 April 1989, a company called Dalmec (Australia) Pty Limited with a head office in New South Wales, was established for the purpose of distributing the Applicant’s goods in Australia. The shareholding in that company was 65% held by a Mr Douglas John Parker and 35% held by the Applicant.

13. None of the evidence is specific about the details; however, it is apparent that in early 1990 Dalmec (Australia) Pty Limited was wound up and the Opponent’s parent company (Personal & General Group Pty Ltd – ‘PGG’) purchased its assets in May 1990, including “[a]ny rights which the company may have in the name Dalmec.”[9]

    [9] Czinner 2, Exhibit JC-2.

14. PGG was the parent company of Inkerman Pty Ltd (‘Inkerman’), which renamed itself to Dalmec Pty Limited in June 1990. The Applicant entered a distribution agreement with Inkerman in early 1990, for the purposes of Inkerman/the Opponent distributing the Applicant’s goods as agent for the Applicant.[10]

    [10] Czinner 2, Exhibit JC-9

15. The distribution agreement was terminated “in 2015”.[11]

    [11] Czinner 2, [38.6]

16. As Evidence in Support, Czinner 1 contains three exhibits that purport to demonstrate use of the Opposed Marks:

    ·     Attachment 1 is a photograph taken during the period 7 to 10 May 2013 at a trade fair, and showing the Opposed Marks applied to relevant goods;

    ·     Attachment 2 is a photograph that Czinner 1 at [3(ii)] states is ‘a photo of our Product with Trade Mark which was sold to Weir Minerals in Queensland and which we installed in April 2015’; and

    ·     Attachment 3 is a photograph of some sort of knob bearing the Opposed Mark and purporting to have been sold to a customer on 12 May 2016.

17. Attachment 1 only shows purported use outside the Relevant Period and does not assist the Opponent.

18. Attachment 2 is, according to Dallago [56] and supported by Exhibit LD-11, actually taken at the Applicant’s warehouse in Italy. While the photographs in Czinner 1 Attachment 2 and Dallago Exhibit LD-11 are taken from different perspectives, they are clearly showing the same building interior.

19. Dallago states, at [58], that the Applicant had provided a machine of the type shown in the photographs directly to an Australian company. Czinner 2 at [29] to [33] repudiates the Applicant’s assertions that the machine was supplied directly by the Applicant and reiterates that it sold the machine to Weirs Minerals in Queensland during the Relevant Period. Dallego Exhibit LD-13 exhibits a delivery order, dated 15 December 2014, relating to an order to be shipped from Italy to Weirs Minerals that cites the Opponent as distributor.

20. According to Dallago [59] the product shown at Attachment 3 displays a batch number of goods manufactured in 2007. However, in reply Czinner 2 exhibits at JC-4, a purchase order, made during the Relevant Period, for the same kind of item and identified by the same code number shown in Czinner 1 Attachment 3.

21. Mr Fox for the Applicant submitted that the evidence adduced by the Opponent did not establish use of the Opposed Marks at all or, in the alternative that any use of the Opposed Marks was not in respect of the specified goods; rather any use was as distribution services.

22. The Opponent relies very much on Czinner 2 Exhibit JC-2, which is a letter showing the terms of agreement between the mortgagee in possession of Dalmec (Australia) Pty Limited’s assets and the Opponent, in particular item 4: “[a]ny rights which the company may have in the name Dalmec.”

23. However, I do not consider such rights included the intellectual property rights in the Applicant’s trade mark. The later distribution agreements between the Applicant and the Opponent show that the Applicant specifically retains its intellectual property rights including “trade marks [and] logos”, while allowing the Opponent to use the name “Dalmec’ in association with its business of supply and servicing of the Applicants goods.

24. Attachments 1 and 2 to Czinner 1 are not evidence of use during the Relevant Period of the Opposed Marks in relation to the goods specified in the registrations. Attachment 1 only shows an activity outside of the Relevant Period. Attachment 2 is a random photograph of the Applicant’s goods in its Italian factory, not what deponent in Czinner 1 says it is at [3ii].

25. The item sold by the Opponent and exhibited at Attachment 3 to Czinner 1, is identified on the purchase order at Czinner 2 Exhibit JC-14 as a ‘regulator, pressure, relieving: 14”G’. This does not seem to fit the descriptions of any of the specified goods for the Opposed Marks. In the event that the item is a good of the same description, I consider the trade mark use to be by the Applicant under the principle in Estex cited above at [10].

26. Alternatively, if any of the Opponent’s evidence of purported use (in the Relevant Period), could be characterised as evidence of use at all, it does not evidence use of either of the Opposed Marks by the Opponent with respect to the Opposed Goods.

27. I am not satisfied that any of the goods specified in the registrations have been used by the Opponent under the Opposed Marks during the relevant period.

28. There is nothing in the evidence to persuade me to exercise the Registrar’s discretion not to remove the Opposed Marks from the Register for all goods specified in the registrations.

    Decision and Direction

    35.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.

1. The applications for removal in relation to the Opposed Marks have not been rebutted by the Opponent. I direct that the Opposed Marks be removed from the Register one month from the date of this decision. If the Registrar is served with notices of appeal on or before that time, the registrations will not be removed until the appeals are withdrawn or discontinued. Otherwise, the registrations will be subject to the decision of the Court.

   Costs

   37.The Applicant has been successful in relation to the application for removal of the Opposed Marks. I direct that costs in relation to the opposition be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Jock McDonagh
   Hearing Officer
   Trade Marks Hearings
   27 June 2018