Datis Technology Pty Ltd v Vodaphone Hutchison Australia Pty Limited

[2012] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Datis Technology Pty Ltd to application under section 92 of the Act by Vodaphone Hutchison Australia Pty Limited to remove trade mark number 1020483(38) - MESSAGEMATE - in the name of Datis Technology Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: no representation or submissions. Applicant: Shehana Wijesena of Middletons Lawyers
Decision:	2012 ATMO 78 Section 96: s92(4)(b) – no use in non-use period – no evidence of circumstances which were an obstacle to use – exercise of Registrar’s discretion – trade mark to remain on the register– no award of costs.

Background

1. Datis Technology Pty Ltd (‘the Opponent’) is the registered owner of trade mark registration number 1020483, relevant details of which are as follows:

   Trade Mark No:     1020483

   Trade Mark:          MESSAGEMATE

   Registered from:     15 September 2004

   Services:Class 38: Telecommunications

2. On 5 October 2010 Vodaphone Hutchison Australia Pty Limited (‘the Removal Applicant’) filed an application under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the trade mark from the Register in respect of the services for which it is registered on the grounds of non-use in the three year period ending on 5 September 2010 (‘the relevant period’).

3. On 27 January 2011, the Opponent lodged a Notice of Opposition, citing three grounds of opposition: that the application did not comply with the requirements of Section 92, that the trade mark was in fact used during the relevant period, and seeking favourable exercise of the Registrar’s discretion.

4. On 27 July 2011, the Opponent filed and served evidence in support of its Opposition, being a declaration made by Eric Tuohy, managing director of the Opponent, dated 27 July 2011.

5. I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 19 June 2012. The Opponent was not represented and did not provide any written submissions in support of its Opposition. The Removal Applicant was represented by Shehana Wejesena of Middletons Lawyers.

   Evidence

6. The evidence served and filed in this matter is as follows:

Declarant	Position	Date	Exhibits
Evidence in support
Eric Touhy ‘Touhy’	Managing Director, Datis Technology Pty Ltd	27 July 2011	ET-1 to ET-14

1. A brief history, as described in the evidence, is as shown in the following paragraph.

2. In October 1997, the Opponent was incorporated by Mr Touhy and from 2007 was actively promoting a telecommunications call management system under the MESSAGEMATE trade mark. There is evidence of the sale and advertising of the Opponent’s “Voice Director” call management equipment during the period 2007 to 2009.

   Legal Framework

3. Subsection 92(4) of the Act provides:

   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.

   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.

4. Section 100 of the Act specifies that the onus is upon an opponent to rebut any allegations made under section 92. It is for an opponent, therefore, to establish that it used the trade mark in good faith in the relevant period.

5. Alternatively an opponent may establish that it did not use the trade mark during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period[1]. However, the Opponent did not raise this issue in the Notice of Opposition or support it with evidence.

   [1] Subsection 100(3)(c).

6. The Registrar retains the discretion not to remove a trade mark from the register even if the grounds upon which the removal application was made have been established[2].

   [2] If satisfied that it is reasonable to do so, see subsection 101(3) of the Act.

7. The Opponent is required to satisfy its onus on the balance of probabilities[3].

   [3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], and more recently Allergan, Inc v Di Giacomo (2011) 94 IPR 541 and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012).

8. I note that the Removal Applicant applied for the removal of the Opponent’s trade mark using the standard form provided by this office and the application has no formal defects.

   Section 92(4)(b)

9. The evidence in support of the opposition demonstrates use of the MESSAGEMATE trade mark in respect of telephone call management equipment. Such equipment does not constitute telecommunication services, rather such equipment would be goods in Class 9 of the International Classification of Goods and Services under the Nice Agreement.

10. As such I am not satisfied that the Opponent has shown use of the MESSAGEMATE trade mark in respect of telecommunication services during the non-use period. Thus this ground of opposition has not been established.

    Registrar’s discretion

11. Under section 101(3) the Registrar has the discretion not to remove a trade mark from the Register even though the grounds on which the removal application was made have been established. A broad range of circumstances may be taken into account in exercising the discretion. The Opponent bears the onus of demonstrating the existence of circumstances that need not be ‘exceptional circumstances’[4], but will need to be sufficient to satisfy the Registrar that application of the discretion is reasonable.

    [4] Kowa Company Ltd v NV Organon [2005] FCA 1282; (2005) 66 IPR 131, per Lander J at [98].

12. The Full Court, in Austin, Nichols & Co Inc v Lodestar Anstalt[5], confirmed the proper test as “[t]he question to be asked is whether it [is] reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period”. In Tivo Inc v Vivo International Corporation Pty Ltd[6] Dodds-Streeton J summarized some relevant considerations for the exercise of the discretion:

    In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).

    In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the 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; and whether the registered proprietors were aware of the applicants’ sales under the mark.

    In Austin, the Full Court confirmed that the discretion under s 101(3) was limited only by the statutory purposes and “whether the removal of the [relevant mark] would lead to deception or confusion... was plainly a relevant consideration to be taken into account” (at [31]). The Full Court also recognised that evidence showing a lack of deception or confusion should the mark remain on the Register was relevant to the exercise of the discretion, but it was not erroneous to find that circumstance an insufficient justification for its retention.

    [5] [2012] FCAFC 8 (21 February 2012).

    [6] [2012] FCA 252 (19 March 2012).

13. In taking into account the circumstances surrounding this matter, I note that the trade mark is used by the Opponent in respect of goods related to telecommunications. The Opponent has demonstrated genuine use during the relevant period in respect of quite expensive equipment. There is a real potential for deception or confusion if another party were to use an identical trade mark for related telecommunications services.

14. Accordingly, I am satisfied that it is reasonable to exercise the Registrar’s discretion.

    Decision

15. Section 101 of the Act relevantly provides:

    (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.

16. I am satisfied that there has been no use of the Opponent’s MESSAGEMATE trade mark within the relevant period and I am also satisfied that there have been no circumstances that constituted an obstacle to us of the trade mark. However, I am satisfied that it is reasonable to exercise the Registrar’s discretion pursuant to subsection 101(3) of the Act and allow the trade mark to remain on the Register.

    Costs

17. The Removal Applicant has requested costs. The Removal Applicant has not been successful and is not entitled to an award of costs. I make no order as to costs.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    7 September 2012