Deco Australia Pty Ltd v Aluwood Australia Pty Ltd

[2022] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Deco Australia Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Aluwood Australia Pty Ltd to remove trade mark numbers 1300939 Bush Cherry, 1302778 Snow Gum, 1331689 Ironbark, 1335604 Blackbutt, 1302782 Kwila and 1332466 Kwilla (all in class 40) - in the name of Deco Australia Pty Ltd

Delegate:	Tracey Berger
Representation:	Opponent: Acrogon Group Pty Ltd Applicant: Marquette Intellectual Property
Decision:	2022 ATMO 79 Trade Marks Act 1995 (Cth) – application under section 92 (4)(b)– use of the trade marks established in the relevant period- trade marks to remain on the Register

Background

1. On 24 August 2020, Aluwood Australia Pty Ltd (‘Removal Applicant’) filed applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] for the complete removal of the following registered trade marks (’Removal Applications’):

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995(the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’), respectively.

Trade Mark Number	Trade Mark (‘Registered Marks’)	Registration Date	Services
1300939	Bush Cherry	25 May 2009	Class 40: Powder Coating
1302778	Snow Gum	5 June 2009	Class 40: Powder Coating
1331689	Ironbark	17 November 2009	Class 40: Metal Finishing
1335604	Blackbutt	9 December 2009	Class 40: Metal Finishing
1302782	Kwila	5 June 2009	Class 40: Powder Coating
1332466	Kwilla	20 November 2009	Class 40: Metal Finishing

1. The Removal Opponent filed a Notice of Intention to Oppose each of the Removal Applications on 26 October 2020, followed by a Statement of Grounds and Particulars for each case on 23 November 2020.  The Removal Applicant filed a Notice of Intention to Defend each of the Removal Applications on 22 January 2021.

2. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16.  The Removal Opponent filed Evidence in Support (‘EIS’) of the oppositions to each of the Removal Applications on 25 February 2021.  The Removal Applicant filed Evidence in Answer (‘EIA’) to the Removal Applications on 26 May 2021.  The Removal Opponent advised this office that they did not intend to file Evidence in Reply and the parties were given the opportunity to request a hearing.

3. Both parties requested a hearing by written submissions and paid the requisite fees.  The Removal Opponent filed written submissions on 11 April 2022 (‘Removal Opponent’s Written Submissions’) and the Removal Applicant filed written submissions on 19 April 2022 (‘Removal Applicant’s Written Submissions’).  These matters were allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings as outlined above.

   Evidence

   Evidence in Support

4. The EIS consists of:

   ·     Registration No. 1300939- Declaration by Ross Doonan, Director of the Removal Opponent, made on 22 February 2021 with Annexure RD-1 (A-S)

   ·     Registration No. 1302778- Declaration by Ross Doonan made on 18 February 2021 with Annexure RD1 (A-S)

   ·     Registration No. 1331689- Declaration by Ross Doonan made on  14 January 2021 with Annexure RD-1 (A-S)

   ·     Registration No. 1335604- Declaration of Ross Doonan made on 22 February 2021 with Annexure RD-1 (A-S)

   ·     Registration No. 1302782- Declaration of Ross Doonan made on 18 February 2021 with Annexure RD-1 (A-S)

   ·     Registration No. 1332466- Declaration by Ross Doonan made on 19 February 2021.

5. The contents of the various declarations constituting the EIS are largely identical but for the references to the relevant trade mark and the invoices annexed to the different declarations.  The exception is trade mark No. 1332466 Kwilla where Mr Doonan attests that the mark has only been used in the form Kwila which mark is the subject of registration No. 1302782.

6. Mr Doonan attests that the Removal Opponent provides architectural building products, customised metal products and metal finishing services including powder coating.  In 2005, the Removal Opponent adopted a series of marks that allude to the “durable and aesthetic nature” of Australian hardwood timber, referred to as its ‘Australian Native Series’ of metal finishes and metal finishing services that give metal goods a similar appearance to timber.  The Removal Opponent attests that the Registered Marks have been continuously used since 2005 in relation to architectural building products and customised metal products treated with one of its Australian Native Species, or in the case of Kwila- the Exotic Timber Species, of DecoWood metal finishes (‘Removal Opponent’s Goods’) and metal finishing services including powder coating (‘Removal Opponent’s Services’).  The Removal Opponent’s Services are primarily provided under the Registered Marks to other businesses that (i) manufacture, supply and sell metal products, (ii) offer metal finishing services, and/or (iii) manufacture, supply and/or install metal architectural building products.

7. The Removal Opponent has provided details and examples of promotion of goods and services offered under the Registered Marks, details of annual advertising and sales figures for goods and services provided under the Registered Marks for 2018-June 2020, listed some of its customers and provided a sample of sales invoices for goods and services provided under the Registered Marks.

   Evidence in Answer

8. The EIA comprises a declaration of Claude Mansutti, Managing Director of the Removal Applicant, made on 26 May 2021.  Mr Mansutti attests that the Removal Applicant specialises in providing Australian made aluminium metal building products designed to imitate wood and which are offered as an alternative to traditional timber products including doors, windows, fencing, gates, balustrades, louvres, garage doors, awnings, decking and shutters.  The remainder of the EIA amounts to submissions about the nature and manner of use of the Registered Marks.

   Grounds, Onus and Relevant Period

9. The Removal Applicant filed for removal of the Registered Marks under s 92(4)(b) which relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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)  …

   (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)  used the trade mark in Australia; or

   (ii)  used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

10. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing of the application for the Trade Marks[2] and I confirm that this requirement is satisfied.

    [2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

11. The relevant period during which the Removal Opponent must establish use of the Registered Marks is the three year period ending on 24 July 2020 (‘Relevant Period’).

12. The Removal Opponent bears the onus of rebutting the allegation of non-use[3] and may do so by establishing on the balance of probabilities[4] that each of the Registered Marks (or a substantially identical trade mark[5]) were:

    (i)used in good faith by or on behalf of the Removal Opponent in relation to the registered services during the Relevant Period[6]; or

    (ii)not used because of circumstances that were an obstacle to use of the Registered Marks during the Relevant Period.[7]

    [3] s 100(1)(c) Act.

    [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [5] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [6] s 100(3)(a) Act.

    [7] s 100 (3)(c) Act.

13. In accordance with s 101, I may decide to remove the Registered Marks from the Register for all or some of the services identified in the Removal Applications, or if satisfied it is reasonable to do so, decide not to remove the Registered Marks even if the grounds under which the applications for removal were made are established.

14. I further note that a single bona fide use of each of the Removal Opponent’s Marks in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b) with respect to that mark,[8] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9]

    [8] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [9] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    Discussion

15. The first issue to be determined is whether there has been use of each of the Registered Marks by the registered owner, or an authorised user, in good faith in relation to the Registered Services during the Relevant Period. 

16. Some of the Registered Marks cover “powder coating” and others cover “metal finishing”.  The Removal Opponent submits that powder coating is a type of metal finishing service and I accept those submissions.  Accordingly, any use of the Registered Marks for ‘powder coating’ will be considered use in relation to metal finishing services.  

17. The use that must be demonstrated is use as a trade mark. This means use of the sign as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the trade mark to the goods or services.[10]  Use of a sign that is purely descriptive is usually not use as a trade mark.  As Hill J noted in Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH[11], Hill J said:

    In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.

    [10] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105 [29] (Drummond J).

    [11] [2001] FCA 1874, [30].

18. The Removal Applicant acknowledges in the Applicant’s Written Submissions that the Removal Opponent has used the terms Bush Cherry, Snow Gum, Blackbutt, Kwila and Ironbark but disputes that these terms have been used as trade marks.  I note at the outset that some of the submissions from the Applicant address whether the Registered Marks are capable of distinguishing the Removal Opponent’s Services on the basis that the terms are descriptive of metal finishing services having the appearance of Bush Cherry, Snow Gum, Blackbutt, Kwila and Ironbark timbers. That issue was decided by the Registrar’s delegate when each of the Registered Marks was accepted for possible registration.  The Removal Applicant could have challenged the capability of the Registered Marks to distinguish the services claimed during the opposition period following acceptance of the trade marks for possible registration.  Moreover, it may still be possible for the Removal Applicant to challenge the distinctiveness of the trade marks under s 88 via an application to a prescribed court.  In Edwards v Liquid Engineering 2003 Pty Ltd,[12] the court discouraged the use of s 92 for a purpose other than the removal of unused trade marks and commented:

    LE 2003 contends that such an approach would have the effect of discouraging parties from availing themselves “of the opportunities afforded by the TMA to resolve [trade mark disputes] by application to the Registrar, rather than by the more expensive alternative of Federal Court litigation.” That submission, while perhaps unobjectionable as a general proposition, is not appropriate here, where it was apparent that s 92 of the TMA was not apt to raise the real issue between the parties in this case. Parties should not be encouraged to bring inapposite claims on the grounds that they are cheaper; such a strategy may, as this case shows, backfire and if that occurs, it will result in more costs being incurred than if the best claim was brought in the first place. If a dispassionate analysis suggests that the client’s only realistic chance of success requires resort to a more expensive forum, then that is the advice an independent adviser should give. Whether the client in those circumstances wishes to pursue the claim is then a matter for the client. If it chooses not to follow that course or the advice, then it does so at its own risk. In the present case, that risk was realised in the form of the costs of the unsuccessful proceeding or application.

    [12] [2008] FCA 970, [11] (Gordon J).

19. As the Registrar’s delegate in the present matter, my role is to determine whether or not each of the Registered Marks was used as a trade mark in the relevant period.  In Woolworths Limited v BP Plc (No. 2),[13] the Full Court provided a concise summary of the relevant considerations for use as a trade mark in stating:

    Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…

    [13] 154 FCR 97, [77] (Heerey, Allsop & Young JJ).

20. In each of the Removal Applications, the Removal Opponent relies on use of the Registered Marks in historical extracts from its previous website at in its company brochures including the “Deco Effortless, Beautiful Living 2018 catalogue”[15] (the ‘Catalogue’) and copies of sales invoices. 

    [14] Now at following a change of name of the Removal Opponent.

    [15] Annexure RD1 (D) to each of the declarations constituting EIS.

21. Some of the Annexures to the EIS do not show use of the Registered Marks.  Where there is use of the Registered Marks in the brochures or website extracts included in the EIS, the marks are used to indicate the colour and grain of the available metal finishes.  For example, on page 8 of the Catalogue, the page is headed with the DECOWOOD Logo and a sub-heading DECOWOOD COLOUR SERIES and the Registered Marks then feature as part of a colour palette.  An example of the manner in which the Registered Marks appear on the website and in the catalogues is shown below:

22. The Removal Applicant argues that use of the Registered Marks in this manner is descriptive use of the colour and/or appearance of the timber species that the metal finish is intended to represent.  In my view, use of the Registered Marks in this manner will lead consumers to understand that the Removal Opponent offers a variety of decorative metal finishes which resemble the colour and grain of different timbers.  The situation is analogous to use of a style name for fashion items[16].  Whilst I accept that each of the finishes is not identical in colour or representation to the particular timber grain, this does not mean that the colour name of the finish is being used as a trade mark rather than descriptively.  Consumers are unlikely to associate the use of the Registered Marks in a colour palette as a badge of origin but rather will recognise the Removal Opponent’s other marks such as DecoWood, DECO, DecoFloor and DecoClad as indicating that the Removal Opponent is the source of the goods and services of metal finishes in these particular colours. 

    [16] Pinnacle Runway Pty Ltd v Triangle Limited [2019] FCA 1662 (Murphy J)

23. The fact that the Removal Opponent was the first trader in Australia to apply metal finishes resembling the colour and grains of particular Australian timbers does not mean that the use of the timber name is not descriptive.  As Lockhart J noted in Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited[17] (‘Caplets’):

    Merely to associate a word with the product of a particular producer does not mean that the association is necessarily one of origin. There is no reason why a person may have heard of the word CAPLETS only in association with the respondent's product PANADOL yet still regard it as PANADOL in a particular form, namely, a "caplet"; and that is not an association in a trade mark sense.[18]

    [17] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 (Lockhart, Burchett & Gummow JJ).

    [18] Ibid, [59].

24. Moreover, use of the ® symbol does not transform descriptive use into use as a trade mark.  A trader can intend to use a sign as a trade mark but it may not indicate origin in fact.[19]

    [19] Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH 190 ALR 185, [78] (Hill, Lindgren and Conti JJ).

25. I turn now to the sample of invoices provided by the Removal Opponent for each of the Registered Marks and note that these invoices fall within the Relevant Period.  The Removal Opponent’s Submissions has identified two invoices for each of the Registered Marks- one where the finish identified by the relevant mark was applied to goods provided by the customer and the other where the finish was supplied as a service to goods specified by the customer.  On all of the invoices forming part of the EIS, the Registered Marks appear in the top right hand corner which lists the date, invoice number, a reference, customer purchase order number, terms, due date and the finish which is where the relevant Registered Mark appears.  In some invoices, the Registered Marks also appear in the description of the items.  By way of example, I refer to Invoice Number 16704 of 25 May 2018 where the mark Bush Cherry is listed as the Finish and the Description of items includes “DecoClad 200mm Cladding Board- BUSH CHERRY, DecoClad External Corner- BUSH CHERRY, DecoClad Internal Corner- BUSH CHERRY, DecoClad End Cover Channel- BUSH CHERRY”.  There are similar uses of each of the Registered Marks except the mark Kwilla in the selection of invoices forming part of the EIS.  It is well established that a trade mark may perform more than one function.  In the context of use of the Registered Marks in the invoices, I consider that one of the functions of the Registered Marks as used in the invoices is to indicate that the Removal Opponent is the source of the goods and services.  In my opinion, the use of each of the Registered Marks in the Invoices in the manner described constitutes use as a trade mark for the Registered Services.   

26. As noted at paragraph 6 above, the mark Kwilla has not been used in this particular registered form.  However, the Removal Opponent has used the mark Kwila.  On a side by side comparison, I regard the marks Kwila and Kwilla as substantially identical and do not regard the omission of the second letter ‘l’ in Kwila as affecting the identity of the mark.  Hence, I find that use of Kwila constitutes use of the registered mark Kwilla.

    Decision

27. The Removal Opponent has established its opposition to removal of each of the Registered Marks.  Accordingly, the Registered Marks being Australian trade mark numbers 1300939, 1302778, 1331689, 1335604, 1302782 and 1332466 are to remain on the Register for the Registered Services.

    Tracey Berger
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    19 May 2022