Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company
[2018] FCA 1014
•6 July 2018
FEDERAL COURT OF AUSTRALIA
Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company
[2018] FCA 1014
File numbers: NSD 159 of 2015
NSD 356 of 2015Judge: NICHOLAS J Date of judgment: 6 July 2018 Catchwords: TRADE MARKS – whether respondents infringed Dunlop word marks and/or the Flying D device marks (“Dunlop/Flying D marks”) registered with respect to (inter alia) aircraft tyres and related parts and aircraft tyre re-treading services – whether defences available under s 120(2), s 122(1)(a), (b), (e) and (f) of the Trade Marks Act 1995 (Cth) (“the Act”)
TRADE MARKS – whether the Dunlop/Flying D marks should be removed from the Register for non-use pursuant to s 101(2) of the Act in so far as they extend to aircraft tyres and related parts and aircraft tyre re-treading services – whether registered owner used such marks in respect of aircraft tyres and related parts or aircraft tyre re-treading services – whether there was authorised use by wholly owned subsidiary of registered owner – significance of licence agreement between parent and wholly owned subsidiary – whether marks should be removed
TRADE MARKS – whether trade mark registrations for Dunlop/Flying D marks should be rectified pursuant to s 88(1) of the Act on grounds specified in s 88(2)(a)(c) or (e) of the Act – whether an order may be made under s 88(1) of the Act that takes effect before such order is made – whether trade mark owner can obtain relief for infringement of a trade mark that is cancelled or rectified pursuant to s 88(1) of the Act
Legislation: Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)) ss 18, 29
Trade Marks Act 1995 (Cth) ss 7(3), 7(4), 8, 17, 23, 42(b), 44, 58, 59, 60, 62, 62A, 88, 89, 92(4)(b), 100(1)(c), 100(3)(a), s 101, s 102(3), 120, 122, 123, 234
Trade Marks Act 1955 (Cth) ss 22(1), 62
Trade Marks Act 1905 (Cth) s 4
Trade Marks Regulations 1995 (Cth) reg 8.2
Trade Marks Act 1994 (UK) s 46(6)
Trade Marks Act 1938 (UK) s 68
Cases cited: Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521
Alcon Inc v Bausch & Lomb (Australia) Pty Ltd (2009) 83 IPR 210
Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (2018) 351 ALR 436; [2018] FCAFC 6
Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182
Aristoc Limited v Rysta Limited [1945] AC 68
Australian Co-Operative Foods Ltd v Norco Co-Operative Ltd (1999) 46 NSWLR 267
Briginshaw v Briginshaw (1938) 60 CLR 336
Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45
Colorado Group Ltd v Strandbags Pty Ltd (2006) 67 IPR 628
Deckers Outdoor Corporation Inc v Farley (No 2) (2009) 176 FCR 33
E. & J. Gallo Winery v Lion Nathan Pty Limited (No 2) (2008) 78 IPR 334
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Fender Australia Pty Ltd v Bevk (1989) 25 FCR 161
GE Trade Mark [1973] RPC 297
Goodyear Tire & Rubber Company v Dunlop Aircraft Tyres Ltd (2015) 111 IPR 517
“Granada” Trade Mark [1979] RPC 303
Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590
Hills Industries Ltd v Bitek Pty Ltd (2011) 90 IPR 337
Irving’s Yeast-Vite Ltd v FA Horsenail (1934) 51 RPC 110
Jones v Dunkel (1959) 101 CLR 298
Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557
Marcus v Sabra International Pty Ltd (1995) 30 IPR 261
Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Societe des Produits Nestle SA (2010) 86 IPR 581
McCormick & Co Inc v McCormick (2000) 51 IPR 102
Musidor BV v Tansing (1994) 52 FCR 363
Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670
Re Parkington & Co Ltd’s Application (1946) 63 RPC 171
Registrar of Trade Marks v Woolworths (1999) 93 FCR 365
Revlon Inc v Cripps & Lee Ltd [1980] FSR 85
Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569
Scandinavian Tobacco Group Eersel BV & Anor v Trojan Trading Company Pty Ltd (2016) 243 FCR 152
Second Sight Ltd v Novell UK Ltd [1995] RPC 423
Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592
Top Heavy Pty Ltd v Killin (1996) 34 IPR 282
Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89
Davison M, “Reputation in Trade Mark Infringement: Why Some Courts Think it Matters and Why it Should Not” (2010) 38 Federal Law Review 231
Burrell R, Handler M, Australian Trade Mark Law 2nd Ed (Oxford University Press, 2016)
Davison M J and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off 6th Ed (Thomson Reuters (Professional) Australia Limited, 2016)
Date of hearing: 20, 21, 22, 26, and 27 July 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 340 NSD 159 of 2015: Counsel for the Applicant/Cross-Respondent: Mr M Darke SC with Mr D Larish Solicitor for the Applicant/Cross-Respondent: Corrs Chambers Westgarth Counsel for the Respondent/Cross-Claimant: Mr C Golvan QC with Mr L Merrick Solicitor for the Respondent/Cross-Claimant: Ashurst NSD 356 of 2015: Counsel for the Applicants/Cross-Respondents: Mr C Golvan QC with Mr L Merrick Solicitor for the Applicants/Cross-Respondents: Ashurst Counsel for the Respondents/Cross-Claimants: Mr M Darke SC with Mr D Larish Solicitor for the Respondent/Cross- Claimants: Corrs Chambers Westgarth
Table of Corrections 11 July 2018 Para [78] first sentence “Dunlop US” and “Dunlop Australia” be amended to read “Goodyear US” and “Goodyear Australia” Para [83] first sentence “Dunlop Australia” be amended to read “Goodyear Australia” Para [88] second sentence “Dunlop US” be amended to read “Goodyear US” Paras [149] and [150] the date “4 August 2009” be amended to read “4 August 1989” ORDERS
NSD 356 of 2015 BETWEEN: THE GOODYEAR TIRE & RUBBER COMPANY
First Applicant
GOODYEAR & DUNLOP TYRES (AUST) PTY LTD
Second Applicant
AND: DUNLOP AIRCRAFT TYRES LIMITED
First Respondent
AERO PARTS AUSTRALIA PTY LTD
Second Respondent
AND BETWEEN: DUNLOP AIRCRAFT TYRES LIMITED
First Cross-Claimant
AERO PARTS AUSTRALIA PTY LTD
Second Cross-ClaimantAND: THE GOODYEAR TIRE & RUBBER COMPANY
First Cross-Respondent
GOODYEAR & DUNLOP TYRES (AUST) PTY LTD
Second Cross-Respondent
JUDGE:
NICHOLAS J
DATE OF ORDER:
6 July 2018
THE COURT ORDERS THAT:
1.Pursuant to s 88(1) of the Trade Marks Act 1995 (Cth), the Register of Trade Marks be rectified by amending the goods and/or services in respect of which each of the registered trade marks identified in column 1 of the Schedule to these Orders (“Schedule”) is registered to correspond to the description of goods and/or services specified in respect of each such registered trade mark set out in column 2 of the Schedule.
2.The Notice of Cross-Claim be otherwise dismissed.
3.The Amended Originating Application be dismissed.
4.The Respondents/Cross-Claimants serve a copy of these Orders on the Registrar of Trade Marks by 4.00pm on 9 July 2018.
5.Within 7 days, the parties file and serve (by way of exchange) brief written submissions (limited to 2 pages in length) on questions of costs, such written submissions to address costs in both this proceeding and proceeding NSD 159 of 2015.
6.Within a further 7 days, the parties file and serve (by way of exchange) brief written submissions in reply (limited to 2 pages in length).
7.Notwithstanding order 2 made on 28 July 2016 and subject to any further order, paragraphs [80]-[81] of the reasons for judgment published today not be further published or disclosed before 4.00pm on 10 July 2018 except to the persons referred to in order 1 made on 28 July 2016.
8.Should the Applicants seek any further order preventing further publication or disclosure of the paragraphs referred in to order 7 they are to give written notice of the order they seek to the Respondents/Cross-Claimants and the Associate to Nicholas J by 11.00am on 10 July 2018.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ORDERS
NSD 159 of 2015 BETWEEN: DUNLOP AIRCRAFT TYRES LIMITED
Applicant
AND: THE GOOD YEAR TIRE & RUBBER COMPANY
Respondent
AND BETWEEN: THE GOOD YEAR TIRE & RUBBER COMPANY
Cross-Claimant
AND: DUNLOP AIRCRAFT TYRES LIMITED
Cross-Respondent
JUDGE:
NICHOLAS J
DATE OF ORDER:
6 July 2018
THE COURT ORDERS THAT:
1.The Amended Notice of Appeal be dismissed.
2.The Notice of Cross-Appeal be dismissed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
NICHOLAS J:
Introduction
The following definitions have been used throughout the reasons for judgment:
·Registered Marks – the Australian registered trade marks listed in Annexure A.
·Dunlop Registered Marks – collectively Trade Mark Nos 9344, 112857, 1125858 1125859 and 1125863 for the word mark “Dunlop”;
·Flying D Registered Marks – collectively Trade Mark Nos 1125812, 1125816 and 1125856 for the “flying D” device mark;
·The Dunlop/Flying D Registered Marks – collectively the Dunlop Registered Marks and the Flying D Registered Marks
·Other Registered Marks – collectively, Australian Trade Mark Nos 9788, 73749, 101799, 108366, 182319, 299939, 398346, 401752, 450077, 450078, 522576, 537310, 539255, 1125865 and 1160519 for words or phrases incorporating the word “Dunlop”;
·Non-Use Marks – collectively, the Dunlop Registered Marks, the Flying D Registered Marks and the ‘865 mark;
·The Dunlop mark - the word mark Dunlop;
·Flying D mark – The following device mark:
·Dunlop/Flying D marks – collectively the word mark Dunlop and the Flying D mark;
·Dunlop branded aircraft tyres – aircraft tyres to which one or both of the Dunlop Mark and the Flying D Mark have been applied;
·non-use period – the relevant period of alleged non-use, being 24 June 2012 to 24 June 2015; and
·related goods and services – any of tyres for aircraft, tubes, parts, fittings, treads and all other ancillary goods for such tyres, and re-treading services, after-sales support and services and like services in relation to such tyres and ancillary goods.
The first applicant, Goodyear Tire & Rubber Company (“Goodyear US”), is the owner of the Australian registered trade marks listed in Annexure A (these are the Registered Marks). Broadly-speaking, the Registered Marks are registered in relation to tyres and related goods and/or services, and fall into three categories:
(a)Trade Mark Nos 9344, 112857, 1125858 1125859 and 1125863 (these are the Dunlop Registered Marks) for the word “Dunlop”;
(b)Trade Mark Nos 1125812, 1125816 and 1125856 (these are the Flying D Registered Marks) for the “flying D” device; and
(c)Trade Mark Nos 9788, 73749, 101799, 108366, 182319, 299939, 398346, 401752, 450077, 450078, 522576, 537310, 539255, 1125865 and 1160519 (these are the Other Registered Marks) for words or phrases incorporating the word “Dunlop”.
The second applicant, Goodyear & Dunlop Tyres (Aust) Pty Ltd (“Goodyear Australia”), is a wholly-owned subsidiary of Goodyear US and is licenced to use the Registered Marks. Until around 1987, Goodyear Australia’s predecessor, Ansell Ltd (“Ansell”), then called Pacific Dunlop Ltd, manufactured aircraft tyres and applied the Dunlop/Flying D marks to those tyres at its factories in Victoria, Australia. Thereafter, Goodyear Australia imported Dunlop branded tyres from the first respondent, Dunlop Aircraft Tyres Limited (“DATL)”, and its predecessors in England, and sold them in Australia. In March 2015, Goodyear Australia ceased selling Dunlop branded aircraft tyres when DATL withdrew supply to it.
Until 2008, Goodyear Australia also re-treaded aircraft tyres (that is, replaced the remaining tread from a used tyre with a new moulded section) under the Dunlop/Flying D marks at its factories in Victoria. Since 2008, however, it has sent aircraft tyres for re-treading to another Goodyear entity in Thailand, Goodyear Thailand Pcl (“Goodyear Thailand”).
DATL is the owner and operator of the Dunlop branded aircraft tyre business in the UK. DATL is presently, and has for about 30 years, been the sole manufacturer of aircraft tyres bearing the Dunlop/Flying D marks, including those sold by the applicants in Australia. Since at least 1963, DATL and its predecessors have also re-treaded aircraft tyres and applied the Dunlop/Flying D marks to the re-treads at its factory in Birmingham, UK.
The second respondent (“Aero Parts”) has since 2013 imported Dunlop branded aircraft tyres into Australia for supply to Australian aircraft operators and intermediaries. Aero Parts is supplied with those tyres by a Chinese company, Dunlop Taikoo (Jinjiang) Aircraft Tyres Company Ltd (“Dunlop Taikoo”) which, in turn, sources them from DATL. DATL and Dunlop Taikoo entered into a joint-venture for the distribution and re-treading of Dunlop branded aircraft tyres from Dunlop Taikoo’s facility in China in 2009.
On 23 January 2009, DATL filed Australian Trade Mark Applications Nos 1282093 for the Dunlop mark and 1282094 for the Flying D mark in class 12 for “aircraft tyres and tubes” and in class 37 for “aircraft tyre re-treading services”. Goodyear US opposed those applications. In February 2015, a delegate of the Registrar of Trade Marks found that Goodyear US had established grounds of opposition under ss 44 and 58 of the Trade Marks Act 1995 (“the Act”) and refused to register the applications (see Goodyear Tire & Rubber Company v Dunlop Aircraft Tyres Ltd (2015) 111 IPR 517).
For convenience, where it is not necessary to distinguish between them, Goodyear US and Goodyear Australia are referred to as the “Goodyear Parties”, and DATL and Aero Parts are referred to as the “Dunlop Parties”.
Broad overview of the parties’ allegations in the proceedings
By way of overview, there are three matters that arise in these proceedings.
First, by their Amended Statement of Claim, the Goodyear Parties:
·allege that DATL and Aero Parts have infringed the Dunlop/Flying D Registered Marks for the purposes of ss 120(1) and 120(2) of the Act; and
·further allege that the conduct of DATL and Aero Parts, in using the Dunlop/Flying D marks, contravenes ss 18 and 29(1)(g) of the Australian Consumer Law (“ACL”) and constitutes passing off.
Secondly, by their Cross-Claim, the Dunlop Parties:
·seek declarations that registered marks ‘858 and ‘856 are not registered in respect of “tyres for aircrafts, tubes, parts, fittings, treads and all other ancillary goods for such tyres, and re-treading services, after-sales support and services and like services in relation to such tyres and ancillary goods”;
·allege that each of the Registered Marks, insofar as they are registered in respect of aircraft tyres and related goods and services, should be removed pursuant to s 92(4)(b) of the Act on the ground of non-use;
·seek orders for the rectification of each of the Registered Marks, insofar as they are registered in respect of aircraft tyres and related goods and services, pursuant to s 88(2)(a), (c) and (e) on grounds, inter alia, that use of the marks is likely to deceive or cause confusion; and
·contend that, if Goodyear Australia has used the Dunlop/Flying D marks in relation to aircraft tyres and related goods and services, it has engaged in misleading and deceptive conduct and passing-off.
Thirdly, by notices of appeal and cross-appeal, DATL and Goodyear US each appeal from the decision of the Registrar of Trade Marks (“the Registrar”) in respect of DATL’s Australian Trade Mark Applications Nos 1282093 for the Dunlop mark and 1282094 for the Flying D mark in classes 12 and 37.
The parties have distilled the issues in the proceedings in an Agreed Statement of Issues to which I have had regard. Several of the issues identified in this document were either refined or not pressed during final submissions.
Overview of the witnesses
The Goodyear Parties led evidence from four witnesses:
(a) Mr Peter Monaghan;
(b) Mr John Castellas;
(c) Mr Lou Mandanici; and
(d) Ms Kellech Smith.
Mr Monaghan is the Australian manager of the aviation business unit of Goodyear Australia. He has almost twenty years of experience in the Australian aircraft tyre trade and commenced working at Ansell Ltd (then known as Dunlop Australia Ltd) in 1971 as a management cadet in its tyre business. Mr Monaghan’s evidence addressed, amongst other things, the history of dealings between the Dunlop Parties (and their predecessors) and the Goodyear Parties (and their predecessors), the Australian market for aircraft tyres and related goods and services, Goodyear Australia’s (and its predecessors’) reputation in that market and its use of the Registered Marks. Mr Monaghan was cross-examined.
Mr Castellas is a procurement consultant with more than 35 years’ experience in the Australian aviation industry and a teacher at Swinburne University in relation to airline fleet acquisition and management. Relevantly, he worked for Qantas (which also included the Jetstar business from 2003 onwards) in procurement roles between 1994 and 2011, which involved, amongst other things, managing Qantas’ arrangements for the procurement of aircraft tyres. Mr Castellas was not cross-examined.
Mr Mandanici is a vice president at Goodyear Australia. He has little experience in relation to aircraft tyres and his evidence was directed to Goodyear Australia’s (and its predecessors’) sale and supply of non-aircraft tyres (such as tyres for trucks, consumer vehicles and motor-sports) under the Dunlop/Flying D marks in Australia. Mr Mandanici was not cross-examined.
Ms Smith is the solicitor for the Goodyear Parties. Her affidavit annexed various company search reports, confidential agreements and other documents. Ms Smith was not cross-examined.
The Dunlop Parties led evidence from three witnesses:
(a) Mr Martin Pye;
(b) Mr Paul Chisholm; and
(c) Ms Odette Gourley.
Mr Pye is the director of original equipment business development at DATL. He has worked in the aviation industry in the UK for more than 30 years and commenced work as a programme manager at DATL in 2000. Mr Pye’s evidence addressed, amongst other things, the history of dealings between the Dunlop Parties (and their predecessors) and the Goodyear Parties (and their predecessors), DATL’s sales and marketing activities under the Dunlop/Flying D marks in relation to aircraft tyres and related goods and services in Australia and the rules and regulations concerning aircraft tyres. Mr Pye was cross-examined.
Mr Chisholm has worked in the Australasian aviation industry from 1977 to 2013 and continues to perform consultancy in the industry. He has qualifications in aircraft maintenance engineering and has been involved in the sourcing and fitting of aircraft tyres in New Zealand since 2000. In 2009, he moved to TAE (which was a contractor for wheel, tyre and break maintenance for Australian Airlines) based in Australia. TAE deals directly with suppliers of wheels, tyres and breaks to order the appropriate parts, fit them and perform subsequent maintenance services for aircraft operators such as QantasLink, Skytrans and the Royal Flying Doctor Service. Mr Chisholm’s evidence addressed, amongst other things, the rules and regulations concerning aircraft tyres, the Australian market for such tyres and related services and his understanding of the origin of aircraft tyres and related products and services branded under the Dunlop/Flying D marks. Mr Chisholm was cross-examined briefly.
Ms Gourley is the solicitor for the Dunlop Parties. Her affidavit annexed, amongst other things, various documents obtained from Australian Trade Marks Office. Ms Gourley was not cross-examined.
Background
History of the parties and the trade marks
In the 1890s, the UK company Dunlop Holdings Ltd (“DHL”) established a tyre distribution outlet in Flinders Lane, Melbourne, Australia, which operated under the Dunlop mark. DHL first registered the Dunlop mark in the UK in April 1909. By 1910 DHL was manufacturing and selling aircraft tyres under the Dunlop mark in the UK.
In 1899 DHL disposed of the Australian arm of its tyre business to an entity called Dunlop Pneumatic Tyre Company Co of Australasia (“Dunlop Australia”). Dunlop Australia first registered the Dunlop mark (Dunlop Registered Mark No 9344) in Australia 1910. In 1920 Ansell was incorporated (under a former name, Dunlop Rubber Company of Australasia Ltd but, for convenience, referred to below as Ansell) and took over Dunlop Australia’s tyre business, including its aircraft tyre department. The company that carried on this business was Ansell, although it had various other names until 2002, all of which incorporated the Dunlop name. These names included Dunlop Australia Ltd and Pacific Dunlop Ltd.
Prior to the 1930s, Ansell imported aircraft tyres bearing the Dunlop mark from DHL in the UK and distributed them in Australia. In the early 1930s, Ansell established a manufacturing facility in South Melbourne and commenced manufacturing various tyres (including aircraft tyres) branded with the Dunlop mark and, later, the Flying D mark. However, Ansell continued to import from DHL different models of tyres that it did not manufacture itself.
In 1953, Ansell commenced providing re-treading services for aircraft and other tyres at its premises in Essendon, Victoria. In 1965, the Flying D mark was registered by DHL in the UK and by Ansell in Australia in respect of “all rubber goods” in class 12, subject to various exclusions.
Goodyear Australia was incorporated in 1922 under the name Beaurepaire Tyre Services Proprietary Limited, and later became a subsidiary of the Olympic Tire & Rubber Co. It was acquired by Ansell in 1980.
In 1987, a partnership known as South Pacific Tyres (“SPT”) was formed between Pacific Dunlop Tyres Pty Ltd (a subsidiary of Ansell) and Goodyear Tyres Pty Ltd (a subsidiary of Goodyear US). Each party held a 50% interest in SPT. The aviation business of SPT involved both the manufacture and the re-treading of aircraft tyres. The business was conducted by Goodyear Australia, when it was known as Tyre Marketers (Australia) Limited (“TMA”).
Around the time of the formation of SPT in 1987, Ansell ceased manufacturing aircraft tyres in Australia. From that time, SPT continued to market and sell Dunlop branded aircraft tyres purchased and imported from the aircraft tyre division of Dunlop in the UK, namely DHL and, later, DATL.
All of the Dunlop branded aircraft tyres manufactured by Ansell in Australia between 1930 and 1987 and those imported by Ansell (and its successors) from DATL (and its predecessors) in the UK had either the Dunlop mark or Flying D mark stamped onto the side wall of the tyre, together with a unique serial number.
In 2006, Goodyear US purchased Ansell’s interest in SPT. The Registered Marks were also assigned by Ansell to Goodyear US. In March 2009 the name of Goodyear Australia was changed from TMA to Goodyear & Dunlop Tyres (Aust) Pty Ltd.
In February 2009, the re-treading facility at Essendon was closed. Goodyear Australia began collecting and shipping its customers’ aircraft tyres off-shore for re-treading at Goodyear Thailand.
On 1 January 2012, Goodyear US and Goodyear Australia entered into a written licence agreement pursuant to which Goodyear Australia was granted a non-exclusive and non-transferable licence to use the Registered Marks on and in connection with the manufacture, marketing and sale of products and services in Australia. I shall refer to the detail of the written licence agreement later in these reasons.
As noted above, DHL commenced operations in the UK in the late 1800s, at first as a manufacturer of bicycle tyres. By 1910, it had expanded into aircraft and vehicles tyres and associated products and services. From 1910 to the mid-1920s DHL manufactured aircraft tyres at its factories in Aston Cross, Birmingham. In the late 1920s, DHL established a factory at Fort Dunlop, Birmingham. Aircraft tyres have been manufactured at Fort Dunlop since that time. DHL commenced exporting Dunlop branded aircraft tyres manufactured at its Fort Dunlop facility to Ansell to sell in the Australian market in 1925.
DHL commenced re-treading aircraft tyres at its Fort Dunlop factory in 1963.
DHL was acquired by British Tyre & Rubber Co (“BTR”) in 1985. In 1996 the aircraft tyre business was sold to DATL which has continued to operate it ever since. As part of the asset sale agreement, DATL was licenced to use the Dunlop/Flying D marks that were registered in in the UK and various other territories but not in Australia where Ansell (then known as Pacific Dunlop Australia Ltd) held the Registered Marks. In January 2008, the UK trade mark registrations for the Dunlop/Flying D marks were assigned to DATL insofar as those registrations covered aircraft tyres and re-treading services.
In November 2009, DATL officially opened its joint venture facility in China, which is conducted by Dunlop Taikoo. The joint venture was established in China to distribute tyres manufactured at DATL’s Fort Dunlop facility in the UK and to operate a re-trading facility for Asia. DATL has a controlling shareholding in Dunlop Taikoo. Dunlop Taikoo commenced supplying Dunlop branded aircraft tyres to Goodyear Australia in 2009.
Dunlop Taikoo received Civil Aviation Safety Authority (“CASA”) approval to re-tread tyres for Australian aircraft on 23 December 2011 and commenced offering re-treading services to Australian customers from this time. In early 2013, Aero Parts was appointed as an Australian distributor for DATL and Goodyear Australia was directed by Dunlop Taikoo to place future orders for Dunlop branded aircraft tyres through Aero Parts.
Since around April 2013, Aero Parts has imported into Australia Dunlop branded aircraft tyres for supply to Australian aircraft operators and intermediaries. Aero Parts sources those tyres from Dunlop Taikoo. From April 2013 to March 2015, DATL also continued to supply new Dunlop branded aircraft tyres to Goodyear Australia for on-sale (first directly, then through Dunlop Taikoo, and finally through Aero Parts).
DHL was previously licensed by Ansell to use the Dunlop/Flying D Registered Marks on aircraft tyres exported to Australia, provided those tyres which were fitted as original equipment (“OE”) to aircraft manufactured in the UK or were tyres sold to a related-entity of Ansell for the purposes of replacing such OE tyres.
Between January 2008 and March 2009, DATL communicated with Goodyear Australia (and its predecessor SPT) seeking a licence to use the Dunlop/Flying D marks in Australia. Goodyear Australia advised that it was not prepared to sub-license use of the marks to DATL.
Beginning in early 2008, various discussions took place between representations of DATL (Mr Skepper and Mr Pye) and the Goodyear Parties (Mr Monaghan) concerning the possibility of DATL being granted a trade mark licence. The topic was raised by Mr Pye in an email to Mr Monaghan dated 26 January 2008 in which Mr Pye said:
…
As you know, there are a few operators in your region operating aircraft equipped with tyres which only DATL has certification for (DASH 8 - Q400, Embraer 170/175) etc.). Our Sales and Marketing Director, David Skepper, tells me that you have no plans to retread these tyres at present so we would like to support these operators directly to give them better cost of ownership. Given that Goodyear owns the trade marks for the name “Dunlop” and the D device on aircraft tyres in Australasia, I believe the best way forward, with your agreement, would be for us to enter into a trade mark licence agreement whereby you licence us to sell certain products directly. David tells me that this is something he discussed with your predecessor, Clive Goodwin, some years ago and which he felt may be acceptable in principle. Would you be prepared to consider some form of licence agreement and if so, shall I draft an agreement and send it to you for your review and comment?
…
There was further email correspondence exchanged in which Mr Pye followed up his initial request seeking an indication as to whether Goodyear US was open to granting DATL a licence. Mr Monaghan said in an email to Mr Pye dated 4 June 2008:
…
My advice from SPT is that we cannot restrict Dunlop ATL from dealing directly with the Australian airlines. However, it will be a major change for our airlines.
Traditionally, we have ordered new tyres from Dunlop ATL, retreaded those Dunlop tyres for which we gained approval, and supported the airlines with ongoing supply. We store the Dunlop tyres on behalf of the airlines, have contracts with the airlines on the basis that Dunlop ATL will continue to supply us. This has worked well for both the airlines and for us over the years, and we would prefer that it continued.
If the basis on which we have traditionally dealt with Dunlop ATL is to be changed, we need the details of such changes, as well as some time to consider the impact on the airlines and then to advise them.
Please advise such details from the Dunlop ATL perspective, if such changes will occur.
…
These discussions were still occurring when Goodyear US decided to close its new tyre plant in Melbourne. Mr Monaghan advised Mr Skepper in an email dated 13 August 2008 that the new tyre plant would close at the end of 2008 and that it was likely that the re-treading plant would also close in 2009.
A conference call was held on 27 August 2008 in which Mr Monaghan (“PM”), Mr Skepper (“DAS”) and Mr Pye (“MRP”) participated. According to Mr Skepper’s written summary of the call:
1.1PM explained the decision to close the retread plant in Melbourne is twofold (a) reduction in future throughput due to the growth of new part numbers that Goodyear is not currently approved for and (b) raw material supply being cut off due to the recent Goodyear automotive plant closure in Australia.
…
1.10MRP raised the issue again about DATL wanting to take over retreading and distribution of its own product in Australasia. PM explained that some of their existing customers purchase both GY and DATL product albeit that this is generally on different aircraft tyres. Therefore, going forward the customers will purchase from two suppliers rather than one so this will not be an issue.
…
1.12MRP also raised the issue again about trademark. PM advised that when checking before he understood from South Pacific Tyres legal department that this was not an issue but needed to re-check with Goodyear in Akron.
…
2.11PM to respond to DAS/MRP in respect of the Dunlop trademark question for Australasia during w/c 01.09.08.
2.12Date to be fixed between DATL and Goodyear for DATL to take over distribution/retreading. Ideally this should coincide with the official announcement by Goodyear about the plant closure. PM to respond to DAS/MRP during w/c 01.09.08
…
2.14Date for next conference call to be fixed when info on trademark and distribution is available.
Further emails were exchanged in which Mr Skepper sought to progress the matter of the proposed trade mark licence. On 19 November 2008 Mr Monaghan sent an email to Mr Skepper, copied to Mr Pye, advising:
…
This week, the South Pacific Tyres (SPT) Executive Team decided that they are not prepared to sub-licence the Dunlop trademark in Australia, New Zealand or the Pacific Islands.
We are advised that the Dunlop marks for our region are now owned by The Goodyear Tire and Rubber Co, Akron USA. SPT has existing supply agreements with longstanding customers, and we intend to continue supplying tyres with these marks.
I am available to discuss further, when your team has had some time to think about my email.
…
Mr Pye sent an email to Mr Monaghan on 28 January 2008 which relevantly stated:
… I am coming back to you now on the issue of support to Australian based customers of Dunlop aircraft tyres.
As you know, over a considerable period of time, your company has ordered new tyres from Dunlop Aircraft Tyres Limited (DATL) for supply to Australian based customers, retreaded DATL tyres for Australian customers and stored the tyres for customers. As you noted in your email of 4 June last year, this was the traditional arrangement and it worked well. The customers knew that the tyres were manufactured by us and they could be confident of the quality of the product. The customers were able to obtain the support they required by way of storage and retreading and Goodyear Aviation Australia (GAA) had the benefit of continuity under your ongoing arrangements with customers.
The traditional arrangement has been affected, however, by various developments. You gave us notice in your email of 13 August last year that the nature of our relationship will be changing due to the closure of Goodyear’s Melbourne tyre factory and the imminent closure of your aircraft tyre retreading plant. Goodyear has a retreading plant in Thailand but you have indicated that considerable cost will be involved in equipping that plant with the tooling to retread DATL tyres and, in fact, that this facility has no plans at all to retread certain sizes hence forcing the operators to purchase new tyres only.
As you know, DATL will have retreading capability for all Dunlop aircraft tyres operational in the Asia Pacific region in 2009. As well, we wish to support directly those Australian customers who know and rely on the quality of tyres manufactured by DATL. As I mentioned when I first raised the topic with you in January last year, this will give our customers better cost control. Against that background, as you can appreciate, continuing supply of tyres to GAA is dependent on cost effective meeting of our customers needs including provision of retreading services. The alternative is a situation where we supply our customers directly.
We are aware that Goodyear has registered Australian trade marks for the Dunlop name and logo for aircraft tyres but, given our reputation for quality with our customers in Australia, we are satisfied that DATL is entitled to use and register the Dunlop name and logo for aircraft tyres and related services (such as aircraft tyre retreading) in Australia. Whether that be concurrently with Goodyear’s own trade mark registrations in Australia or otherwise, we are also satisfied that, without the consent of DATL, it would be a problem for the Dunlop brand name to be used for aircraft tyres not manufactured by DATL given the familiarity of the Australian customers with our company as the source of the tyres of the quality with which they are familiar.
We would like to suggest, therefore, that GAA provides an indication of the best terms that you might propose for continuation of GAA’s resupply of DATL’s tyres in Australia including your proposals for dealing with retreading services so that we can explore the best way forward. In doing so, it would be helpful if you indicated the duration of your current arrangements with customers and clarify what statements have been made to customers about future supply of tyres and retreading services in light of the impending closure of GAA’s plant in Australia.
It would be useful if we could understand your thoughts within the next couple of weeks, I am aware that the matter has been under discussion for some time but it has become more pressing given the lack of progress and the closure of Goodyear in Australia. We are happy to discuss the position in a conference call recognising the complexity of the situation and I will make myself available at your convenience for this purpose.
…
By the time this email was sent, DATL had already filed (on 23 January 2009) its own trade mark applications.
Mr Monaghan responded to Mr Pye’s email on 9 February 2009 as follows:
…
The stated legal position of South Pacific Tyres, on this matter, has not changed. Commercially and legally, we intend to continue to exercise and to protect our rights to the Dunlop trademark in Australia, NZ and the Pacific Islands.
However, if you wish to discuss further, I suggest you contact the Goodyear Legal department in Akron, OHIO, USA. The contact there is Nicholas Valenziano. He is the Goodyear legal representative for such matters.
…
Mr Pye wrote to Mr Valenziano, a Trade Mark Attorney for Goodyear US, on 13 February 2009 proposing that DATL and Goodyear US enter into a licence agreement. Mr Valenziano advised Mr Pye on 6 March 2009 that Goodyear Australia had decided at that time it was not interested in licensing the Dunlop/Flying D Registered Marks to DATL.
On 23 January 2009 (“the priority date”) DATL filed Australian Trade Mark Applications Nos 1282093 for the Dunlop mark (“DATL’s aircraft tyres application”) and 1282094 (“DATL’s re-treading application”) for the Flying D mark in class 12 for “aircraft tyres and tubes” and in class 37 for “aircraft tyre re-treading services”. Goodyear US opposed these applications. In February 2015, a delegate of the Registrar of Trade Marks found that grounds of opposition under ss 44 and 58 of the Act had been established and refused to register the applications. DATL filed its appeal against that decision on 26 February 2015. Shortly thereafter, the Goodyear Parties commenced infringement proceedings against DATL and Aero Parts.
On 31 March 2015, DATL wrote to Goodyear Australia stating that Aero Parts would not accept further orders of new Dunlop branded aircraft tyres from Goodyear Australia. The last purchase order filled by Aero Parts was made by Goodyear Australia in June 2015. Goodyear Australia made further requests to Aero Parts for the supply of Dunlop branded aircraft tyres in July and September 2015 which Aero Parts refused. As a result, Goodyear Australia has been unable to supply Dunlop branded aircraft tyres to customers (including Virgin Australia) since mid-2015.
DATL has admitted that, since at least January 2013, it has engaged in commercial dealings in Australia in respect of aircraft tyres, after sales support and services in relation to aircraft tyres and re-treading services, under and by reference to the Dunlop/Flying D marks. Aero Parts, similarly, admits that, since April 2013, it has engaged in commercial dealings in Australia in respect of Dunlop branded aircraft tyres and arranged the re-treading of Dunlop branded aircraft tyres by Dunlop Taikoo in China.
The market for aircraft tyres and related services in Australia
Broadly, the market for aircraft tyres and related services fall into three segments:
(a) the commercial segment (for example Qantas and Virgin and their service providers);
(b) the general utility aviation segment (for example, private aircraft owners); and
(c) the government and military segment (largely military aircraft).
Suppliers of aircraft tyres and related services in Australia to end-users include (i) “brand-name” tyre manufactures and/or suppliers (such as Michelin) (ii) specialised aircraft tyre and part suppliers (such as Aviall and Hawker Pacific) and (iii) wheel and brake maintenance, repair and overhaul (“MRO”) service providers. There are numerous re-sellers or distributors, such as Aero Parts, TAE and (to some extent) Goodyear Australia, which also supply aircraft tyres to the end-users.
Large commercial airlines often acquire aircraft tyres and aircraft tyre re-treading services on long-term contracts awarded through a tender process. Small commercial airlines typically buy aircraft tyres and aircraft tyre re-treading as required, without long-term contracts. MRO businesses, distributors and government/military customers also buy aircraft tyres and aircraft tyre re-treading services on an as-needs basis.
Regulatory Requirements for New and re-treaded Aircraft Tyres
The aviation industry is subject to various regulations governing, inter alia, the marking of aircraft tyres (which must bear the manufacturer’s name or trade mark) the distribution of aircraft tyres, and the fitting of aircraft tyres to aircraft wheels.
Manufacturers of new aircraft tyres are required by United States Federal Aviation Authority (“FAA”), European Aviation Safety Authority (“EASA”) and United States Department of Defence aviation regulations to mark aircraft tyres with their name and/or trade mark. Re-treaders must also mark re-treads with their name or trade mark. DATL complies with the aviation regulations by applying to the new aircraft tyres it manufactures the Dunlop/Flying D marks.
Similarly, when DATL and Dunlop Taikoo re-tread aircraft tyres, the Dunlop/Flying D marks are applied to the re-treaded tyres as required by the aviation regulations. Goodyear Australia similarly complies with these regulations by applying a “Goodyear” trade mark to its own in-house aircraft tyres which it manufactures or re-treads.
For all Dunlop branded aircraft tyres manufactured by DATL and, before it, by Ansell, the Dunlop/Flying D marks are specially engraved on the side wall of the tyre. This is intended to ensure that the marks are clearly visible for the life of the aircraft tyre, including after re-treading.
Before a tyre can be fitted to the wheel of an aircraft, the tyre must be “type certificated” for that aircraft and the end user must have sighted the tyre’s Authorised Release Certificate (“ARC”) evidencing the tyre’s airworthiness. Once a particular design of aircraft meets the airworthiness requirements of the relevant regulations, it is issued with a Type Certificate (“TC”) by the relevant regulatory body (e.g. the FAA, if the aircraft is built by Boeing in the US). When an aircraft manufacturer supplies an airline with a new aircraft, it supplies it with the TC for that aircraft. In Australia, the Civil Aviation Safety Authority (“CASA”) validates TCs issued by foreign regulatory bodies.
A TC covers both the design of the aircraft and all of its major parts and appliances, including its tyres. The TC specifies the tyres of a particular manufacturer that may be fitted to the aircraft. Aircraft operators are required to operate their aircraft in accordance with that aircraft’s TC, the detail of which is contained in documentation provided to the aircraft operator and/or service newsletters or bulletins produced by aircraft manufacturers. In effect, the TC governs which tyres may be fitted to the aircraft. Aircraft can have one or multiple types of tyres certificated.
Once a specific tyre is type certificated to an aircraft, it becomes a prescribed tyre for that aircraft. Other than tyres having been type certificated when the aircraft was initially designed, the only ways that tyres can be fitted to an aircraft are if they are certified for that purpose by arrangement with the aircraft manufacturer or the subject of what is known as a Supplemental Type Certificate (“STC”) is issued by the applicable regulatory body.
An “ARC” is a form prepared pursuant to regulatory requirements by the entity responsible for an aircraft part. For new aircraft tyres this is the manufacturer, and for re-treaded aircraft tyres it is the re-treader. The ARC certifies that a tyre is airworthy and was manufactured or re-treaded in conformity with approved design specification. The ARC travels through the supply chain (including any distributors) until it reaches the end user. It must be checked by each entity to whom it is supplied on the way to the end user. The ARC is checked by the end user prior to and after installation of the tyre, and is then retained as part of its records. A tyre cannot be fitted to an aircraft without the correct ARC. If there is an issue with the ARC, the end user will reject the tyre. Penalties may be imposed on persons who fit a tyre that is not certified for that particular aircraft or if the correct ARC for the tyre is not sighted before it is fitted.
In addition to bearing the Dunlop/Flying D marks, DATL and Dunlop Taikoo’s ARCs include the full name and address of those companies and details of the particular aircraft tyre to which the ARC relates.
Removal For Non-Use
The Dunlop Parties contend that, insofar as they are registered in respect of aircraft tyres and related goods and services (as described in [1] above), the Registrar of Trade Marks (“Registrar”) should be ordered to remove the Registered Marks from the Register pursuant to s 101(2) of the Act. For convenience, I will refer to the goods as “aircraft tyres”. As to the services, I will refer to these as “re-treading services”.
The ground on which the Dunlop Parties rely is that provided by s 92(4)(b) of the Act; namely that each of the Registered Marks has remained registered for a continuous period of 3 years, ending one month before the day on which the Cross-Claim was filed and, at no time during that period, did Goodyear US use the Registered Marks in Australia or use them in good faith in Australia, in relation to aircraft tyres and related goods and services.
The Goodyear Parties admit that the ground for removal for non-use is established for each of the Other Registered Marks save for the ‘865 mark. However, they deny that it is established for any of the Non-Use Marks.
Section 7(3) of the Act provides that an “authorised use” of a trade mark is taken to be a use of the trade mark by the owner. This is important when one comes to s 92(4)(b) of the Act. It provides that an application may be made to remove a trade mark for non-use if:
… 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.
Section 7(4) of the Act defines “use of a trade mark in relation to goods” to mean “use of the trade mark upon, or in physical or other relation, to the goods…”.
Section 100(1)(c) of the Act provides that it is for the Goodyear Parties to rebut the allegation made under s 92(4)(b). Section 100(3)(a) further provides that they will be taken to have done this if they establish that the relevant Non-Use Marks, or that a mark with additions or alterations not substantially affecting its identity, was used in good faith by Goodyear US in Australia in relation to aircraft tyres and related goods and services during the non-use period.
The concept of “authorised use” is of some importance in this case because the only use in the non-use period relied upon by Goodyear US to defeat the application for removal of the Non-Use Marks is what is said to be trade mark use of those marks by Goodyear Australia. Goodyear US contends that during the non-use period, Goodyear Australia, its wholly owned subsidiary, was an authorised user that engaged in authorised use of the Non-Use Marks.
Section 8 of the Act provides:
8 Definitions of authorised user and authorised use
(1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3)If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
Section 8(1) defines “authorised user” and s 8(2) defines “authorised use”. There are a number of points to make about these terms.
First, a person cannot be an authorised user unless the person uses the registered mark under the control of the registered owner. In this context, “control” means actual control: Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 at [97] per Besanko J (Allsop CJ, Greenwood and Nicholas JJ agreeing).
Secondly, not every use of a trade mark by an authorised user need be an “authorised use” as defined. For a use of a mark by the authorised user to constitute an “authorised use” it must occur under the control of the registered owner. The words “to the extent only” in s 8(2) make clear that not all use of trade mark engaged in by an authorised user is necessarily authorised. An authorised user may engage in some use of a mark that is under the control of the owner, and some use that is not.
Thirdly, s 8(3) and (4) are deeming provisions that identify a number of situations in which a person will be taken to use a registered mark under the control of the owner. But they are expressed to operate on the definition of “authorised user” in s 8(1) and not the definition of “authorised use” in s 8(2). Hence, a person may be deemed to be an authorised user by reason of the matters referred to in either s 8(3) or s 8(4) but may also engage in use that is not “authorised use” for the purposes of s 8(2).
There is an issue between the parties as to whether the use of the Non-Use Marks by Goodyear Australia was trade mark use. I will return to that issue shortly. Assuming for the moment that it was, there is also an issue as to whether the use relied upon was authorised use. It is convenient to deal with this question first.
It is necessary when addressing the matter of authorised use to distinguish between use of registered marks in relation to aircraft tyres and use in relation to re-treading services.
Goodyear US and Goodyear Australia were party to a number of licence agreements. The agreement in force through-out the non-use period is dated 1 January 2012 (“the Licence Agreement”).
The Licence Agreement contains recitals which note that Goodyear US is the owner of the various marks in Australia and that Goodyear US desires to give Goodyear Australia a licence to use such marks in respect of all the products and services for which they are registered. The marks the subject of the licence include the Non-Use Marks.
Article 2.1 of the Licence Agreement provided:
Grant. Licensor hereby grants to Licensee a non-exclusive and non-transferable right and license to: (a) use the Goodyear Dunlop Name in its company, trade and/or business name(s): (b) hold itself out to the consuming public and trade and to conduct business under the Goodyear Dunlop Name and the Beaurepaires name, and (c) hold itself out to the consuming public and trade as a Goodyear affiliate and (d) use the Licensed Trademarks on and in connection with the manufacture, marketing, distribution and sale of the products and provision of the services in the Territory and elsewhere as approved by Licensor, all upon the terms and conditions set forth herein and so long as such products are manufactured by or for Licensee in accordance with Licensor's quality standards and the services are provided in a manner prescribed by Licensor. No other rights or licenses are granted to Licensee hereunder except those rights and licenses expressly set forth in this Agreement.
Article 4.1 of the Licence Agreement provided:
Production Standards. Licensee will manufacture or have manufactured or will offer in the Territory the products and the services covered by the Licensed Trademarks herein in compliance with the formulae, specifications and directions from time to time supplied to it by Licensor, and not otherwise, and will only use such materials as will have been approved by Licensor and will generally comply with all directions and standards that may from time to time be given to it by Licensor relating to the manufacture of the products or the offering of the services, or to the methods in which the same will be marked, marketed or packaged. Licensor will be the sole judge of whether Licensee is complying with the directions or standards provided by Licensor. In particular, Licensee will always use the Licensed Trademarks upon or in relation to the products and the services in such manner as may from time to time be required or approved by Licensor. Licensee will not commit or permit any acts that might invalidate the Licensed Trademarks or their registration in the name of Licensor.
In their written submissions the Goodyear Parties contended that the removal application must fail because Goodyear US had used the Non-Use Marks in relation to aircraft tyres and related goods and services during the non-use period. Reliance was placed on s 7(3) and s 8(3) of the Act on the basis that Goodyear Australia was a wholly owned subsidiary of Goodyear US during the non-use period and that its use of the Non-Use Marks was to be taken to be use of those marks by Goodyear US.
The evidence establishes that throughout the non-use period Goodyear Australia acted as a reseller of aircraft tyres that were made by DATL in accordance with DATL’s manufacturing and quality control standards. There was no evidence that the aircraft tyres to which the Non-Use Marks had been applied by DATL were made in accordance with the manufacturing or quality standards of Goodyear US. In his oral submissions Mr Golvan QC made clear that the Goodyear Parties did not rely on quality control for the purpose of establishing that Goodyear Australia used the Non-Use Marks under the control of Goodyear US.
Mr Darke SC for the Dunlop Parties submitted that any use of the Non-Use Marks on aircraft tyres imported and sold by Goodyear Australia was not a use permitted under the terms of the Licence Agreement and that any such use was necessarily outside the scope of the grant of rights. It was on that basis he submitted that any use of the Non-Use Marks by Goodyear Australia on aircraft tyres could not constitute authorised use.
The difficulty I have with Mr Darke SC’s submission is that its entire focus is on the Licence Agreement. Even if it is true to say that the Licence Agreement did not authorise Goodyear Australia to use the Non-Use Marks in relation to the aircraft tyres it acquired from DATL, it does not follow that any such use did not occur under the control of Goodyear US. In my opinion the submission has insufficient regard to the financial and managerial control exercised by Goodyear US over Goodyear Australia’s entire business operation.
One inference that is open is that Goodyear US did not see the Licence Agreement as extending to aircraft tyres made by DATL because it had no control over the manufacturing or quality control standards of DATL. In any event, Goodyear US must have been aware that the aircraft tyres supplied by Goodyear Australia were manufactured by DATL to DATL’s manufacturing and quality control standards, which were matters over which neither Goodyear US nor Goodyear Australia had any control.
Goodyear US acquired the Non-Use Marks from Ansell together with Ansell’s interest in SPT in 2006. Goodyear Australia (which remained known as SPT until March 2009) continued to acquire its supplies of Dunlop branded aircraft tyres from DATL until March 2015. The idea that Goodyear US did not know and approve of Goodyear Australia’s importation and sale of aircraft tyres that Goodyear Australia continued to acquire from DATL is contrary to the objective facts.
In the circumstances, the inference I draw is that any use Goodyear Australia made of the Non-Use Marks in the non-use period was a use by Goodyear Australia that Goodyear US knew of and approved. Given that fact, and notwithstanding the terms of the Licence Agreement, I am satisfied that Goodyear Australia’s use of the Non-Use Marks was under the control of Goodyear US.
The more difficult question is, I think, whether the use made of the Non-Use Marks by Goodyear Australia was trade mark use.
An essential feature of a trade mark is that it distinguishes the goods of the registered owner from the goods of other traders and that it indicates a connexion in the course of trade between the registered owner and the goods in relation to which the mark is used: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (“E & J Gallo”) at [41]-[42] per the plurality, French CJ, Gummow, Crennan and Bell JJ. Their Honours said at [41]-[43]:
[41]The concept of "use" of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to "distinguish" the goods of one person from the goods of others.
[42]Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate "a connexion in the course of trade" between the goods and the owner, the requirement that a trade mark "distinguish" goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of "goods to which the mark is applied". Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. There is nothing in the relevant Explanatory Memorandum to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.
[43]In Coca-Cola Co v All-Fect Distributors Ltd [(1999) 96 FCR 107 at 115 [19] per Black CJ, Sundberg and Finkelstein JJ] a Full Court of the Federal Court of Australia said:
“"Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of 'trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else."
That statement should be approved.
(some footnotes omitted)
It is important to note that the plurality’s observations were expressly concerned with the nature of the use that may be relied upon to defeat an application to remove a trade mark for non-use under the relevant provisions of the Act.
In the present case the question is whether Goodyear Australia as an authorised user used the Non-Use Marks as trade marks during the non-use period by using them to indicate a connexion in the course of trade between goods or services in relation to which they were used and the trade mark owner or its authorised user.
Whether there has been trade mark use indicating a connexion in the course of trade between the relevant goods or services and an authorised user (whose use is taken to be that of the owner) or the owner depends on the context in which the use occurs.
In determining whether there has been trade mark use, it is useful to recall the test that was applied by Kitto J (with whom Dixon CJ, McTiernan, Taylor and Owen JJ agreed) in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (“Shell”). The facts in that case were very different from the present case but the test postulated by his Honour for determining whether there was trade mark use remains relevant in so far as it identifies the nature of the connexion that the use of the mark is required to convey in order to constitute trade mark use.
In Shell, the appellant was the owner of a number of registered trade marks for the caricature of a man in the shape of an oil drop. The respondent was alleged to have infringed the registered marks by using a substantially identical or deceptively similar mark in a television commercial. The question was whether the display of moving depictions of the caricature infringed the registered marks. The High Court held that it did not.
Kitto J said at 422:
The question, then, is whether such a user of the oil drop figure as takes place by the exhibition of the films on television involves infringement of the trade marks. It is a question not to be answered in favour of the appellant merely by pointing to the brevity of the occasions when substantial identity is achieved. The assumption I have made means, of course, that if the oil drop figure as appearing in some of the individual frames of the films were transferred as separate pictures to another context the use of the pictures in that context could be an infringement. But the context is all-important, because not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration.
Kitto J also said at 425:
With the aid of the definition of “trade mark” in s 6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?
[emphasis added]
It is now necessary to look at the actual use that is relied upon by the Goodyear Parties. There are a number of different categories of use to be considered.
The first category of use involves what is said to be the Goodyear Parties’ use of the Non-Use Marks on aircraft tyres that Goodyear Australia acquired from DATL which were imported and sold in Australia. It is common ground that that those marks had been applied by DATL to the goods at the time of manufacture when DATL was the owner of the corresponding UK trade mark registrations. There is no doubt that DATL was applying its trade marks in the United Kingdom as a badge of origin.
Mr Darke SC submitted that throughout the non-use period, the marks affixed to aircraft tyres acquired by Goodyear Australia from DATL, which were imported and sold in Australia, were never used to signify a connexion in the course of trade between those goods and Goodyear Australia.
Mr Golvan QC submitted that Goodyear Australia used the Non-Use Marks to indicate a relevant trade connexion between the goods to which those marks had been applied by DATL and Goodyear Australia. He submitted that the relevant trade connexion had been achieved through the use of the Non-Use Marks over many decades by the trading activities of SPT (Goodyear Australia’s immediate predecessor in title to SPT’s business) and Ansell (Goodyear US’s immediate predecessor in title to the Non-Use Marks). He placed considerable reliance on Burchett J’s analysis in Fender Australia Pty Ltd v Bevk (1989) 25 FCR 161 (“Fender”).
The nature of the trade connexion necessary to qualify use of a trade mark as trade mark use was considered by the House of Lords in Aristoc Limited v Rysta Limited [1945] AC 68 (“Aristoc”). That was a case decided at a time when trade mark registrations were not available for services. The respondents were engaged in the business of repairing silk stockings, which they neither made nor sold. They were in effect providing consumers with an after sale service for products made and sold by other traders. They applied for a trade mark registration for “Rysta” in respect of stockings, which was ultimately refused. In considering the meaning of the words “connexion in the course of trade” in the definition of “trade mark” in s 68 of the Trade Marks Act 1938 (UK) (“the 1938 UK Act”) (which was in the same terms as s 4 of the Trade Marks Act 1905 (Cth)) Viscount Maugham said at 89:
My Lords, it seems to me beyond doubt that hitherto a registered trade mark has been understood as being used in relation to goods for the purpose of indicating the origin of the goods, in other words, for the purpose of indicating either manufacture or some other dealing with the goods in the process of manufacture or in the course of business before they are offered for sale to the public. It must be remembered that in the early days when trade mark law was being slowly laid down, chiefly in Chancery Courts (where alone an injunction could be obtained), a trade mark was inevitably taken as indicating the origin of the goods. It was used for the purpose of indicating that the goods were those of the manufacturer or the merchant of the goods. It was closely connected with the goodwill of his business, of which it was often a valuable item, for the mark represented a quality or character on which the purchaser could place reliance. The cases mentioned in the introductory chapters of Sebastian on Trade Marks (5th ed.) and Kerly on Trade Marks (6th ed.), which are too numerous to be cited here, are conclusive in my opinion to show that, until at any rate the recent Act, trade marks were always taken as indicative of the origin of the goods.
His Lordship concluded (at 93) that changes made to the statutory definition did not extend its reach to a mark used to indicate “a mere temporary connexion with goods after they have come into the hands of the public”.
Lord McMillian, also referring to the statutory definition of trade mark, said at 96-97:
The Act of 1938 in s. 68, sub-s. 1, defines a trade mark as "a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods" and the person having the right to use the mark. In construing this definition it is essential to bear in mind what is the function of a trade mark. If there is one thing that may be described as fundamental in this branch of law it is that the function of a trade mark is to indicate the origin of the goods to which it is applied. As it was expressed by Bowen L.J. in In re Powell's Trade Mark [[1893] 2 Ch. 388, 403, 404]: “The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods - to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market.” I could multiply quotations to the same effect. I was merely repeating a commonplace when on a former occasion I said in this House that it is “of the essence of a trade mark that it should indicate origin and be used as indicative of origin”: Bass, Ratcliff & Gretton, Ld. v. Nicholson & Sons, Ld.[[1932] AC 130 154, 144]. […] A trade mark must still be registered in respect of goods, it must be used in relation to goods, it must indicate a connexion in the course of trade between goods and the user of the trade mark. […] A connexion with goods in the course of trade in my opinion means, in the definition section, an association with the goods in the course of their production and preparation for the market. After goods have reached the consumer they are no longer in the course of trade. The trading in them has reached its objective and its conclusion in their acquisition by the consumer.
Lord Wright, after referring to the changes made to the statutory definition, said at 101-102:
The question must now be approached on the basis of the definition in s. 68, sub-s. 1, of the Act of 1938, and in particular the words “used or proposed to be used. ... so as to indicate a connexion in the course of trade between the goods” and the proposed proprietor of the mark. These are indeed very general words, which replaced the catalogue of specific kinds of connexion contained in s. 3 of the Act of 1905. They undoubtedly changed the law to some extent, but they did not in my opinion change the fundamental idea of the function of a trade mark, which was to indicate the origin of the goods. […] The word “origin” is no doubt used in a special and almost technical sense in this connexion, but it denotes at least that the goods are issued as vendible goods under the aegis of the proprietor of the trade mark, who thus assumes responsibility for them, even though the responsibility is limited to selection like that of the salesman of carrots on commission in Major Brothers v. Franklin & Son [[1908] 1 KB 712]. By putting them on the market under his trade mark he vouched his responsibility, and the carrots were “his goods” by selection, though he was neither the owner nor grower of them. The limitation in the Act of 1938, “in the course of trade,” sufficiently, in my opinion, preserves the essential and characteristic function of the mark. The proprietor is required to be a trader who places the goods before the public as being his goods.
It could be argued that the case turned on whether there would be any use of the respondents’ mark on stockings “in the course of trade” given that these were goods that had already been supplied to consumers who later made them available to the respondents for repair. However, that would reflect too narrow a view of what was decided. I think this is apparent from the reliance placed on the decision by the plurality in E & J Gallo which specifically referred at [42] to the decision in Aristoc when describing the function of a trade mark. What is essential is that the use of the trade mark act as a badge of origin by providing an indication of the source or quality of the goods to which it is applied.
It is also necessary to refer to the judgment of Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 (“Pioneer”). His Honour’s exposition of the law with respect to trade mark use informed the structure and content of the Act in so far as it concerns authorised use. Aickin J said at 683:
… the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive.
His Honour considered that maintenance of the relevant connexion between the registered proprietor of the mark and the goods to which it was applied as essential, not only to ensure that the mark did not become deceptive, but also to protect the mark from an application for removal for non-use. This is consistent with what the plurality later said in E & J Gallo at [41] when describing the concept of trade mark use which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Act. A mark is not used in the sense that word is used in those provisions of the Act unless it indicates a relevant connexion in the course of trade between the relevant goods or services and the owner or authorised user of the mark. However, it does not follow that a registered trade mark cannot be used by the registered owner as a trade mark in the absence of a relevant trade connexion between the goods and the registered owner. Aickin J’s observations in Pioneer at 683 were not directed to a situation in which the use relied upon was that of either the trade mark owner or a registered user. They were directed to the use of a mark by a licensee whose use, in the absence of a sufficient connexion, would not qualify as use of the trade mark owner.
If a trade mark owner supplies goods by reference to a registered mark applied to those goods by a third party manufacturer in circumstances where the trade mark owner exercises no control over the manufacture or the quality of the goods to which the mark was applied, the mark will still have been used as a trade mark even though there may be no relevant connexion between the owner and the goods. The absence of any relevant (or using Aickin J’s word “sufficient”) connexion may have implications for the validity of the mark, but it does not preclude a finding that the trade mark owner has used the mark.
Fender
Fender was a case concerning the provisions of the Trade Marks Act 1955 (Cth) (“the 1955 Act”). Although there was an issue between the parties in Fender as to the validity of the applicant’s trade mark registrations, the hearing before Burchett J only concerned the issue of infringement. The registered trade marks the subject of the proceedings were first registered in Australia in 1968, and transferred to the applicant in 1987. One of those marks was for the word FENDER, the name of the well-known brand of guitars manufactured by Fender Musical Instruments Corporation (“Fender US”) in the United States. The applicant entered into an agreement with Fender US in 1987 under which it was appointed the exclusive distributor in Australia of Fender guitars. The applicant alleged that its registered marks had been infringed by the respondents who had engaged in the parallel importation of new or second hand guitars made by Fender. The first respondent (“Bevk”) acquired new Fender guitars in the United States and imported them into Australia. The second respondent (“Sullivan”) imported second-hand Fender guitars into Australia.
The question that arose at the hearing was whether by importing and selling genuine Fender guitars in Australia the respondents had infringed (inter alia) the FENDER trade mark registered in the name of the applicant. The case brought against Sullivan in relation to his importation of second-hand guitars raised special considerations which it is unnecessary to consider. The following discussion is primarily concerned with the case against Bevk who imported and sold new guitars.
Burchett J said at 166:
Notwithstanding that the applicant makes use of advertising material and warranty forms supplied to it by Fender Musical Instruments Corporation, the evidence shows that its own name is constantly associated with the distribution of Fender guitars in Australia. On the evidence, I think it is proper to conclude that members of that section of the Australian public having an interest in acoustic and electric guitars would be likely to understand the trade marks in question as indicating products acquired from their American producer, and distributed in Australia, by the applicant. The marks are badges of a commercial origin in Australia, as well as of an anterior source overseas. Furthermore, the applicant has to some extent been responsible for quality control of the products sold under the marks, in so far as it carries out inspections and rectification work, and has its authorised repairers change electrical parts unsuitable for use in Australia. It also checks the technical expertise of those persons appointed as authorised retailers and repairers, and in some instances restricts the products made available to particular retailers on the ground of insufficient expertise to promote all products in a manner which will maintain and enhance their reputation. In the case of a product made overseas and sold around the world, there may be developed, and has been in this case, an Australian goodwill, associated with a· trade mark registered in Australia, which is distinct from the goodwill in respect of the product overseas: cf R J Reuter Co Ltd v Mulhens [1954] Ch 50 at 89, 95-96.
There are four points to make about Fender. First, it was not a non-use case, nor did it address the question whether the applicant’s mark was, or had become, deceptive. Secondly, the applicant, which was the registered proprietor of the mark, was Fender US’s exclusive distributor, but was not otherwise related to Fender US: cf. Revlon Inc v Cripps & Lee Ltd [1980] FSR 85. Thirdly, the applicant exercised some quality control over the products that were sold under its marks. Fourthly, the applicant had its own “independent goodwill” in the trade mark. By this, I take Burchett J to mean that there was a relevant section of the public that associated the use of the marks with guitars made by Fender US that had been selected and modified by the applicant for sale in the Australian market. Burchett J’s finding that the use of the trade mark indicated a relevant connexion in the course of trade between the applicant as owner of the registered trade mark and the guitars it sourced from Fender US was essentially a finding of fact arrived at in light of the evidence before him.
In a trade mark infringement case under s 120(1) of the Act (or previously s 62 of the 1955 Act) the question whether there is goodwill or reputation in a mark is usually considered irrelevant. A registered mark is infringed (subject to any relevant defence) if a person uses the mark as a trade mark in relation to the goods or services in respect of which it is registered without the licence of the registered owner.
A supplier of goods or services uses a registered mark as a trade mark in relation to goods or services in respect of which the mark is registered if he or she supplies or offers to supply those goods or services by reference to the registered mark so as to indicate a connexion in the course of trade between those goods or services and the person who applies the mark. Whether or not the use of the mark indicates such a connexion depends on the context in which it is used.
Burchett J’s reasoning in Fender suggests that the existence of goodwill in a registered mark may be relevant to the question whether a registered mark has been used so as to indicate a connexion between the relevant goods or services and the owner of the registered mark.
The fact that a registered trade mark is well-known has been treated as relevant to the issue of trade mark use in a number of cases: see Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 at [187] (Allsop J) and Alcon Inc v Bausch & Lomb (Australia) Pty Ltd (2009) 83 IPR 210 at [155] (Foster J).
In Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521 Robertson J found that the respondent’s use of four strips on its sports shoes constituted trade mark use. As Robert Burrell and Michael Handler have pointed out when discussing his Honour’s decision, consumers would be more likely to understand the strips fulfilling the role of a trade mark rather than a mere decorative device if they knew Adidas consistently branded its shoes with three strips on their sides: Burrell R, Handler M, Australian Trade Mark Law 2nd Ed. (Oxford University Press, 2016) at p 37. But this approach has been criticised as being inconsistent with well settled principles; see Davison M, “Reputation in Trade Mark Infringement: Why Some Courts Think it Matters and Why it Should Not” (2010) 38 Federal Law Review 231 at 235-243.
I am prepared to assume for present purposes that in certain cases the goodwill or reputation associated with a registered mark may have some bearing on the question whether members of the public would regard the use made of a mark on a product or in an advertisement as a badge of origin. However, I do not think this proposition, even if correct, is of any significance for this case.
Aircraft Tyres
In relation to s 44(3)(b), DATL emphasised the breadth of the language used, which would permit the court to take into account a wide range of circumstances relevant to the question whether the applicant should be granted registration of the relevant trade mark under that provision.
The Goodyear Parties submitted that neither subparas (a) nor (b) of s 44(3) should be applied in favour of DATL for three reasons.
First, it was submitted that, as at the priority date (23 January 2009), DATL had not itself engaged in use of the trade marks to any significant degree (if at all) in Australia. The supply by DATL to Goodyear Australia was an approved use of the Dunlop/Flying D Registered Marks which, according to this submission, inure to the benefit of Goodyear US. It was argued that DATL’s claims to have used the Registered Marks in Australia by supplying goods to Goodyear Australia ignores the territorial nature of trade marks and the historical ownership of the Registered Marks in the UK and Australia.
Secondly, it was submitted that DATL’s claimed use of the trade marks in Australia is not honest use. It was argued that there is a long commercial history between the parties and their predecessors, with DATL (and its predecessors) acting as a supplier to Goodyear Australia (and its predecessors) and that DATL and its predecessors have repeatedly acknowledged the rights held by the Goodyear Parties (and their predecessors) in the Registered Marks in Australia. It was submitted that from 2008 onwards, DATL has developed and implemented a commercial strategy designed to obtain rights to the Registered Marks in Australia (at the expense of the Goodyear Parties’ interests). DATL’s conduct was said to involve a lack of commercial honesty in the sense that DATL is seeking to appropriate for itself the goodwill and rights that the Goodyear Parties (and their predecessors) have developed over many decades.
Thirdly, it was submitted that the inconvenience that Goodyear US would suffer if DATL’s trade mark applications are allowed to proceed to registration would substantially outweigh any inconvenience that DATL would suffer if the applications were refused.
I do not accept that DATL has not itself engaged in the use of the trade marks in any significant degree in Australia. For reasons previously explained, DATL has used the Dunlop/Flying D marks on each new aircraft manufactured by DATL imported and sold in Australia by Goodyear Australia. Each sale in Australia by Goodyear Australia of an aircraft tyre manufactured by DATL involved the use of the Dunlop/Flying D marks as trade marks by both DATL and Goodyear Australia.
Nor do I accept that DATL’s use of the Dunlop/Flying D marks in Australia has inured to the benefit of Goodyear US. The Goodyear Parties’ submission to that effect might carry weight if the aircraft tyres supplied by DATL were manufactured, and the trade marks applied to them, for or on behalf of Goodyear US or Goodyear Australia, as might be the case were DATL acting as their contract manufacturer. However, in no sense was DATL a contract manufacturer. The new aircraft tyres acquired by Goodyear Australia from DATL were manufactured to DATL’s specifications, sold to Goodyear Australia and re-sold by Goodyear Australia in the form they took when they left DATL’s factory.
The Goodyear Parties’ submission that DATL’s use of the Dunlop/Flying D marks was not honest is based upon the proposition that DATL was seeking to appropriate for itself the Goodyear Parties’ goodwill and reputation in the Dunlop/Flying D marks. Misappropriation of this kind is typically achieved by passing off or some other unlawful conduct whereby one trader falsely represents that its goods are made by or with the approval of another trader. However, DATL could not be said to have made any such misrepresentation merely by importing and selling Dunlop branded aircraft tyres in Australia, either directly or through a distributor. This is because persons likely to be concerned in the purchase of new aircraft tyres will understand that Dunlop branded aircraft tyres are not made by the Goodyear Parties, but by the UK business that has for many years been the sole manufacturer of Dunlop branded aircraft tyres supplied by Goodyear Australia.
It is also important to remember that any prospective purchaser who seeks to acquire Dunlop branded aircraft tyres from Aero Parts or any other business besides Goodyear Australia will know that it is not dealing with Goodyear Australia but with a different company that is distributing Dunlop branded aircraft tyres made by the UK manufacturer.
It is true that Aero Parts, in its capacity as DATL’s Australian distributor, may win over the whole, or a large proportion, of the Dunlop branded aircraft tyre business previously conducted by Goodyear Australia when it was the only, or at least the principal, source of supply of Dunlop branded aircraft tyres in Australia. But that is not to say that Aero Parts or DATL will have misappropriated any goodwill or reputation that Goodyear Australia may have had as a supplier of Dunlop branded aircraft tyres in the past. As previously explained, the market in aircraft tyres in Australia is highly specialised and persons likely to be concerned in their purchase will quickly understand that the UK manufacturer of Dunlop branded aircraft tyres supplies its products to other distributors besides Goodyear Australia.
I reject the suggestion that in seeking to supply its aircraft tyres in Australia directly, or through another distributor, DATL would be taking advantage of the Goodyear Parties’ goodwill and reputation in any of the Registered Marks. The goodwill and reputation it will be taking advantage of is that attaching to its own business as the manufacturer of Dunlop branded aircraft tyres.
In my view, DATL’s use of the Dunlop/Flying D marks on aircraft tyres in Australia was honest use for the purposes of s 44(3) of the Act. I am also satisfied that it is highly unlikely that any deception or confusion has occurred, or will occur in the future, arising out of the use by DATL of the Dunlop/Flying D marks on aircraft tyres manufactured by DATL or any other form of normal and fair use in which it may engage.
It is now necessary to consider the Goodyear Parties’ submission that Goodyear US will suffer substantial inconvenience if DATL’s trade mark applications in respect of aircraft tyres were granted.
The Goodyear Parties submitted that the Dunlop branded aircraft tyre business now operated by the Goodyear Parties in Australia has been operated by them and their predecessors for decades, and that, as a result of their ownership of the Registered Marks in Australia, Goodyear US (and its predecessors) have the exclusive right to use them in relation to aircraft tyres and related services. It was submitted that if DATL’s applications are permitted to proceed to registration, the rights held by Goodyear US will be greatly diminished and, commercially, will be of little value because DATL will be free to trade in Dunlop branded aircraft tyres without the involvement of Goodyear US. This would, it was submitted, result in a substantial diversion of trade from Goodyear Australia to DATL.
The vast majority of aircraft tyres sold by Goodyear Australia are Goodyear branded aircraft tyres. And it is clear that Goodyear Australia would always supply a Goodyear branded aircraft tyre ahead of a Dunlop branded aircraft tyre unless there was some compelling reason for it not to do so. This would be the case if the customer’s fleet, or some part of it, had to be fitted with aircraft tyres made by DATL. Where both Goodyear branded tyres and Dunlop branded aircraft tyres are approved for use in an aircraft type, Goodyear Australia will supply Goodyear branded tyres unless it is unable to do so.
Mr Monaghan gave evidence of one particular supply arrangement that Goodyear Australia was likely to lose in the event that DATL obtained its own trade mark registrations. Under this arrangement, Goodyear Australia has supplied and re-treaded aircraft tyres for Virgin’s Embraer 190 aircraft, a type of aircraft on which Goodyear branded tyres cannot be used.
Mr Monaghan described Virgin as a long-standing and important customer of Goodyear Australia. His evidence indicated, and I accept, that in the event that DATL was able to supply Dunlop branded aircraft tyres to Virgin then Goodyear Australia would lose Virgin’s Embraer 190 tyre management contract which is what Mr Monaghan was expecting to happen at the time he gave evidence.
The monthly revenue that would be lost by Goodyear Australia if it cannot provide new Dunlop branded tyres and re-treading services for Virgin’s Embraer 190 fleet is set out in Confidential Exhibit PM-51. I do not propose to refer to the specific figures, which say nothing about the profitability of this part of Goodyear Australia’s business. Nonetheless, I accept that Goodyear Australia will suffer a significant loss of revenue in the event that DATL or Aero Parts supplies Virgin directly.
Although I accept that Goodyear Australia has generated significant sales of Dunlop branded aircraft tyres, it seems to me that the real significance of the Registered Marks to Goodyear Australia, and Goodyear US, lies in their usefulness as tools with which to stop DATL entering the Australian market either directly or through another distributor whose interests are not so closely aligned with those of Goodyear US.
So far as aircraft tyres are concerned, it seems to me that the case for applying the provisions of s 44(3)(a) of the Act is compelling. I say this because the Dunlop/Flying D marks, when used in relation to aircraft tyres in Australia, signified, as at the priority date, that those aircraft tyres have been made by or under the aegis of the DATL rather than Goodyear Australia or Goodyear US. Further, given the regulatory environment in which aircraft tyres are manufactured and supplied, the trade marks could not be used on any aircraft tyres that were not made by or under the aegis of DATL. Nor would it be feasible for DATL to supply its aircraft tyres in Australia under a different brand name.
I am satisfied that it is appropriate to apply s 44(3)(a) of the Act to DATL’s aircraft tyres application. In circumstances where DATL has not used its trade marks in relation to aircraft tyre re-treading services in Australia it is not open to DATL to rely on s 44(3)(a) with respect to DATL’s re-treading application.
However, it seems to me that there is a strong public interest in ensuring that the Dunlop/Flying D marks when used in relation to aircraft tyre re-treading services, are only used by or under the aegis of the same entity that manufactures new aircraft tyres under and by reference to those trade marks.
I am also mindful that neither Goodyear US nor Goodyear Australia have used the Dunlop/Flying D marks in relation to aircraft tyre re-treading services in Australia for many years and that the marks are to be removed from the Register in so far as they cover any aircraft tyre re-treading services. Use by others at this stage (and at the priority date) would most likely cause deception and confusion. In the circumstances, I think it is appropriate to apply s 44(3)(b) of the Act to DATL’s re-treading application.
The fact that I am disposed to apply s 44(3) to DATL’s trademark applications does not mean that DATL is entitled to have them proceed to registration. This is because it has been held that s 44(3) of the Act does not provide an exception to s 60: see McCormick at [79]–[96].
Mr Darke SC did not challenge the correctness of that decision nor did he submit that its reasoning did not also apply to an objection to registration based upon s 58 of the Act. Rather, he submitted that because the Registered Marks have been abandoned by Goodyear US, s 58 was no longer an impediment to the registration of the Dunlop/Flying D marks in favour of DATL.
For reasons previously explained I am not satisfied that Goodyear US has abandoned the Registered Marks. It follows that DATL’s appeal against the decision of the Registrar refusing registration of the Dunlop/Flying D marks must be dismissed.
Infringement Issues
As previously mentioned, the Goodyear Parties allege that the Dunlop parties have infringed a number of the Registered Marks for the purposes of s 120(1) of the Act or, if not, then s 120(2) of the Act. Section 120 relevantly provides:
120 When is a registered trade mark infringed?
(1)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
(2)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a)goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
(b)services that are closely related to registered goods; or
(c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d)goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
(notes omitted)
Scope of the registrations
The particular marks said to have been infringed, and that part of the specification relevant to the infringement case with respect to each of such mark, are as follows:
It is accepted by the Dunlop Parties that the specification for the ‘344, ‘857, ‘859, ‘863, ‘812 and ‘816 marks, cover aircraft tyres. There is a dispute between the parties as to whether this is also true of the ‘856 and ‘858 marks, each of which is registered in respect of certain services.
The specification for both the ‘856 and ‘858 marks state:
Retreading of tyres, repair, construction, relugging, regrooving and vulcanisation of motor vehicle tyres; repair of damaged tyres; repair, relining and adjustment of motor vehicle brakes and front end alignment of motor vehicle wheels; fitting and balancing of tyres on vehicle wheels, motor vehicle steering repairs and adjustment; motor vehicle shock absorber replacement; general motor vehicle front end mechanical services including replacement of parts; greasing and lubrication of vehicles of all kinds; garage services for motor vehicles; motor vehicle care services including motor vehicle cleaning, washing, painting and polishing services; other motor vehicle repair services; insulating and sealing services for motor vehicles; none of the aforegoing services being in relation to bicycles, cycles or tricycles or parts and accessories for bicycles, cycles or tricycles
The point raised by the Dunlop Parties is a short one. They submitted that on the proper construction of the specification, the opening words “[r]etreading of tyres, repair, construction, relugging, regrooving and vulcanisation of motor vehicle tyres” is concerned only with motor vehicle tyres and does not cover aircraft tyres. Mr Darke SC, in developing his submission, placed reliance on the location of the semi-colon that appears after the reference to “motor vehicle tyres”.
Mr Golvan QC for the Goodyear Parties submitted that the specification covers re-treading of all types of tyres, whether they be motor vehicles or aircraft tyres. He submitted that the location of the semi-colon was not decisive because there are other places in the specification where, if the Goodyear Parties’ argument were correct, one would also expect to see a semi-colon. He referred, in particular, to the presence of the semi-colon both immediately before and after the words “repair of damaged tyres”.
In my view the specification covers re-treading of tyres generally subject to the limitation that it does not extend to such services in relation to bicycles, cycles or tricycles or parts or accessories for bicycles, cycles or tricycles. The latter qualification would not be necessary if the specification was confined to services performed only in relation to motor vehicles.
Section 120(1)
Subject to the issue of construction of the specification for the ‘856 and ‘858 marks (which I have decided against the Dunlop Parties) and to the issue of rectification (which I have decided against the Goodyear Parties) and various defences (considered below) raised by the Dunlop Parties under ss 122 and 123 of the Act, the Dunlop Parties accept that they have infringed the ‘344, ‘857, ‘859, ‘863, ‘812 and 816 marks under s 120(1) of the Act.
Section 120(2)
The Goodyear Parties also relied upon s 120(2) of the Act. As to s 120(2), the Goodyear Parties contend that the Dunlop Parties have infringed the following registered marks:
(a)under s 120(2)(a) of the Act:
(i)‘344: on the basis that aircraft tyres are goods of the same description as “pneumatic tyres”;
(ii)‘857: on the basis that aircraft tyres are goods of the same description as “tyres including used tyres” and “treads for re-treading tyres”;
(iii)‘863: on the basis that aircraft tyres are goods of the same description as “tyres … including used tyres”, “pre-cured treads for tyres”, “re-tread tyres”, “repair kits for tyres”, “vehicle treads”, and/or “tyre repair materials”;
(iv)‘812: on the basis that aircraft tyres are goods of the same description as “tyres”, “pre-cured treads for tyres”, “re-tread tyres”, “repair kits for tyres”, “vehicle treads”, and/or “tyre repair materials”; and
(v)‘816: on the basis that aircraft tyres are goods of the same description as “tyres … including used tyres and re-tread tyres”, “pre-cured treads for tyres”, “repair kits for tyres”, “vehicle treads”, and/or “tyre repair materials”.
(b)under s 120(2)(b) of the Act:
(i)‘344: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services that are closely related to “pneumatic tyres”;
(ii)‘857: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services that are closely related to “tyres including used tyres” and “treads for re-treading tyres”;
(iii)‘863: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services that are closely related to “tyres … including used tyres”, “pre-cured treads for tyres”, “re-tread tyres”, “repair kits for tyres”, “vehicle treads”, and/or “tyre repair materials”;
(iv)‘812: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services that are closely related to “tyres”, “pre-cured treads for tyres”, “re-tread tyres”, “repair kits for tyres”, “vehicle treads”, and/or “tyre repair materials”; and
(v)‘816: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services that are closely related to “tyres… including used tyres and re-tread tyres”, “pre-cured treads for tyres”, “repair kits for tyres”, “vehicle treads”, and/or “tyre repair materials”.
(c)under s 120(2)(c) of the Act:
(i)‘858: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services of the same description as “re-treading of tyres” and/or “repair of damaged tyres”;
(ii)‘859: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services of the same description as “wholesaling and retailing services in connection with tyres of all types, re-tread tyres, pre-cured treads for tyres … repair kits for tyres … vehicle treads, tyre repair materials”; and
(iii)‘856: on the basis that aircraft tyre re-treading services and after-sales service and support in relation to aircraft tyres are services of the same description as “re-treading of tyres” and “repair of damaged tyres”.
(d)under s 120(2)(d) of the Act:
(i)‘858: on the basis that aircraft tyres are goods that are closely related to “re-treading of tyres” and/or “repair of damaged tyres”;
(ii)‘859: on the basis that aircraft tyres are goods that are closely related to “wholesaling and retailing services in connection with tyres of all types, re-tread tyres, pre-cured treads for tyres … repair kits for tyres … vehicle treads, tyre repair materials”; and
(iii)‘856: on the basis that aircraft tyres are goods that are closely related to “re-treading of tyres” and “repair of damaged tyres”.
Sections 120(1) and 120(2) are mutually exclusive in the sense that if the registered mark is infringed because it has been applied to the registered goods it is not open to find that the same goods to which the mark was applied are also goods of the same description. This is also true of service marks. If a registered mark is infringed because it has been used in relation to the registered services then the use of the mark in relation to those same services is not also an infringement under s 120(2)(c): Anchorage at [204]. On that basis, I do not propose to say any more concerning the infringement claims referred to in subparas (a) and (c) of para [302] above.
As to other infringement claims made under s 120(2) of the Act, it is necessary to consider whether the goods or services in relation to which the registered mark has been used are closely related to the goods or the services in respect of which the mark is registered. As French J (as his Honour then was) explained in Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 at 378:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … [I]t is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services …
In the present case the relevant goods include aircraft tyres and the relevant services include re-treading of aircraft tyres. Aircraft re-treading services are typically provided by the same businesses that manufacture aircraft tyres. Further, the supply of new aircraft tyres and the re-treading of those tyres after use typically occurs as part of a maintenance operation in which the tyre supplier re-treads and replaces used aircraft tyres for a fleet of aircraft in accordance with a maintenance program. In the circumstances, I do not think there is any doubt that aircraft tyres and aircraft tyre re-treading services are closely related goods and services for the purposes of s 120(2) of the Act.
I am satisfied that the services referred to in subpara (b) of para [302] above are closely related to at least some of the goods referred to in that subparagraph. I am also satisfied that the goods referred to in subpara (d) are also closely related to at least some of the registered services identified in that subparagraph.
This brings me to the defence provided for in s 120(2). Given the relevant market, and the circumstances in which the Dunlop/Flying D Registered Marks have been used, I am satisfied that such use was not likely to deceive or cause confusion. The market is highly specialised. Purchasers of the relevant goods and services would understand that the aircraft tyres sold under and by reference to the Dunlop/Flying D Registered Marks were made by or under the aegis of DATL or its predecessor in business. Similarly, they would understand that re-treading services provided under and by reference to those marks were also provided by DATL or its predecessor in business.
Defences
Section 122(1) relevantly provides:
122 When is a trade mark not infringed?
(1)In spite of section 120, a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i)the person’s name or the name of the person’s place of business; or
(ii)the name of a predecessor in business of the person or the name of the predecessor’s place of business; or
(b) the person uses a sign in good faith to indicate:
(i)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(ii)the time of production of goods or of the rendering of services; or
…
(e)the person exercises a right to use a trade mark given to the person under this Act; or
(f)the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it; or
…
(notes omitted)
Section 122(1)(a)
Section 122(1)(a)(i) and (ii) are relied upon by DATL as a defence to the infringement claims made against it. It is common ground that this defence has no application in the case of the Flying D Registered Marks.
Section 122(1)(a) was recently considered by the Full Court in Anchorage. The Court said at [207]:
The authorities that have considered the defence under s 122(1)(a)(i) of the Act and similar provisions in the 1955 Act and the Trade Marks Act 1938 (UK) provides some guidance as to the circumstances in which a corporation may be regarded as having made use of its own name. The most well-known of these is Parker-Knoll Limited v Knoll International Limited (No 2) [1962] RPC 265, a case in which the defendant, Knoll International Limited, was sued for passing off and infringement of the plaintiff’s registered trade mark PARKER-KNOLL. The House of Lords accepted that the protection afforded by s 8(a) of the 1938 Act extended to the defendant’s use not merely of its full corporate name, but also the natural abbreviation of that name to KNOLL INTERNATIONAL. However, the protection was held not to extend to the defendant’s use of the word KNOLL. There were similar outcomes in Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285 where King J held that s 64(1)(a) of the 1955 Act did not permit the respondent to use “Sweetheart” and SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 45 IPR 169 at 181 where Wilcox J observed (obiter) that neither “Sapient” nor “Sapient Corporation” could properly be regarded as the name of the respondent (Sapient Australia) for the purposes of s 122(1)(a) of the Act.
DATL submitted that the presence of the words “Aircraft Tyres” in the DATL’s name does not affect the availability of the defence because those words merely describe DATL’s business.
I do not accept that submission. The fact that the words “Aircraft Tyres” are descriptive of the business carried on by DATL does not mean that they are not to be treated as part of DATL’s name for s 122(1)(a)(i) purposes. I reject the defence based upon s 122(1)(a) of the Act.
It is not necessary to determine whether DATL’s use of the Dunlop mark was use in good faith for the purpose of s 122(1)(a) of the Act. However, I am satisfied that DATL has not used the Dunlop mark in Australia intending to cause deception or confusion. Further, while DATL has sought to profit by direct entry into the market for aircraft tyres and re-treading services in Australia, I do not think that it has been motivated by any dishonest or improper motive.
The Goodyear Parties’ submissions suggested that by refusing to supply Goodyear Australia with Dunlop branded aircraft tyres, DATL has acted inconsistently with long standing established arrangements governing the use of the Dunlop/Flying D marks in the Australian market. It was suggested that this conduct was not consistent with DATL having acted in good faith. In the absence of any allegation that DATL has breached any agreement or understanding that it would not supply its goods or services in the Australian market, I do not think there is any basis for concluding that DATL’s use of the Dunlop mark was not use in good faith.
Section 122(1)(b)
The Dunlop Parties submitted that their use of the Dunlop/Flying D marks in relation to aircraft tyres made by DATL was protected by s 122(1)(b). They also relied upon s 122(1)(b) as an answer to the infringement case based upon the re-treading services they provide with respect to aircraft tyres made by DATL. It was submitted by the Dunlop Parties that the use of the relevant marks with respect to such goods and services did no more than indicate that the relevant goods or services comply with minimum performance standards imposed by aviation regulatory bodies.
The difficulty with this submission is that the Dunlop/Flying D marks are trade marks that act as a badge of origin. Their use in relation to aircraft tyres or related services may also indicate that such goods or services meet certain manufacturing, quality or regulatory standards (as many trade marks do), but the primary function of the marks so used is to indicate that the goods or services are made or supplied by DATL. This is the primary indication conveyed by the use of the marks. I reject the defence based upon s 122(1)(b) of the Act.
Section 122(1)(e)
In this case the application of s 122(1)(e) turns on whether DATL is entitled to obtain registration of the Dunlop/Flying D marks that it applied for on 23 January 2009. For reasons previously explained, DATL is not entitled to obtain registration of those marks.
Section 122(1)(f)
This defence only arises for consideration if DATL is unsuccessful in its appeal against the Registrar’s decision. If DATL is unsuccessful in that appeal only by reason of the Court not being able to take into account matters that occurred after the priority date and at the time the relevant acts of infringement occurred those matters had come to pass, then it would follow that at the time of those infringements DATL would have been able to obtain registration of the marks for which it previously had applied (unsuccessfully) in its own name if it were to have re-applied for them at the later date. In those circumstances, DATL would have a good defence under s 122(1)(f) in respect of each such act of infringement.
Section 123
Section 123 provides:
123Goods etc. to which registered trade mark has been applied by or with consent of registered owner
(1)In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.
(2)In spite of section 120, a person who uses a registered trade mark in relation to services that are similar to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.
(notes omitted)
Section 123 is relied upon by Aero Parts only. The application of this section is said by the Dunlop Parties to turn on whether DATL is entitled to obtain registration of the marks for which it has applied. If so, then the Dunlop Parties submit that Aero Parts will have a defence under s 123 of the Act on the basis that it was using the Dunlop/Flying D marks by or with the consent of, DATL. It is not necessary to explore the potential difficulties with this submission. For reasons previously explained, DATL is not entitled to obtain registration of the Dunlop/Flying D marks.
Misleading Conduct and Passing Off
The Goodyear Parties allege that the Dunlop Parties have engaged in misleading and deceptive conduct, or conduct likely to mislead or deceive, in contravention of s 18 of the ACL. They also allege that the Dunlop Parties have contravened s 29(1)(g) of the ACL by making, in the language of that provision, “a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits”.
As developed in the Goodyear Parties’ written submissions, the case based on s 18 and s 29(1)(g) is founded on the proposition that the use of the Dunlop/Flying D marks in relation to aircraft tyres and re-treading services in Australia by the Dunlop Parties conveys a false representation that the Dunlop Parties and/or those products and services “have a commercial association” with the Goodyear Parties. The Goodyear Parties submitted that this case was supported by the unchallenged evidence of Mr Castellas. I have previously referred to Mr Castellas’ evidence but it is necessary to refer to it now in greater detail.
Mr Castellas gave evidence of his knowledge of Dunlop Aviation in the 1970’s and early 1980’s when he worked for Government Aircraft Factories (which later became Boeing Australia) and some dealings he had with Dunlop Aviation while working in the United States on the FA-18 fighter jet program between 1983 and 1985 and while working for Normalair-Garrett (a division of the Westland Helicopter Company) between about 1990 and 1994.
According to Mr Castellas, when he joined Qantas, he became aware that aircraft tyres and associated services had been supplied to Australian Airlines (which had merged with Qantas a few years earlier) by a business that was then co-owned by Goodyear and Pacific Dunlop which he knew of first as Air Treads, later as South Pacific Tyres, and still later as Goodyear Aviation. For convenience, I will refer to the business to which Mr Castellas refers as the “Goodyear Aviation business”.
According to Mr Castellas:
·He was aware of the Dunlop brand in the aviation industry for many decades. He considered that the Dunlop brand had been, and remains, a leading and very well-known brand in the aviation industry both in Australia and globally. He has known of Dunlop branded aircraft tyres and other components since at least the mid-1980s.
·During his time at Qantas, he understood that the Goodyear Aviation business was the sole supplier of Dunlop branded aircraft tyres and re-treading services in the Australian commercial aviation market. He did not deal with any other supplier of Dunlop branded aircraft tyres or re-treading services while working at Qantas.
·He was aware of a Dunlop business in the UK, but he was not aware of what, if any, relationship existed between it and Air Treads. However, he was aware that some Dunlop branded aircraft tyres were made in the UK and then supplied by the Goodyear Aviation business to Qantas.
Mr Castellas left Qantas in 2011. He does not appear to have had any dealings with the Goodyear Aviation business after that time.
In his first affidavit Mr Castellas stated that during his time at Qantas he understood the Goodyear Aviation business to be the sole supplier of Dunlop branded aircraft tyres and re-treading services. This was qualified by him in his second affidavit to make clear that, while he understood this to be the case for airlines with large commercial fleets of heavy jets, he did not understand this to be true of customers with smaller fleets of heavy jets who were able to acquire Dunlop branded aircraft tyres from Aviall. He also said that he visited the Aviall facility a number of times in the early 2000’s where he recalled seeing Dunlop branded aircraft tyres. He said that he was not aware of where or from whom Aviall had acquired those tyres. However, he did not suggest that he understood that Aviall had any business association or trading relationship with the Goodyear Aviation business.
Mr Castellas’ evidence shows that he and, I would infer, other people working in the aviation industry, would have understood from between about 1994 (when he started at Qantas) through to about 2011 (when he left Qantas) that the Goodyear Aviation business was (for at least a large part of that time) the sole, or at least, the principal distributor in Australia of Dunlop branded aircraft tyres which it sourced from the UK business that manufactured them. His evidence does not establish that the reputation of the Goodyear Aviation business with respect to Dunlop branded aircraft tyres was anything other than that of a distributor (either sole or principal) of such products.
The Goodyear Parties’ case assumes that Mr Castellas, and others working in relevant sections of the aviation industry, would not appreciate that the UK manufacturer of Dunlop branded aircraft tyres may be legally entitled to appoint another distributor of its products in Australia in place of Goodyear Australia. That assumption would be an unreasonable assumption to make especially by people working in such a highly specialised and sophisticated industry. In fairness to Mr Castellas, I should make clear that he did not suggest in his evidence that he would make that assumption. No doubt he understands that business relationships and distribution arrangements may change over time.
I do not think the use of the Dunlop/Flying D marks on aircraft tyres and related parts, or in relation to re-treading services, is likely to convey to Mr Castellas or any other person that there exists a business association of the kind postulated by the Goodyear Parties. The claims based on s 18 and s 29(1)(g) of the ACL fail.
The Goodyear Parties’ case based on passing off was said by them to be made out on the same basis as the ACL claims. I reject the passing off case for the same reasons as I have rejected the ACL claims.
Other matters
There are two other matters I should note.
First, the Dunlop Parties contended that if the use by the Goodyear Parties of the Goodyear/Dunlop logo constituted trade mark use of any of the Dunlop/Flying D Registered Marks in relation to re-treading services, then the Goodyear Parties will have contravened ss 18 and 29(1)(g) and (h) of the ACL and engaged in passing off in so far as the logo was used in respect of aircraft tyres re-treaded under the Goodyear brand. Given my finding that there was no such use by the Goodyear Parties in relation to aircraft tyre re-treading services it is unnecessary for me to say any more on this issue.
Secondly, the Goodyear Parties referred in their submissions to the Dunlop Parties’ failure to call Mr David Skepper as a witness. They submitted that I should infer that his evidence would not have assisted the Dunlop Parties’ case: Jones v Dunkel (1959) 101 CLR 298. The submission was not advanced in anything but the most general terms. In particular, the Goodyear Parties did not identify any specific issue in relation to which Mr Skepper might naturally be expected to be called to give evidence. I am not satisfied that any inference should be drawn from the fact that Mr Skepper did not give evidence.
Disposition
There will be an order under s 88(1) of the Act rectifying the Register so as to exclude from the description of the goods and/or services with respect to each of the Registered Marks the particular goods or services identified in italics in the description of the goods and services for each such trade mark in Annexure A. That order provides a complete answer to the infringement claims made under s 120(1) of the Act. To the extent that s 120(2) of the Act has any scope for application, the infringement claims made under that provision must fail because the use said to be infringing use was not likely to deceive or cause confusion.
Given the order under s 88(1) that is to be made, and notwithstanding my conclusions in relation to non-use, there is no purpose to be served in making any of the orders sought by the Dunlop Parties under s 101(2) of the Act.
The Dunlop Parties’ cross-claim will be otherwise dismissed.
The Goodyear Parties’ application will be dismissed.
The Dunlop Parties’ appeal, and the Goodyear Parties’ cross-appeal, against the decision of the Delegate given on 5 February 2015 will also be dismissed.
The parties will be given an opportunity to make written submissions in relation to questions of costs.
I certify that the preceding three hundred and forty (340) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas. Associate:
Dated: 6 July 2018
19
14
7