Electrical Equipment Ltd v Hardie Energy Products Pty Ltd

[1991] ATMO 59

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark No. 102764 - Opposition by HARDIE ENERGY PRODUCTS PTY LTD and ELECTRICAL EQUIPMENT LTD to Section 23 Application by DUX ENGINEERS LTD

On 4 September 1986 an application was lodged by DUX ENGINEERS LTD, a company incorporated under the laws of New Zealand, of 6-8 Laery Street, Lower Hutt, New Zealand ("the applicant") for the removal of trade mark No 102764 from the Register under the provisions of s.23 of the Act.  The grounds of the application were those specified in sub-section 23(1), namely:

The trade mark was registered without an intention in good faith on the part of the Applicant for registration that it should be used in relation to the goods in respect of which it is registered or, if registered under sub-section (1) of Section 45, by the Body Corporate or Registered User concerned, and that there has in fact been no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being earlier than one month before this application.

Up to one month before the date of this application a continuous period of not less than three years has elapsed during which the mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being.

Notice of opposition to the application was lodged by HARDIE ENERGY PRODUCTS PTY LTD, a Western Australian Company, of 112 Pilbara Street, Welshpool, Western Australia (referred to as Hardie) on 7 April 1988.  The grounds of opposition set out in the notice are as follows

1. The trade mark was registered with an intention in good faith that it be used in Australia in relation to all the goods for which it is registered.

1. The trade mark has been used by the registered proprietor and/or their successor in title in Australia in relation to a wide range of goods in class 11 over a long period of time up to March 8 1987.

1. The trade mark was used by us and, the registered proprietor and/or their successor in title in Australia in relation to a wide range of goods in class 11 in the period of three years immediately preceding March 8 1987.

1. The trade mark has been used by us and the registered proprietor and/or their successor in title in Australia, in the three years immediately preceding March 8 1987 in relation to water heaters.

1. The trade mark of the said registration is DUX and we are the proprietors of the trade mark DUX, and that latter trade mark and/or trade marks incorporating the word DUX have been used by us extensively in Australia continuously for many years.

1. Our extensive and continuous use of the trade mark DUX should be considered, and accepted, as constituting user of our second trade mark DUX.

1. If the trade mark has not been used in Australia, in the three years immediately preceding March 8 1987 in relation to certain specific items, such limitation of user was due to special circumstances in the trade and not to any intention to abandon the trade mark in relation to the goods to which application relates.

1. If the trade mark DUX has not been used in Australia, in the three years immediately preceding March 8 1987 in relation to any of the goods for which it is registered it would be wrong to cancel the registration as user of that trade mark by others could lead to confusion in trade and deception of the public especially in view of the large reputation in Australia enjoyed by us and/or the registered proprietor and/or their successors in title.

1. It would be contrary to public interest to allow the application for removal of trade mark from the Register.

1. The applicant for removal of trade mark from the Register has now (sic) bona fide commercial interest in Australia in the trade mark in relation to the goods specified in its application and therefore is not entitled to make the application under the provisions of Section 23.

1. The applicant for removal of trade mark from the Register is attempting to trade on the reputation of the trade mark DUX by improperly using the same trade mark and therefore the application should be refused.

   Evidence in support of the application was served on Hardie on 31 March 1989.  It consisted of a declaration dated 7 March 1989 by Ross Ernest Christie, managing director of the applicant company, together with Exhibits REC1 and REC2.  Hardie's evidence in answer was served on the applicant on 28 March 1990.  It consisted of two declarations, both dated 23 March 1990, by John Gerald Versluis, company secretary of the opponent company.
             On 28 February 1991 the applicant requested that the matter be set down for hearing.
             On 4 March 1988 a separate notice of opposition to the s.23 application had also been lodged by ELECTRICAL EQUIPMENT LIMITED, a New South Wales company, of 456 Kent Street, Sydney (referred to as "EEL").  In this case the grounds of opposition were stated to be:

(a)The trade mark subject of Registration No 102764 was not registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods, and there has, in fact, been use in good faith of the trade mark in relation to those goods by the Registered Proprietor or a Registered User of the trade mark for the time being earlier than one month before this application.

(b)Up to one month before the date of the Section 23 application, a continuous period of not less than three years has not elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods by the Registered Proprietor or a Registered User of the trade mark for the time being.

(c)During the relevant period use in good faith of the trade mark by the registered proprietor or a beneficial assignee occurred in relation to goods in respect of which the trade mark is registered being goods of the same description as those goods and the Registrar should exercise his discretion to refuse the Section 23 application.

(d)In all the circumstances the Registrar should exercise his discretion to refuse the Section 23 application.

The evidence in support consisted of the declaration of Ross Ernest Christie already referred to.  The evidence in answer, served by EEL on 14 February 1990 consisted of a declaration dated 8 January 1990 by Barry Leonard Russell, company secretary of EEL.
          Both matters were set down for hearing before me on 29 April 1991.  Mr James Abel of Griffith Hack & Co, patent attorneys, appeared for the applicant and Mr Kelvin Lord of Kelvin Lord and Company, patent attorneys, for Hardie.  EEL was not represented at the hearing.
          Trade mark No 102764 consists of the word DUX which is registered in respect of the following specification of goods:

Electric storage water heaters; installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, including air conditioners and hot water systems.

The application seeks removal of the mark in respect of all the goods for which it is registered but Mr Abel stated at the outset that the applicant really only sought the restriction of the specification to exclude plumbing goods.  He pointed out that the applicant had applied on 28 February 1984 to register the word DUX in respect of "Installations for lighting, water supply and sanitary purposes".  That application had been met by an examiner's objection under s.33 based on the trade mark no 102764.  Mr Abel submitted that the applicant was therefore a person aggrieved by the registration of that mark as required by s.23.  This was not challenged by Mr Lord  and as it is well established that an applicant for registration in this position is a person aggrieved I
find that the applicant has satisfied this threshold condition : Continental Liqueurs Pty Ltd v G.F. Heublein and Bro Inc (1960) 103 CLR 422.
          Mr Lord, in taking me to the evidence in support of the application, stressed that the onus is on the applicant for removal to make out a prima facie case of non-use during the relevant three year period.  The Christie declaration being the whole of the evidence in support reads as follows:

1. I am Managing Director of DUX ENGINEERS LIMITED (hereinafter called "my company"), engineering and plastics manufacturers of Lower Hutt, New Zealand.

1. MY company manufactures inter alia installations for water supply and sanitary purposes, polypropylene traps, pipes and fittings, polybutylene pipes and acetal fittings and valves and parts and fittings for such products, more generally referred to as plumbing products and has done so in New Zealand for a number of years.

1. MY company has used the name DUX to distinguish the products referred to above from those manufactured by other companies operating in a similar field of activity.

1. AS a resullt of the extensive marketing of my company's products under the registered trademark DUX in New Zealand, and more recently in Australia, I believe that the mark DUX has come to be distinctive of the afore-mentioned products as manufactured by my company, both in New Zealand and Australia.

1. I first became aware of the trademark DUX in the name of AUSTRALIAN WATER HEATERS PTY LTD when I instructed the filing of a tradmark application to register DUX in New Zealand.  In that instance AUSTRALIAN WATER HEATERS PTY LTD has registered the trademark DUX for electric storage water heaters.  After negotiations between the two companies, AUSTRALIAN WATER HEATERS PTY LTD withdrew their objection to use and registration of DUX by my company in New Zealand.

1. SUBSEQUENTLY I instructed by Patent Attorneys, Baldwin, Son and Carey, to file trademark applications in Australia for DUX in classes 11 and 17 covering the goods of interest to my company.

1. IN Australia the DUX registration in the name of AUSTRALIAN WATER HEATERS PTY LTD was raised as a citation by the Australian Trademark Registry.

1. I then instructed my Patent Attorneys to commence negotiations with AUSTRALIAN WATER HEATERS PTY LTD whereby both parties could mutually coexist in the marketplace with their respective products marked DUX.

1. NEGOTIATIONS between the 2 parties did not realise a settlement and so I contacted the new owners of the DUX trademark registration, ELECTRICAL EQUIPMENT LTD owners of Dux Water Heaters, a trading division.

1. I spoke to Mr Fred Langshaw by telephone in August 1985, and he replied by telex that his company had no objection to my company's use of the trademark DUX in Australia in relation to plumbing activities.  Attached is a copy or Mr Langshaws telex as Exhibit REC 1.

1. ON June 9th 1986 I wrote to ELECTRICAL EQUIPMENT LTD in an attempt to follow up the question of registration of the trademark DUX in Australia.  Subsequently I learned of the takeover of ELECTRICAL EQUIPMENT LTD by S W HART & CO PTY LTD (HART).

1. I spoke to HART'S company secretary, Mr K Lynn by telephone in August 1986, and he advised that although his company was not marketing anything other than DUX hot water heaters at the time, it was his company's intention to give the name DUX a "higher marketing profile" in Australia.

1. IN my discussions with Mr Lynn I formed the clear view that his company had not used the trademark DUX on the particular products of interest to my company, as described in paragraph 2 of my Declaration.  His company's use had been restricted to hot water heaters.

1. MR Lynn confirmed our telephone conversation in his letter of 6 August 1986.  Attached is a copy of that letter as Exhibit REC 2.

1. AS my company has been marketing plumbing products in Australia for many years, and to the best of my knowledge there have been no instances of confision, the continued objection to the registration of my company's mark has resulted in my company being unfairly prejudiced in its activities in Australia.

1. I believe it is quite clear from the facts as stated in my Declaration that there has been no use of the trademark DUX under trademark registration number A102764 in Australia on plumbing products.

   Mr Lord pointed out that Hardie had previously been called S.W. Hart & Co Pty Ltd.  Hardie acquired the mark by assignment from EEL.  Mr Lord submitted that Mr Christie was a New Zealand citizen
   and that there was no evidence as to his familiarity with the marketing conditions in Australia.  There was no evidence from the relevant trade as to the non-use of the mark.  Referring to para 10 he said that the person mentioned was unknown to the opponent.  There is no mention in the facsimile message exhibited as REC 1 of Mr Langshaw's position in the company or authority to make the statements made therein.  Neither in that document nor in the letter from Mr Lynn, company secretary of S.W. Hart & Co Pty Ltd, objecting to the use of DUX by the applicant, is there any statement to the effect that the mark had not been used on any of the goods for which it is registered.  Moreover, the declaration of Barry Leonard Russell showed that the mark had been used during the relevant period, 4 August 1983 to 4 August 1986, on electric storage water heaters, throughout all States of Australia.  Mr Versluis also stated in his declarations that the mark had been used during the relevant period on electric storage and instantaneous water heaters.  Mr Lord submitted as a result that the applicant had failed to make out a prima facie case and that therefore the application must fail.
             That the onus is on the applicant for removal to make out a prima facie case of non-use of the mark is clearly stated by Windeyer J in the well-known passage from Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein (1966) 116 CLR 254:

"It is for an applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a
better position to prove user than is the applicant to prove non-user.  But if evidence be given for the respondent to controvert the applicant's prima facie case, then when all the evidence is complete the question is still, has the applicant proved his case?  I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it."

Mr Abel rested his case on the two communications copies of which are exhibited to the Christie declaration.  The first of these is from a Fred Langshaw signed on behalf of "Dux Heaters".  The identity of that organization and its relationship with Hardie have not been established.  Mr Langshaw's position in the organization referred to and his authority to make the statements made are likewise not established.  The "plumbing lines as described in your letter of 11/7/85" to the use of the trade name DUX for which Dux Heaters has no objection are not identified.  Nowhere in this short message is there any statement to the effect that the trade mark DUX had not been used by the registered proprietor on any of the goods for which it is registered.  Nor is there any indication in the letter of Mr Lynn, who is identified as company secretary of S.W. Hart & Co Pty Ltd, that the mark had not been used by the registered proprietor in respect of any of the goods for which it is registered.  Nowhere in the Christie declaration is the relevant 3 year period, 4 August 1983 - 4 August 1986, addressed.  There is no independent evidence from anyone in the relevant trade.  In short, the applicant has not begun to make out the case it is required to make out in order to succeed and its appliction must therefore fail since it has not succeeded in shifting the evidentiary onus onto the opponents.
          In the result the application under s.23 for removal of the mark from the Register in respect of any of the goods for which it is registered is dismissed.  The two opponents, Hardie and EEL, are entitled to their costs and I so award them.

(M.A. HOMANN)
Hearing Officer
26 August 1991