Exel Composites Oyj v Seal Trademarks Pty Ltd

[2011] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Exel Composites Oyj to application under section 92 of the Act by Seal Trademarks Pty Ltd to remove trade mark number 754860(28) - EXEL - in the name of Exel Composites Oyj.

Delegate:	Iain Thompson
Representation:	Opponent: No appearance Applicant: Blake Knowles of Cullens, Patent and Trade Mark Attorneys
Decision:	2011 ATMO 75 S92 – application for partial removal – trade mark used on limited goods in Class 28 – s101(4) goods of same description – application successful, specification of goods in Class 28 limited.

Background

1. Exel Composites Oyj is the owner of a registered trade mark, current details of which appear below:

   Registration No:           754860

   Priority Date:               12 February 2018

   Goods:Class 9: Masts, support structures and protective casings of composite materials for telecommunication equipment; parts and fittings for the foregoing in this class

   Class 17: Goods made of fiber reinforced plastics, in form of blocks, plates, bars, sheets, cords or bands (all semi-worked), snowmobile track stiffeners, parts for knitting machines, laminates of reinforced plastics; flexible pipes, not of metal; tool handles, junction pieces for pipes; insulating materials, electrical fence posts; kite tubes, insulating bars for railway tracks; parts and fittings for the foregoing in this class
   Class 19: Building materials (non-metallic); telescopic masts, telescopic poles, ladders, lattice towers, lattice structures, window frames, door frames, railway track stiffeners; non-metallic rigid pipes for building; telescopic masts, telescopic poles/pipes, ladders, lattice towers, lattice structures (all made of non-metallic pipes), tool handles, kite skeleton tubes, junction pieces for pipes; parts and fittings for the foregoing in this class
   Class 28: Gymnastic and sporting articles not included in other classes; ski poles and accessories for the ski poles, indoor floor ball clubs and accessories for the clubs, golf club shafts, windsurfing masts, hockey shafts and clubs, Finnish baseball products; parts and fittings for the foregoing in this class

   Trade Mark:                EXEL

2. On 27 March 2009, Seal Trademarks Pty Ltd (‘the applicant’) filed application under section 92 of the Trade Marks Act 1995 (‘the Act’) to remove the registration from the register of trade marks for all goods in Class 28.  The application was couched in the following terms:

   The trade mark has remained registered for a continuous period of 3 years ending one month before the day on which this non-use application is filed, and, at no time during that period, the person who was then the registered owner used the trade mark in Australia or used the trade mark in good faith in Australia in relation to the goods to which this non-use application relates.

3. The section under which the applicant seeks removal of the registration is not specified on the application but, by its language, the application is made under subsection 92(4)(b). Section 92 relevantly states:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)[….];

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

   (i)used the trade mark in Australia; or

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

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

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

4. The period within which the non-use of the trade mark is alleged is between 27 February 2006 and 27 February 2009.

5. On 29 July 2009, the owner of the trade mark filed Notice of Opposition (‘the Notice’) to the removal of the trade mark.  The Notice is couched in the following terms:

   1.The Opponent denies each and every ground of removal set out in the removal application.

   2.On the day on which the application for registration of the Registered Trade Mark was filed, the Opponent had an intention in good faith to use and/or to authorise use of the Registered Trade Mark in Australia.

   3.The Opponent has used or authorised use of the Registered Trade Mark with additions or alterations not substantially altering its identity, in good faith in Australia in relation to which the non-use application relates during the three-year period ending one month before the date of the removal application.

   4.The Opponent has not abandoned the Registered Trade Mark and intends to continue using the Registered Trade Mark in good faith in Australia.

   5.Any failure to use the Registered Trade Mark during the relevant period was due to circumstances that were an obstacle to such use.

   6.It is not in the public interest for the Registered Trade Mark to be removed from the Register.

   7.      The Registrar should use her discretion to refuse removal.

   8.Having regard to any one or more of the foregoing grounds or otherwise in the exercise of her discretion, the Registrar should determine the matter by:

   •          rejecting and dismissing the removal application entirely;

   •deciding that the Registered Trade Mark should not be removed from the Register;

   •          awarding costs to the Opponent.

6. Subsequently, the owner of the trade mark served and filed evidence in support of its opposition to the removal of the trade mark.  The applicant has not served and filed evidence in answer.

7. Thereafter the applicant requested a hearing which I heard as a delegate of the Registrar of Trade Marks on 24 June 2011.  Mr Blake Knowles of Cullens, Patent and Trade Mark Attorneys, represented the applicant by teleconference.  The owner did not appear.

   The Evidence

8. The evidence comprises a statutory declaration by Jukka Juselius (‘the declarant’) who is business segment manager of the owner and a statutory declaration by Amy Denise Reynolds, a lawyer employed by Blake Dawson who represent the owner in this matter.

9. The declarant states:

   The [owner] is a leading technology company which designs, manufactures and markets composite profiles and tubes for various industrial applications.

   The [owner’s] operations started in Finland in 1960 when three chemists founded a company which specialized in the production of electronic detonator caps. The company's name was derived from the words Explosive Electronics - EXEL.

   The [owner] designs and manufactures composite profiles, tubes and laminates for many sports and leisure applications. The [owner] has a long and successful history in manufacturing sports poles for skiing, Nordic Walking, trekking and in -line skating. The [owner’s] laminates are also widely used in ski, snow board, ice hockey sticks, skate and wake boards, wind surfing and sailing masts, archery, caravan awnings and tent structures, among other applications.

   The production of sporting articles by the [owner] began in the 1970s, when the Opponent began producing cross country ski poles in 1973.

   Exel started selling its products in Australia in 1992.

   The [owner] acquired 100% of the shares of the Australia-based Pacific Composites Pty Ltd in February 2006. The [owner’s] Australian branch Exel Composites Australia manufactures profiles in Brisbane and Melbourne in Australia.

   The [owner’s] primary distributor for Exel in Australia was Robert J Green (Sales) Pty Ltd.  Now produced to me and marked Annexure B is an ASIC extract showing the details and ABN of the Australian distributor, and an extract from showing the location of one of the distributor's outlets.

   The [owner] has marketed its products in Australia. Now produced to me and marked Annexure C are samples of the [owner’s] brochures which were available in Australia, including:

   (a)       Alpine Ski Poles 2007-8

   (b)       Winter 2006-7

   (c)       Winter 2006-7

   (d)       Alpine / Cross Country Ski Poles 2008-9

   The [owner] has sold its products in Australia. Now produced to me and marked Annexure D are invoice details and product codes showing sales in Australia.

10. Ms Reynolds’s declaration serves to clarify and exhibit a translation of exhibits to the Juselius declaration which were receipts in Finnish. 

    Submissions

11. Mr Knowles submissions are, in summary:

    The evidence does not demonstrate that goods bearing the trade mark were sold or offered for sale in Australia in the relevant period for all but a very limited range of goods, namely, ski poles.

    While the Opponent alludes to its reputation for wind surfing masts and other sports ‘shafts’, there is no evidence demonstrating a clear, unambiguous use of the registered mark in Australia in the relevant period in relation to any goods other than ski poles.

    Furthermore, no convincing reasons or evidence has been submitted supporting the exercise of the Registrar’s discretion to maintain the registration for a broader range of goods.

    As such, we submit that the Opponent has not met the evidentiary burden under s100, and the trade mark should be partially removed from the register in accordance with s101 for all goods except ski poles.

    Discussion

12. Section 100 of the Act relevantly provides:

    100Burden on opponent to establish use of trade mark etc.

    (1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

    (a)any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

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

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

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

    in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or

    (b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

    (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

    Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2:For file, month and registered owner see section 6.

    (2)For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

    (a)the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

    (b)in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

    (i)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

    (ii)the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

    Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2:For registered owner see section 6.

    (3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

    (a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

    (b)in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

    (i)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and

    (ii)the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

    (c)the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

    Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2:For registered owner see section 6.

13. The owner’s evidence in the form of invoices clearly shows that the trade mark has been used in relation to ski poles, ski pole tubes and accessories for ski poles during the relevant period in that they were supplied to a company within Australia which is identified as Robert J. Green (Sales) Pty. Limited.

14. This much is not disputed by the applicant for removal who concedes that the trade mark has been used on ski poles, ski pole tubes and accessories for ski poles during the relevant period.

15. The applicant for removal also concedes the use of the trade mark on ‘bags’ but states that these do not occur in Class 28.

16. I note that on one of the invoices the following appears:

    R-7102724 EXEL TEAM BAG 155 CM 2005

17. The length of the bag, 155 cm, strongly suggests that the bag is for either ski poles, skis, or both.

18. The International (Nice) Classification of Goods and Services (Ninth Edition) contains the following item:

    Cls     Item                Description

    28     B00039           BAGS ESPECIALLY DESIGNED FOR SKIS AND   SURFBOARDS

19. The exhibited invoice shows that two of the ski bags were supplied by the owner to Robert J. Green (Sales) Pty. Limited within the relevant period.  A single bona fide use of the trade mark on the goods during the relevant period may be sufficient to defeat an application for removal.  In such a case the use of the trade mark should be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J.

20. I am satisfied that the evidence establishes that the trade mark has been used in Australia in relation to bags for ski poles and skis, which are goods which occur within Class 28.

    Decision

21. Section 101 of the Act provides:

    101Determination of opposed application—general

    (1)Subject to subsection (3) and to section 102, if:

    (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

    (b)the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

    (2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

    (3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

    (4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

    (a)similar goods or closely related services; or

    (b)similar services or closely related goods;

    to those to which the application relates.

    Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

    Note 2:For registered owner see section 6.

22. I note that the Juselius declaration states that the owner makes, “The [owner] has a long and successful history in manufacturing sports poles for skiing, Nordic Walking, trekking and in -line skating. The [owner’s] laminates are also widely used in ski, snow board, ice hockey sticks, skate and wake boards, wind surfing and sailing masts, archery, caravan awnings and tent structures, among other applications.”

23. Having regard to subsection 101(4), above, I consider (in relation to the owner’s claims, and the evidence of use of the trade mark in Australia) that shafts for ski poles which are goods which have been sold in Australia by the owner are similar goods to skating poles, walking poles and shafts for sports clubs and sticks in Class 28.  I note that the owner in fact makes these goods although they have not been sold in Australia.

1. Subject to any appeal from this decision within the allowed time, I direct that the Class 28 specification of the registration be limited to “ski poles, skating poles, ski pole tubes and accessories for ski poles; bags for skis and ski poles; shafts for sports clubs and sticks”.  The Class 9, 17 and 19 specifications are to remain unchanged.

2. If this decision is appealed, the disposition of the application for removal should be in accordance with the Court’s order or direction.

   Costs

3. The applicant for removal has been substantially successful in its application and is therefore entitled to its costs which I award at the official scale against the owner.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   5 August 2011