FA Industry Pty Ltd v Frigrite Mechanical Services Pty Ltd

[2017] ATMO 3

TRADE MARKS ACT 1995

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

Re:Oppositions by FA Industry Pty Ltd to applications under section 92 of the Act by Frigrite Mechanical Services Pty Ltd to remove trade mark numbers 550208, 550210, and 1270371 (11, 37) - FRIGRITE (Logo and Word) - in the name of FA Industry Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Christopher Wood of Counsel instructed by Brighton Lawyers Applicant: Alex Lazarevich (by phone) instructed by Ouwens Lawyers
Decision:	2017 ATMO 03 Trade Marks Act 1995 Section 96 - applications for removal under the provisions of paragraphs 92(4)(a) and 92(4)(b). Opponent has used the Trade Mark in relation to most goods and services; exercise of Registrar’s discretion in relation to the remainder.

Background

1. In these matters, Frigrite Mechanical Services Pty Ltd (‘the Applicant’) filed applications on 6 November 2014 under paragraphs 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal from the register of the trade marks appearing below in respect of all of the goods and services for which they are registered:

Registration No:         550208
Priority Date:             11 February 1991

Goods:Class 11: All goods in this class including commercial, industrial or retail refrigeration apparatus, equipment or installations, refrigerators, refrigeration cabinets and chambers, refrigerated milk vats, parts and accessories therefor in this class

Trade Mark:               

Registration No:         550210
Priority Date:             11 February1991

Servicess:Class 37: Refrigeration apparatus and equipment repairs, maintenance and installation services

Trade Mark:               

Registration No:         1270371
Priority Date:             3 November 2008

Goods/Services:         Class 11: Apparatus for refrigeration, including refrigerating machines, refrigerating appliances and installations, refrigerating cabinets, refrigerating chambers, refrigerating containers, refrigerators; apparatus for cooling, including cooling appliances, cooling installations, cooling machines, cooling equipment; chilling equipment, apparatus and installations; freezing appliances, equipment, machinery and installations; apparatus for lighting, heating, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; parts and accessories in this class for all the aforesaid goods

Class 37: Building, construction, repair and installation services relating to cooling, chilling, refrigeration, freezing, heating, drying, ventilating and air-conditioning equipment, machines, appliances and installations, including repair and maintenance of such installations

Trade Mark:               FRIGRITE

1. In this decision I will refer to the above trade marks as ‘the Logo Trade Marks’ and ‘the Word Trade Mark’ and collectively as the ‘the Trade Marks’.

2. The owner of the Trade Marks, FA Industry Pty Ltd, (‘the Opponent’) has opposed the removal of the Trade Marks from the register on the basis that it used the Trade Marks during the relevant period – that is, the three years period which ends on 6 October 2014.

3. The parties have filed evidence in support, evidence in answer, and evidence in reply as is further discussed below.

4. Both parties requested to be heard.  As a delegate of the Registrar of Trade Marks, I heard the submissions of the parties at a hearing in Canberra on 7 September 2016.  Christopher Wood, of Counsel, instructed by Brighton Lawyers, represented the Opponent; Alex Lazarevich, of Counsel, instructed by Ouwens Lawyers, represented the Applicant.

Evidence

1. The evidence in support is a declaration by Ms Ji Hong Jiang, sole director of the Opponent, made on 14 July 2015, with annexures A to F.

2. Ms Jiang explains that she is the sole director of the Opponent and is also sole director of Frigrite Refrigeration International Pty Ltd (‘FRI’) who the Opponent has authorised to use the Trade Marks.

3. Ms Jiang’s declaration establishes to my satisfaction:

   1.   During the three year period ending on 6 October 2014 (‘the relevant period’) FRI used the Word Trade Mark in relation to a variety of commercial food freezers, refrigeration and heating apparatus such as may be found in large supermarkets; pictures of examples of this equipment appear below:

   2.   During the relevant period the Opponent used the trade marks appearing below in relation to the same/similar equipment as that in relation to which it has used the Opponent’s Word Trade Mark:

   3.   The Opponent has sold its goods in New South Wales, Victoria, South Australia and Tasmania; and,

   4.   Ms Jiang states that Frigrite Refrigeration International Pty Ltd is an authorised user of the Trade Marks.

4. The evidence in answer is a declaration by Julie Russo, solicitor for the Applicant, made on 27 October 2015, with annexures A to D.

5. Ms Russo draws attention to the Applicant’s pending (deferred) applications to register its trade marks and relevantly states:

   The Applicant's business involves the installation and maintenance of large commercial and residential air-conditioning, heating and cooling apparatus.

   The Applicant does not seek to intrude upon the categories of work that the Opponent undertakes in its business now or at any time in the future.

   The Applicant is not passing off or purporting to carry out the same or similar works to those works carried out by the Opponent.

   Given the wide-ranging areas covered by Classes 37 and 11 and the fact that the Opponent's Trademarks do not exhaust all of the categories, the Applicant should not be prevented from seeking to protect its rights by registration of a trademark in entirely different fields.

6. The Applicant’s pending (deferred) applications are:

Application No:         1592813
Priority Date:             21 November 2013

Services:Class 37: - Mechanical Service Supply, Installation, Service and Repairs - Refrigeration Supply, Installation, Service and Repairs - Air Conditioning Supply, Installation, Service and Repairs - Fire Systems Supply, Installation, Service and Repairs - Electrical Supply, Installation, Service and Repairs - Plumbing Supply, Installation, Service and Repairs - Controls Supply, Installation, Service and Repairs - Commercial, Industrial, Rural, Domestic Sectors Services of the above

Trade Mark:                 

Application No:         1592819
Priority Date:             21 November 2013

Services:Class 37: Air Conditioning, Refrigeration, Mechanical Services, Electrical, Controls, Fire, Plumbing and Consulting Services, Supply, Installation, Repairs, Service, Maintenance, Design, Commissioning, De-commissioning and Professional Services associated

Trade Mark:               Frigrite;

Frigrite Mechanical Services;
Frigrite Maintenance Solutions;
Frigrite MS;
Frigrite Plumbing & Gas;
Frigrite Mining Solutions;
Frigrite SA;
Frigrite Electrical;
Frigrite Management Services;

Frigrite Fire.

1. It is not expressly stated in this evidence, but I infer from the evidence and submissions that the Applicant’s operations are limited to South Australia.

2. I will discuss the balance of the evidence as and when it becomes relevant to my decisions.

Legal Framework

1. Section 96 makes provision for a person to oppose any application made under section 92 by filing a notice of opposition with the Registrar. This notice must be in an approved form and must be filed in accordance with the Regulations.

2. Section 100 specifies that the burden is on the opponent to a non-use application to rebut allegations of non-use or lack of intention to use as the case may be. The opponent needs to establish that the applicant for, or registered owner of the trade mark has used it (or used it with additions or alterations not substantially affecting its identity) in good faith in respect of the relevant goods and/or services, and that this use occurred within the relevant periods as specified in the Act.

3. The use relied upon by the Opponent need not be great; in Woolly Bull Enterprises Pty Ltd v Reynolds[1] Drummond J observed:

   In order to establish the ground for removal of a trade mark from the Register provided for by s 92(4)(b), the applicant for removal must show that “at no time during that period”, ie, the relevant “continuous period of three years” has the registered owner used the trade mark in Australia in relation to the relevant goods. An application for removal cannot be made on an allegation of almost continuous non-use throughout the whole of the three year period: only an allegation of unbroken non-use throughout a continuous period of three years will suffice. If a single user of the mark during that period is sufficient to disentitle a person from making an application for removal based on s 92(4)(b), the opponent must be entitled by s 100(3)(a) to rebut the allegation on which such a removal application is based by proving a use (in good faith) on just one occasion during the three year period.

   In Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, McGarvie J, speaking of s 23(1)(b) the Trade Marks Act 1955 (Cth) (“the 1955 Act), said, at 437:

   “The defendant must establish that during the three-year period to 4 July 1983 the plaintiff did not once use the mark in good faith in Australia: the Estex case (1967) 116 CLR 254 at 258-9. The contest between the parties is whether the plaintiff during that period used its trade mark in Australia at least once.”

   [1] [2001] FCA 261; (2001) 107 FCR 166; [2001] AIPC 91-713; (2001) 51 IPR 149 at [14].

4. However, the trade mark use referred to must be a real use; as Drummond J put it in Woolly Bull[2]:

   The expression “use in good faith” has a well understood meaning in this context, viz, real, as opposed to token, use in a commercial sense: see New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 45 and Shanahan, Australian Law of Trade Marks and Passing Off, 2nd ed, 1990, at pp 272 – 274.

   [2] Op cit at [16].

5. Subsection 101(1) provides the Registrar with the discretion to remove the trade mark from the Registrar “in respect of any or all of the goods or services to which the application relates”. Subsection 101(3) explicitly provides that if the Registrar is satisfied it is reasonable to do so the discretion may be exercised in the trade mark owner’s favour even if the grounds on which the application was made have been established. Section 102 affords the Registrar the discretion to limit the geographical scope of the registration(s) involved.

Section 92

1. Section 92 of the Act relevantly provides:

   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)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

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

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

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

   in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

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

   (i)used the trade mark in Australia; or

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

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

   Note 1:For file and month see section 6.

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

Paragraph 92(4)(a)

1. As Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed, 2008) observes at paragraph 70.510:

   Section 92(4)(a) and (b) provide distinct and alternative grounds for removal. Under para (a) it is necessary to establish: first, that the trade mark was registered without the necessary intention in good faith that it should be used; and secondly, that there had in fact been no use, or no use in good faith, earlier than one month before the application for removal. Under para (b) it is necessary to establish[3] only that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal, subject to s 93(2) which provides that five years must have passed since the application for the registered trade mark was filed.

   Paragraph (a) thus merges with para (b) once the trade mark has been registered for five years, though it should be noted that the defence of "circumstances that were an obstacle to the use of the trade mark" which applies to para (b) is not available under para (a).

   [3] However, the burden is now on an opponent to establish its opposition to removal of a trade mark from the register.

2. I note that the Trade Marks have been registered for more than five years and the Opponent does not argue that there was any circumstance which constituted an obstacle to the use of the Trade Marks.

3. It follows that in the circumstances of these matters it is unnecessary to further discuss the ground under paragraph 92(4)(a).

Paragraph 92(4)(b)

1. In terms of the evidence of the parties and the arguments led at the hearing, I am to consider the following issues under paragraph 92(4)(b):

   1.   Has there been a use/uses of the Trade Marks within the relevant period? if so,

   2.   Was this/these use(s) authorised by the Opponent; and, if so,

   3.   In relation to which goods and/or services within the specifications of the Trade Marks did that use/those uses occur?

2. Mr Lazarevich, for the Applicant, conceded the use of the Word Trade Mark and submitted that the uses of the logo trade marks relied upon by the Opponent did not constitute a use of the Logo Trade Marks as registered.  In doing so he sought the adverse application by the Registrar of subsection 100(3) which provides:

   (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;

3. The above provision is similar to that within section 7 of the Act:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

4. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[4] at [256] Yates J treated the issue of ‘additions or alterations’ under subsection 7(1) as being in essence the same as the question of ‘substantial identity’ which occurs within section 44 of the Act[5].  He stated:

   Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival[6] at 391; Shell[7]at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself.

   [4] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].

   [5] See also Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519; (2010) 87 IPR 300; [2010] AIPC 92-388 per Kenny J at [154].

   [6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.

   [7] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407.

5. In Shell the question of ‘substantial identity’ was posited thus:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

6. In my consideration, the wavy line which appears under the word ‘frigrite’ within the Logo Trade Marks is a non-distinctive and unessential feature which does not contribute to the identity of those trade marks: see, as a parallel, Blount Inc v Registrar of Trade Marks[8] where Branson J found that the placement of an oval border around the word ‘Oregon’ did not affect the non-distinctive character of that word.  I also consider the words ‘refrigeration international’ and the other (indistinguishable) words which occur in association with the Opponent’s trade marks as they occur in the use demonstrated in the evidence as being entirely non-essential features which do not affect the identity of the Logo Trade Marks as registered.

   [8] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241

7. Alternatively, to paraphrase the words of the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[9] at [69], the addition of the words ‘refrigeration international’ to the registered trade marks is not a feature which separately distinguishes the goods and services or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade marks by reference to the Logo Trade Marks.

   [9] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 at [69].

8. Whichever approach is adopted, the alterations and additions (the words ‘refrigeration international’) do not affect the identity of the Logo Trade Marks.

1. Turning to the question of ‘authorised user’, section 8 of the Act provides:

   8Definitions 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).

2. I note that ASIC Current Organisation Extracts exhibited to Ms Jiang’s declaration establish that all of the shares in FRI (the company which uses the Trade Marks) are owned by the Opponent.  Ms Ji Hong Jiang is listed at being the sole director and secretary of both the owner and user of the Trade Marks.

3. What is clear from section 8 of the Act is that ‘control’ is a fundamental aspect of authorised use. Section 8 explicitly contemplates ‘quality control’ and ‘financial control’ as examples of the type of control necessary. Financial control has been found to require no more than that the user of a trade mark be a subsidiary company of the proprietor of that trade mark.

4. Section 46 of the Corporations Act 2011 (‘the CA’) defines a subsidiary company as follows:

   Section 46 - What is a subsidiary?

   A body corporate (in this section called the first body ) is asubsidiary of another body corporate if, and only if:

   (a)the other body:

   (i)controls the composition of the first body’s board; or

   (ii)is in a position to cast, or control the casting of, more than one-half of the maximum number of votes that might be cast at a general meeting of the first body; or

   (iii)holds more than one-half of the issued share capital of the first body (excluding any part of that issued share capital that carries no right to participate beyond a specified amount in a distribution of either profits or capital); or

   (b)the first body is a subsidiary of a subsidiary of the other body.

5. As the Opponent holds all the issued capital in FRI, that corporation is, according to paragraph 46(a)(iii) of the CA, a subsidiary of the Opponent.  This is sufficient to establish to the Registrar’s satisfaction that the Opponent exercises financial control over FRI, the user of the Trade Marks, and that therefore the use of the Trade Marks by FRI is an authorised use under the control of the Opponent.

6. I turn to the third of the considerations at paragraph [23], above: the particular goods and services on which the Trade Marks have been used.

7. The evidence establishes to my satisfaction that the Opponent has used, or has authorised the use of, the Trade Marks in relation to large scale commercial glass-fronted refrigerators and freezing cabinets; chilled produce display cases including delicatessen display cases, meat display cases, dairy produce display cases, fish display cases, fresh flower display cases and bakery display cases; and heating apparatus such as might keep roast chicken etc hot in supermarkets and parts and accessories for the foregoing such as shelves, glass lids and night blinds.  It is also apparent from the receipts in evidence which carry the Trade Marks that the Opponent subcontracts some maintenance/installation services under its aegis where necessary.  I further note that the Opponent carries a statutory obligation to provide warranty services and it is more likely than not that these services would be provided on-site in supermarkets under the Opponent’s aegis as the equipment is not such that it could be readily returned to the point of purchase for such services to be performed.

8. I further note that (as regards other goods and services claimed within the Opponent’s specifications of goods and services) many installations of goods similar to those fridges and freezers of the Opponent require plumbing arrangements and that many heated food display cases may need some form of ventilation.

9. With the preceding paragraphs in mind, I make the following findings in relation to the extent of use of the Trade Marks.

550208 (Frigrite Logo)

1. This trade mark is registered in Class 11 in respect of:

   All goods in this class including commercial, industrial or retail refrigeration apparatus, equipment or installations, refrigerators, refrigeration cabinets and chambers, refrigerated milk vats, parts and accessories therefor in this class.

2. While the Opponent’s use of the Trade Marks does not go as wide as ‘all goods in this class’ within Class 11, it is apparent that the scope of the actual use of the Trade Marks goes beyond what is listed as the remainder of the goods.  In particular, if the expression ‘all goods in this class’ were culled from the specification, the Opponent would arguably not have coverage in respect of ‘fresh flower display cases and bakery display cases; and heating/display apparatus such as might keep roast chicken etc hot in supermarkets’.  Thus while it is appropriate that the expression ‘all goods in this class’ be deleted from the specification of 550208 (Frigrite Logo), some alteration of the remaining wording is appropriate.

550210 (Frigrite Logo)

1. This trade mark is registered in Class 37 in respect of:

   Refrigeration apparatus and equipment repairs, maintenance and installation services

2. In my consideration the evidence establishes that the Opponent has provided the above services.

1270371 (FRIGRITE – word)

1. This trade mark is registered in Classes 11 and 37 in respect of:

   Apparatus for refrigeration, including refrigerating machines, refrigerating appliances and installations, refrigerating cabinets, refrigerating chambers, refrigerating containers, refrigerators; apparatus for cooling, including cooling appliances, cooling installations, cooling machines, cooling equipment; chilling equipment, apparatus and installations; freezing appliances, equipment, machinery and installations; apparatus for lighting, heating, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; parts and accessories in this class for all the aforesaid goods

   Building, construction, repair and installation services relating to cooling, chilling, refrigeration, freezing, heating, drying, ventilating and air-conditioning equipment, machines, appliances and installations, including repair and maintenance of such installations

2. In my consideration, the Opponent has not established that it has used the Logo Trade Marks in relation to:

   Building, construction, repair and installation services relating to … air-conditioning equipment, machines, appliances and installations, including repair and maintenance of such installations.

3. The scope of the balance of the specifications of goods and services is, in my consideration, appropriate.

Discretion

1. Subsection 101(3) of the Act provides:

   (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.

2. The discretion available to the Registrar under s 101(3) has been described by Bennett J, as[10]:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

Her Honour also noted[11]:

By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.

[10] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

[11] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited, Flick J stated[12]:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[14] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.

   [12] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

2. An opponent must satisfy the tribunal that it is reasonable that the Registrar’s discretion be invoked in its favour.  As Yates J put it in Optical 88 Limited v Optical 88 Pty Limited (No. 2)[15]:

   However, as s 101(3) makes clear, the court (or the registrar, as the case might be) may only decide that the trade mark should not be removed from the register ‘if satisfied that it is reasonable to do so’.  This requires, in my view, the court (or the registrar) to be positively satisfied of that condition.  In my view it is the opponent for removal who bears the burden of persuasion on that issue.

   [15] [2010] FCA 1380, [273].

3. In Pioneer Bennett J listed a number of factors which might be of assistance when considering the exercise of the Registrar’s discretion:

   … the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

   ◦there had been no abandonment of the trade mark ;

   ◦the registered proprietors of the mark still had a residual reputation in the mark ;

   ◦there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

   ◦the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   ◦the registered proprietors were not aware of the applicant’s sales under the mark.

4. Here it is not clear to me whether the Applicant for removal had taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.  If however, the Applicant’s behaviour in these matters were to be taken into account I note that, significantly, the Applicant’s specifications of services on its deferred applications 1592813 and 1592819 include reference to ‘Refrigeration Supply’ and ‘refrigeration’ notwithstanding Ms Russo’s declaration in Evidence in Answer that:

   The Applicant does not seek to intrude upon the categories of work that the Opponent undertakes in its business now or at any time in the future.

   The Applicant is not […] purporting to carry out the same or similar works to those works carried out by the Opponent.

5. The Applicant also argued that the Registrar place a geographical limitation upon the Trade Marks by use of her discretion under section 102: the limitation would have the effect that the registrations do not extend to South Australia.  However, I do not consider this appropriate for two reasons:

   1.   The invoices exhibited to Ms Jiang’s declaration show that the Opponent has used its trade marks in South Australia; and,

   2.   The Applicant has not entered a corresponding limitation on its applications 1592813 and 1592819 limiting their registration to South Australia.

6. The Applicant’s motivation for seeking removal is that the Trade Marks have been raised as impediments to the acceptance of its pending trade mark applications.  The Applicant has indicated that its primary interest is the business of services related to airconditioning.  Services in respect of both air conditioners and refrigerators are carried out by refrigeration mechanics, as the principles of the machines are similar.  It is common for traders to provide both refrigeration and air conditioning services and to advertise their services in similar places.  A consumer familiar with the Opponent’s refrigeration services that came across the Applicant offering air-conditioning services is likely, at the very least, to wonder whether the services come from the same trade source, and perhaps more likely to assume that they do.

7. Similarly, the owner of a refrigeration unit manufactured by the Opponent and who is seeking a repairer for their goods, in seeking out a repair person, is again likely to be caused to wonder, if not assume, that the air conditioning services provided by the Applicant and the refrigeration services offered by the Opponent originate from the same trade source.

8. Given the similar nature of the two services, and the similarity between the trade marks, the exclusion of air-conditioning services from the Opponent’s claimed services will not assist the Applicant in gaining acceptance of its pending applications for registration.

9. The public interest in the avoidance of confusion arising from the use of the respective trade marks in connection with the respective goods and services is, therefore, best served in this case by the exercise of the discretion in favour of the Opponent, that is, by leaving the Opponent’s registrations to stand substantially as they are.

Decisions

1. Subsection 101(1) 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 any appeal against these decisions, the following amendments to the specifications of goods of the Opponent’s Trade Marks are appropriate.

3. In relation to registration 550208 (Frigrite Logo) it is appropriate that reference to ‘all goods in this Class’ be deleted and the specification be limited to that of 550210 for the following goods:

   Class 11: Apparatus for refrigeration, including refrigerating machines, refrigerating appliances and installations, refrigerating cabinets, refrigerating chambers, refrigerating containers, refrigerators; apparatus for cooling, including cooling appliances, cooling installations, cooling machines, cooling equipment; chilling equipment, apparatus and installations; freezing appliances, equipment, machinery and installations; apparatus for lighting, heating, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; parts and accessories in this class for all the aforesaid goods

Costs

1. Both parties requested their costs in this matter.  The Opponent has, to all intents, been successful in its opposition to removal of the Trade Marks and I accordingly award costs against the Applicant at the Official Scale set out at Schedule 8 to the Trade Mark Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
11 January 2017