Fugro NV v Marine Acquisition Corp

[2018] ATMO 44

TRADE MARKS ACT 1995

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

Re:Opposition by Fugro N.V. to application under section 92 of the Act by Marine Acquisition Corp. for removal of trade mark number 937776 (9,38,39) – SEASTAR - in the name of Fugro N.V.

Delegate:

Cristy Condon

Representation:

Opponent: Jürgen Bebber of Corrs Chambers Westgarth

Applicant: Sonia Stewart of Counsel

Decision:

2018 ATMO 44

Trade Marks Act 1995 (Cth) - section 96 opposition to s 92(4)(b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark during the relevant period – Trade Mark will remain on the Register

Background

1. This decision relates to an application for removal made on 2 September 2016 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Marine Acquisition Corp. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks:

Registration No.

937776

Filing date

11 December 2002

Goods

Class 9: Nautical, navigational, surveying, position-fixing, data communications, radio and radar apparatus and instruments; antennae; parts and fittings for all the aforesaid goods; software; none of the foregoing being marking buoys (‘Registered Goods’)

Services

Class 38: Telecommunications and data communications services; position-fixing services; services for tracking by means of radio and radar signals

(‘Registered Services’)

Class 39: Navigational services

Owner

Fugro N.V.

Trade Mark

SEASTAR

(‘Trade Mark’)

1. The application for removal is made in respect of all of the goods and services for which the Trade Mark is registered (the ‘Registered Goods and Services’).

2. Fugro N.V. (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 15 November 2016 and a Statement of Grounds and Particulars (‘SGP’) on 15 December 2016.

3. The Applicant filed a Notice of Intention to Defend on 6 January 2017.

4. The evidence stage commenced and the Opponent filed the following declaration as evidence in support of the opposition:

   ·David Ochoa Peris (the Opponent’s Intellectual Property Consultant) made on 10 April 2017 with accompanying Annexures XXX-1 to XXX-7 (‘Peris declaration’)

5. The above declaration constitutes the whole of the evidence filed in these proceedings.

6. Following the conclusion of the evidence stages the Applicant made a request to be heard in relation to the opposition matter and, in accordance with my schedule of directions that was sent by email on 30 January 2018, a hearing was set down for 8 March 2018 in Canberra.

7. The parties each filed written submissions within the specified time frames.

8. The matter came before me, a delegate of the Registrar of Trade Marks on the arranged day. The Opponent was represented by Jürgen Bebber of Corrs Chambers Westgarth. The Applicant was represented by Sonia Stewart of Counsel. Both parties appeared by video link.

9. I have decided this matter, on the basis of the material defined in paragraphs [1]-[8] of this decision, the oral submissions made at the hearing on 8 March 2018 and the Opponent’s supplementary submissions which were filed 1 day before the oral hearing and include the declaration of Jennifer Louise Wrigley, senior associate at Corrs Chamber Westgarth, made on 6 March 2018 together with Annexures JLW-1 to JLW-2 (‘Wrigley’).

10. I note that the information in Wrigley is confined to submissions regarding the meaning of ‘nautical apparatus and instruments’ which arise out of the Applicant’s submissions and is information that I may take in to account pursuant to Reg 21.15(4) of the Trade Mark Regulations 1995 (Cth). I note also that the Applicant did not contest my consideration of this information and constructed its submissions around this very issue.

    The Law relating to non-use

11. Part 9 of the Act deals with removal of trade marks from the Register for non-use. In respect of this matter, the Applicant has applied for removal of the Trade Mark under s92(4)(b) of the Act and this section relevantly provides:

    92 Application for removal of trade mark from Register etc.

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

    …

    (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.

12. The allegation under s 92(4)(b) is that a registered owner has not used the trade mark upon or in relation to the registered goods and/or services at any time in the 3 year period defined above. In the present matter the relevant 3 year period of non-use is 2 August 2013 to 2 August 2016 (‘relevant period’).

13. Additionally, I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years have passed since the trade mark application was filed.

    [1] s 93(2) of the Act.

14. The Opponent bears the onus of rebutting an allegation of non-use. The burden of proof is the ordinary civil standard of the balance of probabilities.[2] In this respect s100 of the Act relevantly provides:

    [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

    100  Burden 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:
    [...]

    (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.

    […]

    (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

    [...]

    (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.

15. In accordance with s 101, as Delegate of the Registrar I may decide to remove the Trade Mark for all or some of the Registered Goods and Services, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.[3]

    [3] S 101(3) of the Act.

16. Relevantly, I also note that the Federal Court has previously said in Woolly Bull Enterprises Pty Ltd v Reynolds[4] that a single bona fide use of the trade mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b).[5] If a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[6]

    [4] [2001] FCA 261 (‘Woolly Bull’).

    [5] Ibid, [17].

    [6] Nodoz Trade Mark (1962) RPC 1, 7.

    Opponent’s Evidence

17. The Opponent is the only party to provide evidence in this proceeding and, as I noted earlier, it is the Peris declaration together with seven annexures.

18. The Peris declaration contains the following claims, that I have summarised below:

    ·The Opponent is a provider of geo-intelligence and asset integrity solutions for large construction, infrastructure and natural resources. It operates in sixty countries and has been in operation for more than fifty years.[7] In Australia, the Opponent’s offices are located in Brisbane (QLD), Perth (WA), Kidman Park (SA), Nedlands (WA), Osbourne Park (WA) and Balcatta (WA).[8]

    [7] Annexure XXX-1.

    [8] Annexure XXX-2 and XXX-3.

    ·The Trade Mark is used in relation to high performance positioning products and services which are used primarily by the offshore oil and gas industry. This includes customers who operate offshore support vessels, drilling ships and rigs, service vessels, loading vessels (offshore), floating production units and shuttle tankers. [9]

    [9] Peris, [4].

    ·The Opponent has used the Trade Mark in Australia within the relevant period in respect of goods and services in classes 9, 38, 39 including those listed below:

    §Nautical, navigational, position-fixing, data communications, radio and

    radar apparatus and instruments

    §Antennae

    §Telecommunications and data communications services

    §Position-fixing services

    §Services for tracking by means of radio and radar signals

    §Navigational services

    20.   Annexure XXX-2 to Peris contains copies of six of the Opponent’s brochures that are all dated within the relevant period. A summary of the contents of these brochures is below:

    1.   Fugro Satellite Positioning brochure

    This brochure is dated February 2015. It outlines the capabilities of the SEASTAR Registered Goods and Services and describes various services called SEASTAR G2 to SEASTAR Std L1 and lists integrated systems, including the SEASTAR 9205

    2.   Fugro Reliable DGNS for DP Applications

    This brochure is dated June 2014. It details the Opponent’s SEASTAR navigation and positioning services. One of the contact offices on this brochure is located in West Perth.

    3.   Fugro Satellite Positioning brochure

    This brochure is dated April 2015. It describes the SEASTAR 3610 DGNSS receiver. One of the contact offices in this brochure is located in West Perth.

    4.   Fugro SEASTAR G2 brochure

    This brochure is dated March 2015. It describes the SEASTAR G2 receiver as well as the integrated navigational and positioning services. It lists a contact office in West Perth.

    5.   SEASTAR NTRIP brochure

    This brochure is dated April 2015. It describes information about the SEASTAR satellite positioning services. It lists a contact office in West Perth.

    6.   SEASTAR Arctic Services brochure

    This brochure is dated March 2015. It describes the SEASTAR satellite navigation augmentation services. It lists a contact office in West Perth.

    21.   Annexure XXX–2 also contains a copy of the cover page of an agreement between the Opponent and a customer and it is dated 26 October 2015, that is, within the relevant period. It includes as part of the agreement: ‘Appendix F: Fugro Seastar Product and Services.’ I note that the detail of this agreement, presumably for confidentiality reasons, is not part of the evidence. That said, it not clear what specific goods and services form part of the agreement because the Appendix referred to above has not been filed in evidence.

    22.   Annexure XXX-5 contains copies of various photographs of the SEASTAR receiver referred to in the brochures detailed above (these are hand-dated ‘2013’ and therefore it is not clear that these photographs were used during the relevant period).

    23.   Annexure XXX-6 is a video dated ‘2014’ (within the relevant period) and shows use of the Trade Mark. The Peris declaration avers that this video was made available to Australians on the Opponent’s website.

    24.   I note for completeness sake that the other annexures to the Peris declaration include brochures, a user manual[10] and a video[11] which describe a similar breadth of goods and services as those in Annexure XXX-2 but they are either outside the relevant period or not dated.

    [10] Annexure XXX-4.

    [11] Annexure XXX-7.

    25.   The evidence also shows that the goods to which the Trade Mark is applied are primarily a product called a receiver. An image of such appears below[12]:

    [12] Annexure XXX-5 to Peris provides more images of this receiver.

    Discussion

    26. To successfully oppose the Application under s 92(b) of the Act the Opponent must establish that it has used the Trade Mark (either through use or circumstances that were an obstacle to use)[13] or, in the event that the Opponent fails to establish use as defined in s 100 of the Act, the Opponent asks that the Registrar exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed in any regard from the Register.

    [13] s100 of the Act.

    27. I note firstly that the Opponent does not submit, nor does the evidence give rise to any issues which could be regarded as obstacles to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act.

    Use of the Trade Mark in the relevant period

    28.   As there are no obstacles to use, I will now move on to consider whether there has been actual use of the Trade Mark on, or in relation to, the Registered Goods and Services, specifically use of the Trade Mark in relation to ‘nautical goods’ which is what I understand to be the Applicant’s main point of contention given it argued quite strongly in the oral hearing that the Applicant’s goods were a ‘receiver’ which should be classified as a navigational instrument and not a nautical instrument. I find there is clear use of the Trade Mark by the Opponent in relation to the receiver product and the Registered Services, in Australia, in the relevant period.

    29.   The Applicant argues:

    Even if it were accepted that during the Non-use Period, Fugro offered the Satellite Positioning services as described in the website printout dated 31 March 2017 at page 17, those services are not class 9 nautical goods. That Fugro may offer services to the “offshore industry” is not evidence of use in relation to “nautical goods.[14]

    [14] Applicant’s written submissions, [34].

    30.   The Applicant also submitted that ‘nautical’ and ‘navigational’ are separate claims in the class 9 specification of the Trade Mark which means the Applicant’s receiver must be one or the other and in this case it is more aptly described as a navigational good. I disagree with this point. The Nice classification system provides for both ‘nautical’ and ‘navigational’ goods in class 9, but that does not mean that the apparatus and instruments claimed by the Applicant in class 9 cannot befit more than one descriptor.

    31.   As I have explained above, some parts of the Opponent’s evidence are undated and are therefore of little assistance in determining whether there has been actual use of the Trade Mark on the Registered Goods and Services in the relevant period; indeed the Opponent relied heavily on annexure XXX-2 to establish its use of the Trade Mark upon, or in relation to, the Registered Goods and Services in the relevant period. It conceded that other parts of the evidence were of limited assistance to determining the question of use in the relevant period.

    32.   Wrigley says:

    The definition of nautical as set out in the Macquarie Dictionary Online is: ‘of or relating to sailor, ships, or navigation’ [emphasis added]

    33.   The brochures in annexure XXX-2 show that the Opponent’s receiver is used as part of an integrated system of navigational and positioning services used off shore in the oil and gas industry, in that sense I am satisfied that this particular receiver can be described as a nautical/navigational instrument. That is, the receiver can befit more than one Nice Classification descriptor.

    34.   I find that the Opponent has established that the Trade Mark was applied to, or used in relation to, the Registered Goods and Services during the relevant period. The evidence contains dated brochures and an agreement which detail that these goods and services were marketed under the Trade Mark in Australia in the relevant period. Given that the Opponent’s use of the Trade Mark in relation to the Registered Goods and Services in Australia in the relevant period has been shown I have no need to consider whether there is a case for applying the Registrar’s discretion.

    Decision

    35.   I decide that the Opponent has established its opposition to removal and the Trade Mark should not be removed from the Register in respect of any of the Registered Goods and Services for which it is registered.

    36.   Accordingly, I direct that registration 937776 not be removed from the Register. If the Registrar is served with a notice of appeal one month from the date of this decision I direct that the registration be dealt with as the Court sees fit.

    Costs

19. The Opponent has been successful in relation to the opposition to removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 937776 be awarded against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Cristy Condon

    Hearing Officer

    Hearings and Oppositions

    29 March 2018