Galipoglu Hidromas Hidrolik Otomotiv Sanayi Ve Ticaret Anomin Sirketi v HMS MYG B.v

[2023] ATMO 22

TRADE MARKS ACT 1995

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

Re:Opposition by Galipoglu Hidromas Hidrolik Otomotiv Sanayi Ve Ticaret Anomin Sirketi to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1985054 (International Registration number 1345028) (classes 7 and 12) – HIDROMAS GALIPOGLU and device - in the name of HMS MYG b.v.

Delegate:	Nicole Worth
Representation:	Opponent: Emma Mitchell of Griffith Hack. Holder: Daniel Wilson and Vivian Tran of Spruson & Ferguson.
Decision:	2023 ATMO 22 Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – ss 42, 58, 60 and 62A pursued – Opponent established first use – benefit of use does not accrue to the Holder – s 58 established – extension of protection refused.

Background

1. This decision is in respect of an opposition under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) to the extension of protection to Australia of the trade mark shown below. The party applying for extension of protection to Australia is HMS MYG b.v. (‘Holder’) and the party opposing extension of protection is Galipoglu Hidromas Hidrolik Otomotiv Sanayi Ve Ticaret Anonim Sirketi (‘Opponent’).

   Application No.:      1985054 (International Registration No. 1345028)

   Trade Mark:              (‘Trade Mark’)

   Filing Date:              8 January 2019

   Goods:Class 7: Axial flow pumps; axial pumps; fluid pumps; hydraulic pumps; hydraulic rams; oil pumps for land vehicles; pressure pumps; pump control valves; pumps for machines; valves for pumps; hydraulic valves; hydraulic jacks; hydraulic hoists; trailer mounted hydraulic jacks.

   Class 12: Dumper trucks; dump trucks; equipment trailers; garbage hauling trailers; loaders [fork-lift trucks]; lorries for mines; semi-trailers; trailers for motor land vehicles; trailers for use with trucks; hydraulic control systems for vehicles; hydraulic circuits for vehicles; gear boxes for hydraulic transmissions of land vehicles.

2. The Trade Mark is the subject of an International Registration Designating Australia (‘IRDA’), wherein the Holder has requested under the Madrid Protocol that protection of its International Registration be extended to Australia. The IRDA was examined as required by reg 17A.12 of the Regulations. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 18 November 2020.

3. The Opponent filed a Notice of Intention to Oppose the IRDA on 18 January 2021 and a Statement of Grounds and Particulars (‘SGP’) on 18 February 2021. The Holder filed a Notice of Intention to defend the IRDA on 31 May 2021. Thereafter the parties filed evidence, described in more detail below. At the end of the period for filing evidence the parties requested a hearing in respect of the opposition.

4. As a delegate of the Registrar of Trade Marks, I heard the matter on 5 December 2022. The Holder was represented by Daniel Wilson and Vivian Tran of Spruson & Ferguson who made verbal and written submission on its behalf. The Opponent was represented by Emma Mitchell of Griffith Hack who made verbal and written submissions on its behalf.

Grounds of opposition, onus, and relevant date

1. Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and on the grounds set out in ss 58 to 61 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’).

2. The Opponent has nominated grounds of opposition under ss 58, 60, 42 and 62A of the Act.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] For the purposes of this decision the date at which the rights of the parties are to be determined is the date of the application, being 8 January 2019.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J). I note that some grounds of opposition refer to the ‘priority date’, which may differ to the date of the application (the filing date), however they are not discussed in this decision.

4. Should I find that the opposition succeeds on any one of the grounds, there is no requirement for me to consider any other ground of opposition. They are nonetheless available in the event of an appeal, as are any other grounds of opposition available under the Act.

Evidence

1. The evidence filed in this matter comprises declarations by the following persons:

   Evidence in Support

   Suleyman Aslan, Director of the Opponent, with Annexures A to J, dated 1 September 2021 (‘Aslan’).

   Evidence in Answer

   Kazim Burak Dumanci, General Directory of the Holder, with Annexures A to K, dated 3 December 2021 (‘Dumanci’).

Opponent’s evidence

1. A predecessor of the Opponent commenced commercial activity in Turkey in 1975, and the Opponent was officially established in Turkey in 1988. It is engaged in the manufacture and sale of products in the hydraulic and automotive industries, including hydraulic pumps, telescopic cylinders, valves and other hydraulic equipment and kits. The words HIDROMAS and GALIPOGLU HIDROMAS are declared to have been used as trade marks since the inception of the business. Logos incorporating those words have been registered and used in multiple countries for various periods of time. They are declared to have been used in Australia as follows:

Since 2004
‘Round Logo’

Since 2007
‘Hidromas Logo’

Since 2007
‘Rectangular Logo’

1. The Round Logo was protected in Australia in the name of the Opponent from 2008 until 2020 when the Holder successfully sought cessation of protection on the grounds of non-use. Despite claimed use neither of the other logos have been registered in Australia. The Hidromas Logo has been registered in Turkey since 2007. The Rectangular Logo is registered in multiple other jurisdictions around the world, those registrations dating from 2017 and 2018. The Rectangular Logo and the Trade Mark are identical.

2. Aggregate world-wide export figures are provided[4], which are substantial. The Opponent claims to sell its hydraulic products in Australia via its Australian distributor, Jost Australia Pty Ltd (‘Jost’). Figures of the total sales of hydraulic products sold to Jost are provided for the years 2004 to 2018.[5] They are commercially significant, and the Opponent estimates that it has an approximate market share of 35%, although it does not give the basis for its estimation. Two invoices of sales to Jost on 10 February 2016 and 21 June 2016 are exhibited,[6] although they do not display the Trade Mark. An undated photograph of one of the items listed in the invoices is adduced, which shows a labelled box bearing the Trade Mark along with the name of the item.[7] Screenshots of a further two Australian resellers of the Opponent’s products are exhibited,[8] both of which post-date the priority date but one of which states it has been a reseller of ‘Hidromas Tipping Hoists’ for 9 years. Undated photographs of goods bearing the Rectangular Logo and undated technical catalogues also bearing the Rectangular Logo are exhibited.[9]

   [4] Confidential Annexure H, Aslan.

   [5] Confidential Annexure C, Aslan.

   [6] Annexure D, Aslan.

   [7] Annexure D, Aslan.

   [8] Annexures E and F, Aslan.

   [9] Annexures B and G respectively, as well as the undated photograph appended to Annexure D.

3. A copy of the Registrar’s decision in respect of the cessation of protection of the Round Logo is exhibited.[10] In it, the delegate states that he is satisfied the Opponent used the Rectangular Logo in the period 24 November 2015 to 24 November 2018, but that the differences between the Round Logo and Rectangular Logo were too great for the use of the Rectangular Logo to equate to use of the Round Logo. Consequently protection of the Round Logo ceased. The decision is of little assistance however since the evidence led in that case is not before me.

   [10] Annexure J, Aslan. Galipoglu Hidromas Hidrolik Otomotiv Sanayi Ve Ticaret Anonim Sirketi v HMS MYG b.v. [2020] ATMO 153.

Holder’s evidence

1. The Holder is a Dutch entity which was formed on 26 May 2016. It is claimed to be the parent company of a world-wide group of companies that operate under the trade mark HIDROMAS, manufacturing and selling a range of hydraulic products. Its board members are the declarant, Mr Dumanci, and Mr Talip Gül, who has also been a director of the Holder since its inception. Mr Dumanci was the Commercial Director and Vice President of the Opponent until 11 September 2016. Mr Gül was Chairman of the Opponent until 23 September 2016.

2. Mr Gül owned 9,974 shares in the Opponent, representing a shareholding of 99.74%, which he transferred to the Holder on 31 May 2016. Accordingly, the Holder is now the majority shareholder of the Opponent. Dumanci describes the Holder as the parent company of the group of companies operating world-wide under the trade mark HIDROMAS.[11] According to its Deed of Incorporation[12] the Holder’s purposes include the ‘establishment of, participation in any way in, management of and supervise [sic] enterprises and companies’ and ‘exploiting and trading in patents, trademarks, licenses and know-how’. It is declared that the Holder is the parent company of Galipoglu Hidromas India Manufacturing Pvt. Ltd (‘Galipoglu Hidromas India’), a company that it states was established by the Opponent in India in 2009. Website extracts dated in 2021 from ‘ state that ‘HMS Global’ (which appears to be a trading name of the Holder) acquired the shares of the Opponent in 2016 as its first investment and acquired Galipoglu Hidromas India in 2016 as an ‘ongoing global expansion strategy’. Undated extracts from the website ‘ state that it operates as a ‘100% subsidiary of HMS Global’.

   [11] [10], Dumanci.

   [12] Annexure G, Dumanci.

3. An email chain, bill of lading and invoice relating to a shipment of hydraulic cylinders from Galipoglu Hidromas India to Jost in Australia is exhibited.[13] In the email chain Mr Dumanci facilitates the sale and shipment by liaising with a representative of Jost and a representative of Galipoglu Hidromas India. The correspondence is dated between 12 May 2018 and 12 June 2018. A bundle of brochures for goods referred to in the invoice is exhibited.[14] The brochures display the Trade Mark and appear also to refer to the Opponent either by displaying its name immediately beneath the Trade Mark or by listing its address in Turkey.

   [13] Annexure I, Dumanci.

   [14] Annexure J, Dumanci.

4. The Holder provides a list of registrations of the Trade Mark around the world, including in India. The list also includes the International Registration from which the IRDA derives. The IRDA originally faced grounds for rejection under s 44 of the Act, the basis of which was the Opponent’s registration of the Round Logo. As already noted, the Holder successfully sought cessation of protection of the Round Logo.

5. Shortly before the hearing, the Holder filed a translation of a decision of the Amsterdam Court of Appeal. That decision was handed down a week before the hearing, and relates to the Holder’s trade mark application in the Benelux and the Opponent’s opposition to it primarily on the basis that it had been filed in bad faith. It finds that the Holder did not file the application in the Benelux in bad faith, and has been adduced in response to the grounds of opposition under s 62A. I am not satisfied that it ought to be taken into consideration. Firstly, because I am not familiar with Dutch law; secondly, the evidence upon which the findings were made is not before me; and in any event the Court notes that the outcome of any trade mark application in another country will depend on the circumstances and applicable law in that country.[15] Regardless, I have not found it necessary to discuss the ground under s 62A.

   [15] 3.7.2 of Appendix A to the Holder’s written submissions.

Section 58

1. Section 58 of the Act is reproduced below.

   58  Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:   For applicant see section 6.

1. The owner of a trade mark in Australia for particular goods and/or services is the first person to use it in Australia, or to first file an application for its registration in Australia. In order to succeed under this ground of opposition, the Opponent must establish the following:

   i)The trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark;[16]

   ii)The Holder’s goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used;[17] and

   iii)A person other than the Holder has an earlier claim to ownership of the Trade Mark based on use prior to whichever is the earlier of: the application to extend protection to Australia, or any actual use of the Trade Mark by the Holder.[18]

   [16] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

   [17] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

   [18] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

2. There was no dispute that the trade mark relied upon by the Opponent is the same as the Trade Mark, satisfying the first requirement.

3. I will proceed on the basis that the goods of the parties are the ‘same kind of thing’, noting Holder’s contention that ‘The [Holder] does not dispute that the trade mark on which the Opponent relies has been used in relation to ‘the same kind of thing’ as the Relevant Goods. However, the [Holder] submits that the evidence of use provided by the Opponent by way of the Aslan declaration does not show use of this trade mark in Australia (or if there is any such use that this is dated after the [Filing] Date)’. I believe the following discussion addresses this point.

4. The crux of the dispute is whether the Opponent’s evidence actually demonstrates prior use of the Trade Mark in Australia, and if so whether that use accrues to the benefit of the Holder by virtue of the use being by a predecessor in title or authorised use within the meaning of s 8 of the Act (wherein the Holder exerted financial or other control over the Opponent[19] or demonstrated a unity of purpose with the Opponent[20]).

   [19] Financial control being an example of a type of control given in s 8 of the Act.

   [20] In the sense conveyed in Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [45]-[46] (Reeves, Jagot and Rangiah JJ).

5. The evidence demonstrating use is not straight forward. That which is dated does not show the Trade Mark, and that which shows the Trade Mark is undated. Otherwise, the evidence post-dates the filing date. It is the Opponent that bears the onus, therefore it must sufficiently tip the balance of probabilities in favour of itself in order to disturb the Holder’s claim to ownership. Any single statement or exhibit in the Opponent’s evidence would not be sufficient to do this. However, when considering the evidence as a whole there are circumstances which I consider persuasive and inferences I am satisfied may be drawn, as follows.

6. Both the declarant for the Holder and the director of the Holder were previously officers of the Opponent and there is no contention that the business did not conduct itself overseas as described by the Opponent, at least up until the transfer of Mr Gül’s shares to the Holder in 2016. There is also no contention that the Opponent did not register a very similar mark (the Hidromas Logo) in Turkey in 2007 and subsequently register the Trade Mark in multiple jurisdictions in 2017 and 2018. Additionally, the Holder itself states that Galipoglu Hidromas India was established by the Opponent in 2009.

7. The Opponent adduces two invoices at Annexure D Aslan, dated 10 February 2016 and 21 June 2016. The invoices are of sales from the Opponent to Jost,[21] for various items including a ‘BRAKET KITI KASA GHLB 65-229 HM PLUS’ which appears on both invoices. Neither of the invoices show the Trade Mark. An undated photograph of a box labelled as a ‘BRAKET KITI KASA GHLB 65-229 HM PLUS. BRAKET KIT CASE GHLB 65-229 HM PLUS’ and bearing the Trade Mark accompanies the invoices, which the Opponent asserts is the same as the ‘BRAKET KITI KASA GHLB 65-229 HM PLUS’ appearing in the invoices and is how such goods have been packaged for sale to Jost. In the context of the undisputed conduct of the business at least in Turkey by the Opponent prior to the transfer of shares in 2016, and overseas registration by the Opponent of the Hidromas Logo and Rectangular Logo, I am inclined to believe that this is representative of how the goods were packaged and sold in Australia.

   [21] It was noted by the parties that ‘Jost Sidney Pty Ltd’ appeared on the invoices rather than ‘Jost Australia Pty Ltd’, but also that the address of ‘Jost Sidney Pty Ltd’ was the same as the address of ‘Jost Australia Pty Ltd’. Nothing further was made of this issue.

8. The same applies to the other undated photographs of goods and undated technical catalogues bearing the Trade Mark. I will address one of the photographs because some discussion was had regarding it. The relevant part is reproduced below, depicting the words ‘JOST manufactured by [GALIPOGLU HIDROMAS, as indicated by the placement of a substantially identical trade mark]’.

1. It is true that the JOST appearing in the photograph is not definitively Jost Australia Pty Ltd. However, in light of both parties adducing evidence of dealings with Jost Australia Pty Ltd, I am more inclined to believe that this is the entity referred to rather than some other entity incorporating the name ‘Jost’. Whilst the technical catalogues which display the Trade Mark do not refer to Australia specifically, I do not consider this persuasive either way. Technical catalogues, specifications, instructions and the like are commonly produced to service multiple countries (evidenced by the presentation of information in more than one language, as is the case here where the catalogues’ text is in English and presumably Turkish). Again, in light of the undisputed conduct of business by the Opponent overseas, and the common practice of providing catalogues, specifications or instructions which service multiple countries, I am inclined to believe the Opponent’s statement that the technical catalogues accompanied the sale of goods in Australia.

2. Screenshots of two other Australian retailers of the Opponent’s goods are adduced, both of which post-date the application. The second of these, at Annexure F of Aslan, states that Truck Hydraulic Solutions has been ‘a National Reseller of quality Hidromas Tipping Hoists for 9 years’ next to a depiction of the Trade Mark in reverse colours, shown below. It is declared to be dated October 2020 but is itself undated (although I note the left hand menu of ‘Previous Posts’ lists October 2020). I consider it more likely that the Opponent would supply tipping hoists in Australia under the same trade mark as used and registered overseas, being that depicted here in reverse colours, than a different trade mark.

1. The Opponent presented further information including its export figures worldwide, sales figures to Australia from 2005 to 2018, and its overseas trade mark registrations. The Holder raised the point that there is no corroboration of the export and sales figures and the invoices span a period of only 4 months. These are shortcomings, however the Holder does not at any time state that such sales did not take place (and the director of the Holder would have been in a position to know). I note also that it is common for export and sales figures to come from a company’s internal records, and are commonly taken at face value unless for some apparent reason they should be doubted. Here there is no specific reason to doubt their validity. No argument was raised in respect of the Opponent’s overseas registrations.

1. When the evidence is considered as a whole, I am satisfied on the balance of probabilities that the Opponent used the Trade Mark in Australia prior to the priority date, being 8 January 2019. As already mentioned, the Holder then argues that the benefit of such use accrues to it rather than the Opponent on the basis that the use is by a predecessor in title or is authorised use under s 8 of the Act.

2. A predecessor in title is defined in s 6 of the Act. It is the person who assigned or transmitted a trade mark to the person claiming to be the owner of the trade mark. The note to the definition states that in the case of a trade mark which is neither registered or the subject of an application for registration, the trade mark may only be assigned or transmitted in conjunction with the goodwill of the business. Here, there is no evidence of any assignment or transmission of the Trade Mark, with or without the goodwill of the business. Nonetheless the Holder contends that in light of the relationship between the entities, and because it owns 99.74% of the shares in the Opponent (which were previously owned by its director Mr Gül), the Opponent is a predecessor in title. The Holder does not elaborate on the powers bestowed upon majority shareholders, either in Australia or in the jurisdictions in which the parties are located. My understanding of the law in Australia is that majority or controlling shareholders exert influence or control by voting rights, but they do not own a company’s assets, including trade marks. Applying this principle, it seems then that Mr Gül was not the owner of the Trade Mark when he was a majority owner of the shares in the Opponent, and no title to the Trade Mark can have passed to the Holder when his shareholding was transferred to it in 2016.

3. The same issue arises in respect of the Opponent being an authorised user or acting with a unity of purpose in the sense conveyed in Trident Seafoods Corporation v Trident Foods Pty Ltd.[22] These are premised on the Trade Mark being owned by someone other than the Opponent. There is no evidence that the Holder (or Mr Gül previously) owned the Trade Mark by virtue of being the majority shareholder of the Opponent. As already mentioned, the Holder does not state what powers were bestowed upon it by being such a shareholder and my understanding is that it would not have become the owner of the Opponent’s assets. Therefore, whilst it is possible the Holder (and Mr Gül previously) exercised financial or other control over the operations of the Opponent it is not evident that it owned the Trade Mark. Additionally, the Holder did not exist until 26 May 2016 and did not become a majority shareholder until 31 May 2016.[23] It therefore cannot have authorised any use prior to then, including at least that represented by the invoice of 10 February 2016 as well as that referred to by Truck Hydraulic Solutions (leaving aside the internally-sourced sales figures to Jost from 2005 onwards). Additionally, at face value the parties do not seem to act with a unity of purpose given the history of disputes between them. In response to a submission of the Holder I mention that the email chain at Annexure I of Dumanci, claimed to further demonstrate control and/or a unity of purpose, appears to represent a transaction that was completed independent of the Opponent.

   [22] [2019] FCAFC 100, (Reeves, Jagot and Rangiah JJ).

   [23] According to a board resolution of the Holder, Annexure F, Dumanci.

4. Considering all of the above, I am persuaded on the balance of probabilities that the Opponent used the Trade Mark in Australia prior to the filing date of 8 January 2019. I am not persuaded that its use accrues to the Holder.

5. Accordingly, I am satisfied that the Opponent has established the ground of opposition under s 58.

6. Neither party made submissions about whether the specified goods should be amended to reflect an established ground of opposition under s 58. It appears to me that the Trade Mark was used upon a range of hydraulic goods. Hydraulic goods are listed in both classes 7 and 12 of the application. It is not for the Registrar to determine which goods to excise from an application where there are relatively fine distinctions between different types of goods. As such, I proceed on the basis that the ground of opposition applies to all of the goods of the application.

Decision

1. Regulation 17A.34N provides:

   17A.34N Decision on opposition

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar’s decision.

2. The Opponent has established a ground of opposition. Accordingly, I refuse to extend protection to Australia of IRDA 1985054.

Costs

1. Both parties have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Holder in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks

27 February 2023