Glenvill Development Pty Ltd v Airbus Helicopters

[2020] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Glenvill Developments Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Airbus Helicopters to remove trade mark number 815418 (class 19 and 37) – - in the name of Glenvill Developments Pty Ltd.

Delegate:

Louise Tuohy

Representation:

Opponent: Not in Attendance. Written Submissions by Sally Shrimpton, Special Council at Griffith Hack.

Applicant: Kim Nicholson and Christian Schieber of Watermark Intellectual Property Pty Ltd.  

Decision:

2020 ATMO 58

Trade Marks Act 1995 (Cth) – application under section 92 – s92(4)(a) and s92(4)(b) – no use demonstrated in the relevant period under s92(3)(b) – exercise of discretion in Opponent’s favour in respect of some services in Class 37 – Trade Mark to remain on the Register.

Background

1. Airbus Helicopters (‘the Applicant’) applied on 10 January 2019 under the provisions of subsections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of Class 37 from the following trade mark:

Registration No.         815418

Priority Date:             26 November 1999

Trade Mark:                (‘the Trade Mark’)

Classes: Class 19:  Building materials (non-metallic); buildings not of metal; non-metallic transportable buildings; monuments, not of metal

Class 37:  Building construction; building construction supervision; providing advice on the planning and construction of home dwellings; repair; installation services

1. A notice of Intention to Oppose the removal application was filed by Glenvill Developments Pty Ltd (‘the Opponent’) on 25 March 2019.

2. On 26 April 2019 the Opponent filed its Statement of Grounds and Particulars (‘the SGP’).

3. A Notice of Intention to Defend was filed by the Applicant on 6 May 2019.

4. The Applicant requested an oral hearing on 24 September 2019. I heard the matter on 17 March 2020 in Canberra. Kim Nicholson, lawyer and senior associate and Christian Schieber, Patent Attorney and Principle of Watermark Intellectual Property Pty Ltd appeared via video conference link, for the Applicant. The Opponent was not represented.

Evidence

Evidence in Support

• Declaration by Eric Vreugdenburg, Chief Financial Officer of the Glenvill Group, dated 7 August 2019 (‘Vreugdenburg’).

Evidence in Answer

• The Applicant did not file any evidence in answer.

Other Material

• Written submission by Sally Shrimpton, Council for the Removal Opponent, dated 28 February 2020 (‘Shrimpton’).
• Written submission by Watermark Intellectual Property Pty Ltd, Attorneys for the Applicant, dated 10 March 2020 (‘WIP’).

Grounds, Relevant Period, Onus

1. In the Application for Removal/Cessation of Protection for Non-Use the Applicant relies on subsections 92(4)(a) and 92(3)(b) of the Act, in relation to all the goods in Class 37 for which the Trade Mark is registered.

2. In the SGP the Opponent nominates the grounds for opposition under subsections 92(4)(a) and 92(4)(b) of the Act.

3. As the application for removal was filed on 10 January 2019 the relevant period for the purposes of subsection 92(4)(a) is the period before 10 December 2015 and the relevant period for the purposes of subsection 92(4)(b) is the three year period starting on 10 December 2015 and ending on 10 December 2018 (‘the relevant period(s)’). 

4. Under section 100 of the Act it is for the Opponent to rebut any allegation made under subsections 92(4)(a) and 92(4)(b).

5. The burden of proof is the ordinary standard of the balance of probabilities[1].

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

Evidence in Support

1. The Vreugdenburg declaration deposes the following:

   ·     The Glenvill Group (‘Glenvill’) is an Australian construction and property company that was established around 1960. The Opponent is part of the Glenvill Group, which is comprised of five individual yet complementary businesses[2]:

   [2] Vreugdenburg [2-3].

   1.Homes (construction of inner suburban dwellings).

   2.Aplace (construction of outer suburban residential dwellings).

   3.Developments (property development).

   4.ACH (construction of regional residential dwellings).

   5.Projects (medium density residential construction).

   ·     For over five decades, Glenvill has advised on, designed, planned, installed, repaired and constructed residential properties across Victoria and interstate[3].

   ·     Glenvill first began using the Trade Mark in the 1990’s. The Trade Mark is an abbreviation of the words “Australian Country Homes”[4].  

   ·     The Trade Mark has primarily been used in respect to buildings and construction materials, building construction services including construction services generally and in relation to advice on the planning and construction of properties[5].

   ·     From 1990 to 2014, Glenvill used the Trade Mark throughout regional Victoria across a large number of areas including Hamilton, Bendigo, Ballarat, Geelong, Torquay and Albury-Wodonga and had also expanded use into different states[6].

   ·     Over around twenty years, the Trade Mark established a substantial amount of goodwill and brand name value with Glenvill regional clients across Victoria and New South Wales[7].

   ·     In around 2014, Glenvill decided to temporarily cease using the Trade Mark, while the focus of the business shifted from regional construction to metropolitan construction and property development[8].

   ·     Glenvill did not abandon the Trade Mark[9].

   ·     Glenvill is currently undergoing a growth phase and plan to recommence using the Trade Mark[10] in the next twelve months[11].

   ·     Glenvill considers that the removal of the Trade Mark registration would be materially detrimental to the business of Glenvill both legally and financially[12].

   [3] Vreugdenburg [4].

   [4] Vreugdenburg [6].

   [5] Vreugdenburg [7].

   [6] Vreugdenburg [8].

   [7] Vreugdenburg [9].

   [8] Vreugdenburg [10].

   [9] Vreugdenburg [11].

   [10] Vreugdenburg [12].

   [11] Vreugdenburg [13].

   [12] Vreugdenburg [13].

2. In the discussion below, I have only found it necessary to address the section 92(4)(b) ground in this decision.

Legal framework

1. In the SGP the Opponent particularises the section 92(4)(b) ground as follows:

   Glenvill Developments Pty Ltd has used the Trade Mark in the non-use removal period.

2. Section 92 of the Act relatively provides:

92  Application 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.

[…]

(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.

[…]

1. The application for removal has been made in accordance with the Act and the Registrar has not been informed by either party of an action involving the Trade Mark in a prescribed court.

2. In the SGP the Opponent has submitted that the Trade Mark was used in the relevant period, however the Vreugdenburg declaration expressly states that the Trade Mark has not been used in the relevant period[13]. This ground is therefore not established.

   [13] Vreugdenburg [10].

3. Accordingly, the ground for removal under s 92(4)(b) of the Act has been established in respect of all the registered services in Class 37. It follows that consideration of the matter under the s 92(4)(a) ground for removal is not required.

4. I now turn to consider whether it is reasonable to exercise the Registrar’s discretion to retain the Trade Mark on the Register.

Registrar’s discretion

1. In the SGP the Opponent calls on the Registrar to exercise discretion under subsection 101(3) of the Act.

2. Section 101 of the Act relatively provides:

101 Determination of opposed application – general

[…]

(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.

[…]

1. As indicated above section 101(3) of the Act provides the Registrar with a discretion, as Bennet J observed in Pioneer Computers Australia Pty Ltd v Pioneer KK:

   [This] is 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 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.

   In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances[14].

   [14] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167-169].

2. The Opponent bears the onus of satisfying the Registrar that the discretion under section 101(3) ought to be exercised in its favour[15].

   [15] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273].

3. In Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd, the Delegate found that in the exercise of the Registrar’s discretion, there are three factors which fall under the following broad heading to be considered[16]:

4. the interests of the owner of the trade marks;

5. the interests of the applicant for removal; and

6. the public interest.

   [16] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33].

7. The Opponents argues that it is in its interest to retain its registration in the Trade Mark because:

• the Trade Mark is an historic and important asset in the Opponent’s trade mark portfolio;

• the Trade Mark was first used in 1990 for nearly three decades before its suspension;

• having regards to the prior longstanding use of the Trade Mark, a residual reputation in the Trade Mark can be inferred;

• there is and was, no intention to abandon the Trade Mark; and

• the Opponent has invested in the relaunch of the Trade Mark brand[17].

  [17] Shrimpton [13(a) –(d)].

1. The Applicant for removal states that the interests of the Opponent are not supported by the Vreugdenburg declaration[18].

   [18] WIP [36].

2. The Opponent argues that the interests of the Applicant for removal cannot be measured because it did not file any evidence in the proceedings[19]. The Applicant submits that its interests for removal are in its ACH trade mark applications which are pending and have not progressed to acceptance in relation to their claim for repair and maintenance services in relation to aircraft, in particular rotorcraft[20].

   [19] Shrimpton [13(e)].

   [20] WIP [37].

3. The Opponent submits that the public interest is served by its clear and enduring intention to use the Trade Mark in Australia coupled with use (albeit before the relevant period) reflects the fact that the Trade Mark is not simply clutter on the register. The Opponent concludes its submission with the following points:

• the Trade Mark has been registered since 1999;

• after almost three decades of use in connection with building and construction services in Australia, there is a residual reputation which the relaunch will be based on and to remove the Trade Mark now would cause confusion in the marketplace;

• there is no evidence nor suggestion that any other trader desires to use the Trade Mark or anything similar to it; and

• on the evidence, no member of the public stands to be adversely affected if the registration were to be allowed to remain on the Register[21].

  [21] Shrimpton [13(g)-(i)].

1. The Applicant concludes by arguing that the Vreugdenburg declaration does not contain any materials that substantiate the Opponent has any relevant goodwill or reputation in the Trade Mark which may give rise to the public interest aspect in maintaining a trade mark registration, regardless of whether it may be factually be distinctive of the goods/services in the market place[22].

   [22] WIP [33].

2. The Trade Mark has been registered since 26 November 1999 and there has been no evidence that demonstrates that the Opponent has used the Trade Mark during the relevant period.

3. However, the Opponent claims that after almost three decades of use, the Trade Mark has not been abandoned and that it plans to recommence using the Trade Mark in the next twelve months.

4. The Applicant’s interest is in registering their pending ACH trade mark applications which have not progressed to acceptance because of their claims for “repair and maintenance services in relation to aircraft, in particular rotocraft”.

5. It is clear from the statements made that the Opponent operates in the building and construction sector and the Applicant operates in the aerospace sector.  

6. The Opponent through its declaration and submissions has claimed “building construction services and advice on the planning and construction of properties”. The services specified by the Opponent do not include the broad “repair; installation services” which the Applicant states is a barrier to the registration of their pending ACH trade mark applications.

7. Under the circumstances, I consider that the public interest would be served if the “repair; installation services” were removed from the Opponent’s specification in Class 37, providing a flexible approach[23] to both parties, as such a move would not cause confusion in the marketplace, because the parties in this matter operate in decidedly different fields of activity.

   [23] See the observation regarding the public interest by Bennet J in Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [178].

Decision

1. Section 101 of the Act relatively provides:

101  Determination 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.

1. I decide that the Opponent has partially established its opposition to removal and the Trade Mark should only be removed from the Register in respect of the following specification of services:

   Class 37: repair; installation services

2. Therefore, I refuse to remove trade mark registration 815418 in its entirety but direct that one month from the date of this decision the specification of services in Class 37 be amended to the following services:

   Class 37: Building construction; building construction supervision; providing advice on the planning and construction of home dwellings

1. The Trade Mark will be removed from the Register in respect of all remaining services. If the Registrar has been serviced with a notice of appeal on or before that time, I direct that the registration shall not be removed from the Register until the appeal is withdrawn or discontinued. Otherwise the registration should be in accordance with the decision of the Court.

Costs

1. Both parties sought their costs. As both parties achieved partial success, I make no order as to costs; however, parties are at liberty to make further submissions as to costs within 14 days of this decision.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

16 April 2020