Global Electrical Supplies Pty Ltd v Internet Group d.o.o Beograd
[2024] ATMO 151
•26 August 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Global Electrical Supplies Pty Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Internet Group d.o.o Beograd to remove trade mark number 1648569 (class 9) - TESLA - in the name of Global Electrical Supplies Pty Limited
Delegate: | Tracey Berger |
Representation: | Opponent: Pizzeys Patent & Trade Mark Attorneys Pty Limited Applicant: Michael Buck IP |
Decision: | 2024 ATMO 151 Trade Marks Act 1995 (Cth) – opposition under s 96 to an application under section 92(4)(b) – use established for most goods – exercise of Registrar’s discretion for remaining goods – trade mark to remain registered |
Background
On 20 September 2022, Internet Group d.o.o Beograd (‘Applicant’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade mark in the name of Global Electrical Supplies Pty Limited (‘Opponent’):
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
| Number[2] | Mark | Filing Date | Goods[3] |
| 1648569 (‘Registration’) | TESLA (‘Trade Mark’) | 23 Sept 2014 | (Including) Apparatus for connecting electrical circuit components; apparatus for controlling the supply of electrical current; apparatus for electrical safety protection; apparatus for protecting computers from electrical power supply faults… (‘Registered Goods’) |
[2] The following endorsements are recorded against the Registration: ‘Provisions of paragraph s 44(3)(1) and/or Reg 4.15A(3)(a) applied’ and ‘Evidence and/or other circumstances provided under subsection 41(4).
[3] The full specification of goods is shown in Annexure A to this decision.
The Opponent filed a Notice of Intention to Oppose the removal of the Registration on 16 November 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 16 December 2022. The Applicant filed a Notice of Intention to Defend on 27 February 2023.
The parties proceeded to file evidence in accordance with the Regulations as outlined below. The Opponent’s evidence in support was filed on 5 June 2023 and the Applicant filed its evidence in answer on 7 September 2023 as detailed below. No evidence in reply was filed.
| Declarant and Position | Date | Exhibits or Annexures | |
| Evidence in support | |||
| Vlado Bilic, Director of the Opponent (‘Bilic’) | 5 June 2023 | VB-1 to VB-10 | |
| Evidence in answer | |||
| Geraldine Rimmer, Registered Trade Marks Attorney and Principal of Michael Buck IP, attorneys for the Applicant (‘Rimmer’) | 7 September 2023 | GR-1 to GR-2 | |
Once the evidence stage had concluded, the parties had the opportunity to request a hearing. The Opponent requested a hearing by written submissions and the Applicant did not ask to be heard. The Opponent’s written submissions were filed on 4 July 2024. This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I make my decision based on the materials outlined in the preceding paragraphs.
Evidence
Opponent’s evidence
Bilic declares that the Opponent was incorporated in April 2001 under the name Electrixs ‘R’ Us Pty Ltd before changing its name in November 2006 to Tesla Electrical Components Pty Ltd. In July 2013, the Opponent underwent a ‘change to the business structure and ownership and the company name Global Electrical Supplies Pty Ltd t/as Tesla Electrical Components was registered.’
According to Bilic, the Opponent has used the Trade Mark in Australia since 2006 in relation to various electric and lighting products. In support of this claim, Bilic exhibits:
copies of the covers of the Opponent’s Tesla Electrical Components product catalogues dated between 2017 to 2022 and the entire catalogues for 2017, 2019, 2021 and 2022 (‘Catalogues’);
copies of invoices issued to the Opponent for the production of the Catalogues for 2021-2023 inclusive;
copies of invoices issued by the Opponent to customers between 2013 to 2021 (‘Sales Invoices’);
screenshots of the Opponent’s website at components.com.au (‘Opponent’s Website’) from 4 May 2018 to February 2020 obtained using the Wayback Machine; and
annual sales figures, approximate advertising costs for promoting the Registered Goods under the Trade Mark, customer names and a photo of some of the Registered Goods illustrating the packaging (‘Packaging’).
Applicant’s evidence
Rimmer declares that the Opponent’s evidence does not establish use of the Trade Mark for all of the Registered Goods but does not identify those goods for which it claims the Trade Mark has not been used.
The Applicant operates in the fields of television and air conditioning. It is the owner of the following Australian trade marks:
| Number | Mark | Filing Date | Status | Goods |
| 2191960[4] | 5 July 2021 | Registered | Class 11: Air conditioners not for use in connection with vehicles or energy storage systems; Air cooling apparatus not for use in connection with vehicles or energy storage systems | |
| 2242353 | 13 Jan 2022 | Pending | Class 9: Television apparatus not for use in connection with vehicles or energy storage systems |
[4] This registration has an endorsement that the ‘Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Rimmer annexes an Australian Securities and Investments Commission extract for the business ‘General Trade Supplies’ showing it was registered in 2020 and an ‘ABN lookup extract’ showing the Opponent was registered and active from 2013.
Legal Framework
Part 9 of the Act deals with the removal of trade marks from the Register due to non-use. In this matter, the Applicant nominated s 92(4)(b) as the ground for removal of the Registration which 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:
(a) …
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 20 August 2022 (‘Relevant Period’).
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 for the Trade Mark,[5] and I confirm that five years since filing the application have in fact passed.
[5] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Pursuant to s 100(1), the Opponent bears the onus of rebutting an allegation made under
s 92(4)(b). To successfully rebut the allegation of non-use, the Opponent must establish on the balance of probabilities[6] that it has used the Trade Mark, or a mark with additions or alterations not substantially affecting the identity of the mark, in good faith for the Registered Goods within the Relevant Period.[7][6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
[7] S100(3)(a).
Section 7(4) provides that ‘use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods)’. Moreover, s9(1)(c) provides that:
(c) a trade mark is taken also to be applied in relation to goods or services if it is used:
(i) on a signboard or in an advertisement (including a televised advertisement); or
(ii) in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense. [8] Provided the use is in good faith, a ‘single bona fide use of the mark’ may be enough to rebut an allegation of non-use[9] but if a single act is relied upon then it ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[10] Little weight is to be given to assertions of use which are not supported by documentary evidence.[11]
[8] [2001] FCA 261, [16].
[9] Ibid, [17].
[10] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[11] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the Registered Goods, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the applications for removal were made are established.
Mark with additions or alterations not substantially affecting its identity
It is apparent from the Opponent’s evidence that the Trade Mark is often used in different stylised forms as shown below, either with or without the words ‘Electrical Components’.
(‘Stylised Mark 1’) (‘Stylised Mark 2’)
The Applicant appears to accept that the different forms of the Trade Mark used by the Opponent constitute use of the mark and only disputes the range of goods for which the mark has been used. Nevertheless, it is appropriate to consider whether any of the stylised marks used by the Opponent constitute use of the Trade Mark with additions or alterations not substantially affecting its identity.
The relevant forms of the mark are shown side by side below:
| Trade Mark | Stylised Mark 1 | Stylised Mark 2 | Stylised Mark 3 |
| TESLA |
A trade mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’ has been interpreted to mean that the trade marks being compared must be substantially identical.[12] The assessment of whether two trade marks are substantially identical requires that the trade marks in question 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’.[13]
[12] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (‘Wicked’) [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).
[13] Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66, [12] (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
The Trade Mark is registered in plain font which provides broad protection for use of the mark in various forms including in a combination of lower and upper case such as ‘Tesla’. Moreover, a change in typeface has been found to be an alteration not substantially affecting the identity of a mark where ‘[t]he differences are minor and reflect a change of style’.[14] Further, the High Court has held the use of a device of a ‘bare foot’ in close proximity to BAREFOOT did not substantially affect the addition of the word mark BAREFOOT.[15]
[14] Pioneer Computers Australia Pty Ltd v Pioneer KK (‘Pioneer’) [2009] FCA 135, [117] (Bennet J).
[15] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Heydon, Crennan and Bell JJ).
In my view, the Stylised Marks 2 and 3 merely differ in the typeface and this is a minor alteration in each case. The differences in these stylised forms of the mark and the Trade Mark as registered are closer to those in Pioneer[16] than Wicked.[17] I am satisfied that the forms of the mark shown below are marks with additions or alterations not substantially affecting the identity of the Trade Mark.
and
[16] Pioneer (n14).
[17] Wicked (n12).
I turn now to a consideration of whether the addition of the words ‘Electrical Components’ in Stylised Mark 1 affects the identity of the Trade Mark. The Opponent submits that these words do not effect the identity of the Trade Mark because they are descriptive of the Registered Goods. The Opponent points to the finding in non-use proceedings that use of FUNJET was use of the registered mark FUNJET SERVICE as the omission of the non-distinctive word ‘SERVICE’ did not substantially affect the identity of the mark.[18] More recent decisions such as Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[19]and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[20](‘Pham Global’) have considered the dominant cognitive cues of the two marks being compared. In Pham Global, the Full Federal Court noted that:
[I]t is unlikely that the essential elements of a mark or its dominant cognitive clues [sic] are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[21]
[18] QH Tours Ltd v Mark Travel Corp (1999) 45 IPR 553 (Delegate I. Thompson).
[19] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).
[20] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).
[21] Ibid [52].
In my view, the dominant cognitive cue of both the Trade Mark and Stylised Mark 1 is TESLA. In Stylised Mark 1, the additional words ‘Electrical Components’ is presented in ‘diminished text’[22] and whilst the words cannot be ignored, I do not think their presence detracts from the total overall impression of resemblance between the marks. I am satisfied that Stylised Mark 1 is a mark with additions or alterations not substantially affecting the identity of the mark.
[22] Accor (n 18), [209].
Use of the Trade Mark during the Relevant Period
In support of its claim that the Opponent has used the Trade Mark for the Registered Goods in the Relevant Period, the Opponent relies principally on the Catalogues, Sales Invoices and Packaging.
Both the 2019 and 2021 Catalogues feature the Stylised Mark 1 on the cover and the words TESLA ELECTRICAL COMPONENTS on numerous internal pages. The Catalogues feature 17 different categories of products which include various domestic and industrial switches, tv and data outlets, power points, smoke alarms, motion sensors, circuit protection, automation control, warning lights and sirens, ventilation fans, switchboard accessories, storage cases, tools, conduit fittings, fixings and wall plugs.
The Catalogues also depict numerous products in packaging bearing the Trade Mark (usually in the form of Stylised Mark 1) or with the Trade Mark shown on the products themselves (usually in the form of Stylised Mark 2 or 3). The other products simply feature a product code (other than the Tools which are not relevant to these proceedings). A broad range of goods in the Catalogues feature the Trade Mark on the product itself or the packaging including electrical connectors, electrical couplings, electrical plugs, circuit protection devices, electrical circuit breakers, electrical circuit components, electrical circuit control devices, electrical distribution boxes, electrical switch boxes and cabinets, electrical connection insulation apparatus, connectors being electrical terminals, electrical enclosures, electrical switches, electrical sockets, electrical connecting terminal blocks, electrical switch boards; electrical control apparatus such as load break switches, isolator switches and residual control devices. The photo of various packaged goods at Exhibit VB-9 of Bilic is undated but the packaging depicted is consistent with that shown in the Catalogues.
Stylised Mark 1 appears on each of the Sales Invoices and these invoices list a range of electrical components sold to customers before and during the Relevant Period. The products are listed by their product code and a generic description for example ‘TVFMA’ ‘PAYTV Outlet’. Stylised Mark 1 is the only trade mark used in relation to the goods featured in the invoices.
On my assessment of the Opponent’s evidence, the Opponent has used the Trade Mark (or a mark with additions or alterations not substantially affecting the mark) during the Relevant Period for a broad range of electrical components. I am satisfied that the Trade Mark has been used for all of the Registered Goods except:
‘electrical cable; electrical cables for connecting computers; electrical communication apparatus for transmitting data; electrical communications cables; electrical extension leads; electrical leads’ (‘Unused Goods’).
The Registered Goods excluding the Unused Goods are hereafter referred to as the Used Goods.
Registrar’s Discretion
Pursuant to s 101, the Registrar has a broad discretion not to remove or restrict the goods of a trade mark if it is satisfied that it is reasonable to do so. This discretion is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’[23] being the removal of unused marks from the Register. ‘Exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[24]
[23] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ) (‘Lodestar’).
[24] Ibid [69].
The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[25]
[25] Ibid [44].
The range of factors considered in the exercise of the discretion have included whether:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[26]
[26] Wicked (n 12), [153].
Justice Bennett commented in Pioneer that the factors in favour of maintaining trade marks on the Register under section 101 were less to do with the protection of those trade marks and their proprietor and ‘more to do with the public interest’.[27]
[27] Pioneer (n 14), [231].
The Opponent has argued that if I am not satisfied that the Opponent has used the Trade Mark for all of the Registered Goods, I should exercise my discretion not to remove the Trade Mark for any goods for which the mark has not been used given that the Opponent has ‘promoted, advertised and gain a significant reputation in its electrical products sold under the trade mark’ by virtue of its use of the Trade Mark for many years. The Opponent points to its sales revenue and advertising expenditure and submits that its interests would be adversely impacted by the removal of the Trade Mark from the Register ‘given its long and established use’ of the mark.
The Opponent has clearly not abandoned the Trade Mark and has used the mark (or a mark with additions or alterations not affecting the identity of the Trade Mark) since at least 2013 for a broad range of electrical components and other goods such as ventilation fans and tools on a reasonably significant scale in terms of sales revenue.
In the present case, I am most persuaded by the public interest in consumers not being confused and by the fact that I consider the Unused Goods to be similar to the Used Goods. In my opinion, electrical cables, electrical communication apparatus/cables and electrical leads are similar goods to the goods for which the Opponent has established use of the Trade Mark in the Relevant Period. The Unused Goods are likely to be sold through the same trade channels to the same class of consumer, for the same or similar purpose to the Used Goods.
Moreover, it is it is not necessary to show use in relation to ‘every conceivable subcategory of the relevant registered goods’.[28] ‘Some latitude is to be permitted’[29] and the question is not to be ‘considered with an eye to fine distinctions between goods on the Register’.[30]
[28] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39, [188] (Stewart J) (appeal allowed0, [2021] FCAFC 8, but appeal did not concern this point.
[29] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [146] (Burley J).
[30] Ibid.
Given the broad range of electrical components for which the Opponent has used its mark and the similarity of the Used Goods and Unused Goods, I am of the view that it is in the public interest and appropriate to exercise my discretion not to remove the Unused Goods from the registration.
Decision
The Opponent has rebutted the allegation of non-use with respect to all of the Registered Goods except the Unused Goods. I have determined that it is appropriate to exercise the discretion under s 101(3) with respect to the Unused Goods. Accordingly, registration 1648569 is to remain on the Register for all of the Registered Goods.
The Opponent has requested an award of costs and it is usual for costs to follow the event. The Opponent has been successful in rebutting the allegation of non-use and hence I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 August 2024
Annexure A ‘Registered Goods’
Class 9: Apparatus for connecting electrical circuit components; apparatus for controlling the supply of electrical current; apparatus for electrical safety protection; apparatus for protecting computers from electrical power supply faults; apparatus for the control of power supply to electrically driven motors; ballasts for electrical lighting fittings; blanking plates adapted for electrical connections; cable glands for use with electrical apparatus; cable reels (non-mechanical) incorporating electrical sockets; components for over-voltage protection for electrical apparatus; connectors being electrical terminals; ducts for electrical wiring; electrical apparatus for controlling the speed of motors; electrical apparatus for converting alternating current to direct current; electrical cable; electrical cable connectors; electrical cables for connecting computers; electrical circuit breakers; electrical circuit components; electrical circuit control devices; electrical communication apparatus for transmitting data; electrical communications cables; electrical components; electrical components for use with television aerials; electrical conduits; electrical connecting terminal blocks; electrical connection boxes; electrical connection insulation apparatus; electrical connectors; electrical connectors for connecting laptop computers to telephone lines; electrical contact separating devices; electrical contacts; electrical control apparatus; electrical controlling apparatus for motors; electrical controls; electrical converters; electrical couplings; electrical distribution boxes; electrical ducts; electrical enclosures made from sheet steel; electrical extension leads; electrical frequency converters; electrical indicating devices; electrical junction boxes; electrical leads; electrical mains wiring apparatus for use with domestic appliances; electrical plug connectors; electrical plugs; electrical power adaptors; electrical push button panels; electrical push button switch assemblies; electrical push button switches; electrical push buttons being luminous; electrical push switches; electrical relays; electrical sensors; electrical socket outlets protected by residual current devices; electrical sockets; electrical supply units (other than generators); electrical surge arrestors; electrical switch assemblies; electrical switch boards; electrical switch boxes; electrical switch cabinets; electrical switch timers; electrical switches; electrical switchgear; electrical terminal connectors; electrical terminals; electrical tracks for lights; electrical transformers; electrical transformers for use with lighting; electrically conductive metal components for use as earthing; electricity boxes for electrical installations; extensions insulated electrical wires in cord form; female connectors for electrical cables; flexible electrical conductors; flexible electrical conduits; holders for electrical components; indicator lamps showing activation of electrical apparatus; industrial contactor starters (electrical); insulating plates for electrical components; joining units (electrical contacts); junction boxes for electrical circuits; male connectors for electrical cables; markers for electrical conductors; mounting boards for electrical components; noise suppressors (electrical components); plastic housings adapted for electrical apparatus; plug-in electrical connectors; power distribution apparatus for use in electrical systems; power distributors (electrical); power units for supplying (other than generating) electrical current; sockets (electrical); sockets for electric plugs for use on domestic electrical apparatus; speed regulators (electrical); terminal boxes (electrical); wall plates adapted for electrical components; wall plates for electrical components; wall plates for electrical connections
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