Global Track Warehouse Pty Ltd v YTO International Ltd

[2009] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Global Track Warehouse Pty Ltd to an application under section 92 of the Trade Marks Act by YTO International Ltd to remove from the register trade mark number 766115 (7,12) - YTO and device- in the name of Global Track Warehouse Pty Ltd

Delegate:

Alison Windsor

Representation:

Opponent:  Michael Martin of Acumen Intellectual Property

Applicant:  not represented

Decision:

2009 ATMO 56

Section 92: Removal application under paragraph 92(4)(b) – use demonstrated is not use of the trade mark as registered – section 7 noted - Registrar’s discretion not applied – trade mark to be removed from the Register.

Background

1. On 12 April 2007 YTO International Ltd (“YTOI”) filed an application to remove a trade mark from the register for non-use in respect of all the goods claimed, under the provisions of section 92 of the Trade Marks Act 1995 (“the Act”).  Current details of the trade mark concerned are shown below:

Trade Mark Registration Number:           766115

Registered from:  29 June 1998

Owner name:  Global Track Warehouse Pty Ltd

Goods claims and classes:  Class 7: Shearing comb and cutter

Class 12:              Tractors and crawler tractors

Trade mark:  

1. Global Trade Warehouse Pty Ltd (“GTW”) filed notice of opposition to the removal application on 12 June 2007.  Over a period of time, evidence in support, in answer and in reply were served and filed.  YTOI applied for permission to serve and file further evidence.  The request was granted, and at least part of the proposed evidence was filed within the allowed time.  The remainder of the proposed evidence was not served within a period of time which had been extended for the purpose and the matter was then set down to be heard.  

2. I heard the matter, in my capacity as a delegate of the Registrar of trade marks, in Canberra on 14 May 2009.  YTOI did not appear and did not provide written submissions.  Michael Martin of Acumen Intellectual Property appeared for GTW.

The law

1. Application for removal of a trade mark from the Register for non-use is governed by section 92 of the Act which relevantly 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.

   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) …

   (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.

   (5)  If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

2. Section 100 of the Act also applies. The sections relevant to this action read:

   Section 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;

   …

Discussion and Reasons

1. The relevant period for considering whether the trade mark has been used is the three year period ending on 12 March 2007.  In order to successfully oppose the application for removal, GTW needs to show use of its trade mark in respect of at least some of the nominated goods within that time period (“the relevant period”).

2. As the application for removal was filed after 23 October 2006, the date on which the Trade Marks Amendment Act 2006 took effect, there is no requirement for YTOI to be a “person aggrieved”.  Much of the evidence provided by GTW seems to go to a discrediting of YTOI and its bona fides in making the application for removal.  I do not intend to give any of that evidence much weight as it is not particularly relevant, given the way the law now reads.

3. GTW’s registered trade mark is shown at paragraph 1, but for convenience, I will show it again here:                

1. As its evidence in support, GTW provided a declaration by Wei Xing Min, made on 6 June 2007 and incorporating exhibits WM-1 to WM-11.  Exhibits WM-4 to WM-11 consist of copies of a number of pages from a publication called “Farms and Farm Machinery”[1].  None of the pages are dated, but the declaration to which they are exhibited provides a date for each page.  The dates range from 21 September 2005 to 24 August 2006, all being within the relevant period.  All of the pages include advertisements placed by GTW, offering for sale crawler tractors referred to as “YTO 70TS Tractor/Dozer”.  There is no indication anywhere within the advertisements of use of the trade mark in the stylized form in which it is registered.  There is no indication at all whether or not any of these tractors have been sold.  I can find nothing within the evidence provided that refers to income from sales of these goods, or refers to the amounts of money spent in advertising them within the relevant period. 

   [1] A Google search reveals that the publication is a monthly magazine described as “Australia’s No 1 heavy duty equipment market place”.

2. Exhibits WM-1 to WM-3 refer to use of the letters YTO stamped onto shearing combs and cutters.  WM-1 is a copy of GTW’s “current [June 2007] advertisement on the Country Sales website ( WM-2 and WM-3 are enlargements of the images on that copy, so that the letters YTO can actually be seen on the goods.  Again, the letter combination YTO is shown in plain uppercase letters but not in the stylized manner of the trade mark as registered, and certainly without the accompanying device.  Moreover, this use is outside the relevant period.

3. Exhibit WM-11 consists of copies of invoices issued to a variety of customers who purchased shearing combs and cutters from GTW.  All the invoices are within the relevant period.  However, there is no indication of any trade mark applied to the goods or used in respect of the goods in any of the documents. 

4. Wei Xing Min’s declaration made on 20 June 2008 and filed as part of the evidence in reply makes reference to another brand of cutters and combs, namely TALLY HI which brand he states was created and owned by his business.  Mr Min states that he began using YTO as a brand for use in Australia, but gives no date for this adoption.  Neither does he give a date at which the TALLY HI brand was superseded, if in fact it was.  On the basis of this conflicting information, I am unable to infer that the registered trade mark, or indeed the uppercase letter YTO trade mark, was applied to the goods subject of these invoices.  I am not satisfied that there was use of either trade mark on the shearing combs and cutters within the relevant period.  

5. In summary, while GTW’s evidence in support shows use of the letters YTO in plain uppercase letters during the relevant period for a crawler tractor, it does not show use of the trade mark which the applicant has registered.  GTW’s evidence in reply similarly does not show use of the registered trade mark.  The question which needs to be answered, therefore, is whether use of the letter YTO in plain uppercase script is use of the registered trade mark in respect of crawler tractors.

6. Paragraph 100(3)(a) refers to use of the trade mark “with additions or alterations not substantially affecting its identity” within the relevant period. I must decide if GTW’s use fits within that requirement. Section 7 of the Act is relevant to this decision, and provides:

   Section 7. Use 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.

   (2)  To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)  An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)  In this Act: 

   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).

   (5)  In this Act: 

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

7. The following passage from Shanahan[2]  is pertinent to this point:

   [70.1590] Use of the trade mark with additions or alterations not substantially affecting its identity

   These words appear in s 7(1) and ss 100(2)(a), 100(2)(b)(i), 100(3)(a) and 100(3)(b)(i) and their meaning was discussed in The Register and Registration Procedure from [15.05].

   In Morny Ltd's Trade Mark[3] it was held that the omission from a trade mark of a conventional form of embellishment does not substantially affect the identity of the trade mark, and further, that where a word is registered in ordinary capitals, its use in various special scripts or with embellishments is a sufficient use of the trade mark to protect it from expungement. Jenkins LJ observed:

   [T]he registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals. Otherwise the registration of a mark consisting of a name in block capitals would give virtually no protection at all, for anyone could use the same word in some other form of type or lettering in imitation handwriting or some other form of that kind; and it would obviously be impossible for anyone seeking to register a particular word, such as "Morny", to cover in his application or applications every conceivable form of lettering in which it might be represented.

   Morny was distinguished in Express Newspapers Ltd v Star Newspaper Co,[4] where the title "The Star" had been registered in Gallic script with the device of a man standing in a star between the words "The" and "Star" but had been used only in italic script and without the device. The hearing officer, Mr Myall, explained:

   [I]f registration of a name or word or other mark takes a particular form, then it is to be inferred that it is intended to confine the mark and its use to that form. If not registered in a particular form, then a mark may be safeguarded by use in some different form, provided that its name or other significance comes shining through. This leaves unresolved the question: "What constitutes a particular form?" In a certain sense, every mark registered may be said to have a particular form, that is the form in which it is registered. But what it seems to me that the Master of the Rolls was saying was that "particular form" means "out of the ordinary". Thus "MORNY" in plain block capitals is not a registration in an out of the ordinary form and may be used as a trade mark with various embellishments provided "MORNY" remains discernible as the essential feature. In the case in suit, by way of contrast, "THE STAR" does seem to me to be registered in a particular or "out of the ordinary" form.

   [2] Shanahan’s Australian Law of Trade Marks and Passing Off, Edition 4, Lawbook Co. 2008; Paragraph [70.1590] on page 516

   [3] Morny Ltd's Trade Mark (1951) 68 RPC 55; Morny Ltd's Trade Mark (1951) 68 RPC 131 (CA UK); see also Cluett Peabody & Co Inc v McIntyre Hogg Marsh & Co Ltd [1958] RPC 335 (Ch D); Spillers Ltd v Quaker Oats Ltd [1969] FSR 510 (Ch D); Spillers Ltd v Quaker Oats Ltd [1970] FSR 11 (CA UK).

   [4] Noted Express Newspapers Ltd v Star Newspaper Co [1984] IPD 7090 (UK Reg); see also Swanfu Trading Pte Ltd v Beyer Electrical Enterprise Pte Ltd (1992) 25 IPR 215 (HC SG).

8. GTW’s trade mark falls into the latter category of trade marks noted in the quotation.  It is registered in a very particular form – the letters YTO are presented in a highly decorative font, and there is a device (which may be a letter T) within an oval surround appearing above the letters.  It is an unusual and striking combination.

9. In my view the trade mark for which GTW has demonstrated relevant use within Australia could not reasonably be said to be the registered trade mark “with additions or alterations not substantially affecting its identity”.  Use of the plain letters YTO is accordingly not use of the highly decorative trade mark which forms the registration.  The grounds for removal have therefore been established. 

Registrar’s discretion

1. Deciding that the grounds for removal have been established is not necessarily fatal to the opponent. The registrar has a discretion to retain the trade mark on the Register, even if the grounds have been made out. This discretion is embodied in section 101 of the Act, which relevantly provides:

   Section 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.

   (2)  …

   (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.

   (4)  Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of: 

   (a) similar goods or closely related services; or

   (b) similar services or closely related goods;

   to those to which the application relates.

2. The consideration is, therefore, whether in all the circumstances, it is reasonable for me to decide that the trade mark should remain on the Register, even though I have decided the YTOI has established its grounds for removal.  However, GTW has provided me with nothing to explain why it has registered a very striking trade mark, and then chosen to use something quite different.  The evidence of use it did provide was scanty and not particularly persuasive, much of it being aimed at discrediting YTOI rather than in supporting its own case.  In the circumstances, I am not satisfied it is reasonable to apply the Registrar’s discretion in GTW’s favour.

Decision

1. GTW’s evidence falls far short of what would be required to persuade me to use the Registrar’s discretion and leave this trade mark on the Register. I find that GTW has not discharged the onus placed upon it under the Act and has not been successful in rebutting the removal application.

2. I direct that registration 766115 be removed from the register after one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, the disposition of the registration will be subject to the directions of the Court.

Alison Windsor

Hearing Officer

Trade Marks Hearings

24 July 2009