Greg Sands v Peak Body Systems Inc

[2011] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Greg Sands to application under section 92 of the Act by Peak Body Systems, Inc to remove trade mark number 800023(12, 28) – PEAK Logo in the name of Greg Sands

Delegate:

Iain Thompson

Representation:

Opponent: Did not attend hearing – brief written submissions

Applicant: Fiona Brittain of Davies Collison Cave

Decision:

2011 ATMO 107

ss 92(4)(a) and 92(4)(b) – s 92(4)(a) partially rebutted in regard to bicycles; however, owner’s evidence does not establish use during relevant period – s101 – discretion not exercised – opposition not established, trade mark to be removed from Register.

Background

1. Greg Sands (‘the owner’) of Mudgeeraba, Queensland, is the owner of a registered trade mark, details of which appear below:

Registration No:              800023

Priority Date:  14 July 1999

Goods:  Class 12: Bicycles

Class 28: Sporting equipment, exercise equipment

Trade Mark:  

(In the above trade mark the word appearing within the oval device adjacent to the alphabetical letter K is the word CYCLE; I will identify this trade mark as the PEAK Logo trade mark where necessary in these reasons).

1. On 25 January 2011 Peak Body Systems, Inc. (‘the applicant’) of Boulder, Colorado, USA, filed an application under section 92 of the Trade Marks Act 1995 for the removal of the PEAK Logo trade mark from the Register of Trade Marks in respect of all of the goods for which it is registered.

2. The grounds under which the applicant seeks removal of the registration are under subparagraphs 92(4)(a) and 92(4)(b) of the Act:

   (a)   that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

   (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.

3. 0n 7 March 2011 the owner served and filed Notice of Opposition to the removal of the trade mark from the register stating that “the trade mark PEAK has been used for more then (sic) 10 years and is currently being used for helmets and bicycles.”

4. 0n 9 May 2011, as allowed by section 96 of the Act, the owner served and filed evidence in support of its opposition to the removal of the trade mark from the register.  The evidence comprises a declaration by the owner of the trade mark, Mr Greg Sands.

5. The applicant has not served and filed evidence in answer.

6. As a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant in Melbourne on 21 September 2011 made by Fiona Brittain of Davies Collison Cave of Melbourne.  The owner did not appear and has submitted brief written submissions.

7. In terms of section 100 of the Act, it is for the owner to rebut any allegation made under subparagraphs 92(4)(a) or 92(4)(b) of the Act (respectively, (a) that the applicant for registration of the trade mark did not intend to use it in good faith and the trade mark has not been used “at any time” before 25 December 2010 or (b) that the trade mark has not been used within a three year period ending on 25 December 2010 (“the relevant period”)).

The Evidence

1. Mr Sands declares that the trade mark has been used and appends literature to his declaration which purports to establish that use.

2. The first piece of literature is a list from Classic Bicycles QLD Pty Ltd which shows stock availability at 8 April 2011.  The trade mark does not occur on this list but Mr Sands states that the trade mark is affixed to a model of bicycle within the catalogue identified as the Boardwalk.  There are about 22 different Boardwalk bicycles within the stock list.  Mr Sands does not explain the relationship between himself and Classic Bicycles QLD Pty Ltd and it is not clear to me whether this is his company or a company which he supplies.

3. Mr Sands also includes in his evidence a single sheet showing various bicycle helmets – but the trade mark does not appear on the helmets or within the product description or elsewhere on this sheet.

4. Other material appended to the declaration is what I take to be artwork for the word trade mark PEAK to be affixed to the down tubes or top tubes of bicycles. I reproduce a sample of this artwork below:

5. Finally, the owner’s evidence contains two pictures of bicycles with what may be the PEAK Logo trade mark displayed on their down tubes.  These pictures are not objectively dated but one which has the date on the obverse side purports to have been taken on 24 April 2011 and is of a bicycle which is claimed to have been sold in January 2008.

Reasoning

1. Concerning the use of a trade mark, section 7 of the Act relevantly provides:

   7Use 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. The owner’s evidence of use is problematical for the following reasons:

   ·     The evidentiary material before me which is claimed to support the purported use of the trade mark is undated and there does not appear to be any objective means of ascertaining or inferring when the alleged use occurred;

   ·     The photograph of a bicycle which is claimed to have been sold in 2008 has a hand written note with on the back declaring the sale to be in January 2008 – but the handwritten note is not contemporaneous with the date of the sale of the bicycle.  (The bicycle itself shows rust incursion on the seat stem, chain guide and pedals and the handwritten note affirms that the photograph was taken on 24 April 2011).

   ·     There is no material in evidence such as dated order forms, invoices or receipts bearing the trade mark in evidence which go to support the claims of the owner to have used the PEAK Logo trade mark during the relevant period.

   ·     There is no declaration by any other person independent of the owner attesting to the use of the PEAK Logo trade mark during the relevant period.

   ·     It is not clear from the evidentiary material that the trade mark which the owner claims has been used on the goods is the registered trade mark used without alterations or additions which do not substantially affect its identity.

3. While Mr Sands apparently wishes me to infer that the trade mark has been used in relation to bicycles and helmets during the three year period ending on 25 December 2010, the evidence on which such an inference would be based is not of sufficient weight to support such a conclusion.

4. I therefore conclude from the evidence before me that while the owner of the trade mark has established that he has in all probability used the trade mark at some time since the trade mark was registered in relation to bicycles, he has not (on the evidence before me) satisfactorily established that he has used the trade mark on bicycles or helmets within the three year period ending on 25 December 2010.

5. Accordingly, the owner has partially established his opposition to the removal of the trade mark under subparagraph 92(4)(a) in relation to bicycles but has not established his opposition to removal under subparagraph 92(4)(b) of the Act in respect of any goods for which the trade mark is registered.

Discretion

1. Section 101 of the Act relevantly provides:

   (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.

   Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:For registered owner see section 6.

2. Ms Brittain argued that the owner of the trade mark had not invoked the Registrar’s discretion in the Notice of Opposition so I could not exercise that discretion.  However, the Registrar’s discretion is not a ground of opposition to removal; the question of exercise of the discretion arises if an owner of a registered trade mark has not established its opposition to removal of the trade mark from the register and for some other reason the removal of the trade mark from the register in respect of some or all of the goods or services may not be appropriate.

3. Here, however, there is nothing in the owner’s evidence which suggests that I should exercise the Registrar’s discretion in his favour and not direct that the trade mark be removed from the register of trade marks.

Decision

1. Section 101 of the Act relevantly provides:

   101Determination 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)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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. I direct that one month from the date of this decision trade mark registration number 800023 be removed from the register for all of the goods in respect of which it is registered.

3. If the Registrar has been served with a notice of appeal before that time, I direct that removal of the registration shall not occur until the appeal has been decided or discontinued and that the disposition of the registration be in accordance with the Court’s order or direction.

Costs

1. The applicant requested its costs should it be successful in these proceedings.  I accordingly award costs at the official scale against the owner.

Iain Thompson

Hearing Officer

Trade Marks Hearings

04 November 2011