Gregory Fendis v Deutsche Telecom AG

[2007] ATMO 56

TRADE MARKS ACT 1995

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

Re:Application for removal of registration 771793(9)(t and Snabel device) by Deutsche Telecom AG and opposition thereto by Gregory Fendis, the registered owner.

Delegate:

Iain Thompson

Representation:

Opponent

No appearance.

Applicant

John McCormack of Griffith Hack

Decision:

2007 ATMO 56

1. Section 92 removal application – ‘person aggrieved’ not an issue, what constitutes use of a trade mark, evidence of pre-use activity, trade mark not used, opposition not established.

2. Costs ordered against opponent.

Background

1. Gregory Fendis, ‘the opponent’ or ‘the owner’ in these proceedings, is the registered owner of a trade mark, details of which appear below:

   Appn No:  771793

   Priority Date:  1 September 1998

   Goods/Services:              Class: 9 Alarms, alarm systems, teaching apparatus and instruments; magnetic data carriers, recording discs; data processing equipment and computers; magnetic encoded cards; computer hardware, software and peripherals; data acquisition and data communications equipment; video transmission line apparatus and television receivers; security systems, video surveillance, intercom systems; data processing apparatus; smart cards; apparatus for games adapted for use with television receivers; identity cards, integrated circuit cards; intercommunication apparatus; interfaces for computers; laptop computers; modems, locks, monitoring apparatus, notebook computers; palmtop computers; data processing equipment and readers; receivers (audio and video); receivers (telephones); satellites for scientific purposes; video alarms; video telephones; computer programs for connecting to remote computers and computer networks; computer programs for searching the contents of remote computers and computer networks; computer programs for transmitting and receiving data and files to and from remote computers and computer networks; computer programs for assisting users in navigating through local and global computer networks; computer software used in security applications in the field of computer operating systems and computer networks; excluding computer software used for teaching languages including the English language and none of the foregoing goods being teaching, education or training materials

   Trade Mark:  

   ‘the trade mark’

2. On 13 August 2004, Deutsche Telecom AG (‘the applicant’) filed an application in terms of subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade mark from the Register in respect of all of the goods for which it is registered.  The owner has filed Notice of Opposition to the removal of the trade mark.  The owner cites one ground of opposition – namely, that he has used the trade mark within the relevant period, which is from 13 July 2001 until 13 July 2004.

3. As a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant, made by John McCormack of Griffith Hack, in Melbourne on 6 August 2007.  The opponent did not appear or make written submissions.

   Evidence

4. The evidence is a declaration by the owner and shows that the owner has made a number of presentations which feature the trade mark within the relevant period.  The owner avers that the uses are

   ·On 24 September 2001 the owner prepared presentation material under the auspices of his private company DittoTel and distributed the marketing material to potential users, customers and investors. The material contained the trade mark and described goods and closely related material. The owner states he was licensing the trade mark to DittoTel to sell the goods and closely related services. A copy is attached to his declaration and is marked "Annexure 8".

   ·On 3 July 2002 the owner sent a letter under the auspices of his private company NeoStudies to Rofin Australia of Victoria that contained the trade mark and described goods and closely related services for sale. A copy is attached to his declaration and is marked "Annexure 9".

   ·On 9 November 2002 the owner prepared presentation material under the auspices of his private company NeoLab and distributed the marketing material to Rofin Australia. The material contained the trade mark and described goods and closely related material. The owner states he was licensing the trade mark to NeoLab to sell the goods and closely related services. A copy is attached to his declaration and is marked "Annexure 13".

   ·On 18 November 2002 the owner issued an invoice, Number 200211200, under the auspices of his private company Austcom International to Rofin Australia. The sale related to the first products sold for goods and closely related material of the trade mark. The owner was licensing the trade mark to Austcom to sell the goods and closely related services. A copy of the invoice is attached to his declaration and is marked "Annexure 13". The owner states that additional invoices have been subsequently issued and the potential sales revenue stream, from the trade mark and described goods is presently estimated at between $2 million to $5 million per annum.

   ·On 21 January 2003 the owner received a letter, under the auspices of his private company NeoStudies, from the company Rofin Australia that related to interest to purchase goods and closely related services of the trade mark. A copy is attached to his declaration and is marked "Annexure 10".

   ·On 27 February 2004 the owner received a letter, under the auspices of his private company NeoStudies, from the company Middle East Journal of Family Medicine of Victoria that related to goods and closely related services of the trade mark. A copy is attached to his declaration and is marked "Annexure 12".

5. The letter at Annexure 10 is from Rofin Australia and states:

   NeoStudies Secure On-Line Training Products and Services

   In relation to your letter dated 3 July 2002 regarding the NeoStudies On-Line Training Products and Services and the use of the "t" logo, we have canvassed our most important distributors with the PowerPoint presentation that you provided. They have expressed interest in Rofin pursuing the introduction of such products and services.

   As such we are interested in commencing dialogue that will lead to acquiring the NeoStudies product range and the use of the "t" logo as a registered trade mark for the on-line training in forensic applications.

   As we discussed, Rofin has sold forensic product into 50 countries around the world and the use of the service, including all trade marks, would be beneficial to Rofin in product differentiation. We see this as an extremely valuable way to introduce our on-line training program and we look forward to taking it to the next step.

6. I note that despite the interest shown in the product in the letter dated 21 January 2003, the potential client, Rofin Australia, by letter dated 7 November 2003, stated that they were no longer interested in acquiring the goods as the product no longer fitted with their corporate plans and that they did not wish to purchase it.  The letter states:

   NeoStudies Secure On-Line Training Products and Services

   Further to our letter of 21 January 2003, we have corporately decided to introduce a CD based training product to our distributors as opposed to our original on-line thinking.

   We established that it would take more resources than we were prepared to invest in the on-line training methodology.

   Thank you for your assistance in this process and we look forward to taking this product on in future when our corporate plans change.

7. It is difficult to assess whether this letter may be read as saying that Rofin Australia had acquired product bearing the trade mark and did not wish to acquire any more, or whether it states that they are not interested in buying any goods at all.

8. The trade mark does not appear on the invoice issued to Rofin Australia which is for:

   To supply NeoLab/Ridges functional products

   and system equipment

   Equipment and Functionality to be supplied

   Interface software - Image data from field camera

   Image manipulation

   Data input form

   Data transmission to server

   Store and convert data to AFIS format

   Data transmission from server to field staff

9. And, if the invoice is viewed in juxtaposition with the letter declining the applicant’s offer, what the invoice actually represents is uncertain.  This uncertainly is not dispelled by the owner’s declaration.

   Reasoning

10. When the application for removal was filed, section 92 of the Act relevantly provided:

    92  Application for removal of trade mark from Register etc.

    (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be 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 aggrieved 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)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:For file see section 6.

11. As there is no ground of opposition that the applicant for removal is not a person aggrieved, the applicant does not have to establish this threshold requirement: Intencity Pty Ltd v Gavin James O' Mahoney [1998] ATMO 28.

12. Accordingly, I am to decide whether the instances cited by the owner of the trade mark satisfy me that they (individually or collectively) are use of the trade mark as required by both the Act and the Courts.

13. If the opponent is to rely on slight evidence of use of the trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the opponent’s claims: Nodoz Trade Mark [1962] RPC 1.

14. In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, Drummond J comprehensively reviewed the authorities; at paragraph 18 he stated:

    Both counsel relied upon Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 as showing what was required for there to be a use of the applicants' mark sufficient to answer the respondent's allegation of non-use. Moorgate was concerned with whether what had been done in the course of establishing trading relations between an overseas trader and an Australian trader amounted to a use in Australia of the trade mark of the overseas trader. The specific issue for determination was whether, at the time Philip Morris applied for registration of the mark in question, Moorgate was already the proprietor of that mark for the purposes of s 40 of the 1955 Act because it had previously used the mark as a trade mark in Australia. Moorgate relied on the fact that, in connection with discussions with Philip Morris about the possible introduction of its low tar cigarette in Australia, Moorgate's overseas predecessor, Loew's, sent packets of cigarettes and associated advertising material displaying a version of the mark to representatives of Philip Morris in Australia. In the leading judgment, Deane J said at 433 - 434:

    "The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark ... or that the mark has been used in an advertisement of the goods in the course of trade: ... In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used. The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark `KENT GOLDEN LIGHTS' for the purpose of indicating or so as to indicate a connexion in the course of trade between the new cigarettes and Loew's."

    At the hearing, attention was concentrated on the second applicant's dealings in the period March-April 1996 with Mr Warner of Sanctuary Cove Brewery, a subsidiary of Carlton United Breweries ("CUB"), as establishing that the mark (or the mark with relevant additions or alterations) was used in good faith by the first applicant during the relevant three year period. The applicants submitted that Mr Burmingham's dealings with Mr Warner of CUB showed that the first applicant had used its mark during the course of those discussions in that it then had an existing intention to offer or supply goods bearing the mark in trade within the second limb of Deane J's dictum in the passage in emphasis in Moorgate.

    The applicants, in my opinion, misunderstand what Deane J said. His Honour made the comment relied on in the context of explaining what was necessary to establish use of a mark in Australia by an overseas trader, though there was no actual dealing in goods bearing the mark in this country in the sense of no actual sales or offers of sale of the goods here. The dictum cannot be read in isolation from this context. Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here. Further, where such a commitment of the goods has occurred, there will be "an existing intention etc", sufficient to show use of the mark in Australia where the mark has been used, in advertising in this country their future availability for purchase here, though none of the goods earmarked for export to Australia have yet arrived. Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark. What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.

    McGarvie J understood Deane J's dictum as being to this effect in Settef. One issue there was whether an Italian company, Settef, had used its "Riv-Oland" word mark in Australia before 1978 so as to become the proprietor of the mark here and thus entitled to the registration of the mark which it obtained in 1978. McGarvie J said at 417:

    "I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purpose of trade ... The forwarding of samples and brochures [in 1967] is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. Use of the mark in such preliminary activities would not be a use in the course of trade: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83."

    His Honour held, however, that by late 1968, Settef had made a sufficient use of the mark here to entitle it to be recognised as the proprietor of the mark. But, according to McGarvie J, a present intention to offer goods with the mark on them is not sufficient to constitute use of the mark unless there then exists "a trading channel which in a business sense had already been opened to Australia".

    But Moorgate has been accepted as establishing in other contexts that there is a line of demarcation between use of a mark in trade and activities with respect to the mark which are preliminary to actual use of the mark. In Settef at 437 - 440 and Conquip Holdings Pty Ltd v S & A Restaurant Corp [2000] FCA 256 at [76] to [85], this distinction was applied to determine whether a mark had been used by the registered owner so as to defeat an application for its removal from the Register for non-use. In Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517, the distinction drawn in Moorgate between acts of user of a mark and acts preliminary to user was applied to determine whether an opponent to an application for registration of a mark had a good ground of objection to registration because the opponent had itself used the mark prior to the date of the other's application.

    In Settef, in the course of considering the defendant's counter-claim for removal from the Register of the plaintiff's mark under s 23(1)(b) of the 1955 Act for non-use, McGarvie J referred to the evidence of a visit by a Mr Tessarallo to a principal of Settef in Italy during the course of which Tessarallo said he was interested in distributing Settef products in Australia. The Settef principal said he would visit Tessarallo early the following year and, in the meantime, would send him publicity material to enable him to research the market. Soon after, he sent Tessarallo sample books and catalogues of Settef's "Riv-Oland" marked products and, a little later, visited Tessarallo in Australia, but did not think he would be a suitable distributor, so Settef took the matter no further. McGarvie J, at 439, concluded:

    "I do not regard Settef as having used its trade mark in its transactions with Mr Tessarallo. At no time did it open a trading channel to him by indicating that it was ready and willing to sell to him. The matter never advanced beyond preliminary discussions as in Moorgate Tobacco ..."

    However, he found sufficient use of the mark to defeat the counter-claim for removal in other evidence that the principal of an Australian company, J & P Applicators, during a visit to the Settef factory in Italy agreed to commence immediately to promote Settef's products to architects and other potential users in Queensland and that, though J & P Applicators purchased only one drum of "Riv-Oland" marked material and three small sample tins similarly marked, it had purchased the drum to make sample panels of the material to show to architects, developers and others and used at least some of the material for that purpose. McGarvie J said, at 439:

    "In my opinion the plaintiff made use of its trade mark in Australia through its transactions with J & P Applicators. Settef was ready and willing to supply Riv-Oland material to the Australian market through the trading channel to J & P Applicators. In the first consignment the mark was used in relation to the material by being used in the invoice and by being marked on the drum. It was a use in the course of trade although the drum was purchased to make samples to show to prospective customers and although only one drum of material was sold ... Sending the samples, brochures and catalogues to a trader who had agreed to distribute the product was also a use of the trade mark. In my opinion the use of the mark in the invoice and upon the three small tins supplied free of charge in the second consignment was a use in relation to the plaintiff's goods in the course of trade."

    In Conquip, the only evidence of any activity that took place in Australia in the relevant three year period that was relied on to show use here of the mark was the despatch to Australia on a confidential basis of standard menus used in an American restaurant chain operated under a trade mark name by the American owner in response to an inquiry from an Australian resident interested in discussing the possibility of opening up restaurants in Australia under that same name by agreement with the American owner. The evidence was that negotiations were unsuccessful and did not result in the opening of any such restaurant here. Not surprisingly, Heerey J held that these negotiations were "as their terms plainly indicate" of a preliminary nature and did not lead to any use of the marks in Australia. It can be inferred that the American owner, by sending his marked menus to Australia in response to the inquiry then intended to use his mark as a trade mark in Australia, if agreement were reached with the Australian inquirer for the opening of a restaurant here. But that was not enough to show use of the mark in this country.

    In Buying Systems (Australia) Pty Ltd v Studio SRL, the question was whether Buying Systems had used the mark (the word "Studio" in relation to fashion and hairdressing magazines) prior to the use of that mark by Studio SRL so as to defeat the latter's claim to registration as proprietor of the mark within s 40 of the 1955 Act. The critical date was 8 December 1983. In the period September to November 1983, Grand, the principal of Buying Systems, decided to set about publishing a new fashion magazine under the name "Studio Collections". He had business cards and letterheads with the word "Studio" printed. He contacted potential advertisers and solicited advertisements for the new magazine. Two of the organisations approached in this period ultimately took up advertising space in the first issue, which appeared in mid-1984. Gummow J concluded at 520:

    "These steps amount to sufficient activity by the opponent to produce the result that [Studio SRL] the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade. The case is quite different from activities of the nature discussed in Moorgate."

    Buying Systems not only had an existing intention to trade in the magazine, it had gone beyond making preliminary arrangements to use the mark by December 1983. It had an objectively ascertainable commitment to offering to supply the magazine in trade demonstrated by its having purchased and used appropriate business cards and letterheads in connection with the proposed offering of the magazine and by having solicited advertisers for the magazine. (In the absence of evidence as to the subsequent publication of the magazine, however, it may well have been difficult for Buying Systems to satisfy the Court that, by December 1983, it then had an intention to offer or supply goods bearing the mark in trade and had done things sufficiently unambiguous to objectively show that it had that intention.)

1. The relevant evidence here seemingly shows a course of dealing – negotiations – with a potential customer, or customers, which eventually came to naught.  It is obvious that the goods in relation to which negotiations took place and the trade mark was allegedly used were not of the same broad scope as those for which the trade mark is registered.  However, my task is not made any easier by the fact that the opponent does not spell out in the body of his declaration what these goods actually are, or were.  I would surmise from the letters and Powerpoint presentations in evidence that the goods are some sort of software program which might be used for student enrolments or for training or for forensic purposes and that it may also involve a service which is somehow delivered over the Internet.

2. The trade mark, as previously noted, does not appear on the invoice in evidence. 

3. It is difficult, occasionally, to distinguish between negotiations (or preparations) of a preliminary nature such as those in Conquip, and Woolley Bull, above, which do not establish use and those such as in Studio Buying Systems which are found to be use.  Factors which are relevant are the steps taken to put the goods or services onto the market, considered in relation to the particular trade – such as the selling of advertising space in a forthcoming magazine; whether the goods are in physical existence within Australia, or are in existence and are shipped to or ordered from Australia; whether dealings have gone beyond a ‘sales pitch’ – that is, for example, have the parties entered into a ‘heads of agreement’?  Have the parties agreed, in effect, to enter a contract, the fine details of which are to be negotiated?  And, it seems, the argument for use of a trade mark will be strengthened if the preparations or negotiations for use during the relevant period culminated in actual use after the relevant period: Studio Buying Systems.  For instance, if the preparations with the particular customer in question during the relevant period had culminated in a sale of the goods after the period in question, the position would be much clearer.

4. It thus appears that the position may be clarified when it is shown that there was some advantageous commercial activity associated with the projection of goods onto the market – such as the selling of advertising space in Studio Buying Systems, or the order of goods bearing the trade mark in Moorgate.  In other words, the related question might be framed as ‘has the owner of the trade mark entered into contracts which will show benefits (as opposed to merely incurring expenses) in relation to the trade mark during the relevant period?’

5. I do not think that I can be satisfied on the basis of the evidence before me that the steps taken by the owner of the trade mark here amounted to a use of the trade mark.  The preparations for use undertaken by the opponent amounted, in my view, to presentations which would, if the ‘pitch’ had been accepted, have elicited actual use in trade of the trade mark – but the activities did not seemingly result in sales during or after the period in question.  The invoice in evidence is suggestive that the owner of the trade mark might have engaged in activity that could have constituted use of the trade mark.  However, absent the presence of the trade mark on the invoice, and in the presence of a letter from Rofin Australia declining the offer, I do not think that I can be satisfied on this evidence that the trade mark has, in fact, been used in trade.  Furthermore, whatever activity has occurred in relation to the trade mark during the relevant period, has not, apparently, culminated in a related and consequent sale of the goods.

6. In terms of section 100 of the Act, the onus is on the opponent to satisfy me that he has used the trade mark during the period in question. I am not satisfied on the basis of the evidence before me that the opponent has used the trade mark during the period in question.

7. I therefore find that the opponent has not established to my satisfaction that he has used the trade mark and direct that 771793 be removed from the Register one month from the date of this decision.  In the event of an appeal from this decision, the disposition of the matter should be in accordance with the Court’s direction.

   Costs

8. The applicant, having been successful in these proceedings, is entitled to its costs which I order against the opponent at the official scale.

   Iain Thompson

   Hearing Officer

   Trade Marks Hearings

   5 September 2007