Grundomat Pty Ltd v Tracto-Technik GmbH

[2008] ATMO 82

TRADE MARKS ACT 1995

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

Re:Opposition by Grundomat Pty Ltd to an application under section 92 of the Act by Tracto-Technik GmbH to remove trade mark number 961440(7) - Grundomat - in the name of Grundomat Pty Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Ben Fitzpatrick, counsel instructed by Mills Oakley Lawyers
Applicant: Margaret Ryan of Phillips Ormond & Fitzpatrick Attorneys

Decision:

2008 ATMO 82

Section 92 opposition – s92(4)(a) - opponent established use – trade marks to remain on register – costs awarded against applicant

Background

1. Grundomat Pty Ltd (‘the opponent’) is the registered owner of a trade mark, current details of which appear below:

   Trade mark number:  961440
   Registered from:                   14 July 2003

   Goods / Services:                  Class 7: Hydraulic and pneumatic boring equipment and device for enabling positioning of underground pipes and the like; a device for making holes under roads etc., by way of a heavy piston continually pulsating inside the device displacing the soil as the machine moves forward

   Trade mark:  GRUNDOMAT         

2. On 7 September 2006, Tracto-Technik GmbH (‘the applicant’) filed an application under section 92(4)(a) of the Trade Marks Act 1995 (‘the Act’) for removal of the trade mark from the register.

3. On 6 December 2006 the opponent filed Notice of Opposition to the removal, claiming that the applicant was not a persona aggrieved, and rebutting the grounds claimed in the application.

4. Paragraphs 100(1) (a) and (b) of the Act place the burden of rebutting the allegations made under paragraph 94(4)(a) in relation to the goods/services to which the opposed application relates.

5. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 16 June 2008.  The opponent was represented by Ben Fitzpatrick of counsel, instructed by Mills Oakley Lawyers. The applicant was represented by Margaret Ryan of Phillips Ormond & Fitzpatrick Patent and Trade Mark Attorneys.

   Evidence

6. The following evidence was filed and served pursuant to legislation:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Owen Hancock	Managing Director of opponent	26 March 2007, Hancock	n/a
Warren Goodwin Chandler	Attorney for opponent	7 May 2007, Chandler	WGC-1 to WGC-8
Evidence in Answer
Thomas Richard Hughes	Managing Director of TT Asia Pacific	4 October 2007, Hughes	TRH-1 to TRH-12
Malcolm Neil Bell	Attorney for applicant	8 October 2007, Bell	MNB-1

1. The Hancock declaration explains the establishment of the company in 2003 and the due diligence checks of the Register of Trade Marks, company and business names indexes for the name GRUNDOMAT. Having found no identical registrations Mr Hancock duly applied to register GRUNDOMAT as a trade mark, business name, and top level domain name.

2. The Chandler declaration exhibits a number of items that are claimed to demonstrate use of the opponent’s trade mark.

3. The Hughes declaration is made by the managing Director of the applicant’s Australian subsidiary company. It details the history of the applicant in Germany and its operations in Australia. In particular it details the introduction of a soil displacement hammer the applicant named the GRUNDOMAT and which has been marketed and sold in Australia since 1984.

4. The Bell declaration exhibits a declaration made by Wolfgang Schmidt, the owner and director of the applicant. The declaration was made on 10 August 2005 and was evidence to support a prior continuous use claim in respect of the applicant’s application to register its trade mark in Australia.

   Discussion

5. The parties provided me with detailed written submissions in support of their positions and relied upon them at the hearing.

6. The opponent first sought to impeach the applicant’s standing as a ‘person aggrieved’. Counsel submitted that the applicant’s evidence merely indicated that the applicant had acquired its own registered rights in Australia in respect of the mark and there was no evidence of any practical inconvenience being suffered by the applicant.

7. The applicant replied to the effect that the fact that both applicant and opponent own registrations for identical trade marks for the same goods.  The applicant would be clearly disadvantaged in that it would be unable to bring trade mark infringement proceedings against the opponent in the event that the opponent applied its trade mark on goods sourced from the applicant.

8. The removal application was made before amendments to the Act removed the requirement for an applicant being aggrieved. It is, therefore, a threshold question to be addressed before the opponent’s evidence of actual use need be assessed.

9. The principles to be applied are well established and are summarised in Unilever Australia Limited v George Karounos & Anor (2001) 52 IPR 361 AT 371. I am satisfied that, from a practical point of view, the applicant would be appreciably disadvantaged in a legal or practical sense by the opponent’s mark remaining on the Register.

10. As to the issue of applying in good faith the opponent cited Structureco Inc v Starite Distributors Pty Ltd [2000] ATMO 31 (10 April 200) to support the view that the onus of establishing an application in good faith is not high and can be satisfied by the opponent or its agent declaring that the applicant for registration had an intention of using the mark in good faith.

11. Counsel for the opponent pointed to the evidence of use of the mark in respect of the relevant goods, and the lack of evidence of any bad faith on the part of the opponent.

12. The applicant made submissions that essentially suggested that there was no use of the trade mark demonstrated in the evidence, rather it was company name and domain name use, and in any event such evidence that was within the relevant time-frame, did not indicate use in relation to the relevant goods.

13. The applicant also made detailed submissions as to why the delegate should not exercise the discretion provided under section 101(3) to retain a registration on the register if grounds for removal are established.

14. In considering the evidence, I have accorded little weight to exhibits WGC6 to WGC-8 in the Chandler declaration. WGC-6 is dated after 7 August 2006 and therefore irrelevant, WGC-7 does not show use of the trade mark and WGC-7 was downloaded after 7 August 2006 and I cannot be satisfied that it represents the web site prior to that date.

15. Having regard to the evidence, and the submissions by the parties, I am satisfied that the opponent has been using its registered trade mark, with the “Pty Ltd” suffix that does not substantially affect its identity, as a badge of origin of its goods.

16. In particular, the Yellow Pages entries and invoices indicate to me that the trade mark was being used in a genuine commercial sense, and thus “in good faith”: Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166 at 171. I am also satisfied that the evidence shows trade mark use with respect to goods specified in the registration.

17. Having established proof of use in good faith, such proof also rebuts the allegation that the application was not made in good faith: Murray v Major League Baseball Properties Inc (1995) 33 IPR 362.

    Decision

18. I am satisfied that the opponent has used its trade mark with respect to the goods specified in the registration.  I therefore dismiss the application to remove the trade mark.

    Costs

19. As the removal applicant has been unsuccessful I award costs against Tracto-Technik GmbH at the scale found in Schedule 8 of the Trade Mark Regulations 1995.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    30 September 2008