Haigh Australia Pty Ltd v T-Max Australia Pty Ltd
[2017] ATMO 8
•31 January 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Haigh Australia Pty Ltd to applications by T-Max Australia Pty Ltd to remove trade mark registrations 1037077 (7, 11, 12 & 22) T-Max Logo and 1103086 (7, 8 & 12) T-MAX in the name of Haigh Australia Pty Ltd
Delegate:
Michael Kirov
Representation:
Opponent: Relied on written submissions prepared by M&K Lawyers, Solicitors and Trade Mark Attorneys
Removal Applicant: Susan Gatford of Counsel, instructed by Michelle Wilson of Wynnes Patent & Trademark Attorneys
Decision:
2017 ATMO 8
Oppositions pursuant to s 96 of the Trade Marks Act 1995: s 92(4)(b) considered - use shown for a small range of goods and oppositions only partially established. No reason for exercise of discretion under s 101(3). Registrations to be partially removed.
Background
Haigh Australia Pty Ltd (“the Opponent”) is the registered owner of trade mark registrations 1037077 and 1103086 (“the Registrations”), relevant details of which are as follows:
Registration Number: 1037077
Registered From: 11 January 2005
Goods: Class 7: Automotive parts and accessories, tools hand and electric, none of the aforesaid goods being winches, 4WD winch parts and winch accessories, or marine winch accessories
Class 11: Automotive lighting and industrial lighting products
Class 12:Vehicle spare parts
Class 22:Camping accessories, tarpaulins
Trade Mark: (“the Logo Mark”)
Registration Number: 1103086
Registered From: 10 March 2006
Goods: Class 7: Machines and machine tools; parts, fittings and accessories being goods in class 7; none of the aforementioned being winches, 4WD winch parts and winch accessories or marine winch accessories; air compressors for motor vehicles
Class 8:Vehicle jacks, including high-lift jacks, jack mounts; tyre levers; tyre pliers; bead breakers
Class 12:Parts and accessories for motor vehicles; recovery equipment for vehicles, incorporating drag chains, tow hooks, shackles, anchor straps, snatch blocks, snatch straps and tow lines; air snorkels for vehicles, bullbars, siderails and rearbars for protecting vehicles, cargo barriers for vehicles, carriers for spare wheels, chains for wheels, canopies for utility vehicles, differential locks, air operated differential locks, locking differentials, fuel tanks, freewheeling hubs, shock absorbers, suspension springs and other suspension accessories, tow bars, steps for motor vehicles, including side steps and rear steps; flares for vehicle wheel arches, protectors and guards for headlamps, bonnet protectors, headlight protectors, vehicle pedal pads, vehicle covers, steering wheel covers, seat covers, wheel covers, vehicle immobilizers, wiper blades, mud flaps, mirrors, exhaust tips, fuel tank caps, radiator caps, oil caps, roofracks and packracks for vehicles; tyre accessories being tyre repair kits; vehicle trailers
Trade Mark: T-MAX (“the Word Mark”)
For convenience I will hereafter refer to the trade marks subject of the Registrations collectively as “the Trade Marks”.
On 12 August 2014 T-Max Australia Pty Ltd (“the Removal Applicant”) filed applications based on s 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking full removal of registration 1037077 and partial removal of registration 1103086 from the Register in relation to the following goods (“the Removal Goods”):
1037077 (7, 11, 12 & 22): all goods
1103086 (7, 8 & 12): all goods in Classes 7 and 8 and the following goods from Class 12: “Parts for motor vehicles; snatch blocks; air snorkels for vehicles, bullbars, siderails and rearbars for protecting vehicles, cargo barriers for vehicles, canopies for utility vehicles, differential locks, air operated differential locks, locking differentials, fuel tanks, freewheeling hubs, shock absorbers, suspension springs and other suspension accessories, tow bars, steps for motor vehicles, including side steps and rear steps; flares for vehicle wheel arches, protectors and guards for headlamps, bonnet protectors, headlight protectors, vehicle pedal pads, vehicle covers, steering wheel covers, seat covers, vehicle immobilizers, wiper blades, mud flaps, mirrors, exhaust tips, fuel tank caps, radiator caps, oil caps, roofrack and packracks for vehicles; tyre accessories being tyre repair kits; vehicle trailers”.
Such removal would leave the Class 12 specification of registration 1103086 covering “accessories for motor vehicles; recovery equipment for vehicles, incorporating drag chains, tow hooks, shackles, anchor straps, snatch straps and tow lines; carriers for spare wheels, chains for wheels, wheel covers” (“the Excepted Goods”).
The allegation made is that the Trade Marks were not used in good faith in relation to the Removal Goods during the three year period ending on 12 July 2014 (“the Relevant Period”).
On 21 October 2014 the Opponent filed Notices of Intention to Oppose removal, followed by individual, essentially identical, Statements of Grounds and Particulars (“SGPs”) on 21 November 2014. The SGPs summarise the Opponent’s case as follows:
Section 100(1)(c) of the Trade Marks Act 1995 (Cth)
1. In or on 28 July 2011 through 28 July 2014,[1] the Opponent used [the Registrations] in good faith in Australia in relation to the [Removal Goods].
PARTICULARS
A. The Opponent has used [the Registrations] during the relevant period upon, or in physical or other relation to, the [Removal Goods] including by way of advertising, offering for sale and/or selling those goods in the normal course of its business.
[1] These dates, used throughout the SGPs, are not quite correct. As mentioned, the Relevant Period in this case is the three year period ending on 12 July 2014, although nothing in this decision turns on the error.
Section 100(3)(a) of the Trade Marks Act 1995 (Cth)
2. Further or in the alternative, during or on 28 July 2011 through 28 July 2014, the Opponent used [the Registrations] with additions or alterations not substantially affecting its identity in good faith in Australia in relation to the [Removal Goods].
PARTICULARS
A. The Opponent refers to and repeats the particulars provided in respect of Ground 1.
B. The Opponent has used [the Registrations] with additions or alterations not substantially affecting [their] identity during the relevant period upon, or in physical or other relation to, the [Removal Goods]including by way of advertising, offering for sale and/or selling those goods in the normal course of its business.
Section 100(3) of the Trade Marks Act 1995 (Cth)
3. Alternatively, it is reasonable for the Registrar to exercise her discretion and not remove all or part of [the Registrations] from the Register even if the grounds on which the application for removal was made have been established.
PARTICULARS
A. In or on 28 July 2011 through 28 July 2014, the Opponent used [the Registrations] in good faith in Australia in relation to similar goods or closely related services to [the Removal Goods].
i. The Opponent refers to and repeats the particulars provided in respect of Grounds 1 and 2.
ii. The Opponent has used [the Registrations] during the relevant period upon, or in physical or other relation to, the [Removal Goods] including by way of advertising, offering for sale and/or selling those goods in the normal course of its business
B. [The Registrations were] partially assigned to T-Max (Hangzhou) Industrial Co., Ltd on 5 September 2007. The Opponent is currently investigating any connection as between T-Max (Hangzhou) Industrial Co., Ltd and the Removal Applicant and may submit related evidence pending the outcome of its investigations.
The Removal Applicant filed Notices of Intention to Defend on 9 December 2014 and the parties then filed evidence in support, in answer and in reply as described below.
I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 4 August 2016. Susan Gatford of Counsel, instructed by Michelle Wilson of Wynnes Patent & Trademark Attorneys, appeared for the Removal Applicant. Ms Gatford’s oral submissions were supplemented with written submissions emailed to the Opponent’s representatives and me a week before the hearing as directed.
The Opponent relied on written submissions only, these having been prepared by its attorneys M&K Lawyers. They were emailed to the Removal Applicant’s representatives and to me prior to the hearing in two parts styled “Removal Opponent’s Submissions” and “Owner/Opponent’s Reply Submissions” respectively, (collectively “the Opponent’s submissions”), with the second part directly addressing matters raised in Ms Gatford’s written submissions.
The Evidence
For their evidence the parties rely on the declarations listed below, made pursuant to the Act and reg. 21.6 of the Trade Marks Regulations 1995 (“the Regulations”). I note that the evidence in support and evidence in reply are the same for each opposition, but that the evidence in answer differs slightly:
Evidence in Support
▪ Alan McMahon made 23 February 2015, with Annexures AM-1 to AM-6 (“McMahon”)
Evidence in Answer
Registration 1037077
▪ Angeline Peta Behan made 16 July 2015, with Exhibits APB-1 to APB-6 (“Behan”)
▪ David MacNamara made 27 July 2015, with Exhibits DM-1 to DM-10 (“MacNamara 1”)
Registration 1103086
▪ David MacNamara made 27 July 2015, with Exhibits DM-1 to DM-10 (“MacNamara 2”)
Evidence in Reply
▪ Chris Roberts made 7 October 2015 (“Roberts”)
It is convenient to begin with an overview of the evidence. Alan McMahon has been Chief Executive Officer of the Opponent since 2001 and has otherwise been involved with the Opponent since 1988. He says that:
5. [The Opponent] is a privately owned Australian company with its primary business comprising the supply of an extensive range of automotive accessories.
6. [The Opponent] acquired the [Trade] Marks from The Performance Products Group Pty Ltd in or about August 2010 after that company had entered into liquidation.
7. In or about September 2007, there was a partial assignment of class 7 goods of the [Trade] Marks to T-Max (Hangzhou) Industrial Co., Ltd (“T-Max Hangzhou”) resulting in Australian Trade Mark Registration Nos 1197155 and 1197158.
[Details of registrations 1197155 and 1197158 for the Logo Mark and the Word Mark respectively, owned by [T-Max Hangzhou][2] and covering a range of winches and winch accessories in Class 7, are set out below:]
[2] The Register records the owner’s name as “T-Max (Hangzhou) Technology Co., Ltd”, but I understand this to be the same company Mr McMahon refers to as “T-Max (Hangzhou) Industrial Co., Ltd”.
Registration Number: 1197155
Filing Date: 11 January 2005
Goods: Class 7: Winches, 4WD winch parts and winch accessories, marine winches and winch accessories
Trade Mark:
Registration Number: 1197158
Filing Date: 10 March 2006
Goods: Class 7: Winches, winching machines and hand winches
Trade Mark: T-MAX
8. It is my understanding that the [Removal Applicant] is the exclusive licensee in Australia of [T-Max Hangzhou] and has recently lodged Australian Trade Mark Application No 1646406 for T-MAX in classes 7, 8 and 12.
9. [T-Max Hangzhou] has previously expressed interest in taking an assignment of the [Trade] Marks from [the Opponent] as part of a broader commercial deal that did not eventuate.
10. I understand that the relevant period in which [the Opponent is] to demonstrate use of the [Trade] Marks in Australia is 28 July 2011 through 28 July 2014.[3]
11. Since acquiring the [Trade] Marks in or about August 2010, [the Opponent]:
(a) has continuously used the [Trade] Marks in good faith in Australia;
(b) has not abandoned its rights in and to the [Trade] Marks; and
(c) does not currently have any intention of abandoning its rights to the [Trade] Marks.
[3] As noted in connection with the SGPs, these dates are not quite correct. The Relevant Period is the three year period ending on 12 July 2014, although nothing in this decision turns on Mr McMahon’s mistaken belief.
Mr McMahon goes on to describe several documents copied with his declaration said to evidence use of one or both of the Trade Marks during the Relevant Period. Relevantly, the Opponent’s submissions concede that:
27. There are some specific goods, covered by the [Trade] Marks, where the evidence-in-support does not explicitly show trade mark use:
(a) for the [Word Mark registration], the evidence does not explicitly show use of the [Trade] Marks during the relevant period in relation to “automotive lighting and industrial lighting products”, and “tarpaulins” (although it does show mats).
(b) for the [Logo Mark registration], the evidence does not explicitly show use of the [Trade] Marks during the relevant period in relation to “vehicle jacks, including high-lift jacks, jack mounts; tyre levers; tyre pliers; bead breakers”, or a selection of very specific types of vehicle parts and accessories in the class 12 goods specification.
While on the subject of concessions, I note that in her submissions Ms Gatford says that the Removal Applicant “does not, for present purposes, dispute [the Opponent’s] assertion that use of the [Logo Mark] is also use of the [Word Mark]”. On the other hand, I imagine the Removal Applicant would presumably dispute the converse, namely that use of the Word Mark would also constitute use of the Logo Mark, if that issue arose, on the basis that the Logo Mark contains “additions or alterations…substantially affecting [the Word Mark’s] identity”. Be that as it may, practically speaking I have not found this issue to be of particular significance in the present matter. In McMahon the Trade Marks are invariably referred to collectively as “the T-MAX Marks” and it is generally unclear from Mr McMahon’s statements whether he himself makes any distinction between the two marks in question. I do not however think it would be productive in this case if I sought to do otherwise, particularly given the limited extent of use claimed by the Opponent in any event. That is to say, I think the differences between the Trade Marks do not need close analysis in this case. I proceed accordingly.
Based on McMahon and its supporting documentation as a whole I accept there was use of the Trade Marks during the Relevant Period in respect of a very limited range of goods. These are described in the evidence as tie-downs, tie-down accessories such as strapping, cambuckle sets, anchor points and anchor tracks,[4] spare wheel covers, protective gloves, recovery blankets, recovery snatch straps, bags for drying such straps, octopus straps and cords for securing loads.
[4] Anchor points and anchor tracks providing “a convenient tie-down point for your cargo”.
Turning now to the evidence in answer, David MacNamara is sole director of the Removal Applicant and in his two essentially identical declarations he further details the history of the Trade Marks, essentially corroborating what Mr McMahon had said in this regard. In particular he says that:
T-Max Hangzhou manufactures winches and “other motor vehicle related products” and “the T-Max products have had a presence in Australia for 18 years”;
The Removal Applicant is the current Australian distributor of winches manufactured in China by T-Max Hangzhou;
In 2007 T-Max Hangzhou’s then Australian distributor (“Performance”), which was then also the owner of the Registrations, partially assigned them to T-Max Hangzhou insofar as they covered “winches, winching machines and hand winches” in Class 7 [leading to the creation of registrations 1197155 and 1197158 detailed in paragraph 11 above];
Performance went into liquidation in 2010 and, although T-Max Hangzhou also tried to purchase the Trade Marks as well as Performance’s Australian distribution business from the liquidator, it was the Opponent which succeeded in doing so.
Mr MacNamara goes on to speculate that the Opponent would have been unable to use the Trade Marks for the Removal Goods during the Relevant Period even if it had wanted to:
30. Although the Opponent owned the [Trade Marks] and the T-Max Business, the Opponent did not have a sufficient, ongoing supply of product to support the T-Max Business.
31. The Opponent and [T-Max Hangzhou] entered into discussions with a view to entering into a business relationship which would result in the Opponent being able to source and, therefore, sell more of the T-Max Product.
32. The discussions failed and, consequently, the Opponent was unable to source any or all T-Max Products for sale to retailers.
33. The result of the purchasing of the T-Max Business was that the Opponent was the owner of the [Trade Marks] and T-Max Products purchased at the Performance liquidation sale.
34. It is my understanding that the Opponent can only legitimately sell the T-Max Products purchased at the liquidation sale.
I note that Mr MacNamara does not say why he has this understanding, nor why, for example, the Opponent might not sell any of the Removal Goods bearing the Trade Marks which it itself had manufactured, or had a third party manufacture, subsequent to the liquidation sale.
Mr MacNamara offers several other criticisms or interpretations of the evidence in MacMahon which I do not believe it is necessary to detail here. I do however note that much of his declarations is taken up with speculation based on a trade magazine article published in March 2011 in which the Opponent’s then National Marketing Manager apparently made certain statements that Mr MacNamara interprets as tantamount to a declaration of intention to abandon the Trade Marks. It is convenient here to state that I do not accept that interpretation. I in any event concur with the Opponent’s submission that, “An argument of a lack of intention to use a mark is only relevant at the point of making a trade mark application and is not relevant to the question of use or removal for non-use.” What I am concerned with in the present matter is what actual use took place during the Relevant Period rather than speculation based on a magazine article in 2011 as to the Opponent’s then claimed intention regarding use.
Angeline Behan is a Trade Marks Attorney and Solicitor acting for the Removal Applicant and her declaration relates specifically to the Logo Mark. Most of the declaration is a methodical attempt to identify specific instances of relevant use shown in McMahon and to link that use to the corresponding description in the specifications of the Registrations.
Turning to the evidence in reply, Chris Roberts has been the Opponent’s Business Development Manager since 2010. In his declaration he disputes Mr MacNamara’s interpretation of the March 2011 article mentioned above and denies that the Opponent ever had any intention to “abandon” the Trade Marks, explaining that:
The reference within the Article regarding “Not to Further Develop” the T-MAX recovery range is merely a reference to development and not distribution or continuance. The Opponent has continued sales under the T-MAX Marks and T-MAX brand within its current range. The reference within the Article to not develop the range doesn’t mean to cease sales altogether; rather it means the Opponent is not investing more funds into developing that particular line of products. This is a business decision made every day by all companies (including the Opponent with all of its brands) for the better of the business.
The Law
Insofar as relevant, section 92 of the Act is reproduced below (with Notes omitted):
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 aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
(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.
(5) …
Section 93(2) of the Act specifies that an application under s 92(4)(b) “may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.” This requirement is satisfied here since the Registrations were filed in 2005 and 2006 respectively.
Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegations made under s 92(4)(b), with the standard of proof required being on the balance of probabilities.[5] It may meet this onus either by establishing that the Trade Marks, or the Trade Marks “with additions or alterations not substantially affecting [their] identity,” were used in good faith during the Relevant Period, or that there was a relevant obstacle to use. Issues turning on claimed use of similar marks, or of obstacles to use, were not in fact canvassed in the present matter and are discussed no further here.
[5] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6]-[26] with respect to oppositions under s 52 of the Act. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.
If relevant use cannot be shown for particular goods, s 101(1) gives the Registrar the discretion to remove the Trade Marks “in respect of any or all of the [Removal Goods]”, whilst s 101(3) explicitly provides that discretion may be exercised in the Opponent’s favour if the Registrar is satisfied it is reasonable to do so. Section 101 is set out in full at paragraph 42 below.
Discussion
Section 92(4)(b)
Actual use
The parties made detailed submissions as to what they believed the evidence showed relating to relevant use of the Trade Marks. I agree with the Removal Applicant’s submission that the evidence relied upon by the Opponent is insufficient for me to conclude there was relevant use for the wide range of goods urged by the Opponent in its submissions. After considering those submissions and making my own assessment of the parties’ evidence as a whole I have, as mentioned in my earlier summary of Mr McMahon’s evidence, concluded the Trade Marks were used during the Relevant Period for what I will call “the Used Goods”, namely:
tie-downs, tie-down accessories such as strapping, cambuckle sets, anchor points and anchor tracks, spare wheel covers, protective gloves, recovery blankets, recovery snatch straps, bags for drying such straps, octopus straps and cords for securing loads.
The Logo Mark registration covers goods in Classes 7, 11, 12 and 22, while the Word Mark registration covers goods in Classes 7, 8 and 12. None of the Used Goods would on the face of it be classified in Classes 8 or 11 as I see it and so at the very least the oppositions are to this extent not established. This leaves the Class 7, 12 and 22 specifications of the Logo Mark and the Class 7 and 12 specifications of the Word Mark, set out for ease of reference below:
The Logo Mark: Class 7: Automotive parts and accessories, tools hand and electric, none of the aforesaid goods being winches, 4WD winch parts and winch accessories, or marine winch accessories
Class 12:Vehicle spare parts
Class 22:Camping accessories, tarpaulins
The Word Mark: Class 7: Machines and machine tools; parts, fittings and accessories being goods in class 7; none of the aforementioned being winches, 4WD winch parts and winch accessories or marine winch accessories; air compressors for motor vehicles
Class 12:Parts and accessories for motor vehicles; recovery equipment for vehicles, incorporating drag chains, tow hooks, shackles, anchor straps, snatch blocks, snatch straps and tow lines; air snorkels for vehicles, bullbars, siderails and rearbars for protecting vehicles, cargo barriers for vehicles, carriers for spare wheels, chains for wheels, canopies for utility vehicles, differential locks, air operated differential locks, locking differentials, fuel tanks, freewheeling hubs, shock absorbers, suspension springs and other suspension accessories, tow bars, steps for motor vehicles, including side steps and rear steps; flares for vehicle wheel arches, protectors and guards for headlamps, bonnet protectors, headlight protectors, vehicle pedal pads, vehicle covers, steering wheel covers, seat covers, wheel covers, vehicle immobilizers, wiper blades, mud flaps, mirrors, exhaust tips, fuel tank caps, radiator caps, oil caps, roofracks and packracks for vehicles; tyre accessories being tyre repair kits; vehicle trailers
On the face of it the Class 7 specification of the Logo Mark is problematic in that it includes “Automotive parts and accessories” whereas, as Ms Gatford points out, no goods of that description actually fall in that class. Such goods are classified in Class 12. I will return to the significance of this apparent misclassification below.
That issue aside, I do not believe any of the Used Goods fall within Class 7 proper, which according to the International Classification of Goods and Services[6] is intended “to include mainly machines, machine tools, motors and engines (not being for land vehicles).” In this regard I am not satisfied there was any relevant use for goods broadly described in the Class 7 specifications of the Registrations as “tools hand and electric” or “Machines and machine tools; parts, fittings and accessories being goods in class 7”. My finding, accordingly, is that the oppositions are not established as far as showing any relevant use for Class 7 goods is concerned.
[6] 8th ed., © 2002 World Intellectual Property Organization, Geneva, being the edition in force when the Registrations were filed.
As to the Class 22 specification of the Logo Mark, this covers “Camping accessories, tarpaulins”. I have not found any relevant use of the Trade Marks for goods of this description in the Opponent’s evidence and so the opposition to the Logo Mark is not established as far as showing any relevant use for its Class 22 goods is concerned.
This leaves just the Class 12 specifications of the Registrations to consider in more detail. As Ms Gatford observed of the specifications generally:
15. …Some are of broad import such as … “parts and accessories for motor vehicles”. Others are specific – air compressors for motor vehicles, for example. Yet others are broad but then follow the broad description with specific items, for example “recovery equipment for motor vehicles, incorporating drag chains, tow hooks….” (and so on).
Starting from the premise that if use cannot be established a trade mark should be removed “unless sufficient reason appears for leaving it there,”[7] Ms Gatford submitted:
20. If the delegate is not satisfied that any use in good faith has occurred the decision is easy: the entry is removed. If, however, the delegate is satisfied that there has been use in good faith for a particular item (say spare wheel covers), can/should the delegate:
a. nevertheless remove in their entirety the entry/entries of general description into which spare wheel covers appropriately fits; or
b. narrow it to spare wheel covers in class 7; or
c. narrow it to spare wheel covers but move it to class 12; or
d. allow, in the exercise of his or her discretion, the broad description to remain.
21. [The Removal Applicant] submits that option (a) is both available to the delegate under section 101(1)[8] and the most appropriate option in light of the matters set out at [1]-[7], [22]-[24] and [47]-[54] of these submissions and that option (d) is inappropriate in light of those matters. Of the other available alternatives option (c) is to be preferred over option (b) and is possible.[9]
[7] Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 220-222; 12 IPR 417 at 481-483, per McLelland J.
[8] Citing Burrell & Handler, Australian Trade Mark Law, Oxford University Press, 2010 at [9.6(a)] on page 300.
[9] Citing Combined Group of Companies Pty Ltd v Reln Pty Ltd [2014] ATMO 20.
I note Miss Gatford’s point “c” and her citing of Combined Group of Companies Pty Ltd v Reln Pty Ltd[10] (“Reln”) in support of the Registrar’s power to reclassify goods. I believe that the Act is in any event explicit in this regard, with s 83 stating:
The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.
[10] [2014] ATMO 20.
In Reln the Hearing Officer concerned quoted pertinent passages from the decision of Wilcox J in Nikken Wellness Pty Ltd v van Voorst[11] in which his Honour accepted that misclassification of goods otherwise clearly identified did not render their coverage nugatory. Referring to counsel’s submissions in that case, Wilcox J said:
[11] [2003] FCA 816; [2003] AIPC 91-904 at [38] to [45].
42. …Counsel contend:
Whether or not the trade mark owner has specified appropriately or comprehensively the use or proposed use for which he or she claims a monopoly is not to the point. The trade mark owner is bound by the statement he or she has made in the application and the rights arising upon registration are defined accordingly. It would not be appropriate, for example, to construe the specification so as to make it useful for the trade mark owner; still less would it appropriate to construe the specification “with an eye to infringement” in a given case. Similarly, it should not be assumed that the specification does describe an actual activity in trade. The meaning and scope of the specification are to be determined by the words actually used by [the] trade mark owner.
43. Counsel also argue it does not matter that the wrong class is claimed. They quote the statement in Kerly's Law of Trade Marks and Trade Names (12th ed) at para 5-05:
Classification is primarily a matter of convenience in administration ... What is of real importance in determining the rights of the parties, as has been pointed out, is the specification of goods or services entered on the Register and the validity of the registration.
44. The submissions made by counsel for Nikken Wellness must be accepted. The Register is an official record open to inspection by members of the public: see s 209 of the Act. The Register is prima facie evidence of any particular matter entered in it: see s 210. A certified extract from the Register is admissible in legal proceedings: see s 211(2). Parliament must have intended the Register to speak for itself. People who peruse the Register, or an extract from it, must be able to act on the basis of what it says, without being obliged to make inquiries about the business history or previous conduct of the registered owner of the trade mark.
This is relevant to the misclassification of “Automotive parts and accessories” in the Class 7 specification of the Logo Mark. As mentioned, I believe goods of this description clearly fall within Class 12 and that the Registrar has the power to amend their classification accordingly. For the purposes of the discussion which follows, then, I will treat “Automotive parts and accessories” as forming part of the Class 12 specification of the Logo Mark.
Because their Class 12 specifications differ considerably it is convenient at this point to consider the Registrations separately. With “Automotive parts and accessories” now added, the Class 12 specification of the Logo Mark is “Vehicle spare parts; automotive parts and accessories”. With the exception of “spare wheel covers”, (which would I think be an “automotive accessory”), none of the other Used Goods is in my view covered by the specification.
To summarise, in the case of the Logo Mark in Classes 7, 11, 12 and 22, full removal of the registration is sought. The Opponent has not satisfied me that there was relevant use of the mark for any of the goods it covers in Classes 7, 11 or 22 and the sole relevant use for Class 12 goods I have found is use for spare wheel covers, which would fall within the general description “automotive accessories”.
For its part the Word Mark covers goods in Classes 7, 8 and 12 and in this case full removal of the Class 7 and 8 specifications, but removal for some only of the goods in Class 12, is sought. I am not satisfied that there was relevant use of the mark for any of the goods it covers in Classes 7 or 8. As for Class 12, I am not satisfied there was relevant use for any of the Removal Goods, set out again below for ease of reference:
Parts for motor vehicles; snatch blocks; air snorkels for vehicles, bullbars, siderails and rearbars for protecting vehicles, cargo barriers for vehicles, canopies for utility vehicles, differential locks, air operated differential locks, locking differentials, fuel tanks, freewheeling hubs, shock absorbers, suspension springs and other suspension accessories, tow bars, steps for motor vehicles, including side steps and rear steps; flares for vehicle wheel arches, protectors and guards for headlamps, bonnet protectors, headlight protectors, vehicle pedal pads, vehicle covers, steering wheel covers, seat covers, vehicle immobilizers, wiper blades, mud flaps, mirrors, exhaust tips, fuel tank caps, radiator caps, oil caps, roofrack and packracks for vehicles; tyre accessories being tyre repair kits; vehicle trailers
As mentioned in paragraph 4 above, without the Removal Goods the Class 12 specification of the Word Mark would be left covering the Excepted Goods. I believe that all of the Used Goods (as defined in paragraph 25 above)[12] are adequately included within this description of goods.
[12] Sold alone “protective gloves” fall in Class 9, but here use has been shown for such gloves sold as part of a “recovery kit” in Class 12 containing such things as the gloves themselves as well as anchors, strapping and the like.
I will address the parties’ submissions in relation to the Registrar’s discretion under s 101 of the Act below. I will firstly conclude this present discussion on actual use of the Trade Marks by observing that at face value, for the reasons discussed, the opposition to (full) removal of registration 1037077 for the Logo Mark has not been established, except in relation to “spare wheel covers” in Class 12. Absent favourable exercise of the Registrar’s discretion, therefore, I believe registration 1037077 should otherwise be removed from the Register for all of the goods it currently covers, such that its remaining Class 12 specification would simply read:
Automotive accessories, being spare wheel covers
In the case of registration 1103086 for the Word Mark, the opposition to partial removal has not been established in relation to any goods in Classes 7 or 8 or to any of the Removal Goods in Class 12. I thus observe that removal of the registration to the extent the Removal Applicant seeks appears on the face of it to be appropriate. This would leave registration 1103086 covering just the Excepted Goods in Class 12:
Accessories for motor vehicles; recovery equipment for vehicles, incorporating drag chains, tow hooks, shackles, anchor straps, snatch straps and tow lines; carriers for spare wheels, chains for wheels, wheel covers
Before amending the Registrations in this manner, however, I must firstly consider whether exercise of the Registrar’s discretion under s 101(3) of the Act is reasonable.
The Registrar’s Discretion
Section 101 is set out below (with Notes omitted):
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) 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.
(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.
As Bennett J explained in Pioneer Computers Australia Pty Ltd v Pioneer KK:[13]
[13] (2009) 80 IPR 38.
[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Co Ltd at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[169] In E & J Gallo at [202]–[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
• there had been no abandonment of the trade mark;
• the registered proprietors of the mark still had a residual reputation in the mark;
• there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
• the applicants for removal had entered the market without having taken steps to ascertain from the register whether anyone had a right to exclude their use of the mark;
• the registered proprietors were not aware of the applicant’s sales under the mark.
In the present matter I do not accept the Removal Applicant’s contention that the Opponent has “abandoned” its rights in the Trade Marks. On the other hand what evidence of use is before me falls far short of establishing that the Trade Marks would have had a significant reputation in the marketplace when the removal applications were filed. On Falconer J’s third point, there is no significant evidence before me of any sales of goods bearing the Trade Marks since the removal applications were filed. I addressed his Honour’s fourth and fifth points in my earlier discussion on actual use of the Trade Marks. In my view neither has a significant bearing on how the Registrar’s discretion might be exercised in this case.
Under the Act the motivations or actions of a removal applicant are not of principal concern in influencing how the discretion under s 101(3) should be exercised and indeed will often not have been disclosed to the Registrar in any event. It is rather the public interest and, to the extent that it is reasonable to do so, the registered owner’s interests, that I should bear in mind. In Austin, Nichols & Co Inc v Lodestar Anstalt[14] (“Austin”) the Full Federal Court (Jacobson, Yates and Katzmann JJ) put it this way at [35] and [38]:
[35] As the primary judge pointed out, the discretion under s 101(3) is a broad one. While it might also be true to describe it as “unlimited”, as his Honour also did, … in the sense that there are no express limits on it, more correctly it is a discretion limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Pt 9 of the Act. … Only if the subject-matter, scope and purpose of the legislation impliedly exclude the interests of the owner of the trade mark could it be said that those interests are irrelevant to the exercise of the discretion. In our view it does not.
…
[38] The purpose of Pt 9 is to provide for the removal of unused trade marks from the register. In that regard it is plainly designed to protect the integrity of the register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.
[14] (2012) 287 ALR 221.
Ms Gatford does rightly point out that the Opponent bears the relevant onus. In this regard I note the Full Court in Austin said at [44] that:
For the discretion to operate in favour of the registered owner, the court must be positively satisfied that it is reasonable that the trade mark should not be removed. On this question [the registered owner] bears the onus of proof: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526; 89 IPR 457; [2010] FCA 1380 at [273]. This is a legal, and not merely an evidential, onus…
As far as the interests of the registered owner are concerned, these are not stated in the evidence. In McMahon the owner’s CEO merely says that the owner “does not currently have any intention of abandoning its rights to the T-MAX Marks.” There is likewise no evidence before me suggesting why exercise of the Registrar’s discretion in the owner’s favour would be in the public interest.
Taking these matters into account, I agree with Ms Gatford that the Opponent has not made out a case for exercise of the discretion in its favour in this case. Accordingly the Registrations are to be partially removed, as set out in paragraphs 39 and 40 above and repeated below for ease of reference.
Decision
As far as the Logo Mark is concerned, I direct that registration 1037077 be partially removed from the Register for all the goods it currently covers in Classes 7, 11, 12 and 22, except “spare wheel covers” in Class 12, such that the registration remain covering the following Class 12 goods only:
Automotive accessories, being spare wheel covers
As far as the Word Mark is concerned, I direct that registration 1103086 be partially removed from the Register for all the goods it currently covers in Classes 7, 8 and 12, except “spare wheel covers” and certain other recovery equipment or accessories in Class 12, such that the registration remain covering the following Class 12 goods only:
Accessories for motor vehicles; recovery equipment for vehicles, incorporating drag chains, tow hooks, shackles, anchor straps, snatch straps and tow lines; carriers for spare wheels, chains for wheels, wheel covers
Unless this decision is appealed the above directions should be actioned one month from the date of this decision. If however the Registrar has been served with notices of appeal before then I direct that removal shall not occur until the appeals have been discontinued or, in the event of a decision from the Court, that the Registrations be dealt with as the Court sees fit.
Costs
As both parties were, strictly speaking, partly successful I believe it appropriate in this case that each party bear its own costs.
Michael Kirov
Hearing Officer
Trade Marks Hearings
31 January 2017
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