TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hao Qi to application under section 92 of the Act by Nick Wright for removal of trade mark number 1682249 (18, 25) – MICOCO - in the name of Hao Qui
Delegate: Nicholas Smith Representation: Opponent: Self-represented
Applicant: Sean McManis of Shelston IPDecision: 2019 ATMO161
Trade Marks Act 1995 (Cth) – section 96 opposition to s 92(4)(a) application for removal – intent to use inherent in filing of Trade Mark application – Opposition partially successful – opponent asserts its intention at the filing date to use the Trade Mark for some of the goods – Registrar’s discretion under s 101(3) not exercised in favour of the Opponent with respect to the remaining goods – Trade Mark to remain on Register for some goodsBackground
This decision is pursuant to an application made on 25 October 2017 under s 92(4)(a) of the Trade Marks Act 1995 (‘Act’) by Nick Wright (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.
Registration No. 1682249 Filing date 23 March 2015 Goods Class 18: Airline travel bags; Articles of luggage being bags; Athletics bags; Bag covers; Baggage; Bags (envelopes, pouches) of leather, for packaging; Bags for campers; Bags for climbers; Bags for shaving kits; Bags for sports; Bags for toiletry kits; Bags for transport of clothes; Bags for use in sports for carrying sports clothing; Bags made of imitation leather; Bags made of leather; Beach bags; Belt bags; Book bags; Boston bags; Camera bags (other than adapted or shaped to contain a camera); Camping bags; Carrying bags (other than disposable carrier bags); Casual bags; Changing bags; Clutch bags; Cosmetic bags (not fitted); Cosmetics bags (not fitted); Courier bags; Cricket bags (other than adapted); Diaper bags; Diplomatic bags; Duffel bags; Duffle bags; Evening bags; Faeces collection bags for dogs and horses (animal clothing); Flight bags; Game bags (hunting accessory); Garment bags for travel; Gym bags; Hat bags; Jewellery bags (empty); Knitting bags; Leaflet bags for use by the person delivering; Leather bags; Luggage bags; Make-up bags; Medical bags for apparatus and instruments (not adapted or fitted); Messenger bags; Money bags; Nappy bags (other than bags for the disposal of nappies); Net bags for shopping; Nose bags (feed bags); Nurses bags; Overnight bags; Peg bags; Pilots' bags; Portable bags (luggage); Pouches (bags); Saddle bags (not shaped or fitted) (for cycles); Saddle bags for horse riding; School bags; Shaver bags (not shaped); Shoe bags; Shopping bag handles; Shopping bags; Shopping carts (wheeled shopping bags); Shoulder bags; Shoulder bags for use by children; Ski boot bags (not fitted or shaped); Sling bags; Sling bags for carrying animals; Sling bags for carrying children; Sling bags for carrying infants; Sponge bags (empty);…
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Details
- Case
- [2019] ATMO 161
- Decision Date
CaseChat Overview and Summary
Hao Qi opposed an application by Nick Wright for the removal of trade mark number 1682249, known as MICOCO, from the register. The application for removal was made under section 92 of the relevant Act. The hearing officer, Nicholas Smith, considered the discretion to allow a trade mark to remain on the register even if it has not been used.
The legal issue before the hearing officer was whether to exercise the discretion under section 101(3) of the Act to allow the MICOCO trade mark to remain registered for certain goods, despite the applicant's claim of non-use. This involved balancing the public interest in the integrity of the register with the private commercial interests of both the applicant and the registered proprietor.
The hearing officer noted that while the public interest in the integrity of the register is a guiding principle, the private commercial interests of the parties are also relevant. However, in this specific case, Hao Qi, the opponent and registered proprietor, provided no evidence of past, present, or future use, or any intention to use, the MICOCO trade mark on the goods for which removal was sought. Consequently, the hearing officer found it unlikely that the public would be affected by the removal of the trade mark for these unused goods, as it was not known to the public.
Accordingly, the hearing officer decided that the opposition was partly successful. The MICOCO trade mark would not be removed in its entirety but would be removed from the register in respect of certain goods, with the specifications of goods to be amended within one month of the decision. If an appeal was filed, the removal would be stayed pending the outcome of the appeal.
The legal issue before the hearing officer was whether to exercise the discretion under section 101(3) of the Act to allow the MICOCO trade mark to remain registered for certain goods, despite the applicant's claim of non-use. This involved balancing the public interest in the integrity of the register with the private commercial interests of both the applicant and the registered proprietor.
The hearing officer noted that while the public interest in the integrity of the register is a guiding principle, the private commercial interests of the parties are also relevant. However, in this specific case, Hao Qi, the opponent and registered proprietor, provided no evidence of past, present, or future use, or any intention to use, the MICOCO trade mark on the goods for which removal was sought. Consequently, the hearing officer found it unlikely that the public would be affected by the removal of the trade mark for these unused goods, as it was not known to the public.
Accordingly, the hearing officer decided that the opposition was partly successful. The MICOCO trade mark would not be removed in its entirety but would be removed from the register in respect of certain goods, with the specifications of goods to be amended within one month of the decision. If an appeal was filed, the removal would be stayed pending the outcome of the appeal.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[10] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[11][9] Kowa Co Ltd v Organon [2005] FCA 1282, [92].[10] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].[11] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].18. Factors that have been found relevant to the consideration of whether to exercise the discretion include:·There had been no abandonment of the trade mark;·The registered proprietor of the mark still had a residual reputation in the mark;·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;·The applicant 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 proprietor was not aware of the applicant’s sales under the mark.[12][12] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].19. In the present case the Opponent has provided no evidence of any past, present or future use or intention to use the Trade Mark on the Unused Goods or any private commercial interest in the Trade Mark remaining registered for the Unused Goods. It is highly unlikely that the public would be affected in any way by the removal from the Register (for the Unused Goods) of a trade mark which does not appear to have been used and which is not therefore known by the public at all. In those circumstances I am not prepared to exercise the Registrar’s discretion pursuant to s 101(3) in favour of the Opponent to allow the Trade Mark to remain on the Register for the Unused Goods.Decision20. I decide that the Opponent has partly established its opposition to removal and the Trade Mark should only be removed from the Register in respect of the Unused Goods.21. Accordingly, I refuse to remove trade mark registration 1682249 in its entirety but direct that one month from the date of this decision the specifications of goods be amended to the goods listed below and the Trade Mark will be removed from the Register in respect of all remaining goods. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.Class 25: dresses and evening dresses.Nicholas SmithHearing OfficerHearings and Oppositions 12 November 2019
Ratio Decidendi
Legal Principle Established
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