Horizons (Asia) Pty Ltd v Enagic Australia Pty Ltd and Enagic Co., Ltd

[2016] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Horizons (Asia) Pty Ltd to (joint) application by Enagic Australia Pty Ltd and Enagic Co., Ltd to remove trade mark registration 1280503 (9,11,32) - ENAGIC - in the name of Horizons (Asia) Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Shirley Penson, Director of the Opponent Applicant: Danielle Jepson of Fisher Adams Kelly Callinans
Decision:	2016 ATMO 26 Trade Marks Act 1995 s 92(4)(b) opposition: No relevant use or obstacles to use shown. No reason for exercise of Registrar’s discretion in Opponent’s favour. Trade Mark to be removed.

Background

1. Horizons (Asia) Pty Ltd (“the Opponent”) is the registered owner of trade mark registration 1280503, relevant details of which are as follows:

Registration Number:             1280503

Filing Date:       10 January 2009

Goods:  Class 9: Apparatus for purifying water, comprising a filter and ionisation chambers, for houshold and commercial purposes; apparatus for ozonating, comprising ozone generator and injection device for the purpose of disinfecting water

Class 11:Apparatus for filtering water; apparatus for purifying, namely an ioniser; apparatus for softening water; apparatus for steam-generating, reducing and de-oxidating being part of a filtering pocess; apparatus for refrigerating water and other beverages; apparatus for ventilating; appararatus for cooking, drying and heating for use with food; apparatus for lighting in water supply; apparatus for water supply and sanitary purposes

Class 32:Beers, waters including mineral water, aerated water and ionized water, other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages

Trade Mark:  ENAGIC                  (“the Trade Mark”)

1. On 11 March 2014 Enagic Australia Pty Ltd, an Australian company, and Enagic Co., Ltd, a Japanese company (“the Removal Applicants”), jointly filed an application based on sections 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Trade Mark from the Register for all of the goods it covers (“the Removal Goods”). From their written submissions filed in the week before the matter was heard it was apparent that the Removal Applicants would not be pressing the ground based on s 92(4)(a), a matter their attorney confirmed at the hearing itself.

2. In the case of the s 92(4)(b) ground, the allegation made is that the Trade Mark was not used in good faith in relation to any of the Removal Goods during the three year period ending on 11 February 2014 (“the Relevant Period”).

3. On 20 May 2014 the Opponent filed a Notice of Intention to Oppose removal, followed by a Statement of Grounds and Particulars (“SGP”) on 20 June 2014.  The SGP summarises the Opponent’s case as follows:

   In about 2008 [The Opponent] was propositioned by overseas manufacturers to distribute a range of packaging machinery and also apparatus equipment for treatment of water and air and later received some samples from the manufacturers carrying a model called “ENAGIC”.  [The Opponent] conducted a pilot marketing program via its distributors and export agents for the promotion and sales of these and other related goods and adopted the name “ENAGIC” from that time.  Prior to about 10 January 2009 [The Opponent] checked to confirm that there was no trade mark registered as “ENAGIC” in Australia and went on to apply to register for the goods in classes 11 and 32 which later became classes 9 11 and 32.  [The Opponent] authored a distinctive logo and slogans to promote the trade mark as a brand name for the intended goods and services [sic].

   In good faith [The Opponent] has used the trade mark in Australia and overseas as well as authorized the use of the trade mark in Australia and overseas.  The uses entail the packaging, manufacturing, promotion and sale of the goods and services [sic].

   In regard to Sections 92(4)(a) and 92(4)(b) of the Trade Mark Act 1995 [The Opponent] opposes to the Application for Removal and objects to any suggestions that the registered trade mark has not been used in Australia or used in good faith [sic]. It is noted that the Applicants for Removal incorporated a company in Australia some 13 months after the trade mark registration and have not sought authority, nor has any such authority been granted to use the registered trade mark as their business name or their various attempted registrations of the same trade mark in Australia.

4. The Removal Applicants filed a Notice of Intention to Defend on 18 July 2014.

5. The parties then filed their evidence, which is described in detail below.

6. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 24 February 2016.  Shirley Penson, Director of the Opponent, appeared on its behalf.  Ms Penson’s oral submissions were supplemented by written submissions emailed to the Removal Applicants’ representatives and to me on 10 February 2016 in accordance with my earlier directions.

7. Danielle Jepson of Fisher Adams Kelly Callinans, accompanied by Kellie Jukkola of the same firm, appeared for the Removal Applicants by video link from Brisbane.  Also in attendance via telephone from California as an observer was Linda Choi, a representative of the Removal Applicants’ related company in the United States.  Ms Jepson’s oral submissions were supplemented by written submissions emailed to the Opponent and to me on 17 February 2016 in accordance with my directions.

The Evidence

1. For their evidence, the parties rely on the following Declarations:[1]

Evidence in Support

▪ Shirley Penson made 24 October 2014, with Exhibits HA-1 to HA-3 (“Penson 1”)

Evidence in Answer

▪ Danielle Belinda Jepson made 3 July 2014, with Exhibit A (“Jepson 1”)

[1] Made pursuant to the Act and reg. 21.6 of the Trade Mark Regulations 1995.

Evidence in Reply

▪ Shirley Penson made 2 June 2015, with Exhibit HA-1 consisting of Tabs A to N (“Penson 2”)

1. I note that Tab D to Exhibit HA-1 to Penson 2 is a copy of a Statutory Declaration by Danielle Belinda Jepson made on 20 February 2013 with copies of three of its original Exhibits, being Exhibits DBJ-10, DBJ-11 and DBJ-12 (“Jepson 0”).

2. I likewise note that Tab E to Exhibit HA-1 to Penson 2 is a copy of a Declaration by Shirley Penson made on 15 April 2013, with copies of its Exhibits SP1 and SP2 (“Penson 0”).

3. Both Jepson 0 and Penson 0 were originally filed with IP Australia in connection with an unsuccessful opposition by the Removal Applicant to registration of the Opponent’s then application (now registration) 1280502 KANGEN (“the KANGEN Opposition”).

4. It is also necessary to mention a further Declaration, made by Shirley Penson on 22 February 2016, with Exhibit HA-SP (“Penson 3”).  Penson 3 was apparently filed via IP Australia’s online evidence portal on the afternoon of 23 February, being the day before the matter was scheduled to be heard, and first came to my attention late that afternoon as an attachment to an email Ms Penson sent me that day (with copy to the Removal Applicants’ attorneys).  The email stated:

   Dear Mr Kirov,

   Pleaes [sic] be informed that I have taken liberty to file the Opponent’s Further Evidence, by way of Declaration of Shirley Penson dated 22 February 2016, filed by E-Services and will be uploaded to Objective Connect momentarily.  I have also attached a copy herewith for reference, along with my List of Authorities for the hearing.

   My reasons for the filing is [sic] explained in the Declaration.

   In light of the lateness, I did not seek permission prior to filing, for which I apologise.

   I confirm that the Removal Attorney’s has been copied in this email [sic].

   Kind regards,

   Shirley Penson

5. I note that the sole “reason” for the late filing of Penson 3 given in the Declaration itself was as follows:

   4. I could not provide this Declaration earlier because I was awaiting certain information from overseas, which came to hand only very recently.  I feel compelled to submit this Further Evidence, which I believe would place clarity and the deserving weight on the good faith Use and any favourable discretion to keeping the register without changes.

The admissibility of Penson 3

1. Following Ms Penson’s above-quoted email on the eve of the hearing the Removal Applicants’ attorney, Ms Jepson, emailed me (with copy to Ms Penson) in the following terms:

   We understand that you are in a Hearing today and therefore, send this email to advise of our obvious objection to the Removal Opponent’s submission of further evidence today.  We are not certain if Ms Penson is aware that further evidence in no longer admissible post Raising the Bar Amendments however, we seek confirmation of if you intend to consider this documentation.

   If you would prefer to address this issue in the Hearing tomorrow morning, please let us know.

2. I advised the parties via email later that day that I would hear their submissions as to the admissibility of Penson 3 at the commencement of the hearing and this is the matter to which I now turn.

3. Notwithstanding the Removal Application had been filed some two years before, Ms Penson’s stated reason at the hearing for not preparing and filing Penson 3 earlier added little to the reason proffered in the Declaration itself, namely that she “was awaiting certain information from overseas, which came to hand only very recently.”  In particular, she said that she had had “a recent conversation with a person travelling in China”, a representative of a company referred to in the Opponent’s evidence as “Hung Fung Trading Co. Hong Kong” (“Hung Fung”), which appears from the evidence to be the sole party to which the Opponent claims to have sold any of the Removal Goods during the Relevant Period.  The claimed significance of this apparently serendipitous conversation is explained in Penson 3 as follows:

   7. I have recently communicated with [Hung Fung] and received re­ affirmation that they have continuously acted as the export distributor/selling agent for the Owner/Opponent in Asia and that their position has progressed but remained the same in essence as it was in April 2013 when they provided the signed statement -see Evidence dated 2 June 2015 at page 31 - that they have indeed at all relevant time promoted, sold and distributed the KANGEN and ENAGIC goods as supplied and sold by the Owner/Opponent to them or their end customers.

4. For its part, the “Evidence dated 2 June 2015 at page 31” is part of an Exhibit to Penson 2 and is reproduced below:

1. As Ms Jepson pointed out at the hearing in response this Exhibit is problematic for several reasons, but is in any event not on the face of it of significant relevance to the removal proceedings since not only is it undated, it does not identify what actual (OEM) “ENAGIC products” may have been “test market[ed] … as sampled by the Chinese maker.”

2. It is convenient also to highlight in passing that one of the many documents exhibited with Penson 2 is as mentioned earlier a copy of Penson 0, a declaration dated 15 April 2013, the original of which was filed out of time by the Opponent (then applicant) as “Further Evidence in Answer” in the KANGEN Opposition.  Penson 0 suggests that the difficulty the Opponent has apparently had over the last two years in making contact with Hung Fung, (which I understand from the evidence to have been the Opponent’s sole customer during the Relevant Period for both the Removal Goods and for goods bearing the KANGEN trade mark), has been a problem for some considerable time.  In this regard the evidence period in the KANGEN Opposition commenced on 15 December 2010, yet Penson 0, in similar vein to Penson 3, states that as at 15 April 2013:

   26. I say that some of the Further Evidence in this Declaration and the attached Exhibits could not have been arranged earlier due to the overseas distributor’s absence on business in China…

3. Returning to Penson 3 itself, the Declaration does not otherwise provide any information that I consider relevant to the present removal application.  For this reason alone it would effectively be of no consequence whether I were to admit it or not and thus neither reg. 21.15(4) nor reg. 21.19 appears to be relevant in this case.  That said, I do not accept that the Opponent has satisfactorily explained why information about its claimed distributor or for that matter, any of the “further evidence” addressed in Penson 3, such as discussion of various websites and Google^® searches and (while not at all relevant to the matter) apparent efforts to impugn the Removal Applicants’ “standing” in the proceedings, could not have been included in its original evidence in support in any event.

4. I would only add that although the Registrar has some latitude as to what matters she may take into account in reaching decisions (provided procedural fairness is accorded to the parties),[2] as from 15 April 2013, as Ms Jepson noted, reg. 9.18 of the Trade Marks Regulations 1995 (“the Regulations”) now significantly limits the Registrar’s discretion to allow extensions of time to file evidence.  In the absence of “exceptional circumstances” (not applicable in this case), a party must now satisfy the Registrar that it has “made all reasonable efforts to comply with all relevant filing requirements” and that its non-compliance was “despite acting promptly and diligently at all times.”  As mentioned, in this case refusing to admit Penson 3 is of no particular consequence since the Declaration does not in fact contain any information that would be relevant to my eventual decision in the removal application.  However as a formal matter I confirm that I am not satisfied the Opponent has met the requirements underpinning regs. 9.18, 21.15(4) or 21.19 and that I accordingly refuse admission of Penson 3.

   [2] In particular through regulations 21.15(4) and 21.19 of the Trade Marks Regulations 1995.

5. I therefore now turn to a consideration of the s 92(4)(b) issue based solely on the properly filed evidence identified in paragraph 9 above.

The Law

1. Insofar as relevant to this matter, section 92 of the Act is reproduced below:

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.

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) …

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1:  For file and month see section 6.

Note 2:  If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.

(5) …

1. 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 Trade Mark was filed on 10 January 2009 and the application for removal was filed on 11 March 2014. In this regard I note an apparent misunderstanding in the Opponent’s submissions, which state:

   It is questionable if there were the five year period which would necessarily be calculated from 11 February 2009 to 11 February 2014 (one month before Non Use application was filed), whereas based on the ATMOSS records, the mark was registered ie entered in the register on 19 November 2010 only.

2. In fact, s 72(1) of the Act confirms that for a registration such as the one in suit here (not being one which claims priority based on an earlier filed overseas application):

   … the registration … is taken to have had effect from (and including) the filing date in respect of the application for registration.

3. Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Trade Mark, or the Trade Mark “with additions or alterations not substantially affecting its identity,” was used in good faith in relation to the Removal Goods during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is on the balance of probabilities.[3]

Discussion

Section 92(4)(b)

[3] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015) at [132]-[133] affirming Gyles J’s approach.

Actual use

1. As mentioned, the Opponent’s evidence is contained in Penson 1 and Penson 2.  According to the records of the Australian Securities and Investments Commission (“ASIC”) exhibited with, (and effectively constituting the entire substance of), Jepson 1, Ms Penson was the Opponent’s sole Director and shareholder, as well as its Company Secretary, throughout the Relevant Period.  Indeed, this was the case from the Opponent’s incorporation in 2007 until (at least) 4 March 2015 when the exhibited ASIC records were obtained.  One would accordingly expect Ms Penson to have comprehensive knowledge of the Opponent’s activities during the Relevant Period and to have unrestricted access to, as she puts it in her Declarations, the Opponent’s “information, documents and records.”

2. Bearing this in mind I believe there is particular force in Ms Jepson’s submitted summary and criticisms set out below of the evidence contained in Penson 1 and 2, with which I essentially agree:

   Penson 1 is a two-page declaration plus twelve pages of annexures.  Neither the content of the statutory declaration [sic],[4] nor the documents annexed to it, disclose any documented use of the Trade Mark in the Relevant Period.

   The Removal Applicant filed its evidence in answer on 4 March 2015.  It consists of a statutory declaration [sic] made by Ms Danielle Jepson, trade mark attorney for the Removal Applicants, made on 4 March 2015 (Jepson).  Ms Jepson’s declaration consists of two personal name searches and one company search.

   The Removal Opponent filed further evidence, said to be in reply, on 12 June 2015.  This additional evidence consists of a further statutory declaration [sic] made by Ms Penson on 2 June 2015 (Penson 2).  The delegate ought not admit this further evidence, or should place little weight on it, because it is not in reply, is irrelevant and does not assist the removal opponent’s case.

   [4] Penson 1, Jepson and Penson 2 are not Statutory Declarations, but as mentioned earlier were Declarations made pursuant to the Act and reg. 21.6 of the Regulations.

3. I believe, moreover, that Ms Jepson is right to point out that most of what is contained in Penson 2 could not reasonably be described as evidence in reply.  As she put it:

   The evidence in Penson 2 is not in reply.  It is more than 100 pages of wholly new evidence in chief.  The Trade Marks Office Manual of Practice and Procedure provides:

   1.3 Evidence in reply

   In the last phase of the evidence process the opponent has an opportunity to file evidence in reply to the evidence in answer.  By definition such evidence must be limited to issues raised in the evidence in answer.

   While the rules of evidence do not apply to opposition proceedings, and the delegate may take into account any available evidence he or she considers relevant, (reg. 21.15(4)), it is unfair to permit this to extend to voluminous wholly new evidence filed in reply.

1. That said, amongst the more than 100 pages of documentation exhibited with Penson 1 and Penson 2, as Ms Jepson acknowledged, there is a sole invoice dated during the Relevant Period.  This is located within “Tab I” of Exhibit HA-1 to Penson 2 and is reproduced below (“the Invoice”):

2. Citing Drummond J in Wooly Bull Enterprises Pty Ltd v Reynolds,[5] Ms Penson submitted the Invoice was evidence of a sale under the Trade Mark during the Relevant Period and that a single sale only should be sufficient to refute the allegation of non-use.  She did not however say why evidence corroborating this particular sale, or evidence of other sales during the Relevant Period if any, was not included in Penson 1 or 2 (or for that matter in Penson 3).

   [5] (2001) 51 IPR 149 at [13]-[40].

3. While recognizing the validity of Ms Jepson’s criticisms that Penson 2 does not constitute evidence in reply as that term is properly understood, I nevertheless confirm I will on this occasion take the Declaration (and the Invoice reproduced above) into account in deciding the matter.  As will be seen, however, neither the Invoice, nor Penson 2 more broadly, are in any event sufficient to satisfy me that the Trade Mark has been used in Australia in relation to the Removal Goods during the Relevant Period.

4. Again, I am in broad agreement with Ms Jepson’s submissions in relation to the Invoice:

   The [Invoice] is made out to a company in Hong Kong, China.  It is for a single “water purification system” and a “beverage dispenser”.  It is annotated “SHIP TO: Hong Kong” and the total price is expressed as “C&F HONGKONG A$3,861.00”.  It is well known that C&F on an export invoice is an abbreviation for “cost and freight”.  This means that the price on the invoice includes the cost of sending the goods to Hong Kong.

   The invoice is also annotated:

   “Payment: As arranged

   Shipment: As arranged, direct from factory”

   The Opponent has provided no further evidence as to the details of payment or shipment of the goods.  There is no evidence as to how [the Invoice] was provided to the customer.  Presumably it was provided to the customer in Hong Kong at the time of delivery or beforehand or sometime afterwards.  In any event, it is likely to have been delivered in a sealed envelope, or sent by facsimile or email, which was not opened until arrival in Hong Kong.  This does not constitute use of the mark in Australia.

   The Opponent also has provided no explanation as to the nature of the goods provided under [the Invoice].  The Invoice appears to relate to the sale of an ozone- based water purifier with accompanying dispenser – although the nature of the dispenser is unclear.  The “water purification system” would appear to fall within part of the Class 9 Registered Goods but not within classes 11 or 32.  The “beverage dispenser” does not appear to fall within the Registered Goods.  There is no evidence showing use of the Trade Mark in relation to the remainder of the Registered Goods.

   The Opponent has not provided any evidence as to where the goods described in the Invoice were shipped from.  Although the Invoice is from an Australian address, page 31 of the Annexures to Penson 2 and paragraph 6 of Penson 1 appear to indicate that the Opponent’s ENAGIC products are made in China.  Given that the Invoice is annotated “Shipment: As arranged, direct from factory”, it would appear that the goods were shipped to the Hung Fung Trading Company in Hong Kong directly from the Chinese factory.

   Use of a mark on an invoice will not amount to use “as a trade mark” unless it is use “in the course of trade”.  If an invoice is simply sent after the contract has been completed, this does not amount to use in the course of trade.  (Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [165]-[170] per Kenny J).

   While a single bona fide use of a trade mark can be sufficient to defeat an application for removal for non-use, such a use must amount to “overwhelmingly convincing proof” (Nodoz Trade Mark (1962) RPC 1 per Wilberforce J) of the Opponent’s use of its mark, as a trade mark, in the course of trade, in Australia, in relation to the Registered Goods.

   The [Invoice] does not appear to be a use of the Trade Mark in Australia or a use in the course of trade in the required sense.

   The onus is upon the Opponent to demonstrate use of its mark.  This ambiguous instance of single use, which appears, on the balance of probabilities, to be not use in Australia, falls far short of the “overwhelmingly convincing proof” required by Lord Wilberforce in Re Nodoz.  (Nodoz Trade Mark (1962) RPC 1)

   The evidence does not otherwise support the Opponent’s contention that it has used the Trade Mark in relation to the Registered Goods in Australia in the Relevant Period. There is not another single instance of use demonstrated by the evidence.  There is no evidence of advertising or sales revenue.  There is no independent evidence from any customer.  There is not a single invoice directed to an Australian customer.  There is no evidence from a supplier or industry body.  Given that the Removal Opponent has been the registered owner of the Trade Mark for more than 7 years, this paucity of evidence of use is telling.

5. As regards claimed use for goods in Class 32, Ms Penson could point to no evidence before me, but did submit at the hearing that:

   The range of drinks products (described as energy drinks, enhanced or flavoured water, alkaline water etc) are labelled with the brand logo and badge of origin (Australia) in prominent display on the bottles, the goods are packaged in Australia and are available for sale directly to Australian consumers via online sales channels, see >

   The relevant products shown on the website are reproduced below:

• enagiC ® Energy Punch 600ml            

enagiC® is Australia's leading enhanced water made from ultra purified water, no artifical colours or sweeteners, a liberal dose of natural fruit flavours and essential nutrients.   This product is sold 20 bottles per pack, with a minimum order of 3 packs.

$74.20
Out of stock

• enagiC ® Ice Berries 600ml                   

enagiC® is Australia's leading enhanced water made from ultra purified water, no artifical colours or sweeteners, a liberal dose of natural fruit flavours and essential nutrients.   This product is sold 20 bottles per pack, with a minimum order of 3 packs.

$74.20
Available

• enagiC ® Sunburst Orange 600ml       

enagiC® is Australia's leading enhanced water made from ultra purified water, no artifical colours or sweeteners, a liberal dose of natural fruit flavours and essential nutrients.   This product is sold 20 bottles per pack, with a minimum order of 3 packs.

$74.20
Out of stock

• enagiC ® Tropical Lime 600ml            

enagiC® is Australia's leading enhanced water made from ultra purified water, no artifical colours or sweeteners, a liberal dose of natural fruit flavours and essential nutrients.   This product is sold 20 bottles per pack, with a minimum order of 3 packs.

$74.20
Out of stock

1. I must however disregard this claimed internet use because I am not satisfied it took place before the end of the Relevant Period.  In this regard there is no evidence before me as to when the Opponent commenced use of the Trade Mark on the internet and I note that enquiries through the website <archive.org>[6] suggest that the trade mark ENAGIC was first mentioned on the Opponent’s website in or about February 2016.

   [6] Also known as “the Wayback Machine”, this website is a digital archive of the World Wide Web and other information on the Internet created by the Internet Archive, a non-profit organization, based in San Francisco, California.  It contains over 373 billion web pages saved at various time intervals and is searchable via the relevant URL of interest.

2. That said, the internet use shown above does illustrate another difficulty with the Opponent’s claimed use that was highlighted by Ms Jepson in her submissions on behalf of the Removal Applicants.  While use of the Trade Mark as registered is not claimed by Ms Penson, Ms Jepson questioned whether any of the Opponent’s claimed use was use of “the trade mark with additions or alterations not substantially affecting its identity” as required by s 100(3)(a). In this regard Penson 1 states:

   After filing the trade mark application, the Opponent caused to invent a distinctive logo to display the mark in an ultra stylised font in bright orange colour, for the promotion and branding functions of the applied goods and services of the Registered Mark.  In line with the logo branding, the text form of the Registered Mark also became known as “enagi-C” and “enagiC” with an aural emphasis on the alphabet C.  Enclosed is a copy of the initial conceptual design and the finished design adopted as the logo of the Registered Mark, which has been in use to date.

3. In response, Ms Jepson submitted that:

   The Removal Opponent claims to have used the following marks, which Ms Penson describes as “a distinctive logo to display the mark in an ultra stylised font in bright orange colour…” It claims to have used this mark “to date” but does not provide any examples of such use [other than the recent use on its website discussed above].

1. I agree with Ms Jepson that this stylised version of the Trade Mark differs in material particulars from the Trade Mark as registered.  It follows that even if I was satisfied the stylised mark had been used in the course of trade during the Relevant Period, this would not be sufficient to defeat the removal application in any event.  It may in some circumstances nevertheless be a pertinent factor in the exercise of the Registrar’s discretion.

2. To conclude, I am not satisfied based on the evidence before me that the Opponent used the Trade Mark in the course of trade in Australia during the Relevant Period for the Removal Goods. I accordingly find that the s 92(4)(b) ground for removal is established.

Obstacles to Use

1. For the sake of completeness I note the Opponent has not provided evidence of any particular circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for any of the Removal Goods. I accordingly find no case under s 100(3)(c) of the Act has been established.

The Registrar’s Discretion

1. I have found that the ground raised pursuant to s 92(4)(b) has been established. In such circumstances s 101(1) gives the Registrar the discretion to remove the Trade Mark “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.

2. As Bennett J explained in Pioneer Computers Australia Pty Ltd v Pioneer KK:[7]

   [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;
   

   [7] (2009) 80 IPR 38.

   •  the registered proprietors were not aware of the applicant’s sales under the mark.

3. While it need not show “exceptional circumstances” exist, an opponent must nevertheless satisfy the tribunal that it is reasonable that the Registrar’s discretion be invoked.  As Yates J put it in Optical 88 Limited v Optical 88 Pty Limited (No. 2):[8]

   However, as s 101(3) makes clear, the court (or the registrar, as the case might be) may only decide that the trade mark should not be removed from the register “if satisfied that it is reasonable to do so”.  This requires, in my view, the court (or the registrar) to be positively satisfied of that condition.  In my view it is the opponent for removal who bears the burden of persuasion on that issue.

   [8] (2010) 89 IPR 457 at [273].

4. In the present matter the Opponent has not satisfied me that any facts or circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in its favour.  I am not, on balance, satisfied on the evidence before me that the Trade Mark was used to any significant degree in relation to the Removal Goods, whether before, during or after the Relevant Period and the Opponent accordingly does not appear to be in a position to claim the mark has garnered any significant reputation in Australia.  In summary, this is not a case which I believe warrants exercise of the Registrar’s discretion in the Opponent’s favour pursuant to s 101(3) and I decline to do so.

Decision

1. The Opponent has not satisfied me that it used the Trade Mark in the course of trade for the Removal Goods during the Relevant Period, nor that there were any circumstances which were an obstacle to use.  Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion not to remove the Trade Mark in respect of all of the Removal Goods.  I accordingly direct that registration 1280503 be removed from the Register one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

1. In the event that the opposition was unsuccessful Ms Jepson sought an award of costs on the Removal Applicants’ behalf. In the circumstances the Removal Applicants are so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
2 May 2016