HS TM, LLC v Schein Orthopadie-Service KG

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by HS TM, LLC to applications by Schein Orthopadie-Service KG to (partially) remove trade mark registrations 562338 (5) & 562340 (10) HENRY SCHEIN, INC. owned by HS TM, LLC

Delegate:

Michael Kirov

Representation:

Opponent: Sam Hallahan of Corrs Chambers Westgarth, assisted by Tatiana Stein of the same firm

Applicant: Relied on written submissions prepared by Phillips Ormonde Fitzpatrick

Decision:

2016 ATMO 63

Oppositions pursuant to s 96 of the Trade Marks Act 1995: s 92(4)(b) considered - use shown for a broad range of goods and s 92(4)(b) ground only partially established. Exercise of discretion in Opponent’s favour for the remaining goods.

Background

HS TM, LLC (“the Opponent”) is the registered owner of trade mark registrations 562338 and 562340 (“the Registrations”), relevant details of which are as follows:
Registration Number:                   562338
Filing Date:  27 August 1991
Goods:  Class 5: Pharmaceutical preparations, namely, analgesics, anaesthetics, antacids, antibiotics, antihistamines, cathartics, depressants, expectorants, hormones and stimulants; external and topical preparations and dermatological preparations, namely, acne cleansers and creams, anti-bacterial ointments, antiseptic cleansers, eardrops and moisturizing creams; opthalmic preparations, namely eyedrops and solutions used in connection with contact lenses; veterinary preparations for the treatment of animals, coughing, motion sickness, vitamin and mineral deficiencies and worm infections for pets; dental preparations, namely, adhesives, alginates, alloys, anaesthetics, cements, germicides and sealants; and all other goods included in this class
Trade Mark:  HENRY SCHEIN, INC.
Endorsement:  Registration gives no right to the exclusive use of the word HENRY. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.
Registration Number:                   562340
Filing Date:  Same as 562338
Goods:  Class 10: Medical, veterinary, podiatric and dental apparatus and accessories, included in this class; dentists chairs, dental care units for association with dentists chairs comprising apparatus and accessories for servicing the patient in the chair including the basin, the tray, drills, drill supports and an ancillary equipment; dental curing lights for heating and drying non-metal based dental plates, bridges and teeth fillers; dental hand pieces; veterinary, dental, podiatric and medical instruments; vibrators and wax pots for heating dental waxes; syringes; surgical gloves, masks included in this class and gowns included in this class; dental, podiatric and medical instruments including amalgam carriers, burnishers, bone chisels, curettes, excavators, explorers, forceps, hemostats, knives, mallets, needle holders, probes, scales, scissors included in this class and sutures; and all other goods included in this class
Trade Mark:  Same as 562338
Endorsement:  Same as 562338
For convenience I will hereafter refer to the trade mark subject of the Registrations collectively as “the Trade Mark”.
On 20 February 2013 Schein Orthopadie-Service KG (“the Removal Applicant”), filed applications based on s 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking partial removal of the Registrations from the Register in relation to the following goods: (“the Removal Goods”).
562338 (5): “and all other goods included in this class”
562340 (10): “Medical apparatus and accessories included in this class” and “and all other goods included in this class”.
The allegation made is that the Trade Mark was not used in good faith in relation to the Removal Goods during the three year period ending on 20 January 2013 (“the Relevant Period”).
On 28 May 2013 the Opponent filed a joint Notice of Intention to Oppose removal, followed by individual, essentially identical, Statements of Grounds and Particulars (“SGPs”) on 26 June 2013. The SGPs summarise the Opponent’s case as follows:
1. The Opponent has used the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, in Australia in good faith, at least during the period from 20 January 2010 to 20 January 2013, in relation to the goods in respect of which removal is sought.
PARTICULARS
Halas Dental Pty Ltd, a related company of the Opponent, itself a related company of Henry Schein, Inc, supplies in Australia, and has supplied during the relevant period, under the HENRY SCHEIN mark, a range of pharmaceutical and dental products (562338)/medical and dental apparatus (562340), and related products, under the control of the Opponent, including as described on the website at In the alternative, the Registrar should exercise his or her discretion pursuant to section 101(3) of the Trade Marks Act 1995 (Cth) not to remove the mark in respect of all or any of the goods for which removal is sought by the Applicant.
PARTICULARS
(a) The Opponent repeats the particulars to paragraph 1above.
(b) The Opponent, through itself and/or its related companies, carries on business in many countries around the world, and has done so for many decades, supplying goods and services of various kinds under the HENRY SCHEIN mark, including goods and services similar or closely related to the goods for which removal is sought, including as described on the website at >
The Removal Applicant filed Notices of Intention to Defend on 11 July 2013.
The sole evidence filed in the matter is the Opponent’s evidence in support, being a declaration[1] by Michael S. Ettinger made on 4 November 2014, with Exhibits XX-1 to XX-16 (“Ettinger”). Mr Ettinger is Senior Vice President and Secretary of the Opponent and I will discuss his evidence in more detail below.
[1] Made pursuant to the Act and reg. 21.6 of the Trade Mark Regulations 1995.
I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 21 April 2016. Sam Hallahan of Corrs Chambers Westgarth, assisted by Tatiana Stein of the same firm, appeared for the Opponent. Mr Hallahan’s oral submissions were supplemented by written submissions emailed to the Removal Applicant’s representatives and to me on 7 April 2016.
The Removal Applicant relied on written submissions only, these having been prepared by its attorneys Phillips Ormonde Fitzpatrick and emailed to the Opponent and to me on 12 April 2016 (“the Removal Applicant’s submissions”).
The Evidence
As mentioned, Michael Ettinger is Senior Vice President and Secretary of the Opponent. He firstly notes that:
3. …The Opponent uses its HENRY SCHEIN mark in various forms, including:
(a) HENRY SCHEIN, INC.
(b) HENRY SCHEIN
(c)
In his declaration Mr Ettinger refers to all these variants collectively as either “the HENRY SCHEIN mark” or “the Henry Schein brand” without apparent distinction. Where necessary I will hereafter refer to the three marks specifically identified above as (a) “the Trade Mark”, (b) “the Short Word Mark” and (c) “the Word & Device Mark” respectively. I note in passing that whether or not the use shown in Ettinger constitutes use of the Trade Mark (as registered), or its use “with additions or alterations not substantially affecting its identity”, was a matter raised in the Removal Applicant’s submissions and which I will address in the discussion below.
Referring to both the company Henry Schein, Inc. and/or its predecessors in business collectively as “the Company” (as will I hereafter), Mr Ettinger explains that:
6. The Opponent is an indirect, wholly-owned subsidiary of Henry Schein, Inc., and was formed to be the registered owner of the Henry Schein brand and trade marks in all its forms. Each manager of [the] Opponent is an employee of the Company. The Opponent permits use of its trade and service marks by Henry Schein, Inc. and its related entities.
I mention that whether the Opponent’s claimed use of the Trade Mark in Australia during the Relevant Period was “authorised use” as contemplated by s 8 of the Act was also a matter raised in the Removal Applicant’s submissions which I will address in the discussion which follows.
Mr Ettinger otherwise declares, inter alia, that:
7. The Company is the world’s largest provider of health care products and services to office-based dental, animal health and medical practitioners. The Company also serves dental laboratories, government and institutional health care clinics, and other alternate care sites.
…
9. The Company was founded in 1932 by Henry and Esther Schein as a storefront pharmacy in Queens, New York and first introduced private-brand dental, medical and veterinary products in 1940. The Company has been operating continuously ever since, making the company now 82 years old.
10. The Company first began marketing and supplying products branded with the Henry Schein brand in approximately 1945 when the Company formed an alliance with Bel-Mar Laboratories, to manufacture injectable generic pharmaceuticals (including penicillin and streptomycin). Since then, the Company has continuously sold private-brand medical, dental and veterinary products under the Henry Schein brand, in addition to other goods. …
11. Currently, the Company is headquartered in Melville, New York and has more than 17,000 employees, approximately 3,400 of which are field sales consultants and 1,700 are telesales representatives.
12. The Company first began expanding internationally in 1990, with the operations first being set up overseas in the Netherlands, United Kingdom and Spain. Currently, the Company has operations or affiliates in 28 countries around the world including…Australia.
…
14. In 2013, the Company had more than 800,000 customers and shipped 130,000 cartons daily out of its 61 distribution centres. In the fiscal year ending 28 December 2013, the Company had approximately $9.6 billion in global net sales of which:
(a) 52.3% (or $5.0 billion) was in the dental sector;
(b) 27.2% (or $2.6 billion) was in the animal health sector;
(c) 17.2% (or $1.6 billion) was in the medical sector; and
(d) 3.3% (or $320 million) was sales relating to technology and valueadded services such as practice management software.
15. In relation to the supply of products to the dental industry:
(a) the Company is the number one dental supplier in…Australia…; and
(b) The Company’s active customers include…over 80% of Australian…dental practices.
16. In relation to the supply of products to the veterinary industry:
(a) the Company is the number one animal health supplier in…Australia…; and
(b) The Company’s active customers include…70% of veterinarians in Australia…
…
18. In 1995, the Company was listed on the NASDAQ marketplace (HSIC), raising $72.8 million in the initial public offering. In 2004, the Company debuted on the Fortune 500 list. In 2014, the Company was ranked:
(a) first in its industry on the FORTUNE World’s Most Admired Companies list;
(b) first in the FORTUNE sub-categories of social responsibility, global competitiveness, quality of management quality of products and services, and use of corporate assets; and
(c) number 292 in the FORTUNE 500 ranking of America’s largest companies.
…
22. The Company currently stocks over 96,000 products, of which approximately 52,000 are offered to the Company’s dental customers, approximately 41,000 to the Company’s medical customers and approximately 14,000 to the Company’s animal health customers. The Company has over 110,000 additional products as special order items.
Mr Ettinger then goes on to detail, in particular, the history and extent of the Company’s activities in the dental and animal health fields in Australia. As far as the dental field is concerned, he says that:
29. [The Company] acquired the Australian company, Regional Healthcare, in 1998.
30. In 2005, Henry Schein Regional Pty Ltd, as trustee for Henry Schein Regional Trust, acquired Halas Dental Limited from Australian Pharmaceutical Industries Limited. The Henry Schein Regional Trust is an indirect majority-owned subsidiary of the Company and now trades under the business name Henry Schein Halas in Australia. [The] Opponent permits Henry Schein Regional Trust (Henry Schein Halas) to use the trade marks the subject of the Opposition in Australia.
31. Henry Schein Halas is the largest supplier of dental goods and equipment in Australia with in excess of 350 employees.
32. Henry Schein Halas operates from five retail locations: Melbourne, Sydney, Brisbane, Adelaide and Perth. Its major distribution centres are located in Melbourne, Sydney, Perth and Brisbane. The distribution centres handle over 4000 parcels daily which amounts to several semi-trailer loads per day.
33. … Henry Schein Halas supplies products to over 80% of Australian…dental practices.
34. In 2012, Henry Schein Regional Pty Ltd./Henry Schein Halas had sales in Australia of AU$221,587,949 and in 2013 sales were AU$215,952,220.
…
36. Henry Schein Halas stocks over 50,000 product lines, many of which are branded with the Henry Schein brand.
As far as the animal health field is concerned, Mr Ettinger says that:
44. On December 31, 2010, the Company acquired Provet Holdings Limited (now Provet Holdings Pty Limited), the leader of animal health supply in Australasia. The trading company of Provet Holdings Pty Limited is Provet Pty Ltd (Provet) with all shares in Provet held by Provet Holdings Pty Limited. The ultimate holding company for both Provet [and Provet Holdings Pty Limited] is the Company. Provet informs customers that it is a Henry Schein company.
45. Similarly to paragraph 30 above, [the Opponent] permits Provet to use the trade marks the subject of the Opposition in Australia.
46. The Company, through Provet, currently has approximately 400 employees and has ten warehouses positioned across Australia…
47. …the Company supplies animal health products to over 70% of veterinarians in Australia…
…
51. As discussed at paragraphs 10 and 36 above, the Company sells products under the Henry Schein brand…
Finally, exhibited with Mr Ettinger’s declaration are more than 1,400 pages of supporting documentation said to show, inter alia, use of the Trade Mark in Australia during the Relevant Period.
The Law
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) …
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 1991.
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 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.[2]
[2] 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 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. Section 101 is set out in full at paragraph 48 below.
Discussion
Section 92(4)(b)
Authorised use
Before discussing the evidence of actual use of the Trade Mark in Australia contained in Ettinger it is convenient firstly to deal with the Removal Applicant’s submission that any such use may not in any event be relied on by the Opponent because it was not “authorised use” as required under the Act. Specifically, the Removal Applicant’s submission was that:
31. Paragraph 6 of the Ettinger Declaration states that the Opponent … “is an indirect, wholly owned subsidiary of Henry Schein Inc” and that “The Opponent permits use of its trade and service marks by Henry Schein, Inc and its related entities”.
32. Ss 7(3) of the Trade Marks Act 1995 provides that an authorised use of the trade mark by a person is taken, for the purposes of this Act, to be use of the trade mark by the owner of the trade mark.
33. Section 8 of the Trade Marks Act 1995 provides:
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
34. There is no authorised use.
35. The registered owner of the trade mark does not exercise financial control over Henry Schein Inc and its related entities.
36. The Opponent has not submitted in evidence any documentary proof such as a licence Agreement whereby it can demonstrate any quality control over use of the trade mark by Henry Schein Inc and its related entities. Thus, any use made is not an authorised use under the Act and cannot enure to the benefit of the Opponent.
37. The question of whether a user is [an] authorised user within the meaning of the Act is a legal question. It is a matter to be decided on the basis of evidence.
38. There is no evidence that any use of the trade marks by Henry Schein, Inc. or its unidentified related entities is under the control of the Opponent. Specifically, there is no evidence of quality control which would qualify under ss 8(3), financial control under ss 8(4) or any other control which might satisfy ss 8(5). It is stated in paragraph 6 of the Ettinger declaration that each manager of the Opponent is an employee of the company Henry Schein, Inc. An employee is hardly in a position to exercise control over the employer.

I must reject this submission. There is nothing unusual in a large company such as Henry Schein, Inc and/or its predecessors (that is “the Company” as defined earlier) incorporating a wholly owned subsidiary in order to hold its worldwide trade mark (or, for that matter, patent or other IP right) portfolio. It is a very common practice because, inter alia, it efficiently streamlines processes for the prosecution and renewal of properties in the portfolio and it avoids the need to record name changes, mergers or assignments around the world should the parent company restructure or change name.
That said, the essence of the Removal Applicant’s submission is effectively contained in paragraphs 36 and 38 reproduced above. I would firstly observe that there is no requirement under the Act that a licence agreement between the registered owner of a trade mark and an authorised user be in writing. As regards the alleged lack of evidence of quality control, in this case the registered owner (the Opponent) is a wholly owned subsidiary of the Company (the authorised user) and is thus under the control of the Company. Any quality control measures the Opponent might take could accordingly only be those considered, approved and adopted by the Company in the first place. Moreover given the Company has ultimate control, it is ultimately responsible for enforcing the relevant quality control measures in any event. I therefore think it fanciful to suggest use by or under the auspices of the Company was not use as contemplated by the Act merely because the Company had incorporated a wholly owned subsidiary to hold its trade mark portfolio. At all times the Company has effectively remained the beneficial owner of the Trade Mark and, indeed, could at any time have the Opponent assign its formal ownership.
I would just add that at the hearing Mr Hallahan drew my attention to the decision of the English Court of Appeal in Revlon Inc v Cripps & Lee Ltd[3] (“Revlon”) which addresses this issue in some detail and, as it was put in Television Food Network, GP v Food Channel Network Pty Ltd (No 2):[4]
… support[s] the proposition that a trade mark may be a “house mark” of a corporate group, and that members of a corporate group other than the registered proprietor may have implied authority to use it: see in particular Revlon at 106 per Buckley LJ and Templeman LJ at 114-115 and Polo Textile[5] at … IPR 257.
[3] [1980] FSR 85.
[4] (2009) 80 IPR 314, per Collier J at [80]. The decision was successfully appealed but not on this point.
[5] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 per Burchett J.
Mr Hallahan also referred me to TGI Friday’s of Minnesota Inc v TGI Friday’s Australia Pty Ltd[6] wherein Whitlam J said at [27]:
The effect of the use of a trade mark by someone other than the registered owner was considered in [Polo Textile] by Burchett J. His Honour accepted the idea that a trade mark may be used as a house mark for a group. There is, of course, no reason why the company in the group controlling the group’s trade marks should be the parent company and the users should be subsidiaries.[7]
[6] (1999) 48 IPR 65 at [24]-[27].
[7] For further discussion on this topic see the exposition in Shanahan’s Australian Law of Trade Marks and Passing Off, 4^th edition, ©2008, Lawbook Co., at [80.520].
To conclude, I am satisfied that the use of the Trade Mark shown in Ettinger was “authorised use” as required under the Act. I turn now to a consideration of that use.
Actual use
As a preliminary matter, it is necessary firstly to address two further general criticisms made in the Removal Applicant’s submissions of the evidence of use contained in Ettinger, namely that:
71. (1) The Opponent or more particularly, the company Henry Schein Inc. is a distributor of many goods on behalf of other manufacturers.
71. (2) Those goods branded by the company Henry Schein Inc. use marks which include substantial alterations to the identity of the HENRY SCHEIN, INC. trade mark, the subject of [the Registrations].
The first criticism refers to the fact that, as it is put in the SGPs, “Since [1945], the Company has continuously sold private-brand medical, dental and veterinary products under the Henry Schein brand, in addition to other goods…” In this regard the Removal Applicant’s submissions in essence argue that what use of the Trade Mark (or its close variants) is shown by Mr Ettinger is significantly diluted by the Company’s concurrent activities distributing third party products.
I agree with Mr Hallahan, however, that this is not a relevant consideration. If the evidence shows relevant use of the Trade Mark then that is all that matters, whether or not the Company also distributes the goods of other manufacturers. As he put it:
While the Opponent is a retailer and distributor on a worldwide basis of a very broad range of products manufactured by other traders under their own brands and trade marks, for the purposes of rebutting the allegations of non-use, the Opponent specifically relies on the advertising and sale in Australia of its own HENRY SCHEIN-branded products.
The second general criticism made by the Removal Applicant is on the face of it more significant. It is based on Mr Ettinger’s statement at [3] quoted in paragraph 10 above that the Opponent “uses its HENRY SCHEIN mark in various forms”, including what I earlier defined as “the Trade Mark”, “the Short Word Mark” and “the Word & Device Mark”. As it is put in the Removal Applicant’s submissions:
40. The [Word & Device Mark] referred to in paragraph [3] of the Ettinger Declaration includes additions and alterations which substantially affect the identity of the [Trade Mark].
41. The [Trade Mark] conveys the idea of a corporate entity. Such an idea is not conveyed by [the Word & Device Mark]. Further, the divided square positioned beside the word HENRY in the [Word & Device Mark] is an addition which substantially affects the identity of the [Trade Mark]. An amendment of the [Trade Mark] to [the Word & Device Mark] or vice-versa would certainly not be allowable under Subsection 65(2).
42. Use of the [Word & Device Mark] cannot be relied upon to demonstrate use of [the Trade Mark].
I note in passing that the Removal Applicant’s submissions do not similarly question whether the use of the Short Word Mark, (which is identical to the Trade Mark less the material “, INC.”) shown in various exhibits to the Ettinger declaration should be rejected for the same reason. To be clear on this issue, I confirm I agree with Mr Hallahan’s submissions reproduced below that the Short Word Mark is substantially identical to the Trade Mark, such that I may take use of the Short Word Mark as use of the Trade Mark:
9(b) …the omission of “INC” is an alteration that does not substantially affect the identity of the [T]rade [M]ark. Of the elements making up the [T]rade [M]ark, “HENRY SCHEIN” is clearly the distinctive element, and “INC” is instantly recognised as a common indicium of a particular form of corporate entity.
This is equivalent to the inclusion or omission of common indicia such as “ and “.com”, which does not substantially affect the identity of a trade mark: Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 at [155]-[156].
This view is also supported by the fact that omission of such elements does not affect the ability to rely on the use of one’s own name defence in s 122(1)(a)(i): see eg Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457 at [160]; Parker-Knoll Ltd v Knoll International Ltd [1962] RPC 265.
On the other hand, (and despite Mr Hallahan’s further submissions in similar vein in this context), I do agree with the Removal Applicant’s above quoted submission in relation to the Word & Device Mark and the Trade Mark. I thus agree that I may not take evidence of use of the Word & Device Mark as relevant in the context of s 100, because that use is of a mark which, to paraphrase s 100(3)(a), has “additions or alterations … substantially affecting [the Trade Mark’s] identity.” Such use of the Word & Device Mark (alone) as is shown in the Opponent’s evidence may nonetheless be a relevant factor in considering, if necessary, whether to exercise the Registrar’s discretion in the Opponent’s favour under s 101(3).
That said, based on my assessment of the evidence I believe Mr Hallahan is correct in saying:
9(c) …In any event, the Opponent is not aware of any relevant product in respect of which only the [Word & Device Mark] is used. For example, all of the Opponent’s HENRY SCHEIN-branded products are identified in the catalogues exhibited to Mr Ettinger’s declaration by the [Short Word Mark]. The Opponent’s products also bear the [Trade Mark].
In this regard, to take one example, Exhibit XX-8 to Ettinger “is a copy of the 2013 Henry Schein Halas Australian e-catalogue.” As Mr Ettinger says, this (908 page) catalogue “includes thousands of products for the dental, medical and animal health industries.” The Removal Applicant’s submissions are nevertheless very critical of the catalogue, claiming that:
47. Exhibit XX-8 does not show use of the [Trade Mark] but rather, [a] HENRY SCHEIN | HALAS EVERYTHING DENTAL (Logo) trade mark. This use cannot be relied upon to support use of the [Trade Mark].
48. Exhibit XX-8 does not support use of the [Trade Mark] in relation to all of the goods depicted in the catalogue. It may support use of the HENRY SCHEIN | HALAS EVERYTHING DENTAL (Logo) trade mark in respect of retail services or mail-order catalogue services as many of the goods are not the trade mark owner’s goods and are sold under brands owned by other persons.
It is true that the catalogue in question prominently displays the composite trade mark shown below, (referred to in the above-quoted submission as the “HENRY SCHEIN | HALAS EVERYTHING DENTAL (Logo) trade mark”), in the bottom right hand corner of every odd-numbered page and I agree that use of this composite mark may not be relied on as use of the Trade Mark as registered (although it may be relevant to exercise of the discretion under s 101(3)):
(“the HENRY SCHEIN HALAS Mark”)
However it is also true, as Mr Hallahan pointed out at the hearing, that in addition to featuring the HENRY SCHEIN HALAS Mark on some 450 of its pages, the catalogue also features many products bearing the Opponent’s branding in their own right. Indeed, as he highlighted, the Opponent’s products are uniquely presented in the catalogue against a cream background, so that they are readily distinguishable from the products of third parties. While the packaging for the Opponent’s goods pictured clearly shows the Word & Device Mark (only), each catalogue entry also prominently displays the Short Word Mark above the picture, entirely consistently with how the brand names are identified for the third party products also pictured in the catalogue. As I have said, I consider the Short Word Mark to be sufficiently similar to the Trade Mark for this use in Australia during the Relevant Period to be taken as use of the Trade Mark as registered.
I note that the same can be said for the 2010 Henry Schein Halas catalogue distributed in Australia by the Company’s local subsidiary Henry Schein Halas Pty Ltd and a copy of which forms Exhibit XX-9 to Ettinger. The Removal Applicant’s submissions are however correct in pointing out that the 2014 catalogues reproduced in Exhibits XX-14 and XX-15 were on the face of it distributed by the Company’s Australian subsidiary Provet Holdings Pty Limited after the Relevant Date.
There were several other criticisms levelled at the Opponent’s evidence in the Removal Applicant’s submissions, but I consider these to be of minor significance when the totality of the evidence is taken into account and they need not be further discussed here. In this regard Mr Hallahan was able to answer most of those criticisms, concerning such things as the date or provenance of exhibits, to my satisfaction at the hearing in any event.
Taking all the above-discussed matters into account, I am satisfied the evidence as a whole shows use of the Trade Mark (and/or of the substantially identical Short Word Mark) during the Relevant Period for a broad range of goods in Classes 5 and 10, being both for goods that are explicitly identified in the respective specifications of the registrations in question (as to which see paragraph 1 above), and, as Mr Hallahan itemized in some detail, for goods that are implicitly covered thanks to the catch-all words in the specifications “and all other goods included in this class.” Mr Hallahan was indeed forensic in establishing this, including a 12 page table annexed to his submissions in which he has identified each of some 133 relevantly branded products shown in the evidence, has indicated the place or places in the exhibits where the relevant example(s) of use can be found and has then indicated where within the Class Headings in Classes 5 or 10[8] each of those 133 products would be classified. At the hearing itself Mr Hallahan tendered a redacted three page table providing this information solely for the 45 products he identified as being implicitly covered by the current universal scope of the Registrations rather than being specifically mentioned in the specifications.
[8] I note that the Nice International Classification of Goods and Services 5^th edition ©WIPO 1987 (current in 1991) is the relevant guide in this case.
There are of course many more, arguably infinitely more, than 133 goods falling within Classes 5 and 10. In my view it would nevertheless be unreasonable and without obvious practical benefit to attempt to break those 133 goods down into ever smaller sub-categories and I accordingly think the broad descriptions used by Mr Hallahan in his submissions discussed below are appropriate in this case.
Dealing firstly with registration 562338 in Class 5, I accept that Mr Hallahan’s below submission represents a generally accurate assessment of the evidence and I acknowledge the Opponent’s concession as to those Class 5 goods for which use of the Trade Mark is not claimed:
15. From the annexed table, it can be seen that the Opponent has used the trade mark in relation to following types of class 5 goods:
(a) Pharmaceutical and veterinary preparations;
(b) Sanitary preparations for medical purposes;
(c) Plasters;
(d) Materials for dressings;
(e) Material for stopping teeth, dental wax;
(f) Disinfectants.
16. The only types of class 5 goods in relation to which the Opponent has not used the trade mark are: dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; preparations for destroying vermin; fungicides, herbicides. Accordingly, viewed as a strictly technical matter, the Opponent accepts that it has not used the trade mark in relation to all goods set out in class 5 in Schedule 1 to the Trade Mark Regulations. In the following section, the Opponent will set out the reasons why it is appropriate for the Registrar’s discretion under s 101(3) to be exercised in the Opponent’s favour to maintain the Class 5 Mark in its current form.
17. However, if the Registrar’s discretion is not to be exercised in the Opponent’s favour, it does not follow that “and all other goods in this class” should simply be removed from the Class 5 Mark with no other changes made to the specification.
18. When the specification to the Class 5 Mark was drafted 25 years ago, the Opponent relied in good faith on “and all other goods included in this class” as providing sufficient generality to cover all of the class 5 goods in which it then dealt and in which it intended to deal in the future. The breadth of the range of goods sold by the Opponent under or by reference to the trade mark shows that it has made good use of the breadth that those words provided for its trade mark registrations. This is consistent with the observation by Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38 (“Pioneer”) that “[t]he statement of goods should not be construed so narrowly that it fails to include goods clearly within the designated class that have not yet been developed” (at [103]).
19. Although such form of drafting specifications is no longer permitted (see Trade Mark Regulations, reg 4.6(2)), it was permitted and was common at the time the marks were registered. Specifications drafted in this manner have been maintained notwithstanding removal actions being taken against them: see eg Pioneer at [2]; General Mills, Inc v Maria Christofis and Nikitas Christofis [2013] ATMO 18 (“General Mills”).
As Mr Hallahan’s submissions effectively recognize, this concession of non-use for a broad swathe of Class 5 goods, (which he identified as “dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; preparations for destroying vermin; fungicides, herbicides”, hereafter “the Redundant Goods in Class 5”), creates something of a difficulty. On the one hand the Redundant Goods in Class 5, (each of which, itself being a sub-heading within Class 5, encompasses a broad range of goods in its own right), are only covered by registration 562338 by virtue of the words “and all other goods included in this class.” These are of course the very words subject of the relevant partial removal application. On the other hand, as Mr Hallahan’s presentation of the evidence has satisfied me, the Opponent has used the Trade Mark (and/or the Short Word Mark) in Australia during the Relevant Period for many other Class 5 goods which, like the Redundant Goods in Class 5, are only covered because of the words “and all other goods included in this class.”
Putting that difficulty to the side for the time being, my formal finding is necessarily that the Opponent has only partially discharged its onus under s 100 as far as registration 562338 in Class 5 is concerned. In such circumstances, as mentioned earlier, 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 that it is reasonable to do so”. I will return later in this decision to the various discretionary options available for dealing with registration 562338, but will firstly consider what the evidence shows in relation to use of the Trade Mark for goods covered by registration 562340 in Class 10.
Based on Mr Ettinger’s evidence Mr Hallahan’s submission in relation to registration 562340 was that:
23. From the annexed table, it can be seen that the Opponent has used the trade mark in relation to following types of class 10 goods:
(a) Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth;
(b) Orthopaedic articles;
(c) Suture materials.
24. These are all of the goods set out in class 10 in Schedule 1 to the Trade Mark Regulations (and also include “Medical apparatus and accessories included in this class”). There are, therefore, no grounds for removing any of the Removal Goods from the Class 10 Mark.
I believe this submission overstates the position somewhat, except in the case of “suture materials”, for which I am satisfied the evidence shows relevant use. As for “orthopaedic articles”, the sole, arguably relevant example identified by Mr Hallahan was the item described on page 14 of the catalogue forming Exhibit XX-16 to Ettinger as “Henry Schein Orthopaedic Casting Tape”.[9] Moreover, while the table annexed to his submissions identifies relevant use of the Trade Mark (and/or the Short Word Mark) for a significant number of Class 10 goods which I agree would fall within the general description “Surgical, medical, dental and veterinary apparatus and instruments”, I am on the other hand not satisfied the mark has been used in relation to “artificial limbs, eyes and teeth”. I will then refer hereafter to the goods embraced by the descriptions “artificial limbs, eyes and teeth; orthopaedic articles (other than orthopaedic casting tape)” as “the Redundant Goods in Class 10”.
[9] Mr Hallahan pointed to a similar product in the catalogue of its Australian subsidiary Provet Holdings Pty Ltd in Exhibit XX-14, but this 2014 catalogue was obviously produced after the Relevant Date.

As with registration 562338 in Class 5 then, my formal finding in the case of registration 562340 in Class 10 is that the Opponent has only partially discharged its onus under s 100. I accordingly turn now to the issue of how best the Registrar’s discretion under s 101 of the Act might be exercised in relation to both of the Registrations in order to determine the matter.
The Registrar’s Discretion
Section 101 is set out in full below:
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.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
As Bennett J explained in Pioneer Computers Australia Pty Ltd v Pioneer KK[10] (“Pioneer”), a case to which both parties referred in their submissions:
[10] (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.
The Removal Applicant’s submissions argue that:
17. The Registrar’s discretion should … not be exercised in favour of the removal applicant because the trade mark owner has not demonstrated use of the mark HENRY SCHEIN, INC. in Australia during the critical period. Further, there has been no use of the mark or any substantially identical mark under its control. The limited use made by the parent company of substantially different marks cannot be relied upon by the Opponent.
Specifically addressing the five factors set out by Falconer J in Hermes, the Removal Applicant’s submissions were that:
• it was conceded there had been no abandonment of the Trade Mark;
• the registered owner of the Trade Mark (the Opponent) had no residual reputation in it because any use shown was not authorised use;
• there had been no sales by the Opponent of goods for which removal was sought since the Relevant Period ended;
• “the Removal Applicant only has been aware of the [Registrations] since 5 December 2006 when provisional refusals were issued raising the marks as objections”;
• (subsumed within the previous submission).
As already foreshadowed, I disagree with the Removal Applicant that the Trade Mark would not currently enjoy a significant reputation in Australia, particularly amongst professionals in the dental and veterinary fields, or that ownership of the Registrations by a wholly owned subsidiary of the Company should prevent my taking that reputation into account when exercising the Registrar’s discretion. Moreover the pervasive use of the Word and Device Mark and/or of the HENRY SCHEIN HALAS Mark in Australia shown in the evidence, prominently featuring as they do the name of the Company, would on the face of it contribute to the reputation of that name as embodied in the Trade Mark itself.
Nor can I agree with the Removal Applicant’s claim that there have been no sales of (any of) the Removal Goods since the end of the Relevant Period on 20 January 2013, a claim simply not supported by the evidence. There is evidence of use of the Trade Mark (and/or the Short Word Mark) for Class 5 and Class 10 goods falling within the scope of the Removal Goods in, inter alia, the February 2014 and October 2014 catalogues reproduced in Exhibits XX-14 and XX-15 to Ettinger and I am well satisfied in light of the totality of Mr Ettinger’s evidence that significant sales of these and/or similar goods have been made, and continue to be made, to Australian consumers for some 25 years.
The last two factors mentioned by Falconer J in Hermes are not relevant to the present matter, there being no evidence before me as to whether or not the Removal Applicant has entered the Australian market. Moreover 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. In the present matter the only information before me which addresses the Removal Applicant’s own particular interest in partial removal of the Registrations is contained in its submission that:
15. The partial removal applications were filed by the Removal Applicant as [the Registrations] have been cited against its applications 1148318 SCHEIN and 1150884 SCHEIN ORTHOPADIE SERVICE (Logo) both of which cover inter-alia, a range of orthopaedic goods in class 10.
Somewhat surprisingly, the Removal Applicant’s applications 1148318 SCHEIN and 1150884 SCHEIN ORTHOPADIE SERVICE (Logo), both being International Registrations Designating Australia, were filed as long ago as 2006 and are still pending. This accounts for the Removal Applicant’s above quoted submission, or statement more correctly, that it has (only) been aware of the Registrations “since 5 December 2006 when provisional refusals were issued raising the marks as objections”. My understanding from its submission is that it has refrained from using the trade marks subject of its blocked applications in Australia at all up to now, and possibly pending the outcome of the current proceedings. In any event, as indicated, the interests of the Removal Applicant, to the limited extent that they are known to me, are not something I need take account of in determining how appropriately to exercise the Registrar’s discretion under s 101.
As both parties’ submissions concurred, 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[11](“ 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.
[11] (2012) 287 ALR 221.
The Removal Applicant’s submissions do rightly point out that the Opponent bears the relevant onus. In this regard I note the Full Court in Austin said at [44] that:
[44] 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…
In submitting that the discretion should be exercised generously from the Opponent’s point of view, Mr Hallahan firstly referred to s 101(4) of the Act, which confirms use for goods or services similar or closely related to the Removal Goods is a relevant consideration. In this regard he submitted:[12]
27. It is clear, as demonstrated above, that the Opponent uses the trade mark in respect of a broad range of class 5 and class 10 goods. It follows, therefore, that if the Hearing Officer is not satisfied that the Opponent has used the trade mark in relation to all of the Removal Goods, it will nevertheless have used the trade mark in relation to goods that are at least similar to [m]any of the Removal Goods in relation to which use may not have been demonstrated.
28. The Opponent has also made extensive use of the trade mark in relation to retail services that are closely related to the Removal Goods. As Mr Ettinger describes, and as demonstrated in the Exhibits to his declaration, the Opponent operates a very large retail business distributing a wide range of medical, dental and animal health products. The breadth of the range of products sold by the Opponent is demonstrated by the catalogues in Exhibits XX-8, XX-14 and XX-15 (comprising over 1000 pages, combined).
29. The Opponent’s retail business has a significant presence in Australia. The Opponent employs over 750 people in Australia, has retail locations in Melbourne, Sydney, Brisbane, Adelaide and Perth, and has major distribution centres in Melbourne, Sydney, Perth and Brisbane. The Opponent ships over 4000 parcels in Australia every day. Its annual sales in Australia are in excess of $200 million: Ettinger [29] to [34], [46]. The Opponent provides its retail services in relation to this very broad range of class 5 and class 10 goods to over 80% of dental practices, and over 70% of veterinarians, in Australia and New Zealand: Ettinger at [33], [47].
30. The Opponent makes extensive use of each of the trade marks set out in paragraph 8 above in respect of the retail services provided in [the] course of operating this retail business. The services provided in connection with retailing certain goods are services that are closely related to the types of goods sold: K-Mart Corp v Airline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149; Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143.
31. Accordingly, to the extent that the Hearing Officer considers that grounds for removal have been established, the matters set out in s 101(4) strongly support the Registrar’s discretion being exercised in the Opponent’s favour.
[12] Mr Hallahan’s references to “the Opponent” should perhaps more correctly be to “the Company” or “the Opponent and its related companies”, but I believe his point is otherwise well taken.
As far as the interests of the registered owner are concerned, Mr Hallahan highlighted the following three matters apparent from the evidence:
33. First, the trade mark is the same as the legal name of the registered owner’s parent company. The Opponent’s very large, worldwide business is conducted under this name and trade mark: see eg Exhibits XX-1, XX-2, XX-3, XX-4. That name reflects the name of the business’s founder, Mr Henry Schein (along with his wife Esther Schein), and the business has been operated under this name since 1940, and has manufactured its own private label products under this name since 1945: Ettinger [9] to [10].
34. Secondly, while the range of HENRY SCHEIN-branded products that the Opponent sells in Australia is very broad, and the range of other manufacturers’ products that it sells in Australia is even broader, the full range of class 5 and class 10 products that the Opponent sells worldwide is significantly broader again. This is demonstrated in Exhibit XX-5. The entire range of products sold by the Opponent totals over 96,000 regular products and 110,000 special order items: Ettinger at [22]. Therefore, even if there are any relevant class 5 or class 10 products in relation to which the Opponent has not used the trade mark in the relevant period in Australia, it is likely the Opponent already manufactures and/or sells that product in other markets, and may reasonably decide to do so in Australia in the future.
35. Thirdly, the Opponent has a significant reputation in Australia and around the world in the trade mark and other forms of the HENRY SCHEIN brand.
[Mr Hallahan then went on to outline in some detail why, based on the evidence, the Opponent was entitled to claim such reputation.]
36. Therefore, if any of the Removal Goods were to be removed from the Opponent’s registrations to an extent that may permit other traders to sell class 5 or class 10 products under or by reference to a trade mark that is substantially identical with or deceptively similar to the Opponent’s trade mark, that would likely cause damage to the Opponent’s reputation.
As regards the public interest, he said in addition:
37. The interest of the public is a relevant consideration to be taken into account when considering the exercise of discretion under s 101(3): Austin at [31].
38. The Opponent is not aware of any way in which the public interest is adversely affected by the registration of the trade mark for the Removal Goods. This is supported by the fact that the trade mark has been registered for the Removal Goods for 25 years without any challenge or complaint. While the [Removal] Applicant apparently takes issue with the registration of the trade marks for the Removal Goods, it has not filed any evidence which could support any argument that its personal interests or the interests of the public are affected by the registration of the trade mark for the Removal Goods.
39. Moreover, given the Opponent’s reputation in the trade mark (see paragraphs 33 to 35 above), removal of the trade mark in respect of the Removal Goods may be more likely to facilitate confusion and deception than if it were not removed: Société Anonyme des Eaux Minérales D’Evian v The Yoghurt Co Pty Ltd [2012] ATMO 53 at [62]; General Mills at [36] to [41].
Taking this all into account, the most pragmatic option available to me at first blush would I think be to leave the Registrations as they are, given the Opponent has demonstrated relevant use for a number of goods in Classes 5 and 10 which are only covered by the Registrations because of the words “and all other goods included in this class”, and notwithstanding this would incidentally leave them covering goods for which the Opponent admittedly has not used the Trade Mark or any of its variants. In this regard I am satisfied that many of the Redundant Goods in Classes 5 and 10 are goods of the same description as goods for which use has been shown, or are closely related to the Company’s distribution services.
Moreover, as the evidence shows, the Company has used the Trade Mark, and/or close variants which also feature the Company name, to a very significant extent in Australia over many years in relation to both its own branded Class 5 and 10 goods and its distribution services for these and an even wider range of third party goods in these classes. I accordingly accept that both the Trade Mark and the Company name it embodies would be very well known to a large number of relevant Australian consumers. Retaining the words “and all other goods included in this class” in the specifications of the Registrations is arguably in the public interest because, (quite apart from the Removal Applicant’s intentions), it might reduce the risk of possibly confusing concurrent use of the Trade Mark, or of a mark deceptively similar thereto, by third parties.
The alternative to leaving the Registrations as they are would be to formulate some amendment to their specifications which removed the catch-all words “and all other goods in this class” and replaced them with an itemized list of goods for which use has been shown but which would not otherwise remain covered. I note that the Removal Applicant’s submissions do not address this issue, other than to say:
There is ample authority to the effect that goods in respect of which the trade mark is not used should be removed from the Register. See generally Shanahan at 70.1595. This is not a case of drawing fine distinctions, such as in McHatton v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 517. [“McHatton”]
In McHatton, Drummond J was concerned about drawing “fine distinctions” between the “motor vehicles” covered by a Class 12 registration and, inter alia, the “military vehicles” for which the removal applicant wished to use a similar mark. He was concerned both because of the potential to erode the value of a trade mark registration by dicing off specific items for which use could not be shown and because of the risk of confusion if the similar marks were used by different parties for essentially similar goods. I think those concerns are also relevant in the present matter, particularly in view of the considerable reputation I believe the Trade Mark would have in its specialized human and animal health markets and given that the first three factors set out by Falconer J in Hermes have been satisfied.
As mentioned, Mr Hallahan argued that in the case of the Opponent’s Class 10 registration no amendment was necessary, indeed that exercise of the Registrar’s discretion in this regard was not called for, because, he submitted, relevant use had been shown for the full range of Class 10 goods included in the specification as it currently stands. As I indicated earlier (see paragraph 46 above), I believe this overstates the Opponent’s case somewhat, although I do accept the Opponent has demonstrated relevant use in relation to a wide range of goods falling with the Class 10 sub-headings “suture materials” and “Surgical, medical, dental and veterinary apparatus and instruments.”

In the case of the Opponent’s Class 5 registration Mr Hallahan did suggest an amendment that takes into account those goods for which use is not claimed, that is the Redundant Goods in Class 5, but does not otherwise rely on favourable exercise of the Registrar’s discretion under s 101(3), submitting:
20. Given the extensive use that the Opponent has made of the trade mark in relation to a broad range of class 5 goods, if “and all other goods in this class” is to be removed from the specification to the Class 5 Mark, the Opponent submits that specification should be amended in the following manner:
Class 5: Pharmaceutical preparations, ~~namely~~ including, analgesics, anaesthetics, antacids, antibiotics, antihistamines, cathartics, depressants, expectorants, hormones and stimulants; external and topical preparations and dermatological preparations, ~~namely~~ including, acne cleansers and creams, anti-bacterial ointments, antiseptic cleansers, eardrops and moisturizing creams; opthalmic preparations, ~~namely~~ including eyedrops and solutions used in connection with contact lenses; veterinary preparations for the treatment of animals, coughing, motion sickness, vitamin and mineral deficiencies and worm infections for pets; dental preparations, ~~namely~~ including, adhesives, alginates, alloys, anaesthetics, cements, germicides and sealants; ~~and all other goods included in this class~~ plasters; materials for dressings; material for stopping teeth, dental wax; disinfectants.
21. The Opponent submits that the goods at the end of the proposed amended specification should be included because they are each a good in class 5 in respect of which the Opponent has demonstrated use and thereby rebutted the allegation of non-use: TMA, s 100(3).
22. The Opponent submits that “namely” in the specification should be changed to “including” because “and all other goods in this class” has given the Opponent protection for all other goods of each of those types, in addition to the goods specifically named in the specification. The Opponent has proven use of the trade mark in relation to pharmaceutical preparations, external and topical preparations and topical preparations, veterinary preparations, and dental preparations. Therefore, to the extent that the Non-use Application in respect of the Class 5 Mark seeks removal in respect of those types of goods, the grounds of removal have been rebutted and the Opponent is entitled to retain its full breadth of protection in respect of those types of goods.
I agree that this proposed amendment would obviously not be expanding the registration’s coverage and so does not offend against s 65(7) of the Act. Nevertheless I do not think it is necessary to make it. I do not see that it would advance the public interest in any way. Moreover, for the reasons submitted by Mr Hallahan (see paragraph 59 above) I accept that it is in the Opponent’s interests to leave the Registrations as they are. While, as mentioned, the Removal Applicant’s interests are a secondary consideration, I am on the other hand unable to say based on the information before me whether the Opponent’s proposed amendment to its Class 5 registration would achieve anything from the Removal Applicant’s point of view.
There being no evidence or persuasive submissions before me from the Removal Applicant as to why it might be against its interests, or otherwise not be reasonable, to exercise the Registrar’s discretion in the Opponent’s favour, I have decided on balance it is appropriate in this case to do so. The extensive use the Trade Mark and its close variants featuring the HENRY SCHEIN name have enjoyed in Australia in their specialized markets over many years has satisfied me that the Registrations should remain unamended.
Decision
In the case of registration 562338 in Class 5, I am satisfied the Opponent used the Trade Mark in Australia during the Relevant Period for goods falling within the broad descriptions “Pharmaceutical and veterinary preparations”, “Sanitary preparations for medical purposes”, “Plasters”, “Materials for dressings”, “Material for stopping teeth, dental wax” and “Disinfectants”. Accordingly the s 92(4)(b) application is in principle successful to the extent that registration 562338 covers goods other than these.
In the case of registration 562340 in Class 10, I am satisfied the Opponent used the Trade Mark in Australia during the Relevant Period for goods falling within the broad descriptions “Surgical, medical, dental and veterinary apparatus and instruments” and for “orthopaedic casting tape”. Again, then, the s 92(4)(b) application is in principle successful to the extent that registration 562340 covers goods other than these.
However for the reasons discussed above I have decided to exercise the Registrar’s discretion pursuant to s 101(3) of the Act in the Opponent’s favour and leave the Registrations unamended.
Costs
As both parties were, strictly speaking, partly successful and given my decision to leave the Registrations unamended ultimately turned on exercise of the Registrar’s discretion, I believe it appropriate in this case that each party should bear its own costs.
Michael Kirov
Hearing Officer
Trade Marks Hearings
12 August 2016

[2016] ATMO 63

12 August 2016