Infinair Corporation v Seeley International Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Infinair Corporation to application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by Seeley International Pty Ltd for cessation of protection of Protected International Trade Mark number 1241812 (International Registration number 960973) (7, 11) – INFINAIR – in the name of Infinair Corporation

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Not represented

Removal Applicant: Andrew Caska of Caska Intellectual Property Pty Ltd

Decision:

2023 ATMO 142

Trade Marks Act 1995 (Cth) – application under regulation 17A.48C – for the cessation of protection – no evidence of use or relevant obstacles to use during the relevant period – discretion not exercised – protection of trade mark to cease

Background

Infinair Corporation (‘Removal Opponent’) is the registered holder[1] in Australia of the following trade mark:
[1] The Trade Mark was initially filed in the name of Shanghai Nautilus General Equipment Manufacturing Co., Ltd. On 30 April 2022 the full assignment of the Trade Mark from Shanghai Nautilus General Equipment Manufacturing Co., Ltd. to the Removal Opponent was recorded.
Registration Number:                    1241812 (IR 960973)
Trade Mark:  INFINAIR (‘Trade Mark’)
Filing Date:  25 January 2008
Specification:  Class 7: Blowing machines for the compression, exhaustion and transport of gases; pneumatic transporters; bellows (machines); compressed air engines; compressed air machines; centrifugal pumps; pumps (machines); vacuum pumps (machines); air suction machines; valves, parts of machines
Class 11: Air conditioning installations; fans for air-conditioning; air conditioning apparatus; ventilation installations and apparatus for air-conditioning; fans, as parts of air conditioning installations
(‘Registered Goods’)
On 22 April 2021, Seeley International Pty Ltd (‘Removal Applicant’) filed an application (‘Application’) under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[2] seeking cessation of protection of the Trade Mark, pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b) in relation to the Registered Goods.
[2] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
On 31 August 2021, the Removal Opponent filed a Notice of Intention to Oppose the Application and its Statement of Ground and Particulars (‘SGP’). The Removal Applicant filed its Notice of Intention to Defend the Application on 13 May 2022.
The Removal Opponent filed the following evidence in support:
·Declaration of Shouqing Jin, Director of Research Institute at the Removal Opponent, made on 12 August 2022, with Annexures HW-1 to HW-2 (‘Jin’).
The Removal Applicant did not file any evidence in answer.
Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by way of written submissions. The Removal Opponent requested to be heard on the papers as filed and the Removal Applicant requested to be heard via video conference. I heard the matter on 20 September 2021. Andrew Caska of Caska Intellectual Property Pty Ltd appeared via video link on behalf of the Removal Applicant. The representative’s oral submissions were supported by written submissions filed prior to the hearing.
Legal Framework
Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.
Section 92(4)(b) provides:
92 Application for removal of trade mark from Register etc.
(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:
…
(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.
Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the Trade Mark is the three year period ending on 22 March 2021 (‘Relevant Period’).
Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.[3] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[6]
[3] [2001] FCA 261, [16].
[4] Ibid [17].
[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno).
[6] (1962) RPC 1, 7.
I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[7]
[7] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
In accordance with s 101, the Registrar may decide to remove the Trade Mark from the Register in respect of any or all of the Registered Goods identified in the Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register even if the ground under which the Application was made is established.
Discussion
Use of the Trade Mark during the Relevant Period
In Jin, Mr Jin deposes that the Removal Opponent has used the Trade Mark in Australia and has used the Trade Mark in the Relevant Period in respect of ‘fans and blowing machines including for the compression, exhaustion and transport of gasses, pneumatic transporter and bellows (machines)’.
Annexure HW-1 to Jin comprises three purchase orders to the Removal Opponent from:
·Blast & Peen Services Pty Ltd, Victoria, Australia, dated 5 March 2021, for fans;
·RJ Ventilation Services Pty Ltd, Victoria, Australia, dated 13 March 2020, for fans and blowers; and
·All Star Services Australia, New South Wales, Australia, dated 11 June 2020, for fans.
Annexure HW-1 to Jin also comprises two profoma invoices issued by the Removal Opponent to:
·APS Industries Pty Ltd (no information provided as to where APS Industries Pty Ltd are located), dated 8 March 2019. The invoice is for one Industrial Centrifugal Fan (‘ICF’), product code YFBCSO and three ICF’s, product code YFBCSL;
·ELIM (Australia) Pty Ltd (for a shipment to Perth, Western Australia), dated 12 February 2020. The invoice is for one Centrifugal Jet Fan, product code YFPIJ, one Control Cabinet and one Co Senor.
Annexure HW-2 to Jin comprises an undated screenshot from the Removal Opponent’s website product page showing examples of its ICF’s which correspond to product codes YFBCSO and YFBCSL. Annexure HW-2 to Jin also comprises a copy of the Removal Opponent’s February 2020 catalogue, listing for product code YFPIJ, and a Certificate of Conformity issued by TÜV SÜD PSB Singapore, a testing and certification body, to the Removal Opponent, issued on 17 November 2017. The Certificate describes the YFPIJ model/product as an uninsulated, Smoke Reservoir.
In response the Removal Applicant submits that the registered owner of the Trade Mark during the Relevant Period was Shanghai Nautilus General Equipment Manufacturing Co., Ltd (‘Nautilus’). The Removal Applicant argues that all the evidence provided in Annexures to Jin are in the name of the Removal Opponent and not in the name of the then holder Nautilus, and that there is no evidence to show any form of authorised use or control between Nautilus and the Removal Opponent over this period.
The Removal Applicant notes that the World Intellectual Property Office (‘WIPO’) recorded an assignment of the Trade Mark from Nautilus to the Removal Opponent on 30 April 2022 and informed this Office on 2 June 2022.[8]
[8] Confirmed in the Trade Marks Register.
In my assessment, and in the absence of evidence to the contrary, I am satisfied that the holder of the Trade Mark during the Relevant Period was Nautilus. However, the evidence is all in the name of the Removal Opponent. In this respect, Note 1 to s 100(3) states that if the registered owner of a trade mark has authorised another person to use it, any authorised use of the trade mark by that other person is taken to be a use of the trade mark by the registered owner.
Section 8 defines an ‘authorised user’, and ‘authorised use’ as follows:
8 Definitions of authorised user and authorised use
(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).
This makes clear that use of a trade mark by an authorised user, will only be taken to be use by the registered owner of the trade mark if the latter exercises control over the use of the trade mark during the non-use period so as to maintain a connection in the course of trade between the goods and the owner. That can be achieved if, for example, either quality control or financial control is exercised.[9]
[9] See Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124 (Nicholas, Burley and Thawley JJ); Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ); and Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).
In the SGP, the Removal Opponent states that the Trade Mark has been used by the registered owner, its authorised users or assignees, in respect of the Registered Goods. However, the Removal Opponent has not mentioned or provided evidence of any agreements between the then registered owner Nautilus and the Removal Opponent sometime before or during the Relevant Period. As the statements made in the SGP are insufficient to demonstrate that control existed during the Relevant Period, I am not satisfied that Nautilus or an authorised user as contemplated by the Act has used the Trade Mark during the Relevant Period in relation to the Registered Goods.
In the interests of completeness, I will address the evidence in Annexure HW-1 to Jin. The purchase orders from Australian buyers to the Removal Opponent are not use of the Trade Mark rather they are commercial documents issued by a buyer to a vendor to authorise a purchase, and do not demonstrate that goods featuring the Trade Mark were actually sold and delivered to Australia during the Relevant Period. Likewise, the proforma invoices issued by the Removal Opponent are preliminary bills of sale to provide products in the future and are not binding agreements or persuasive evidence of use of the Trade Mark in Australia.
Obstacles to use
The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the Relevant Period, pursuant to s 100(3)(c) and I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain protected on the Register for the Registered Goods.
Registrar’s Discretion
Section 101(3) provides:
101 Determination of opposed application—general
[…]
(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.
[…]
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[10]
[10] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
In the SGP the Removal Opponent states that the Registrar’s discretion ought to be exercised in its favour because of the following:
a)the Trade Mark or a trade mark with additions or alterations not substantially affecting the identity of the Trade Mark, has been used in the three year non use period on goods of the same description as the goods of the registration;
b)the Trade Mark or a trade mark with additions or alterations not substantially affecting the identity of the Trade Mark, has been used before and/or after the three year non use period on the goods of the registration or goods of the same description as the goods of the registration;
c)the reputation in the Trade Mark and other trade marks with additions or alterations not substantially affecting the identity of the Trade Mark, arising from the registered owner’s use means that the unauthorised use of the same or a similar mark by another person in respect of the goods of the registration is likely to cause confusion;
d)the private interests of the registered owner maintaining the registration outweigh the private interests of the removal applicant in having the registration removed; and
e)the public interest is served by maintaining the registration in full.
In this case, the Removal Opponent’s evidence does not establish that it made any sales of the Registered Goods under the Trade Mark either before, during or after the Relevant Period, therefore the evidence does not substantiate that the Removal Opponent has a reputation in the Trade Mark. In the absence of evidence, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Removal Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion to allow the Trade Mark to remain protected in Australia in respect of the Registered Goods.
Decision
I direct that protection of trade mark registration 1241812 cease in respect of all goods in classes 7 and 11, one month from the date of this decision. If the Registrar is served with a notice of appeal before then, protection of the Trade Mark shall not cease until the appeal has either been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Removal Opponent as allowed by Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
22 September 2023

[2023] ATMO 142

22 September 2023

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Costs

Statutory Construction