Inntech Pty Ltd v Pointpal Holdings Pty Ltd

[2017] ATMO 118

TRADE MARKS ACT 1995

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

Re:Opposition by Inntech Pty Ltd to application under section 92 of the Act by Pointpal Holdings Pty Ltd to remove trade mark number 1307054(9) - pico life (logo) - in the name of Inntech Pty Ltd

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Shelston IP Applicant: Trademarkings
Decision:	2017 ATMO 118 Trade Marks Act 1995 s92 application for removal for non-use: Trade Mark used during relevant period; exercise of Registrar’s discretion. Trade Mark to remain registered for the Specification.

Background

1. In this matter Pointpal Holdings Pty Ltd (‘the Applicant’) made application on 5 February 2016 under paragraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal from the Register of Trade Marks of the trade mark which appears below:

Registration No:         1307954
Priority Date:             29 June 2009

Goods:Class 9: Convertors for digital television signals; digital telecommunications apparatus including digital set top boxes; video recorders, including personal video recorders; apparatus for the projection of visual images, including pocket projectors; mobile telephone accessories within this class; audio speaker; audio visual cables; flash memory and USB devices; other mobile or portable technology products or devices within this class

(‘the Specification’)

Trade Mark:               

(‘the Trade Mark’)

1. The relevant period of time for the purposes of paragraph 92(4)(b) is the three year period ending on 5 January 2016 (‘the Relevant Period’).

2. On 23 March 2016 the owner of the Trade Mark, Inntech Pty Ltd, (‘the Opponent’) filed a Notice of Intention to Oppose the removal of the Trade Mark followed, on 15 April 2016 by a Statement of Grounds and Particulars which asserts that the Trade Mark was used during the Relevant Period.

3. Subsequently the Opponent filed Evidence in Support of its opposition to removal.  The Applicant has not filed Evidence in Answer.

4. Both parties have been advised of their right to request a hearing or to file written submissions. Neither party has availed themselves of these opportunities. Now, in order that the Registrar may, under section 101 of the Act, decide the matter it has been allocated to me, one of her delegates, to decide on the basis of the written record which is comprised of those materials mentioned in the preceding paragraphs.

Burden

1. Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the burden of rebutting the allegation made under s 92(4)(b), either by establishing that the Trade Mark was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to the use of the Trade Mark. I proceed on the basis that the standard of proof required is on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 per Gyles J; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

Paragraph 92(4)(b)

1. Section 92 of the Act relevantly provides:

   92Application 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 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:

   […]

   (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.

2. The Opponent’s Evidence in Support is comprised of a declaration made on 7 September 2016 by Mr Michael Deacon who is a solicitor employed by Shelston IP Lawyers who represent the Opponent.  The declaration is accompanied by exhibits A to I.

3. Mr Deacon’s declaration includes the following well supported statements:

   1.[The Opponent] (including under its previous name Mint Trading Pty Ltd) has been the registered proprietor of [the Trade Mark] since 29 June 2009;

   2.The [Trade Mark] was used [on the Opponent’s] Website in respect of various products promoted and sold by [the Opponent] in Australia during the [Relevant Period]. Attached to this declaration and marked Exhibit D are excerpts from the [Opponent’s] Website as it appeared at various dates during the [Relevant Period] obtained from the internet archives searching tool located at Opponent] has applied the [Trade Mark] directly to various Pico Life Products[2] which have been promoted and sold in Australia during the [Relevant Period]. Attached hereto and marked Exhibit E are photographs showing various Pico Life Products bearing the [Trade Mark] which I am instructed by [the Opponent] have been supplied by [the Opponent] to various retailers in Australia for sale to Australian customers during the Alleged Non-Use Period, comprising:

   [2] I note that this expression, although being capitalised, is not defined within the declaration.

   a. Bluetooth Lightweight Wireless Stereo Headset;

   b. Power Bank with Bluetooth Headset;

   c. Universal Battery Charger;

   d. Notebook Charger with cables;

   e. Universal Laptop Charger with DC Connectors;

   f. 4GB USB Flash Drive;

   g 4GB SD Card;

   h. Multi-Function Laptop Charger with iPhone/iPad/iPod USB charge cable and DC Connectors;

   i. Pocket Hard Disk Drive Bags;

   j. Laptop Bag Bundle Pack — including charging cable, travel case, AC charger, in-car charger and USB multi-card reader;

   k Various Flash Drives and SD Memory Cards; Audio Cable;

   m. Mobile Phone Car Cradle; and

   n. Portable/Mini Audio Speaker.

   4.Pico Life Products sold by [the Opponent] during the [Relevant Period] included:

   SD Cards; USB Drives; Laptop Chargers; Universal Phone Cradles; Portable Hard Disk Drive Bags; Battery Chargers; Portable Scanners; Jacks; eBook Readers; Charging Kits; Cables (for electronic devices), including HDMI cables and charger cables; Cable Kits (for chargers and electronic devices); Film and Slide Scanners with LCD displays; Digital Camera starter kits; DVD Burners; Power Boards; Micro Hi-Fi Systems; Speakers, including Mini Speakers, Swivel Speakers and Pop Speakers; Radio Alarm Clocks; MP3 Players; iPhone car/dashboard cradles; Cases for laptops, notebooks and eBook readers; Multi Car Chargers; Digital Camcorders; HD Set Top Boxes; Mini Display to VGA Adapters; Speaker Bags; and Sim Card Readers.

   5.Attached to the declaration and marked Exhibit H are copies of invoices pertaining to sales of Pico Life Products by [the Opponent] in Australia at regular intervals during the Alleged Non-Use Period […]

4. Mr Deacon also supplies confidential turnover figures resulting from the Opponent’s use of the Trade Mark in Australia during the Relevant Period.

5. These statements asserting the nature and extent of the Opponent’s use of the Trade Mark have not been challenged by the Applicant.

6. I accept that Mr Deacon’s declaration establishes the Trade Mark was used by the Opponent in Australia in relation to the goods listed above at subparagraph [9.4] (‘the Opponent’s Goods’) during the Relevant Period.  The Opposition to removal is thus established in relation to the Opponent’s Goods.

Discretion

1. Section 101 of the Act relevantly provides:

   101Determination 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.

   (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.

2. In Pioneer Computers Australia Pty Ltd v Pioneer KK[3] Bennet J observed:

   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.

   In Kowa Company 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).

   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

   [3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167]-[169].

3. Here there is no information as to the Applicant, the nature of its business, or its use of a trade mark.  The Opponent’s interests are apparent from the evidence of use of the Trade Mark which is before the Registrar.

4. To the extent that the evidence shows use of the Trade Mark on the Opponent’s Goods during the Relevant Period and might not show use of the Trade Mark in respect of the full range of goods for which it is registered (these other goods being ‘the Remainder Goods’) I consider that the evidence demonstrates that it is in both the public interest and the Opponent’s interest that the Trade Mark remains registered for the Remainder Goods. In terms of section 101(4), and in consideration of the extent of use of the Trade Mark, the Opponent’s evidenced use of the Trade Mark is such that the use of the Trade Mark on the Remainder Goods by a trader other than the Opponent would be likely to deceive or cause confusion.

5. It is thus appropriate that the Registrar exercise her discretion to allow the Trade Mark to remain registered for all of the goods within the Specification.

Decision

1. Subsection 101(1) of the Act provides:

   101Determination 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. The Opponent has established its opposition to the removal of the Trade Mark from the Register.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
18 October 2017