Interactive Engineering Pty Ltd v Google LLC

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Interactive Engineering Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Google LLC to remove trade mark number 539355 (class 9) - ORION - in the name of Interactive Engineering Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Hallett Grant

Applicant: Edwina Whitby of counsel instructed by Gilbert + Tobin.

Decision:

2023 ATMO 204

Trade Marks Act 1995 (Cth) – application under s 92(4)(b) – complete removal sought –use in good faith established in respect of a subset of a broader claim of goods – discretion exercised to retain broader claim - opponent did not press retention of any remaining goods - discretion not exercised for remaining goods – remaining goods to be removed.

Background

On 14 February 2022, Google LLC (‘Applicant’) filed an application under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade mark in the name of Interactive Engineering Pty Ltd (‘Opponent’):
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Registration Number

Trade Mark

Goods

Filing Date

539355

ORION

(‘Trade Mark’)

Computers; computer programs; computer related goods in this class

(‘Goods’)

2 August 1990

The Opponent filed a Notice of Intention to Oppose removal of the Trade Mark on 12 April 2022 and a Statement of Grounds and Particulars (‘SGP’) on 5 May 2022. The Applicant filed a Notice of Intention to Defend on 29 June 2022.
The Opponent filed Evidence in Support on 18 September 2022. The Applicant did not file Evidence in Answer.
The parties were given the opportunity to be heard. An oral hearing was requested and heard by me as a delegate of the Registrar of Trade Marks on 13 November 2023 by video conference. Peter Hallett of Hallett Grant appeared for the Opponent. Edwina Whitby of Counsel instructed by Caelan Bruce of Gilbert + Tobin appeared for the Applicant. Observing the hearing was an officer of the Opponent. Both representatives’ oral submissions were supplemented by written submissions filed prior to the hearing.
Preliminary Matter – Additional Material
The Opponent’s written submissions included two PowerPoint presentations and a document relating to the history of the Trade Mark (‘Additional Material’). I note that the Additional Material has not been filed in accordance with the timeframe set out in the Regulations for filing evidence, nor is it provided in the form of a declaration with a person swearing to the authenticity of the Additional Material. The Opponent’s submissions set out no basis as to why I should take this Additional Material into account. The Applicant objected to the inclusion of this Additional Material, filing written submissions seeking that I not have regard to the Additional Material.
Notwithstanding the lateness of the filing of this Additional Material and the improper manner in which it was filed, in certain circumstances it may be appropriate for a delegate to take into account material that is filed out of time.
Under reg 21.15(4), the ‘Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. In the words of Lord Denning MR:
[a] tribunal of this kind is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law.[2]
[2] TA Miller Ltd v Minister for Housing & Local Government [1969] RPC 91, 93.
I am not, as a matter of law, compelled to exclude evidence which is filed out of time. Hence, where evidence is filed in time objections are typically based on its probative value rather than its ‘admissibility’ in the sense often entertained in courts (and other bodies subject to rules of evidence). In Malibu Boats West Inc v Catanese, Finkelstein J stated:
It should be borne in mind, however, that the proceeding before the registrar was not a curial proceeding and many of the rules that are applicable to courts have no application. That proceeding was an administrative proceeding before a person exercising a statutory function. The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question.[3]
[3] [2000] FCA 1141, [24].
Further under reg 21.19, I may take into account information available to me that is relevant subject to the parties having been provided with this information and having a reasonable opportunity to make representations.
The party who has filed the out of time material must make a compelling case in favour of it being considered. In this matter I am not satisfied that a compelling case has been made and I decline to consider the Additional Material. In particular I note that the Additional Material itself, had it been admitted, would have had no impact on my ultimate decision in this matter as its probative value is less than slight.
I have therefore decided this matter based on the particulars set out in the SGP, the properly filed evidence of the Opponent, and the written and oral submissions of the parties.
Evidence
The following evidence in support was filed:
·Declaration of Jim Brander, founder and sole director of the Removal Opponent, dated 11 September 2022 with Attachments JB-1 to JB-14 (‘Brander Declaration’).
·Declaration of Ryan Edward Sigmundson, Scientific Research Engineer of Centre National de la Recherche Scientifique (CNRS), dated 11 September 2022 (‘Sigmundson Declaration’).
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register for non-use.
In respect of this matter, s 92(4)(b) relevantly provides (notes omitted):
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:
(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.
I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[4] and I confirm that five years since filing the Trade Mark have in fact passed.
[4] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark is the three year period between 14 January 2019 to 14 January 2022 (‘Relevant Period’).
The Opponent bears the onus of rebutting an allegation of non-use[5] by establishing, on the balance of probabilities,[6] that it has used the Trade Mark in respect of any or all of the goods identified in the Removal Application during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[7]
[5] Act s 100(1)(c).
[6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.
[7] Act s 100(3)(c).
In Woolly Bull Enterprises Pty Ltd v Reynolds,[8] 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’. 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,[9] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[10] Little weight is to be given to assertions of use which are not supported by documentary evidence.[11]
[8] [2001] FCA 261, [16].
[9] Ibid [17].
[10] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[11] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Delegate Wilson).
Under s 101, I must first decide whether there has been use of the Trade Mark by the Opponent in good faith on or in relation to the Goods during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Goods, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Goods for which use during the Relevant Period has not been established. In other words, even if no use is established, the Registrar retains a discretion not to remove the Trade Mark from the Register if satisfied that it is reasonable to do so.[12]
[12] Section 101(3).
Summary of Evidence in Support
Brander provides a brief history of the Opponent and claims to have developed and commercialised a software platform under the ORION mark in 1980. Brander describes the software as platform technology that can be used for multiple applications. The Trade Mark is claimed to have been in continuous use since this date. The software has a wide range of applications including but not limited to health, insurance, bioinformatics, law and textual search and analysis.
Brander provides a table which lists examples of use of the Trade Mark from 1987 to 2022. Of these examples, Brander only provides any supporting evidence for the following:
·2004 - Consensus Software competition award for the Orion software.
·2020 and 2021 - attendance at investment conferences Emergence 2020 and 2021. I note however that there is no reference to the Trade Mark. Rather there is reference to the mark Active Structure.
·links to 4 videos created for Emergence 2021. I note however that there is again no reference to the Trade Mark.
·2021 (purportedly) – undated Twitter profile page. I note that there is no reference to the Trade Mark.
·2021 (purportedly) – undated emails to Westpac directing them to the Opponent’s web site. I note that there is no reference to the Trade Mark.
Brander provides a table which lists examples of use of the Trade Mark from 1987 to 2022. Of these examples, Brander only provides any supporting evidence for the following:
·2004 - Consensus Software competition award for the Orion software.
- 2020 and 2021 - attendance at investment conferences Emergence 2020 and 2021. I note however that there is no reference to the Trade Mark. Rather there is reference to the mark Active Structure.
- 2021 – links to 4 videos created for Emergence 2021. I note however that there is again no reference to the Trade Mark.
- 2021 (purportedly) – undated Twitter profile page. I note that there is no reference to the Trade Mark.
- 2021 (purportedly) – undated emails to Westpac directing them to the Opponent’s web site. I note that there is no reference to the Trade Mark.
Brander claims the Opponent’s website was launched in 2000 and has continuously featured the Trade Mark. Brander provides undated printouts claimed to be from where I note the Trade Mark is used in the phrase ‘Orion Semantic Technology’ and also under the heading Products as ‘Orion Technology’. Brander dates the printouts as 10 September 2022, after the Relevant Period, but adds that the relevant website content was substantially the same during the Relevant Period.
Brander also claims that the Trade Mark is used on the web sites and (which redirects to Brander provides undated printouts claimed to be from the and web sites. Again, Brander dates the printouts as 10 September 2022, after the Relevant Period, but adds that the relevant website content was substantially the same during the Relevant Period. All the printouts refer to the Trade Mark and in particular I note the following uses:
· home page heading ‘Orion Semantics Technology’ states ‘Here at Interactive Engineering, we spend our days building machines that can read text and build semantic structures …’.
o   Our Services heading states ‘We are heavily focused on the development of Orion’ and there are 4 sub headings including Knowledge Management, Specification Analysis and Document Analysis.
o   Products heading states ‘We have one product - Orion Technology. It can be used in many areas …’
o   Technology Licensing heading states ‘Orion can be used in many different areas … we licence the technology to other companies, who can set up to be experts in a particular area, like Health, Law, Specifications, Biotechnology.’
o   Trademarks & Patents heading states ‘Interactive Engineering is the holder of the trademarks Orion, Active Structure and Garden of Knowledge for software in Australia’.
· Orion the constellation and a horse device appear at the top of each page.
o   home page has references to ‘What is Orion’ and ‘Building Orion …’.
o   Information heading has references to ‘Orion Technology Difference’ and ‘What is Orion for?’.
o   What is Orion for? heading states ‘Orion is gaining a foothold by representing and activating corporate knowledge …’.
o   Is Orion up to the task heading states ‘Orion is an active structure, where activity takes place in a structure continuously being modified by words among other things’ and ‘Orion is built to give high reliability …’.
o   Licensing Areas heading states ‘Areas where Orion technology can strongly contribute’ and lists the licensing areas as Bioinformatics, Health Care, General Legal, Specification Verification, Contract Development, Semantic Search, Patent Law, Knowledge Dissemination and Creation of legislation.
· contains the same information as the semanticstructure.com.au web site plus the following:
o   Orion Technology Difference heading states ‘Orion is a high accuracy, high reliability semantic representation of text, which can be activated’, ‘Some particular areas where Orion stands out.’ and ‘The basic difference between Orion and other semantic technologies is the approach’.
o   News heading ‘New Website 3rd July, 2017. We have produced this new website, intended as a (mostly) high level look at Orion and its many applications’.
Brander provides printouts for the web sites inteng.com.au and semanticstructure.com from the Wayback Machine[13] on various dates during the Relevant Period. I note that there are similarities in the home page and Our Services heading of the inteng.com.au web site with the abovementioned web site pages from 2022 and similarities in the home page, Information heading and Licensing Areas of the semanticstructure.com web site with the abovementioned web site pages from 2022. Even though not all the pages of the archived web sites have been provided, I am satisfied that it is more likely than not that the relevant website content referring to the Trade Mark in 2022 was substantially the same during the Relevant Period. I also note that there is use of the Trade Mark on the printouts of the archived web sites as follows:
[13] type="disc">
page heading Orion Semantics Technology states ‘Here at Interactive Engineering, we spend our days building machines that can read text and build semantic structures …’
oOur services heading states ‘We are heavily focused on the development of Orion’ and there are 4 sub headings including Knowledge Management, Specification Analysis and Document Analysis.
- page has references to ‘What is Orion’ and ‘Building Orion …’
  oInformation heading has references to ‘Orion Technology Difference’ and ‘What is Orion for?’
  oLicensing Areas heading has references to Bioinformatics, Health Care, General Legal, Specification Verification, Contract Development, Semantic Search, Patent Law, Knowledge Dissemination and Creation of legislation.
  oServices heading states ‘Orion Services’ and links to the headings Knowledge Management Consulting, Specific Solutions, Active Knowledge Modelling (where is states ‘Orion can use the resources of the internet and other documents to expand its modelling to cover the most detailed corners of a new domain’), Automated Domain Analysis and Document QA.
- Brander provides undated printouts from the websites and claimed to show use of the Trade Mark, which Brander believes were publicly accessible during the Relevant Period. I note that the printouts refer to:
  ·a KM Thought Leaders site with multiple names including Brander with an inactive link to the site
  ·‘From Words to Knowledge ORION Active Structure Two’ document which is clearly obtained from the internet and refers to Orion Active Structure. However, I do not find that the document provides the reader with any understanding of what the Orion Active Structure actually is.
- Brander provides marketing expenditure claimed to be for the ORION software from 2018 –September 2022 and 3 copies of invoices in the Relevant Period, one of which is only a quote and none of which refer to the Trade Mark.
- Brander claims the Opponent developed an innovative software system, based on its ORION software platform, for handling policy queries for the health insurance industry which was licensed to a US-based company.
- Brander provides a copy of an Amended and Restated Technology Licensing Agreement dated 17 May 2018 which is a software licence agreement between the Opponent and Sensentia lnc. The agreement states that Sensentia Inc develops and markets software products and the Opponent develops active structure technology for computer software products under the trade marks of ‘Orion’, ‘Active Structure’ and ‘Active Knowledge Networks’. The Opponent’s technology is to be incorporated in Sensentsia Inc’s resulting software in the areas of health insurance information systems and inquiry automation systems. I note this agreement is before the Relevant Period and does not licence Sensentia Inc to use the Trade Mark.
- Brander also provides a copy of a redacted Settlement and Licence Agreement again with Sensentia lnc dated 29 October 2019 terminating the 2018 Agreement and providing a licence to Sensentia Inc for the Orion technology. ‘Licensed Technology’ is defined as the computer software specified in Exhibit A-1 which states, inter alia, “the Orion technology uses an active structure in computer memory to represent analytic and experiential knowledge. ‘Active Structure’ shall mean a computer software technology ... Active Structure has been developed by lnteractive Engineering Pty. Ltd. over the period of 1982-2018 and its development is continuing. lt has been developed under the registered trademark in Australia of Orion”.

Brander provides an approximate figure for the total licence fees from the Sensentia Inc during the Relevant Period and provides evidence of 2 receipts, one dated in the Relevant Period and the other after the Relevant Period. The figures on the receipts equate to the licence fees to be paid under the Settlement and Licence Agreement.[14]
[14] Exhibit B of the agreement under Fees and Payments.
Brander claims that over the last five years, the Opponent has been developing an ACTIVE STRUCTURE software product based on the ORION technology intended for release under the Trade Mark in late 2022 or early 2023.
Brander states concern that the Applicant has filed an application for ORION and that any use of ORION on software would cause market confusion.
Sigmundson describes the ORION software as an artificial intelligence for general purpose problem solving.
Sigmundson claims that he has been working freelance with the Opponent since October 2019 and recalls seeing the Trade Mark prominently displayed on the Opponent’s website at that time. Sigmundson also claims that since that date, the Opponent has continuously used and actively marketed the ORION software as he has seen the Trade Mark used on the website at and on promotional slide shows produced by the Opponent.
Discussion and Reasons
Use During the Relevant Period
The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of the sign as a badge of origin.[15]
[15] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
In summary the Opponent’s SGP claims continuous use in good faith during the Relevant Period of the ORION mark primarily online via the Opponent’s websites in respect of computer software, namely a general-purpose platform technology that can be used for a wide range of applications including but not limited to health, insurance, bioinformatics, law and textual search and analysis.
The Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Trade Mark upon, or in physical or other relation to, the Goods within that period in order to rebut the allegation of non-use. Undated examples of use carry little, if any, weight in support of a claim that the Trade Mark was used within the Relevant Period.
Whilst much of the Opponent’s evidence is indeed undated or dated after or before the Relevant Period, the evidence that is dated in the Relevant Period is, in my opinion, probative.
The Opponent argues that the evidence shows that ORION has been used as a trade mark in respect of a software platform technology with multiple applications. The Applicant disagrees and submits that the use has not been genuine, has not been in the course of trade and that on close analysis, the Trade Mark was a historical mark which has been abandoned for the mark ACTIVE STRUCTURE.
The Opponent’s submissions in summary are:
- while there is no mention of the Trade Mark on some evidence in the Brander Declaration, this evidence still shows genuine good faith of promotion and use of the Trade Mark for the software technology on the Opponent’s web sites, as the Opponent’s aim was to bring customers to the web sites.
- the use of the Trade Mark on a web site is use as a trade mark, relying on the comments of the Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd that:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website.[16]
·the Sigmundson Declaration does not contain bald assertions. Rather, it corroborates Brander’s evidence that the Trade Mark was used on the web site and on promotional slide shows in the Relevant Period.
·the trade mark ACTIVE STRUCTURE is one embodiment of the ORION technology. The Opponent uses both trade marks ACTIVE STRUCTURE and ORION and relies on Kraft Foods Group Brands LLC v Bega Cheese Limited[17] for the principle that multiple trade marks can be used at the same time.
·relying on Woolly Bull Enterprises Pty Ltd v Reynolds,[18] that actual sales of product are not necessary as it is sufficient to establish an objectively ascertainable commitment to supplying products under the Trade Mark and in any event, here there is a sale in the form of an ongoing software licence agreement.
·it is not necessary to establish use of the Trade Mark in relation to every conceivable type of computer software product.[19]
[16] (2023) HCA 8, [23] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (footnote omitted).
[17] [2020] 377 ALR 387 (Foster, Moshinsky and O'Bryan JJ).
[18] [2012] 51 IPR 149, [28] (Drummond J).
[19] Relying on McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] 34 IPR 537; Baroque Japan Ltd v Mad Keen Pty Ltd [2015] ATMO 41 and Symphony Holdings Limited v Skins IP Limited [2022] 168 IPR 464.
The Applicant’s submissions in summary are:
·the Brander Declaration is comprised almost entirely of unsubstantiated assertions with no supporting documentary evidence (as is the Sigmundson Declaration) and the majority of the evidence is outside the Relevant Period or does not include the use of the Trade Mark in good faith.
·in respect of the Licensing Agreements for the technology[20] and promotion of the Opponent’s software, the relevant trade mark is ACTIVE STRUCTURE.
·it is unclear what goods/services are purported to be offered by reference to the Trade Mark on the Wayback Machine printouts and that the webpages could not be regarded as a genuine offer of ORION goods or use of the Trade Mark in the course of trade.
·evidence of a licence agreement without more is not evidence of use of a trade mark, relying on Chiotelis v TAP Worldwide LLC.[21] However I note this decision concerns a trade mark licence agreement, which is not the case here.
·marketing expenditure relates to, if anything, the Opponent’s business generally and not any goods under the Trade Mark.
[20] Brander Declaration Attachments JB-12 and JB-13.
[21] [2014] ATMO 4.
At the outset, I do not agree with the Applicant’s submission that the Licensing Agreements for the technology and promotion of the Opponent’s software does not include the Trade Mark. There is clear reference to the Trade Mark in the Settlement and Licence Agreement and the evidence of payment of the licence fees accords with the Fees and Payments section in this agreement.[22]
[22] Brander Declaration Attachment JB-13 Exhibit B of the agreement under Fees and Payments.
I have critically and carefully reviewed the evidence and agree that some of the Brander Declaration contains unsubstantiated assertions and evidence outside the Relevant Period or evidence which does not show the Trade Mark. However, on the basis of the evidence in the Relevant Period as a whole, including the Wayback Machine evidence, the Settlement and Licence Agreement and the licence fee receipts, I am satisfied that there has been use in the course of trade in good faith of the Trade Mark in respect of a computer software technology platform but not in respect of all types of ‘computer programs’.
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 respective goods.
The Applicant submits that if I have decided that the Trade Mark is to remain on the Register, that the Goods should be narrowed to ‘computer programs being software for health insurance information systems and inquiry automation systems for policy queries for the health insurance industry’.
The Opponent has not offered any alternative narrowing to ‘computer programs’. Rather the Opponent submits that the ORION software is general purpose software which has potential applications across multiple industries and that it should not be narrowed. Indeed, the Brander Declaration lists a number of diverse areas/industries where the software can be used.[23]
[23] Attachment JB-9.
An issue of importance in this matter is whether use of the Trade Mark for computer software technology platform which fall under the broad category ‘computer programs’ is sufficient to constitute use in relation to that broad category as a whole, or whether the broad claim should be restricted in scope.
Justice Drummond in McHattan v Australian Specialised Vehicle Systems Pty Ltd (‘McHattan’),[24] recognised that fragmented ownership of the same or a very similar mark in respect of very similar goods could lead to confusion. Fine distinctions between the goods which should remain or be removed could, in the context of applications for removal for non-use, erode the value of a trade mark registration. These words are particularly apposite in this matter.
[24] (1996) 34 IPR 537.
This is not a case where the Opponent’s software is directed to one particular industry e.g. finance, or for a limited and easily identifiable purpose e.g. word processing, inventory management, etc. Therefore, it is in a different category to previous decisions of this Office concerning broad claims to computer software.[25]
[25] E.g. Pulse Logistics Systems Pty Ltd v Eplan Software & Service GmbH & Co Kg [2022] ATMO 55.
After weighing the parties’ arguments, I am satisfied that the use of the Trade Mark on a computer software technology platform by the Removal Opponent also discharges the onus in relation to ‘computer programs’ and therefore I exercise my discretion to allow the broad description ‘computer programs’ to remain in the Registration. In my opinion to do otherwise would invite both the type of confusion and erosion of the value of the Opponent’s Registration contemplated by Justice Drummond in McHattan.[26]
[26] McHatten (n 24).
In respect of the goods “computers and computer related goods in Class 9”, for which no evidence of use has been shown, the Opponent in its oral submissions does not press that these goods remain in the Registration and therefore, I am satisfied that ‘computers and computer related goods in Class 9’ can be removed from the Registration (‘Removed Goods’).
Discretion
Pursuant to s 101(3) of the Act, the Registrar has a broad discretion not to restrict the goods, if satisfied that it is not reasonable to do so.
In respect of the Removed Goods, as the Opponent did not press that these goods remain in the Registration, I need not determine whether to exercise my discretion but, again for the sake of completeness, I do not exercise my discretion to retain the Removed Goods in the Registration.
Decision
The Opponent has partially established its opposition to the removal. Accordingly, I direct that registration 539355 be amended one month from the date of this decision as set out below to remove the Removed Goods. If the Registrar is served with a notice of appeal before then, I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.
Class 9: Computer programs
Costs
The Opponent and Applicant have both sought costs. As the Opponent has partially established its opposition and did not press the opposition to the removal of the Trade Mark in respect of the Removed Goods, I award costs against the Applicant in accordance with Schedule 8 of the Regulations.
Anne Makrigiorgos
Oppositions and Hearings
Trade Marks and Designs
11 December 2023

[2023] ATMO 204

11 December 2023