Interactive Engineering Pty Ltd v Google LLC

Case [2023] ATMO 204

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

  1. 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

  1. 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.

  2. The Opponent filed Evidence in Support on 18 September 2022. The Applicant did not file Evidence in Answer.

  3. 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

  4. 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.

  5. Notwithstanding the lateness…

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AGLC
Interactive Engineering Pty Ltd v Google LLC [2023] ATMO 204
Case
[2023] ATMO 204
Decision Date

CaseChat Overview and Summary

Interactive Engineering Pty Ltd (the Opponent) sought the complete removal of Google LLC's (the Applicant's) trade mark registration no. 539355 from the Register under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) for non-use. The application for removal related to a broad range of goods. The court was required to determine whether the Applicant had used the trade mark in Australia in good faith in relation to the goods for which removal was sought during the relevant three-year period from 14 January 2019 to 14 January 2022.

The court considered the legal framework for removal of trade marks for non-use, specifically section 92(4)(b) of the Act, which requires the registered owner to demonstrate use in Australia in good faith during the relevant period. The onus was on the Opponent to rebut the allegation of non-use by establishing, on the balance of probabilities, that the trade mark had been used in relation to any or all of the goods in question, or that circumstances prevented such use. The court noted that "use in good faith" means real, as opposed to token, use in a commercial sense, and a single bona fide use can be sufficient if overwhelmingly proven.

In its decision, the court found that the Opponent had partially established its opposition. While the Opponent did not press for the retention of certain goods (referred to as the "Removed Goods"), the court exercised its discretion to retain the broader claim in respect of a subset of goods for which use in good faith was established. Consequently, the court directed that registration 539355 be amended to remove the Removed Goods one month from the date of the decision, unless an appeal was filed. The court also awarded costs against the Applicant.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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).

Decision

Reasons for decision

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 programsCosts 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 MakrigiorgosOppositions and HearingsTrade Marks and Designs11 December 2023

Ratio Decidendi

Legal Principle Established

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