Invented Here B.V. v igus GmbH

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Invented Here B.V. to application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by igus GmbH for cessation of protection of Protected International Trade Mark number 1452002 (IR 1090807) (classes 9, 12, 25) – [Re-]cycling – in the name of Invented Here B.V.

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Corrs Chambers Westgarth

Removal Applicant: Griffith Hack Lawyers

Decision:

2025 ATMO 63

Trade Marks Act 1995 (Cth) – application under section 17A.48C – s 92(4)(b) considered – use of trade mark established for subset of goods - discretion not exercised – protection of trade mark to be removed for some goods

Background

This matter concerns an application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] for cessation of protection for non-use of the following protected international trade mark (‘IRDA’):
[1] All references in this decision to sections are to sections in the Trade Marks Act 1995 (Cth) (‘Act’) and all references to regulations are to regulations in the Trade Mark Regulations 1995 (Cth) (‘Regulations’).
Trade mark number:  1452002
International Registration:                   1090807
Trade mark:  [Re-]cycling (‘Trade Mark’)
Filing date:  26 May 2011
Specification:  Class 9: Bicycle racing helmets; bicycle helmets;   glasses; sunglasses; sports glasses; bicycle racing   glasses; bicycle glasses
Class 12: Bicycles; bicycle baskets, also for animals; bags adapted for bicycles; handle bars bags and side bags adapted for vehicles and for bicycles; covers for bicycle bags, covers bicycles, bicycle crates, bicycle boxes, luggage carriers for vehicles; dress guards, chain guards, mud guards, systems for securing baskets or bags to bicycles, saddle covers, cushions suited for child's saddles, windbreak flaps and other similar bicycle parts not included in other classes
Class 25: Clothing, footwear and headgear; shirts, pants, body warmers, coats, jackets and wind resistant jackets; sports clothing; bicycle clothing; bicycle pants; bicycle racing clothing, pants and shirts for bicycle racing; underwear; rainproof clothing, rainwear, raincoats, overcoats, rainproof pants, rain ponchos, rain parkas and rain boots; waterproof hats; gloves (clothing), bicycle gloves and bicycle racing gloves (clothing); socks; sports shoes, bicycle racing shoes, bicycle shoes and hiking shoes; overshoes; caps; bonnets; bandanas (scarves)
(‘Protected Goods’)
On 17 April 2023 ignus GmbH (‘Removal Applicant’) filed an application under reg 17A.48C seeking the cessation of protection of the IRDA pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b) in relation to all of the Protected Goods.
On 14 June 2023 Invented Here B.V. (‘Removal Opponent’) filed a Notice of Intention to Oppose, followed by its Statement of Grounds and Particulars (‘SGP’) on 12 July 2023.
The Removal Opponent then filed its evidence in support (‘EIS’) of its opposition in accordance with the Regulations as follows:
·Declaration of Marthijn Marinus Gerardus Henrickus Van Balveren, owner of the Removal Opponent, made on 29 November 2023, with Annexures MVB-1 to MVB-11 (‘Van Balveren’).
The Removal Applicant did not file any evidence in answer.
Once time for filing evidence had ended, the parties were given the opportunity to request a hearing. Both parties requested a hearing by way of written submissions. The Removal Opponent filed its written submissions on 4 February 2025. The Removal Applicant filed its written submissions on 12 February 2025. The matter was allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks. I make my decision based on the SGP, EIS and written submissions of the parties.
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Part 9 is applicable to the IRDA by way of reg 17A.48D.[2] The Removal Applicant has applied for cessation of protection of the Trade Mark with respect to the ground under s 92(4)(b).
[2] Part 9 of the Act, including s 92, is applicable to a protected international trade mark by s 189A of the Act and reg 17A.48D of the Regulations.
Section 92(4)(b) provides:
(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.
Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).
For the purposes of s 92(4)(b) the relevant period is the three year period ending on 17 March 2023 (‘Relevant Period’).
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,[3] and I confirm that five years since filing the application for the registration of the Trade Mark have in fact passed.
[3] Per s 93(2) of the Act 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 amended s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.
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’. [4] 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.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6] 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’.[7]
[4] [2001] FCA 261, [16].
[5] Ibid [17].
[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
[7] (1962) RPC 1, 7.
The principles regarding use as a trade mark were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:
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. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[8]
[8] (‘Self Care’) [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[9]
Use of the Trade Mark during the Relevant Period
[9] 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.
Mr Van Balveren states that the Removal Opponent is an intellectual property holding company that licences the use of its trade marks to Basil B.V. (‘Basil’). Annexure MVB-1 to Van Balveren is a copy of an intercompany trade mark licence agreement between the Removal Opponent and Basil. Basil is a Dutch-headquartered company founded in 1976 that designs, manufactures and supplies bicycle accessories. Basil offers for sale and sells a wide range of bicycle accessories including baskets, bags, bells and carriers.
Mr Van Balveren states that the Trade Mark is specifically used to offer for sale and sell bicycle bags with the style names Basil Ever-Green, Basil Elegance, and Basil Bloom Field (‘Bag Products’). In its written submissions the Removal Opponent submits that the Trade Mark is also used in relation to bicycle crates.
Mr Van Balveren claims that BikeSportz Imports Pty Ltd (‘BikeSportz’) is the exclusive distributor of Basil products in Australia. Confidential Annexure MVB-4 to Van Balveren is a copy of the distribution agreement between Basil and BikeSportz. As part of the distribution agreement, BikeSportz regularly purchases products, including the Bag Products and bicycle crates, from Basil. Confidential Annexure MVB-5 to Van Balveren comprises copies of invoices issued by Basil to BikeSportz dated between 17 March 2020 to 17 March 2023.
Mr Van Balveren states that in addition to Basil selling its products to BikeSportz for distribution to independent resellers, it also provides BikeSportz with the rights operate an online store accessible via (‘Website’).[10] Annexure MVB-8 to Van Balveren comprises screenshots from the Internet Archiving Service Wayback Machine of the Website dated from 21 March 2021 to October 2022. The screenshots show the Basil Ever-Green bag products offered for sale. Confidential Annexure MVB-9 to Van Balveren lists the sales figures and volume of sales of the Bag Products sold via the Website.
[10] Van Balveren, [15], Annexure MVB-7.
Mr Van Balveren declares that Basil promotes the sale of its products through catalogues that it distributes to its distributors and importers in Australia and around the world. Annexure MVB-10 to Van Balveren comprises copies of the Basil product catalogues for the years 2021, 2022 and 2023. Details from the catalogues follow:
·     The 2021 Collection catalogue features use of the Opponent’s trade mark (‘Logo trade mark’) next to a picture displaying the Basil Ever-Green daypack product. I have reproduced the image below:
·     The 2022 Collection product catalogue features the word trade mark [re]-Cycling (‘Word trade mark’), in a public statement to consumers and the Logo trade mark appears in relation to the Basil Ever-Green bag products. I have reproduced the images below:
·     The 2023 Collection product catalogue features the Word trade mark in a public statement to consumers, and the Logo trade mark in relation to the Basil Elegance, Bloom Field and Ever-Green bag products, as well as Basil bicycle crates.
Annexure MVB-11 to Van Balveren comprises screenshots from the Wayback Machine of the Website, dated from 9 December 2021 to 2 March 2023. The screenshots all feature a statement regarding Basil’s commitment to sustainability which started in 2012 with its bag products made from recycled canvas, which launched the [re]-Cycling label.
In my assessment of the evidence, I am satisfied that Bag Products identified in the 2022 and 2023 product catalogues which feature the Logo trade mark are the goods listed as sold in Australia via the Website. Evidence that the Bag Products were imported into Australia and available for sale during the Relevant Period is supported by the invoices issued by Basil to BikeSportz. I am also satisfied that the Logo trade mark has been used in relation to bicycle crates. The bicycle crates were promoted in the 2022 and 2023 product catalogues and were available for sale in Australia during the Relevant Period.
Therefore, under s 100(3)(a), I must consider whether use of the Logo trade mark is use of the Trade Mark with additions or alterations not substantially affecting its identity. The test is the same as the test in respect of substantial identity and this requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[11] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:
[11] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Trade Mark

Logo trade mark

[Re-]cycling

On a side by side comparison I find that the Trade Mark is substantially identical to the Logo trade mark. The Trade Mark consists of the prefix RE and a hyphen inside square brackets, and the word cycling. In comparison the Logo trade mark consists of a symbol consisting of three chasing arrows folded in a Mobius strip, the prefix RE inside square brackets, and a hyphen and the word cycling.
In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited[12] the High Court considered that use of the word BAREFOOT with a barefoot device was use of the word with an addition that did not substantially affect its identity because the device was an illustration of that word. In the current matter, the use of the symbol being the universal recycling symbol in the Logo trade mark is readily characterised as an illustration of the term recycling and does not substantially affect its identity because the device is an illustration of that word. In addition, the difference in the positioning of the hyphen in the respective trade marks does not subtract from the essential feature of the trade mark which remains the word RE CYCLING. As such use of the Logo trade mark will be considered use of the Trade Mark with additions or alterations that do not substantially affects its identity.
[12] [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).
Therefore, I find that the Removal Opponent has used the Trade Mark in good faith in relation to the following Protected Goods in class 12:
bags adapted for bicycles; handle bar bags and side bags adapted for bicycles; bicycle crates
In regard to the Removal Opponent’s remaining Protected Goods in classes 9, 12 and 25, (’Remaining Protected Goods’) if the Removal Opponent fails to establish an obstacle to use, I have a discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.
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 Remaining Protected Goods in the Relevant Period pursuant to s 100(3)(c). I note that I have been unable to identify any such obstacles. As there are no obstacles 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 on the Register for any of the Remaining Protected Goods.
Registrar’s discretion
Section 101(3) provides:
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. [emphasis added]
(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. … [emphasis added] [citation omitted]
(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. [emphasis added]
(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;
…
[13] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).
(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.[13]
To exercise the discretion under s 101(3), I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of all or some of the Remaining Protected Goods. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[14]
[14] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
Mr Van Balveren declares that to the extent that the Removal Opponent has not used the Trade Mark in Australia within the Relevant Period in respect of any of the Remaining Protected Goods, it has used the Trade Mark in good faith in respect of similar goods.[15] In particular the Removal Opponent states that the Remaining Protected Goods in class 12 are similar goods to the Bag Products and bicycle crates, because the Remaining Protected Goods in class 12 are all bicycle related products or accessories.
[15] See Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) [2006] FCA 880, [24] (Finkelstein J).

The Removal Opponent submits the Remaining Protected Goods in class 9 are similar to Bag Products and bicycle crates in class 12 and that the same applies to the Protected Goods in class 25 to the extent that the class 9 and 25 goods may ordinarily be sold in bicycle stores. In particular, the class 9 and 25 goods:
a) have the same use and purpose as the Bag Products and the bicycle crates, being goods which are used in conjunction with cycling and to assist users undertaking cycling journeys;
b) are likely to have the same origin and manufacturers as the Bag Products and the bicycle crates, with all such goods being specifically adapted for use while cycling and are accordingly bought and distributed by the same distributors and wholesalers within the relevant trade;
c) are ordinarily bought and sold within the same trade channels as the Bag Products and the bicycle crates, including, most relevantly specialist bicycle retail stores and specialist bicycle online retailers, which are frequented by the same type of consumer or buyer of the Bag Products (being recreational cyclists); and
d) consumers or buyers of such products would have cause to wonder whether the class 9 and 25 goods emanate from the same source as the Bag Products and the bicycle crates and would therefore be likely to perceive a connection between them, on the basis that they are likely to be bought and sold within the same trade channels as the Bag Products and the bicycle crates.
Further, Mr Van Balveren states that the Removal Opponent enjoys a reputation which arises from its use of the Trade Mark in Australia and if the Removal Applicant was to register or use the Trade Mark or a similar trade mark in relation to the same or similar products, it would be highly likely that this will cause confusion in the marketplace. Furthermore, the Removal Opponent has not abandoned the Trade Mark and intends to continue using it in relation to the Protected Goods in the future.
In response, the Removal Applicant submits that the Removal Opponent has only demonstrated use of the Trade Mark in relation to the Bag Products and bicycle crates and there is no “good reason” why the Trade Mark should remain on the Register for the Remaining Protected Goods.
Further the Removal Opponent has not demonstrated a reputation in the Trade Mark over and above the Bag Products and bicycle crates. The Removal Applicant submits that whilst it is clear from the Removal Opponent’s catalogues that it is in the business of manufacturing stylish accessories for bicycles, such as bags, bells and helmets (although mostly not in connection with the Trade Mark), it has not demonstrated any actual sales of bicycles or intended sales of bicycles in Australia. Similarly, the Remaining Protected Goods in classes 9 and 25 are dissimilar to the Bag Products and bicycle crates.
I am not persuaded by the Removal Opponent’s submissions. The Reminding Protected Goods broadly are made up of the following:
·     Class 9: bicycle helmets being clothing that protects against injuries and glasses being optical apparatus;
·     Class 12: bicycles including accessories/parts being apparatus used for the transport of people and animals or things by land, even if the transport is for sports; and
·     Class 25: clothing, footwear and headgear (including bicycle clothing and footwear) being wear used for normal dress purposes (including for sports).
The Remaining Protected Goods in class 12 includes apparatus such as bicycle baskets, handle bars bags and side bags adapted for vehicles; bicycle boxes and luggage carriers for vehicles, which are all utilised in the transportation of goods. However, in over 11 years of protection in Australia none of these goods have been promoted under the Trade Mark. Simply because these items may be associated with the Bag Products and bicycle crates, is not sufficient on its own to warrant leaving those goods protected. I also note that class 12 includes bicycles and bicycle parts and Bag Products and bicycle crates are not structural parts to a bicycle.
In regard to the Remaining Protected Goods in classes 9 and 25, while the specifications include specific and non specific goods that could be worn while riding a bicycle, and may be sold via the same trade channels, they are of different nature and utilised for different purposes in particular for personal wear to insulate against hot or cold conditions and to protect the head, eyes and feet from injury, rather than as an accessory to transport goods.
The reputation asserted by the Removal Opponent is not supported by the evidence. There is limited evidence of the sales and promotional activities for the Remaining Protected Goods featuring the Trade Mark and for the Protected Goods which are not branded with the Trade Mark. As such, I do not consider that if an identical or deceptively similar trade mark was used on the Remaining Protected Goods that consumers are likely to be deceived or confused into thinking that those goods are the goods of the Removal Opponent. The Removal Opponent retains the Bag Products and bicycle crates in class 12 and the scope of protection would incorporate those and similar goods and closely related services, which would be broad enough to prevent consumer confusion.
Given the limited use and promotion of the Trade Mark, I do not consider that it is appropriate to exercise my discretion to retain protection of the Trade Mark for any of the Remaining Protected Goods. In my view, the public interest in the integrity of the Register outweighs the private interest in retaining protection for a broader range of goods. In the circumstances, I do not find it reasonable to exercise my discretion to preserve the Remaining Protected Goods in classes 9, 12 and 25.
Decision
The Removal Opponent has partially rebutted the allegation of non-use in relation to the following Protected Goods in class 12:
bags adopted for bicycles; handle bar bags and side bags adapted for bicycles; bicycle crates
Therefore, I refuse to cease protection of the Trade Mark in its entirely. I direct that one month from the date of this decision the IRDA be amended as set out below (note: items struck through are deleted):
Class 9: ~~Bicycle racing helmets; bicycle helmets; glasses; sunglasses; sports glasses; bicycle racing glasses; bicycle glasses~~
Class 12: ~~Bicycles; bicycle baskets, also for animals;~~ bags adapted for bicycles; handle bars bags and side bags adapted ~~for vehicles and~~ for bicycles; ~~covers for bicycle bags, covers bicycles,~~ bicycle crates, bicycle boxes, luggage carriers for vehicles; dress guards, chain guards, mud guards, systems for securing baskets or bags to bicycles, saddle covers, cushions suited for child's saddles, windbreak flaps and other similar bicycle parts not included in other classes
Class 25: Clothing, footwear and headgear; shirts, pants, body warmers, coats, jackets and wind resistant jackets; sports clothing; bicycle clothing; bicycle pants; bicycle racing clothing, pants and shirts for bicycle racing; underwear; rainproof clothing, rainwear, raincoats, overcoats, rainproof pants, rain ponchos, rain parkas and rain boots; waterproof hats; gloves (clothing), bicycle gloves and bicycle racing gloves (clothing); socks; sports shoes, bicycle racing shoes, bicycle shoes and hiking shoes; overshoes; caps; bonnets; bandanas (scarves)
If the Registrar is served with a notice of appeal before then, I direct that the partial cessation of protection shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the IRDA be dealt with as the Court sees fit.
Costs
Both parties sought an award of costs. As both parties have had a measure of success, I decline to award costs.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 March 2025

[2025] ATMO 63

25 March 2025