JAS-Oceania Pty Ltd v Joint Analytical Systems GmbH

[2011] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by JAS-Oceania Pty Ltd to application under section 92 of the Act by joint analytical systems GmbH to remove trade mark numbers 1252923(7, 9, 11, and 35) - JAS Oceania - in the name of JAS-Oceania Pty Ltd

Delegate:

Iain Thompson

Representation:

Opponent: Not represented at hearing, relied on written submissions

Applicant: Fraser Old of Fraser Old & Sohn, Patent and Trade Mark Attorneys

Decision:

2011 ATMO 105

S92 application for partial removal – partly established, exercise of Registrar’s discretion – registration partially removed.

Parties to bear own costs

Background

1. This decision concerns an application under section 92 of the Trade Marks Act 1995 (‘the Act’) for the partial removal of trade mark registration 1252923 (‘the registration’) owned by JAS-Oceania Pty Limited (‘the owner’) of Tullamarine, Victoria, from the Register of Trade Marks.  Details of the registration appear immediately below:

Registration No:              1252923

Priority Date:  23 July 2008

Goods/Services:              Class 7: Machines and machine tools; motors and engines in this class; machine coupling and transmission components in this class; alternators; distributors; starters used in motors; switches in this class; apparatus and equipment used to control, regulate and reduce speed in this class; electric apparatus and appliances in this class; fans in this class; electric hand held tools; power operated tools and apparatus in this class; condensers in this class; compressors in this class; fuel pumps in this class; parts and components used in motors and engines in this class; parts and accessories for all the aforesaid

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; devices used to control and measure speed in this class; navigation apparatus in this class; detection apparatus, other than for medical use; alarms in this class; batteries; fuses; fuel dispensing pumps in this class; beacons in this class; strobe lights in this class; inverters in this class; cables in this class; switches in this class; computer hardware and software; magnetic data carriers, recording discs; stereos and stereo equipment, apparatus and instruments in this class; parts and accessories for all the aforesaid

Class 11: Lights and lighting apparatus; strobes in this class; apparatus and appliances used in lighting, heating, steam generating, refrigerating, drying, ventilating and water supply, including but not limited to fans, air conditioning units and appliances, evaporators, compressors, heaters and heat generating appliances, globes, refrigerant condensers; thermostats in this class; parts and accessories for all the aforesaid;

Class 35: Advertising; business management; business administration; office functions; retail, wholesale, sales promotions and distribution services, including the selling and wholesaling of goods on-line; import and export services; import-export agency services; export promotion services; advice relating to business management; business accounts management; business advisory services relating to the management of businesses; office management services; provision of information, advice and consultation relating to the aforesaid, including the provision of such information, advice and consultation via the Internet

Trade Mark:  

(‘the registered trade mark’)

2. On 5 July 2010, joint analytical systems GmbH (‘the applicant’) of Moers, Germany, filed an application under section 92 of the Act for the partial removal of the registration. The application is couched in the following terms:

On 23 July 2008 being the day upon which the application for Registration No. 1252923 was filed, JAS-Oceania Pty Limited had no intention in good faith:

(i)       to use the trade mark in Australia; or

(ii)      to authorise the use of the trade mark in Australia; or

(iii)     to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and services indicated by strikethrough as above, and that JAS-Oceania Pty Limited:

(iv)     has not used the trade mark in Australia; or

(v)     has not used the trade mark in good faith in Australia;

in relation to those goods and services at any time before the period of one month ending on the day on which this non-use application is filed

3. The goods (‘the challenged goods’) in respect of which the applicant seeks the partial removal of the registration are the following:

Class 7: Machines and machine tools; motors and engines in this class; machine coupling and transmission components in this class; apparatus and equipment used to control, regulate and reduce speed in this class; electric apparatus and appliances in this class; fans in this class.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; devices used to control and measure speed in this class; navigation apparatus in this class; detection apparatus, other than for medical use; computer hardware and software; magnetic data carriers, recording discs; stereos and stereo equipment, apparatus and instruments in this class.

Class 11: Lights and lighting apparatus; strobes in this class; apparatus and appliances used in lighting, heating, steam generating, refrigerating, drying, ventilating and water supply.

Class 35: Advertising; business management; business administration; office functions; import and export services; import-export agency services; export promotion services; advice relating to business management; business accounts management; business advisory services relating to the management of businesses; office management services; provision of information, advice and consultation relating to the aforesaid, including the provision of such information, advice and consultation via the Internet.

4. On 29 October 2010, the owner filed Notice of Opposition (‘the Notice’) to the removal of the registration.  The Notice states:

(a)Jas Oceania Pty Limited uses and has good faith intentions to continue use and/or commence further uses of the trademark in relation to particular goods subject of the removal and intends on defending its rights to continue such use.

(b)The applicant seeks registration of a similar trademark, being prevented due to the existence of the Jas Oceania trademark. The parties have communicated in an attempt to find amicable grounds for each party to continue with their use of their respective marks, at the time of filing this opposition no agreement has been reached so the Opponent is left with no other alternative than to oppose the request for removal in respect of particular goods and services, as indicated by 'strike through' text in the application made for removal of the trademark for non-use.

(c)The grounds upon which the removal applicant relies demand that Jas Oceania had no intention in good faith, on the date the trademark was filed to 'use' the trademark and that Jas Oceania has not used the trademark in Australia or not used the trademark in good faith in Australia. Further to reason (a) above Jas Oceania Pty Limited rejects any claim that it had no good faith intention on 23 July 2008 (the filing date), in relation to particular goods and services subject of the removal application:

- To use the trademark in Australia; or

- To authorise the use of the trademark in Australia; or

- To assign the trademark to a body corporate for use by the body corporation in Australia

5. The opponent has served and filed evidence in support of its opposition.  The applicant has not served and filed evidence in answer.

6. The parties were informed of their right to be heard and the applicant requested a hearing.  The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 10 August 2011.  Mr Fraser Old of Fraser Old & Sohn, Patent & Trade Mark Attorneys, made submissions on behalf of the applicant.  The opponent did not appear at the hearing and it relied on written submissions.

Onus

7. The onus in these proceedings is on the owner of the registered trade mark to rebut any relevant allegation[1] made in the application for removal of the registered trade mark from the Register: section 100 of the Act.

[1] The application contained a claim that the applicant is a person aggrieved but this claim is not a relevant allegation under the Act in its current form and there is no need for the owner to address it.

The Evidence

8. The owner’s evidence comprises a statutory declaration by Nicholas Hollings who is the Director of the owner.

9. Put briefly, the owner of the registered trade mark is a retailer and wholesaler of automotive, marine and workshop parts, equipment and accessories.  While the letters JAS in the owner’s name and trade mark are, states Mr Hollings, an acronym formed from the initial letters of the expression ‘Japanese Alternators and Starters’, subsequent to the first use of the trade mark in 2005 he quickly expanded the product categories of the owner beyond these goods and at the time of making his Declaration was anticipating to add progressively more products to the range.

10.     The owner of the registered trade mark was incorporated in 2005 and had (at the date of the filing of the application for removal) expanded to thirteen retail outlets around Australia and an Internet site where catalogues may be accessed and/or downloaded.

11.     Mr Hollings’s Declaration, and the exhibits thereto, show that the opponent uses the registered trade mark in relation to a variety of automotive, marine and workshop components, accessories, replacement parts, lights for automotive applications, and the like.  Some of this use appears to be conceded by the applicant – however, it is the scope of the use of the registered trade mark on particular goods on which both the application for removal and Mr Old’s oral and written submissions were focused.

Reasoning

12. 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:

(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)to use the trade mark in Australia; or

(ii)to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)has not used the trade mark in Australia; or

(v)has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(b) […]

Note 1:For file and month see section 6.

Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

(5)If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first‑mentioned person as the applicant.

13.     The applicant, as I have mentioned, does not dispute that the owner has used the registered trade mark on some goods but, to gauge from Mr Old’s submissions, it submits that much of the owner’s alleged use has been, in effect, a retailing service in relation to the goods of other traders which, in the evidence of Mr Hollings, bear the trade marks of other traders and not the registered trade mark.

14. Sections 17 and 9 of the Act provide:

17What is a trade mark?

A trade mark is 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.

Note:For sign see section 6.

9Definition of applied to and applied in relation to

(1)For the purposes of this Act:

(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

(b)a trade mark is taken to be applied in relation to goods or services:

(i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

(ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

(c)a trade mark is taken also to be applied in relation to goods or services if it is used:

(i)on a signboard or in an advertisement (including a televised advertisement); or

(ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

(2)In subparagraph (paragraph (1)(b)(i):

covering includes packaging, frame, wrapper, container, stopper, lid or cap.

label includes a band or ticket.

15.     The major part of the owner’s evidence takes the form of a printout of the catalogues which were on its Internet website as at 25 January 2011.  Mr Old did not dispute that the printout does not accurately reflect the usage of the registered trade mark on any of the owner’s catalogues before 5 June 2010: that is, one month before the applicant filed the removal application.

16. As a preliminary matter, I observe that the submission of Mr Old that the owner has not used its trade mark as the trade mark does not appear on the goods shown within the catalogues (and is thus not used by the owner) is not well founded. Section 9 does not contain a requirement that a trade mark appears on goods but provides that a trade mark is taken to be applied in relation to goods if it is ‘applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade’. A trade mark is also taken to be applied to, or used in relation to, goods if it is ‘applied to an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document and goods are delivered to a person following a request or order made by referring to the trade mark as so used’.

17.     The owner’s website functions largely as a series of online catalogues.  Many of the goods pictured within the catalogues do not bear the registered trade mark but at the same time they do not obviously bear any other trade mark.  However, it is unrealistic to suppose that the goods as they appear in a catalogue might be displayed within their packaging and I am aware that when generic goods (as some of the goods appear to be) are sold it is frequently only the packaging which bears the trade mark.

18.     The registered trade mark appears on the ‘home’ page of the owner’s website.  The registered trade mark also appears at the top of the front page of each catalogue of goods which may be accessed on the owner’s website and on each subsequent page of each catalogue.  Absent any argument from the applicant that the owner has not shown that it has sold goods to people who reference its website, I accept that these uses are uses of the registered trade mark in relation to goods displayed within the catalogues which do not obviously carry the trade marks of others and which appear on its website. 

19.     The goods in the catalogues which do not apparently carry the trade marks of other traders include: generators, starters, electric motors, blower packs, resistors, circuit breakers, relays, flasher units, buzzers, globes, LED globes, reverse alarms, back up alarms, forward horns, rear view colour cameras, cables for cameras, reverse camera parts including mounting brackets, power harnesses and plugs and cables therefore, switch mode reducers, globe holders, pilot lamps, emergency lighting including strobes, LED lights including work lamps, flood lamps and spot lamps, evaporators for air-conditioners, heater cores and heater taps.  

20.     The registered trade mark which appears on the Internet webpage and in the catalogues in relation to the immediately preceding goods on the owner’s website ‘is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods’[2] as being the goods of the owner.  Indeed, if I am wrong in my conclusion that the owner has used its registered trade mark in relation to the apparently generic goods within the catalogues in evidence, there is room for the view that other people who look at the catalogues are also likely to view these uses as uses of the registered trade mark in relation to the apparently unbranded goods shown in the catalogues.

[2] Section 9, above.

21.     I observe that where trade marks of other owners (such as EAGLITE or PHILLIPS) appear on or in relation to the goods displayed on the owner’s website and catalogues, the trade mark of the owner which also appears elsewhere on the same page is being used in respect of the retail and/or wholesale services for which it is registered.  Goods which are evidenced to be the subject of these retail or wholesale services include: reverse cameras and screens, speedometers, voltmeters, hour meters, digital timers and parts and accessories, voltage reducers, lighting adaptors, voltage boosters, sine wave inverters, fluorescent lamp inverters, electric trailer brake controllers, electric trailer brake controller adaptors, electronic brake controllers, battery isolators, battery monitors, surge protectors, programmable timers, daytime running light modules, low water level alarms and indicators, hand brake alarms, lights and lamps for emergency, automotive, workshop and marine use.

22.     It would appear from the owner’s website, in evidence, that it does not franchise its retail operations.  As such, it is difficult to agree with the owner that it performs many of the services listed on the registration with the exception of retail services and any wholesale services that it might perform.  The functions of advertising, managing a business, importing goods and so on only becomes a service when a trader is performing those functions on behalf of another for remuneration – for example, acting as an advertising agency or importation agent for others.  As I recently observed in Adbri Masonry Group Pty Ltd v Ecopave Australia Holdings Pty Ltd [2011] ATMO 42 at paragraph 19:

Put at its most basic: cooking meals for one’s own consumption is not a catering service; neither is cooking meals for consumption by one’s family or friends since the activity is not ‘in the course of trade ’. The cookery becomes a catering service when one performs that service at the request of a third party for payment.

23.     I have found that the owner has used the registered trade mark in relation to the goods listed at paragraph 17, above.  In considering how far this use goes towards maintaining its registration, I must also consider that ownership of a trade mark extends to goods which are the same kind of thing as the relevant goods. 

24.     Considerations involved in the ownership of a trade mark relevantly include:

·   Use of the trade mark in relation to the goods without alterations or additions which substantially alter its identity, [3]

·   Use of the trade mark in relation to particular goods extends the ownership of the trade mark to goods which are the ‘same kind of thing’.[4]

[3] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

[4] “The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods ‘of the same kind’: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 and In re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 at 640”: Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 per Kenny J at para 6.

25.     The owner has used the registered trade mark on its Internet website and within the catalogues in evidence without alterations or additions which substantially affect its identity.

26.     The meaning of the expression ‘same kind of thing’ was considered in the Full Bench of the Federal Court decision in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 (2007) 74 IPR 246; (2008) AIPC 92-272. Kenny J said at paragraph 14:

As we have seen, generally speaking, the prior public use in Australia of a  mark as a trade mark – that is, the use of the mark in relation to goods or services in order to show a connection between the goods and the user of the mark  – may support the user’s claim to be the “owner” of the  mark  for the purpose of s 27 of the 1995 Act: see Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73; (1984) 156 CLR 414 at 432 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). For this purpose, too, the owner’s right to registration extends to goods “of the same kind” as the goods that have already borne the mark: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 per Stirling J and In re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 at 640 per Holroyd J. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):

[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.

In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 Gummow J briefly considered whether there was any lack of identity between the services for which the respondent sought registration and those that had been previously provided by the applicant. His Honour’s approach emphasised the absence of any material difference between the parties’ services. He held (at 514) that the evidence did not “suggest that there is any particular difference in the character or quality of the services provided by” either party other than their geographical location. Had it been important, he would not have held that “the difference in the description of services was such as to disqualify Carnival from any other success it would otherwise have had in its opposition based on its claim to proprietorship”.

In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a “same kind” inquiry from the factors for a “same description” inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as “essentially the same” may well cover a narrower field than goods “of the same description”.

As Allsop J notes, this approach conforms to the approach in the Trade Mark Office in opposition proceedings based on prior use. His Honour refers to numerous examples. Other examples can be cited. In Howe Laboratories Inc v Daemar (1936) IPR 638[5] the services of the opponent – the treatment of motors and engines – were held not to be the same kind of thing as the applicant’s lubricant conditioning agent. In Coleman Company Inc v Igloo Products Corporation (1999) 48 IPR 158 the opponent’s insulated containers were held not to be the same kind of thing as the applicant’s insulated thermoelectric containers. In The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334, the opponent’s service of providing food and drink refreshments to cinema patrons was not the same kind of thing as the applicant’s food goods. In Nissan Jidosha Kabushiki Kaisha v Woolworths Ltd (1999) 45 IPR 649 the clocks mounted in the opponent’s vehicles were not the same kind of thing as the applicant’s clocks and watches. In Cantarella Bros Pty Ltd v Novadelta-Comercio E Industria De Cafes LDA (1998) 42 IPR 265 olive oil and olive products were held not to be the same kind of thing as coffee.

[5] This citation is more correctly stated as (1996) 36 IPR 638.

27.     It is not necessary for me now to consider how far the demonstrated use of the registered trade mark extends the scope of the relevant goods in terms of ownership concepts in relation to the challenged goods within the specification of goods of the registered trade mark.  It is sufficient to record that both parties have established their respective positions to a limited degree.  However, I presently observe in general terms that, keeping the above analogy of hatchets and axes in mind, goods such as ‘generators’ should include, for example, most kinds and sizes of generators and electric motors with an automotive, marine or workshop purpose or application and that similar observations are applicable to most of the goods and services in respect of which the registered trade mark has been used: for example, alarms, video cameras, and lighting equipment and apparatus.

Use in Good Faith

28.     Although this aspect was not argued by Mr Old at the hearing, the above uses of the registered trade mark are challenged in the application for removal by the applicant on the basis that they are not uses of the registered trade mark in good faith.  In Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 354, Gummow J observed:

Section 23(1)(b) of the Act also uses the expression “use in good faith “ as a criterion for expungement for non-use. There is, in relation to the comparable provisions in the Trade Marks Act 1938 (Eng), authority to the effect that in order to qualify as such use there must be a real or genuine use in a commercial sense, rather than colourable activity and “token” use designed to lead trade rivals to think that the registered proprietor was using its mark in a way which gave it the protection of the legislation: see Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72; KODIAK Trade Mark [1990] FSR 49; D R Shanahan, Australian Law of Trade Marks and Passing Off (2nd ed, 1990), pp 272-274.

29.     It is obvious from the owner’s evidence that the use to which the registered trade mark has been put is genuine use in a commercial sense and that therefore the uses of the registered trade mark can be observed to have been uses in good faith.

Registrar’s discretion

30. Section 101 is not mentioned in the Notice of Opposition to the removal application. However, the provisions of section 101 are not ‘grounds of opposition’ in the same sense as are provisions of ‘Division 2—Grounds for opposing registration’ which must be invoked by an opponent before they may be considered by the Registrar. Rather the discretion referred to within section 101(3) lies within the Registrar’s consideration of the appropriate disposition of a trade mark after the grounds of opposition to the removal application (and the extent to which they have been established) have been considered.

31. Section 101 of the Act relevantly 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.

(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.

32.     In Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, Yates J stated at paragraph 273:

In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 Flick J at [193]-[213] considered the principles that should inform the exercise of the discretion conferred by s 101(3). In light of his Honour’ analysis in that case, it is not necessary for me to set out a detailed discussion of those principles. I would note, however, that as Flick J observed (at [198]), the discretion conferred by s 101(3) is unlike the discretion involved in, say, removal actions formerly brought under s 23 of the repealed Act (see also Lander J in Kowa Company Ltd v N V Organon (2005) 223 ALR 27; [2005] FCA 1282 at [97]- [98]). Significantly, the discretion under s 101(3) is not conditioned on the need to establish “exceptional circumstances” before the discretion can be exercised favourably to the trade mark owner. However, as s 101(3) makes clear, the Court (or the Registrar, as the case might be) may only decide that the trade mark should not be removed from the Register “if satisfied that it is reasonable to do so”. This requires, in my view, the Court (or the Registrar) to be positively satisfied of that condition. In my view it is the opponent for removal who bears the burden of persuasion on that issue.

33.     And in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94; (2011) AIPC 92-409 at 310, (‘Hills’) Lander J said:

In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I rejected a contention that s 101(3) required the party seeking the exercise of the discretion to show “exceptional circumstances”. Flick J arrived at the same conclusion in E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at [198] which was not overturned by the Full Court on the appeal. So also did Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 at [168].

Section 101(4) informs the Registrar (and, on appeal, the Court) of the matters that the Registrar may take into account in exercising the discretion under subsection (3) not to remove a trade mark from the Register. However, s 101(4) does not purport to limit any other matters to which the Registrar (or the Court) may take into account. In determining whether it is reasonable for the mark to remain on the Register under s 101(3), s 101(4) permits the court to take into account the trade mark owner’ s use of the mark on goods which are “similar to” the goods specified in the registration.

34.     Further, in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934; ; (2008) 77 IPR 69 Flick J stated at paragraph 210:

Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register” (Kowa Co Ltd v Organon [2005] FCA 1282 at [92], 223 ALR 27 at 41–2 per Lander J), the private commercial interests of both Gallo Winery and Lion Nathan remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme -- or, at least -- a predominant interest is the maintenance of the integrity of the Register: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 at [40], [2000] HCA 12; 202 CLR 45 at 65. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised. Their Honours observed that:

[42] ... the Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public’s interests. 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. There 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 this property to valuable account by licensing or assignment. The provisions of the 1955 Act with respect to defensive registrations and certification marks were recognitions that the interests of the owners of registered trade marks may go beyond that of indicating trade origin. In Yale Electric Corporation v Robertson [(1928) 26 F 2d 972 at 973], Judge Learned Hand said of this interest: “that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises.” In this decade, legislation in the United States, the United Kingdom, and now in Australia to varying degrees has extended the infringement action to restrain activities which are likely adversely to affect the interests of the owner of a “famous” or “well-known” trade mark by the “dilution” of its distinctive qualities or of its value to the owner.

35.     And, for completeness, I note that Bennett J in Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135; (2009) 80 IPR 38 (‘Pioneer’) at paragraph 176 said:

The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal (E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [4] per Flick J). This is a hearing de novo and the parties have adduced evidence in this hearing directed to the exercise of discretion.

36.     While the Registrar’s discretion was not addressed by Mr Old at the hearing, I am satisfied by the owner’s evidence that it is reasonable and appropriate to exercise it that discretion in this instance.

37.     I am to consider the public interest, the interests of the parties and the integrity of the Register in the exercise of the Registrar’s discretion.  The kinds of factors going towards an exercise of that discretion may also include: that there has been no abandonment of a trade mark and that sales have occurred since the relevant period ended, that the applicant had entered the market without searching the Register[6] and brand extension and convergence of technologies[7].  However, to paraphrase Hills, above, subsections 101(3) and (4) do not limit any other matters which the Registrar (or the Court) may take into account in determining whether it is reasonable for the trade mark to remain on the Register.

[6] These quoted by Flick J in Gallo at paragraph 202 and Bennett J in Pioneer at paragraph 169.

[7] Pioneer at paragraph 193.

38.     The applicant for removal has a pending application (No. 1291256) for registration which is deferred awaiting the outcome of these proceedings.  The Declaration which was unnecessarily declared and submitted by Mr Old to support the applicant’s claim to be aggrieved[8] by the registration does not shed any more light on the applicant’s activities, whether the applicant’s trade mark is used, (or is only proposed to be used), or the presence or otherwise of the applicant’s goods bearing the applicant’s trade mark in the Australian market.  If there is no evidence from an applicant which goes to the balancing of the parties’ interests, a major weight must fall upon the other party’s evidence which does address these issues.

[8] The filing date of this application for removal is 5 July 2010.  There was no requirement that an applicant for removal be aggrieved on removal applications filed on or after 26 October 2006 when the Trade Marks Amendment Act 2006 commenced.  

39.     In view of the owner’s evidence, I consider that it is appropriate that the discretion under subsection 101(3) be exercised because it is obvious (as I will further explain) that the owner has used its trade mark in relation to some similar goods and closely related services as many of those items in respect of which removal is sought.  In addition to that consideration, it is apparent that the owner is a relatively new entity, founded in 2005, and still (when the removal application was filed) expanding both the number of retail outlets which it operates and the range of goods in relation to which it is using its trade mark which was registered just three years earlier in 2007.  I consider that it may be inappropriate in view of both this factor and the current scope of the registered trade mark’s use (which, for example, includes automotive accessories such as reversing cameras) to limit overly the scope of the registered trade mark of a fresh and expanding automotive spare parts business from including such goods as GPS devices, automotive radios, stereos and the like only because the activities of that business have not yet expanded to the scope of what it might reasonably be expected to become or include in the future.

40.     The goods in relation to which the owner has established use of the registered trade mark during the relevant period are:

Generators, starters, electric motors, blower packs, resistors, circuit breakers, relays, flasher units, buzzers, globes, LED globes, reverse alarms, back up alarms, forward horns, rear view colour cameras, cables for cameras, reverse camera parts including mounting brackets, power harnesses and plugs and cables therefore, switch mode reducers, globe holders, pilot lamps, emergency lighting including strobes, LED lights including work lamps, flood lamps and spot lamps, evaporators for air-conditioners, heater cores and heater taps.

41.     As well, the owner has used the registered trade mark in relation to retail or wholesale services involving the following goods:

Reverse cameras and screens, speedometers, voltmeters, hour meters, digital timers and parts and accessories, voltage reducers, lighting adaptors, voltage boosters, sine wave inverters, fluorescent lamp inverters, electric trailer brake controllers, electric trailer brake controller adaptors, electronic brake controllers, battery isolators, battery monitors, surge protectors, programmable timers, daytime running light modules, low water level alarms and indicators, hand brake alarms, lights and lamps for emergency, automotive, workshop and marine use.

42.     The question which arises is whether the goods and services at paragraphs 40 and 41 above are (respectively) closely related goods or services to those challenged goods or services in relation to which the removal application applies[9], namely:

Class 7: Machines and machine tools; motors and engines in this class; machine coupling and transmission components in this class; apparatus and equipment used to control, regulate and reduce speed in this class; electric apparatus and appliances in this class; fans in this class.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; devices used to control and measure speed in this class; navigation apparatus in this class; detection apparatus, other than for medical use; computer hardware and software; magnetic data carriers, recording discs; stereos and stereo equipment, apparatus and instruments in this class.

Class 11: Lights and lighting apparatus; strobes in this class; apparatus and appliances used in lighting, heating, steam generating, refrigerating, drying, ventilating and water supply.

Class 35: Advertising; business management; business administration; office functions; import and export services; import-export agency services; export promotion services; advice relating to business management; business accounts management; business advisory services relating to the management of businesses; office management services; provision of information, advice and consultation relating to the aforesaid, including the provision of such information, advice and consultation via the Internet.

[9] Note: not all of the goods and services encompassed by the registered trade mark are under consideration since not all goods are challenged in the application for removal.

43. 43. The term “closely related goods and services” is not defined in section 14 of the Act. However that section, in considering “similar goods” and “similar services”, provides:

14Definition of similar goods and similar services

(1)For the purposes of this Act, goods are similar to other goods:

(a)if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

(2)For the purposes of this Act, services are similar to other services:

(a)if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

44.     What constitutes goods of the same description was considered in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 the Court stated:

The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p 94. (at p 607)

45.     In view of the above considerations, I consider it reasonable to leave the specification of the registered trade mark in Class 7 undisturbed.  I believe that it is appropriate to remove the trade mark from the Register in Class 9 in respect of scientific, nautical, survey equipment, weighing equipment, life saving and teaching apparatus and instruments, magnetic data carriers and recording discs.  I consider it to be unreasonable to restrict the owner’s goods in Class 11 in view of the scope of the owner’s current use of the trade mark and what it might reasonably be expected to include.  I concur with the applicant that the registered trade mark should be removed from the Register in respect of most services in relation to which removal is sought (and thus remain only registered in respect of ‘retail, wholesale, sales promotions and distribution services, including the selling and wholesaling of goods on-line’).  In so deciding, I observe that the goods and services in Classes 7, 9 and 11 and the 35 in respect of which the registered trade mark will remain registered meet the general criteria and observations which I have set out at paragraph 39 above.

Decision

46. Section 101 of the Act relevantly 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.

47.     I direct that one month from the date of this decision registration 1252923 be removed from the Register of Trade Marks in respect of the following goods:

Class 9:

Scientific, nautical, survey equipment, weighing equipment, life saving and teaching apparatus and instruments, magnetic data carriers and recording discs.

Class 35:

Advertising; business management; business administration; office functions; import and export services; import-export agency services; export promotion services; advice relating to business management; business accounts management; business advisory services relating to the management of businesses; office management services; provision of information, advice and consultation relating to the aforesaid, including the provision of such information, advice and consultation via the Internet.

(ie, that the services in respect of which the trade mark should remain registered will read: ‘retail, wholesale, sales promotions and distribution services, including the selling and wholesaling of goods on-line.’)

48.     If the Registrar has been served with a notice of appeal before one month of the date of this decision, I direct that the removal of the registered trade mark shall not occur until the appeal has been decided or discontinued and that the disposition of the application for removal and the registration should be in accordance with the Court’s order or direction.

Costs

49.     In this matter both the applicant and the owner might be reasonably viewed as having succeeded in equal measure and under these circumstances the parties should bear their own costs.  Accordingly I make no award of costs.

Iain Thompson

Hearing Officer

Trade Marks Hearings

27 October 2011