JPW Industries Inc v Jewon Lee

[2024] ATMO 196

TRADE MARKS ACT 1995

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

Re:Opposition by JPW Industries Inc to application under regulation 17A.48C of the Trade Marks Regulations 1995 by Jewon Lee for partial cessation of protection of Protected International Trade Mark number 986208 (International Registration number 806142) (classes 6, 7, 8, 9, 11, 12, 16, 17 and 22) – JET - in the name of JPW Industries Inc

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Andrew McRobert of counsel instructed by Wrays Pty Ltd

Applicant: Spruson & Ferguson

Decision:

2024 ATMO 196

Trade Marks Act 1995 (Cth) – application under regulation 17A.48C for partial cessation of protection - evidence shows use of the trade mark during the relevant period on some goods - exercise of Registrar’s discretion for remaining goods - protection of trade mark to remain.

Background

1.     JPW Industries Inc (‘Opponent’) is the Holder of International Registration 806142 (‘IR’). Protection of the IR was extended to Australia under trade mark number 986208. Relevant details are as follows:

Trade Mark

JET (‘Trade Mark’)

Priority date

22 December 2003

Protected goods

Class 6: Anvils; collet sleeves for fastening forms and securing parts for shaping on a workbench; clamping part set; lever-operated mounting flanges; all the above products made of metal

Class 7: Electrically operated machines and tools used in wood and metal machining, particularly table saws, planing machines, drill presses, milling cutters for wood, scoring machines, band saws, sanding machines, wood-turning lathes, mobile frameworks, planing molders, wet vacuum cleaners, dry vacuum cleaners, mortising machines, circular saw blades, band saw blades, molding cutters; abrasives, namely grinding belts (as parts of machines), sharpening wheels, grinding blocks (as parts of machines), grinding wheels (as parts of machines), cross-cutting disks (not included in other classes), vertical and horizontal millers, drilling millers, surface grinders, workbench molders, hydraulic presses, mandrel presses, drill press vices, rotary tables, drill mandrels, drill chucks, milling tables, drilling tables; blade holder set; tools for working metal by forming (machines), particularly hand-operated press brakes, press brakes with boxes, press brakes with scoops, shears with stands, hydraulic shears, pneumatic shears, slide rollers, rotary presses; equipment-handling tools, namely electric freight elevators, pneumatic freight elevators, driving devices, grip driving devices, load binders, rams (as parts of machines), hook assemblies, pulleys, electric hoists, jack screws, hydraulic bottle jacks, hydraulic spur jacks, service jacks, fork jacks, workshop stands and trestles (lifting apparatus), transfer jacks, portable floor cranes, hydraulic presses, elevating trays, portable electric pumps; pneumatic tools, particularly grinders, fulling tools, rock drilling machines, clay excavators, trench excavators, rivet removal punches, cold chisels, drills, screwdrivers, sand-blasting machines, polishers, crushers, air hammers, riveting hammers, sand-removal guns, saws, cut-off tools, nibblers, shears, spray guns, riveting machines, nail punches/riveters, utility mixers; dust catchers (electrical machines) and their accessories (included in this class); guide strips (machine components); hand winches

Class 8: Manually operated tools and equipment, particularly cutters, cutters for bars, bar bending and folding tools, stamping and die-forging tools, pipe wrenches, chain pipe wrenches, adjustable angle wrenches, combination wrenches, hand-operated presses for fastening forms and securing parts for shaping on a workbench, socket wrenches, utility knives, punching devices, hand chisels, figure (numeral) punches, letter punches, drill and bit sets, riveting tools, wheel pullers and removers (tools), tap sets, guide die set (tools), pliers, hammers, hand-operated jacks, hand-operated scoring scissors, hand-held splitting shears; workbench vices (hand operated), universal vices, milling machine vices; wood vices, blocking ties

Class 9: Warehousing blocks (measuring instruments), pulse counters, filter control apparatus, lubricator control apparatus, tape decameters

Class 11: Air filtering installations

Class 12: Geared trucks, electric trucks, pneumatic trucks, utility dollies and deck platform semi-trailers, trucks for storage, fork-lift trucks for pallets and pallet trucks, hand trucks

Class 16: Tips for copper engraving

Class 17: Rubber or plastic air hoses used as parts or fittings for air or power tools

Class 22: Tarpaulins

2. On 10 January 2022, Jewon Lee (‘Applicant’) made an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] seeking partial cessation of protection of trade mark number 986208 (‘Removal Application’) in the following manner:

·removal of ‘wet vacuum cleaners, dry vacuum cleaners, dust catchers (electrical machines) and their accessories (included in this class)’ from class 7 (‘Challenged Goods’); and

·insertion of the qualifying phrase ‘none of the foregoing being vacuum cleaners’ to the end of the class 7 specification.

[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).

3.     The Opponent has opposed the Removal Application, filing a Notice of Intention to Oppose on 24 March 2022 and a Statement of Grounds and Particulars (‘SGP’) on 20 April 2022. The Applicant filed a Notice of Intention to Defend on 9 June 2022.

4.     The Opponent subsequently filed evidence in support of its opposition (‘EIS’). The Applicant did not file evidence in answer.

5.     Once the time allowed for filing evidence had ended, 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 2 October 2024 by video conference. Andrew McRobert of Counsel appeared for the Opponent. Michelle Calder of Spruson & Ferguson appeared for the Applicant. Both representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence of the Opponent, and the written and oral submissions of the parties.

Evidence

6.     The following EIS was filed:

Declaration of Jeffrey L Konkle, Vice President of product development and engineering of the Opponent dated 16 September 2022 together with Annexures JK-1 to JK-7 and Confidential Annexure JK-8 (‘Konkle’).

Legal Framework

7. Reg 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

8.     In respect of this matter, s 92 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.

9. 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,[2] and I confirm that five years since filing the Trade Mark has in fact passed.

[2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) 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.

10. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark on the Challenged Goods is the three year period ending on 10 December 2021 (‘Relevant Period’).

11.     The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Mark in respect of any or all of the Challenged 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.[5]

[3] s 100(1)(c).

[4] 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.

[5] s 100(3)(c).

12.     In Blount Inc v Registrar of Trade Marks, Branson J observed:

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[6]

[6] [1998] FCA 440 (citation omitted).

13.     It follows that unless the Opponent evidences convincing proof of use of the Trade Mark in the Relevant Period in relation to the Challenged Goods to the satisfaction of the Registrar, the opposition to removal will not be established.

14.     In Woolly Bull Enterprises Pty Ltd v Reynolds (‘Woolly Bull’),[7] 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’. He said:

Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here.[8]

[7] [2001] FCA 261, [16].

[8] Ibid [20].

15.     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] The fewer acts relied on the more solidly ought they to be established.[11]

[9] Ibid [17].

[10] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).

[11] Ibid.

16.     Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[12] Similarly, bald assertions of use during the relevant period which are not supported by clearly dated documentary evidence should be afforded little weight.[13]

[12] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

[13] Aristedes Maniatis v Roche Diagnostics GmbH [2022] ATMO 59, [26] (Hearing Officer Smith); Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno).

17.     Finally, the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[14]

[14] Nodoz (n 10); Re Trina Trade Mark [1977] RPC 131.

18.     Thus, if an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims.

19.     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).

20.     Section 101 provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any, or all, of the services for which they are registered. Relevantly, the section also provides:

(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.

Summary of EIS

21.     Konkle states that the Opponent is a global manufacturer and supplier of industrial tools, equipment and machinery under the Trade Mark, promoting its range of products via its website at (‘JET Website’). Konkle claims that the Opponent manufactures and supplies a number of machines and accessories under the Trade Mark that collect dust and generate suction like a vacuum, including dust collectors and air filtration units, as well as accessories such as blast gates and piping. Konkle provides images of some of these machines and accessories claimed to function as vacuum cleaners and dust catchers. Konkle annexes:

·undated screenshots from the JET Website showing the range of machines, tools and equipment promoted and supplied by the Opponent under the Trade Mark together with Wayback Machine[16] snapshots of the JET Website from 20 December 1996, 1 February 2019, 23 January 2020 and 26 January 2021. No indication is provided as to whether Australian consumers have accessed the website.

·screenshots dated 9 July 2022 from the JET Website which show images of JET branded dust catchers (including cyclone dust collectors), electrical air filtration and vacuum cleaning systems and their accessories available for purchase via the JET Website. I note reference to code 710701K for a dust collector and reference to dust collector item number DC 1200VX. No indication is provided as to whether Australian consumers can purchase goods from the JET Website.

·screenshots from the Opponent’s social media pages at JET lnstagram® and JET Facebook® which show JET branded dust catchers, electrical air filtration and vacuum cleaning systems. Four posts refer to a JET branded dust collector and display a date between 27 July 2019 and 13 July 2021. The ‘likes’ on these posts fall between 417 and 637.

[16] Konkle claims the JET branded products are generally supplied to end-consumers via the Opponent’s distributors. In Australia, one such distributor is Carbatec who sells JET branded products to Australian consumers through its website at the (‘Carbatec Website’). Konkle annexes an undated screenshot from the Carbatec Website showing the following range of the Opponent’s JET branded products, which I note do not include dust catchers, electrical air filtration or vacuum cleaning systems:

23.     Konkle states that the Trade Mark has been used on product catalogues, brochures and invoices provided to Australian customers relating to purchase of the Challenged Goods and on labels or markings affixed to these goods during the Relevant Period. Konkle annexes:

·an undated example of a Carbatec brochure claimed to be distributed in Australia showing examples of the Opponent’s JET branded machines, tools and equipment promoted and supplied through Carbatec in Australia, including a dust collector. I note that the brochure states:

and displays a picture of a JET branded dust collector as follows:

·an undated copy of a page from a Carbatec catalogue claimed to be distributed in Australia showing an example of the Opponent’s JET dust collector (under the heading Dust Extractors) being promoted and supplied through Carbatec in Australia. Although Konkle claims that the catalogue description of the dust collector states that the dust collector operates and catches dust by way of suction in the manner of a vacuum cleaner, I see no such wording in the catalogue page. I note references in the catalogue to the following:

and item numbers .

·     two confidential documents titled ‘Invoice 1’ and ‘Invoice 2’ claimed to be commercial invoices for the Opponent’s JET products shipped by the Opponent to an Australian distributor dated 8 October 2018 for Invoice 1 and 2 February 2019 for Invoice 2. I note the Australian distributor is not named on the documents and nor is the Opponent.

Discussion and Reasons

Use During the Relevant Period

24.     The Opponent submits that the Carbatec brochure[17] and catalogue[18] evidence distribution of brochures in Australia by Carbatec and that the Opponent has promoted its range of JET branded goods at the Opponent’s Website, websites of the Opponent’s Australian distributors and through the Opponent’s Facebook® and Instagram®.

[17] Konkle JK-6.

[18] Konkle JK-7.

25.     In respect of the Opponent’s claimed promotion on Facebook® and Instagram®, the only evidence which is dated and falls within the Relevant Period are four posts referring to a JET branded dust collector displaying a date between 27 July 2019 and 13 July 2021 (‘Posts’). In respect of the Posts, the Opponent has not provided any metrics to show that the Posts, let alone the Opponent’s Facebook® and Instagram® pages generally, have been viewed by Australian consumers. Absent this information, I afford this evidence little weight in my determination of non use.

26.     In respect of the Opponent’s claimed promotion at the Opponent’s Website, the Applicant submits that the Opponent’s Website does not show any direct connection to Australia or indication that it has been promoted in the Australian marketplace relying on Ward Group Pty Ltd v Brodie & Stone Plc, where Merkel J held:

…use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[19]

and Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited where the Full Court held:

More recently, the Full Court (comprised of Yates, Stewart and Rofe JJ) in Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 170 IPR 281 (‘Energy Beverages’) dealt with a case where a commercial using a trade mark was available on Facebook and YouTube. It declined to infer that the commercial had been viewed in Australia during the non-use period merely because an emoji and a comment had been posted to those pages. The Court at [76] cited Ward and Christian for the proposition that ‘[u]nder existing authority, which has not been challenged in the present application, the mere uploading of trade mark content on a website outside Australia is not sufficient to constitute use of the trade mark in Australia.[20]

[19] [2005] FCA 471, [43].

[20] [2024] FCAFC 15, [59] (Perram, Nicholas, Burley, Rofe and Downes JJ).

27.     The Opponent has not provided any evidence that the Opponent’s Website is in any way directed or targeted to Australian consumers. There is no reference or targeting at all to Australia such as a drop down link to a page containing the Opponent’s JET branded products marketed and sold in Australia.[21] I therefore afford this evidence little weight in my determination of non use.

[21] See International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd (2011) 218 FCR 398 (Logan J).

28.     In respect of the Opponent’s claimed promotion at websites of the Opponent’s Australian distributors, including Carbatec, only a screenshot of the range of the Opponent’s JET branded products from the Carbatec Website has been provided. While this screenshot shows some JET branded products, the screenshot is undated and does not show use of the Trade Mark on dust catchers and their accessories or vacuum cleaners.

29.     The Opponent submits that Invoice 2 alone demonstrates real use in a commercial sense in good faith in the Relevant Period of the Trade Mark on the Challenged Goods relying on Woolly Bull and Nodoz.

30.     The Applicant details the requirements in Australia for a valid tax invoice obtained from the Australian Taxation Office in its submissions and states that in the United States of America (‘USA’) similar information is required.[22] The Applicant submits that Invoice 2 is not a valid invoice in Australia or the USA as it lacks relevant information. The Applicant also adds in its oral submissions that there was no evidence that any products were shipped to Australia, no corroborating or confirmatory evidence of Invoice 2 and Invoice 2 is, if anything, a quote and therefore preliminary use or an internal document.

[22] No support has been provided for this conclusion.

31. In respect of the Applicant’s submission that there was no evidence that any products were shipped to Australia, to satisfy s 92(4)(b), the Opponent does not have to establish that the products were received by the consumer, or even that an actual sale has occurred. In Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No 2), Deane J said:

The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd, supra, at 204–5 ) or that the mark has been used in an advertisement of the goods in the course of trade (Shell Co of Australia v Esso Standard Oil (Australia) Ltd, supra, at 422).[23]

[23] (1984) 156 CLR 414, 443.

32.     The Applicant also submits that it is unclear that the items in Invoice 2 are the Challenged Goods. I assume this is on the basis that Invoice 2 refers to ‘dust collectors’ and ‘dust collector canister kits’ and the Challenged Goods claim ‘dust catchers (electrical machines) and their accessories’. Konkle has declared that dust collectors operate and catch dust by way of vacuum and/or suction in the manner of a vacuum cleaner.[24] I do not see a great distinction between a ‘dust catcher (electrical machines)’ and a ‘dust collector (electrical machines)’ and consider that they are both machines which both seek to achieve the same result, namely removing dust in some way whether it be by catching, collecting, suctioning, extracting or vacuuming. I consider that dust catchers and dust collectors are the same.

[24] Konkel [26].

33.     The Opponent stated in its oral submissions, that the name of Invoice 2 and the fact that there was no shipping address in Australia are not important. What is important is what Invoice 2 shows, namely, that it is a shipping document for the supply of goods. The Opponent also submitted that the Invoice was not a quote as it contained reference to ‘sail on/about’ with a specified date and contained a purchase order number.

34.     I note the comments of Hearing Officer Williams in Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd where he said:

Ms Lennon argues that on the basis of the Nodoz and Trina cases [1962] RPC 1 and [1977] RPC 131 respectively, this sale, or rather the evidence of use which the proprietor asserts it constitutes, is not demonstrated in an “overwhelmingly convincing” manner. That is an argument which I do not accept, since in both of those cases the words “overwhelmingly convincing” are used not to stipulate a level of documentation but as a liberalisation of “conclusive” proof, which Wilberforce J would otherwise have required. In the present instance, I have in front of me a copy of what the applicant concedes to be a genuine invoice, supported by the statutory declaration of a responsible officer of the proprietor company, who has sworn that the invoice relates to a sale of a black knight golf club. In the absence of any evidence that the declaration is false, and given the confirming copy of the invoice, I find that use of the trade mark has been established, and note that there is neither evidence nor suggestion that this use was not bona fide.[25]

[25] (1987) 9 IPR 425, 431.

35.     Use of a trade mark is not necessarily determined by the amount of supporting documents produced by a removal opponent, but whether the demonstrated use has been conclusive. If it is clear that an invoice or other document is conclusive proof of trade mark use, further corroborating evidence may not be necessary.

36.     I agree with the Opponent that the content of Invoice 2 is important rather than the name Invoice 2. Here, there is a document which is in the Relevant Period and provides the following information:

§a destination - ‘to Australia’ from ‘Taiwan’;

§a purchase order number;

§the product names ‘dust collectors’ and ‘dust collector cannister kits’ both with reference to the trade mark JET;

§17 units of code 710701K being described as a JET DC1200V dust collector and 50 units of code 708639B being described as a JET 2 micron dust collector canister kit;

§the name of the ship;

§price per item; and

§total price in USD.

37.     I am required to decide whether Invoice 2 is overwhelmingly convincing proof of use of the Trade Mark in respect of the Challenged Goods in the Relevant Period. Upon consideration of Invoice 2 and the information it imparts, I am satisfied that it alone is sufficient proof that the Trade Mark was used by the Opponent on both dust collectors and accessories of dust collectors namely dust collector cannister kits (‘Used Goods’) in the Relevant Period.

38.     Even if I were not satisfied that Invoice 2 alone was overwhelmingly convincing proof, I consider that Invoice 2 in conjunction with the following claims and materials reinforces my satisfaction that the Opponent has used the Trade Mark in the Relevant Period in respect of the Used Goods in Australia:

·     Mr Konkel’s claim that the Invoice is a commercial invoice provided by the Opponent to an Australian distributor;

·     Mr Konkel’s claims that Carbatec is a distributor of JET branded products;

·     Invoice 1 which is dated before the Relevant Period but contains similar information to Invoice 2;

·     the Carbatec catalogue which although undated references dust collector item numbers, the capital cities of all Australian states as well as the website address Carbatec brochure which although undated and is a New Zealand brochure references the same locations for Carbatec as the catalogue and shows JET branded products including a JET dust collector item number JET DC 1200VX; and

·     the undated screenshot from the Carbatec Website showing a range of the Opponent’s JET branded products.

39.     While the Carbatec catalogue, brochure and website are undated, and therefore do not assist the Opponent in demonstrating use of the Trade Mark during the Relevant Period, they do support the Opponent’s claim that Carbatec is a distributor of JET branded products to Australian consumers including a JET dust collector as itemised in Invoice 2.

40.     Therefore, I am satisfied that the Opponent has used the Trade Mark in the Relevant Period in respect of dust catchers and accessories of dust catchers.

41.     While I have found use in the Relevant Period of the Trade Mark on the Used Goods, the Challenged Goods also include wet and dry vacuum cleaners (‘Remaining Goods’). The Opponent has not evidenced any use of the Trade Mark in the Relevant Period in respect of the Remaining Goods. In deciding whether or not to remove these goods, the first question is whether the Remaining Goods fall under the term or category ‘dust collectors’ as if they do, then it is not necessary to establish that the Trade Mark was also used on the Remaining Goods.

42.     As stated by Bennett J in Pioneer Computers Australia Pty Limited v Pioneer KK:

In order to maintain the registration of a mark in respect of a category of goods, it is not necessary to establish that the mark was used on every type of product which might come within that particular term or description of goods... Even accepting that the term “computer peripheral devices” covers only devices connected externally to a computer, Pioneer KK has established use in the relevant period in respect of some computer peripherals, such as DVD-ROM drives, DVD writers and computer data storage jukeboxes. That, in my view, would be sufficient to establish its right to maintain the registration in respect of the category of computer peripheral devices if that were the sole category described and there were no challenge to the description of the goods in the registrations. It is not necessary to establish use in respect of each type of good that might come within the category...[26]

[26] [2009] FCA 135, [138].

43.     While, as Konkel declares, dust collectors operate and catch dust by way of vacuum and/or suction in the manner of a vacuum cleaner, and while a vacuum cleaner is a machine, I consider a dust collector (and a dust catcher) has a specific use namely to collect and catch dust, particularly in a wood working environment. A dry vacuum cleaner on the other hand does more than just vacuum dust. It vacuums other unwanted dry materials such as dirt, hair, debris etc. A wet vacuum cleaner is even further removed from a dust collector. A wet vacuum is designed to vacuum wet materials such as water and other liquids. I therefore do not consider that a wet or dry vacuum cleaner can be considered a dust collector and as such, the Opponent has not rebutted the allegation of non-use other than in respect of the Used Goods, and the non-use ground has been partially established.

Obstacles to Use

1. For the sake of completeness, I note the Opponent has not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Mark for the Remaining Goods. I accordingly find no case under s 100(3)(c) has been established.

2. As I have decided that the Trade Mark is not to be removed for the Used Goods, I must consider whether it is appropriate to otherwise exercise discretion to not remove the Trade Mark for the Remaining Goods.

   Discretion

3. The question is whether it is reasonable not to remove the Trade Mark for the Remaining Goods, even though the Opponent has not established use of the Trade Mark during the Relevant Period in respect of any of the Remaining Goods. I must be positively satisfied that it is reasonable that the Trade Mark should not be removed.

4. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[27]

   [27] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

5. The discretion provided by this section is very broad. In PDP Capital Pty Ltd vGrasshopper Ventures Pty Ltd,[28] the Court made the following observations regarding the discretion under s 101(3):

   [28] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

   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.

   (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.

   (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.

   (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;

   (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.[29]

   [29] Ibid [153] (emphasis altered) (citations omitted).

6. The discretion factors broadly fall under 3 headings:

   • the interests of the owner of the trade mark;
   • the interests of the applicant for removal; and
   • the public interest.[30]

   [30] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33] (Hearing Officer Thompson).

7. The Opponent argues in favour of the exercise of the discretion on the following bases:

   ·the Opponent has used the Trade Mark on a wide variety of goods of the same description (including other goods within class 7) since 1958 and continues to do so;

   ·there has been no abandonment of the Trade Mark;

   ·the Opponent has developed a reputation in the Trade Mark in Australia in connection with a broad range of “JET” branded machines, tools and equipment through use of the Trade Mark over 60 years; and

   ·it would plainly be productive of deception or confusion to exercise the s 101(3) discretion to excise some or all of the Challenged Goods from the Registration.

8. The Applicant argues against the exercise of the discretion on the basis of:

   ·there is no evidence to corroborate that the Opponent has a strong reputation in Australia for a broad range of machines, tools and equipment for over 60 years; and

   ·the public interest lies in reflecting what is being used by the Opponent.

   Section 101(4)

   Use on similar goods

9. Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[31] The factors relevant to the consideration of whether goods are similar include their nature including their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[32] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[33]

10. The Remaining Goods are not the same as the Used Goods or any of the protected goods of the Trade Mark as they are not identical, so I turn to consider whether the Remaining Goods are ‘of the same description’ as the Used Goods or any of the protected goods of the Trade Mark. To this end, other than the statement in Konkel that the Used Goods operate and catch dust by way of vacuum and/or suction in the manner of a vacuum cleaner, neither the Opponent nor the Applicant have provided any evidence or submissions to assist me with my determination of the nature, uses and trade channels of the Used Goods and the Remaining Goods or any of the protected goods of the Trade Mark.

11. Based on my own knowledge of vacuum cleaners, these are goods which are used in many, if not all, Australian households, and in business including industrial and manufacturing settings. In my opinion, the Used Goods and the Remaining Goods are similar in the way they operate and have overlapping intended uses and purposes in that they all remove unwanted matter be it dust, dirt or water. I also consider that the source of manufacture and respective trade channels are likely to overlap, particularly for the Remaining Goods which are intended for the industrial and manufacturing sectors. I also consider that the ordinary consumer would regard the respective goods as being from the same source.

    [31] s 14(1).

    [32] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).

    [33] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Kitto J); adopted in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).

12. I am satisfied that the Remaining Goods are ‘of the same description’ as the Used Goods.

    The private interests of the parties

    56.     I consider the evidence insufficient to satisfy me that the Opponent has a widespread reputation in Australia in the Trade Mark for any goods or has used its Trade Mark in Australia for over 60 years. However, I do consider the evidence sufficient to satisfy me that the Opponent has not abandoned the Trade Mark.

    57.     The Applicant has not provided any submissions concerning its private interests.

    The public interest

13. On the question of the public interest, there are a number of aspects to be considered.

14. There is a public interest in maintaining the integrity (or ‘purity’) of the Register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:

    [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[34]

    [34] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

15. The question of the public interest arises in the determination whether confusion would be caused by removing the Remaining Goods. Thus, while the ‘purity’ of the Register is a major aspect of the public interest, another major aspect is the minimisation of the likelihood for the public to be deceived or confused as to the trade source of goods bearing a trade mark.

1. On the basis of my conclusion that the Remaining Goods are of the same description as the Used Goods, in my opinion there is a real likelihood that consumers will be confused if a third party, such as the Applicant, were to operate under a trade mark the same or similar to Trade Mark in respect of the Remaining Goods.

2. On balance, in light of the above considerations, I am persuaded that the Opponent has provided justification to allow the retention of the Trade Mark on the Register for the Remaining Goods. I consider it appropriate to exercise my discretion in favour of the Opponent not to remove the Remaining Goods of the Trade Mark.

   Decision and Costs

3. The Opponent has been successful in its opposition. The ground for to the partial cessation of protection under s 92(4)(b) of the Trade Mark has not been established.

4. Both parties have sought their costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Anne Makrigiorgos

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   9 October 2024