Laticrete International Inc. v Seal Hard Australia Pty. Ltd

[2019] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition to application made by Laticrete International Inc. under s.92 of the Act to remove trade mark no. 1238325 - S SEAL HARD PROTECTS CONCRETE WHERE IT COUNTS - in the name of Seal Hard Australia Pty. Ltd.

Delegate:	M. Cooper
Representation:	Opponent: Ben Gardiner Applicant: No appearance
Decision:	[2019] ATMO 48 Trade Marks Act 1995 - opposition to application under s 92(4)(b) to remove trade mark from Register for non-use – use demonstrated for Goods - s 92(4)(b) grounds not established.

Background

1. This matter concerns the opposition by Seal Hard Australia Pty. Ltd.  (“the Opponent”) to an application under s.92(4)(b) of the Trade Marks Act 1995 (“the Act”) by Laticrete International Inc (“the Applicant”), to remove its trade mark no. 1238325 from the Register for non-use.

2. On 1 May 2008, the Opponent applied to register the trade mark below (allocated trade

   mark no. 1238325):

   (“the Trade Mark”)

3. The goods for which the Trade Mark is registered are as follows:

   Class 3:

   Floor polishes; floor treatment chemicals and floor treatment compositions.

   (“the Goods”).

4. This application for removal for non-use under s.92(4)(b) of the Act was made on 23 June 2017. It was made in relation to all the goods for which the Trade Mark is registered.

5. A Notice of Intention to Oppose the removal application was filed by the Opponent on 6 September 2017. On 5 October 2017 it filed its Statement of Grounds and Particulars (“SGP”).

6. A Notice of Intention to Defend was filed by the Applicant on 28 November 2017.

   Evidence

7. The evidence filed in relation to this removal opposition comprises:

   ·     Evidence in Support

   Ø  Declaration of Tony James Maher, the Opponent’s Managing Director, dated 5 March 2018 with Annexures TM-01 to TM-20 (“the Maher Declaration”).

   ·     Evidence in Answer

   Ø  Declaration of Daniel C. Lu, the Applicant’s Senior Vice President, dated 14 June 2018 with Exhibits 1-8. (“the Lu Declaration”).

8. No Evidence in Reply was filed. On 10 October 2018 the Opponent requested a hearing. The matter was heard before me, as delegate of the Registrar, in Canberra on 4 April 2019. Following directions, the Opponent filed written submissions and appeared at the hearing. There were no submissions filed by the Applicant, nor did it appear at the hearing.

   The Opponent’s Evidence

9. In his declaration, Mr. Maher stated that the Opponent’s business supplies premium concrete treatment products to builders and contractors across Australia. He said it specialises in floor treatment chemicals and floor treatment compositions. He annexed various documents regarding the nature of the products supplied and described “the Seal Hard Product” as a floor treatment chemical composition that functions to polish, dustproof, waterproof, seal, densify and harden concrete floors.

10. He claimed that the Trade Mark is the Opponent’s primary logo and has been continuously used in Australia in good faith in relation to the Goods since 1 May 2008 and, in particular, during the period from 24 May 2014 to 23 May 2017. He provided several documents evidencing that use as follows:

    ·     Wayback machine archives of the Opponent’s website demonstrating use of the Trade Mark on selected dates from 21 June 2014 to 19 February 2017;

    ·     use of the Trade Mark on a company vehicle;

    ·     several invoices for Australian-based clients displaying the Trade Mark, including for the period between May 2014 and May 2017;

    ·     business card displaying the Trade Mark with a tax invoice from the printer;

    ·     screenshot dated December 2014 of use of the Trade Mark on a drum of floor polish;

    ·     screenshot dated September 2014 of use of the Trade Mark on a commercial building.

    The Applicant’s evidence

11. As noted above, the Applicant sought that the Trade Mark be removed under s.92(4)(b) for non-use for all the goods for which it is registered. The period of non-use was not stated.

12. According to the Lu declaration, the Applicant is “a global leader in the field of adhesives, grouts, surface finishes and protectants, and construction chemicals.” He said since 2008 the Opponent had been the Australian distributor of SEAL HARD products for L&M Construction Chemicals Inc (“L&M”). On 5 March 2014 he said that L&M had assigned all its intellectual property rights in the SEAL HARD mark to the Applicant. He exhibited the Trademark Assignment document and the USPTO and Brazilian registrations by L&M of the word trade mark “Seal Hard” in 1997 and 1999 respectively.

13. He referred to the Opponent’s Wayback machine website extracts, noting those that also include references to L&M and its logo. He also exhibited an L&M Technical Data Sheet for the Seal Hard product which he claimed was available in Australia.

    Submissions

14. As noted above, only the Opponent filed submissions.

15. After noting the relevant legal tests, the Opponent submitted that the Maher declaration demonstrated “repeated and consistent use of the Trade Mark by the Opponent in relation to the Registered Goods throughout the Relevant Period”, which he identified as the period 24 May 2014 to 23 May 2017. Website screenshots, equipment, the Opponent’s vehicles, invoices, business cards, and brochures were all said to evidence that use.

16. In relation to the Lu declaration, the Opponent submitted that the assertions made are irrelevant and appear to have no bearing on whether the Opponent has used the Trade Mark during the non-use period. He submitted that it follows that the application for removal should be dismissed.

17. The Opponent sought costs.

    Legislation

18. Section 92 of the Act relevantly provides as follows:

    92 Application 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:

    [...]

    (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the nonuse 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.

    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.

19. If the grounds of the non-use application are established, the Registrar has a discretion, under s.101(3) of the Act, to decline to remove the trade mark, or to remove it in respect of only some of the goods and services identified in an application, if satisfied that it is reasonable to do so. In deciding whether to exercise the discretion not to remove the mark, the Registrar may consider whether the registered owner has used it in respect of similar or closely related goods and services (s.101(4)).

    Onus

20. Section 100(1)(c) of the Act stipulates that it is for an Opponent to rebut any allegation made unders 92(4)(b). If the Opponent establishes use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), or that there was an obstacle to use of the Trade Mark during the relevant period, it is taken to have rebutted the allegation: s.100(3). A single instance of bona fide use during the relevant period is all that is required[1].

    [1] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [14-17].

    Consideration and Reasons

21. There is no evidence of any action concerning the Trade Mark pending in a court (s.92(3)). Based on the available records, the Trade Mark has been registered since 1 May 2008, that is, it has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application was filed. (s.92(4)(b)). It is also self-evident that it has been over 3 years since the filing date of the application for registration (s.93(2)).

22. The period during which use must be demonstrated, that is, three years ending one month prior to the filing of the non-use application on 23 June 2017, is 24 May 2014 to 23 May 2017 (“the relevant period”).

23. Therefore, in the circumstances of this matter and for the purposes of s.92(4)(b), the issue for consideration concerns the allegation that the Opponent has not used the Trade Mark, or used it in good faith, in Australia, during the relevant period, in relation to all the Goods for which the Trade Mark is registered.

    Use of the mark in Australia

24. The comments of the Federal Court in Liquid Engineering[2] are pertinent in this regard, as follows:

    Before proceeding any further, I first note in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; (2007) 163 FCR 530 at [53]- [54], Tamberlin J pointed out that under ss 7 and 9 of the TMA, a trade mark is taken to be used in relation to goods and services if it is applied to, among other things, packaging labels, signs, invoices, business letters, and business papers. Here, the word "Liquideng" was applied by Edwards and LFS in just such ways. It follows that application of that word was its use as a trade mark.

    [2] Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 [21], this finding not disturbed on appeal

25. As noted above, the Opponent’s evidence included copies of material, including invoices, demonstrating use of the Trade Mark in respect of the class 3 goods over the relevant period. There is nothing in the Applicant’s evidence that suggests or persuades me otherwise.

26. I am therefore satisfied that the Opponent has rebutted the Applicant’s allegations of non-use in the relevant period.

    Decision

27. Section 101 of the Act relevantly provides:

    101 Determination 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.

28. It follows that I am not satisfied that the Applicant has established the grounds for removal of the Trade Mark. Accordingly, the Trade Mark will remain on the Register.

    Costs

29. As the Opponent has been successful, I award costs against the Applicant under section 221 of the Act in the amounts set out in Schedule 8 of the Regulations.

    Mary-Ann Cooper
    Hearing Officer
    Trade Marks and Designs Oppositions and Hearings
    3 April 2019