Liu Cheng Hsiung v JTC Electronics Corp

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Liu Cheng Hsiung to applications under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by JTC Electronics Corp. for cessation of protection of Protected International Trade Mark numbers 1202287 (International Registration number 935333) (class 8) and 2020936 (International Registration number 1474998) (classes 6, 7 & 9) - JTC & Device (figurative) - in the name of Liu Cheng Hsiung

Delegate:

Tracey Berger

Representation:

Opponent: John O’Mahoney, Collison & Co

Applicant: Sharon Givoni and Rahul Shah, Sharon Givoni Consulting

Decision:

2023 ATMO 190

Trade Marks Act 1995 (Cth) – application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) – no use or authorised use of trade mark established for registration 1202287 – no intention to use trade mark established for registration 2020936 – discretion not exercised – protection of international trade marks to cease

Background

Liu Cheng Hsiung (‘Opponent’) is the registered holder in Australia of the Protected International Trade Marks (‘Registrations’) detailed below:

Number

Trade Mark

Priority Date

Goods

1202287
(IR 935333)

(‘87 Mark’)

(‘Trade Mark’)

6 June 2007

Class 8: Fullers (hand tools); nippers; spanners (hand tools); nail drawers (hand tools); screwdrivers; dilaters (hand tools); pestles (hand tools); lifting jacks, hand-operated; ratchet wheels (hand tools); three-jaw pulling bearing (hand tools)

(‘87 Goods’)

2020936

(IR 1474998)

(‘36 Mark’)

4 March 2019

(‘Relevant Date’)

Class 6: Ladders of metal; screws of metal; vice claws of metal; belt stretchers of metal; bottles [metal containers] for compressed gas or liquid air; tool chests of metal, empty; cask stands of metal; identity plates of metal.

Class 7: Hand-held tools, other than hand-operated; power-driven wrenches; grinders, electric; pneumatic hammers [hand-held]; pneumatic wrenches; spray guns for paint.

Class 9: Weighing apparatus and instruments; measures; measuring instruments; diagnostic apparatus, not for medical purposes; optical apparatus and instruments

(‘36 Goods’)

Collectively, the 87 Goods and 36 Goods are referred to as the ‘Registered Goods’.
2.On 29 January 2022, JTC Electronics Corp. (‘Applicant’) filed an application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] seeking cessation of protection of the 87 Mark for all of the 87 Goods, pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b). On 7 February 2022, the Applicant filed a similar application with respect to the ground under s 92(4)(a) for the cessation of protection of the 36 Mark for all of the 36 Goods. Collectively these applications are referred to as the ‘Removal Applications’.
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995(Cth).

The Opponent filed Notices of Intention to Oppose the Removal Applications on 29 March 2022 and Statements of Grounds and Particulars on 19 April 2022. On 20 May 2022, the Applicant filed Notices of Intention to Defend the Removal Applications.
On 24 August 2022, the Opponent filed its evidence in support consisting in each case of a declaration of Liu Cheng Hsiung made on 22 August 2022 with Exhibits LCH-1 to LCH-7. Although separate declarations were filed in each Removal Application, the contents of the declarations are identical (but for reference to the trade mark particulars) and these declarations are hereinafter referred to as the ‘LCH Declaration’.
The Applicant also filed separate but substantially identical declarations as its evidence in answer comprising declarations of Sharon Givoni made on 24 November 2022 with Appendixes A to M. These declarations are referred to as the ‘Givoni Declaration’. No evidence in reply was filed.
Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing and both parties requested an oral hearing. The Opponent filed written submissions on 31 October 2023 and the Applicant filed written submissions on 8 November 2023. I heard this matter as a delegate of the Registrar of Trade Marks by videoconference on 15 November 2023. At the hearing, John O’Mahoney of Collison & Co made oral submissions on the Opponent’s behalf. Sharon Givoni and Rahul Shah of Givoni Consulting made oral submissions for the Applicant. I make my decision based on the aforementioned materials and written and oral submissions made on behalf of the parties.
Legal Framework
Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to 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 a protected international trade mark’.
Section 92(4) relevantly provides:
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) 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) 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.
The Opponent bears the onus of rebutting an allegation of non-use. In this regard, s 100 provides:
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services); or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For file, month and registered owner see section 6.
(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or
…
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
The burden of proof is the ordinary civil standard of the balance of probabilities.[2]
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
In accordance with s 101, if the grounds for removal are established, I may decide to remove the Trade Mark from the Register in respect of any or all of the goods identified in the Removal Applications, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Section 92(4)(a)
To successfully defend the s 92(4)(a) application against the 36 Mark, the Opponent must establish that the holder of the Trade Mark had a good faith intention to use the Trade Mark (or authorise its use) at the time of applying for registration or that there has been use in good faith of the Trade Mark for the 36 Goods at any time before the period of one month ending on the day on which the removal application was filed.
Section 92(4)(b)
The Removal Application filed in relation to the 87 Mark has been made under
s 92(4)(b). 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 trade mark, and I confirm that five years since filing the 87 Mark have in fact passed.
In order to successfully defend the s 92(4)(b) application against the 87 Mark, the relevant period during which the Opponent must establish use of the Trade Mark for the 87 Goods is the three year period ending on 29 December 2021 (‘Relevant Period’).
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.[3] 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.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[6]
[3] [2001] FCA 261, [16].
[4] Ibid [17].
[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer I Forno).
[6] (1962) RPC 1, 7.
Opponent’s Evidence
The relevant claims in the LCH Declaration are summarised below:
·     the Opponent states he had an intention to use the Trade Mark at the time the Registrations were filed and has used the Trade Mark continuously for the Registered Goods throughout 2019 to 2022;
·     the Trade Mark was first used in Taiwan in 1981 by a company associated with the Opponent and his family and information about the businesses associated with the Opponent is available at (‘JTC Website’);
·     Exhibit LCH-1: undated extracts from the website of an Australian distributor of the Opponent’s goods at LCH-2: Bills of Lading for shipments of ‘JTC’ products from JTC Tools Co Ltd (‘JTC Tools’) in Taiwan to PTSB Investments in Australia dated 26 March 2019, 27 November 2020 and 4 January 2022. Mr Liu claims he is associated with JTC Tools which is the company referenced on the JTC Website;
·     Exhibit LCH-3: invoices issued by JTC Tools to PTSB Investments dated 21 December 2021, 17 November 2020, 13 March 2019;
·     Exhibit LCH-4: export documents from JTC Tools to PTSB Investments which are predominantly in Chinese with no English translation provided;
·     Exhibit LCH-5: invoice from PTSB Investments Holdings to a customer named ‘Mobile Workshop Supplies’ dated 31 December 2021 for JTC products;
·     Exhibit LCH- 6: examples of remittances of invoices paid by The Arthur Superannuation Fund in Tasmania, Australia to JTC Tools dated 11 November 2021 and 5 October 2020; and
·     Exhibit LCH-7: Statement dated 9 August 2022 by the Chairman/CEO of MWS Company and PTSB Company that he met with Harrison (Mr Lin), manager (CEO) of JTC Tools, and since 1 October 2015 has been placing orders with JTC Tools a couple of times per year.
Applicant’s Evidence
The Givoni Declaration outlines various online searches conducted for ‘Liu Cheng Hsiung’ and JTC Tools and the results of enquiries undertaken by the Applicant’s Chinese attorneys for JTC Tools, ‘Ling Hongru’ and ‘Liu Cheng Hsiung’.
Ms Givoni also attests to the purchase of two JTC products from MWS Auto Tools and provides listings for the same products on the Amazon Australia website.
Based on these enquiries, Ms Givoni states that her conclusion is that the Opponent did not have an intention to use the Trade Mark at the time of filing the application for the 36 Mark and has not used or authorised use of the Trade Mark which is the subject of the Registrations.
Discussion
The parties are in agreement that the Trade Mark has been used by JTC Tools. In relation to the Removal Application for the 87 Mark, the central issue in dispute is whether or not that use is authorised by the Opponent. However, other than a single instance of use of the Trade Mark in the undated website extracts at Exhibit LCH-1 of the LCH Declaration, all of the evidence shows use of JTC solus and not the Trade Mark as protected. Section 7(1) provides that a person has used a trade mark if that person uses a mark with additions or alterations not substantially affecting the identity of the mark. Accordingly, for the purpose of this discussion, I have referred to the use by JTC Tools as use of the Trade Mark but if the use by JTC Tools is found to be authorised use, it is necessary to consider whether that use is use of the Trade Mark or a mark with additions or alterations not substantially affecting the identity of the mark as protected.
For the 36 Mark, the question is whether the Opponent had the requisite intention to use the Trade Mark given that the Trade Mark (or at least the mark ‘JTC’) was already in use by JTC Tools at the time the application was filed.
Use of Trade Mark in the Relevant Period – Registration 1202287
Section 7(3) provides that an authorised use of a trade mark by a person is taken to be a use of the trade mark by the registered owner. Section 8(1) defines an authorised user as a person who uses a trade mark under the control of the trade mark owner. What constitutes control is not exhaustively defined by the Act but includes quality control and financial control.[7]
[7] s 8.
The Opponent argues that JTC Tools and the Opponent act with a unity of purpose and contends that the Opponent exercises quality control and financial control over JTC Tools’ use of the Trade Mark. In support of this contention, the Opponent points to the attestation in the LCH Declaration that use of the Trade Mark commenced in Taiwan in 1981 by a company associated with the Opponent and his family. The company which first used the mark is not named in the evidence but the Opponent does refer to information about the businesses associated with him at the JTC Website. No extracts from this website are in evidence. It is not appropriate during an opposition for the Registrar to obtain evidence from weblinks. Weblinks can break and the information on them can change over time. Any evidence on which a party wishes to rely should be printed or scanned to PDF and filed as evidence. If that is not possible due to technical issues, some other evidence substantiating the party’s claims should be filed. In any event, the company presently referred to on this website is JTC Auto Tools and there does not appear to be any mention of the Opponent or how JTC Auto Tools is related to JTC Tools.
The Opponent submits that it is apparent that the Opponent and JTC Tools are essentially one entity because the address of the Opponent recorded on the Register is the same address used by JTC Tools in some shipping documents[8] and invoices.[9] Also, the Opponent argues he clearly had access to these documents in order to include them in evidence and was able to obtain the statement at Exhibit LCH-7 from JTC Tools’ Australian customer.
[8] LCH Declaration, Annexure LC-2.
[9] Ibid Annexure LC-3.
The Full Court found in Trident Seafoods Corporation v Trident Foods Pty Ltd that control could be established in circumstances where the two companies, one being the registered owner and the other being the user of the trade mark, shared the same directors:
It must be inferred from the evidence that the two companies operated with a unity of purpose. ... As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. ... it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[10]
[10] [2019] FCAFC 100, [45] (Reeves, Jagot and Rangiah JJ).
The Opponent has not provided any evidence that he is the owner or an officer of JTC Tools. Further, there is no documentary evidence supporting the claim that the Opponent is associated with that company beyond a shared address which is not sufficient evidence that the Opponent was in a position to make decisions for and exercise control over JTC Tools. The Applicant undertook some enquiries to demonstrate that there is no relationship between the Opponent and JTC Tools. Those enquiries were criticised by the Opponent in their written and oral submissions but the Opponent chose not to file any evidence in reply which could have included its own corporate searches showing Mr Liu’s role or documents supporting the existence of a relationship between the Opponent and JTC Tools. In the absence of any evidence as to the Opponent’s ownership of JTC Tools or position in that company, it cannot be inferred that the Opponent and JTC operated with a unity of purpose.
Moreover, for the use of a trade mark to be an authorised use, the registered owner must demonstrate that the owner actually exercised control over the use of the mark.[11] No details are provided about the quality standards JTC Tools was required to meet nor about how control was exercised by the Opponent. Similarly, there is no evidence as to the Opponent’s connection with JTC Tools to demonstrate that the Opponent has “a legally enforceable power of control” so as to substantiate the claim that the Opponent exercised financial control over the trading activities of JTC Tools as the user of the Trade Mark.[12]
[11] Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509, [43] (Perram J); E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 (French CJ, Gummow, Crennan and Bell JJ), [54]-[59].
[12] Health World Ltd v Shin-Sun (Aust) Pty Ltd (2008) 75 IPR 478; [2008] FCA 100, [197] (Jacobson J).

In the absence of any supporting evidence that the Opponent exercised control over JTC Tools’ use of the Trade Mark or had a relationship with JTC which indicated they acted with a unity of purpose, I am not satisfied that use of the Trade Mark by JTC Tools was authorised use. Accordingly, there is no evidence of use of the Trade Mark which is the subject of registration 1202287 during the Relevant Period and the Opponent has not rebutted the allegation of non-use.
Intention to use the Trade Mark in Good Faith – Registration 2020936
I have found in the preceding paragraph that the Opponent’s evidence does not demonstrate that it has used or authorised use of the Trade Mark. Accordingly, for the purposes of the Removal Application filed against the 36 Mark, I must decide whether the Opponent had an intention to use or authorise use of the Trade Mark in good faith at the time of applying for registration.
Although the Opponent bears the initial onus of establishing he had the relevant intention, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co, Justice Fullagar commented:
[...] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on ... a motion to expunge, the burden must rest on ... the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.[13]
[13] [1960] HCA 47, [21].
However, as noted by the delegate in Structureco Inc v Starite Distributors Pty Ltd:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[14]
[14] [2000] ATMO 31 (Hearing Officer I. Forno).
In the LCH Declaration, the Opponent has declared his intention to use the Trade Mark in good faith at the time of filing the application for now registration 2020936. This statement is sufficient to discharge the Opponent’s initial onus and shift the onus to the Applicant. In response, the Applicant has filed evidence to show that the Trade Mark is used by JTC Tools and that their enquiries failed to establish any relationship between the Opponent and JTC Tools. I consider that the Applicant’s evidence clearly raises the question about whether the Opponent had authorised JTC Tools to use the Trade Mark and the relationship between the Opponent and user of the mark.
The Opponent argued that the Opponent’s claim that ‘the face of the family company’ which uses the Trade Mark is JTC Tools and the fact that the individual (Lin Hongru) revealed to be associated with JTC Tools through the Applicant’s enquiries is the CEO, Harrison (Mr Lin) referred to in the customer letter at Exhibit LCH-7, together with the filing of the application for the Trade Mark, demonstrates the Opponent had the necessary intention to use the mark. I disagree. The connection of Mr Lin as CEO of JTC Tools is not relevant but rather what needs to be demonstrated is the connection between the Opponent and JTC Tools.
In Michelle Herbert and Paul Staunton v Jo Schmid,[15] the delegate found that the opponents had the requisite intention to authorise use of the mark where the application had been filed in the name of the individuals but was being used by a company (that had been incorporated two days before the filing of an application for the trade mark) even though there was no evidence that the opponents were exercising control over the use of the trade mark. However, in that case, the delegate was satisfied that it was likely the opponents had decided to operate their existing business under a corporate structure (rather than a partnership) but remain under the overall direction of the opponents. The situation here is different in that JTC Tools was incorporated in 2012 and had been using the Trade Mark for a number of years prior to the Relevant Date.
[15] [2023] ATMO 19 (Hearing Officer N. Smith).
The Applicant’s evidence clearly states that they could not locate any connection between the Opponent and either JTC Tools or Lin Hongru despite searching the internet, company and business database of the Department of Commerce of the Ministry of Economic Affairs and the Bureau of Foreign Trade Database for Exporter/Importer Basic Registration Data and that as a result of these search results, they concluded that the Opponent did not have an intention in good faith to use the Trade Mark in Australia at the Relevant Date. I consider that the Applicant’s evidence and statements therein cast doubt on the Opponent’s intention to use or authorise the use of the Trade Mark at the Relevant Date. Nevertheless, the Opponent has chosen not to address the apparent lack of a connection between the Opponent and JTC Tools by filing evidence in reply. If indeed the Opponent owns JTC Tools in whole or part, or otherwise holds a position that enables the Opponent to exercise control over JTC Tools, it would seem simple for Lin Hongru to have provided a declaration to this effect or for the Opponent to provide some other evidence substantiating a relationship between the Opponent and JTC Tools.
In the circumstances, the Opponent has not satisfied me that the Opponent had the requisite intention to use or authorise use of the Trade Mark at the Relevant Date. The Opponent has not established its opposition in relation to the Removal Application under s 92(4)(a) with respect to the 36 Mark.
Registrar’s Discretion
Pursuant to s 101, the Registrar has a broad discretion not to remove an unused mark if satisfied that it is reasonable to do so. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Federal Court made the following observations about the discretion under s 101(3):
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(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.[16]
[16] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
The Opponent argues that discretion should be exercised given that the Trade Mark has been and continues to be used by the Opponent’s family company for a broad range of goods covered by the Registrations. Further, the Opponent contends that given its use of JTC and the Applicant’s own trade mark application 2117006 for JTC OMNIBLEND & Device, the cancellation of the Registrations may encourage the Applicant to enter the market with its own ‘JTC’ products which will cause confusion to consumers.
The Applicant argues that the Opponent has not discharged its burden to make a case for the Registrations to be retained. Further, the Applicant contends that it can be inferred from the Opponent’s evidence that JTC Tools, not the Opponent, is the owner of the Trade Mark and discretion should not be exercised to retain registrations which are not in the name of the true owner of the Trade Mark. In response, the Opponent notes that JTC Tools was not in existence at the time of filing registration 1202287.
Firstly, I note that there is no evidence that the Opponent has used or intends to use the Trade Mark itself but rather the mark will continue to be used by a family company that presumably has some association with the Opponent. Given that the Opponent does not appear to be in a position to exercise control over the use of the Trade Mark by JTC Tools and that any reputation in the mark would reside with JTC Tools and not the Opponent, I am not persuaded that it is appropriate to retain the Registrations. If JTC Tools wishes to apply to register the Trade Mark for the Registered Goods, that is an option available to it. In view of the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion not to the remove the Trade Mark in respect of the Registered Goods.
Decision
The Opponent has not established its opposition to the Removal Applications. Accordingly, I direct that protection of registrations 1202287 and 2020936 cease one month from the date of this decision. If the Registrar is served with a notice of appeal before then, I direct that cessation of protection shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the Registrations be dealt with as the Court sees fit.
The Applicant has been successful in the Removal Applications and has requested its costs. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations with respect to registration 1202287 and in respect of registration 2020936, I award reduced costs against the Opponent in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd.[17]
[17] [2001] ATMO 78 (Hearing Officer T. Williams).
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
27 November 2023

[2023] ATMO 190

27 November 2023