Maestro Pty Ltd v Maestro Wireless Solutions Limited
[2012] ATMO 98
•25 October 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MAESTRO PTY LTD to application under section 92 of the Act by MAESTRO WIRELESS SOLUTIONS LIMITED to remove trade mark number 624960(9) - MAESTRO - in the name of MAESTRO PTY LTD
Delegate: Heath Wilson Representation: Opponent: Shaun Creighton of Aruna Trade Mark Attorneys.
Applicant: Chris Doidge of Counsel instructed by Actuate IP Trade Mark Attorneys.Decision: 2012 ATMO 98
Application under section 92(4) of the Act – single invoice sufficient trade mark use – trade mark to remain on register for primary goods – costs awarded against Applicant.Background
An application for removal of a trade mark was filed under subsections 92(4)(a) and (b) of the Trade Marks Act 1995 (‘the Act’) on 26 March 2010 in relation to the following trade mark registration:
Trade Mark Registration No: 624960
Trade Mark: MAESTRO (‘the Trade Mark’)
Specification of Goods: Class 9: Modems and modem support equipment
Owner: Maestro Pty Ltd.
The removal application was filed by Maestro Wireless Solutions Limited (‘the Applicant’) in relation to all the goods of the registration, and the application was subsequently opposed by Maestro Pty Ltd (‘the Opponent’) on 12 July 2010. The following evidence was filed and served by the parties to this proceeding:
Evidence in Support
·Statutory declaration of Shaun William Creighton (the Opponent’s legal representative) made 23 July 2010 with exhibits SWC-1 to SWC-8.
·Statutory declaration of Christian Ross Darling (Director of the Opponent) made 22 July 2010 with exhibits CRD-1 to CRD-12
Evidence in Answer
·Statutory declaration of Craig Stuart Morton made 2 February 2011 with exhibit CSM-01.
·Statutory declaration of Bertrand Goubault de Brugiere (General Manager of the Applicant) made 10 February 2011 with exhibits BGB-01 to BGB-03.
·Statutory declaration of Colin Cheung (the Applicant’s legal representative) made 3 March 2011.
Evidence in Reply
·Statutory declaration of Shaun Creighton made 31 May 2011 with exhibits SWC-1 to SWC-4.
As a delegate of the Registrar of Trade Marks, I heard the opposition to the application for removal on 24 August 2012 in Canberra. Shaun Creighton of Aruna Trade Mark Attorneys appeared on behalf of the Opponent. Chris Doidge of Counsel instructed by Actuate IP Trade Mark Attorneys appeared via teleconference on the Applicant’s behalf.
The Law
Sections 92(4) and 100(1)(c) of the Act relevantly provide:
Section 92: 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)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.
Section 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:
…
(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.
The Opponent therefore bears the onus of rebutting the allegation of non-use on the registered goods in Australia within the relevant period. For section 92(4)(b), as the application for removal was filed on 26 March 2010, three years ending one month before the day on which the non-use application commences on 26 February 2007 and ends on 26 February 2010 (‘the relevant period’).
Discussion
The statutory declaration of Christian Darling (Director of the Opponent) indicates that the Opponent first used the Trade Mark in Australia in 1987 and its trade mark application was filed with IP Australia a number of years later on 15 March 1994. Mr Darling declares that, since filing, the Opponent’s modems and support equipment bearing the Trade Mark have been sold continuously and mainly to large Australian companies. The advertising and turnover figures for the Trade Mark attested to in that statutory declaration include figures from within the relevant period.
All of the exhibits to the declaration of Christian Darling are either undated or clearly precede the relevant period. In particular, the Opponent exhibits a photograph of a MAESTRO driver disc and instructional manual from 30 November 2001, and another instructional manual indicates that it is “copyright 1994 Maestro Pty Ltd”. The exhibits comprising photographs of business awards are dated 1991 and 1996, and there is a newspaper article from the Canberra Times mentioning the Trade Mark dated shortly after April 2000. The remaining exhibits are undated photographs of the modem or its parts bearing the Trade Mark. However, the fact that some of the advertisements refer to 33.6K and 56K modems and to outdated computer operating systems such as “Microsoft Windows 3.x” and “Windows ’95” provides some indication of the date of the promotional material. To avoid any doubt, I am not satisfied that any of those advertisements/awards occurred within the relevant period.
It is not until Mr Creighton’s second statutory declaration that some evidence of trade mark use in the relevant period emerges. Exhibit SWC-1 contains Profit and Loss statements for the years ending 20 June 2007, 2008 and 2009 which detail certain stock being sold. These statements were provided to bolster the advertising and turnover figures attested to in the Darling declaration. However, there is no indication what goods were sold by the Opponent and crucially whether those products featured the Trade Mark.
The Opponent’s most supportive exhibit is exhibit SWC-4 which is a tax invoice featuring the Trade Mark, dated 20 July 2008 referring to the sale of 79 “Leased Line Ext Power Maestro” modems to a third party. This tax invoice amounts to clear trade mark use within the relevant period in relation to those goods. However, I do note there is no evidence of the sale of modem support equipment in that invoice.
Section 92(4)(a) of the Act:
Given the import of the evidence before me, there appears to be no question that on the day the Trade Mark application was filed (namely 15 March 1994) the Opponent intended in good faith to use the Trade Mark in relation to the goods in the specification. This finding is buttressed by the fact that before and after filing (and during the relevant period) the Opponent used the Trade Mark in relation to modems. If modem support equipment includes companion software (i.e. driver discs) I am satisfied that the intention to use the Trade Mark in relation to those goods was also present at the time of filing. The Opponent has, through the contents of the evidence, rebutted the allegation of a lack of intention to use the trade mark. The Applicant is therefore unsuccessful under this ground.
Section 92(4)(b)of the Act:
It has long been established that a single bona fide use of the trade mark on the goods during the relevant period can be sufficient to rebut an application for removal.[1] In such a case, however, the use of the trade mark should be established by "if not conclusive proof, at any rate, overwhelmingly convincing proof."[2]
[1] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; 51 IPR 149 at [17].
[2] Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J.
In relation to the capacity of a single invoice to rebut the allegation of non-use, I refer to the cases of Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd[3] and Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc.[4] It was observed by the Hearing Officer in the latter case that:
…there seems to be no reason why the opposition could not succeed in the present case if the opponent satisfies me that the sole invoice to the Overseas Distributors was "overwhelmingly convincing proof" contemplated by Wilberforce J in "Nodoz" case, supra.
A successful rebuttal of the allegation of non-use is not necessarily achieved by the volume of supporting documents produced by the Opponent, but whether the demonstrated use has been conclusive and bona fide. Each case is decided on its own merits and while some precedent cases did involve further corroborating evidence, I am not convinced that such evidence is necessary if the single invoice clearly accomplishes the task of demonstrating trade mark use.
[3] Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425.
[4] Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc [1999] ATMO 101
With reference to the tax invoice detailed earlier, I am satisfied that the Opponent has demonstrated trade mark use in relation to modems in the relevant period. The primary argument pressed by the Applicant was that the Trade Mark should be removed from the Register for the particular modems in relation to which use has not been demonstrated. Mr Doidge drew a distinction between the particular types of modems that may be encompassed under the broad term ‘modem’. The Opponent’s modems were then identified by the Applicant as “leased line” or “PSTN modems”. The Opponent concedes that it has yet to use the trade mark in relation to wireless modems but Mr Creighton argued that this concession was not a sufficient basis for the trade mark to be removed in relation to the registered goods.
The Macquarie dictionary defines a ‘modem’ as follows:[5]
noun 1. an electronic device that facilitates the linking of one computer to another via the telephone system, by changing the binary information in the computer into electrical signals which can travel along the telephone lines, then changing it back again into binary information at the receiving end.
[5] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd
The statutory declaration of Craig Morton provides further guidance and commentary on the scope and meaning of the word. Mr Morton is the director of Moving Data Pty Limited, a service partner for Ericsson. He has provided an expert opinion on the history and changing use of the word ‘modem’ pointing out uses towards the end of the 1990s of ISDN modems, DSL modems, Wireless modems, USB modems and Wi-Fi modems. What is clear from this evidence is that the notion of what constitutes a ‘modem’ is broader now than when the Trade Mark was first registered in 1994. It is similarly broader than the use which has been demonstrated by the Opponent, but this does not necessarily mean that a restriction to the goods is appropriate.
Drummond J discussed the application of section 92(1) of the Act in McHattan v Australian Specialised Vehicle Systems Pty Ltd:[6]
…if that provision is construed to permit fine distinctions to be drawn between two items, eg between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz that between armoured military vehicles of greater than 8 tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.
[6] McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 (at 544).
The question before me is analogous. However, rather than comparing armoured military vehicles greater than 8 tonnes with smaller military vehicles, I am asked to distinguish between leased line (wired) modems and other (wireless) modems. Despite differences in speed and the mechanisms for connectivity (e.g. wired or wireless), the nature and purpose of different types of modem are broadly the same (i.e. to enable a connection to the Internet) as are the trade channels through which such items are sold and purchased (i.e. computer and electrical stores).
In Pioneer Computers Australia Pty Ltd v Pioneer KK[7], Bennett J indicated that s101 (4) “has particular relevance in the case of goods that are at the forefront of technological change.” Her Honour also endorsed the following comments of the Assistant Registrar in Magnavox (Aust) Pty Ltd’s Trade Mark[8]:
[T]he rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered.
[7] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300 at [173].
[8] Magnavox (Aust) Pty Ltd’s Trade Mark (1964) 34 AOJP 2075 at 2078
Accordingly, the fact that the Opponent has only established use in relation to a particular type of modem under the broad term ‘modems’ should not preclude the Opponent from rights in the now broader definition of what constitutes a modem. The Opponent has rebutted the allegation in relation to modems. Even if I were to find that the allegation had not been rebutted for all modems, it would be reasonable (with reference to the above Pioneer case) to apply the discretion under section 101(4) of the Act. As it is, I will now consider the Registrar’s discretion in relation to ‘modem support equipment’ where the allegation of non-use under section 92(4)(b) has not been answered.
The Discretion of the Registrar
The Opponent has not definitively demonstrated trade mark use within the relevant period on anything other than ‘modems’ and as a result, the question is whether the Registrar’s discretion should be exercised to allow the Trade Mark to remain on the Register for ‘modem support equipment’. The starting point for the exercise of the discretion under section 101(3) was effectively summarised in Re Carl Zeiss Pty Ltd’s Application[9] by Kitto J who stated:
It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. (Emphasis added).
[9] Re Carl Zeiss Pty Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1 per Kitto J (at 11).
Mr Doidge, in arguing against an exercise of the discretion, relied upon the decision George Weston Foods Ltd v Manildra Flour Mills Pty Ltd[10]. In that matter, the Registrar’s delegate did not exercise the discretion under section 101 of the Act and the goods were restricted from "flour, semolina, wheaten meal and other products of cereals" to the goods in relation to which the trade mark had been used, namely “noodle flour”. Since that decision was made, subsection 101(4) of the Act was introduced under the Trade Marks Amendment Act 2006 (Cth). The introduction of that subsection removed any uncertainty regarding whether use on similar goods could be taken into account when exercising the Registrar’s discretion under section 101 of the Act.
[10] George Weston Foods Ltd v Manildra Flour Mills Pty Ltd [1999] ATMO 41.
The type of goods that constitute modem support equipment has not been defined by the Opponent. According to the Opponent’s evidence the only items that could possibly come under this heading in class 9 are CDs containing the installation drivers for the modems. The items in exhibit CRD-7 of the statutory declaration of Christian Darling that purport to be photos of modem support equipment simply appear to be parts of the Opponent’s modem. The Opponent has not necessarily abandoned the trade mark in relation to these goods but there is no evidence of a residual reputation, or any sales occurring after the relevant period.[11] Neither is there any indication that the Opponent intends to use the trade mark in relation to these goods in the future. While the Registrar has an unfettered discretion under section 101 of the Act, there is nothing to satisfy me that it is reasonable for the trade mark to remain on the register for the goods of ‘modem support equipment’.
[11] See Hermes Trade Mark [1982] RPC 425 per Falconer J.
Decision
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.
(2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.
(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.
The Opponent has rebutted the allegation of non-use in relation to the goods described as ‘modems’. However, I do not find it reasonable to apply the discretion under section 101 of Act in relation to ‘modem support equipment’. I direct that the Trade Mark be removed from the Register after one month from the date of this decision in relation to modem support equipment and remain on the Register for modems.
In the event of an appeal from this decision, I direct that the specification of goods will not be restricted until that appeal has been discontinued or dismissed, or in the event of a decision from the court, that the trade mark be subject to that order.
Costs
The Opponent has been successful in rebutting the allegation under section 92(4)(a) and also the primary goods of interest under section 92(4)(b) of the Act. Despite a minor restriction to the specification of goods, the Applicant has been unsuccessful under both grounds to remove the trade mark in its entirety. I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearing Officer
Trade Marks Hearings
25 October 2012
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
Legal Concepts
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Intention
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Statutory Construction
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Remedies
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