Magellan Corporation (Australia) Pty Ltd v Thaes Navigation Inc

[2005] ATMO 81

TRADE MARKS ACT 1995

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

Re:Oppositions by Magellan Corporation (Australia) Pty Ltd to applications under section 92 of the Act by Thales Navigation Inc. to remove trade mark numbers 543023, 543024 & 653947(9, 37, 40) - Magellan and device - in the name of Magellan Corporation (Australia) Pty Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Richard Smoorenburg, Smoorenburg Patent & Trade Mark Attorneys

Applicant: Benjamin Fitzpatrick of counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys

Decision:

Section 92 Application unsuccessful - trade marks to remain on the register

Background

1. Trade mark registrations 543023, 543024 & 653947 are registered in the name of Magellan Corporation (Australia) Pty Ltd ("the opponent").  The registrations have the following details:

Registration Numbers:

543023, 543024 & 653947

Trade Mark:

Goods and services:

543023: Class 9 Computer hardware including display terminals and keyboards and parts thereof and fittings therefor included in class 9, printed circuit boards, integrated circuits, transponders, smart cards having magnetic or other coded information, identification cards in this class, monitoring apparatus in this class, automatically readable value cards in this class, commercial and military electronic equipment, none of the aforementioned goods being computer software

543024: Class 37 Repair services, maintenance services, none of the aforementioned services being services relating to computer software

653947: Class 40 Services relating to manufacture of scientific, electrical and electronic apparatus and instruments; none of the aforementioned services being services relating to computer software

1. On 30 January 2002, Magellan Corporation (now known as Thales Navigation Inc), ("the applicant"), filed applications for removal of the registrations from the Register, on the basis of non-use in the period commencing three years and one month before the date of filing. This period, ("the relevant period"), is 29 December 1998 to 29 December 2001. The opponent filed Notices of Opposition to the application on 21 May 2002. 

2. The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark or not used the trade mark in good faith during the relevant period.

3. The application was accompanied by a declaration by Elizabeth Eadie, attorney for the applicant, detailing inquiries made and alleging that the applicant was aggrieved on the basis of its intention to sell its GPS navigation receivers under the magellan mark in Australia, and also by the opponent’s 653947 registration being cited against the applicant’s application to register its magellan mark.

4. In turn, the opponent alleged in the Notices of Opposition that:

5. The applicant is not a person aggrieved within the meaning of section 92(1) of the Act;

6. The application for registration was made with an intention in good faith to use the trade mark in relation to the goods and services, and in fact it has been so used;

7. the trade mark has in fact been used by the trade mark owner in respect of goods and services for which it has been registered within the relevant period;

8. in the alternative, if there has been no use of the mark during the relevant period, any failure to use was due solely to special circumstances, and was not due to an intention to abandon the mark or an intention not to use it;

9. in the alternative, the Registrar should refuse to remove the trade mark from the Register in the exercise of his discretion.

10. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Melbourne on 12 September 2005. The opponent was represented by Richard Smoorenburg, attorney, of Smoorenburg Patent & Trade Mark Attorneys. The applicant was represented by Benjamin Fitzpatrick of counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys.

The Evidence

1. Details of the evidence filed and served by the parties is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Eleanor Jean Angus	5.05.03	JA1 to JA15	First Angus
Richard Casper Smoorenburg	8.05.03	RCS-1	First Smoorenburg
Evidence in Answer
Amanda Higgins	7.02.05	T1	Higgins
Evidence in reply
Eleanor Jean Angus	26.04.05	JA16 to JA33	Second Angus
Richard Casper Smoorenburg	26.04.05	RCS-2	Second Smoorenburg

1. The Angus declarations are made by the executive director and chief financial officer of MagTech Pty Ltd, which is a company related to the opponent and authorised by the opponent to use the disputed trade marks.

2. In the first Angus declaration, the history and activities of the opponent are detailed and a variety of correspondence exhibited to the declaration.

3. The Smoorenburg declarations are made by the attorney currently acting for the opponent, and who has personally acted for the opponent since 1987.  It is clear that Mr Smoorenburg has a detailed knowledge of the history of the trade marks.

Legislation

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

92  Application for removal of trade mark from Register etc.

(1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be 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 aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

(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.

1. There are a number of elements of section 92 that must be satisfied before the Registrar will exercise her powers under the section, namely:

(a)the applicant must be a "person aggrieved";

(b)the application must be in the correct form and must relate to at least some of the goods and/or services for which the trade mark is registered;

(c)there must be no Court proceedings pending which relate to the trade mark; and

(d)at least one of the grounds referred to must be made out.

1. In the present case, the only contentious issues are (a) and (d), namely, whether the applicant is a person aggrieved and whether it is correct in its assertion that section 92(4)(b) has been satisfied.

Person Aggrieved

1. The applicant claimed that it was a ‘person aggrieved’ within the meaning of s 92. A person aggrieved is not defined in the Act. It is only a person aggrieved who is entitled to bring an application under section 92. In Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, Drummond J said at 168-169:

   ‘Though the public and not just the applicant for removal of a mark has an interest in non-used marks not being allowed to remain on the Register, the right to apply for removal created by s 92 is not given to "any person", only to "a person aggrieved".’

2. If the applicant is not an aggrieved person then the application must be dismissed without any further inquiry. It is a threshold question.

3. The material time for determining whether the applicant is a person aggrieved is the date of the application, that is, the date of commencement of the proceedings in which the claim for removal of the mark is made.

4. In The Ritz Hotel Ltd v Charles of the Ritz Ltd (1987) 88 ALR 217 at 254-255 (‘Ritz Hotel’), McLelland J said at 254-55:

   The meaning of the expression "person aggrieved" in legislation cognate with ss 22(1) and 23(1) of the Act has been the subject of consideration in numerous cases, the reconciliation of which I do not propose to attempt, even if it were thought possible. Decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed: see Attorney-General (NSW) v Brewery Employés Union of NSW (1908) 6 CLR 469; William Powell (trading as Goodall, Backhouse & Co) v Birmingham Vinegar Brewery Co Ltd [1894] AC 8; "Daiquiri Rum" Trade Mark [1969] RPC 600; Crean & Co v Dobbs & Co [1930] 3 DLR 22. It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. In my opinion the concept does not admit of further refinement. In deference to a submission by the defendants based on, inter alia, "Consort" Trade Mark [1980] RPC 160 at 166, I would merely add that in my view there is no legitimate basis for introducing into the concept of "person aggrieved" for the purposes of ss 22(1) or 23(1) any restriction based on the conditions required to be fulfilled by an applicant for registration of a trade mark. I reject the defendants’ submission that "the plaintiff must show a trade rivalry by demonstrating that it is either in trade or has a fixed and present intention to enter trade in Australia in goods sufficiently similar to those covered by Classes 3 and 26 as to be likely to cause confusion". In the present case the question whether the plaintiff is a "person aggrieved" in relation to any of the claims made in the proceedings has no necessary relationship to the question whether the plaintiff could itself successfully apply for registration of any of the subject marks: for example, see Re Riviére’s Trade Mark (1884) 26 Ch D 48; Re Trade Mark of La Société Anonyme des Verreries de l’Etoile (1894) 11 RPC 142; Pink v J A Sharwood & Co Ltd (1913) 30 RPC 725.’

5. In Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Food Corporation (1996) 34 IPR 198 (‘Kraft Foods’), Sackville J (with whom Shepherd and Tamberlin JJ agreed) said at 207:

   ‘I think that the remarks of McLelland J are helpful in construing the expression "person aggrieved" to the present context. I also agree with His Honour’s comment that there is no legitimate basis for introducing into the concept, for the purpose of s 23(1) of the TM Act, any restriction based on the conditions required to be fulfilled by an applicant for registration of a trade mark.
   
   While care must be taken not to introduce too much refinement, the authorities have identified certain circumstances in which an applicant for removal of a trade mark is, or is very likely to be, a "person aggrieved". Powell v Birmingham Brewery illustrates that a person who is in the same trade as the registered proprietor of the mark and who shows that he or she will use the mark, is ordinarily a "person aggrieved" for the purposes of a removal application. A trader who has dealt in the same class of goods as the registered proprietor and shows that he or she could use the mark, establishes a prima facie case that he or she is a person aggrieved for the purposes of a removal application. The inference may be rebutted by evidence from the objector, demonstrating that the applicant will not take advantage of the opportunity to use the mark, but in the absence of such evidence the prima facie inference remains. A person who has used a mark, especially if the mark has been used on a similar class of goods, and who remains in the same business also will usually be a "person aggrieved" for the purposes of s 23(1) of the TM Act: Farley v Alexander, at 492; Continental Liqueurs Pty Ltd v G F Heublein & Bro Inc (1960) 103 CLR 422 at 427-8, per Kitto J, rev’d on other grounds; (1962) 109 CLR 153; The application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 4, per Kitto J. The same applies to an alleged infringer of a mark; New South Wales Dairy Corp v Murray Goulburn Cooperative Co at 77.’

6. Once there has been a bona fide challenge to a removal applicant’s standing, the removal applicant has the onus of establishing the status of a person aggrieved: Kowa Company Ltd v N V Organon [2005] FCA 1282, per Lander J.

7. I am satisfied that the applicant is a person aggrieved.  The applicant has provided evidence of more than merely filing trade mark applications against which the opponent’s registrations have been cited.  There is sufficient evidence that the applicant has used similar trade marks in Australia in relation to goods and services that overlap those of the opponent.  Indeed the opponent, in its submissions, conceded that the applicant “has some standing in relation to ‘GPS navigation receivers’”.  The applicant can be seen to be practically and legally disadvantaged by the opponent’s registrations remaining on the register.

Grounds of Opposition

Use During Relevant Period

1. The relevant legislation is contained in of section 100 of the Act. The relevant parts state:

   100.

   (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.

   ...

   (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

1. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark in the relevant period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at paragraph 17

2. I am satisfied that MagTech is an authorized user of the opponent’s trade mark as allowed by subsection 7(3), and defined in section 8, of the Act.

3. I am satisfied that MagTech has used the trade mark during the relevant period, on letterheads, on invoices, and in the extracts from the licence agreement.

4. The applicant sought to attack the use on two fronts, firstly that the invoices were with overseas companies and using US currency, and secondly that the use did not cover the range of goods and services in the opponent’s registrations.

5. I am satisfied that the opponent is exporting its goods and services, so that section 228 of the Act provides that such use is taken to be use in Australia.

6. I am also satisfied that the trade mark use is for all the goods and services covered by the registrations.  Although it is clear that the major item marketed by the opponent during the relevant period appears to be an electronic luggage tagging system, I am satisfied that the evidence indicates that a range of technologies are involved in the system, which are also cover the range of goods and services of the opponent’s registrations.

Decision

1. I am satisfied that the opponent’s evidence shows that there has been genuine commercial use of its trade mark in relation to the goods and services covered by its registrations. The opponent has therefore discharged the onus placed on it under the Act of showing why trade mark registration numbers 543023, 543024 and 653947 should not be removed from the Register on the grounds of non-use during the relevant period. Accordingly, I dismiss the application under section 92 of the Act.

Costs

1. Both parties sought their costs. I see no reason why costs should not follow the event. I direct that the applicant pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

23 December 2005