Malcolm Walter Atwell v Truline (Australia) Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Truline (Australia) Pty Ltd to application under section 92 of the Act by Malcolm Walter Atwell to remove trade mark number 775903(28) - TRULINE - in the name of Truline (Australia) Pty Ltd

Delegate: Alison Windsor

Representation: Opponent: Ben Fitzpatrick of counsel instructed by F B Rice and Co, Patent and Trade Mark Attorneys, Melbourne
Applicant: Kelvin Lord of Lord and Company, Patent and Trade Mark Attorneys, Perth

Decision: S92 – Registrar’s discretion – non-use application unsuccessful, trade mark to remain on the register.
Background

Truline (Australia) Pty Ltd (“Truline”) has a trade mark registration as follows:
Application number:                 775903
Trade mark:  TRULINE
Registration date:  16 October 1998
Goods specification:                 Class 28: Equipment and accessories in this class for archery, athletics, hopscotch, boxing and ball games including: badminton, baseball, softball, basketball, cricket, European handball, football, Australian rules football, grid iron, hockey, ice hockey, lacrosse, korfball, netball, rugby league/union, soccer, tennis, bat tennis, volleyball, waterpolo (but excluding equipment and accessories for billiards, pool and snooker); rebound nets, trampolines, chinning bars, wall mats, jump testers and ball targets
On 14 October 2004, Malcolm Walter Atwell (“Atwell”) filed an application for removal of the trade mark for non-use. In the application, Atwell claimed to be a person aggrieved, and cited the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (“the Act”) as the grounds for the removal. The relevant period for which non-use is claimed is 14 September 2001 to 14 September 2004.
The removal application was in respect of part only of the registered goods. The application was not in order at the time of filing, as the reference to the goods to remain on the Register was incorrect. This error was corrected in a letter dated 21 October 2004. A further letter dated 5 days later confirmed there were no court proceedings pending for the relevant trade mark. The goods to remain in the registration if the non-use action is successful would be the following:
“equipment and accessories in this class for archery, athletics, hopscotch, boxing and ball games being goals, nets, net adjusters and winders, posts, rings, backboards, targets, towers, fillable athletic stands, crossboards, hurdles, batons, shotput accessories including stopboards, discus accessories including discus circles, boxes, batting tees, cricket stumps, rebound fences, high jump stands and spares and accessories therefore including uprights, crossbar rests and measuring sticks”. (My emphasis.)
Accompanying the application was a declaration by Kelvin Ernest Lord of Lord and Company, Patent and Trade Mark Attorneys, who stated he had the care and conduct of the removal action mounted by Atwell. Mr Lord stated the following:
“Atwell is aggrieved by this registration because he wishes to market in Australia under the trade mark, TRUELINE, certain goods which fall within Class 28. Accordingly, to avert the risk of infringement proceedings against Atwell, partial removal of registration 775903 is sought. In this connection I would comment that Atwell is the applicant of pending Australian Trade Mark Application 882209[1] in class 28.
Atwell has instructed me to assess the vulnerability of the registration number 775903 to removal from the Register on the ground of non-use under Section 92(4)(b) of the Trade Marks Act.”
[1] Details of the application appear as an annex to this decision.
Truline filed its notice of opposition on 2 February 2005. The notice is in general terms – giving notice under regulation 9.3(1) of opposition to the application filed under s.92(1). Evidence in support, in answer and in reply were filed and served in due course. The matter was set down for a hearing before me, as delegate of the registrar, in Canberra on 13 June 2006. Both parties appeared by video link - Kelvin Lord of Lord and Company representing Atwell, and Ben Fitzpatrick of counsel, instructed by Mark Wakeham of F B Rice & Co, representing Truline.
Evidence
The evidence in support consists of a declaration made by Boris Ponomarenko, Director of Truline, with attached Exhibits BP-1 to BP-5. The declaration provides a short history of the development of Truline’s trade marks (Exhibit BP-2), a number of catalogues detailing Truline’s range of products over a period of years (Exhibits BP-1 and BP-3) and, at exhibit BP-4, a copy of the Registrar’s decision in respect of Atwell’s opposition to the registration of the trade mark application now subject of this action. Exhibit BP-5 is a copy of a letter, dated in 1993, from Kelvin Lord and Company on behalf of Atwell, requesting Truline cease using the word ‘Truline’ in a trade mark sense in relation to sporting articles.
The evidence in answer consists of two declarations. The first is made by Malcolm Walter Atwell. The main thrust of this declaration is to the evidence in support being either irrelevant or incorrect. Mr Atwell refers especially to the range of goods claimed by Truline in paragraph 4 of the Ponomarenko declaration, noting that the catalogues provided do not cover all the goods claimed in trade mark registration 775903. Paragraph 12 gives a long list of goods which Mr Atwell says demonstrates that fact. Paragraph 14 gives examples of goods which Mr Atwell says are clearly not covered by the catalogues, and he submits at paragraph 15 that the current statement of goods of the registration is broader than the actual goods sold. He refers to the Truline goods as “sporting hardware”[2] and notes Truline does not sell equipment he calls “software”, being goods such as balls, racquets, bats, sticks or safety equipment, including pads or gloves. He also submits that Truline has sold the same range of goods for over 20 years, and has not expanded their range during that time.
[2] By “sporting hardware”, Atwell appears to be referring to fixtures and fittings necessary to the playing of sports – for example: rugby and soccer goals and goal posts; high jump bars and uprights; basketball towers; back boards and baskets; shot-put and discus circles and stop boards.
The second declaration is made by Duncan Raleigh Gilbert, an insurance assessor/investigator of a company called Meridian Services Pty Ltd. Exhibit DRG-1 consists of a letter sent by Mr Gilbert to Kelvin Lord, detailing a trade mark investigation he was requested to make. The investigation appears to be designed to discover the range of goods sold by Truline, and to determine whether there was any intention on Truline’s part to expand this range in the future.
Evidence in reply consists of a declaration from Mark Andrew Wakeham, trade mark attorney with FB Rice and Co. Attached to the declaration is a review of the internet advertising and promotion of Mal Atwell Leisure Group, a company run by Mr Atwell. The attachment consists of approximately 35 pages of printouts from the web-site, many of which are copies of the same index screen, and give no cogent information. This declaration appears to be designed to demonstrate the range of goods Atwell deals in.
Request for admission of further evidence
On 30 May 2006, two weeks before the matter was due to be heard, Mr Lord filed an application for permission to serve further evidence. On 2 June 2006, I sent a letter by facsimile to Truline advising them of the request and because of previous commitments which would necessitate my being absent from the Office, allowing them a short period in which to file comments on, or objections to, the request. Truline advised it intended to object to the request. Because of the short time frames, I then advised both parties I would hear arguments from them on the further evidence request before dealing with the substantive matter at the hearing.
Atwell’s reasons for requesting the further evidence be admitted to proceedings was, he said, that he wished to provide further evidence in support of his interest in the matter. The further evidence consisted of printouts from the same website used for the evidence in reply, but included pages which had not been copied into that evidence. At least some of these pages showed reference to particular goods, such as golf balls, which were not included in the evidence in reply. Mr Lord said he considered the evidence in reply to be a belated attempt to challenge the applicant’s standing, and his further evidence was a submission in respect of this.
Mr Fitzpatrick, for Truline, stated that the matter of standing had indeed been dealt with, in paragraph 7 of the Ponomarenko declaration, where it was stated that Truline had no interest in impeding Atwell’s current business activities. Mr Fitzpatrick stated that, should I allow the evidence into proceedings, he did not consider it added anything to the mix. After hearing both parties’ submissions, I advised I would allow the evidence into proceedings as I considered it in both parties’ interests that I have before me, while making my decision, as complete information as possible.
Submissions
I will refer to these as required during my discussions in the course of the decision.
The Law
The relevant sections of the Act governing this non-use action are as follows:
SECTION 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.
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:
(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:
(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. …
SECTION 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.
(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.
Discussion
Standing
Truline’s notice of opposition for this action is worded in very general terms. There was therefore no overt challenge in the notice to Atwell’s standing in the action. During his submissions in respect of the request to provide further evidence, Mr Lord advised the purpose of the material was, in part, to deal with what he described as “a belated attempt to challenge the applicant’s standing”. His submissions also claimed the opponent had not made any clear statement of challenge to Atwell’s standing. I infer from this that Atwell was aware there was a possibility of his standing being challenged, despite the lack of overt attack, and was not likely to surprised by submissions on the matter.
Truline’s submissions at the hearing dealt with the issue in some detail. Mr Fitzpatrick advised that the issue of standing had indeed been raised in the Ponomarenko declaration, paragraph 7 as follows:
At all times my company has sought registration only in respect of the trade mark rights to which it is rightly entitled and in part as a defence against Malcolm Atwell’s allegations of infringement. My company has no interest whatsoever in impeding the current business activities of Malcolm Walter Atwell. The irony of the same Malcolm Walter Atwell’s basis for a grievance as detailed under Item 3[3] of the Statutory Declaration by Kelvin Ernst Lord dated 14 October 2004, where Mr Atwell wishes to avert the risk of infringement of my company’s registration 775903 is noted.
[3] Item 3 is quoted above in paragraph 4.
At best, this is an oblique reference to standing. However, the matter having been raised, and Atwell having expected the challenge, I consider it is appropriate to consider it. Standing is a threshold issue, and should I find Atwell does not meet the threshold test, the non-use action would proceed no further.
The issue of standing is one which has been discussed at length both in decisions originating with this Office, and in the courts. In his submissions Mr Fitzpatrick noted the mere filing of an application for registration and the citation of, or the anticipation of the citation of the registration subject of the removal application does not, on its own result in a party being a “person aggrieved”.[4] He also referred to the decision Schutz-Werker GmbH & Co v Forecast and Trading Pty Ltd (1999) 44 IPR 209 where the delegate said that to establish itself as a person aggrieved, the removal applicant would need to establish “the use it intended for [the] mark, and of the adverse consequences it foresaw which would be bought about by the continued registration” of the trade mark in question.
[4] See Kraft Foods Inc v Gaines Pet foods Corporation [1996] 136 ALR 68 at 70
Atwell has not been particularly forthcoming in the information he has provided about his intentions. He has filed an application for goods covered by Truline’s registered trade mark. He notes that he “wishes to market in Australia under the trade mark TRUELINE certain goods which fall within class 28”. He also notes that he wishes to avoid any possibility of infringement actions being taken against him by Truline.
There is a history of conflict between the two parties involved in this action. They both provide products within the same general trade - that of sports and games equipment and accessories. They have coexisted beside each other in the marketplace for a number of years, marketing different ranges of products. They each have a number of registered trade marks and have taken various trade mark actions against each other over the years. This action is the fifth appearance before the registrar since 1997. Two of Atwell’s registered trade marks have had their goods claims restricted following non-use actions by Truline. Truline has had one of its trade mark claims restricted as a result of an opposition by Atwell. There is certainly a degree of tension between the parties on an ongoing basis.
However, whatever the history of the two parties, in respect of this particular matter, I am satisfied that Atwell is a person aggrieved. I base my satisfaction on comments made by Justice Kitto, in an often quoted case, Continental Liqueurs Pty Ltd v G F Heublein and Bro. Inc. (1960) 103 CLR 422. In paragraph 7 of his ruling, Kitto J quoted the words of Lord Herschell[5], as follows:
Wherever it can be shewn that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark if remaining on the register would or might limit the legal rights of the applicant so that by reason of the existence of the entry upon the register he could not lawfully do that which but for the appearance of the mark upon the register he could lawfully do, it appears to me that he has a locus standi to be heard as a ‘person aggrieved’.
[5] From Powell v Birmingham Vinegar Brewery Co. (1894) AC 8
Since Atwell has met the threshold test as a person aggrieved, it remains for me to consider whether Truline has established use, and thus has overcome the non-use challenge.
Use within the relevant period
The main evidence of use of its trade mark which Truline has provided consists of copies of its sales catalogues. The catalogues dated January 2002, January 2003, and September 2003 are within the relevant period. Other catalogues dating from as early 1986 and as late as January 2005 also form part of the collection. In addition to the catalogue copies, Exhibit BP-2 to the Ponomarenko declaration consists of a statutory declaration made by Mr Ponomarenko in 1994 and provided for an earlier action before the Registrar in respect of trade mark number 611542. This declaration gives sales figures for the period 1985 to 1993, well outside the relevant period. I assume I am to infer from this information that Truline has an active business, and has used its trade mark appropriately.
While Truline’s own evidence is somewhat lacking, Atwell’s evidence in answer provides useful information to attest to Truline running an active business. The declaration made by Duncan Gilbert describes a visit to the Truline premises involving discussions with staff about the range of goods available, their prices, the possibility of price rises in the future, and methods of ordering the goods. The investigator noted the trade mark appeared on the building, he was given a coloured product catalogue (not appended to the declaration) and a promotional sheet advertising basketball and netball towers (similarly not appended). The inference to be drawn from this investigation is that there is indeed an active business and it supplies the range of goods set out in its catalogues. I am satisfied that Truline has met the onus upon it to demonstrate use within the relevant period, at least in respect of the goods in its catalogues.
Restricting the goods claim and the registrar’s discretion

Atwell’s application for non-use specifies that he is a person aggrieved in part because he “wishes to market in Australia under the Trade Mark TRUELINE certain goods which fall within class 28 …”. He does not elaborate further on the goods of interest. He does not seek to remove Truline’s mark for all the goods claimed. He seeks to remove the trade mark from the register for any goods within the specification for which Truline has not demonstrated actual use. He has provided a list of goods[6] taken from the catalogues which he claims are the only ones within the relevant class for which Truline can claim use within the relevant period.
[6] Paragraph 12 of the Atwell declaration includes a three page list of goods claimed to be those specified in Truline’s 2003 catalogue and covered by the registered goods. This list includes many more items than those proposed to remain in the registration if the non-use action was to succeed.
The goods specification of the registered mark, set out in the first paragraph of this decision covers any and all goods in class 28 which meet the description “equipment and accessories in this class for archery, athletics, hopscotch, boxing and ball games … ”, excepting those goods for billiards, pool and snooker, which are specifically excluded.
Atwell has applied for a trade mark, details of which appear in the annex to this decision. I assume from this application that the “certain goods which fall within Class 28” for which Atwell is interested in using his trade mark are those claimed in that application. This range of goods is incorporated within Truline’s claim in the registration under consideration, and Truline’s registration has been raised as a barrier, under the provisions of section 44, to the registration of Atwell’s application.
The specification of goods for the registration and the application respectively include the terms “equipment and accessories in this class for …” and “apparatus, equipment and accessories in this class for …” a range of sporting activities. The terms “equipment” and “accessories” are wide ranging and cover any goods within the class which are regarded as necessary to play a particular sport. This goes to the so-called “hardware” such as goal posts or shot-put circles, and to the “software” such as balls for playing the game as well as the shot-puts themselves. The two descriptions therefore cover the same goods, and the games in questions are unlikely to operate effectively without them.
The point most relevant to the removal application which I need to consider here is, notwithstanding the presence of Atwell’s pending application, whether it is appropriate to restrict the registered trade mark in the manner requested.
In an unpublished decision in 2004 resulting from Atwell’s opposition to registration of this trade mark, the delegate determined that the range of goods covered by Atwell’s registered trade marks[7] were not goods of the same description as those claimed by Truline in this application. I am in agreement with this decision. It is my opinion that while the goods specifications are clearly separate these two trade marks are able to coexist in the marketplace. Should the goods specifications cease being so clearly delineated, I am of the opinion deception and confusion as to trade source will be a likely result.
[7]472784: Pool tables, snooker tables and billiard tables, and parts and accessories therefor included in this class
Drummond J commented on the issue of fine distinctions in respect of goods claims when he considered trade marks involving the word “Taipan” in McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] 481 FCA 1. He said (and I quote here only those portions relevant to this particular decision, with my emphases in italics):
The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. …
But in contrast to the position under s 23 of the 1955 act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.
But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): 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 eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.
… The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.
From my own knowledge I am aware that a department store, such as K-Mart, which stocks sporting goods will stock basketball hoops and backboards as well as basketballs (“hardware” and “software”). The more specialist sports stores stock a wider range of goods for ball sports: for example, transportable soccer goals, goal nets, soccer balls, linesman’s flags and corner posts or flags. I am satisfied there is an expectation on the part of the buying public that these goods will be available at similar outlets, and the presence in the market of two substantially identical trade marks on this range of goods would lead to deception and confusion in their minds.
Keeping this in mind, while Truline has not established use for each and every product covered by the description embodied within its specification of goods, and therefore Atwell is successful in its attempt to show non-use for a portion of the specification, I do not consider it appropriate to restrict the specification as requested. That would be precisely the sort of "fine distinction" to which Drummond J referred in Taipan, supra.
There is a discretion embodied in subsection 101(3) of the Act (quoted previously at paragraph 14), and it appears appropriate for me to apply this discretion. I am satisfied a restriction to Truline’s specification as requested by Atwell is not merited.
Decision
It is my decision therefore, that, despite Truline having shown use on less than the complete range of goods its specification encompasses, and Atwell technically having made out its case for removal, it is not appropriate to restrict the goods specification to that requested by Atwell. The application for removal is therefore unsuccessful.
Costs
Truline having been successful, it is entitled to its costs. I award costs against Atwell at the official scale.
Alison Windsor
Hearings Officer
Trade Marks Hearings
IP Australia
1 September 2006
Annex 1
Details of trade mark application 882209 in the name of Malcolm Walter Atwell
Application number:              882209
Filing date:  12/07/2001
Goods specification:             Apparatus, equipment and accessories in this class for playing ball games including soccer especially soccer balls, golf especially golf balls and lawn bowls; apparatus, equipment and accessories for playing table sports including soccer, hockey, table tennis including table tennis tables, table tennis bats and table tennis balls; apparatus, equipment and accessories for playing bingo; apparatus, equipment and accessories for playing darts including dart boards and darts; marbles and dice
Trade mark:  TRUELINE

508240: Pool tables, snooker tables and billiard tables, and parts and accessories therefor included in this class
573659: Education and entertainment services in this class namely the establishment, promotion, control, management and conduct of a league for playing of pool, billiards and similar games between competing teams; and promotion, control, holding and arrangement of competitions between teams playing pool, billiards and similar games

708060: Clothing, footwear and headgear

[2006] ATMO 77

1 September 2006

Key Legal Topics

Areas of Law

Commercial Law

Statutory Interpretation

Legal Concepts

Appeal

Costs

Remedies

Standing

Statutory Construction

Delegate:	Alison Windsor
Representation:	Opponent: Ben Fitzpatrick of counsel instructed by F B Rice and Co, Patent and Trade Mark Attorneys, Melbourne Applicant: Kelvin Lord of Lord and Company, Patent and Trade Mark Attorneys, Perth
Decision:	S92 – Registrar’s discretion – non-use application unsuccessful, trade mark to remain on the register.