Matthew Clark v Hyper Bicycles, Inc - [2022] ATMO 58

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Matthew Clark to an application under section 92 of the Trade Marks Act 1995 (Cth) by Hyper Bicycles, Inc. for removal of trade mark number 1525987 (12) – HYPER BIKES – in the name of Matthew Clark

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Megan Evetts of Counsel instructed by Spruson & Ferguson

Decision:

2022 ATMO 58

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

This decision is pursuant to an application made on 11 May 2020 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Hyper Bicycles, Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1525987

Lodgement date

15 Nov 2012

Goods

Class 12: Mountain Bikes

(‘Registered Goods’)

Owner

Matthew Clark

Trade Mark

HYPER BIKES

(‘Trade Mark’)

2. Matthew Clark (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 25 May 2020 and a Statement of Grounds and Particulars (‘SGP’) on 22 June 2020. The Applicant filed a Notice of Intention to Defend on 23 July 2020.

The Opponent subsequently filed evidence in support (‘EIS’) of its opposition to removal . The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’). This material will be discussed in more detail below.
4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 20 April 2021 the Applicant requested a hearing and paid the appropriate fee. On 2 November 2021 the matter was set down for a hearing on 15 March 2022. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks. In line with usual practice, a letter was sent to the parties on 20 January 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant filed written submissions on 9 March 2022 (‘Applicant’s Submissions’). The Opponent did not file any submissions. At the hearing Megan Evetts of Counsel instructed by Jacqueline Chelebian of Spruson & Ferguson appeared for the Applicant. The Opponent did not appear.
5. I am a delegate of the Registrar and the matter has been allocated to me to decide, which…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 58
Decision Date: 19 April 2022

CaseChat Overview and Summary

This decision concerns an application for the removal of a trade mark from the Register, brought by Matthew Clark (the Applicant) against Hyper Bicycles, Inc (the Opponent). The dispute centred on whether the registered trade mark, registration number 1525987, should be removed from the Register in relation to certain "Registered Goods" due to non-use. The matter was heard by Nicholas Smith, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether to exercise discretion not to remove the trade mark from the Register, despite a lack of evidence of use by the Opponent. This involved considering the balance between the public interest in the integrity of the Register and the private commercial interests of the parties, as well as established factors relevant to the exercise of such discretion.

The Hearing Officer noted that while the integrity of the Register is a guiding principle, private commercial interests are also relevant. However, in this instance, there was no evidence that the Opponent had used the trade mark since 2014 or intended to do so in the future for the Registered Goods. The use of the trade mark by an unconnected third party did not, in itself, provide a basis for the Opponent to retain the registration. Applying the principle that the integrity of the Register is important, and finding no compelling reason to exercise discretion otherwise, the Hearing Officer determined that the trade mark should be removed.

Accordingly, the Hearing Officer directed that registration 1525987 be removed from the Register one month from the date of the decision, with provisions for a stay in the event of an appeal. The Opponent was also ordered to pay the Applicant's costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[15] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[16] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[17][15] Kowa Co Ltd v Organon [2005] FCA 1282, [92].[16] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].[17] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].31. Factors that have been found relevant to the consideration of whether to exercise the discretion include:·There had been no abandonment of the trade mark;·The registered proprietor of the mark still had a residual reputation in the mark;·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;·The registered proprietor was not aware of the applicant’s sales under the mark.[18][18] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].32. In the present case, there is no evidence that the Opponent (as opposed to HYPER EXTENSION LTD) has used the Trade Mark since 2014 or intends to use the Trade Mark in the future in Australia for the Registered Goods. Given that, I am unpersuaded that the removal of the Trade Mark for the Registered Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way. In particular the use of the Trade Mark by a third party (HYPER EXTENSION LTD) which, on the evidence presently before me, is unconnected to the Opponent, does not provide a basis to allow the Trade Mark to remain registered to the Opponent. I note that if HYPER EXTENSION LTD wishes to apply to register the Trade Mark for Registered Goods, that is an option available to it, subject to the examination requirements in the Act. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of the Registered Goods. Decision33. The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1525987 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.Costs34. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks19 April 2022

Ratio Decidendi

Legal Principle Established

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Registration No.	1525987
Lodgement date	15 Nov 2012
Goods	Class 12: Mountain Bikes (‘Registered Goods’)
Owner	Matthew Clark
Trade Mark	HYPER BIKES (‘Trade Mark’)