Michael John Stafford v Automotive Distributors Limited

TRADE MARKS ACT 1995

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

Re:Opposition by Michael John Stafford to application under section 92 of the Act by Automotive Distributors Limited to remove trade mark registration number 713318(12) - Blueprint - in the name of Australian Carburettors and Fuel Injection.

Delegate:	Iain Campbell Thompson
Representation:	Removal Opponent: Opponent represented himself at originally scheduled hearing then appointed Kelvin Lord of Lord & Co for adjourned hearing by teleconference Removal Applicant: Eric Ziehlke, solicitor, of Chrysiliou IP
Decision:	2015 ATMO 40 s92 opposition to removal application; ‘owner’ of Trade Mark a cancelled business name; no legal personality could exist behind the business name; no use by registered owner of the Trade Mark. No reason to exercise Registrar’s discretion. Trade Mark to be removed from the Register

Background

1. This decision concerns an application filed on 14 June 2012 by Automotive Distributors Limited (‘the Removal Applicant’) of the United Kingdom under paragraph 92(4)(b) of the Trade Marks Act 1995 to totally remove the registration detailed below from the Register of Trade Marks:

Registration No:         713318
Priority Date:             19 July 1996
Owner:  Australian Carburettors and Fuel Injection

Goods:Class 7: Fuel systems components especially carburettor components and petrol and diesel fuel injection systems components; ignition system components
(‘the Goods’)

Trade Mark: BLUEPRINT

(‘the Trade Mark’)

2. On 19 September 2012 Michael John Stafford (‘the Removal Opponent’) of Perth, Western Australia, filed Notice of Opposition to the removal of the Trade Mark from the Register stating that “the [Trade Mark] has been used for the past 16 years and is currently still in use in 5 other businesses and companies owned by me”.

3. The parties both filed evidence as further detailed below. Thereafter the parties requested to be heard. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties at a hearing in Canberra on 22 August 2014. Mr Eric Ziehlke of Chrysiliou IP represented the Removal Applicant and the Removal Opponent represented himself. Towards the end of that hearing Mr Stafford expressed some regret that he had not had legal representation. I informed him that I was prepared to adjourn proceedings in order that he could appoint a legal representative to present his submissions and address the arguments of the Removal Applicant. Mr Stafford requested such an adjournment. The hearing reconvened on 21 November 2014 – the Removal Applicant’s representation remained unchanged and the Removal Opponent was represented by Kelvin Lord of Lord & Co by teleconference prior to which he had filed a written outline of submissions.

The Law

4. Section 92 of the Act relevantly states:

92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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 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:
[…]
(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.

5. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc [2015] ATMO 10:

Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
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 trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, 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.”
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

6. The relevant period for the purposes of section 92(4)(b) is the three year period ending on 14 May 2012.

7. Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:

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.
(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.
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 registered owner see section 6.

8. In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:

[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
[171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

The Evidence

9. The evidence filed in relation to this matter comprises the following declarations:

In Support
Michael John Stafford (‘first Stafford declaration’) made on 14 December 2012
Michael John Stafford (‘second Stafford declaration’) made on 14 December 2012
Kevin Murray Crofts made on 14 December 2012
Michael John Stafford (‘the further Stafford declaration’) made on 5 May 2013
Andrew A Amess made on 7 May 2012
Anthony Varrasso made on 7 May 2012
Kevin Murray Crofts made on14 December 2012
Paul Vincent Monkhouse made on 20 April 2013
Ian Dalziel Atkins made on 8 January 2013
Derek Fry made on 17 April 2013
Peter Hotinski made on 23 April 2013
In Answer
David James Town made on 27 November 2013
Ryan O’Connor made on 27 November 2013

In reply
Michael John Stafford (‘the latter Stafford declaration’) made on 15 April 2014

In his first declaration Mr Stafford states that he is the rightful and authorized owner[1] of the Trade Mark.
[1] In his second declaration Mr Stafford says that he is “the owner/authorised party to the Trade Mark “Blueprint” IP Australia registration number 71318” [sic]”.
This claim is, on the face of it, mistaken. The Trade Mark is registered in the name of ‘Australian Carburettors and Fuel Injection’ (a business name – 1271222M – formerly registered in the State of Victoria). Mr Stafford was the holder of that business name at the time that the Trade Mark was registered. However, that business name is now cancelled and, indeed, a certificate attached to Mr Lord’s submissions confirms it was canceled on 4 July 1997. A business name prima facie has no legal personality and cannot own a trade mark although the holder of the business name must have legal personality and might be found to own the trade mark such that the official record might be corrected.[2] Furthermore, the business name 1271222M ‘Australian Carburettors and Fuel Injection’ was registered on 10 May 1996 and was cancelled on 4 July 1997 so it was not in force during the three year period ending on 14 May 2012. Mr Stafford cannot have held this business name and been the legal personality behind it as there was nothing to hold. I note that the slightly different business name ‘Australia Carburettors and Fuel Injection’ was registered on 21 February 2013 by Voodoo Performance Pty Ltd (‘Voodoo’): Mr Stafford explains in his latter declaration that he is the sole director of Voodoo; however, the later business name is not the registered owner of the Trade Mark, the name is different from that of the registered owner of the Trade Mark, was not current during the relevant period, and hence cannot be considered in relation to the use of the Trade Mark.
[2] Subject to my comments at paras [31] and [32], below.
Mr Stafford in his second declaration asserts that he has been using the Trade Mark on repackaged Holley®[3] products since December 1993 and selling these goods through various businesses he has owned or directed.
[3] Holley is a trade mark applied to carburettors – see for example Australian trade mark registration 818736 owned by Holley Performance Products Inc.
Mr Stafford states, “The business name (card supplied) is current and was registered in 2001”. There is a card similar to a business card in a folder attached to this declaration which bears the words ‘Blueprint Auto Products’ along with an internet domain name ‘melbcarbs.com.au’. This card is identical to those in a photograph supplied by the Opponent which appears below:
The electronic file’s ‘properties’ of the above picture show that the photograph was taken with an Olympus® camera on 14 December 2012 – well after the relevant period had ended: therefore the photograph does not establish use during the relevant period. Similarly, there are two photographs showing goods bearing the card on a rack – one of these photographs appears below:
Similarly, the ‘properties’ of the above photograph (and those of the other ‘rack photograph’) shows that it was taken on an Olympus® camera on 15 December 2012 – well after the relevant period.
Further, these photographs establish that the ‘business card’, if it be such, has a provenance which can only be reliably ascribed to the same dates as those of the photographs (ie mid-December 2012) – again well after the relevant period.
Mr Stafford’s statement about the business name appearing on the card merits further mention. I have informed myself on this issue in terms of regulation 21.15(4) of the Trade Mark Regulations 1995. ASIC records show that there was a business name 0014514G ‘Blueprint Automotive Products’ which was cancelled on 15 August 1993, another business name 0212333N ‘Blueprint Automotive Products’ was cancelled on 28 November 2000, another business name E4788144 ‘Blue Print Automotive’ was registered on 1 January 1753 [sic] and cancelled on 27 August 2007 and a further ‘Blueprint Automotive Products’ registered from 17 February 2013 with Voodoo as the holder: all of these dates are well before or well after the relevant period.
Mr Stafford annexes a further declaration by himself to his first declaration and several declarations by others to both his first and second declaration. The declarations of Messrs Amess and Varrasso do not mention the Trade Mark, and that of Mr Crofts attests to buying “parts” from Mr Stafford packaged and branded BLUEPRINT from 1999 to present. These gentlemen do not state what the parts were that they purchased. These declarations are not, therefore, corroboration of the use of the Trade Mark on the Goods.
The further declaration in support by Mr Stafford sheds no additional meaningful light on the use of the Trade Mark; however a declaration by Mr Monkhouse states that he had (as at the date of the declaration - 20 April 2013) had dealings with “Mike from Southside Carburetors for approximately 5 yrs”. During that time, states Mr Monkhouse, he “bought a range of products for various vehicles that I own”. All products have, Mr Monkhouse states, borne the Trade Mark on their packaging. However, Mr Monkhouse does not specify the nature of the goods he bought.
Mr Atkins states that as at 8 January 2013 he had “bought items with the ‘Blueprint’ branding for carburettors from Mike at Southside carby’s [sic] for approximately 3 years to date”. Mr Atkins does not states the nature of these items and it appears that the ‘branding’ might be that which I discuss as being problematical at [17] above.
Mr Fry relevantly states that he has been “using and dealing in BLUEPRINT products for 10 years at the Cannington premises in Western Australia.” And that he “[has] been using the BLUEPRINT branded products in his carburettors”.
Mr Hotinski relevantly declares that he has dealt with Southside Carburettors since 1992 and “has seen the product BLUEPRINT being used to repair carburettors and other fuel systems.” He states that he is “aware that Mike Stafford is the proprietor of Melbourne Carburettors and has been so since 1992 …”
Mr Lord in his submissions pointed to these supporting declarations as evidencing use of the Trade Mark. However, I do not agree for the following reasons. None of the supporting declarants state what their positions or expertise are or what their relationship with the registered owner (or Removal Opponent) is or directly corroborate the use of the trade mark BLUEPRINT on the Goods within the relevant period and I am therefore not inclined to put much weight on their declarations.
Finally in this evidence in support of the opposition to removal there is a series of receipts issued under a rubber stamp impression which reads “BLUE PRINT AUTOMOTIVE PRODUCTS UNIT 20/92 MALLARD WAY CANNINGTON 6107 9350 6677”. These photocopied receipts are hand written, near illegible, and there is no apparent mention of the Trade Mark in the body of the receipts. The receipts are numbered but could be regarded as being problematical because at least two of them are apparently issued out of order: receipt 93 being issued in 2010 and receipt 87 being issued in 2011. There may be a good explanation for this but none has been proffered –this issue accordingly has the potential to affect any weight I might afford this evidence.
A greater problem with the ‘receipts evidence’ lies in the wording of the rubber stamped expression “BLUE PRINT AUTOMOTIVE PRODUCTS UNIT 20/92 MALLARD WAY CANNINGTON 6107 9350 6677” at the head of the receipts. In Section 17 of the Act a trade mark is defined:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
The problem with the wording of the rubber stamp is that contextually it seemingly refers to the unregistered business name BLUE PRINT AUTOMOTIVE PRODUCTS, rather than to the Trade Mark which is the single word BLUEPRINT. Thus, on balance, the rubber stamp refers, in my consideration, to the unregistered business name relating to the supplier of the products rather than being used to distinguish those products themselves and the receipts are not (in my consideration) of persuasive force when assessing the use of the Trade Mark.
The evidence in answer provides the background of the Removal Applicant and reveals that an inconclusive investigation into the use of the Trade Mark was carried out by an investigator. The Removal Applicant has a pending trade mark (relevant details of which appear below) against which the Trade Mark presently stands as a citation:

Application No: 1397382
Int Registration: 906157

Lodgement Date: 2 November 2010
Goods/Services: Class 12: Parts and fittings, all for vehicles

Class: 16 Book binding materials; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; printing blocks; mail order catalogues; promotional catalogues; product catalogues; calendars; pictures; posters; all the aforesaid relating to vehicles and/or the automotive industry; none of the foregoing relating to business
Class: 35 Bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from an automobile parts distributor; retailing and wholesaling of car accessories, vehicle parts and fittings; all the aforementioned services also provided on the Internet or World Wide Web; all the aforesaid relating to vehicles and/or the automotive industry; none of the foregoing relating to business education

Trade Mark: BLUE PRINT

The evidence in reply is the latter declaration by Mr Stafford. Much of this declaration does not address the use of the Trade Mark and is a response to the evidence in answer filed by the Removal Applicant. Relevantly, in this latter declaration Mr Stafford states:
I am the sole Director of the following companies and businesses:- Voodoo Performance P/L, Voodoo Motor Spares P/L, Cam Quip P/L, Videowise P/L (10 further companies) and Melbourne, Sydney, Brisbane, Adelaide and Southside Carburettors, Melbourne and Sydney Fuel Injection, Blueprint Auto Products and further automotive related businesses.
[…]
The TM is an Australian Registered Trade Mark in my possession from inception. It has been renewed once and has been in use prior to the time of registration.
I have the right to use this mark in any of the businesses I own. It was registered in my personal name as the proprietor of a business not a company and I may assign, licence or permit with my permission its use by others.
I have also the registration of this TM in New Zealand.
The existence of this registered TM was verifiable by a search of the Madrid data base and Australia is member of the convention. I am familiar with the registration process as I am the Holder of a TM registered thru this process namely CAM QUIP.
Mr Stafford is mistaken in his belief that the Trade Mark was registered in his personal name and that he may assign, license or permit [the use of the Trade Mark] by others. The Trade Mark is registered in the name of ‘Australian Carburettors and Fuel Injection’: if the Trade Mark could be assigned, it would be assigned by the registered owner of the trade mark – here (problematically) by either a business name – or (arguably) by the holder of that business name. However, Mr Stafford is not the holder of this business name as it is cancelled. Further, and possibly incidentally, Mr Stafford is not the owner of the New Zealand registration of this trade mark – it is registered in the name of Carby Parts Pty Ltd and I note that that company shares its address with a number of companies directed by Mr Stafford.
After weighing the evidence and considering the submissions of the parties, I consider that the Removal Opponent has not rebutted the allegation of the non-use of the Trade Mark to my satisfaction on the basis of its use.

Further Reasoning

The subject of business names being entered onto the Register of Trade Marks as owners of trade marks is a ‘live issue’ and could form a bearing on my decision. The Explanatory Memorandum to the Trade Mark Amendment Bill 2006 explains:
4.5 PERSONS WHO MAY OWN A TRADE MARK
Subsection 27(2)
1. A trade mark is a valuable property right and it is important that the owner is properly recorded. Sections 27 and 58 of the Act work together to ensure that the person recorded as the owner of a trade mark is the owner. A person applying for a trade mark must claim to be the owner of the trade mark (paragraph 27(1)(a) of the Act). Another person can oppose the registration of a trade mark on the grounds the applicant is not the owner (section 58 of the Act).
2. Section 6 of the Act defines a person as a body of persons whether incorporated or not. However, groups such as trusts, business names, trading names and partnerships are not usually able to own property. Ownership of property is usually limited to persons who have legal personality. However, there has been some confusion as to who can own a trade mark, in particular in relation to trusts and business names.
3. There is an exception to the definition of persons able to own a trade mark. International agreements oblige Australia to allow an association to own a collective trade mark. The current definition of association in section 6 excludes incorporated associations. Item 64 will remove this restriction and allow incorporated associations to apply for collective trade marks. However, in making this change the rights of unincorporated associations to own collective trade marks are preserved.
Further, the Explanatory Memorandum continues:
4.5.1 Item 10
1. This item amends subsection 27(2) of the Act to make it clear that only a person with a legal personality can apply for a trade mark. This will make it clear that trusts, business names or any other entity that does not have a legal personality cannot apply for a trade mark.
4.5.2 Item 11
1. This item is a savings and application provision to make it clear that the amendment made to subsection 27(2) does not affect the validity of any registration that may have been registered before Royal Assent, or any trade mark registered on or after Royal Assent as a result of an application filed before that day.
Therefore this decision does not bear on the validity of the Trade Mark which was applied for and registered prior to the commencement of the amended section 27.
The case of King v Commissioner of Patents and Ors; Ex Parte Weiss (1939) 61 CLR 240 (‘King’) supports the proposition that an application that is made under a trading name does not render the application a nullity. In that case, the High Court considered the situation where a notice of objection to the grant of a patent was made in the name of a firm (or trading name) which did not have a separate legal personality. Dixon J stated (at 259-260):
To make an objection in the firm's name was irregular. The firm-name is the description of the partners acting in conjunction for the purposes and within the scope of the partnership. It may be conceded that, not only does it insufficiently identify the individuals constituting the partnership, but it indicates an association of persons acting in a particular capacity or right. But I do not think that the misdescription or misnomer involved in the use of the partnership name makes the notices of opposition mere nullities. Under the power to make regulations contained in sec. 108, it would, I think, be possible to authorize the use of the firm-name in a notice of opposition. In fact the regulations prescribe a form requiring the full names of the opponents. But the regulations also confer a power of amendment. A firm-name is, after all, a reference to persons, and, notwithstanding its inadequacy and the limitation of capacity or legal relationship implied, it notifies a real intention to oppose by real persons. In my opinion it forms a sufficient foundation to entitle the commissioner to proceed. It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition. In the present case, however, it has been thought right to allow an amendment and thus to make the notice regular. (Emphasis added.)
This case was followed in a decision of a delegate of the Commissioner of Patents in ATF Mining Electrics Pty Ltd v Bramco Electronics [2003] APO 14 (28 March 2003) (‘Bramco’). In that decision, the delegate held at [23] that the notice of opposition was valid as there was only one proprietor of the registered business name identified on the notice and the parties to the opposition were ‘well aware of the corporate identity that lay behind the business’.
However, some doubt might exist in the light of Crazy Ron’s Communications Pty Ltd and Ors v Mobileworld Communications and Ors^{^[1]} [2004] FCAFC 196 (‘Crazy Ron’s’). When considering the operation of the former subsection 65(5), the Court stated (at [125] and [126]):
It may well be, although it is not necessary to decide, that a mistake in the spelling of the name of an applicant could be amended pursuant to s 65(5). Such an amendment perhaps might properly be characterised as an ‘amendment to any other particular specified in the application’ within the meaning of s 65(5) of the TM Act. However, we do not think that s 65(5) is intended to permit the substitution of one person for another as an applicant simply because the first person ‘mistakenly’ applied for registration of a trade mark, whatever may have been the error or misunderstanding that led to the mistake. Section 65(5) should not be construed as permitting to be done by mere amendment of an application what should be done by withdrawal of the application and filing of another application. That is to say, the provision does not authorise the substitution of one person for another person as the applicant for registration. (Stress added)
We should add that if the respondents’ argument were correct, s 65(5) of the TM Act would authorise an amendment changing the applicant’s identity as from the date the application was filed. This would be so notwithstanding that the statutory scheme permits rectification of a failure to ‘specify the name of the applicant’ only on the basis that the application is taken to be filed as from the date the failure is rectified. Thus if s 65(5) allows a change of identity of the applicant by reason of a ‘mistake’ in the application, the substituted applicant would be in a better position than an applicant whose name was not fully recorded in the original application. We do not think that this was the legislative intention. (Emphasis provided)
However, the case before me is readily distinguishable from King, Bramco and Crazy Ron’s: the business name entered as the owner of the Trade Mark, 1271222M ‘Australian Carburettors and Fuel Injection’, was registered on 10 May 1996 and was cancelled on 4 July 1997 so it was not in force during the three year period ending on 14 May 2012. Indeed, as I have mentioned, the certificate proffered by Lord & Co along with the written submissions confirms that the business name was cancelled on 4 July 1997. Thus, although there may have been legal personality behind the business name (namely ‘Australian Carburettors and Fuel Injection’) stated to be the owner of the Trade Mark at the date on which it was registered – 19 July 1996 – there was no registered holder of the business name (or owner of the Trade Mark) during the period which is relevant for the purposes of section 92(4 (b) – that is the three year period ending on 14 May 2012. Mr Stafford, or one of his companies, could not have been the legal personality behind the registered business name ‘Australian Carburettors and Fuel Injection’ as there was no registered business name at that time. It follows that the Trade Mark cannot have been used by its registered owner (or the legal personality behind the registered owner) during the relevant period.
It also follows for this additional reason that the Removal Opponent has not established his opposition to the removal of the Trade Mark.

Discretion

I do not consider that there are grounds for the exercise of the Registrar’s discretion. There is a general impression arising from the evidence that the Trade Mark might have been used by somebody (other than the more obvious uses of the words ‘blueprint’ or ‘blue print’ as parts of unregistered business names) either before, during or after the relevant period but the evidence does not on balance affirmatively establish to my satisfaction that the Trade Mark was used during the relevant period in relation to the Goods or which of the myriad of companies or businesses directed by Mr Stafford might have used it or whether the possible use was by Mr Stafford himself.
Moreover, there is no obvious way that the nullity in the registered ownership of the Trade Mark might be addressed: As there is no ‘owner’ of the Trade Mark recorded apart from a registered business name which was not in force either during the relevant period or presently and, moreover, no legal personality behind the cancelled business name registration, there is nobody to whom the putative use of the Trade Mark might accrue nor, furthermore, anybody who might legally put themselves forward as the owner of the Trade Mark so that they could request to be entered as such onto the Register of Trade Marks.
Put another way – in the circumstances of this matter, there would be no practical purpose to be served in exercising the Registrar’s discretion in favour of the registered owner of the Trade Mark as the registered owner does not exist.

Decision

I therefore direct that, if there is no appeal from my decision, the Trade Mark be removed from the Register one month from the date of this decision. Should there be an appeal from this decision the disposition of the registration should be in accordance with the Court’s order or direction.

Costs

As is usual, costs may follow the event: the Removal Applicant being the successful party is entitled to its costs which I award against the Removal Opponent as per Schedule 8 to the Trade Marks Regulations 1995. There being one adjourned hearing (in two parts) in relation to this matter, costs are in relation to the total length of that hearing.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
14 May 2015

[2015] ATMO 40

13 May 2015