Miquadra SRL v Intrepid Sports Pty Ltd

[2018] ATMO 15

TRADE MARKS ACT 1995

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

Re:Oppositions by Miquadra SRL to applications under section 92 of the Act by Intrepid Sports Pty Ltd to remove trade mark numbers 1197707(25, 42) - INTREPID DEVICE - in the name of Miquadra SRL

Delegate:

Jock McDonagh

Representation:

Opponent: No appearance or submissions

Applicant: Written submissions prepared by Actuate IP

Decision:

2018 ATMO 15

Opposition to s.92 removal application – s92(4)(b) ground for removal – use not established – obstacle for use not established – Registrar’s discretion ­ – registration to be removed from the Register – cessation of protection of protected international trade mark for non-use

Background

1. This matter is a proceeding under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) in which by an application filed on 11 April 2016, Intrepid Sports Pty Ltd (‘the Applicant’) has sought the removal from the Register of the trade mark  appearing below in respect of all of the goods for which it is registered:

Trade Mark No.

1197707 (International Registration 932845)

Trade Mark

‘the Trade Mark’

Registered from

13 April 2007

Goods

Class 25: Professional and sports clothes

Class 42: Design and development of go karts and components industry for go karts

1. On 28 June 2016, Miquadra SRL (‘the Opponent’) filed a Notice of Intention to Oppose the removal. The Statement of Grounds and Particulars (‘SGP’), filed 28 July 2016, asserted that the Opponent had used the Trade Mark, or used the Trade Mark in good faith, in Australia on the relevant goods during the three year period ending on 11 March 2016 (‘the relevant period’). In the alternative, the Opponent sought exercise of the Registrar’s discretion.

2. On 5 September 2016 the Applicant filed a Notice of Intention to Defend. The parties then commenced filing evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Canberra by way of written submissions on 7 November 2017 as a delegate of the Registrar of Trade Marks. Actuate IP Patent and Trade Marks Attorneys provided written submissions on behalf of the Applicant. There were no written submissions filed by or on behalf of the Opponent.

Evidence

1. The Opponent the following declaration in evidence:

Declarant	Status	Date, (Known as)	Exhibits
Evidence in Support
Tania Paula Cresswell Weir	Litigation Assistant, AJ Park Patent and Trade Marks Attorneys	14.12.16 (‘Weir Declaration’)	TPCW-1 to TPCW -5

Discussion

1. Section 92 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:

(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. Section 100(1)(c) of the Act provides that the Opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the Trade Marks, (or, per s 100(3)(a), the Trade Marks with additions or alterations not substantially affecting its identity), were used in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

2. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[1].  A single bona fide use of the Trade Mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[2].  However, Wilberforce J, in Nodoz Trade Mark[3] (Nodoz), 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.”

   [1] [1982] FSR 72

   [2] [2001] FCA 261; (2001) 51 IPR 149 at [17]

   [3] (1962) RPC 1 at 7.

3. 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[4]; although one invoice, if genuine, will suffice: Geo W McPherson v Remington[5].

   [4] [1977] RPC 131.

   [5] (1999) 47 IPR 636

4. As mentioned in [2], above, the relevant period for the purposes of s 92(4)(b) is the three years ending on 11 March 2016.

Trade Mark Use

1. The majority of the Opponent’s evidence is either undated or dated outside of the relevant period. It does not demonstrate use within the relevant period and I ignore it.

2. In Exhibit TPCW-1 the only items that are shown to be within the relevant period (by way of the Wayback Machine) do not evidence trade mark use of the Trade Mark.

3. Exhibit TPCW-2 contains undated photographs, which I ignore. In any event they do not seem to display the Trade Mark as registered.

4. Exhibit TPCW-3 does provide invoices showing use within the relevant period. The invoices are of Intrepid Driver Program SRL. There is no evidence regarding this company and whether or not it is an authorized user of the Trade Mark.

5. In any event, the trade marks used in Exhibit TPCW-3 are as shown:

1. While the word element of the two marks shown above is essentially the same as that of the Trade Mark, the device elements are not substantially identical. The Trade Mark includes a distinctive broken elliptical device which surrounds the word INTREPID. This broken elliptical device is the dominant feature of the Trade Mark, as it envelops the word INTREPID and immediately draws the eye of persons viewing the Trade Mark. The device is light on one end, and dark on the other, with the colour changing through the middle of the device. At both ends of the device it trails off rapidly to a sharp point, giving a swoosh-like effect. The rapid colour change and streamlined shape of the device give the impression of speed and movement when looking at the Trade Mark.

2. On the other hand, in the device shown to the left at [14] above (‘Eagle Device’), the word INTREPID is partially surrounded by a distinctive bird’s head device. This bird’s head device is the dominant feature in the Eagle Device. It envelops the word INTREPID and immediately draws the eye of persons viewing the Eagle Device. The bird’s head device is predominantly black with a large brightly-coloured eye. It features prominently a curved, sharp beak, reminiscent of a hawk, falcon, eagle or some other bird of prey.

3. The inclusion of the bird’s head device clearly gives a new meaning to the Eagle Device which is not present at all in the Trade Mark. There is nothing in the Trade Mark which would give the suggestion or impression of a bird or a bird’s head. There is no reason to suggest that the public would associate the Trade Mark with a bird or a bird’s head. Yet the public would naturally be left with this impression upon viewing the Eagle Device, in which the bird’s head device is the dominant feature.

4. In light of the above, a side-by-side comparison reveals clear and significant differences between the Eagle Device and the Trade Mark, in both the appearance of the respective marks and the meaning which the public would derive from them. Accordingly, the Eagle Device is not substantially identical with the Trade Mark, and it does show additions or alterations that substantially affect the identity of the trade mark.

5. The same principles apply to the right hand device (‘IDP Mark’) at [15] above. The words DRIVING PROGRAM are not present anywhere in the Trade Mark. They are also not descriptive of the Opponent’s Goods and Services, so they are likely to add meaning to the IDP Mark which is not present in the Trade Mark. As a result, they amount to an essential feature which is not present in the Trade Mark.

6. A side-by-side comparison reveals clear and significant differences between the IDP Mark and the Trade Mark, in both the appearance of the respective marks and the meaning which the public would derive from them. Accordingly, the IDP Mark is not substantially identical with the Trade Mark, and it does show additions or alterations that substantially affect the identity of the trade mark.

7. In TPCW-4, there is a list of Google search engine results for ‘Intrepid Karting’ in Australia during the relevant period. Karting is obviously within the specifications in Class 42. However, there is no further explanation of the search results. None show the device as registered nor whether the word INTREPID that is displayed is used by or with the authority of the Opponent.

8. Exhibit TPCW-5 shows examples of a trade mark in relation to go karts, spare parts and accessories for go karts, and clothing. Most is outside the relevant period, which I ignore. Such use as there is within the relevant period is of the Eagle Device, not the Trade Mark.

9. I am not satisfied that the Opponent has demonstrated use of the Trade Mark during the relevant period.

10. There is no evidence of circumstances that were an obstacle to use of the Trade Mark during the relevant period.

Registrar’s Discretion

1. The Opponent has advanced no reason, or evidence which would support a reason, for the Registrar to exercise her discretion under s 101(3) of the Act. However the Opponent has not provided any evidence to satisfy me that it is reasonable to exercise that discretion.

2. Removing the Trade Registration would be more consistent with the underlying purpose of Part 9 of the Act, being maintaining the integrity of the Register.

Decision and Direction

1. 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. The application for removal in relation to the Trade Mark has been established. I direct that the Trade Mark be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registration will not be removed until the appeal is withdrawn or discontinued. Otherwise, the registration will be subject to the decision of the Court.

3. As the Trade Mark is an International Registration Designating Australia (‘IRDA’) under the Madrid Protocol, removal from the Register results in the cessation of protection of the IRDA: reg 17A.48D of the Regulations.

4. The Registrar will notify the International Bureau of the cessation of protection of the IRDA at the conclusion of the appeal period if there is no appeal. If there is an appeal, at the conclusion of the appeal process the Registrar will advise the International Bureau if required.

Costs

1. The Applicants has been successful in relation to the application for removal of the Trade Mark. I direct that costs in relation to the opposition be awarded against the Opponent in accordance with Schedule 8 of the Regulations.

Jock McDonagh

Hearing Officer

Opposition and Hearings

5 February 2018