Mistboy Pty Ltd v Transocean Marine Paint Association

[2006] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Mistboy Pty Ltd to applications under section 92 of the Act by The Transocean Marine Paint Association to remove trade mark number 720573(2) – transocean marine paint & device - in the name of Mistboy Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: James Maxwell of Peter Maxwell and Associates, Attorneys Applicant: Fiona Brittain of Davies Collison Cave, Attorneys
Decision:	1. Applicant ‘person aggrieved’ – opponent failed to provide evidence of use in Australia - trade mark to be removed from Register 2. Costs awarded against opponent

Background

1. Trade mark registration 720573 is registered in the name of Mistboy Pty Ltd ("the opponent").  That registration has effect from 28 October 1996.  It is for the trade mark transocean marine paint & device, registered for the following goods in class 2:

   Marine paints, varnishes and lacquers, anti-rust and anti-corrosive preparations; anti-tarnishing preparations

2. On 1 November 2002, The Transocean Marine Paint Association, ("the applicant"), filed application for removal of the trade mark from the Register. The opponent filed Notice of Opposition to the application on 21 February 2003.

3. The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relies on section 92(4) of the Act. The applicant alleges that the opponent had not used the trade mark or not used the trade mark in good faith during the relevant period, 1 October 1999 to 1 October 2002.

4. In turn, the opponent alleges in the Notice of Opposition that the applicant is not a person aggrieved, and that trade mark had been used by the opponent in Australia and used in good faith in Australia during the relevant period.

5. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 30 November 2005. The opponent was represented by Mr James Maxwell of Peter Maxwell and Associates, Attorneys.  The applicant was represented by Ms Fiona Brittain of Davies Collison Cave Attorneys.

   Legislation

6. Section 92 of the Act 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.

   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.

7. There are a number of elements of s.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 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.

8. The application alleges that the applicant is aggrieved by the registration of 720573 tranocean marine paint. The standing of the applicant has been disputed by the opponent.

9. The application for removal is in the correct form and covers all the goods for which the trade mark is registered. The application also states that it is the applicant's understanding that there are no pending court proceedings.

   The Evidence

10. Details of the evidence are shown in the following table:

Declarant	Date declared	Exhibits	Known As
Application for removal
Kate Pickering	1.11.02	KEP-1	Pickering
Evidence in Support
Bryce Woods	12.09.03	BW-1 to BW-8	First Woods
Evidence in Answer
Kees Zaal	19.08.04	KZ-1 to KZ-5	Zaal
Evidence in Reply
Bryce Woods	2.06.05	CRD1 to CRD9	Second Woods
Further Evidence	(Applicant)
Fiona Britain	15.11.05	FMB-1	Brittain

1. The Pickering declaration is made by a legal practitioner employed by the attorneys for the applicant.  It states that the applicant has filed a trade mark application under the Madrid Protocol designating Australia, for essentially the same mark and for the same kind of goods.

2. Pickering declaration also states that her firm instructed a private investigator to conduct discreet inquiries to ascertain whether the opponent was using its trade mark in Australia in relation to its goods.  Copies of reports by the private investigator are exhibited with the declaration.

3. The first Woods declaration is made by a director of the opponent, who was also a company director of Australian company Portugal Cork Co Pty Ltd (“Portugal Cork”) and a New Zealand company Protective Paint Pty Ltd (“Protective Paint”).  He stated these three companies form a group of companies who work together to service the industrial paint market.

4. Mr Woods states that the opponent's trade mark has been continuously used on the relevant goods since the trade mark was registered.  He further states that the opponent also allows Protective Paints and Portugal Cork use the trade mark on these goods as authorised users.

5. The first Woods declaration states that the goods provided under the trade mark are mainly used for industrial marine finishes on ships and water-contact structures.  The goods are thus mainly sold offshore to industrial ships planning to dock in or visit Australia.  The group of three companies delivers the goods to the quay where these ships plan to dock in Australia.  The goods are not stocked, ordered or promoted by marine or boating retailers in Australia.

6. The declaration provides what is said to be the total annual sales figures in respect of the goods sold under the trade mark for the years 1996 to 2003.  Exhibited with the declaration are various documents purporting to support the opponent's figures and case.

7. The Zaal declaration is made by the general manager of the applicant.  He provides details relating to the history of the applicant, its Australian representative (not the opponent), and past and fairly acrimonious in dealings with the opponent.  The declaration also takes to task certain details in the first Woods declaration and identifies alleged deficiencies in the evidence.

8. The second Woods declaration responds to the alleged deficiencies identified in the Zaal declaration.  It also explains the product codes used in the invoices as exhibited in exhibited BW-4.

9. The second Woods declaration also seeks to explain the various promotional, labelling, and other branded materials that are exhibited, which are obviously produced in New Zealand.  It explains that when the New Zealand company Protective Paints was the applicant's New Zealand licensee, it produced large stocks of these items such that when Protective Paints was terminated from the opponent's association in 1994 it made a claim against the association for such wasted expenses.  It is declared that the dispute between the applicant and opponent was finally resolved on the basis that the opponent's group would continue to use the materials and brochures in Australia but not in New Zealand.

   Standing

   A person aggrieved

10. The first issue to be determined in relation to the registration in question is the status of the removal applicant as a person aggrieved, as required by subsection 92(1) of the Act. This is a threshold test, the interpretation of which has been the subject of considerable attention by the courts. For example, see the description of a person aggrieved given by McLelland J in Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at page 454:

    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.

11. The applicant submitted that evidence of its aggrieved status can be found in the removal application, the declaration in support of the application and in the lodging by the applicant of application 941470 (International Registration No. 775809) for the trade mark transocean and dolphin device in class 2. The applicant's statement of goods is for the same sort of goods as the opponent’s albeit more specifically for maritime use.  A citation objection has been raised by a trade mark examiner on the basis of the opponent’s registration.

12. The opponent submitted that the applicant has not adduced sufficient evidence to establish the requisite standing.  It further submitted that the application to register a trade mark and subsequent objection is insufficient, citing Kraft General Foods v Gaines Petfoods Corp (1996) 34 IPR 198, per Sackville J at 209.

13. In my opinion, the opponent's submissions reflect the current authorities relating to person aggrieved. It is true that the mere lodging of a trade mark application is not sufficient to establish that a person is aggrieved: Kraft General Foods v Gaines Petfoods Corp (1996) 34 IPR 198, per Sackville J at 209.  The comments of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, at paragraph 7 provide relevant assistance to this matter:

    An object of the 1995 Act is to create, by registration of trade marks, a species of tradeable property - see ss 21 and 22 - but only where such marks are connected with actual or contemplated trade in goods and services. It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods. Such a person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark he wishes to attack remaining on the Register, though he might wish to traffick in marks as distinct from to trade in marked goods.

14. However, in this case there is more than the mere lodging of a trade mark application.  The name of the applicant, for example, indicates a bona fide interest in the opponent's mark.  Further, it is clear from the evidence of both parties that there is a history of disputation between them.

15. It is apparent to me that the opponent’ group, as Protective Paints, commenced using its trade mark in New Zealand under license from the applicant.  This license was terminated in 1994.  Presumably, in the opponent had no license to use the mark in Australia; however, this did not prevent the opponent obtaining registration of the mark in Australia.

16. Prima facie, the opponent's registration is a barrier to the applicant obtaining registration of its own trade mark.  Such a situation would obviously result in the applicant being appreciably disadvantaged in a legal or practical sense.  But I am satisfied that the applicant is a person aggrieved.

    Use During Relevant Period

17. 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

18. 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 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

19. It should be noted that mere assertions of use without documentary support are generally given little weight: Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83.

20. The opponent's evidence is generally unsatisfactory.  The exhibits meant to support the declarations are problematic, in that those bearing the opponent's mark are clearly of New Zealand origin and are undated, and documents which have dates within the relevant period have no direct reference to the trade mark.

21. Exhibit BW-3 to the first Woods declaration is said to be a printout of all sales made of the relevant goods since 1996 under the opponent's trade mark.  In the first Woods declaration it is suggested that the sales are from “the group” [of three companies explained above, paragraph 13], although in the second Woods declaration the sales are attributed to Protective Paints, a New Zealand company. 

22. The printout is headed “O/E Line Item History for Customer: 09501”.  There is no identification of this customer.  There are item references to what are said to be product codes used on the various goods bearing the trade mark.  The product codes do, however, seem to coincide with those listed in Exhibit BW-5.  However, that exhibit is clearly of New Zealand origin, albeit in bearing a white adhesive label in bearing the opponent's company name and telephone number.

23. If one accepts that Exhibit BW-3 is indeed evidence of sales of goods bearing the trade mark, it is difficult to determine where those sales took place.  On balance, it seems more likely that these goods were sold in New Zealand.

24. Exhibit BW-4 does provide evidence of sales of goods in Australia during the relevant period.  The invoices are those of Portugal Cork, one of the opponent's group of three companies.  In the first Woods declaration, it is stated that the items shown on each invoice coincide with the products shown to be sold under the trade mark in the brochure in Exhibit BW-5.

25. In the declaration accompanying the application for removal of the trade mark there is a private investigator's report exhibited.  The report contains details of inquiries made with Ms Sue Faulkner, manager of Portugal Cork.  Ms Faulkner states she is not aware of the trademarked named Transocean Marine Paint; however, the company did sell marine paint called Transomarine that is manufactured in New Zealand by Protective Paints.  A copy of the Transomarine brochure was enclosed with the report.

26. I notice that, apart from the trade mark, the Transomarine brochure is almost identical to that of the opponent's shown in Exhibit BW-5.  The Transomarine product numbers are each three digits, these digits are identical to those of the opponent; however, the opponent places a decimal point after the first digit.  For example, the opponent's product Longlife Antifouling has the product number 2.71 and Transomarine’s identically named product is product number 271.

27. In Exhibit BW-4, I note that where a product number is shown it is a three digit number without a decimal point.  I also note that there are references to the products “Ultra Varnish 381” and “Alpha Varnish 938”, which are listed as such in the Transomarine brochure whereas in Exhibit BW-5 in the corresponding products are “Transolac Varnish 3.81” and “Transurethane Alpha 9.38”.

28. Exhibit BW-6 does bear the opponent's trade mark and is titled ‘Transocean Product Range’.  However, it is dated 1 February 1992, which not only predates relevant period but also predates the registration of the opponent's trade mark in Australia.  In the second Woods declaration this explained by saying that the list comprises the latest that was made available to the opponent and that the opponent has continued to use it.

29. Exhibits BW-7 and BW-8 are product labels and a marine colour card respectively.  Each shows the opponent's trade mark; however, each is clearly produced for the New Zealand market but has a white adhesive label with the opponent's company name and telephone number affixed to it.  None of the items are dated.  Each of the labels in Exhibit BW-7 proudly bears the logo with a Kiwi device and the motto “Buy NZ made & keep your country working”.

30. In the second Woods declaration, it is admitted that the promotional and labelling materials were in fact used in New Zealand, but since the opponent had such large stocks of them when the licence to use them was withdrawn by the applicant it was decided to reuse them in Australia.

31. The opponent has failed to discharge its onus of satisfying me that it, or its authorised users Portugal Cork and/or Protective paints, has use the trade mark in Australia during the relevant period.

32. Accordingly, I dismiss this ground of opposition.

    Registrar's Discretion

    Determination of opposed application—general

    101. (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.

1. In deciding an opposed removal application, the Registrar is called on to exercise a discretion: the Registrar "may" remove a registration or "may" decide that the trade mark should not be removed even if the grounds for removal have been established. The proper exercise of that discretion by the Registrar will generally be as per Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417, at 482:

   If the condition of exercise of the court's power has been established, the entry of the mark should be expunged, or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there: cf Application by Carl Zeiss Pty Ltd (1969) 122 CLR 1 at 11 and Astronaut trade mark [1972] RPC 655 at 672.

2. What constitutes "sufficient reason" has been enunciated by Deputy Registrar Hardie in Figgins Holdings Limited v Beltrami SpA (1998) 46 IPR 411, at 418:

   Under subsection 101(3) the Registrar needs to be "satisfied that it is reasonable" to leave a mark on the Register even when the grounds on which the removal application is made have been established.  This requires the Registrar to be satisfied that there is sufficient reason for leaving it there.  The reason would need to be based on special facts and circumstances, or an overriding question of public interest.  The onus for showing that those circumstances exist is on the opponent to the removal application.

3. I have had regard to the evidence served in this matter and to the submissions made by the attorney for the applicant at the hearing in deciding, as the delegate of the Registrar, whether there is sufficient reason to leave the present trade mark on the Register.

4. I am not satisfied on the evidence and submissions before me that there are any special facts and circumstances, or an overriding question of public interest.

   Conclusion and Costs

5. I find that the opponent has not discharged the onus placed on it under the Trade Marks Act 1995 of showing why trade mark registration number 720573 should not be removed from the Register on the grounds of non-use during the period in question.

6. Therefore, I dismiss the opposition and direct that registration number 720573 be removed from the register unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal. If the Registrar is so served, I direct that removal shall not occur until the appeal has been decided or discontinued.

7. As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

   Jock McDonagh
   Hearing Officer
   Trade Marks Hearings
   31 March 2006