Motohouse Co Ltd v AREA 1 Pty Ltd - [2023] ATMO 46

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MOTOHOUSE CO LTD to an application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by AREA 1 PTY LTD for partial cessation of protection of Protected International Trade Mark number 1887666 (International Registration number 1375726) (7, 12, 25) – TRICK STAR (Figurative) – in the name of MOTOHOUSE CO LTD

Delegate:

Nicholas Smith

Representation:

Opponent: Pizzeys Patent and Trade Mark Attorneys Pty Ltd

Applicant: IP SERVICE INTERNATIONAL PTY LTD

Decision:

2023 ATMO 46

Trade Marks Act 1995 (Cth) - opposition to reg 17A.48C application for partial cessation of protection – intent to use inherent in filing of Trade Mark application – opponent asserts its intention at the filing date to use the Trade Mark – evidence of actual use of the Trade Mark for the Registered Goods – Protected International Trade Mark to remain on Register in its current form

Background

This decision is pursuant to an application made on 12 March 2021 under s 92(4)(a) of the Trade Marks Act 1995 (Cth) by AREA 1 PTY LTD (‘Applicant’) for partial cessation of protection of the protected international trade mark detailed below.[1]
[1] Technically an application to cease protection of a protected international trade mark is to be made pursuant to r 17A.48C of the Trade Marks Regulations 1995 (Cth). However, reg 17A.48D provides that Part 9 of the Trade Marks Act 1995 (Cth) (being the part of the Act dealing with an application for removal) applies in relation to an application for cessation of protection and in particular, reg 17A.48D(f) provides that an application under s 92 to remove a trade mark is taken to be a reference to an application for cessation of protection.

Registration No.

1887666

Filing date

28 July 2017

Goods

Class 7: Radiator core guards for motors or engines; ignition coils [engine parts]; motor or engine mufflers; motor or engine radiators; motor or engine silencers

Class 12: Motorcycle brake cylinders; motorcycle brake levers; motorcycle brake calipers; motorcycle brake caliper brackets; motorcycle brake pads; motorcycle brake or clutch hoses; motorcycle clutch cylinders; motorcycle clutch levers; motorcycle clutch release hardware; motorcycle clutch plates; motorcycle suspension springs; motorcycle suspension initial adjustors; motorcycle low-down link plate kits; motorcycle swing arms; axle shafts for land vehicles; sprockets for land vehicles; chains for land vehicles; motorcycle handlebar end sliders; motorcycle license plate retainers; motorcycle turn signal retainers; motorcycle turn signals; motorcycle engine covers; engine hanger kits; motorcycle covers; motorcycle side view mirrors; motorcycle rear view mirrors; motorcycle shifter linkage rods; motorcycle cylinder caps; motorcycle cowls; motorcycle back steps (rear footrest); motorcycle engine oil caps; motorcycle suspensions; motorcycle frame sliders; motorcycle handlebars; motorcycle wheels; motorcycle stands

Class 25: Motorcycle raincoat suits (wear); rain suits (wear); motorcycle gloves; gloves (wear); motorcycle leather or imitation leatherwear; leather or imitation leatherwear; motorcycle wear; clothing; socks and stockings; hats and caps; t-shirts; trousers, pants, and slacks; motorcycle jackets; jackets (wear); motorcycle…

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: [2023] ATMO 46
Decision Date: 12 April 2023

CaseChat Overview and Summary

This matter concerned an application by AREA 1 Pty Ltd (the Applicant) for the removal of a trade mark from the Register, specifically seeking the cessation of protection for certain goods. Motohouse Co Ltd (the Opponent) opposed this application. The dispute arose from allegations that the Opponent had no intention in good faith to use the trade mark in Australia at the time the application for its registration was filed, and that the trade mark had not been used in Australia in good faith. The decision was made by Nicholas Smith, a Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Opponent had established that, at the time of the trade mark application, it had a genuine intention to use the trade mark in Australia in relation to the goods for which removal was sought. A secondary issue was whether the Opponent had, in fact, used the trade mark in good faith in Australia prior to the relevant period. The court was required to consider the onus of proof, which rested on the Opponent to rebut the allegations of non-use and lack of intention.

The court applied the principles established in cases such as *Aston v Harlee Manufacturing Co* and *Structureco Inc v Starite Distributors Pty Ltd*, which confirm that the onus on an opponent in such removal proceedings is not arduous. The court found that the Opponent had provided sufficient evidence, including declarations detailing the creation and continuous use of the trade mark on various apparel items since the relevant date, and evidence of international shipping and sales to Australia. This evidence satisfied the court that the Opponent had the requisite intention to use the trade mark in good faith.

Consequently, the Delegate of the Registrar of Trade Marks decided that the Opponent had successfully established its opposition to the cessation of protection in respect of the goods in question. The Applicant was directed to pay the Opponent's costs.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established. Opponent’s Evidence The relevant claims/statements in the Tsurata declaration are set out below:· As at the time the application for extension of protection of IR 1375726 (the Trade Mark) was filed (28 July 2017, being the ‘relevant date’) the Opponent intended to use the Trade Mark in Australia in respect of all the Registered Goods including the Removal Goods. · The word mark TRICK STAR was created in 2000 and first used in Australia in respect of motorcycle and apparel products in 2009 by the Opponent’s predecessor in title. Following transfer of the assets to the Opponent, the Opponent created the Trade Mark in 2012. · The Opponent has continuously used the Trade Mark in Australia in respect of the Removal Goods since the relevant date, including on motorcycle gloves, motorcycle leatherwear, motorcycle clothing, clothing, hates and caps, t-shirts and jackets. The Removal Goods are available from the Opponent’s websites at and (‘Opponent’s websites’) which allow ordering from and shipping to Australia. The exhibits to the Tsurata declaration contain examples of the Trade Mark (or a mark substantively identical to the Trade Mark) being applied to apparel (gloves, t-shirts, hoodies, caps, jackets) available on the Opponent’s websites prior to the commencement of the removal action, including evidence that the Opponent offered international shipping from its website. The exhibits also contain evidence of sales of the Registered Goods to Australia prior to the relevant date, including a receipt evidencing a sale of a t-shirt (bearing the Trade Mark on its packaging) in Australia in March 2021. Discussion Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[3] Fullagar J observed:[…] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.[3] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21]. While this observation was made in proceedings under the Trade Marks Act 1905 (Cth), where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[4] the Registrar’s delegate Mr Forno said:Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[4] [2000] ATMO 31.

Decision

Reasons for decision

I am satisfied that at the relevant date the Opponent intended to use the Trade Mark for the Removal Goods. The Opponent has established its opposition in relation to s 92(4)(a). Decision I decide that the Opponent has established its opposition to cessation of protection in respect of the Removal Goods. Costs22. The Opponent has been successful in relation to its opposition to the application for cessation of protection of the Trade Mark and has requested its costs. I direct that costs in relation to protected international trade mark number 1887666 be awarded against the Applicant in accordance with Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks12 April 2023

Ratio Decidendi

Legal Principle Established

The Opponent subsequently filed evidence in support of its opposition to cessation of protection (‘EIS’) with neither party filing any additional evidence. The EIS will be discussed in more detail below. 6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result, the matter has been allocated to a delegate of the Registrar for a decision based on the written record.7. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the material referred to above and the evidence listed below:EIS Declaration by Ryuji Tsuruta, the President of the Opponent, dated 18 July 2022 (‘Tsurata declaration’) with Exhibits RT-1 to RT-11. Declaration by Shotaro Fujisawa, Patent Attorney employed by Fujisawa International Patent Office, the Opponent’s Japanese representatives, dated 19 July 2022 (‘Fujisawa declaration’) with Exhibits SF-1 to SF-2. The Fujisawa declaration merely states that Fujisawa International Patent Office received notice of the removal action on 26 March 2021 and prior to that date the Fujisawa International Patent Office had not received any communication from the Applicant or its representatives.The Relevant Provisions8. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’. 9. In respect of this matter s 92 relevantly provides:92 Application for removal of trade mark from Register etc.(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; The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter: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[…](3) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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; or[...]