Motor One Group Pty Ltd v Simon Zaman

[2023] ATMO 64

TRADEMARKSACT1995

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

Re:Opposition by Motor One Group Pty Ltd to application under section 92 of the Act by Simon Zaman to remove trade mark number 1076171 (1, 2, 3, 9, 12, 17, 35, 36, 37 and 41) - MotorOne - in the name of Motor One Group Pty Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Peter Creighton-Selvay of Counsel instructed by Parkston Lawyers

Non-use applicant: Not present at the hearing

Decision:

2023 ATMO 64

S 96 opposition–use shown by opponent for most services in classes 36 and 37– s101(3) - Registrar’s discretion inappropriate for broad services claim in class 36– non-use application partially successful – trade mark 1076171 to

              remain on the Register in amended class 36 and in class 37.     

Background

1. This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) to an application under subsections 92(4)(a) and 92(4)(b) filed on 9 February 2021, Simon Zaman (‘the non-use applicant’) seeking the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of the services in classes 36 and 37 for which it is registered:

Class 2:        Paint sealants and rust proofing preparations for automobiles

Class 3: Cleaning, polishing and scouring preparations including such preparations for automobiles and other automobile care preparations in this class; leather and vinyl protecting preparations and conditioners in this class

Class 9: Visible theft identification systems, apparatus and instruments incorporating, inter alia, security engraving; anti-theft warning apparatus; alarm systems including electronic alarm kits; central door-locking kits; central deadlock security systems with or without alarms; none of the aforesaid goods being for use in motorcycles or parts and accessories for motorcycles

Class 12: Electronic automotive security kits; anti-theft alarms and security devices for vehicles, immobilisers, parts and accessories for anti-theft alarms and security devices for vehicles and immobilizers; none of the aforesaid goods being for use in motorcycles or parts and accessories for motorcycles

Class 17: Films for application to surfaces of material including glass, metal, fabric, vinyl and leather; sound proofing materials in this class; kits containing pre-cut pieces of the aforesaid film

Class 35: Personnel recruitment, including recruitment of personnel to roles involving automotive sales, automotive services and automotive administration; direct marketing, management services including event management, automotive sales management and general sales management; advertising services, including updating of advertising material, dissemination of advertising matter, rental of advertising space, direct mail advertising, outdoor advertising, radio advertising, television advertising, radio commercials, television commercials; business management and business administration services, including business management assistance, advisory services for business management, organisation of exhibitions for commercial and advertising purposes, sales promotion, statistical information, marketing research, marketing studies, business research, distribution of samples, public relations, office functions, rental of office machines and equipment; none of the aforesaid services being

1. Motor One Group Pty Ltd (‘the opponent’) filed a notice of intention to oppose removal on 4 June 2021. The statement of grounds and particulars filed on 29 June 2021 asserted that the grounds on which the removal applicant relied was not relevant because the owner had used the trade mark in good faith for all of the relevant services except real estate services during the relevant three year period.

1. On 30 August 2021 the non-use applicant filed their Notice of Intention to Defend. The parties then commenced filing evidence in accordance with the Trade Mark Regulations 1995 (‘the regulations’).

1. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 17 March 2023. Mr Peter Creighton-Selvay of Counsel instructed by Parkston Lawyers appeared on behalf of the opponent. The non-use applicant was not present at hearing and did not provide any written submissions for consideration.

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non- use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

1. Section 92 provides that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years and/or the original trade mark applicant did not intend to use it in good faith for relevant goods as at the date the application for registration was filed. The removal application must be in accordance with the Regulations1 and may be made in respect of any or all of the goods and/or services in respect of which the Trade Mark is or may be registered. Subsections 92(4)(a) and 92(4)(b) as it is relevant to this case provide the following:

   (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.

¹ Regulations 9.1 to 9.4 of the Trade Marks Regulations 1995.

Note 1:  For file and month see section 6.

Note 2:If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

Note 3:For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.

1. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc²:

   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.

8.In the present matter, the relevant period for the purposes of subsection 92(4)(b) is the three year period ending on 9 January 2021. I note that an application under s

² [2015] ATMO 10

92(4)(b) may not be made before a   period of five years has passed from the filing date of the application,3 and I confirm that five years since filing the application have in fact passed.

1. 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.

³ Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

1. In Pioneer Computers Australia Pty            Ltd v Pioneer KK4 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.

Evidence

Evidence in Support

⁴ [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354

·     The declaration of Gregory James               Lewis (‘the Lewis 1 declaration’) made on 1 December 2021 accompanied by Annexures GJL-1 to GJL-57

·     The declaration of Gregory James Lewis (‘the Lewis 2 declaration’) made on 28 January 2022 accompanied by Annexures 1 to 7

·     The declaration of Conrad Taylor (‘the Taylor declaration’) made on 23 December 2021.

·     The declaration of Sam Johnstone (‘the Johnstone declaration’) made on 31 January 2022.

Discussion

1. To defeat the non-use application in its entirety under s 92(4)(a) and (b), the opponent must demonstrate:

·that it has used the Trade Mark on the services to which registration applies within the three year period ending 9 January 2021. This arises by virtue of section 100(1)(c) of the Act.

1. As mentioned earlier, the evidentiary standard is ‘balance of probabilities’ which means that I must be satisfied it is more likely than not that the Trade Mark was used in the appropriate period.

1. In saying this it is far easier for the opponent to conclusively prove use than it is for a removal applicant to prove non-use, and is both preferable and sensible for the opponent to provide conclusive proof of use. The main argument advanced by the non-use applicant in this case is that:

·     The opponent has not had any genuine intention to use the Trade Mark or demonstrated use of the Trade Mark as registered for the relevant services in classes 36 and 37.

1. Here the opponent has supplied a number of exhibits and declarations which it claims demonstrate continual use of the Trade Mark through the relevant period by the opponent and its associated entities.

1. The Lewis 1 declaration states that the opponent was incorporated in 2001 and has traded in automotive related goods and services since that time. In order to further explain the extent and scope of the opponent’s business, Mr Lewis explains that

the opponent is also the owner of and         has traded under the following “Motor One” registered business names being:

·     MotorOne

·     MotorOne Express Detailing

·     MotorOne Group

·     Motor One

·     Motor One Group

1. Mr Lewis explains that in addition to the opponent trading under and by reference to the Trade Mark, the opponent also forms part of a substantial portfolio of businesses known as the MotorOne Group. He further states that the when the opponent was registered, the group structure was complicated and difficult to manage so a decision was made to develop an umbrella brand under which a whole group would be rebranded to be known as the “MotorOne Group” and that all could act with unity of purpose in selling automotive goods and services. This was to ensure consistency and continuity of the use of the Trade Mark by the group.

1. Mr Lewis states that the opponent has consistently used the Trade Mark since 2001 including in its dealings with consumers and corporate customers. The opponent operates the website which features prominent use of the Trade Mark in relation to a range of goods and services5.

2. Lewis 1 avers that the opponent is responsible for the operation of the largest aftermarket car care and car repair business in Australia, and has provided a diverse range of goods and services for vehicles, under and by reference to the Trade Mark through its MotorOne Group and through its relationship with intermediaries like car dealerships and insurers. The annual turnover of the opponent is very significant6 and it employs over 700 staff members.

3. Mr Lewis states that the opponent has undertaken an extensive array of marketing and promotional activities7 featuring the Trade Mark including large outdoor

⁵ Annexure GJL-4 accompanying Lewis 1

⁶ Confidential Annexures GJL-31 and GJL-38 and Annexure GJL-39 accompanying Lewis 1

⁷ Annexure 7 accompanying Lewis 2

advertising8, online usage and  advertising generating millions of page views9, print advertising10 and sponsorship and charitable activities11.

1. Before I consider section 8 of the Act and the principles of authorised use as articulated in Skyy Spirits LLC v Lodestar Anstalt12 in relation to the situation before me, I believe it is more appropriate to first turn to section 7 of the Act which states:

7 Use of trade mark

(1)   If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:         For prescribed court see section 190.

1. The opponent’s Trade Mark consists of the word MotorOne in plain text. The opponent has provided a number of exhibits which it purports demonstrate use of the Trade Mark on the registered services relevant to classes 36 and 37 of the registration. A close consideration of the opponent’s evidence demonstrates a variety of trade marks used by the opponent and its associated entities. The opponent has asserted that the following examples taken from the evidence amount to use of the Trade Mark:

⁸ Annexures GJL-40 and GJL-41 accompanying Lewis 1

⁹ Annexures GJL-44 and GJL-45 accompanying Lewis 1

¹⁰ Annexures GJL-47 to GJL-49 accompanying Lewis 1

¹¹ Annexure GJL-50 to GJL-53 accompanying Lewis 1

¹² (2015) 12 IPR 328

 

MotorOne Express Repairs	MotorOne Group	MotorOne CX
Annexure 5 accompanying Lewis 2	Annexure 5 accompanying Lewis 2	Annexures GJL-7 and GJL-4B accompanying Lewis 1
MotorOne	MotorOne Annexure 6 accompanying Lewis 2	MotorOne
Car Care		AUTOBODY
Annexure 4B
accompanying Lewis 1		Annexure 4B
accompanying Lewis 1
MotorOne TV	MotorOne Express Detailing	MotorOne High Gloss Wash
Annexure 36
Confidential Annexures 15 accompanying Lewis 1	Confidential Annexure 34 accompanying Lewis 1	accompanying Lewis 1
MotorOne Aftermarket Specialists Annexure GJL-49 accompanying Lewis 1

1. Considering the above in comparison to the opponent’s registered plain text trade mark for MotorOne solus, I am satisfied that the opponent is using its Trade Mark on a significant number of different services. The context in which a trade mark appears is all important in determining whether certain use constitutes use as a trade mark13. In Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors14:

   The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: The Shell Co, supra at 425; Wrigley’s (Australasia) Ltd v Life Savers (Australasia) Ltd (1936) 37 SR (NSW) 9, 16; Aldi Stores, supra at [22] to

   [24] and [76].

¹³ Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.

¹⁴ Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390 at [186].

1. When considered in their totality,                each of the above examples contains alterations and/or additions to the letters MotorOne which do not substantially affect the identity of the Trade Mark15. This is because the Trade Mark is always in a prominent position and normally with descriptive words to define which services are being offered under the Trade Mark. Alternatively, there are some examples of the opponent using its Trade Mark in conjunction with other trade marks, however, always presenting those services as being offered by the opponent under its house mark being MotorOne. I find that the above examples constitute use of the Trade Mark as registered with descriptive materials denoting the range of services offered or used in conjunction with other trade marks.

1. I now need to consider whether the above use is within the relevant time period and if the use is in relation to the class 36 and 37 services for which the Trade Mark is registered. In terms of the quantum of use necessary to rebut an allegation of non-use under the Act, it has been established that the opponent need not demonstrate a reputation in Australia, but rather a genuine bona fide use of the Trade Nark occurring in the relevant period on the designated services. In certain circumstances, it is possible for the allegation to be rebutted by a single instance of use provided it is conclusive.16 It was observed by the Hearing Officer in Geo

   W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc.17 that:

…there seems to be no reason why the opposition could not succeed in the present case if the opponent satisfies me that the sole invoice to the Overseas Distributors was "overwhelmingly convincing proof" contemplated by Wilberforce J in "Nodoz" case, supra.

1. To this end, I turn firstly to the services in class 36. The opponent has advised that they have used the Trade Mark on all the services listed in class 36 apart from Real Estate Services.

Use of the Trade Mark in relation to the class 36 services

¹⁵ Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR

285; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144;

(2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381

¹⁶ Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J and qualified in E & J Gallo Winery v Lion Nathan Australia Pty Ltd at [64].

¹⁷ Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc [1999] ATMO 101

1. The claimed services in class 36 are:

Class 36: Insurance, including insurance underwriting, warranty and extended warranty services; financial services; monetary affairs; real estate management

1. The opponent has conceded that they have no used the Trade Mark on real estate management services. This will be discussed in under the discretion heading.

1. In regards to the other services, the evidence demonstrates the opponent has used its Trade Mark on a range of insurance and warranty services that have been offered to large numbers of Australian consumers through the relevant period18. In addition to the warranty products on their own goods and services the opponent also has agreements with many well-known car dealership groups in relation to the administration of warranty claims19. It is a legal requirement, in such cases, that customers are advised the opponent is the provider of the relevant warranty. This is supported by the Johnstone and Taylor declarations.

1. According to Lewis 1 the opponent has also used its Trade Mark on insurance services. The opponent has provided vehicle repair services through contractual arrangements with major insurance providers such a Youi, IAG and RACQ. The evidence in Annexures GJL-17 and GJL-18 accompanying Lewis 1 demonstrate that the opponent has presented to and provided services to, substantial insurance companies, in relation to claims made by its customers.

1. Mr Lewis states that since 2014 until 2021 which is through the relevant period, the opponent has provided monetary affairs and financial services under its Trade Mark by marketing and selling to car fleet companies a product called “small damage repair” and “minor damage repair”. This product was classed as a financial service product and required the opponent to hold an Australian Financial Services Licence. From Annexure GJL-50 accompanying Lewis 1 I can see that the product was not labelled “MotorOne” but was sold with the Trade Mark being directly linked to the product as the badge of origin. I am satisfied that the opponent used its Trade Mark on financial services and monetary affairs

¹⁸ Annexures 13, 20, 21, 27, and confidential annexures 15 and 42 accompanying Lewis 1

¹⁹ Annexure 6 accompanying Lewis 2

related to motor vehicles20. Indeed, I           am satisfied that the opponent has used its Trade Mark in regards to Insurance, including insurance underwriting, warranty and extended warranty services; financial services; monetary affairs but that all of these services have been in relation to the opponent’s core business of motor vehicles rather than the very broad fields of insurance, financial services and monetary affairs.

Use of the Trade Mark on class 37

1. The claimed services in class 37 are:

Class 37: Vehicle servicing, installation, maintenance and repair services; vehicle breakdown and emergency services; servicing, installation, maintenance and repair of vehicle accessories including security systems, control systems and corrosion inhibiting systems; motor vehicle washing, cleaning and polishing services; information, advisory and consultancy services pertaining to servicing, maintenance and repair of vehicles; information, advisory and consultancy services pertaining to servicing, installation, maintenance and repair of vehicle accessories; none of the aforesaid services being provided in respect of motorcycles or parts and accessories for motorcycles

1. I note that most of the above services are limited to those being in relation to vehicles. The evidence of the opponent is voluminous when it comes to establishing use of the above services. Therefore in order to be as concise as possible I say now that the opponent has used its Trade Mark on Vehicle servicing, installation, maintenance and repair services since 201621. Indeed, the article from the Financial Review during the relevant period states that the opponent has ‘the country’s largest mobile accident repair fleet’.22

2. Lewis 1 states that the opponent, operating as Customers for Life, has offered vehicle breakdown and emergency services to Australian customers as the product “Roadside Advantage”. According to Mr Lewis that service has been advertised

²⁰ Annexures GJL-54 to GJL-57 accompanying Lewis 1

²¹ Annexures GJL-9, GJL-19, GJL- 23 and GJL-24 accompanying Lewis 1 and Annexure 6 accompanying Lewis 2

²² Annexure GJL-39 accompanying Lewis 1

always being associated with the                  MotorOne Group. To this end, the opponent provided the website which directly links back to the opponent’s website which also directly states that it offers roadside assistance to its customers. I am satisfied that the opponent has provided these services to Australian customers under the broad umbrella of its house mark being the Trade Mark.

1. When it comes to those services servicing, installation, maintenance and repair of vehicle accessories including security systems, control systems and corrosion inhibiting systems; motor vehicle washing, cleaning and polishing services I note that the opponent through its MotorOne Autoxtreme division has sold, installed and maintained/services/repaired vehicle accessories, including dash cams, reversing camera and sensors, security alarms, satellite navigation and in-car entertainment23. The marketing materials for these products all emphasized they came ‘professionally installed’24. There were press articles mentioning the opponent’s products as some of the hottest available in dealership aftermarket sales25.

2. There is clear evidence in the form of marketing materials contained in Confidential Annexures GJL-34, GJL-35 and GJL-42 accompanying Lewis 1 that the opponent has used its Trade Mark with the descriptive tagline ‘Express Detailing’ on the motor vehicle washing, cleaning and polishing services claimed in class 37 since June 2020. It has, since that date, provided car sanitization and detailing services across Melbourne, Brisbane and Sydney26. The opponent promoted its services using documents which explain to consumers that a “MotorOne Detailer” will attend their home or office to provide the detailing services27.

3. 
   

   The next services which the opponent claims it has used its Trade Mark on are information, advisory and consultancy services pertaining to servicing, maintenance and repair of vehicles and vehicle accessories.

²³ Annexure GJL-27 accompanying Lewis 1

²⁴ Annexure GJL-27 accompanying Lewis 1

²⁵ Annexure GJL-28 accompanying Lewis 1

²⁶ Annexures GJL-33 to GJL-37 accompanying Lewis 1

²⁷ Confidential Annexure GJL-34 accompanying Lewis 1

1. The opponent states that as they have           provided vehicle servicing, installation, maintenance and repair services and have sold, installed and maintained, services and repaired vehicle accessories that it is an inherent feature that the provision of those services meant that the opponent had also provided information, advisory and consultancy services relating to those services. Mr Lewis states that each of the opponent’s technicians are required as part of their training to assess vehicles and provide information and advice to customers about the installation, maintenance, warranty and repair of all vehicle accessories installed before installation28.

2. To support Mr Lewis’ assertion I turn to Confidential Annexures GJL -15 and GJL-42 along with Annexure GJL-27 accompanying Lewis 1 which contains material relating to the training and performance of its consultants and technicians

   as well as the information and advice to be provided to customers. These materials do demonstrate use of the Trade Mark. I note in Annexure 4 accompanying Lewis 2 that the training video, uniforms of the technicians and the trainer prominently feature the Trade Mark while discussion the information, advice and services to be provided to the customer. I am satisfied that the opponent has demonstrated use of its Trade Mark on the claimed services.

Registrar’s Discretion

1. There is a discretion embodied in subsection 101(3) of the Act. That particular part of the legislation reads as follows:

   (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. The application for removal is for all services within classes 36 and 37. The opponent has requested the Registrar’s discretion to allow the trade mark to remain registered for all those services except for Real Estate Services for which it concedes it has not used its Trade Mark.

²⁸ Annexure 4 accompanying Lewis 2

1. While both of the Lewis declarations           make statements regarding the opponent’s use of the Trade Mark on all its registered services, and the evidence does support use of the Trade Mark on those services, I acknowledge that the services claimed within classes 36 and 37 are very broad. While the evidence demonstrates use of the Trade Mark on the class 36 Insurance, including insurance underwriting, warranty and extended warranty services; financial services; monetary affairs services, these services have only been provided by the opponent in relation to motor vehicles. I am not satisfied that it is appropriate to exercise the Registrar’s discretion to maintain the registration for all the claimed services in class 36 but rather that that these services be limited to those for which to the opponent has demonstrated use being:

Class 36: Insurance, including insurance underwriting, warranty and extended warranty services; financial services; monetary affairs; all the aforementioned being in relation to motor vehicles.

1. Next, I turn to the opponent’s claimed services in class 37. As discussed above, the opponent’s evidence does demonstrate use of its Trade Mark on many maintenance, repair, consulting, information and advice services for vehicles and their accessories. However, the opponent does not demonstrate use for all such possible permutations of these services.

1. As the onus was on the Opponent to show use on all the registered services, not on subsets of them, it is therefore open to me to decide to order removal for all the services except those for which use has been demonstrated as I have done so with the class 36 services. However, it is not my intention to do so in regards to the class 37 services, and my reasons for this decision are as follows.

1. I consider the overall market in Australia for all of the opponent’s vehicle related services in class 37 is a very large one. However, the opponent’s evidence demonstrates that they are a well-known and large trader in this marketplace as outlined in paragraphs 15 to 19 of this decision. This would produce a situation where trade mark confusion is a distinct likelihood if the services of the same description are divided up amongst a number of traders.

1. Drummond J commented on the issue          of fine distinctions in respect of goods claims when he considered trade marks involving the word “Taipan” in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537. I am satisfied that this reasoning would also apply in this situation but in regards to services. He said:

   The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.

   But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non- use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non- use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.

   But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured

military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

1. Taking these judicial comments into account, I am satisfied that the distinction between all the motor vehicle services in class 37 would be akin to the distinction between the various species of motor cars and military vehicles to which Drummond J referred. Therefore, it would be inappropriate for me to restrict the class 37 services claim of the Trade Mark to only those services specific for which actual use has been shown. I do not intend to order the Trade Mark services specification in class 37 be restricted.

Decision

1. I am satisfied that the trade mark has been used in the relevant period. However, this use has only been with respect to:

·     Class 36: Insurance, including insurance underwriting, warranty and extended warranty services; financial services; monetary affairs; all the aforementioned being in relation to motor vehicles.

·     Class 37: Vehicle servicing, installation, maintenance and repair services; vehicle breakdown and emergency services; servicing, installation, maintenance and repair of vehicle accessories including security systems, control systems and corrosion inhibiting systems; motor vehicle washing, cleaning and polishing services; information, advisory and consultancy services pertaining to servicing, maintenance and repair of vehicles; information, advisory and consultancy services pertaining to servicing, installation, maintenance and repair of vehicle accessories; none of the aforesaid services being provided in respect of motorcycles or parts and accessories for motorcycles

1. The opponent has conceded that they           have not used its Trade Mark on Real Estate Management in class 36 and has not contested that the Trade Mark be removed from the Register for these real estate services. Therefore, I have done so and further limited the services in class 36 to those which the opponent has been able to demonstrate use. I refuse to remove trade mark registration No. 1076171 in its entirety but direct that unless this decision is appealed, after one month from the date of this decision the class 36 specification of services be amended to the above. Those services in class 37 shall remain as they presently are on the register.

Costs

1. The non-use applicant has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.

Bianca Irgang Hearing Officer

Trade Marks Hearings 22 May 2023