N/C Quest Inc. v Bioag Pty Ltd

[2016] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by N/C Quest Inc. to application under section 92 of the Act by Bioag Pty Ltd to remove trade mark number 1185862 (1,7,44) – BIO-AGTIVE - in the name of N/C Quest Inc.

Delegate:	Debrett G. Lyons
Representation:	Opponent: Shauna Ross of Counsel instructed by Hodgkinson McInnes Patents Applicant: written submissions only
Decision:	2016 ATMO 100 Trade Marks Act 1995 – sec.92 application for removal – application successful; Trade Mark to be partially removed from the Register

Background

1. The current details of trade mark registration 1185862 (“the Registration”) follow:

Registered Owner

N/C Quest Inc. (the “Opponent”)

Registration Date

6 July 2007

Registered Goods and Services

Class 1: Chemical additives and catalysts; fuel additives, including oxidizing agents; chemicals in this class used in agriculture, horticulture and forestry; fertilizers, fertilizer additives and fertilizer catalysts

Class 7: Exhaust apparatus, including internal combustion engine exhaust chambers; agricultural equipment and apparatus (other than hand operated), including parts and accessories therefor

Class 44: Agricultural consulting services

Trade Mark

BIO-AGTIVE       (the “Trade Mark”)

1. This decision is pursuant to an application made on 27 August 2014 (the “Removal Application”) by Bioag Pty Ltd (the “Applicant”) to remove the Trade Mark from the Register of Trade Marks in respect of the class 1 goods and class 44 services (“the Relevant Goods and Services”) for which the Trade Mark is registered.

2. A Notice of Intention to Oppose removal was filed by the Opponent on 30 October 2014  and a Statement of Grounds and Particulars (“SGP”) was filed by the Opponent on 28 November 2014.

3. The Applicant filed a Notice of Intention to Defend on 15 January 2015.

4. The parties filed evidence in support, evidence in answer, and evidence in reply, after which a hearing was convened in Canberra on 27 July, 2016.  The Opponent was represented by Shauna Ross of Counsel, instructed by Hodgkinson McInnes Patents, who attended by telephone.  The Applicant was not represented at the hearing and relied on the written submissions of its attorney, Dr Donald Angus, a partner and Trade Marks Attorney of Collison & Co., which had been provided before the hearing in accordance with my directions.

   The Evidence

5. This decision is made on the basis of the following declaratory evidence:

   Opponent’s Evidence in Support 

   Gary Lewis made 22 April 2015 with Exhibits GL-1 to GL-18 (“Lewis”);
   Wayne Hamblin made 6 December 2014 with Exhibit A and B (“Hamblin”);
   Ron Charles made 6 December 2014 with Exhibit A and B (“Charles”);
   Gavin Morris made 5 December 2014 with Exhibit A and B (“Morris”); and
   Brett Uebergang made 13 December 2014 with Exhibit A and B (“Uebergang”).

   Applicant’s Evidence in Answer

   Donald Angus made 7 September 2015 with Exhibit DA01 to DA09 (“Angus”); and
   Donald Angus made 7 September 2015.

   Opponent’s Evidence in Reply 

   Gary Lewis made 30 November 2015 with Exhibits GL-1 and GL-2.

6. On 18 July, 2016 the Opponent’s representatives wrote to the Office seeking the correction of two exhibits to Lewis, alleging a clerical error or obvious mistake had been made.  That matter is considered in the Discussion which follows.

   Discussion

7. The Removal Application is made under section 92(4)(b) of the Trade Marks Act 1995 (“the Act”). I note here that the Opponent misconstrued the Removal Application. It somehow understood it to be also based on section 92(4)(a) of the Act and the SGP it filed additionally addresses that subsection. Naturally, that ground does not require consideration in this decision.

8. Part 9 of the Act deals with removal of trade marks from the Register for non-use. Section 92 relevantly provides:

   92Application 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)  …

   (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.

   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.

9. Thus, the allegation under s92(4)(b) is that in the three years immediately preceding 27 July 2014 (“the Relevant Period”) the Trade Mark has not been used in good faith in connection with the Relevant Goods and Services.

10. The SGP states[1]:

    [1] The reference to “Ground 2” being misleading since Ground 1 concerned s. 92(4)(a) which is not alleged.

11. Paragraphs 3 to 10 of the SGP then assert examples of use of the Trade Mark in the Relevant Period.  These are repeated in the Opponent’s submissions and are discussed later.

12. The Opponent is a Canadian company.  It has never used the Trade Mark in Australia.  All asserted use is by an Australian company, N/C Quest Pty Ltd (“the Australian Company”), incorporated in 2008.

13. The Opponent’s primary declarant is Gary Lewis (“Lewis”) who describes himself as “the Chief Executive and founder” of the Opponent.[2]  The Opponent’s submissions refer to the Australian Company as a subsidiary of the Opponent[3] but there is no evidence of that[4].  It is stated that the Australian Company “handles the day to day business involved in promoting and licensing the [Relevant Goods and Services] in Australia.”[5]  It was stated in oral submissions that the Australian Company is directed by Lewis’s son and daughter-in-law but, again, there is no evidence of record of that.

    [2] Lewis, [1].

    [3] Lewis, [41-42].

    [4] Certainly none within the meaning of Div. 6 of the Corporations Act 2001 (Cth).

    [5] Lewis, [41].

14. Section 100(1)(c) of the Act places the burden on the Opponent to rebut an allegation made under paragraph 92(4)(b). The standard of proof is the ordinary civil standard of the balance of probabilities.[6] 

    [6] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

15. “Note 1” to section 100 states that “[i]f 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.

16. Section 8 provides that:

    Definitions of authorised user and authorised use

    (1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

    (2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

    (3)If the owner of a trade mark exercises quality control over goods or services:

    (a)dealt with or provided in the course of trade by another person; and

    (b)in relation to which the trade mark is used;

    the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

    (4)If:

    (a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

    (b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

    the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

    (5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

17. I observe that there is no direct evidence of financial or quality control of the Australian Company by the Opponent.  Nevertheless, the Applicant for its own good reasons has not pursued an argument that there was no use by either the Opponent or an authorised user of the Trade Mark.[7]   Instead, its submissions are essentially a critique of the evidence of use put forward by the Opponent, limited by observations on whether or not the alleged use was within the Relevant Period and whether or not it showed use of the Trade Mark[8] in relation to the Relevant Goods and Services.

    [7] In the recent Full Federal Court decision in Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (28 June 2016), Basenko J summarises the law at paragraph 63:

    Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services ‘under the control of’ the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression ‘under the control of’ is not limited to the two cases identified in s 8(3) and (4) of the Act.

    [8] Albeit that, as with the submissions made by the Opponent, there is no attempt to distinguish use of the Trade Mark from the use of other signs.

18. That being so, a starting point is the evidence given by Lewis that he is a Canadian farmer and the inventor of a novel process that uses the nitrogenous exhaust products of an internal combustion engine to fertilize soil during tilling.  For the purposes of consideration of the evidence which follows, that process can effectively be considered to be the so-called “system” or “technology”.

19. The Applicant patented and commercialized that system.  Products used in that process put onto the Australian market by the Australian company have largely borne the following labelling (“the Logo”).  The Logo, below, also appears on some printed material produced by the Australian Company:

20. There is some incidental use of the registered Trade Mark, BIO-AGTIVE, which I will consider later, but for now I find that there is no clear evidence of use of either the Trade Mark or the Logo in in relation to “agricultural consulting services” (the registered class 44 services) during the Relevant Period.

21. The evidence put forward of agricultural consulting services (putting to one side whether or not those alleged services were offered by reference to the Trade Mark) is of agricultural events and field tours[9] including the Carbon Farming Week, the National Carbon Farming Conference & Expo (2014), the Ungaria NSW Field Tour and the Narrandera Field Tour. 

    [9] Lewis, [43], Ex. GL-12.

22. The evidence shows the Australian Company (and sometimes Lewis himself) to be a sponsor of and attendee at those gatherings.  The provision of consulting services, as a matter of trade mark law, is the provision of those services to others.  The evidence here, supported by Lewis’s own statement[10], is of attendance at the events with the object of promotion of the Opponent’s products.

    [10] Lewis, [43].

23. Similarly, the additional evidence of farm visits to Australian farmers had as it principal objective the promotion, sale or licensing of the Opponent’s products or process.[11]   So, too, the exhibited product brochure[12] which references “Method Technical Support”, “Support and Service” and “Location Training and Commission” and which the Opponent holds out as evidence of the offer of agricultural consulting services, is not the offer of consultancy services to others but simply product support.

    [11] Lewis, [50].

    [12] Angus, Ex. DA-04.

24. For these reasons, the Opponent has failed on the evidence to rebut the allegation of non-use under section 92(4)(a) in respect of the class 44 services.

25. As to the registered class 1 goods, I note first what the Opponent has said of its own business in Australia:

    The Opponent licenses its BIO-AGTIVE technology including the mechanical goods to the farmers and sells the BIO-AGTIVE chemical additives … to the farmers.[13]

    The [Opponent’s] revenue is derived from the sale of the BIO-AGTIVE goods and from the licensing of the BIO-AGTIVE technology to the farmers in Australia along with renewal fees for permitting the farmers to continue to use the BIO-AGTIVE technology and acquire the latest information and updates …[14]

    [13] Lewis, [53].

    [14] Lewis, [56].

26. There is no detailed description of “the mechanical goods” but presumably they are the registered class 7 goods (“exhaust apparatus, including internal combustion engine exhaust chambers; agricultural equipment and apparatus (other than hand operated), including parts and accessories therefor”) over which there is no contest and so, justifiably, no cause for further elaboration.

27. The registered class 1 goods are all, in one form or another, chemicals or chemical additives, but the more exact nature of what has been sold in Australia under the Trade Mark in the Relevant Period is far from clear.   The high point of the Opponent’s evidence is a group of sales invoices from the Relevant Period.  The four invoices, numbered sequentially, each for the same goods, and each dated 5 June 2014, are described in Lewis as “a random selection of invoices that show the trade mark”. [15]

    [15] Lewis, [54]

28. The exhibited invoices, INV-0050 to INV-0053, carry a product description as follows:

29. Those same invoices appear elsewhere in the evidence, as Exhibit “B” to the declarations of Hamblin, Morris, Charles and Uebergang, all farmers and customers of the Australian Company.  Those declarants state, in essentially identical declarations, that they purchased from the Australian Company:

    …BIO-AGTIVE fuel additive including oxidising agents comprised of nano-fertilisers, which when exposed to my tractor’s engine and expelled through my tractor’s exhaust adds nutrients and fertilizes the soil at my farm.

30. In each case, the declarant describes Exhibit “B” as “a copy of a sample invoice issued by N/C Quest to my farm for the sale of BIO-AGTIVE products…”

31. The Applicant’s (redacted) written submissions are

    The term “sample invoice” is unclear in that is not clear if the “sample invoice” is an invoice for sample or is it meant to be an (sic) sample of the type of invoice but not the invoice they had received? (sic)

    None of the supporting declarations provide (sic) representations of any product which in each case is described as oxidising agents comprised of nano-fertilisers.  There is no indication from the Opponent that such a product fitting that description was ever available for purchase during the relevant period, or indeed any period. There is nothing in any of the other exhibits from the Opponent that support that any product sold is called a “nano-fertiliser”.

32. In response to the Applicant’s further criticism that none of these four declarations exhibits an example of the product said to bear the Trade Mark, the Opponent made cross reference to “a photograph of the goods bearing the Trade Mark at Exhibit GL-9 of Lewis 1.”

33. Exhibit GL-9 is described as “[e]xtracts from the website (“the Website”).  The photographs to that exhibit are shown below.[17]  Each shows a logo identical to the Logo but for substitution of “N/C Quest Inc. (Canada)” in place of “N/C Quest Pty Ltd. (Australia)”.

    [16] Lewis, [38].

    [17] With my reference numerals added.

38(i) 38(ii) 38(iii)

1. Photographs 38(ii) and (iii) appear to be irrelevant to what was purchased by reference to invoices INV-0050 to INV-0053 since those two photographs depict machinery items.  Whether or not the vessel shown in photograph 38(i) contains a fuel additive of the type for cereals and composed of nano-fertilizers and is the product to which the four declarants referred is speculation.  Further, that submission would require me to accept that the declarants purchased goods labelled with the name of the Opponent when the weight of the evidence is that goods put on the Australian market bore the name of the Australian Company.  In short, Exhibit GL-9 does not shed a brighter light on what was sold by reference to invoices INV-0050 to INV-0053.

2. That brings me to the Opponent’s further submissions based on the Website which are that:

   During the Relevant Period, the Registered Owner’s website ( included use of the Trade Mark.  The second and last pages of Exhibit GL-9 are dated 10 March 2014, which is during the Relevant Period.

   The Removal Applicant’s own evidence shows use of the Trade Mark during the Relevant Period. In this regard, Exhibit DA-03 of the Angus Declaration (the Removal Applicant’s evidence in answer) comprises two website printouts that bear the Trade Mark and are dated 28 July 2013 and 18 July 2014, both of which are during the Relevant Period.

3. The second and last pages of Exhibit GL-9 are dated 23 April 2015, well outside the Relevant Period.  There is nothing to show those pages represented the state of the website on 10 March 2014.  I return to the matter of the Opponent’s 18 July, 2016 application seeking correction of Lewis, put as follows:

   It has come to our attention that two of the exhibits included in the Opponent’s Evidence in Support are incorrect as a consequence of clerical error or obvious mistake. Whilst drafting submissions, our Counsel has discovered that there were discrepancies in exhibits GL-9 and GL-11 [to Lewis 1].

   Regarding GL-9, the exhibit as filed contains two (only) incorrect pages ( the second and last pages of the exhibit – the balance do not require substitution) which reflect the date (sic) they were printed for uploading to Objective Connect (23 April 2015), rather than the date with which they were first obtained (10 March 2014). The correct pages are attached. The correct pages were supplied to Counsel from our file copy of the evidence.  Unfortunately, the responsible clerical staff member responsible for collating the exhibits is no longer employed by our firm. However, we can only assume that he overlooked the intended printed pages for the exhibit GL-9 that were on file and simply printed colour copies directly from the relevant website on 23 April 2015 when finalising the evidence rather than inserting the 2 earlier obtained pages from the file and this error was not observed by the responsible attorney at the time of final review prior to submission via Objective Connect. We ask that the 2 erroneous colour pages be replaced with the intended black and white pages attached herewith.

   Regarding exhibit GL-11, the Declaration clearly states that this should have been a company extract which was submitted.  However, instead the same clerical staff member, for reasons that are not immediately apparent, attached a Summary report from the ASIC website rather than the intended complete extract which should have been submitted as stated in the Declaration. Again, the error/obvious mistake went undetected until late last week and we are unable to ascertain exactly what happened to cause the wrong document to be attached to exhibit GL-11. The complete company extract is now attached as was originally indicated in the Declaration and intended.

   We consider that the exhibits GL-9 and GL-11 are important to the Opponent’s case as they show that the trade mark was used in the relevant alleged non-use period, and that the Opponent was involved in dealing with the relevant goods and services. The nature of the problems with the 2 exhibits are clear prima facie and constitute clerical errors and/or obvious mistakes. 

   We consider that the Opponent has made all reasonable efforts to comply with filing the evidence within the requisite timeframes and has acted promptly and diligently at all times with regards the above proceedings. Therefore, we request that the Hearings Officer exercise his discretion under s. 66 of the Trade Marks Act 1995 (Cth) and/or Regulations 9.18 and 21.15 of the Trade Marks Regulations 1995 (Cth) to allow the relevant substitutions to exhibits GL-9 and GL-11 to be admitted into evidence. We will be file (sic) the attached evidence via Objective Connect along with these submissions today.

   We consider that the Applicant will not be inconvenienced by this request as their written submissions are due 22 July 2016, and they will have an opportunity to be heard in this matter. A copy of this email has been sent to the other attorneys for their immediate knowledge of this request.

1. I invited the Applicant’s representatives to respond to that request in writing and they did so as follows:

   We refer to the above removal proceedings and the recent submissions by the Opponent to file further evidence that is claimed to address a clerical error or obvious mistake in Exhibits GL-9 and GL-11.

   Without formally opposing the Opponent’s request, we consider that such a request is unreasonable and should be refused at least on the following basis:

   In relation to Exhibit GL-9, the Opponent is only requesting the correction of two pages, being the second and last pages of the exhibit, however the insertion of said pages would result in a significant inconsistency within the exhibit, keeping in mind that Mr Lewis has declared this exhibit as an extract from his company’s website.  The remaining web pages in the exhibit show the date “4/23/2015”, apart from the picture pages 5 – 7, which have no date marking at all.

   If the current pages (second and last pages of the exhibit) are incorrect then it stands that the remaining web pages in the exhibit (pages 1, 3, 4) are also incorrect yet no effort has been made by the Opponent to address those pages.

   Allowance of the Opponent’s request would then result in Exhibit GL-9 containing pages marked “4/23/2015” and also two pages marked “3/10/2014” despite the Declaration being signed by Mr Lewis on 22 April 2015.

   In any event, the revised exhibit pages for GL-9 proposed by the Opponent would still reside outside the relevant period, as 3/10/2014 is 3 October 2014 and the relevant non-use period ended 27 July 2014.

   In addition, allowance of the Opponent’s request regarding the replace (sic) of only the tow (sic) pages in GL-9 should then also affect Exhibit GL-12, GL-3, each of which is also dated “4/23/2015”.

   Given that the Declarant, Mr Lewis, had signed the Declaration 22 April 2015 it raises a question as to whether or not the Declarant had the evidence that they are declaring.

   With respect to Exhibit GL-11, Mr Lewis has indeed referred to an extract from ASIC and the evidence submitted at that time is only the company summary form.

   Noting that Mr Lewis had signed the Declaration 22 April 2015, we note the ASIC company summary is listed as being printed 23 April 2015, after the date the Declaration was signed and now the Opponent is requesting to insert the correct document, being the current and historical company extract which shows a date of 13 July 2016.

   No evidence has been submitted by the Opponent that such an extract was obtained and presented to the Declarant prior to the signing the Declaration.  This could readily be obtained by including a copy of the official receipt of purchase of the company extract from ASIC, as such information is required to be purchased.

   In addition, and perhaps more persuasive (sic), the Opponent could have chosen to submit copies of the correspondence sent to the Declarant, which they would have done when having the (sic) Mr Lewis sign the declaration, showing that in fact they (sic) had been provided with the appropriate exhibits prior to the signing of the Declaration, however they have not chosen to do so for some reason.

   The Opponent contends that the amended pages of Exhibits GL-9 and GL-11 are important to their case however it is perhaps a stretch to consider that the errors are clear on their face to the point that they constitute clerical errors and/or obvious mistakes.

   If this were the case then it would be trivial for the Opponent to support their request, such as by providing complete copies of the particular exhibits that were presented to the Declarant prior to, or at the time of, the signing of the Declaration.

   With respect to the Opponent’s request regarding Exhibit GL-9, in particular to change the second page of that exhibit, refusal of their request would not necessarily inconvenience them as it does appear that the Applicant’s evidence Exhibit DA02 is for the same web page.

   Given the relatively rigorous assessment for allowance of extension (sic) of time to file evidence since the commencement of the Raising the Bar (sic), applicable to requests filed on or after 15 April 2013, it does appear as though the reasons for the request put forward by the Opponent fail to meet the threshold of exceptional circumstances.

   Should the Registrar exercise their discretion and allow the inclusion of such evidence, the Applicant will of course highlight the inconsistencies in the evidence by the Declarant Mr Lewis and any effect it may have in relation to the admissibility of the exhibits referred to in Mr Lewis’ Declaration.

2. The Applicant states that “[w]ithout formally opposing the Opponent’s request, we consider that such a request is unreasonable and should be refused …”.  Although ambivalent in its wording, I have treated that submission as a request that the application to correct Lewis be refused.

3. I would not characterise the Opponent’s request as an application to file further evidence, as does the Applicant, but a question does arise as to whether the requested substitutions would result in new evidence.  That is the possible outcome in the case of Exhibit GL-11, which as originally shown is an ASIC extract for the Australian Company in summary form with little bibliographic information.  The Applicant’s representative objects that this original extract is dated 23 April 2015, whereas Lewis is dated a day earlier, and that this anomaly[18] would be exaggerated by the proposed substitution of a longer ASIC record dated 13 July 2016, more than a year after the declaration was signed.  I share that concern, but having regard to the Opponent’s claim that the matter was a clerical error or an obvious mistake, I am led more by the Applicant’s observation that “[n]o evidence has been submitted by the Opponent that such an extract was obtained and presented to the Declarant prior to the signing the Declaration.”

   [18] Best explained I imagine by international time differences if Lewis 1 was executed in Canada the day after the final form of the declaration was prepared by the Opponent’s Australian representatives.

4. It is the Opponent’s contention that correction of the exhibits is important to their case “as they show that the trade mark was used in the relevant alleged non-use period, and that the Opponent was involved in dealing with the relevant goods and services.”  I understand that the latter reason applies to Exhibit GL-11 since it shows the directorships of the Australian Company.  The desire to amend the exhibit is likely prompted by concerns I have alluded to already but the matter of control having not been argued by the Applicant, I regard this amendment request as redundant and so refuse the application in respect of Exhibit GL-11.

5. So far as Exhibit GL-9 is concerned, it is only the second and final pages thereof that have any real significance to my further reasoning in this matter.  Nonetheless, as the Applicant points out, if those pages are incorrect then it follows that the remaining dated pages in the exhibit (pages 1, 3, 4) are just as likely to be incorrect and yet no effort has been made by the Opponent to amend the exhibit more thoroughly, or to explain that pages 1, 3 and 4 were unchanged over time.[19]   

   [19] The Applicant’s additional objection that “in any event, the revised exhibit pages for GL-9 proposed by the Opponent would still reside outside the relevant period, as 3/10/2014 is 3 October 2014 and the relevant non-use period ended 27 July 2014” is misconceived as the date is in USA date format and is a reference to March 10, 2014.

6. Whilst the application to make the Exhibit GL-9 substitution is better supported in the sense that there is evidence of the existence of a file copy of the original pages, the claim of a clerical error attributes cause to an ex-employee who has not given evidence.  Nor is it clear to me that the mistake, were it one, is obvious.  Further, I am in agreement with the Applicant’s criticism that the requested correction is piecemeal and would, if allowed, lead to a more confusing record of the true evidence.  For these reason I also refuse the application in respect of Exhibit GL-9.

7. That decided, I am conscious that had the Opponent’s counsel been physically before me at the hearing and had presented to me, without notice, copies of the proposed replacement pages to Exhibit GL-9 with the same explanations of the alleged mistake and of their significance, I might have given some recognition to the documents.

8. What is said of those pages, dated 14 March 2014, is that they show use of the Trade Mark in the Relevant Period and I acknowledge that they are examples of the sparingly few times in the evidence where the Trade Mark, as registered, is shown.  But the time at which the Trade Mark appeared on the website only takes me so far since the final page of Exhibit GL-9 is merely a list of “Bio-Agtive™  Distributors, Managers” and page two of that exhibit is entitled “About N/C Quest” and is relevant only to the extent that it states that the Opponent “licenses the Bio-Agtive technology” which “is the trademarked name that describes one of the newest technologies in agriculture today.”   Further, that:

   The Bio-Agtive™ Method recycles your agriculture (sic) internal combustion engine emissions into plant nutrients by cooling the exhaust down through our Bio-Agtive™ System which is designed to capture, cool, condition and inject your emissions safely into the soil with no backpressure or melted hoses.

9. What is plainly missing from this evidence, necessary to meet the section 92(4)(a) application, is a clear indication that the Trade Mark was used on the registered class 1 goods. The described pages fall well short of that.

10. Scattered throughout the evidence is, as I say, a small handful of similar examples.  The only explicit instance of use of the Trade Mark with any of the registered class 1 goods (and in that case, limited to “fuel additives”) is that of the four invoices, INV-0050 to INV-0053, described already.

11. The tone of the Applicant’s written submissions is that I should approach that evidence with the greatest of caution.  I understand its concerns.  The confidential sales figures provided by the Opponent need not be compromised by my observation that the revenue attributable to those four invoices is the smallest fraction of the total sales.  Put another way, the Opponent has chosen, as representative of its alleged use of the Trade Mark in a three year period, to produce four identically worded, identically dated, invoices that have been ambiguously described as “sample” invoices.

12. As stated, the onus is on the Opponent to meet the allegation of non-use.  The Opponent’s evidence has been assembled with a lack of precision and having acknowledged errors.  Nonetheless, I have no reason to say more about invoices INV-0050 to INV-0053 which on their face show the requisite use in respect of goods being fuel additives.

13. However, that is not quite the end of the matter, for I have not yet recognised the Opponent’s submission (raised in the context of section 101 of the Act, but having broader significance) that the Opponent has registered the Trade Mark in other jurisdictions, namely Canada and the United States. [20]  Set out below is a comparison table of the class 1 goods of those registrations[21], together with the registered class 1 goods of the Registration:

    [20] Lewis, [29], Ex. GL-4.

    [21] Suitably redacted in the case of Canada which until recently did not use the International Classification Scheme.

Country	Filing Date	Class 1 Goods
Australia	6 July 2007	Chemical additives and catalysts; fuel additives, including oxidizing agents; chemicals in this class used in agriculture, horticulture and forestry; fertilizers, fertilizer additives and fertilizer catalysts
Canada	18 November 2005	Fuel additives, namely oxidizing agents; fertilizer catalysts
US	19 November 2014	Fuel additives, namely, oxidizing agents for conversion to fertilizers when processed by an internal combustion engine

1. When I measure the shortcomings of the evidence of use put forward to sustain the registered class 1 goods against the evidence of the Opponent’s “system” or “technology” as a whole, taken together with the evidence of the scope of the patent protection[22], I find that the only examples of qualifying use presented here, namely invoices INV-0050 to INV-0053, are alone insufficient to justify retention of the registered class 1 goods for so generic a description as “fuel additives”.  In other words, I am not prepared to recast the class 1 specification based merely on the shorthand description of wares found on an invoice, perhaps even a sample invoice, when there is better evidence of what those goods are most likely to be.

   [22] The Opponent’s US patent being in evidence.

2. Taking the evidence before me and treating the Canadian and United States trade mark specifications as corollary indicators[23], I find that the Opponent has established use of the Trade Mark for class 1 goods being “fuel additives, namely oxidizing agents”.

   [23] The evidence being that the same “system” or “technology” has been used and licensed by the Opponent in Canada as in Australia.

3. For the sake of completeness I add that the Opponent’s submissions proceeded on an assumption that use of the Logo was use of the Trade Mark; certainly there were no written submissions which took account of the differences between the two, or which paid regard to section 100(3)(a) which states that:

   (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; or

   (b)…

4. To the extent that the evidence might be said to show use of the Logo in respect of the Relevant Goods and Services, the Trade Mark and the Logo are, when compared, broadly different.  I find that the Logo makes additions to the Trade Mark which significantly affect the identity of the Trade Mark.  Section 100(3)(a) has no application in this case.

   The Registrar’s Discretion

   55. I have found that there was limited use of the Trade Mark during the Relevant Period but the Opponent asks me in any event to consider section 101 of the Act. Section 101(3) states that:

   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.

5. The Opponent is not required to point to “exceptional circumstances” in order to justify the exercise of that discretion.[24] Further, I may take into account whether the Trade Mark has been used in respect of (a) similar goods or closely related services; or (b)        similar services or closely related goods; to those to which the non-use application relates.[25] 

   [24] See Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38, where Bennett J said:

   [25] Sec. 101(4).

6. Nevertheless, I am not persuaded that it is reasonable to do so in the present circumstances.  In short, there is nothing which compels exercise of the Registrar’s discretion in the Opponent’s favour and I decline to do so.

   Decision

7. Having regard to the reasons given herein my decision is to remove the Trade Mark from the Register in respect of the whole of the class 44 services, and to limit the class 1 goods to “fuel additives, namely oxidizing agents”.

   59.     This removal should be made not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that removal shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the registration should be in accordance with the Court’s order or direction.

   Costs

   60.     As the successful party, the Applicant is entitled to its costs which I award against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.

   Debrett G. Lyons
   Hearing Officer
   Trade Marks Hearings
   14 November 2016

[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 Co Ltd 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).