Netafim Australia Pty Limited v OASE GmbH

[2024] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Netafim Australia Pty Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by OASE GmbH to partially remove trade mark number 676200 (11) – SCAPELINE – in the name of Netafim Australia Pty Ltd

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Self-represented

Removal Applicant: Phillips Ormonde Fitzpatrick

Decision:

2024 ATMO 102

Trade Marks Act 1995 (Cth) – section 96 opposition – section 92(b) application for partial removal – no use established – exercise of discretion not appropriate – trade mark to be partially removed from the Register

Background

1. On 31 August 2023 OASE GmbH (‘Removal Applicant’) filed an application (‘Application’) under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] seeking partial removal of the following registered trade mark in the name of Netafim Australia Pty Ltd:

   Trade mark number:                 676200

   Trade mark:  SCAPELINE

   Filing date:  26 October 1995

   Specification:  Class 11: Irrigation and filtration equipment and devices in this class; automatic watering installations; drippers and dripper lines; water intake apparatus; regulating accessories for water apparatus and pipes; safety accessories for water apparatus and pipes; water conduit and distribution installations; water filters and filtering apparatus; connectors, adaptors, fittings, parts and accessories in this class for the foregoing (‘Registered Goods’)

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The Application is made to remove the following goods:

   Class 11: Irrigation and filtration equipment and devices in this class; automatic watering installations; water intake apparatus; regulating accessories for water apparatus and pipes; safety accessories for water apparatus and pipes; water conduit and distribution installations; water filters and filtering apparatus; connectors, adaptors, fittings, parts and accessories in this class for the foregoing (‘Removed Goods’)

3. As such the Removal Applicant seeks the following amendments to the specification:

   Class 11: Irrigation and filtration equipment and devices in this class; automatic watering installations; drippers and dripper lines; water intake apparatus; regulating accessories for water apparatus and pipes; safety accessories for water apparatus and pipes; water conduit and distribution installations; water filters and filtering apparatus; connectors, adaptors, fittings, parts and accessories in this class for the foregoing

4. Netafim Australia Pty Limited (‘Removal Opponent’) filed a Notice of Intention to Oppose partial removal on 12 September 2023, followed by its Statement of Grounds and Particulars (‘SGP’) on 19 September 2023. The Removal Applicant filed its Notice of Intention to Defend on 12 October 2023.

5. The Removal Opponent filed the following declaration as evidence in support (‘EIS’):

·Declaration by Carolyn Wood, Marketing Manager of the Removal Opponent made on 23 November 2023 (‘Wood’).

1. The Removal Applicant did not file evidence in answer.

2. Once time for filing evidence had ended the parties were given an opportunity to request a hearing or decision without hearing. The Removal Applicant requested a decision without hearing. As delegate of the Registrar of Trade Marks, this matter has been allocated to me to determine based on the aforementioned documents.

Legal Framework

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated s 92(4)(b) as the ground for partial removal. Section 92(4)(b) provides:

(4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)…

(b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)  used the trade mark in Australia; or

(ii)  used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

2. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 31 July 2023 (‘Relevant Period’).

3. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the registration of the Trade Mark,[2] and I confirm that five years since filing the application for the registration of the Trade Mark have in fact passed.

   [2] Per s 93(2) of the Act 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 amended s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

4. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. [3] Provided the use is in good faith, a ‘single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J 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’.[6]

   [3] [2001] FCA 261, [16].

   [4] Ibid [17].

   [5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [6] (1962) RPC 1, 7.

5. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[7]

   [7] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

6. In accordance with s 101, if the ground for partial removal is established, I may decide to remove the Trade Mark from the Register in respect of any of the goods identified in the Application, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Mark from the Register.

Use of the Trade Mark during the Relevant Period

1. In Wood, Ms Wood states that the Removal Opponent has used the Trade Mark in good faith Australia in relation to the Registered Goods. Ms Wood then goes on to state that the Trade Mark is used to identify one of the Removal Opponent’s products.

2. In Wood, Ms Wood attached copies of pages taken from the Removal Opponent’s 2022 Price Book. The Price Book contains prices for drippers and dripper lines referred to as SCAPELINE.

3. In Wood, Ms Wood also attached undated shots of the Removal Opponent’s dealer partners, online advertising, of its drippers and dripper lines featuring the Trade Mark. There is no evidence in Wood of any other use of the Trade Mark by the Removal Opponent.

4. In my assessment of the evidence, there is no evidence before me that the Trade Mark was used in relation to the Removed Goods during the Relevant Period.

5. The Removal Opponent’s evidence only shows use of the Trade Mark in relation to dripper and dripper lines during the Relevant Period and I note that these items are the exempt items listed in the Application.

Obstacles to use

1. The Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Removed Goods in the Relevant Period pursuant to s 100(3)(c). I note that I have been unable to identify any such obstacles. As there are no obstacles to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Removed Goods.

Registrar’s discretion

1. Section 101(3) provides:

   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.

2. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3): 

   The following propositions are relevant to the exercise of this discretion: 

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act. [emphasis added] 
   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. … 
   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. … [emphasis added] [citation omitted]
   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark. [emphasis added] 
   (5) The range of factors considered in the exercise of the discretion has included whether or not: 

   (a) there has been abandonment of the mark; 

   (b) the registered proprietor of the mark still has a residual reputation in the mark; 
   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended; 
   (d) the applicant for removal had entered the market in knowledge of the registered mark; 
   (e) the registered proprietors were aware of the applicant’s sales under the mark; 
   …
   

   [8] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[8]

3. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[9]

   [9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

4. In this matter, the question is whether it is reasonable not to partially remove the Trade Mark in respect of the Removed Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[10]

   [10] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

5. The Removal Opponent has not addressed the issue of discretion and there is no evidence that it has ever used the Trade Mark or intends to use the Trade Mark in Australia for the Removed Goods. As such I am not persuaded that the partial removal of the Trade Mark in respect of the Removed Goods would result in consumer confusion or practically impact on the interests of the Removal Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of the Removed Goods.

Decision

1. The Removal Opponent has not established its opposition to the partial removal. I direct that registration 676200 be amended one month from the date of this decision as set out below to remove the Removed Goods:

   Class 11: Irrigation and filtration equipment and devices in this class; automatic watering installations; drippers and dripper lines; water intake apparatus; regulating accessories for water apparatus and pipes; safety accessories for water apparatus and pipes; water conduit and distribution installations; water filters and filtering apparatus; connectors, adaptors, fittings, parts and accessories in this class for the foregoing

1. In the event of an appeal, the disposition of the Application will instead be subject to the decision made by the Court.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as set out in Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

6 June 2024