Olin Corporation v Detnet South Africa Pty Ltd

[2024] ATMO 217

TRADE MARKS ACT 1995

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

Re:Opposition by Olin Corporation to application under section 92 of the Trade Marks Act 1995 (Cth) by Detnet South Africa Pty Ltd to remove trade mark number 195237 (class 13) – W RANGER (figurative) - in the name of Olin Corporation

Delegate:

Tracey Berger

Representation:

Opponent: Banki Haddock Fiora

Applicant: The Loft Legal Pty Ltd

Decision:

2024 ATMO 217

Trade Marks Act 1995 (Cth) – s 96 opposition to application under section 92(4)(b) – no use during the relevant period established – discretion not exercised – trade mark to be removed

Background

1.     Olin Corporation (‘Opponent’) is the owner of the trade mark detailed below:

Number:                 195237 (‘Registration’)

Trade Mark:                (‘Trade Mark’)

Filing Date:            11 June 1965

Specification:     Class 13: Arms and Ammunition (‘Goods’)

2.     On 15 December 2022, Detnet South Africa Pty Ltd (‘Applicant’) filed an application under

[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] for the complete removal of the Trade Mark from the Register of Trade Marks (‘Removal Application’).

3.     The Opponent filed a Notice of Intention to Oppose on 17 February 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 17 March 2023.  The Applicant filed a Notice of Intention to Defend the Removal Application on 24 May 2023.

4. The parties then had the opportunity to file evidence in accordance with the Regulations. The Opponent filed its Evidence in Support of the opposition on 25 August 2023 consisting of a declaration of Vina Ngo, solicitor of Banki Haddock Fiora, attorneys for the Opponent, made on 25 August 2023 with Exhibits 1-17 (‘Ngo’). No other evidence was filed in the proceedings.

5.     Once the time for filing evidence had ended, the Applicant requested an oral hearing.  The Opponent did not ask to be heard.  I heard this matter via videoconference as a delegate of the Registrar of Trade Marks on 17 October 2024.  Prior to the hearing, the Applicant filed written submissions prepared by Nico de Jong of The Loft Legal Pty Ltd, solicitor for the Applicant.  Mr De Jong also appeared at the hearing and made oral submissions on the Applicant’s behalf.  I make my decision based on the aforementioned materials and submissions of the Applicant.

Legal Framework

6. Part 9 of the Act deals with the removal of trade marks from the Register on account of non-use. In this regard, s 92(4)(b) provides:

92  Application for removal of trade mark from Register etc.

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

(a)  …

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

(i)  used the trade mark in Australia; or

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

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

7. Pursuant to s 93(2), a non-use application under s 92(4)(b) may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark.[2]  The Removal Application complies with this requirement.

[2] See s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3. The amended s 93(2) applies to trade marks filed from 24 February 2019 onwards.

8.     Pursuant to s 100(1), the Opponent bears the onus of rebutting an allegation made under

[3] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

[4] Section 100(3)(a).

s 92(4)(b). The Opponent must establish on the balance of probabilities[3] that it has used the Trade Mark (or a mark with additions or alterations not substantially affecting the mark[4]) in good faith in Australia for the Goods in the three year period ending 15 November 2022 (‘Relevant Period’).

9.     In Woolly Bull Enterprises Pty Ltd v Reynolds,[5] 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’. Little weight is to be given to assertions of use which are not supported by documentary evidence[6] but 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.[7]  However, 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’.[8]

[5] [2001] FCA 261, [16] (‘Woolly Bull’).

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

[7]  Woolly Bull (n 5) [17].

[8] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

10.     Section 101 provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any, or all, of the goods. If satisfied that it is reasonable to do so, the Registrar may decline to remove the Trade Mark from the Register even if the grounds on which the non-use application was made have been established. 

Opponent’s evidence

11.     Ngo declares that the Opponent commenced business in 1892 and is now the number one producer of small ammunition globally.

12.     Ngo claims that the Trade Mark is used by the Opponent on the Goods and is available for sale in Australia through the Opponent’s licensed distributor, Winchester Australia and authorised third parties.  In support of this claim, the Opponent annexes extracts from 13 different websites accessed on 22 August 2023.

13.     Also annexed to Ngo are extracts from websites obtained using the Wayback Machine purporting to show the Goods available for sale in Australia under the Trade Mark in the Relevant Period.  In addition, Ngo provides confidential sales figures by volume and value for the years 2020 to 2022 for the Goods sold in Australia under the Trade Mark.

Discussion

Use of the Trade Mark

14.     The Applicant contends that the Opponent has not used the Trade Mark in the form in which it is registered in the Relevant Period for the Goods.  Further, the Applicant submits that the marks which have been used by the Applicant are marks with additions or alterations that substantially affect the identity of the Trade Mark.

15.     It is apparent from a review of Ngo that the Opponent has not used the Trade Mark in the form in which it is registered.  The exhibits to Ngo show use in the Relevant Period of the word marks WINCHESTER SUPER RANGER, WINCHESTER RANGER, RANGER® Bonded and RANGER® T Series as well as the following composite marks for ammunition for firearms:

(collectively the word and composite marks are referred to as the ‘Opponent’s Marks’)

16.     Given that the evidence does not demonstrate any use of the Trade Mark as registered, I must first consider whether any of the Opponent’s Marks are marks with additions or alterations not substantially affecting the identity of the Trade Mark. 

17.     The test for substantial identity was set out by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

[9] (1963) 109 CLR 407, 415.

18.     More recent decisions have placed emphasis on the relevance of the essential elements or ‘dominant cognitive cues’ of the marks.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’),[10] the Full Federal Court found that use of the composite mark  was use of a mark with additions or alterations not substantially affecting the identity of the registered mark HARBOUR LIGHTS.  In relation to the composite mark, the Full Federal Court found that HARBOUR LIGHTS was the badge of origin being the first component presented in large emphatic letters, the five stars did not substantially affect the identity of the mark and the slogan was a ‘barely noticeable piece of text’.[11]

[10] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

[11] Ibid [206]-[209].

19.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[12] the Full Federal Court found the following marks to be substantially identical on the basis that in both marks, the dominant cognitive cues or essential elements are the word ‘insight’ and circular devices situated to the left of the words:[13]

and         

[12] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

[13] Ibid [56].

20.     The Applicant argues that the decision in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[14] is relevant.  In that case, the marks  and  were found not to be substantially identical based on differences in the presentation of the two marks including the distinctive tail of the first mark as compared to the ‘font and block characteristics’ of the second mark.

[14] [2021] FCAFC 128 (‘PDP Capital’).

21.     The relevant marks here are shown side by side below:

Trade Mark	Opponent’s Marks
WINCHESTER SUPER RANGER WINCHESTER RANGER RANGER® Bonded RANGER® T Series

22.     In my opinion, none of the Opponent’s Marks are substantially identical to the Trade Mark. On a side by side comparison, the visual and aural differences are apparent.  The stylised W forms a significant part of the Trade Mark unlike the slogan in Accor.  The comparisons here also differ from Pham Global where the marks had similar device elements, the shared distinctive element INSIGHT and differed only in descriptors with similar meanings.  Each of the Opponent’s Marks omits the distinctive W and each includes additional text or device elements.  These changes are such that, in my view, there is not a total impression of resemblance between the Trade Mark and each of the Opponent’s Marks.

23.     I find that the Opponent has not used the Trade Mark or a mark with additions or alterations not substantially affecting its identity for ammunition. 

24.     There is no use of the Trade Mark for ‘arms’ established in the evidence.  The only use of by the Opponent in evidence for ‘arms’ are offers for sale online after the Relevant Period of a second hand ‘Winchester model 120 Ranger 12Ga’ gun[15] and a second hand ‘WINCHESTER MODEL 94 RANGER’ gun[16] both available for sale on 22 August 2023.  Neither of these examples is use of the Trade Mark and both uses are outside the Relevant Period.

[15] Ngo, Exhibit 6.

[16] Ngo, Exhibit 7.

25.     The Opponent has not discharged its onus of establishing use of the Trade Mark, or a mark with additions or alterations not substantially affecting the identity of the registered mark, in Australia for the Goods in the Relevant Period.

Exercise of the discretion

26.     To exercise discretion not to remove the Trade Mark for the Goods, I must be positively satisfied that it is reasonable to retain registration of the Trade Mark even though the Opponent has not established use of the Trade Mark during the Relevant Period in respect of any of the Goods.

27.     The Opponent bears the onus of persuading me that it is reasonable to exercise the discretion.[17]  It is not for the Applicant to satisfy me that it is not reasonable. 

[17] PDP Capital (n 14) [153].

28.     The Opponent elected not to be heard and only refers to the exercise of the discretion in its SGP stating that in the event that no use of the Trade Mark in the Relevant Period is found, the Opponent relies on the discretion under s 101(3) not to remove the Trade Mark ‘because of all the circumstances surrounding the use and registration of the Trade Mark, including:

(a) the Removal Opponent’s substantial use of a trade mark so nearly resembling the Trade Mark on the goods of the registration during the relevant non-use period;

(b) the Removal Opponent’s substantial use of the Trade Mark or a trade mark so nearly resembling the Trade Mark prior to and/or after the relevant non-use period;

(c) the Removal Opponent’s continuing reputation in the Trade Mark or a trade mark so nearly resembling the Trade Mark in Australia, including during the relevant non-use period; and

(d) the real risk of confusion that would be caused through the use of the Trade Mark or any similar mark in Australia by another trader without the Removal Opponent’s authorisation in respect of the goods of the registration to which the non-use application relates or similar goods.’

29.     Whilst the Opponent’s evidence includes sales figures by volume and value for 2020-2022, it is not apparent to me whether these figures are significant in the context of the available market.  I do not consider the Opponent’s evidence, in the absence of submissions on the point, to be sufficient for me to be satisfied that the Opponent has a reputation in any of the trade marks it has used.  There is no evidence that the Opponent has ever used the Trade Mark nor that it has an intention to use the Trade Mark in Australia in the future. 

30.     In the circumstances, I am not satisfied that it is reasonable to exercise my discretion not to remove the Trade Mark in respect of the Goods.

Decision

31.     The Opponent has not established its opposition to removal of the Trade Mark.  Accordingly, I direct that registration 195237 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal, I direct that removal shall not occur until the appeal has been discontinued or dismissed or in the event of a decision, that the Trade Mark shall be dealt with as the court sees fit.

32. The Applicant has requested an award of costs. As costs generally follow the event, I award costs against the Opponent in accordance with the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

8 November 2024