Opposition by Ampac Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Boss Fire & Safety Pty Ltd to remove trade mark number 825224 (Class 9) – FireFinder stylised - in the name of Ampac...

[2021] ATMO 132

TRADE MARKS ACT 1995

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

Re:Opposition by Ampac Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Boss Fire & Safety Pty Ltd to remove trade mark number 825224 (Class 9) – FireFinder stylised - in the name of Ampac Pty Limited.

Delegate:	Blake Knowles
Representation:	Opponent: Andrew McRobert of counsel, instructed by Wrays Pty Ltd. Applicant: Karla Holzberger and Jacob Grumetza of IP Wealth Pty Ltd.
Decision:	2021 ATMO 132 Trade Marks Act 1995 (Cth) – application under section 92(4)(b) for removal of trade mark – use of trade mark during relevant period established – trade mark to remain registered.

Background

1. This is a decision in the application by Boss Fire & Safety Pty Ltd (‘Removal Applicant’) to remove registered trade mark number 825224 (‘Registration’) owned by Ampac Pty Ltd (‘Removal Opponent’). The Registration is deemed to have been registered from 24 March 1998 for the following trade mark and goods:

   (‘Trade Mark’)

   Class 9: Instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor; fire detection equipment; and parts and accessories for all of the aforementioned goods in this class

   (‘Goods’)

2. On 3 March 2020, the Removal Applicant filed an application (‘Removal Application’) for the complete removal of the Trade Mark from the Register.

3. The Removal Opponent filed a notice of intention to oppose the Removal Application on 26 March 2020 and a statement of grounds and particulars (‘SGP’) on 24 April 2020 as required by the Trade Marks Regulations 1995 (Cth).[1] The Removal Applicant responded by filing a notice of intention to defend on 29 June 2020.

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

4. The parties then had the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support on 30 September 2020. The Removal Applicant did not file Evidence in Answer.

5. The parties subsequently requested a hearing by video conference. The hearing took place on 14 October 2021 before me, a delegate of the Registrar of Trade Marks. The Removal Opponent was represented by Andrew McRobert of counsel, instructed by Jennifer McEwan of Wrays.  The Removal Applicant was represented by Karla Holzberger and Jacob Grumetza of IP Wealth Pty Ltd. This decision is based on the particulars outlined in the SGP, the evidence of the Removal Opponent, and the written and oral submissions of the parties.

6. As the Removal Application was filed on 3 March 2020, for the purposes of deciding this opposition, the relevant period is the three-year period ending on 3 February 2020 (‘Relevant Period’). 

7. It is relevant to note that for most of the Relevant Period, the owner of the Trade Mark was not the Removal Opponent, but another entity, Ampac Technologies Pty Ltd. All rights in the Trade Mark were assigned to the Removal Opponent by Deed of Assignment dated 15 July 2019. Any use of the Trade Mark during the Relevant Period by Ampac Technologies Pty Ltd while it was the registered owner of the Trade Mark may be relied on by the Removal Opponent in its opposition to removal. For ease of reference, I will simply refer to any use of the Trade Mark as being use by the Removal Opponent, which encompasses use by both the Removal Opponent and Ampac Technologies Pty Ltd as the Removal Opponent’s predecessor in title.     

   Evidence

8. The following declaration was filed by the Removal Opponent as Evidence in Support:

   Declaration of Steven Chaplyn, Technical Director of Removal Opponent, made on 25 September 2020 with Exhibits 1-9.

9. Mr Chaplyn declares that the Removal Opponent is a designer, manufacturer, and distributor of fire detection and alarm systems. Mr Chaplyn explains that the Removal Opponent has since 1998 used the Trade Mark (and since 2014 a variant of the Trade Mark called FIREFINDER PLUS) in relation to an intelligent fire alarm control panel. Mr Chaplyn provides numerous examples of use of the Trade Mark on or in relation to fire alarm control panels, including labels on the panels (used as a secondary brand together with the primary brand Ampac), brochures, and on the Removal Opponent’s website (with Internet Archive Wayback Machine extracts provided to confirm use in the Relevant Period). The following is a useful illustrative and dated example of use of the plain word FireFinder, which is substantially identical to the slightly stylised Trade Mark (which also appears on the goods themselves):

10. Mr Chaplyn also provides numerous invoices which indicate sale of the Goods under the Trade Mark during the Relevant Period, in addition to substantial revenue figures.

11. Mr Chaplyn states that sales of the fire alarm panels under the Trade Mark are accompanied by a licence to download and use ‘Config Manager’ software for operation and configuration of the panels. The Trade Mark appears on instructional documents that accompany the software. An example of the Trade Mark appearing on an instructional manual for the Config Manager software, which Mr Chaplyn declares was distributed to customers in the Relevant Period, is below:

12. Mr Chaplyn declares that the Removal Opponent also produces signaling devices and ancillary devices for use in conjunction with its range of control panels.  I note that the catalogues provided by the Removal Opponent also state that “FireFinder supports a large range of internal and external optional Panel Add-Ons” and contain numerous products that are indicated to be for use with the FireFinder or FireFinder Plus panels, including 8 Switch/Indicator Modules, Agent Release Modules, Module Expansion Kits, Panel Mounted LED Indicators, Modems, Remote Mounted LED indicators, Analogue Loop Upgrade Kits, Diversity Loop Interface units, Mini Switch Monitor with Isolator, and Warning Signs.

    Grounds, relevant period, onus and standard

13. The Removal Application alleges grounds for removal under s 92(4)(b), which is reproduced below:

    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.

14. The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[2]

    [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

15. The Removal Opponent in its rebuttal relies on use of the Trade Mark during the Relevant Period under s 100(3)(a), and, to the extent that I am not satisfied there has been use in relation to any of the Goods, the Removal Opponent submits I should exercise discretion to not remove the Trade Mark from the Register.

    Discussion

16. The parties essentially agree that the area of primary contention between them is in relation to software. The Removal Applicant indicated that a related entity, Boss Products (Australia) Pty Ltd, is pursuing registration of a substantially identical trade mark for goods and services in Class 9 and 42.[3]  Each of those trade mark applications covers a range of downloadable or non-downloadable software, restricted as follows: 

    all of the aforesaid software … in relation to searching, identifying, sourcing, recommending, buying and selling of products, devices or installations based upon user, industry specific, or regulatory code preferences or requirements; none of the aforesaid goods for use in connection with fire detection, prevention or protection; none of the aforesaid goods for use in connection with fire alarm control panels

    [3] Specifically, trade mark numbers 2040616 and 2040617.

17. The Removal Applicant’s trade mark applications are being blocked by the Trade Mark. The Removal Applicant therefore seeks one of the following outcomes from these proceedings (in order of preference):

    a.   Removal of the Trade Mark in respect of all the Goods for which there has been no use by the Removal Opponent.

    or

    b.   Restriction of the Goods to:

    Instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor; fire detection equipment; and parts and accessories for all of the aforementioned goods in this class; none of the aforesaid goods being software

    or

    c.   Restriction of the Goods to:

    Instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor; fire detection equipment; and parts and accessories for all of the aforementioned goods in this class; none of the aforesaid goods being software; software for programming and configuring fire alarm control panels.

18. Before discussing the grounds of opposition, it is also necessary to address a preliminary issue, which is whether ‘software’ is included in the Goods. The Goods do not include a specific claim for software. However, the Goods do include a claim for ‘parts and accessories’ for all of the preceding goods mentioned, which are: instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor; fire detection equipment (‘Primary Goods’). Therefore, to the extent that ‘software’ may be included in the Goods, it would need to be characterised as either a ‘part’ or ‘accessory’ of the Primary Goods.

19. I understand the definition of ‘parts’ in the context of a machine or apparatus to mean a portion or section of a greater whole. In other words, a ‘part’ is one of the components that combined with other components forms the entire machine or apparatus. In a commercial context, ‘parts’ are sold to replace defective or worn-out original parts in the machine or apparatus. Given its commonly understood meaning, I consider that ‘parts’ refers to items intended as spare parts for machines and apparatus and would not include intangible things such as software.

20. The meaning of ‘accessory’ includes things that can be added to another thing to make that other thing more desirable or useful. The Macquarie Dictionary defines ‘accessory’ as:

    a subordinate part or object; something added or attached for convenience, attractiveness, etc., such as a spotlight, heater, driving mirror, etc., for a vehicle.

21. The term ‘accessory’ must also be interpreted in the context of the products for which the claim relates. For instance, the scope of accessories for shovels would obviously be more limited than the scope of accessories for computers.

22. I consider that software may in some cases qualify as an accessory for particular goods, but this will depend on the nature and purpose of the software and its relationship to the goods. For example, I would consider that software for recording heart rate and other physical characteristics designed to be used with a particular piece of exercise equipment could accurately be called an accessory.

23. However, if software is necessary for the function of particular goods, then it is arguably not an accessory but is in fact something more fundamental.  At the hearing, I asked counsel for the Removal Opponent whether the ‘Config Manager’ software, which is used for the operation and configuration of the Removal Opponent’s control panels, could accurately be characterised as an ‘accessory’. Counsel raised three points in reply, namely, (i) that there was no dispute between the parties that software was encompassed within the claim for accessories, (ii) that the software is supplied separately from the panel itself, and (iii) that the Trade Mark was initially registered in 1998 and the claim for accessories must be viewed in that light, accepting that the nature of what constitutes an accessory can evolve over time.

24. Taking into account the points raised by counsel and considering that there is no dispute between the parties on the issue, I accept (though not without some doubt) that in this case software for configuring or operating the Primary Goods could reasonably fall within the definition of an accessory, and I will proceed on this basis.

    Use of the Trade Mark during the Relevant Period

25. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user, in good faith, on or in relation to the Goods during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Goods, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Goods for which use during the Relevant Period has not been established.

26. The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to or in relation to those goods or services.[4]

    [4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

27. An issue of significant contention between the parties was whether use of the Trade Mark for specific goods falling within a broad category was sufficient to constitute use in relation to that broad category as a whole, or whether the broad claim should be restricted in scope.

28. The Removal Opponent referred to the decision of the Federal Court in McHattan v Australian Specialised Vehicle Systems Pty Ltd (‘McHattan’). In McHattan, the applicant’s trade mark GJM TAIPAIN was registered for motor vehicles. The respondent was seeking to register a similar mark TAIPAN for vehicles, particularly military vehicles. The respondent filed two applications to remove the registered trade mark, with one seeking removal of ‘military vehicles’ and the other seeking removal of ‘armoured military vehicles of greater than 8 tonnes’. Prior to the removal applications being decided, the applicant sought an interlocutory injunction against the respondent to restrain the respondent’s use of TAIPAN. In this context, Drummond J was required to consider the scope of the applications for removal in assessing the applicant’s prospects of success in the infringement claim. His Honour said:

    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 s 92, 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.[5]

    [5] (1996) 34 IPR 537.

29. The Removal Opponent also referred to the decision of the Federal Court in Pioneer Computers Australia Pty Ltd v Pioneer KK (‘Pioneer’),[6] where Bennett J considered whether the use of a trade mark on ‘optical disc drives’ and ‘juke boxes’ sufficed to maintain the registration for ‘computer peripheral devices’. Her Honour held that in the circumstances, it was not necessary to demonstrate use of the trade mark in relation to every type of product that may fall under particular description.[7] However, Bennett J also accepted that the term ‘computer peripheral devices’ encompassed a range of other devices for which the relevant trade mark had not been used and that the broad claim for ‘computer peripheral devices’ was liable to be removed, leaving the trade mark registered for the specific peripherals which were expressly claimed elsewhere in the specification.[8]  Ultimately however Bennett J exercised discretion under s101(3) not to remove the claim for ‘computer peripheral devices’ due to several case specific factors.[9]

    [6] [2009] FCA 135.

    [7] Ibid, [138].

    [8] Ibid, [143].

    [9] Ibid, [229].

30. The Removal Opponent also cited several other cases. In Trident Seafoods Corporation v Trident Foods Pty Ltd,[10] the Full Court of the Federal Court held that use of a trade mark on ‘prawn flavoured noodle soups’ constituted use of the trade mark in relation to ‘fish products’ in Class 29, although I note the decision to maintain the trade mark for ‘fish products’ did not turn on this finding. In Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd, Stewart J agreed (citing Pioneer) that to establish use of a mark for a category of goods, it is not necessary to show that the mark was used on every type of product which might come within a particular description.[11] In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd,[12] Burley J (also citing Pioneer), acknowledged that some latitude is permitted in determining whether a trade mark has been used or whether there has been an intention to use in relation to goods.

    [10] [2019] FCAFC 100 (Reeves, Jagot, and Rangiah JJ).

    [11] [2020] FCA 39, [188].

    [12] [2020] FCA 1808, [146].

31. The Removal Applicant argued that the abovementioned cases were not analogous or on a proper interpretation did not support the Removal Opponent’s case. Further, the Removal Applicant cited Murray Goulburn Co-Operative Company Limited v The New South Wales Dairy Corporation where a trade mark registered for ‘dairy products’ was restricted back to the specific subset of those goods for which use had been demonstrated, namely, ‘cheese’ and ‘flavoured milk’.[13]

    [13] (1990) 17 IPR 269 (Lockhart, Pincus, and von Doussa JJ).

32. I accept that the use of a trade mark for a subset of a particular category of goods can in some circumstances be sufficient to maintain a registration of a trade mark for the entire category. However, whether this is appropriate will depend on the circumstances of each case. Logically, the more extensive the category in question, the less likely it is to be appropriate to allow a broad claim to remain unrestricted based on use only for some goods within that category. For example, many older trade marks are registered for broad claims such as ‘machines’. Such a claim on its broadest interpretation could include anything from a steam iron to a nuclear reactor. It would be difficult for most registrants to maintain an unrestricted claim for ‘machines’ in the face of a removal application, unless there were very compelling discretionary factors favoring the trade mark owner. Similarly, the maintenance of broad claims for goods such as ‘computer software’ would also need to be considered closely, given the extensive range of different purposes for which software can be used.

1. Turning to the present case, I am satisfied that the evidence demonstrates use of the Trade Mark in the Relevant Period in relation to: Instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor. The panels sold by the Removal Opponent during the Relevant Period are clearly intended for use with fire alarms which function as both an early warning device and an evacuation system, and the modems offered as parts for such systems in the Removal Opponent’s brochure constitute inter-communication equipment. Further, I consider the use of the Trade Mark in relation to the above constitutes a sufficient subset of fire detection equipment to justify retaining that claim without restriction.

2. I am also satisfied that there has been use of the Trade Mark in relation to parts that are mentioned in the Removal Opponent’s brochures, including:

   -FireFinder LED Mimic Drivers.

   -FireFinder LED Display Boards.

   -FireFinder Zone Alarm Only Indications.

   -FireFinder Fibre Optic Cores.

3. With regards to software, I am satisfied that the Trade Mark was used during the Relevant Period in relation to software for the operation and configuration of the Removal Opponent’s fire alarm control panels. I do not accept the Removal Applicant’s argument that the only trade mark used in relation to software was ‘Config Manager’. It is well established that multiple trade marks can be used in relation to the same product. In this case, the Trade Mark and ‘Config Manager’ are both used in relation to the software, and the Trade Mark performs a dual function of indicating that the software is intended for use with other goods sold under the Trade Mark, while also acting as a badge of origin for the software itself. The situation may have been different if the Trade Mark were used less conspicuously or purely in a descriptive context, e.g. ‘This software is compatible with FireFinder panels’. However, the evidence shows use of the words ‘FireFinder’ in relation to the software prominently and independently of other brand and descriptive elements, which I consider constitutes clear use ‘as a trade mark’.  

4. The issue that now must be resolved is whether the claims for parts and accessories should be subject to some form of restriction. I must consider this having regard to the fact that the Primary Goods, which define the scope of the claim for parts and accessories, are relatively narrow in scope and consist of specialised items that are defined with reasonable specificity. 

5. The restriction of the Goods to remove or significantly restrict any claim to computer software was the Removal Applicant’s primary goal. However, to the extent that the Goods do include computer software, I consider that software to be very limited in purpose. I do not realistically think there would be any type of software used as an accessory for the Primary Goods that would not relate in some way to their operation and configuration.

6. If the circumstances were different and the Goods included an unqualified claim for computer software, or some other claim that encompassed software with a purpose relating to something other than the operation and configuration of the Primary Goods, there would be cogent arguments that such a claim should perhaps be restricted. However, given that any computer software covered by the specification of Goods in its present form is by necessity already very narrowly defined by the scope of the Primary Goods, I do not consider that a restriction of the type proposed by the Removal Applicant would serve any practical purpose.

7. I am also satisfied that use demonstrated in relation to particular parts and accessories in the nature of hardware mentioned above is also sufficient to justify maintenance of the broader parts and accessories claim in its present form, given the specificity and specialisation of the Primary Goods. In other words, I consider that in this instance, use on a subset of parts and accessories for the Primary Goods is sufficient to constitute use for the entirety of the broader claim for parts and accessories generally.

8. Given that the Removal Opponent has established use of the Trade Mark across the narrow categories of products comprising the Goods, it has satisfied s 100(3)(a), and it is therefore not necessary that I consider the exercise of the Registrar’s discretion. However, I note for completeness that even if the Removal Opponent had not been entirely successful under s 100(3)(a), there were also compelling arguments in favour of the exercise of discretion, and the outcome of the matter was likely to be the same.  

   Decision and costs

9. The Removal Opponent has successfully rebutted the allegation of non-use. As such, subject to any appeal by the Removal Applicant, the Trade Mark should remain on the Register.

10. Both parties requested an award of costs. The usual rule is that costs follow the event. As the Removal Opponent has been successful, I award costs against the Removal Applicant.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    3 November 2021