Opposition by Glenn William Davies to an application under section 92 of the Act by Seed Terminator Holdings Pty Ltd for removal of trade mark number 635379 (7) TERMINATOR - in the name of Glenn William Davies

[2019] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Glenn William Davies to an application under section 92 of the Act by Seed Terminator Holdings Pty Ltd for removal of trade mark number 635379 (7) – TERMINATOR - in the name of Glenn William Davies

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Griffith Hack
Decision:	2019 ATMO 68 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register.

Background

1. This decision is pursuant to an application made on 20 October 2017 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Seed Terminator Holdings Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	635379
Lodgement date	21 July 1994
Goods	Class 7: An agricultural machine consisting of a trailing blanket weed wiper with electronic control and also fixed models, including pads for herbicide application, folding frame; parts and accessories for the aforementioned goods in class 7 (‘Registered Goods)
Owner	Glenn William Davies
Trade Mark	TERMINATOR (‘Trade Mark’)

2.     Glenn William Davies (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 20 November 2017 and a Statement of Grounds and Particulars (‘SGP’) on 18 January 2018.  The Applicant filed a Notice of Intention to Defend on 20 February 2018.

1. The parties subsequently filed evidence in support, evidence in answer and evidence in reply, which will be discussed in more detail below. 

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 18 September 2018 the Applicant requested an oral hearing. The matter was set down for a hearing in Canberra on 20 March 2019. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 17 January 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent indicated that it did not wish to appear at the oral hearing but filed written submissions on 4 March 2019 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 13 March 2019 (‘Applicant’s Submissions’).  At the hearing Shauna Ross of Counsel represented the Applicant, appearing in person. 

   5. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the oral submissions made at the hearing on 20 March 2019:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support

   ·The Applicant’s Evidence in Answer;

   ·The Opponent’s Evidence in Reply;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Law

   6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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.

   7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 20 September 2017 (‘relevant period’).

   8. 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,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act.

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   …
    (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (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)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[2]

   11.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

   Opponent’s Evidence

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [4] Nodoz Trade Mark (1962) RPC 1, 7.

2. The Opponent’s evidence in this matter consists of a declaration made on 11 May 2018 by Glenn William Davies, the Opponent, with Annexures 1-9 (‘Davies 1’) and a declaration made on 1 August 2018 by Glenn William Davies, with Annexures 1-5 (‘Davies 2’).     

3. Davies 1 and 2 contain the following statements/evidence:

   ·Since 1994 the Opponent has used the Trade Mark on the Opponent’s entire manufactured agricultural machinery range of wipers, which consist of a 9 metre trailing blanket weed wiper with folding frame and 2.5 and 3.5 metre fixed wipers.  Each of these products bear the word ‘Terminator’. 

   ·The Opponent uses the Trade Mark on its products, invoices, e-mails, instructions for use and promotional material.  It has also used the Trade Mark in various field days and agricultural shows.  Numerous websites show the use of the Trade Mark in connection with the Registered Goods.

   ·The Opponent has used the Trade Mark less frequently in recent years due to having to care for several dying family members and defending two court actions.

   ·Alex Olsen, the individual mentioned in the evidence in answer, has written to the Opponent confirming that his business now has its own trade mark and branding separate to the Trade Mark.

4. Davies 1 contains, as annexes, a design for what appears to be a ‘wiper’ being a machine for herbicide application, and invoices dated within the relevant period for products described as ‘Davies Weed Terminator’. The annexes also contain e-mails that post-date the relevant period between the Opponent and potential customers for the Davies Weed Terminator and promotional material.  Almost all reference in the materials annexed to Davies 1 refers to the product offered as the ‘Davies Weed Terminator’.  Annex 6 to Davies 1 consists of an undated document described as a promotional pamphlet.  This pamphlet makes several references to the ‘Davies Weed Terminator’ and then, in less prominent locations, three references to ‘terminator(s)’.

   Applicant’s Evidence

5. The Applicant’s evidence in this matter consists of a declaration made on 12 June 2018 by Mark Ashenden, a director of the Applicant, with Exhibits MA-1 to MA-2 (‘Ashenden Declaration’).    

6. The Ashenden Declaration states that the word ‘terminator’ is a commonly used term that is widely used in respect of agricultural machines, herbicides and agricultural services related to the destruction of weeds and weed seeds.  It annexes documents that refer to a ‘weed terminator’ built by a Mr Alex Olsen and a team at James Cook University as well as various other uses of the word ‘terminator’ in respect of weed killer products.

7. The Opponent’s Submissions also note that the Applicant has a product called ‘Seed Terminator’ and has applied for a trade mark for SEED TERMINATOR (Application number 1825760).

   Discussion

8. To successfully oppose the application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use) or, in the event that the Opponent fails to establish such use, the Registrar exercises its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

9. I find that the Opponent has established that during the relevant period, the Opponent has been engaged in selling the Registered Goods in Australia under the name ‘Davies Weed Terminator’ (‘DWT Mark’).  The Applicant has provided clear, dated invoices that indicate the sale of the Registered Goods under the DWT Mark to clients in Australia during the relevant period.  Virtually all marketing materials and other documentation provided by the Opponent refer to the Opponent’s products as the ‘Davies Weed Terminator’ and not ‘Terminator’. 

10. I am not satisfied that the Opponent has established that he has used the word ‘Terminator’ by itself, as a trade mark in the relevant period.  The only example of use is on a single promotional pamphlet that is undated.  Furthermore I am not satisfied that any examples of use provided in the Opponent’s evidence amount to use of two separate marks, namely ‘davies weed’ and ‘terminator’. On the facts before me I do not consider that the word ‘terminator’ operated as a separate mark, rather it operated in combination with the words ‘davies weed’ as a single mark.  I note that if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’[5], and the single undated pamphlet provided by the Opponent is not such conclusive proof.

    [5] Nodoz Trade Mark (1962) RPC 1, 7.

11. I note for completeness the Opponent’s statements in his evidence to the effect that his use of the word ‘terminator’ in the various annexes is use of the Trade Mark.  It is a well-established proposition that use of a trade mark is to be determined objectively without reference to the subjective trading intentions of the user[6] and on an objective analysis of the use as presented in the Opponent’s evidence, the mark that has been used is the DWT Mark.

    [6] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, [33].

12. As such the question is whether the Opponent’s use of the DWT Mark on the Registered Goods during the relevant period is use of the Trade Mark under s 100(3)(a) of the Act. Section 7(1) of the Act provides:

    Use of trade mark

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

13. I must therefore be satisfied that the addition of the words ‘Davies Weed’ do not substantially affect the identity of the Trade Mark.  The test to be applied here is whether there is substantial identity between the Trade Mark and the DWT Mark[7] with the test for substantial identity being set out below

    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.[8]

    [7] Link Recruitment Pty Ltd v Link Employment And Training Inc (2006) 69 IPR 614, 619 [21]-[22].

    [8] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

14. To assist the side by side comparison I have reproduced the Trade Mark and the DWT Mark below:

    TERMINATOR     DAVIES WEED TERMINATOR

15. On a side by side comparison there is a clear difference between the respective trade marks, being the addition of the words ‘DAVIES WEED’.  In particular the addition of the word ‘DAVIES’ which is not descriptive in any way of the Registered Goods, results in a completely different mark.  The differences between the respective trade marks are sufficient for me to conclude that the trade marks are not substantially identical and hence that the Opponent’s use of the DWT Mark during the relevant period is not use of the Trade Mark.

16. As the Opponent has supplied no evidence of use of the Trade Mark (as opposed to the DWT Mark) on the Registered Goods during the relevant period I find that the Opponent has failed to satisfy the onus under s 100(3)(a) of the Act.

    Obstacles to use

    28. The Opponent does not formally submit that certain personal issues raised in the evidence amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) of the Act. However in the interests of completeness I note that the Opponent’s personal issues have not prevented him from selling the Registered Goods in Australia under the DWT Mark. As such the failure of the Opponent to use the Trade Mark in the relevant period did not arise from those personal matters, but a business decision by the Opponent to use the DWT Mark and not the Trade Mark on its products. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Registered Goods to remain on the Register.

    Registrar’s Discretion

    29.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[9] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    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 [or Registrar] 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.[10]

    [10] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[11]

    [11] Ibid [171]-[172].

17. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[12] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[13] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[14]

    [12] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [13] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [14] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

    31.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[15]

    [15] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

    32.     The evidence in Davies 1 and 2 illustrates some limited use of the DWT by the Opponent on the Registered Goods.  The Opponent, given its continued and longstanding use of the DWT Mark may well be able to register it as a trade mark, however there is no evidence of any use of the Trade Mark on the Registered Goods either before, during or after the relevant period, nor any reputation in the Trade Mark such that consumers, when seeing the Trade Mark, would think of the Opponent, as opposed to the various other entities, as set out in the Ashenden Declaration, that offer some form of weed killing products using the word ‘terminator’. 

    33.     It is highly unlikely that the public would be affected in any way by the removal from the Register of a trade mark which does not appear to have been used and which is not therefore known by the public at all.  While the Opponent may have some private commercial interest in maintaining the registration of the Trade Mark in Australia for the Registered Goods, given the complete lack of use of the Trade Mark in Australia (and indeed the Opponent’s use of a different mark as the identifier of its products), the Opponent’s private commercial interest is insufficient to outweigh the public interest of the integrity of the Register.  In those circumstances I am not prepared to exercise the Registrar’s discretion.

    Decision

    34.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the goods for which it is registered.

1. Accordingly, I direct that registration 635379 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   36. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 635379 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions  
   7 May 2019