Opposition by Muller et Cie to application under section 92 of the Act by Arlec Australia Pty Ltd. to remove trade mark number 1279016 (IRDA 986923) (9, 11) – AIRELEC - in the name of Muller et Cie.

[2021] ATMO 17

TRADE MARKS ACT 1995

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

Re: Opposition by Muller et Cie to application under section 92 of the Act by Arlec Australia Pty Ltd. to remove trade mark number 1279016 (IRDA 986923) (9, 11) – AIRELEC - in the name of Muller et Cie.

Delegate:	Bianca Irgang
Representation:	Opponent: Not present at the hearing Non-Use Applicant: Garry Fitzgerald of Counsel instructed by Ponte TM Logic Trade Mark Law
Decision:	2021 ATMO 17 Trade Marks Act 1995 (Cth) –Application under section 92(4)(b) – No use established during the relevant period on any of the goods – extension of protection to cease – Trade Mark to be removed.

Background

1. This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(b) filed on 30 May February 2019, Arlec Australia Pty Ltd. (‘the non-use applicant’) has sought the removal from the Register of the AIRELEC (‘Trade Mark’) appearing below in respect of all the goods in classes 9 and 11 for which it is registered:

Trade mark:  AIRELEC

Trade mark number:  1279016 (IRDA 986923)                

Date of registration:  10 October 2008

Goods:Class 9: Apparatus and instruments for regulating and controlling electricity; control, remote-control and monitoring equipment for heating apparatus; electrical and electronic boxes for regulating heating apparatus; power cut-off devices; electrical resistors; thermostats; electric switches, all these goods being designed for equipping and regulating heating apparatus

Class 11: Heating, steam generating, cooking, refrigerating, drying, ventilating, air conditioning, water supply and sanitary installation apparatus and installations; heating apparatus and installations; heat pumps; apparatus for the recovery, concentration and/or separation of heat and/or cold; boilers, water heaters; radiators, heating panels, convectors; air conditioning apparatus and systems; heating cables

1. Muller et Cie (‘the opponent’) filed a Notice of Intention to Oppose Removal on 31 July 2019 followed by a Statement of Grounds and Particulars on 15 October 2019.

2. The Statement of Grounds and Particulars asserted that the grounds on which the non-use applicant relied were not relevant because on the day the Trade Mark was lodged, the opponent had an intention to use the Trade Mark in Australia in respect of the goods, the subject of the removal application.  The opponent asserted that it has used the Trade Mark in Australia in respect of heating apparatus commencing prior to and continuing for several years after the Trade Mark was lodged in 2008. In Australia, the opponent’s primary distributor was Skope Industries Limited (‘Skope’). The Trade Mark or the Trade Mark with additions or alterations not affecting its identity, has allegedly been used, and used in good faith by the opponent in Australia by way of, inter alia markings on the goods and in catalogues, radio and television advertisements.

3. On 1 November 2019 the non-use applicant filed its Notice of Intention to Defend. The opponent then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

4. The matter came before me for a decision, as a delegate of the Registrar of Trade Marks on 8 November 2020. Garry Fitzgerald of Counsel instructed by TM Logic Trade Mark Law appeared on behalf of the non-use applicant.  The opponent was not present at the hearing and did not file any written submissions for consideration.

Legal Framework

1. Partt 17A Div 5 of the Regulations governs the removal of IRDA trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Section 92 provides, inter alia, that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and services in respect of which the Trade Mark is registered. Subsection 92(4)(b) as it is relevant to this case provides the following:

   (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:

   (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] Regulations 9.1 to 9.4 are relevant here.

3. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:

   Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

   The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, 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.”

   The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

   [2] [2015] ATMO 10 [6] – [9]

4. Further, section 101 of the Act deals with the Registrar’s discretion:

   Determination of opposed application—general

   (1) Subject to subsection (3) and to section 102, if:

   (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b) the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   (3) 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.

   (4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

   (a)  similar goods or closely related services; or

   (b)  similar services or closely related goods;

   to those to which the application relates.

   Note 1:       If 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 (see subsection 7(3)).

   Note 2:       For registered owner see section 6.

5. In Pioneer Computers Australia Pty Ltd v Pioneer KK[3]  Bennett J made the following observations concerning the Registrar’s discretion:

   [3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354

   [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 Company 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).

   […]

   [171] 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. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

Evidence

Evidence in Support

• Statutory Declaration of Russell John Waters (‘Waters’) dated 6 February 2020 with Exhibits RJW-1 to RJW-3

Discussion

1. To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the goods covered by the registration within the period of three years ending one month before the day on which the non-use application was filed (‘the relevant period’). The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponent more likely than not used the Trade Mark during the relevant period. This arises by virtue of section 100(1)(c) of the Act.

2. The main arguments advanced by the non-use applicant in this case are that:

• The opponent has not used the Trade Mark on the registered goods during the relevant period;

• There is very little use of the Trade Mark demonstrated in the evidence and it is limited to a catalogue by Skope which is dated 2011 which is outside of the relevant period; and

• There is no evidence of any licensing between the opponent and Airelec Industries concerning the Trade Mark.  There is therefore no proper basis for confirming that any conditions of use by the opponent, or authorised use by Airelec Industries, have been satisfied for the purpose of ss 7 and 8 of the Act.

1. In order to determine whether or not the opponent has used its Trade Mark in good faith during the relevant period, I turn to the evidence in the Waters declaration. The Waters declaration states that the Trade Mark has been used in France for more than 60 years by the opponent or Airelec Industries. Airelec Industries was established in Paris in 1958. By 1997, Airelec Industries had enlarged its production and become a market leader in France. Mr Waters asserts that the opponent is one of the biggest manufacturers of electrical heating systems worldwide and that they acquired Airelec Industries in 1997. Mr Waters asserts that all of the AIRELEC products are produced in France and that they are then exported to approximately 50 countries worldwide.

2. In support of his statements, Mr Waters included exhibit RJW-1 which contains copies of various catalogues showing use of the Trade Mark on goods distributed in Australia and New Zealand between 2001-2007 and in 2011 by the opponent’s authorized distributor, Skope. According to Mr Waters, sales of goods in Australia and New Zealand bearing the Trade Mark in 2012 were reasonable.

3. Further to this, Mr Waters claims that the Trade Mark has a continuing reputation in Australia through references in third party websites. .Exhibit RJW-2 contains a copy of a webpage from the Australian website of Ecospecifier Global, an organization that researches and assesses ecologically friendly building options. The website currently refers to SKOPE-AIRELEC heaters but I note that the website also advises that any information relating to the SKOPE AIRELEC heaters was last verified on 18 February 2011.

4. In considering this evidence put forward by the opponent, I am very aware that the evidence of use is from 2011 at the latest. This is well outside the relevant period and there is no evidence before me of any use of the Trade Mark in Australia during the relevant period.

5. It is clear that the website of Ecospecifier Global currently refers to SKOPE-AIRELEC heaters, however, this information was last verified or checked in 2011. Is this use of the Trade Mark because the advertisement could potentially be accessed by consumers during the relevant period? I do not believe it is.

6. I am satisfied that, taken at its best, this evidence from the website of Ecospecifier Global is an example of a passive historical snapshot of the opponent’s activities in 2011 and that the opponent is no longer actively promoting or using to sell its goods to Australian consumers. While a consumer may be able to stumble across the reference to the Trade Mark on the Ecospecifier Global website, this is not sufficient to demonstrate genuine commercial use of the opponent’s Trade Mark in relation to any of the registered goods within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & CoLtd[4]. I am not satisfied that the opponent has demonstrated genuine commercial use of the Trade Mark in relation to any of its goods during the relevant period.

   [4] [1982] FSR 72

Registrar’s Discretion

1. There is a discretion embodied in subsection 101(3) of the Act.

   (3) 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. The application for cessation of protection is for all of the registered goods. The opponent has not specifically requested the Registrar’s discretion in relation to its Trade Mark. However, given Mr Waters statements about the opponent having a continuing reputation in its Trade Mark due to its presence on the Ecospecifier Global website and the number of trade mark registrations the opponent maintains around world, I will consider these statement with the Registrar’s discretion in mind.

3. The opponent’s evidence establishes that the Trade Mark has not been actively used or promoted in Australia since 2011. While Mr Waters advises that a reasonable number of sales were made in Australia and New Zealand during 2012, none of these figures are broken down so that I may determine how many of these sales took place between the opponent and customers within Australia. This is simply not enough to demonstrate that I should use the Registrar’s discretion to not remove the Trade Mark. I note that the opponent does have a number of Trade Mark registrations across the world, however, this is also not a sufficient reason for maintaining a Trade Mark registration in Australia when the opponent does not use its Trade Mark in Australia.

4. The purpose of section 92 of the Act is to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark. Accordingly, the Registrar’s discretion should not be exercised liberally and the opponent bears the onus of satisfying the Registrar that the discretion should be exercised in its favour. I am not satisfied by the evidence before me that it is reasonable to exercise that discretion.

Decision

1. I find the opponent has not rebutted the allegation of non-use. I direct extension of protection to Australia of Trade Mark 1279016 (IRDA 986923) shall cease after one month from the register in respect of all the goods to which the registration applies, one month from the date of this decision. In the event of an appeal, I direction that the Trade Mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the trade mark be subject to that order.

Costs

1. 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 opponent as allowed by Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
26 February 2020