Opposition by Planet Plumbing SW Works Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Green Planet Maintenance Pty Ltd to remove trade mark number 812026 (class 37) – PLANET PLUMBING...
[2021] ATMO 32
•23 April 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Planet Plumbing SW Works Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Green Planet Maintenance Pty Ltd to remove trade mark number 812026 (class 37) – PLANET PLUMBING PTY LTD with character device - in the name of Anthony Alafaci and trade mark number 1319175 (class 42) – PLANET PLUMBING PTY LTD with planet device - in the name of Planet Plumbing Pty Ltd
Delegate: | Nicholas Barbey |
Representation: | Opponent: Michael Swanson of counsel instructed by Keystone Lawyers Applicant: Edward Thompson of counsel instructed by Gorton IP |
Decision: | 2021 ATMO 32 Trade Marks Act 1995 (Cth) – applications under section 92(4)(b) – no use of either trade mark demonstrated – discretion not exercised – trade marks to be removed |
Background
On 27 June 2019, Green Planet Maintenance Pty Ltd (‘Applicant’) filed two applications based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking complete removal of trade mark registrations 812026 and 1319175 from the Australian Register of Trade Marks (‘Register’). The applications were made in respect the following trade mark registrations (together ‘Trade Marks’).
Trade Mark: (‘Character Mark’)
Owner: Anthony Alafaci
Registration Number: 812026
Filing Date: 29 October 1999
Specification: Class 37: Plumbing, including general plumbing maintenance; drainage; gasfitting and roofing services
Trade Mark: (‘Planet Mark’)
Owner: Planet Plumbing Pty Ltd
Registration Number: 1319175
Filing Date: 7 September 2009
Specification: Class 42: Logo design services
On 22 July 2019, Planet Plumbing SW Works Pty Ltd (‘Opponent’) filed notices of intention to oppose both applications and subsequently filed statements of grounds and particulars on 21 August 2019. In turn, the Applicant filed notices of intention to defend both applications on 22 October 2019.
The evidence stages followed and they comprised of:
| Evidence in Support (‘EIS’) |
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| Evidence in Answer (‘EIA’) |
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| Evidence in Reply (‘EIR’) |
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The parties requested to be heard. The Opponent filed submissions on 1 February 2021 (‘Opponent’s Submissions’) and the Applicant filed submissions on 9 February 2021 (‘Applicant’s Submissions’). A supplementary document listing trade marks that were considered not to be substantially identical[1] was also filed by the Applicant on 14 February 2021.[2] As a delegate of the Registrar of Trade Marks, I heard both matters via video link on 15 February 2021. The Opponent was represented by Michael Swanson of counsel and Alexander Kontekakis of Keystone Lawyers. The Applicant was represented by Edward Thompson of counsel and Michelle Gorton of Gorton IP. Mr Alafaci was also in attendance as an observer.
[1] See Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 74 IPR 246; Apple Inc v HealthKit Pty Ltd (2017) 130 IPR 237; David Francis Mair v Data Republic Pty Ltd (2019) 146 IPR 463; Craig Somers and Paul Fountain v Greenbelt Pacific Pty Ltd (1998) 42 IPR 587; Loco Liquor Pty Ltd v 4 Brothers Brewing Pty Ltd (2018) 142 IPR 477; 1-800-flowers.com Inc v Flowerscorp Pty Ltd (2013) 102 IPR 114; Intellectual Property Development Corporation Pty Ltd v Reynolds Consumer Products (2015) 114 IPR 164; Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 209 ALR 1.
[2] The Opponent was granted additional time after the hearing to provide a written response to the listed trade marks but ultimately declined to file further submissions.
The relevant statutory provisions
Section 92 of the Act relevantly provides:
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:
…
(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.
The onus rests with the Opponent to rebut the non-use allegations made under s 92(4)(b). This is set out in s 100 of the Act which relevantly provides:
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.
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)).
…
(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
Section 101 provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any, or all, of the services for which they are registered. This includes the option to decline removal of the Trade Marks from the Register even if the grounds on which the non-use applications were made are established.[3]
[3] The Act s 101(3).
Grounds and relevant period
The non-use applications were filed on 27 June 2019 and comply with s 93(2) of the Act.[4] Pursuant to s 92(4)(b) of the Act, the period in which the Opponent must establish use of the Trade Marks in good faith is the three year period ending on 27 May 2019 (‘Relevant Period’).
[4] See the Act s 93(2) as it stood prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Schedule 1, Part 3).
I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[5]
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] in respect of oppositions under s 52 of the Act.
Evidence
The Opponent’s evidence
According to the EIS, the Opponent has operated under the business name ‘Planet Plumbing’ since December 1995 and it has offices nationwide. Mr Alafaci declares that the Character Mark and the Planet Mark have been continuously used since October 1999 and September 2009, respectively. He characterises the services provided by the Opponent as including ‘plumbing, hydraulic and mechanical services’.[6]
[6] See Alafaci 1, [5]; Alafaci 2, [5].
Consumers interact with the Opponent through its website, social media and professional networking platforms. Screenshots of each are provided in the EIS. Mr Alafaci believes that the Opponent has made significant investments in terms of effort, time and expenditure to promote the services provided under the Trade Marks. On this basis, he concludes that the Opponent has acquired a strong reputation in the Trade Marks and reference is made to three testimonial letters received from its customers.
In May 2019, the Opponent’s solicitors issued a letter of demand to the Applicant requesting that it cease and desist from operating its business under the name ‘Green Planet Plumbing’. Mr Alafaci states that the Applicant did not respond to this letter nor did it comply with the request. Instead, the Applicant sought registration of two trade marks incorporating the words ‘green planet plumbing’.[7]
[7] See Australian trade mark application numbers 2014075 for ‘GREEN PLANET PLUMBING’ and 2014078 for ‘GREEN PLANET PLUMBING’ with device. Both applications are made in respect of classes 35 and 37 and have been made in the name of ‘Dan Murray’.
The EIR reiterates statements made in the EIS and asserts that the Opponent has continued to use the words ‘Planet Plumbing Pty Ltd’ since the EIS was filed. Mr Alafaci explains that the Opponent’s solicitors undertook an internet search for the words ‘Planet Plumbing’ as well as a Wayback Machine internet archive search of the domain name The results of these searches are provided in the EIR.
The Applicant’s evidence
Two issues are highlighted by the EIA. First, Ms Gorton’s searches indicate that the Trade Marks have not been used during the Relevant Period. Second, the following trade mark is seemingly being used by the Opponent:
Trade Mark: (‘PPG Mark’)
Owner: Planet Services Group Pty Ltd
Registration Number: 1373288
Priority Date: 28 July 2010
Specification: Class 42: Logo design services
Use of the Trade Marks in the Relevant Period
From the outset, I note the evidence filed demonstrates use of the PPG Mark and there are no examples demonstrating use of the Trade Marks, as they appear on the Register, during the Relevant Period. A solitary example of the Planet Mark appears in the evidence; however, it significantly predates the Relevant Period.[8] Meanwhile, there is no documented use of the Character Mark nor is there documented use of any trade mark for logo design services.
[8] See Annexure C to Alafaci 3 and Alafaci 4. The relevant Wayback Machine extract in each annexure is dated 27 October 2009.
Nevertheless, the Opponent maintains that the Trade Marks have been used during the Relevant Period, albeit with additions or alterations that do not substantially affect their identity. In the Opponent’s view, the PPG Mark exemplifies such use. The Opponent contends that the Trade Marks are comprised of two components, namely the term ‘Planet Plumbing’ and a device. Their identity, so the argument goes, resides in the term ‘Planet Plumbing’ because this component indicates the origin of the services whereas the device component, be it the planet or character, simply adds ‘flavour and emphasis to the word “Planet”’.[9] Put another way, the Opponent asserts that the removal of the device component does not change the identity of the Trade Marks.[10] As the PPG Mark is similarly constituted and the term ‘Planet Plumbing’ remains constant, the Opponent’s position is that use of the PPG Mark is use of the Trade Marks for the purposes of the Act.
[9] Opponent’s Submissions, [19].
[10] Opponent’s Submissions, [21]-[22].
The Applicant contends that the PPG Mark incorporates significant alterations and constitutes a new trade mark which bears no resemblance to the Trade Marks other than containing the words ‘planet’ and ‘plumbing’. Specifically, the Applicant points out that the Character Mark depicts a prominent ‘super hero type figure creating electricity from a planet’[11] which contributes substantially to its identity and shares no likeness to the PPG Mark. In the Applicant’s view, similar considerations apply to the Planet Mark when compared to the PPG Mark. Consequently, the Applicant submits that the evidence fails to demonstrate any use of the Trade Marks during the Relevant Period and highlights that no circumstances have been raised as obstacles to use of the Trade Marks.[12]
[11] Applicant’s Submissions, [24].
[12] The Act s 101(3)(c).
A central point of divergence between the parties is what test should be adopted to determine whether ‘additions or alterations’ substantially affect the identity of a trade mark. At the hearing, Mr Swanson posited that it is the perception of consumers and whether they are likely to identify the trade origin of the services which is paramount to assessing if a trade mark’s identity has been substantially affected. In contrast, Mr Edwards advocated that the trade marks should be considered side by side to establish whether substantial identity exists. For the reasons that follow, Mr Edward’s position is preferable.
The expression ‘additions or alterations’ appears in ss 100(3)(a) and 7(1) of the Act and it has been the subject of judicial consideration. In Sports Warehouse Inc v Fry Consulting Pty Ltd, Kenny J stated:
Windeyer J’s statement of the test for substantial identity (see s 44 of the Act) in Shell Co (Aust) Ltd v Link Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 is also a guide as to whether “a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark” (s 7(1)): see also Link Recruitment Pty Ltd v Employment and Training Inc [2006] ATMO 39; (2006) 69 IPR 614 at [21]- [22] (Hearing Officer Nancarrow). Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]
[13] [2010] FCA 664, [154].
Likewise, in Optical 88 Ltd v Optical 88 Pty Ltd (No 2), Yates J treated the expression ‘additions or alterations’ under s 7(1) as being equivalent to the question of ‘substantial identity’ which arises under s 44 of the Act. Relevantly, Yates J observed:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: [Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936] at 391; [The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407] at 414.[14]
[14] [2010] FCA 1380, [256].
Accordingly, the relevant test is whether there is substantial identity between the PPG Mark and the Trade Marks. The formulation of this test is disclosed in the second sentence of Kenny J’s statement reproduced at [19] of this decision. For convenience, the Trade Marks and the PPG Mark are set out below:
| Character Mark | PPG Mark |
| Planet Mark |
A side by side comparison reveals obvious similarities between the trade marks insofar as each features the word ‘planet’ positioned above the word ‘plumbing’ accompanied by an entity indicator. However, several differences are evident with the most notable being the distinctive device present in each trade mark. The device depicted in the Character Mark resembles a superhero character, set against lighting strikes, holding aloft an object. Meanwhile, the device appearing in the Planet Mark is a partial representation of Saturn. Each of these devices clearly differ to the device present in the PPG Mark, namely a stylised letter ‘P’. The devices in each trade mark are distinctive of the respective services and are prominently positioned such that they would immediately strike the consumer’s eye. As such, they constitute an essential feature within each trade mark. Consequently, I consider a total impression of dissimilarity emerges between the respective trade marks when regard is had to the essential features of the Character Mark, the Planet Mark and the PPG Mark.
The Opponent also drew attention to E & J Gallo Winery v Lion Nathan Australia Pty Ltd (‘Gallo’)[15] wherein the High Court determined that the addition of a stylised bare foot device to a trade mark for the word ‘BAREFOOT’ did not substantially affect its identity ‘because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT’.[16] The Opponent submitted that the converse situation to Gallo must be possible. That is, circumstances must exist where removing a device from a composite trade mark would not substantially affect its identity and, by extension, a substitution of the device may also be permissible. On this basis, the Opponent pressed that the current situation demonstrates these circumstances because consumers are likely to identify the Trade Marks by reference to the distinctive term ‘Planet Plumbing’ irrespective of the device component.[17]
[15] [2010] HCA 15 (‘Gallo’).
[16] Gallo (n 15) [69] (French CJ, Gummow, Crennan and Bell JJ).
[17] Opponent’s Submissions, [22].
In my view, Gallo does not provide authority to the effect that substituting a device in a composite trade mark will not substantially affect its identity provided the distinctive words remain constant. The Opponent’s reference to Gallo appears in the following context:
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).[18]
[18] Gallo (n 15) [69] (French CJ, Gummow, Crennan and Bell JJ) (emphasis added).
Given the above, Gallo can be readily distinguished from the present matter. First, neither the character device nor the planet device is an illustration of the words ‘Planet Plumbing’. Second, the registration of the words ‘Planet Plumbing’ solus is not likely to preclude other traders from registering the character device or the planet device solus (or vice versa). Third, for the reasons outlined at [22] of this decision, the character and the planet devices are separate features which distinguish the respective services and substantially affect the identity of the Trade Marks. There is no reasonable basis to characterise either device as generic or utterly descriptive of the relevant services.[19] Finally, even if I were to accept that the registration of the Trade Marks bestowed a monopoly wide enough to include the words ‘Planet Plumbing’ solus, the PPG Mark nevertheless presents an additional obstacle given it incorporates the addition of a stylised letter ‘P’ which plainly qualifies as a distinctive device and possesses no descriptive reference to the services.[20]
[19] Cf PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [32].
[20] Cf Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [207]-[213].
Consequently, I find use of the PPG Mark is not use of the Trade Marks for the purposes of the Act because the differences between them substantially affect their identity. It follows that the Opponent has not provided any evidence of use of the Trade Marks (as opposed to the PPG Mark) during the Relevant Period. As such, the Opponent has failed to rebut the non-use allegations made by the Applicant under s 92(4)(b) in relation to the Trade Marks.
Registrar’s discretion
The Registrar has a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so. This discretion is limited only ‘by the subject-matter, scope and purpose of Part 9 of the Act’.[21] To this end, the Full Court has observed:
The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.[22]
[21] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].
[22] Ibid [38].
The Opponent contends that several factors weigh in favour of the discretion being exercised to retain the Trade Marks on the Register. It stresses that the Trade Marks have not been abandoned. Rather, they have undergone minor updates in line with common business practices in order to ‘best suit advertising times’.[23] The Opponent points out that the term ‘Planet Plumbing’, in combination with different devices, has always been used prior to and during the Relevant Period. The Opponent further submits that ‘Planet Plumbing has a strong and well known reputation in the industry’[24] and this alleged reputation is reflected in the testimonial letters provided in the EIS. The implication being that the Opponent will suffer considerable detriment if the Trade Marks are removed from the Register.
[23] Opponent’s Submissions, [36].
[24] Opponent’s Submissions, [35].
Conversely, the Applicant submits that no rational basis exists to allow the Trade Marks to remain on the Register. Specifically, the evidence shows that the Trade Marks have been abandoned given they have not been used for at least a decade and, tellingly, no evidence of an intention to resume use has been disclosed. With respect to the alleged reputation enjoyed by ‘Planet Plumbing’, the Applicant asserts that this is not substantiated by the evidence. Indeed, it claims the Opponent’s real purpose in the current matter is to protect the words ‘Planet Plumbing’ and not the Trade Marks as they appear on the Register. As such, the Applicant believes that the public interest dictates that the Trade Marks be removed.
The submissions advanced by the Applicant are compelling. Based on the evidence filed, it is more probable than not that the Opponent has abandoned the Trade Marks. Naturally, this weighs against exercising the discretion in favour of the Opponent. As outlined at [15] of this decision, the Character Mark does not appear in the evidence filed. Meanwhile, a solitary example of the Planet Mark appears in the EIS, however, it significantly predates the Relevant Period and fails to demonstrate use in relation to logo design services. In this regard, at the hearing Mr Swanson conceded the Opponent does not provide such services. In my view, even if I were to assume that use of the Trade Marks did in fact occur, any such use seemingly discontinued in or around 2010. At this point, the evidence demonstrates that the Opponent adopted the PPG Mark and proceeded to exclusively use same albeit in relation to a subset of services rather than the full spectrum of services for which both Trade Marks are registered. Indeed, this period coincides with the filing date of the application for the PPG Mark.
As regards to the alleged reputation in ‘Planet Plumbing’ enjoyed by the Opponent, there is insufficient evidence to substantiate this claim. The Opponent has not particularised its expenditure incurred in promoting the Trade Marks. Instead, Mr Alafaci simply provides a lump sum figure that represents what the Opponent has invested in the past, without particularising what timeframe and/or services this figure corresponds to. Likewise, no revenue figures have been disclosed nor have any promotional materials been provided. Meanwhile, the three testimonial letters provided by the Opponent, in isolation, do not provide a cogent basis to infer that a reputation exists in the Trade Marks or, for that matter, the PPG Mark. This is because the letters do not refer to the Trade Marks or PPG Mark. Indeed, one letter consistently refers to the Opponent as either ‘Planet’ solus or the letters ‘PP’. Further, it is unclear whether the services provided by the Opponent, as mentioned in the three testimonial letters, fall within the Relevant Period given only one of the letters is dated.
Accordingly, I am not satisfied that it is reasonable to exercise the discretion available under s 101(1) of the Act in favour of the Opponent to allow the Trade Marks to remain on the Register. As such, I decline to exercise the discretion.
Decision
The ground for removal under s 92(4)(b) of the Act has been established in respect of each non-use application. As such, I direct that trade mark registrations 812026 and 1319175 be removed from the Register one month from the date of this decision. In the event of an appeal from this decision, trade mark registrations 812026 and 1319175 shall not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registrations will be subject to that decision.
Costs
Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, in respect of trade mark registration 812026, I award costs against the Opponent as per s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth). In respect of trade mark registration 1319175, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[25]
[25] [2001] ATMO 78.
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
23 April 2021
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