Opposition by Pump Factory Pty Ltd and Zoran Kacavenda to application under section 92 of the Trade Marks Act 1995 (Cth) by TP-LINK Research America Corporation to remove trade mark number 1500578 (class 9) – kasa...

[2021] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Pump Factory Pty Ltd and Zoran Kacavenda to application under section 92 of the Trade Marks Act 1995 (Cth) by TP-LINK Research America Corporation to remove trade mark number 1500578 (class 9) – kasa - in the name of Pump Factory Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Self-represented.  

Applicant: Written submissions by Madderns.

Decision:

2021 ATMO 88

Trade Marks Act 1995 (Cth) – application under section 92 – no evidence of use of trade mark during relevant period – discretion not exercised - trade mark removed.

Background

1. TP-LINK Research America Corporation (‘Applicant’) filed an application (‘Application’) on 8 January 2020 for removal of the trade mark ‘kasa’ (‘Trade Mark’), registered under trade mark number 1500578 in the name of Pump Factory Pty Ltd (‘Owner’). The Trade Mark is registered for the following goods:  

   Class 7: Electric and electronic locks for use on entry doors to buildings, but not for use on safes or secure containers for money or valuables

   (‘Goods’)

2. On 3 February 2020, a notice of intention to oppose the Application and a statement of grounds and particulars was filed jointly by the Owner and Mr Zoran Kacavenda (together, the ‘Opponents’). The Applicant filed a notice of intention to defend the Application from opposition on 24 March 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16 of the Trade Marks Regulations1995.[1] The Opponents filed Evidence in Support on 20 April 2020. The Applicant filed Evidence in Answer on 30 September 2020. The Opponents did not file Evidence in Reply.

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

4. The parties were given the opportunity to be heard. The Opponents did not request an oral hearing or file written submissions. The Applicant elected to file written submissions only. As such, I will decide this opposition on the basis of the particulars in the SGP, the evidence of the parties, and the submissions of the Applicant.  

5. As the Application was filed on 8 January 2020, for the purposes of deciding this opposition, the relevant period is the three-year period ending on 8 December 2019 (‘Relevant Period’). 

Evidence

1. The following declarations were filed as evidence:

   Evidence in Support (‘EIS’)

   Declaration of Zoran Kacavenda, co-opponent and director of Owner, made on 20 April 2020.

   Evidence in Answer (‘EIA’)

   Declaration of Megan Ryder, trade marks attorney for the Applicant, made on 30 September 2020 with Exhibit MAR1.

2. Mr Kacavenda declares in the EIS that the Owner was at the date of his declaration using the Trade Mark in relation to electronic locks including fingerprint and keypad locks for doors. Mr Kacavenda provides a link to a website and annexes a website extract which advertises a product ‘New 2020 Fingerprint / Biometric Door Lock with Keypad / Key Over-Ride’.

3. Ms Ryder in the EIA declares that her firm engaged Trademark Investigation Services (‘TMIS’) in December 2019 to conduct enquiries whether the Trade Mark was in use at that time or had been used in the previous three years. Annexed to her declaration is the TMIS report, which indicates that TMIS located no use of the Trade Mark in relation to the Goods, and that telephone enquiries indicated that any relevant use had been ‘many moons ago’.

Grounds, onus and standard

1. The 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.

2. The allegation of non-use during the Relevant Period is for the Opponents to rebut.[2] The Opponents rely on use of the Trade Mark for the rebuttal.[3] However, I also have a discretion to allow the Trade Mark to remain registered even if there has been no use of the Trade Mark during the Relevant Period.

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

   [3] Ibid s 100(3)(a).

3. All findings of fact in these reasons are based on the ordinary civil standard of the balance of probabilities.

Discussion

Use of the Trade Mark during the Relevant Period

1. I must first decide whether there has been use of the Trade Mark by the Owner, 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.

2. The ‘use’ required to be demonstrated by either the owner or an authorised user 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).

3. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[5] A trade mark may be used in relation to goods where it is included in an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[6]

   [5] Trade Marks Act 1995 (Cth) ss 7(4), 92(4)(b).

   [6] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd [1974] HCA 51 (Jacobs J).

4. The EIS does not establish that the Trade Mark was used in relation to the Goods during the Relevant Period. No dated invoices, transaction records, or other relevant documents have been provided which indicate that products were sold by reference to the Trade Mark between December 2016-2019. Further, the website extract provided is undated, and in any event, refers to a ‘New 2020’ door lock. This indicates that the product was either put on sale after the end of the Relevant Period, or the advertisement was a defensive action by the owner in response to the filing of the Application.

5. As I am not satisfied that there has been use of the Trade Mark in the Relevant Period in relation to the Goods, I must now consider whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered.

Discretion

1. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[7] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[8] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[9]

   [7] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

   [8] Ibid [69].

   [9] [2002] FSR 51 (Ch) 790, [19].

2. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, 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. 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.[10]

   [10] [2008] FCA 934, [210] (citations omitted).

3. The Opponents bear the onus of establishing that the discretion should be exercised in their favour: it is not for the Applicant to establish that it should not.[11]

   [11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

4. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

• whether there has been abandonment of the trade mark;

• whether the registered proprietors of the mark still had a residual reputation in the mark;

• whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

• whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[12]

  [12] ‘Gallo’ [2008] FCA 934, [202]–[203].

1. The evidence provides little information on which to consider the above factors. At its highest, the TMIS report in the EIA indicates that the Trade Mark was in use for a range of products as of December 2019, but not the Goods. As such, the Trade Mark may not have been abandoned in the general sense.  However, there is no evidence which allows me to determine the reputation of the Trade Mark for any goods or services, or whether there have been sales of the Goods following the Relevant Period. On balance, the discretionary considerations mentioned above do not favour the Opponents. Further, the Opponents have not provided any compelling reasons why I should exercise discretion.

2. As no cogent submissions or evidence has been put before me by the Opponents, I cannot exercise discretion to allow the Trade Mark to remain registered for the Goods.

Decision and costs

1. The Opponents have not established either use of the Trade Mark for the Goods during the Relevant Period, or that it is appropriate to exercise discretion to allow the Trade Mark to remain registered. As such, the Trade Mark should be removed from the register.

2. Given it is the right of both parties to appeal this decision to the courts, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then the Trade Mark shall not be removed until the appeal has either been discontinued or, the Application has been dealt with as the Court sees fit.

3. Both parties requested an award of costs. The usual rule is that costs follow the event. I therefore award costs against the Opponents.  

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

23 August 2021