Opposition by THF Innovation Pty Ltd to application under section 92 of the Act by Caterpillar Inc to remove trade mark number 1247976 (9, 13, 18, 25) – - in the name of THF Innovation Pty Ltd.

[2021] ATMO 80

TRADEMARKSACT1995

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

Re: Opposition by THF Innovation Pty Ltd to application under section 92 of the Act by

Caterpillar Inc to remove trade mark number 1247976 (9, 13, 18, 25) –  - in the name of THF Innovation Pty Ltd.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Andrew Sykes of counsel instructed by MST Lawyers

Non-Use Applicant: Luke Merrick of counsel instructed by Corrs Chambers Westgarth

DECISION:

2021 ATMO 80

Trade Marks Act 1995 (Cth) –Application under section 92(4)(b) in relation to class 25 goods – Partial use established during the relevant period on some of the goods in class 25 – Trade Mark to be removed for

remainder of goods in class 25.

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 1 March 2018, Caterpillar Inc (‘the non- use applicant’) has sought the removal from the Register of the Black Cat and device (‘Trade Mark’) appearing below in respect of all the goods in class 25 for which it is registered:

chemical/biological suits, flame retardant coveralls, bomb suits; ballistic panels for personnel protection, marine applications, building and vehicles; bullet-proof ceramic or plastic plates; and parts and accessories for such goods as are included in this class

Class 13: Ammunition and firearms; bags, belts, slings, cases, cartridges, containers, holders, holsters, garments, pouches, slides, bandoliers, scabbards and sheaths, and other items of all types specifically adapted for carrying, holding or storing ammunition, firearms and other weapons, handcuffs, and parts thereof and accessories in this class for all the aforegoing goods; accessories for ammunition and firearms, including but not limited to trigger guards for rifles, protectors for rifle barrels, protectors for the sights of firearms

Class 18: Leather and imitation leather, leather goods and articles made form leather and imitation leather not included in other classes including: gunleather, belts as are included in this class, bandoliers not in class 13; belts for gun holsters of all types; belt keepers; cuff cases; key cases; key holders; handcuff straps; flashlight holders; baton holders and parts of and accessories for such goods as are included in this class

Class 25: Leather and imitation leather garments and articles made from leather and imitation leather as are included in this class, including belts; weatherproof clothing; protective clothing against heat or cold (other than for accident or injury); camouflage clothing and sniper suits; and parts of and accessories for such goods as are included in this class

1. The application under subsection 92(4)(b) only applies to the goods in class 25. Those goods in classes 9, 13 and 18 are not sought to be removed.

1. THF Innovation Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose Removal on 8 May 2018 followed by a Statement of Grounds and Particulars.

1. The Statement of Grounds and Particulars asserted that the grounds on which the non-use applicant relied were not relevant because the opponent had used the Trade Mark in relation to the clothing goods during the non-use period of 1 February 2015 to 1 February 2018, in good faith.

1. On 17 July 2018 the non-use applicant filed its Notice of Intention to Defend. The parties then requested a cooling-off period. When this period expired, the opponent evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

1. The matter came before me for a decision, as a delegate of the Registrar of Trade Marks on 28 April 2021. Andrew Sykes of counsel instructed by MST Lawyers appeared on behalf of the opponent.

Luke Merrick, of counsel instructed by Corrs Chambers Westgarth appeared on behalf of the non- use applicant.

Legal Framework

1. Part 9 of the Act governs the removal of 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.

1. 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 Regulations1 and may be made in respect of any or all of the goods 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:

(a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorize the use of the trade mark in Australia; or

(iii)   to assign the trade mark to a body corporate for use by the body corporate in Australia;

In relation to the goods and/or services to which to non-use application related and that the registered owner:

(iv)   has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

In relation to those goods and service at any time before the period of one month ending on the day in which the non-use application is filed;

(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

¹ Regulations 9.1 to 9.4 are relevant here.

(ii)  used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc²:

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.

1. 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 [2015] ATMO 10 [6] – [9]

(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.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK3 Bennett J made the following observations concerning the Registrar’s discretion:

   [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

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

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.

[172] 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

·Declaration of Albert Wilhelm Hellweg, sole director and secretary of the opponent, dated 12 December 2019 with Annexures AWH-1 to AWH-30 (‘Hellweg declaration’)

Discussion

1. To rebut the non-use application, the opponent must demonstrate that it has used the Trade Mark on the class 25 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.

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

·The opponent has not used the Trade Mark on all the registered class 25 goods during the relevant period; and

·The specific marketplace in which the opponent sells its goods is very specialized and limiting the specification to those goods of interest to the opponent rather than broad categories does not disadvantage the opponent.

1. The opponent attempts to refute these arguments and I turn to its evidence. The Hellweg declaration states that the opponent first developed and used the Trade Mark on its various

registered goods in July 2008. Mr Hellweg asserts that the opponent has continuously used the Trade Mark since that time and including through the relevant period on a wide range of goods.

1. Mr Hellweg explains that there is a written licence agreement between the opponent and Hellweg International Pty Ltd that relates to use of the Trade Mark and contains quality control terms so that all use by Hellweg International Pty Ltd is authorized use of the Trade Mark.4 This has not been challenged by the non-use applicant and I accept that use of the Trade Mark by Hellweg International Pty Ltd is authorized use and relevant for the purposes of this opposition.

1. Mr Hellweg states that the opponent has used the Trade Mark on all the goods in class 25 of the registration. The examples of that use in the evidence are as follows:

·Substantial sales of high visibility weatherproof vests5;

·Sales of a compression shirt that assists in the dissipation of heat and moisture6;

^·Sales of an enhanced load bearing vest that are made of channel to allowing for the dissipation of heat;7

·Bags that are made for use with the opponent’s other goods8;

·Substantial sales of leather belts9;

·Sales of imitation leather holsters10;

·Intention to create and sell imitation leather belt pouches11; and

·Advertisement of sniper suits for sale in Australia and overseas12.

1. The opponent asserts that this use is sufficient to overcome the removal application for all the goods in class 25. I do not agree.

⁴ Annexure AWH-4 accompanying Hellweg

⁵ Annexures AWH-8, AWH-10 and AWH-11 accompanying Hellweg declaration ⁶ Annexures AWH-12, AWH-13 and AWH-14 accompanying Hellweg declaration ⁷ Annexures AWH-15 and AWH-16 accompanying Hellweg declaration

⁸ Annexures AWH-23 and AWH-24 accompanying Hellweg declaration ⁹ Annexures AWH-25 and AWH-26 accompanying Hellweg declaration ¹⁰ Paragraph 61(a) of the Hellweg declaration

¹¹ Paragraph 61(b) of the Hellweg declaration
¹² Annexures AWH-18 to AWH-22 accompanying Hellweg declaration

1. While the opponent has used its Trade Mark on a number of goods which fall within class 25, the goods claimed in class 25 are very broad and the opponent’s use is limited to specific and specialized goods. Indeed, a number of the opponent’s goods that it claims are use of the class 25 goods namely; bags for use with the opponents goods and imitation leather holsters, are actually classified in other classes for which the opponent has unchallenged registration of its Trade Mark.

1. The opponent claims that the bags it has sold are sufficient to defeat the removal application for ‘parts and accessories for such goods as are included in this class’. However, I do not agree. The bags are better claimed in class 18 for which the opponent already has unchallenged registration. Further to this, the claim for bags would be such a tiny portion of the specification ‘parts and accessories for such goods as are included in this class’ that it cannot be sufficient to defeat a removal application for such a broad claim. Similarly, the claim for holsters made of imitation leather falls within class 13 and class 18 for which the removal application has mounted no challenge to registration.

1. Indeed, given the specific and specialized nature of the class 25 goods sold under the Trade Mark by the opponent when compared to the broad specification of goods claimed in class 25, while I am satisfied that the opponent has used the Trade Mark on some of the goods, it has certainly not used the Trade Mark on all of the goods in the class 25.

1. A careful consideration of the opponent’s evidence establishes that the opponent has used the Trade Mark on a more limited specification during the relevant period. That use is:

Class 25: Leather belts; weatherproof vests; protective clothing against heat or cold (other than for accident or injury) being compression shirts and weight bearing vests; camouflage clothing and sniper suits.

1. The opponent has not demonstrated any use of the Trade Mark in regard to any other goods in class 25.

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.

1. The application for removal is for all of the registered goods. The opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all those goods because:

(a)The Trade Mark has been continuously used since 2008;

(b)The removal of the Trade Mark would cause confusion in the marketplace if others were to use it on their own goods/services due to the opponent’s significant reputation in its Trade Mark;

(c)The opponent has given detailed evidence of ongoing product development and expanded use of the Trade Mark in relation to class 25 goods; and

(d)There is no public interest in removing the goods of class 25 of the Trade Mark from the Register.

1. The application for removal is for all the registered goods in class 25. The opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all those goods instead of the limited range which it has demonstrated use on. There is nothing in the evidence before me that indicates there would be any confusion in the marketplace if the opponent’s goods in class 25 were limited to those which it has been using its Trade Mark on. The opponent is in a highly specialized marketplace selling its clothing items to security and police departments.

1. While I note that the opponent has plans to develop additional accessories for its goods, the ideas expressed are for goods which are classified in classes 13 and 18 which the opponent already has unchallenged registration of its Trade Mark in. This is not a sufficient reason for me to exercise the Registrar’s discretion.

1. As for the opponent’s argument regarding the public interest, I am not persuaded by this argument. 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 in terms of section 101(3) in relation to such a broad range of goods in class 25 and I decline to do so.

Decision

1. I am satisfied that the Trade Mark has been used in the relevant period. However, this use has only been with respect to:

·Class 25: Leather belts; weatherproof vests; protective clothing against heat or cold (other than for accident or injury) being compression shirts and weight bearing vests; camouflage clothing and sniper suits.

1. Therefore, I refuse to remove trade mark registration number 1247976 in its entirety for its Class 25 goods but direct that unless this decision is appealed, after one month from the date of this decision the class 25 goods be amended to the above and the Trade Mark will be removed for the remaining goods in class 25.

Costs

1. The non-use applicant has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.

Bianca Irgang Hearing Officer

Trade Marks Hearings 5 August 2021