Opposition by Veedol International Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Veedol Lubricants Pty Ltd to remove trade mark number 1413047 (class 4) - VEEDOL - in the name of...

[2021] ATMO 150

TRADE MARKS ACT 1995

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

Re:Opposition by Veedol International Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Veedol Lubricants Pty Ltd to remove trade mark number 1413047 (class 4) - VEEDOL - in the name of Veedol International Limited

Delegate:	Katrina Brown
Representation:	Removal Opponent: Ben Fitzpatrick of counsel Removal Applicant: Stephen Rebikoff of counsel
Decision:	2021 ATMO 150 Trade Marks Act 1995 (Cth) – application under section 92 – no use during relevant period – discretion not exercised – trade mark to be removed

Background

1. Veedol International Limited (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration no:                   1413047

   Trade mark:  VEEDOL (‘Trade Mark’)

   Filing date:  8 March 2011

   Goods:Class 4 – lubricants; automotive lubricants; lubricating oils for motor vehicles; non-chemical additives for fuels and lubricants; gear oils; transmission oils (‘Registered Goods’)

2. On 4 July 2019 Veedol Lubricants Pty Ltd (‘Removal Applicant’) filed an application pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark from the Register. The removal application was made in respect of all the Registered Goods; that is for complete removal of the Trade Mark from the Register.

3. The Removal Opponent filed a Notice of Intention to Oppose the removal application on 6 September 2019, followed by a Statement of Grounds and Particulars on 4 October 2019.

4. The Removal Applicant filed a Notice of Intention to Defend on 4 November 2019.

5. In due course, the Removal Opponent filed the following declarations as evidence in support and evidence in reply:

   ·Declaration of Rajendra Nath Ghosal (Director of the Removal Opponent) made on 6 February 2020 with Annexures RG-1 to RG-13 (‘Ghosal 1’);

   ·Declaration of Rajendra Nath Ghosal made on 11 September 2020 with Annexures RG-13 to RG-16; and

   ·Declaration of Dr Gamini Amarasekera (Technical Consultant to Removal Opponent) made on 9 September 2020 with Annexures GA-1 to GA-3 (‘Amarasekera Declaration’).

6. The Removal Applicant filed the following declaration as evidence in answer:

   ·Declaration of Dr William Harry Cater (Advisor to Removal Applicant) made on 11 May 2020 with Exhibits 01 to 10 (‘Cater Declaration’).

7. The matter was heard by me, a delegate of the Registrar of Trade Marks. The Removal Opponent was represented by Ben Fitzpatrick of counsel, instructed by Nadia Odorico of Bosh IP. The Removal Applicant was represented by Stephen Rebikoff of counsel, instructed by Stuart Green and Lauren Eade of Davies Collison Cave. The hearing was observed by: Dr. William Cater and Nathan Cater of the Removal Applicant; Sunil Vaidya, Bharat Pradhan, Dr. Gamini Amarasekera and Aakash Mukherjee on behalf of the Removal Opponent.

   The relevant statutory provisions

8. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Section 92(4)(b) provides:

   (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.

9. I note that a removal application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the trade mark application.[1] I confirm that the filing date of the application for the Trade Mark predates the removal application by more than five years.

   [1] Section 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018.

10. In this matter, the Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in Australia in relation to the Registered Goods at any time in the three-year period ending on 4 June 2019 (‘Relevant Period’).

11. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting the allegation made under s 92(4)(b). The relevant standard of proof is the balance of probabilities.[2] The allegation can be rebutted by establishing that the Removal Opponent, or an authorised user:

    ·used the Trade Mark ‘as a trade mark’ in Australia during the Relevant Period in relation to the Registered Goods;[3] or

    ·did not use the Trade Mark because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period.[4]

    [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

    [3] The Act, s 100(3)(a).

    [4] Ibid, s 100(3)(c).

12. In accordance with s 101 of the Act if the requisite use is not established, I may decide to remove the Trade Mark from the Register in respect of any, or all, of the goods identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

    Evidence

    Removal Opponent’s evidence

13. Mr. Ghosal provides a chronology of the Veedol brand, asserting that it has a long history of global use. A trade mark for the word ‘Veedol’ was first filed in Australia in 1914 (Australian trade mark number 17326) in the name of Platt & Washburn Refining Company and sold in 1918 to the Tidewater Oil Company. Since then, the rights to the Veedol brand have changed hands numerous times with Tidewater Oil India Co. (‘TOI’) acquiring the rights in 2011. The Removal Opponent is a 100% owned subsidiary of TOI.

14. In February 2013, the Removal Opponent engaged a contractor to explore opportunities for the Veedol brand in Australia. Between October 2014 and January 2015, a series of trials of Veedol lubricant products were carried out at Olympic Dam in Roxby Downs, South Australia.

15. In February 2016, the Removal Opponent ‘developed a detailed marketing plan for selling Veedol branded products in Australia’. Annexure RG-9 to Ghosal 1 contains a copy of this plan. It is dated 3 February 2016 and contains information on market entry status and market entry challenges including a bullet notation of ‘no serious expression of interest to date’.

16. In 2018, the Removal Opponent engaged Dr. Amarasekera to provide consultancy services including services with the aim of marketing Veedol brand lubricants in Australia. Dr. Amarasekera declares that his services included ‘analysing market data, information on regulatory and licensing requirements, product gaps, negotiating for toll blending arrangements and distributor and franchise opportunities’. In January 2019, Dr. Amarasekera commenced negotiating with toll blenders and distributors in Melbourne including Chandra Auto Pty Ltd (‘Chandra’). Annexure GA-1 to the Amarasekera Declaration contains examples of the information provided to Chandra to ‘enable them to select the right product category for their customers’.

17. Dr. Amarasekera states that the negotiations with Chandra were successful in April/May 2019 and Chandra agreed to purchase Veedol engine lubricant to ‘try out in a few workshops’. Annexure RG-10 to Ghosal 1 contains a purchase order from Chandra, dated 1 December 2019, in respect of four drums of Veedol Powertron engine oil. Annexure RG-10 also contains the invoice relating to this purchase order. The invoice is dated 3 December 2019 and is from Granville Oil & Chemicals Ltd (a UK subsidiary of TOI) to Chandra in respect of four drums of Veedol Powertron engine oil.

    Removal Applicant’s evidence

18. The Cater Declaration provides a history of the Veedol brand in Australia. Dr. Cater states that in 1957, Crompton and Walker Pty Ltd (an Australian foundry chemical manufacturer) entered into an agreement with the Tidewater Oil Company to manufacture Veedol branded products and to distribute them nationally in Australia. Shortly afterwards Crompton and Walker Pty Ltd entered into an agreement with Cater Oil Service to distribute Veedol branded products in the Greater Newcastle and Hunter Valley regions in New South Wales.

19. In 1962, Veedol Lubricants (Australia) Pty Ltd (‘VLA’) took over responsibility for the distribution of Veedol products in Australia. In 1967, Tidewater Oil Company informed Dr. Cater that VLA would cease operating and offered to handover the existing VLA business to Cater Oil Service. Following the transfer of the VLA business to Cater Oil Service (later known as Cater Oil Company Pty Ltd), Dr. Cater states that ‘Cater Oil Service duly took responsibility for the manufacture, sale and marketing of Veedol branded products and related services throughout all Australian states and territories’.

20. In 2009, the business of Cater Oil Company Pty Ltd was transferred to the Removal Applicant which has continued to use Veedol in connection with lubricants for automotive and industrial purposes in Australia.

21. In 2011, the Removal Applicant applied for removal of trade mark number 17326 (the Veedol trade mark registered in Australia in 1914 – see [13] of this decision). The removal application was not opposed, and trade mark 17326 was removed from the Register. In 2019, the Removal Applicant applied for removal of trade mark 508463 VEEDOL SUPER PLUS and 513697 VEEDOL COUNTRY, both held in the name of the Removal Opponent. The removal applications were not opposed and both registrations were removed from the Register.

    Discussion

22. To rebut the allegation of non-use it is crucial that the Removal Opponent demonstrates that it (or an authorised user) used the Trade Mark in Australia in relation to the Registered Goods in the Relevant Period. Alternatively, the Removal Opponent must demonstrate that there was an obstacle to use of the Trade Mark during the Relevant Period.

    Was the Trade Mark used by the Removal Opponent during the Relevant Period?

23. The ‘use’ required to be demonstrated 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 those goods or services.[5] It does not require an actual sale or purchase of the goods.[6] A commercial dealing in the goods under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’.

    [5] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 [19] (Black CJ, Sundberg and Finkelstein JJ).

    [6] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105 [29] (Drummond J).

24. Furthermore, a single bona fide use of a trade mark during the relevant period may be sufficient to resist an application for removal.[7] Where a removal opponent relies on only one, or few, instances of alleged use, such instances should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[8] The use must be in good faith, in the sense that it be real, as opposed to token, use in a commercial sense.[9] The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent[10] or of a circumstantial nature.[11]

    [7] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [17] (Drummond J) (‘Woolly Bull’).

    [8] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J) (‘Nodoz’).

    [9] Woolly Bull (n 7) [16].

    [10] Nodoz (n 8).

    [11] Trina Trade Mark [1977] RPC 131.

25. The Removal Opponent submits that the following activities show use of the Trade Mark in Australia during the Relevant Period:

    ·developing a detailed marketing plan for selling Veedol branded products in Australia;

    ·engaging Dr. Amarasekera in 2018 to promote the Veedol brand in Australia;

    ·discussions in January 2019 between Dr. Amarasekera and Chandra including the provision of technical information;

    ·entering into a formal agreement in April/May 2019 for Chandra to purchase four drums of Veedol branded engine lubricant; and

    ·subsequently supplying four drums of Veedol branded engine lubricant to Chandra in December 2019.

26. I am not satisfied that any of the above instances, individually or collectively, are sufficient to rebut the allegation of non-use.

27. The detailed marketing plan appears to be an in-house presentation given by an entity other than the Removal Opponent and is dated 3 February 2016, approximately four months before the Relevant Period. Similarly, the actual sale and supply of the goods to Chandra occurred in December 2019, approximately six months after the Relevant Period.

28. In respect of the activities of Dr. Amarasekera in 2018 and January 2019, the evidence lacks the specificity for me to conclude that they amount to a commercial dealing in the Registered Goods. At best, they appear to be negotiations with a prospective distributor and may well have been to determine whether there was a market in Australia for the Registered Goods. In this respect, I refer to the following observations in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd:

    [A] mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purpose of trade…The forwarding of samples and brochures is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. Use of the mark in such preliminary activities would not be a use in the course of trade.[12]

    [12] (1987) 10 IPR 402, 417-8 (McGarvie J).

29. The remaining activity put forward by the Removal Opponent is the claim that a formal agreement was entered into in April/May 2019 for Chandra to purchase four drums of Veedol branded engine lubricant. The agreement has not been provided as part of the Removal Opponent’s evidence and I note that the actual purchase took place in December 2019. Furthermore, except for a bald statement that such an agreement existed, very little information has been provided about the agreement including the nature, terms and parties to the agreement.

30. I am not satisfied that the very limited activities conducted in 2018/19 amount to proof of use of the Trade Mark for the Registered Goods in Australia during the Relevant Period.

    Was there an obstacle to use of the Trade Mark during the Relevant Period?

31. The Removal Opponent has not submitted that there was an obstacle to use of the Trade Mark during the Relevant Period. Nor does any of the information before me suggest that an obstacle prevented use of the Trade Mark in relation to the Registered Goods during the Relevant Period.

    Is it reasonable not to remove the Trade Mark?

32. Section 101(3) of the Act provides:

    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.

33. In this matter, the question is whether it is reasonable not to remove the Trade Mark, even though the Removal Opponent did not establish that is had used the Trade Mark during the Relevant Period.[13]

    [13] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28] (Jacobson, Yates and Katzmann JJ) (‘Austin’).

34. The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[14]

    [14] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273] (Yates J).

35. The discretion conferred by s 101 is broad and is limited only ‘by the subject-matter, scope and purpose of Part 9 of the Act’.[15] In Austin, Nichols & Co Inc v Lodestar Anstalt, the purpose of Part 9 of the Act was expressed as follows:

    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.[16]

    [15] Austin (n 13) [35].

    [16] Ibid [38].

36. A range of circumstances may be considered in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy me that it is reasonable to exercise the discretion.[17]

    [17] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 [198] (Flick J).

37. In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised some relevant considerations for the exercise of the discretion:

    In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).

    In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants 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; and whether the registered proprietors were aware of the applicants’ sales under the mark.[18]

    [18] [2012] FCA 252 [467]-[468].

38. Applying these considerations to the current matter it is not clear to me that the Removal Opponent has a residual reputation in the Trade Mark in Australia. Whilst the Removal Opponent identifies a trade mark registration for Veedol in Australia as early as 1914, the evidence is ambiguous as to the actual use of Veedol in Australia prior to TOI’s acquisition in 2011. The use after that date is very limited and at best restricted to activities in the nature of ascertaining whether to enter, or re-enter, the Australian market. The use after the Relevant Period is limited to a single sale of four drums of engine lubricant unaccompanied by any evidence of a formal launch of the products in Australia.

39. The evidence does demonstrate that the Removal Opponent (or its predecessors) have a reputation in the Trade Mark in international jurisdictions. However, the Removal Opponent has not demonstrated that this international profile has penetrated the Australian market or is known to Australian consumers.

40. Furthermore, in considering whether to exercise the discretion it is permissible to have regard to the private interests of the party seeking removal.[19] In this matter, the Removal Applicant (or its predecessors) have been using Veedol in the Australian market in respect of engine lubricants for a considerable length of time.

    [19] Austin (n 13) [33].

41. Considering all the above, I am not satisfied that it is reasonable to exercise the Registrar’s discretion.

    Decision

42. The application for removal under s 92(4)(b) of the Act is successful in respect of all the Registered Goods.

43. I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Trade Mark to remain on the Register.

44. Therefore, I direct that one month from the date of this decision registration number 1413047 be removed from the Register.

45. If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the court.

    Costs

1. The general rule is that costs follow the event. As the Removal Applicant has been successful, I award costs against the Removal Opponent in accordance with the amounts set out in Schedule 8 to the Trade Marks Regulations 1995 (Cth).

   Katrina Brown
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   7 December 2021