Oppositions by Grayson’s International Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Petesal Enterprises Pty Ltd for removal of trade mark number 831484 (Classes 6, 9, and 37) –...

[2022] ATMO 13

TRADE MARKS ACT 1995

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

Re:Oppositions by Grayson’s International Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Petesal Enterprises Pty Ltd for removal of trade mark number 831484 (Classes 6, 9, and 37) – LEAFSCREENER with device, and trade mark number 849621 (Classes 19 and 37) LEAFSCREENER, both in the name of Grayson’s International Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Self-represented.   Applicant: Andrew Sykes of counsel, instructed by Sandercock & Cowie.
Decision:	2022 ATMO 13 Trade Marks Act 1995 (Cth) – applications for removal under s 92 – use of trade marks established for some goods – no use or obstacle to use established for remaining goods and services – discretion not exercised – trade marks to be partially removed.

Background

1. Petesal Enterprises Pty Ltd (‘Removal Applicant’) on 21 May 2020 filed applications under s 92 of the Trade Marks Act 1995 (Cth)[1] (‘Removal Applications’) for the complete removal of registered trade mark numbers 831484 and 849621 (‘Registrations’), the details of which are:

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

   Trade Mark Number:              831484

   Trade Mark:  

   (‘Logo Mark’)

   Class 6: Metallic mesh coverings for gutterings, spoutings and water containers; metallic guttering and pipes

   Class 19: Non-metallic mesh coverings for gutterings, spoutings and water containers; non-metallic guttering and pipes

   Class 37: Roof repairs and modifications, particularly the application of meshes to roof gutters and valleys

   (‘Logo Mark G&S’)

   Trade Mark Number:              849621

   Trade Mark:  LEAFSCREENER

   (‘Word Mark’)

   Class 19: Non-metallic mesh coverings for gutterings, spoutings and water containers; non-metallic guttering and pipes

   Class 37: Roof repairs and modifications, particularly the application of meshes to roof gutters and valleys

   (‘Word Mark G&S’)

2. At the time of the filing of the Removal Applications, the Registrations were in the name of Grayson’s International Pty Ltd (‘Removal Opponent’). As the Removal Applications were filed on 21 May 2020, for the purposes of deciding these oppositions, the relevant period is the three-year period ending on 21 April 2020 (‘Relevant Period’). During the Relevant Period, the Registrations were owned by Polymesh Australasia Group Pty Ltd (‘Registered Owner’) but were assigned on 4 May 2020 to the Removal Opponent.

3. The Removal Opponent filed notices of intention to oppose the Removal Applications on 23 May 2020, followed by statements of grounds and particulars (‘SGP’) on 26 May 2020. The Removal Applicant filed notices of intention to defend the oppositions to the Removal Applications on 1 September 2020.

4. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 15 February 2021. The Removal Applicant filed Evidence in Answer (‘EIA’) on 24 May 2021. The Removal Opponent filed Evidence in Reply (‘EIR’) on 1 June 2021.   

5. At the conclusion of the evidence stages of the opposition, the parties requested a hearing and the matter was heard by videoconference before a delegate of the Registrar on 4 November 2021. The Removal Opponent was represented by its director, Mr Grayson O’Connor. The Removal Applicant was represented by Mr Andrew Sykes of counsel, instructed by Sandercock & Cowie lawyers. I have decided this matter, as another delegate of the Registrar, based on the particulars in the SGP, the evidence and written submissions of the parties, and the oral submissions of the parties which were recorded at the hearing. To the extent that a party sought to make submissions at the hearing that were effectively new evidence, I have not taken that evidence into account.    

   Evidence

6. The following evidence was filed:

   EIS

   Declaration of Mr Grayson O’Connor, director of the Removal Opponent, made on 15 February 2020, with Appendixes 1 to 12.

   EIA

   Declaration of Peter Ryan, Director of the Removal Applicant, made on 24 May 2021.

   Declaration of David Drew, trade marks attorney of Sandercock & Cowie, made on 24 May 2021, with Exhibits DD1 to DD4.

   EIR

   Second declaration of Mr Grayson O’Connor, made on 28 May 2021, with Appendixes 14 to 15.

   EIS

7. Mr O’Connor declares that the Registered Owner and its predecessors in title have been using LEAFSCREENER trademarks since the early 1990s in relation to metallic and non-metallic gutter guard materials and components sold and offered for installation in Australia.

8. Mr O’Connor annexes a redacted invoice dated 7 December 2019 (‘12/19 Invoice’). The invoice bears the name and ACN of the Registered Owner and the Logo Mark and Word Mark. The invoice refers to Leafscreener rolls, flat trim, saddle clips, and hex head screws: 

9. Mr O’Connor includes with the invoice a picture of various products mentioned in the invoice, being mesh rolls, trim, and saddle clips:

10. Mr O’Connor declares that the Registered Owner created new ‘webpage’ accounts to increase the use of the Leafscreener trade marks online. Mr O’Connor annexes various instances of use stated to be in April 2020. The annexed social media examples include a screenshot of a Facebook page created on 2 April 2020 which displays the Logo Mark and the Word Mark, and a single post (also dated 2 April 2020), which states ‘Leafscreener is your gutter guard choice’. Mr O’Connor also annexes a screenshot from Twitter which bears the Logo Mark and the Word Mark. However, most of the other information on the Twitter screenshots is blurry and difficult to make out. Mr O’Connor also annexes screenshots from Instagram, most of which are also blurry and difficult to make out. However, a post from ‘11 April’ shows use of the Word Mark and also a picture of installed gutter mesh (see below):

11. Mr O’Connor declares that the website ‘leafscreen.com.au’ went live in April 2020. Mr O’Connor annexes a screenshot which was captured on 9 April 2020 and demonstrates use of the Logo Mark and Word Mark.  Mr O’Connor refers to use of the Word Mark on third party websites and provides various weblinks. However, no screenshots of these webpages are provided.

12. Mr O’Connor declares that from 12 December 2019, the Removal Opponent was licensed to use the Leafscreener trade marks for the goods and services listed in the Registrations. A redacted copy of the licence agreement is annexed. The redactions of the licence are significant and include highly probative information such as the relevant trade marks, term, territory, and signature of the licensor.

13. Mr O’Connor declares that in March 2020, the Removal Opponent acquired the phonewords 1300 LEAFSCREENER and 1800 LEAFSCREENER. Mr O’Connor annexes an ACMA Search extract indicating these phonewords were allocated to the Removal Opponent on 7 April 2020.    

14. Mr O’Connor declares that the Removal Opponent ordered fridge magnets and annexes a photo of those fridge magnets and an email confirming they were ordered by an entity named Graysons Gutter Cleaning Pty Ltd on 8 April 2020:

15. Mr O’Connor annexes an invoice issued by ‘Bounty Print’ to ‘Graysons Gutter Cleaning’ dated 17 February 2020 indicating that 5,000 ‘Leafscreener’ flyers were ordered on that date. A copy of the flyer is below:

16. Mr O’Connor declares that on 4 May 2020 the Registrations were assigned to the Removal Opponent, in addition to web accounts operated by the Registered Owner. Mr O’Connor also refers to a subsequent auDRP complaint filed by the Removal Opponent on 9 May 2020 that resulted in the domain ‘leafscreener.com.au’ being transferred to the Removal Opponent.

17. Mr O’Connor refers to obstacles to use of the Logo Mark and Word Mark during the Relevant Period caused by Covid-19. The information is vague and refers to actions being taken or delayed slightly due to unforeseeable Covid-19 restrictions. However, Mr O’Connor provides no evidence that trading by either the Registered Owner or the Removal Opponent was interrupted for any appreciable length of time due to Covid.

    EIA

18. Mr Ryan in his declaration states that he has over 25 years of experience in the trade of leaf-screening for roof gutters and opines that ‘Leafscreeners’ is a generic term commonly used in the Australian gutter protection industry. Mr Ryan states that the Removal Applicant’s gutter protection business is known as ‘Complete Leafscreeners’.

19. Mr Ryan refers to 12/19 Invoice supplied in the EIS and opines that it shows large rolls of non-metallic mesh sold on a wholesale basis that cannot be applied directly to guttering in the form shown. Mr Ryan states that the mesh is a raw material that might be used, following a manufacturing process, to obtain coverings that could only then, after considerable technical input, be described as mesh gutter covers. In particular, Mr Ryan indicates that mesh cut from the rolls is reinforced along its long edges to create a reinforced edge as the material on its own is flimsy, and that once placed in a gutter, a metal strip is also placed on top and screwed to the outer edge of the gutter to secure the mesh in place.  

20. Mr Drew in his declaration refers to Internet research which indicates a large number of traders in Australia using ‘leafscreener’ as a descriptive term. Mr Drew annexes various webpage screenshots to support his contention. Mr Drew also annexes a copy of an examination report dated 27 August 2020 in relation to trade mark number 2093718 wherein the examiner objects to the trade mark COMPLETE LEAFSCREENER on the basis that it describes a protective mesh and is therefore not capable of distinguishing.

21. Mr Drew provides some additional information, including ASIC extracts of the Registered Owner, Removal Opponent, and other entities. Mr Drew also annexes information regarding the meaning of the term ‘GmbH’ confirming it is a German phrase meaning ‘company with limited liability’. This information is relevant only to Instagram evidence provided by Mr O’Connor, where a post was liked by a user whose name included the letters ‘Gmbh’.

    EIR

22. Mr O’Connor in his second declaration refers to comments made by Mr Ryan in the EIA. Mr O’Connor disputes the contention that the mesh rolls attached to the 12/19 Invoice are a raw material. Mr O’Connor states that the mesh shown is 1020mm wide and can be used uncut on wider roof drainage channels, and if necessary, can be cut to size with a pair of scissors. Mr O’Connor also states that metal trim attached to the 12/19 Invoice is 1800mm in length and ready to be installed ‘as is’.

23. Mr O’Connor states that due to ‘privacy reasons’ the Removal Opponent chose only to submit one invoice in the EIS. Mr O’Connor annexes a second invoice dated 20 February 2019 (‘2/19 Invoice’) for what he states to be a large quantity of metallic and non-metallic gutter guard materials similar to that attached to the 12/19 Invoice:

24. Mr O’Connor states that the Removal Opponent has also obtained several other registrations (numbers 2090687, 2090749, and 2096031) for the Word Mark for various services in classes 35, 37, and 41. None of these later registrations cover gutter protection goods or services.

    General comments on the evidence

25. At the hearing and in written submissions, Mr Sykes methodically scrutinised and raised numerous criticisms of the EIS and EIR. I consider it appropriate to first deal with some of the general criticisms before considering the specific grounds on which removal of the Registrations is opposed.

26. Firstly, although the Trade Mark was owned at all times during the Relevant Period by the Registered Owner, no evidence was submitted by a director or other senior officer of that entity. Instead, evidence was provided by Mr O’Connor on behalf of the Removal Opponent. Mr O’Connor claimed that the Removal Opponent during the Relevant Period was both a customer and licensee of the Registered Owner, and after the Relevant Period, was an assignee of the Registrations. I consider that the most appropriate person to provide evidence regarding use of the Logo Mark and Word Mark during the Relevant Period would be an officer or employee of the Registered Owner. However, I cannot disregard evidence that is provided by another person. I must assess that evidence and give it weight having regard to all the surrounding circumstances. Mr O’Connor has provided declaratory evidence enclosing invoices of two transactions between the Registered Owner and the Removal Opponent. As there is no reason to believe these transactions did not occur or that the invoices are not genuine, I consider the evidence to be probative notwithstanding that the declaration was not provided by an officer or employee of the Registered Owner.

27. Secondly, the Removal Applicant objected to the inclusion of the 2/19 Invoice in the EIR on the basis that this evidence was not strictly in reply to the EIA. The Removal Applicant sought to characterise the 2/19 Invoice as late evidence in support and submitted that it was unfair that such evidence be filed in reply when the Removal Applicant had no evidentiary opportunity to respond. I do not agree. Mr Ryan in the EIA stated that ‘there appears to have been only one sale of wholesale products bearing the Opponent’s trade marks in late 2019’, referring to the 12/19 Invoice. I consider that it was a valid reply by the Removal Opponent to provide evidence of an additional sale during the Relevant Period, namely, the 2/19 Invoice. To conclude otherwise would be to adopt a highly restrictive interpretation of what constitutes ‘evidence in reply’. Further, while the formal evidence stage of an opposition ends with evidence in reply, there are provisions for the Removal Applicant to file additional evidence, and reasonable prospects of discretion being exercised to consider that additional evidence if it is probative and relates to material first validly introduced at the evidence in reply stage.  

28. Thirdly, in addition to relying on use of the Logo Mark and Word Mark directly by the Registered Owner, the Removal Opponent also sought to rely on a licence agreement between the Registered Owner and Removal Opponent as evidence of ‘authorised use’. However, the licence agreement annexed to the EIS was heavily redacted for reasons of ‘privacy’. This redaction is somewhat perplexing, given it was applied to the trade mark/s being licensed, the term of the licence, and the territory in which the licence applies. I can think of no compelling commercial or legal reason why such information would be redacted. However, given the nature of the redactions, I consider the licence carries little weight, and my findings reflect this.

29. Fourthly, the Removal Opponent in the EIS referred to several webpages where further information regarding use of the Word Mark could be found, and Mr O’Connor concluded his declaration by stating that ‘If necessary we have substantially more evidence of use of the trademark that pertains to the period’. References to web links generally have no probative value as evidence. Screenshots of web pages should be provided as evidence of their content on a particular date. This is because the information visible on a website can change over time. Further, a statement that more information can be provided if necessary misunderstands the nature of a trade mark opposition as a contested administrative proceeding. A delegate of the Registrar is a decision maker, not an investigator. While a delegate may have regard to publicly available information, it is not appropriate that the delegate conduct investigations to remedy deficiencies or fill gaps in the evidence. The Registrar also does not review evidence when it is filed and advise a party that they may need to provide additional information. A party should always file as evidence any material which they claim establishes a fact on which they wish to rely. If unsure whether evidence is sufficient, a party can consider seeking professional advice.

    Grounds, onus and standard

30. The Removal Applications nominate the ground 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.

31. The allegations of non-use during the Relevant Period are for the Removal Opponent to rebut.[2] The Removal Opponent relies on use of the Logo Mark and Word Mark for the rebuttal.[3]

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

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

32. The Removal Opponent also refers in evidence to circumstances which it is claimed prevented use of the Logo Mark and Word Mark during the Relevant Period. While not specifically particularised in the SGP, I can consider whether these circumstances constituted an obstacle to use under s 100(3)(c) of the Act. Further, I also have a general discretion to allow the Word Mark and/or Logo Mark to remain registered even if there has been no use or limited use of those marks during the Relevant Period.

33. Findings of fact in this decision are based on the civil standard of the balance of probabilities.

    Discussion

    Use of the trade marks during the Relevant Period

34. I must first decide whether there has been use of the Logo Mark and/or Word Mark by the Registered Owner, or an authorised user, in good faith, on or in relation to the Logo Mark G&S and Word Mark G&S during the Relevant Period. If I am satisfied there has been such use, the opposition/s will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the relevant goods and/or services, I must then decide whether to exercise discretion to allow the Logo Mark and/or Word Mark to remain registered for any of the goods or services for which use during the Relevant Period has not been established.

35. The ‘use’ required to be demonstrated by the Removal Opponent 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).

36. 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 on an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[6] Use of a trade mark in relation to services includes use in physical or other relation to the services.[7]

    [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 P/L [1974] HCA 51 (Jacobs J).

    [7] Trade Marks Act 1995 (Cth) s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

37. The use of a trade mark for goods or services may be direct use by the owner, or authorised use by an authorised user[8]. Authorised use is considered use by the owner of the trade mark only to the extent that such use is under the control of the owner.[9] In written submissions, Mr Sykes concisely summarised the threshold for ‘control’ as follows:

    In this sense ‘control’ does not equal ‘consent’. It is a higher standard. The registrant must exercise a sufficient level of control so as to make the ‘use’ his or her own. There must be a sufficient degree of “actual control” as a matter of substance and merely consenting to use, even through a written authority, will not suffice for this purpose. A bare licence to use a mark “would not be sufficient”.[10]         

    [8] Trade Marks Act 1995 (Cth) s 7(3).

    [9] Ibid s 8.

    [10] Citations omitted.

1. The most probative aspect of the Removal Opponent’s evidence is the 12/19 Invoice, which is submitted as evidence of direct use of the Logo Mark and Word Mark by the Registered Owner during the Relevant Period. Mr Sykes raised several criticisms of the 12/19 Invoice, namely that: (i) there was no way of verifying that the photographs of mesh and other goods included next to the invoice were the products to which the invoice relates, (ii) that the purported addressee of the invoice is the Removal Opponent’s related entity and the words ‘Supply Only’ were written on the invoice, which indicates that the transfer of goods was an ‘internal arrangement’ and not in the course of trade, and (iii) the goods depicted in the photographs were raw materials and not the finished goods listed under the registration.  

2. Regarding the first criticism, I agree that the evidence permits some doubt as to whether the goods pictured were those supplied under the 12/19 Invoice. However, as I have no reason to doubt the veracity of Mr O’Connor’s evidence, I consider it more likely than not that the photographs genuinely correspond to products of the kind listed in the 12/19 Invoice.

3. Regarding the second criticism, the Removal Applicant cited the decision in Moorgate Tobacco Co Limited v Philip Morris Limited (‘Moorgate’), where Deane J held that preliminary communications involving a trade mark did not amount to an actual trade or offer to trade in the relevant goods bearing the trade mark in Australia.[11]  The Removal Applicant in this case submits that the 12/19 Invoice merely reflects an internal arrangement between the Registered Owner and an entity related to the Removal Opponent, and not a use of the Logo Mark or Word Mark in the course of trade.

   [11] [1984] HCA 73, [23]. (Deane J, with Gibbs CJ, Mason J, Wilson J, Dawson J all agreeing)

4. I do not consider that the present case is analogous to Moorgate. The present case involves an actual transaction, and not preliminary communications or discussions. While I accept that there was a commercial relationship between the Registered Owner and Removal Opponent, the ASIC extracts provided by the Removal Applicant indicate that the entities party to the 12/19 Invoice were not related or under common control. I consider that the 12/19 Invoice evidences a genuine wholesale transaction in the course of trade during the Relevant Period in relation to specific goods mentioned in that document.

5. Regarding the third criticism, I consider that the use of the Logo Mark and Word Mark are in relation to some of the relevant goods covered by the Registrations, being gutter mesh. The fact that the mesh may need to be cut to size is of little consequence. It is still by its nature a mesh covering for a gutter. By analogy, chicken wire is still chicken wire notwithstanding it is sold in a roll and must be cut and fixed to a chicken coop before it performs a useful function.  However, the use in relation to trim and saddle clips is not use in relation to goods listed in the Logo Mark G&S or the Word Mark G&S.  

6. It is also not clear in Mr O’Connor’s first declaration whether the mesh referred to in the 12/19 Invoice or the 2/19 Invoice is metallic or non-metallic. Mr O’Connor states in the EIS that the photographs are of non-metallic and metallic gutter guard materials. The trim and saddle clips appear to be metal. The mesh itself has a grey colour, although it does not automatically follow that this results from it being made of metal. It could easily be a coloured plastic. Mr O’Connor in paragraph 4 of his second declaration seems to clarify matters when he states that the product is ‘non-metallic mesh coverings for gutterings, spoutings, and water containers’. However, he then goes on to say in paragraph 5 of his second declaration that the evidence in the 12/19 Invoice indicates use on metallic mesh coverings for gutterings etc. That said, the focus of paragraph 5 appears to be the metal trims, rather than the mesh itself. While the ambiguity is not helpful to the Removal Opponent, in the absence of any other evidence on the point, I consider that the mesh referred to in the 12/19 Invoice is non-metallic, while the other goods mentioned (trims, clips, and screws) are all metal. However, it remains unclear whether the mesh referred to in the 2/19 Invoice was metallic or non-metallic. As such, I do not consider the 2/19 invoice advances the Removal Opponent’s case any further than the 12/19 Invoice. 

7. For the reasons given above, I am satisfied that the 12/19 Invoice demonstrates use of both the Logo Mark and the Word Mark during the Relevant Period by the Registered Owner in relation to non-metallic mesh coverings for gutterings, spoutings, and water containers in Class 19.

8. It therefore remains to be considered whether the evidence otherwise demonstrates use of the Logo Mark in relation to the remainder of the Logo Mark G&S in Classes 6, 19, and Class 37, and the Word Mark in relation to remainder of the Word Mark G&S in Classes 19 and 37.

9. The flyers provided by the Removal Opponent indicate that the Removal Opponent or its related entities may have provided a gutter mesh installation service, and that a metallic mesh product may also have been available for purchase. However, the evidence does not otherwise establish that any use of the Logo Mark and Word Mark for these other goods or services was under the control of the Registered Owner. Similarly, the evidence is ambiguous as to whether use of the Logo Mark and Word Mark online during the Relevant Period was by or under the control of the Registered Owner. There is no evidence which verifies that it was the Registered Owner who operated the social media pages and the website. To the extent that such pages may have been operated by the Removal Opponent, this does not assist, as the evidence is insufficient to establish the Removal Opponent used the Logo Mark or Word Mark under the control of the Registered Owner during the Relevant Period. I am therefore not satisfied that the evidence demonstrates any use of the Logo Mark or the Word Mark by the Registered Owner during the Relevant Period other than in relation to non-metallic mesh coverings for gutterings, spoutings, and water containers in Class 19.

10. I must now consider whether there were obstacles to use during the Relevant Period, or whether it is otherwise appropriate to exercise my discretion not to remove the Logo Mark and Word Mark for goods and services other than non-metallic mesh coverings for gutterings, spoutings, and water containers in Class 19.   

    Circumstances that were an obstacle to use

11. Section 100(3)(c) states that the Removal Opponent will have rebutted the allegation of non-use during the Relevant Period if:

    The Opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to use of the trade mark during that period.

12. Circumstances that may constitute an obstacle to the use of a trade mark within the meaning of s 100(3)(c) of the Act were considered by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds, where his Honour said:

    In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark.

    Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.[12]

    [12] Woolly Bull Enterprises Pty Ltd and Another v Reynolds [2001] FCA 261, [55]-[56] (Drummond J).

13. The Removal Opponent refers to Covid-19 as being a circumstance that constituted an obstacle to use of the Logo Mark and Word Mark during the Relevant Period. However, the Covid-19 pandemic only started to cause significant disruptions in early 2020. As such, for most of the Relevant Period, Covid-19 would not have had any meaningful effect on the Registered Owner’s business. Further, the evidence of the Removal Opponent does not indicate that Covid-19 ever caused the Registered Owner to stop trading, or that it otherwise prevented the supply of the Registered Owner’s goods or services, under the Logo Mark or Word Mark.

14. As the evidence provided by the Removal Opponent regarding the effects of Covid-19 on the Registered Owner is vague and unconvincing, I am not satisfied that there was a relevant obstacle to use of the Logo Mark or Word Mark during the Relevant Period.  

    Discretion

15. 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’.[13] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[14] 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.[15]

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

    [14] Ibid [69].

    [15] [2002] FSR 51 (Ch) 790, [19].

16. 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.[16]

    [16] [2008] FCA 934, [210] (citations omitted).

17. The Removal Opponent bears the onus of establishing that the discretion should be exercised in their favour: it is not for the Removal Applicant to establish that it should not.[17]

    [17] Austin Nichols & Co Inc v Lodestar Anstalt [2012] (n 13) [44].

18. 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 proprietor 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.[18]

    [18] ‘Gallo’ (n 16) [202]–[203].

19. The Registrar may also take into account whether the trade mark has been used for similar goods or closely related services.[19]

    [19] Trade Marks Act 1995 (Cth) s101(4).

20. The Removal Applicant submits that a compelling reason not to exercise discretion is that other traders are using the Word Mark in a descriptive capacity. I do not find this argument persuasive. The capacity to distinguish of a trade mark is not a particularly relevant consideration when considering its possible removal for non-use under Part 9 of the Act. There are other sections of the Act that allow for cancellation of registered trade marks that are not capable of distinguishing. However, whether or not a trade mark has come to be seen as descriptive can be of some relevance in deciding whether or not there exists reputation in the trade mark, or whether its use by someone other than the owner is likely to cause confusion.

21. I am satisfied that the Registered Owner had not abandoned the Logo Mark and Word Mark, although both of the Registrations were subsequently assigned to Removal Opponent after the Relevant Period. Notwithstanding this, the evidence filed by the Removal Opponent does not provide any specific information from which the extent of use of the Logo Mark and Word Mark can be determined. There are no figures for revenue generated from sales of goods and services, and no figures for promotional expenditure, before or after the Relevant Period. The social media evidence is also vague and limited in nature. As such, there is no way to determine the extent of any reputation in the Logo Mark and Word Mark. Similarly, there is no evidence of sales under the Logo Mark or Word Mark by the Removal Opponent after the Relevant Period. These factors tend against the exercise of discretion in the Removal Opponent’s favour.   

22. There was an argument open to the Removal Opponent that the use of the Logo Mark in relation to non-metallic mesh (Class 19) justified on discretionary grounds the retention of the Logo Mark for metallic mesh (Class 6). However, no such argument was made. Had such an argument been made, there would have been counterarguments open to the Removal Applicant. In the circumstances, I do not consider it appropriate to address the potential arguments of either party on this point, given the Removal Opponent bears the onus of proof and given it has not made arguments based around discretion and similarity of goods. In any event, to the extent that metallic mesh in Class 6 may be ‘of the same description’ as its non-metallic counterpart in Class 19, the Removal Opponent could still seek to enforce rights in the registration for the Logo Mark covering non-metallic mesh against a person using an allegedly infringing mark for metallic mesh. The resolution of such an infringement claim would be for a court to decide. For present purposes, I am not satisfied that there would be any practical detriment to the public or the Removal Opponent’s interests if the Logo Mark is removed in respect of Class 6.

23. Similarly, no arguments were put forward that discretion should be exercised to retain the Registrations in Class 37 on the basis that goods in Class 19 are closely related to the services of the Registrations in Class 37. Again, I do not consider it is appropriate to consider possible arguments of the parties on this point.  The Removal Opponent has also not made any other compelling arguments as to why discretion should be exercised not to remove the Logo Mark or Word Mark for goods and services other than non-metallic mesh coverings for gutterings, spoutings, and water containers in Class 19.

24. On balance, I am not satisfied that there is sufficient justification to exercise the discretion in the Removal Opponent’s favour, and I therefore decline to exercise discretion to allow the Logo Mark and Word Mark to remain registered for goods and services other than non-metallic mesh coverings for gutterings, spoutings, and water containers in Class 19.   

    Decision  

25. The Removal Opponent has established use of the Logo Mark and Word Mark by the Registered Owner during the Relevant Period in relation to:  Class 19: Non-metallic mesh coverings for gutterings, spoutings, and water containers.

26. However, the Removal Opponent has not established that there were relevant obstacles to use, or that it is appropriate to exercise discretion to allow the Logo Mark and Word Mark to remain registered, for the other goods and services covered by the Registrations. As such, both of the Registrations should be removed from the register for goods and services other than Class 19: Non-metallic mesh coverings for gutterings, spoutings, and water containers.

27. Given it is the right of both parties to appeal this decision to the courts, the removals shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, the removals shall not occur until the appeal has either been discontinued or the Removal Applications have been otherwise dealt with as the Court sees fit.

28. Both parties have had a measure of success. As such, I decline to award costs.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    1 February 2022