Optigen Ingredients Pty Ltd v Alltech, Inc
[2016] ATMO 46
•30 June 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Optigen Ingredients Pty Ltd to applications under section 92 of the Act by Alltech, Inc to remove trade mark numbers 1067935 (35), 1254791 (1, 5, 9, 10, 42, 44) & 1254901 (39) - OPTIGEN - in the name of Optigen Ingredients Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Removal Opponent: Andrew Pollock of Counsel, instructed by John Bourdolone of Doherty & Colleagues Solicitors Removal Applicant: Lynne Lewis of Minter Ellison law firm |
| Decision: | 2016 ATMO 46 Section 92 of the Trade Marks Act 1995 – s 92(4)(b) – name used as a trade mark – trade marks used with additions or alterations not substantially affecting identity – use established in respect of some goods – registrar’s discretion applied in respect of remaining goods and services – trade marks to remain registered in respect of all goods and services. |
Background
This decision is pursuant to applications made on 20 February 2014 under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) by Alltech, Inc (‘the Removal Applicant’) to remove the trade marks detailed below from the Register of Trade Marks. The applications were not made in respect to all of the goods and services for which the trade marks are registered, but rather in respect to veterinary and animal related goods and services (‘the Removal Goods and Services’), as laid out in Appendix A to this decision.
| Trade Mark: OPTIGEN | Trade Mark: OPTIGEN | Trade Mark: OPTIGEN |
| Registration No.: 1067935 | Registration No.: 1254791 | Registration No.: 1254901 |
| Class: 35 (see Appendix A) | Classes: 1, 5, 9, 10, 42, 44 (see Appendix A) | Class: 39 (see Appendix A) |
| Registered from: 2 Aug 2005 | Registered from: 1 Aug 2008 | Registered from: 1 Aug 2008 |
I will refer to these trade marks collectively as ‘the Trade Marks’.
The owner of the Trade Marks, Optigen Ingredients Pty Ltd (‘the Removal Opponent’), filed Notices of Intention to oppose their removal on 6 May 2014, followed by Statements of Grounds and Particulars on 23 May 2014.
Thereafter the parties filed their evidence in accordance with the provision of the Trade Marks Regulations 1995 (‘the Regulations), discussed in more detail below, and requested to be heard.
The hearing came before me, a delegate of the Registrar of Trade Marks (‘the Registrar’), in Canberra on 19 April 2016. The Removal Opponent was represented by Andrew Pollock of counsel, instructed by John Bourdolone of Doherty & Colleagues Solicitors, and the Removal Applicant was represented by Lynne Lewis of the law firm Minter Ellison.
The Law
Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of the matter before me s 92(4)(b) provides:
92Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
[…]
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Thus, the allegation is that the Removal Opponent has not used the Trade Marks in relation to the Removal Goods and Services at any time in the three year period ending on 20 January 2014 (‘the relevant period’).
I note also that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the applications,[1] and I confirm that five years since filing the applications have in fact passed.
[1] Per s 93(2).
The onus of rebutting an allegation of non-use lies with the Removal Opponent. The reason for this is that the party better able to provide the evidence which enables the matter to be resolved most efficiently is the Removal Opponent.[2] This onus is articulated in s 100 of the Act which provides, relevantly to this matter:
[2] See Lahore J and Dufty A, Patents, Trade Marks & Related Rights, ©LexisNexis 2016, at [59,700].
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
[...](c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
[…]
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
[...]
(c) 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 the use of the trade mark during that period.In accordance with s 101 the Registrar may decide to remove the Trade Marks for all or some of the goods identified in the applications for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Marks, even if the grounds under which the applications for removal were made are established.
I further note that a single bona fide use of the Trade Marks in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].
[4] Nodoz Trade Mark (1962) RPC 1 at 7.
Evidence
The evidence filed in this matter consists of declarations made by the following persons:
| Evidence in support |
| David Alan Leister, General Manager of the Removal Opponent, with Exhibits A to Q, dated 15 September 2014. |
| Evidence in answer |
| Nathan Hohman, Secretary and Treasurer of the Removal Applicant, dated 19 December 2014. |
| Evidence in reply |
| David Alan Leister, with Exhibits A and B, dated 19 March 2015. |
Both parties also sought to file additional information after the period for filing evidence had ended. Prior to the hearing I indicated that I would only allow the partial inclusion of the parties’ additional information, as follows:
| The Removal Opponent’s additional information |
| Paragraphs 1 to 4 and exhibit DAL-1 of a declaration by David Alan Leister dated 3 March 2016. |
| The Removal Applicant’s additional information |
| Annexures A to C to the Removal Applicant’s submissions dated 11 March 2016. |
| Declaration of Mark Peebles, General Manager of Leinert Australia Pty Ltd, with Exhibit MP-1 (comprised of Tabs 1 to 7), dated 7 April 2016. |
Additionally, at the hearing the Removal Opponent sought to adduce findings made by a delegate of the Registrar in other proceedings between these parties (relating to an opposition to registration of the Removal Applicant’s claimed trade mark OPTIGEN II). The Removal Opponent alleged that those findings were made on the basis of exhibits identical to those here, and therefore questions raised by the Removal Applicant of whether the Trade Marks had been used (or used with additions or alterations not affecting their identity) should not be re-agitated here. In the alternative the Removal Opponent proposed that an additional declaration be allowed, which it asserted was in response to the questions raised in the Removal Applicant’s submissions. I declined to take either into account. Firstly, it is a matter of procedural fairness that a party is not entitled to surprise another by the raising of new material as late in proceedings as at the hearing, and it must provide a compelling case for its inclusion where it seeks to do so. Secondly, the evidence in the other proceedings is not before me and therefore there was no basis upon which I could conclude that the delegate’s findings had answered the questions that are before me. Lastly, the additional declaration did not take the Removal Opponent’s case further than what was already presented in its evidence that had been properly filed.
As a preliminary matter I note that all of the Leister declarations are claimed, in their entirety, to be confidential. In general, the Registrar directs that information in proceedings properly identified as confidential is restricted to those who reasonably need to see it for the purposes of the proceedings. Nonetheless the Registrar is required to provide reasons for her findings and faces a conundrum in how to do so where a party claims all of their material as confidential. I note further that some of the material is clearly not confidential, such as details of the Removal Opponent’s trade mark applications and registrations, extracts from publicly available websites, copies of advertising material distributed to the Removal Opponent’s customers, and images of the Removal Opponent’s packaged products. A delegate of the Registrar, in similar circumstances, noted:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take [the opponent’s] request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail…[5]
[5] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].
I will do likewise here. In setting out my reasons, I will refrain from discussing in detail information which is arguably commercially sensitive but will discuss the Removal Opponent’s evidence to the degree necessary to provide sensible reasons.
A summary of the relevant statements and exhibits contained in the evidence is as follows.
The Removal Opponent’s statements and exhibits
The ‘OPTIGEN brand’ was first used by a predecessor of the Removal Opponent in March 2002. The Removal Opponent was incorporated in August 2003 and all rights to the ‘OPTIGEN name and business’ were transferred to the Removal Opponent, which it says has continuously used the Trade Marks since that time.
The name ‘OPTIGEN’ was first conceived in 1998 by combining ‘OPTI’ (indicating ‘to be the best’) with ‘GEN’ (indicating ‘in the next generation’). This concept of ‘to be the best in the next generation’ was built upon to create a tagline ‘Making a world of difference’. The name ‘OPTIGEN’ and the tagline are applied to all of the Opponent’s business material (such as letter heads and business cards), as depicted below:
The ‘OPTIGEN’ name is stated to have been used since 2002 upon the Removal Opponent’s website ‘ and upon printed promotional material. Undated flyers, a product catalogue, and a brochure specifically directed at the animal feed and veterinary markets are provided, all which show use of the names ‘OPTIGEN’ and ‘OPTIGEN INGREDIENTS’ in both plain text form and in combination with the tagline and/or the helix device depicted above. Similarly a promotional video refers to the Trade Marks visually and verbally, and also references ‘animal health’ as one of the sectors to which the Removal Opponent supplies its goods and services. Other printed promotional material and photographs of merchandise bearing the Trade Marks are provided. I note that all of these exhibits are undated, although the Removal Opponent declares in respect of each that they have been used and/or distributed during the relevant period (and specifically in relation to the promotional video, that it was created in 2007 and has been used since then).
The Trade Marks are claimed to have been used in all States and Territories in respect of goods and services including ‘the marketing, packaging, transport, distribution and sale and supply of raw materials’. Those raw materials include herbal and botanical extracts, specialty oils of marine and vegetable origin, minerals, amino acids, active pharmaceutical ingredients, fine chemicals, organic and nutritional oils and fats, sweeteners and cocoa products; and they are supplied to a range of markets including the animal/veterinary, pharmaceutical, cosmetic, personal care and food sectors. The full range of the Removal Opponent’s products is provided in undated brochures and upon its website.
A list of customers in the veterinary and animal sector with which the Removal Opponent deals, including during the relevant period, is supplied. A selection of redacted purchase orders from these customers and the invoices sent to them is provided in the evidence in support, and they are dated within the relevant period. The goods sold and their prices are redacted, the Removal Opponent being concerned about its product range and pricing information being made available to its competitor. The purchase orders (of which some are written upon what appears to be internal order forms of the Removal Opponent, so I have disregarded those ones) are made out to either ‘Optigen Ingredients’ or ‘Optigen Ingredients Pty Ltd’, and these are the only uses of the name ‘OPTIGEN’ on them. The invoices are each headed with the words OPTIGEN INGREDIENTS in prominent lettering, along with two third party certification marks, as depicted below (being a partial image of the top section of an invoice).
Unredacted copies of some of these purchase orders and invoices were eventually provided in the Removal Applicant’s additional information. They show the specific goods sold, which are in the nature of the raw materials described in paragraph 20 above, as well as the names of the customers (which, from their names and taglines, are on the face of it within the animal and/or veterinary industry). They are all dated within the relevant period: 21 August 2013, 4 November 2013, 7 November 2013, 7 January 2014 and 14 January 2014.
Information regarding the entity Optigen Scientific Pty Ltd is given in the form of extracts from the website ‘ It is a company apparently related to the Removal Opponent and uses the Trade Marks with the Removal Opponent’s authorisation. It supplies scientific products to a range of industries including veterinary and agriculture organisations, and undated photographs of some of its products are supplied, as below (although the Removal Opponent partially redacted the images so that they do not show the specific product):
Further photographs of products ready for delivery to customers are provided (declared to have been taken between 2012 and 2014), and I note that some show the pallets of goods clearly labelled with ‘OPTIGEN INGREDIENTS’. However, the photographs themselves are undated and do not show what the goods actually are (they being packaged in boxes, drums or sacks).
The Removal Opponent uses a number of sub-brands with the ‘OPTIGEN name’ as an ‘overarching’ or house brand. They are the subject of several registrations or pending trade mark applications, details of which are provided. The Removal Opponent also responds to the Removal Applicant’s assertion that it does not use the plain word OPTIGEN by providing several emails from customers or associates which refer to simply ‘Optigen’ or ‘Optigen orders’ in the subject line.
The Removal Opponent does not give figures for revenue or advertising expenditure, but describes them only as ‘significant’ and ‘substantial’.
The Removal Applicant’s statements and exhibits
The Removal Applicant’s evidence in answer criticizes the lack of dated evidence in the Removal Opponent’s evidence in support and asserts that it (a) does not show use of the Trade Marks but rather the corporate names ‘Optigen Ingredients’ and ‘Optigen Scientific’, and (b) does not show the goods or services upon which the Trade Marks are alleged to have been used because the purchase orders, invoices, and photographs of products have all had that information redacted. The Removal Applicant also asserts that there is insufficient information to show that ‘Optigen Scientific Pty Ltd’ and the Removal Opponent are related or that ‘Optigen Scientific Pty Ltd’ is an authorised user of the Trade Marks.
In response to the unredacted purchase orders and invoices eventually provided by the Removal Opponent, the Removal Applicant asserts that they do not show use of the Trade Marks but rather a corporate name, and that the goods to which they relate are not clearly animal or veterinary related.
In respect of the nature of the goods to which the purchase orders and invoices relate, the Removal Applicant provides extracts from the ‘Pub Chem Open Chemistry Database’ (which appears to be a database maintained by the U.S. National Library of Medicine and the National Center for Biotechnology Information, and is what I would consider an authoritative source). Within the extracts are indications of the uses and purposes of each of the goods identified on the unredacted purchase orders and invoices (which I will not name in order to maintain the confidentiality claimed by the Removal Opponent). They would tend to support the Removal Opponent’s case rather than the Removal Applicant’s case, and they include:
· ‘[substance] is used…as a supplement for Vitamin B12 deficiency’ and ‘[substance] has been used in veterinary medicine in the prevention and treatment of [substance]-deficiency diseases in ruminants’ [ ruminants being a class of animals which includes cattle, sheep, goats, buffalo, deer and camels]
· ‘[substance] is a primary source of energy for living organisms. It is naturally occurring and is found in fruits and other parts of plants in its free state. It is used therapeutically in fluid and nutrient replacement’
· ‘[substance] is a non-essential amino acid naturally occurring in [a particular form]. [Substance] is the most common excitatory neurotransmitter in the CENTRAL NERVOUS SYSTEM’
The Removal Applicant also adduces the declaration of Mr Peebles, the General Manager of one of the Removal Opponent’s customers (an entity which is also a wholly owned subsidiary of the Removal Applicant). In it Mr Peebles provides information about the goods identified in the purchase orders and invoices, which shows that they may be used for a variety of purposes including, but not necessarily primarily, the animal and veterinary sector, as reflected in Mr Peebles’ statement:
In light of the [information provided in the Peebles declaration], notwithstanding the fact that the chemical compounds disclosed in [the unredacted purchase orders and invoices] may be purchased by companies operating in the animal nutrition industry, I believe that the [unredacted goods]:
(a) may be and are, in fact used, in a wide range of industries; and
(b) are not specifically intended for or limited to the use in relation to veterinary or animal related goods.
Discussion
As indicated previously the determination to be made here is whether the registered owner (here the Removal Opponent) has used the Trade Marks in good faith in Australia during the relevant period in relation to the goods and services for which the Trade Marks are registered.
Much of the evidence is undated, and although the Removal Opponent declares that the undated exhibits were used and/or distributed during the non-use period, such unsupported assertions would likely be insufficient to rebut the allegation of non-use. However the Removal Opponent has also provided dated purchase orders and invoices. They clearly fall within the relevant period and so the relevant questions are whether the word OPTIGEN has been used as a trade mark, with additions or alterations not substantially affecting its identity, and whether that use is in relation to the goods or services in respect of which the Trade Marks are registered.
I turn firstly to whether OPTIGEN has been used as a trade mark. Use as a trade mark is use as a badge of origin, that is, as a sign which indicates a connection in the course of trade between the goods (or services) and the person who applies the sign to the goods (or services).[6] The invoices from the Removal Opponent prominently display the words OPTIGEN INGREDIENTS, as shown in paragraph 21 above. I consider this use to be use as a trade mark. It is established that a trade mark may perform more than one function and it is the context in which it is used that is most often determinative[7]. It is what a person looking at a trade mark would see and take from it that is the basis of whether the use is as a trade mark.[8] Here, it is likely that the consumer would consider OPTIGEN INGREDIENTS is the badge of origin of the goods to which the invoices relate; equally if not more so than it is likely the consumer would consider it merely indicates the corporate name of the Removal Opponent. Those words appear prominently at the top of the invoices; OPTIGEN has no descriptive significance; and the usual identifiers of a commercial entity (as opposed to a brand) are absent, such as ‘Pty Ltd’ or ‘Inc’. Similarly, the Removal Opponent’s references to ‘Optigen’ and ‘Optigen Ingredients’ in its undated promotional material are as much an indication of the source of goods and services as it is a reference to the corporate entity.
[6] See for example Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 [19], cited in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [41]-[43].
[7] For example Aldi Stores Ltd Partnership v Frito Lay Trading Company GmbH [2001] FCA 1874.
[8] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390.
I also consider use of the words OPTIGEN INGREDIENTS to be use of the Trade Marks with additions or alterations not affecting their identity, per s 7(1) of the Act. The Removal Opponent trades in substances which may be used as ingredients in a range of products, including animal feeds and medicines. To that end, ‘INGREDIENTS’ describes the nature of the goods with which the Removal Opponent deals and as such carries little trade mark significance. In this respect I note that the Removal Applicant argues that the application of the test under s 7(1) is a rigid one, purportedly indicated in Business Strategies International Pty Ltd v British Standards Institution.[9] In that decision the delegate compared the plain text letters BSI to a range of trade marks which incorporated those letters along with devices, taglines and additional words. In none of those examples is the additional trade mark material limited only to words that described the relevant services.[10] I consider the matter here more analogous to such cases as FETCH and FETCHTV,[11] WORLD’S NEXT TOP MODEL and AMERICA’S NEXT TOP MODEL,[12] CTI and CTI AUSTRALIA,[13] SPINIFEX and SPINIFEX WINE,[14] PHOENICIAN RESORT APARTMENTS and PHOENICIAN,[15] VOYAGER and VOYAGER CLUB,[16] BOOST and BOOST FOOD,[17] and EXPRESS WORLD BRAND and EXPRESS ONE OF A KIND,[18] all cited within CSR Limited v XChina South Locomotive & Rolling Stock Corporation.[19] I am therefore satisfied that use of OPTIGEN INGREDIENTS qualifies as use of the Trade Marks with additions or alterations not substantially affecting their identity.
[9] [2016] ATMO 9.
[10] The closest example in that decision is perhaps the comparison between BSI in plain text and BSI against a segmented black background accompanied by the words ‘business strategies international’. However I do not consider that ‘business strategies international’, in respect of various business services in class 35, is as clearly a description of services given the grammatical juxtaposition of the words.
[11] FetchTV Pty Ltd v LemonStone Group Pty Ltd [2014] ATMO 2.
[12] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.
[13] Control Technology Inc v Complete Technology Integrations Pty Ltd [2012] ATMO 23.
[14] Abercrombie & Kent Group of Companies, S.A. v Carnival plc [2011] ATMO 102.
[15] The Body Corporate of the Phoenician Cts 27745 v Mantra IP Pty Ltd [2011] ATMO 96.
[16] South African Airways (Proprietary) Limited v Virtuoso, Ltd [2011] ATMO 30.
[17] Boost Juice Holdings Pty Ltd v Boost Foods Pty Ltd [2010] ATMO 93
[18] EXPRESS, LLC v Euromode Australia Pty Ltd [2010] ATMO 71.
[19] [2014] ATMO 33.
In respect of the goods and/or services upon which the Trade Marks have been used, the products to which the unredacted purchase orders and invoices relate are raw materials and ingredients which may be used in the animal and veterinary sector - as indicated by the Removal Opponent’s extracts from the ‘Pub Chem Open Chemistry Database’ and Mr Peebles’ declaration. I am further satisfied that those products are in fact used as such judging by the names and taglines of the customers identified in the purchase orders and invoices. Additionally, although undated, the Removal Opponent’s promotional material indicates that its products may, and are, used in those sectors.
To that end, I am satisfied that the Removal Opponent has used the Trade Marks upon the goods specified in classes 1 and 5 relating to the animal and veterinary sector, and therefore do not consider that the exclusion sought by the Removal Applicant is warranted.
Having found that the Trade Marks have been used in respect of certain goods, the remaining question is whether they should nonetheless be removed from the Register in respect of those goods or services for which specific, dated evidence has not been provided. Section 101 of the Act provides a discretionary power upon the Registrar not to remove a trade mark even if the grounds upon which a removal application is made have been established. The discretion is a broad one, there being no express limits upon it,[20] and it need not be applied only in exceptional circumstances but rather where it is reasonable to do so.[21] A relevant consideration is whether removal of the Trade Marks might lead to confusion[22] (because it might open the way for concurrent use of the same or similar mark by an unrelated party such as the Removal Applicant), and the Act specifically indicates that one of the matters the Registrar may take into account is use of a trade mark by the registered owner upon similar goods or closely related services.[23]
[20] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135.
[21] Kowa Company Ltd v N V Organon (2005) 223 ALR 27 per Lander J, [98], cited in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No. 4) [2016] FCA 138, [222].
[22] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8.
[23] Section 101(4) of the Act.
The remaining goods and services for which the Trade Marks are registered relate to goods in classes 9 and 10, and services in classes 35, 39, 42 and 44. The Removal Applicant seeks removal of these goods and services in respect of the animal and veterinary sector by way of adding the words ‘excluding such goods [or services] relating to veterinary and animal related goods or services’ (or words to that effect).
I consider that confusion could well arise should the Trade Marks be removed in relation to these remaining animal and veterinary related goods and services, particularly given the Removal Applicant’s apparent desire to use an almost identical, distinctive trade mark (OPTIGEN II) for goods in the animal feed industry. They are goods and services which I think many people would assume were connected with the provision of the class 1 and 5 goods for which use has been established. The Removal Opponent’s evidence supports such an inference. Although undated I note that the Removal Opponent’s flyers and product catalogue[24] describe itself as ‘More Than A Supplier’ and refers to various goods and services it provides such as ‘we provide our customers with high quality ingredients produced with the latest technology’, ‘we provide our customers with a high level of technical expertise’, ‘personal services as well as after sales service’, ‘we are a strategic business partner’, ‘our manufacturers are committed to continuous Quality Improvement and Research and Development’ and ‘our [staff] are ready to assist in solving manufacturing problems as well as in developing new products…’. I note also that the Removal Opponent’s undated company brochure[25] states that its business partners include manufacturers (including contract manufacturers to support ‘private label’ goods), development biochemists (to support customers’ product development) and an advertising agency (to support customers’ marketing concepts). These statements indicate that the Removal Opponent, at least as at the date of the first Leister declaration, provided such services and that, general speaking, it is not unreasonable to suppose that a supplier of raw materials and ingredients may also provide a range of scientific, technological and business services.
[24] Exhibits I and J of Leister 1.
[25] Exhibit C of Leister 1.
Accordingly, I consider it appropriate to apply the Registrar’s discretion to maintain registration of the Trade Marks in respect of the goods and services for which specific, dated evidence has not been provided, being the remaining goods and services in classes 9, 10, 35, 39, 42 and 44.
Decision
I am satisfied that the Removal Opponent has rebutted the allegation under s 92(4)(b) for some of its goods, and that it is reasonable (per s 101(3) of the Act) to maintain registration of the Trade Marks for the remaining goods and services.
Accordingly, the applications for removal are refused and the Trade Marks are to remain on the Register in respect of all of the goods and services for which they are registered.
Costs
Although costs would usually follow the event, I consider it reasonable here that the parties bear their own costs. To a significant degree, the Removal Applicant’s case would have been prepared on the basis of incomplete evidence from the Removal Opponent. It was not until relatively late in proceedings that the Removal Opponent filed additional evidence which showed clear, dated evidence of use in respect of specific goods. As such, I do not consider it reasonable to make an award of costs in the Removal Opponent’s favour, and I decline to make any award.
Nicole Worth
Hearings Officer
Trade Marks Hearings
30 June 2016
APPENDIX A
(The spelling in the specifications is as originally entered into the Australian online database of Trade Marks, ‘ATMOSS’).
Trade Mark Registration 1067935:
Class 35: Advertising, excluding such services relating to veterinary and animal related goods and services; business management; business administration; office functions
Trade Mark Registration 1254791
Class 1: Chemicals used in industry, science and photography, as well as in
agriculture,horticulture[26] and forestry; unprocessed artificial resins, unprocessed plastics; manures;fire extinguishing sompostitions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; excluding such goods relating to veterinary and animal related goods and services[26] I note that in the applications for removal the word ‘horticulture’ was struck out, however the Removal Applicant clarified at the hearing that this was an error.
Class 5: Pharmaceutical
and veterinarypreparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; prepartions for destroying vermin; fungicides, herbicides; excluding such goods relating to veterinary and animal related goods and servicesClass 9: Scientific, nautical, serveying, photographic, cinematorgraphic, optical, wieghing, measuring, signalling, checking(supervision), life-saving and teaching apparatus and instruments; appartaus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extingishing apparatus; excluding such goods relating to veterinary and animal related goods and services
Class 10: Surgical, medical, dental
and veterinaryappartus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; excluding such goods relating to veterinary and animal related goods and servicesClass 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; excluding such services relating to veterinary and animal related goods and services
Class 44: Medical services;
veterinary services;hygienic and beauty care for human beingsor animals; agriculture, horticulture and forestry services; excluding the aforesaid services relating to veterinary and animal related goods and services
Trade Mark Registration 1254901
Class 39: Transport; packaging and storage of goods; travel arrangement; excluding such services relating to veterinary and animal related goods and services
0
19
0