Overload Group Pty Ltd v Drake International Inc

[2024] ATMO 138

TRADE MARKS ACT 1995

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

Re:Opposition by Overload Group Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Drake International Inc to remove trade mark number 1777135 for the trade mark Overload (classes 35 and 39) and trade mark number 1822010 for the trade mark OVERLOAD (classes 9 and 42) – both in the name of Overload Group Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Y Intellectual Property

Applicant: Banki Haddock Fiora

Decision:

2024 ATMO 138

Trade Marks Act 1995 (Cth) – oppositions under section 96 to an application under section 92 for complete removal of one trade mark and partial removal of another - no circumstances established that were an obstacle to use – discretion not exercised – one trade mark to be removed and the other to be partially removed

Background

1. On 23 August 2022, Drake International Inc (‘Applicant’) filed a single application under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade marks in the name of Overload Group Pty Ltd (‘Opponent’):

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

Numbers	Trade Marks	Date of filing	Goods and services
1777135	Overload	16 June 2016	Class 35: Logistics services (business management and organization of facilities and resources); Recruitment of personnel Class 39: Logistics services (transport, packaging, and storage of goods); Transportation logistics (‘135 Services’)
1822010 (together ‘Registrations’)	OVERLOAD (together ‘Trade Marks’)	25 January 2017	Class 9: Computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorised vehicles; computer software Class 42: Providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and for dispatching motorised vehicles to customers; design and development of computer software (‘010 Goods and Services’) (together ‘Registered Goods and Services’)

1. The Registrations were filed in the name of Damien Briffa (‘Briffa’) and were assigned to the Opponent on 19 September 2022. The Opponent was recorded as owner of the Registrations on IP Australia’s trade mark database on 29 September 2022.

2. On 26 October 2022, the Opponent filed Notices of Intention to Oppose removal of the Registrations. On 28 November 2022, the Opponent filed its Statement of Grounds and Particulars covering both Registrations (‘SGP’). The Applicant filed Notices of Intention to Defend on 9 February 2023.

3. The Opponent filed evidence in support (‘EIS’) covering both Registrations on 23 May 2023. The Applicant did not file evidence in answer.

4. The parties were given the opportunity to be heard and requested a decision by way of written submissions. The Opponent filed written submissions on 22 May 2024 prepared by Andrew Petale of Y Intellectual Property and the Applicant filed its submissions on 29 May 2024 prepared by Banki Haddock Fiora. I have decided this matter based on the particulars set out in the SGP, the EIS and the written submissions of the parties.

   Evidence

5. The following EIS was filed:

   Declaration of Damien Briffa, director of the Opponent and former owner of the Trade Marks dated 5 May 2023 with Annexures DB-1 to DB-17 including Confidential Annexures DB-4 to DB-10, DB-12, DB-14, DB-16 and DB-17 (‘Briffa Declaration’).

   Legal Framework

6. Part 9 of the Act deals with removal of trade marks from the Register for non-use.

7. In respect of this matter, s 92(4)(b) relevantly provides (notes omitted):

   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.

8. I note 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 Trade Marks[2] and I confirm that five years since filing the Trade Marks has in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

9. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 23 July 2022 (‘Relevant Period’). As the Registrations were not assigned to the Opponent until after the Relevant Period, the owner of the Registrations in the Relevant Period was Briffa. As a consequence, the use of the Trade Marks in the Relevant Period must be that of Briffa or an authorised user of Briffa.

10. The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that Briffa has used the Trade Marks in good faith in respect of any or all of the goods and services identified in the Removal Application in the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]

    [3] s 100(1)(c).

    [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.

    [5] s 100(3)(c).

11. In Blount Inc v Registrar of Trade Marks, Branson J observed:

    Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[6]

12. It follows that unless the Opponent evidences convincing proof of use of the Trade Marks in the Relevant Period in relation to the Registered Goods and Services to the satisfaction of the Registrar, the oppositions to removal will not be established.

13. In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[8] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9] Little weight is to be given to assertions of use which are not supported by documentary evidence.[10]

14. The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of a sign as a badge of origin.[11]

15. Under section 7(3), an ‘authorised use’ of a trade mark is considered to be use of the trade mark by the registered owner, for the purposes of the Act.

    [6] [1998] FCA 440 (citation omitted).

    [7] [2001] FCA 261, [16].

    [8] Ibid [17].

    [9] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    [10] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Delegate Wilson).

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

16. Section 101 provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any, or all, of the goods and services for which they are registered. Relevantly, the section provides:

    (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

    Discussion and Reasons

    Use During the Relevant Period

    18.     In summary, the SGP claims that the Trade Marks have been in use in Australia since 1998 in relation to the provision of transport and logistics services across Australia and the Trade Marks have been continually used in relation to the provision and offering of the Registered Goods and Services by the Opponent or its predecessor’s in title during the Relevant Period.

    Summary of EIS

    19.     Briffa claims the Opponent’s business was initially established by Overload Transport Industries Pty Ltd (‘Overload Transport’), incorporated in 1998, of which Briffa was employed as general manager on 1 July 2013. Briffa’s father Joseph Briffa was director[12] until his death in September 2021 after which Briffa claims his mother Dianne Briffa became a director.

    [12] Briffa Declaration Annexure DB-1.

    20.     The Opponent was incorporated in December 2016 as Overload Technologies Pty Ltd and changed its name to that of the Opponent on 26 November 2019.

    21.     Briffa states that the Trade Marks have been in use since 1998 in relation to the provision of transport and logistics services across Australia, including:

    ·     the recruitment, onboarding and supply of owner drivers and company fleet entities to work in and as part of other businesses within the transport sector and annexes:

    Ø  a a copy of an email dated 9 March 2023 from Branko Petrisevac (‘Petrisevac’) of Border Express Melbourne Airport and 20 March 2023 from Peter Cronin (‘Cronin’) of Team Global Express stating their knowledge of Overload Transport and the Opponent (together ‘Group Overload’) since 1998 and that Group Overload supply vehicles and recruit and onboard subcontractor drivers to offer outside-hire services to customers including major freight companies throughout Australia. Both Petrisevac and Cronin state they have used Group Overload’s services.

    Ø  copies of unsolicited emails sent to Australia Post on 21 April 2020 and to Primary Direct on 30 March 2020 by Briffa in his capacity of general manager of Overload Transport, pitching Overload Transport’s business which attaches undated flyers about Overload Transport. I note use of the trade marks ,  and  in the flyers and the services are listed as taxi trucks, warehouse storage and distribution, container pack and unpack, freight forwarding, direct intra and interstate line haul, sensitive freight, dedicated fleet service, back up fleet support short notice and fleet cost analysis.

    Ø  a copy of a chain of emails between DAI Post and Briffa concerning a quote for hire of vehicles from 2 to 13 September 2021 which attaches a flyer stated to be valid from October 2021 headed with .

    Ø  the following examples of agreements:

    o   an Outside Hire Services Agreement provided by Star Track Express Pty Ltd to Overload Transport dated 28 June 2021 for providing on request staff for sorting, pick up, loading/unloading, scanning, delivery and other associated duties which contains no reference to the Trade Marks;

    o   a Supply of Services Agreement provided by TNT Australia Pty Ltd to Overload Transport dated 5 September 2019, signed by Joseph Briffa as a director, for the supply of vehicles with a driver to carry out pick up and delivery work which contains no reference to the Trade Marks; and

    o   a signed Outside Hire Services Agreement provided by FedEx to the Opponent dated 14 July 2022, signed by Briffa as a director, for the supply of vehicles with a driver to carry out pick up and delivery work which contains no reference to the Trade Marks.

    ·     conducting direct pickup and delivery transport services or other logistics services on demand and annexes a redacted copy of a quotation headed  for freight transport services issued by Overload Transport on 13 February 2020 where I note Briffa is listed as the contact in his capacity as manager, together with a Terms and Conditions (‘T&Cs’) document headed .

    ·     design and development of transport management software including a driver app for use by the Opponent’s drivers. Briffa states that since around 2013, Overload Transport began designing a bespoke inhouse software program with the assistance of Digressoft, a software contractor. Briffa annexes an undated letter of confirmation from Digressoft outlining the software development activities undertaken on behalf of Overload Transport and the Opponent since 2008.

    ·     warehouse storage services.

    ·     consultancy services to suppliers relating to fleet/business development and compliance with heavy vehicle national laws.

    ·     consultancy services to customers who are looking for freight management solutions.

    22.     Briffa claims that much of the Opponent’s business is generated via word of mouth and referrals from customers.

    23.     Briffa claims that the Opponent’s goods and services are promoted on the Opponent’s web site at which has been active since 2016 and annexes Wayback Machine[13] screenshots dated 26 February 2020 which includes use of Overload, , Overload Group,  and states that the services offered are:

    . I note there is no reference to the provision of recruitment of personnel services or computer software and related goods and services.

    [13] Briffa states that the business conducted by Overload Transport was sold to the Opponent on 30 June 2022 and annexes a signed redacted copy of the Contract of Sale of Business. I note the contract was signed by Dianne Briffa as director of Overload Transport and Briffa as director of the Opponent.

    25.     Briffa claims the Trade Marks were filed by Briffa with the authority of Overload Transport and used under licence by Overload Transport until the sale of the business to the Opponent. Briffa annexes a copy of the License Agreements dated 20 June 2016 in respect of the 1777135 trade mark (‘135 Mark’) and 30 January 2017 in respect of the 1822010 trade mark (‘010 Mark’) (‘Licence Agreements’).

    26.     Briffa attests that the Opponent obtained a Victorian Labour Hire Authority Licence on 26 June 2022 which authorises the Opponent to provide labour hire services in Victoria and annexes a copy of the licence.

    Discussion and Reasons

    27.     Prior to considering the merits of the Removal Application, the Applicant submits that the Registrar should remove the 135 Mark from the Register only in relation to the following 135 Services shown in strikethrough below:

    Class 35: Logistics services (business management and organization of facilities and resources); Recruitment of personnel

    Class 39: Logistics services (transport, packaging, and storage of goods); Transportation logistics

    28.     The Removal Application remains unamended for the 010 Mark.

    29.     I will therefore limit my consideration of the Opposition to the Removal Application of the 135 Mark to the services in strikethrough above (‘Disputed Goods and Services’).

    30.     The Opponent submits that:

    ·     Briffa provides uncontroverted declaratory evidence that the Trade Marks had been in use in connection with the operation of his family’s transport and logistics business since it was established on 23 December 1998;

    ·     both Overload Transport and the Opponent were authorised users of the Trade Marks during the Relevant Period;

    ·     Briffa exercised control over the manner in which the Trade Marks had been used by Overload Transport and the Opponent by overseeing and orchestrating the business activities of Overload Transport and the Opponent, as well as his involvement with the development of new software and operational capabilities to increase efficiencies and work flow for the business; and

    ·     should the Registrar find that the Opponent has not established relevant use in respect of all the Registered Goods and Services, the Registrar’s discretion should be exercised to retain the Registrations in their current form.

    31.     The Applicant submits that:

    ·     the Opponent has not established that any use within the Relevant Period by Overload Transport was under Briffa’s control;

    ·     there is no evidence that Briffa exercised actual control over use of the Trade Marks by Overload Transport nor evidence of any financial control, or of any relationship or common ownership or common directors or of a unity of purpose; and

    ·     the Registrar should remove the 010 Mark from the Register in relation to the Disputed Goods and Services and the 135 Mark in respect of all the 010 Goods and Services (together ‘Unused Goods and Services’).

    Use on the Unused Goods and Services

    32.     The Applicant argues that neither Briffa nor an authorised user has used the Trade Marks in respect of ‘recruitment of personnel’ as recruitment of personnel must relate to provision of these services to other persons. Any recruitment of personnel that is undertaken for the purpose of the Opponent’s or Briffa’s own business’ staffing needs is not a service that is provided to others.

    33.     I agree with the Applicant. The Opponent has only evidenced that its recruitment of personnel is for Overload Transport’s business’ staffing needs. None of Briffa, the Opponent or Overload Transport are in the business of recruiting personnel for anyone other than themselves.

    34.     The definition of service in the Australian Oxford Dictionary Online (2^nd edition) is, inter alia:

    noun 1. the act of helping or doing work for another or for a community etc.

    2. work done in this way.

    3. assistance or benefit given to someone

    and in the Macquarie Dictionary Online is, inter alia, ‘an act of helpful activity and the supplying or supplier of any articles, commodities, activities etc required or demanded’.

    35.     In Adamson v New South Wales Rugby League Ltd, Wilcox J observed that:

    As a reference to any standard dictionary will show, although the word “services” has a wide application, it imports always the notion of some assistance or accommodation being made available by one person to another.[14]

    [14] (1991) 31 FCR 242, [43].

    36.     I consider a service is an activity where one party provides services to another party in trade or commerce, usually for a fee. It is not an activity of providing a service to oneself. I am therefore satisfied that none of Briffa, the Opponent or Overload Transport are providing or have provided recruitment of personnel services to anyone in the course of trade at anytime including in the Relevant Period.

    37.     The Applicant submits that neither Briffa nor an authorised user have used the Trade Marks in respect of computer software and related goods and services. While on the evidence the Opponent and Overload Transport had a relationship with the software contractor Digressoft, this relationship was to assist the Opponent and Overload Transport in designing a bespoke[15] inhouse software program to meet Overload Transport’s niche requirements,[16] this software program was for use by the Opponent and Overload Transport and their employees. On the evidence, the software program is not provided or available for purchase by anyone nor available for use by anyone other than Briffa, the Opponent and Overload Transport.

    [15] As described in the Britta Declaration Annexure DB-9.

    [16] Ibid.

    38.     I am therefore not satisfied that any of Briffa, the Opponent or Overload Transport have, under the Trade Marks, provided computer software and related goods and services to anyone in the course of trade in the Relevant Period.

    39. To summarise, I am not satisfied that Briffa, the Opponent or Overload Transport have used the Trade Marks in respect of ‘recruitment of personnel, computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorised vehicles, computer software, providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and for dispatching motorised vehicles to customers and design and development of computer software’. As such, the ground for removal under s 92(4)(b) has been made out in respect of the Unused Goods and Services of both registrations 1777135 and 1822010.

    40.     Presently, the Registered Goods and Services of the Registrations would be amended as follows:

Registration number

Amendment to goods and services

1777135

class 35 - Logistics services (business management and organization of facilities and resources)

class 39 - Logistics services (transport, packaging, and storage of goods); Transportation logistics

1822010

Delete all goods and services in classes 9 and 42

Obstacles to Use

1. For the sake of completeness, I note the Opponent has not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of either of the Trade Marks for the Unused Goods and Services. I accordingly find no case under s 100(3)(c) has been established.

2. Given I have decided that the Trade Marks be removed for the Unused Goods and Services, I must consider whether it is appropriate to exercise discretion not to remove the Trade Marks for any of these Unused Goods and Services.

   The Registrar’s Discretion

3. The question to be asked is whether it is reasonable not to remove the Trade Marks for the Unused Goods and Services, even though the Opponent has not established use of the Trade Marks during the Relevant Period in respect of any of the Unused Goods and Services. I must be positively satisfied that it is reasonable that the Trade Marks should not be removed.

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

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

5. The discretion provided by this section is very broad. In PDP Capital Pty Ltd vGrasshopper Ventures Pty Ltd,[18] the Court made the following observations regarding the discretion under s 101(3):

   [18] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as 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 Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[19]

   [19] Ibid [153] (emphasis altered) (citations omitted).

6. The discretion factors broadly fall under 3 headings:

   • the interests of the owner of the trade mark;
   • the interests of the applicant for removal; and
   • the public interest.[20]

   [20] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33] (Hearing Officer Thompson).

7. The Opponent argues in favour of the exercise of the discretion on the basis of:

   ·The Trade Marks have been used for over 26 years and have acquired market recognition and value;

   ·this is not a case of unused or abandoned Trade Marks cluttering the register, nor is it a case of residual reputation but, rather, a case of actual and ongoing use;

   ·if the Trade Marks are removed, there is a real risk of customer confusion as the Applicant has filed trade mark application number 2011499 for the trade mark DRAKE OVERLOAD covering, inter alia, software products and personnel services in class 35;

   • there is a real risk that customer confusion could cause significant damage to the Opponent’s reputation and valuable goodwill; and
   • there is public interest in maintaining the marks on the register.

8. The Applicant argues against the exercise of the discretion on the basis of:

   ·the evidence does not demonstrate use of the Trade Marks by the Opponent within the Relevant Period on the Unused Goods and Services;

   ·partial removal of the Registrations would not result in any consumer confusion in the marketplace because:

   o   the Opponent has not used the Trade Marks in respect of the Unused Goods and Services;

   o   there is no recognition amongst consumers of the Trade Marks in respect of the Unused Goods and Services;

   o   the Unused Goods and Services are not similar or closely related to the Opponent’s ‘logistics services (business management and organization of facilities and resources); logistics services (transport, packaging, and storage of goods) and transportation logistics’ (‘Logistics Services’); and

   o   there is no damage to the Opponent’s reputation and goodwill.

   The private interests of the parties

9. While the Trade Marks may have been used for many years and are likely to have acquired market recognition and value, on the evidence, this market recognition and value is solely in respect of the Logistics Services. As there has been no use of the Trade Marks for the Unused Goods and Services, I am not satisfied there is any market recognition and value for the Unused Goods and Services. As such, if the Trade Marks are removed for the Unused Goods and Services, I do not consider there to be any risk of customer confusion.

10. I agree with the Applicant that software products or personnel services are not goods or services of the same description or closely related to Logistics Services. I consider software products or personnel services and Logistics Service to be readily distinguishable when consideration is given to their nature, use and trade channels. A provider of Logistics Services may use software in their business and may use personnel companies to hire employees for their business but they do not typically offer personal services to third parties nor design or provide software to third parties.

11. I consider that removal of the Trade Marks for the Unused Goods and Services would not affect the Opponent’s trading or business as the Opponent would still have protection of the Trade Marks for Logistics Services. I am therefore satisfied that removing the Trade Marks for the Unused Goods and Services will not have an impact on the Opponent’s ability to continue to use the Trade Marks for its current trading activities.

    52.     In contrast, as the Applicant has filed trade mark application number 2011499 for the trade mark DRAKE OVERLOAD for software products or personnel services,[21] given the similarity of this trade mark application to the Trade Marks, not removing the Registration will adversely affect the Applicant’s private interests in obtaining registration of its trade mark.

    [21] Although not in evidence, the existence of this application is on the public record and referred to in the Opponent’s submissions at [28].

    The public interest

12. On the question of the public interest, there are a number of aspects to be considered.

13. There is a public interest in maintaining the integrity (or ‘purity’) of the Register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:

    [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[22]

    [22] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

14. The question of the public interest arises in the determination whether confusion would be caused by removing the Unused Goods and Services of the Trade Marks. Thus, while the ‘purity’ of the Register is a major aspect of the public interest, another major aspect is the minimisation of the likelihood for the public to be deceived or confused as to the trade source of goods and services bearing a trade mark.

15. As I have stated above, if the Trade Marks are removed for the Unused Goods and Services, I do not consider there to be any risk of customer confusion.

16. On balance, in light of the above considerations, I am unpersuaded that the Opponent has provided justification to allow the retention of the Trade Marks on the Register for the Unused Goods and Services. Given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove the Unused Goods and Services of the Registrations.

    Decision

17. The Opponent has been partially successful in its oppositions in respect of the Logistics Services. The ground for removal under s 92(4)(b) of the Trade Marks has been established in respect of the Unused Goods and Services.

18. I direct that registration 1777135 be amended so that the 135 Services are limited to:

    Class 35: Logistics services (business management and organization of facilities and resources)

    Class 39: Logistics services (transport, packaging, and storage of goods); Transportation logistics

19. I further direct that registration 1822010 be removed from the Register in respect of all the 010 Goods and Services.

20. In the event of an appeal from this decision, the Registrations shall not be restricted or removed until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the Registrations be dealt with as the Court sees fit.

    Costs

21. Both parties have sought their costs. Neither party has been entirely successful in respect of the applications for removal. As such I have decided not to award costs.

    Anne Makrigiorgos

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    30 July 2024