Peter Goodricke v Bob Cooper Outback Survival Pty Ltd

[2024] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by Peter Goodricke to application under section 92 of the Trade Marks Act 1995 (Cth) by Bob Cooper Outback Survival Pty Ltd to remove trade mark number 2173299 (8, 9, 28, 39) – SAFE TRAVELS! and device - in the name of Peter Goodricke

Delegate:

Louise Tuohy

Representation:

Opponent: Richard Plummer, Principal of Elliptic Legal & Patent Services

Applicant: Self represented

Decision:

2024 ATMO 9

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(a) application for removal – no use or intention to use the trade mark – exercise of Registrar’s discretion not appropriate – trade mark to be removed from the Register

Background

1. Peter Goodricke (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:  2173299

   Trade Mark:   (‘Trade Mark’)

   Filing Date:  22 April 2021

   Specification:  Class 8: Hand held (hand operated) apparatus for use in forestry

   Class 9: Battery powered beacons

   Class 28: Apparatus for use in outdoor sporting activities

   Class 39: Accompanying of travellers

   (collectively ‘Registered Goods and Services’)

2. On 8 December 2021, Bob Cooper Outback Survival Pty Ltd (‘Removal Applicant’) filed an application (‘Application’) seeking complete removal of the Trade Mark from the Trade Marks Register (‘Register’) for non-use.

3. On 17 December 2021, the Removal Opponent filed a Notice of Intention to Oppose the removal of the Trade Mark and its Statement of Grounds and Particulars (‘SGP’).

4. On 11 February 2022, the Removal Applicant filed a Notice of Intention to Defend the Application.

5. The Removal Opponent filed the following declaration as evidence in support (‘EIS’):

   • Declaration of Peter Goodricke, Removal Opponent, made on 22 February 2022 (‘Goodricke’).

6. The Removal Applicant filed the following declarations as evidence in answer (‘EIA’):

   • Declaration of Bob Cooper, Founder and Sole Director of the Removal Applicant, made on 27 May 2022, with Annexures BC-1 to BC-4.

• Declaration of Mathew Reed, a professional photographer engaged by the Removal Applicant, made on 1 June 2022, with Annexure MR-1.

• Declaration of Richard William Plumber, Principal of Elliptic Legal & Patent Services, the Removal Applicant’s representative, made on 3 June 2022, with Annexure RWP-1 (‘Plumber’).

1. The Removal Opponent did not file evidence in reply.

2. Once the time for filing evidence had ended the parties were given an opportunity to request an oral hearing in this matter or a hearing by way of written submissions. On 19 September 2022 the Removal Applicant requested a hearing by way of written submissions. This matter came before me, a delegate of the Registrar of Trade Marks. I make my decision based on the SGP, EIS, EIA and written submissions filed by the Removal Applicant.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] deals with removal of trade marks from the Register due to non-use.

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

2. The Removal Applicant nominated s 92(4)(a) as the ground for removal. Section 92(4)(a) provides:

   (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

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

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

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

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

   in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

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

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

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

3. The onus of rebutting an allegation made under s 92(4)(a) lies with the Removal Opponent. This onus is pursuant to s 100 which provides:

   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:

   (a)  any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

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

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

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

   in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or

   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or

   […]

   (2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before that period; or

   (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

4. In the SGP the Removal Opponent particularises the ground as follows:

   Safety Beacons sells personal safety equipment through the website and has operated since 2015 we engaged a graphics designer to design our graphics which we have been using since its inception

   The trademark in question an integral part of the business' identity hence why we have registered it as a trademark

   https:\\ an icon

   clearly shows our trademark as do the attached invoices dating back a number of years.

5. Under s 92(4)(a) the Removal Opponent must establish that the Trade Mark was registered with an intention in good faith to use it in Australia or authorise the use of the Trade Mark in Australia or to assign the Trade Mark to a body corporate for use by the body corporate in Australia as at the filing date of the Application on 22 April 2021, or that it had in fact used the Trade Mark in good faith, earlier than one month before the Application being 8 November 2021.

6. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

7. Though the onus is, in terms of s 100, on the Removal Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed:

   [,,,] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. [3]

   [3] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALIR 242, [21].

8. While this observation was made in a proceeding under the Trade Marks Act 1955 (Cth) where the onus was on an applicant for removal, the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd (‘Structureco’), Delegate Forno said:

Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[4]

[4] [2000] ATMO 31.

1. In accordance with s 101, if the ground for removal is established, I may decide to remove the Trade Mark from the Register in respect of any or all of the Registered Goods and Services, or, if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

Discussion

1. The Goodricke declaration consists of only one statement which I have reproduced below:

I have been using the image that I have trade marked since 2015 on my Web Site Safetybeacon.com.au and the invoices as well as letterhead. My Website clearly shows the trademark in use type="1">

The Goodricke declaration does not include any exhibits or annexures. However, the SGP and Annexure RWP-1 to Plumber include reproductions of the homepage of website which shows use of the following trade mark (‘SB1’):

1. The homepage offers two services: 1) an online retail service offering for sale personal locator beacons featuring the trade mark CETCME; and 2) an equipment hire service for personal locator beacons.

2. The SGP also includes the reproduction of two invoices. I am including a reproduction of the trade mark used in the heading of the invoices below, even though these invoices are not technically part of the evidence and despite the Office’s advice to the Removal Opponent to file the invoices as evidence (‘SB2’):

1. The invoice dated 7 June 2019 is for a marine rescue, diver rescue and man overboard GPS position transmitter featuring the trade mark Nautilus Lifeline. The invoice dated 12 June 2021 is for a personal locator beacon featuring the trade mark CETCME. Both invoices were issued by Peter and Wendy Goodricke trading as Safety Beacons.

2. In my assessment of the evidence, the Removal Opponent has used the SB1 trade mark in relation to online retail store and equipment hire services and the SB2 trade mark in relation to retail services. The Removal Opponent has not shown use for any of the Registered Goods and Services.

3. For completeness, I will consider whether use of the SB1 and SB2 trade marks are uses of Trade Mark with additions or alterations not substantially affecting its identity.[5] The test is the same as the test in respect of substantial identity and requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[6] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the all the trade marks below:

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

   [6] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Trade Mark	SB1
	SB2

1. On a side by side comparison there are clear differences between the trade marks. All the trade marks contain a device of a man, walking, carrying a backpack, wearing a hat and reading a map, done in silhouette (‘man device’). The Trade Mark also consists of the term SAFE TRAVELS!. In comparison SB1 consists of the man device placed between the terms SAFETY BEACON AUSTRALIA and SAFE TRAVELS!, and walking on a series of waves, and SB2 consists of the man device walking on a series of waves. For these reasons I find that the Trade Mark is not substantially identical to SB1 or SB2. The total impression emerging from a side by side comparison is not one of resemblance. As such, I find that the Removal Opponent has failed to show any actual use of the Trade Mark.

2. The Goodricke declaration does not offer a statement in relation to the Removal Opponent’s intention to use the Trade Mark for the Registered Goods and Services in good faith. In the SGP the Removal Opponent states that:

   Safety Beacons sells personal safety equipment through the website and has operated since 2015 we engaged a graphics designer to design our graphics which we have been using since its inception

   The trademark in question an integral part of the business' identity hence why we have registered it as a trademark

3. While noting the low burden placed on the Removal Opponent in an application under s 92(4)(a), I am not satisfied that these casual statements made in the SGP amount to the bare statement of intention to use considered in Structureco. The statements in the SGP make no commitment to use or authorise the use of the Trade Mark for the Registered Goods and Services. Moreover, these statements are not supported by the evidence which indicates the Removal Opponent’s intention relates to operating an online retail store and equipment hire service. There is no evidence that the Removal Opponent intends to operate a business manufacturing beacons and hand held and sporting apparatus, and providing travel companion services.

4. The ground for removal under s 92(4)(a) has been established in relation to the Registered Goods and Services.

Registrar’s Discretion

1. Section 101(3) provides:

101  Determination of opposed application—general

[…]

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

[…]

1. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   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.[7]

   [7] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

2. In the present case, the Removal Opponent has not made submissions that I should exercise the discretion and there is no evidence that the Removal Opponent ever used the Trade Mark or intends to use or authorise use of the Trade Mark in Australia for the Registered Goods and Services. As such, I am unpersuaded that the removal of the Trade Mark for the Registered Goods and Services would practically impact on the interests of the Removal Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark.

Decision

1. The Removal Opponent has not established its opposition to removal. I direct that trade mark registration 2173299 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal within the relevant timeframe, I direct that the disposition of the Application should be in accordance with the Court’s order or direction. 

Costs

1. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent under s 221 in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

17 January 2024