PI-Design AG

[2018] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by Bramco International Pty Ltd to registration of trade mark application 1718730 (9, 37) - BRAMCO - filed in the name of Ampcontrol Pty Ltd

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2018 ATMO 2 Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 52 opposition: s 58 considered – ground established – registration refused

Background

1. This is an opposition brought by Bramco International Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Ampcontrol Pty Ltd (‘Applicant’): 

Application Number:	1718730
Filing Date:	2 September 2015
Goods and Services:	Class 9: Electrical and electronic equipment including; relays, switches, voltage and current regulators, controllers, protection relays; communication systems including two and three wire communication systems, generators, alternators, ammeters, amplifiers, computers, analogue to digital converters, control systems, calibrating equipment, capacitors and filters, transformers, current amplifiers, electric motors and machines, computers, diodes, diode switches, transducers, ignition coils, multipliers, electrodynamometer instruments, transistors, relays for protection of underground mining equipment, electrical equipment for down loading and receiving operational parameters of plant and equipment, equipment for data transmission, acquisition, control and display, analysers, adapters, alarms, barriers, batteries, battery chargers, cable counters, couplers, earthing equipment and electrical equipment enclosures therefor, fibre optic equipment, flameproof equipment, hazardous area equipment, instruments, micro chips, microprocessors, neutral earthing resistors, power supplies, paging systems, radio communications, resistors, starters, telephones and systems, timers, vacuum switchgear, variable speed drives, silicon controlled rectifier starters, thyristor switching and control devices, wire control relays, monitoring devices, substations, circuit breakers, power factor correction equipment, load and level switches, pullkeys Class 37: Installation, maintenance and repair of electrical and electronic products, apparatus and equipment, including equipment and apparatus for data acquisition, transmission control and display, relays, switches, voltage and current regulators, controllers, protection relays, communication systems including two and three wire communication systems, generators, alternators, ammeters, amplifiers, computers, analogue to digital converters, control systems, calibrating equipment, capacitors and filters, transformers, current amplifiers, electric motors and machines, computers, diodes, diode switches, transducers, ignition coils, multipliers, electrodynamometer instruments, transistors, relays for protection of underground mining equipment, electrical equipment for down loading and receiving operational parameters of plant and equipment, equipment for data transmission, acquisition, control and display, analysers, adapters, alarms, barriers, batteries, battery chargers, cable counters, couplers, earthing equipment and electrical equipment enclosures therefor, fibre optic equipment, flameproof equipment, hazardous area equipment, instruments, micro chips, microprocessors, neutral earthing resistors, power supplies, paging systems, radio communications, resistors, starters, telephones and systems, timers, vacuum switchgear, variable speed drives, silicon controlled rectifier starters, thyristor switching and control devices, wire control relays, monitoring devices, substations, circuit breakers, power factor correction equipment, load and level switches, pullkeys, repair of cables; and consultancy services relating to all of the foregoing; information technology services being the installation of computer hardware (‘Applicant’s Goods and Services’)
Trade Mark:	BRAMCO	(‘Trade Mark’)

2. Following the advertisement on 28 January 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 29 March 2016.  The Opponent then filed Statements of Grounds and Particulars on 29 April and 26 May 2016.  Each of these Statements of Grounds and Particulars were assessed by this office as inadequate.  The Opponent then filed an amended Statement of Grounds and Particulars (‘SGP’), assessed by this office as adequate on 22 June 2016. The SGP raised grounds of opposition under ss 42(a) and (b), 43, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 2 July 2016.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 10 October 2016.  This evidence consists of a declaration made on 8 October 2016 by Mark Leishman, Authorised Representative of the Opponent, with Exhibits 1-8 (‘Leishman Declaration’).  The Applicant chose not to file any evidence in answer.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 12 April 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  The Applicant filed written submissions on 12 May 2017 (‘Applicant’s Submissions’).  The Opponent filed written submissions on 31 May 2017 (‘Opponent’s Submissions’).

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

The Opponent

6. The Opponent is a company based in Australia that trades in the electronics industry.  The Leishman Declaration contains the following claims/statements, which I have attempted to summarise to the best of my ability as the declaration is quite unclear in parts.  In particular the Leishman Declaration makes numerous references to ‘Bramco’ without clearly identifying whether the declarant is referring to a company (and which company in particular), a company name or a trade mark:

·    A company known as Bramco was formed by the Butterworth family in 1945.  It used the trade mark BRAMCO, being an acronym for Butterworth Radio and Manufacturing Company.  In 1954 Bramco Electronics was incorporated selling products to the mining industry under the Trade Mark.

·    In 1984 Bramco was purchased from the Butterworth family by the Leishman family, who continue to sell products under the Trade Mark to mining and related industries.  In 2013 the company Bramco Electronics had receivers appointed to it which did not affect any IP owned by the Leishman family.  In any event in 2014 the Leishman family purchased any and all IP rights held by Bramco Electronics.  At the same time the Leishman family provided a licence allowing use of the Trade Mark by Bramco Group International.  This licence was subsequently revoked due to fraud concerns following which the Leishman family licenced the use of the Trade Mark to Bramco Mining and Electronics and then the Opponent.  The Trade Mark has been used, by the Opponent and various prior and related entities, uninterrupted for over 50 years.

·    Products sold by various entities under the Trade Mark over the last 20 years include outlet test units, neural earth and link monitors, control & protection modules and pullkeys.  The Leishman Declaration exhibits data sheets advertising various products produced by it that appear to be dated March and April 2015.  Products advertised by it include an ‘Outlet Test Unit’ and a ‘Control & Protection Module’.  The Trade Mark is prominently displayed on the top of each data sheet.

·    The Applicant and Opponent are direct competitors as the Applicant also supplies electronic and other electrical products to the mining industry.  The Applicant has also purchased products from the Opponent and other Bramco entities.

The Applicant

7. The Applicant has provided no evidence and, therefore, I am unable to provide any information about the Applicant and any use of the Trade Mark by it other than what is set out in the EIS and referred to above.   

Grounds of Opposition, Onus and Standard of Proof

8. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(a) and (b), 43, 58, 60 and 62A. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 58. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

9. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 2 September 2015, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act is reproduced below:[4]

   [4] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased the unpublished decision of the Registrar’s Delegate in respect of the opposition to Trade Mark Application No. 1678345 – Heavens Woodfire Pizza - in the name of Melambada Pty Ltd.

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

2. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

   · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

   ·    that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[7]

   [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [6] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

3. The ground based on s 58 of the Act was particularised in the SGP as follows:

   The trademark Bramco, was introduced in 1945.  Originally, the name represented Balcombe Radio and Manufacturing Company.

   The trade mark became synonymous with electrical and electronic equipment (TM class 9) and installation, maintenance and repair of electrical and electronic products (TM class 37) between the years 1954 and 1984.

   The trademark and company Bramco Electronics was then acquired in 1984 by Rynand Pty Ltd, which was controlled by the Gil Leishman and his family.

   Between 1984 and 2013 the trademark (Bramco) was clearly established and recognised world-wide for an expansive range of products.  In addition Bramco was recognised for design, manufacture, supply and service of Bramco labelled electrical and electronic equipment, for mining and general industry, and also for the installation, maintenance and repair of electrical and electronic products.

   In late 2013 the trademark and all products associated with it were acquired by Gil Leishman and Kathleen Leishman, who from 29 March 2016 licensed the use of the trademark for the continuing design, manufacture, supply and service of the same Bramco labelled range of products to Bramco International.

   Therefore the trademark has remained uninterrupted for over 50 years.  The Leishman family and its staff have controlled the trademark uninterrupted since 1984.

4. The Applicant has not filed any Evidence in Answer and hence I have no evidence that the Applicant used the Trade Mark prior to the relevant date.  Hence it is only necessary that the Opponent establish prior use of the Trade Mark before the relevant date. 

5. The Leishman Declaration is somewhat unclear and I accept the Applicant’s submissions that the EIS does not clearly establish a chain of title or ownership to the Trade Mark.  The Leishman Declaration also does not identify any use the Opponent may have made of the Trade Mark prior to the relevant date, indeed the Opponent was incorporated after the relevant date.  The Leishman Declaration contains claims of licences being granted and ownership of the Trade Mark by ‘the Leishman family’ which are unsupported by documentary evidence. 

6. However, I note that in order for the Opponent to succeed under this ground it is not necessary that it establish that it is the owner of the Trade Mark, rather what Opponent has to establish, on the balance of probabilities, is that the Applicant is not the owner of the Trade Mark.

7. While I note the significant gaps in the EIS, I reach the following factual conclusions:

   ·    Companies trading under names that consist of the word ‘Bramco’ (the ‘Bramco entities’) have sold electrical and electronic equipment, targeted at the mining industry, for a considerable period of time predating the relevant date.  As part of these sales the Bramco entities have provided installation, repair and maintenance services for the electrical and electronic equipment.  In support of this conclusion I note the various dated certifications in respect of products manufactured by Bramco Electronics Pty Ltd between 1984 and 2012, various product specification sheets dated March 2015 under the name Bramco International[8], various reports about the installation and servicing of products installed by the Bramco entities and copies of product manuals noting that specialist technicians and service backup are readily available. 

   ·    More specifically, between 2010 and 2015 electrical and electronic products (and related services) were sold under the Trade Mark by one or more Bramco entities.  While the Applicant submits correctly that there are no dated receipts showing sales of electronic products under the Trade Mark, I am satisfied by the evidence in exhibit 2 of the Leishman Declaration which is said to be sales of products under the Trade Mark and the evidence of the use of the Trade Mark for advertising purposes, which is sufficiently substantial that it would be implausible for there to be no sales of the products and related services advertised under the Trade Mark between 2010 and 2015.

   ·    Prior to the relevant date the Trade Mark was used for the advertising of electrical and electronic products.  The EIS contains over 50 pages of data sheets and product specifications dated March/April 2015 for over 20 different products that prominently display the Trade Mark.

   [8] I note that the date of these product specification sheets pre-dates the incorporation of the Opponent and as such the product specification sheets must have been produced for Bramco Group International or another member of the Bramco entities

8. While it is not clear on the evidence which of the Bramco entities has ownership rights to the Trade Mark, as a result of the evidence before me, I am satisfied, on the balance of probabilities, that a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on the use of an identical Trade Mark for goods and services that are the same kind of thing as the Applicant’s Goods and Services prior to the relevant date and any use of the Trade Mark or substantially identical mark by the Applicant. Consequently, the Opponent has established the ground of opposition pursuant to s 58 of the Act.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
10 January 2018