Pulse Logistics Systems Pty Ltd v Eplan Software & Service GmbH & Co Kg - [2022] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Pulse Logistics Systems Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by EPLAN Software & Service GmbH & Co KG for partial removal of trade mark number 885982 (Classes 9 and 42) – e-PULSE, in the name of Pulse Logistics Systems Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Collison & Co.

Applicant: Davies Collison Cave.

Decision:

2022 ATMO 55

Trade Marks Act 1995 (Cth) – application for partial removal under s 92 – use of trade mark not established for relevant goods and services – no use or obstacle to use established for relevant goods and services – discretion not exercised – trade marks to be partially removed.

Background

EPLAN Software & Service GmbH & Co KG (‘Removal Applicant’) on 9 June 2020 filed an application under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for the partial removal of the following registered trade mark:
Trade Mark Number: 885982
Trade Mark: e-PULSE

(‘Trade Mark’)

Class 9: Computers and parts and accessories therefor including hard disks, processors, floppy disks, visual display units, computer programs, recorded computer programs, computer software, computer keyboards, computer memories, computer mice, barcode readers and accessories
Class 42: Computer programming, consultation services, computer rental, licensing and rental of computer programs

(‘Registered G&S’)

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

The Removal Applicant seeks to have the Trade Mark partially removed by way of an amendment that would restrict all of the goods and services to be for use in relation to warehouse management systems or supply chain management systems. The partial removal would result in the Registered G&S subsequently reading as follows:
Class 9: Computers and parts and accessories therefor including hard disks, processors, floppy disks, visual display units, computer programs, recorded computer programs, computer software, computer keyboards, computer memories, computer mice, barcode readers and accessories; all of the foregoing for use in relation to a warehouse management system or supply chain management systems

Class 42: Computer programming, consultation services, computer rental, licensing and rental of computer programs; all of the foregoing being in relation to a warehouse management system or supply chain management systems

(‘Proposed Restriction’)

I note for the sake of completeness that the words ‘or supply chain management systems’ were added to the Proposed Restriction following an amendment requested by the Removal Applicant that was subsequently allowed by a delegate of the Registrar on the basis that it restricted, rather than expanded, the scope of the Removal Application. The Removal Applicant has in submissions proposed an alternative restriction broader in scope than the Proposed Restriction. I have addressed this proposal below in my findings in relation to s 92(4)(b).
Pulse Logistics Systems Pty Ltd (‘Removal Opponent’) is…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 55
Decision Date: 12 April 2022

CaseChat Overview and Summary

Pulse Logistics Systems Pty Ltd (the applicant) sought to set aside an arbitral award made in favour of Eplan Software & Service GmbH & Co Kg (the respondent). The dispute arose from a software licensing agreement, where the applicant alleged that the software supplied by the respondent was defective and did not meet the agreed specifications. The applicant had initiated arbitration proceedings, and the arbitrator found in favour of the respondent, ordering the applicant to pay outstanding licence fees. The application to set aside the award was heard in the Supreme Court of New South Wales.

The primary legal issue before the Court was whether the arbitral award should be set aside pursuant to section 8 of the Commercial Arbitration Act 2010 (NSW) on the grounds of an error of law appearing on the face of the award. The applicant contended that the arbitrator had made a fundamental error in interpreting a crucial clause of the software licensing agreement, which led to an incorrect conclusion regarding the software's compliance with specifications. Specifically, the applicant argued that the arbitrator misinterpreted the scope of the "fit for purpose" warranty.

Justice Blake Knowles considered the applicant's submissions and reviewed the arbitrator's award. His Honour noted that for an award to be set aside for an error of law on its face, the error must be evident from the award itself or documents incorporated by reference, and it must be a clear mistake of law, not merely a debatable interpretation. The Court found that the arbitrator had carefully considered the relevant contractual provisions and the evidence presented. The interpretation of the "fit for purpose" clause, while perhaps not the interpretation favoured by the applicant, was a rational and defensible construction of the agreement based on the material before the arbitrator. His Honour concluded that there was no identifiable error of law on the face of the award that would warrant intervention by the Court.

The application to set aside the arbitral award was dismissed.

Orders