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

1. 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.

1. 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’)

1. 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).

2. Pulse Logistics Systems Pty Ltd (‘Removal Opponent’) is the owner of the Registration. The Removal Opponent filed a notice of intention to oppose the Removal Application on 13 August 2020, followed by a statement of grounds and particulars (‘SGP’) on 14 September 2020. The Removal Applicant filed a notice of intention to defend the opposition to the Removal Application on 12 November 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 16 February 2021. The Removal Applicant did not file Evidence in Answer, and as such, the Removal Opponent did not file Evidence in Reply.

4. Both parties elected to be heard by way of written submissions. Collison & Co filed written submissions on behalf of the Removal Opponent. Davies Collison Cave filed written submissions on behalf of the Removal Applicant.

5. As the Removal Application was filed on 9 June 2020, for the purposes of deciding the opposition, the relevant three-year is the period ending on 9 May 2020 (‘Relevant Period’).

Evidence

1. The EIS consists of a declaration by Mr Kerry Hutchings, CEO of the Removal Opponent, made on 15 February 2021 with Exhibits KH-1 to KH-5.

2. Mr Hutching declares that the Removal Opponent is a leader in the design, development, and implementation of supply chain management systems which are sold under various ‘PULSE’ brands. Mr Hutchings explains that in addition to the Trade Mark, the Removal Opponent is the owner of various PULSE formative registered trade marks in Australia.

3. Mr Hutchings declares that the Trade Mark is used by the Removal Opponent in relation to a web portal via which supply chain management systems are provided to the Removal Opponent’s customers. Mr Hutchings states:

   “e-PULSE Web Portal is a separate product and is independent from the PULSE Warehouse Management System. e-PULSE Web Portal provides real time inventory visibility and 24x7 access to orders for customers and suppliers. It can be deployed for:

   ·On-line ordering via the web, and used in conjunction with smart phones and hand held mobile devices;

   ·On-line stock status / enquiry;

   ·On-line supplier purchase order status / enquiry and receiving, if operating other sites where inventory visibility is required;

   ·On-line customer order status / enquiry with links to preferred carriers for track and trace;

   ·Inventory Management and Inventory Re-Order / Replenishment.”

4. Mr Hutchings annexes a copy of the e-PULSE Web Portal Real Time Supply Chain Visibility product information brochure, invoices to various customers during the Relevant Period, and a training document. The exhibits include numerous clear examples of use of the Trade Mark in relation to a web portal.

Grounds, onus and standard

1. The Removal Application nominates grounds for removal under ss 92(4)(a) and 92(4)(b). In reaching my decision, I have only found it necessary to consider s 92(4)(b), which states:

92 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.

1. The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[2]

   [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

2. The Removal Opponent relies on evidence of use of the Trade Mark during the Relevant Period.[3] Further, the Removal Opponent also refers in the SGP to circumstances which were an obstacle to use of the Trade Mark during the Relevant Period. Finally, I also have a general discretion to allow the Trade Mark to remain registered even if there has been no use or limited use of the Trade Mark during the Relevant Period. The Removal Opponent submits I should exercise this discretion in its favour. 

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

3. I note that as the Trade Mark was filed prior to 24 February 2019, a ground for removal under s 92(4)(b) may only be relied on by the Removal Applicant once a period of five years has passed since the filing date of the Trade Mark.[4] As the Trade Mark was filed on 16 August 2001, this requirement is met.

   [4] Ibid, s 93 (pre amendments commencing 24 February 2019); Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) s 46.

4. Findings of fact in this decision are based on the civil standard of the balance of probabilities.

Discussion

Use of the trade mark during the Relevant Period

1. I must first decide whether there has been use of the Trade Mark during the Relevant Period in relation to goods and services in the Registered G&S falling outside of the scope of the Proposed Restriction. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the relevant Registered G&S, I must then decide whether there are circumstances which were an obstacle to use of the Trade Mark, or whether to otherwise exercise discretion to allow the Trade Mark to remain registered, for any of the Registered G&S falling outside the scope of the Proposed Restriction for which use during the Relevant Period was not established.

2. The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to or in relation to those goods or services.[5]

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

3. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[6] A trade mark may be used in relation to goods where it is included on an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[7] Use of a trade mark in relation to services includes use in physical or other relation to the services.[8]

   [6] Trade Marks Act 1995 (Cth) ss 7(4), 92(4)(b).

   [7] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

   [8] Trade Marks Act 1995 (Cth) s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

4. I am satisfied there has been genuine use of the Trade Mark during the Relevant Period in relation to a web portal used in relation to warehouse / supply chain management systems. It appears that this product is provided as ‘software as a service’, given that the e-PULSE Web Portal brochure annexed to the EIS states that “e-PULSE incorporates the latest web and database technologies and is offered as an ASP or SaaS pricing model for ease of entry”.

5. The Proposed Restriction would result in a specification that still encompasses both computer software as a ‘good’ in Class 9, and licensing and rental of computer software as a ‘service’ in Class 42, to the extent that such goods and services are for use in warehouse or supply chain management systems. The web portal for which the Trade Mark was used during the Relevant Period falls within at least one of these categories. As such, I consider that the Proposed Restriction sought by the Removal Applicant would result only in the removal of the Trade Mark for goods and services for which the Removal Opponent has clearly not demonstrated any use during the Relevant Period.

6. I note that in submissions the Removal Applicant sought that the Trade Mark be removed for the entirety of the Registered G&S, “save for web portal Software as a Service for accessing/viewing stock management systems, or, alternatively the Goods & Services "for use in in relation to a warehouse management system or supply chain management systems"”. The Removal Application as initially filed by the Removal Applicant only required, through the Proposed Restriction, partial refinement of the goods and services in both Class 9 and 42. An amendment to the Removal Application was allowed to the Removal Application by a delegate of the Registrar on the basis that it narrowed the scope of the goods and services for which removal was sought. As such, the amendment to the Removal Application did not materially disadvantage the Removal Opponent. To contemplate removal for a more extensive range of the Registered G&S as now proposed by the Removal Applicant would clearly be unfair to the Removal Opponent. As such, I consider that the proposal by the Removal Applicant to remove the entirety of the Registered G&S “save for web portal Software as a Service for accessing/viewing stock management systems” goes beyond the scope of both the initial Removal Application, and the Removal Application as amended, and I will only consider removal insofar as it is consistent with the Proposed Restriction in both Classes 9 and 42.

7. I am not satisfied that the Removal Opponent has demonstrated use of the Trade Mark in relation to any of the Registered G&S for which removal has been sought consistently with the Proposed Restriction (i.e. those outside of the field of warehouse management or supply chain management). As such, I must now consider whether there were circumstances that were an obstacle to use or whether there are other compelling reasons to exercise discretion not to partially remove the Trade Mark consistently with the Proposed Restriction.

Circumstances that were an obstacle to use

1. Section 100(3)(c) states that the Removal Opponent will have rebutted the allegation of non-use during the Relevant Period if:

   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 use of the trade mark during that period.

2. Circumstances that may constitute an obstacle to the use of a trade mark within the meaning of s 100(3)(c) of the Act were considered by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds, where his Honour said:

   In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark.

   Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.[9]

   [9] Woolly Bull Enterprises Pty Ltd and Another v Reynolds [2001] FCA 261, [55]-[56] (Drummond J).

3. The Removal Opponent does not refer in its evidence to any specific circumstances which were an obstacle to use during the Relevant Period. Rather, it appears that the Trade Mark was always used, and always intended to be used, during the Relevant Period in relation to a portal for warehouse and supply chain management systems. The prevailing circumstances around use of the Trade Mark during the Relevant Period appear to be ‘business as usual’. As such, I am not satisfied that there was a relevant obstacle to use of the Trade Mark during the Relevant Period.  

Discretion

1. The discretion available to the Registrar is ‘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 Act’.[10] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[11] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[12]

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

   [11] Ibid [69].

   [12] [2002] FSR 51 (Ch) 790, [19].

2. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[13]

   [13] [2008] FCA 934, [210] (citations omitted).

3. The Removal Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Removal Applicant to establish that it should not.[14]

   [14] Austin Nichols & Co Inc v Lodestar Anstalt [2012] (n 13) [44].

4. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

• whether there has been abandonment of the trade mark;

• whether the registered proprietor of the mark still had a residual reputation in the mark;

• whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

• whether the applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[15]

  [15] ‘Gallo’ (n 16) [202]–[203].

1. The Registrar may also take into account whether the trade mark has been used for similar or closely related goods or services.[16]

   [16] Trade Marks Act 1995 (Cth) s101(4).

2. The Removal Opponent submits that the Trade Mark is used as a part of their supply of logistics solutions, and that warehouse management systems and supply chain management systems comprise parts of ‘logistics solutions’. The Removal Opponent states that logistics systems comprise five elements, being storage, warehousing, material handling, packaging and unitisation, inventory, transport, and information and control. The Removal Opponent submits that to allow the Proposed Restriction would be to allow another logistics provider to use the Trade Mark in relation to other elements of the logistics industry, which would risk deception or confusion.

3. I am not persuaded by the Removal Opponent’s submissions. I consider that removal in accordance with the Proposed Restriction will result in a specification of goods and services which is still considerably broader than that for which the Removal Opponent has demonstrated use of the Trade Mark. Further, the tests for infringement which allow a trade mark to be enforced against another trader using a deceptively similar mark for similar or closely related goods or services are a sufficient safeguard of the Removal Opponent’s rights even taking into account the narrower scope of the Registered G&S after the Proposed Restriction.

1. I also consider there is a public interest in the restriction of broad claims for computer software. The use of computer software is ubiquitous across many industries. Most trade marks registered for computer software are only used for very specific applications. However, a broad claim for ‘computer software’ encompasses software in all fields and could notionally include products as diverse as downloadable word games and advanced avionics software. It is highly unlikely in most instances that a trader will use, or have an intention to use, a particular trade mark for software outside of a specific field. In those cases, and in the absence of any compelling counterargument, claims for software should be appropriately restricted. Such refinements enhance the integrity of the register by reducing unreasonably broad monopolies which hinder the legitimate use and registration of similar marks for entirely dissimilar goods or services.

2. As such, I decline to exercise discretion in favour of the Removal Opponent.

Decision  

1. The Removal Opponent has not established a ground of opposition to the application for partial removal of the Trade Mark. As such, the Trade Mark should be partially removed, with removal to be effected by the following amendments to the specification of goods and services in accordance with the Proposed Restriction, namely:

   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

1. Given it is the right of the Removal Opponent to appeal this decision to the courts, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then, the removal shall not occur until the appeal has either been discontinued or the Removal Application have been otherwise dealt with as the Court sees fit.

2. The Removal Applicant has sought an award of costs. As costs generally follow the event, I award costs against the Removal Opponent in accordance with Schedule 8 of the Regulations.

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

12 April 2022