Puma Industrial Co Limited v Uno Resourcing Inc

[2000] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Puma Industrial Co Limited to the application to remove trade mark registration number 359356(7) - PUMA and device- under section 92 of the 1995 Act by Uno Resourcing Inc.

Background

On 21 May 1997, UNO Resourcing Inc. (the applicant) filed an application, under s.92 of the Trade Marks Act 1995, for the removal from the Register of registration number 359356, for the trade mark depicted below, in the name of Puma Industrial Co Limited.

The specification of goods in class 7 claimed for this registration reads: 'All kinds of air compressors, hydraulic machines and air compressor machines, all being goods included in this class'. The application for removal for non-use specified paragraph 92(4)(b) of the Act as being the ground relied upon. As calculated from the date of the filing of the non-use application, the three-year period of alleged non-use runs from 21 April 1994 to 21 April 1997. A declaration of 21 May 1997 from Paul Victor Fong, a patent attorney of the firm of Watermark Patent & trade Mark Attorneys supported the application. An officer in the Trade Marks Office found that this declaration did not meet all of the requirements set out in Regulation 9 to support the grounds for removal in terms of paragraph 92(4)(b). The applicant was therefore advised to provide a supplemental declaration to meet these requirements. To this end, Ling Chu Cheng, also known as Linda Cheng, President of the applicant company, provided a Statutory Declaration dated 26 June 1997 (the Cheng declaration). This declaration stated that the present applicant had been the owner of the mark between 10 March 1994 and July 1996 and had not used the mark as registered. Ms Cheng also attested that she had made regular investigations in the relevant market since that date without finding any evidence of use of the mark by the opponent company.

The non-use application was advertised in the Australian Official Journal of Trade Marks (the Journal) of 24 July 1997. Puma Industrial Co Limited (the opponent) filed a notice of opposition to the removal action on 23 October 1997. The notice of opposition detailed seven grounds.

The evidence in support and the evidence in answer from the parties was all filed and served by 30 March 1999. Following a request from the opponent for an extension of time in which to serve evidence in reply, the opponent informed this Office on 30 September 1999 that it did not intend to serve that evidence. Both parties were then offered the opportunity to be heard in the matter. Neither party took up this offer but the opponent provided supporting written submissions to be considered when the matter was to be decided.

In late December 1999, the matter was directed to me, as a delegate of the Registrar, for a decision on the basis of the written material held in this Office. From my reading of the information I noticed that there was no evidence of notification of service on the opponent of the Cheng declaration. This had also been overlooked during the handling of the matter in the Trade Marks Office. In mid-January, I wrote to both parties pointing out this circumstance and allowing the opponent two months to provide comments or submissions in relation to the Cheng declaration. The opponent chose not to provide any comment in that time period. Thus, I now turn to consider the substantive matter of the allegation of non-use.

The Evidence

Following the initial application, an officer in the Trade Marks Office requested a supplementary application declaration. This document has the following details:

declarant	position	date	attachments	hereinafter
Ling Chu Cheng	President of the applicant	26 June 1997	Nil	Cheng declaration

The Evidence in Support of the notice of opposition is as follows:

declarant	position	date	attachments	hereinafter
I-Min Hsiao	President of the opponent	12 May 1998	IMH-1	Hsiao declaration

The Evidence in Answer followed.

declarant	position	date	attachments	hereinafter
Paul Victor Fong	Attorney for the applicant	26 February 1999	PVF-1	Fong declaration
Richard Hiram Baddeley	Attorney for the applicant	23 March 1999	RHB-1 to RHB-3	First Baddeley declaration
Richard Hiram Baddeley	Attorney for the applicant	29 March 1999	RHB-4	Second Baddeley declaration

Submissions
As I mentioned earlier, the only exposition made by either party concerned a submission in writing from the attorney acting for the opponent, Mr James Cherry of the Melbourne office of Freehills Patent Attorneys. This submission drew my attention to the statement in the Hsiao declaration that, on 27 February 1997, 14 cartons of the opponent's goods were exported from Taiwan to Queensland Tool and Machinery Distributors Pty Limited. Mr Cherry submitted that this statement rebutted the non-use allegation in terms of s.100(3), and that the applicant had not answered the statement in the evidence. He also alleged deficiencies were present in the applicant's evidence in answer. Mr Cherry said that the Fong declaration provided no support for the contention that private investigators hired by the applicant had found no use of the mark. He said that no detail of the geographical area searched, or the time period covered by such an investigation, had been shown. Mr Cherry also claimed that the first Baddeley declaration contained material inapplicable to any alleged non-use of the mark in the relevant period, between 21 April 1994 and 21 April 1997. These items were a 1998 edition of Taiwan Hand Tools and a printout of the opponent's web-site, which appears to have been made on 15 February 1999, he said. Mr Cherry concluded his submissions with a request for costs in the matter.

Discussion
An application for removal for non-use of a registered trade mark is made under s.92 of the Act. This application was made under paragraph 4(b) of s.92 - alleging non-use over a three year period. Paragraph 4(a) and sub-sections (3) and (5) of s.92 find no application in this matter, so the relevant legislation from s.92 reads:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.
(2) The application:

(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

…

(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:

…

(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.

Note:  For file see section 6.

Person Aggrieved
The threshold question which needs to be resolved for an opposed application under s.92, for removal of a registered mark, is whether the applicant is a 'person aggrieved' in terms of that section of the Act.

The material date at which this must be determined is as at the date of application. This is clearly set out in The Ritz Hotel Ltd v Charles of the Ritz and Another 12 IPR 417, where McLelland J commented at 455:

Ascertainment of the date of an application is significant under the Act not only as the date as at which it must be determined whether the applicant is a "person aggrieved", but also …

The introduction of the Trade Marks Act 1995 has brought with it changes for non-use applications in particular. Under the repealed legislation, the applicant for removal carried the onus to establish a prima facie case of non-use of the trade mark. The intention under the present Act was to replace the difficulty of establishing this negative (on the part of the applicant) by the need to establish use of the trade mark (on the part of the opponent - generally the registered owner). This shift of onus has produced a number of changes to the way that a non-use matter is handled - by all of the parties concerned.

If a non-use application that conforms to the requirements of s.92(1) and s.92(2) is not opposed, in accordance with s.97 the mark is removed from the Register. The Registrar here will be satisfied by the statements made in the application and will not inquire further into the applicant's standing unless there is good reason to do so.

Where a non-use application is opposed, however, and where a bald statement as to status is challenged, the applicant will need to substantiate its claim that it stands aggrieved[1] by the continued registration of the trade mark.

[1] Figgins Holdings Pty Ltd v Beltrami SpA (unreported decision issued 1 July 1998)

In discussing the matter of 'person aggrieved' McLelland J in Ritz Hotel v Charles of the Ritz, supra, said at 454:

The meaning of the expression 'person aggrieved' in legislation cognate with ss 22(1) and 23(1) of the Act has been the subject of consideration in numerous cases, …

…

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

In a more recent case, Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Foods Corporation 34 IPR 198, Sackville J comments and Sheppard and Tamberlin JJ concur:

Yet, in substance, the only evidence adduced by Kraft to support its claim to be a “person aggrieved” was proof that it had filed the application for registration of the GAINES mark on 22 June 1989 (the day before the removal application was filed) and that it had subsequently lodged a statement of user.

The statement of user merely recited the words of reg 8 (1) of the TM Regulations, without providing any further information to clarify which of the two apparently mutually exclusive propositions (current use or intention to use) Kraft was asserting was true.

….

It follows that the only evidence from which it might be inferred that Kraft intended to use the mark in June 1989 was the filing of its application for registration on 22 June 1989. The filing of the application, of itself, does not necessarily require an inference to be drawn that the applicant intended to use the mark. If the application had been accompanied by a clear statement of such an intention, the position is likely to have been different. But Kraft’s application was accompanied by a statement of user that carried no probative weight in the present proceedings on the issue of intention to use.

These two cases indicate that a range of reasons could exist to establish that an applicant has a 'real interest in having the Register rectified' (and qualify as a 'person aggrieved'). Kraft vGaines, supra, affirms McLelland J, however, in finding that the interest must relate to an 'appreciable disadvantage' for the applicant if the Register remains unrectified. As shown in Kraft v Gaines, supra, the filing of an application - that could have been blocked by the mark whose removal had been requested - may not be sufficient to establish such standing for the applicant. In that case the applicant was found not to be a 'person aggrieved' because no clear evidence of either use of the mark or an intention to use the mark was submitted.

In the present case, the claim that the applicant is a 'person aggrieved' was made in the application on the basis that 'continued registration of the subject mark may undermine the reputation' of the products of the applicant. In the notice of opposition the opponent has challenged this claim.

The only material from the applicant that could relate to this challenge is found in the Cheng declaration and in exhibit 'PVF-1' to the Fong declaration. Ms Cheng is the President of two companies, Puma Pneumatic Industrial Inc. (Puma Pneumatic) and the present applicant for removal. Puma Pneumatic was the owner of the present trade mark, by a Deed of Assignment, between 10 March 1994 and July 1996, at which time the mark was re-assigned to the original owner. In addition, Puma Pneumatic are the owners of a registered trade mark, number 700346 for the word PUMA.

This material may imply that Puma Pneumatic could suffer some disadvantage from the continued registration of the present mark. Puma Pneumatic is not, however, the applicant for removal. For me to find that the present applicant is disadvantaged and therefore qualifies as a 'person aggrieved', I need to be shown that the applicant, Uno Resourcing Inc, is aggrieved as at the date of application. The Cheng declaration does not do that. It is silent on the issues of how or why the continued registration of the present trade mark appreciably disadvantages the applicant.

The exhibit to the Fong declaration is a copy of an agreement between the applicant and Puma Pneumatic executed on 18 January 1999. This is almost 20 months after the date of application for removal of the present trade mark. These two items, the Cheng declaration and exhibit 'PVF-1' to the Fong declaration, fail to provide evidence that the applicant was 'appreciably disadvantaged' as at the date that the application for removal was filed.

The non-use applicant has stated that 'the continued registration of the subject mark may undermine the reputation of their products' but it has failed to support that claim with any explanatory material. The Ritz Hotel v Charles of the Ritz, supra, suggests that it is sufficient to find that a party is a 'person aggrieved' if it can be shown that there is a 'reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified'. The onus on the applicant is not severe but a factor that provides the reason to draw such a conclusion must be present.

It is quite proper that a company may base its standing on the trading activities of a related company. In two separate Patent opposition matters, one party has shown that it is a 'person aggrieved' on the basis of another party's standing to oppose. Firstly, in Molyslip Trade Mark [1978] RPC 211 at 214 Mr Moorby comments:

Mr. Jacob argued that since the applicants themselves had not traded in the relevant products in South Africa or the UK they did not qualify as persons aggrieved. Nevertheless I must, I think, have regard to the interest and position which Mr. Spanjaard has in the applicants, Slip Products (S.A.) (Proprietary) Limited - the company trading in Molyslip products in South Africa - and in other associated companies all of which are said to be under his personal control through exclusive or majority shareholding. He is evidently in a position to decide as a matter of commercial policy what activities shall be carried out by the various companies in his Group.
…
In the circumstances I think that it is taking too fine a point to hold that the applicants do not have the necessary locus standi in these proceedings simply because they do not trade in the products in South Africa. They are closely involved there with that trade and come under the same controlling interest.

Secondly, Kitto J comments in Kaiser Aluminum & Chemical Corporation v Reynolds Metal Co. (1969) 120 CLR 136, a patent opposition decision appealed to the High Court, at 138 and 139:

No other facts were stated from which it might be concluded that the opponent had an interest entitling it to oppose the application.
…
On 30th May 1968 it [the appellant] delivered at the Patent Office a written request that the notice of opposition be amended, "to clearly establish our locus standi as opponents in this matter", by striking out the statement originally included … and substituting the following:
"We are manufacturers of refractories, are the proprietors of Australian patents 244,198 and 269,790, hold a fifty percent interest in Comalco Industries Pty Limited, aluminium fabricators, a fifty-two per cent interest in Queensland Alumina Limited, Aluminium manufacturers, and all the issued shares but one of Kaiser Refractories Pty Limited, refractory manufacturers, …"
…
All I have to consider is whether the appellant's shareholding interests above referred to are sufficient to give the appellant an interest to oppose the grant, and, if so, whether the appellant is entitled to rely upon them after having omitted to mention them in its original notice of opposition …

In both of the above circumstances, where a locus standi was established for a company on the basis of the trading activities of a related company, the relationship between those entities was clearly established in the evidence. In the present case, no material has been provided for me to find that the applicant may suffer appreciable disadvantage on the basis of any such disadvantage on the part of Puma Pneumatic as at the date of application. Thus, I am left with the initial bald statement from the applicant, and no evidence to answer the opponent's ground that this statement cannot be substantiated.

As nothing has been provided to confirm the non-use applicant's status as a 'person aggrieved', I find that the applicant's claim to such status is not sufficiently supported. I find, therefore, that the application to remove the subject trade mark was not properly made.

Conclusion

As I have found that the applicant has not satisfied me that it is a 'person aggrieved' in terms of s.92(1) of the Act, I find that the opponent has no case to answer.

Costs
As I see no reason why costs should not follow this result, in my capacity as the delegate of the Registrar in this matter, I direct that the removal applicant pay the costs of the opponent according to the Official scale.

Don Nancarrow
Acting Hearing Officer

29 May 2000