Re Honeywell Inc

[1992] ATMO 79

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade mark registration 332832 in the name of DELTA GROUP PLC and a section 23 application by HONEYWELL INC for the removal of the registration from the Register

Trade mark 332832, in the name of Delta Group Plc is presently registered in respect of:

scientific, nautical, surveying, electrical and electronic apparatus and instruments and their parts and fittings, all being goods in this class but not including recording or controlling equipment other than for electrical purposes and not including measuring apparatus, in particular spectrophotometers and parts and fittings in this class therefor; low voltage motor control gear, low and medium voltage switch and fuse gears; domestic T.V. aerials; low tension medium voltage electrical switch and distribution gear, switches, small toggle and rocker switches, motor car switches; power factor correction equipment; electrical wiring accessories included in this class; industrial plugs and sockets; fire tender equipment included in this class,

the specification having been amended on 17 April 1991 by the exclusion of "measuring apparatus, in particular spectrophotometers, and parts and fittings in this class therefor".

The mark in question is

On 21 September 1989 Honeywell Inc (the applicant) lodged an application for the removal of the trade mark from the Register.  The application was advertised in the Official Journal on 3 March 1991.  The grounds on which the application was made are as follows:

That up to one month before the date of this application a continuous period of not less than three years has elapsed during which the trade mark was a registered trade mark and during which there has been no use in good faith of the trade mark in relation to the goods in respect of which it is registered by the registered proprietor or a registered user of the trade mark for the time being.

The applicant claimed it was a person aggrieved by the registration by virtue of its trade mark application 417884.  The application had been made for the mark DELTANET in respect of "electronic control systems including energy management systems; computer hardware and software; diagnostic systems".  Before this application was allowed to lapse, a divisional application, 539956 was made for the same mark but in respect of "computerised building energy management systems".

The registered proprietor did not oppose the application.

Evidence

On 26 April 1991 the applicant lodged evidence in support of its application.  The evidence took the form of a statutory declaration made by Mr Brian Champion, Group Director of Honeywell Limited.  Mr Champion stated that he had approximately 27 years experience in the electrical and electronics industry in Australia and was well acquainted with the trade marks used by various traders in those industries, and in particular by manufacturers and traders in electronic data processing and control equipment.  He stated he was unaware of any use by the registered proprietor of the mark DELTA in Australia at any time in respect of the goods of the registration within a period of three years up to 21 August 1989.

The evidence was assessed by a senior examiner and a hearing officer and the applicant was informed by letter that while Mr Champion was well qualified to attest to the situation in the trade in respect of the subject trade mark, he represented a company that appeared to be related to the applicant company.  In the circumstances, additional declarations were required from independent persons in the trade with appropriate experience of the relevant trade throughout Australia, including the period stipulated by section 23 before a complete assessment of the application could be made.

On 21 April 1992 the applicant lodged two further statutory declarations, one by Mr Gerard Whittaker, Director/State Manager of Haden Engineering Pty Ltd and the other by Mr Ian Patience, Managing Director of Matthew Hall Mechanical & Electrical Engineers.  Mr Whittaker stated he had been engaged in the building services industry in Australia since 1969.  Mr Patience stated he had been engaged in the building services, design and construction industry in Australia since 1956.  Both declarants stated that as a result of their experience they were familiar with the trade marks used in that industry.  Both declarants stated that they were unaware of any use in Australia at any time of the trade mark DELTA by the registered proprietor in respect of the goods for which it is registered.  In particular they were not aware of any use within a period of three years up to 21 August 1989.

I assessed this evidence and informed the applicant by letter that the declarations had not been provided by people with appropriate experience in the relevant trade since both declarants were involved in the field of building services rather than the field covered by the goods of the registration, and that while both may have knowledge of some of the goods, their field at best was tangential.  Declarations from persons of Mr Champion's background and experience would be required if the application were to succeed.

Following an Office reminder letter about this matter, the applicant requested that it be set down for a hearing.  The matter came on for hearing before me in Sydney on 21 October 1992.  The applicant was represented by Ms Kate McElhone, legal practitioner, of the firm Shelston Waters, Patent and Trade Mark Attorneys.

Submissions

Ms McElhone submitted that Mr Champion's relationship with the applicant shouldn't matter since he had deposed and signed a statutory declaration.  The Office had conceded that he had the relevant experience.  There was no reason to doubt that the declaration was not reliable in any way.  Ms McElhone submitted that to deny the application on the basis of Mr Champion's declaration not being acceptable would be seen as undermining reliance on statutory declarations.  Ms McElhone submitted that his declaration, together with the other two should be sufficient to support the application.  While Mr Whittaker and Mr Patience were not in exactly the same field, the building industry is a very wide term and would encompass the electrical and electronics field.  The goods of the registration are quite broad and it would be impossible to get a declaration from any person in the trade that would cover all the goods.  Ms McElhone submitted that the applicant was in the difficult position of having to prove a negative and that slight evidence should suffice : Estex Clothing Manufacturers Pty Ltdv Ellis & GoldsteinLtd (1966) 116 CLR 254 at 259.

Ms McElhone drew attention to the fact that the registered proprietor had made no response to the s23 application.  She also pointed to a changing outlook on s23 matters which is reflected in the proposals for the new trade mark legislation and should be taken in to account here.  While I acknowledge there may be a changing outlook, this case must be decided in accordance with the present legislation which requires the s23 applicant to establish a prima facie case of non-use.

Decision
The matter of the applicant's status as a person aggrieved has never been in question.  The fact that an examiner's objection has been taken to registration of the applicant's own mark because of conflict with the registered proprietor's mark is sufficient to make the applicant a person aggrieved: Continental Liqueurs Pty Ltd v G.F. Heublein & Bro Incorporated 103 CLR 422 at 428.

The question at issue is whether the evidence provided by the s23 applicant is sufficient to establish a prima facie case of non-use.  As has been noted by Ms McElhone, slight evidence will suffice.  On balance, however, I find the s23 applicant's evidence is not sufficient to establish a prima facie case of non-use for all the goods of the specification.  The circumstances of the case required that Mr Champion's declaration be supported by independent sources.  In John M Brewster & Associates Pty Ltd v Millionaire International Inc (1991) AIPC 90-810 Assistant Registrar Thompson, after citing the Revue Trade Mark (1979) RPC 27 at 29 where it was observed that "(the burden) should, in my opinion, rest on more than the testimony of one individual", went on to say "I do not think that it can ever be accepted that a single declaration being from an officer of an applicant company can establish a prima facie case of non-use". The independent persons making the corroborative statements have experience of the goods of the specification in so far as they are for use in the building services industry. They are well placed to know whether the registered proprietor's mark has been used in that industry, and particularly whether it has been used during the critical three year period.

Therefore I am prepared to find that a case has been made out for the removal of some of the goods of the specification, and direct that, subject to any appeal from this decision, the registered proprietor's specification be limited to:

scientific, nautical, surveying, electrical and electronic apparatus and instruments and their parts and fittings, all being goods in this class but not including recording or controlling equipment other than for electrical purposes and not including measuring apparatus, in particular spectrophotometers and parts and fittings in this class therefor; low voltage motor control gear, low and medium voltage switch and fuse gears; domestic T.V. aerials; low tension medium voltage electrical switch and distribution gear, switches, small toggle and rocker switches, motor car switches; power factor correction equipment; electrical wiring accessories included in this class; industrial plugs and sockets; fire tender equipment included in this class; but none of the foregoing goods being for use in the building services industry.

Linda Sullivan
Acting Hearing Officer
8 December 1992