Re: Opposition by Acer Incorporated to application under section 92 of the Trade Marks Act 1995 (Cth) by PBX Holdings LLC to remove trade mark numbers 469329 & 973320 (class 9) - Packard Bell (logo) & Packard Bell

[2020] ATMO 10

TRADE MARKS ACT 1995

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

Re: Opposition by ACER Incorporated to application under section 92 of the Trade Marks Act 1995 (Cth) by PBX Holdings LLC to remove trade mark numbers 469329 & 973320 (class 9) – PACKARD BELL (logo) & PACKARD BELL - in the name of ACER Incorporated

DELEGATE:

Jock McDonagh

REPRESENTATION:

Opponent: Craig Smith of Counsel instructed by King & Wood Mallesons

Applicant: Simon Kneebone of Banki Haddock Fiora

DECISION:

2020 ATMO 10

Trade Marks Act 1995 (Cth) – opposed application for removal under s 92(4)(b) – no use demonstrated in relevant period - discretion exercised–

registration to remain in Register    

Background

1. This matter is a proceeding under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) in which by an application filed on 1 February 2018, PBX Holdings LLC (‘Applicant’) has sought the removal from the Register of the trade marks appearing below in respect of all of the goods for which each is registered:

Trade Mark No.

469329

973320

Trade Mark

‘Logo Mark’

PACKARD BELL

‘Word Mark’

Registered from

21.07.1987

23.05.2003

Goods

Class 9: Audio and video equipment, including radios, television sets and equipment, and

stereophonic and quadrophonic

Class 9: Computer programmes (software); computer hardware;

computers, including

equipment of all types in this class; computers and computer peripheral equipment of all types in this class, including display terminals, modems and printers; and parts of and accessories for all the aforesaid goods such as are in this class; excluding electronic apparatus and instruments, all for use in measuring and recording radioactivity and in chromatography, and all for scientific and industrial purposes, and trunk systems

Endorsements:

Registration of this trade mark shall give no right to the separate exclusive use of the words PACKARD and BELL

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Endorsements as at 10 November 2018

Registration of this trade mark shall give no right to the separate exclusive use of the words PACKARD and BELL* The preceding endorsement(s) were recorded prior to commencement of

the Trade Marks Act 1995.*

notebooks; computer peripheral equipment; instruments, parts and fittings for use with computers; data processing apparatus; modems; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, phonograph records; diskettes; read-only- memory compact discs and digital video discs

2.  On 6 April 2018, ACER Incorporated (‘Opponent’) filed Notices of Intention to Oppose the removals. The Statements of Grounds and Particulars, filed 2 May 2018, asserted that the Opponent or an authorized user had used trade mark registrations 469329 and 973320 (collectively the ‘Trade Marks’) as registered or with additions and alterations not substantially affecting its identity, in Australia on the relevant goods during the three year period ending on 1 January 2018 (‘Relevant Period’).

3.           On 1 June 2018 the Applicant filed a Notice of Intention to Defend. The parties then commenced filing evidence in accordance with the Trade Mark Regulations 1995 (‘Regulations’).

1.        

4.           I heard the matter in Canberra on 13 June 2019 as a delegate of the Registrar of Trade Marks. Craig Smith of Counsel, instructed by King & Wood Mallesons, appeared for the Opponent. Simon Kneebone, of Banki Haddock Fiora, appeared by video link for the Applicant.

Evidence

5.           The parties filed and served the following declarations in evidence:

Declarant

Status

Date,

(Known as)

Exhibits

Evidence in Support

Jason Chen

Chairman and CEO of Acer

4.09.18

(‘Chen declaration)

JC-01 to JC-10

Bill Ladas

Solicitor

7.09.18

(‘first Ladas declaration’)

BL-01

Suzannah Wood

Lawyer

12.09.18

(‘Wood declaration’)

Evidence in Answer

Alan Levi

Member and Vice

President of PBX Holding LLC

11.12.18

(‘Levi declaration’)

1 to 14

Evidence in Reply

Bill Ladas

Solicitor

19.02.19

(‘second Ladas declaration’)

BL-01 to BL-04

6.           By way of overview, the Chen declaration addresses the following:

•     Acer is a multinational computer hardware and electronics company based in Taiwan, and is publicly listed on the Taiwan Stock Exchange. In 2017, Acer was the sixth-largest personal-computer vendor in the world by number of units shipped;

•     the Opponent (and its predecessors in title) commenced using the Trade Marks in Australia at least as early as 1987 to advertise, market, promote, sell and offer for sale a wide variety of goods included in the specification including personal computers and related accessories and audio and visual equipment;

•     while the Opponent has recently concentrated on the European market, the Trade Marks have a significant (at least) residual goodwill and reputation in Australia;

•         

•     the Opponent has not at any time abandoned the Trade Marks or relinquished its common law rights in those marks in Australia; and

•     there was during the Relevant Period, and is now, a strong secondary market in Australia in which laptops and laptop accessories bearing the Trade Marks and originating from the Opponent are sold, and in which third parties offer accessories that are compatible with the Opponent’s goods.

Discussion

7. Section 92 relevantly states:

92.   Application for removal of trade mark from Register etc.

(1)   Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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.

(3)   An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:  For prescribed court see section 190.

(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.

8. Section 100(1)(c) of the Act provides that an opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the Trade Marks, (or, per s 100(3)(a), the Trade Marks with additions or alterations not substantially affecting its identity), were used in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

1.        

9.           The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co1. A single bona fide use of the trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds2. However, Wilberforce J, in Nodoz Trade Mark3 (Nodoz), said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

10.         The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark4; although one invoice, if genuine, will suffice: Geo W McPherson v Remington5.

11. As mentioned in [2], above, the relevant period for the purposes of s 92(4)(b) is the three years ending on 1 January 2018.

12.         The Opponent points to three areas of use of the Trade Marks:

•     Use of the domain name during the Relevant period;

•     PACKARD BELL mother boards being offered for sale in Australia through website; and

•     The secondary market on eBay.

13.         At [20], the Chen declaration explains that since August 2010 the Opponent’s website has operated, but ‘[a]t present, the website automatically redirects visitors … an international index for websites operated by the Opponent’s PACKARD BELL subsidiaries ...’. The paragraph also exhibits the index page (under a different device and name mark to the Logo Mark) showing localities in the extant European Union, Middle East, and Africa, but excluding the Americas, Asia, Oceania, and Australia.

14.         Ward Group Pty Ltd v Brodie  & Stone Plc6  is authority for the proposition that use of a  trade mark on a website occurs in Australia when the mark is used on a website accessible in

1 [1982] FSR 72.

2 [2001] FCA 261; (2001) 51 IPR 149 at [17].

3 (1962) RPC 1 at 7.

4 [1977] RPC 131.

5 (1999) 47 IPR 636.

Australia, and when there has been a sale in Australia and/or if there is evidence that the use of the mark on the website was specifically intended to be made in, or directed or targeted at Australia. While the Opponent’s website is accessible in Australia, it merely refers users to other websites outside Australia and provides no facilities for purchases in Australia. Therefore, I am not satisfied that this demonstrates trade mark use in Australia.

15.         At [30] to [32] of the Chen declaration, Mr Chen states that motherboards are currently (and during the Relevant Period) offered for sale on the in Australia and exhibits a screenshot of advertisement. Apart from the assertion at [31], there is no dated evidence to demonstrate trade mark use of the Trade marks in the Relevant Period. I am not satisfied that this demonstrates use during the Relevant Period.

16.         The Chen declaration mentions at [28], [29], and [33] to [35] a secondary market of computers and accessories bearing the Trade Marks on the secondary market, specifically eBay. As in the other alleged uses of the Trade Mark, there is no dated evidence to support the contention that the offers for sale were within the Relevant Period.

17.         In any event, the secondary market appears to be second hand sales by consumers who had previously bought the Opponent’s products. I turn to the High Court decision in E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd7 where the Court discussed and followed the decision in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd 8 whereby, when considering use of a trade mark, goods bearing the trade mark no longer remain “in the course of trade” once they are acquired for consumption. In their joint judgment at [46] four of the five judges stated:

In considering what “use” meant under s 23 of the Trade Marks Act 1995 (Cth) a provision similar to, but not identical with, s 92(4)(b) Windeyer J said [24]:

“When it is said that a trade mark is used to distinguish the goods of one man from those of another, that abbreviated statement obviously does not refer to the goods of the owner of the mark in the sense of goods which he owns or possesses. After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connection

6 [2005] FCA 471).

7 (2010) 241 CLR 144; 84 ALJR 352; [2010] HCA 15.

8 (1967) 116 CLR 254, 266-267.

in the course of trade between them and him, he registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.”

18.         Even if use of the Trade Mark had been demonstrated during the Relevant Period, the Trade Marks were no longer in the course of trade. The motherboards having originally been purchased by consumers were no longer in the course of trade.

19.         Without more evidence before me to the contrary, I cannot be satisfied, on the balance of probabilities, that the examples of purported trade mark use constitute use of the Trade Marks by the Opponent during the course of trade sufficient to resist an application for removal for non-use. I now turn to the Registrar’s discretion.

Registrar’s Discretion

20. There is a discretion embodied in subsection 101(3) of the Act. It reads as follows:

(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

21.         While matters referred to in s 101(4) are not apparent in these proceedings, both parties agreed that in E & J Gallo Winery v Lion Nathan Australia Pty Ltd 9 Flick J identified five non-exhaustive factors relevant to the exercise of the discretion:

•          Whether there has been no abandonment of the trade mark;

•          Whether the registered proprietor still had residual reputation in the mark;

•          Whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended;

•          Whether the applicants for removal had entered the market without having taken steps to ascertain from the Registrar whether anyone had a right to exclude their use of the mark; and

•          Whether the registered proprietors were aware of the applicants’ sales under the mark.

9 [2008] FCA 934, at [202].

22.         The application for removal is for the specified goods within class 9. The Opponent has requested the Registrar exercise her discretion to allow the Trade Mark to remain registered for all those goods as the Trade Marks:

•          have not been abandoned in Australia;

•          still have residual reputation within Australia;

•          use is intended to be recommenced in Australia;

•          it would be in the public interest to retain registration; and

•          the Opponent claims that the Applicant is aware of the Opponent’s business and intends to appropriate the Opponent’s goodwill in Australia.

23.         While the Opponent has not been able to conclusively satisfy me that it had used its Trade Marks in the course of trade during the relevant period, there are a number of other considerations that I consider makes it appropriate to exercise the Registrar’s discretion in its favour.

24.         The evidence establishes that both parties are successors in title from the original proprietor of the Trade Marks. That proprietor was a United States of America (‘US’) radio set manufacturer, which was bought out in about 1986 by investors who used the Trade Marks on personal computers in the US and Canada. The Trade Marks were acquired by NEC in about the late 1990s, who ceased North America operations in 2000 and expanded in the European computer markets. The company was acquired by the Opponent in 2008. The North American trade marks were acquired by the Applicant in 2016.

25.         Although I am not satisfied that the Trade Marks have been used during the Relevant Period, I am satisfied that the Opponent (and its predecessors in title) did use the Trade Marks on the specified goods prior to the Relevant Period. I am also satisfied that there continues to be a second-hand market for goods bearing the Trade Marks, and that the Opponent maintained a website with the URL packardbell.com.au during the Relevant Period. That website, however, directed consumers to various overseas websites that deal in the Opponent’s products.

26.         The secondary market and extant Packard Bell website contribute to a residual reputation in the Trade Marks in Australia. This reputation is due to the goods traded by the Opponent and

1.        

its predecessors in title. The most recent user of the Trade Marks immediately prior to the Relevant Period is the Opponent.

27.         If the Trade Marks were to be removed, it would be possible for another party to obtain a PACKARD BELL registration, or at least launch PACKARD BELL branded products on the Australian market. Prospective purchasers of such products would be led erroneously to presume that there exists some connection, association or relationship with that mark and the Opponent when such is not the situation. It would not be in the public interest for such confusion to exist.

28.         Therefore, I am satisfied that there are sufficient reasons before me to exercise the Registrar’s discretion to maintain the Trade Marks on the Register.

Decision

29. The application for removal under s 92(4)(b) of the Act has been successful. However, I am satisfied that it is reasonable to exercise my discretion not to remove the Trade Marks from the Register. Therefore, I refuse to remove the Trade Marks.

30.         If the Registrar is served with a notice of appeal within the relevant timeframe, the  disposition of this removal application will instead be subject to the decision made by the Court.

Costs

31.         The general rule is that costs follow the event. As the successful party, the Opponent is entitled to its costs and I award costs against the Applicant in accordance with Schedule 8 of the Regulations.

Jock McDonagh Hearing Officer

Oppositions and Hearings Trade Marks and Designs 29 January 2020