Re: Opposition by Bayerische Motoren Werke AG to application under section 92 of the Trade Marks Act 1995 (Cth) by Electracom Pty Ltd to remove trade mark number 1464578 (classes 3, 8, 9, 11, 12, 14, 27, 28, 29,

[2020] ATMO 176

TRADE MARKS ACT 1995

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

Re:Opposition by Bayerische Motoren Werke AG to application under section 92 of the Trade Marks Act 1995 (Cth) by Electracom Pty Ltd to remove trade mark number 1464578 (classes 3, 8, 9, 11, 12, 14, 27, 28, 29, 30 and 32) – BMW (figurative) - in the name of Bayerische Motoren Werke AG

Delegate:	Adrian Richards
Representation:	Opponent: Benjamin Fitzpatrick of Counsel instructed by Adam Sears of Davies Collison Cave Applicant: Fraser Old of Fraser Old and Sohn
Decision:	2020 ATMO 176 Trade Marks Act 1995 (Cth) – application under section 92 – removal sought for specific claims in class 9 - use established in relation to some goods – discretion considered in relation to the remaining goods – discretion exercised for all remaining goods

Background

1. The issue in these proceedings is in essence for what range of goods should a particularly reputable mark remain registered. The matter takes the form of an application under s 92[1] for partial removal of the following mark:

(‘Trade Mark’)

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

1. The Trade Mark was filed with this office on 12 December 2011. Its registration number is 1464578 and it is registered in respect of a range of goods spanning classes 3, 8, 9, 11, 12, 14, 27, 28, 29, 30 and 32. Its registered proprietor is Bayerische Motoren Werke AG (‘Opponent’).

2. On 20 December 2018 Electracom Pty Ltd (‘Applicant’) filed an application (‘Application’) with this office seeking removal of the Trade Mark from the register for ‘some or all’ of the goods in class 9.

3. The Application was advertised for opposition purposes on 25 January 2019. The Opponent notified this office of its intention to oppose removal on 22 March 2019 and particulars of its opposition on 23 April 2019. Having been furnished with those particulars by this office, the Applicant notified the Registrar of Trade Marks (‘Registrar’) that it would defend its application for removal on 1 May 2019. The Opponent filed evidence in support of its opposition on 1 August 2019. This office then gave the Applicant time to file evidence in answer but it did not. The parties sought a hearing of the opposition, a date was set for 24 July 2020, which I was allocated to hear in my capacity as a delegate of the Registrar. Fraser Old of Fraser Old and Sohn appeared at the hearing on behalf of the Applicant, while Benjamin Fitzpatrick of Counsel and Adam Sears of Davies Collison Cave attended for the Opponent.

4. At the hearing the Applicant’s representative clarified which goods the Applicant submits ought to be removed. I have set out below all of the goods for which the Trade Mark is registered in class 9, with the goods the Applicant seeks removal of underlined:

   Class 9:Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, saving and controlling of electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; spectacles, optical devices, spectacle glasses and spectacle frames, sunglasses, reading glasses and corrective glasses, mobile telephones and accessories thereof

5. I proceed on the basis that the Application is in respect of these underlined goods, which I will call ‘The Goods’.

Evidence

1. The sole declaration in evidence was made on 31 July 2019 by Timothy Richard Baird, Company Secretary and General Counsel at BMW Australia Limited (being the Australian subsidiary of the Opponent). It incorporates exhibits TRB-1 to TRB-49, of which TRB-46 is marked confidential.

2. This declaration provides an overview of the Opponent’s history worldwide and in Australia, offers a summation of the Opponent’s registered trade marks in Australia and an account of historical uses of its trade marks with a focus on class 9 goods claimed by the Trade Mark. I acknowledge that the evidence cannot have focused on The Goods specifically, since they were not singled out by the Applicant until well after the period for filing of evidence had ended.

3. Although ample evidence has been provided on this point, it might also have been taken on notice that the Trade Mark enjoys significant reputation as a marque of prestige automobiles. The evidence also establishes that the Opponent offers a variety of goods and services under the Trade Mark incidental to vehicle manufacture. Namely car sales, parts, accessories, financing, repair and maintenance. Car accessories offered under the Trade Mark are reasonably extensive, covering more common manufacturers’ offerings such as audio systems and less frequently encountered add-ons such as first aid kits, fire extinguishers and wireless headsets, all bearing the Trade Mark.

4. The Opponent’s evidence shows it has extended the Trade Mark significantly beyond cars into two broad categories of goods which I will refer to as lifestyle and technical. Its lifestyle goods include clothing, headwear, footwear, towels, stationary, crockery, glassware, pocket knives, bicycles, scooters, ride-on toy cars, miniature cars, games, USB sticks, pet collars, pet leads, pet bowls, wallets, belts, watches, sunglasses, luggage, snow sleds, golf clubs, golf balls. Its technical goods include heads up displays, batteries, global positioning system devices, automated driving solutions, sensors, electric vehicle charging stations and cables, airbag jackets[2] and applications for smartphones.

   [2] This unfamiliar term turns out to be safety apparel intended for motorcyclists.

Grounds, relevant period, onus and standard

1. The Application alleges there are grounds for partial removal of the Trade Mark under ss 92(4)(a)-(b). Since the Trade Mark was filed with this office on 12 December 2011 the requisite wait time of five years before a person may allege non-use under s 92(4)(b), has passed.[3] As the s 92(4)(b) ground for removal is live there is no need to consider in any detail, nor has the Applicant pressed any points specific to, the s 92(4)(a) ground. Section 92(4)(b) reads as follows:

   [3] Trade Marks Act 1995 (Cth) s 93(2), as at 20 December 2018.

   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.

2. The Application thus alleges that the Trade Mark was not used in good faith in Australia in the three years prior to 20 November 2018 (‘Relevant Period’). It is for the Opponent to rebut this allegation.[4] Findings of fact are based on the ordinary civil standard of the balance of probabilities.

Discussion

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

Use of the Trade Mark

1. The Applicant submits that much of the Opponent’s evidence of use outlined above is either not in relation to The Goods or does not show use in Australia. This relates to the Opponent’s rebuttal of the allegation of non-use put in the Application, since to rebut the allegation any evidence of use must both be in relation to the relevant goods and in Australia. This evidence is however relevant to the discretion to leave the Trade Mark registered for certain goods even where use in relation to those goods is not established.[5] I weigh the discretion, and the Opponent’s broader evidence and consider the discretion further below.

   [5] Trade Marks Act 1995 (Cth) s 101(3)

2. Another issue raised by the Applicant relates to the drafting of the claims to The Goods. It submits that they are too broad and encapsulate goods that the Opponent could not or would not purvey. Examples of those goods were offered in the Application, the Applicant’s written outline of submissions and in the Applicant’s submissions at the hearing. The Application selects from among some of the broader claims in The Goods certain ‘archaic’ goods that ‘essentially no merchant currently sells’, including pince-nez,[6] phonograph pick-ups,[7] jukeboxes and amplifying electronic valves, and certain other goods ‘clearly not sold by [the Opponent]’ including life buoys, meteorological balloons, particle accelerators, periscopes and protractors. In response, the Opponent readily accepted that it does not offer, for example, particle accelerators, but at the same time noted that any number of obscure goods could be picked out and similarly criticised. The Opponent did not then concede that the Trade Mark ought to be removed for particle accelerators, instead invoking the principles relating to the exercise of the discretion in s 101(3) by reference to Pioneer Computers Australia Pty Ltd v Pioneer KK.[8] Again, I turn to the discretion further below.

   [6] An early form of eyewear.

   [7] More commonly known as a record needle or stylus.

   [8] (2009) 176 FCR 300 (Bennet J) (‘Pioneer’).

3. An aspect of the Opponent’s evidence that the Applicant submits is extraordinary is that there is not one direct example of a sale occurring during the Relevant Period. While it is often the case that an opponent to removal proceedings will produce copies of invoices, receipts, bills of lading or the like, there is no absolute requirement that such information be tendered. Such evidence is likely crucial in certain situations, such as where only a single instance of use is alleged.[9] That is not the case here. The Opponent submits its Australian subsidiary has traded throughout the Relevant Period. Most of the evidence of use is examples of marketing materials, which alone can be sufficient demonstrate use of a mark. As for evidence of sales activity, the Opponent has tendered a copy of BMW Australia Pty Ltd’s 2018 Annual Report, filed with the Australian Securities and Investments Commission, showing standard line items such as revenue, cost of sales and marketing expenses. The figures next to each line are substantial. The same report states that the principal activities of this company and its controlled entities are the importation and sale of new motor vehicles, motorcycles, parts and accessories, along with the servicing and body repair of motor vehicles. I consider the report and advertising materials ample evidence to demonstrate use of the Trade Mark in relation to those core goods and services of the Opponent, none of which fall within the ambit of The Goods.

   [9] See, eg, Wooly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166 (Drummond J).

4. The Opponent has offered a table enumerating the month by month sales of some of its lifestyle goods by its Australian subsidiary during the Relevant Period. While I am satisfied on the totality of the evidence that such sales took place, I must agree with the Applicant’s observation that few of those lifestyle goods appear to relate to The Goods. The exception being use of the Trade Mark in relation to sunglasses, which reconciles to the claim in The Goods for ‘optical apparatus’. The Applicant made submissions to the effect that for its lifestyle goods the Opponent was operating as a retailer of the goods of others.[10] Having reviewed the Opponent’s evidence, this is clearly not the case. The Trade Mark appears affixed to or incorporated in every example provided. In a small number of examples the goods are co-branded with that of another company, such as headphones bearing an audio electronics brand and the Trade Mark, but this does not negate that the goods are consistently offered for sale in relation to the Trade Mark.

   [10] Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 (Viscount Maugham, Lords Thankerton, Macmillan, Wright and Simonds) (House of Lords).

5. A claim in The Goods to ‘apparatus and instruments for conducting, switching, transforming, saving and controlling of electricity’ is addressed in part by the Opponent’s evidence of a 28 May 2018 offering of wireless charging solutions for electric vehicles. However, that announcement makes clear that the product will first be offered in Germany, then later in the United Kingdom, the United States of America, Japan and China. There is no mention of an Australian launch nor is there evidence that this product was offered in Australia during the Relevant Period. Given the Relevant Period ended less than six months from the date of that announcement, it is unlikely that this product was on the Australian market at any relevant time. Another example in the evidence which apparently goes to the ‘saving…of electricity’ is a press release setting out the Opponent’s electric vehicle battery manufacturing activities as of 29 July 2019. The first thing to note here is that this is well after the end of the Relevant Period, but it does offer some details of historical production of batteries in the United States of America between 2015 and 2018. However, this evidence suggests that the Opponent’s battery manufacturing feeds into its vehicle manufacturing—it produces these batteries for vehicles it manufactures. There is no evidence that the Opponent or its related entities has offered batteries to the general market in Australia or anywhere.

6. Claims in The Goods to ‘nautical…optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments’ are partly addressed in relation to the Opponent’s sailing ventures. The Opponent’s evidence details that it has, since 2002, provided technical assistance to the America’s Cup yacht racing syndicate known as Oracle Team USA. Over the years of its involvement the Opponent has provided several technological additions to the team’s equipment including micro heads up displays incorporated into the sailors’ glasses. The Opponent’s engineers have been deployed to conduct tension and stability checks of the team’s yachts, improving their grinder winches, optimising their speed and aerodynamics, and developing a new steering system. The Opponent also became a global partner of the America’s Cup in 2015, providing sensors for monitoring performance data in real-time fitted to all the boats and their crews. This allowed the creation of race data infographics on the fly, which were included in the television broadcast. The sensors were adapted from the Opponent’s ‘sophisticated BMW sensor technology’ originally developed for its motor vehicle offerings.

7. Providing cutting edge contributions in such a high-profile elite sport demonstrates the Opponent’s ability to harness and focus the ingenuity of its workforce, while allowing prominent display of the Trade Mark on the boats, the race course and the broadcast. While this is certainly advertising the Trade Mark, it is not use in relation to The Goods. This deployment of the Trade Mark appears to be to be directed at selling more cars. I infer this from the lack of evidence that the Opponent sells, for example, race data sensors or boat steering systems.

8. In keeping with the nautical theme, the evidence shows that the Opponent also runs a sailing academy. The Trade Mark appears on the boats, life jackets, buoys as well as the academy buildings and signage. There is no evidence, nor does the Opponent submit, that it sells boats, life jackets or buoys. The conclusion I draw from this aspect of the evidence is that the Opponent offers educational services, not that it has used the Trade Mark in relation to The Goods. It is also relevant that those services are not, on the evidence, offered in Australia.

9. I am satisfied the evidence shows the Opponent has used the Trade Mark in Australia in a genuine commercial sense during the Relevant Period in relation to sunglasses. In relation to the remainder of The Goods, I must turn to the discretion.

Discretion

1. The s 101(3) discretion mentioned above reads as follows:

   101  Determination of opposed application—general

   (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.

2. The burden remains with the Opponent to show why the discretion ought to be exercised in its favour for any or all of The Goods (aside, of course, from sunglasses).[11] This being a broad discretion, there is no exhaustive list of factors to consider, though there are several inclusive lists to be found in the authorities.[12] The Opponent’s submissions focus on the ‘guiding principle behind the discretion’[13] being ‘the public interest, particularly in the integrity of the register [of trade marks]’.[14] Though it is necessary to also consider the private commercial interests of the parties, as well as the interests of other traders and consumers.’[15]

   [11] Optical 88 Limited v Optical 88 Pty Limited (No. 2) (2010) 275 ALR 526, 580 [273].

   [12] See, eg, Re Hermes Trade Mark [1982] RPC 425, 433-5 (Falconer J) and E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69, 111 [202] (Flick J).

   [13] Kowa Co Ltd v NV Organon (2005) 223 ALR 27, 41 [92] (Lander J)

   [14] Ibid 41-2 [92].

   [15] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 497 [33]-[34] (Jacobson, Yates and Katzmann JJ).

3. The integrity of the register may be divided into at least two aspects: the removal of unused marks,[16] and the avoidance of public confusion or deception.[17] On the latter aspect, the question that is often put is whether removing the Trade Mark from the register is likely to result in deception or confusion.[18] As I have mentioned above the Opponent nominated Pioneer, in which the court ultimately decided that removal was likely to result in deception or confusion, as analogous to the present matter.

   [16] NSW Dairy Corporation v Murray Goulburn Co-Operative Co (1989) 14 IPR 75, 79 (Gummow J).

   [17] Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323, 345 (Woodward J).

   [18] Dick Smith Investments Pty Ltd v Ramsey (2016) 120 IPR 270,

4. Pioneer concerned an application seeking removal of two stylised ‘Pioneer’ trade marks held by Pioneer KK, a Japanese company with a strong reputation in relation to a large and ever-increasing selection of audio-visual goods. The removal applicant was Pioneer Computers Australia Pty Ltd, a local manufacturer and seller of computer products and services who had been selling its own ‘Pioneer’ goods and services for around 10 years. The removal applicant sought removal of the marks in respect of (among other things) computers, computer peripheral devices and software. Pioneer KK established that it had used its marks in relation to a narrow subcategory of computer peripheral devices, namely, optical disc drives. Such confined use would not normally justify a broad claim to computer peripheral devices. However, the demonstrated use by Pioneer KK of its trade marks in respect of audio-visual and multimedia devices in an environment of technological convergence and brand extension, together with a markedly imprecise usage of ‘computer peripheral devices’ in the industry meant that consumers confronted with the trade mark Pioneer affixed to, say, a laptop computer would not draw a distinction between it and other goods sold be Pioneer KK:

   I am satisfied that both during and by the end of the relevant period and today, the average consumer would be familiar with the convergence of technologies and the uses to which the technologies have been put and the fact that this has enabled various manufacturers to expand their products to cover what may previously have been the separate product lines of computer goods and audio-visual products. Accordingly, such a consumer would be led to believe that a computer, audio-visual or multimedia product sold under the name “Pioneer” or under the mark PIONEER would be associated with Pioneer KK.

1. Convergence of technologies was highlighted by the Opponent at the hearing, pointing out how car manufacturers are shifting from internal combustion to electric-based powertrains and are producing componentry, accessories and infrastructure to go along with it. The Applicant correctly pointed out that this convergence does not blur the line between vehicles and vehicle components in class 12 with The Goods. Again, this argument from the Applicant carries more force when looking to questions of actual use, not risk of confusion. While I have not been presented with evidence that the Opponent has used the Trade Mark in relation to ‘apparatus and instruments for conducting, switching, transforming, saving and controlling of electricity’ in Australia, if indeed it still has not, given its activity in other jurisdictions it is surely only a matter of time until it does. Even without the Opponent’s activity in relation to electric vehicles overseas, in the context of an entire industry shifting toward electric, a consumer seeing the Trade Mark affixed to a battery, vehicle charging cable or an electric vehicle recharge station would almost certainly assume those goods or services came from the Opponent.

2. The above example of electrification is the clearest example among The Goods of the emergence of a risk of confusion if the Trade Mark were to be partly removed. But in my estimation the breadth of the Opponent’s lifestyle and technical goods and its demonstrations of technical prowess in the elite sporting arena would extend a significant risk of confusion to all of The Goods. If consumers familiar with the Opponent’s activities and product offerings saw the Trade Mark affixed to, for example, a pair of binoculars, they too would be caused to wonder whether they came from the Opponent. It is difficult to think of an example from among The Goods that would not be similarly impacted. The Applicant has picked out particle accelerators as an example that would not. I suppose that may be true if only because of the highly specialised nature of those instruments and their operators. Even in this most extreme case I see a substantial risk of confusion, if only because the Trade Mark is so well established in the minds of the public. At any rate, this lower risk due to specialisation does not hold with all scientific apparatus and instruments. For example, a chronometer bearing the Trade Mark would again almost certainly be assumed by any observer to be goods of the Opponent. This varying but ever-present likelihood of confusion extends across the remainder of the claims among The Goods: ‘nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments’.

3. There is no evidence as to the Applicant’s interest nor what it hopes to do if the Trade Mark were partially removed. A week before the hearing the Applicant’s written submissions referred to its pending trade mark application 194083, the registration of which is currently opposed by the Opponent. At the hearing, the Applicant sought to attest that it is an Australian company that makes power points and electrical wiring at mains frequencies. Since it was offered in oral submissions only this is an unsupported assertion, to which very little if any weight would typically attach. I only note it here to point to the Applicant’s alleged interest, apparently being in relation to ‘apparatus and instruments for conducting, switching, transforming, saving and controlling of electricity’ for which removal of the Trade Mark, as I have already observed, would present a significant risk of confusion.

4. In response to the Opponent’s submissions about the discretion, the Applicant submitted that if the Opponent indeed holds such an expansive reputation then it ought to seek a defensive trade mark. This is of course not relevant to the present proceedings. Aside from this the Applicant submitted that there is no reason to exercise the discretion in the Opponent’s favour. I have provided above my reasons for finding quite the contrary.

5. I consider that, despite use only being shown in relation to sunglasses, that the Trade Mark should remain registered in respect of all of The Goods.

Decision and costs

1. Having found use in relation to sunglasses and having decided to exercise the discretion in relation to the remainder of The Goods in favour of the Opponent, the Trade Mark shall not be removed from the register.

2. Both parties requested costs be awarded. The usual rule is that costs follow the event. The Applicant submits that the Opponent’s large quantities of evidence which it says were largely irrelevant to the matter to hand. The Opponent submitted that all of its evidence was relevant to the exercise of discretion. Having now reviewed all of the evidence, while some of it makes the same point more than once, all of it was indeed relevant. I therefore award costs against the Applicant.

Adrian Richards
Delegate of the Registrar of Trade Marks
10 November 2020