Re: Opposition by Factory Direct Garage Doors Pty. Ltd. to an application under section 92 of the Act by Starship Australia Pty Ltd for removal of trade mark number 1035965 (6) Gryphon Garage Doors (Figurative) in..

[2019] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Factory Direct Garage Doors Pty. Ltd. to an application under section 92 of the Act by Starship Australia Pty Ltd for removal of trade mark number 1035965 (6) – GRYPHON GARAGE DOORS (Figurative) - in the name of Factory Direct Garage Doors Pty. Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Campbell Thompson of Counsel instructed by Jeff Cranston and Associates Applicant: Andrew Sykes of Counsel instructed by Wrays
Decision:	2019 ATMO 106 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows authorised use of the Trade Mark for some of the goods during the relevant period. Exercise of discretion in Opponent’s favour in respect of the remaining goods. Trade Mark to remain on the Register.

Background

1. This decision is pursuant to an application made on 6 July 2017 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Starship Australia Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1035965
Lodgement date	23 December 2004
Goods	Class 7: Door panels of metal, door fittings of metal, door frames of metal, door handles of metal, door closers (non-electric), door bolts, door cases of metal, door knockers, door openers, non-electric, door scrapers, door springs (non-electric), door stops of metal (‘Registered Goods)
Owner	Factory Direct Garage Doors Pty. Ltd.
Trade Mark	(‘Trade Mark’)

2.     Factory Direct Garage Doors Pty. Ltd. (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 30 August 2017 and a Statement of Grounds and Particulars (‘SGP’) on 29 September 2017.  The Applicant filed a Notice of Intention to Defend on 13 November 2017.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’), with the Applicant filing evidence in answer (‘EIA’), and the Opponent filing evidence in reply (‘EIR’), each of which will be discussed in more detail below.

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 13 September 2018 the Applicant requested an oral hearing, with the Opponent making a similar request on 14 September 2018.  The matter was set down for a hearing in Canberra on 8 May 2019. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 8 March 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 24 April 2019 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 30 April 2019 (‘Applicant’s Submissions’).  At the hearing Campbell Thompson of Counsel represented the Opponent, appearing in person and Andrew Sykes of Counsel represented the Applicant, also appearing in person. 

   5. On 10 and 11 April 2019 respectively the Applicant filed additional evidence, which it sought to rely upon in the hearing and made an application, pursuant to s 202 of the Act, for the Registrar to issue a summons on Marcus Peter Cervi to appear at the hearing for the purposes of cross-examination. By direction on 16 April 2019, I indicated that the late filed material would not be considered and that I was not satisfied that it was appropriate to exercise the Registrar’s powers under s 202 of the Act in this particular case.

   6. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the oral submissions made at the hearing on 8 May 2019:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support

   ·The Applicant’s Evidence in Answer;

   ·The Opponent’s Evidence in Reply;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   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:

   …

   (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 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 6 June 2017 (‘relevant period’).  Such use of the Trade Mark must be use by the registered owner or an authorised user in the relevant period.  In the present case the registered owner in the relevant period was Marcus Cervi, registration of the Trade Mark having been transferred to the Opponent on 20 June 2017 pursuant to an application for assignment lodged on 30 May 2017.

   9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter.

   10. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   …
    (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   …

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) 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 the use of the trade mark during that period.

   11.     I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[2] I do not accept the submissions, to the extent that they were made by the Applicant, that there is a higher evidentiary threshold for proving authorised use than for other factual matters to be considered under the Act, nor that corroborative evidence is necessarily required to show authorised use.

   12.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

   Opponent’s Evidence

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [4] Nodoz Trade Mark (1962) RPC 1, 7.

2. The Opponent’s evidence in this matter consists of a declaration made on 19 February 2018 by Marcus Peter Cervi, the former registered owner of the Trade Mark, with Annexures MC-1 to MC-14 (‘Cervi 1’), a second declaration made by Mr Cervi on 4 August 2018, with Annexures MC-15 to MC-21 (‘Cervi 2’) and a declaration made on 5 August 2018 by Amanda Filippone, self employed bookkeeper and former employee of GGD/GHI (defined in paragraph 16 below) (‘Filippone Declaration’).     

3. The Filippone Declaration simply gives evidence that the Declarant considers that Mr Cervi was the owner of the Trade Mark and did the design work of the logo that forms part of the Trade Mark.

4. Cervi 1 and 2 convey the following information:

   ·Mr Cervi is the former registered owner of the Trade Mark, with ownership of the Trade Mark being assigned by IP Australia to the Opponent on 20 June 2017 following the lodgement with IP Australia of a Request for Assignment on 30 May 2017.

   ·Mr Cervi was the director and secretary of Gryphon Garage Doors Pty Ltd (‘GGD’) which was in the business of manufacturing, supplying and servicing garage doors.  The other director was his brother.

   ·The decision that Mr Cervi would became the registered owner of the Trade Mark in 2004 instead of GGD was made on the basis of oral discussions with the other directors of GGD.  Though there was no formal licensing agreement, as registered owner of the Trade Mark and director of GGD, Mr Cervi controlled the manner in which the Trade Mark was used by GGD

   ·On 1 July 2014 the business operated by GGD was sold pursuant to a business sale agreement to Gryphon Home Improvements Pty Ltd (‘GHI’), a company that Mr Cervi was director and secretary of.  This restructuring took place on the advice of the then CEO of GGD, James Cowling.  GHI continued to use the Trade Mark under the control of Mr Cervi.

   ·GHI continued to operate the GGD business until 21 March 2016, when GHI was placed into voluntary liquidation.

   ·Between 6 June 2014 and 21 March 2016 GGD and then GHI sold garage doors which bore the Trade Mark to customers from premises in Victoria and WA.  The turnover of GHI in the 2014-15 financial year was approximately $5 million generated from the sale and service of garage doors.

   ·Mr Cervi managed the operations of GGD and GHI in Victoria and made regular trips to Perth to check on operations there.  As Mr Cervi had a close day-to-day involvement with both businesses, he was able to control the manner in which the Trade Mark was used and ensure the quality of products without a formal written licence agreement.

   ·From March 2016 until September 2016 Mr Cervi entered into an oral licence agreement with Gryphon Industries Pty Ltd to licence the Trade Mark to that company for use on garage doors.  Gryphon Industries Pty Ltd was deregistered on 14 September 2016. 

   ·Mr Cervi made Mr Cowling aware from the commencement of his employment that the Trade Mark was owned by him.  In particular Mr Cowling was made aware by conversation in early 2012 that Mr Cervi was the owner of the Trade Mark and Mr Cowling was the recipient of an e-mail dated 27 September 2014 from Amanda Filippone confirming his ownership.

   ·Mr Cervi also rebuts Mr Cowling’s evidence that he had little involvement in the GGD/GHI business and notes that he had extensive experience in the manufacturing of garage doors while Mr Cowling had no experience in that field and had limited understanding of the technical side of garage door production.

   ·Mr Cervi also rebuts claims made in the Cowling Declaration about the financial situation of GGD/GHI and any purported transfer of the GGD/GHI business to that of a third party.

5. Cervi 1 contains, as annexures, extracts from the GGD webpage dated 4 March 2015 showing use of the Trade Mark, work orders from within the relevant period showing use of the Trade Mark and various advertising and marketing materials showing use of the Trade Mark in respect of the manufacture, sale and servicing of garage doors.  

   Applicant’s Evidence

6. The Applicant’s evidence in this matter consists of a declaration made on 25 May 2018 by James Cowling, consultant to the Applicant, with Exhibits JC-1 to JC-9 (‘Cowling Declaration’).  Mr Cowling was also CEO of the GGD and GHI businesses from 2012 to October 2015.    

7. The Cowling Declaration conveys the following information:

   ·GGD and GHI sold garage doors in Australia under the Trade Mark for approximately 20 years until GHI entered into liquidation in 2016.

   ·The Trade Mark was registered by Mr Cervi in 2004 however GGD used the mark prior to that date on various internal and promotional documents.

   ·In 2014, pursuant to a business sale agreement the GGD business was transferred to GHI with GGD going into liquidation on 12 December 2014.

   ·During Mr Cowling’s time at GGD/GHI he was not aware that Mr Cervi was the owner of the mark and assumed that GGD was the owner of the Mark.  Mr Cervi had very little to do with the actual management of the business.  His role was related to placing orders in Melbourne, measuring doors and various administrative duties.  He had no employees reporting to him and had no supervisory role in respect of the manufacture, supply, installation and servicing of garage doors sold by GGD and GHI other than attending production meetings.

   ·As Mr Cervi was based in Melbourne he was not in a position to supervise the manufacturing process based in Perth.  The production manager based in Perth reported to Mr Cowling. 

   ·The Opponent was incorporated on 23 January 2017.  Its sole director and secretary is Mr Cervi’s wife and it operates a business selling and promoting garage doors under the name and related logo ‘FACTORY DIRECT GARAGE DOORS’.

8. The Cowling Declaration makes additional claims in respect of voidable transactions and a business that traded under the name of Trades4U.  It is not necessary to discuss that evidence in any detail as it has no relevance to the present proceeding which, as discussed in paragraph 23 below, concerns the question of whether Mr Cervi exercised control over the use of the Trade Mark by GGD/GHI.

   Discussion

9. To successfully oppose the application for removal of the Trade Mark the Opponent must establish that Mr Cervi, the registered owner of the Trade Mark during the relevant period, used the Trade Mark pursuant to s 100 of the Act or that there was an obstacle to use in that period. Use of the Trade Mark by another person who was authorised by Mr Cervi is taken to be use of the Trade Mark by Mr Cervi.[5] 

   [5] s 7(3) of the Act.

10. In the event that the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

11. Having reviewed the EIS, I find no evidence that the then owner, Mr Cervi has directly used the Trade Mark in Australia in the relevant period.  I find, indeed it is undisputed, that during the relevant period GGD/GHI has been engaged in selling garage doors in Australia under the Trade Mark.  Both the EIS and EIA give evidence that this is the case.  I find that a garage door can be described as a ‘door panel(s) of metal (‘Used Goods’) and hence that GGD/GHI has used the Trade Mark during the relevant period for the Used Goods.  However, I am not persuaded that the use of a Trade Mark in respect of a product, such as a garage door, necessarily involves the use of the mark for the components that mark up the door and hence find that there is no evidence of use of the Trade Mark for the remaining Registered Goods being: door fittings of metal, door frames of metal and door handles of metal; door closers (non-electric), door bolts, door cases of metal, door knockers, door openers, non-electric, door scrapers, door springs (non-electric) and door stops of metal (‘Remaining Goods’).

12. The question in respect of the Used Goods is whether Mr Cervi authorised this use of the Trade Mark under ss 7 and 8 of the Act. The EIS states that Mr Cervi was the director of GGD/GHI and worked at GGD/GHI during that period. He stated that he had entered into an unwritten agreement with GGD/GHI to allow GGD/GHI to use the Trade Mark in Australia since 2004. Under s 8 of the Act, authorised use requires use under the control of the trade mark owner. In the 2016 Full Federal Court decision of Lodestar Anstalt v Campari America LLC[6], Basenko J summarises the law at paragraph 63:

    Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.

    [6] [2016] FCAFC 92.

13. Basenko J later stated that:

    98.        … actual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

1. In that same case, Katzmann J commented on the construction of section 8 as follows:

   169. Section 8 provides that whether a person is an authorised user of a registered mark and whether the use of the mark by that person is an authorised use depend on whether the person uses the mark under the control of the registered owner (subss (1) and (2)). Subsections (3)–(4) reveal that use will be taken to be use under the control of the owner where, for example, the owner “exercises quality control over goods or services ... dealt with or provided in the course of trade by another person ... and ... in relation to which the mark is used” or “exercises financial control over the other person’s relevant trading activities”. Subsection (5) states that subss (3)–(4) do not limit the meaning of the expression “under the control of” but this statement is ambiguous. It might signify that “control” is not limited to quality control or financial control. On the other hand, it might signify that control is not limited by the context provided by subs (3)–(4). The former construction is the preferable one. In my opinion, the examples given in subss (3) and (4) give colour to the concept of control in s 8. The language used in the two subsections strongly suggests that — regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.

   …

   184. In my opinion, under the 1995 Act the use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. In a case where a registered proprietor of a trade mark is relying on use by an authorised user, it is still necessary to demonstrate that the trade marks indicate a connection in the course of trade with the registered proprietor. The purpose of s 8 is to identify the means by which that is done. …
   185. A bare licence to use a trade mark, particularly a perpetual licence, would not be sufficient. Without more, it would amount to a divestment of control. But there is no reason in principle why control might not be exercised through conditions imposed by agreement on the use to which the trade marks might be put and, in the event of an application to cancel the registration for non-use, proved by evidence that the authorised user is complying with those conditions. Whether or not that is sufficient in any particular case, however, will depend on the terms of the agreement, most importantly whether the control is such as to maintain the registered proprietor’s connection with the marks. As the Act makes clear, that can be achieved if either quality control or financial control is exercised. If it is not, the registered proprietor (upon whom the burden of proof rests), must show that it has exercised some other form of control in the relevant period which maintains its connection with the marks.

   27.     In the recent Full Federal Court decision of Trident Seafoods Corporation v Trident Foods Pty Ltd[7], the Full Court at paragraph 45 noted that as a matter of practicality control could be found in circumstances where the two companies shared the same directors:

   [7] [2019] FCAFC 10.

   It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.

   …

   …it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[8]

   [8] Ibid [45].

   28. In the present case there is no evidence of a written licence agreement and there is a factual dispute over the degree of control exercised by Mr Cervi over the use of the Trade Mark by GGD/GHI. Were I to accept Mr Cervi’s evidence fully, this evidence provides more than a sufficient basis to conclude that during the relevant period Mr Cervi exercised sufficient control as required under s 8 of the Act. Conversely the Applicant submits that I should not accept the evidence of Mr Cervi and that the actual situation was that Mr Cervi exercised very little control, since he did not operate as CEO, did not have any direct supervision of employees and was based in Melbourne, not in Perth, where the manufacturing took place.

   29. The question of actual control is a matter of fact and degree and each case brings different considerations. I am also conscious that evidence of control is provided by witnesses, with fallible memories of events and business practices that occurred several years ago. In the present case, even if I was to accept most, if not all the factual contentions made by the Applicant, I would be satisfied that Mr Cervi exercised sufficient quality control over the manner in which the Trade Mark was used for the use by GGD/GHI to be authorised use of the Trade Mark under s 8 of the Act. The GGD/GHI business was a fairly small one, with a turnover of $5 million per year. Mr Cervi was one of two directors of the company and had been so for a long time. In that role he had at least some control over the operations of the business, while noting that he was not the CEO. Importantly, Mr Cervi worked for the company on a day-to-day basis (and thus was in a position to monitor the company’s operations).

   30.     The Applicant, in its submissions made reference to the trial judge’s decision in Trident Seafoods Corporation v Trident Foods Pty Limited[9].  As noted above, this decision has now been overturned by the Full Court but in any event, unlike the circumstances in that case, Mr Cervi was not merely a director of GGD/GHI with a theoretical capacity to control but personally removed from the manner in which the mark was used.  As manager of GGD/GHI’s operations in Melbourne, he was in a position to inspect and review doors that were produced for the business, even if he did not exercise direct day-to-day supervision of the manufacturing process in Perth.  He had sufficient technical expertise in the manufacturing of doors and experience with the business to address any issues that arose.  He attended some production meetings, albeit often by telephone. 

   [9] [2018] FCA 1490, 100.

   31.     It is inherently credible that Mr Cervi, long-standing company director of a small enterprise who was working for the business on a day-to-day basis (including having a role where he inspected the company’s outputs) had control over the manner in which GGD/GHI’s Trade Mark was used.  I reach this conclusion notwithstanding the evidence that he did not have  direct supervisory authority over the production manager (though I find the Applicant’s argument on this point somewhat overblown, Mr Cervi being a director who thus supervised the CEO who supervised the production manager).  I find on the balance of probabilities, that the use by GGD/GHI of the Trade Mark during the relevant period was authorised by Mr Cervi and as such the Trade Mark was used by Mr Cervi during the relevant period.

   Registrar’s Discretion

   32.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[10] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [10] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[11]

   [11] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[12]

   [12] Ibid [171]-[172].

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

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] 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.[14] 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.[15]

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   34.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·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;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[16]

   [16] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   35. In the present case, the Applicant has made submissions to the effect that if I were to find (as I have) that Mr Cervi has used the Trade Mark during the relevant period, I should find that such use was limited to ‘door panels made of metal’ and I should remove the Trade Mark for the remaining Registered Goods. Given the similarity between the Used Goods and Remaining Goods, the Remaining Goods being key components of garage doors, goods connected with garage doors and goods that could easily be produced or sold by a producer or seller of garage doors (the Used Goods being the garage door itself), I accept the Opponent’s submission that confusion would arise if a similar mark to the Trade Mark was used by a third party on the Remaining Goods. Considering the factors set out under the Act (and in particular s 101(4)) and in the case law with respect to the exercise of the discretion, I am satisfied that it is reasonable in the circumstances to exercise the discretion available to the Registrar pursuant to s 101(3) in favour of the Opponent to allow the Trade Mark to remain on the Register for the Registered Goods.

   Decision

3. I decide that the Opponent has established its opposition to removal in respect of the Used Goods.  Furthermore, I am satisfied that it is reasonable to exercise my discretion and not remove the Trade Mark from the Register in respect of the Remaining Goods.

   Costs

   37. The Opponent has been successful in relation to its opposition to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 1035965 be awarded against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   10 July 2019