Re: Opposition by GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI to an application under section 92 of the Act by HMS MYG b.v. for removal of trade mark number 1290044 (7) – BMS GALIPOGLU...

[2020] ATMO 153

TRADE MARKS ACT 1995

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

Re:Opposition by GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI to an application under section 92 of the Act by HMS MYG b.v. for removal of trade mark number 1290044 (7) – BMS GALIPOGLU HIDROMAS (Figurative) - in the name of GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI

Delegate:	Nicholas Smith
Representation:	Opponent: Griffith Hack Applicant: Spruson & Ferguson
Decision:	2020 ATMO 153 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 24 December 2018 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘Act’) HMS MYG b.v. (‘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.	1290044
Lodgement date	22 August 2008
Goods	Class 7: Pumps for pistons (‘Registered Goods)
Owner	GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI
Trade Mark	(‘Trade Mark’)

2.     GALIPOGLU HIDROMAS HIDROLIK OTOMOTIV SANAYI VE TICARET ANONIM SIRKETI (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 12 March 2019 and a Statement of Grounds and Particulars (later rectified) (‘SGP’) on 12 April 2019.  The Applicant filed a Notice of Intention to Defend on 21 June 2019.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’), which will be discussed in more detail below.  The Applicant did not file any evidence in answer.

   4.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing.  On 7 February 2020 the Opponent requested an oral hearing. The matter was set down for a hearing in Canberra on 4 August 2020. 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 10 June 2020 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 21 July 2020 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 28 July 2020 (‘Applicant’s Submissions’).  Neither party appeared at the oral hearing.    

   5. 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:

   ·the Application for Removal;

   ·the Notice of Intention to Oppose and SGP;

   ·the Opponent’s Evidence in Support

   ·the Opponent’s Submissions; and

   ·the Applicant’s Submissions. 

   The Relevant Provisions

   6. 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:

      (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   (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.

   7. 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 24 November 2018 (‘relevant period’).

   8. 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.

   9. 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:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
   (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.

   10.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [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].

   11.     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.

   12. 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]

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

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

   Opponent’s Evidence

2. The Opponent’s evidence in this matter consists of a declaration made on 19 September 2019 by Suleyman Aslan, Director of the Opponent, with Exhibit AT-1 to AT-12 (‘Aslan Declaration’).    

3. The Aslan Declaration conveys the following information:

   ·The Opponent is a Turkish company whose business (owned by a predecessor in title) dates back to 1975.  The Opponent is engaged in the manufacture and sale of products in the hydraulic and automotive industries, including pumps, valves.  The Opponent designed the Trade Mark in 1987 and filed an international application for the Trade Mark, designating Australia, in 2008.

   ·The Opponent has sold hydraulic piston pumps, telescopic piston and cylinder assemblies, gear pumps, and other hydraulic products in Australia since 2004.  

   ·In 2007 the Opponent designed a new logo (‘Logo’), depicted below, for use in connection with the marketing and sale of hydraulic pumps, pumps for pistons, telescopic cylinders, values and other hydraulic products.  The Logo includes all the essential elements in the Trade Mark, including the words Galipoglu Hidromas and a stylised version of the letters BMS.

   ·All hydraulic products manufactured and sold by the Opponent in Australia since 2004 have been marked with either the Trade Mark or the Logo.

4. The Exhibits to the Aslan Declaration contains details of the number of bracket kits, telescopic cylinders and gear pumps sold by the Opponent to its distributor in Australia as well as material showing the use of the Logo in Australia (such as brochures and technical catalogues).  The exhibits do not show any use of the Trade Mark in Australia.  

   Applicant’s Evidence

5. The Applicant has provided no evidence in this matter so I have no information about the Applicant’s business.     

   Discussion

6. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[5] As the Trade Mark had been registered for more than five years as at the date of the Application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the Application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by another person who was authorised by the Opponent taken to be use of the Trade Mark by the Opponent[6]. 

   [5] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

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

7. 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

8. Having reviewed the EIS, I am satisfied that the Opponent has used the Logo in Australia during the relevant period for piston pumps and other hydraulic devices but has not used the exact Trade Mark during the relevant period, having adopted the Logo in 2007.  There is a question as to whether the Registered Goods, being ‘pumps for pistons’ incorporate piston pumps and the other hydraulic devices for which the Opponent has used the Logo in Australia.  For the purposes of this discussion I will assume that it does and that the use of the Logo for piston pumps is use of the Logo for the Registered Goods.

9. As such the question is whether the Opponent’s use of the Logo on the Registered Goods during the relevant period is use of the Trade Mark under s 100(3)(a) of the Act. Section 7(1) of the Act provides:

   Use of trade mark

   If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. [emphasis added]

10. The test to be applied here is whether there is substantial identity between the Trade Mark and the Logo[7] with the test for substantial identity being set out below

    [7] Link Recruitment Pty Ltd v Link Employment And Training Inc (2006) 69 IPR 614, 619 [21]-[22].

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

    [8] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

11. To assist the side by side comparison I have reproduced the Trade Mark and the Logo Mark below:

12. The Opponent submits that the marks are substantially identical noting that each of the marks contain the essential features ‘GALIPOGLU’, ‘HIDROMAS’ and what the Opponent characterises as ‘the stylised ‘BMS’ logo’.  This submission, which refers to the ‘minor differences in form’ is not accepted given that the manner in which the elements are displayed in the Trade Mark and the Logo Mark are otherwise entirely dissimilar.  The Trade Mark consists of the elements in a circle (as a seal), with the ‘GALIPOGLU’ element emphasised, while the Logo consists of a rectangular mark which shades both the BMS logo and the ‘HIDROMAS’ elements and places no emphasis on the ‘GALIPOGLU’ element whatsoever.  Given the significant difference in the manner in which the respective marks are composed, the total impression is not one of resemblance and the respective marks are not substantially identical.  Hence that the Opponent’s use of the Logo during the relevant period was not use of the Trade Mark.

13. As the Opponent has supplied no evidence of use of the Trade Mark (as opposed to the Logo) on the Registered Goods during the relevant period I find that the Opponent has failed to satisfy the onus under s 100(3)(a) of the Act.

    Obstacles to use

    25. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Registered Goods to remain on the Register.

    Registrar’s Discretion

    26.     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.[9] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [9] 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.[10]

    [10] 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.[11]

    [11] Ibid [171]-[172].

14. 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’,[12] 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.[13] 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.[14]

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

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

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

    28.     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.[15]

    [15] 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].

    29.     In the present case, the Opponent submitted that I should exercise the discretion not to remove the Trade Mark in respect of the Registered Goods on the basis that:

    ·the ‘galipoglu’ and ‘hidromas’ elements are not descriptive of the Registered Goods.  Since a trade mark must not be descriptive of its goods in order to be registered in Australia I do not see this as a factor relevant to the discretion;

    ·the Opponent is the owner of the copyright in the Mark and Logo; again, I would be surprised if the owner of a device trade mark did not own the intellectual property in its own trade mark;

    ·that the Opponent’s business operates in Asia, Africa and Europe and has used the Trade Mark since 1987 and has hence developed a strong reputation in the Trade Mark.  I note that there is no evidence that the Opponent has used the Trade Mark (as opposed to the Logo) in Australia since 2007 and I am unpersuaded that there is any residual reputation in the Trade Mark (as opposed to the Logo); and

    ·that the Applicant is seeking to register an identical variant of the Trade Mark and has filed the non-use application in bad faith.  This submission is entirely speculative and I have no evidence before me to suggest that the Applicant is acting in bad faith in any way.  I note that the Opponent put on no evidence in support of this contention and caution counsel against making submissions claiming that another party is acting in bad faith in the absence of supporting evidence.

    30.     In summary, I am not persuaded by the Opponent’s submissions that this is an appropriate case to exercise the discretion.  It appears that the Opponent ceased to use the Trade Mark in or around 2007.  The Opponent has since adopted a mark that is similar, but not substantially identical to the Trade Mark.  It may well be able to register that mark for the Registered Goods.  However, given the lack of evidence of use of the Trade Mark on the Registered Goods either before, during or after the relevant period, the Opponent’s private commercial interest is insufficient to outweigh the public interest of the integrity of the Register.  In those circumstances I am not prepared to exercise the Registrar’s discretion.

    Decision

    31.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the goods for which it is registered.

1. Accordingly, I direct that registration 1290044 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   33. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I award costs in relation to trade mark registration no. 1290044 against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   15 September 2020