Re: Opposition by Opus RV Pty Ltd to an application under section 92 of the Act by H Taylor & Son (Brokley) Limited to remove trade mark 1400298 (12) Aeroplus in the name of Opus RV Pty Ltd from the Register of..
[2019] ATMO 9
•18 January 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Opus RV Pty Ltd to an application under section 92 of the Act by H Taylor & Son (Brokley) Limited to remove trade mark 1400298 (12) - Aeroplus - in the name of Opus RV Pty Ltd from the Register of Trade Marks.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Lesicar Maynard Andrews Applicant: David Rickard |
| Decision: | 2019 ATMO 9 Trade Marks Act 1995 Section 96 opposition to application under ss 92(4)(a) and 92(4)(b): merger of sections - Trade Mark used without alterations or additions substantially affecting its identity during Relevant Period in relation to some of the Goods; exercise of Registrar's discretion – goods of the same description. Opposition to removal established. |
Background
In these proceedings under section 96 of the Trade Marks Act 1995 (‘the Act’) H Taylor & Son (Brokley) Limited (‘the Removal Applicant’) applied on 2 May 2016 under the provisions of sections 92(4)(a) and 92(4)(b) for the removal from the Register of Trade Marks of the trade mark registration which appears below:
Registration No: 1400298
Owner: Opus RV Pty Ltd
(‘the Owner’)
Priority Date: 17 Dec 2010
Goods:Class 12: Aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; caravan spoilers; apparatus for towing vehicles
(‘the Goods’)
Trade Mark: Aeroplus(‘the Trade Mark’)
The application seeks removal of the Trade Mark in respect of “Aerodynamic attachments for vehicle (excluding land vehicles) bodies; aerodynamic fairings for vehicles (excluding land vehicles); non-land caravan spoilers; apparatus for towing vehicles” so that the Trade Mark remain registered for “Aerodynamic attachments for land vehicle bodies; aerodynamic fairings for land vehicles; land caravan spoilers”.
As the application for removal was filed on 2 May 2016, the relevant period for the purposes of section 92(4)(b) of the Act is the three years ending on 2 April 2016 (‘the Relevant Period’).
On 30 May 2016 the Owner filed a Notice of Intention to Oppose the removal of the Trade Mark from the Register and a Statement of Grounds and Particulars.
On 6 July 2016 the Applicant filed a Notice of Intention to Defend.
Thereafter, on 5 October 2016, the Owner filed Evidence in Support of its opposition being a declaration by Malcolm Hill, a Director of the Owner, made on 28 September 2016 with Exhibits MH1 to MH3.
The Applicant has not filed Evidence in Answer.
The parties have both been advised of their right to be heard or to make written submissions. Neither party has requested to be heard. The Owner and the Applicant have both filed written submissions. Insofar as some of the Applicant’s written submissions may be more properly characterised as being evidence (or to assert facts which if suitably corroborated would be of an evidentiary nature) I will not take notice of those particular “submissions” as to do so would not afford the Owner procedural fairness in that it has not had an opportunity to address the issues that these assertions raise. These “submissions” by the Applicant appear, in any event, to state issues more appropriate to a court’s consideration under section 88 of the Act rather than an application under section 92 of the Act.[1]
[1] Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970; (2008) 77 IPR 115.
Now, in order to decide the matter, it has been passed to me, a delegate of the Registrar of Trade Marks, for my decision on the written record which is comprised of those relevant materials mentioned in the foregoing paragraphs.
Principles
It is convenient to discuss the issues in terms of section 92(4)(b) of the Act. As the Registrar’s delegate observed in Liliana Forza v Jaimex Nominees Pty Ltd:[2]
I note also the tendency for the grounds under ss 92(4)(a) and (b) to merge once five years have passed since the filing of an application to register, given an owner’s intention as at the filing date may come to be reflected in the actual use made of the trade mark. Often an analysis of the ground under s 92(4)(a) is otiose in view of any actual use made of a trade mark …
[2] [2016] ATMO 5 at [9].
I further note that if the opposition to removal under section 92(4)(b) is not established there is no requirement to consider the ground under section 92(4)(a).
Concerning the onus in these proceedings, section 100 of the Act relevantly provides:
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.
A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[3]
[3] [2001] FCA 261; 107 FCR 166 at 172.
However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (‘Nodoz’).[4]
[4] [1962] RPC 1 at 7 per Wilberforce J.
The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [5]
[5] [1977] RPC 131.
The relevant standard of proof that the Owner bears is on the balance of probabilities.[6] In this regard, section 101 of the Act provides that if “the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …” [Stress added]
[6] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
In Blount Inc v Registrar of Trade Marks Branson J observed:[7]
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
[7] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
It follows that unless the Owner evidences “convincing proof” of use, or authorised use, of the Trade Mark “in the course of trade”:[8]
1.Without alterations or additions which substantially affect its identity;[9]
2.during the Relevant Period;
3.in relation to the Goods;
to the satisfaction of the Registrar, the opposition to removal will not be established.
[8] See section 17 of the Act: What is a trade mark?
[9] Subsections 7(1) and 100(3)(b)(i) of the Act apply.
Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the impugned goods if satisfied it is reasonable to do so.
Evidence
In his declaration Mr Hill states that he is the director of both the Owner and Purple Line Pty Ltd. Mr Hill attaches to his declaration both Internet advertisements from the Internet Archive (Wayback Machine) and invoices which show the Trade Mark in both logo and plain print form[10] from within the Relevant Period. Both the advertisements and invoices which carry the Trade Mark appear under the banner heading “Purple Line Pty Ltd.” The goods in relation to which the Trade Mark has been used are aerodynamic devices such as may be fitted to cars, vans, caravans etc to reduce drag and increase towing stability. I will refer to these goods as “wind deflectors”.
[10] The plain print form of the Trade Mark is a use of the Trade Mark without alterations or additions which substantially affect its identity.
Section 92
Section 92 of the Act relevantly provides:
92Application 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:
[…]
(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.
The Registrar has not been informed of an action concerning the trade mark pending in a prescribed court and the application for removal has been made be in accordance with the Trade Marks Regulations 1995 (‘the Regulations’).
The Applicant for removal has submitted that the use of the Trade Mark by Purple Line Pty Ltd is not a use by the Owner and that the use of the Trade Mark is not in respect of all of the Goods. Further, as I understand it, the Applicant submits that the wind deflectors in relation to which the Owner has used the Trade Mark are only for land vehicles contained within the Goods “Aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; caravan spoilers; apparatus for towing vehicles” and that the Trade Mark has not been used by the Opponent in relation to, for example, wind deflectors for boats.
In relation to the authorised use of the Trade Mark the Owner submits:
It is common for one company to own a trade mark and use an associated company for sales and distribution of goods under that trade mark, and this does not mean that use is not by the registered owner. The registered owner may make use of a mark through an associated company or subsidiary, however that use is still by the registered owner.
Even if this is not the case, the associated company can be considered to be using the trade mark under the authorisation of the registered owner.
As director of both companies, Mr Hill exerts direct control over use of the trade mark and there is a clear connection between the registered owner and the authorised user. As no evidence has been provided by the Applicant to the contrary, Mr Hill’s declaration regarding directorship and use of the trade mark is sufficient to demonstrate use by the registered owner through Purple Line Pty Ltd as an associated company or authorised user.
Section 8 of the Act relevantly provides:
8Definitions of authorised user and authorised use
(1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
And section 7 of the Act relevantly provides:
7Use of trade mark
[…]
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
I accept the Owner’s unchallenged assertion that the Owner is under the control of its director Mr Hill and that, in like position, he also controls Purple Line Pty Ltd. Accordingly, the use of the Trade Mark is effectively under the hand of its owner and may be taken to be an authorised use of the Trade Mark by the Owner.
The goods “wind deflectors” fall within the description of the Goods, “Aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; caravan spoilers.” As the Applicant is the owner of the trade mark registration which appears below, I infer that the Applicant is concerned with goods made for boats:
Registration No: 1676185
Priority Date: 21 February 2015
Goods:Class 12: Marine vehicles; apparatus for locomotion by water; yachts; boats; boat hulls; frames for boats; water vehicles; sails; spars (being parts of watercraft); cleats (nautical); covers for marine vehicles and parts and fittings thereof; marine vehicle hand trolleys; boat hooks; oars; engines and propulsion systems for water vehicles; parts and fittings for water vehicles, yachts, watercraft and boats; marine vehicle accessories; all of the aforesaid excluding aerodynamic attachments and fairings, caravan spoilers, and apparatus for towing vehicles, latches and catches, seats, protective covers (shaped) for seats, seat backrests, seat head rests, cushions, mattresses and pillows (including parts and fittings therefore), and goods manufactured from or containing foam for bedding, mattresses, pillows, seating or other homeware or office ware
Trade Mark: AERO
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
I note that the above excludes all “attachments and fairings, caravan spoilers, and apparatus for towing vehicles”.
That said, the Opponent’s evidence does not establish that it used the Trade Mark in relation to wind deflectors for vehicles other than land vehicles during the Relevant Period.
Moreover, it is not immediately apparent that “wind deflectors” also fall within the description “apparatus for towing vehicles”. Read one way, the description might mean “apparatus for use on vehicles which tow” whereas it might also be read as meaning “apparatus for use whilst towing vehicles” (such as trailers, caravans, etc). Some examples of what might usually be considered to be “apparatus for use whilst towing vehicles” can be found on websites such as which mentions towbars, load distribution/levelling devices, safety chains, safety chain shackles, trailer brakes, and extended towing mirrors. In my own observations of the world equipment as diverse as dolly wheels, electrical connectors, electric brakes, and sway control apparatus might also be generally described as falling within the general description “apparatus for use whilst towing vehicles”. If this is so, wind deflectors which are designed to reduce drag when towing a vehicle might be also held to fall within the description “apparatus for towing vehicles” whereas wind deflectors would certainly fall within the ambit of the alternative reading “apparatus for use on vehicles which tow”. The description “apparatus for towing vehicles” is very imprecise. However, at this juncture it is not necessary to determine the scope of the term: I will leave the issue moot for now and address it under the heading “Discretion”.
Accordingly, I find that the Owner has established that it has used the Trade Mark on “Aerodynamic attachments for land vehicle bodies; aerodynamic fairings for land vehicles; caravan spoilers” in Australia during the Relevant Period and, accordingly, subject to my consideration of the exercise of the Registrar’s discretion, some restriction to the Opponent’s goods may be appropriate as the Opposition to removal is only partially established.
Discretion
Section 101 of the Act relevantly provides:
101Determination 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.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennett J said of the discretion not to remove a trade mark:[11]
167. The discretion under s 101(3) is 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 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.
168. In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
169. In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
othere had been no abandonment of the trade mark;
othe registered proprietors of the mark still had a residual reputation in the mark;
othere had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
othe applicants 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;
othe registered proprietors were not aware of the applicant’s sales under the mark.
[11] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].
In considering whether wind deflectors for land vehicles are, in terms of section 101(4) of the Act, “similar goods” to wind deflectors for vehicles other than land vehicles, the term “similar goods” is defined by section 14 of the Act:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
When discussing the expression “goods of the same description”, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[12] the court referred to the decision in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[13] (‘Southern Cross’) and observed:
Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.
[…]
In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 [‘Polo’] at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
[12] [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70].
[13] (1954) 91 CLR 592
In the circumstances before me I note that wind deflectors for land vehicles and wind deflectors for water vehicles may be made of the same materials (ie of carbon fibre, resin, plastic, or fibre glass), have the same mode of manufacture by people in the same trade, using similar tools and techniques, and have a similar purpose or use – the reduction of aerodynamic drag on vehicles. It is consequently likely that they would, or would likely to, be made by the same manufacturer. I also note that the formulation in Southern Cross does not require each factor referred to by the court to be established in order for goods to be held “of the same description” and that in Polo the ultimate question was regarded as being the likelihood (or otherwise) of deception or confusion. Accordingly, in view of the similarities of the goods, their manufacture, and their purposes, I find that wind deflectors for land vehicles and wind deflectors for boats, if not the same goods, are goods of the same description and that it is reasonable for the Registrar’s discretion to be exercised in relation to those goods.
The question mark that hangs over the goods “apparatus for towing vehicles” may, I consider, be resolved in favour of the Owner. In so deciding I note that whilst “wind deflectors” may or may not fall within the description “apparatus for towing vehicles”, there are likely to be goods falling within that description which, if the Trade Mark were to be used on them by a person other than the Owner, would be the source of confusion in the marketplace as the use of the Trade Mark on those goods by a person other that the Owner would be likely to be taken to indicate a common source in trade.
It is therefore reasonable in my consideration that, in the exercise of the Registrar’s discretion, the Goods not be restricted.
Decision
Subsection 101(1) of the Act provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
The Owner has established its opposition to removal.
Costs
The Owner has sought its costs and since it was the successful party in these proceedings it is appropriate in terms of section 221 of the Act that I award costs against the Applicant at the official scale set out at Schedule 8 to the Regulations.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
18 January 2019
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