Re: Opposition by Raven Products Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by ASSA ABLOY Australia Pty Limited for removal of trade mark number 715187 (6, 17) - Pemko - in the..

[2021] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Raven Products Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by ASSA ABLOY Australia Pty Limited for removal of trade mark number 715187 (6, 17) – PEMKO – in the name of Raven Products Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Andrew Bullock of Cowell Clarke Pty Ltd Applicant: Adrian Crooks of Philips Ormonde Fitzpatrick
Decision:	2021 ATMO 54 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(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 20 December 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by ASSA ABLOY Australia Pty Limited (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	715187
Lodgement date	14 August 1996
Goods	Class 6: Door and window sealing systems; weather seals; noise seals; light seals; smoke seals, fire seals; hand rail and wall protection systems; metal extrusions; expansion joint systems; hinges of metal, door and window fittings; latches; handles; all the aforgoing comprising or including metal; and not including self- clinching nuts, studs and standoffs Class 17: Plastics and rubber extrusions; packing, stopping, sealing and insulating materials, foamed plastics materials; door and window seals; weather seals; noise seals; light seals; fire seals; adhesive strips; self adhesive tapes; sealants; all the aforegoing goods included in this class (‘Registered Goods’)
Owner	Raven Products Pty Ltd
Trade Mark	PEMKO (‘Trade Mark’)

2.     Raven Products Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 23 January 2019 and a Statement of Grounds and Particulars (‘SGP’) on 6 February 2019.  The Applicant filed a Notice of Intention to Defend on 16 March 2019.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material 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 21 December 2020 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 18 May 2021.  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 12 March 2021 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 4 May 2021 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 11 May 2021 (‘Applicant’s Submissions’).  At the hearing Andrew Bullock of Cowell Clarke Pty Ltd represented the Opponent and Adrian Crooks of Philips Ormonde Fitzpatrick represented the Applicant, both appearing by video conference. 

   5. On 14 April 2021 the Opponent filed additional evidence, which it sought to rely upon in the hearing.  By direction on 20 April 2021, I indicated that the late filed material would not be considered.  On 4 May 2021 the Opponent annexed a section of this evidence to its submissions, which it again sought to rely on in the hearing.  I discuss my consideration of this additional material below.

   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 submissions made at the hearing:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s EIS;

   ·The Applicant’s EIA;

   ·The Opponent’s EIR;

   ·The Opponent’s Submissions (but not the additional material attached to 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:

      (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.

   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 20 November 2019 (‘relevant period’).

   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. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

   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:

   (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.

   11.     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].

   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]

   [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 EIS in this matter consists of a declaration made on 10 June 2020 by Stephen Bordon, Manager – Products and R&D of the Opponent, with documents identified as 1.1-1.2 and 2.1-2.4 (‘Bordon 1’).  This declaration makes frequent reference to a company known as DTAC Pty Ltd (‘DTAC’) however it does not provide evidence of any connection or relationship between the Opponent and DTAC. 

3. Bordon 1 states that the DTAC PEMKO range consists of two products, described as ‘stair treads and edging’ and ‘anti-slip tapes’ which fall within classes 6 and 17.  The Trade Mark is used on the DTAC Website, products and services guide and technical data sheets.

4. Bordon 1 contains, as additional documents, undated screenshots of the DTAC website that refers to ‘DTAC’s range of PEMKO stair treads’ and ‘DTAC’s PEMKO range of self-adhesive anti-slip tapes’.  It also contains photos of a document described as a ‘2019 products & services guide’ that makes reference to the Trade Mark in connection with stair edging products.  The DTAC PEMKO products appear to be products (be it a metallic product or tape) applied to stairs to prevent slipping.  Finally, Bordon 1 contains tax invoices from DTAC to third parties, in the relevant period, showing sales of edge products or anti-slip tape with the Trade Mark at the bottom right of the invoice (‘Pemko stair tread and edging products’)[5]. 

   [5] Certain invoices also show sales of sealants.  However, as the remainder of Bordon 1 only refers to the use of the Trade Mark on stair treads and edging, I am not satisfied that the Trade Mark has been used in connection with the sealant product itself, as opposed to DTAC simply reselling a third party sealant product alongside its branded stair treads and tapes.

5. The Opponent’s EIR in this matter consists of a declaration made on 6 November 2020 by Stephen Bordon (‘Bordon 2’).  Bordon 2 states that the Applicant has the right to the Trade Mark in the United States and accuses the Applicant of selling products in Australia  infringing the Trade Mark held by the Opponent.     

   Applicant’s Evidence

6. The Applicant’s EIA in this matter consists of a declaration made on 18 September 2020 by Adrian Hew Crooks, Partner at Philips Ormonde Fitizpatrick, the Opponent’s representative, with annexures AHC-1 to AHC-6 (‘Crooks Declaration’).  The Crooks Declaration states that the Applicant is the owner of a North American producer of door components known as Pemko Manufacturing Company which has used PEMKO as a trade mark in the United States since 1952 and registered PEMKO as a trade mark in the United States in 1965.  On 21 November 2019 the Applicant applied to register PEMKO as an Australian trade mark in classes 6 and 17.

   Discussion

7. 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 an authorised user, as contemplated by s 8 of the Act, is taken to be use of the Trade Mark by the Opponent[6]. 

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

8. If 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

   21.     Having reviewed the EIS, I find no evidence that the Opponent (being the owner of the Trade Mark) has directly used the Trade Mark in Australia in the relevant period.  I am satisfied on the balance of probabilities that DTAC has used the Trade Mark (without additions or alterations that substantially affect the identity of the Trade Mark) in Australia during the relevant period on stair treads and adhesive anti-slip tape.  I reach this conclusion having regard to the 2019 catalogue provided by the Opponent which illustrates the use of the Trade Mark on stair treads and adhesive anti-slip tape and the invoices from the relevant period bearing the words ‘Pemko stair treads and edging products’ for the sale of the same products, notwithstanding that the product descriptions in the invoice do not specifically refer to the Trade Mark.  However, I am not satisfied that stair treads and adhesive anti-slip tape fall within the goods for which the Trade Mark is registered in Class 6.  I do find that DTAC has used the Trade Mark for ‘adhesive strips; self adhesive tapes’ in class 17 (‘Used Goods’).  I find that there is no evidence of any use of the Trade Mark for the Registered Goods that do not fall into the Used Goods category (‘Remaining Goods’).

9. The question in respect of the Used Goods is whether the owner of the Trade Mark (the Opponent) authorised the use of the Trade Mark by DTAC under ss 7 and 8 of the Act. This is a crucial requirement of the trade mark process since the purpose of a trade mark is to indicate a connection in the course of trade between the good supplied and the owner. The fact that a mark is used by an unconnected third party is not a basis to allow a mark to remain on the Register. The EIS provides no evidence of the connection between the Opponent and DTAC and hence there is no basis for me to find that the use of the Trade Mark for the Used Goods by DTAC was authorised use under the Act.

10. The Opponent sought to file material on 14 April 2021 in respect of that matter which it sought to rely upon in the hearing.  By direction on 20 April 2021, I indicated that the late filed material would not be considered.  Notwithstanding that clear direction the Opponent sought to include a subset of the material filed on 14 April 2021 as annexures to the Opponent’s Submissions.  This appears to be a fairly transparent attempt at seeking to re-litigate the direction issued on 20 April 2021 that the late-filed material would not be considered in this matter.  I note the comments of the Delegate in Ion Asset Management Ltd v Ion Trading UK Limited which I consider to be relevant to this matter:

    For whatever reasons, the Opponent in this case chose to provide evidence in support of its opposition which is of a standard which falls well short of that required to establish use. It is of no surprise that the Applicant was highly critical of that evidence in its written and oral submissions. Further, there is no obligation on the Applicant that it draw the Opponent’s attention to shortcomings it considers exist in the Opponent’s evidence at any stage earlier than it did. It was incumbent upon the Opponent, in conjunction with its representatives, to provide, if possible, evidence to show that it has used its trade mark during the Relevant Period. That evidence should be appropriately prepared at the appropriate time. To attempt to rectify the shortcomings in their evidence on the day before the hearing is far from appropriate.

    It would constitute an unfair and unwarranted imposition upon the Applicant for me to consider the Opponent’s Reg 21.19 Evidence in arriving at my decision in this matter. The Applicant prepared for the hearing on the basis of evidence which was filed in accordance with the Regulations. Procedural fairness—reflected in reg 21.19(1)(e)—demands that the Applicant be given a reasonable opportunity to make representations about the Opponent’s Reg 21.19 Evidence were I to take it into account. This would cause an unwarranted delay in the proceeding of, potentially, many months.

    I therefore do not intend to take the Opponent’s Reg 21.19 Evidence into account in making my decision in these proceedings. Neither am I satisfied, for similar reasons, that it is appropriate that I consider it under the power available to me pursuant to reg 21.15(4).[7]

    [7] [2015] ATMO 124, [62]-[64].

11. The Opponent made submissions to the effect that as the material (being ASIC records) was publically available material then I should have regard to this material notwithstanding that it had not been filed as required by the Trade Mark Regulations 1995 (‘Regulations’).  I do not accept the submission and note that as a matter of procedural fairness, a party is entitled to know the case it has to meet when it prepares its evidence and submissions.  It is not acceptable to allow the introduction of material (be it corporate records, advertising material or evidence of usage of a mark online) shortly before a hearing merely because it is ‘publically available’.  I do not exercise my discretion under either 21.15(4) or 21.19 of the Regulations  to consider the material filed as annexures to the Opponent’s Submissions.  I find that there is no evidence that the Opponent has used the Trade Mark in Australia in the relevant period.

    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 Trade Mark 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.[8] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [8] 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.[9]

    [9] 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.[10]

    [10] Ibid [171]-[172].

1. 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’,[11] 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.[12] 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.[13]

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

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

   [13] 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.[14]

   [14] 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, there is no evidence that the Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future.  The fact that a third party, on the evidence before me unconnected to the Opponent, has used the mark on the Used Goods is not a basis to apply my discretion; indeed, the integrity of the Register would be better served if that third party were to apply to register the Trade Mark for the Used Goods.  I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Goods.

   Decision

   30.     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.

2. Accordingly, I direct that registration 715187 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

   32.     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. 715187 against the Opponent in accordance with Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   22 June 2021