Re: Oppositions by Danteng Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Jaguar Land Rover Limited to remove trade mark numbers 1290917 SVA [fancy] and 1290918 SVA - both in..

[2020] ATMO 108

TRADE MARKS ACT 1995

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

Re:Oppositions by Danteng Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Jaguar Land Rover Limited to remove trade mark numbers 1290917 SVA [fancy] and 1290918 SVA – both in classes 12 and 40 – both in the name of Danteng Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Mark Pullen, Principal at Watermark Applicant: Written submissions
Decision:	2020 ATMO 108 Trade Marks Act 1995 (Cth) – applications for removal of two trade marks from the register for alleged non-use – use of and some goods services established with respect of both marks – discretion exercised to not remove the remainder of the goods and services

Background

1. On 13 July 2016, Jaguar Land Rover Limited (‘Applicant’) filed applications for removal of two trade marks from the register in respect of all goods and services for which they are presently registered. The first trade mark, number 1290917, consists of the letters SVA executed in fancy script. The second, number 1290918, consists of the same three letters presented in plain text. An image of the first trade mark appears below:

1. Both marks are registered in respect of the same goods and services:

   Class 12:Vehicles for locomotion by land, air, water or rail including vehicles for the mining, civil construction, and resources industries, military vehicles, mine service vehicles, water vehicles and fuel tankers, lubricant supply vehicles, rescue vehicles including mine rescue vehicles, personnel carriers, dump trucks, vehicles for use above ground and below ground, wheeled vehicles and non-wheeled vehicles such as vehicles with tracks, and component parts and accessories for any of the aforementioned vehicles

   Class 40:Custom fabrication and manufacturing of plant equipment, machinery and vehicles, including excavators, water vehicles, fuel tankers, lubricant supply vehicles, military vehicles, lighting towers and trailers, bulldozers, service trucks, cranes and crane trucks, rescue vehicles including mine rescue vehicles, personnel carriers, loaders, graders, dump trucks, vehicles for use above ground and below ground, wheeled vehicles and non-wheeled vehicles such as vehicles with tracks; custom fabrication and manufacturing of component parts and accessories for plant equipment, machinery and vehicles such as body parts for vehicles, tanks for water carts, service vehicles, dumper bodies, vehicle roll over and vehicle impact protection systems, and vehicle structural components including access systems, ladders, stairs and walkways

2. The applications were advertised for opposition purposes. The registered owner of the marks, Danteng Pty Ltd (‘Opponent’), filed notices of intention to oppose and statements of grounds and particulars against both of the applications for removal. The Applicant then indicated that it would defend its applications, prompting the Opponent to file evidence in support. The Applicant did not file any evidence in answer. At the joint request of the parties, the proceedings were put on hold for 12 months. After this time elapsed, this office invited the parties to seek to be heard on the oppositions. The Opponent sought an oral hearing for both oppositions. They were scheduled to be heard together on 18 September 2019 before me, a delegate of the Registrar of Trade Marks. In attendance for the Opponent was Mark Pullen, principal at Watermark. The Applicant opted to file written submissions rather than attend the hearing.

Evidence

1. The sole item in evidence is a declaration of Dante Travaglini, General Manager and Engineering Manager of the Opponent, made 25 April 2017 with exhibits DT-1 to DT-9.

2. Mr Travaglini declares that SVA is short for ‘Support Vehicles Australia’, a registered business operated by the Opponent. He also declares that this business has been in operation since March 2005 with the trade marks in continuous use since March 2009 ‘for at least design, build and installation of superstructures and ancillary equipment for heavy vehicles’ along with related goods and services such as spare parts and repair. A focus of the business appears to be the fit-out of specialist trucks and fabrication of related truck parts for hauling liquids, such as water, fuel, lubrication oil and the like to remote places such as mine sites.

3. The exhibits provide examples from 2007 to 2015 of the trade marks affixed to vehicles and parts, as well as several documents relating to the conduct of the Opponent’s business.

Grounds, relevant period, onus and standard

1. The ground for removal alleged by the Applicant for each of the trade marks is s 92(4)(b).[1] Sufficient time has passed for such grounds to be alleged.[2] The relevant aspects of the ground for removal are below:

   [1] All references to sections in these reasons are to the Trade Marks Act 1995 (Cth).

   [2] Trade Marks Act 1995 (Cth) s 93(2), as at 13 July 2016.

   92Application 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.

2. The three-year period mentioned in the excerpt above ended on 13 June 2016 (‘Relevant Period’). This ground stands as an allegation that the Opponent must rebut.[3] The Opponent relies on actual use of the trade marks during the Relevant Period for its rebuttal.[4] Any findings of fact are based on the ordinary civil standard of the balance of probabilities.

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

   [4] Ibid s 100(3)(a).

Discussion

1. Just one bona fide use of (either of) the trade marks within the Relevant Period will be sufficient to defeat an allegation of non-use (made against that trade mark).[5] The Applicant’s written submissions concede that the trade marks were used in the Relevant Period, but for a subset of the goods and services specified on the register. That is, while each of the trade marks include broad claims to ‘vehicles for locomotion by land, air, water or rail’, use within the Relevant Period appears to have been limited to the goods and related services set out in Mr Travaglini’s declaration. On my reading of the evidence there is no question the trade marks have been used. The contention lies in the breadth of that use across the goods and services in the specifications to the trade marks.

   [5] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, 172 [17] (Drummond J).

2. With respect to the trade marks’ claims to services (custom fabrication and manufacturing) and certain goods (components and accessories for vehicles), several of the documents in evidence relating to conduct of the Opponent’s business, all from within the Relevant Period, relate to work ordered by two prominent mining companies for completion by the Opponent. The work in each case relates to retrofitting large vehicle chassis with water cart and service truck modules. Apparent from these documents is that this work routinely involves design and fabrication of components for large vehicles, and structural modification and/or augmentation of the vehicles themselves, such as the installation of rollover protection systems and hydraulic circuits. Each of these documents includes use of marks sufficiently similar to the trade marks and as such I find that the Opponent has demonstrated use with respect to these goods and services.

3. The Applicant quite specifically contends that the Opponent’s evidence of use does not include vehicles, and the marks should be partially removed in that respect. The Applicant arrives at this position by impugning aspects of the Opponent’s evidence. Firstly by noting certain of the Opponent’s exhibits show support vehicles emblazoned with the fancy trade mark: a crane recovery/service vehicle and a van support vehicle both pictured below.

1. The Applicant correctly observes the Opponent has apparently offered services other than the class 40 services (such as for the servicing, repair and recovery of other vehicles). The Opponent providing such services by using these vehicles is not, in the course of trade, offering up any of these vehicles themselves for sale. As such this cannot be use of either trade mark with respect to vehicles.

2. Mr Travaglini describes the image below as ‘an example of the SVA logo on a water cart truck’.

1. The Applicant submits that this water cart is either used to deliver the Opponent’s repair and recovery services, putting it in the same category as the van and crane above, or it is an example of a water tank body designed and built by the Opponent. In the latter case, the Applicant submits that this is not trade in vehicles. Whether it was can be reframed as a question relating to the circumstances in which the work was completed. There is nothing in the evidence to conclude that the Opponent sourced a CAT truck, fitted the water module, and sold the entire vehicle as a complete unit. In such circumstances, this would have plainly been use of the fancy trade mark with respect to vehicles. Equally possible however is that the purchaser of the water module supplied the truck to which the Opponent retrofitted it with a water module. That would not have been the offering for sale of vehicles by the Opponent. There is insufficient information to conclude either way. That said, I have found the Opponent has offered vehicles for sale, but based on the evidence to which I now turn.

2. The Opponent’s evidence includes several photos of its stall at the AIMEX exhibition held from 20-23 August 2013. A particularly relevant image from that set is reproduced below.

1. These posters were hung prominently on the back wall of the Opponent’s marquee. They appear as an unqualified invitation to treat with respect to entire water trucks and service trucks. The trade mark appearing at the top left of these posters falls within the bounds of fair use of the plain text mark SVA and in my view varies from the fancy trade mark in ways that do not substantially affect its identity.[6] As such, I find that this is evidence of use of both trade marks in the Relevant Period in relation to vehicles. The Applicant has not directly addressed this aspect of the Opponent’s evidence, though it did at a couple of points submit in general terms that there is no evidence to show that the Opponent trade in vehicles. Considering this illustration of the Opponent’s presence at the AIMEX exhibition in 2013, I reject the Applicant’s submissions on that point.

   [6] See Trade Marks Act 1995 (Cth) s 100(3)(a).

Discretion

1. Given the specialised nature of the vehicles in class 12 and the relatively limited extent of the evidence in relation to the class 40 services, there remains a question as to whether these marks ought to be partially removed from the register. Of particular relevance to this question is the discretion to permit an unused mark to remain on the register found in s 101(3):

   101  Determination of opposed application—general

   (3)  If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   (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.

1. The partial removal in contemplation would involve a dicing up of broad claims to, for example, ‘vehicles’ and ‘custom fabrication and manufacturing of plant equipment and machinery’ into smaller, more precisely defined categories of those goods and services. Implicit within that notion is a finding that the trade marks have in fact been used in relation to similar goods and services, which is a relevant consideration that falls in favour of leaving things as they are.

2. Had it been as simple as the Applicant contended—that the marks can be safely removed in respect of all vehicles—I would likely have been moved to do so. However, the situation presented by the evidence is less clear cut. Both parties referred in submissions to an authority that considered an analogous situation. In McHattan v Australian Specialised Vehicle Systems[7] the registered mark included a broad claim to ‘vehicles’, and the removal applicant had sought partial removal for either ‘military vehicles’ or ‘military vehicles of greater than 8 tonnes’. Drummond J expressed strong doubts that to do so would be appropriate:

   If s 92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods.[8]

   [7] (1996) 34 IPR 537 (Drummond J).

   [8] Ibid 544.

3. I share the concerns of his Honour in the present circumstances. The introduction into the market of a new vehicle or marque of vehicles under the banner of SVA (or similar) would be ‘potentially conducive to public confusion’.[9] The same can be said in relation to the remainder of the class 40 services not explicitly included in evidence, such as, for example, the custom fabrication of dumper bodies.

   [9] Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 224 (McLelland J).

Decision and costs

1. While the Opponent has shown evidence of use of the trade marks with respect to some of the goods and services, I consider it appropriate to exercise my discretion with respect of the remainder. Both of the trade marks shall remain on the register with respect to all of their currently registered goods and services.

2. Both parties requested an award of costs. The usual rule is that costs follow the event, and there is no reason to make an exception here. Accordingly, in respect of trade mark number 1290917 I award costs against the Applicant. For trade mark number 1290918 I award reduced costs against the Applicant in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[10]

   [10] [2001] ATMO 78 (Hearing Officer Williams).

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
19 June 2020