Reece Australia Pty Ltd v Hangzhou Great Star Industrial CO., Ltd

[2023] ATMO 184

TRADE MARKS ACT 1995
 
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS 

Re:Opposition by Reece Australia Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by HANGZHOU GREAT STAR INDUSTRIAL CO., LTD. for removal of trade mark numbers 383891 DURA with device, 731365 DURA, 1012712 DURA composite, 1012524 DURA in the name of Reece Australia Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Allens Patent & Trade Mark Attorneys Applicant: Ironside McDonald Intellectual Property
Decision:	2023 ATMO 184 Trade Marks Act 1995 (Cth) - section 96 oppositions: s 92(4)(b) application for removal: 383891, 731365, 1012524, 1012712: Opponent’s evidence does not show use of the Trade Marks during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register

Background

1. These decisions are pursuant to applications made on 28 September 2021 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) by HANGZHOU GREAT STAR INDUSTRIAL CO., LTD (‘Applicant’) to remove the trade marks detailed below from the Register of Trade Marks.  The applications were made in respect of all the goods for which the trade marks are registered, that is, the applications are for complete removal of the below trade marks. 

Registration No.	383891
Lodgement date	15 November 1982
Goods	Class 11: Plumbing and builders hardware in this class including watertaps and washers; metal taps (not being parts of machines or motors); water pipes in this class; water closets and water flushing installations; bath tubs; bath plumbing fixtures and bath fittings and installations
Owner	Reece Australia Pty Ltd
Trade Mark	(‘DURA triangle device mark’)

Registration No.	731365
Lodgement date	2 April 1997
Goods	Class 1: Drain cleaning preparations; cement solvent and cleaners Class 6: Hose fittings/connections (metal), bathroom cabinets (metal), laundry cabinets (metal), door furniture(metal), handles (metal), plugs (metal), washers (metal) and tubs (metal) Class 9: Inspection mirrors Class 17: Hoses Class 19: Tiles Class 20: Bathroom mirrors, bathroom cabinets (non metal), laundry cabinets (non metal), handles (non metal), hose fittings and connectors (non metal) Class 21: Basins and tubs (non metal)
Owner	Reece Australia Pty Ltd
Trade Mark	DURA  (‘DURA trade mark’)

Registration No.	1012524
Lodgement date	23 July 2004
Goods	Class 11: Apparatus for water supply and sanitary purposes; kitchen and bathroom products; toilets, cisterns and bidets; shower systems and installations; showers, shower bases, shower recesses, shower screens, shower doors, shower frames, shower walls, shower modules, moulded shower recesses, walls and bases; baths and bath installations and cubicles; vanity basins; tubs; sinks; shower system accessories; tapware, including taps; shower heads; plumbing and builders hardware in this class including water taps and washers; metal taps (not being parts of machines or motors); water pipes in this class; water closets and water flushing installations; bath plumbing fixtures and bath fittings; heating apparatus and heaters, and accessories therefor
Owner	Reece Australia Pty Ltd
Trade Mark	DURA (‘DURA trade mark’)

Registration No.	1012712
Lodgement date	26 July 2004
Goods	Class 1: Industrial, agricultural and horticultural chemicals, including chemical cleaners in this class including drain cleaning preparations; cement solvent and cleaners Class 6:  Plumbing materials and bathroom accessories in this class; hose fittings and connections in this class; valves, bathroom and laundry cabinets in this class; metal door furniture; handles of metal; plugs of metal; washers of metal; tubs in this class; metal pipes and tubes; towel rails, towel hooks, towel rings and holders, robe hooks Class 11: Apparatus for water supply and sanitary purposes; kitchen and bathroom products; toilets, cisterns and bidets; shower systems and installations; showers, shower bases, shower recesses, shower screens, shower doors, shower frames, shower walls, shower modules, moulded shower recesses, walls and bases; baths, spa baths and bath installations and cubicles; vanity basins; tubs; sinks; shower system accessories; tapware, including taps; shower heads; plumbing and builders hardware in this class including watertaps and washers; metal taps (not being parts of machines or motors); water pipes in this class; water closets and water flushing installations; bath plumbing fixtures and bath fittings; heating apparatus and heaters, and accessories therefor Class 17: Flexible pipes, not of metal, including hoses Class 19: Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen; tiles, including floor tiles and wall tiles, grout for tiles; none of the aforementioned being sand and cement based building blocks, concrete resurfacing compounds or masonite hardboard sign sheeting; excluding non metalic connectors Class 20: Bathroom cabinets; mirrors, including bathroom mirrors and inspection mirrors; laundry cabinets in this class; grips, handles and rails in this class including hand and grip rails for toilets, bathrooms and showers Class 21: Household, kitchen and bathroom utensils and containers; other household and bathroom products in this class including basins and tubs; excluding mittens and gloves in this class
Owner	Reece Australia Pty Ltd
Trade Mark	(’DURA in oval device mark’)

1. Collectively, I will refer to the above trade marks as the ‘Trade Marks’. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively. 

2. Reece Australia Pty Ltd (‘Opponent’) has opposed the applications to remove the Trade Mark, filing Notices of Intention to Oppose removal on 29 November 2021 followed by its Statements of Grounds and Particulars (‘SGP’) on 4 January 2022.  The Applicant filed its Notices of Intention to Defend on 22 February 2022. 

3. The Opponent subsequently filed evidence in support of its oppositions to removal (‘EIS’).  This material will be discussed in more detail below. The Applicant subsequently filed its evidence in answer (‘EIA’).   

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record. 

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 and the evidence listed below: 

   ·     The applications for removal; 

   ·     The Notices of Intention to Oppose and SGPs; 

   EIS 

   ·     Declaration by Jenny Baker (the ‘Baker’ declaration), Lawyer acting for the Opponent, dated 1 March 2023 accompanied by Exhibit JB-1.  

   EIA

   ·Declaration by Rachel McDonald, Lawyer acting for the Opponent, dated 1 June 2023 accompanied by Exhibit RB1 to RB3.  

   The Relevant Provisions

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

   92  Application for removal of trade mark from Register etc. 

   (4)An application under subsection (1) or (3) (nonuse 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 nonuse 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 nonuse 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 28 September 2021 (‘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 applications,[1] and I confirm that five years since filing the applications have in fact passed. 

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 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)… 
   (b)  … 
   (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] In accordance with s 101 I may decide to remove the Trade Marks from the Register for all or some of the goods identified in the applications for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Marks even if the grounds under which the applications for removal were made are established.  

    [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

11. I further note that a single bona fide use of the respective Trade Marks 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, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5]

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [16]

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

    [5] Act s 7(3).

12. The principles when a trade mark has been used were recently summarised in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following: 

    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark. 
    Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark. 
    The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.

    Discussion

13. To successfully oppose the application the Opponent must establish that it has used its Trade Marks (or a mark with additions or alterations not substantially affecting its identity[6]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).

    [6] s 7(1)

14. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark/s should not be removed from the Register.

15. Given that there are four different Trade Marks and applications for removal, I will assess each of the Trade Marks under separate titles for the sake of clarity in this decision. As the EIS for each removal action is the same, there will be some repetition in the discussion of each Trade Mark.

    Trade Mark Number 383891 – Use of the Trade Mark in the relevant period

16. The material in the EIS supporting the Opponent’s claim for use consists of an assertion of use of the Trade Mark in the relevant period by Ms Baker, who is described as ‘Lawyer Acting for Reece Australia Pty Ltd’.  The evidence of use put forward by Ms Baker in exhibit JB-1 contains three ‘tabs’ of evidence. Tab 1 contains copies of Google ® searches and Tab 2 contains screen shots of the Opponent’s products available under the word DURA on its website I note from Tab 2 there are 308 products on the Opponent’s website that are sold with reference to DURA trade mark or DURA in oval device mark. Tab 3 contains the instruction manuals for various goods under the DURA trade mark or the DURA in oval device mark. There is also a video available on YouTube ® which was uploaded by David Yoo onto the platform on 11 August 2019 which demonstrates the replacement of dual flush valve bearing the DURA trade mark on the instruction manual which can be seen in the short video.

17. When I consider the evidence in total, apart from the video available on YouTube, all of the google searches in Tab 1 and screen shots in Tab 2 are dated outside of the relevant period. The instruction manuals in Tab 3 are undated. The Trade Marks that I have found in the evidence are:

DURA

1. I am unable to locate a single instance of use in the evidence of the Opponent’s DURA triangle device mark:

1. I am also not persuaded that use of the Trade Marks above in paragraph 18 would amount to use of the Opponent’s DURA triangle device mark for the purposes of s 7. The triangle device along with the slanting letters DUR with the opposing slanting letter A to become a continuation of the triangle device forming the DURA triangle device mark into a singular shape of a triangle is very different visually and conceptually to the Opponent’s DURA trade mark and DURA in oval mark.  

2. I am not satisfied that the Opponent has used its DURA triangle device mark during the relevant period.

   Trade Mark Numbers 731365 and 1012524 – Use of the Trade Mark in the relevant period

3. I have outlined in paragraphs 17 and 18 above that the Opponent’s evidence does contain instances of the DURA trade mark being used on some of its goods. Those goods that the DURA trade mark has been used on as seen in Tab 2 and Tab 3 in exhibit JB-1 accompanying Baker may broadly be described as plumbing fixtures. I have given careful consideration and researched the goods which appear to be offered for sale under the DURA trade mark. These goods are a small portion of the Opponent’s broad specification claims for the Dura Trade Mark and for ease of reference I have reproduced the specification of the DURA Trade Mark and struck through all those goods for which the Opponent has demonstrated no use.

Trade Mark Number 731365

Trade Mark Number 1012524

DURA

DURA

Class 1: Drain cleaning preparations; cement solvent and cleaners
Class 6: Hose fittings/connections (metal), bathroom cabinets (metal), laundry cabinets (metal), door furniture(metal), handles (metal), plugs (metal), washers (metal) and tubs (metal)
Class 9: Inspection mirrors
Class 17: Hoses
Class 19: Tiles
Class 20: Bathroom mirrors, bathroom cabinets (non metal), laundry cabinets (non metal), handles (non metal), hose fittings and connectors (non metal)

Class 21: Basins and tubs (non metal)

Class 11: Apparatus for water supply and sanitary purposes; kitchen and bathroom products; toilets, cisterns and bidets; shower systems and installations; showers, shower bases, shower recesses, shower screens, shower doors, shower frames, shower walls, shower modules, moulded shower recesses, walls and bases; baths and bath installations and cubicles; vanity basins; tubs; sinks; shower system accessories; tapware, including taps; shower heads; plumbing and builders hardware in this class including water taps and washers; metal taps (not being parts of machines or motors); water pipes in this class; water closets and water flushing installations; bath plumbing fixtures and bath fittings; heating apparatus and heaters, and accessories therefor 

1. Having said the above, I do reiterate that all this evidence is dated outside of the relevant period and so not useful in order to prevent the success of the removal applications. While I note the YouTube video is dated within the relevant period and does show the DURA trade mark on the instruction manual of a dual flush valve, if this single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.[7]

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

2. I am not satisfied that this single instance of use during the relevant period is overwhelmingly convincing proof of use of the Opponent’s DURA trade mark. From the evidence before me, I am not satisfied that the Opponent’s has used the DURA trade mark during the relevant period.

   Trade Mark Number 1012712 – Use of the Trade Mark in the relevant period

3. Careful consideration of the evidence does demonstrates some limited examples of use of the Opponent’s DURA in oval device mark. These examples of use are limited to some of the screenshots of goods located on the Opponent’s website which is Tab 2 of exhibit JB-1 accompanying Baker. The DURA in oval device mark is sometimes located on bluish tags on the goods or stamped into the good itself. The goods on which the Opponent has used this trade mark in Tab 2 are: 5 micron filter cartridges, metal flex hoses, brass water ball valves, mini ball valves, ball valves with butterfly handles, valve boxes, brass line strainers, eagle gas cocks, eagle tested gate valves, liquid pressure gauges, multi function valves, full circle clamps, square base plates (metal).

4. The DURA in oval device mark is also present on the instruction manuals located in Tab 3 which demonstrate use of the trade mark on micron carbon clock cartridges, back flow prevention device test kits, boot roof flashing, brass water ball valves, cast iron strainers,  condenstrate drain hoses, ball valves with butterfly handles, brass line strainers, mini ball valves, fire hose reels, flexible couplings, cast iron gear operators, landing valves, flex water hoses, pressure gauges, repair clamps, traps, vacuum breakers, vibration eliminators, wafer check valves, water lugged butterfly valves, and test points being extended nipples, solder sockets/nipples, test plugs, extension M&F with test points. Consideration of the broad specification for goods reveals that this use by the Opponent is limited to the goods not struck out in the below:

Trade Mark Number 1012712

Class 1: Industrial, agricultural and horticultural chemicals, including chemical cleaners in this class including drain cleaning preparations; cement solvent and cleaners
Class 6:  Plumbing materials and bathroom accessories in this class; hose fittings and connections in this class; valves, bathroom and laundry cabinets in this class; metal door furniture; handles of metal; plugs of metal; washers of metal; tubs in this class; metal pipes and tubes; towel rails, towel hooks, towel rings and holders, robe hooks
Class 11: Apparatus for water supply and sanitary purposes; kitchen and bathroom products; toilets, cisterns and bidets; shower systems and installations; showers, shower bases, shower recesses, shower screens, shower doors, shower frames, shower walls, shower modules, moulded shower recesses, walls and bases; baths, spa baths and bath installations and cubicles; vanity basins; tubs; sinks; shower system accessories; tapware, including taps; shower heads; plumbing and builders hardware in this class including watertaps and washers; metal taps (not being parts of machines or motors); water pipes in this class; water closets and water flushing installations; bath plumbing fixtures and bath fittings; heating apparatus and heaters, and accessories therefor
Class 17: Flexible pipes, not of metal, including hoses
Class 19: Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen; tiles, including floor tiles and wall tiles, grout for tiles; none of the aforementioned being sand and cement based building blocks, concrete resurfacing compounds or masonite hardboard sign sheeting; excluding non metalic connectors
Class 20: Bathroom cabinets; mirrors, including bathroom mirrors and inspection mirrors; laundry cabinets in this class; grips, handles and rails in this class including hand and grip rails for toilets, bathrooms and showers

Class 21: Household, kitchen and bathroom utensils and containers; other household and bathroom products in this class including basins and tubs; excluding mittens and gloves in this class

1. Having said the above, I again reiterate that all this evidence is dated outside of the relevant period and so not useful in order to prevent the success of the removal applications. From the evidence before me, I am not satisfied that the Opponent has used the DURA in oval device mark during the relevant period.

   Obstacles to use

   28. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Marks for any or all of the goods in the four specifications during 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 Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Marks to remain on the Register for any of the goods.

   Registrar’s Discretion

2. 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]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3) of the Act:

   [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[9]

   [9] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

3. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Marks in respect of any or all of the goods.[10] The burden of persuasion in this regard falls on the Opponent.[11]

   [10] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [11] Ibid.

4. While I have noted that the Opponent has use of the DURA trade mark and the DURA within oval device mark on limited goods of its specification outside of the relevant period, the Opponent’s submissions on this matter has been a statement in the SGPs to the effect that due to the use of the Trade Marks by the Opponent during the relevant period that the Registrar is requested to exercise the discretion to retain the registrations for all goods. This statement is insufficient to persuade me that it is appropriate to exercise the Registrar’s discretion particularly when the evidence put forward by the Opponent falls short of establishing use of the Trade Marks in regards to the goods during the relevant period. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of all of the goods or any of the goods that I have outlined in the preceding paragraphs.

   Decision

5. I find the opponent has not rebutted the allegation of non-use. I direct Trade Mark Numbers 383891, 731365, 1012524 and 1012712 be removed from the register in respect of all the goods to which the registrations apply, one month from the date of this decision. In the event of an appeal, I direction that the Trade Marks will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the trade mark be subject to that order.

   Costs

6. The Applicant requested its costs in the event of success in these four removal matters. All four removal matters had common evidence and this being the case I award against the opponent in terms of Schedule 8 of the Regulations in the following way:

   ·Full costs, as per scale, for filing the Notices on all four matters;

   ·Full costs, as per scale, for the evidence in support of the removal opposition to application 383891; and

   ·At 20% of the scale[12] for the evidence in the remaining three oppositions.

   [12] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   16 November 2023