Richard Anthony v Glen Anthony Thorton

[2006] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Richard Anthony to application under section 92 of the Act by Glen Anthony Thornton to remove trade mark number 927571(11) - AquaTherm - in the name of Richard Anthony

Delegate:	Rachel Dunn
Representation:	Opponent: Michelle Howe of Davies Collison Cave. Applicant: Unrepresented, but written submissions were filed.
Decision:	Section 92 opposition: Opposition successful, applicant not a person aggrieved.

Background

1. Trade mark number 927571 is registered for the word trade mark:

   AquaTherm

2. The registration is in class 11 of the International (Nice) Classification of Goods and Services, for "Water and waste water heat disinfection systems".  The date of registration is 18 September 2002, and the trade mark owner is Richard Anthony.

3. Glen Anthony Thornton (the removal applicant) made application under section 92 of the Trade Marks Act 1995 (the Act), for removal of the trade mark from the Register for all goods on 8 November 2004.  It was advertised for opposition purposes in the Australian Official Journal of Trade Marks dated 25 November 2004, and on 25 February 2005 notice of opposition was filed by the trade mark owner, Richard Anthony (the opponent).

   Application for removal

4. The grounds cited in the removal application are those set out in paragraph 92(4)(a) of the Act:

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

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

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

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

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

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

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

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

5. The removal application indicated that the applicant was aggrieved by the opponent's registration, and that removal was sought for all the goods it covered.  A declaration by the removal applicant accompanied the removal application.  This declaration stated the bare minimum in order to have the application filed, and it did not provide any information as to how the removal applicant is aggrieved by the registration.

   Notice of opposition

6. The opponent responded in its notice of opposition that:

   ·The removal applicant was not a person aggrieved within the meaning of section 92

   ·The conditions required by subsection 92(4) had not been fulfilled

   ·The trade mark was applied for and registered by the opponent with the intention in good faith of using the trade mark/authorizing the use of the trade mark and the trade mark has been so used in good faith in Australia

   ·The discretion of the Registrar should be exercised in favour of the registered proprietor by virtue of the circumstances surrounding the use and registration of the trade mark

   Evidence

   Evidence in support

7. Evidence in support, answer and reply was all served and filed in the normal manner.  The evidence in support consists of a statutory declaration in the name of Richard Ian Anthony and one exhibit.  The statutory declaration details the use made of the trade mark by the opponent through its business ANT Distribution and that first use of the trade mark occurred in approximately September 2002, with continuous use since that date.  Sales figures are provided and are very low, much lower than the stated expenditure on promoting and advertising the goods.  Over 50 quotes have been given throughout Australia for sales of goods by reference to the trade mark.  The exhibit shows use of the trade mark and the trade mark with a graphic device.

   Evidence in answer

8. The evidence in answer consists of a statutory declaration in the name of Glenn Anthony Thornton and is accompanied by three exhibits.  The declaration states that the trade mark has been used since July 2002 by an entity named Hi Tech Marine Pty Ltd.  Who owns this company, what relationship the removal applicant has with it, and what its standing is in this matter are never explained.  The sales figures provided by the opponent are declared to relate to one sale only, and that many more AquaTherm units have been sold by Hi Tech Marine Pty Ltd.  Two exhibits show use of the trade mark, but this use is on an Internet site run by the opponent with all the contact details for ANT Distribution.  The other exhibit is a Limited Sales Agency Agreement between the opponent and a company named Aerocycle Holdings Pty Ltd.  Again, there is no information as to this company’s standing in this matter or the connection between the removal applicant and this company.

   Evidence in reply

9. The evidence in reply consists of a statutory declaration in the name of Richard Ian Anthony and two exhibits.  The information provided in this evidence goes toward showing that the removal applicant has not used the trade mark, and that the opponent used the trade mark before the Limited Sales Agency Agreement was signed.  The removal applicant’s standing as a person aggrieved was challenged.

10. The opponent then requested a hearing, which was held in Sydney before me as delegate of the Registrar, on 19 July 2006.  Ms Michelle Howe, of Davies Collison Cave, Patent and Trade Mark Attorneys, Sydney, represented the opponent.  The removal applicant was not represented, however written submissions were filed.

    Removal applicant's standing as a person aggrieved

11. At the hearing, the opponent made submissions in relation to the status of the removal applicant as a person aggrieved, and noted that this challenge has never been answered by the removal applicant.  Additionally, some time was spent on the use of the trade mark and the use in good faith of the trade mark.  The actual use of the trade mark does not need to be considered any further however, as the removal applicant's case has failed at the very first hurdle, which is the threshold test of eligibility to make an application under subsection 92(1).

12. Section 92 gives the right to apply for removal of a trade mark not just to any person, but only to a "person aggrieved". The definition of “person aggrieved” has been the subject of considerable attention by the courts. For example, see Kraft General Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198 and Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, which I was referred to by the opponent. These cases make it clear that to be a person aggrieved, the person must be appreciably disadvantaged, in a legal or practical sense, by the continued registration of the trade mark they seek to remove.

13. In this case the removal applicant indicated itself aggrieved by the registration it sought to remove, however gave no indication in the application, evidence or submissions, of how or why this state existed.  No trade mark applications or registrations in the removal applicant’s name were referred to.  The Registrar would have taken the removal applicant’s claim to standing at face value, however, the opponent challenges that standing in its notice of opposition and in the evidence.  This put the removal applicant firmly on notice that the matter of standing was in dispute, and needed to be addressed.  The removal applicant had an opportunity to provide evidence to support its claim in its evidence in answer, but it did not do so.  The written submissions provided at the time of the hearing refer to the question of standing, however they only show that the removal applicant is of the opinion that the initial claim to standing is enough to pass the threshold test.

    Decision

14. The removal applicant has made no effort to properly establish its standing as a person aggrieved before me.  I find that the removal applicant has therefore failed to meet the threshold criterion for making its application under subsection 92(1).  Accordingly, I must refuse the removal application.

    Costs

15. The opponent has sought its costs in this matter.  I see no reason why costs should not follow the event.  I direct the unsuccessful removal applicant, Glen Anthony Thornton, to pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Rachel Dunn
    Hearing Officer
    Trade Marks Hearings
    18 September 2006