Rinnai International Pty Ltd v Seeley International Pty Ltd
[2023] ATMO 401225
•16 August 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Seeley International Pty Ltd to remove from the Register trade mark registration number 401225 (class 11) – COSI-RAY - in the name of Rinnai Australia Pty Ltd.
Delegate: | Nicole Worth |
Representation: | Opponent: written submissions prepared Griffith Hack. Applicant: written submissions prepared by Caska Intellectual Property Pty Ltd. |
Decision: | 2023 ATMO 116 Trade Marks Act 1995 (Cth) – application for removal under s 92(4)(b) – opposition thereto – no use or obstacle to use – decline to exercise discretion – registration to be removed. |
Background
On 9 June 2021 Seeley International Pty Ltd (‘Applicant’) filed an application (‘Application’) under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) to remove the trade mark detailed below, registered in the name of Rinnai Australia Pty Ltd (‘Opponent’).
Trade Mark: COSI-RAY (‘Trade Mark’)
Registration No.: 401225
Filing Date: 15 December 1983
Goods: (Class 11): Heaters included in this class
The Application seeks removal of the Trade Mark for all of the goods in respect of which it is registered.
The Opponent filed a Notice of Intention to Oppose removal followed by a Statement of Grounds and Particulars (‘SGP’). The SGP identified three grounds under which the Application was opposed, being in summary that (a) the Trade Mark had been used in good faith in the in period relevant to s 92(4)(b); (b) that if there was no use within the period, the failure to use the Trade Mark was due to circumstances that were an obstacle to use and not due to any intention to abandon the Trade Mark; and (c) that the Registrar should exercise her discretion not to remove the Trade Mark even if the ground for removal is established. The Applicant filed a Notice of Intention to Defend the Application.
The Opponent filed a single declaration of Leon Bogers (‘Bogers’) as evidence in support of its opposition. Mr Bogers is the Executive Technical Manager of the Opponent. The declaration is dated 19 January 2022 and there are no exhibits. The salient part of the declaration is as follows:
As well as being the owner of Trade Mark registration No. 401225 for COSI-RAY, Rinnai Australia is also the owner of trade mark registration nos. 401230 GLOWRAY, 401234 SUPER-RAY and 401229 COSYGLOW, covering goods in class 11, which are brand names for other radiant heater products.
…
Rinnai Australia has not used the COSI-RAY mark yet, however Rinnai Australia, together with its partner subsidiary Rinnai New Zealand, has been working on a new product to be launched under the COSI-RAY brand for a number of years. Its launch is intended for 2022. Substantial time, money and effort has been spent on preparing this new product.
Rinnai Australia has not abandoned the COSI-RAY trade mark. There has always been a strong intention to use and promote this trade mark, as part of the Rinnai radiant heater range of products.
The COSI-RAY mark is an important mark on its own and as part of the radiant heater product range. We consider that the removal of the trade mark registration would be materially detrimental to the business of Rinnai Australia. This is because at the time of signing this declaration, Rinnai Australia intends to commence use of the COSI-RAY trade mark in the next 12 months.[1]
[1] Bogers, [11], [13]-[15].
Thereafter the parties requested to be heard by way of written submissions and they filed said submissions by their respective due dates. The matter has now been allocated to me, a delegate of the Registrar of Trade Marks, to decide.
The Legislative Framework
6. The Application has been made under s 92(4)(b) of the Act, which 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.
7. Section 92(4)(b) is subject to s 93(2),[2] the relevant form of which stipulates that a non-use application made under s 92(4)(b) may not be made before a period of 5 years has passed from the filing date of the application to register the trade mark. Given that the application to register the Trade Mark was made in 1983 this requirement is satisfied.
[2] Trade Marks Act 1995 (Cth) s 93(2) as it stood prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1 pt 3).
8. The three year period referred to in s 92(4)(b) is the three year period ending on 9 May 2021 (‘Relevant Period’).
9. Section 96 allows for a person to oppose an application for removal by filing a notice of opposition, and s 100(1)(c) places the onus to rebut an allegation made under s 92(4)(b) on an opponent. Section 100(3) states, inter alia, that the opponent is taken to have rebutted the allegation if it establishes that the trade mark (without additions or alterations substantially affecting its identity) was used in good faith by the registered owner during the relevant period; or that there were circumstances that were an obstacle to use.
Section 101(1) provides that the Registrar may remove a trade mark for any or all of the goods or services to which the application for removal relates, if satisfied that the grounds for removal are established. Alternatively, s 101(3) bestows upon the Registrar a discretion not to remove a trade mark, even where the grounds for removal are established. Section 101(4) provides two examples of matters the Registrar may take into account in deciding whether to exercise the discretion but does not limit the matters the Registrar may take into account.
I proceed on the basis that the standard of proof required of the Opponent is on the balance of probabilities.[3]
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.
Discussion
The allegation is that the Trade Mark has not been used in relation to heaters in class 11 at any time in Australia during the Relevant Period. The Opponent concedes that it has not used the Trade Mark in the approximately 30 years since filing the application for registration. The Opponent asserts in its SGP that the failure to use the Trade Mark was on account of circumstances that were an obstacle to use. However, it does not elaborate on what those circumstances were either in its SGP or in its evidence (nor do its written submissions address this). Given there is no evidence before me of any circumstances in the Relevant Period that amounted to an obstacle to use the Trade Mark, and given the conceded non-use of the Trade Mark, the ground under which the Application was made is established.
I turn then to the consideration of the Registrar’s discretion not to remove the Trade Mark even though the ground for removal has been established. It is for the party seeking the exercise of the discretion to positively satisfy the Registrar that it is reasonable to do so.[4] The discretion is a broad one, limited only by the subject-matter, scope and purpose of Part 9 of the Act,[5] and it need not be applied only in exceptional circumstances but rather where it is reasonable.[6] A relevant consideration is whether removal of the Trade Mark might lead to confusion[7] by making possible concurrent use of the same or similar mark by others.
[4] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ) (‘Austin’).
[5] Ibid [35].
[6] Kowa Company Ltd v N V Organon [2005] FCA 1282, [98] (Lander J), cited in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No. 4) [2016] FCA 138, [222] (McKerracher J).
[7] Austin, (n 4) [33]-[36].
The Opponent submits that it has marketed and sold heaters under the trade mark COSYGLOW for over 30 years and as such Australian consumers have come to associate that trade mark with the Opponent. It asserts that the Applicant has since applied to register the trade mark COSI-FLOW in relation to air conditioning and hearting goods, and that COSI-FLOW is deceptively similar to both COSYGLOW and COSI-RAY. According to the Opponent, confusion would therefore be likely and this supports the exercise of the Registrar’s discretion in maintaining the registration. It cites Mollydooker Wines Pty Ltd v A Pale Chook Pty Ltd (‘Mollydooker’)[8] in support of its argument.
[8] [2022] ATMO 160 (Hearing Officer Tuohy).
The Opponent further submits that the following reasons weigh in favour of the exercise of the discretion: (a) it has provided evidence of its intention to use the Trade Mark in the immediate future; (b) it has at no time abandoned the Trade Mark; (c) it would suffer significant prejudice if the Trade Mark was removed because it has made substantial investment in the development of a heater to be sold under the Trade Mark; and (d) the Applicant has provided no evidence it would suffer any inconvenience if the Trade Mark was retained.
I mention first that the Opponent has provided no evidence of any use or reputation of any trade mark, other than to submit bare, and brief, assertions. Secondly, the complete absence of use in the approximately 30 years since registration strongly weighs against the exercise of the discretion. I note that a product was planned to be launched under the Trade Mark in 2022[9] which did not eventuate (explained in the written submissions as being due to ‘issues in the testing phase which required re-engineering of key aspects of the design’). However, other than the bare statements in the declaration and submissions (which provide no detail other than that quoted above) no evidence has been submitted regarding the ‘substantial time, money and effort’ invested in the development of the new product.
[9] Bogers, [13].
As to the potential for confusion with the Applicant’s COSI-FLOW trade mark, the Opponent appears to conflate the Trade Mark with another of its registrations, COSYGLOW. The trade marks at issue here are COSI-RAY and COSI-FLOW. Whether or not these are deceptively similar is beside the point because there is no evidence of use or intended use of the Trade Mark which would reasonably satisfy me that exercising the discretion under s 101(3) is warranted, unlike Mollydooker (wherein use was shown upon shiraz wine and consequently registration was maintained because of the potential for confusion if a similar trade mark was used upon other wines or alcoholic beverages). The potential for confusion based upon the alleged use and reputation of the Opponent’s COSYGLOW trade mark is unsubstantiated and, in my estimation, too indirect to provide a basis for the exercise of the discretion.
The lack of evidence from the Applicant regarding any inconvenience it might suffer is, in this matter, of little consequence. Given there is so little evidence of any use or intended use of the Trade Mark over the very substantial period of its registration, let alone during the Relevant Period, the inconvenience or lack thereof to the Applicant would not be a material factor in my decision.
Weighing the above considerations, I am not satisfied that it is reasonable to exercise the discretion under s 101(3) to maintain registration of the Trade Mark.
Decision and costs
The Opponent has not rebutted the allegation of non-use and I refuse to exercise my discretion to allow the Trade Mark to remain registered. Accordingly, I direct that one month from the date of this decision, the Trade Mark be removed from the Register.
Should the Registrar be served with a notice of appeal before that time, I direct that the removal of the Trade Mark not occur until the appeal has been decided or discontinued, and that the disposition of the Application be in accordance with the Court’s orders or direction.
Both parties requested an award for costs. The usual rule is that costs follow the event, and there is no reason to depart from that. Accordingly, I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
16 August 2023
0
4
0