SG Fleet Australia Pty Ltd v Mark Telfer

[2018] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by SG Fleet Australia Pty Ltd to application under section 92 of the Act by Mark Telfer for removal of trade mark number 656500 (36) – NOVALEASE - in the name of SG Fleet Australia Pty Ltd

DELEGATE:

Nicholas Smith

Decision on the Written Record

DECISION:

2018 ATMO 31

Trade Marks Act 1995 (Cth) - section 96 opposition to 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 7 April 2016 under s 92(4)(a) and s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Mark Telfer (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all of the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

656500

Filing date

24 March 1995

Services

Class 36: To provide lease finance services for corporations' motor vehicle fleets

(‘Registered Services’)

Owner

SG Fleet Australia Pty Ltd

Trade Mark

NOVALEASE

(‘Trade Mark’)

1. SG Fleet Australia Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 6 May 2016 and a Statement of Grounds and Particulars (‘SGP’) on 2 June 2016. The Applicant filed a Notice of Intention to Defend on 6 July 2016.

1. The Opponent subsequently filed evidence in support of its opposition to removal. The Applicant filed evidence in answer and the Opponent filed evidence in reply. The parties’ evidence will be discussed in more detail below.

1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. By letter issuing from IP Australia on 24 April 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar of Trade Marks for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to rely upon. On 26 May 2017, the Applicant filed written submissions (‘Applicant’s Submissions’). The Opponent did not file any submissions.

1. 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:

   ·The Application for Removal;

·The Notice of Intention to Oppose and SGP;

·The Opponent’s Evidence in Support;

·The Applicant’s Evidence in Answer;

·The Opponent’s Evidence in Reply; and

·The Applicant’s Submissions.

The Law

1. Part 9 of the Act deals with removal of trade marks from the Register for 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)    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 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 those 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;

(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.

Note2:     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.

1. In its submissions the Applicant indicating that it only pressed its opposition for removal under s 92(4)(b) of the Act and hence I do not need to consider the application under s 92(4)(a).

1. Thus, the allegation under s 92(4)(b) is that the Opponent has not used the Trade Mark upon or in relation to the Registered Services at any time in the three year period ending on 7 March 2016 (‘relevant period’).

1. I note also 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 trade mark application,1 and I confirm that five years since filing the trade mark application have in fact passed.

1. 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:

[...]

1 Per s 93(2) of the Act.

(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

[...]

(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.

1. The burden of proof is the ordinary civil standard of the balance of probabilities.2

1. In accordance with s 101 the Registrar may decide to remove the Trade Mark for all or some of the service 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.3

2. 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),4 but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.5

Opponent’s Evidence

1. The Opponent’s evidence in this matter consists of two declarations. The first declaration was made on 4 October 2016, by Andy Mulcaster, Managing Director, Australia for the Opponent

2  Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

3 S 101(3) of the Act.

4 Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

5 Nodoz Trade Mark (1962) RPC 1, 7.

(‘Mulcaster 1’).    The second declaration was made in reply on 2 March 2017 by Andy Mulcaster (‘Mulcaster 2).

1. An issue with Mulcaster 1 is the use of the term ‘SG Fleet’ to represent what I assume to be a number of interrelated companies, including the Opponent and SG Fleet UK Limited. Mulcaster 1 does not provide any explanation of the relationship between the various companies, nor does it identify why use (presumably by SG Fleet UK Limited) of the Trade Mark in the United Kingdom has any relevance to an application to remove the Trade Mark in Australia, particularly when the Trade Mark is registered to a different entity in Australia to the entity that has used the mark in the United Kingdom.

1. Mulcaster 1 and 2 contain the following claims/statements:

·SG Fleet is a global company with offices in Australia, the UK and New Zealand which provides vehicle fleet management and leasing solutions. SG Fleet offers a product under the name Novalease which offers salary sacrifice options for vehicles. This product is offered in the UK but SG Fleet has the intention to use the Trade Mark in Australia to promote novated leases and salary packaging options for consumers.

·SG Fleet Salary Packaging Pty Ltd holds the registered business name SMB Novalease.

·SG Fleet’s intention to use the Trade Mark in Australia can be seen in internal strategy documents dated 6 April 2013, 1 December 2014 and 2 August 2016.

·Due to the major presence of SG Fleet and significant use of the Trade Mark in the United Kingdom the use of the Trade Mark by any other person in Australia would likely cause confusion in Australia.

·The Novalease product was explained on SG Fleet’s Australian webpage on May 2012.

Applicant’s Evidence

1. The Opponent’s evidence in this matter consists of a declaration made on 6 January 2017, by Mark Telfer, the Applicant (‘Telfer Declaration’). The Telfer Declaration provides no evidence of the Applicant and his business but questions whether the Opponent’s Evidence that the Trade Mark was displayed on the SG Fleet’s Australian webpage in May 2012 is

correct.  The Telfer Declaration suggests that the word Novalease was only displayed on the Opponent’s Australian webpage in February 2012 for a brief period of time.

Discussion

1. To successfully oppose the removal application the Opponent must establish that the registered owner has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use) or, in the event that the Opponent fails to establish such use, the Registrar exercises 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

1. I find that the Opponent failed to establish that the Trade Mark was used in Australia during the relevant period. This is essentially admitted in paragraph 2 of Mulcaster 1. While I accept that there is an entity using the Trade Mark in the United Kingdom (including on websites that are specifically targeted at UK consumers6) there is no evidence of similar use in Australia. I note that the reference to the Trade Mark on the Opponent’s website was made in 2012, outside the relevant period, and appears to be some sort of error since the Opponent was not offering (or in the process of planning to offer) services under the Trade Mark at that time.

1. Reference is made in Mulcaster 1 to certain internal documents as indicating an intention to use the Trade Mark in Australia. A reference to the potential use of a Trade Mark in an internal company document does not by itself amount to use. Furthermore the documents provided in Mulcaster 1 are so heavily redacted as to be almost useless in an evidentiary sense. They do not indicate the date on which they were prepared, who they were prepared by or for, whether they refer to the Australian market, and whether they are documents canvassing an option or a concluded intention to use the Trade Mark.

1. The ground upon which the application for removal was made is established.

6 Which does not amount to use of the Trade Mark in Australia see Ward Group Pty Ltd v  Broadie & Stone Plc

(2005) 64 IPR 1.

Obstacles to use

1. The Opponent does not submit, not does its evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act. 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

1. 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.7 However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   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.8

   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.9

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’,10 the private commercial interests of both [parties] remain matters which may be taken into account when exercising

7  M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

8 Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

9 Ibid [171]-[172].

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

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.11 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.12

1. 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.13

1. The Trade Mark has never been used in Australia, including after the relevant period had ended. I note that the reference to the Trade Mark on the Opponent’s Australian Website in 2012 must have been accidental since the Opponent did not offer a service under the Trade Mark nor is there evidence that it was in the process of launching such a service under that Trade Mark at the time.

1. While I accept that the Trade Mark has been used and marketed in the United Kingdom by an entity that apparently (though there is no evidence to support this) is connected to the Opponent, by reason of the lack of evidence of sales or advertising expenditure I am not satisfied that the Trade Mark has such a reputation in the United Kingdom that the use of the Trade Mark by any person in Australia other than the Opponent would likely cause confusion in Australia.

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

12 E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

13  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].

1. Finally, while the Opponent provides some evidence that it was considering the launch of a service under the Trade Mark in Australia, its evidence is limited to several heavily redacted internal documents, over a period of several years, rather than any concrete evidence of preparations to use the Trade Mark or actual expenditure relating to a launch. I repeat my criticisms of the Opponent’s evidence made in paragraph 20 above.

1. While the Opponent may have a private commercial interest in maintaining the registration of the Trade Mark, it is insufficient to outweigh the public interest of the integrity of the Register and the lack of any reputation in the Trade Mark in Australia. In those circumstances I am not prepared to exercise the Registrar’s discretion in favour of retention of the Trade Mark on the Register.

Decision

1. 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 services for which it is registered.

1. Accordingly, I direct that registration 656500 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

1. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 656500 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicholas Smith Hearing Officer

Hearings and Oppositions 2 March 2018