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
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’)
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.
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.
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.
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
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- Case
- [2018] ATMO 31
- Decision Date
CaseChat Overview and Summary
The primary legal issue before the Registrar was whether the Opponent had established use of the trade mark in Australia pursuant to section 100 of the relevant Act, either through actual use or circumstances constituting an obstacle to use. If use could not be established, the Registrar was required to consider whether to exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register.
The Registrar found that the Opponent had failed to establish use of the trade mark in Australia during the relevant period. Evidence of use in the United Kingdom was not sufficient, and a reference to the trade mark on the Opponent's website in 2012 was outside the relevant period and appeared to be an error, as the Opponent was not offering services under the mark at that time. Internal documents suggesting an intention to use the trade mark were heavily redacted and did not provide sufficient evidence of a concluded intention to use it in Australia. As the ground for removal was established and there were no obstacles to use, the Registrar then considered the discretion under section 101(3). The Registrar noted that the policy of the Act favours the removal of unused trade marks to maintain the integrity of the Register, but acknowledged that section 101(3) grants a broad discretion to permit a trade mark to remain on the Register even if grounds for removal are made out, if it is reasonable to do so.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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 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. 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. 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. The ground upon which the application for removal was made is established. 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. 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.8Her Honour also noted: