Siltech Pty Ltd v Quantum Corporation

[2013] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by Siltech Pty Ltd to applications under section 92 of the Act by Quantum Corporation to remove trade mark number 1094152 (37, 42) - QUANTUM - in the name of Siltech Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Michael Hall of Counsel, instructed by Clayton Utz lawyers Applicant: No appearance, written submissions by IP Wealth Pty Ltd
Decision:	2013 ATMO 93 Section 96 opposition to removal application - use established within relevant period only in relation some of the services for which trade mark is registered – Registrar’s discretion: scope of description of services - plans to use trade mark on other goods in future - registration to be partially removed.

Background

1. This matter is a proceeding under the Trade Marks Act 1995 (‘the Act’) in which Quantum Corporation (‘the Applicant’) has sought the removal from the Register of of the trade mark appearing below under the provisions of subsections 92(4)(a) and 92(4)(b) of the Act:

Registration No:           1094152
Priority Date:               12 January 2006

Services:Class: 37 Building construction; repair; installation services; property and building maintenance; trolley maintenance; window maintenance; advisory services for maintenance; advisory services relating to the maintenance of buildings and property; advisory services relating to the maintenance of cellar apparatus; advisory services relating to the maintenance of drainage installations; advisory services relating to the maintenance of environmental control systems, advisory services relating to the maintenance of fixings; advisory services relating to the maintenance of gauge blocks; advisory services relating to the maintenance of heating installations; advisory services relating to the maintenance of plumbing; advisory services relating to the maintenance of rainwater installations; advisory services relating to the maintenance of slip gauges; office equipment maintenance; office machine maintenance; office machines and equipment installation, maintenance and repair; property maintenance; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class: 42 Technical advice relating to fire prevention; quality testing; quality control for others; design and development of computer software; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Trade Mark:                QUANTUM (‘the Trade Mark’)

1. The removal of the trade mark has been opposed by its owner, Siltech Pty Ltd (‘the Opponent’) as allowed by section 96 of the Act.

2. Also as allowed by the Act and regulations thereto, the Opponent has served and filed evidence in support of its opposition to the removal. The Applicant has not served and filed evidence in answer.

3. Both parties were informed of their right to be heard before me, a delegate of the Registrar of Trade Marks, at a hearing in Sydney on 14 August 2013.  Michael Hall of Counsel, instructed by Clayton Utz, appeared for the Applicant. The Opponent did not appear; however, it had filed and served written submissions prepared by IP Wealth Pty Ltd.

The Law

1. Section 92 of the Act relevantly states:

92Application for removal of trade mark from Register etc.

(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)The application:

(a)must be in accordance with the regulations; and

(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:For prescribed court see section 190.

(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.

1. Section 100(1)(c) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

2. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz ) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

3. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

1. The relevant date (‘the relevant date’) for the purposes of subsection 92(4)(a) is 12 January 2006 and the relevant period (‘the relevant period’) for the purposes of 92(4)(b) is the three years ending on 13 November 2011.

2. Finally, is section 101 of the Act, which deals, inter alia, with the Registrar’s discretion:

Determination of opposed application—general

(1) Subject to subsection (3) and to section 102, if:

(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)  similar goods or closely related services; or
(b)  similar services or closely related goods;

to those to which the application relates.

Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:       For registered owner see section 6.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:

   [167] The discretion under s 101(3) 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 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.

   [168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   […]

   [171] 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. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

   […]

   [176] The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal (E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [4] per Flick J).

Evidence

1. The evidence in support of the opposition to removal is a statutory declaration made by Katherine O’Brien who is Resource Manager of the Opponent.

2. Relevantly, Ms O’Brien states:

   [The Opponent], is an Australian based company that provides business-to-business services for a range of technical applications. [It] has traded under the name “Quantum”, “Quantum Technical Services” and “Quantum Air-conditioning” since 2006.

   The company was initially formed as Power Marketing Pty Ltd in 1987, and specialized in silver recovery targeted at one-hour minilabs and wholesale photo labs.

   The company expanded … into the x-ray, graphic arts, newspaper, and printing industries [and] changed its name to Photo Waste Management Pty Ltd.

   [In about 2000] the company changed its name to Siltech International Pty Ltd.

   Between 2004-2006, the company established a separate and additional trading name for their air conditioning department, namely QUANTUM AIR CONDITIONING.

   In January 2011, [the Opponent] rebranded again, by merging its QUANTUM AIR CONDITIONING and SILTECH divisions to become QUANTUM TECHNICAL SERVICES

   The trade name QUANTUM now oversees a broad range of [the Opponent’s] existing goods and service, including precious metal collection and refining, the provision of, servicing and maintenance of coffee machines, misting and humidification systems, silver recovery units, chemical recirculation units, x-ray digital processing equipment, photographic minilabs and kiosks, computer related goods including optical scanners, NCS Pearson scanners, Billy Systems, trolleys, and heating, ventilation, air conditioning and refrigeration units.

Reasoning

1. The Opponent has submitted that the evidence clearly demonstrates use of the Trade Mark for its core services, including the provision of, servicing and maintenance of coffee and soft drink post-mix machines, misting and humidification systems, photographic processing equipment and parts, optical scanners, commercial fridges, cool rooms, freezers and open display cases, and XDX valves for energy efficiency.

2. The Opponent further submitted that the scope of the Opponent’s services expands over time, thus covering the range of services specified.

3. At the hearing, the Applicant submitted that I needed to decide four things:

(a)Whether the Opponent at the date of application had the requisite intention to use the Trade Mark for all the services covered by the registration;

(b)Whether QUANTUM simpliciter has been used;

(c)If the Trade Mark has been used with or without additions or alterations (per section 100 (2) and (3)) then on what services has it been used within the relevant non-use period; and

(d)Whether there is any basis on which to exercise the discretion under section 101(3) to retain the registration for a broader range of services than those for which it has been used.

1. The Applicant pointed out that much of the Opponent’s demonstrated trade mark use involved the trade marks QUANTUM AIR CONDITIONING and QUANTUM TECHNICAL SERVICES, both used with or without a spiral logo device.

2. The Applicant submitted that the Trade Mark was not used at all in relation to the services, but alternatively any use of the Trade Mark was on a very restricted basis. The Applicant further argued that the Registrar should not exercise her discretion to retain the registration for all the services specified.

3. I note that the grounds under subsections 92(4)(a) and 92(4)(b) tend to merge once an impugned trade mark has been registered for 5 years[1] in that, except where circumstances prevented the use of the impugned trade mark, an owner’s intention to use a trade mark at the filing date may become reflected in the services within the specification in respect of which that trade mark has or has not been used within the relevant period.

   [1] See Shanahan's Australian Law of Trade Marks and Passing Off; 5^th ed; paragraph 70.510

4. I am satisfied that such is the case here and that any consideration of the ground under section 92(4)(a) would, in view of any actual use of the Trade Mark, be otiose.

5. Having regard to the evidence with respect to section 92(4)(b), I am satisfied that the Opponent has in fact used the Trade Mark after the date of registration and throughout the relevant period on a genuine commercial basis. However, of the services specified, the use has been limited to the general field of installation, repair and maintenance of heating, ventilation, air conditioning and refrigeration units, and the repair and maintenance of optical scanners.

6. While the optical scanners repaired and maintained by the Opponent seem to be rather specialized, I do accept that they are “office machines” for the purposes of the Class 37 specification.

7. The specifications of “heating installations”, “environmental control systems” and “providing information, including by electronic means and via a global computer network, about all of the aforesaid services” appear to be the only remaining services that have demonstrated use. The Opponent has rebutted the allegation of non-use with respect to these services. However, I intend to exercise the discretion contained in section 101(3) to “plumbing” and “drainage installations” services because they appear to me to be similar or closely related to environmental control systems.

8. I am not satisfied that any other Class 37 specifications have been used, nor am I satisfied that any Class 42 specifications have been used at all. There is nothing in the evidence to persuade me to exercise the discretion to retain any such services.

Decision and Direction

1. Section 101 of the Act relevantly provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. I have decided  that the Trade Mark be removed from the Register for all services in respect of which it is registered other than (in Class 37), ‘advisory services relating to the maintenance of drainage installations; advisory services relating to the maintenance of environmental control systems, advisory services relating to the maintenance of heating installations; advisory services relating to the maintenance of plumbing; office equipment maintenance; office machine maintenance; office machines and equipment installation, maintenance and repair; providing information, including by electronic means and via a global computer network, about all of the aforesaid services’.

3. Absent an appeal from either party filed within the required time, I direct that the Class 37 Specification be amended to that in the preceding paragraph.  If such an appeal is filed, the disposition of the application for removal should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought their costs. Both parties have achieved a measure of success. The Opponent retains some of its registration in Class 37, while the Applicant (having sought full removal of the Trade Mark) has restricted the specifications in Class 37 and the Class 42 registration has been removed. I make no order as to costs.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
06 November 2013