Spear & Jackson (Australia) Pty Ltd v Amalgamated Hardware Merchants Ltd

[2012] ATMO 80

TRADE MARKS ACT 1995

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

Re:Oppositions by SPEAR & JACKSON (AUSTRALIA) PTY LTD to applications under section 92 of the Act by AMALGAMATED HARDWARE MERCHANTS LTD to remove trade mark numbers 536160 (20) and 536161(8) - ATLAS - in the name of SPEAR & JACKSON (AUSTRALIA) PTY LTD

Delegate:

Heath Wilson

Representation:

Applicant: Matthew Hayes of Counsel instructed by A J Park, Lawyers and Patent Attorneys.

Opponent: No appearance.

Decision:

2012 ATMO 80

Section 92(4)(b): use of trade mark – use in the course of trade – allegation of non-use rebutted – trade marks remain on the register for some goods – no award of costs.

Background

1. On 22 June 2010 an application for removal of a trade mark was filed on the basis of non-use under section 92 of the Trade Marks Act 1995 (‘the Act’) for the entirety of the following trade mark registrations owned by Spear & Jackson (Australia) Pty Ltd:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
536160	14.6.90	Class 20: Handles in this class including tool handles, hand tool handles and broom handles
536161	14.6.90	Class 8: Hand tools and implements in this class being riveters, tongs, hammers, snips, pliers, mitre boxes, carpenters squares, trowels, steel floats, cement groovers, cement edgers, brick jointers, tuck pointers, plasterers hawks, tile saws, hand tool blades, line blocks, line block packs, bricklayers lines

1. The application for removal by Amalgamated Hardware Merchants Ltd (‘the Applicant’) cited the ground under section 92(4)(b) of the Act. The application was subsequently opposed by Spear & Jackson (Australia) Pty Ltd (‘the Opponent’) on 7 October 2010.

2. The evidence in support filed and served by the Opponent comprised the statutory declaration of Alexander James Boyd (Managing Director of the Opponent) dated 20 December 2010 with exhibits SB-1 to SB-3.

3. The evidence in answer from the Applicant consisted of the statutory declaration of Mark Andrew Christie dated 11 March 2011 with exhibits MAC-1 to 3. Mr Christie is the Director of the Applicant.

4. Mr Boyd then filed (as evidence in reply) his second statutory declaration dated 9 June 2011 annexing exhibits SB-4 to SB-5. Exhibit SB-5 to that declaration comprises the statutory declarations of Robert Graham (Managing Director of Home Timber and Hardware Traralgon) and Tony Waller (Managing Director of Park Road Timber and Hardware Pty Ltd). 

5. After the parties were given the opportunity to file written submissions in support of their respective positions, I heard the removal opposition in Canberra on 6 July 2012 as a delegate of the Registrar of Trade Marks. The Opponent did not appear at the hearing or make any written submissions but the Applicant was represented via teleconference by Matthew Hayes of Counsel instructed by A J Park, Lawyers and Patent Attorneys.

The Law

1. Sections 92(4)(b) and 100(1)(c) of the Act relevantly provide:

Section 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:

…

(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.

Section 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:

…

(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.

1. The Opponent therefore bears the onus of rebutting the allegation of non-use on the registered goods in Australia within the relevant period. As the application for removal was filed on 22 June 2010, three years ending one month before the day on which the non-use application commences on 22 May 2007 and ends on 22 May 2010 (‘the relevant period’).

2. It is established that a single bona fide use of the trade mark on the goods during the relevant period can be sufficient to rebut an application for removal. In such a case, however, the use of the trade mark should be established by "if not conclusive proof, at any rate overwhelmingly convincing proof."[1]

   [1] Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J.

Discussion

1. Mr Boyd attests that the Opponent has been using the ‘ATLAS’ trade marks in Australia in relation to its range of tool handles and hand tools since 1994.

2. Exhibit SB-2 to the first Boyd declaration comprises the most persuasive evidence of trade mark use, namely a number of purchase orders from various hardware suppliers to the Opponent. The majority of the purchase orders are dated in the relevant period and the Opponent’s products are referred to in the following fashion: “Trowel Gauging 175mm ATLAS”, “File Handle Pine 125mm Atlas”, “Tool Atlas Gauging Trowel SJ-330” and “Atlas EMTC0347 Glass Cutter”. On the strength of this evidence, I find that the word ‘ATLAS’ has been used within the relevant period specifically in relation to file handles, glass cutters, tile cutters, gauging and pointing trowels, tile nippers and bricklayer lines.

3. Exhibit SB-3 consists of printouts from the Opponent’s website with references to products such as the “Atlas Rake Handle” and the “Atlas File Handle”. The printouts are dated at the time of making the declaration, so I cannot determine whether the examples reflect the appearance of the website within the relevant period. Mr Boyd stated in relation to the products shown in the examples that: “The Opponent has sold these products since 1994”[2]. The difficulty with this statement is that the products themselves do not feature the Opponent’s trade mark and, if not sold via the website, the ‘ATLAS’ trade mark may not have been apparent to the consumer. The sales figures contained in the Boyd declaration are also significant, but I cannot be sure how many of those products would actually have been sold with reference to the ‘ATLAS’ brand.

   [2] First Boyd declaration at paragraph 22.

4. The second Boyd declaration annexes examples of internal sales records and data from the Opponent’s business (exhibit SB-4). However, any reference to the trade marks within those internal records is not sufficient, by itself, to amount to use of the ATLAS trade marks in the course of trade.[3]

   [3] See Nodoz Trade Mark (supra).

5. The declarations in exhibit SB-5 demonstrate that the managing directors of those hardware companies recognise the Opponent’s product code ‘AH’ to refer to the ‘ATLAS’ range of products. While I accept Mr Hayes’ submission that use of the product code ‘AH’ is not use of the Opponent’s trade marks, those declarations do serve to indicate that the distributors are at least aware of the ‘ATLAS’ range of products.

6. The crucial issue for this matter is the nature of the Opponent’s trade mark use. In this regard, Mr Boyd declares that:[4]

   Given the nature of the Opponent’s Products, the “ATLAS” trade mark is not featured on the product itself. Rather the products are sold and are known by the Applicant’s customers by reference to the “ATLAS” brand.

   [4] Declaration of Alexander Boyd at paragraph 12.

7. Mr Boyd further states:[5] “the Opponent does not consider it commercially viable or necessary to display the Marks on the products or attaching an additional swing tag with the Marks to the products.” However, the fact that the trade mark has not been directly applied to the goods themselves is not fatal to the opposition because section 92 of the Act clearly encompasses use of the trade mark in relation to the goods.

   [5] Second Boyd declaration at paragraph 35.

8. In addition, it is evident that the applicant’s customers are not the end consumers that purchase the handles and hand tools in the store for personal use, but rather the hardware retailers and distributors who purchase and later re-sell them. The ‘ATLAS’ trade marks are only used at this point of sale between the Opponent and retailer/distributor. Given the way the Opponent’s trade marks are used, the lack of knowledge of the Opponent’s trade mark in certain hardware stores is understandable. From the Opponent’s evidence, it is also likely that the ‘ATLAS’ products are only available for sale via a limited number of retail outlets.

9. After assessing the evidence served in these proceedings and hearing the submissions from Mr Hayes, I find that the outcome of this matter will turn on whether use of the Opponent’s trade mark was “without additions or alterations substantially affecting the identity” [6] of the registered trade marks and whether sales of the product from the manufacturer to wholesaler/retailer amount to use of the trade mark “in the course of trade” in Australia.

   [6] See section 7(1) of the Act.

Section 100(3)(a): Additions or alterations not substantially affecting its identity

1. For the Applicant, Mr Hayes argued that the use of the plain word ‘ATLAS’ in the Opponent’s evidence amounted to an alteration that substantially affected the identity of the Opponent’s trade mark registrations (reproduced below for convenience):

1. In E & J Gallo Winery v Lion Nathan Pty Ltd[7], the High Court of Australia was of the view that the use of the word ‘BAREFOOT’ in combination with a ‘footprint’ device constituted use of the word BAREFOOT simpliciter. French CJ, Gummow, Crennan and Bell JJ stated:

   The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity.

   [7] E & J Gallo Winery v Lion Nathan Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224 at [69].

2. While each case should assessed on its own merits, I do note the High Court found that the inclusion of a particular device (albeit one which is an “illustration of the word”) was not an addition that affected the identity of the trade mark. In the current matter, I find nothing distinctive about the font of the word ‘ATLAS’ as it appears in the trade marks. The border encasing the word ATLAS is a conventional embellishment and adds nothing of distinction to the trade marks as a whole.[8] As a result, use of the trade mark absent that particular element is not an alteration that would substantially affect its identity.

   [8] See also Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498; where Branson J found a similar border device surrounding the word OREGON did not give that trade mark any inherent adaptation to distinguish the designated goods.

3. Mr Hayes submitted generally that the registration of a word trade mark offers greater protection than a composite trade mark. He argued that if the registered trade mark was the word ‘ATLAS’ and the demonstrated use was of the word ATLAS within the border that would not amount to a substantial alteration.[9] I am not convinced by this submission and I find that no matter the perspective taken here, the simple border device does not substantially affect the identity of the word ‘ATLAS’ as a trade mark.

   [9] However, see the comments made in Express Newspapers Ltd v Star Newspaper Co [1984] IPD 7090 (UK Reg).

4. Any use established by the Opponent of the plain word ‘ATLAS’ therefore amounts to use of the Opponent’s trade marks with an alteration that does not substantially affect their identity.

Use in the Course of Trade

1. Mr Hayes argued that because the Opponent’s evidence does not demonstrate sales to the general Australian public, there is no genuine use of the ‘ATLAS’ trade mark ‘in the course of trade’[10]. The question is then whether trade between the Opponent and the distributors/retailers of the products as evidenced by the purchase orders is trade mark use.

   [10] Section 17 of the Act.

2. The expression ‘in the course of trade’ has been interpreted to mean for ‘the purposes of the trade’[11] and can encompass any form of commercial dealing in goods, including the steps necessary for the production of the goods as a well as the placement of those goods on the market. The customer does not need to be a person who proposes to use or deal with the goods for the purpose for which they are designed. Jacobs J said in Thunderbird Products Corporation[12]:

   I do not think that the submission on the nature of the Australian market which must exist is a correct one. The words "Australian market" appear in the cases, e.g. Seven Up Co. v. O.T. Ltd. (1947) 75 CLR, at pp 215, 216; Kendall Co. v. Mulsyn Paint and Chemicals [1963] HCA 1; (1963) 109 CLR 300, at pp 304-305, but the words do no more than describe a use in Australia for the purpose of indicating a connexion in the course of trade between the goods and the person who uses the mark. There is no need for a general market reputation to exist: Hall v. Barrows (1863) 8 LT (NS) 227, at p 229 , per Romilly M.R. in a passage approved by Williams J. in Re Registered Trade Mark "Yanx" [1951] HCA 28; (1951) 82 CLR 199, at p 205 .

   [11] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (at 439).

   [12] Thunderbird Products Corporation (1974) 131 CLR 592 at [16]

3. In Blackadder v Good Roads Machinery Company Incorporated[13], Starke J found in the circumstances of an American manufacturer trading with an Australian company in relation to road grading machines: “[T]hat these transactions, limited though they were to particular customers, constituted a trade with Australia on the part of the American company in road-grading machines bearing the words "Champion" and "Winner."” Similarly, the High Court of Australia in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd[14] found:

   [W]hen an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. Indeed, in this case, the respondent is the only person who has the right to use the mark, and the retailer to whom goods have been sold for resale does not, in any relevant sense, use it.

   [13] Blackadder v Good Roads Machinery Company Incorporated [1926] HCA 57; (1926) 38 CLR 332.

   [14] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254 (at 271).

4. In the case before me, the Opponent’s goods are clearly available to be ordered and traded in Australia (and have been) as the purchase orders in exhibit SB-2 demonstrate. While the Opponent’s trade mark was only used in relation to the goods at a certain stage in the trading process, the trade mark has operated as a trade mark to the first consumer being the distributor of the goods. The ‘ATLAS’ trade mark has therefore been used as the Opponent’s badge of origin in the course of trade.

5. Consequently, I am satisfied that the Opponent has rebutted the allegation of non-use in relation to the goods mentioned in the purchase orders of exhibit SB-2.

The Registrar’s Discretion

1. The intention of Part 9 of the Act is for a trade mark registration to be maintained only for goods and services in relation to which it has been used. However, there is also a discretion allowed under section 101(4)(a) of the Act for a trade mark to remain on the Register for goods that are similar to those for which use has been demonstrated.

2. In consideration of the specifications for trade mark registration nos. 536160 and 536161, I refer to and rely on the comments made by Drummond J in McHattan v Australian Specialised Vehicle Systems Pty Ltd[15]:  

   …if that provision is construed to permit fine distinctions to be drawn between two items, eg between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz that between armoured military vehicles of greater than 8 tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.

   [15] McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 (at 544).

3. For trade mark 536160, while definitive trade mark use has only been demonstrated in relation to file handles, distinguishing between file handles and other types of tool handles would constitute a fine distinction akin to that contemplated in the above case. I further note the undated website examples of ‘rake handles’ from SB-3 of the Boyd declaration, which Mr Boyd states have been sold from 1994. While not definitive examples, I find it appropriate to apply the discretion under section 101 of the Act and allow trade mark 536160 to remain on the Register in its entirety.

4. Applying a similar approach to trade mark 536161, I find that some of the goods therein are neither the same nor of the same description (see section 14 of the Act). There is no indication that the Opponent has used the trade mark at all in relation to some of the items. While certain items may be sold via the same trade channels, the nature and use of the respective hand tools can be quite different. Accordingly, the Opponent has only rebutted the allegation of non-use in relation to some of the goods contained in no. 536161. I am not satisfied that it is reasonable to exercise the discretion under 101(3) of the Act in relation to this registration.

Decision

1. Section 101: 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.

1. The allegation of non-use in relation to the use of trade mark no. 536160 for Handles in this class including tool handles, hand tool handles and broom handles in class 20 has been rebutted. I direct that trade mark registration no. 536160 remain on the Register.

2. I direct that trade mark registration no. 536161 be removed from the Register after one month from the date of this decision in relation to: 

   Riveters, tongs, hammers, pliers, mitre boxes, carpenters squares, steel floats, cement groovers, cement edgers, brick jointers, tuck pointers, plasterers hawks, hand tool blades, line blocks, line block packs

And remain on the Register with the restricted specification of goods:

Hand tools and implements in this class being snips, trowels, tile saws, bricklayers lines.

1. In the event of an appeal from this decision, I direct that the specification of goods  for class 8 of trade mark no. 536161 will not be restricted until that appeal has been discontinued or dismissed, or in the event of a decision from the court, that the trade marks be subject to that order.

Costs

1. The Applicant has requested costs, but it has only been partially successful for one removal application. Under those circumstances, I find that each party should bear their own costs.

Heath Wilson

Hearing Officer

Trade Marks Hearings

13 September 2012