Specialist Wholesalers Pty Ltd v Sailun Group Co Ltd

[2022] ATMO 131

TRADE MARKS ACT 1995

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

Re:Opposition by Specialist Wholesalers Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Sailun Group Co., Ltd., to remove trade mark number 1622700 (12) – BLACKHAWK and device – in the name of Specialist Wholesalers Pty Ltd

Delegate:	Louise Tuohy
Representation:	Opponent: Angela McDonald of Counsel instructed by Gadens Lawyers Applicant: Spruson & Ferguson
Decision:	2022 ATMO 131 Trade Marks Act 1995 (Cth) – section 96 opposition to section 92(4)(a) and 92(4)(b) application for partial removal – use demonstrated in relevant period for a subset of goods – registration to be partially removed

Background

1. Specialist Wholesalers Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration:               1622700

   Trade Mark:                    (‘Trade Mark’)

   Filing Date:                15 May 2014

   Registered Goods:     Class 12: Land Vehicle suspension, brakes, accessories (‘Registered Goods’)

2. Sailun Group Co Ltd (‘Removal Applicant’) filed an application on 29 September 2020 under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking partial removal of the Trade Mark. The goods for which the Removal Applicant submits ought to be partially removed are all goods not limited to “none being, or related to, tires” (‘Removed Goods’). The goods to remain in the specification are as follows:

   Class 12:  Land Vehicle suspension, brakes, accessories; none being, or related to, tires (‘Amended Goods’)

3. On 27 November 2020 the Removal Opponent filed a Notice of Intention to Oppose partial removal of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 18 December 2020. On 10 February 2020, the Removal Applicant filed a Notice of Intention to Defend the partial removal application.  

4. The Removal Opponent filed the following declarations as evidence in support:

   ·Declaration of Tania Allatt, General Manager of Roadsafe, a division of the Removal Opponent, made on 13 May 2021, with Exhibits TA-1 to TA-17 (‘Allatt declaration’).

   ·Declaration of Darren Edward McRae the trustee of the McRae Business Trust, made on 14 May 2021, with Exhibits DEM -1 to DEM-3.

5. The Removal Applicant did not file any evidence.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. The Removal Opponent requested a hearing by written submissions. The Removal Applicant did not request to be heard or file written submissions. Angela McDonald of Counsel made written submissions on behalf of the Removal Opponent.

7. The matter was allocated to me to decide in my capacity as a Delegate of the Registrar of Trade Marks. What follows is my decision, with reasons, based upon the application for partial removal, the SGP, the Removal Opponent’s evidence in support and written submissions. 

   Legal Framework

8. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. The Removal Applicant nominated the grounds under ss 92(4)(a) and 92(4)(b) of the Act.

9. Sections 92(4)(a) and 92(4)(b) of the Act 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.

   […]

10. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[1] As the Trade Mark had been registered for more than five years as at the date of the application, I need only consider the application for removal under s 92(4)(b).

    [1] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

11. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 29 August 2020 (‘Relevant Period’).

12. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

13. In Woolly Bull Enterprises Pty Ltd v Reynolds,[2] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J 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.’[5]

    [2] [2001] FCA 261, [16].

    [3] Ibid [17].

    [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

    [5] (1962) RPC 1, 7.

14. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

    [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

15. In accordance with s 101 of the Act, if the grounds for partial removal are established, I may decide to partially remove the Trade Mark from the Register in respect of any or all of the goods identified in the partial removal application, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Mark from the Register.

    Discussion

16. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user,[7] in good faith in Australia, on or in relation to the Removed Goods during the Relevant Period. If the Opponent fails to establish such use, I have discretion under s 101(3) of the Act to decide that the Trade Mark should not be partially removed from the Register.

    [7] Act s 7(3).

17. In confining the evidence to Exhibits dated within the Relevant Period, Exhibit TA-11 to the Allatt declaration contains tax invoices issued by Roadsafe quoting the Removal Opponent’s Australian Business Number, each dated within the Relevant Period. The tax invoices show sales for the following goods bearing the Trade Mark:  

Quantity	Item
19	Blackhawk – premium rear wheel bag
4	Blackhawk – spare wheel tray step
7	Blackhawk – spare wheel tray with ratchet tie down

1. Exhibit TA-5 to the Allatt declaration is a copy of a Roadsafe product bulletin quoting the Removal Opponent’s Australian Business Number, dated November 2017. The product bulletin features a photo of the premium rear wheel bag referred to in the paragraph above bearing the Trade Mark. The product bulletin makes clear the bag is available to be ordered from Roadsafe and provides the product part number, price and contact details for sales.

2. I am satisfied that the evidence shows use of the Trade Mark in good faith by the Removal Opponent in Australia in relation to rear wheel bags and spare wheel trays and steps in the Relevant Period. I consider these goods are accessories to land vehicles, that are applied directly to the tire and therefore used in relation to tires. However, I have reached a different conclusion in respect of tires. The evidence does not establish that the Removal Opponent has ever used the Trade Mark in relation to tires. Further, the Removal Opponent does not claim nor does the evidence before me suggest that there was an obstacle to use of the Trade Mark for tires in the Relevant Period, pursuant to s 100(3)(c) of the Act.

3. The ground for partial removal under s 92(4)(b) has been established only in respect to tires.

   Registrar’s discretion

4. Section 101(3) of the Act provides:

   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.

5. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[8]

   [8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

6. In this matter, the question is whether it is reasonable not to partially remove the Trade Mark in respect to tires, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[9]

   [9] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

7. The Removal Opponent submits that it has extensively used the Trade Mark in relation to the rear wheel bags, and real wheel trays and steps and that these goods are at least similar to goods, being tires.

8. Secondly the Removal Opponent submits that amending the specification is likely to result in deception or confusion. The Removal Opponent argues it has developed a significant reputation in the Trade Mark in relation to the Registered Goods and this reputation extends to goods which are at least related to tires. Therefore, if tire goods are allowed for a trade mark which is substantially identical or deceptively similar to the Trade Mark consumers are likely to be deceived or confused into thinking that those goods are the goods of the Removal Opponent. To assist in this comparison the Removal Opponent has provided details of the Removal Applicant’s deferred trade mark application number 1993593 for in class 12 for tires.

9. Thirdly the Removal Opponent submits that it has invested extensively in the development of the Trade Mark and its related business.

10. I am not persuaded by the Removal Opponent’s submissions. I do not consider that if an identical or deceptively similar trade mark was used on tires that consumers are likely to be deceived or confused into thinking that those goods are the goods of the Removal Opponent. I consider tires perform a different function to the Opponent’s goods and are manufactured by different traders. Moreover, designing and manufacturing tires is a very different business to designing and manufacturing car suspension and brake parts and accessories which are secondary items and non-essential for land vehicles.  

11. In the circumstances, I do not find it reasonable to exercise my discretion to preserve the registration for goods being tires.

    Decision

12. I am satisfied that the Trade Mark was used by the Removal Opponent in the Relevant Period for tire accessories but not tires. As such, the Removal Opponent has partially established its opposition to partial removal and the Trade Mark should only be removed from the Register in respect of tires, but not tire accessories.

13. Accordingly, I refuse to partially remove trade mark registration 1622700 in its entirety but direct that one month from the date of this decision the specification of goods be amended to the goods listed below:

    Class 12: Land Vehicle suspension, brakes, accessories; none being tires.

14. 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

15. Both parties sought an award of costs. As both parties have had a measure of success, I decline to award costs.

    Louise Tuohy
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    8 August 2022