Stormwater360 Group Limited v IES Stormwater Pty Ltd
[2022] ATMO 197
•10 November 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Stormwater360 Group Limited to an application under section 92 of the Trade Marks Act 1995 (Cth) by IES Stormwater Pty Ltd to remove trade mark number 1090910 (classes 11, 42) – Stormwater 360 and device – in the name of Stormwater360 Group Limited
Delegate: | Nicholas Butson |
Representation: | Opponent: Norton Rose Fulbright Australia Applicant: Clayton Utz |
Decision: | 2022 ATMO 197 Trade Marks Act 1995 (Cth) – application for removal under section 92 – whether use of the trade mark by the owner or authorised user – whether use by removal applicant was authorised use - use not shown – discretion not exercised – trade mark to be removed from the Register. |
Background
This matter is an application for the removal of a trade mark under s 92 of the Trade Marks Act 1995 (Cth) (‘Act’).[1]
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation of the Trade Marks Regulations1995 (Cth).
Stormwater360 Group Limited (‘Removal Opponent’) is the owner of the following Australian trade mark registration:
Trade mark number: 1090910
Trade mark: (‘Trade Mark’)
Filing date: 15 December 2005
Specification: Class 11: Apparatus for water supply and sanitary purposes; water, wastewater, and stormwater physical treatment units for commercial and industrial and municipal water
Class 42: Engineering consulting services including such services related to equipment for water, wastewater and stormwater drainage systems for commercial, industrial and municipal use
(‘Registered Goods/Services’)
Convention details: Date: 1 July 2005
Number: 78662898
Country: UNITED STATES OF AMERICA
Description: Convention priority claimed: 1 July 2005, United States of America, No. 78662898 in respect of WATER, WASTEWATER, AND STORMWATER PHYSICAL TREATMENT UNITS FOR COMMERCIAL AND INDUSTRIAL AND MUNICIPAL WATER in class 11 and ENGINEERING CONSULTING SERVICES RELATED TO EQUIPMENT FOR WATER, WASTEWATER AND STORMWATER DRAINAGE SYSTEMS FOR COMMERCIAL, INDUSTRIAL AND MUNICIPAL USE in class 42.
On 5 February 2020, IES Stormwater Pty Ltd (‘Removal Applicant’) filed an application based on s 92(4) seeking removal of the Trade Mark from the Trade Marks Register (‘Register’). The removal application was made in respect of all the Registered Goods/Services; that is complete removal of the Trade Mark.
The Removal Opponent filed a Notice of Intention to Oppose the removal on 3 April 2020 and a Statement of Grounds and Particulars (‘SGP’) on 3 August 2020. A Notice of Intention to Defend was filed by the Removal Applicant on 9 October 2020.
The Removal Opponent filed Evidence in Support on 13 January 2021. Evidence in Answer was filed by the Removal Applicant on 29 April 2021. Evidence in Reply was filed by the Removal Opponent on 15 September 2021.
Following the evidence stages, the parties requested to be heard by way of written submissions. Jackie O’Brien of Norton Rose Fulbright Australia provided written submissions on behalf of the Removal Opponent. Clayton Utz provided written submissions on behalf of the Removal Applicant.
I have decided this matter in my role as delegate of the Registrar of Trade Marks.
Evidence
Evidence in Support
The Removal Opponent’s Evidence in Support is comprised of:
A declaration by Gregory Paul Yeoman, director of the Removal Opponent, made on 12 January 2021 with Exhibit GPY-1 to GPY-45 (‘First Yeoman Declaration’).
The First Yeoman Declaration details the history of the Trade Mark, which has been transferred and assigned through various company mergers and acquisitions. The Removal Opponent, then known as EHL Limited, was assigned the Trade Mark in 2008. The Removal Opponent changed its name from EHL Limited to Stormwater360 Group Limited on 21 May 2019, subsequently filing an update to change the name of the owner of the Trade Mark on the Register in August 2020.
Mr. Yeoman declares that the Removal Applicant was a wholly owned subsidiary of the Removal Opponent prior to 1 November 2009. The Removal Opponent sold to Stormwater360 Australia Holdings Pty Ltd all issued shares in the Removal Applicant with effect from 1 November 2009. The ownership of the Trade Mark was not transferred as part of this sale.
The declaration includes evidence which has been requested to be confidential, as such I will strive to avoid discussing the contents in unnecessary detail. This includes a variety of licences and agreements between the parties. These fall into two categories. The first is agreements and licences which ran from 2009 to 2016, which directly relate to use of the Trade Mark (‘Trade Mark Licence’). The others, which ran from August 2017 to December 2018, relate to the Removal Opponent’s broader intellectual property rights (‘Distribution Agreement’).
A confidential letter from January 2019 is also annexed to the declaration. This is from a legal representative for the Removal Applicant to the Removal Opponent. The Removal Opponent submits the contents of this letter as evidence that the parties continued acting as if the Trade Mark Licence was still on foot, after it expired in 2016.
Mr Yeoman declares that the Removal Opponent sought to terminate via a letter, the Removal Applicant’s rights to use of the Trade Mark on 21 December 2018 and that the termination took effect on 4 January 2019. He further declares that due to a request by the Removal Applicant, the Removal Opponent permitted a six-month period until 4 July 2019 for the Removal Applicant to ‘de-brand’ and distance itself from the Trade Mark.
The declaration states that the Removal Opponent, or its wholly owned subsidiaries, used the Trade Mark in Australia. Documentation said to support this assertion is annexed to the declaration. It includes email footers, information sheets and manuals.
The declaration states that the Removal Applicant’s use of the Trade Mark is authorised use by the Removal Opponent. Examples are provided of use on websites, social media, merchandising, events and products. Mr. Yeoman declares that the Removal Opponent monitored and exercised practical control over this use. The supporting documentation annexed includes an email exchange in March 2011, as well as an email relating to website branding in October 2015.
The declaration states that in March 2017, the Removal Applicant sought a letter of consent from the Removal Opponent in order to achieve registration of trade mark applications featuring the words STORMWATER 360.[2] Mr. Yeoman declares that the Removal Opponent did not consent and the Removal Applicant’s trade mark applications subsequently lapsed. The declaration includes details that the Removal Applicant applied for another similar trade mark featuring the words STORMWATER 360 in 2020, which is currently deferred subject to the outcome of this removal application.[3]
[2] Australian trade mark numbers 1812002 and 1812004.
[3] Australian trade mark number 2067305.
The declaration states that the Removal Applicant rebranded to using a different trade mark, which does not feature the words STORMWATER 360, on their website and social media page around March 2019. Screenshots featuring the new trade mark are provided as evidence.
Evidence in Answer
The Removal Applicant’s Evidence in Answer comprises of:
A declaration by Michael Kenneth Wicks, director of the Removal Applicant, made on 27 April 2021 with Exhibit MKW-1 to MKW-3 (‘Wicks Declaration’).
The Wicks Declaration details the history of the Removal Applicant. The Removal Applicant provides goods and service solutions for stormwater runoff. This declaration also details the relationship between the Removal Applicant and Removal Opponent.
In the declaration, Mr Wicks states that he disagrees with some of the claims in the First Yeoman Declaration. The first disagreement relates to the expiry date of the Trade Mark Licence. Mr Wicks states that the Removal Applicant continued to use the Trade Mark without the authorisation of, or control by, the Removal Opponent after the Trade Mark Licence expired in 2016. Mr. Wicks further declares that he disagrees that the Distribution Agreement covers the current Trade Mark, instead relating to other intellectual property rights.
The declaration states that the Removal Applicant has used the Trade Mark since 2009. Various examples have been provided including on products installed on sites, social media and marketing materials. Mr. Wicks states that these examples demonstrate that the public goodwill in the Trade Mark belongs solely to the Removal Applicant, having created a sizeable reputation across its 11 years of use in respect of stormwater goods/services.
The declaration states that during the period of 5 January 2017 until 5 January 2020, the Removal Opponent has not, to the declarant’s knowledge, used the Trade Mark in Australia. It further states that, due to an agreement, the Removal Opponent was unable to use the Trade Mark in Australia until 5 December 2019. Mr. Wicks states that due to this lack of use by the Removal Opponent, that the Removal Applicant is the only trader that would be associated with the Trade Mark by Australian consumers.
Evidence in Reply
The Removal Opponent’s Evidence in Reply comprises of:
A declaration by Gregory Paul Yeoman made on 14 September 2021 with Exhibit GPY-1 to GPY-15 (‘Second Yeoman Declaration’).
In the declaration, Mr Yeoman disagrees with the claims in the Wicks Declaration relating to the Removal Opponent being restrained from using the Trade Mark in Australia until 5 December 2019. He states that this restraint clause was tied to the length of a licence which was superseded in August 2017, meaning the Removal Opponent was able to use the Trade Mark a year later, in August 2018.
The declaration states in disagreement with the Wicks Declaration that the Distribution Agreement granted the Removal Applicant a licence to use the Removal Opponent’s intellectual property in Australia, which includes the Trade Mark.
The declaration states that the use by the Removal Applicant, under the various licences and agreement periods, was authorised use by the Removal Opponent. Mr. Yeoman states that this is further evidenced by the fact the Removal Applicant complied with their terms of use, including the examples given in the First Yeoman Declaration. Further examples of use by the Removal Applicant are supplied, also stated as being authorised use by the Removal Opponent.
Furthermore, Mr. Yeoman states that the Removal Opponent and/or its subsidiaries reviewed and exercised practical control over the content that was to be included in some of the Removal Applicant’s business and technical documents, including material which contained the Trade Mark. A water catchment pit manual dated 12 November 2007, stated as being from the Removal Opponent and/or its subsidiaries is provided as evidence of this.
The declaration states that the Removal Opponent and/or its subsidiaries have and continue to use the Trade Mark themselves. Examples are provided relating to use of the Trade Mark including on websites, emails and social media.
The Relevant Statutory Provisions
Part 9 of the Act concerns the removal of trade marks from the Register for non-use. Both subsections of s 92(4) were nominated by the Removal Applicant in the removal application.
Section 92(4) of the Act, relevantly provides:
(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.
The Removal Opponent bears the onus of rebutting the non-use allegations.[4] Although s 92(4)(a) and s 92(4)(b) are distinct and alternative grounds, the Removal Opponent can rebut both by establishing that it used the Trade Mark in good faith in relation to the Registered Goods/Services in a specific period.[5] Alternatively, if either ground is made out, then the removal action will be successful. At the time this application for removal was filed sufficient time had elapsed for s 92(4)(b) to be invoked.[6] Given this, I have limited my consideration below to the ground for removal under s 92(4)(b). For the purposes of s 92(4)(b), the period to consider is three years ending one month before the day on which the removal application was filed. The period here is therefore three years ending on 5 January 2020 (‘Relevant Period’).
[4] Trade Marks Act 1995 (Cth) s 100(1).
[5] Aussie Water Coolers v Lee Bradley [2020] ATMO 23, [10] (Hearing Officer K Brown).
[6] Trade Marks Act 1995 (Cth) s 93, as at the filing date of the Trade Mark.
Section 101 provides me with the discretion to remove the Trade Mark from the Register in respect of any or all of the Registered Goods/Services. This includes the ability to decline to remove the Trade Mark from the Register, even if the grounds on which the removal application was made are established.[7]
[7] Trade Marks Act 1995 (Cth) s 101(3).
I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[8]
Discussion and Reasons
[8] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Section 92(4)(b)
The Removal Opponent seeks to rebut the allegation on the basis that it used the Trade Mark in Australia, during the Relevant Period on the Registered Goods/Services. Use of a trade mark, must be use by either the registered owner or an authorised user.[9] A single use during the Relevant Period, provided that it is in good faith, can be sufficient to rebut an allegation of non-use.[10]
[9] Trade Marks Act 1995 (Cth) ss 6 and 8 respectively.
[10] Taxiprop Pty Ltd v Neutron HoldingsInc [2020] FCA 1565, [101] (O’Callaghan J), referring to Wooly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
In its submissions, the Removal Opponent relies upon two separate categories of evidence of use to rebut the allegation of non-use. The first is the use by the Removal Opponent or what it claims is authorised use by its ‘wholly owned subsidiaries’ or ‘corporate group’. The second is use of the Trade Mark by the Removal Applicant, which the Removal Opponent claims is authorised use of the Trade Mark.
Both categories involve two considerations. Firstly, whether there is evidence showing use of the Trade Mark on the Registered Goods/Services in Australia within the Relevant Period. Secondly, if such use is not by the Removal Opponent directly, whether that use was instead by an authorised user as contemplated by s 8. Section 8 relevantly provides:
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
Use by the Removal Opponent or subsidiaries
The Removal Opponent has provided a variety of evidence it submits demonstrates use of the Trade Mark during the Relevant Period, by it or its wholly owned subsidiaries.
There is a press release published on a website at which the Removal Opponent states was captured on 31 August 2021, being after the Relevant Period. The content of the press release itself is dated 23 November 2020, which is within the Relevant Period. The Trade Mark is present on the website on the top left ‘banner’ of the page, separate to the content of the press release. It is unclear from the information provided whether the Trade Mark was present at the top of the website on 23 November 2020, or if this was only the publishing date of the press release itself. Regardless, as a New Zealand website address, information has not been provided regarding customers or viewers of the website to show how or if this was disseminated in Australia or to Australian customers. Without this additional information, I cannot be satisfied that it demonstrates use of the Trade Mark in the Australian marketplace.
There is a variety of evidence including screen captures of websites, reports, product information sheets and social media posts. However, it is unclear to whom, and when many of these were distributed. Many are stated as being captured on 31 August 2021 and submitted as being from late 2020 or do not specify a date. As such, I find it is difficult to give significant weight to them as evidence of use of the Trade Mark, within the Relevant Period, in Australia.
There are also several emails which feature the Trade Mark in the signatures. The contents of these are claimed as confidential, so my discussion of them below is deliberately circumspect. Some of these are from within the Relevant Period and involve a discussion of the sale and size of stormwater catchment goods between what appears to be a New Zealand entity and an Australian buyer. In my opinion, these are the only evidence clearly showing use of the Trade Mark in Australia, within the Relevant Period.
The question is then whether these emails are use by the Removal Opponent or by an authorised user. The Removal Opponent in its evidence and submissions, states this is use by it, ‘members of its corporate group’ or its ‘wholly owned subsidiaries’, which include Stormwater360 New Zealand Limited, Enviropod Australia Pty Limited, Enviropod International Limited and Enviropod New Zealand Limited.
Considering the content of the emails, I find it is unclear from which company they emanate. All that is left then, is a bald assertion from the Removal Opponent that these emails came from one of possibly, several different companies. Even had the evidence shown that these emails did come from what the Removal Opponent refers to as a ‘subsidiary company’, this use must be by an authorised user. To be considered use by an authorised user, requires there to have been some form of control over use of the Trade Mark by the Removal Opponent.[11]
[11] Trade Marks Act 1995 (Cth) defined in s 6 and s 8 respectively.
The Removal Opponent has not provided any specific details relating to how they authorised or controlled the subsidiary companies’ use of the Trade Mark. In Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’),[12] the Full Court held that the key consideration is not whether one company controlled the other, but whether there was control over the entities use of the trade mark. The facts in Trident which were held sufficient to prove such control, included that the companies had shared directors, who operated with a ‘unity of purpose’ in the maintenance and enhancement of the trade mark. There is no information or evidence provided of such control here. It is not sufficient to merely assert that an entity is subsidiary to the Removal Opponent. If it were the case that the company sending the email was a wholly owned subsidiary of the Removal Opponent, then it may have provided some support toward an argument that the Removal Opponent exercised financial control over that company and their use of the Trade Mark. The Removal Opponent bears the onus to prove that it owned this company, for example by filing evidence of its shareholding in the company. No such evidence has been offered. As it is, the Removal Opponent has not established that any of these alleged subsidiaries were authorised users at the relevant time.
[12] [2019] FCAFC 100, [45] (Reeves, Jagot, Rangiah JJ).
Therefore, within this category, I am not satisfied that the evidence demonstrates use of the Trade Mark during the Relevant Period, directly by the Removal Opponent, or that any of its subsidiaries are authorised users.
Use by the Removal Applicant
The Removal Opponent also seeks to rely on the Removal Applicant’s use of the Trade Mark to rebut the allegation of non-use. A number of exhibits in the evidence before me demonstrate use of the Trade Mark by the Removal Applicant within the Relevant Period. However, this only assists the Removal Opponent if the Removal Applicant was an authorised user at the time those uses occurred; that is that the use of the Trade Mark by the Removal Applicant was under the control of the Removal Opponent.[13]
[13] Trade Marks Act 1995 (Cth) s 8.
What is necessary to prove sufficient control is discussed in Lodestar Anstalt v Campari America LLC (‘Lodestar’), where Besanko J (with whom Allsop CJ and Nicholas J agreed) stated:
I think control in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time. I think (as the primary judge did) that that is the primary meaning of the word, and the English cases, so far as they go, support that conclusion. Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8.
That would be inconsistent with the approach taken under the 1955 Act and the Trade Marks Act 1938 (UK). Had it been Parliament’s intention it could be effected by a much simpler provision than s 8. As I have said, actual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.[14]
[14] Lodestar Ansalt v Campari America LLC [2016] FCAFC 92, [97]-[98] (Besanko J, Allsop CJ and Nicholas J agreeing at [1]).
The Removal Opponent submits the Trade Mark Licence and Distribution Agreement are evidence of its control. The parties disagree as to whether the Trade Mark License was on foot, and whether the Distribution Agreement included the Trade Mark within its scope. However, as discussed in Lodestar, a licence alone is likely to be insufficient unless there is further evidence that demonstrates established and continuing control as a matter of substance.
The Removal Opponent has also submitted the following as evidence of control:
That the Removal Applicant complied with the terms in the Trade Mark Licence and Distribution Agreement. An example is given that they included the word ‘Australia’ on their website and social media as was required by the Trade Mark Licence since 2010. The evidence suggests that there were discussions relating to this and the use of the Trade Mark on marketing materials between the parties in 2011.
Consent provided by the Removal Opponent for the Removal Applicant to mirror its website in 2015.
That the Removal Applicant in March 2017 requested a letter of consent from the Removal Opponent when its trade mark applications also featuring the words STORMWATER 360 were not accepted by IP Australia. It submits that the Removal Applicant complied with the Trade Mark Licence and Distribution Agreement in subsequently letting the application lapse when this letter of consent was not forthcoming.
The Removal Opponent reviewed and approved content that was included in the Removal Applicant’s business, promotional and technical documents and materials. The Removal Opponent’s evidence of this is limited to an instruction manual relating to a stormwater product from 12 November 2007.
The confidential email from the legal representative for the Removal Applicant to the Removal Opponent in 2019.
Some of the above evidence is outside the Relevant Period. Others seem to have involved some kind of initial action from the Removal Opponent, for example, the review of the marketing materials on 12 November 2007 and discussion in 2011. While the Removal Applicant may have arguably complied with these directions since then, I do not think it demonstrates a real, substantial, and continuing level of control. Especially with such actions being long before the Relevant Period and occurring so infrequently.
Considering the wording of the Trade Mark Licence and Distribution Agreement, the mere fact that these include a variety of clauses and stipulations relating to quality and financial control is merely in my opinion, creating a framework for control, rather than demonstrating actual control itself. Evidence has not been provided showing the Removal Opponent checking or auditing, or any consistent ongoing quality or financial compliance relating to use of the Trade Mark during the Relevant Period. The only examples provided are outside the Relevant Period and are few and far between.
In relation to the request for a letter of consent to overcome an issue in the Removal Applicant’s own trade mark applications, I disagree that this is evidence of control. When a trade mark is examined by IP Australia and an objection is raised in relation to a similar trade mark, one of the ways to overcome this issue is to seek a letter of consent from the owner of the earlier conflicting trade mark. The wording of this request by the Removal Applicant, is in my opinion, not stipulating they are seeking the letter under any prior contractual agreement. Also, I find that it is telling of the lack of control or compliance, that the Removal Applicant did not request this from the Removal Opponent in advance of filing. Nor did the Removal Opponent appear to know about these applications until much later, when the letter was requested by the Removal Applicant.
It is also clear from the evidence that there was increased correspondence between the parties relating to the Trade Mark towards the end of the Relevant Period due to the business agreements and arrangements breaking down. I do not think that correspondence seeking to rectify these issues and agreements, such as was detailed in the confidential letter, sufficiently demonstrates any substantial and ongoing control of the use of the Trade Mark in relation to the Registered Goods/Services.
When considering the totality of the evidence, I am not convinced it demonstrates control of the Removal Applicant’s use of the Trade Mark as a matter of substance. Instead, any semblance of control appears to have occurred long ago and/or has been rather minimal and infrequent. I therefore do not find the Removal Applicant’s use of the Trade Mark to be authorised use by the Removal Opponent during the Relevant Period on the Registered Goods/Services.
As the Removal Opponent has not successfully rebutted the non-use allegation, the ground for removal under s 92(4)(b) of the Act has been made out.
Discretion
Section 101 relevantly provides:
(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.
In this matter, the question to be asked is whether it is reasonable not to remove the Trade Mark, even though the Removal Opponent has not satisfied me that the Trade Mark was used by the registered owner, or an authorised user, during the Relevant Period.[15]
[15] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).
The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[16] The Removal Opponent has made several submissions as to why I should exercise the discretion in its favour.
[16] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273 (Yates J).
The first submission relates to instances where use may have been found on some goods/services, but not all. In which case, it may be deemed reasonable to leave other similar goods/services on the Register. As I have not found there to be any use, this submission is not persuasive.
The second submission claims the Removal Opponent has not abandoned the Trade Mark, and that there is some residual reputation that they still have in the Trade Mark.[17] I am not satisfied this is the case here. As previously discussed, the evidence in my opinion does not demonstrate that there was a sufficient level of control for the Removal Applicant’s use during the Relevant Period, to be considered authorised use by the Removal Opponent. Furthermore, the evidence put forward does not suggest that there has been a significant level of public facing use of the Trade Mark in any recent period by the Removal Opponent in Australia. As such, I find it is unlikely there is a sufficient residual reputation or goodwill in the Trade Mark attached to the Removal Opponent, to exercise the discretion in its favour.
[17] E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 934, [202]-[203] (Flick J).
The third submission relates to the fact the Removal Applicant has recently started using a different trade mark on its website. This is a removal action in relation to the Trade Mark which is owned by the Removal Opponent. Whether or not the Removal Applicant has subsequently or recently adopted some other trade mark is not a sufficient reason to allow the Trade Mark to remain on the Register.
Therefore, I am not satisfied that it is reasonable to exercise the Registrar’s discretion in these circumstances.
Decision and costs
The Removal Opponent has not rebutted the non-use allegation. I am not satisfied that it is reasonable to exercise my discretion to allow the Trade Mark to remain registered. Accordingly, I direct that one month from the date of this decision, the Trade Mark be removed from the Register.
Should the Registrar be served with a notice of appeal before that time, I direct that the removal of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court’s orders or direction.
Both parties requested an award for costs. The usual rule is that costs follow the event, and there is no reason to deviate from that. Accordingly, I award costs against the Removal Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Butson
Hearing Officer
Delegate of the Registrar of Trade Marks
10 November 2022
0
8
4