Supacat Limited v Caterpillar Inc
[2014] ATMO 104
•23 October 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Supacat Limited to application under section 92 of the Act by Caterpillar Inc to remove trade mark number 1098554(12) - SUPACAT - in the name of Supacat Limited
| Delegate: | Iain Campbell Thompson |
| Representation: | Removal Opponent: Andrew Sykes of Counsel instructed by David Drew of Tatlocks Chrysilliou IP Removal Applicant: Warwick Rothnie of Counsel instructed by Nicholas Butera of Corrs Chambers Westgarth |
| Decision: | 2014 ATMO 104 s92 Removal Opponent’s evidence establishes use in Australia of the Trade Mark in relation to the Goods; otherwise, the Registrar’s discretion would be exercised in favour of retention of the Trade Mark on the Register of Trade Marks. |
Background
In this proceeding under paragraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) Caterpillar Inc (‘the Removal Applicant’) applied (‘the Application’) on 23 February 2012 for the removal from the Register of Trade Marks of the trade mark registration which appears below:
Registration No: 1098554
Filing Date: 13 February 2006
Goods:Class 12: Wheeled military vehicles; off-road vehicles; vehicles for use in transporting and launching boats
(‘the Goods’)
Trade Mark: SUPACAT
(‘the Trade Mark’)
The Application seeks the complete removal of Trade Mark in respect of the Goods.
On 8 June 2012 the owner of the Trade Mark, Supacat Inc, (‘the Removal Opponent’) filed Notice of Opposition to the removal of the Trade Mark.
Both parties have filed evidence as is further discussed under the heading Evidence below.
The matter duly came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Melbourne on 29 May 2014. The Removal Opponent was represented by Andrew Sykes of Counsel instructed by David Drew of Tatlocks Chrysilliou IP; and, the Removal Applicant was represented by Warwick Rothnie of Counsel instructed by Nicholas Butera of Corrs Chambers Westgarth.
Onus & Relevant Period
In terms of section 100 of the Act, the burden is on the Removal Opponent to establish the use of the Trade Mark and the relevant period during which the Removal Opponent must establish the use in good faith of the Trade Mark is the three years ending on 23 January 2012 (‘the Relevant Period’).
Evidence
Before the hearing the Removal Opponent applied to file further evidence, this being a statutory declaration by Michael Halloran dated 12 May 2014. At the start of the hearing there was some discussion whether regulation 5.15 of the Trade Marks Regulations 1995 (‘the Regulations’) as it was prior to the commencement of the Raising the Bar Act[1] on 15 April 2013 applied to the filing of the further evidence of the Removal Opponent or if the Regulations as they stood post 15 April 2013 applied. The position of the Registrar is that it is regulation 5.15 as it stood at the date the Notice of Opposition was filed which continues to apply to the proceedings.
[1] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) sch 7 item 4.
I also accepted the further evidence of the Removal Opponent because it was relevant to the proceedings.
In order to afford the Removal Applicant procedural fairness, at the end of the hearing I adjourned proceedings to allow the Removal Applicant an opportunity to file its own further evidence in response to the Removal Opponent’s further evidence. After the further evidence was filed, both parties filed further written submissions concerning the further evidence.
Accordingly, the evidence filed in relation to these proceedings comprises the following statutory declarations:
Evidence in Support (Removal Opponent)
Michael Halloran made on 29 August 2012 with exhibits MH-1 to MH-4
Evidence in Answer (Removal Applicant)
Christina M Gensler made on 4 September 2013 with exhibits CMG-1 to CMG-25
Nicholas Patrick Butera made on 5 September 2013 with annexures NPB-1 to NPB-4.
Evidence in Reply (Removal Opponent)
Michael Halloran made on 9 December 2013 with exhibit MH-5
Further Evidence (Removal Opponent)
Michael Halloran made on 12 May 2014 with exhibit MH-6
Further Evidence (Removal Applicant)
Nicholas Butera made on 1 August 2014 with annexure NPB-5
Wayne Higgins RFD, psc (r) made on 6 August 2014
Allister E Kirpalani made on 15 August 2014 with annexures AEK-1 to AEK-2
Steven Schmied made on 10 August 2014 with annexures SSC-1 to SSC-6
In his first declaration Mr Halloran explains that he is the Managing Director of Supacat Pty Ltd, the Australian representative company of the Removal Opponent which:
… has been producing off-road vehicles and military vehicles for 30 years and more details of the range of products offered by [the Removal Opponent] can be seen on their website at Annexed hereto and marked exhibit MH-l are photographs of examples of these products supplied by [the Removal Opponent] around the time of the application for the above referenced Trade Mark Registration, i.e. prior to 2006.
Concerning the use by the Removal Opponent of the Trade Mark in Australia, Mr Halloran states:
In December 2006, [the Removal Opponent] won a contract to deliver a high mobility transport vehicle (HMT) to the Australian Special Air Services Regiment (SASR). The vehicle was named the "Nary" by the SASR in recognition of one of their fallen colleagues. The vehicles however are commonly referred to in Australia as "Supacat" vehicles. Annexed hereto and marked exhibit MH2 are a bundle of internet articles that have been published between 2008-2011, in Australia. These publications indicate the strong market presence and recognition of the name "Supacat" in relation to "wheeled military vehicles and off-road vehicles" in Australia, and particularly the strong association of the name "Supacat" with the owner's products during that period.
Significantly, the articles referred to by Mr Halloran include a range of articles from 19 August 2011 to March 2012, within the relevant period, which relate to the Removal Opponent’s tendering to the Australian Defence Force (‘ADF’) for the supply of its goods under the Trade Mark. Mr Halloran continues:
While [the Removal Opponent] and Supacat Pty Ltd have traded under the name of "Supacat", the trading name for my company was formally established in Australia in 2007. The intent to establish operational capability in Australia was announced publicly in Oct 2011 and the company commenced engineering operations in Jan 2012. In addition, Supacat Team Australia was launched in Oct 2011 to establish a network of partners for the purposes of manufacture of spare parts and servicing of Supacat vehicles. Supacat provides services into the Australian market from both the parent company and my company, however, Supacat hardware sold into the Australian market has, to date, been carried out by Supacat in the UK. My company is authorised by Supacat Group Limited to use the Trade Mark "Supacat" in relation to the goods covered by the above referenced registration.
Mr Halloran states:
Annexed hereto and marked Exhibit MH3 is a copy of a number of invoices issued by [the Removal Opponent], in relation to the sale of military vehicle spare parts in Australia over the relevant period and a copy of an end user certificate issued by the Australian Defence Materiel Organisation (DMO) in relation to the confirmation of an order for the 31 Nary Special Operations Vehicles based on the Supacat HMT vehicle dated 9 January 2007. These vehicles were delivered to the DMO in the period June 2008 to February 2009. In my experience, the frequency of such orders by Defence organisations for major military assets such as vehicles is generally longer than 3 years and repeat orders are likely to occur in the range of 4-10 years.
Concerning the tender to the ADF for the supply of its vehicles which is referred to above, Mr Halloran says:
In August 2011, Supacat submitted a proposal for the sale of its Commando vehicle to the [ADF] under cover of a letter dated 11 August 2011 from the UK Managing Director, Mr Nicholas Ames. On 22 November 2011, the Department of Defence confirmed that Supacat had been selected as the preferred tenderer for the so-called JP2097 1 (b) contract. Copies of these letters are annexed hereto and marked exhibit MH4.
The letter from the Removal Opponent to the ADF referred to above carries a trade mark similar to that which appears below:
I note now that in terms of subsection 7(1) the above use is a use of the Trade Mark: see subsection 7(1) and, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.
Christina Gensler is Corporate Counsel (Trademarks) of the Removal Applicant. Her declaration establishes the reputation of the Removal Applicant’s CATERPILLAR and CAT trade marks in relation to a range of heavy vehicles associated with excavation, earth movers, trucks, tractors, harvesters, mining equipment, bulldozers, excavators, forestry equipment, marine engines and so forth. Ms Gensler’s evidence accordingly comprises matter which potentially goes to the exercise of the Registrar’s discretion under subsection 101(3) of the Act and I will discuss it if necessary under the heading ‘Discretion’.
Mr Butera’s first declaration is addressed at placing certain elements of the first Halloran declaration into context.
Mr Halloran’s second declaration, that which is dated 9 December 2013, addresses matters raised in the declarations of Mr Butera and Ms Gensler.
Mr Halloran’s further evidence concerns an advertisement which was placed on the Removal Opponent’s behalf in the Australian Defence Magazine (‘ADM’). ADM has, according to its website, a circulation of around 4,700 and a readership of about 10,000. Mr Halloran states:
On 7 May 2014 I met with the parent company's Group Financial Director, Mr Shaun Mitchell, who was in Melbourne on business. We discussed this case and Mr Mitchell mentioned that the Owner had most likely advertised our off-road vehicle products in the Australian Defence Magazine (ADM) during the relevant period of 2009 to 2012. In respect of the Evidence in Support, I had the responsibility of ensuring all evidence relevant to the Owner's use of the Registered Trade Mark in Australia during the relevant period was collected. However, at the time of organising the collection of evidence, I did not recall the advertisements having been placed in the ADM and, in any case, did not appreciate their significance to this case. Had I done so, I would have ensured that they were included in the Evidence in Support.
I made enquiries with the Owner's advertising people in the UK on the evening of 7 May 2014 EST and was put in contact with Mr David Jones, National Advertising Sales & Features Manager of the ADM.
On 8 May 2014, Mr Jones emailed me copies of advertisements of Supacat vehicles in the ADM editions of February 2010, March 2011 and October 2011.
Annexed hereto and marked Exhibit MH6 is a black and white extract showing pages 40 and 41 of the February 2010 edition of the ADM and a colour copy of the Supacat advertisement shown on page 41. The advertisement features the subject trade mark SUPACAT in relation to the Owner's high mobility or offroad vehicles. Informed readers, who are the typical readership of the ADM, would appreciate that the advertisement is not only promoting the Owner's innovations in relation to future products in development, but also high mobility vehicles readily available to Australian customers at the time of the advertisement. These vehicles available for purchase by Australian customers were the vehicles which were tendered and accepted by the (Australian) Defence Materiel Organisation (DMO) in late 2011. Other vehicles in which customers may have been interested in were also part of the advertisements.
Annexed hereto and marked Exhibit MH7 is a black and white extract showing pages 32 and 33 of the March 2011 edition of the ADM and a colour copy of the Supacat advertisement shown on page 33. The advertisement features the subject trade mark SUPACAT in relation to various of the Owner's high mobility or offroad vehicles for military or civilian customers. The advertisement informs readers of the past Jackal and Coyote vehicles supplied by the Owner and available at the time of the advertisement shown in Exhibit MH6, and of the Owner's new product, the SPV400, being made to Australian customers.
A copy of the abovementioned advertisement appears below:
Mr Halloran continues:
Annexed hereto and marked Exhibit MH8 is a black and white extract showing pages 44 and 45 of the October 2011 edition of the ADM and a colour copy of the Supacat advertisement shown on page 45. The advertisement features the subject trade mark SUPACAT in relation to the Owner's HMT Extenda off-road military vehicle.
A copy of the abovementioned advertisement appears below:
In his second declaration, which is dated 1 August 2014, Mr Butera attaches a copy of a decision of the UK Intellectual Property Office in which the Removal Applicant successfully opposed the registration of the Removal Opponent’s SUPACAT trade mark in Classes 7, 12, 37, 39 and 41. The declaration thus goes to considerations under subsection 101(3) and the exercise of the Registrar’s discretion.
Wayne Higgins is an employee of Calytrix Technologies Pty Ltd which specializes in ‘the delivery of software, training and consultancy services for Defence training and simulation purposes’ and a serving officer of the Australian Army Reserve, posted to Headquarters Joint Operations Command with the rank of Lieutenant Colonel.
After listing his training and experience, which includes working on ADF equipment procurements, Mr Higgins, details various aspects of the ADF procurement system. This system is complex and dwelling upon it in any detail would occupy many turgid pages of these reasons. However, the points which I gather are pertinent are that when pinpointing a need and arriving at an identification of equipment required for the military, the procurement officers do so by reference to a description of the equipment required rather than to any trade mark or even maker of the equipment and that this identification and procurement activity is not undertaken in response to an advertisement.
Dr Schmied is an employee of Thales Group and the import of his declaration is similar to that of Mr Higgins.
Mr Kirpalani is Territory Manager of Global Construction and Infrastructure Group of the Removal Applicant. His responsibilities include ‘direct sales to the ADF (at all stages of the sale process, including tendering, management of suppliers and final delivery), management of sales of Caterpillar products to international accounts based in Australia, sales forecasting, inventory/pipeline management and market intelligence (both regarding customers/potential customers and competitors).’
The gist of Mr Kirpalani’s declaration is that the Removal Applicant does not specifically advertise its goods to the ADF because the ADF procurement system does not react to advertisements. Interestingly, though, it appears that the Removal Applicant might participate in trade shows or conferences aimed at the ADF as Mr Kirpalani states that one of his tasks is:
… considering, in conjunction with Caterpillar’s marketing team, any marketing strategies (such as attending trade shows or conferences) that may assist Caterpillar in obtaining new orders from the ADF;
I observe that if the ADF procurement system is as rigid as the declarants Higgins, Schmied and Kirpanali suggest, attendance at trade shows and conferences should appear to be as non-productive as advertising in defence-related publications is alleged to be.
I will add that it is my personal observation[2] that there has been for some time a very large illuminated advertisement for the F-35 Lightning II (colloquially referred to as the Joint Strike Fighter) aircraft behind the baggage carousels at Canberra Airport placed there by Lockheed Martin. Obviously, the specification of the capabilities of a fighter aircraft and the resultant tender process is much more complex, specific (and consequently allegedly advertisement-free) than that which may result in the sale of the Removal Opponent’s goods and yet Lockheed Martin has believed that it is for some reason productive to place the advertisement in an area where ADF personnel congregate to collect their luggage.
[2] Reg 21.15(4).
Paragraph 92(4)(b)
Section 92 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:
(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.
Note 1: For file and month see section 6.
Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
I consider it convenient, at the outset of discussions, to dispose of the arguments of the Removal Applicant that the Goods are not sold by the Removal Opponent in Australia by reference to the Trade Mark. Just as it is irrelevant that a trader’s goods bearing a particular trade mark in Australia have arrived in Australia without the knowledge of the trade mark owner,[3] so too (in my consideration) is it irrelevant that a trader’s goods have been selected in Australia by the purchaser other than by reference to the trade mark they carry: the critical thing is that the trader has used the trade mark in Australia in relation to the goods. Further, an argument that the goods are not in trade within Australia but are ordered by the Defence Military Attaché in London is disposed of by observing that the Goods were offered for sale in Australia[4] and the purchase was at the direct behest of the senior procurement officer in Australia. Without being ordered to do so by the senior procurement officer in Australia, the Defence Military Attaché in London would not place an order for the Goods. The directing mind behind the purchase is within Australia.
[3] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337
[4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049; Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; (1951) 82 CLR 199; [1951] ALR 512
The Removal Opponent has used the Trade Mark both on tender documents and in advertisements in Australia within the relevant period. It is, in my consideration, not relevant that the Goods might have been selected other than by reference to the Trade Mark within the advertisement or tender documents: the Trade Mark appears in the documents and advertisements for the purposes of distinguishing the Removal Opponent’s goods from those of other traders. In any event, it is often impossible for traders in general to show that any particular purchase was made in response to a specific advertisement. It would be an impossible onus to discharge if, say, a soft-drink manufacturer had to demonstrate that specific purchases of its goods were in response to particular advertisements. Further, a visit to the website of ADM[5] shows that Volvo, Mack, Babcock and Lockheed Martin all have prominent advertisements on that magazine’s website and it is difficult to imagine that such major traders would advertise so prominently to the ADF in ADM if they did not believe that they were to gain something by so advertising.
[5] type="1">
The commercial activity in relation to the Trade Mark appears to me to be at least of the same order (and involving a much greater sum of money) as that in Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91-119 albeit that case involved the establishment of use in relation to section 58 of the Act. In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166; [2001] AIPC 91-713; (2001) 51 IPR 149 at [14] Drummond J said:
If a single user of the mark during that period is sufficient to disentitle a person from making an application for removal based on s 92(4)(b), the opponent must be entitled by s100(3)(a) to rebut the allegation on which such a removal application is based by proving a use (in good faith) on just one occasion during the three year period.
In Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, McGarvie J, speaking of s23(1)(b) the Trade Marks Act 1955 (Cth) (“the 1955 Act), said, at 437:
“The defendant must establish that during the three-year period to 4 July 1983 the plaintiff did not once use the mark in good faith in Australia: the Estex case (1967) 116 CLR 254 at 258-9. The contest between the parties is whether the plaintiff during that period used its trade mark in Australia at least once.”
Accordingly, the Removal Opponent has demonstrated to my satisfaction that it has used the Trade Mark in relation to the Goods within the relevant period.
Least I be wrong in the above, I turn now to the exercise of the Registrar’s discretion.
Discretion
Subsection 101(3) provides:
101Determination of opposed application—general
[…]
(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.
In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 (‘Pioneer’) Bennett J said at [167]:
The discretion under s101(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 s92 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.
In Kowa Company[6] 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[7] 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).
In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
· there had been no abandonment of the trade mark;
· the registered proprietors of the mark still had a residual reputation in the mark;
· there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
· the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
· the registered proprietors were not aware of the applicant’s sales under the mark.
[6] Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131
[7] E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2008] FCA 934; (2008) 77 IPR 69
And, again in E & J Gallo, Flick J said at [210]:
Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register” (Kowa Co Ltd v Organon (2005) 223 ALR 27; 66 IPR 131; [2005] FCA 128 at [92] per Lander J), the private commercial interests of both Gallo Winery and Lion Nathan remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme – or, at least – a predominant interest is the maintenance of the integrity of the Register: Campomar Sociedad Limitada v Nike International Ltd (2002) 202 CLR 45; 169 ALR 677; 46 IPR 481; [2000] HCA 12 at [40]. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.
As regards the private interests of the parties, the Removal Applicant loses nothing if the Trade Mark remains registered. The Removal Applicant’s trade marks comprising (or containing) the trade marks (or elements) CAT or CATERPILLAR are registered in Australia and the Trade Mark is not an impediment to the use of any of these nor is it alleged to be in relation to any proposed trade mark of the Removal Applicant. The main allegation of the Removal Applicant is that the trade marks of the parties are deceptively similar; however, setting aside the fact that the issue of deceptive similarity is better dealt with at an opposition to registration rather than an application under subsection 92(4)(b), the Removal Applicant also argues that in the only marketplace where the parties’ goods are sold together (that being to the ADF) the parties’ goods are purchased without reference to trade marks.
It is difficult to see under such circumstances how confusion or deception could arise.
That said, the first three legs of the test in Pioneer/Hermes are met by the Removal Opponent’s evidence and it is not suggested that all five elements of the test have to be satisfied. If I were to exercise the Registrar’s discretion, it would be in favour of allowing the Trade Mark to remain registered.
Decision
Subsection 101(1) 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.
I am not satisfied that the grounds on which the application was made have been established and I am satisfied that the Removal Opponent has discharged the burden on it to establish the use of the Trade Mark in relation to the Goods in the Relevant Period.
For the reasons stated above, were it necessary to exercise the Registrar’s discretion in relation to the issue, it would have been in favour of retaining the trade mark on the Register.
Costs
As the successful party the Removal Opponent is entitled to its costs which I award at the Official Scale against the Removal Applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
23 October 2014
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