TGL Consulting Pty Ltd v Fisher Controls International

[2006] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by TGL Consulting Pty Ltd to application under section 92 of the Act by Fisher Controls International, Inc to remove trade mark number 734969(42) in the name of TGL Consulting Pty Ltd

Background

1. In this matter Fisher Controls International, Inc ('the applicant'), of Missouri, United States of America, filed application in terms of section 92 of the Trade Marks Act 1995 on 28 September 2004 to remove registration 734969(42) SURESERVICE registered for, ‘Information technology consultancy services’ ('the trade mark') from the Register.  Accompanying this removal application, a statutory declaration by Robert Hallett, Senior Associate of Griffith Hack, Patent & Trade Mark Attorneys, solicitor, stated that he had conducted an investigation into the use of the trade mark and it was his opinion that the owner had not used the sign as a trade mark during three years ending one month before the removal application was filed.

2. On 20 January 2005, TGL Consulting Pty Ltd ('the owner') filed Notice of Opposition ('the Notice') to the application.  The Notice states two grounds of opposition, these being:

   The removal applicant is not a person aggrieved

   The trade mark owner has used the trade mark in good faith.

3. A statutory declaration in support of the opposition to the application made by Timothy Gerard Laurie, Managing Director of the opponent has been served and filed.  A statutory declaration as evidence in answer made by Michael Sheldon, Assistant Secretary of the applicant has also been served and filed.

4. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks.  Ben Fitzpatrick of Counsel represented the applicant.  James Samargis of Counsel represented the opponent.

   The Evidence

5. Mr Laurie attests to his company’s specialty in information technology consultancy services.  As I understand the evidence, in 1997 the opponent developed a strict set of processes, procedures, documentation, training, service and management for its clients to ensure that all of a client’s information technology needs are met.  After test marketing, this service was introduced to all clients in 1998 and has continued since then.  This service is very much like a comprehensive checklist, to guarantee that all facets of a client’s information technology needs are met and delivered, and the opponent provides the service under the trade mark SURESERVICE.  Documentation in the form of an information technology checklist bearing the trade mark SURESERVICE is provided by the opponent to its customers.

6. In the supporting declaration by Mr Hallett, referred to above, he states that the precise nature of the opponent’s consulting service is unclear and the applicant contends that the uses of the trade mark on the opponent’s website do not constitute a service in relation to information technology services.

7. This was also the general thrust of Mr Fitzpatrick’s submissions at the hearing.  The applicant’s status as a person aggrieved was not challenged at the hearing.

   Reasons

8. Section 92 of the Act provides:

   92  Application for removal of trade mark from Register etc.

   (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

   (2)The application:

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

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

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

   Note:For prescribed court see section 190.

   (4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note:    For file see section 6.

9. The onus in these proceedings is on the opponent to satisfy me that it has used the trade mark in relation to the services for which it is registered. 

10. Mr Fitzpatrick’s submissions relate in the main to the extremely general nature of the services described in the opponent’s evidence; the other leg of his argument is that the trade mark is apparently used in relation to a process of delivering services rather than the services themselves and it is not clear that the trade mark is used in trade.  One ultimate end of such considerations might be that the trade mark is only used ‘in house’ to describe the process of service delivery and hence such uses of the trade mark would not be uses in trade.  Another conclusion might be that the opponent does not use the trade mark in relation to the particular services nominated on the registration.

11. I agree with Mr Fitzpatrick that the opponent’s evidence tends to be vague – however, on balance, I am satisfied that it meets at least the bare minimum in establishing use of the trade mark SURESERVICE by the opponent.  I also consider that at least part of the problem with the opponent’s evidence is likely to have arisen out of the fact that the trade mark is being used in relation to an ‘intangible’ – a service – and because there may occasionally be more difficulty in evidencing use of a trade mark in relation to services than might occur with goods.

12. Although the evidence filed by the opponent tends to be quite general in nature, the trade mark appears, to me, to be used by the opponent in relation to the character or quality of the information technology consulting services that it provides its customers.  There are statements appended to Mr Laurie’s declaration, albeit unsworn, by clients who state that they are aware of the trade mark.  Although not of high probative weight, the statements confirm an awareness of the trade mark SURESERVICE, and that the use is in relation to what I would describe as a quality assurance aspect of the information technology service which the opponent delivers or a vetting service to ensure that all appropriate information technology services are delivered to a client.  As such, these services should fall within the general heading, ‘Information technology consultancy services’.

13. In the alternative, it is quite apparent from both the declaration and exhibits that the trade mark is being used by the opponent and the opponent’s sole business is information technology consultation services.  The trade mark appears on the opponent’s website at and on documentation provided to clients.  Thus, while the connection between the use of the trade mark and the services in respect of which it is being used could have been better described by the opponent, I am, in the end, satisfied that the trade mark is in effect being used in relation to those services for which it is registered.  The trade mark is being used in relation to an information technology consulting service ‘master control’ in which both the opponent and its customers collaborate to ensure that all of the consultation services which should be delivered to a client are so delivered.

14. Such public uses of the opponent’s trade mark are uses in trade in relation to the services for which it is registered.

    Decision

15. The opponent has established its opposition to the removal of the trade mark.

    Costs

16. Both parties have requested their costs should they be successful in this matter.  The opponent, having been successful in this matter, is entitled to its costs and I order these at the scale set out in the regulations.

    Ian Thompson
    Hearings Officer
    Trade Marks Hearings
    4 December 2006