The Decor Corporation Pty Ltd v TBG APAC Pty Ltd

[2024] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by The Decor Corporation Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by TBG APAC Pty Ltd for removal of trade mark numbers 173872 – Willow - and 722027 – Willow with diamond border – in the name of The Decor Corporation Pty Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: Ms Shauna Ross of counsel instructed by Bosh IP

Applicant: Mr Sam J Hallahan of counsel instructed by Chrysiliou IP

Decision:

2024 ATMO 66
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) applications for removal - Removal Opponent’s evidence shows some use of the trade marks on limited goods– exercise of Registrar’s discretion not appropriate – trade marks to be removed from the Register for some goods.

Background

1. This decision is pursuant to applications made on 11 January 2022 under ss 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by TBG APAC Pty Ltd (‘Applicant’) to remove the respective trade marks (‘trade marks’) detailed below from the Register of Trade Marks.  The applications are made in respect of all the goods for which the trade marks are registered, that is, the applications are for complete removal of the trade marks.

Registration No.	173872
Priority date	11 May 1933
Goods	Class 21: Meat safes, coolgardie safes, cool safes, butter coolers, cleansing and polishing mops; plastic kitchen ware; plastic culinary articles and plastic hollow ware. Goods of aluminium and plated ware in this class. Tins, tinware, canisters and other metal receptacles and containers and all other articles made from sheet metal and tin plate in this class.
Owner	The Decor Corporation Pty Ltd
Trade Mark	WILLOW (‘Trade Mark’)

Registration No.	722027
Priority date	15 November 1996
Goods	Class 21: Household and kitchen utensils and containers (not of precious metal or coated therewith); articles for cleaning purposes, brushes; glassware, porcelain and earthenware not included in other classes
Owner	The Decor Corporation Pty Ltd
Trade Mark	(‘Willow Logo’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The Décor Corporation Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing its Notices of Intention to Oppose removal on 11 March 2022 followed by its Statements of Grounds and Particulars (‘SGP’) on the 8 April 2022.  The Applicant filed its Notices of Intention to Defend on 6 June 2022.

3. The parties filed the same evidence in both proceedings. The evidence filed in these matters is the following:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Nadia Odorico, Global IP Manager of the Opponent (‘Odorico 1’)	31 August 2022	A to H
Evidence in answer
Josh Harrison, Director of the Applicant	6 December 2022	JH-1 to JH-8
Reynier Van Der Westhuizen, Attorney at Chrysiliou IP Pty Ltd	6 December 2022	RW-1 to RW-11
Evidence in Reply
Nadia Odorico, Global IP Manager of the Opponent	12 January 2023	Confidential Annexure NO 1

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 14 March 2023 the Applicant requested a hearing and paid the appropriate fees. The matter was set down for a hearing on 22 February 2024. The Opponent filed its written submissions on 8 February 2024 (‘Opponent’s Submissions’). The Applicant filed written submissions on 15 January 2024 (‘Applicant’s Submissions’). 

2. I am a delegate of the Registrar and the matter came before me to be heard on 22 February 2024. I have now made my decision on the basis of the following relevant material and the evidence listed earlier in this decision:

   ·The Applications for Removal;

   ·The Notices of Intention to Oppose and SGP;

   ·The Applicant’s and Opponent’s oral and written submissions. 

   The Relevant Provisions

3. Part 9 deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly 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)  …

   (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.

4. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark and the Willow Logo in the three year period ending on 11 December 2021 (‘Relevant Period’).

5. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the applications have in fact passed.

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

6. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   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:

   (a) …
   (b)  …
   (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.

   […]

   (2) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

7. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

8. In accordance with s 101 I may decide to remove the Trade Mark and/or the Willow Logo from the Register for all or some of the goods identified in the applications for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark or Willow Logo even if the grounds under which the applications for removal were made are established.

9. I further note that a single bona fide use of the Trade Mark and the Willow Logo in the course of trade during the relevant period may be sufficient to rebut the allegations under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark or the Willow Logo by an authorised user (as defined by s 8) is taken to be use of the respective trade marks by the Opponent.[5] 

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [5] Act s 7(3).

10. The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

    Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

    The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

    [6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

    Discussion

11. To successfully oppose the applications the Opponent must establish that it has used the Trade Mark and the Willow Logo (or a substantially identical trade mark[7]) pursuant to s 100 (or that there were circumstances that were an obstacle to use in the Relevant Period (per s 100(3)(c)). 

    [7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

12. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark and/or the Willow Logo should not be removed from the Register.

    Use of the Trade Mark in the relevant period

13. Ms Odorico avers the Opponent (or its predecessors in title including the Willow Brothers and Willow Ware Australia Pty Ltd) has extensively and continuously used the Trade Mark in Australia since at least 1887 and the Willow Logo since at least 2007.

14. In evaluating the Opponent’s evidence there is an important threshold determination that I make, namely that there are exhibits which do demonstrate use of the Trade Mark and the Willow Logo but are dated outside of the Relevant Period. Annexures C and F accompanying  Odorico 1 are dated outside of the Relevant Period. Additionally, annexure D contains a number of undated photographs of products which demonstrates the way the Trade Mark and Willow Logo are being used on a number of products such as plastic cups, plastic plates and icepacks. However, annexure D also includes catalogues of products branded with the Trade Mark and the Willow Logo dated 2019 and 2020 which is within the Relevant Period and clearly demonstrates use of the Trade Mark and Willow Logo.

15. There has been no dispute between the parties that the Trade Mark and the Willow Logo have been used during the Relevant Period, the dispute between the parties comes down to what goods the trade marks have actually been used on and how that will apply to the respective specifications of goods. To this end I turn to the specifications of the respective trade marks which are as follows:

Trade Mark	Willow Logo
WILLOW
Class 21: Meat safes, Coolgardie safes, cool safes, butter coolers, cleansing and polishing mops; plastic kitchen ware; plastic culinary articles and plastic hollow ware. Goods of aluminium and plated ware in this class. Tins, tinware, canisters and other metal receptacles and containers and all other articles made from sheet metal and tin plate in this class.	Class 21: Household and kitchen utensils and containers (not of precious metal or coated therewith); articles for cleaning purposes, brushes; glassware, porcelain and earthenware not included in other classes

1. The Opponent submits that the use of the Willow Logo is use of the Trade Mark as the trade marks are substantially identical. I accept that in this case, the respective trade marks are substantially identical being essentially the word WILLOW. However, this point is moot given that the Willow Logo and Trade Mark are often used in conjunction with each other on the advertising material before me in the evidence.

2. As mentioned earlier, annexure D accompanying Odorico 1 contains catalogues dated from 2019 and 2020 which detail examples of goods being offered for sale under the Trade Mark and Willow Logo. Careful consideration of these catalogues demonstrates that the Opponent has used the Trade Mark and the Willow logo on plastic bins for indoor and outdoor use, plastic buckets, plastic laundry baskets, baking tins and trays, water carry cans, insulated coolers, insulated cooler jugs, fuel carry cans, plastic dish rack and cutlery drainers, cutlery trays, fly swatters, soft and hard ice packs, plastic colanders, plastic household storage containers, plastic cups, plastic bowls, plastic plates and plastic chopping boards.

3. In considering these goods against the respective goods specifications, I note that the specifications contain historical language relating to goods that are no longer in production such as Coolgardie safes. I will address this issue first. ‘Meat safes, Coolgardie safes, cool safes and butter coolers’ are typically historical items which have been replaced by newer technology and inventions as years have progressed. The Opponent has argued that it has used the Trade Mark on these goods by way of a historical display in the Powerhouse Museum located in Sydney. The Powerhouse Museum is displaying the Opponent’s butter cooler. I am in agreement with the Applicant that the reference to a butter cooler (Year of Manufacture: C 1920) at the Powerhouse Museum shows that such goods are historical relics and are not goods the Opponent has used the Trade Mark on during the Relevant Period. However, I am satisfied that the Opponent’s demonstrated use of its Trade Mark and Willow Logo on insulated coolers does constitute use of the trade marks on cool safes as the essential purpose of a cool safe and an insulated cooler is same – to keep food and beverages cooler than the ambient temperature. I am not satisfied that the Opponent has used the Trade Mark or Willow Logo on coolgardie safes, butter coolers or meat safes during the Relevant Period.

4. In considering the rest of the specifications, both parties have drawn my attention to Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK[8] confirmed that “in order to maintain the registration of a mark in respect of a category of goods (and this extends to services), it is not necessary to establish that the mark was used on every type of product which might come within that particular term or description of goods” and “[i]t is not necessary to establish use in respect of each type of good that might come within the category”. The example given by her Honour was in relation to clothing. In the context of that example, her Honour said “registration with respect to clothing should not be removed if the owner does sell a range of clothing but does not sell, for example, swimwear or ties”. The Opponent has argued that limiting the scope of the goods each trade mark is registered for goes against the principle that it is inappropriate to permit fine distinctions to be drawn between the goods because of the potential for fragmented ownership of the same or a very similar mark in respect of very similar goods/services that has the potential to erode valuable trade mark rights.[9]

   [8] (2009) 176 FCR 300 [138]

   [9] Geoffrey James v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481; 34 IPR 537 [544] Drummond J

5. I also turn to Drummond J where he commented on the issue of fine distinctions in respect of goods claims when he considered trade marks involving the word “Taipan” in McHattan v Australian Specialised Vehicle Systems Pty Ltd.  He said: [10]

   The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.

   But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.

   But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): 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 eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

   [10] (1996) 34 IPR 537

1. Taking all these judicial comments into account along with the use demonstrated by the Opponent, I am satisfied that the Opponent has failed to demonstrate use of the Trade Mark and Willow Logo on the goods struck through as set out below:

Trademark	Willow Logo
WILLOW
Class 21: Meat safes, coolgardie safes, cool safes, butter coolers, cleansing and polishing mops; plastic kitchen ware; plastic culinary articles and plastic hollow ware; plastic colanders; plastic chopping boards; plastic mixing bowls; Goods of aluminium and plated ware in this class. Tins, tinware, canisters and other metal receptacles and containers and all other articles made from sheet metal and tin plate in this class. Baking tins and trays	Class 21: Household and kitchen utensils and containers (not of precious metal or coated therewith); plastic bins; plastic dish racks and cutlery drainers; plastic buckets articles for cleaning purposes, brushes; glassware, porcelain and earthenware not included in other classes

1. The Opponent has demonstrated use for some broad goods specifications as I am satisfied that the distinction between ‘plastic kitchenware and plastic hollow ware’ and ‘Household and kitchen utensils and containers (not of precious metal or coated therewith’ in general and the Opponent’s demonstrated use on plastic bins for indoor and outdoor use, plastic buckets, plastic laundry baskets, water carry cans, insulated coolers, insulated cooler jugs, fuel carry cans, plastic dish racks and cutlery drainers, cutlery trays, soft and hard ice packs, plastic colanders, fly swatters, plastic household storage containers, plastic cups, plastic bowls, plastic plates and plastic chopping boards would be akin to the distinction between the various species of motor cars and military vehicles to which Drummond J referred.

2. However, the Opponent has not demonstrated use for the broad specification of ‘Goods of aluminium and plated ware in this class. Tins, tinware, canisters and other metal receptacles and containers and all other articles made from sheet metal and tin plate in this class’. This is because the Opponent’s demonstrated use of its Trade Mark and the Willow Logo on metal goods is not spread across a broad range of tin ware and metal receptacles or containers. The opponent’s demonstrated use of the respective trade marks is limited to a subset of metal goods being baking tins and trays specifically designed for baking food items rather than storage or any other use such as bird cages, camping grills or bait stations which would also be classed as metal receptacles or containers or articles made from sheet metal in class 21. I am not satisfied that restricting the goods specification to baking tins and trays would be an inappropriate fine distinction.

3. The same can be said for ‘plastic culinary articles’. The opponent’s demonstrated use of the respective trade marks is limited to three plastic culinary articles being plastic chopping boards, plastic colanders and plastic mixing bowls. Given the high number of goods which would be classified as plastic culinary articles, I am not satisfied that restricting the goods specification to plastic chopping boards, plastic colanders and plastic mixing bowls would be an inappropriate fine distinction.

4. The parties have argued that plastic bins, buckets and plastic dish racks and cutlery drainers are ‘articles for cleaning’. The Opponent has argued that its use of the respective trade marks on these goods is sufficient to maintain the whole of the claim for ‘articles for cleaning’. I am not persuaded by this reasoning. ‘Articles for cleaning’ is an incredibly broad category of goods and the few items the Opponent has demonstrated use on are very small subset. I am not satisfied that restricting the goods specification for ‘articles for cleaning’ to plastic bins; plastic buckets; plastic dish racks and cutlery drainers would be an inappropriate fine distinction.

5. The rest of the goods that have been removed from the specification have been removed because the Opponent has not demonstrated any use of the Trade Mark or the Willow Logo on those goods during the Relevant Period. However, for those goods I turn and consider if there were any obstacles to use or if I should exercise the Registrar’s discretion.

   Obstacles to use

6. An Opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[11]  The Opponent has made no claims that there were any obstacles to its use of the Trade Mark or the Willow Logo. Therefore, I am not satisfied that the Opponent’s failure to use the trade marks were because of circumstances that were an obstacle to use pursuant to s 100(3)(c).

   Registrar’s Discretion

   [11] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J)

7. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the any of the goods.[12] The burden of persuasion falls in this regard falls on the Opponent.[13]

   [12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [13] Ibid.

8. The Opponent has made considerable submissions in respect of the discretion. The Opponent states:

   It is clear from the evidence of Ms Odorico that the Willow Marks are extremely well known in Australia. Should the Willow Marks be removed, even partially, there is a high likelihood that confusion will arise particularly if another entity is allowed to officially enter the market as a consequence…

   … The potential for consumer confusion if the Willow Marks were removed on the basis of the reputation enjoyed by the Willow Marks is significant.

9. While I acknowledge that the Opponent has a long history of use for its Trade Mark and does have use of the Willow Logo, I am not persuaded that the Opponent’s level of reputation as demonstrated in the evidence is sufficient to trigger the Registrar’s discretion.

10. The evidence before me falls short of establishing the sort of reputation that would be sufficient to prevent removal of the Trade Mark for goods which have not been used in recent history such as Coolgardie safes. There is no evidence before me of how many Australian consumers would be aware of the Opponent’s historical use of the Trade Mark on such goods.

11. While I note the Opponent’s sales of its good in 2022 demonstrate that a reasonable number of Australian consumers purchased goods bearing the Opponent’s trade marks, given the size of the kitchenware, culinary, cleaning, storage and baking goods industry in Australia, I am not satisfied the Opponent has such a reputation in its trade marks that there is a potential for fragmented ownership of the same or a very similar mark in respect of Goods of aluminium and plated ware in this class. Tins, tinware, canisters and other metal receptacles and containers and all other articles made from sheet metal and tin plate in this class and articles for cleaning purposes, brushes; glassware, porcelain and earthenware not included in other classes.

12. The Opponent has not demonstrated any use of its trade marks on the vast majority of the above goods, historically or recently. While the Opponent has demonstrated use of its trade marks on bakeware I do not consider it necessary, for the prevention of consumer confusion, to allow the retention of the registration of the Trade Mark for any specification broader than baking tins and trays. Additionally, while the Opponent has demonstrated use of its trade marks on a very limited number of plastic culinary items and articles for cleaning purposes I do not consider it necessary, for the prevention of consumer confusion, to allow the retention of the registrations of the trade marks for any specification broader than plastic chopping boards; plastic colanders; plastic mixing bowls and plastic bins; plastic buckets; plastic dish and cutlery strainers.

13. I am not satisfied that it is appropriate to apply the Registrar’s discretion.

    Decision

14. I am satisfied that the trade mark of registration numbers 173872 and 722027 have been used in the relevant period. However, this use has only been with respect to some of the goods. Therefore, I refuse to remove trade mark registration numbers 173872 and 722027 in its’ entirety but direct that they be limited to:

Trade Mark No. 173872	Trade Mark No. 722027
WILLOW
Class 21:  Cool safes; plastic kitchen ware; plastic hollow ware; plastic chopping boards; plastic colanders; plastic mixing bowls; baking tins and trays	Class 21: Household and kitchen utensils and containers (not of precious metal or coated therewith); plastic bins; plastic buckets; plastic dish racks and cutlery strainers.

1. Unless this decision is appealed, the trade marks will be removed for the remaining goods after one month from the date of this decision.

   Costs

2. Both parties have requested costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.

   Bianca Irgang
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   10 April 2024