Thebe International Pty Ltd v CDB Media Limited

[2012] ATMO 118

TRADE MARKS ACT 1995

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

Re:Oppositions by THEBE INTERNATIONAL PTY LTD to applications under section 92 of the Act by CDB MEDIA LIMITED to remove trade mark numbers 242019 (9), 281418 (11), 434005 (7), 493146 (37) and 493421 (42) - GOLDAIR - in the name of THEBE INTERNATIONAL PTY LTD

Delegate:	Heath Wilson
Representation:	Opponent: Julia Baird of Senior Counsel instructed by Molins & Co, Patent Attorneys Applicant: Ben Fitzpatrick of Counsel instructed by Pizzeys, Patent and Trade Mark Attorneys
Decision:	2012 ATMO 118 Application under section 92(4)(b) of the Trade Marks Act 1995 – use established for some goods – remaining registrations to be removed from the Register – Registrar’s discretion - costs awarded against the Opponent.

Background

1. On 20 December 2010, CDB Media Limited (‘the Applicant’) filed applications under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the following trade marks from the Trade Marks Register:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods and Services
242019	GOLDAIR	2.9.70	Class 9: Electrical apparatus
281418	GOLDAIR	4.9.74	Class 11: Electrical heating and cooling appliances including fans, coolers, air conditioning apparatus, deep freezers, refrigerators, and clothes dryers; and all other goods in this class
434005	GOLDAIR	1.10.85	Class 7: Electro-mechanical apparatus in class 7 including: food preparation machines, food mixers, coffee grinders, juice extractors, carving knives; parts and accessories in class 7 for all the aforesaid goods but excluding: valves, filters, lubricators and their parts
493146	GOLDAIR	12.8.88	Class 37: Services in this class in connection with repair and maintenance of domestic appliances and electrical appliances
493421	GOLDAIR	16.8.88	Class 42: Wholesaling and retailing services in this class relating to: electrical, electronic and domestic goods and appliances and their parts and accessories

1. The owner of the above trade mark registrations (‘the GOLDAIR Trade Mark’) is a company named Thebe International Pty Ltd (now ‘the Opponent’). On 19 April 2011, the Opponent filed notices of opposition to the removal of each GOLDAIR Trade Mark. Evidence was subsequently filed and served comprising:

   Evidence in Support

   ·     Statutory declaration of Adam Tacey (Breville Pty Limited, Marketing Manager for the GOLDAIR brand) made 18 July 2011 with exhibits AT-1 to AT-11 (‘Tacey declaration’).

   ·     Statutory declaration of Heath Sturzaker (Breville Pty Limited, National Accounts Manager for the GOLDAIR brand) made 9 January 2012 with exhibits HS-01 to HS-02 (‘Sturzaker declaration’)

   Evidence in Answer

   ·     Statutory declaration of Andrew Springford (Director of the Applicant) made 18 April 2012 with exhibits AS-01 to AS-10 (‘Springford declaration’).

   Evidence in Reply

   ·     Statutory declaration of Adam Tacey made 8 July 2011 (‘second Tacey declaration’).

2. As delegate of the Registrar of Trade Marks I heard the opposition to the removal action on 18 October 2012 in Sydney. Julia Baird of Senior Counsel instructed by Molins and Co, Patent Attorneys appeared on the Opponent’s behalf and Ben Fitzpatrick of Counsel instructed by Pizzeys, Patent and Trade Mark Attorneys appeared on behalf of the Applicant.

   The Law

3. Sections 92(4)(b), 100(1)(c) and 101 of the Act provide:

   Section 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.

   Section 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:

   …

   (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.

   Section 101 Determination 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.

   (2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.

   (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.

4. According to section 100 of the Act, the Opponent bears the onus of rebutting the allegations of non-use made by the Applicant. The Opponent must establish use of the GOLDAIR Trade Mark in Australia in relation to all of the registered goods and services within the relevant period. Under subsection 92(4)(b), the relevant non-use period is three years ending one month before the day on which the non-use application was filed. In the current matter, the non-use application was filed on 20 December 2010, and the relevant period is therefore three years immediately prior to 20 November 2010 (‘the relevant period’).

   Reasons

   Authorised Use

5. Whether or not the Opponent’s use of the GOLDAIR Trade Mark was authorised use was an issue canvassed by the Applicant in its written submissions but Mr Fitzpatrick did not pursue the matter in any great detail at the hearing. I will, however, explain the link between the Opponent and the associated companies. The Opponent is a wholly owned subsidiary of Breville Group Limited (‘Breville Group’), and the Australian company Breville Pty Limited (‘Breville’) is in turn a wholly owned subsidiary of the Opponent. In the evidence, a licensing agreement[1] between Breville and the Opponent dated 15 February 2002 indicates that the Opponent has authorised Breville to use the GOLDAIR Trade Mark. Breville Group (by virtue of the group structure displayed in the exhibit) is similarly authorised to use the Trade Mark. Another entity mentioned in the evidence is Housewares International Limited (‘HWI’) which is the former company name of Breville Group.

   [1] Tacey declaration, exhibit AT-02.

6. Under section 7(3) of the Act, an authorised use of a trade mark is taken to be use of the trade mark by the owner and section 8(2) establishes that authorised use is that which occurs under the control of the owner of the trade mark. As Ms Baird submitted, the comments of Bennett J in Pioneer Computers Australia Pty Limited v Pioneer KK[2] are particularly relevant here:

   Use under the control of the owner of the trade marks is authorised use (ss 8(1) and 8(2) of the Act). As pointed out by Aickin J in Pioneer Kabushiki Kaisha at 683, a slight connection such as selection and quality control, or control by Pioneer KK of Pioneer Australia in the sense in which a parent company controls a subsidiary, may be sufficient.

   [2] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 at [157].

7. The Opponent’s evidence refers to the authorised use of the GOLDAIR Trade Mark by Breville, HWI (as it then was) or Breville Group. I am satisfied that there has been control exercised in relation to the use of the GOLDAIR Trade Mark and as a consequence any use of the Trade Mark by those authorised users amounts to use by the Opponent. 

   Evidence of Use

8. In order to rebut the allegation of non-use in the relevant period, the Opponent submitted evidence in the form of the Tacey and Sturzaker declarations. The Tacey declaration annexes copies of web pages from HWI ( extracted using the ‘Wayback Machine’ which date from 31 July 2008 and 22 March 2009. The example from March 2009[3] includes a photograph of an electric fan bearing the GOLDAIR Trade Mark. GOLDAIR is described therein as “a well established brand of heating and cooling products distributed in major mass retailers and specialist electrical retailers in Australia and New Zealand.” In addition, there are examples from the Breville Group website ( where the GOLDAIR Trade Mark is listed amongst other well-known brands. However, those examples are undated save for an ambiguous reference indicating that the page has copyright protection from 2010 in the name of Breville Group.

   [3] Statutory declaration of Adam Tacey, exhibit AT-04.

9. Mr Tacey also annexes copies of business cards featuring the GOLDAIR Trade Mark[4] and declares that they were distributed to retailers in Australia during the relevant period offering for sale the Opponent’s goods and services. There was no evidence to show whether or not such offers were accepted.  

   [4] Statutory declaration of Adam Tacey, exhibit AT-05.

10. Exhibit AT-06 to the Tacey declaration comprises photographs of GOLDAIR electric blankets and the controller apparatus, and a design for the product label dated from 2004. Exhibit AT-07 consists of undated owner’s guides and instruction booklets for electric blankets, standing fans, an oscillating tower fan and a radiant heater. All of these guides also offer a 12 or 24 month warranty service available to the consumer for defective products. The 24 month warranty for the electric blanket reads: “Goldair Australia reserves the right to replace or repair the appliance within the warranty period”. The tower fan instruction booklet simply provides a “12 month replacement guarantee” offering only the replacement of the defective fan or spare part.

11. A list and diagrams of the components for a convection heater comprises exhibit AT-08 and the photograph of a box for a GOLDAIR pedestal fan comprises exhibit AT-09. Neither of these exhibits is dated and offer little (if any) support to the assessment of the use of the GOLDAIR Trade Mark in the relevant period.   

12. During the hearing, the contents of exhibit AT-10 was the primary piece of evidence relied upon by Ms Baird (and also critiqued by Mr Fitzpatrick). The import of this document is crucial to the Opponent’s evidence of use. It is an internal document entitled “GOLDAIR Sales Activity” and records GOLDAIR products sold by (and presumably returned to) retailers between December 2007 and October 2010. The figures fall within the relevant period.

13. The significance of the positive and negative figures in AT-10 is not evident from the Tacey declaration or the exhibit itself but I assume that the positive figures represent product sales and the negative figures represent returns. If that is accurate, the sales are only in relation to single and queen-sized electric blankets (with the exception of two fan blades). The remaining items are returns of various fans and radiant heaters. Contrary to that evidence, Mr Tacey declares that “the returns comprise a full range of products, thereby requiring service and/or replacement of respective units or parts.”[5]

    [5] Tacey declaration, at paragraph 18.

14. Mr Tacey declares that the three supply agreements in exhibit AT-11 were initiated or maintained in the relevant period in respect of GOLDAIR goods and services. The first document is a letter proposing new trading terms with Radio Rentals dated 31 October 2008 but there is no indication of whether that proposal was agreed to or which goods it concerned. The next document is supplier information for HWI Electrical Pty Ltd dated 30 June 2009 and other details (such as the name/location of the retailer) have not been supplied. The final document is entitled ‘Group Trading Agreement’ dated 1 December 2008 between BSR Franchising Pty Ltd and Breville. The brand name GOLDAIR is mentioned, but once again the nature of the agreement and the goods/services concerned, is absent.

15. Finally, the Sturzaker declaration annexes another business card which Mr Sturzaker attests was distributed within the relevant period and an owner’s guide for a radiant heater (which is also annexed to the Tacey declaration). I will now consider each of the Opponent’s GOLDAIR Trade Marks and decide whether the above evidence constitutes use in relation to the goods and services in the relevant period.   

    Trade Mark Registration No. 281418

16. Trade Mark no. 281418 is registered for the following goods in Class 11:

    Electrical heating and cooling appliances including fans, coolers, air conditioning apparatus, deep freezers, refrigerators, and clothes dryers; and all other goods in this class.

17. The only goods for which evidence has been provided are electric blankets, fans and heaters and all of these goods are encompassed within the above specification. Use of the GOLDAIR Trade Mark in relation to electric blankets is supported by photographs and label designs, an owner’s guide and the sales history within the relevant period. I also note that electric blankets are the only specific products that Mr Tacey unequivocally states were sold in the relevant period. Considering all that evidence in totality, I am satisfied that use of the GOLDAIR Trade Mark has been established in the relevant period for electric blankets.

18. As previously mentioned, the figures in AT-10 do not display any sales for fans or radiant heaters in the relevant period. The evidence in relation to fans comprises a photograph from the website dated 22 March 2009, undated owner’s guides, a box that a fan was packaged in, and figures indicating returns of the product to the retailer. The photograph of the fan on the Opponent’s website is not an indication that the fans can be purchased directly from the website but instead simply highlights the nature of Opponent’s brand. The GOLDAIR Trade Mark in relation to radiant heaters is mentioned in another undated owner’s guide, in product returns and an unsupported assertion of use in the Sturzaker declaration. While a small amount of trade mark use may be sufficient to rebut an allegation of non-use, I am not satisfied that the Opponent has provided any conclusive proof[6] sufficient to rebut the allegation in relation to heaters or fans.

    [6] ‘Nodoz’ Trade Mark [1962] RPC 1 at [7].

19. From the wide range of products residing in the specification, I am satisfied that use of the GOLDAIR Trade Mark in the relevant period has been demonstrated in relation to electric blankets. There is a lack of conclusive and/or dated evidence for the remainder of the goods and I find that the specification should be restricted accordingly.   

    Trade Mark Registration Nos. 242019 and 434005

20. These two trade mark registrations above are respectively registered in class 9: Electrical apparatus and class 7:

    Electro-mechanical apparatus in class 7 including: food preparation machines, food mixers, coffee grinders, juice extractors, carving knives; parts and accessories in class 7 for all the aforesaid goods but excluding: valves, filters, lubricators and their parts.

21. Ms Baird argued that use of the GOLDAIR Trade Mark in relation to electrical apparatus in class 9 has been demonstrated via use in relation to electric control apparatus for fans and electric blanket controllers. While the Opponent may have sold fans and electric blankets bearing the GOLDAIR Trade Mark at some point, it has not demonstrated use for the particular electrical control apparatus that constitute parts of domestic fans or electric blankets. The parts list for one of the heaters is not evidence that those parts have been sold separately from the heater itself within the relevant period (or indeed at any point in time).

22. Further, while the Trade Mark appears on the controller for the electric blanket there is no evidence those blankets are sold separately to the controllers necessary to operate them. An assessment of whether the components are similar goods to electric blankets may be appropriate in the exercise of the discretion under section 101(4)(a) of the Act but, generally speaking, goods are not necessarily of the same description simply because one is a component of the other.[7] For current purposes I find that use of the GOLDAIR Trade Mark in relation to these particular goods does not constitute use in relation to the individual components of those products.  

    [7] See for example, Re Application by Stratco Metal Pty Ltd (1984) 4 IPR 48 and Playboy Enterprises Inc v Fitwear Ltd (1988) 12 IPR 310.

23. With regard to electro-mechanical apparatus, there is no evidence of use for any of the particular goods mentioned in the specification but the Opponent argues that as class 7 includes electric driving motors for machines that must also encompass motors for fans. It was also submitted that “electric fans (cooling) being parts of machines” are the same as the domestic fans depicted in the evidence. I do not find that these goods are of the same kind of thing and even if they were, the Opponent has not demonstrated any use of the GOLDAIR Trade Mark in the relevant period for fans and heaters let alone the components of those products

24. Lastly, the owner’s guides provide a warranty service which can include the supply of spare parts (under certain conditions) for the Opponent’s various electrical goods. As previously addressed, those guides are undated and for this evidence to establish use I would need to be satisfied that parts were sold (or at least offered for sale) in the relevant period and bore the GOLDAIR Trade Mark. I am not so satisfied. I note that electrical apparatus and electro-mechanical apparatus are broad expressions and that goods in one class may well be of the same description as goods in another class.[8] However, the fact the Opponent owns registrations across these different classes for an identical trade mark makes it likely that the Opponent is aware of the differences between electro-mechanical apparatus in class 7, electrical apparatus in class 9 and electrical appliances in class 11.

    [8] Re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. PPI Industries Pty Ltd’s Application (1989) 17 IPR 667; Societe des Produits Nestle SA v Strasburger Enterprises Inc (1995) 31 IPR 639.

25. No use of the GOLDAIR Trade Mark has been demonstrated in the relevant period for the goods contained in the specifications of trade mark nos. 242019 or 434005.

    Trade Mark Registration No. 493146

26. This trade mark is registered for: Services in this class in connection with repair and maintenance of domestic appliances and electrical appliances in class 37. In assessing evidence of use subsection 7(5) of the Act provides that use of a trade mark “in relation to services” means “use of the trade mark in physical or other relation to the services”.

1. Ms Baird placed emphasis on the warranty conditions contained in the undated owner’s guides[9] viewed in combination with the figures for the return of GOLDAIR fans, heaters and electric blankets to the respective retailers. As mentioned earlier, the owner’s guides indicate that the Opponent simply reserves the right to repair or replace the product within the warranty period.

   [9] Tacey declaration, exhibit AT-07.

2. Accepting for the moment that the figures in exhibit AT-10 represent returns, there is no evidence or explanation in the evidence of what may have followed the return of the electrical products. Further assuming that the warranty conditions applied to each one of the returns, it is unknown whether the products may have been repaired, replaced or whether the customer was given a refund of the purchase price. If the products were refunded or replaced in their entirety (for example), it has not been explained how such a service could be accurately described as the provision of repair and maintenance.  

3. While the evidence outlined is more likely to be defined as a general warranty service rather than repair and maintenance services per se, there is further uncertainty regarding whether those services were actually utilized by the customer in the relevant period. In addition to the numerous inferences that need to drawn to reach the point where use in relation to repair and maintenance services could be said to have been established in the relevant period, I am also not convinced that the GOLDAIR Trade Mark was used in relation to any services with which the Opponent may have been involved.   

4. Despite Ms Baird’s submissions, I find the evidence seriously lacking in a number of aspects and I am not satisfied on the balance of probabilities that a single instance of GOLDAIR Trade Mark use has been demonstrated for repair and maintenance services.

   Trade Mark Registration No. 493421

5. The final GOLDAIR Trade Mark is registered in class 42 for:

   Wholesaling and retailing services in this class relating to: electrical, electronic and domestic goods and appliances and their parts and accessories.

6. The nature of a wholesaling and retailing service has been described as ‘the gathering together of various selected products and making them available to purchasers’[10] or in the Explanatory Note to the 9^th Edition of the Nice Classification of Goods and Services:

   The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

   [10] Dee Corp plc’s Application (1989) 15 IPR 203; [1990] RPC 159.

7. While the Opponent has demonstrated use of the GOLDAIR Trade Mark in relation to electric blankets, it does not necessarily follow that the service of retailing of electric blankets has also been demonstrated. There is no general rule that use on goods themselves will successfully rebut an allegation of non-use of a trade mark in relation to retailing and wholesaling of those goods. In Optical 88 Limited v Optical 88 Pty Limited (No 2)[11] Yates J (at first instance) observed:

   There is a suggestion in the literature that use of a mark in relation to retail services for goods is use equally in relation to the goods themselves. In my view that simply does not follow. Whether it be the case or not is a question of mixed fact and law having regard to the particular circumstances of the case. In dealing with the case of a retailer who sells goods of various manufacturers under the trade marks of those manufacturers, the authors of Shanahan’s Australian Law of Trade Marks and Passing Off (4th Edition) at 63 cite Angoves Pty Ltd v Johnson (1982) 43 ALR 349 as authority for the proposition that, in such a case, the use of a retailer’s mark on invoices, advertisements and shopping bags is a use of the trade mark “in physical or other relation to goods” within the meaning of s 7(4) of the Trade Marks Act. Angoves is not authority for that proposition. Indeed, in that case the question of trade mark use in relation to goods appears to have been conceded at trial: see 353, 361 and 368.

   It is perhaps sufficient for me to say that there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves.

   [11] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 (2010) 275 ALR 526; (2010) 89 IPR 457 at [221].

8. Mr Tacey and Mr Sturzaker both declare that the GOLDAIR Trade Mark has been used in relation to retail and wholesale services but (once again) the evidence to support such assertions is lacking. In addition, previous decisions of the office have found that assertions of use without documentary support are given little weight.[12]

   [12] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8; (1998) 41 IPR 208.

9. The major electrical retailers that do appear to be offering retail and wholesale services are listed in exhibit AT-10 and are the intermediaries through which the Opponent’s goods have been sold and returned (including retailers such as Domayne, Harvey Norman, Kmart and Target). If the Opponent is also offering retail and/or wholesale services to these retailers there is little indication that the GOLDAIR Trade Mark is used for that purpose. The Opponent appears to have sold its goods to retailers for Australian distribution at some point in time, but that is not the same kind of thing as offering the service of bringing together a variety of goods and enabling customers to conveniently view and purchase them.    

10. Mr Tacey declares that the Opponent’s negotiations with retailers related to “the licensing of the respective retail chain as having exclusive licensing to retail distribution of GOLDAIR marked electrical products and services in Australia”.[13] Additional negotiations that took place in 2008 and 2009 with a potential retailer referred to in the Sturzaker declaration are described as offering “Wholesale services in the form of a wholesale supply of and an exclusive licence for the retail of GOLDAIR heater goods.”[14] However, none of the negotiations were finalised, it is unknown how far advanced they were before they broke down or how the GOLDAIR Trade Mark may have been used in relation to retail services (as opposed to use on the electrical products themselves). I find that these discussions do not by themselves amount to use of the trade mark for retail services as they do not rise above the kind of preliminary discussions and negotiations considered insufficient to establish use in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2)[15].

    [13] Tacey declaration, paragraph 12.

    [14] Statutory declaration of Heath Sturzaker, paragraph 10.

    [15] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414; 3 IPR 545 at [23].

11. Taking into consideration the deficiencies I have already highlighted in relation to the supply agreements in exhibit AT-11, there is reference in the BSR Franchising agreement[16] to GOLDAIR products. I note that the agreements in that exhibit do not appear to be in relation to the supply of a retail service on the Opponent’s behalf, but rather the supply of unspecified goods which are more likely to be sold under the brand of a retailer such as Radio Rentals.

    [16] Tacey declaration, exhibit AT-11.

12. Ms Baird further submitted that the evidence of product returns is dealings in the course of trade and an extension of the Opponent’s wholesale and retailing services. The decision in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd[17] indicated that goods relevantly remain “in the course of trade” until they are acquired for consumption and thereby cease to be in the course of trade. Similarly, if the figures represent a return then use in the course of trade in relation to the retailing service has arguably ceased once the products have been bought and sold. While it may be debatable that the return of products under warranty conditions has some association with retail services, they are not the same kind of thing and I am not convinced that use in relation to one service is evidence of use for the other.

    [17] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51; (1967) 116 CLR 254 at [36].

13. The Opponent has not discharged the onus of establishing use of the GOLDAIR Trade Mark in relation to wholesaling and retailing of electrical, electronic and domestic goods and appliances and their parts and accessories. I find that use of the GOLDAIR Trade Mark has not been demonstrated in relation to the services of trade mark registration no. 493421.

14. The Opponent does not supply any evidence that could be described as obstacles to use of the GOLDAIR Trade Mark in the relevant period (under subsection 100(3)(c) of the Act) for any of the goods and services. Accordingly, I will turn now to the registrar’s discretion under subsection 101(3) of the Act.

    Discretion under subsection 101(3):

15. Under this section of the Act the Registrar may decide that a trade mark should not be removed from the Register even if the grounds on which the removal action was made have been established. The Opponent bears the onus of satisfying the Registrar that it is reasonable to exercise the discretion.[18] The circumstances under consideration need not be exceptional and there are no particular circumstances that must (as opposed to ‘may’) be taken into account. For example, the factors considered in Pioneer Computers Australia Pty Limited v Pioneer KK[19] included:

    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 [‘Hermes’] were of assistance in considering the exercise of the discretion:

    o    there had been no abandonment of the trade mark;
    o    the registered proprietors of the mark still had a residual reputation in the mark;
    o    there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
    o    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;
    

    [18] Optical 88 Limited v Optical 88 Pty Ltd (No.2) [2010] FCA 1380(2010) 275 ALR 526; (2010) 89 IPR 457 at [273]

    [19] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 at [169].

    o    the registered proprietors were not aware of the applicant’s sales under the mark.

16. Despite the lack of use in the relevant period on the majority of the goods and services there is little to suggest that the Opponent has abandoned the GOLDAIR Trade Mark. The Applicant alleges that the Opponent ceased sales of the GOLDAIR brand of products in Australia from about 2007 and while the Opponent does not deny the allegation outright, Mr Tacey is particularly critical of the Applicant’s evidence supporting such a conclusion. Mr Tacey then declares[20]:

    The Breville Group of Companies intends to continue the use the (sic) GOLDAIR trademarks for the claimed goods and services in Australia, for distinguishing them from goods and services offered by others.

    [20] Second Tacey declaration, paragraph 17.

17. That said, the Opponent provides no evidence of further business preparations or negotiations or any explanation for the lack of use within the relevant period. There is also very little evidence of advertising or promotions and no evidence of preparations for an imminent launch (or re-launch) of the GOLDAIR products.[21]

    [21] See UCP Gen Pharma AG v Mesoblast Inc [2012] FCA 210 at [36].

18. Ms Baird argued that a residual reputation in a trade mark may occur after the relevant period and that the Opponent had demonstrated such a reputation here. However, the issue of residual reputation was considered at first instance in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[22] where the relevant non-use period was from 7 May 2004 to 8 May 2007 (emphasis added):

    No attempt was made in the present proceedings to establish any reputation or sale of Gallo Winery’s wines in Australia under the trade mark BAREFOOT prior to May 2004. No question of any "residual reputation" thus arises in the present proceedings by reason of earlier sales in Australia.

    [22] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69; [2008] AIPC 92-293 at [203].

19. The ordinary meaning of a ‘residual reputation’ and the way it has been approached in the authorities is that of a reputation in a trade mark remaining after a period of dormancy within the relevant period. Accordingly, the only possible evidence of a residual reputation in the GOLDAIR Trade Mark is a statement made by Andrew Springford in his declaration that Ms Baird sought to rely upon. He said[23]:

    As previously indicated, my Company has a product portfolio of over 400 products and the Goldair products are electrically approved for sale in Australia. My Company has already been approached by major Australian retailers to supply products to the Australian market, as they see an advantage in re-establishing the Goldair brand.

    [23] Statutory declaration of Andrew Springford at paragraph 17.

20. Despite this admission, even if the purported “advantage in re-establishing the Goldair brand” is solely due to the Opponent’s residual reputation in Australia for the GOLDAIR Trade Mark, the Opponent has not supplied any other evidence supporting a reputation. If the Opponent had supplied such evidence, confusion could have been said to be likely to occur in the marketplace as the Applicant is evidently seeking to register an identical GOLDAIR trade mark in Australia. As it is, I find that the Opponent has not accomplished this task.      

21. The Applicant conducted investigations into the marketplace both prior to and subsequent to the filing of the removal application. These investigations included physically perusing major electrical retail stores, conducting searches for registered trade marks on the Australian Trade Marks On-line Search System (ATMOSS), internet searches for the Opponent’s business via the Australian and Securities and Investment Commission (ASIC) and a search of the Choice magazine website. Not only was the Applicant unable to find use of the Opponent’s Trade Mark in the relevant period, but searches after filing the application for removal similarly did not reveal any subsequent use of the GOLDAIR Trade Mark. The general lack of evidence of GOLDAIR sales during and after the relevant period supports the Applicant’s investigations.

22. The discretion under section 101(4) of the Act allows a trade mark to remain on the Register if there has been use in relation to similar goods and services to which the applications relate. This is one factor that may be taken into account in applying the discretion under the Act. If the limited use in relation to electric blankets is similar/closely related to any of the goods/services in classes of the GOLDAIR Trade Marks I find that there is no other factor favouring the exercise of the discretion. Even acknowledging that circumstances for retaining the registrations in their current form need not be exceptional, an unused trade mark should be removed from register unless sufficient reason appears for leaving it there.[24]

    [24] See Re Carl Zeiss Pty Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1 per Kitto J (at 11).

23. While I note that the circumstances considered in the Hermes were not exhaustive, the Opponent has not supplied evidence of any circumstances (exceptional or otherwise) that would make it reasonable for me to exercise the discretion under section 101 of the Act.

    Decision

24. The Opponent has rebutted the allegation of non-use in the relevant period in relation to some of the goods in the registration no. 281418.  I therefore allow Trade Mark no. 281418 to remain on the Register for the class 11 goods of Electric blankets. I direct that the trade mark be removed from the Register after one month from the date of this decision in relation to all the goods specified apart from Electric blankets.

25. The applications for removal in relation to trade mark registration nos. 242019, 434005, 493146 and 493421 have been successful. I direct those trade mark registrations be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registrations will not be removed or restricted until the appeal is withdrawn or discontinued. Otherwise, the registrations will be subject to the decision of the Court.

    Costs

26. As the application for non-use in relation to trade mark registration no. 281418 has been rebutted by the Opponent for some of the goods and the application for removal was for all goods of the registration, I decline to make an award of costs in relation to that matter.

27. The Applicants have been successful in relation to the application for removal of trade mark registrations 242019, 434005, 493146 and 493421. I direct that costs in relation to trade mark registration 242019 be awarded in accordance with Schedule 8 of the Trade Marks Regulations 1995. For the remaining three trade registrations, I direct that costs be awarded in accordance with the practice set out in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd (2001) 53 IPR 591.

Heath Wilson
Hearing Officer

Trade Marks Hearings
28 November 2012