Tony Aldahr and Elham Aldahr v Roadeyes SAS

[2019] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by Tony Aldahr and Elham Aldahr to application under section 92 of the Act by ROADEYES SAS to remove trade mark number 1353634 (9) –ROADEYE- in the name of Tony Aldahr and Elham Aldahr.

Delegate:	Bianca Irgang
Representation:	Opponent: Tony Aldahr represented himself and Elham Aldahr Non-use applicant: Churchill Attorneys
Decision:	2019 ATMO 114 Trade Marks Act 1995 (Cth) –Application under ss 92(4)(a) and (b) - Use established during the relevant period on the specified goods– removal application unsuccessful.

Background

1. This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(a) and (b) filed on 9 March 2018, Roadeyes SAS (‘the non-use applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of the goods in class 9 for which it is registered:

Trade mark:  ROADEYE

Trade mark number:           1353634

Date of registration:             10 April 2010

Goods:Class 9: Video cameras combined with video recorders                 

1. Tony Aldahr and Elham Aldahr (‘the opponents’) filed a Notice of Intention to Oppose Removal 22 May 2018 followed by a Statement of Grounds and Particulars on 20 June 2018.

2. The Statement of Grounds and Particulars filed on 20 June 2018 asserted that the grounds on which the non-use applicant relied was not relevant because the opponents had applied to register the trade mark ROADEYE with IP Australia and had been informed that a trade mark already existed being Trade Mark registration no. 1353634 owned by Mr Wharton. The opponents contacted the previous owner, Mr Wharton, and were informed that he used the Trade Mark on dash cams and vehicle trekker systems. The opponents entered into commercial negotiations with Mr Wharton and he agreed to assign the Trade Mark to them for a financial consideration. The Trade Mark was then assigned to the opponents on 21 September 2017. The opponents claim they have been using the Trade Mark continuously since May 2017 which is before the end of the three year period ending 9 February 2018 (‘the relevant period’).  

3. On 17 July 2018 the non-use applicant filed their Notice of Intention to Defend. The opponent then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The non-use applicant chose not to file any evidence in this matter.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, by way of written submissions on 15 May 2019. Written submissions were prepared by Churchill Attorneys on behalf of the non-use applicant. Mr Tony Aldahr provided written submissions for the opponents.

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Section 92 provides, inter alia, that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods in respect of which the Trade Mark is registered. Subsection 92(4)(b) as it is relevant to this case provides the following:

   [1] Regulations 9.1 to 9.4 are relevant here.

   (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 authorize 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 to non-use application related 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 service at any time before the period of one month ending on the day in 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.

3. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:

   Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

   The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

   [2] [2015] ATMO 10

4. Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:

   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.

   Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:       For registered owner see section 6.

5. In Pioneer Computers Australia Pty Ltd v Pioneer KK[3]  Bennett J made the following observations concerning the Registrar’s discretion:

   [3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354

   [167] The discretion under s 101(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 s 92 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.

   [168] In Kowa Company 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 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).

   […]

   [171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

Evidence

Evidence in Support

• The declaration of Elham and Tony Aldahr (‘Aldahr’ decalration) dated 21 October 2018.

Discussion

1. To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the goods covered by the registration within the period of three years ending one month before the day on which the non-use application was filed. The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponents more likely than not used the Trade Mark during relevant period. This arises by virtue of section 100(1)(c) of the Act.

2. The main arguments advanced by the non-use applicant in this case are that:

• The previous owner of the Trade Mark (Mr Wharton), on the day of the filing the relevant application had no intention in good faith to use or authorize use of the Trade Mark for video cameras. Moreover, Mr Wharton had no intention of assigning the Trade Mark to a body corporate for its use in Australia.

• There is no demonstrated use of the Trade Mark by the previous owner, Mr Wharton.

• The current registered owners of the Trade Mark being Elham and Tony Aldahr did not at any time use the Trade Mark in relation to the goods, in Australia, in the relevant period being 9 February 2015 to 9 February 2018.

1. The Aldahr declaration states that both Tony and Elham Aldahr are the owners and sole directors of Aus-Audio Warehouse Pty Limited which sell a car Dash-Cam product known as “Road Eye”, primarily at the wholesale level. Messers Aldahr aver that the Trade Mark was first registered on 10 April 2010 in the name of Mr Allen Wharton. Aldahr sets out the time line on the opponents’ use of the ROAD EYE trade mark and the assignment of the Trade Mark to them:

   ·   12 May 2017 the packaging and box design branded with ROAD EYE for the opponents’ dash-cam goods was finalized with the supplier (Annexure L accompanying Aldahr); and

   ·   15 June 2017 the first 300 units of the opponents’ ROADEYE goods arrived at the opponents’ warehouse for distribution (Annexure M accompanying Aldahr); and

   ·   15 June 2017 the opponents’ offered ROADEYE branded goods for sale and made the first sale (Annexure M accompanying Aldahr); and

   ·   June – July the opponents engaged in a radio advertising campaign with Macquarie Media Limited to advertise the “…ROAD EYE dashcam from Aus-Audio…” (Annexure P accompanying Aldahr); and

   ·   9 August 2017, Sloan Law contacted the opponents on behalf of Mr Allen Wharton (‘the Transferor’) informing them that the name of their product was similar to a dash-cam product sold by the Transferor who was also using the registered domain name ww.roadeye.com.au (Annexure H accompanying Aldahr); and

   ·   14 August 2017 the opponents entered into a Deed of Assignment with the Transferor to have the Trade Mark and domain name legally assigned to them in order to ensure that they were using the Trade Mark in good conscience and not infringing on any trade mark rights (Annexure I accompanying Aldahr); and

   ·   18 September 2017 the assignment was recorded and advertised by IP Australia.

   ·   The opponent continued to make sales of its dash-cam goods under the Trade Mark (Annexure O accompanying Aldahr).

2. Annexure O accompanying Aldahr demonstrates a number of sales of ROAD EYE branded dash-cams by the opponents’ wholly owned private Australian company ‘Aus-Audio Warehouse Pty Ltd’ over the period from 15 June 2017 until 9 February 2018 which is during the relevant period.   

3. The non-use applicant has argued that none of the evidence put forward by the opponents is sufficient to overcome the removal actions because there is no evidence of use or intended use put forward by the original owner Mr Allen Wharton, and the use that is demonstrated is by a company Aus-Audio Warehouse Pty Ltd and not by the opponents.

4. The non-use applicant faces a considerable challenge in establishing that the opponents’ use of the Trade Mark on the relevant goods during the relevant period is somehow not applicable because of actions of the previous owner or because Aus-Audio Warehouse Pty Ltd is not the registered owner of the Trade Mark.

5. The non-use applicant asserts that Aus-Audio Warehouse Pty Ltd is not the owner of the Trade Mark and there is nothing in the evidence to support that the opponents exercise any control over how the Trade Mark is used by Aus-Audio Warehouse Pty Ltd. The non-use applicant points out that Annexure I of the Aldahr declaration shows two purported assignment deeds being:

   ·   14 August 2017 assigning the Trade Mark from Allen Wharton to Tony and Elham Aldahr.

6. The non-use applicant argues that the deed of 18 August 2017 should be ignored because this is not directed to the Trade Mark and the Transferor is not Mr Wharton. Additionally, the non-use applicant asserts that the deed of 14 August 2017 is not any evidence of any assignment of the Trade Mark to a body corporate as the transferees are natural persons, viz Tony and Elham Aldahr. The non-use applicant argues that for the purpose of subsection 92(4)(a)(iii) this is proof that Mr Wharton never had any intention on the day of filing his trade mark of assigning the application to a body corporate and as such subsection 92(4)(a) has not been rebutted.

7. The non-use applicant’s submissions are interesting. I say now, the assignment of the Trade Mark has taken place. This is a matter of public record. All the rights and goodwill associated with the Trade Mark have now been transferred from Mr Wharton to the new owners, Tony and Elham Aldahr – who obtained ownership of the Trade Mark during the relevant period and before the removal application was lodged by the non-use applicant.

8. Mr Wharton and his earlier behavior in regards to the Trade Mark are not relevant for the purposes of this opposition. This is because the existence of use of the Trade Mark is sufficient to overcome an section 92(4)(a) issues. I am also unpersuaded by the non-use applicant’s assertion that the use of the Trade Mark by Aus-Audio Warehouse Pty Ltd is not use by the opponents under section 8 of the Act. The opponents have averred they are the owners and sole directors of the small business Aus-Audio Warehouse Pty Ltd. They further declare that they exercise complete control over the way in which Aus-Audio Warehouse Pty Ltd uses the Trade Mark to sell the dashcam products under it. It is very clear that the opponents have always been engaged as the primary contacts for everything to do with the Trade Mark. The opponents’ evidence demonstrates that Mr Tony Aldahr and Mr Elmer Aldahr went to considerable effort in order to secure the Trade Mark in order to use it via their business Aus-Audio Warehouse Pty Ltd. Advertising of the ROADEYE dash cam took place during the relevant period over radio and sales of goods bearing the Trade Mark took place.

9. The examples within the opponents’ evidence provide sufficient information to demonstrate genuine commercial use of the Trade Mark in relation to the relevant goods within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149. I am satisfied the opponents have established use of the Trade Mark on video cameras combined with video recorders in class 9 within the relevant period.

Decision

1. It is my decision that, the opponents having shown use of the Trade Mark on the goods its specification in class 9 encompasses, the Trade Mark remain on the Register for all the goods claimed in class 9. The application for removal is therefore unsuccessful.  

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the non-use applicant as allowed by Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
31 July 2019