TRAFALGAR GROUP PTY LTD vs Boss Fire & Safety Pty Ltd
[2024] ATMO 122
•2 July 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by TRAFALGAR GROUP PTY LTD to application under section 92 of the Trade Marks Act 1995 (Cth) by Boss Fire & Safety Pty Ltd to remove trade mark number 1313971 (classes 1, 6, 17 & 19) – FYRE (figurative) - in the name of TRAFALGAR GROUP PTY LTD
Delegate: | Timothy Brown |
Representation: | Opponent: Gilbert Tsang of counsel, instructed by Shelley Einfeld IP Applicant: Frances St John of counsel, instructed by DLA Piper |
Decision: | 2024 ATMO 122 Trade Marks Act 1995 (Cth) – application under section 92(4)(b) - opposition to removal under section 96 – no use, or obstacle to use, of the trade mark during the relevant period – Registrar’s discretion not exercised – trade mark registration removed |
Background
This decision concerns an application made on 22 February 2019 by Boss Fire & Safety Pty Ltd (‘Removal Applicant’) under section 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] seeking removal of the trade mark detailed below from the Register of Trade Marks.
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
| Trade Mark Registration Number | 1313971 |
| Trade Mark | (‘Trade Mark’) |
| Filing Date | 7 August 2009 |
| Owner | TRAFALGAR GROUP PTY LTD[2] (‘Removal Opponent’) |
| Goods | See Annexure A (‘Registered Goods’) |
[2] The name of the owner was changed from FIRE CONTAINMENT PTY LTD to TRAFALGAR GROUP PTY LTD on 25 May 2020.
The application for removal of the Trade Mark is made in respect to all of the Registered Goods.
Fire Containment Pty Ltd filed a Notice of Intention to Oppose removal of the Trade Mark on 23 April 2019 and a Statement of Grounds and Particulars (‘SGP’) on 23 May 2019. The Removal Applicant filed a Notice of Intention to Defend on 8 July 2019.
Fire Containment Pty Ltd filed Evidence in Support on 11 October 2019. The Removal Applicant filed Evidence in Answer on 14 January 2020. Fire Containment Pty Ltd then filed Evidence in Reply on 12 March 2020.
On 25 March 2020, the Removal Applicant requested to be heard. However, on 28 August 2020, proceedings were suspended pursuant to reg 9.21 due to the parties’ involvement in proceedings before the Federal Court of Australia. This suspension ended on 25 January 2023.
I note that during the suspension period the name of the owner was changed from Fire Containment Pty Ltd to the Removal Opponent on 25 May 2020.
Once the suspension ended, the matter was set down for a hearing and heard before me, a delegate of the Registrar of Trade Marks (‘Registrar’), on 2 April 2024. The Removal Opponent was represented by Gilbert Tsang of Counsel, accompanied by Shelley Einfeld of Shelley Einfeld IP. The Removal Applicant was represented by Frances St John of Counsel with instructions from DLA Piper.
Preliminary Matters
On 20 March 2020, the Removal Applicant requested that the Removal Opponent’s Evidence in Reply be treated as Evidence in Support filed out of time. The Removal Applicant submitted that aspects of the Evidence in Reply were not filed in response to the Evidence in Answer and merely constituted further evidence in support. During the hearing the Removal Opponent conceded to the Evidence in Reply being disregarded. Accordingly, I have not considered the Removal Opponent’s Evidence in Reply.
On 27 March 2024, the Removal Opponent requested the Registrar to issue a notice pursuant to s 202 (‘Notice to Produce’) requiring the Removal Applicant to produce the following documents: adverse Examination Reports dated 1 March 2016 and 21 December 2023 in relation to trade mark application number 1737702. The Removal Opponent requested these documents to test the submission made by the Removal Applicant concerning attempts to registrar trade marks incorporating the prefix ‘fyre-’, which it alleged had been thwarted by the Trade Mark.
On 28 March 2024, I advised the Removal Opponent that the Registrar would not comply with the request. Section 202 is a discretionary provision, and the Registrar will not issue a notice unless satisfied that it is reasonable to do so. In this matter, the Notice to Produce afforded the Removal Applicant less than 2 days for the documents to be produced. This was not a reasonable time frame for a party to produce documents. Furthermore, I was not satisfied that there was a compelling reason to issue the Notice to Produce at such a late stage in the proceedings.
On 2 April 2024, the Removal Opponent, having acquired the adverse examination report dated 21 December 2023 in relation to trade mark application number 1737702, requested that it be taken into account pursuant to reg 21.15(4). Regulation 21.15(4) provides that ‘the Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar believes to be appropriate’.
The party seeking admission of new material generally needs to make a compelling case for its conclusion. In this instance, the Removal Opponent submitted in the Notice to Produce that it intended to use the examination report to test the Removal Applicant’s submission regarding the Trade Mark acting as a barrier to the registration of other trade marks. I do not find this a compelling reason to admit the document. As I explained in my initial response to the Notice to Produce, if the Removal Opponent was of the view that the Removal Applicant’s submissions were unsubstantiated, it was welcome to make submissions in reply. Furthermore, I am not satisfied that the examination report is of sufficient probative value to warrant inclusion in this matter at such a late stage. As such, this decision will only have regard to the evidence that has been properly filed in this matter.
Evidence
The following evidence was filed:
| Evidence in Support |
| Declaration of John Rakic, Managing Director of Fire Containment Pty Ltd, dated 11 October 2019 (‘Rakic’) with Exhibits JR-1 to JR-24. |
| Evidence in Answer |
| Declaration of Mark Prior, Managing Director of the Removal Applicant, dated 9 January 2020 (‘Prior’) with Exhibits MP-1 to MP-95. Exhibited to Prior are a number of affidavits, including the following affidavits filed in Federal Court of Australia proceedings between the two parties: · Affidavit of Mark Prior dated 30 August 2019 (‘Prior 2’) · Affidavit of Mark Prior dated 11 October 2019. |
| Evidence in Reply |
| Declaration of John Rakic dated 12 March 2020 with Exhibits JR-25 to JR-28.[3] |
[3] As indicated earlier in this decision, I have not had regard to the Opponent’s Evidence in Reply.
Removal Opponent
Fire Containment Pty Ltd (‘Fyre Containment’) was incorporated in May 2004 and deals primarily in passive fire protection products.[4] Passive fire protection products are inert components that typically form part of a buildings structure, as opposed to active components, such as smoke alarms or extinguishers.
[4] Rakic [1.12].
Rakic declares that the ‘Fyre’ brand name has been in continuous use in the passive fire protection industry since the 1980s. In May 2009, Fire Containment purchased the business and assets of Trafalgar Building Products Pty Limited (‘Trafalgar’), including Trafalgar’s intellectual property assets. Annexed to Rakic are excerpts from the sale agreement.[5] Trafalgar’s intellectual property assets included various unregistered trade marks incorporating the element ‘Fyre’, such as ‘Fyreflex’, ‘Fyreplug’, ‘Fyreclad’, ‘Fyrewall’, ‘Fyrejoint’ and ‘Fyreset’.[6] Mr Rakic states that he ‘identified very early that the mark ‘Fyre’ and the flame logo were integral to all of the trade marks’ and on 7 August 2009 applied to register the Trade Mark.[7] As stated earlier, Fire Containment has since changed its name to the Removal Opponent. At present the Removal Opponent is also the owner of the following trade marks:
[5] Ibid Exhibit JR-3.
[6] Ibid [3.3].
[7] Ibid [3.5]-[3.6].
Trade Mark Number
Trade Mark
1302350
1302351
1302352
1313963
Rakic declares that the Trade Mark has been used continuously over the past decade and highlights the following examples:
A product catalogue published in 2014 (‘Product Catalogue’),[8] which Rakic states has not been superseded and remains in circulation during the Relevant Period.[9] The Product Catalogue features trade marks incorporating ‘Fyre’ in conjunction with other words, such as ‘plug’, ‘clamp’, ‘flex’, ‘choke’, ‘set’ and ‘safe’.
[8] Ibid Exhibit JR-4.
[9] Ibid [4.4].
Advertisements from a journal entitled ‘Ecolibrium’ dated November 2018 featuring the trade marks ‘Fyrebox’ and ‘Fyrepex’.[10] Rakic also includes additional advertisements from after the Relevant Period.[11]
Email correspondence between the staff of Fyre Containment and a customer dated 15 September 2016 that references the trade mark ‘Fyre Pillow’.[12]
[10] Ibid Exhibit JR-5.
[11] Ibid Exhibits JR-7.
[12] Ibid Exhibit JR-9.
The above examples feature use of the following trade marks (collectively, ‘Fyre Marks’):
Rakic also exhibits screenshots from the Removal Opponent’s website that refer to the ‘ family of products’, Trafalgar’s ‘Fyre’ brand, and feature use of the Fyre Marks.[13] I note that these screenshots are not dated.
[13] Ibid Exhibit JR-11-JR-17.
Removal Applicant
The Removal Applicant is also a provider of passive fire protection products. Prior outlines the dispute history between the parties, which has included patent infringement proceedings and an opposition in relation to trade mark application 1736748.
Exhibited to Prior are examples of other traders utilising the prefix ‘fyre-’ in relation to passive fire protection products, including ‘FYREGUARD’,[14] ‘FYREPRO’,[15] ‘FYRESTRIP’,[16] ‘FYRETHANE’,[17] ‘FYREHALT’,[18] and ‘FYRESLIDE’.[19]
[14] Prior Exhibit MP-86.
[15] Ibid Exhibit MP-87.
[16] Ibid Exhibit-MP-88.
[17] Ibid Exhibit-MP-89.
[18] Ibid Exhibit-MP-90.
[19] Ibid Exhibit MP-91.
Prior 2 outlines the Removal Applicant’s adoption and use of the trade marks FIREBOX and FYREBOX (‘Removal Applicant’s Marks’). Also included in Prior 2 are examples of use of the Removal Applicant’s Marks in relation to fire resistant cable transits.
Provisions, Onus and Relevant Period
The Removal Applicant filed for removal under section 92(4)(b), which 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.
The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time within the three-year period ending on the 22 January 2019 (‘Relevant Period’).
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 for registration of the Trade Mark.[20] I note that five years since filing the application for registration of the Trade Mark have passed.
[20] Section 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) 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.
The Removal Opponent bears the onus of rebutting the allegation made under section 92(4)(b) of the Act.[21] The standard of proof is on the balance of probabilities.[22] The Removal Opponent may rebut the allegation by establishing that:
The Trade Mark was used in good faith by its registered owner in relation to the Registered Goods during the Relevant Period;[23] or
The Trade Mark was not used because of circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.[24]
Discussion and Reasons
[21] Trade Marks Act 1995 (Cth) section 100(1)(c).
[22] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[23] Ibid s100(3)(a).
[24] Ibid s100(3)(c).
Use of the Trade Mark during the Relevant Period
The first issue to be determined is whether there has been use of the Trade Mark by the registered owner, or an authorised user, in good faith in relation to the Registered Goods during the Relevant Period.
The ‘use’ required is ‘use as a trade mark’. This is use of the sign as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between the goods and the person who applies the trade mark to the goods.[25] Recently, in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the High Court stated:
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.[26]
[25] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[26] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
The Removal Opponent relies primarily on three examples alleged use of the Trade Mark:
Use of the some of the Fyre Marks on the Removal Opponent’s website from 2017.
Use of the Trade Mark in the Product Catalogue published in 2014; and
Use of the Trade Mark in product packaging.
The Removal Opponent’s Website
Prior 2 includes an additional declaration made by Mr Prior on 7 November 2017 (‘Prior 3’). Exhibit MP-27 of that declaration includes several of the Fyre Marks, namely the ‘Fyreset’, ‘Fyreclamp’ and Fyreflex’ marks.[27] The screenshot featuring the ‘Fyreclamp’ mark is dated 20 September 2017.
[27] Prior 3 Exhibit MP-27.
Rakic also includes screenshots from the Removal Opponent’s website that feature use of the Trade Mark. The examples in Rakic show use of the Trade Mark without additional elements in relation to various fire protection goods.[28] However, the screenshots of the Removal Opponent’s website in Rakic are undated, and I am not satisfied that these screenshots show use of the Trade Mark within the Relevant Period.
Product Catalogue
[28] Rakic Exhibits JR-11, JR-14.
Rakic includes a copy of the Removal Opponent’s Product Catalogue featuring use of the Fyre Marks. Each of the Fyre Marks are used in relation to specific goods that I have outlined below:
| Trade Mark | Goods |
| Intumescent boxes, clamps and brackets | |
| Fire resistant pillows | |
| Fire resistant sealant | |
| Fire resistant mortar | |
| ‘Fire collars’[29]and ‘cast-in’ collars for protections against spread of fire and smoke | |
| Coated fibre batts |
[29] Ibid Exhibit JR-4.
I note the publication date of the product catalogue is 2014. According to Rakic, the product catalogue ‘has not been superseded and remains in circulation’[30]. Also included in Rakic are advertisements published in the journal Ecolibrium dated November 2018 which feature the following trade marks:
[30] Rakic 4.4.
| Wall or slab mounted fire stopping device |
| Intumescent sealant |
Although the product catalogue does not feature the Trade Mark as a separate trade mark, the Removal Opponent emphasises the overall context of the catalogue and the effect of the repeated use of the prefix ‘Fyre-’. The Removal Opponent submits that the repeated use of the Trade Mark in this fashion indicates to consumers that the Trade Mark is being used by the Removal Opponent as a badge of origin.
Product Packaging
Rakic includes photographs of packaging featuring the Removal Opponent’s ‘Fyreset’, ‘Fyreplug’ and ‘Fyreflex’ marks.[31] Examples of these photos are reproduced below:
[31] Ibid Exhibit JR-10.
Mr Rakic indicates that the above examples exemplify the product packaging used by the Removal Opponent during the Relevant Period.[32] The photographs are not dated and there is little context provided explaining their use. However, I note that the ‘Fyreset’ and ‘Fyreflex’ marks are featured in the Removal Opponent’s ‘Fire Stopping Guide’, which Rakic states was included in the Ecolibrium journal referenced earlier.[33] Lastly, Rakic states that examples of the Trade Mark are ‘displayed in many training presentations to our customers during the Relevant Period’, but the Removal Opponent has provided no examples, dated or otherwise, of these presentations.
[32] Ibid [4.10].
[33] Ibid [4.6].
The primary issue between the parties is whether use of the Fyre Marks can be considered use of the Trade Mark. Section 7(1) provides:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark’.
Whether a trade mark has been used with additions or alterations that substantially affect the identity of the trade mark has been interpreted to equate to an assessment of whether the alleged use of the trade mark is substantially identical to the registered trade mark.[34] The test for assessing substantial identity involves a side by side comparison between the trade marks, and a determination of whether, having regard to their similarities and differences, a total impression of similarity emerges.[35]
[34] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [256] (Yates J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).
[35] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
The Removal Applicant contends that each of the Fyre Marks operate as discrete trade marks, and do not demonstrate the use of the Trade Mark. Conversely, the Removal Opponent contends that the Trade Mark would be viewed as a separate trade mark alongside the Fyre Marks because for the following factors:
Use of the colour orange, compared to the suffix which is presented in black.
Letters ‘Y’, ‘R’ and ‘E’ in the Trade Mark are represented in a different font sizes separating the word ‘FYRE’ from the other words in the composite trade marks.
The misspelling ‘FYRE’ contrasts with the ordinary spelling of the other words in the Fyre Marks.
Use of the partial underline extending from the letter ‘Y’ to further separate ‘FYRE’ from the rest of the product names.
The ‘FYRE’ element is consistently presented in lower case letters while the suffixes are presented in capitals.
The flame device represented in superscript next to ‘FYRE’.
It is possible for a sign to operate as trade mark even when used alongside other trade marks.[36] The Removal Opponent noted that the Full Court in Woolworths Ltd v Bp plc (No 2)[37]stated:
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…[38]
[36] Self Care (n 26) [25].
[37] [2006] FCAFC 132 (Heerey, Allsop and Young JJ).
[38] Ibid [77].
The above passage was referenced recently by the Full Court in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [39](‘RB Hygiene’) where the Full Court went on to state:
it is necessary to consider whether a component of a trade mark, objectively assessed from the perspective of the notional consumer, would be regarded as a separate badge of origin to the composite whole. An instance may be where a word operates separately as a mark, notwithstanding that it is within a composite mark. Disentangling a separate image or design from a composite whole may be more difficult.[40]
[39] [2024] FCAFC 10, [115] (Nicholas, Burley and Hespe JJ).
[40] Ibid [116].
The Trade Mark is comprised of the word ‘FYRE’ and a stylised flame device. These elements are contained in the Fyre Marks alongside the words, ‘CLAMP’, ‘CHOKE’, ‘PLUG’, ‘SET’, ‘SAFE’, ‘FLEX’, ‘PEX’ and ‘BOX’, respectively. These additional words are consistently depicted in capitals with an underline that emphasises the additional word elements. In my view, the flame device, the word ‘FYRE’ and the additional words in the Fyre Marks are the essential features of the Fyre Marks. I acknowledge that the additional words in the Fyre Marks have some degree of descriptive relevance in relation to the goods to which the Removal Opponent used the Fyre Marks. In some of the Fyre Marks, the additional word is more descriptive than others. For example, the word ‘CLAMP’ is descriptive in the context of intumescent fire clamps. However, this is also the case with the ‘FYRE’ element, which is an obvious phonetic variation of ‘fire’, a word with direct descriptive meaning in relation to fire prevention products. Similarly, in the case of the ‘Fyresafe’ mark, I note that the two words also convey their own separate meaning when considered together. In this regard, the Removal Applicant submits that the use of underlines under both the ‘FYRE’ and additional word elements serves to emphasise the connection between the respective elements of the trade marks. I find the Removal Applicant’s submission persuasive. The Fyre Marks, considered in their entirety, possess stylistic features consistent between the ‘FYRE’ element and the additional words in the Fyre Marks. These features are the font and the use of the underline. I note the use of superscript in the Fyre Marks. However, in my view, a notional consumer would regard the composite whole of the Fyre Marks as badges of origin and would not regard the prefix of the marks as a separate trade mark. For these reasons, I am satisfied, in the context of various fire prevention goods, use of the Trade Mark in conjunction with the words ‘CLAMP’, ‘CHOKE’, ‘PLUG’, ‘SET’, ‘SAFE’, ‘BOX’, and ‘FLEX’, as exemplified by the Fyre Marks, substantially affects the identity of the Trade Mark.
I note that in the context of the Product Catalogue, in particular, that there is a clear repetition of the ‘FYRE-’ prefix and use of ‘FYRE’ in conjunction with other word elements. However, the Product Catalogue also features plain text variants of rendered in the following form: ‘Fyreplug’, ‘Fyrechoke’ ‘Fyreflex’, ‘Fyreset’, ‘Fyresafe’. In my view, these variations only serve to further reinforce to consumers that it is the combination of elements that forms the identity of the Fyre Marks rather than the prefix ‘FYRE’.
For these reasons I am not satisfied that the Removal Opponent has used the Trade Mark within the Relevant Period. As the Removal Opponent has not established use of the Trade Mark or raised any circumstances that were an obstacle to the use of the Trade Mark, I will now consider whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered.
Discretion
The Removal Opponent submits that to extent the Trade Mark has not been used in respect of any particular goods, the Registrar ought to exercise its discretion to allow the Trade Mark to remain registered in respect of those goods.
Section 101 relevantly provides:
(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;
The Removal Opponent bears the onus of satisfying me that that the discretion under s 101(3) ought to be exercised.[41]
[41] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised the considerations relevant to the exercise of Registrar’s discretion:
In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).
In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether 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; and whether the registered proprietors were aware of the applicants’ sales under the mark.[42]
[42] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [467]-[ 468] (Dodds-Streeton J).
The Removal Opponent submits that the discretion not to remove the Trade Mark ought to be applied because the extensive dispute history between the parties indicates that the Removal Applicant has a genuine interest in using the Trade Mark. The Removal Opponent contends this would be adverse to the interests of the public, harm the commercial interests of the Removal Opponent, and potentially confuse customers of the Removal Opponent.
The Removal Applicant submits that numerous other traders, including the Removal Applicant, have a legitimate desire to use and register trade marks with ‘fyre-’ as a prefix. This is because it is an obvious misspelling of ‘fire’ and would be a natural choice for traders to utilise in relation to fire products. In support, Prior includes many examples of traders utilising ‘FYRE’ as a prefix in their trade marks.[43]
[43] See: para [19]; Prior MP 87-MP-91.
I am not convinced that it is reasonable to exercise the Registrar’s discretion in these circumstances. I accept that the parties have a dispute history involving marks incorporating the prefix ‘fyre-’.[44] I also recognise the Applicant’s interest in using its own trade mark, ‘FYREBOX’. However, it does not follow that the Applicant would seek to use the Trade Mark in a manner that may cause deception or confusion in the minds of consumers. All the evidence demonstrates is that the Applicant owns a trade mark that also incorporates the prefix ‘FYRE-’. Any further assertions are not substantiated.
[44] See: Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2022] FCA 464 (Yates J); Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2023] FCAFC 202 (Nicholas, Burley and Rofe JJ).
In my view the public interest is not served by allowing the Trade Mark to remain registered. Despite the length of time the Trade Mark has been registered, there is no dated evidence of use of the Trade Mark. Similarly, despite the assertions in Rakic that ‘FYRE’ has been used as a trade mark since the 1980s there is no dated examples of trade marks containing ‘FYRE’ used by the Removal Opponent, or a predecessor in title, before 2014. In regard to the Removal Opponent’s own interests, I note that the Removal Opponent is extremely consistent in its use of the Trade Mark in conjunction with other elements and has registered trade marks for the majority of the Fyre Marks.[45] In my view, removal of the Trade Mark will not preclude the Removal Opponent from continuing to use its other registered trade marks, or file applications to register trade marks in the same form as the Fyre Marks in the future.
[45] See: para [14].
For completeness, I note that the Removal Opponent has made no submissions regarding any residual reputation in the Trade Mark, nor does the evidence demonstrate that the Trade Mark enjoyed a reputation in relation to the Registered Goods.
Considering all of the above, I am not satisfied that it is reasonable to exercise the Registrar’s discretion.
Decision
The Removal Opponent has not established its opposition to the removal of the Trade Mark. Accordingly, I direct that trade mark registration 1313971 be removed from the Register one month from the date of this decision.
Should the Registrar be served with a notice of appeal before the removal of the Trade Mark, I direct that the removal of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court’s orders or direction.
Costs
Both parties sought costs. As the Removal Opponent was not successful in their opposition to the application for removal, I award costs against the Removal Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
2 July 2024
Annexure A – Registered Goods
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; chemical preparations for use in the control, prevention and extinguishing of fires, fire resistant chemicals and compositions
Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; access panels being doors of metal including fire resistant doors of metal; fire resistant panels made of metal
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; fire resistant and fire retardant materials for building purposes including ceiling and partitions; fire proof seals
Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; glass including fire retarding glass; access panel being doors not of metal including fire doors not of metal; insulating materials including insulating boards (not of metal) for structural steel protection; non-metallic buildings having insulating properties including insulating materials sprayed onto structural steel to provide fire protection; insulating boards and sprays including fire resistant insulating boards and sprays for the protection of metal ducts; non-metallic building materials for fire protection including for the prevention of the spread of fire in buildings, non-metallic fire protection materials for use in building, for electrical cables, for electrical and pipe ducts; fire retardant bags to lock openings in walls and floor slabs; fire resistant cement; sealants having fire resistant or fire retardant properties including acrylic sealants and polyurethane sealants with fire retardant properties
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