Trend Windows & Doors Pty Ltd v Saint-Gobain Glass France

TRADE MARKS ACT 1995

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

Re:Oppositions by Trend Windows & Doors Pty Ltd to applications under section 92 of the Act by Saint-Gobain Glass France to remove trade mark numbers 776389(6)(19); QUANTUM; 825544(6)(19) QUANTUM (logo); 837210(6)(19) QUANTUM TWIN – registered in the name of Trend Windows & Doors Pty Ltd

Delegate:

Iain Thompson

Representation:

Removal Opponent: Gerard Skelly of Shelston IP

Removal Applicant: Nigel Robb of Baldwins

Decision:

2013 ATMO 21

s92 – nature of goods – registrations 776387 and 825544 in use by owner during relevant period in relation to metallic windows; obstacle to use of registrations 828844 and 837210 in relation to wooden windows; s101 - exercise of Registrar’s discretion in relation to registrations 828844 and 837210 - opposition to removal established in relation to registrations 828844 and 837210. Opposition not established in relation to registration 837210.

Background

1. In these proceedings under paragraphs 92(4)(a) and (b) of the Trade Marks Act 1995 (‘the Act’) Saint-Gobain Glass France (‘the Removal Applicant’) filed applications on 28 September 2011 to have the following registrations owned by Trend Windows & Doors Pty Ltd removed from the Register of Trade Marks:

Registration No: 776389

Priority Date: 22 October 1998

Goods:Class 6: Metallic windows and doors, including aluminium windows and doors
Class 19: Non-metallic windows and doors including timber and PVC windows and windows and doors

Trade Mark: QUANTUM

Registration No: 825544

Priority Date: 29 February 2000

Goods:Class 6: Metallic windows and doors, including aluminium windows and doors and parts and fittings for the aforesaid
Class 19: Non-metallic windows and doors including timber and PVC windows and windows and doors and parts and fittings for the aforesaid

Trade Mark:

Registration No: 837210

Priority Date: 30 May 2000

Goods:Class 6: Metallic windows and doors, including aluminium windows and doors
Class 19: Non-metallic windows and doors including timber and PVC windows and windows and doors

Trade Mark: QUANTUM TWIN

2. I will refer to the above registrations and trade marks collectively as the impugned registrations and the impugned trade marks.

3. Trend Windows & Doors Pty Ltd (‘the Removal Opponent’) has filed Notices of Opposition in terms of section 96 to the removal applications on the grounds that:

i.          On the day on which the applications for registration were filed, the applicant had an intention in good faith to use the trade marks and/or to authorise use of the trade marks in relation to the goods to which the opposed removal applications relate;
ii.         The trade marks, with or without additions or alterations not substantially affecting its identity, were used in good faith within the relevant period, on goods to which the removal applications relate by and/or under the control of the registered owner;
iii.        The trade marks, with or without additions or alterations not substantially affecting their identities were used in good faith within the relevant period, by the assignee, on goods to which the applications relate, and that use was in accordance with the terms of the assignment;
iv.       During part or all of the relevant period, the trade marks were not used by its registered owner in relation to certain goods because there existed circumstances that were an obstacle to the use of the trade marks during that period;
v.        The applications for removal have not been made in accordance with the regulations;
vi.       The Registrar should exercise his discretion to decide that the trade marks should not be removed from the Register.

4. The Removal Opponent has served and filed evidence in support of its oppositions to the removal of the impugned trade marks from the register – the Removal Applicant has not served and filed evidence in answer.

5. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties in Sydney on 12 March 2012. Mr Gerard Skelly of Shelston IP represented the Removal Opponent and Mr Nigel Robb of Baldwins represented the Removal Applicant.

Onus and relevant dates

6. Subsection 100(1) of the Act provides:

100Burden 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)any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or
(b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
(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.
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 file, month and registered owner see section 6.

7. The relevant dates for the purposes of paragraph 92(4)(a) are the filing dates of the impugned registrations. The relevant period for the purposes of paragraph 92(4)(b) is the three year period ending on 28 August 2011.

Evidence

8. The evidence in support of the opposition to removal comprises statutory declarations by:

Michael Stratton on 30 April 2012, together with Exhibits MS-1 to MS-24
Gerard James Skelly on 9 May 2012, together with Exhibits GJS¬1 to GJS-12

9. Mr Skelly’s declaration exhibits two further declarations being by:

Ian Frame on 30 December 2011 together with Exhibits IF-1 to IF-5, the original of which was filed in the related opposition by Trend Windows & Doors Pty Ltd to registration of Australian Trade Mark Application No. 1349893 for the trade mark QUANTUM GLASS in the name of Saint-Gobain Glass France.
Tracey Gramlick on 8 March 2012 together with Exhibits TG-1 to TG-5, the original of which was filed in the related opposition by Trend Windows & Doors Pty Ltd to registration of Australian Trade Mark Application No. 1349893 for the trade mark QUANTUM GLASS in the name of Saint-Gobain Glass France.

As I have mentioned, the Removal Applicant has not served and filed evidence in answer.
In his declaration in support of the opposition to removal Mr Stratton, a director of the Removal Opponent, explains:
Trend was incorporated in August 1963 under the name Brisbane Water Glass Pty Ltd. In 1994 James Hardie acquired Trend as part of its Building Products Group and further expanded the business with the acquisition in or about 1995 of the Australian Crestlite window and door brand and other assets of Crestlite Aluminium Pty Ltd and the FRAMEX window and door brand and other assets from Framex Sales Pty Limited. Significant investment in the development of the revolutionary new Quantum window and door product range commenced in the late 1990’s. In late 2001, after a number of name changes, Trend was re-named Trend Windows & Doors Pty Limited in recognition of the existing well known window business and developing door business. Since 2001, Trend has been a privately owned Australian manufacturing company, producing aluminium, timber and uPVC windows and doors under the principal brand names TREND, TREND WINDOWS & DOORS, QUANTUM, XTREME, TREND ThermAL, SOUNDMIZER, and FRAMEX.
Trend is now a leading Australian supplier of aluminium and timber windows and doors, with an annual turnover exceeding $110 million. I believe its timber products currently represent approximately 11% of Trend’s business. Trend provides goods to over 1700 account customers and approx 3815 non-account customers through eleven (11) production facilities and nineteen (19) showrooms located throughout Australia, as well as from two (2) overseas showrooms.
Concerning use of the impugned trade marks Mr Stratton says:
I believe Trend has continuously used the QUANTUM and Quantum Logo trade marks (the “Quantum Trade Marks) subject of the Registrations in Australia from at least as early as 1999 to date in relation to a range of windows and doors and their parts and fittings (the “Quantum Goods”). I further believe the QUANTUM TWIN trade mark was continuously used by Trend from approximately 2000 through 2005 in relation to double glazed variants of the Quantum Goods. I further believe Trend’s use of TWIN to identify its double glazed products was transitioned into its Thermashield range of glazing options and energy rated products from 2006, but Trend has never intended to abandon the QUANTUM TWIN trade mark.
This continuing use of the QUANTUM and QUANTUM Logo trade marks by the Removal Opponent has been on aluminium framed glass windows. However, Mr Stratton states in relation to wooden framed windows and doors:
Trend sells a range of fire rated window and door products. These products are sold under the Xtreme Logo trade mark and are BAL-40 and Flame Zone (FZ) fire rated windows and doors. These Xtreme fire rated products form part of the range of Quantum Goods offered for sale under the QUANTUM Trade Marks. These fire rated products have typically, including during the relevant period, been manufactured with aluminium frames. However, customers have also been seeking timber framed windows and doors suitable for use in bushfire prone areas.
Windows and doors to be used in the construction of buildings must comply with Australian Standard AS-3959-2009.
Trend has, during the Relevant Period, been in the process of developing windows and doors with frames made from rosewood timber with the intention of selling these products as part of its Quantum Xtreme range of fire rated products.
Now shown to me and marked Confidential Exhibit MS-23 are redacted extracts from the Minutes of Product Development Meetings of Trend held from 11 February 2010 to 17 February 2012 referring to actions taken to develop the Xtreme timber products. I believe these products are nearing completion for full scale testing by the CSIRO at North Ryde in Sydney.
Although the Removal Applicant has not served and filed evidence in answer, I note that it has filed the following applications to register trade marks:

Application No: 1349893

IR No: 1030089

Priority Date: 28 December 2009

Status: Opposed

Goods/Services: Class 19: Building materials excluding materials for windows and doors, not of metal, namely building glass; printed glass for building; glass for buildings, fitting out, exterior and interior decoration (building materials excluding materials for windows and doors, not of metal); all the aforesaid goods not being of quartz, gypsum, wood or pvc
Class 21: Glassware not included in other classes, namely unworked or semiworked glass (except building glass); printed glass (not for building); opaque and translucent enamelled glass (not for building); lacquered glass (not for building); serigraphed glass (not for building); painted glass (not for building); unworked and semi-worked glass also in the form of sheets and plates used in the manufacture of sanitary installations, shower cubicles, shower doors, shower partitions and walls, refrigerator shelves, net curtains, walls, partition walls, doors, cupboard and furniture doors; non electrical utensils and containers for household or kitchen purposes (neither of precious metals, nor coated therewith)
Class 42: Technical consulting relating to the use of glassware products for construction purposes; technical consulting relating to architecture and interior design; professional consulting for technical applications regarding the use of glassware products for construction purposes; professional consulting for technical applications on architecture and interior design; technical project studies; research and development of new products for others; all the aforesaid services relating to the fields of glassware, architecture and interior design

Trade Mark: QUANTUM GLASS

Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

Application No: 1471701

Priority Date: 30 January 2012

Status: Opposed

Goods/Services: Class 19: Building materials excluding materials for windows and doors, not of metal, namely building glass; printed glass for building; glass for buildings, fitting out, exterior and interior decoration (building materials excluding materials for windows and doors, not of metal); all the aforesaid goods not being of quartz, gypsum, wood or pvc
Class 21: Glassware not included in other classes, namely unworked or semiworked glass (except building glass); printed glass (not for building); opaque and translucent enamelled glass (not for building); lacquered glass (not for building); serigraphed glass (not for building); painted glass (not for building); unworked and semi-worked glass also in the form of sheets and plates used in the manufacture of sanitary installations, shower cubicles, shower doors, shower partitions and walls, refrigerator shelves, net curtains, walls, partition walls, doors, cupboard and furniture doors; non electrical utensils and containers for household or kitchen purposes (neither of precious metals, nor coated therewith)
Class 42: Technical consulting relating to the use of glassware products for construction purposes; technical consulting relating to architecture and interior design; professional consulting for technical applications regarding the use of glassware products for construction purposes; professional consulting for technical applications on architecture and interior design; technical project studies; research and development of new products for others; all the aforesaid services relating to the fields of glassware, architecture and interior design

Trade Mark: QUANTUM GLASS

Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

Section 44(3) referred to within the endorsement (and its analogue within the Trade Marks Regulations 1995 which applies to IRDAs made under the Madrid Protocol) relevantly provides:
(3)If the Registrar in either case is satisfied:
(a)[…]
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose.
Registration of the above two trade marks is opposed by the Removal Opponent.
I note that the specifications of goods in Class 19, above, are vague as it is not clear whether ‘building glass’ is included or excluded by the opening phrase, ‘Building materials excluding materials for windows and doors, not of metal, namely building glass’. It appears to me that if ‘building glass’ was not intended to be excluded from Class 19 of the specifications there ought to be a comma immediately after the first occurrence of the word ‘materials’. Further, in view of the provisions of subsection 65(7) of the Act this issue does not appear capable of being remedied because an amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.

Reasoning

Section 92 of the Act relevantly provides:
92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2)The application:
(a)must be in accordance with the regulations; and
(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
(3)[…]
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv)has not used the trade mark in Australia; or
(v)has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 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.
Of the grounds listed in the Notices of Opposition, the Removal Opponent presses the following grounds:
(i)Intention to use and actual use (paragraph 92(4)(a))
(ii)Use of trade marks within relevant period (paragraph 92(4)(b))
(iii)Circumstances that were an obstacle to use (paragraph 100(c))
(iv)The Registrar’s discretion (paragraph 101(b) and (c))
The Removal Applicant summarises its arguments as being:
(i)There has been no use of the trade mark QUANTUM TWIN in the relevant period on any goods.
(ii)There has been no use of QUANTUM and QUANTUM stylised on either timber or PVC windows and doors or other non-metallic windows and doors during the relevant period.
(iii)There has been some use of the trade marks QUANTUM and QUANTUM stylised on metallic windows and doors being aluminium windows and doors.
(iv)At the time the applications were made the trade marks were intended to be used for the Opponent’s self described novel and innovative aluminium windows and doors products and not for timber or PVC or other non-metallic windows and doors.
(v)There are no circumstances that justify the trade marks remaining on the register. The opponent has been selling timber and PVC windows and doors under different trade marks without difficulty.
(vi)This is not a situation where a discretion ought to be exercised to allow the marks to remain on the register. The integrity of the register can be maintained by removing the class 19 goods from the registrations. The Opponent’s interest is addressed by virtue of the actual goods on which the marks are used being covered by the class 6 goods. The public interest is properly protected through the opposition and infringement provisions of the Trade Marks Act. To allow the class 19 goods to remain will extend the scope of the opponent’s protection beyond what is intended by the trade mark regime. The Opponent will be granted a monopoly over goods it does not use the mark on (clause 19), which extends to similar goods of such goods. Such extended protection will cover similar goods that may not be similar to the actual goods (class 6) on which the mark is used.
(vii)Balancing the competing factors it is not reasonable to exercise a discretion to allow the class 19 goods to remain on the register.

I note now that the Removal Opponent’s use of the QUANTUM TWIN trade mark ceased in 2005. The Removal Opponent had used the trade mark QUANTUM TWIN in relation to double glazed variants of its aluminium framed windows.

Paragraph 92(4)(a)

Mr Robb, for the Removal Opponent submitted that the evidence shows that the Removal Opponent had made use of the QUANTUM, QUANTUM Logo and QUANTUM TWIN trade marks in relation to metal framed windows and that the use of the QUANTUM and QUANTUM Logo trade marks in relation to timber framed windows had ceased. In Maestro Pty Ltd v Maestro Wireless Solutions Limited [2012] ATMO 98, the Registrar’s delegate observed that actual good faith use of a trade mark must rebut an allegation of lack of intention to use that trade mark. Given that the use of the impugned trade marks once encompassed both metal and wooden framed windows, I consider that the Removal Opponent has established its opposition in relation to the ground under paragraph 92(4)(a) in relation to the trade marks QUANTUM and QUANTUM Logo and QUANTUM TWIN.

Paragraph 92(4)(b)

In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166; [2001] AIPC 91-713; (2001) 51 IPR 149 Drummond J noted at [17] that a single bona fide use of an impugned trade mark in the relevant period is sufficient to answer an application for removal under paragraph 92(4)(b).[1] In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 the Full Bench of the High Court stated at [64]:
Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute “ordinary and genuine” use judged by commercial standards. It has been recognised by the Court of Justice of the European Communities, dealing with the expression “genuine use” as used in Arts 10 and 12 of Directive 89/104 of the Council of the European Communities[47], that use of a mark “need not ... always be quantitatively significant for it to be deemed genuine”. On the facts here, it is not necessary to decide whether a single use of the registered trade mark in good faith would have been sufficient to resist removal. [References have been redacted]
[1] I note that this accords with the establishment of ownership on the basis of a single usage in terms of Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592; 4 ALR 687; (1974) 48 ALJR 456; 1A IPR 511.
Similarly, such niceties do not apply here. The Removal Opponent has used its QUANTUM and QUANTUM Logo trade marks on metal framed windows within the relevant period. The Removal Opponent has not used its QUANTUM and QUANTUM Logo trade marks on wooden framed windows within the relevant period and it has not used its QUANTUM TWIN trade mark on any goods within the relevant period.
That, however, is not the end of the story as the Removal Opponent claims that there was an obstacle to the use of the impugned trade marks, or at least the QUANTUM and QUANTUM Logo trade marks, on wooden framed windows during the relevant period.

Paragraph 100(3)(c) – Obstacle to Use

Subsection 100(3) provides:
(3)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:
[…]
(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.
Mr Stratton states:
Trend sells a range of fire rated window and door products. These products are sold under the Xtreme Logo trade mark and are BAL-40 and Flame Zone (FZ) fire rated windows and doors. These Xtreme fire rated products form part of the range of Quantum Goods offered for sale under the QUANTUM Trade Marks. These fire rated products have typically, including during the relevant period, been manufactured with aluminium frames. However, customers have also been seeking timber framed windows and doors suitable for use in bushfire prone areas.
Windows and doors to be used in the construction of buildings must comply with Australian Standard AS-3959-2009. Now shown to me and marked Exhibit MS-22 are extracts from AS-3959-2009, particularly paragraphs 3.8, 8.1 and Appendix F.
Trend has, during the Relevant Period, been in the process of developing windows and doors with frames made from rosewood timber with the intention of selling these products as part of its Quantum Xtreme range of fire rated products.
I believe that, since rosewood is not listed as a tested species of timber in Appendix F to AS 3959-2009, it is necessary for Trend to have its products tested by the CSIRO to meet the required criteria and to obtain approval from the Rural Fire Service (RFS).
Now shown to me and marked Confidential Exhibit MS-23 are redacted extracts from the Minutes of Product Development Meetings of Trend held from 11 February 2010 to 17 February 2012 referring to actions taken to develop the Xtreme timber products. I believe these products are nearing completion for full scale testing by the CSIRO at North Ryde in Sydney.
Now shown to me and marked Exhibit MS-24 is a brochure prepared by Trend on or about 30 September 2010 for the Quantum Xtreme rosewood timber product range together with an extract from Trend’s current website indicating these products are not currently available but will be available in early 2012.
In Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39; (2011) 90 IPR 310 Cowderoy J said at [103][2]:
[2] Unchallenged in Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; (2012) 202 FCR 490; (2012) 287 ALR 221.
In Woolly Bull Enterprises Pty Ltd and Another v Reynolds [2001] FCA 261; (2001) 107 FCR 166 Drummond J considered the circumstances sufficient to constitute an obstacle to the use of a trade mark within the meaning of s100(3)(c). His Honour at [45] considered s26(3) of the Trade Marks Act 1938 (UK) and observed:
Section 26(3) of the Trade Marks Act 1938 (UK) (“the 1938 UK Act”) prevented reliance by an applicant for removal on the ground of non-use on “any non-use of a trade mark that is shown to be due to special circumstances in the trade and not to any intention not to use or to abandon the trade mark .”
His Honour observed that s23(4) of the Trade Marks Act 1955 (Cth) (‘the 1955 Act’) was to similar effect. At [45] his Honour referred to the authorities constituting those ‘special circumstances’.
However, his Honour also observed at [46] that the text of s 100(3)(c) was deliberately adopted to significantly widen the corresponding provision of the 1955 Act so that under s100(3)(c) it was not necessary to show ‘unusual or abnormal ..., trading conditions’ before s 100(3)(c) can have operation. At [47] Drummond J indicated the parameters with which the obstacles referred to in s 100(3)(c) could exist but added the limitation in [48] as follows:
In the context of s 100(3)(c), there are, however, good grounds for reading “circumstances” as not embracing any event of any kind. The circumstances must be “an obstacle to the use of the trade mark by the registered owner”. This suggests that they must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner.
But if any circumstance external to the owner, in the sense of being a circumstance not brought about by the voluntary act of the owner, is within the provision, the Court would be drawn into inquiries of a kind that it is difficult to accept were in the contemplation of the Parliament. Financial impecuniosity could excuse non-use of a trade mark, irrespective of how enduring and intractable the owner’s impecuniosity might be. Illness of the registered owner could also excuse non-use of the registered trade mark (as is the contention of the applicants here). A falling out between joint registered owners of a mark that disrupts the use by either of the mark might also be capable of excusing non-use. In all such situations, questions could arise requiring investigation by the Court into whether the obstructing circumstances were due to the conduct of the registered owner.
Drummond J found that the circumstances referred to in s 100(3)(c) would only be established in limited circumstances which he described in [55] of his decision as follows:
In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark. Compare Re James Crean & Son Ltd’s Trade Mark at 162.
Critically at [56] his Honour said:
Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.
The necessity to obtain Standards approval (and that of the RFS) is a circumstance of a trade character and is both non-personal and non-trivial and has here caused the non-use of the QUANTUM and QUANTUM Logo trade marks in relation to the wooden framed windows of the Removal Opponent. While there are fire-resistant woods approved for construction purposes by Standards, these have been deemed unattractive by the Removal Opponent for either aesthetic or technical reasons: it is hardly practical to make wooden framed windows which have technical imperfections or are unappealing and will not be purchased. It is apparent that the Removal Opponent has been active during the relevant period in addressing this obstacle and has been developing rosewood framed windows for approval by Standards and the RFS.
As such, the need to comply with the relevant Australian standard was a circumstance which was an obstacle to the use of the QUANTUM and QUANTUM Logo trade marks on wooden framed windows within the relevant period.
The Removal Opponent has established its opposition to removal in relation to the QUANTUM and QUANTUM Logo trade marks under paragraph 100(3)(c).

Subsections 101(3) and (4) – the Registrar’s discretion

Subsections 101(3) and (4) of the Act provide:
(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.
I consider this question should I have been wrong in the above and also note that the discretion applies in respect of a wider range of goods (non metallic windows and doors) than does paragraph 100(3)(c) (wooden framed windows).
The question to be asked here is whether it is reasonable not to remove the trade marks QUANTUM and QUANTUM Logo from the Register in respect of non metallic (uPVC and wooden framed windows and doors), although the trade marks had not been used in relation to those goods during the statutory period.[3]
[3] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; (2012) 202 FCR 490; (2012) 287 ALR 221 at [28].
A similar question applies in relation to the trade mark QUANTUM TWIN.
The Registrar’s discretion was discussed in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 by Bennett J at [167]:
The discretion under s101(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 s92 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.
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 s101(3).
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’] assistance in considering the exercise of the discretion :
·     there had been no abandonment of the trade mark ;
·     the registered proprietors of the mark still had a residual reputation in the mark ;
·     there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
·     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 ;
·     the registered proprietors were not aware of the applicant’s sales under the mark.
Further, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69; [2008] AIPC 92-293 stated:
If the condition of exercise of the Court’s power has been established, the trade mark should be removed “unless sufficient reason appears for leaving it there”: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481–2 per McLelland J. In Re Carl Zeiss Pty Ltd’ s Application [1969] HCA 17; (1969) 122 CLR 1, [‘Zeiss’] Kitto J similarly concluded (at 11):
It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung’s omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ...
One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was “clear” and continued at 345:
There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked.
One aspect of the “public interest” is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J.
Presently I must digress to address a misapprehension on the Removal Opponent’s part. The Removal Applicant has pointed to the various trade marks used by the Removal Opponent in relation to its goods and appears to infer, at least, that the Removal Opponent’s use of its QUANTUM and QUANTUM Logo trade marks is limited. The Removal Opponent submits:
Trend is described as producing ‘aluminium, timber and uPVC windows and doors’. The brands for these products are:
·     the corporate or house mark TREND or TREND WINDOWS & DOORS. This is the overreaching brand for all of the aluminium, timber and uPVC products
·     QUANTUM XP and QUANTUM – the premium styled aluminium window and doors
·     XTREME – the brand for bush fire and flame zone windows and doors
·     SYNERGY WINDOWS – the uPVC windows and doors
·     CRESTLITE – commercial windows and doors
·     FRAMEX – part of the timber range
However, I consider that this view oversimplifies the true situation which is not well enunciated in the Removal Opponent’s evidence. In my consideration the evidence shows that the Removal Opponent has a three tiered hierarchy of trade marks in which TREND is the house mark, QUANTUM is a category trade mark (used generally to identify products for domestic use) and trade marks such as XTREME or QUANTUM TWIN are product trade marks which are, or ‘were’ in the case of QUANTUM TWIN, used to indicate specific products within the QUANTUM category. Accordingly, the Removal Opponent would, for example, during the relevant period have used the three trade marks TREND, QUANTUM and XTREME together in relation to its domestic metal framed fireproof windows and doors.
Accordingly, the Removal Opponent might use three trade marks in relation to the one product – one from each level of this hierarchy of trade marks. Such conjoint use of multiple trade marks on or in relation to the one product is recognized in trade mark law: Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; (2004) 61 IPR 242; [2004] AIPC 91-983; [2005] ALMD 363.
The Removal Applicant also argues that metal framed windows and doors are distinct from wooden framed windows and doors. Mr Robb submitted:
Both metallic and non-metallic windows have glass. It is an incidental feature that does not define the nature of the window.
The opponent has consistently characterised the products that it sells and has sought design input on as aluminium windows and doors. The opponent has for more than 10 years been describing the products as aluminium windows and doors.
The features of the windows that give them their design, style, innovation, and revolutionary characteristics are the aluminium componentary.
The trade mark QUANTUM is used to identify the opponent’s aluminium windows and doors. It is used by the opponent itself and is how the aluminium products are promoted to the relevant consumers.
To the extent that glass in the windows and doors is identified and promoted as a feature of the windows and doors it has done so by reference to the names OVOLO, THERMASHEILD and the third party PILKINGTON trade marks.
A timber window or door does not change its defining characteristics to be a metallic window or door because it includes metal nails, screws or pins in its construction. The reverse holds true for aluminium windows and doors.
The wording of the class 6 and class 19 descriptions is instructive. It is the terms ‘timber’, ‘PVC’, and ‘aluminium’ that define the characteristics of the goods, not other terms that might or might not have been included in the specification.

Mr Skelly, for his part argued that:
A “window” is defined in the Macquarie dictionary as ‘an opening in the wall or roof of a building for the admission of air or light, or both, commonly fitted with a frame in which are set movable sashes containing panes of glass’. A window comprises ‘the frame, sashes, and panes of glass, or the like, intended to fit such an opening’.
A “door” is defined as ‘a movable barrier of wood or other material, commonly turning on hinges or sliding in a groove, for closing and opening a passage or opening into a building, room etc’
Class 19 includes other items such as ‘glass for windows’, ‘glass windows’, ‘window glass for building, ‘non-metallic window frames’, ‘non-metallic flashing for windows’, ‘non-metallic window sashes’, ‘non-metallic window sills’, ‘non-metallic window surrounds’, ‘doors made of glass for buildings,’, ‘glass doors’, ‘glass in sheet form for use in doors’, ‘non-metallic door cases’, ‘non-metallic door surrounds’, ‘non-metallic frames for doors’. Hence the Registrations should be construed as being broader than just non-metallic window frames and sashes and door frames. The Opponent’s windows and doors are sold complete with glazing and reveals (surrounds) which are made from non-metallic materials. It necessarily follows that such windows and doors, even those with metallic frames and sashes, are predominantly manufactured from other non-metallic materials, namely glass and timber. The metallic frames and sashes only form part of the finished window and door products.
To my mind, distinctions between metal and wooden framed domestic windows (including their occurrence in both Classes 6 and 19 of the International (Nice) Classification of Goods and Services) might be properly viewed as being irrelevant and stem from the days when frames for windows and doors were made by artisans and craftsmen in either carpentry shops or smithy’s forges and the components (glass, lead strips, wood or iron frames, hinges, screws, putty, caulking compounds etc) were assembled on site and the two trades were consequently then viewed as being distinct and, in fact, in competition with each other. It is apparent that the trade has evolved since those days, such competition has gone, and it is now usual for metallic and non metallic windows to be pre-assembled in the same factories and it to be commonplace for manufacturers such as Stegbar, Dowell, Wideline or the Removal Opponent to make/and or sell both metallic and non metallic windows.
I sense from the tenor and content of the parties’ submissions that, in view of the opposition to the Removal Applicant’s applications for registration by the Removal Opponent, both parties look to me for some comment about the nature of the goods insofar as the goods incorporate ‘glass’ and might be now viewed as a normal way in which to sell window glass. Such observation is not essential to the making of this decision and I am unwilling to so comment as to do so might prejudice the other proceedings.
And, while Mr Skelly submitted that non-metal framed windows and metal framed windows are goods of the same description in terms of subsection 101(4) of the Act and thus discretion may be exercised in relation to the use of the QUANTUM and QUANTUM Logo trade marks on non-metallic windows, I consider that something different here applies.
A person will establish themselves as the owner of a trade mark in relation to particular goods if they authored the trade mark and show at least a single use of a substantially identical trade mark on goods which are ‘the same kind of thing’ if such use is prior to any such use (or an application for registration) by another person. [4]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375; Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75; Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 at 399
It follows that if metallic and non-metallic windows are ‘the same kind of thing’, the Removal Opponent is the owner of the QUANTUM and QUANTUM Logo trade marks in respect of non-metallic windows and doors during the relevant period as it used those trade marks in relation to the ‘same kind of thing’ - metal framed windows and doors - during that time.
In Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; (2007) 74 IPR 246; [2008] AIPC 92-272 the Full Bench said at [14]:
For this purpose, too, the owner’s right to registration extends to goods “of the same kind” as the goods that have already borne the mark: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 per Stirling J and In re Hick’s Trade Mark (1897) 22 VLR 636 at 640 per Holroyd J. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet . He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes , he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
I note that there is little practical difference between metal and wooden frame windows – indeed, the evidence shows that some metal framed windows have wooden ‘reveals’ and others are made to look like wood. Both metal and wooden framed windows are made in the same factories by the same people. The goods may indeed look identical on a casual inspection; and, the goods are installed by the same tradesperson into similar openings for the identical purpose. The consumer’s choice between one and the other appears to be predicated only upon taste, style and cost and the goods are otherwise interchangeable.
In my consideration, the goods ‘metallic windows’ are the ‘the same kind of thing’ as ‘non metallic windows’ if they are made for domestic purposes as are (as I have previously discussed) the goods sold under the QUANTUM and QUANTUM Logo trade marks. It appears to me that any distinction between metallic and non metallic windows and doors for domestic use on the basis of what they are made of is almost of the same degree of artificiality as would be a distinction between cotton and polyester men’s shirts.
If I am wrong in my conclusion that metallic and non metallic windows (made for domestic purposes) are ‘the same kind of thing’, then they are most certainly ‘goods of the same description’ in terms of subsection 101(4). In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 the Court stated:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p 94. (at p607)
Further, the expressions ‘goods’ and ‘services’ ‘of the same description’ were discussed by the Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70]:
The expression “goods of the same description” is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression “services of the same description” rather than “goods of the same description” does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross [17] at 606. Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.
It is true, as Lion Nathan submitted, that s 120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
The question thus requires consideration of whether the goods are usually made by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade. As well, the question should be considered in a practical sense of what members of the consuming public are likely to perceive as a result of the use of the trade mark on the goods in question and whether they are likely be led to believe they were goods of the registered owner.
As I have previously indicated, the goods are made by the same manufacturers in the same factories for sale to the same customers and installation by the same tradespersons for the same purpose to the same consumers. The goods may in fact be indistinguishable on a casual inspection and thus are likely to be thought by consumers to have originated from the same trader.
Therefore if metallic and non metallic windows are not the same goods, they are goods of the same description.
It is thus in the public interest, for the prevention of confusion and deception, that the trade marks QUANTUM and QUANTUM Logo not be removed from the Register in respect of non metallic doors and windows.
However, as regards the QUANTUM TWIN trade mark, it has not been used during the relevant period. The Removal Opponent has not pointed to any set and definite plans to reintroduce the use of the QUANTUM TWIN trade mark and thus the ratio in Hermes, above, cannot come into play. Further, although very little practical purpose appears to be served by its removal from the Register, I am mindful of the passage enunciated in Zeiss, above, by Kitto J:
It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung’s omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ...
The Removal Opponent has not established sufficient reason for leaving the QUANTUM TWIN trade mark on the Register.

Decision

Subsection 101 of the Act relevantly provides:
101Determination 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.
The Removal Opponent has established its grounds of opposition in relation to the removal of registrations 776389 QUANTUM and 825544 QUANTUM Logo and these registrations do not need to be disturbed.
The Removal Opponent has not established its grounds of opposition in relation to the removal of registration 837210 QUANTUM TWIN and I direct that this registration be removed from the Register.

Costs

Having been successful in relation to its opposition to the removal of two of its trade marks, the Removal Opponent is entitled to its costs in relation to those proceedings, appropriately proportioned between them except for the costs in relation to the hearing which should be reduced by one third.

Iain Thompson

Hearing Officer

Trade Marks Hearings

3 April 2013

[2013] ATMO 21

3 April 2013

Key Legal Topics

Areas of Law

Commercial Law

Civil Procedure

Legal Concepts

Appeal

Jurisdiction

Costs

Stay of Proceedings