TRS Quality Inc v Sydney Red Line Retailing Pty Ltd

[2011] ATMO 11

TRADE MARKS ACT 1995

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

Re:Opposition by TRS QUALITY, INC. to applications under section 92 of the Act by SYDNEY RED LINE RETAILING PTY LTD to remove trade mark numbers 329405, 701474, 706434 (various classes) - RADIOSHACK etc- in the name of TRS QUALITY INC.

Delegate:	T. E. Williams
Representation:	Opponent: Ben Fitzpatrick of counsel instructed by Tony Lolis of Davies Collison Cave Applicant: No appearance, no submissions
Decision:	2011 ATMO 11 S 96 removal opposition - use on some goods only. Factors to be assessed in refusing to remove registration.  Removal refused.

Background

1. TRS Quality Inc (“TRS”) is registered as the owner of trade marks 329405, 701474 and 706434 (“the registrations”).  The registrations are for, respectively, the trade marks RADIO SHACK, RADIOSHACK and RadioShack; collectively, “the trade marks”  although for convenience in what follows I will sometimes refer to them in the singular, as “the trade mark” or “the registration”.  The registrations relate to goods and services as specified below:

   329405
   Class 37:  Services for repairing electrical, video and sound reproducing and transmitting equipment, and electromechanical equipment, electromechanical instruments and components therefor
   Class 42:  Retailing, mail order stores, industrial sales and after sales services dealing in electronic equipment, radio and sound reproducing equipment, electrical and electronic devices, instrumemnts (sic) equipment and componenets (sic)[1] and parts, mechanical devices, tools and other hardware, optical and phtographic (sic) equipment, electrical and mechanical games and toys

   701474 and 706434
   Class 9:  Radios, tuners, amplifiers, speakers, and speaker enclosures; radio receiving apparatus, microphones and switches; intercoms, wireless remote control units, and wireless room monitors; electronic communications equipment; namely, pagers, telephones and facsimile machines and parts therefor; phonograph needles and phonograph records, record players and recording tapes; electronic calculators, dry cell batteries, electrical telephone answering apparatus and telephone amplifiers; microcomputer systems comprising microprocessors, keyboards, video displays, in the nature of CRT's for use in connection with computer displays, computer memories, and data cassette recorders and cassettes having software recorded thereon; video equipment; namely, televisions and satellite TV antennas; optical goods, drafting equipment, slide rules, and drafting sets; multitesters for measuring voltage currents and resistance, voltmeters, ohmmeters, exposure meters, thickness gauges, compasses, microscopes, binoculars, combination telescopes and microscopes, microphotograph attachments, magnifying lenses, built-in test lamps for photographic flash guns, and photographic timers; radar detectors for automotive use, battery testers, DC power supplies, electronic thermometers; electrical components; namely, interference filters, connectors, wire, ground rods, clips, switches, transistors, IC gates, potentiometers, resistors, amplifiers, voltage regulators, flip-flop trigger circuits, counters/dividers for use as IC tuners, IC drivers, voltage comparators, rectifiers, diodes, capacitors, tubular electrolytes, printed circuit boards and terminals therefor, CB and scanner antennas, components for CB antennas, UHF/VHF television antennas, FM antennas, UHF converter/tuner antenna parts, coaxial cables, twin lead cables, electric soldering irons, soldering guns, electrical engraving pencils, remote control television timer, bicycle radios, photoelectric-eye relay units, antenna rotors, AC line interference filters and battery chargers; VCR multiplying system, decoder/amplifier, video processor, camcorder/VCR dubbing processor, video selector, multiple video distribution center; namely, a system that will send signals from a cable box, VCR satellite, system or antenna to several televisions in the same house with one coaxial cable, cable connector, remote control extender, video amplifier/enhancer, stud finder, automobile noise filters used to reduce ignition/alternator, engine and spark plug noise interference, automobile cigarette lighter adapter, fuses, voltage spike protectors, AC powerstrips and outlet
   plugs, AC extension cords, infrared floodlight security systems, magnets, torches, telephone plugs/jacks/wire/cable/adapters/tools, satellite TV noise block convertors, wireless TV transmitters/receivers, camcorder carrying cases, tripods, microphones, video lights, cable TV converter, door chimes, AC power cords and extension cords, audio connectors, and adapters, power transformers, AC-to-DC voltage adapters, AC-to-AC voltage adapters, DC power cords and extension cords, shortwave antennas, audio transformers, test equipment adapters, multiconductor cable, amateur radio antennas, components for amateur radio antennas, buzzers, relays (AC and DC), mercury switches, relay sockets, solder type printer connectors, IDC type printer connectors, infrared diodes, infrared photo transistors, infrared sensor, temperature module; namely, a thermometer with capabilities to control a buzzer, led, fan or heater at present temperatures; electronic counter module, solar kit, miniature amplifier, magnifying glasses; battery operated, electronically operated, radio controlled, remote controlled, and electrically operated controls for playing games on television screens or monitors.

   Class 16: Reference books in the field of electronics.

   Class 28: Toys, games and playthings; namely, toy metal detectors; and nonelectronic toys; namely, balls.

   Class 37: Construction and repair; namely, computer repair services.

   Class 42: Retail store services and mail order retail services in the field of radio and sound reproduction equipment; namely, stereo systems, speakers, phonographs, amplifiers, tuners, public address amplifiers, electronic keyboards, entertainment lighting, microphones, wireless microphones, headphones, mixers, blank audio and video tape, compact discs, stereo cartridges and stylus; equalisers, compact disc players, radios, receivers, rack systems; electrical and electronic devices; namely, alternate current and direct current power adapters, connectors, fuses, integrated circuits, multitesters, power supplies, switches, test equipment and wire and cable; computer hardware, furniture, software and peripherals for school, home, science and business usage; antennnas; namely, television, auto, citizens band and satellite; laser vision players; satellite receivers, feedhorns, low-noise blocks and low-noise amplifiers for satellites; antenna mounting hardware; television/video switching distribution equipment; audio/video signal processors; cellular telephones; telephones and telephone accessories; pagers; home security systems; auto security systems; scanners; calculators; hand tools; batteries; battery chargers; electronic and radio-controlled toys; video cassette recorders; video camera recorders; office equipment; namely, facsimile machines, pencil sharpeners, and copiers; remote control systems, remote control switches; intercoms; televisions; radar detectors; automobile compact disc players; amateur radio transceivers and accessories, marine radio transceivers and accessories; citizens band radios, transceivers and receivers; flashlights; databanks; owner and/or operating manuals and books; testing equipment; vacuum tubes; and metal detectors

   [1] These typographical errors are the result of post-registration errors at the Trade Marks Office. I do not see how they can therefore affect the outcome of this matter. I will direct, subject to the outcome of this decision, that they be corrected under s 81 of the Trade Marks Act 1995.

2. On 22 July 2008 Sydney Red Line Retailing Pty Ltd (“Redline”) filed applications (“the removal applications”) to remove the three trade marks from the register, in respect of all the services and/or goods presently covered by the registrations, on the ground provided under s 92(4)(b) of the Trade Marks Act 1995 (“the Act”).  Put broadly, that provision allows removal of a trade mark from the register if it has not been used in relation to the relevant goods or services within the three year period ending 22 June 2008 (“the relevant period”). 

3. TRS has opposed removal and filed and served evidence in support of its opposition.  Redline elected not to file any evidence in answer to this.

   TRS’s evidence

4. This consists of two declarations.  I will have more to say about the facts of this matter but, briefly, it appears from these declarations that the trade mark[2] has been used in Australia, at the well-known TANDY and DICK SMITH ELECTRONICS stores, for about 30 years.  There are now about 200 of each store Australia, and both chains also sell their goods via their respective websites.

   [2] Neither declarant distinguishes between the trade marks in making their declarations

5. The first declaration relied on by TRS is by Tony Aimone with exhibits TA-1 to TA-5.  Mr Aimone is the Director of Business Alliances of RadioShack Corporation in Texas.  He declares that TRS is “a member of the RadioShack Corporation Group of Companies”.  While his connection with TRS is therefore less than clear I will nevertheless take his declaration about relevant events in Australia at face value.

6. The second declaration is by Mr White, the Merchandising Manager of Woolworths Limited.  That company, he declares, now operates the DICK SMITH ELECTRONICS stores.

   Hearing and Decision

7. Ultimately, both TRS and Redline were given the opportunity to be heard before the matter was decided.  At the hearing, set down before me on 21 October 2010, TRS was represented by Ben Fitzpatrick of counsel, instructed by Tony Lolis on behalf of Davies Collison Cave, patent and trade mark attorneys.  Redline, having declined to file or serve evidence in answer to the opposition, also did not participate in the hearing.  What follows is my decision of the opposition to the removal of the trade marks, made under delegation from the Registrar of Trade Marks. 

   Use of the trade mark

8. TRS bears the onus under s 100 of the Act, (leaving aside other options under that provision) of showing, that the trade mark has been used, within the relevant period, in respect of the goods and services for which it is registered.

9. The Aimone and White declarations show use of the trade mark in respect of goods as follows:

   • batteries
   • audio and video cables
   • television antennas
   • television leads
   • radio controlled cars
   • thermometers
   • pedometers
   • bathroom scales
   • microphones
   • am/fm radio receivers
   • karaoke sets
   • calculators
   • televisions
   • book lights
   • audio-video selectors
   • burglar alarms
   • sound level meters
   • headphones, and
   • various other consumer items ranging from microwave leakage detectors to tyre pressure gauges.

   Discretion not to remove:

   with respect to goods

10. Beyond those goods, the trade mark is registered for (inter alia) a detailed list of electronic and electrical items in class 9 for which there is no evidence that the trade mark has been used.  Strictly speaking, therefore, the trade mark is liable to be removed from the register in respect of the goods upon which it has not been used unless TRS can show that there exist circumstances that would make it reasonable to retain the registration as per either s 101(3), or s 101(4) to which I will come in due course. 

11. As to this, Mr Fitzpatrick has argued that, because of what he called the convergence of technology, it is not necessarily easy to draw lines between one species of class 9 goods and another[3].  For example, while a phone is not the same thing as a camera or a computer, and a computer is not the same thing as a DVD player or a television, the borders are not fixed.  Many mobile phones include cameras; some approach the functionality of a small laptop computer.  Likewise, many computers include either a television tuner or a DVD drive or both, and a home entertainment centre includes aspects of these and other products.  This, and the fact that large electronics companies[4] provide an ever-widening range of products, have helped shaped consumer expectations.

    [3] See, consistently, McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 at 544, re “fragmentation”.

    [4] Mr Aimone cites Apple and Sony as examples.

12. The circumstances under which such discretion might be exercised have been described by Bennett J in the following terms[5]: 

    [5] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135.

    The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Registrar [or 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. …

    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 were of 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.

13. Later in her decision, Bennett J observed that the factors in favour of maintaining trade marks on the Register under s 101 were less to do with the protection of those trade marks and their proprietors and ‘more to do with the public interest’. 

14. However, the balance of those factors is now to be assessed in a slightly different legislative context. Applicants seeking removal of a trade mark under s 92 are no longer required to be persons aggrieved. In the present case it may simply be coincidence that there is no evidence that Redline is aggrieved by the trade mark. However, the lack of interest that Redline has displayed in the determination of this opposition is in stark contrast is the evidence from TRS, which shows that the trade mark is of considerable value to its registered owner. It has been used extensively, with retail sales in the hundreds of millions of dollars since 1986. Mr Aimone describes the trade mark as a house mark. Perhaps an average consumer might not share that perception, since the evidence suggests that the reputation of the trade mark is strongly linked to both the TANDY and DICK SMITH ELECTRONICS chains, such that the names of the chains might themselves be seen as the “house marks”. Either way, however, the trade mark is one with which a goodly proportion of consumers would be familiar.

15. Under other circumstances, it might have been appropriate to closely analyze or to partition the goods covered by registrations 701474 and 706434.  In class 28, for instance, the trade mark has not been used in respect of “balls”, so might perhaps be removed from the register for those goods, yet be left to stand in respect of battery operated toys.  However, in terms of any possible public interest, there is no evidence that Redline or anyone else would want to use the trade mark in respect of, say, soccer balls with only proper motives.  Conversely, even though the onus remains on an opponent in such questions, given the evidence to which I have referred it would seem to be a particularly odd coincidence if such usage of the trade mark RADIO SHACK in respect of balls was to arise spontaneously.  As to the testing of such issues, or indeed anything else to do with this dispute, I have not been assisted by either evidence or submissions from Redline.  On the present facts it does not appear to me to be appropriate to take an overly-harsh view of TRS’s position, and it thus seems that, overall, there is little point in removing the registration in respect of some goods and leaving it for others. 

16. This is particularly so given that, as Mr Fitzpatrick noted from the evidence, TRS is also the registered owner of trade mark 260980, RADIO SHACK.  Redline has not sought removal of that trade mark registration, which would accordingly remain for all goods in classes 8 and 9 irrespective of the outcome of the present proceedings.

    with respect to services

17. In addition to s 101(3), to which I have just referred, section 101(4) provides:

    (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.

18. I have already said that I am satisfied that it is reasonable not to disturb the registrations in respect of any goods.  For the sake of completeness I note, albeit without the assistance of a detailed adversarial examination, that at least some of the services for which the trade mark is registered are closely related to the goods upon which the trade mark has been used.  Given what I have already said about the undesirability of dissecting the registration in the present circumstances, I think it is also appropriate to leave the registrations undisturbed as regards services.

    Conclusion

19. Given what I have set out above, I refuse to remove the trade marks the subject of registrations 329405, 701474 and 706434 from the register in respect of any goods or services.  I award costs, in terms of the scale in the regulations, against Redline, those costs to be taxed as per James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

    T. E. Williams
    Hearing Officer
    Trade Marks Hearings
    2 February 2011