Tunit (BVS Ltd) v Alpine Electronics, Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Tunit (BVS Ltd) to applications by Alpine Electronics, Inc. for partial cessation of protection of international trade mark no. 868721 (Australian registration no. 1089341) – TUNIT DIESELPERFORMANCE logo – and international trade mark no. 978614 (Australian registration no. 1269484) – tunit – held by Tunit (BVS Ltd)

Delegate:

Debrett G. Lyons

Representation:

Non-use Opponent: Michael Bromley, Managing Director of the Tunit (BVS Ltd)[1]

Non-use Applicant: Margaret Ryan of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys

Decision:

2015 ATMO 31

Reg. 17A.48(1) proceedings – s.92(4)(b) non-use; oppositions unsuccessful; s.101(3) discretion exercised; partial cessation of protected ordered.

[1] As he has described himself but note the comments under “The Removal Opponent” as they appear later.
Background

On 1 October 2013[2], Alpine Electronics, Inc. (“the removal applicant”) applied under regulation 17A.48(1) of the Trade Marks Regulations 1995 (“the Regulations”) for partial cessation of protection of the international trade marks hereunder:
[2] The hearing proceeded on the basis that this date was 30 September 2013 but a subsequent check of official records shows that whilst the applications were dated 30 September 2013, they were not officially received by the Office until the following day. This error has, on the evidence, made no difference to the outcome and the only consequential correction reflected by this decision is of the “relevant period” (discussed later) which moved by one day.
Registration No:              1089341 (international registration 868721)
Priority Date:  21 June 2005
Goods:Class 9: Magnetic data carriers, data processing equipment and computers, computer hardware and firmware, computer software (including software downloadable from the Internet)
Trade Mark:
Endorsement:                  colour claimed – black and red
Registration No:              1269484 (international registration 978614)
Priority Date:  5 September 2008
Goods:Class 9: Computer hardware and firmware, computer software (including software downloadable from the Internet or by compact disc media), electronic engine control, performance and tuning equipment for vehicles and engines, downloadable online publications, including manuals, tuning, testing, adjustment and alignment apparatus for vehicles
Trade Mark:  tunit
(referred to, together, in this decision and as the context requires as “the Trade Marks” or “the Registrations”; further, the term “the Goods” is used as a reference to both sets of registered class 9 goods)
The applications for cessation of protection are limited to cessation in respect of (for 1089341) that part of the specification of goods reading: “and firmware, computer software (including software downloadable from the Internet)” and (for registration 1269484) that part of the specification of goods reading: “and firmware, computer software (including software downloadable from the Internet or by compact disc media”.
Tunit (BVS Ltd) (“the removal opponent”) filed Notices of Intention to Oppose the removal applications.
Legislative framework
I am a delegate of the Registrar of Trade Marks and I am to decide on the basis of the parties’ evidence and submissions whether or not the Trade Marks should remain protected. In this regard regulations 17A.48(3) and (4) provide:
(3) Part 9 of the Act and Part 9 of these Regulations apply in relation to an application mentioned in subregulation (1) or (2).
(4) For that application, a reference in those Parts:
(a) to a registered trade mark or a trade mark that is registered, or entered on the Register, is taken to be a reference to a protected international trade mark or a trade mark that is a protected international trade mark; and
(b) to removing a trade mark from the Register is taken to be a reference to ceasing protection of a trade mark as a protected international trade mark; and
(c) to an application for registration of a trade mark is taken to be a reference to an international registration designating Australia; and
(d) to an applicant for registration of a trade mark is taken to be a reference to the holder of an international registration designating Australia; and
(e) to a registered owner of a trade mark is taken to be a reference to the holder of a protected international trade mark; and
(f) to an application under section 92 is taken to be a reference to an application under subregulation (1); and
(g) to the date on which the application for registration of the trade mark was filed, or the filing date in respect of the application for registration of the trade mark, is taken to be a reference to:
(i) if the request for extension of protection to Australia was made under Article 3^ter (1) of the Protocol — the date of international registration of the trade mark; or
(ii) if the request for extension of protection to Australia was made under Article 3^ter (2) of the Protocol — the date of recording of the request.
Note The expressions date of international registration and date of recording are defined in regulation 17A.2.
My decision is therefore to be made as provided by section 101(1) in Part 9 of the Trade Marks Act 1995 (“the Act”) which states:
(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 ground for cessation of protection stipulated in these cases by the removal applicant is that contained in section 92(4)(b) of the Act. Section 92 relevantly provides:
(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:
[…]
(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 relevant period during which the Trade Marks must have been used is the three year period ending on 1 October 2013 (“the relevant period”).
Pursuant to s 100 of the Act the opponent has the burden of rebutting the allegation of non-use. Subsection 100(1) relevantly provides:
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
[…]
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
As regards the onus in these proceedings, section 100 relevantly 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:
(…)
(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.
The onus is thus on the removal opponent to establish on the balance of probabilities use of the Trade Marks on, or in relation to, the Goods in respect of which they are respectively registered.
The Hearing
The parties elected to be heard and, as a delegate of the Registrar of Trade Marks, I heard their submissions in Melbourne on 20 March 2015. The removal opponent was represented by Michael Bromley, its Managing Director. Margaret Ryan, a partner in the firm of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys, represented the removal applicant.
In the weeks leading up to the hearing and in accordance with directions I gave the removal applicant’s attorneys provided me with written outline submissions. No written submissions were received from the removal opponent. Instead, in response to my directions for submissions there was an attempt to (informally) introduce evidence[3] just prior to the hearing. I wrote to the removal application indicating that my directions were not an invitation for evidence not filed already in accordance with the Regulations, whereupon the removal opponent asked of me what was meant by “written submissions”. I answered that question and at the same time put it to the removal applicant that they may benefit in these proceedings from legal advice and/or legal representation at the hearing. As indicated, Mr Bromley appeared at the hearing representing the removal opponent and at various times in the proceedings reminded me that he was not legally qualified and so was taken unaware by the requirements of the Act, particularly the existence of a defined non-use period.
[3] Since the removal actions were filed on 30 September 2013 the Trade Marks Act 1995 and Trade Mark Regulations 1995 as amended by Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which commenced on 15 April 2013 apply to these oppositions. Under the amended Regulations there is no longer provision for filing Further Evidence.
I note here that at several points during the hearing I took time out to explain to the removal opponent relevant aspects of trade mark law, Office practice, the scope of the removal applications and the nature of the international goods classification scheme. I note, too, that at one point the Ms Ryan asked for a short recess during which time she might speak with Mr Bromley in private. Mr Bromley agreed. I was advised on my return that the hearing was to proceed.
The removal opponent
I observe that the removal opponent, as is usually the case, is the holder of the Trade Marks. That said, it emerged from the evidence and was confirmed at the hearing by Mr Bromley that the legal entity is BVS Ltd and that “Tunit” is its trading name. Although for the reasons given below my decision does not depend on this observation in any way, it would seem that the holder is incorrectly nominated and it is possible that this error, left uncorrected, could have undesirable consequences for the removal opponent at some other time.
The Evidence
Although both applications for cessation of protection were filed the same day and the two matters were consolidated for the purposes of the hearing, the timing of the matters diverged after 1 October 2013 and, in particular, the evidence varied slightly in terms of filing dates and sometimes the declarant. Nonetheless, in substance, the two matters proceeded on the basis of essentially the same information and so for that reason the references below are references to the consolidated evidence in support, answer and reply, without discrimination as to which application they pertain.
The evidence in support filed by the removal opponent comprises the statutory declaration of Michael John Bromley made 21 January 2014.
The evidence in answer filed by the removal applicant comprises the statutory declarations of Helen Nectaria Kavadias made 28 April 2014 and Michael O’Donnell made 20 October 2014.
The evidence in reply filed by the removal opponent comprises the statutory declarations of Michael John Bromley made 27 June 2014 and 27 November 2014.
Discussion
Based on the evidence before me, I should first say something of the goods sold by the removal opponent.
At various points in his evidence Mr Bromley makes reference to his product as “the Tunit”. Extracted from (“the removal opponent’s Australian website”) at a date after the end of the non-use period and included with the removal applicant’s declaratory evidence is a section from that website entitled: “What is a Tunit?” It states that:
The Tunit is an externally installed performance product suitable for all modern diesel engines. Tunit is designed to improve power, torque and efficiency, without compromising fuel economy. In most cases applications will achieve a 7-10% saving on fuel. It is retro-fit and will not interfere with original equipment or the manufacturers warranties. Installation is usually a swift process of less than 30 minutes. Thanks to Tunit, diesel tuning is possible to increase the performance of all modern diesel vehicles by up to 30%.
At the hearing Mr Bromley confirmed as correct my understanding that “the Tunit” is a device for use with diesel engines which improves the performance and efficiency of the engine.
Mr Bromley declares that the Tunit “is a piece of Hardware containing a processor” and that “[S]oftware is downloadable from the Tunit main website to allow the Tunit to be altered, configured and replace programming on the product.” Those statements are generally supported by the evidence.
It is within that context that the applications for cessation of protection are to be understood. The removal applicant’s submissions made it clear to me that it does not seek to interfere with the Registrations insofar as the Goods relate to the Tunit. As I understand it, the removal applicant’s objection is to the broad claim for firmware and software. It is the breadth of that claim which caused the Office to refuse to register a later filed application by the removal applicant[4]. To that extent, the removal applicant would have once qualified as “a person aggrieved” but since changes to the legislation some years ago a removal applicant does not need special standing and is not required to explain its actions.
[4] Trade mark application no. 1532933.
It is clear to me that there is no evidence of use of the Trade Marks, at all, during the relevant period. This seems to be in spite of paragraph 5 of the declaration of Michael Bromley dated 21 January 2014 in which he states that “Retail Business in Australia 2003 to present by BVS Ltd through its representatives has been in excess of $3,000,000.00 AUD”.
The removal opponent’s evidence does little help my understanding of whether or not the Trade Marks were used in the relevant period. Generally, the annexed material fails to bear on this key issue. Some of the removal opponent’s evidence, for example, a copy of a WIPO Arbitration and Mediation Center decision in relation to the domain name tunit.com, has on my reading of that case no direct relevance to these proceedings at all. Copies of invoices from the removal opponent to Australian businesses are dated prior to the relevant period[5] and material taken from the removal opponent’s Australian website, said to have been in existence since 2003, is dated 11 December 2013, again after the relevant period. Mr Bromley declares that “The Tunit is used and advertised by dealers throughout Australia. An example of which is EXH 004.” Exhibit 4 is a printout from the website, on 11 December 2013, postdating the relevant period once more.
[5] In one case, after the relevant period.
Mr Bromley states that:
The product is still sold and advertised in Australia as well as worldwide as shown by advertisement samples. Exh 002. This advert appears in the following magazines every month ‘4x4 Australia’, ‘Top Gear’, ‘Motor’ ‘camping and caravan’ ‘Action autosport express’ and ‘Western 4G’.
In regard to that material Ms Ryan’s written submissions, with which I concur, are that:
Again the sentence is cast in the present tense and says nothing about the Non-Use Period. Exhibit 2 is dated “09/12/2010”. This is the only piece of documentary evidence that is dated within the Non-Use Period. However Exhibit 2 is not a page from any of these magazines. It is artwork for an advertisement. It does not prove that the advertisement was actually published. The statement by Mr Bromley is uncorroborated.
Ms Ryan referred to the statement of Wilberforce J in NODOZ Trade Mark [1962] RPC 1 at 7:
It may well be, of course, that in a suitable case one single act of user of the trade mark may be sufficient ... but in a case where one single act is relied on it does seem to me that that single act ought to be established by, if not conclusive proof, at any rate overwhelmingly convincing proof. It seems to me that the fewer the acts relied on the more solidly ought they to be established …
My finding is that the removal opponent has failed to discharge the onus upon it under section 100 to show use of the Trade Marks in the relevant period.
There being no submission from the removal opponent that there were circumstances which were an obstacle to the use of the Trade Marks during that period,[6] it remain only for me to consider whether discretion should be exercised to allow the Trade Marks to remain protected for some or all of the Goods in spite of non-use.
[6] Section 100(3)(c).
The Discretion
Section 101(3) gives the Registrar a discretion not to remove an unused trade mark “if satisfied that it is reasonable to do so”.[7] Once more, the burden of proof that it is reasonable to allow an unused mark to remain intact rests with the removal opponent.[8]
[7] Section 101(4) has no application to the case before me. It provides that: “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.
[8] Per Yates J in Optical 88 Limited v Optical 88 Pty Limited (No2) (2010) 89 IPR 457 at 511 [273].
As I understood them, the removal opponent’s submissions in this respect were that (i) it had a successful international business under the Trade Marks, (ii) it had not over-extended itself in the reach of its registrations, (iii) it had an ongoing commercial interest in all of the Goods, and (iv) cessation of protection would have a detrimental impact on the business and its employees.
Whether it be relevant to exercise of my discretion under section 101(3) or not, I also refer here to Mr Bromley’s repeated reminder to me that he is not legally trained and that he was unaware of the specific matters of fact and law having a bearing on these actions.
In that regard I note that the removal opponent was professional assisted in the registration of at least one of the International Registrations[9] and that in response to the removal applications an Australian address for service was provided, being another firm of trade mark attorneys[10]. Further, as already stated, prior to the hearing I wrote to the removal opponent with the suggestion that it might benefit from professional advice and/or professional representation at the hearing. I cannot think, then, that the removal opponent has been unfairly disadvantaged by not having representation at the hearing.
[9] Whilst IR 868721 does not appear to have a representative before the International Bureau, the representative for IR 978614 is the firm of Novagraaf UK, of Spring House, 42-44 Fountain Street, Manchester M2 2AX, UK.
[10] Namely, Guy & Hinton, of Level 25, Chifley Tower, 2 Chifley Square, Sydney
In Hermes Trade Mark [1982] RPC 425, a number of factors of relevance to exercise of the discretion were laid out. According to that case it is only the removal opponent’s claim to an ongoing commercial interest in all of the Goods that is a factor of relevance under section 101(3). Nonetheless, it can be said that on a fair reading of the evidence before me there has been no abandonment of the Trade Marks (a matter which the removal applicant concedes) and there is limited evidence of use of the Trade Marks both before and after the relevant period.

Bearing in mind the scope of its applications, the removal applicant’s position is expressed in its written submissions as follows:
If every supplier of electronic equipment, who used software or firmware as parts and accessories to the equipment, could lay claim to every type of software and every type of firmware in class 9, this would create an unreasonable block to obtaining trade mark registration for other traders of completely separate goods even if there is no prospect of deception or confusion by the use of similar trade marks. It is submitted that that would not be in the public interest.
That is the case here. The Removal Applicant has applied for registration of the logo mark TUNEIT (logo) (1532933). As a result of the citations of the two Trade Marks the specification of goods of application no 1532933 has been reduced to “computer application software for mobile phones namely software for adjusting equalization settings for music” … Yet, because the two Trade Marks are registered for “computer software” generally, the Applicant cannot achieve registration. Adjusting equalization settings for music has nothing to do with “electronic engine control, performance and tuning equipment for vehicles and engines” and/or “tuning, testing, adjustment and alignment apparatus for vehicles”. Two such products would be in completely different markets. There is no risk of deception or confusion. … there is no suggestion that the Opponent is using the tunit trade mark on anything other than what Mr Bromley has previously described as the “tunit”. There is no evidence that there are any sales of firmware and software otherwise that as parts and accessories of the tunit.
The removal applicant submitted that the evidence showed that the removal opponent was essentially a “one-product” business and that its interest in the Trade Marks was not increased by any evidence of brand extension.
I was referred to the case of Insfin Insurance & Finance Group Pty Ltd v Razor USA LLC [2009] ATMO 81 at [21] where the Delegate said:
My own knowledge of the software market suggests that there is no expectation that a company which provides software for insurance purposes will be expected to also provide software for computer games or word processing, for example. I consider that it is possible to create relatively fine distinctions within this particular market without creating a real tangible chance of confusion within the market place.
What I have seen does no more than suggest to me that, had the removal opponent better marshalled its records, there may have existed some proof of use of the Trade Marks in the relevant period. Absent that proof my earlier findings were unavoidable. Nevertheless, in spite of the complete lack of relevant evidence of use of the Trade Marks in relation to any of the Goods (be it either the Tunit product, or to the point, computer firmware or software), I am inclined to exercise my discretion by way of preserving the removal opponent’s interest in firmware or software directly linked to the goods of principal interest to the removal opponent.
In my discretion protection for the Trade Marks is to be reduced in the manner described hereunder.
Decision
Subsection 101(1) of the Act 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.
I find that, in each case, the ground for cessation of protection has been established but I am exercising the Registrar’s discretion and allowing the Trade Marks to remain protected in Australia for the following class 9 goods:
1089341 Magnetic data carriers, data processing equipment and computers, computer hardware; computer firmware and computer software (including software downloadable from the Internet) for performance and tuning equipment for diesel engines.
1269484 Electronic engine control, performance and tuning equipment for diesel engines; computer hardware, computer firmware and computer software (including software downloadable from the Internet or by compact disc media) for performance and tuning equipment for diesel engines; downloadable online publications, including manuals, all for the aforesaid goods.
If the Registrar is served with a notice of appeal before protection ceases, I direct that protection may not cease until the appeal is discontinued or, in the event of a decision by the court, if protection is contrary to any court order.
Costs
As a rule, costs follow the cause. In essence, the removal applicant is successful. Exercise of my discretion in the removal opponent’s favour does not alter that fact. Accordingly, in both cases I award costs against the removal opponent in this proceeding, calculated according to Schedule 8 of the Trade Marks Regulations 1995.
Debrett G. Lyons
Hearing Officer
Trade Marks Hearings
13 April 2015

[2015] ATMO 31

13 April 2015

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