Turner Leisure Products Pty Ltd v Dometic Sweden AB

[2023] ATMO 187

TRADE MARKS ACT 1995

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

Re:Opposition by Turner Leisure Products Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Dometic Sweden AB to remove trade mark number 1402065 KAMPA (classes 4, 6, 7, 8, 11, 20, 21, 22) and trade mark number 1581527 Kampa (class 12) – both registered in the name of Turner Leisure Products Pty Ltd

Delegate:

Katrina Brown

Representation:

Removal Opponent: Susan Gatford of counsel, instructed by Emma Berry and Paul Kirton of Macpherson Kelley

Removal Applicant: Francesca Colubriale and Danielle Spath of Spruson & Ferguson

Decision:

2023 ATMO 187

Trade Marks Act 1995 (Cth) – applications under section 92(4)(b) – complete removal sought in respect of each registration – use within relevant period demonstrated for 1581527 for some goods – discretion exercised to retain 1402065 & 1581527 in respect of some goods

Background

1. Turner Leisure Products Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark registrations (‘Registrations’):

TM No.	Trade Mark	Registered Goods	Short Title
1402065	KAMPA	Class 4: Gases for use as illuminants; wicks; candles; barbecue lighting fuel; butane for lighting; gas for lighting; gases for use in lighting; propane for lighting Class 6: Tent pegs of metal; tent poles of metal Class 7: Air compressors; air powered tools; compressed air tools; electric hand tools; electric kitchen tools; electric tools; hand held cordless power tools; hand held power operated tools; kitchen tools (electric utensils); portable air tools; portable electric power tools; shower pumps; water pumps for showers Class 8: Garden tools (hand-operated); hand held tools, hand-operated; sprays (hand-operated tools); sprays (parts of hand-operated tools); hand tools (hand operated) for use in camping Class 11: Apparatus for lighting; bulbs for lighting; electrical appliances for lighting; LED lighting apparatus; lighting (other than for medical photographic use); outdoor lighting; garden showers Class 20: Camp beds; camping furniture; foam camping mattresses; furniture for camping; mattresses (sleeping pads of foam plastic for camping); sleeping bags for camping; sleeping mats for camping (mattresses); sleeping pads of foam plastic for use when camping (mattresses); non-metallic pegs (tent); camping furniture; folding chairs Class 21: Household containers; kitchen utensils Class 22: Camping tents; tents for camping; camping tents; ropes for tents; camping tents	065 Mark
1581527	Kampa	Class 12: Camping trailers; canopies for trailers; trailer tents; roof boxes for vehicles	527 Mark

1. On 20 August 2020, Dometic Sweden AB (‘Removal Applicant’) filed applications pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of each of the Registrations. The applications were made in respect of all the registered goods; that is for complete removal of each of the Registrations from the Register of Trade Marks (‘Register’).  

2. The Removal Opponent filed a Notice of Intention to Oppose in respect of each of the Registrations on 7 September 2020, followed by a Statement of Grounds and Particulars on 7 October 2020.

3. The Removal Applicant filed Notices of Intention to Defend on 6 January 2021.

4. In due course the Removal Opponent filed the following declarations as evidence in support and evidence in reply:

• Declaration of Benjamin Scott Finger (Director of Removal Opponent and Director of Sitro Group Australia Pty Ltd) made on 7 April 2021 with Exhibits BF-1 to BF-10 (‘Finger 1’); and

• Declaration of Benjamin Scott Finger made on 13 September 2021 with Exhibits BF-1 to BF-2 (‘Finger 2’).

1. The Removal Applicant filed the following declarations as evidence in answer:

• Declaration of Kasumi Champion (Trade Mark Assistant, Shelston IP Pty Ltd) made on 11 July 2021 with Annexures KC-1 to KC-3; and

• Declaration of Jason Wordley (Finance Director of Dometic UK Awnings Ltd) made on 9 July 2021 with Annexures JW-1 to JW-3.

1. After the period for filing evidence ended, the parties requested to be heard. These matters were heard by me, a delegate of the Registrar of Trade Marks (‘Registrar’), on 3 August 2022. The Removal Opponent was represented by Susan Gatford of counsel, instructed by Emma Berry and Paul Kirton of Macpherson Kelley. The Removal Applicant was represented by Francesca Colubriale and Danielle Spath, both of Spruson & Ferguson.

2. After the hearing was held but before the matters were decided, the parties requested a cooling-off period. The cooling-off period has been discontinued and as such the matters are now ready to be decided. 

Preliminary issue

1. On 2 August 2022, the Removal Opponent requested to rely on the following material filed out of time pursuant to reg 21.15(4) of the Trade Marks Regulations 1995 (Cth) (‘Regulations’):

• Declaration of Benjamin Scott Finger made on 2 August 2022 with Exhibit BF-1 (‘Finger 3’).

1. In Finger 3, Mr Finger declares that he is a director of the Removal Opponent and a director of Sitro Group Australia Pty Ltd (‘Sitro’). Relevantly, he further declares:

   [6] I am informed by Emma Berry of Macpherson Kelley and believe that the ASIC current and historical search report for Sitro is important, that it was inadvertently excluded from the exhibits attaching to these declarations [Finger 1 or Finger 2], and that its absence was realised only after the Applicant’s submissions were received.

   [7] I am informed by Emma Berry of Macpherson Kelley and believe that the inadvertent exclusion of the ASIC current and historical search report for Sitro was as a result of an oversight by Macpherson Kelley when the evidence was being prepared by Emma Berry and Paul Kirton of Macpherson Kelley. I am informed by Emma Berry that an ASIC search for Sitro was applied for on 1 April 2021 at the time of the evidence being prepared, however due to an oversight by Macpherson Kelley, the search was not included in Exhibit BF-1 of the Evidence in Support and the declaration did not reflect its intended inclusion.

2. Exhibit BF-1 to Finger 3 contains a copy of the search report from the Australian Securities and Investments Commission (‘ASIC’) in respect of Sitro. The search report is dated 1 April 2021.

3. Given that Finger 3 was filed so close to the hearing date, at the hearing I offered the Removal Applicant the opportunity to make written submissions in respect of whether Finger 3 should be allowed, to be filed on a set date after the hearing. The Removal Applicant informed me that they were prepared to address Finger 3 in their oral submissions. Consequently, both parties made submissions in respect of Finger 3 at the hearing.

4. In certain circumstances it may be appropriate to give weight to material that is filed out of time. The Registrar is not bound by the rules of evidence and may be informed on any matter as she reasonably believes to be appropriate,[1] provided that the parties have an adequate opportunity to put their case.

   [1] Regulations reg 21.15(4).

5. In this context, I observe that the information conveyed in Finger 3 is highly probative, as it goes directly to the question of whether Sitro is an authorised user of the Registrations (an issue crucial to the determination of these removal matters). It is in the public interest in ensuring the accuracy of the Register that material pertinent to trade mark ownership and use is not excluded from consideration.

6. I also note that the search report is dated 1 April 2021, some 6 days before the evidence in support was filed. This lends support to the statements in Finger 3, namely that the search report was conducted as part of preparing the evidence but was inadvertently excluded from the evidence in support. As such, this is not merely an instance where a party is attempting to plug a hole in its case which has been brought to its attention in the summary of submissions made by the other party. There are additional circumstances at play in the current matters.

7. In this instance, I am satisfied that there are compelling reasons for weight to be given to Finger 3 when determining these matters.

The relevant statutory provisions

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. Section 92(4)(b) 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.

2. I note that a removal application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the trade mark application.[2] I confirm that the filing date of each of the Registrations predates the relevant removal application by more than five years.

   [2] Act, s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

3. In these matters, the Removal Applicant alleges that the Removal Opponent did not use the Registrations in Australia in relation to the registered goods at any time in the three-year period ending on 20 July 2020 (‘Relevant Period’).

4. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b). The relevant standard of proof is on the balance of probabilities.[3] The allegation can be rebutted by establishing that the Removal Opponent, or an authorised user:

• used the relevant trade mark in Australia during the three-year period in relation to the registered goods;[4] or

• did not use the relevant trade mark because of circumstances that were an obstacle to the use of the trade mark during the three-year period.[5]

  [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

  [4] Act s 100(3)(a).

  [5] Act s 100(3)(c).

1. The ‘use’ required to be demonstrated is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to those goods or services.[6] It does not require an actual sale or purchase of the goods.[7] A commercial dealing in the goods under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’.

   [6] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   [7] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).

2. The extent of use required is not onerous and a ‘relatively small amount of use’ may be sufficient to rebut an allegation of non-use.[8] Potentially, a single bona fide use of a trade mark during the relevant period may be sufficient to prevent removal.[9]

   [8] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).

   [9] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

3. In accordance with s 101 of the Act if the requisite use is not established, I may decide to remove the relevant trade mark from the Register in respect of any, or all, of the goods or services identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the trade mark.

Discussion

1. From the outset, I observe that capitalisation is the only difference between the trade marks which are the subject of the Registrations. I consider the trade marks to be substantially identical, and use of one will constitute use of the other. For ease, use of ‘Trade Mark’ in this decision refers to ‘KAMPA’ or ‘Kampa’.

2. The first issue to be determined is whether the Removal Opponent has established that it, or an authorised user, used the Trade Mark in Australia in respect of the registered goods during the Relevant Period.

Was there use of the Trade Mark during the Relevant Period?

1. In respect of use of the Trade Mark within the Relevant Period, Finger 1 states:

   From at least December 2010 until at least October 2017, the Opponent advertised and sold the Goods bearing the Marks, including camper trailers (that consisted of trailers, tents, awnings, tent poles, guy ropes, tent pegs, and related items) and their parts. Between November 2017 and July 2019, the Opponent ceased selling these goods. In August 2019, the Opponent sought to reintroduce the Marks on a new wide selection of Goods.

   The Opponent began preparing and selling the Goods bearing the Marks to Grocery Holdings Pty Ltd (Coles) in January 2020 and June 2020, respectively, for on-sale in the Coles September 2020 “Best Buys” campaign.

2. Exhibit BF-3 to Finger 1 is the only evidence provided to support the use asserted to have occurred at the beginning of the Relevant Period. This exhibit contains captures of the website ‘ (‘Kampa Website’) sourced from an internet archiving service. The captures dated 12 October 2017 (‘Screen Captures’), demonstrate use of the Trade Mark (be it either in respect of its use in the domain name kampa.com.au, or the use of the plain word on the actual webpages) in relation to camper trailers and trailer tents within the Relevant Period. Nevertheless, there is another hurdle to overcome in respect of the Screen Captures, namely whether I am satisfied that they demonstrate use by the Removal Opponent, or an authorised user. Whilst Finger 1 states that the Kampa Website is the Removal Opponent’s website, this is not substantiated with documentary evidence. Notably, the Screen Captures state that ‘Kampa is a Sitro brand’ and the ‘contact us’ section provides the details of ‘Sitro Group Australia’.[10] As such, I am not satisfied that the Screen Captures demonstrate use directly by the Removal Opponent. However, I am satisfied on the balance of probabilities that the Screen Captures show use of the Trade Mark by Sitro. Consequently, for the Screen Captures to assist in demonstrating use within the Relevant Period, the Removal Opponent will need to establish that Sitro is an authorised user.

   [10] Finger 3, Exhibit BF-1.

3. Similarly, I am not satisfied that the evidence supports the assertion that the Removal Opponent itself used the Trade Mark in respect of commercial dealings with Coles during the Relevant Period. Exhibit BF-2 to Finger 1 contains a copy of a brand presentation declared to have been presented to Coles in December 2019, along with email correspondence to Coles relating to proposed artwork dated within the Relevant Period. Finger 1 does not state who made the presentation to Coles, and the presentation itself makes no reference to the Removal Opponent or any other entity. However, the email correspondence is clearly between Coles and a representative of Sitro, as evidenced by the signature block on the emails, and affirmed in Finger 1.

4. The remainder of the evidence put forward to support use of the Trade Mark in respect of commercial dealings with Coles during the Relevant Period suffers the same difficulties. For example, Exhibit BF-6 to Finger 1 contains purchase orders from Coles (a number of which are dated within the Relevant Period) in respect of some of the registered goods. Whilst the purchase orders list ‘KAMPA’ as the brand, the purchase orders are clearly between Coles and Sitro. Consequently, for any of this material to assist in demonstrating use within the Relevant Period, the Removal Opponent will need to establish that Sitro is an authorised user within the meaning of the Act.

Was the use during the Relevant Period by an authorised user?

1. Section 7(3) of the Act provides:

   An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

2. Section 8 of the Act relevantly provides:

   (1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

   (2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

3. It is evident that ‘control’ is a fundamental aspect of authorised use. In Lodestar Anstalt v Campari America LLC Besanko J observed the following in respect of the degree of control required to satisfy s 8 of the Act:

   [C]ontrol in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time ... Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance.[11]

   [11] [2016] FCAFC 92, [97].

4. Section 8 provides non-exhaustive examples of the type of control required to establish authorised use including ‘quality control’ over goods or services and ‘financial control’ over the relevant trading activities. The requisite control may also exist in circumstances where the registered owner and user of the trade mark operate with a ‘unity of purpose’.[12]

   [12] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [45] (Reeves, Jagot and Rangiah JJ).

5. In the current matter, it is submitted that the Removal Opponent and Sitro operate with a unity of purpose as they are related companies with common directors. Exhibit BF-1 to Finger 1 and Exhibit BF-1 to Finger 3 contain ASIC search reports for the Removal Opponent and Sitro. The pertinent details of the two companies can be summarised as follows:

• For the entirety of the Relevant Period, the directors of the Removal Opponent were Nicola Di Pietrantonio and Philip Simpfendorfer.

• From 17 March 2021 (after the Relevant Period), the directors of the Removal Opponent were Nicola Di Pietrantonio, Philip Simpfendorfer and Benjamin Finger.

• From the beginning of the Relevant Period up until 30 October 2018, the directors of Sitro were Nicola Di Pietrantonio and Philip Simpfendorfer.

• From 31 October 2018, the directors of Sitro were Nicola Di Pietrantonio, Philip Simpfendorfer and Benjamin Finger.

• For the entirety of the Relevant Period, the Removal Opponent and Sitro had the same registered office and principal place of business.

1. Clearly, there is a relationship between the Removal Opponent and Sitro. The companies share the same registered office and principal place of business and from the beginning of the Relevant Period up to 30 October 2018, the directors of the Removal Opponent and Sitro were identical. However, the directors of the two companies were not identical for the remainder of the Relevant Period. As such there was not a total commonality of directors for a substantial amount of the Relevant Period (21 months of the 36-month period). In this respect I refer to Trident Seafoods Corporation v Trident Foods Pty Ltd, where the court stated:

   The issue is not whether one company controlled the other but rather whether [the trade mark owner] … had control over [the trade mark user’s] use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose.[13]

   [13] Ibid (emphasis added).

2. From the evidence I am satisfied that it must be inferred that the Removal Opponent and Sitro operated with a unity of purpose when the directors were identical, that is during the Relevant Period up to and including 30 October 2018. It follows from this finding, that at the time of the use in the Screen Captures being 12 October 2017, the two companies operated with a unity of purpose such that Sitro was an authorised user of the Trade Mark at that time. Consequently, I am satisfied that the Removal Opponent has rebutted the allegation of non-use in respect of camping trailers and trailer tents.

1. However, I am not satisfied that it must be inferred from the evidence that the two companies operated with a unity of purpose when the directors were not identical, that is from 31 October 2018 and beyond the Relevant Period. The evidence does not contain sufficient information about the structure and operation of the two companies for that inference to be made. Whilst I note that the directorship of the two companies was once again aligned after the Relevant Period, with Mr Finger becoming a director of the Removal Opponent, that did not occur until some 8 months after the Relevant Period. The evidence does not contain any information as to whether the intention to appoint Mr Finger as a director of the Removal Opponent existed during the Relevant Period. Consequently, I am not satisfied that Sitro was an authorised user of the Trade Mark at the time of the commercial dealings with Coles, which all occurred after 2018.  

2. For the sake of completeness, I also note that Finger 1 states that ‘[s]ince at least 2011, the Opponent has licensed Sitro to use the Marks on camping and outdoor leisure goods’. No further information about the terms of the licensing arrangement between the Removal Opponent and Sitro have been provided. However, statements in Finger 1 imply that the licensing arrangement involves the Removal Opponent exercising quality control over use of the Trade Mark by Sitro. In this respect, Finger 1 indicates that the directors of the Removal Opponent exercise quality control over Sitro’s use of the Trade Mark and provides examples such as ‘inspecting and approving any products, packaging and marketing materials and other artworks that depict the Marks’. I do not find these statements persuasive. Finger 1 is silent as to whether these arrangements in respect of quality control were in place during the Relevant Period. Notably, no documentary evidence has been provided to support that these quality control activities were undertaken by the Removal Opponent.

3. In summary, I am only satisfied that the Removal Opponent has rebutted the allegation of non-use in respect of a subset of the goods for which the 527 Mark is registered, namely camping trailers and trailer tents.

Was there an obstacle to use of the Trade Mark during the Relevant Period?

1. Section 100(3)(c) provides that a removal opponent may rebut an allegation of non-use by establishing that the failure to use the trade mark in the relevant three-year period was ‘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’.

2. The SGP states that the Removal Opponent experienced circumstances resulting from the Covid-19 pandemic affecting traders generally which presented obstacles to the use of the Trade Mark during the Relevant Period. Finger 1 provides general examples of how the Removal Opponent may have been affected such as it ‘would have designed more packaging … and accepted more purchase orders’. However, there is no documentary evidence to support these statements.

3. I am not satisfied that the Removal Opponent has established that there was an obstacle to use of either of the Registrations during the Relevant Period.

Should the Registrar’s discretion be exercised?

1. Section 101(3) of the Act provides:

   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.

2. In these matters, the question is whether it is reasonable to exercise the discretion to allow the:

• 065 Mark to remain on the Register in respect of any of the goods for which it is registered.

• 527 Mark to remain on the Register in respect of canopies for trailers and roof boxes for trailers.

1. The Removal Opponent bears the onus of satisfying me that it is reasonable to exercise the discretion in its favour.[14] The discretion is expressed in the present tense, and as such it requires consideration of whether, at the time I make this decision, it is reasonable not to remove the Registrations.[15]

   [14] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

   [15] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [41] (Jacobson, Yates and Katzmann JJ) (‘Austin’); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).

2. The discretion conferred by s 101 is broad and limited only ‘by the subject-matter, scope and purpose of Part 9 of the Act’.[16] In Austin, Nichols & Co Inc v Lodestar Anstalt, the purpose of Part 9 of the Act was expressed as follows:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[17]

   [16] Austin (n 15) [35].

   [17] Ibid [38].

3. A range of circumstances may be considered in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy me that it is reasonable to exercise the discretion.[18]

   [18] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J).

4. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court summarised the range of factors that have been held to be relevant to the exercise of the discretion:

   The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[19]

   [19] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

5. Furthermore, use by a related company may be a relevant consideration in the exercise of the discretion in favour of the registered owner, despite not being able to establish that the related company was an authorised user.[20]

   [20] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [115] (Gleeson J).

6. In these matters, I am satisfied that it is reasonable to exercise the discretion in favour of the Removal Opponent for the following reasons:

• There has been use of the Trade Mark by Sitro before, during, and after the Relevant Period with the knowledge and acquiescence of the Removal Opponent. There appears to be a close relationship between the Removal Opponent and Sitro; with common directorship at various times, overlapping but not identical directorship at other times, and the same principal place of business and registered office since 2005.

• There has been use of the Trade Mark by Sitro in respect of a subset of the registered goods after the Relevant Period. Exhibits BF-5 and BF-6 to Finger 1 contain purchase orders between Sitro and Coles in respect of goods bearing the Trade Mark dated in 2020 and 2021. Additionally, Exhibit BF-7 to Finger 1 contains a ‘Coles Best Buys’ catalogue advertising goods bearing the Trade Mark as being available in select Coles stores across Australia on 4 September 2020 (shortly after the Relevant Period). I acknowledge that Finger 1 and Finger 3 also shows use of the following trade mark, which I consider to be substantially identical to the Trade Mark:

• The directorship of the Removal Opponent and Sitro was once again aligned on 17 March 2021. It is reasonable to infer that from that date the two companies were operating with a unity of purpose such that Sitro was an authorised user of the Trade Mark. Given that the discretion is expressed in the present tense, the following observations of Finn J come to mind:

  I can see no useful purpose to be served by removing the trade mark from the register simply for the purpose of, in effect, compelling a fresh application to be made [by the Removal Opponent].[21]

  [21] C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561, [170] (Finn J).

1. However, I am only satisfied that the discretion should be exercised in favour of retaining the Registrations for the goods that were part of the dealings with Coles (or goods that are obviously similar) be that during, or after, the Relevant Period (‘Coles Campaign’), to the extent that those goods are within the ambit of the Registrations. I am not satisfied in respect of the broader range of goods covered by the Registrations. The evidence only shows use of the Trade Mark on the Screen Captures and in respect of the Coles Campaign. The evidence does not establish the existence of a residual reputation in the Trade Mark arising from use prior to, or during, the Relevant Period. Nor is the evidence sufficient to establish a reputation in the Trade Mark arising from use after the Relevant Period. Additionally, whilst it is stated in Finger 1 that the Removal Opponent intends to expand the range of goods, nothing more than this bare statement has been provided. As such there is no legitimate basis or evidence before me to identify what goods the Removal Opponent intends to include in its expanded range.

2. In respect of retaining the Registrations for similar goods, the Removal Opponent specifically asserted that its use on a camping stove should entitle it to retain a variety of lighting fuels including butane in class 4. I accept that the camping stove for which use has been demonstrated requires butane gas to operate. However, that is not, without more, sufficient to satisfy me that the goods are similar. On the face of it, lighting fuels have an entirely different nature and use to that of camping stoves, and the Removal Opponent has not provided any evidence to establish that the goods have the same trade channels.

3. For the above reasons, I am only satisfied that it is reasonable to exercise the discretion in favour of retaining the Registrations for the following goods which the evidence (specifically Exhibits BF-2, BF-3, BF-6 and BF-7 to Finger 1) demonstrates that the Trade Mark was used on, or in relation to, during the Coles Campaign.  

Goods in Registrations	Good in Coles Campaign
Class 6: Tent pegs of metal; tent poles of metal	Tent pegs; extendible tent poles
Class 8: Garden tools (hand-operated); hand held tools, hand-operated; hand tools (hand operated) for use in camping	Foldable shovel; tent peg mallet; rubber mallet
Class 11: Apparatus for lighting; LED lighting apparatus; lighting (other than for medical photographic use); outdoor lighting	Mosquito lantern; torch; LED head lamp; light with bug zapper; camping lantern
Class 12: Canopies for trailers	Tarps
Class 20: Camping furniture; foam camping mattresses; furniture for camping; mattresses (sleeping pads of foam plastic for camping); sleeping bags for camping; sleeping mats for camping (mattresses); sleeping pads of foam plastic for use when camping (mattresses); non-metallic pegs (tent); folding chairs	Camping chair; bi-fold camp table; air bed; air bed mattress; camp mats; sleeping bag
Class 21: Household containers	Collapsible buckets; collapsible dishrack; collapsible tubs; collapsible laundry basket; collapsible bowl; pop-up kettle
Class 22: Camping tents; tents for camping; ropes for tents	Tents; change shelter; rope

1. For the sake of completeness, I note that the Removal Opponent asserted that use of the Trade Mark on, or in relation to, an airbed with a built-in foot pump constituted use in respect of air compressors, air powered tools, electric hand tools and the like in class 7. I do not agree. Use of a trade mark is construed as being in relation to the product itself, and does not, by extension, constitute use in relation to each component of the product.[22] Here, the airbed is the product and the built-in foot pump is a component of the product. As such, I am not satisfied that use of the Trade Mark on, or in relation to, an airbed with a built-in foot pump constitutes use in respect of air compressors, air powered tools etc., in class 7.

   [22] Re Spillers Ltd’s Application (1953) 70 RPC 51.

Decision

1. The Removal Opponent has not rebutted the allegation of non-use in respect of trade mark registration 1402065. However, I am satisfied that it is reasonable to exercise the Registrar’s discretion and retain this registration for the goods set out at [53] of this decision.

2. In respect of trade mark registration 1581527, the Removal Opponent has rebutted the allegation of non-use for camping trailers and trailer tents. Furthermore, I am satisfied it is reasonable to exercise the Registrar’s discretion and retain this registration for canopies for trailers.

3. Accordingly, I direct that one month from the date of this decision the specification of goods be amended as follows:

1402065

Class 4: Gases for use as illuminants; wicks; candles; barbecue lighting fuel; butane for lighting; gas for lighting; gases for use in lighting; propane for lighting

Class 6: Tent pegs of metal; tent poles of metal

Class 7: Air compressors; air powered tools; compressed air tools; electric hand tools; electric kitchen tools; electric tools; hand held cordless power tools; hand held power operated tools; kitchen tools (electric utensils); portable air tools; portable electric power tools; shower pumps; water pumps for showers

Class 8: Garden tools (hand-operated); hand held tools, hand-operated; sprays (hand-operated tools); sprays (parts of hand-operated tools); hand tools (hand operated) for use in camping

Class 11: Apparatus for lighting; bulbs for lighting; electrical appliances for lighting; LED lighting apparatus; lighting (other than for medical photographic use); outdoor lighting; garden showers

Class 20: Camp beds; camping furniture; foam camping mattresses; furniture for camping; mattresses (sleeping pads of foam plastic for camping); sleeping bags for camping; sleeping mats for camping (mattresses); sleeping pads of foam plastic for use when camping (mattresses); non-metallic pegs (tent); camping furniture; folding chairs

Class 21: Household containers; kitchen utensils

Class 22: Camping tents; tents for camping; camping tents; ropes for tents; camping tents

1581527

Class 12: Camping trailers; canopies for trailers; trailer tents; roof boxes for vehicles

1. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the Registrations be dealt with as the Court sees fit.

Costs

1. Both parties have requested costs. However as both parties have had a degree of success each party should bear its own costs.

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 November 2023