United Rentals Inc v United Equipment Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by United Rentals Inc to applications under section 92 of the Trade Marks Act 1995 (Cth) by United Equipment Pty Ltd to remove trade mark number 1837156 for the trade mark UNITED RENTALS and trade mark number 1837157 for the trade mark UNITED RENTALS & device (both in classes 7, 9, 11, 35, 37, 39, 40, 41, 42 and 43) – both in the name of United Rentals Inc

Delegate:

Anne Makrigiorgos

Representation:

Opponent: K & L Gates

Applicant: Arns & Associates

Decision:

2024 ATMO 128

Trade Marks Act 1995 (Cth) – applications for removal of two marks under s 92(4)(b) – limited use shown during relevant period – no circumstances established that were an obstacle to use – discretion not exercised – trade marks to be partially removed

Background

On 16 June 2022, United Equipment Pty Ltd (‘Applicant’) filed applications under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Applications’) for the complete removal of the following registered trade marks filed on 7 April 2017 in the name of United Rentals Inc (‘Opponent’):
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Registration Numbers

Trade Marks

1837156

UNITED RENTALS

(‘Word Mark’)

1837157

(together ‘Registrations’)

(‘Device Mark’)

(together ‘Trade Marks’)

both covering identical goods and services in classes 7, 9, 11, 35, 37, 39, 40, 41, 42 and 43. Full details of the goods and services are reproduced at Annexure A (‘Registered Goods and Services’).

On 16 August 2022, the Opponent filed Notices of Intention to Oppose removal of the Trade Marks. On 14 September 2022, the Opponent filed its Statement of Grounds and Particulars covering both Trade Marks (‘SGP’). The Applicant filed Notices of Intention to Defend on 4 October 2022.
The Opponent filed Evidence in Support (‘EIS’) covering both Trade Marks on 22 December 2022. The Applicant did not file Evidence in Answer.
The parties were given the opportunity to be heard and requested a decision by way of written submissions. The Opponent filed written submissions on 20 February 2024 prepared by Chris Round and Jian Hui Gu of K & L Gates and the Applicant filed its submissions on 27 February 2024 prepared by D.W. Thompson of Counsel. I have decided this matter based on the particulars set out in the SGP, the EIS and the written submissions of the parties.
Evidence
The following EIS was filed:
Declaration of Joli Gross, senior vice president, general counsel and corporate secretary of the Opponent dated 22 December 2022 with Annexures JG-1 to JG-10 and Confidential Annexure JG-11 (‘Gross’).
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register for non-use.
In respect of this matter, s 92(4)(b) relevantly provides (notes omitted):
Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)…
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the Trade Marks[2] and I confirm that five years since filing the Trade Marks has in fact passed.
[2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Under s 92(4)(b), the relevant period during which the Opponents must establish use of the Trade Marks is the three year period ending on 16 May 2022 (‘Relevant Period’).
The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Marks in good faith in respect of any or all of the goods and services identified in the Removal Applications in the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]
[3] s 100(1)(c).
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.
[5] s 100(3)(c).
In Blount Inc v Registrar of Trade Marks, Branson J observed:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[6]
[6] [1998] FCA 440 (citation omitted).
It follows that unless the Opponent evidences convincing proof of use of the Trade Marks in the Relevant Period in relation to the Registered Goods and Services to the satisfaction of the Registrar, the oppositions to removal will not be established.
In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[8] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9] Little weight is to be given to assertions of use which are not supported by documentary evidence.[10]
[7] [2001] FCA 261, [16].
[8] Ibid [17].
[9] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[10] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Delegate Wilson).
The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of a sign as a badge of origin.[11]
[11] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
Section 101 provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any, or all, of the goods and services for which they are registered. Relevantly, the section provides:
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
Discussion and Reasons
Use During the Relevant Period
In summary, the SGP claims that the Opponent has used the Trade Marks in Australia, or the Trade Marks with additions or alterations not substantially affecting their identity, in good faith in connection with the Registered Goods and Services throughout the Relevant Period. During the Relevant Period, the Opponent’s related entity, United Rentals Australia Pty Ltd (‘United Rentals Australia’) offered goods and services bearing the Trade Marks, or marks with additions or alterations not substantially affecting their identity throughout Australia under the control or authorisation of the Opponent. Insofar as any specific goods or services on which the Trade Marks were not used during the Relevant Period, the Trade Marks were not used on those goods or services because of circumstances that were an obstacle to the use of the Trade Marks during the Relevant Period. Even if the Registrar finds that the grounds on which the non-use applications are based have been established, the Registrar should nevertheless exercise the discretion not to remove or limit the protection of the Trade Marks pursuant to section 101(3).
Summary of EIS
Gross provides a history of the Opponent which was founded in September 1997. The Opponent is a worldwide equipment rental company serving construction and industrial customers, utilities, municipalities, homeowners and others.
Gross claims the Opponent’s website at (‘Opponent’s Website’) prominently displays the Trade Marks on every page. Gross provides Wayback Machine[12] extracts of the Opponent’s Website on the following dates within the Relevant Period: 18 October 2019, 10 December 2020, 8 November 2021 and 18 January 2022, together with screenshots of the Opponent’s Website dated 14 December 2022. I note use of the Device Mark on all the extracts and screenshots and use of the Word Mark in respect of an app on the extracts in 2020 and 2021.
[12] >
Gross claims that the Opponent’s Website was accessed by over 19,000 Australian consumers in the Relevant Period and provides a breakdown of website traffic figures from Australia for the Opponent's Website together with screenshots from Google Analytics evidencing these figures.
Gross provides details of the Opponent’s social media presence on the platforms Facebook®, Twitter®, LinkedIn®, YouTube® and Instagram® (‘Social Media Platforms’) together with followers, subscribers and likes as of 22 December 2022. Gross provides screenshots of pages from these Social Media Platforms on 14 December 2022 which, other than LinkedIn®, evidence creation of these Social Media Platforms before the Relevant Date. No indication is provided by Gross as to the followers, subscribers and likes within the Relevant Period nor how many, if any, followers, subscribers and likes are from Australian consumers.
Gross refers to the acquisition by the Opponent on 25 May 2021 of General Finance Corporation (‘General Finance’), a provider of mobile storage, liquid containment, cabin and modular office space. Gross states the acquisition was intended to, inter alia, provide entry into Australia and New Zealand, with an established platform in Australia, Royal Wolf Trading Australia Pty Limited (‘Royal Wolf’),[13] a wholly owned subsidiary of General Finance. Gross provides an extract from the Opponent’s 2021 Annual Report and extracts from third party reports concerning the acquisition.
[13] Now United Rentals Australia by virtue of a change of corporate name. Any reference to Royal Wolf in the following pages of this decision is also a reference to United Rentals Australia and vice versa.
Gross states that Royal Wolf has 25 branches in Australia and is an industry specialist in the ‘design, hire, sale and modification of new and refurbished shipping containers’. Gross claims Royal Wolf has around 2,000 active suppliers throughout Australia and New Zealand.
Gross declares that Royal Wolf published announcements on both its website at (‘Royal Wolf Website’) and its Facebook® account, notifying its customers that Royal Wolf has joined the Opponent and had adopted the new trading names United Rentals Australia and ‘Royal Wolf Australia, a United Rentals Company’ (‘Announcements’). Gross provides a Wayback Machine extract of the announcement published 25 May 2021 on the Royal Wolf Website dated 24 June 2021 where I note the mark appears in addition to the following text:
and a screenshot of the Facebook® entry dated 27 May 2021 which shows the following:
.
Gross also provides copies of notices announcing that Royal Wolf has joined the Opponent sent by United Rentals Australia directly to its 15,792 customers and 994 vendors on 27 May 2021 and 21 June 2021 respectively. The notices essentially used the same wording as the Announcements.
Gross states that the Opponent authorised United Rentals Australia to use the Trade Marks at all times between 25 May 2021 to 16 May 2022.
Gross declares that United Rentals Australia markets portable container products, including portable storage, portable buildings and freight which are the same as or are similar or closely related to the Registered Goods and Services. Specifically, United Rentals Australia’s products and services are offered to the same industries and have the same applications as the Registered Goods and Services such as building and construction, industrial, retail, moving and transportation.
Gross attests that Trade Marks are featured in a prominent manner on United Rentals Australia’s website and its LinkedIn® account. Gross annexes an undated LinkedIn® page and Wayback Machine snapshots of United Rentals Australia’s website, which I note is the Royal Wolf Website, on 23 June 2021, 2 and 10 December 2021, 6 February 2022, 11 April 2022 and 12 October 2022. I note from the snapshots that United Rentals Australia is claimed to be an industry leader in the hire, technical modification and sale of shipping containers.
Gross claims that from 5 October 2021 to 16 May 2022, the Royal Wolf Website had over 200,000 sessions from Australia and provides a breakdown of website traffic from Australia from 5 October 2021 to 20 December 2020 together with screenshots from Google Analytics evidencing these figures.
Gross states that the Trade Marks have been used and promoted extensively throughout Australia by United Rentals Australia on invoices and quotations, brochures and business letterheads and annexes confidential examples. I note there is one invoice for a refrigerated event dated 15 May 2022, one quote for a lunch room with elec air and kitchen[14] dated 16 May 2022, undated letterhead and a 2021 brochure.
[14] Which includes the hire of a hot water urn, tables, chairs, a fridge and microwave itemised on the quote with zero cost.
Gross claims the Trade Marks retain a significant reputation in Australia for the Registered Goods and Services or goods and services that are closely similar or related to the Registered Goods and Services and they are well known in the marketplace. Gross further claims that the Opponent and United Rentals Australia intend to continue to develop and promote the Registered Goods and Services by reference to the Trade Marks in the future. No supporting evidence is provided for either of these claims.
Discussion and Reasons
The Opponent’s submissions claim that the Trade Marks, or marks with additions or alterations not substantially effecting their identity, have been used to promote and offer the Registered Goods and Services or goods and services similar or closely related to the Registered Goods and Services during the Relevant Period as follows:
Opponent’s Website and Social Media Platforms
The Applicant submits that the mere fact that a mark is used on a website that is published to the world at large does not mean that it has been used in Australia, even if it can be shown that persons in Australia have accessed that website, relying on Ward Group Pty Ltd v Brodie & Stone Plc[15] and in particular Merkel J’s statement:
In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[16]
[15] [2005] FCA 471, [43].
[16] Ibid [43].
Whilst I accept that the Opponent’s Website was visible to internet users in Australia in the Relevant Period, I consider that this alone is not enough to establish use in Australia. The content of the Opponent’s Website shown in the screenshots and extracts may have been available to the world at large but there is no evidence of any intention from the Opponent to target Australian consumers. I am not satisfied that it was specifically targeted or directed at, or was specifically intended to be acted upon, by Australian consumers. The exposure of the Trade Marks to Australian consumers in this context is largely incidental.
Further, I am also not satisfied that the Registered Goods and Services provided under the Trade Marks were even available to Australian consumers. Gross’ statement that the acquisition of General Finance was intended to provide entry into Australia and New Zealand,[17] supports this view that prior to that acquisition, the Opponent had no commercial or trading presence in Australia.
[17] Gross [26].
The Applicant submits that there is nothing in the evidence of the Social Media Platforms that any of the likes, followers, or subscribers had any connection whatsoever with Australia and nor is there anything on the screen captures of the Social Media Platforms to indicate that the Opponent had, within the Relevant Period, directed its Social Media Platforms specifically to Australia. I agree. There is no evidence that the use of the Trade Marks on any of the Social Media Platforms was directed towards Australian consumers. Furthermore, the Opponent has not given any indication of any followers, subscribers or likes within the Relevant Period nor how many, if any, followers, subscribers or likes are from Australian consumers. There is no evidence to suggest that any Australian consumers have viewed any of these Social Media Platforms and the numbers of followers, subscribers or likes are not so significant that one could infer that some followers, subscribers or likes are from Australian consumers.
I consider that the evidence of the Social Media Platforms does not disclose any use by the Opponent of the Trade Marks in Australia in the Relevant Period nor indeed after the Relevant Period.
Authorised use by United Rentals Australia
The Applicant’s submissions do not dispute that United Rentals Australia is an authorised user of the Trade Marks and nor do they dispute that United Rentals Australia used the Trade Marks in its capacity as an authorised user for at least part of the Relevant Period. The Applicant however disputes that United Rentals Australia has used the Trade Marks in relation to any of the Registered Goods and Services within the Relevant Period.
The Opponent submits that United Rentals Australia used the Trade Marks, or marks with additions or alterations not substantially affecting their identity in Australia in good faith in respect of the Registered Goods and Services or goods and services similar or closely related to the Registered Goods and Services during the Relevant Period. These similar goods and services are ‘design, hire, sale and modification of new and refurbished shipping containers’[18] (‘Claimed Goods and Services’).
[18] Gross [27].
As previously stated, the Opponent can only rebut the allegation of non-use by establishing, on the balance of probabilities, that it has used the Trade Marks in respect of any or all of the Registered Goods and Services during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period. The allegation cannot be rebutted by showing use on goods and services similar or closely related to the Registered Goods and Services during the Relevant Period.[19]
Use on the Registered Goods and Services
[19] McHatton v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 (Drummond J).

The Opponent submits the Trade Marks were used by United Rentals Australia to promote and offer its goods and services directly to Australian consumers by virtue of the Announcements and notices, the home pages of the Royal Wolf Website, United Rentals Australia’s LinkedIn® account, the invoice, quotation, letterhead and brochure.
The Applicant submits that none of United Rentals Australia’s goods or services are goods or services for which the Trade Marks are registered with one possible exception being ‘rental of … tables and chairs’ in class 43. However, the Applicant submits that the evidence does not demonstrate that United Rentals Australia has rented tables and chairs as such, as opposed to portable kitchens where the tables and chairs come as part of the hire and are not charged separately.
I am satisfied from the Opponent’s evidence that the business of United Rentals Australia includes, and continued to include after acquisition by the Opponent, the sale of shipping containers. I am satisfied that each of the following evidences use of the Trade Marks by United Rentals Australia for the sale of shipping containers in the Relevant Period:
The Registered Goods and Services include a claim to ‘Retail services for new and used rental equipment’ in Class 35 which is unlimited in scope. The definition of equipment in both the Australian Oxford Dictionary (2 ed.) online and the Macquarie Dictionary online is broad namely, inter alia, ‘the necessary articles, clothing, etc., for a purpose’ and ‘anything used in or provided for equipping’ respectively.
I consider that shipping containers fall within the description of equipment and therefore ‘Retail services for new and used rental equipment’ includes the retailing of new and used rental shipping containers. Therefore, I am satisfied that the Opponent has used the Trade Marks in the Relevant Period in respect of the ‘retailing of new and used rental shipping containers’ (‘Used Services’).
As to the services ‘rental of special event tables and chairs’ in class 43, while the Opponent evidences a quote in the Relevant Period for rental of a lunch room with elec air (that is, electricity and air conditioning) and kitchen which includes, at no charge, hire of, inter alia, tables and chairs, there is no indication in any of the Opponent’s evidence that United Rentals Australia is in the business of hiring special event tables and chairs as a stand alone service. The fact that United Rentals Australia provides special event tables and chairs as part of a lunch room rental package, does not, of itself, support a conclusion that United Rentals Australia has used the Trade Marks in the Relevant Period in respect of rental of special event tables and chairs. In my view, the ‘rental of special event tables and chairs’ is merely ancillary to the actual services provided by United Rentals Australia, here rental of a lunch room.
I consider that United Rentals Australia provision of a lunch room rental package which includes ancillary goods such as tables and chairs, amongst others, is akin to a hotelier renting a hotel room where beds, tables etc come as part of the deal. The hotelier is not in the business of renting beds, tables etc and United Rentals Australia is not in the business of rental of special event tables and chairs.
I am therefore only satisfied that, through its authorised user United Rentals Australia, the Opponent has used the Trade Marks in respect of the Used Services, being the only services which fall within the Registered Goods and Services.
As the Opponent has not rebutted the allegation of non-use other than in respect of the Used Services, the non-use grounds have been partially established on both Trade Marks.
Presently, the Registered Goods and Services of both registration numbers 1837156 and 1877157 would be amended to delete all the goods and services other than ‘retailing of new and used rental shipping containers’ in Class 35.
Obstacles to Use
For the sake of completeness, I note the Opponent has not provided evidence of any circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Marks for any of the Registered Goods and Services of either of the Trade Marks. I accordingly find no case under s 100(3)(c) has been established.
As I have decided that the Trade Marks not be removed for the Used Services, I must consider whether it is appropriate to otherwise exercise discretion to not remove the Trade Marks for the remainder of the Registered Goods and Services (‘Remaining Goods and Services’).
Discretion
The question to be asked is whether it is reasonable not to remove the Trade Marks for the Remaining Goods and Services, even though the Opponent has not established use of the Trade Marks during the Relevant Period in respect of any of the Remaining Goods and Services. I must be positively satisfied that it is reasonable that the Trade Marks should not be removed.
The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[20]
[20] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).
The discretion provided by this section is very broad. In PDP Capital Pty Ltd vGrasshopper Ventures Pty Ltd,[21] the Court made the following observations regarding the discretion under s 101(3):
[21] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) 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.[22]
[22] Ibid [153] (emphasis altered) (citations omitted).
The discretion factors broadly fall under 3 headings:
The Opponent argues in favour of the exercise of the discretion on the basis of:
·the use of the Trade Marks in respect of goods and services that are similar or closely related to the Registered Goods and Services, within the ambit of s 101(4);
·even if some of the goods and services are different in nature to the Registered Goods and Services, they are offered to the same industries and the same customers and have the same applications as the Registered Goods and Services such as in building and construction, industrial, retail, moving and transportation;
·the Trade Marks have been used by the Opponent for more than 24 years and use of the Trade Marks continues to expand in Australia through United Rentals Australia which enjoys a widespread reputation and presence in Australia;
·removal of the Trade Marks in respect of the Registered Goods and Services will likely result in confusion, if the Applicant or another party were to use a substantially identical or deceptively similar mark for such goods and services; and
·the Applicant has not filed any evidence of its intentions and therefore the Applicant’s case is not based on any suggestion that its own interests or other traders’ interests would be detrimentally affected if the Trade Marks were permitted to remain on the Register.
The Applicant argues against the exercise of the discretion on the basis of:
·the Opponent has not provided any evidence that the Claimed Goods and Services are similar or closely related to the Registered Goods and Services and in particular, that the Claimed Goods and Services are offered to the same industries and to the same customers and have the same applications as the Registered Goods and Services such as in building and construction, industrial, retail, moving and transportation;
·the evidence regarding the Opponent's reputation in its Trade Marks in Australia through its own use and use by United Rentals Australia is equivocal at best;
·the Opponent has been unable to point to any particular disadvantage that would accrue to it if the Trade Marks were removed from the Register. There is no evidence that removal of the Trade Marks would affect United Rentals Australia’s trading or business, nor evidence that the Opponent has any other business interest in Australia to which the Trade Marks are relevant; and
·there is no evidence of any intention to expand United Rentals Australia’s business offerings into goods and services in respect of which the Trade Marks are registered, and no evidence of any plan or intention to trade in Australia in such goods and services through any other channel.
Section 101(4)
Use on similar goods or similar services
Goods are ‘similar to other goods’ and services are ‘similar to other services’ if they are the same or of the same description as the other goods or the other services.[24] The factors relevant to the consideration of whether goods or services are similar include their nature including their origin and characteristics, uses made of the goods or services including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods or services would regard the goods or services as being from a single source.[25] These can be conveniently summarised as: whether the respective goods or services are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[26]
[24] s 14(1).
[25] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).
[26] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Kitto J); adopted in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
The Claimed Goods and Services are obviously not the same as the Remaining Goods and Services as they are not identical so I turn to consider whether the Claimed Goods or Services are ‘of the same description’ as the Remaining Goods or Services. To this end, other than an unsupported statement by Gross that the Claimed Goods and Services are offered to the same industries and to the same customers and have the same applications as the Registered Goods and Services such as in building and construction, industrial, retail, moving and transportation, the Opponent has not provided any evidence to assist me with my determination of the nature, uses and trade channels of the respective services.
On its face, I am not satisfied that the Claimed Goods and Services have the same characteristics, uses, intended purposes or source of manufacture as the Remaining Goods and Services. I consider the Claimed Goods and Services to have completely different natures and uses as the Remaining Goods and Services.
While from my own knowledge and the wording of the Remaining Goods and Services it is clear that many of the Remaining Goods and Services are directed to consumers in the building and construction, industrial, retail, moving and transportation industries, I do not consider this factor alone as sufficient to support a conclusion that the Claimed Goods or Services are similar or closely related to the Remaining Goods and Services.
Further, I note that the Opponent’s 2021 Annual Report[27] states that the acquisition of General Finance was intended to complement the Opponent’s leading positions in general construction and industrial rentals and specialty rentals, which will further differentiate the Opponent through its ability to deliver value as a one-stop-shop for customers’. To me, this supports a conclusion that the general construction, industrial and specialty rentals industry was one separate to the industry of the Claimed Goods and Services and therefore the respective origin and trade channels differ and the ordinary consumer of the respective goods or services would not regard the goods or services as being from a single source.
[27] Gross [26] and Annexure JG-5.
In conclusion, I am not satisfied that the Claimed Goods and Services are ‘of the same description’ as the Remaining Goods or Services.
Use on closely related goods or closely related services
The test for whether goods and services are closely related is not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[28]
[28] [1999] FCA 1020, [37].
His Honour went on to observe that “the relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” citing Lockhart J in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co:
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.[29]
[29] [1983] FCA 143, 150.
A detailed list of questions relevant to whether goods or services are closely related was set out in Re Aussat Pty Ltd[30] namely:
[30] [1993] ATMO 55 (Hearing Officer Thompson).
I consider that none of the Remaining Goods and Services are remotely connected with the Claimed Goods and Services. The nature and degree of any resemblance and the closeness of the relationship between the Claimed Goods and Services and the Remaining Goods or Services is low.
In conclusion, I am not satisfied that the Claimed Goods and Services are ‘closely related to’ the Remaining Goods or Services.
The private interests of the parties
I am not satisfied that the Opponent has a widespread reputation in Australia in the Trade Marks. I consider the evidence insufficient to satisfy me that the Opponent has used its Trade Marks in Australia for 24 years. Given the Opponent had no business in Australia until after the acquisition of General Finance, the use of the Trade Marks by United Rentals Australia has only been for a very short period beginning in 25 May 2021. Additionally, the most prominent brand used by United Rentals Australia for the Claimed Goods and Services is and remains the ROYAL WOLF trade mark. This is supported by the claim in the Announcements that ‘Our brand and how we work with you to deliver services and solutions will not change’.[31]
[31] Gross Annexures JG-6 and JG-7.
I agree with the Applicant that the Opponent has not provided evidence that removal of the Trade Marks would affect the Opponent’s or United Rentals Australia’s trading or business, nor evidence that the Opponent has any other business interest in Australia to which the Trade Marks are relevant. I also agree with the Applicant that there is no evidence of any intention to expand United Rentals Australia’s business offerings and no evidence of any plan or intention to trade in Australia in such goods and services through any other channel.
The Opponent has only made unsupported assertions that it and United Rentals Australia intend to continue to develop and promote the Registered Goods and Services by reference to the Trade Marks in the future and removal of the Trade Marks may result in confusion among industry concerning the identity and ownership of United Rentals Australia. I am therefore not persuaded by these arguments. Furthermore, there is nothing to stop the Opponent identifying the ownership of United Rentals Australia, given that such an identification would be a statement of fact, regardless of whether or not the Trade Marks are removed.
The Opponent argues that the Applicant has not filed any evidence of its intentions and this is true but this factor alone does not persuade me to exercise the Registrar’s discretion in the Opponent’s favour.
The public interest
On the question of the public interest, there are a number of aspects to be considered.

There is a public interest in maintaining the integrity (or ‘purity’) of the Register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:
[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[32]
[32] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).
The question of the public interest arises in the determination whether confusion would be caused by removing or restricting the Remaining Goods and Services of the Trade Marks. Thus, while the ‘purity’ of the Register is a major aspect of the public interest, another major aspect is the minimisation of the likelihood for the public to be deceived or confused as to the trade source of goods and services bearing a trade mark.
The Opponent has not provided evidence on whether it is likely that consumers will be confused if a third party, such as the Applicant, were to operate under trade marks the same or similar to Trade Marks. Further, I would expect that the Opponent’s customers are not the average person in the street, which tends to diminish any possibility of confusion or deception.
On balance, in light of the above considerations, I am unpersuaded that the Opponent has provided justification to allow the retention of the Trade Marks on the Register for all of the Remaining Goods and Services. Given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove or restrict the Remaining Goods Services of the Trade Marks.
Decision
The Opponent has been partially successful in its oppositions in respect of the services ‘retailing of new and used rental shipping containers’ in Class 35. The ground for removal under s 92(4)(b) of the Trade Marks has been established in respect of all the remaining Registered Goods and Services.
I direct that registrations 1837156 and 1837157 be partially removed from the Register for all the goods and services which they currently cover in Classes 7, 9, 11, 35, 37, 39, 40, 41 and 42, except ‘retailing of new and used rental shipping containers’ in Class 35, such that the registrations remain covering the following Class 35 services only:
retailing of new and used rental shipping containers
In the event of an appeal from this decision, the registrations shall not be restricted until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registrations be dealt with as the Court sees fit.
Costs
Both parties have sought their costs. Neither party has been entirely successful in respect of the applications for removal. As such I have decided not to award costs.
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
19 July 2024
Annexure A

Class 7: Heavy and industrial equipment and tools, namely, electric pumps, sludge pumps, silt pumps and suction pumps; electricity generators; work platforms in the nature of boom lifts and scissors lifts; forklifts; compaction equipment, namely, earth compaction machines, ride-on drum rollers, walk behind drum rollers, remote rollers, roller walk behind pads, vibration plate compactors; earth moving machines; skid steer machines; air compressors; cranes; trenching machines; bulldozers; concrete forming machines; surface preparation and remediation tools in the nature of abrasive blasters; concrete grinders; concrete scarifiers; power scrubbers; air and electrically powered tools, namely, air compressors, rock splitters, rock breakers, impact wrenches, after coolers and filters being parts of air powered tools; concrete and masonry equipment, namely, power buggies to move concrete, walk-behind saws to cut concrete; power lawn and landscaping equipment, namely, wood chippers, stump grinders, straw blowers; multi-purpose pressure washers; electric welding machines

Class 9: Transformers, electrical testing, and power distribution equipment, namely, multi-panel circuit breakers, load banks, electrical meters and power distribution panels; highway safety and traffic control products, namely, electronically controlled luminous message signs

Class 11: HVAC equipment, namely, spot coolers, cooling towers, chillers, dehumidifiers, air filtering installations, air handlers, heaters and air conditioners; indirect air heaters; work lights and mobile light towers

Class 35: Retail services for new and used rental equipment including heavy and industrial equipment, namely, pumps, generators, boom lifts, scissors lifts, forklifts, compaction rollers, backhoes, excavators, skid steers, air compressors, trailers, trucks, compaction equipment, cranes, generators, trenchers, bulldozers and concrete forming equipment; retail services for general tools and equipment, namely, hand tools and gardening and landscaping equipment; retail services for special events equipment, namely, tents, tables and chairs and parts thereof; tool and equipment management services, namely, inventory control for equipment and tools

Class 37: Rental of construction and industrial equipment, namely, pumps, generators, forklifts, backhoes, cranes, bulldozers, aerial lifts, compressors, scaffolding, surface preparation and remediation tools; Rental of HVAC equipment, namely, air conditioners, heaters, dehumidifiers and light towers; Rental of general tools and equipment, namely, hand tools, gardening and landscaping equipment, air tools, electrician tools, power tools, concrete and masonry equipment; Rental of trench safety and shoring equipment; Rental services, namely, selecting construction equipment, supplies and tools for others based on the consumers' needs and coordinating the rental thereof; Construction project management services; Rental of fences; Fueling services for others for construction equipment, vehicles, HVAC equipment, generators and tools and monitoring fuel consumption thereof and refueling construction equipment, vehicles, HVAC equipment, generators and tools when necessary; Mobile fueling services, namely, providing location-based fueling equipment, vehicles and generators for fueling vehicles

Class 39: Rental of vehicles and trailers; rental of construction and industrial equipment, namely, fuel tanks; Rental and leasing of drones for mapping, aerial photography and delivery services; Rental services, namely, selecting rental vehicles for others based on the consumers' needs and coordinating the rental thereof; Providing delivery services for rental vehicles and rental construction equipment, supplies and tools; Transport and delivery of fuels for location-based fueling of equipment, vehicles and generators

Class 40: Rental of construction and industrial equipment, namely, power equipment in the nature of power transfer switches and transformers; Assembly of rental vehicles and rental construction equipment, supplies and tools for others

Class 41: Training in the use and operation of equipment and tools; training in the field of industrial safety

Class 42: Rental of surveying equipment; Rental of computer application software to fleet managers to enable them to track the location of equipment, vehicles and tools; Rental of computer application software to fleet managers to enable them to track the maintenance of equipment, vehicles and tools; Rental of computer application software to entities and individuals to enable them to track various assets, such as equipment, vehicles and tools; Providing online, non-downloadable mobile computer software applications that allows the staging of equipment, vehicles and tools; Providing online, non-downloadable mobile computer software applications relating to the rental of equipment, vehicles and tools

Class 43: Rental of special event equipment, namely, tents, tables and chairs

[2024] ATMO 128

19 July 2024

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Costs

Remedies

Statutory Construction