Werner International POC GmbH v Oldfields Pty Ltd - [2022] ATMO 97

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Werner International POC GmbH to application under section 92 of the Trade Marks Act 1995 (Cth) by Oldfields Pty Ltd to remove trade mark number 902103 (classes 6 & 20) – oldfields LADDERS (figurative) - in the name of Werner International POC GmbH

Delegate: Tracey Berger

Representation: Opponent: Jonathan Feder of K&L Gates
Applicant: Helen Kavadias of HWL Ebsworth Lawyers

Decision: 2022 ATMO 97
Trade Marks Act 1995 (Cth) – application under section 92 – use of the trade mark established – discretion exercised – trade mark to remain on the Register
Background

On 10 March 2020, Oldfields Pty Ltd (‘Removal Applicant’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade mark:
[1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995(the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’), respectively.

Registration Number:

902103

Lodgement Date:

4 February 2002

Goods:

Class 6: Ladders of all kinds (of metal), and parts and fittings therefor
Class 20: Ladders (not of metal) in this class

(‘Registered Goods’)

Trade Mark:

(‘Trade Mark’)

Owner:

Werner International POC GmbH

Werner International POC GmbH (‘Removal Opponent’) filed a Notice of Intention to oppose removal of the Trade Mark on 30 April 2020 and a Statement of Grounds and Particulars (‘SGP’) on 15 May 2020. The Removal Applicant filed a Notice of Intention to Defend on 7 July 2020.
The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS) of its opposition on 8 October 2020, followed by the Removal Applicant’s Evidence in Answer (EIA) on 8 January 2021. After obtaining an extension of time, the Removal Opponent filed Evidence in Reply (‘EIR’) on 3 June 2021.
Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing. The parties requested a hearing by way of written submissions and paid the requisite fees. The Removal Opponent filed written submissions on 28 February 2022 (‘Removal Opponent’s Submissions’) and the Removal Applicant filed written submissions on 7 March 2022 (‘Removal Applicant’s Submissions’). This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings as outlined above.
As the Removal Application was filed on 10 March 2020, for the purposes of deciding the opposition, the relevant three year period is 10 February 2017 to 10 February 2020 (‘Relevant Period’).
Evidence
EIS
The EIS consists of a declaration of Geoffrey R. Hartenstein, Managing Officer of the Removal Opponent, made on 7 October 2020 with Annexures GH-1 to GH-5, Confidential Annexure GH-6, Annexure GH-7, Confidential Annexures GH-8 and GH-9, and Annexures GH-10…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 97
Decision Date: 14 June 2022

CaseChat Overview and Summary

Werner International POC GmbH (the Removal Opponent) opposed an application by Oldfields Pty Ltd (the Removal Applicant) to remove trade mark number 902103, registered in classes 6 and 20 for "oldfields LADDERS (figurative)", from the Register of Trade Marks. The Removal Applicant sought removal on the grounds of non-use during the period of 10 February 2017 to 10 February 2020.

The primary legal issue before the Hearing Officer was whether the Removal Opponent had made sufficient use of the trade mark during the relevant three-year period to justify its continued registration. This involved assessing the evidence presented by both parties regarding the sale and distribution of goods under the trade mark.

The Hearing Officer found that the Removal Opponent had rebutted the allegation of non-use. The evidence indicated that the Removal Opponent had engaged in negotiations with the Removal Applicant to become an exclusive distributor of the trade mark. During this period, it was considered not practicable for the Removal Opponent to explore other sales channels. Once negotiations paused, the Removal Opponent actively pursued alternative distribution, including preparing a presentation for Total Tools and entering into an agreement with Get Tools Direct, making the registered goods available for sale. The Removal Opponent also sold goods through its own website.

Consequently, the Hearing Officer was satisfied that it was appropriate to exercise discretion to allow the trade mark to remain on the Register and directed that trade mark registration number 902103 remain registered. The Removal Opponent was awarded costs against the Removal Applicant.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

As the Removal Application was filed on 10 March 2020, for the purposes of deciding the opposition, the relevant three year period is 10 February 2017 to 10 February 2020 (‘Relevant Period’).EvidenceEIS The EIS consists of a declaration of Geoffrey R. Hartenstein, Managing Officer of the Removal Opponent, made on 7 October 2020 with Annexures GH-1 to GH-5, Confidential Annexure GH-6, Annexure GH-7, Confidential Annexures GH-8 and GH-9, and Annexures GH-10 to GH-14. This declaration outlines the history of how the Removal Opponent came to be recorded as the registered owner of the Trade Mark and the alleged use of the Trade Mark during the Relevant Period.History of ownership of the Trade Mark Mr Hartenstein declares that on 8 February 2002, the Removal Applicant and Oldfields Holdings Limited (collectively ‘Oldfields’) sold its common law right, title and interest in the trade mark ‘Oldfields Ladders’ to Hills Industries Limited (‘Hills’) by a Deed of Agreement for Sale of Assets (‘Sales Agreement’) for good and valuable consideration. On 28 June 2013, Hills Holdings Limited (formerly named Hills Industries Limited) sold the Trade Mark to the Removal Opponent with the consent and knowledge of the Removal Applicant, which consent was required under the Sales Agreement. Pursuant to these sales, the Removal Applicant agreed not to use the Trade Mark or the word ‘Oldfields’ in relation to any scaffolding or painting goods or services provided in Australia or New Zealand. On 16 July 2013, the Removal Opponent was recorded as the registered owner of the Trade Mark.Use of the Trade Mark in the Relevant Period The Removal Opponent claims various uses of the Trade Mark during the Relevant Period including the sale of spare parts for ladders through its website at (‘Ladder Spares Website’), the sale of ladders through OzLadders and Get Tools Direct who respectively operate websites at (‘OzLadders Website’) and (‘Get Tools Direct Website’).EIA The EIA consists of the following declarations:· Declaration of Brendan Coyle, National Sales Manager of Oldfields Holdings Limited (a subsidiary of the Removal Applicant), made on 6 December 2021 with attachments (Coyle Declaration).[2]· Declaration of Richard Abela, CEO and Managing Director of Oldfields Holdings Limited, made on 6 January 2021.· Declaration of Steve Peel, General Manager Scaffold of Oldfields Holdings Limited, made on 6 January 2021 with Exhibits SP-1 and SP-2.[2] In the Removal Opponent’s Submissions, the Removal Opponent notes that this declaration is incorrectly dated and was made on 6 January 2021 as the matters attested to occurred after 6 December 2020. Mr Coyle declares that on 11 December 2020 he searched the Get Tools Direct Website and purchased a ladder offered under the Trade Mark. Mr Coyle subsequently received a phone call from the vendor advising that they no longer sold ladders under the Trade Mark but offering a BAILEY branded ladder which was subsequently received by Mr Coyle. Mr Coyle also declares that he has been in the construction industry for 30 years before taking his current position and is unaware of the sale or manufacture of ladders by the Removal Opponent under the Trade Mark.

Decision

Reasons for decision

The Removal Applicant engaged in negotiations with the Removal Opponent for a significant part of the Relevant Period to reach an agreement to be appointed an exclusive distributor of the mark. The Removal Opponent actively engaged in these negotiations and the negotiations were reasonably advanced with two draft heads of agreement having been prepared and considered. I accept that given the proposed arrangement was to be exclusive, it was not practicable for the Removal Opponent to seek other trade channels for sales of the Registered Goods under the Trade Mark. Within about 3 months of the negotiations pausing at the Removal Applicant’s instigation, the Removal Opponent had prepared the Total Tools Presentation and met with Total Tools to sell the Registered Goods under the Trade Mark through Total Tools. By June 2020, the Removal Opponent had entered into an agreement with Get Tools Direct and the Registered Goods were available for sale under the Trade Mark. The Removal Opponent is also selling the Registered Goods under the Trade Mark at its website at >In the circumstances, I am satisfied that it would be appropriate to exercise my discretion to allow the Trade Mark to remain on the Register.Decision The Removal Opponent has rebutted the allegation of non-use. I direct that trade mark registration number 902103 remain on the Register. The Removal Opponent has sought its costs. It is usual for costs to follow the event and I see no reason to depart from that principle in the present case. I award costs against the Removal Applicant in the amounts set out in Schedule 8 of the Regulations.Tracey BergerHearing OfficerOppositions and HearingsTrade Marks and Designs14 June 2022

Ratio Decidendi

Legal Principle Established

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Delegate:	Tracey Berger
Representation:	Opponent: Jonathan Feder of K&L Gates Applicant: Helen Kavadias of HWL Ebsworth Lawyers
Decision:	2022 ATMO 97 Trade Marks Act 1995 (Cth) – application under section 92 – use of the trade mark established – discretion exercised – trade mark to remain on the Register

Registration Number:	902103
Lodgement Date:	4 February 2002
Goods:	Class 6: Ladders of all kinds (of metal), and parts and fittings therefor Class 20: Ladders (not of metal) in this class (‘Registered Goods’)
Trade Mark:	(‘Trade Mark’)
Owner:	Werner International POC GmbH