Werner International POC GmbH v Oldfields Pty Ltd
[2022] ATMO 97
•14 June 2022
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 LawyersDecision: 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 RegisterBackground
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 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.
Mr Abela attests that since taking his current position in December 2016 he is not aware of the sale of any ladders by the Removal Opponent or any other company under the Trade Mark in Australia. He alleges that he had discussions with the Removal Opponent’s senior management in Australia in mid-2017 and was told that they had not had time to commence use of the Trade Mark but instead used their WERNER and BAILEY brands.
Mr Peel avers that he is unaware of any use of the Trade Mark by or on behalf of the Removal Opponent. On 12 December 2020, he conducted a Google search to determine where he could buy a ladder under the Trade Mark and the search results directed him to which is owned and operated by WernerCo Australia Pty Limited. Mr Peel sent an email to the address provided on the website asking where he could purchase an OLDFIELDS LADDER. On 14 December 2020, he received a reply from the Customer Support Professional at WernerCo advising that the range was obsolete and directing him to Mr Peel engaged in further correspondence with WernerCo but was unable to purchase a ladder under the Trade Mark.
EIR
The EIR consists of a declaration of Scott Douglas, Managing Director Asia Pacific Region of the Removal Opponent, made on 3 June 2021 with Confidential Annexures SD-1, SD-3, SD-5, SD-7 and SD-9, and Annexures SD-2, SD-4, SD-6, SD-8 and SD-10.
Mr Douglas attests that in early 2017, Mr Richard Abela of Oldfields Holdings Pty Limited, contacted Mr Phil Sullivan, a director at the time of the Removal Opponent. Mr Sullivan met with Mr Abela and other management of the Removal Applicant in the USA to discuss the possibility of the Removal Applicant distributing ladders under the Trade Mark in Australia and New Zealand. Following that meeting, Mr Douglas was asked by Mr Sullivan to meet with Mr Abela to further the discussions. Mr Douglas emailed Mr Abela on 17 May 2017 to arrange the meeting which subsequently occurred. Negotiations continued and in April 2018, Mr Abela proposed a heads of agreement for the Removal Applicant to be the exclusive distributor of the Removal Opponent’s Registered Goods under the Trade Mark in Australia and New Zealand. As a result of these negotiations, the Removal Opponent ceased its review into other possible channel distributions of the Registered Goods in Australia and New Zealand.
Negotiations continued throughout 2017 and on 12 March 2018, Mr Douglas sent the Removal Opponent’s proposed Heads of Agreement to Mr Abela. In the absence of a reply, Mr Douglas followed up with Mr Abela and received a reply on 3 May 2018 from Mr Abela expressing some concerns with the proposed agreement. The parties corresponded further on 3 and 4 May 2018 about these concerns and then spoke to each other on 5 June 2018 during which conversation Mr Abela represented that the distribution agreement would be finalised and signed shortly. Mr Abela summarised that conversation in an email to Mr Douglas on 7 June 2018.
Mr Douglas did not hear further from Mr Abela and followed up with him on 27 July 2018 seeking an update. Mr Abela replied advising that they would not be proceeding with the agreement at that time due to the business being focussed on other matters but that the “management team would like to postpone the ladder development until the second half of the financial year”. Mr Abela informed Mr Douglas that he would be in contact again in the new calendar year.
Mr Douglas avers that because negotiations with the Removal Applicant commenced early in 2017 (at the beginning of the Relevant Period) and continued until mid-2018 with a view to resuming in early 2019, the Removal Opponent did not take steps to appoint another distributor during that time.
Once it became apparent that an agreement was unlikely to be reached with the Removal Applicant, the Removal Opponent revisited its market strategy for providing the Registered Goods under the Trade Mark including a market analysis to understand the brand positioning of the Trade Mark. The Removal Opponent undertook a number of other steps in preparation for approaching other potential distributors of the Registered Goods including:
· developing the product range to be offered under the mark;
· assessing its various plants and manufacturing options for capacity to produce the Registered Goods;
· initiating an engineering overview to review designs, branding and Australian standards testing for the Registered Goods;
· developing artwork for labels and marketing collateral; and
· building a social media and website presence for the Trade Mark.
On 27 September 2018, the Removal Opponent had a meeting with Total Tools, a specialist tool retailer with retail stores throughout Australia and an online retailing store. At this meeting, the Removal Opponent gave a presentation about the Australian ladder market including the Registered Goods featuring the Trade Mark (‘Total Tools Presentation’).
On 11 June 2020, the Removal Opponent entered into an agreement with Get Tools Direct to sell ladders under the Trade Mark which goods are now available at >
The Removal Opponent is also now selling ladders under the Trade Mark at its website at >
Mr Douglas disputes Mr Peel’s evidence and alleges that in December 2020, the Registered Goods bearing the Trade Mark were available for purchase at the Get Tools Direct Website.
Grounds and Onus
The Removal Application nominates grounds for removal under s 92(4)(b) which states:
92 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.
The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[3]
[3] Act s100(1)(c).
In the SGP, the Removal Opponent relies on evidence of use of the Trade Mark during the Relevant Period. The Removal Opponent can rebut the allegation of non-use by establishing, on the balance of probabilities[4], that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity[5]) was used in good faith by the Removal Opponent in relation to the Registered Goods during the Relevant Period. I also have a general discretion to allow the Trade Mark to remain registered even if there has been no use or limited use of the Trade Mark during the Relevant Period.
[4] General Mills v Maria Christofis and Nikitas Christofis [2013] ATMO 18,
[5] Act s100(3)(a).
I note that as the Trade Mark was filed prior to 24 February 2009, the ground for removal under s 92(4)(b) may only be relied by the Removal Applicant once 5 years has passed since the filing date of the Trade Mark.[6] I confirm that this requirement has been met.
Discussion
[6] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.
Use During the Relevant Period
I must first decide whether there has been use of the Trade Mark in good faith during the Relevant Period in relation to the Registered Goods. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Registered Goods, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered, for any of the Registered Goods for which use during the Relevant Period is not established.
The ‘use’ in good faith required to be demonstrated by the Removal Opponent 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 and the person who applies the sign to or in relation to those goods.[7] Use in the course of trade means an actual dealing in the goods, an offer for sale of goods, or an intention to offer goods for sale manifested through preparatory steps showing an objective commitment to use the trade mark.[8]
[7] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[8] Angela Christou v Tonch Pty Ltd [2008] ATMO 24; see also Dick Smith Investments Pty Ltd v Ramsey [2001] FCA 261 (Katzmann J).
The Removal Opponent relies on the following uses of the Trade Mark for the Registered Goods:
·Total Tools Presentation on 27 September 2018;
·sale of ladder spare parts under the Trade Mark at the Ladders Spares Website; and
·sale of ladders on the Oz Ladders website.
In the Removal Applicant’s Submissions, the Removal Applicant argues that the Total Tools Presentation does not constitute use of the Trade Mark for the Registered Goods because the Removal Opponent has not explained the purpose of the meeting or its relationship to Total Tools in order to establish that the presentation constitutes use in “a real, commercial sense.” However, the Removal Opponent attests in both the EIS and EIR that Total Tools is a specialist tool retailer with stores throughout Australia as well as an online retail store. John Lietzow-Chinn, Senior Product Marketing Manager and Ron Galepp, National Sales Manager, of the Removal Opponent met Mr Jordan Serpell of Total Tools to give the Total Tools Presentation. This presentation featured 3 slides dedicated to the Registered Goods bearing the Trade Mark which detail the quality of the Registered Goods, the brand presence of the Trade Mark, and provided pricing for 16 different ladders offered under the Trade Mark. I am not persuaded by the Removal Applicant’s Submissions that the Removal Opponent has not provided sufficient information about the purpose of the meeting or its relationship to Total Tools. Although not explicitly stated in the evidence, I think it is reasonable to infer that Total Tools is a third party and that if a senior Marketing Manager and senior Sales Manager of a manufacturer meet with a retailer to give a detailed presentation about a particular market and specific products in that market which they manufacture, the purpose of the meeting is for the manufacturer to persuade the retailer to stock their goods. I am satisfied that the Total Tools Presentation amounts to a preparatory step by the Removal Opponent showing an objective commitment to provide the Registered Goods under the Trade Mark.
Further, the Removal Applicant points out that a decision maker should not rely solely on internal records of a party as evidence.[9] However, the Total Tools Presentation is only one type of evidence relied on by the Removal Opponent.
[9] Nodoz Trade Mark [1962] RPC 1 (Ch D).
Turning to the other types of use claimed on the Ladders Spares Website and OzLadders Website, the Removal Applicant acknowledges that evidence of use of a trade mark by way of extracts from a website obtained using the Wayback Machine are usually sufficient proof of use. However, the Removal Applicant’s Submissions argue that this approach should not be adopted in the present case. In the case of the Ladders Spares Website, the Removal Opponent claims in its EIS to operate this website and therefore, the Removal Applicant alleges the Removal Opponent should have provided additional evidence supporting the extracts. Moreover, the Removal Applicant seeks to argue that WhoIs searches show that the OzLadders, Ladder Spares and Get Tools Direct Websites which the Removal Opponent claims to operate are registered to other traders. The licensees of the relevant domain names are not in evidence. Furthermore, I do not believe that the Removal Opponent has claimed it operates the OzLadders or Get Tools Direct Websites. The EIS states that the Removal Opponent has been supplying ladders under the Trade Mark to Ozladders since at least 2010[10] and that Get Tools Direct is the owner and operator of the Get Tools Website.[11] The extract of 12 March 2018 from the Wayback Machine for the Ladder Spares Website states “Welcome to Werner Co Australia & New Zealand Spare Parts Database” which clearly suggests an association with the Removal Opponent. In any event, I do not believe it is necessary to consider who holds the domain names or operates the websites in question. The relevant issue is whether the Trade Mark has been used by or on behalf of the Registered Owner in relation to the Registered Goods in the Relevant Period on these websites.
[10] Hartenstein Declaration, [20].
[11] Ibid, [21].
The Removal Applicant submits that the Removal Opponent’s use of the mark on the Ladder Spares Website and Oz Ladders Website does not constitute use of the Trade Mark as registered or with alterations not substantially affecting the identity of the mark. On the Ladder Spares Website, the mark used is OLDFIELDS LADDERS in relation to spare parts for ladders. As noted in ReMorny Ltd’s Trade Mark[12], the omission from a trade mark of a conventional form of embellishment does not substantially affect the identity of the trade mark. Despite the omission of the device, the element OLDFIELDS LADDERS remains discernible as the essential feature.[13] In my opinion, the omission of the non-distinctive device element of the Trade Mark is an alteration not substantially affecting the identity of the mark and constitutes use in relation to some of the Registered Goods.
[12] (1951) 68 RPC 55.
[13] Express Newspapers Ltd v Star Newspaper Co [1984] IPD 7090 (UK Reg).
The Removal Opponent acknowledges that the extracts of 25 and 28 February 2017 of the OzLadders Website obtained from the Wayback Machine feature the Removal Opponent’s ladders by reference to the mark OLDFIELDS and not the Trade Mark as registered but notes that in each case the word OLDFIELDS is used in close proximity to the depiction of a ladder. The essential element of the Trade Mark is the word OLDFIELDS. The element LADDERS is descriptive. The Removal Opponent contends that the present situation is analogous to that in QH Tours Ltd v Mark Travel Corp[14] where use of FUNJET was found to constitute use of the registered mark FUNJET SERVICE for services. I consider the word OLDFIELDS to be the memorable element of the Trade Mark and do not believe the omission of the descriptive word LADDERS or non-distinctive background device are significant alterations substantially affecting the identity of the Trade Mark.
[14] (1999) 45 IPR 553.
I am satisfied that the Removal Opponent has used the Trade Mark for the Registered Goods during the Relevant Period.
Discretion
If I am correct in my assessment of the opposition to the Removal Application, there is no requirement that I consider whether I should exercise my discretion. However, I acknowledge that whilst the Removal Opponent’s evidence is sufficient in my view to rebut the allegation of non-use, it is not overwhelming. I therefore note that if I had needed to exercise my discretion, it would have been to allow the Trade Mark to remain on the Register.
While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:
Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognized.[15]
[15] [2008] FCA 934, [210] (citations omitted).
Some of the factors to be taken into consideration in deciding whether to exercise the discretion include:
·Whether there has been abandonment of the trade mark;
·Whether the registered proprietor of the mark still had a residual reputation in the mark;
·Whether there have been sales under the mark by the registered proprietor of goods or services for which removal is sought since the relevant period ended.[16]
[16] Ibid, [202]-[203].
The Removal Opponent has taken various steps which indicate that they did not abandon the Trade Mark including preparatory steps taken to approach other distributors outlined at paragraph 21 above, preparation and presentation of the Total Tools Presentation, participation in negotiations with the Removal Applicant and entering into an agreement with Get Tools Direct by June 2020 shortly after the Relevant Period ended.
The Removal Applicant sold the Trade Mark for good and valuable consideration. By the Removal Opponent’s own admission in the Coyle Declaration, there is a residual reputation in the Trade Mark which the Removal Opponent acquired at the time of purchasing and taking an assignment of the Trade Mark.
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 Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
14 June 2022
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