Zero Motorcycles Inc v Benzina Zero Pty Ltd

[2023] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Zero Motorcycles Inc to applications under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by Benzina Zero Pty Ltd for cessation of protection of Protected International Trade Mark numbers 1321210 (International Registration number 1010496) Zero Motorcycles and 1322078 (International Registration number 1010861) ZERO S – both in class 12 and in the name of Zero Motorcycles Inc

Delegate:

Tracey Berger

Representation:

Opponent: Victor Ng of Cooper Mills Lawyers Pty Ltd

Applicant: Andrew Petale of Y Intellectual Property

Decision:

2023 ATMO 30

Trade Marks Act 1995 (Cth) – applications under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) for the cessation of protection – use of the trade marks established – trade marks to remain protected

Background

1.     Zero Motorcycles Inc (‘Opponent’) is the registered holder in Australia of the following trade marks (‘Trade Marks’):

Trade Mark Number	Trade Mark	Filing Date	Registered Goods
1321210 (IR 1010496)	Zero Motorcycles	30 July 2009	Class 12: Electric vehicles, namely motorcycles excluding tyres, rims and parts and fittings for tyres, brakes, covers rotors, drums and loaded callipers
1322078 (IR 1010861)	ZERO S	30 July 2009	Class 12: Electric motorcycles excluding tyres, rims and parts and fittings for tyres, brakes, covers rotors, drums and loaded callipers

2. On 25 August 2020, Benzina Zero Pty Ltd (‘Applicant’) filed applications under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] seeking cessation of protection of the Trade Marks, pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b) (‘Removal Applications’).

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

3.     On 10 September 2020, the Opponent filed Notices of Intention to Oppose the Removal Applications followed by its Statements of Grounds and Particulars (‘SGPs’) on 9 October 2020.  The Applicant filed Notices of Intention to Defend the Removal Applications on 18 December 2020.

4.     The Opponent filed evidence in support of its oppositions to the Removal Applications on 21 April 2021.  The Applicant then filed evidence in answer on 8 October 2021.  The Opponent did not file evidence in reply.

5.     Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing or file written submissions.  Both parties requested a hearing by video conference.  The Opponent filed written submissions on 23 January 2023 and the Applicant filed written submissions on 30 January 2023.  The matter was heard on 7 February 2023.  At the hearing, Victor Ng of Cooper Mills Lawyers Pty Ltd made oral submissions on behalf of the Opponent and Andrew Petale of Y Intellectual Property made oral submissions for the Applicant.  This matter was subsequently allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks.  I have decided this matter based upon the video recording of the hearing, the SGPs, evidence filed, and the written and oral submissions of the parties’ representatives.

Relevant Provisions

6.     Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

7.     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.

8.     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 and I confirm that this period has elapsed.  

9.     Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 25 July 2020 (‘Relevant Period’). 

10.   Pursuant to s 100(1), the Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing, on the balance of probabilities,[2] that it has used the Trade Marks for the Registered Goods during the Relevant Period.

[2] Pfizer Products Inc. v Karam [2006] FCA 1663; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

11.   Pursuant to s 7(4), ‘use of a trade mark in relation to goods’ means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).  Moreover, s 9(1)(c) provides that:

(c)  a trade mark is taken also to be applied in relation to goods or services if it is used:

(i)  on a signboard or in an advertisement (including a televised advertisement); or

(ii)  in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

As such, use of a trade mark on a website directed to Australian consumers,[3] in advertisements, invoices or other documents relating to goods can be trade mark use for the purposes of s 7(4).[4] 

[3] Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 (Merkel J); International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd [2011] FCA 339 (Logan J).

[4] Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 (Jacobs J); Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 (Aickin J).

12.   In Woolly Bull Enterprises Pty Ltd v Reynolds,[5]  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,[6] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[7]  

[5] [2001] FCA 261, [16].

[6] Ibid [17].

[7] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

13.   In accordance with s 101 the Registrar may decide to remove the Trade Marks from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Marks even if the grounds under which the application for removal was made are established.

Opponent’s Evidence

14.   The Opponent’s evidence consists of a declaration of Victor Ng, attorney for the Opponent, made on 21 April 2021, with Annexure VWN-1 (‘Ng Declaration’).  I note that it is always preferable for a company to give evidence of its activities via one of its officers or senior employees rather than its attorney. However, where information about a company is reasonably specific and has been provided to the declarant from company records or is taken from publicly available sources, I consider it has probative value.

15.   Mr Ng attests that the Opponent is an American manufacturer of electric motorcycles and is the world’s largest manufacturer of 100% electric motorcycles distributing these goods in 30 countries through a network of over 200 dealers.

16.   In 2009, the Opponent launched the world’s first mass produced street-legal electric motorcycle named ZERO S and commenced offering these goods for sale in Australia. 

17.   The Opponent claims to have used the Trade Marks in Australia during the Relevant Period in relation to the Registered Goods and relies on 4 categories of evidence namely i) use on its website at (‘Website’), (ii) use on invoices, (iii) use in the media and (iv) promotion of the Opponent and the Registered Goods in third party articles.

18.   The Opponent has provided extracts from the Website using the Wayback Machine for 8 August 2017, 8 September 2017 and 16 September 2017 (‘2017 Extracts’).[8]  These extracts show that the Website has a drop-down menu of countries in which the Registered Goods are available.  This menu included Australia and when selected, redirected consumers to an Australian specific web page (‘Australian Web Page’). 

[8] Ng Declaration, Annexure VMN-1 Tab 2.

19.   The Ng Declaration includes an invoice for the sale of a Zero SR ZF11.4 electric motorcycle to an Australian company dated 4 June 2017 (‘2017 Invoice’)[9] as well as invoices for the sale of parts and accessories to dealers and customers (‘Dealer Invoices’)[10] and a table of all such sales during the Relevant Period.[11]

[9] Ibid Annexure VMN-1 Tab 3.

[10] Ibid Annexure VMN-1 Tab 4.

[11] Ibid Annexure VMN-1 Tab 5.

20.   The media articles demonstrate the publicity the Opponent and its products received around the time of launching its Registered Goods in Australia (‘Media Articles’) and were published long before the Relevant Period.[12]  The other third party articles were published in Australia during the Relevant Period about the Opponent and the Registered Goods (‘Publicity Articles’).[13]

[12] Ibid Annexure VMN-1 Tab 1.

[13] Ibid Annexure VMN-1 Tab 7.

Applicant’s Evidence

21.   The Applicant’s evidence consists of a declaration of Andrew Petale, attorney for the Applicant, made on 8 October 2021, with Annexures AP-1 to AP-4 (‘Petale Declaration’).  Mr Petale criticises the Opponent’s evidence on the basis that the Media Articles were published long before the Relevant Date.  The Publicity Articles refer to the Opponent’s lack of sales or presence in Australia since 2017 and that there is no current intention to resume retail operations here.

22.   The Petale Declaration annexes an article published on 27 June 2017 on (‘Bike Sales Article’) indicating that the Opponent was going to cease sales of its goods in Australia but “would continue to provide support to Australian owners through GBT Imports, our exclusive distributor” but no evidence of sales of the Opponent’s electric bicycles during the Relevant Period have been provided.  Also, from at least 31 October 2017 the Opponent had stopped listing Australia on the Website in the list of countries in which it distributes the Registered Goods.

23.   In addition, Mr Petale is critical of the 2017 Invoice which falls outside the Relevant Period, is for an amount less than the commercial value of the goods, for a ZERO SR ZF11.4 model rather than ZERO S motorcycle, was issued to an Australian marketing communications company and is for pick-up not shipment to Australia.

24.   Mr Petale notes that the Dealer Invoices relate to the supply of parts and accessories for electric motorcycles which are goods not covered by the registrations.

Discussion

25.   The Opponent contends that its use on the Website alone, having an Australian Web Page directed to Australian consumers as demonstrated in the 2017 Extracts, is sufficient to rebut the allegation of non-use.  The ZERO MOTORCYCLES mark is used on each of the 2017 Extracts in relation to electric motorcycles and the ZERO S mark is used on the August and 16 September 2017 extracts.  The 2017 Extracts indicate that from the Australian Web Page it was possible to review the Opponent’s different products and pricing, obtain a quote, find a dealer and schedule a demo. 

26.   The Applicant disputes that the use on the Website is sufficient and refers to the need to “target and engage the Australian public in trade”.[14]  The Applicant notes that by 31 October 2017, the drop down list had been amended to remove Australia which the Applicant says is consistent with news articles about the Opponent ceasing business in Australia.[15]  Further, the Opponent has not supplied evidence that the Website was accessed or viewed by any Australian consumers during the Relevant Period, any orders were placed or attempted to be placed by Australian consumers through the website during the Relevant Period or that the Opponent had the capacity to fulfill any such orders for electric motorcycles bearing the Trade Marks during the Relevant Period.  The Applicant argues because the Opponent did not file such evidence in reply, I should draw an adverse inference.[16]

[14] Deutsche Telekom AG v E! Entertainment Television ChD 25 January 2006 unreported (Smith J).

[15] Ibid Tab 7.

[16] Jones v Dunkel (1959) 101 CLR 298(Dixon C.J., McTiernan, Fullagar, Kitto, Taylor, Menzies and Windeyer JJ).

27.   In my view, it is not appropriate to draw an adverse inference simply because the Applicant did not file evidence in reply.  The Ng Declaration declares that the Opponent used the Trade Marks in Australia during the Relevant Period in connection with the promotion, distribution and supply of electric motorcycles, their parts and components and provides documentary evidence in support of this.  The evidence on which the Applicant relies does not contradict this claim.  For example, the Bike Sales Article is titled ‘Zero Motorcycles to “end consumer sales” in Australia’[17] followed by the sub-heading ‘Only fleet business will remain for the electric motorcycle marque’.  In my view, the Bike Sales Article indicates that consumer sales will end in the future as opposed to having already ceased.  The other articles which the Applicant points to simply refer to consumer sales ending in 2017 and confirm that the Opponent did not have retail operations in Australia in 2020.[18]  The 2017 Invoice demonstrates that Australian consumers were able to order the Registered Goods only 10 days before publication of the Bike Sales Article.  Further, the existence of the Australian Web Page until at least September 2017 is consistent with the continued offer for sale of the Registered Goods after publication of the Bike Sales Article.  The Opponent’s proof of sales of parts and components for the Registered Goods[19] is evidence that the Opponent continued to support its Australian customers after retail operations ceased albeit through different service providers than that indicated in the Bike Sales Article.[20]

[17] Petale Declaration, Annexure AP-1.

[18] Ng Declaration, Annexure VMN-1 Tab 7.

[19] Ibid Annexure VMN-1 Tab 4.

[20] Ibid Annexure VMN-1 Tab 6.

28.   On my assessment of the evidence, I am satisfied that the Opponent used the Trade Marks in Australia during the Relevant Period in relation to the Registered Goods.  The 2017 Extract establishes that the Website was directed to Australian consumers by way of the Australian Web Page and the Trade Marks were used on this site to offer the Registered Goods for sale in Australia.   This is sufficient to constitute genuine use for the purpose of rebutting the non-use allegation[21] and it is not necessary for there to be actual sales of the Registered Goods.[22] 

[21] Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 (Merkel J).

[22] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 (Katzmann J).

29.   Whilst it is not strictly necessary to consider the other three categories of evidence, for completeness I have done so below.

30.   In relation to the invoices, the Applicant’s criticisms of the 2017 Invoice have merit.  Whilst this invoice was issued to an Australian company and shows use of ZERO MOTORCYCLES, the product is not a ZERO S motorcycle and was for “Pick Up” in the USA and hence not delivered to Australia.  The commercial value of the sale also appears to be significantly less than the retail price of the Opponent’s products.  In the circumstances, I am not satisfied that the 2017 Invoice is evidence of a bona fide sale of the Registered Goods in Australia.

31.   The Dealer Invoices provided by the Opponent are issued to the Opponent’s Australian dealers who are listed on the Website[23] and relate to the sale of parts and accessories for servicing of the Opponent’s motorcycles previously sold to Australian customers including such goods under warranty.  The Opponent argues that in this commercial context, these invoices demonstrate use of the Trade Marks in connection with the Registered Goods.  Firstly, the invoices only feature the ZERO MOTORCYCLES mark and there is no use of the ZERO S mark.  Secondly, the Opponent is not itself providing repair services in servicing the electric motorcycles (which services are provided by its dealers under their own names) but only using the ZERO MOTORCYCLES mark in relation to the sale of components.  This cannot properly be categorised as use of the Trade Marks for the Registered Goods.[24].

[23] Ibid.

[24] See, eg, McHatton v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481 (Drummond J); PDP Capital Pty Ltd Grasshopper Ventures Pty Ltd [2020] FCA 1078 (Markovic J).

32.    I do not consider that the Media Articles to be use of the Trade Marks in the Relevant Period.  These articles were published some years before the Relevant Period. 

33.   The Opponent argued that the Publicity Articles also constitute use of the Trade Marks in Australia during the Relevant Period.  In support of this contention, the Opponent refers to Dick Smith Investments Pty Ltd v Ramsey[25] (‘OzEmite Case’) where various public relation activities were found sufficient to rebut an allegation of non-use even though the products were not yet available for purchase.  However, each case must be determined on its own facts and I do not believe that the OzEmite Case is authority for the proposition that any public relations activities are sufficient to defeat a non-use application.  There were a number of extraordinary circumstances in the OzEmite Case which resulted in greater than usual publicity including that the product to be provided under the mark OzEmite was to be Australian made using only Australian ingredients and there was interest at the time in goods being Australian made particularly when the product was to compete with VEGEMITE.  The OzEmite products and Dick Smith, a known personality at the time, received considerable publicity including on national television shows and in national newspapers.  The Publicity Articles of the Opponent are not comparable.

[25] [2016] FCA 939 (Katzmann J).

Decision

34.   The Opponent has rebutted the allegation of non-use in respect of trade mark registrations 1321210 and 1322708.  Accordingly, the Trade Marks are to remain protected on the Register for all of the Registered Goods.

35.   Costs generally follow the event and as the Opponent has sought its costs, I award costs against the Applicant in respect of registration number 1321210 in accordance with the amounts set out in Schedule 8 of the Regulations and in respect of registration number 1322078, I award reduced costs against the Applicant in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd.[26]

[26] [2001] ATMO 78 (Hearing Officer T. Williams).

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

6 March 2023