TRADE MARKS ACT 1995

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

Re:	Opposition by Courier Luggage Pty Ltd to application under section 92 of the Act by Wenger SA Inc to remove trade mark number 1054928(18) - SWISSGEAR BY COURIER AND DEVICE - in the name of Courier Luggage Pty Ltd

Delegate:	Jock McDonagh	
Representation:	Opponent: Ian Horak of Counsel, instructed by Collison & Co Patent and Trade Mark Attorneys
Applicant: Julie Simpson of Pizzeys Patent and Trade Mark Attorneys	
Decision:	2015 ATMO 10
Section 92 opposition – s92(4)(a) & (b) grounds for removal - opponent established use in good faith  – trade mark to remain on register 	

Background
1.	This matter is a proceeding under subsections 92(4)(a) and (b) of Trade Marks Act 1995 (‘the Act’) in which by an application filed on 28 May 2012, Wenger SA Inc (‘the Applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of all of the goods for which it is registered:
Regn No.	1054928	
Trade Mark		
Goods 	Class 18: Travel goods and luggage including bags, cases, trunks, trolley cases, suitcases, garment bags, wet packs, toiletry bags, backpacks, beauty cases, parts and accessories for these goods 
Endorsements: It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.	
2.	On 23 October 2012, following a late extension of time request, Courier Luggage Pty Ltd (‘the Opponent’) filed Notice of Opposition to the removal of the Trade Mark.
3.	Thereafter, the parties have filed evidence as allowed by the Trade Mark Regulations 1995 (‘the Regulations’), which I further detail below.
4.	The parties elected to be heard.  I conducted a hearing in Melbourne on 12 November 2014.  The Opponent was represented by Ian Horak of Counsel, instructed by Collison & Co Patent and Trade Mark Attorneys.  The Applicant was represented by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys, who appeared by telephone.
The Law
5.	Section 92 of the Act relevantly states:
92  Application for removal of trade mark from Register etc.
	(1)	Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
	(2)	The application:
	(a)	must be in accordance with the regulations; and
	(b)	may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
	(3)	An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:	For prescribed court see section 190.
	(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)	that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
	(i)	to use the trade mark in Australia; or
	(ii)	to authorise the use of the trade mark in Australia; or
	(iii)	to assign the trade mark to a body corporate for use by the body corporate in Australia;
		in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
	(iv)	has not used the trade mark in Australia; or
	(v)	has not used the trade mark in good faith in Australia;
		in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
	(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.

6.	Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
7.	The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
8.	The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72.  A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17].  However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz ) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”
9.	The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.
10.	As the application for removal was filed on 28 May 2012 the relevant period (‘the relevant period’) for the purposes of 92(4)(b) is the three years ending on 27 April 2012.
11.	Finally, section 101 of the Act deals, inter alia, with the Registrar’s discretion:
Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(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.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of: 
(a)  similar goods or closely related services; or 
(b)  similar services or closely related goods; 
to those to which the application relates. 
Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:       For registered owner see section 6.
12.	In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:
[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
[171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.
Evidence
13.	The evidence in this matter is as shown below:
Declarant	Status	Date, Known as 	Exhibits	
Evidence in Support				
Vanessa Hushen	Managing Director of Opponent	21.01.13
‘Hushen 1’ 	VH1 to VH6	
Evidence in Answer				
Jean-Daniel Bussard	Chief Financial Officer of Applicant	13.11.13 
‘Bussard	JDB-1 to JDB-11	
Evidence in Reply				
Vanessa Hushen	Managing Director of Opponent	20.01.14 
‘Hushen 2’	VH7 to VH10	
14.	Hushen 1 declares that the Trade Mark has been used extensively by the Opponent during the relevant period, with gross sales of goods bearing the mark being $3,624,005.11. It exhibits a number of advertisements in catalogues of a number of stockists of the Opponent’s goods.
15.	I note that the rendering of the Opponent’s trade mark in those advertisements is not identical to the device shown in the Trade Mark Register, as shown above. Rather, it is shown in the following forms:

16.	While the advertisements do not clearly identify how the Trade Mark is represented on the photographs of the actual goods, each of the three versions shown above is clearly adjacent to the goods advertised in the various catalogues. I could make out what appeared to be the device, as demonstrated in the middle and right hand versions shown above, on some luggage in advertisements.
17.	Bussard provides a detailed summary, supported by exhibits, of the Applicant’s history and current business, which includes goods such as the famous Swiss Army knife, as well as luggage and outdoor and travel goods. It also includes what might be best described as submissions outlining alleged deficiencies in Hushen1.
18.	Hushen 2 addresses some of the criticism contained within Bussard, in particular the lack of dates on the catalogues exhibited. It includes information from Harris Scarfe, a major retailer of the Opponent’s goods that includes a calendar in spreadsheet form that allows identification of individual catalogues by unique code numbers allocated to them, which confirms that the advertisements were published within the relevant period. Further examples of Harris Scarfe catalogues containing the Opponent’s advertisements are exhibited, along with a product catalogue produced by the Opponent for distribution to retailers and showing a date within the relevant period.
19.	At the nub of the Opponent’s submissions were two overarching matters. The first was that the versions of the Trade Mark shown in exhibits were not evidence of use of the Trade Mark as shown in the Register, or of a substantially identical version of it. The second was a lack of corroboration of use during the relevant period as asserted by the declarant in Hushen 1.
20.	As to corroboration, I note that regulation 21.15(4) of the Regulations states that the Registrar is not bound by the rules of evidence and that she may inform herself in a way she reasonably believes to be appropriate. Further, I note that in any event, section 164 of the Evidence Act 1995 abolished any requirement for corroboration. However, my assessment of the reliability and probative value of evidence will affect the amount of weight I will give to it.
21.	Having regard to the exhibits in both Heshen 1 and Hushen 2, I am satisfied that they are evidence of the advertisements of the goods so displayed within the relevant period. The evidence is not solely from internal files of the Opponent, nor is it of a circumstantial nature.
22.	The main issue in these proceedings is whether the trade marks shown in paragraph [15] above, being the only trade marks shown to have been used in the relevant period, are use of the Trade Mark or the Trade Mark with additions or alterations not substantially affecting its identity.
23.	The Opponent submitted that none of the versions of the Trade Mark used substantially affected its identity. The following decisions of this office were cited in support of it submission:
Registration	Used	Decision Citation	
536160
	ATLAS	Spear & Jackson (Australia) Pty Ltd v Amalgamated Hardware Merchants Ltd [2012] ATMO 80	

751728

Buckley v South Cone Inc. [2013] ATMO 29	
1463912
	
	Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85	

24.	The Applicant submitted that the changes to the Trade Mark did substantially affect its identity and the test was the same as for that for substantial identity under section 44 of the Act as stated in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, at 414, citing Lynson (Aust) Pty Ltd’s Appn (1987) 9 IPR 350, Re Application by Brown (2004) 64 IPR 421.
25.	The essential features of the Trade Mark are the words ‘Swissgear by Courier’ and a device comprising a cross within a rounded rectangle that surmounts three parallel horizontal lines.
26.	Each of the versions of the Trade Mark shown to have been used contains those elements, although two versions have ‘wings’ added to the device element. I do not consider that the use of different fonts for the word element of the Trade Mark, nor the positioning of the words relative to the device, nor the addition of the flourish of ‘wings’ to the essential device element, either jointly or severally affect the identity of the Trade Mark. 
27.	The Opponent’s evidence shows the Trade Mark being used in relation to trolleycases, ‘wheelaboard’ cases, cabin bags, shopper trolleys, side rolling tote bags, garment bags, beauty cases, rolling laptop backpacks, and various duffle bags. These are all ‘travel goods and luggage’ in Class 18.
28.	I am satisfied that the opponent has discharged its evidentiary onus with regard to its use of the Trade Mark for relevant goods within the relevant period for the purposes of section 92(4)(b). Such proof of use rebuts the allegation of section 92(4)(a) regardless of whether lack of intention can be shown.
29.	It is not necessary for me to consider the Registrar’s discretion.
Decision
30.	The evidence satisfies me that there has been genuine commercial use of the Trade Mark with respect to the goods and services specified in the registration during the relevant period.  The grounds for removal have not been established and I therefore refuse to remove the Trade Mark.
Costs
31.	As the successful party, the Opponent is entitled to its costs and I award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
3 February 2015