Opposition by Young Engineering Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Vokes Limited for removal of trade mark number 216896 (11) – VOKES VEE-GLASS – in the name of Young...

[2022] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Young Engineering Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Vokes Limited for removal of trade mark number 216896 (11) – VOKES VEE-GLASS – in the name of Young Engineering Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Michael Green SC and Wen Wu of Counsel instructed by John Fasha Solicitors Applicant: Andrew McRobert of Counsel instructed by Wrays Pty Ltd
Decision:	2022 ATMO 21 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Opponent’s evidence shows authorised use of the Trade Mark for the Registered Goods during the relevant period – Trade Mark to remain on the Register

Background

1. This decision is pursuant to an application made on 12 November 2013 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Vokes Limited (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks (‘Register’).  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	216896
Lodgement date	13 February 1968
Goods	Class 11: Filtering material made wholly or principally of bonded glass filaments; filtering, air conditioning, humidifying and dehumidifying apparatus and installations, all incorporating filtering elements made wholly or principally of bonded glass filaments, and parts and fittings therefor (‘Registered Goods’)
Owner	Young Engineering Pty Ltd
Trade Mark	VOKES VEE-GLASS (‘Trade Mark’)

1. Young Engineering Pty Ltd (‘Opponent’) opposes the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 3 December 2013 and a Statement of Grounds and Particulars (‘SGP’) on 3 February 2014[1].  The Applicant filed a Notice of Intention to Defend on 12 March 2014.

   [1] The Opposition was originally made in the name of Laminar Air Flow Pty Limited however the mark and opposition have been assigned to the Opponent

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 13 October 2015 the Opponent requested an oral hearing, however between 2015 and 2021 the parties were engaged in various disputes relating to the assignment and proper ownership of the Trade Mark and other marks registered to the Opponent and as such this matter was stayed for that period of time.

4. The matter was set down for a hearing in Canberra on 19 October 2021.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 27 July 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  On 7 October 2021 the Opponent filed additional evidence, which it sought to rely upon in the hearing.  By directions on 12 October 2021, I vacated the hearing on 19 October 2021 and indicated that the late filed material would not be considered but, given the delay since the evidence in this matter was filed (2014-2015), I provided both parties with an opportunity to file additional evidence limited to certain subject matters.  Specifically, the Opponent could only file evidence in respect of authorised use of the Trade Mark in the relevant period by entities other than the Opponent and evidence in respect of use (including authorised use) of the Trade Mark since March 2015.  The Applicant could only file evidence in response to the further declaration of the Opponent and evidence relevant to the exercise of the discretion that was not available in September 2014.

5. Further to my direction on 12 October 2021, the matter was then set down for a hearing in Canberra on 18 January 2022.

6. The Opponent filed written submissions on 26 October 2021, later redacted on 17 January 2022 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 26 November 2021 (‘Applicant’s Submissions’).  At the hearing Michael Green SC and Wen Wu of Counsel instructed by John Fasha of John Fasha Solicitors represented the Opponent and Andrew McRobert of Counsel instructed by Jennifer McEwan of Wrays represented the Applicant, both appearing by video conference. 

7. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the Notice of Intention to Oppose Removal, SGP, written and oral submissions and the following evidence:

   Evidence in Support
   Evidence in Answer
   Evidence in Reply
   Further Evidence by the Opponent

   • Declaration by Bryan Allan Young,[2] General Manager of Laminar Air Flow Pty Ltd (‘Laminar’), dated 16 June 2014 (‘Young 1’) together with Exhibits 1 to 14.
   • Declaration by Scott Bailey, Director of Transformer Filtration Systems Pty Ltd, an agent of the Applicant in Australia, dated 24 September 2014 (‘Bailey declaration’) together with Exhibit SB-1.
   • Declaration by Craig Raymond Douglas, Director of Nationwide Research Group Pty Ltd, dated 25 September 2014 (‘Douglas declaration’) together with Exhibits CRD-1 to CRD-3.
   • Declaration by Jennifer Joan McEwan, Principal of Wrays, legal representative for the Applicant, dated 3 December 2014 (‘McEwan 1’) together with Exhibit JJM-1.
   • Declaration by Bryan Allan Young, dated 16 March 2015 (‘Young 2’) together with Exhibits A to E.
   • Declaration by Simon Nicholas Young (‘Simon Young’), Director of Laminar dated 16 March 2015 (‘Simon declaration’) together with Exhibits A to F.
   • Declaration by Bryan Allan Young, dated 6 October 2021 (‘Young 3’) together with Exhibits A to Q.

   [2] In this decision when I refer to Mr Young, I am referring to Bryan Young, not Simon Young.

8. On 26 November 2021, the Applicant filed a Declaration by Jennifer Joan McEwan, dated 26 November 2021 (‘McEwan 2’) together with Exhibits A to H.  I address the issue of whether to have regard to this material later in my decision.

   The Relevant Provisions

9. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   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.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

10. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 12 October 2013 (‘relevant period’).

11. 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 application,[3] and I confirm that five years since filing the application have in fact passed.

    [3] 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.

12. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

    100  Burden on opponent to establish use of trade mark etc.

    (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

    (a) …
    (b) …
    (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

    […]

    (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

    (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
     (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

    (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
    (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

    (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

13. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[4]

    [4] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

14. In accordance with s 101, I may decide to remove the Trade Mark 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 Mark even if the grounds under which the application for removal was made are established.

15. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[5] 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’.[6] Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[7] 

    [5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

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

    [7] Act s 7(3).

    Opponent’s Evidence

16. In discussing the Opponent’s evidence in this matter I note that much of the Opponent’s evidence consists of and conflates the use of the Trade Mark with the use of the separately registered trade mark VOKES, which is not substantially identical to the Trade Mark.  This is because Young 1 was filed in connection with a number of separate removal actions, including two actions for the removal of VOKES.  I do not consider that such use is relevant to this proceeding in any way and therefore do not discuss it in my summary of the evidence in this matter.

17. Young 1 provides a history of the use of the Trade Mark and in particular notes that in 2005 the Trade Mark was assigned to Laminar from its former owner Vokes Australia Pty Ltd.  Laminar is said to have licensed (pursuant to a licence agreement set out in Exhibit 7 to Young 1) the use of the VOKES mark and the Trade Mark to various related entities including Vokes Air Filtration Pty Ltd which trades as AES Environmental. 

18. Young 1 then asserts, by reference to Exhibits 8 to 14, that the ‘VOKES Mark’ has been used in the relevant period.  However this conflates the use of the Trade Mark with the use of the VOKES mark.  Separately, I have reviewed the relevant exhibits and reach the following conclusions.

    ·Exhibits 10 and 14 contain marketing material which refers to Vokes Vee-Glass air filter panels both as a product and a component part of the Vokes Super-Vee panel filters.  This material is undated.

    ·Exhibit 11 contains numerous invoices from within the relevant period.  The invoices themselves do not bear the Trade Mark, though there is a single invoice dated 24 January 2011 that refers to a product as ‘cut pad vokes vee 290 media’.

19. Young 2 consists of an assertion that Scott Bailey (who gives evidence for the Applicant) is incorrect in his statement that he had no knowledge of the Opponent or related entities using the VOKES trade mark in relation to filtration equipment or products.

20. The Simon Declaration was made mostly in response to the Douglas Declaration and consists of evidence as to the relocation of Laminar from Ingleburn to Minto in 2010 and the removal of any signage from the Ingleburn location.  The declarant also denies any recollection of the conversation set out in the Douglas Declaration, which he presumes would have involved Mr Douglas and himself.  He states that Laminar’s Minto manufacturing plant employs 20 employees but does not contain external signage as the company does not arrange client meetings or conduct promotional activities from that location.  Neither Young 2 or the Simon Declaration contain direct evidence as to the use of the Trade Mark in the relevant period.

21. Young 3 consists of evidence to the effect that the Opponent, Laminar and Vokes Air Filtration Pty Ltd were under common control since at all relevant times the directors of each of these entities were the deponent or Simon Young and in addition the Opponent was the sole shareholder of Vokes Air Filtration Pty Ltd.  Each of the companies referred to above, and various additional companies referred to in Young 2 share a common registered address, have the same directors (or directors that are part of the same family) and share the same ultimate holding company, the Opponent.  In addition Young 3 contains an explanation as to why the marketing material in Exhibit 10 to Young 1 was published during the relevant period.

22. Exhibit I to Young 3 consists of evidence from the Vokes Group’s internal accounting records showing sales of filter pads and panel filters under the Trade Mark during and after the relevant period.  Exhibit K consists of reprints of the invoices for the sales of filter pads and panel filters under the Trade Mark during and after the relevant period.

    Applicant’s Evidence

23. Mr Bailey gives evidence that he has been connected with the Applicant and the filtration industry in Australia since 1996, and that his company has been the exclusive agent for the Vokes Streamline liquid filtration equipment in Australia.  Mr Bailey indicated that he was unaware of Laminar or any of its related entities or any use by them of the Trade Mark.   

24. The Douglas Declaration consists of evidence of Mr Douglas, a licensed private inquiry agent who was instructed to establish any use of the Trade Mark and other related marks consisting of the word VOKES between July 2010 and July 2013.  Mr Douglas noted that he was unable to find any evidence of any activity by Laminar at the address for service of the Trade Mark in Ingleburn.  He then investigated the company websites and identified a location in Minto.  An agent of his visited the Minto location and was unable to identify any use of the Trade Mark.  He also provides evidence that the Opponent’s website at did not display the Trade Mark or any other mark containing the word VOKES during the relevant period.

25. McEwan 2 consists of documentary evidence relating to Federal Court Proceedings NSD 1364 of 2017 and NSD 2290 of 2018 (‘Federal Court Proceedings’), in which Ms McEwan’s firm represented the Applicant and other entities in proceedings against Laminar.  This includes copies of court documents, affidavits, communication between the parties and court transcripts.  These proceedings involved allegations of trade mark infringement by Laminar against the Applicant and applications to remove certain trade marks held by the Applicant.  The proceedings were subsequently withdrawn by Laminar on 21 July 2021 shortly before the trial was to have commenced. 

26. The Opponent initially objected to consideration of McEwan 2 on a number of grounds including that McEwan 2 does not comply with my direction with respect to additional evidence made on 12 October 2021 which provided the Applicant with an opportunity to file additional evidence on limited subject matter, being evidence in response to Young 3 or in respect to the exercise of the discretion.  It also objected on the basis that the material amounted to a breach of the implied undertaking in Harman v Home Office[8] as Exhibit A of McEwan 2 annexes and discusses documents produced under subpoena in the Federal Court Proceedings, notwithstanding those documents were never read into court.  

    [8] [1983] 1 AC 280 (Lord Diplock, Lord Simon, Lord Keith, Lord Scarman and Lord Roskill).

27. On 17 January 2021 the Applicant filed a redacted version of McEwan 2 and revised submissions that removed all reference to Exhibit A.  At the hearing the Opponent limited its submissions to the issue of breach of the implied undertaking.  Notwithstanding the Opponent withdrawing its objection to McEwan 2 on the basis of non-compliance with the 12 October 2021 directions, it is appropriate to consider that issue first.

28. The material in McEwan 2 is in no way relevant to the exercise of the discretion.  Nor is it responsive to the evidence in Young 3 under any reasonable interpretation of the directions made on 12 October 2021.  Young 3 consists of evidence relating to use of the Trade Mark and whether or not the use was under the control of the owner.  Evidence in response would naturally be limited to those two topics.  McEwan 2 consists of material, arising from a separate proceeding between the parties, that does not in any way respond to the material in Young 3.  Rather it is material that the Applicant seeks to rely on to make the submission that I should question the reliability of the Opponent’s evidence as a whole.  The reason for this is that, according to the Applicant, certain documents produced by a subpoena in the Federal Court Proceedings were different to earlier versions of documents produced in a declaration provided to the Registrar of Trade Marks in separate proceedings.  I note that in the Federal Court Proceedings the Opponent put on evidence in response, explaining the issue and characterising this as a mix-up.

29. The Applicant asks the Registrar to make findings on the reliability of sworn evidence in the present proceeding, based on discrepancies in documents submitted in two unrelated proceedings, in which an explanation has been provided (but has not been tested as the matter did not go to trial).[9]  This request has been made notwithstanding that the Opponent has not been provided with the opportunity to file additional evidence or make submissions on this issue.  Given the above, I do not consider that the material in McEwan 2 is relevant to my decision in this matter and hence it is neither responsive to the directions of 12 October 2021 nor material that I should exercise my discretion to admit pursuant to regs 21.15(4) and 21.19 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).[10]

    Discussion

    [9] The Applicant also submits that in considering the reliability of the Opponent’s evidence in the present matter I have regard to the fact that Laminar commenced and then, shortly before the commencement of the trial, withdrew from the Federal Court Proceedings, ostensibly because Mr Young did not wish to be cross-examined.  Noting that whenever a party files evidence in a proceeding there is a possibility of cross examination, any conclusion I would make concerning the reason Laminar withdrew from the Federal Court Proceedings would be entirely speculative and in no way should affect my consideration of the reliability of the evidence in this proceeding.

    [10] The principles in respect of the application of this provision are set out in Federation Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42 (Hearing Officer Wilson).

    Use of the Trade Mark in the relevant period

1. The use of the Trade Mark must be by Laminar, the then owner of the Trade Mark, or by an authorised user.  Mr Young and Simon Young appear to have traded through a number of separate corporate entities that are asserted, in Young 1, to have licence agreements, arrangements or understandings with Laminar in respect of the use of the Trade Mark.  I note that the evidence before me is that there was a licence agreement between Laminar and Vokes Air Filtration Pty Ltd t/a AES Environmental and that each of the companies shared a director (Simon Young) and were controlled by the same entity (the Opponent) during the relevant period.  The evidence before me is that the family business trading under the name AES Environmental was conducted by a number of companies that shared overall ownership, and shared directors or had separate directors that were members of the same family group.  In such cases it can be presumed that the separate entities were operating with a unity of purpose and in particular I am satisfied that any use of the Trade Mark by Vokes Air Filtration Pty Ltd t/a AES Environmental was authorised use as Vokes Air Filtration Pty Ltd operated with a unity of purpose in the sense outlined in Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’)[11] below:

   It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. … it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[12]

   [11] [2019] FCAFC 10 (Reeves, Jagot and Rangiah JJ) (‘Trident’).

   [12] Ibid [45].

2. While much of the evidence provided by the Opponent consists of the use of the VOKES mark, which I have already indicated (at paragraph 17) is not substantially identical to the Trade Mark, I am satisfied (on the balance of probabilities) by the evidence before me that the Trade Mark was used by Vokes Air Filtration Pty Ltd (and hence under the control of Laminar) for the Registered Goods in the relevant period.

3. The Applicant notes that the evidence of use consists broadly of marketing materials, dated invoices and internal company records.  It makes the submission, correctly in my view, that there are reliability issues with each of these sets of documents, with the exact dates of the marketing materials being unclear, the invoices being reprints, and the internal company records being incomplete.  However while each aspect of the Opponent’s evidence can be critiqued, the clear impression provided by the evidence taken as a whole (and my conclusion on the balance of probabilities) is that Laminar did use the Trade Mark for the Registered Goods in the relevant period.  

4. In particular I note the use of the Trade Mark in the marketing material at Exhibit 10 of Young 1.  I am satisfied on the balance of probabilities that these materials were in use during the relevant period, noting the statements of Mr Young, the fact that they included Laminar’s Minto address (Laminar having relocated to Minto in 2010) and the footer to one of the brochures indicating ‘© 2013’.  This evidence is supported by the internal accounting records showing sales of the Registered Goods during the relevant period as well as a limited set of invoices showing use of the Trade Mark (such as an invoice for the sale of what is described as VOKES VEE-GLASS cut pad dated 31 July 2013).    

5. Furthermore while the Applicant notes that the internal accounting records do not indicate whether the sales were from Vokes Air Filtration Pty Ltd or from another entity in the broader corporate group, the fact that Vokes Air Filtration Pty Ltd and Laminar share internal accounting records with other entities owned by the Opponent, trading under the name AES Environmental and directed by Mr Young or a family member supports the Opponent’s submissions that any use of the Trade Mark by any member of what is referred to by Mr Young as the ‘Vokes Group’ was under the control of Laminar using the test set out in Trident.  

6. While noting the burden of proof to show use rests with the Opponent, I am satisfied that it has met its burden in showing use by Laminar in the relevant period.  To reach a conclusion otherwise would require me to accept the somewhat extraordinary proposition that the AES Environmental business created marketing materials both just before and just after the relevant period (but did not use them in any way during the period) and that notwithstanding the creation of the marketing materials that Vokes Air Filtration Pty Ltd made no sales during the relevant period (necessitating the creation of fake accounting records and invoices) or the sales were made by an entity that was part of the AES Environmental business (a family run company  group under the control of Mr Young and his family) but not under the control of Laminar.

7. I reach the conclusion as to use notwithstanding the evidence of Mr Bailey and Mr Douglas.  I note that Mr Bailey’s lack of awareness of the Opponent’s use is not sufficient to overcome the Opponent’s evidence of use in brochures, invoices and internal company records.  Furthermore while I have no question of the veracity of Mr Douglas’ evidence, the absence of external signage or use on a website is not conclusive proof of an absence of use in the presence of documented evidence of use.

8. In summary I am satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period. As such it has satisfied the onus under s100(3)(a) of the Act.

   Decision

9. I decide that the Opponent has established its opposition to removal and the Trade Mark should not be removed from the Register. Accordingly, I decide not to remove trade mark registration 216896 from the Register in relation to any of the goods for which it is registered.

   Costs

10. The Opponent has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to the application to remove trade mark registration number 216896 be awarded against the Applicant in accordance with Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    15 February 2022