CSR LIMITED V CHINA SOUTH LOCOMOTIVE & ROLLING STOCK CORPORATION [2014] ATMO 33

This matter concerned a non-use removal application by China South Locomotive and Rolling Stock Corporation, for the marks CSR, CSR DRIVEWAY SOLUTIONS and CSR DRIVEWAY SPECIALISTS.

The applications for removal were amended to an application to remove or restrict the specifications of services in respect of the marks so that they were specifically not to apply to

vehicles, locomotives, trains, rolling stock, railway infrastructure or related parts, fittings and accessories

Evidence was led on how over the course of the last century, CSR has transformed from a sugar refining company to a commercial building supply company.  During the relevant period, the evidence asserted, the CSR mark had been used in respect of various roofing related products, and had also built a display home to showcase its products.

The difficulty that was faced by China South was that its chosen restriction included the term “railway infrastructure” and that this term carried a particularly broad meaning and included the “wider installations associated with railways such as passenger stations, platforms, waiting rooms, signal-boxes and control-rooms”. CSR had in the relevant period therefore offered its services in relation to the CSR mark.

In relation to the CSR DRIVEWAY SOLUTIONS and CSR DRIVEWAY SPECIALISTS marks CSR conceded that it had not used these marks per se, but that the marks should remain on the register as:

  • the use of CSR on its own was a use of these marks (use by additions or alterations as allowed by s 7’s definition of “use” under the Act); and separately,
  • the Delegate should exercise its discretion and retain the marks as they are.

The Delegate held that these marks should otherwise have been removed for everything within the specification other than those goods and services which were proved. However, to do so would produce specifications wider than applied for due to the inclusion of “railway infrastructure”, and so the marks as they were should remain.

To view the Office decision, click here.