What you need to know
A recent decision by a Registrar of the Australian Trade Marks Office is illustrative of circumstances that constitute an “obstacle to use” for the purposes of defending removal applications on the basis of non-use.
The Registrar also lent support for the idea that products - in this instance, windows - could be considered “of the same description” irrespective of their physical composition (i.e. metal or timber), provided that there is “no practical difference” between the products and that their “defining characteristic” remains the same (in this instance, “a window made for domestic purposes”).
This reasoning could have implications for trade mark owners who face removal applications on the basis of non-use in respect of products that are listed in several, ostensibly overlapping, classes. It could also be of significance for those looking to apply to have existing marks removed from the Register (or classes thereof), as it seems to broaden the scope “of the same description”.
Future decisions in respect of pending actions regarding the QUANTUM marks will be elucidatory in this respect.
Further case details
Saint-Gobain Glass France filed applications for removal for non-use of three trade mark registrations owned by Trend Windows & Doors Pty Ltd. The trade marks in question include QUANTUM (seen below) and QUANTUM TWIN (covering metallic windows and doors in class 6 and non-metallic windows and doors in class 19). Trend filed Notices of Opposition to the removal applications which included the ground of obstacle to use.
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Trend’s use of the QUANTUM and QUANTUM TWIN trade marks
The burden of proof rested with Trend. Trend filed several declarations stating that the trade marks QUANTUM and the Quantum logo had been used since as early as 1999 in relation to a range of windows and doors and their parts and fittings. The trade mark QUANTUM TWIN was used until around 2005.
Trend had used its QUANTUM and Quantum logo trade marks on metal framed windows within the relevant period. However Trend had not used its QUANTUM and Quantum logo on wooden framed windows during the relevant period.
Building materials in question
Saint-Gobain argued that the trade marks were used only on aluminum windows and doors (class 6) and not on timber and PV windows and doors (class 19). Trend argued that circumstances existed that were an obstacle to use the trade marks on goods in class 19 during the non-use period.
Trend has been developing windows and doors with frames made from rosewood timber. Since rosewood is not listed as a tested species of timber to comply with Australian Standards – it has been necessary for Trend to have its products tested by the CSIRO.
Trend provided documentation to show that testing by CSIRO was nearing completion and that information about the rosewood timber product range was available since 2010.
These circumstances allowed the Registrar to decide in favour of Trend that it had provided sufficient evidence to support its obstacle to use ground in respect of its QUANTUM and Quantum logo.
The question of discretion by the Registrar to remove the registrations for PVC and wooden framed windows and doors (class 19) was then addressed.
Saint-Gobain argued that metal framed windows and doors (class 6) are distinct from wooden framed windows and doors (class 19).
According to the Registrar "a timber window or door does not change its defining characteristics to be a metallic window or door – the reverse holds true for aluminum windows and doors".
The Registrar was reluctant to comment about the nature of the goods insofar as the goods incorporate ‘glass’ and might be now viewed as the standard way in which to sell window glass.
This reluctance of the Registrar may be due to the fact that Saint-Gobain obtained acceptance of two applications for the trade mark QUANTUM GLASS in classes 19, 21 and 42. The class of interest is class 19 which covers building materials The statement excludes materials for windows and doors. The applications were accepted on provision of evidence of use. These applications have been opposed by Trend.
The Registrar noted that there is little practical difference between metal and wooden frame windows – and determined that metallic windows are the “same kind of thing" as non-metallic windows if they are made for domestic purposes, or “of the same description”. 1
The discretion of the Registrar was exercised in favour of Trend. The registrations for QUANTUM and Quantum logo in classes 6 and 19 remain on the Register. However QUANTUM TWIN was removed.