Trade mark ownership claim only hot air

In Australian Climate Exchange Ltd v Chicago Climate Exchange Inc [2009] ATMO 60 the Trade Marks Office considered the nature of use that a party must show to establish that it has a valid claim to ownership of a trade mark as well as the ground of opposition under section 58 of the Trade Marks Act 1995 relating to lack of an intention to use the trade mark applied for.

Trade mark application number 1107063 for the mark “ACX” and application 1107064 for the mark “Australia Climate Exchange”, filed by Chicago Climate Exchange Inc (“the Applicant”) on 3 April 2006 were opposed by Australian Climate Exchange Ltd (“the Opponent”).  The applications were broadly for commodity exchange services, in particular for greenhouse gases.  The Opponent asserted that it was the true owner of the marks on the basis that it had used the marks “ACX” and “Australian Climate Exchange” in Australia prior to the priority date of the applications. There was evidence that the Opponent had placed the letters “ACX” on PowerPoint slides shown to potential investors at a roadshow in Melbourne and Sydney.  The hearing officer noted this was preparatory use of the trade mark in respect of a business yet to take off and the authorities were not consistent as to whether or not this could be regarded as “use” suitable to establish ownership in a mark.  However use of the letters “ACX” in letterhead sent to companies offering an opportunity to become members of the Opponent’s organisation did constitute use sufficient to establish ownership. Accordingly, this ground of opposition in relation to the application for the “ACX” mark was made out.

In relation to the ground of no intention to use, the hearing officer found that the evidence showed the Applicant had an intention to move its business into Australia, on the basis of discussions with various Australian people and organisations with a view to commencing operations here. However, this was not considered sufficient to establish an intention to use the relevant trade marks.  Further, the Applicant had filed an application in the United States for its marks just prior to visiting Australia and presenting at a symposium and at the time of filing in Australia, Australian companies had joined up with the Applicant’s US based operation. In light of these facts, the hearing officer concluded that it was possible to infer that at the relevant time the applications were filed for commercial tactics, rather than as a genuine indication of a definite intention to use the marks in Australia.

The decision illustrates the difficulties an applicant can have establishing the requisite intention to use a trade mark in Australia where it cannot point to any activities having occurred in this jurisdiction.