Ansell have sucessully defended a trademark non-use action despite only showing use of the trademark BARRIER on a subset of goods.
In September 2009, Molnlycke Health Care AB filed an application for the removal/restriction of Trade Mark No. 732286 BARRIER in the name of Ansell Healthcare Products LLC (“Ansell”) for non-use. The BARRIER trade mark was registered in respect of Gloves and disposable gloves in this class, including gloves for protection against accidents; gloves for industrial, scientific and emergency work and services in Class 9. Ansell opposed the removal application.
Section 92(4)(b) of Trade Marks Act 1995 (Cth) (“the Act”) states that a non-use application may be made to remove a registered trade mark if the mark has not been used in the three year period prior to the application for removal in relation to the goods and/or services the subject of the application. Such an application may not be made before a period of five years has passed from the filing date of the application for registration.
The removal applicant requested removal for all goods within the class 9 claim except for “multilayer flat film gloves offering chemical protection, but excluding latex, rubber and vinyl gloves”. The sales and marketing Director for Ansell provided evidence of use of the mark in connection with some of the goods covered by the registration and in particular “multilayer flat film chemical resistant gloves”.
Accordingly, the Hearing Officer considered whether the registration for BARRIER should be restricted to these goods.
The Hearing Officer exercised his discretion and determined that Ansell’s use of the trade mark BARRIER in relation to the goods above was sufficient to preserve the registration in respect of all goods. Citing a prior decision McHattan v Australian Specialised Vehicle Systems Pty Ltd, the hearing Officer referred to the potential for fragmented ownership of the same or very similar mark in respect of very similar goods to cause confusion. The decision also noted that if fine distinctions were permitted in relation to different items when determining use, the value of a trade mark registration could be seriously eroded.
He held that it would be inappropriate to restrict the goods to only those goods for which actual use has been shown and noted that “this would produce a situation where trade mark confusion is a distinct likelihood if the goods within the description “gloves and disposable gloves” are divided up amongst a number of producers.”
The decision confirmed that the Registrar has a general discretion to allow a trade mark to remain registered for goods and services. This discretion may be applied where there has been little or no use of the trade mark for certain goods or services, if it is “reasonable” to do so. This case is also a reminder that trade mark owners should “use their trade mark or lose it” and record samples of evidence of the mark in use.