A recent Australian Trade Marks Office decision highlighted the need to not only list the correct goods for a trade mark, but to also list the goods in the correct class. In Combined Group of Companies Pty Ltd v Reln Pty Ltd [2014] ATMO 20, it was found that Australian Trade Mark No. 1040954 was, given how the mark was being used, in respect of the wrong class of goods.
Reln Pty Ltd filed a non-use cancellation action, and argued that while there had been use of the mark, the use was in respect of goods in another class.To prevent a trade mark from being removed due to non-use, there must be use of the mark in respect of the listed goods or services 3 years prior to the non-use application being filed. The facts of the case were as follows:
- Trade Mark No. 1040954 is in respect of the mark RAINMATE for the class 11 goods: Water supply installation
- The mark had been used on plastic water tanks which are sold as a flat-pack along with a child-proof lid, plastic tap and plastic stand It was held that the mark should have been registered in respect of goods in class 20, not class 11. However, it was decided that plastic water tanks, as sold by the trade mark owner, fall within the scope of the class 11 goods “Water supply installation”. Consequently, there had been use of the mark in respect of the goods in class 11, but only insofar as plastic water tanks were concerned. On this basis, it was decided that the mark should be amended so that it relates to the following goods in class 20: “Plastic water tanks and parts therefor”. To the extent that the marks relates to other goods, the mark is to be cancelled.
This decision emphasises the importance of correctly listing the goods and services for a trade mark application. If the Office had concluded that plastic water tanks did not fall within the class 11 goods, then the entire mark may well have been cancelled.