//
[50]
- Section 8 makes clear that use of a registered trade mark by an authorised user, will only be taken to be use by the registered proprietor of the trade mark if the registered proprietor exercises control over the use of the trade mark during the period in question so as to maintain a connection in the course of trade between the goods and the registered proprietor. That can be achieved if either quality control or financial control is exercised.[13]
- The Removal Opponent submits that SV and SA are its wholly owned subsidiaries and operated with a clear unity of purpose. The Removal Opponent advanced two arguments in support of the claim that SV and SA are and have been authorised users of the Trade Mark. Firstly, there is a unified approach to marketing the Registered Goods by reference to the Trade Mark. Secondly this promotion has resulted in sales in Australia.
- This situation as described by the Removal Opponent shares elements of both Lodestar Anstalt v Campari America LLC[14] and Trident Seafoods Corp v Trident Foods Pty Ltd.[15] Lodestar involved a close reading of a licensing agreement, while Trident required looking over company governance documentation. Neither of these are provided in the present opposition.
- With respect to there being a unity of purpose in that there is a unified approach to marketing the Registered Goods by reference to the Trade Mark, this implies that some sort of license agreement was in place between the parties, but the terms of any such license are not in evidence, nor is there any evidence of any quality or financial control being exercised.
- While the Removal Opponent submits that its owns and controls the AP Website and SV has continuously provided the guide which explains the components and technological set up of the PJM ASSURE system promoted to Australian consumers on that website, the guide produced by SV displays the following
trade mark in its headline and this trade mark does not appear on the AP Website. The evidence merely shows that customers ordered goods and services or received a quotation from SA, and that SV had produced a guide to assist information technology departments with the PJM ASSURE set up. There is no evidence that any orders placed with SA were a result of customers viewing the AP Website or that the guide was provided to SA customers. Further, there is no evidence that the package of goods or services ordered from SA would be provided by the Removal Opponent. - On the Trident approach, the Removal Opponent's submissions are that SV and SA are wholly owned subsidiaries (that is, 100% of the shares are held by the Removal Opponent). One of the features of the modern corporation is the division between the management and ownership of a business. That is the shareholders of a company do not normally manage that company directly. Instead, they have certain shareholder rights which generally include the power to appoint directors of the company. It is those directors, not the shareholders, that sit atop the management structure of the company. Trident relied on common directorship of two companies to conclude that those entities were acting with a 'unity of purpose'.[16] The Removal Opponent has not suggested, nor demonstrated, that SV and/or SA have directors in common with the Removal Opponent. This leaves me unable to reasonably conclude that SV and/or SA operated with a unity of purpose with the Removal Opponent.[17]
- Therefore, I am not satisfied that the Removal Opponent or an authorised user as contemplated by the Act has used the Trade Mark during the Relevant Period in Australia in relation to the Registered Goods.