1-800-FLOWERS.COM, Inc. v Flowerscorp Pty Ltd

[2013] ATMO 11

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 1-800-FLOWERS.COM, Inc. to application under section 92 of the Act by Flowerscorp Pty Ltd to remove trade mark number 762635(35, 39, 42) – 1800-FLOWERS Logo - in the name of 1-800-FLOWERS.COM, INC.

Delegate:

Debrett Lyons

Representation:

Opponent:  Hamish Bevan of counsel instructed by Hodgkinson McInnes Patents

Applicant:  Stephen Burley of counsel instructed by Griffith Hack

Decision:

2013 ATMO 11

Section 94 opposition – opposition to removal of registration under s.92(4)(b); no genuine use within the relevant period; opposition unsuccessful; registration to be removed.

Costs – costs awarded against Opponent.

Background

1.     This matter is a proceeding under the Trade Marks Act 1995 (‘the Act’) in which Flowerscorp Pty Ltd (‘the Applicant’) has sought the complete removal from the register of the trade mark appearing below under the provisions of subsection 92(4) of the Act:

Registration No:              762635

Priority Date:  20 May 1998

Services:Class 35: Retailing of flowers, balloons, gourmet food baskets and gift baskets; receiving orders for flowers, balloons, gourmet food baskets and gift baskets by telephone;

Class 39: Delivery of flowers, balloons, gourmet food baskets and give baskets;

Class 42: Arranging of flowers.

(‘the Specification’)

Trade Mark:   (‘the Trade Mark’)

2. The Trade Mark was registered in the name of Russell Goldman on 20 May 1998. By a Deed of Assignment dated 12 October 2006 the Trade Mark was transferred to its current owner, 1-800-FLOWERS.COM, INC. (‘the Opponent’), which has opposed the application to remove the Trade Mark from the register, as allowed by section 96 of the Act.

3.     Both parties were informed of their right to be heard and subsequently appeared before me, Debrett Lyons,  a delegate of the Registrar of Trade Marks, at a hearing which took place in Sydney on 18 August 2012.  Hamish Bevan of Counsel, instructed by Hodgkinson McInnes Patents, Patent & Trade Mark Attorneys, represented the Opponent.  Stephen Burley of Counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys, represented the Applicant.

4. As allowed by the Act and regulations thereto, the parties have served and filed evidence in support of their cases as set out below.

In Support:	Statutory Declaration of Kenneth John McInnes with Exhibits KJM-1 to KJM-6 made 21 January 2011 (McInnes 1)
Statutory Declaration of Gerard M. Gallagher with Exhibit A made 25 January 2011 (Gallagher 1)
In Answer:	Statutory Declaration of Cathy Hollis made 3 March 2011 (Hollis)
Statutory Declaration of Kelly Taggart made 29 March 2011 (Taggart)
Statutory Declaration of Anthony Rohde with Annexures A to I made 29 March 2011 (Rohde)
In Reply:	Statutory Declaration of Kenneth John McInnes with Exhibits KJM-1 to KJM-3 made 27 September 2011 (McInnes 2)
Statutory Declaration of Gerard M Gallagher with Annexures GMG-1 to GMG-8 made 20 January 2012 (Gallagher 2)
Further Evidence:	Statutory Declaration of Kenneth John McInnes with Exhibits KJM-1 to KJM-3 made 22 December 2011 (McInnes 3)

5.     At the hearing it soon emerged that the Applicant had not been served with the Further Evidence, McInnes 3.  A copy of McInnes 3 was provided to the Applicant and after a short recess Mr Burley indicated that the Applicant was prepared to move ahead with the hearing of the substantive matter.  It was understood that the Opponent could argue its case with the inclusion of McInnes 3 on the proviso that the Applicant had a limited time following the hearing in which to make written submissions regarding McInnes 3 should it choose to do so.  The Opponent agreed that it saw no need for a right to reply.

6.     Those submissions were received in a timely manner and this decision is based on the entire evidence filed in the matter.

Legislative framework, onus and relevant dates

7. The removal application was filed on 23 December 2009 and identified grounds for removal pursuant to both sections 92(4)(a) and (b) of the Act but at the hearing the Applicant made it plain that it no longer pressed the ground for removal under section 92(4)(a).

8. In relation to section 92(4)(b), the removal application claimed that the Trade Mark had remained registered for a continuous period of 3 years ending one month before the day the removal application was filed, and at no time during that period had the Opponent used the Trade Mark in Australia in relation to the Specification or any part of it.

9. Section 92(4)(b) of the Act provides that:

(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)…

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)used the trade mark in Australia; or

(ii)used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1:For file and month see section 6.

Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

10. The relevant period for the purposes of subsection 92(4)(b) is the three years ending on 23 November 2009 (‘the relevant period’).

11. On 27 April 2010, the Opponent filed a notice of opposition to removal of the Trade Mark from the register. According to subsection 100(1)(c) of the Act, the onus falls upon the Opponent to rebut the allegation of non-use. That onus must be discharged on the balance of probabilities.[1]

[1] Clinique Laboratories v Luxury Skincare Brands Pty Ltd (2003) 61 IPR 130, per Gyles J at [132]; Pfizer Products Inc. Karam (2006) 70 IPR 599 per Gyles J at [6]-[26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 per Sundberg J at [26]; Australian Climate Exchange Ltd v Chicago Climate Exchange Inc. (2009) ATMO 60 at [7]; Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [39]; Sparco SpA v Nike International Ltd [2011] ATMO 81; Accenture Global Services GmbH v San Empero Group International Pty Ltd [2011] ATMO 77.

Primary submissions

12. There are four principal parts of the Opponent’s submissions pertinent to subsection 92(4)(b) of the Act. First, it is said that the Trade Mark was used by Mr Goldman both before and after the filing date. It is said that use by Mr Goldman after the filing date and certain actions taken by Mr Goldman after the 12 October 2006 assignment of the Trade Mark to the Opponent constitute use of the Trade Mark which inure to the benefit of the Opponent and help preserve the Trade Mark from removal. Secondly, the Opponent relies on use of the Trade Mark on the website as proof of genuine use of the Trade Mark.  Thirdly, the Opponent relies on use of the phone name “1-800-flowers” as proof of use of a sign that qualifies as use of the Trade Mark and, finally, the Opponent relies on certain newspaper advertisements which show the Trade Mark.

13.   The Applicant’s primary submission is that the Opponent’s evidence shows that there has been no genuine use of the Trade Mark in the relevant period.  The Applicant recognizes use of the sign “1-800-flowers” in that period but submits that any use of “1-800-flowers” is not use of the (registered) Trade Mark and fails to be qualifying use of the Trade Mark for the purposes of section 94(4).  It submits that the very limited evidence showing use of the Trade Mark is not proven to the required standard as having occurred in the relevant period and/or is non-qualifying for reasons expanded upon later.

Discussion

14.   There is no serious disagreement about the law to be applied in this case.  My decision turns essentially on an assessment of the evidence of use and consideration of whether my discretionary power under section 101(3) might be applied.

15.   Mr Burley summarized the guiding legal principals much as follows hereunder. Mr Bevan did not take issue with those principles; nor do I.

16.   To discharge the section 100 onus, the Opponent must demonstrate that the Trade Mark has been used in the course of trade in Australia in the relevant period in respect of the Specification.[2]  The use must be in good faith, meaning that there must be proof of real or genuine, as opposed to token, use in a commercial sense (see, Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at 16, per Drummond J.; New South Wales Diary Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 45). Since the removal application relates to the whole Specification, the registration can be preserved only for those services for which the described use is shown. Finally, under section 101(3) the Registrar retains a discretionary power to preserve an unused trade mark from removal.

[2] Structureco Inc v. Starite Distributors Pty Ltd [2000] ATMO 31.

17.   I repeat here that the central plank of the Applicant’s case is the allegation that there is no evidence of genuine use of the registered trade mark in the relevant period.  To the extent that there has during that period been use of elements of the Trade Mark, it is the Applicant’s submission that the Trade Mark:

“is a composite mark containing a dominant flower device, overlying a rectangular box in which the following words appear:

FREECALL 1800-FLOWERS AUSTRALIA WIDE

It is insufficient for some elements of the trade mark in issue to be reproduced. It is not sufficient for a person to dial “1800-flowers”, or to see the number. The flower device is a feature that substantially affects its identity (cf, s100(2) Trade Marks Act; see also Morny Ltd’s Trade Mark (1951) 68 RPC 55; 131 and QH Tours Ltd v Mark Travel Corp (1999) 45 IPR 553.[3]

It is an error of principle to disaggregate those features: Crazy Ron’s Communications Pty Ltd v Mobileworld Communications (2004) 61 IPR 212 at [102]. A decision of the Registrar’s Delegate (Fresh Intellectual Properties Inc v Russell Goldman [2006] ATMO 21 at [10) found that these two were not substantially identical.

[3] See also Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 at [57] et seq.; AgCare Biotech Pty Ltd v. Crop Smart Pty Ltd [2009] ATMO 41.

18. I should draw out the Applicant’s reference to subsection 100(2) of the Act which reads in part and with emphasis added:

(2)  For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a)  the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

(b)  …

19.   I turn then to an evaluation of the evidence which I have divided according to type under subheadings.

The 2006 assignment and Mr Goldman

20.   McInnes 1 is the principal evidence from Kenneth John McInnes who is a Registered Patent and Trade Mark Attorney.  Mr McInnes’s firm acts on behalf of the Opponent and Mr McInnes describes himself as a “resident director” of 1800 Flowers.com Australia Pty Ltd, a local subsidiary of the Opponent.  Whilst Mr Burley raised his eyebrows as to whether those two roles could be properly bifurcated, the matter was not pressed and there is no reason for me to further examine whether Mr McInnes’s evidence should be given anything less than full weight.

21.   McInnes 1 exhibits a copy of the 12 October 2006 Deed of Assignment between Russell Goldman and the Opponent.  It is a short form assignment with a single operative provision stating that Mr Goldman “hereby assigns and transfers” his entire right, title and interest in the Trade Mark (shown in the schedule to the deed as it has been registered), together with the goodwill of the business under the Trade Mark, to the Opponent.  The deed is signed, sealed and dated.

22.   In my assessment there can be no argument with Mr Burley’s submission that the assignment took immediate effect as from 12 October 2006 and that Mr Goldman did not retain any rights to the Trade Mark.

23.   McInnes 1 states that “In accordance with the 12 October 2006 Agreement … [Mr Goldman] was obliged to assist [the Opponent] in enforcing and maintaining [the Opponent’s] rights acquired under the Agreement.”  Reference is made to Exhibit 5, said to be a copy of clause 5 of the 12 October 2006 Agreement.

24.   Exhibit 5 is a single page from what looks like a master agreement of that same date between the parties.  The full agreement is not in evidence.  There is no proof of its existence.  To the extent that it might fairly be assumed that a larger agreement was in place and that Exhibit 5 is a true copy of page 6 of that agreement, then all I can usefully note is that clause 5.2 states that Mr Goldman shall provide reasonable assistance as is requested by the Opponent in respect of registration of the Trade Mark and enforcement of the Opponent’s rights.

25.   It is enough to note here my observations (i) that clause 5 is a common “boilerplate” provision in commercial contracts of this kind, (ii) the “assistance” in relation to enforcement of rights is a commonplace obligation on a trade mark vendor to assist a purchaser in the quantification of damages or lost profits if infringing activity by a third party is discovered to pre-date the date of transfer, and (ii) that in spite of the reference in McInnes 1 to “the trade mark registration”, the Trade Mark was at that time still the subject of a pending application where Mr Goldman’s ongoing assistance may have been required to secure registration.

80/78-86 Old Dandenong Road, Heatherton, Victoria

26.   One of the few instances of use of the Trade Mark as it is registered is on the signage on the gates of the premises at 80 Old Dandenong Road, Heatherton, Victoria, being the former place of business of Mr Goldman.

27.   McInnes 1 details that:

In the course of negotiations of the Agreement between 1800US and Russell Goldman, I had cause to personally visit the abovementioned address at Heatherton in Victoria in both August 2006 and October 2006. I have reviewed Exhibits KJM-3 and KJM-6 and confirm that the trade marks disclosed therein on both the premises and the vehicle correspond identically to uses of the [Trade Mark] which I viewed on both occasions in 2006 when visiting those same premises.

28.   Exhibits KJM-3 and KJM-6 to McInnes 1 shows signage to the entrance of the Old Dandenong Road address.  The signage clearly shows the Trade Mark.  McInnes 1 exhibits the results of Google Map searches of the 80 Old Dandenong Road street frontage made on 14 December 2010.  Signage showing the Trade Mark can be seen.  McInnes 1 also states that on 15 December 2010 a private investigator visited the address and took photographs showing signage with the Trade Mark.

29.   The Applicant relies on Rohde 1 which details the visit of another private investigator to the Old Dandenong Road address.  Cathy Hollis is a licenced private investigator employed by Trade Mark Investigation Services, a firm engaged by Mr Rohde.  Ms Hollis declares that on 9 February 2011 she attended the address and spoke with a Jeremy Goldman about the entrance signage.  She gives evidence that she was told that “a few years ago they sold off that side of the business to another major distributor”. 

30.   Kelly Taggart has deposed that she is the Financial Controller of the Applicant.  On 10 March 2011 she attended the Old Dandenong Road address.  She asked a man in attendance if “you guys do floristry work here” and was told “No flowers sorry”.  She asked, “Okay so you don’t send anything?” and was told “No, not anymore sorry… It is an old sign”.

The website

31.   McInnes 1 shows that the 2006 Deed of Assignment transferred not just the Trade Mark but the phone name “1-800-flowers” and the domain name <1800flowers.net.au>.

32.   According to McInnes 1, immediately after the 2006 assignment the <1800flowers.net.au> domain name was transferred and thereafter the website redirected users to (the Opponent’s principal website).  McInnes 3 provides a copy of WhoIs data for the domain name <1800flowers.net.au> showing transfer of the name to the Opponent on 29 November 2006. 

33.   McInnes 3 is the basis of the Opponent reliance on the appearance of the website as it stood on 10 October 2006 as indirect proof of use of the Trade Mark in the relevant period.  In particular, Exhibit KJM-3 to McInnes 3 is said to be a representative sample of the website prominently showing the trade mark.  The sample was retrieved on 10 October 2006 by means of the Internet Archive service at sometimes called the “Wayback Machine”.  The Opponent couples that piece of evidence with the statement from McInnes 3 that:

“… the copy of the website in Exhibit KJM-3 reflects the appearance of the website viewable by the public and customers both preceding the purchase and transfer of the website from Russell Goldman to 1800US and up until 29 November 2006 when the transfer of that domain name was affected, with automatic redirection to 1800US’ website the Applicant’s part, reliance is placed on Rhode 1 which gives evidence that the Opponent’s website, did not show the Trade Mark at all when it was monitored on 13 November 2009, 17 December 2009 and on 23 December 2009.

35.   Rohde 1 shows that much later in 2011 the Applicant’s attorneys surveyed the Opponent’s website and at that point in time found use of the Trade Mark under the so-called “International Delivery” page.

The “1-800-flowers” phone name

36.   Following on from the October 2006 assignment, McInnes 1 states that the phone name “1-800-flowers” came to be held by 1800 Flowers.com Australia Pty Ltd and that it has been active since October 2006.  McInnes 1 explains that calls to that phone name are received in New York and attended to by the Opponent.

37.   Rhode 1 gives evidence that the phone name had been monitored weekly since 22 August 2007 and that the number was unattended.  Recorded information was that the business is closed and to “call back tomorrow for assistance”, or that the area code used was wrong. 

38.   In reply, McInnes 2 makes the unsupported statement that for a short time during the relevant period there was a difficulty caused by the telecommunication service provider in the US which resulted in the phone name not correctly diverting to the Opponent.

Newspaper advertising

39.   McInnes 1 refers to various national newspaper advertisements “in recent times” and indeed they do post-date the relevant period being from April 2010 and December 2010. 

Sales

40.   Mr Gallagher is the Senior Vice-President and General Counsel of the Opponent.  Gallagher 1 states that during the relevant period the Opponent received 6,291 orders from Australia representing a total worth of US$441,171.  In addition, 3,901 orders worth US$320,475 were received from customers outside Australia for delivery of products in Australia.

41.   Gallagher 2 explains that during the relevant period third party Australian contractors fulfilled orders received in the United States.  Those contractors are named and Exhibit GMG-1 is a vast collection of both inbound and outbound orders and statements. 

42.   I note only that nowhere in this material is there any use of the Trade Mark, nor are the forms from the relevant period.  Instead, Gallagher states that the forms shown in GMG-1 are typical of the documentation sent to Australian contractors since 2002 in relation to the delivery of flowers by them on behalf of the Opponents and in relation to which the trade marks 1800-FLOWERS and 1-800-FLOWERS.COM were used.

Summary of the evidence and Findings

43. The Opponent’s evidence is unsatisfactory in many ways. There is a paucity of evidence of use of the Trade Mark, or any part of it, in relation to all the services of the Specification. For some of the services, there is no evidence at all. There is evidence in various forms of use of the element “1-800-Flowers” in relation to some of the Specification, albeit that much of it is outside the relevant period, and is liable to the Applicant’s criticism that it is disqualified for the purposes of section 92(4)(b) in some way or another.

44.   Mr Bevan’s endeavour to show that the actions of Mr. Goldman after 12 October 2006 constituted use of the Trade Mark which continued to benefit the Opponent during the relevant period is fraught with difficulties.  The use of the Trade Mark on signage to the entrance of the Old Dandenong Road property is not, on a balance of the evidence, use of the Trade Mark in relation to any business conducted there.  I accept as more likely than not the evidence that it is vestigial use of the Trade Mark on an old sign and that the business carried on at the premises during the relevant period was not floristry or any other service of the Specification.  In any event, it was not use by or with the authority of the Opponent.  The attempt to commercially connect Mr Goldman with the Opponent after 12 October 2006 by reason only of the further assurances clause of an unproved sale contract is hopeless. Contrary to the Opponent’s submission, after October 2006 Mr Goldman had no residual interest in the trade mark (certainly not in the sense that expression would be understood as a question of law) and any actions taken either by him or by anyone connected with him in the Old Dandenong Road business are not actions that are to be properly understood as acts taken in relation to the Trade Mark in relation to the Opponent’s business. 

45.   There is no clear proof of use of the Trade Mark on either the Opponent’s website, or the local website, during the relevant period.  The archive-retrieved page from 10 October 2006 post-dates the relevant period and requires backward reaching assumptions about the state of the local website at an earlier point in time which I am not prepared to make.   Rohde 1 gives evidence that periodic audits of the Opponent’s website failed to discover any use of the Trade Mark until 2011.  Mr Burley submits that the web page is directed to people outside Australia (principally the United States) who wish to send flowers to Australia and so no relevant services were provided in Australia (following the decision in Ward Group Pty Ltd v. Brodie & Stone Plc [2005] FCA 471). That criticism is far to a point. Gallagher 1, on the other hand, gives evidence of orders originating from Australia and if there was clear evidence those orders placed in Australia by reference to the Trade Mark the Applicant’s case may have been improved but that evidence is flawed for the reasons already noted. Certainly, I agree with Mr Burley that there is no evidence that the Opponent’s website is designed to appeal to the Australian consumer. In short, there is no convincing proof that the Trade Mark was in use on the internet during the relevant period or that orders were placed that are referable to the Trade Mark. Certainly, nothing in the evidence would in any case have supported the full breadth of the Specification.

46.   As far as the phone name is concerned, Rohde 1 gives evidence of a regime of unanswered calls to the phone name which suggests that during the relevant period the service was unattended and that orders for flowers via that means was unavailable.  The contrary evidence from McInnes 2 is the bald statement that on several occasions the line was answered by female call centre staff.  Dates are not given and the staff is unnamed.

47.   The newspaper advertising is outside the relevant period.  Mr Burley submitted that “[T]he advertisements are, at best, a token placement of the Sunflower Trade Mark in a newspaper well after the Opponent has had notice of the issues in dispute and the advertisements do not demonstrate any real, commercial use of relevance by the Opponent within the relevant period. They do not constitute bona fide use.”  For reasons which soon follow, it is not necessary for me to evaluate the strength of that allegation.

48.   Sales are substantial but the proof is lacking in virtually all requisite detail.  There is no use of the Trade Mark.  The order forms and statements are not from the relevant period.  On its own evidence, anything earlier from the relevant period was not retained by the Opponent.  There is no indication as to how the orders relate to the Specification as a whole.  Given the use of local contractors for delivery and the lack of evidence as to how the orders were placed – whether by phone, over the internet, or otherwise, there is nothing to connect the sales with the Trade Mark and it is Gallagher 2 which refers to the placement of orders by reference to signs 1800-FLOWERS and 1-800-FLOWERS.COM. 

49.   The Opponent has fallen short of showing to the requisite standard that the Trade Mark was used in the relevant period.  To the extent that the evidence shows use of another sign, “1-800-Flowers”, my primary concern is with the Applicant’s submission that any use of “1-800-Flowers” is not use of the Trade Mark and is not rescued by section 102(a) in so far as it might be argued that the use of “1-800-Flowers” is use of the Trade Mark with alterations not substantially affecting its identity. 

50. In my assessment, section 102(a) cannot be applied to the benefit of the Opponent. The sign “1-800-Flowers” lacks any inherent adaptation to distinguish and is itself unregistrable as a trade mark under the Act. By contrast, the Trade Mark was found registrable and registered because, as a whole, the composite mark had sufficient inherent adaptation to distinguish. The question which arises is whether the use of the prima facie unregistrable feature “1-800-Flowers” can be said to be a use of the inherently distinctive whole.  Put another way, does the use of an inherently unadapted constituent particular of a complex trade mark (which has been registered only because it is distinctive when viewed as a whole) constitute a use of that inherently distinctive registered trade mark?  The answer has to be “no”.

51.   In conclusion, I find that during the relevant period there has been no use of the Trade Mark and no use of something other than the Trade Mark which for the purposes of section 102(a) would serve as use of the Trade Mark.

Discretion

52.   In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J made the following observations concerning the Registrar’s discretion:

[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

53.   The Opponent reasoned for application of section 101(c) because of the use of the Trade Mark since as early as 1997, proof of use after the relevant period, ongoing relationships with local distribution companies and the volume of sales over many years.

54.   For its part, the Applicant reasons that there is no cause for exercise of my discretion because the Trade Mark must be removed unless sufficient reason appears for leaving it on the register and in that respect the Opponent bears the onus of establishing a reasonable basis for an exercise of discretion in its favour. 

55.   Of the various factors that I might consider following the direction of earlier court cases, I am most influenced by the ongoing absence of clear commercial use in Australia of the Trade Mark in relation to the Specification even after the relevant period.  Other matters considered, I do not perceive how the Australian public would be adversely affected by removal of the Trade Mark from the register.  I cannot see a reason to carve out and preserve certain services from the Specification in light of the poor evidence of use generally.

56.   I do not find that there are factors which would support an exercise of discretion pursuant to section 101(3) in favour of the Opponent.

Decision and Costs

57.   I direct that the Trade Mark be removed from the Register for all services comprising the Specification.

58.   The Applicant has wholly succeeded in its objective and I therefore order costs against the Opponent at the Official Scale.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

5 February 2013