166052400 Pty Ltd v Bundaberg & District RSL & Citizens Memorial Club
[2019] ATMO 34
•7 March 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOppositions by 166052400 Pty Ltd to applications by Bundaberg & District RSL & Citizens Memorial Club Inc for removal of trade mark numbers 1781101 SANDHILLS FISHING CLUB logo, 1781102 BUNDABERG SPORTS CLUB logo, 1783886 SANDHILLS SPORTS CLUB logo and 1783888 BUNDABERG SERVICES CLUB logo (all in Classes 41 and 43) all in the name of 166052400 Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: not represented at hearing
Applicant: Meher Gaven of Counsel, instructed by Finn Roache Lawyers
Decision: 2019 ATMO 34
Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(a) – reg 21.19 considered – trade mark owner deregistered company – no good faith intention to use trade marks – trade marks to be removed from Register
Background
1. 166052400 Pty Ltd (‘the Opponent’) is the registered owner of the trade mark registrations detailed below (‘the Trade Marks’). The Trade Marks are all registered for the same services in Classes 41 and 43 (‘the Opponent’s Services’) which can be broadly described as club entertainment and education services and club services for the provision of food and drink. A full list of the claimed services appears in the Appendix to this decision.
Trade Mark Number Trade Mark Filing Date 1781101
8 July 2016
1781102
8 July 2016
1783886
20 July 2016
1783888
20 July 2016
2. On 28 June 2017, Bundaberg & District RSL & Citizens Memorial Club Inc (‘the Applicant’) filed applications (‘the Applications’) based on s 92(4)(a) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Trade Marks from the Register. The Applicant alleged that on the days on which the applications for the registration of the Trade Marks were filed, the Opponent had no intention in good faith:
(i)to use the trade marks in Australia; or
(ii)to authorize the use of the Trade Marks in Australia; or
(iii)to assign the Trade Marks to a body corporate for use by the body corporate in Australia.
in relation to all of the services for which they are registered.
3. The Opponent filed Notices of Opposition consisting of a single Notice of Intention to Oppose filed on 13 July 2017, which covered all the Trade Marks, and a single Statement of Grounds and Particulars (‘the SGP’) which was filed on 13 August 2017. The SGP, similarly, covered all the Trade Marks. The Applicant filed Notices of Intention to Defend the opposition on 15 September 2017.
Evidence
4. In support of its oppositions, the Opponent filed four declarations made on 10 December 2017 by Ross Johnston, the Managing Director of the Opponent. The declarations are essentially the same save for referring, individually, to a different one of the Trade Marks. For the sake of simplicity, I will refer to them as a single declaration (‘the Johnston declaration’).
5. The Applicant filed the following Evidence in Answer (‘EIA’):
· Statutory Declaration made on 3 April 2018 by Col Rankin, the general manager and a life member of the Applicant, with Exhibit CR1 (‘the Rankin declaration’); and
· Statutory Declaration made on 29 March 2018 by David Devey, the director of Energize Design Pty Ltd, with Annexures A to U (‘the Devey declaration’).
6. The Opponent did not file any Evidence in Reply.
7. After the end of the evidentiary period, on 25 July 2018, the Applicant filed the two declarations detailed below (‘the James declarations’). The Applicant requested that the James declarations be considered pursuant to regs 21.15(4) and 21.19 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).
· Statutory Declaration made on 16 July 2018 by Liam James, a solicitor in the employ of Finn Roache Lawyers, the representative of the Applicant, with Annexure A (‘James 1’); and
· Statutory Declaration made on 20 July 2018 by Liam James with Annexures A to D (‘James 2’).
8. Once the time allowed for filing evidence had ended the parties were given an opportunity to file written submissions or to request a hearing. The Applicant requested an oral hearing. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 13 February 2017. Meher Gaven of Counsel, instructed by Liam James of Finn Roache Lawyers appeared for the Applicant. Ms Gaven’s oral submissions were supplemented by written submissions filed with IP Australia prior to the hearing on 27 August 2018 and 6 February 2019. The Opponent was not represented at the hearing.
The Opponent
9. There is nothing before me from which to provide a background of the Opponent. However, as will be seen from the discussion below, the Opponent was deregistered on 2 March 2018.
The Applicant
10. According to the Rankin declaration:
[The Applicant] was incorporated on or about 23 May 1990 and is located at 17 Quay St, Bundaberg, QLD 4670 (‘Club Premises’).
[The Applicant] is a non-profit organisation whose mission statement is:
a.To preserve the memory of those who have fallen in the service of Australia;
b.To provide a relaxed and social atmosphere where members and their families can feel comfortable participating in the activities of the Club; and
c.To grow [the Applicant] into the premier club in the region. …
Bundaberg Services Club
Since approximately 1990, [the Applicant] has continuously operated and currently operates the venue known as the Bundaberg Services Club … from the Club Premises, which are owned by and leased from the Returned & Services League of Australia (Queensland Branch) Bundaberg Sub Branch Inc (trading as Bundaberg RSL and Bundy RSL) (‘RSL Sub Branch’). …
Sandhills Sports Club
On 23 March 2014, at its Annual General Meeting … [the Applicant] resolved to approve the freehold purchase of the Bargara Bowls Club …
Since about December 2014, following the conclusion of the purchase and rebranding of the Bargara Bowls Club, [the Applicant] has continuously operated this venue and continues to operate the venue as the Sandhills Sport Club (‘Sandhills Sports Club’).
The James declarations
11. As a preliminary matter at the hearing I heard submissions from the Opponent as to why the James declarations ought to be considered under the combined effect of regs 21.15(4) and 21.19 of the Regulations. Regulation 21.15(4) states that the Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Regulation 21.19 provides:
21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
12. The combined effect of those provisions allows the Registrar to consider evidence which was not filed during the normal evidentiary period. The provisions are discretionary and the Registrar cannot be compelled to consider evidence which is filed outside of the normal evidentiary periods.[1] However, for such evidence to be considered not only must it be relevant but there must be ‘further circumstances that make it reasonable for the material to be taken into account’.[2]
[1] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [35]–[40].
[2] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [55].
13. The Trade Marks Office Manual of Practice and Procedure (‘the Manual’) indicates that as a general rule evidence that is not filed in time will not be considered by a delegate when deciding an opposition. The Manual notes that there are exceptions to the general rule but a party seeking to rely on evidence filed out of time needs to address matters including the following:
·Why the evidence was filed after the due date.
·If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier.
·What the evidence shows.
·Why that information is crucial to the delegate’s decision.
·Why it is in the public interest to have the information considered.
·What is the balance of convenience for the parties if the information is considered.
James 1
14. It is useful at this point to summarise the content of the James declarations. In James 1, Mr James declared that the ASIC Register shows that the Opponent was deregistered on or about 2 March 2018. Annexure A to the declaration is an extract from the ASIC Register which supports Mr James’ statement. Mr James further declared that he conducted a search of the Trade Mark Register which shows that as at 16 July 2018, the Register did not record any assignment of the Trade Marks either prior to the Opponent’s deregistration or as at 16 July 2018. I note that at the date of this decision the Trade Marks are still recorded as being in the name of the Opponent.
James 2
15. James 2 concerns the letter ‘b’ device in the 1102 Trade Mark and the 3886 Trade Mark. Mr James declared that:
·it is apparent that the device is made up of macaw feathers (‘Feathers Graphic’);
·the Feathers Graphic has cross-hatched lines superimposed upon it, together with a mark with the appearance of a watermark;
·searches for images of macaw feathers across various stock photography websites, including 123RF.com, located an image resembling the Feathers Graphic available for licence on that website; and
·the terms of the licences available in respect of the Feathers Graphic from 123RF.com do not permit the use of the images subject to that licence as or within trade marks.
The Applicant’s submissions on the James declarations
16. The Applicant submitted that the evidence contained in the James declarations should be considered for the following reasons:
a.The evidence is crucial to the delegate’s decision and highly probative;
b.It is in the public interest to do so;
c.There is no prejudice or inconvenience to the Opponent; and
d.The balance of convenience favours its consideration.
17. In respect of James 1, the Applicant submitted that the circumstances and legal status of the Opponent is directly relevant to the question of removal of trade marks for non-use. In particular:
[T]he Opponent should be taken to have abandoned its opposition to the removal applications through the act of deregistration. The deregistration of the company overtakes any hypothetical intention to use the trade marks under section 92(4)(a) of the Act by reason of the fact that such intention has no capacity for fulfilment.
At the time when the Opponent filed evidence deposing to an intention to use their registrations as trade marks, the Opponent was a registered company. A deregistered company cannot make good its intention to use its registrations as trade marks for the purposes of the Act where the Register shows that the Opponent did not assign its registrations prior to deregistration.
The act of deregistration renders the removal applications more akin to applications under section 92(4)(b) in that a finite period for use of the trade marks has crystalised. …
[T]he Opponent’s later deregistration is not of itself unequivocal evidence against the requisite intention at the time of filing it provides context to the apparent statement of intention and demonstrates that such intention cannot now be fulfilled. It further bolsters the Applicant’s argument that such intention (to the extent that it may have existed) was not in fact formed in good faith. The sudden deregistration, at this stage of the proceedings, in itself, raises questions in relation to the bona fides of the original registrations.
18. In respect of James 2, the Applicant submitted that the evidence is directly relevant to the constitution of and underlying intellectual property rights attaching to two of the Trade Marks. In particular:
[James 2] questions the bona fides or probability of the Opponent’s intentions to use the marks in issue or at all, or, if so, within the meaning of section 92(4) of the Act.[3] It adds a further to the original evidence in chief filed by the Applicant … The original evidence sets out circumstances in which the Applicant commissioned Mr Devey of Energize Design Pty Ltd (‘Energize Design’) … to create unique artworks which were to be used by the Applicant as its logos. The Devey declaration makes it clear that Energize Design has not been commissioned by the Opponent to create any artworks nor has Mr Devey or Energize Design licenced or assigned the copyright subsisting in the unique artworks or concepts similar to the unique artworks. Where the artwork forming part of the Opponent’s registrations is substantially identical to that created by Mr Devey and Energize Design for the Applicant, it is the Applicant’s position that the Opponent has flagrantly infringed the copyright embodied within the artworks created by Energize Design. The requisite ‘good faith’ intention cannot thereby exist.
[James 2] sets out further circumstances in which the Opponent (on its face) has infringed copyright (but in other works) comprising the artwork forming the basis of two of its registrations. … Lacking the authority to use, reproduce or adapt the work of others (and having made no attempt to obtain such authority), the Opponent could not therefore have had the requisite good faith intention at the time its registrations were applied for as required by section 92(4) of the Act.
[3] Chitty Chiu (Health 24 Pty Ltd) v Media24 Intelprop Holdings Ltd [2015] ATMO 101 (Applicant’s reference).
19. The Applicant submitted that a failure to consider the evidence would be against the public interest of the Register being a true reflection of the marketplace. The Applicant further submitted that the evidence contained within the James declarations would not prejudice or inconvenience the Opponent, as the information deposed must be wholly within the knowledge of the Opponent, relating as it does solely to the Opponent’s status and the Opponent’s activities in preparing to file its own trade mark applications. The Opponent must be taken, submits the Applicant, to have made its own forensic decision to exclude information or to not promptly explained to the Registrar the information now contained within the James declarations.
Decisions on James declarations
20. In the normal course of events I would consider any objections made by the Opponent to the consideration by the Registrar of the James declarations. There are no such objections before me. My decision at this point is not whether the James declarations establish the assertions made by the Applicant only whether they are relevant considerations and that in the light of the other factors mentioned by the Applicant they ought to be considered by the Registrar.
21. That the Opponent was to be deregistered is information of which the Opponent was aware. Because of reg 21.19(b), reg 21.19 is, therefore, not triggered. Consequently, it is only in respect of reg 21.15(4) that I need to consider James 1. It is appropriate that the status of the Opponent be before the Registrar and I am satisfied that James 1 ought to be considered.
22. It is probable that the information provided in James 2 was not known to Opponent. Nevertheless, this is information which is merely filed late and which could have been provided by the Applicant far earlier. Further, I have not considered James 2 in reaching my conclusions on the substantive matters below. I decline to consider James 2.
Legal Framework
23. Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101. Section 92 relevantly provides:
Section 92. Application for removal of trade mark from Register etc
(1) … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
…
(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) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non-use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed. …
Note 1: For file and month see section 6.
24. Section 96 makes provision for any person to oppose an application made under s 92 by filing a Notice of Opposition with the Registrar. Section 100 specifies that the burden is on the person opposing an application to rebut any allegations made under s 92. Under s 92(4)(a) the Opponent needs to establish that, on the day on which the applications to register the trade marks were filed, the Opponent had the intention in good faith to use the Trade Marks in respect of the Opponent’s Services. Alternatively, the Opponent must establish that the Trade Marks were used by the Opponent, in good faith, in relation to the Opponent’s Services, at any time before the period of one month ending on the day on which the Applications were filed.
25. Subject to ss 101(3) and 102, s 101(1) provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any or all of the Opponent’s Services. Section 101(3) explicitly provides that the discretion may be exercised in the trade mark owner’s favour (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.
Consideration
26. The particulars of the oppositions provided in the SGP state:
For the past 12 months, the members of our fishing and sports club, have been gathering on frequent occasions at our rented premises of 44 Princess Street Bundaberg, where general meetings are held to discuss our clubs activities and to process the procedures in formally registering our club/s as a legal entity in its own right. Our clubs expected registration date is to be finalised upon certain events, including the registration of our clubs trademarks. We note that our TM applications were approved for registration during the application process, after IP Australia performed its routine checks for likely infringements against trademarks registered in the Australian Trademarks Database. We hereby state that our TM Applications were not made in bad faith, and that we have every intention of using our clubs names; and it is for this reason that we seek registration and protection of our clubs name as a registered trademark. In relation to the allegation of copyright infringement, we expect to challenge this argument in the appropriate legal channel.(sic)
27. The Johnston declaration constitutes the entirety of the evidence filed by the Opponent. Indeed, since the filing of the Johnson declaration the Opponent has taken no part in the proceedings, including having filed no submissions. The Johnston declaration consists of a single page with five single sentence paragraphs and no annexures. There is no assertion of use of the trade mark contained in the declaration. There is no assertion by the Opponent, and there is no evidence before me, that the Opponent has used any of the Trade Marks at any time. It is, therefore, only the Opponent’s intention to use that need be considered further. I proceed with this consideration on the basis that the Opponent needs to establish its intention to use on the balance of probabilities.[4]
[4] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.
28. Two paragraphs only of the Johnston declaration address the Opponent’s intention to use the Trade Marks; they are reproduced in full here:
3.Our company is in the process of establishing its services for use under the above trademark.
4.Our company has every intention to use our registered trademark within Australia.
29. The basis of the Applicant’s submissions are that the Opponent had no intention to use the Trade Marks, or, if there was an intention, that intention was not in good faith. The Applicant asserts that the lack of a good faith intention to use the Trade Marks arises from Mr Johnston’s previous membership of the Applicant and an asserted awareness of two trade marks commissioned and used by the Applicant. The Applicant filed a significant amount of relevant evidence to support its assertions.
The deregistration of the Opponent
30. The Applicant submitted that:
The circumstances and legal status of the Opponent are both directly relevant to the question of removal of the trade marks for non-use. [T]he Opponent should be taken to have abandoned its opposition to the removal applications including through the act of deregistration.
The Opponent’s deregistration must further overtake any hypothetical intention to use the trade marks under section 92(4)(a) of the Act by reason of the fact that such intention has no capacity for fulfilment.
31. The intention to use must be assessed as at the day the applications were filed. Actions by an opponent which are subsequent to the filing of a trade mark application may shed light on that opponent’s state of mind at the time of filing. However, that an opponent at some later time changed its mind so that it no longer intended to use the trade mark does not alter that opponent’s intention as at the filing date. Nor is a subsequent change of circumstances which prevents use of a trade mark a factor determinative of the state of mind of an opponent at the date of filing.
32. There is no provision in the Act or Regulations which allows an opposition to an application under s 92(4)(a) to be considered as abandoned based on the deregistration of a company. I do not see that as a shortcoming of the Act. It may be that prior to deregistration the Opponent assigned its Trade Marks to another party but those assignments are, so far, unrecorded. If it is the case that the Opponent still owned the Trade Marks when it was deregistered the ownership of the Trade Marks would have vested in ASIC.[5] If this is the case, ASIC’s intentions with respect to the Trade Marks are unknown, and in any event are unlikely to be relevant.
[5] Corporations Act 2001 (Cth) s 601AD(2).
33. The deregistration of an opponent considered along with other factors may shed light on the state of mind of an opponent. It seems to me that the circumstances surrounding the deregistration, including the reasons for deregistration, would need to be before the Registrar for that to occur. The reasons for the deregistration of the Opponent are not before me. Consequently, the deregistration of the Opponent does not support the Applicant’s case.
A good faith intention?
34. The EIA shows that a Ross Johnston became a member of the Applicant two days prior to the Applicant’s Annual General Meeting (‘AGM’) in 2014. This is asserted to be the same Ross Johnston that is the declarant of the Johnston declaration. I am satisfied by the evidence that they are one and the same. The Rankin declaration states that Mr Johnston attended the 2014 AGM and the 2015 AGM as an ordinary member of the Applicant.
35. The Rankin declaration further states that on or about 27 November 2014 the Opponent resolved to adopt the trading name of ‘Sandhills Sports Club’ for the recently purchased Bargara Bowls Club premises. Mr Rankin also declared that following a resolution of the Applicant it applied for and was granted, in October 2015, the business name ‘Bundaberg Services Club’. The EIA shows that the Applicant engaged Energize Design to design two logos to be used as trade marks. In about February 2015 and January 2016, respectively, the Applicant approved the artworks shown below and were licenced by Energize Design to use those artworks (‘the Applicant’s logos’).
36. It is apparent that there are striking similarities between the Trade Marks and the Applicant’s Logos. The EIA also shows that the Applicant’s Logos were being used as trade marks at the time the Opponent applied to register the Trade Marks. The EIA also supports a view that Mr Johnston and, by extension, the Opponent were aware of the Applicant’s Logos prior to the filing dates of the Trade Marks. The Opponent’s knowledge is taken to arise from Mr Johnston’s declared role in the Opponent. Further, the Applicant’s services are similar to those provided by the Opponent.
37. The Applicant submitted:
[I]n full knowledge of [the Applicant’s Logos], the Opponent proceeded to apply for registration of [the Trade Marks], each of which would clearly be considered to be substantially identical or deceptively similar to [the Applicant’s Logos], both of which clearly being artistic works in which copyright subsists, for the purposes of the Copyright Act 1968 (Cth). …
There is no evidence that at the time of the registration of [the Trade Marks], the Opponent had sought any licence [to use the copyright works]. …
It is submitted that the evidence is clearly sufficient to demonstrate to the requisite standard … an absence of a good faith intention to use [the Trade Marks].
Lacking the authority to use, reproduce or adapt the work of others (and having made no attempt to obtain such authority), the Opponent could not therefore have had the requisite good faith intention at the time its registrations were applied for as required by section 92(4) of the Act.
38. The main thrust of the Applicant’s case is that the Opponent had no ‘good faith’ intention to use the trade marks. This raises the question of what constitutes a ‘good faith’ intention for the purposes of s 92(4)(a). The Opponent submitted:
[T]he Act provides for a ground of opposition where a mark has been registered in bad faith (s 62A of the Act). It follows that a trade mark registered in bad faith will not have been registered in good faith, and demonstrated bad faith in the application for a mark will be relevant in determining whether there was a good faith intention to use a mark at the time of registration.
39. On the face of it, the Opponent’s proposition is an attractive one. Case law on this question is rare, to say the least; however, the Federal Court case of Edwards v Liquid Engineering 2003 Pty Ltd (‘Edwards’)[6] concerned an appeal from the decision of a delegate of the Registrar where the delegate had found an application under s 92(4)(a) successful. Gordon J stated in her decision:
The principal question presented in those hearings was whether evidence of a bona fide intention to use a mark for trading purposes is sufficient to demonstrate good faith even where the applicant for registration gained knowledge of the mark as an employee of the owner of the unregistered mark and in circumstances tending to suggest a breach of fiduciary duties or even (malicious) intent to block a competitor.
Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that ‘good faith’ for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions.[7]
[6] [2008] FCA 970.
[7] Ibid [7]–[8].
Her Honour referred to E & J Gallo Winery v Lion Nathan Australia Pty Ltd[8] wherein the meaning of ‘good faith’ under related provisions of the Act were examined. In the end, Edwards was not decided on this question. Her Honour’s comments are therefore obiter dicta and not binding. Nevertheless, Her Honour’s comments are made in a decision from a court with significant authority, and ought to be considered highly persuasive in matters before the Registrar. Consequently, I follow Her Honour here.
[8] [2008] FCA 934, [187]–[192].
40. Were the present matters oppositions to registration and I was assessing whether the applications for the Trade Marks were made in bad faith I would find that they were and that those oppositions were established on the basis of the Applicant’s evidence here. However, following Gordon J’s obiter dicta in Edwards, that the applications were made in bad faith does not mean, without more, that at the time the applications were filed that the Opponent lacked the relevant intention to use the trade marks. I do, however, distinguish the present matters from Edwards. Gordon J considered the situation where an opponent had provided evidence of a bona fide intention to use the trade mark in question for trading purposes. That is not the case here.
41. There is a presumption of intention to use a trade mark which arises from the filing of an application.[9] There are a number of authoritative decisions where a statement by an opponent to removal that they possessed the requisite intention has generally been taken as sufficient, in combination with the presumption, to shift the onus of proof to a removal applicant without the need for further evidence.[10] More recently, Justice Yates in Optical 88 v Optical 88 (No 2) (‘Optical 88’) stated that where there is an allegation of lack of intention to use a trade mark an applicant ‘is entitled to stand squarely behind the allegations that are made to actuate s 92(4)(a)’ and thus ‘it is the opponent … who must make good the case, in all its dimensions, for a challenged mark to remain on the register’.[11] In Optical 88 Yates J found that the opponent in that matter had not rebutted the allegation because the opponent’s evidence was ‘sparse’ and failed to convince his honour of the opponent’s intention.
[9] Aston v Harlee Manufacturing Company (1960) 103 CLR 391, 401.
[10] See for example Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816.
[11] (2011) 89 IPR 457, 496 [204].
42. The Applicant has submitted in respect of the Johnston declaration:
Tellingly, the Johnston [declaration does not] state:
(a)that the Opponent intends to use [the Trade Marks] in good faith;
(b)that the Opponent intends to use [the Trade Marks] as trade marks; and
(c)that the Opponent intends to use [the Trade Marks] in respect of any specified goods or services.
This should be the end of the inquiry.
43. Whether the presumption of intention arising from the filing of the applications for the Trade Marks, in combination with the statements in the Johnston declaration is sufficient to shift the onus of proof to the Applicant is a matter I need not decide. The Applicant’s evidence has cast serious doubt on the good faith of the Opponent’s intention to use. That evidence requires an answer from the Opponent which goes beyond the presumption of intention and the sparse statements of intention contained in the Johnston declaration. The Applicant’s evidence has gone unanswered.
44. In the absence of any answer by the Opponent to the Applicant’s persuasive evidence I am satisfied that on the day the Opponent filed the respective applications it had no intention in good faith to: use, authorise the use of, or assign to a body corporate, the Trade Marks. The Opponent’s intention is tainted by its knowledge of the Applicant’s logos, their origin, and their use. The Opponent has failed to defend the applications for removal of the Trade Marks.
The Registrar’s discretion
45. There is nothing before me which satisfies me that the discretion available to the Registrar under s 101(1) ought to be exercised in favour of the Opponent.
Decision
46. As the Opponent has not rebutted the allegations under s 92(4)(a), the grounds for removal have been established. I decide therefore that Trade Marks be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Trade Marks will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registrations will be subject to that decision.
Costs
47. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995, with costs for the second, third and fourth of the four oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[12]
[12] (2001) 53 IPR 591.
Robert Wilson
Hearing Officer
Oppositions and Hearings
7 March 2019Annexure
The Opponent’s Services
Class 41: Club (cabaret) services; Club education services; Club entertainment services; Club services (entertainment or education); Country clubs (providing entertainment and sporting facilities); Fitness and exercise clinics, clubs and salons; Gymnasium club services; Health club services (exercise); Health club services (health and fitness training); Night club services (Entertainment); Night clubs; Provision of club recreation facilities; Provision of club sporting facilities; Provision of social club services; Provision of sporting club facilities; Social club services (entertainment, sporting and cultural services); Sports club services
Class 43: Club services for the provision of food and drink; Country club services (provision of food, drink and temporary accommodation); Country clubs (providing food, drink and accommodation); Night club services (provision of food and drink); Social clubs (Provision of accommodation); Social clubs (Provision of food)
0
7
0