*1800 Reverse Pty Ltd v William Tys [Sec=Unclassified]

[2009] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by 1800 Reverse Pty Ltd to registration of trade mark application 1104208(36) - 1800GOREVERSE - filed in the name of William Tys.

Delegate:

Alison Windsor

Representation:

Opponent:  Toby Boys of Holding Redlich Lawyers

Applicant:  William Tys

Decision:

2009 ATMO 73

Section 52 opposition:  grounds under sections 43, 44, 59, 60 and 62 – section 59 ground established – applicant does not intend using the trade mark for the services nominated – costs awarded against applicant.

Background

1. William Tys (“the applicant”) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (“the Act”), current details of which follow:

Application number:  1104208

Priority date:  18 March 2006

Service claim:  Class 36:  Insurance; financial affairs; monetary affairs; real estate affairs;

Trade Mark:  

1. The application had originally included a claim for “telecommunications” in class 38.  This class was deleted during the course of examination of the application.  Once the class was deleted, the application was accepted for possible registration and advertised in the Australian Official Journal of Trade Marks on 20 September 2007.

2. 1800 Reverse Pty Ltd (“the opponent”) filed a notice of opposition (“the notice”) on 26 October 2007.  Evidence in support and evidence in answer were filed and served.  The opponent, despite an application for an extension of time for the purpose, elected not to serve evidence in reply, and requested that the matter be heard.

3. The matter thus came before me, as a delegate of the Registrar of Trade Marks, in Canberra on 6 July 2009.  The opponent was represented by Toby Boys of Holding Redlich Lawyers of Brisbane.  William Tys appeared on his own behalf.

Grounds of opposition and onus

1. The notice lists grounds of opposition as follows: 

   ·   Section 43 – trade marks likely to deceive or cause confusion

   ·   Section 44 – identical etc trade marks

   · Section 59 – applicant not intending to use the trade mark

   ·   Section 60 – trade mark similar to one with a reputation in Australia

   ·   Section 62 – application etc defective

2. At the hearing the opponent provided brief submissions on all the listed grounds.  The onus is on the opponent to establish one of the grounds in order to be successful in the opposition.  The standard of proof to be met is that of “the balance of probabilities”.[1] 

The evidence

[1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599

Evidence in support

1. The opponent’s evidence in support consists of the declaration of Richard Bell, director of Reverse Corporation Limited, the sole parent company of the opponent.  The declaration was made on 6 December 2007 and includes Annexures A to H.

2. The opponent is the owner of trade mark registrations:

   ·   783440 – 1 800 REVERSE for “telecommunications” in class 38 and

   ·   793065 –  for “telecommunications” in class 38. 

3. Since 1999 the opponent has used the smart numbers which form the basis of its registrations for a reverse charges telephone service which may be used for both reverse charges calls and message delivery (in the event the recipient’s telephone is engaged).  The trade marks are widely advertised, especially via television advertisements, and the turnover related to the services is in the millions of dollars per annum.

Evidence in answer

1. The applicant’s evidence in answer consists of the declaration of William Tys made on 9 May 2008, and includes Exhibits WRT-1 to WRT-26. 

2. The applicant is the owner of several “smart numbers” bought at auction and which he states are to be used in respect of various proposed business ventures.  Included in this group of numbers is the application number – 1800GOREVERSE.  In addition to purchasing the phone number, around the same time he also seeks to register associated trade marks, business names and domain names to protect any intellectual property rights connected with the smart number and the proposed business.

3. As examples of how his business approach has worked, the applicant referred to two operating businesses: 1800PHONEHOME (a reverse charge telephone call service) and 1800FUTONS (a futon retail service currently operating in Melbourne).  He also referred to a number of other smart numbers of which he is the current owner but which do not, as yet, have operating businesses attached.

4. At the time of making his declaration, the applicant had not used the trade mark, and had only connected the smart number to his own mobile phone in an effort to prevent his ownership of the smart number from lapsing.

Discussion

1. Having assessed the evidence from both parties, I am of the opinion that a consideration of section 59 is an appropriate place to begin my discussions.

2. Section 59 relevantly provides:

   The registration of a trade mark may be opposed on the ground that the applicant does not intend: 

   (a) to use, or authorise the use of, the trade mark in Australia; or

   (b) 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 specified in the application.

3. Section 59 is a challenging ground for an opponent to establish. The opponent must provide sufficient evidence to displace the presumption of an intention to use inherent in the applicant’s action of filing its application.[2]  If the opponent raises sufficient doubts as to the applicant’s intention in this regard, the onus shifts to the applicant to support its own case.

   [2] Section 27 of the Act

4. The evidence the opponent has provided is sufficient to trigger the need for the applicant to support his intentions to use the trade mark in respect of the services he has claimed.

5. Paragraphs 8 to 17 of the Bell declaration refer to abortive attempts on behalf of the opponent or its staff to contact the “smart number” 1800GOREVERSE.  The declaration also refers to some correspondence of a legal nature between the parties.  The opponent has caused letters to be written to the applicant making reference to wrongful and misleading conduct in respect of the 1800GOREVERSE smart number.  The letters also made certain demands on the applicant in respect of its use and registration of the number in question.

6. At the hearing the opponent submitted that its failure to make meaningful contact with the applicant’s smart number pointed to the applicant not having a genuine intention to use the trade mark in respect of the services claimed in class 36.  Because the 1800GOREVERSE number was, at one stage, redirected to another of the applicant’s smart numbers – 1800PHONEHOME – a telecommunications reverse charge service, the opponent submitted that the applicant’s intention was to use the trade mark in respect of telecommunications, despite not having those services included in his accepted trade mark application.

7. The applicant disputed this contention in his declaration, stating that he had:

   … at all material times and in particular at the time of filing the 1800GOREVERSE Application, intended to use 1800GOREVERSE Mark in respect of the 1800GOREVERSE Services.  I refer to the reservation of the 1800GOREVERSE Domain Name, the 1800GOREVERSE Business Name, the purchase of the 1800GOREVERSE Smartnumber rights and connection of the 1800GOREVERSE Smartnumber to keep it active, which all supports my intention to use the 1800GOREVERSE Application.

   In paragraphs 15 to 17 of the Opponent’s Evidence in Support, the Opponent alleges that the 1800GOREVERSE Smartnumber is disconnected, and that this indicates that I have no intention to use the 1800GOREVERSE Mark.  I dispute this assertion.  Whether the number is presently disconnected is immaterial to these proceedings, as I have the exclusive rights to use the 1800GOREVERSE Smartnumber and have the capacity to disconnect and/or reconnect this number as I see fit. 

8. The applicant’s submissions at the hearings gave further details about his intentions to use the trade mark, and I quote: 

   I have also purchased the Smartnumbers 1800 GOREVERSE and 1300 GOREVERSE.  I have registered top level domain names being: 1800GoReverse.com.au and 1800GoReverse.com and 1300GoReverse.com.au and 1300GoReverse.com.  The business idea around the Smartnumber 1800 GOREVERSE, is to develop a Smartnumber/internet portal for the reverse mortgage business.  My preliminary investigations at the time of registration indicated (and still do) that this business had no significant barriers to entry.

   …

   The reverse mortgage market is huge and it is expected that over $15 billion dollars of business will be written in 2013 with over $2.5 billion written so far in 2009.  It is one of the fastest growing sectors of the financial arena with over 30% of retirees estimated to use their home for retirement funding.

   As an example of the concept visit which is the way I intend to develop my concept.[3]

   I will provide some detail here to demonstrate that this is a very viable business opportunity.  My intention now, as it was at the time of filing the 1800 GoReverse application, is to have an internet portal on which (reverse) mortgage providers can advertise their product with direct links to their services.  People would be drawn to the site via a radio ad in which they would be invited to call 1800 GOREVERSE.  The caller would be presented with a prerecorded marketing message about reverse mortgages after which they would be invited to visit the website.  This is a strategy combining normal media, the Smartnumber and the internet. This project is on hold until this matter is resolved.

   [3] The website referred to appears to be an American site which gives information on reverse mortgages in the American market.

9. In regard to the applicant’s intention to use this trade mark, the final paragraph of the above quote (paragraph 17) is crucial.  Here the applicant describes what his intentions are in respect of use of the trade mark.  It appears from this explanation that what he intends to do is provide an on-line facility for reverse mortgage providers to advertise their products, and as a result provide a facility for interested parties to contact these providers.  The smart number will be one method of accessing information leading potential reverse mortgage customers to the website or portal.

10. Given this information, it appears that the applicant did not at the time of filing and does not now intend offering either a telecommunications service (as inferred by the opponent) or a financial service as claimed in his application.  He is offering the service of providing a site or portal where reverse mortgage providers may advertise their products, and through which their customers may access them.  The service he has described would be in the nature of “provision of links to other websites”, an item properly classified in class 42.

11. Consideration of the information provided by both the opponent and the applicant has led me to the conclusion that the applicant has no intention, in his own right, of offering any of the services covered by his trade mark application. I am satisfied that the ground of opposition under the provisions of section 59 has been established.

12. As the opponent has been successful in this ground, it is successful over all.  There is no necessity for me to consider any of the other grounds of opposition, and I do not intend to do so. 

Decision

1. Section 55 of the Act provides:

   (1)  Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide: 

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The opponent has established a ground of opposition under the provisions of section 59 of the Act. I refuse to register trade mark application 1104208.

Costs

1. The opponent requested its costs in the event of its success in this matter.  I award costs against the applicant in accordance with the official scale.

Alison Windsor

Hearing Officer

Trade Marks Hearings

10 September 2009