Airbnb Inc v Ken Sealey

[2024] ATMO 28

TRADE MARKS ACT 1995

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

Re:Opposition by Ken Sealey to an application under section 92 of the Trade Marks Act 1995 (Cth) by Airbnb, Inc. for removal of trade mark number 1761422 (43) – The Business Class BNB. – in the name of Ken Sealey

Delegate:

Bianca Irgang

Representation:

Opponent: Self-represented

Applicant: Caroline Ryan of Allens Patent & Trade Mark Attorneys

Decision:

2024 ATMO 28

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 22 March 2022 under ss 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by AirBnB, Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1761422

Lodgement date

30 March 2016

Services

Class 43: Agency services for booking temporary accommodation; Arranging of temporary accommodation; Booking of temporary accommodation; Consultancy and advisory services relating to the provision of temporary accommodation; Information services relating to the provision of temporary accommodation; Medical tourism services being the reservation or booking of hotels or temporary accommodation in order to obtain health care; Providing information, including online, about services for providing food and drink, and temporary accommodation; Providing temporary accommodation; Provision of temporary accommodation; Rental of temporary accommodation; Reservation of temporary accommodation; Temporary accommodation; Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a frequent flyer scheme; Temporary accommodation reservation services; Tourist agency services (provision of temporary accommodation); Accommodation bureaux (hotels, boarding houses); Accommodation letting agency services (hotel); Agency services for booking hotel accommodation; Arranging hotel accommodation; Arranging hotel reservations; Booking of hotel accommodation; Booking services for hotels; Hotel accommodation reservation services; Hotel accommodation services; Hotel information; Hotel reservation services; Hotel reservations; Hotel room reservation services; Hotel services; Hotels; Provision of hotel accommodation; Provision of information relating to hotels; Reservation of accommodation in hotels; Reservation of hotel accommodation; Travel agency services for making hotel reservations; Travel agency services for reserving hotel accommodation; Accommodation letting agency services (holiday apartments)

(‘Registered Services’)

Owner

Ken Sealey

Trade Mark

The Business Class BNB.

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Ken Sealey (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 7 May 2022 along with his Statement of Grounds and Particulars (‘SGP’).  The Applicant filed a Notice of Intention to Defend on 13 July 2022.

1. The only evidence filed in this matter is the following:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Ken George Sealey, Owner (‘Sealey declaration’)	29 September 2022	1 to 10

5.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 9 February 2023 the Applicant requested a hearing and paid the appropriate fee.  The matter was set down for a hearing on 1 February 2024.  The Applicant filed written submissions on 25 January 2024 (‘Applicant’s Submissions’). 

6.  I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

·The Application for Removal;

·The Notice of Intention to Oppose and SGP;

·The Applicant’s oral and written Submissions. 

The Relevant Provisions

7. Part 9 deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

92  Application for removal of trade mark from Register etc.

(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.

8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 22 February 2022 (‘Relevant Period’).

9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

10. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100  Burden on opponent to establish use of trade mark etc.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) …
(b)  …
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

[…]

(2) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during 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 during that period; or
 (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

(i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

11.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

[2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

12.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5] 

[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

[5] Act s 7(3).

14.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

Discussion

1. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 (or that there were circumstances that were an obstacle to use in the Relevant Period (per s 100(3)(c)).

   [7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

2. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

3. In evaluating the Opponent’s evidence there is an important threshold determination that I make, namely that those exhibits which actually do demonstrate use of the Trade Mark are dated outside of the Relevant Period. Exhibits 3, 5 to 7, and 10 accompanying the Sealey declaration are all dated in 2016 which is before the Relevant Period. Additionally, exhibit 1 demonstrates the Trade Mark being used on a digital representation of an accommodation brochure but the word ‘PROOF’ is watermarked through the brochure. Mr Sealey avers this is the brochure which he has made available to customers through his accommodation venue called “Haven on the Park” located in Highgate, Perth, West Australia since 2016.

4. Exhibits 3, 4 and 7 are the charges for the printing services on the Opponent’s credit card and dated in 2016. While I acknowledge that these charges do indicate that the Opponent paid for the printing of business cards, brochures and design services for those business cards and the brochure, all these events took place before the Relevant Period. I note that the Trade Mark is used on the Opponent’s LinkedIn Page from exhibits 8 and 9 which pages appear to have been established in 2016. However, it is unclear whether or not the Trade Mark has always been present and in use on these pages as I only have recent copies of the pages dated outside of the Relevant Period. While Mr Sealey states that the Trade Mark has been continuously used since 2016, without documentation and evidence to support his comments they remain assertions which does not fulfil the onus placed upon the Opponent by s 100 of the Act as discussed above.

5. Additionally, I note that the Opponent provided a declaration with exhibits 11 and 12 which was filed out of the time on 23 February 2023. In a letter from IP Australia dated 27 February 2023, the Opponent was advised that for this information to be taken into account he would need to provide compelling reasons for the Hearing Officer to do so. I confirm that no such reasons have been provided. Therefore, I have not considered this additional information in making my decision.  

6. I find that there is no evidence before me that the Opponent has used the Trade Mark in the Relevant Period.

   Obstacles to use

   21.     An Opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[8] The Opponent has made no claims that there were any obstacles to his use of the Trade Mark. Therefore, I am not satisfied that the Opponent’s failure to use the Trade Mark were because of circumstances that were an obstacle to use pursuant to s 100(3)(c).

   [8] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J)

   Registrar’s Discretion

   22.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.[9] The burden of persuasion falls in this regard falls on the Opponent.[10]

   [9] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [10] Ibid.

   23.     The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.

   Decision

   24.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration number 1761422 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

   25. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   15 February 2024