Amie Sapiecha v ACIS Holdings Pty Ltd

[2024] ATMO 227

TRADE MARKS ACT 1995

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

Re:Opposition by Amie Sapiecha to application under section 92 of the Trade Marks Act 1995 (Cth) by ACIS Holdings Pty Ltd for partial removal of trade mark number 1854277 (classes 16, 35, 36, 41, 44 and 45) - TRUST - in the name of Amie Sapiecha

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self represented

Applicant: Redchip Lawyers Pty Ltd

Decision:

2024 ATMO 227

Trade Marks Act 1995 (Cth) – application under section 92 for partial removal – evidence does not establish that the trade mark has been used in good faith during the relevant period – discretion not exercised – registration to be partially removed

Background

1. Amie Sapiecha (‘Opponent’) is the owner of registration number 1854277. Relevant details are as follows:

Trade Mark

TRUST (‘Trade Mark’)

Priority date

6 July 2017

Protected goods

Class 16: Books for celebrating important events; Books for colouring purposes; Books for use in the teaching of reading; Books of biblical stories; Colouring books; Fairytale books; Guide books; Index books; Indexed books for recording information; Information books; Memo books (printed matter); Memo books with pens attached; Memorandum books; Music books; Poetry books; Record books (printed matter); Ring books; Song books; Song index books; Sticker activity books; Story books (printed matter); Writing books; Writing or drawing books; Articles for use in writing; Home information packs being printed matter; Information lists; Information reports; News reports in printed form; Printed reports; Reports (printed matter); Magazines (printed publications) relating to religion

Class 35: Copy writing; Career counselling (employment advice and information); Charitable services, namely organising and conducting volunteer programmes and community service projects; Career information and advisory services (other than educational and training advice); Commercial lobbying services; Lobbying (promoting, publicising or otherwise representing the interests or concerns of others); Lobbying services for commercial purposes; Opinion polling; Surveys (opinion polling)

Class 36: Charitable fund raising; Raising of capital

Class 41: Career counselling (education or training advice); Career counselling (training and education advice); Lifestyle counselling and consultancy (training); Commissioned writing (plays, musicals or for publications); Screenplay writing; Song writing services; Writing for others (commissioned and custom writing); Writing lyrics; Writing of texts (other than publicity texts); Career information and advisory services (educational and training advice); Cultural information; Provision of training facilities

Class 44: Counselling relating to diet; Counselling relating to nutrition; Health counselling; Lifestyle counselling (medical); Providing information, including online, about agriculture, horticulture, and forestry services; Providing information, including online, about hygienic and beauty care for human beings or animals; Provision of information relating to vaccination; Meditation services

Class 45: Counselling relating to spiritual direction; Lifestyle counselling (spiritual); Ministerial counselling; Pastoral counselling; Spiritual or religious counselling; Charitable services, namely mentoring (personal or spiritual); Life coaching (personal mentoring and support services); Meditation services for spiritual purposes; Mentoring (spiritual); Spiritual advice; Spiritual consultancy; Spiritual development; Spiritual guidance; Spiritual recovery services; Lobbying services relating to legislation and regulation; Personal and social services rendered by others to meet the needs of individuals; Providing information, including online; about personal and social services meeting the needs of individuals

1. On 13 April 2023, ACIS Holdings Pty Ltd (‘Applicant’) made an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] seeking partial removal of the following services in class 36 of trade mark number 1854277 (‘Removal Application’):

   Charitable fund raising; Raising of capital (‘Challenged Services’)

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

2. The Opponent has opposed the Removal Application, filing a Notice of Intention to Oppose on 15 June 2023 and a Statement of Grounds and Particulars (‘SGP’) on 14 July 2023. The Applicant filed a Notice of Intention to Defend on 8 August 2023.

   4.     The Opponent subsequently filed evidence in support of its opposition (‘EIS’) on 10 November 2023. The Applicant did not file evidence in answer.

   5.     The parties were given the opportunity to be heard and the Applicant requested a decision by way of written submissions and filed written submissions on 23 October 2024 prepared by Daniel Devitt of Redchip Lawyers Pty Ltd. The Opponent did not file submissions. I have decided this matter based on the particulars set out in the SGP, the EIS and the written submissions of the Applicant.

   Evidence

   6.     The following EIS was filed:

   ·Declaration of Amie Sapiecha (the Opponent) dated 10 November 2023 together with Exhibits A – H (‘Sapiecha’).

   Legal Framework

   7. In respect of this matter, s 92 relevantly provides (notes omitted):

   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.

   8. 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,[2] and I confirm that five years since filing the Trade Mark has in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) 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.

   9. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark on the Challenged Services is the three year period ending on 13 March 2020 (‘Relevant Period’).

   10.     The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Mark in respect of any or all of the Challenged Services identified in the Removal Application during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]

   [3] s 100(1)(c).

   [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52.

   [5] s 100(3)(c).

   11.     In Blount Inc v Registrar of Trade Marks, Branson J observed:

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[6]

   [6] [1998] FCA 440 (citation omitted).

   12.     It follows that unless the Opponent provides convincing proof of use of the Trade Mark in the Relevant Period in relation to the Challenged Services to the satisfaction of the Registrar, the opposition to removal will not be established.

   13.     In Woolly Bull Enterprises Pty Ltd v Reynolds (‘Woolly Bull’),[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. He said:

   Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual

   trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here.[8]

   [7] [2001] FCA 261, [16].

   [8] Ibid [20].

   14.     Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[9] 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’.[10] The fewer acts relied on the more solidly ought they to be established.[11]

   [9] Ibid [17].

   [10] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).

   [11] Ibid.

   15.     Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[12] Similarly, bald assertions of use during the relevant period which are not supported by clearly dated documentary evidence should be afforded little weight.[13]

   [12] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

   [13] Aristedes Maniatis v Roche Diagnostics GmbH [2022] ATMO 59, [26] (Hearing Officer Smith); Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno).

   16.     Finally, the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[14]

   [14] Nodoz (n 10); Re Trina Trade Mark [1977] RPC 131.

   17.     Thus, if an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims.

   18.     The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of the sign as a badge of origin.[15]

   [15] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   19.     Section 101 provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any, or all, of the services for which they are registered. Relevantly, the section also provides:

   (3)  If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   Summary of EIS

   20.     The Opponent claims to have used the Trade Mark since 2017 on public profile pages of websites, invoices and receipts and exhibits the following:

   ·an undated screenshot from her Facebook page where I note the Opponent is stated to be a holistic health energy practitioner who provides readings, consults and alignments and there is reference to .

   ·a screenshot from Quora[16] dated October 2023 where I note use of Trust in the following manner:

   ·a copy of an invoice dated October 2023 which is addressed to IP Australia and is claimed to be for a Consultation. I note there is no reference to the Trade Mark on the invoice.

   [16] Quora is an open online question and answer forum.

   21.     The Opponent proceeds to make a plethora of unsupported assertions that:

   ·her charitable services do not issue invoices or receipts.

   ·she has been called to ASMY[17] events since 2017, run donation drives with multiple primary schools since 2013, raised and provided food, clothing and shelter from businesses to Community Friends since 2019 and Homeless Connection since 2013, non-profit public service events since 2013, spiritual community groups for support, developing community gardens since 2013, providing information to assist government to allocate funds for food relief, youth support, non-profits and housing policy improvements.

   ·removal will delay her launches of other services.

   ·the uncertainty of the Removal Application has resulted in loss of opportunities.

   [17] I understand ASMY is an acronym for the Australian School of Meditation and Yoga.

   22.     The Opponent states she intends on using the Trade Mark as the name of self-development and fictional novels published since 2015 exhibiting two undated screenshots of files on her personal computer where I note there is no reference to the Trade Mark. The Opponent goes on to claim that she is yet to publish her TRUST publications and to promote charitable events and services as she is waiting for the outcome of other proceedings which began in 2018.

   23.     The Opponent declares she has been a facilitator of directing and logistically raising funds, and basic provisions between private business, government and community charity, and non-profit organisations and that she has provided social, legal and financial assistance for clients, families in need and many non-profit organisation events since 2013. The Opponent exhibits undated screenshots of eight undated pictures claimed to be from 2021 and 2022 on her personal computer where I note there is no reference to the Trade Mark.

   24.     The Opponent claims that the charitable funds and provisions she has facilitated in raising and providing are organised via private encrypted messaging apps, phone calls and in person. While the Opponent makes reference to Exhibits I to R which are claimed to verify discreet communications, she then states that these communications have been withheld under privilege.

   Discussion and Reasons

   Use During the Relevant Period

   25.     In summary, the SGP claims that the Trade Mark has been continuously used in the Relevant Period in good faith in Australia and internationally, in respect of charitable fund raising as well as multiple business streams. The Trade Mark has been used to:

   ·     raise funds, provide community gardens for local charities, non-profits and council initiatives such as Community Friends, Homeless Connection, ASMY, Micah Projects, Brisbane spiritual churches and groups, police departments and individuals since 2013.

   ·     assist Food Relief with their government spending to appropriate charities and non-profits while establishing a food distribution center in West End.

   ·     provide consultant and alternative health services and provide online support to clients and readers to evolve spiritually, and to businesses, government agencies and non-profits to work together to meet community basic needs.

   26.     The Applicant submits that the evidence filed by the Opponent does not show any of the following:

   ·use by the Opponent;

   ·use as a trade mark within the context of s 17;

   ·use in the Relevant Period; or

   ·use on or in relation to the Challenged Services.

   27.     The Applicant also submits that the Opponent has failed to provide any convincing argument as to why the Registrar should exercise the discretion not to remove the Trade Mark in respect of the Challenged Services from the Register.

   28.     The Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Trade Mark upon, or in physical or other relation to, the Challenged Services within that period in order to rebut the allegation of non-use. This has not happened. The evidence of use in the EIS is a) undated, b) dated after the Relevant Date c) replete with unsupported bare assertions d) is from internal files e) did not show use of the Trade Mark and f) did not show use of the Trade Mark in respect of the Challenged Services, such that I cannot be satisfied that the purported use occurred during the Relevant Period.

   29.     Further, the only use of the Trade Mark in the evidence is in the screenshot from Quora[18] which is not only dated after the Relevant Period but use of TRUST is not use as a trade mark. While the Opponent has used the ® symbol after the word TRUST, this merely indicates that the Trade Mark is registered and not that it is either used or used as a trade mark. ‘Trust the love in you’ is not use of TRUST as a badge or origin and therefore it is not use as a trade mark.

   [18] Sapiecha Exhibit D.

   30.     I am satisfied that the Opponent’s evidence is utterly devoid of any concrete evidence of use of the Trade Mark before, during or after the Relevant Period, in respect of the Challenged Services. Accordingly, the Opponent has not established that the Trade Mark has been used in good faith in relation to the Challenged Services during the Relevant Period.

   Obstacles to use

   31.     The Opponent’s EIS asserts what can be construed as an obstacle to the use of the Trade Mark during the Relevant Period namely ‘the Opponent is yet to publish her TRUST publications and to promote charitable events and services as she is waiting for the outcome of other proceedings which began in 2018’. This assertion is neither corroborated nor supported by any evidence. Thus, I cannot attach it any weight.

   32.     I am therefore not satisfied that an obstacle prevented good faith use of the Trade Mark in relation to the Challenged Services during the Relevant Period.

   33. Accordingly, the Opponent has not rebutted the s 92(4)(b) ground for removal in respect of the Challenged Services.

   Registrar’s discretion

   34.     Pursuant to s 101, the Registrar has a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Federal Court provided the following insights regarding the discretion under s 101(3):

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[19]

   [19] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

   35.     Despite bearing the burden of persuasion, the Opponent has not furnished any cogent evidence that would favour the discretion being exercised. I give no weight to the Opponent’s unsupported assertions that removal will delay her launches of other services and that the uncertainty of the Removal Application has resulted in loss of opportunities.

   36.     There is a public interest in maintaining the integrity (or ‘purity’) of the Register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:

   [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[20]

   [20] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).

   37.     In these circumstances, it is not reasonable to exercise the discretion to retain the Challenged Services in the registration. Simply put, the public interest in protecting the integrity of the Register is not served by allowing the Trade Mark to remain registered for the Challenged Services. As such, I decline to exercise the discretion.

   Decision

   38. The ground for removal under s 92(4)(b) has been established in respect of the Challenged Services. I direct that trade mark registration 1854277 be partially removed from the Register for the Challenged Services.

   39.     In the event of an appeal from this decision, the registration shall not be restricted until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registrations be dealt with as the Court sees fit.

   Costs

   40.     Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent under s 221 in the amounts set out in Schedule 8 of the Regulations.

   Amme Makrigiorgos

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   25 November 2024