Aristedes Maniatis v Roche Diagnostics GmbH

[2022] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Aristedes Maniatis to an application under section 92 of the Trade Marks Act 1995 (Cth) by Roche Diagnostics GmbH for partial removal of trade mark number 1108544 (42) – onCourse – in the name of Ish Group Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Von Muenster Legal

Applicant: Spruson & Ferguson

Decision:

2022 ATMO 59

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for partial 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 for some of the services for which it is registered

Background

1. This decision is pursuant to an application made on 12 March 2020 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Roche Diagnostics GmbH (‘Applicant’) for partial removal of the trade mark detailed below from the Register of Trade Marks. 

Registration No.

1108544

Lodgement date

12 April 2006

Services

Class 42: Creating and designing web pages for others; creating and maintaining web sites for others; hosting computer sites (web sites); maintaining (creating and -) web sites for others; on-line provision of web-based applications; on-line provision of web-based software; web portal services (designing or hosting); computer software (consultancy in the field of -); computer software design; computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); design and development of computer software (for others); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); installation of computer software; maintenance of computer software; on-line provision of web-based software; providing information, including on-line, about design and development of computer hardware and software; rental of computer software

(‘Registered Services’)

Owner

Ish Group Pty Ltd (‘Owner’)

Trade Mark

onCourse

(‘Trade Mark’)

2.  The services that are sought to be removed from the above specification are all services not limited to educational institutions for the purpose of student management, online enrolments and marketing systems for educational providers (‘Removed Services’).  To put it another way, the Applicant seeks that the Registrar amend the specification as follows:

Class 42: Creating and designing web pages for others; creating and maintaining web sites for others; hosting computer sites (web sites); maintaining (creating and -) web sites for others; on-line provision of web-based applications; on-line provision of web-based software; web portal services (designing or hosting); computer software (consultancy in the field of -); computer software design; computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); design and development of computer software (for others); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); installation of computer software; maintenance of computer software; on-line provision of web-based software; providing information, including on-line, about design and development of computer hardware and software; rental of computer software; all the aforesaid services provided to educational institutions for the purpose of student management, online enrolments and marketing systems for education providers (‘Amended Services’)

3.  Aristedes Maniatis (‘Opponent’), a director of the Owner, has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 18 May 2020 and a Statement of Grounds and Particulars (‘SGP’) on 15 June 2020.  The Applicant filed a Notice of Intention to Defend on 31 July 2020.

1. The Opponent subsequently filed evidence in support of its opposition to removal.  The Applicant filed evidence in answer.  The Opponent then communicated with this office that he did not intend to file any evidence in reply.  This material will be discussed in more detail below.

   5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing.  On 20 April 2021 the Applicant requested a hearing and paid the appropriate fee.  The matter was set down for a hearing on 15 March 2022.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 20 January 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 8 March 2022 (‘Applicant’s Submissions’).  On 10 March 2022 the Opponent’s Representative wrote to this office, indicating that the Opponent had just engaged it and requested leave to file submissions by 4pm on 14 March 2022.  I agreed to take these late filed submissions into account but provided the Applicant with a further opportunity to file submissions in reply on 22 March 2022.  At the hearing Ethan Graham of Von Muenster Legal appeared for the Opponent and Vivian Tran of Spruson & Ferguson appeared for the Applicant.  On 22 March 2022 the Applicant filed further written submissions in reply.

   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 oral submissions made at the hearing and the material listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions including submissions made in reply;

   ·The Opponent’s Submissions;

   Evidence in Support

   • Declaration by Aristedes Maniatis, the Opponent, dated 2 November 2020 (‘Maniatis declaration’) together with Attachments 1-14.

   Evidence in Answer

   • Declaration by Vivian Tran, solicitor at Spruson & Ferguson Patent and Trade Mark Attorneys, legal representative for the Applicant, dated 5 February 2021 (‘Tran declaration’) together with Annexure A.

   The Relevant Provisions

   7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act 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 by the Owner is the three year period ending on 12 February 2020 (‘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) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

   10. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act 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) any allegation made under paragraph 92(4)(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 opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
   (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.

   […]

   (3) 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 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   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]

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

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

   Discussion

2. To successfully oppose the application the Opponent must establish that the Owner has used the Trade Mark (or a substantially identical trade mark[5]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Owner.[6] I do not accept the submission made by the Opponent that for the purposes of s 100 of the Act, it is sufficient to show use for the Registered Services that are not sought to be removed, i.e. the Registered Services provided to the educational industry; rather use must be shown for the Removed Services. Nor do I accept the submission made by the Opponent that there is something improper in the manner in which the Applicant seeks to remove the Removed Services; it is entirely acceptable to seek a partial removal of a trade mark in the manner sought by the Applicant.[7]

   [5] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

   [6] Act s 7(3).

   [7] See Arrow Research Corporation Pty Ltd v Kabushiki Kaisha Tokyo Torihikisho (Tokyo Stock Exchange Inc.) [2014] ATMO 97 (Hearing Officer Thompson). See also s92(2)(b)

3. If the Opponent fails to establish such 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

4. The Maniatis declaration is made by the Opponent in his capacity as CEO of the Owner.  The Maniatis declaration seeks to demonstrate that the Trade Mark has been used, is currently used, and is planned to be used for the Removed Services.

5. In support of this assertion the Maniatis declaration lists a number of organisations outside the educational space that are stated to be current or past customers of the Owner.  However the Maniatis declaration provides no documentary evidence, such as invoices or e-mails, proving that these entities are customers or what services are provided to these entities.  More specifically, the Maniatis declaration does not provide any evidence, documentary or otherwise that the Owner has provided any of the Removed Services to the listed customers during the relevant period.   In addition, the Maniatis declaration states that the Owner has pivoted its marketing and product development outside the education industry but again provides no documentary evidence to support this assertion.

6. The Maniatis declaration then provides a description of the Owner’s business.  It does so by providing links to a software product apparently offered by the Owner under the Trade Mark (the ‘OnCourse product’) and states certain features of the OnCourse product.  I cannot have regard to a series of links in a document (where the relevant webpages are not annexed to evidence) to show use of a trade mark during a particular period, as the content of the particular page may have changed from both the relevant period and the time the evidence was provided to the time the evidence is read.  In any event it appears that rather than providing the Removed Services, the Owner offers the OnCourse product to provide student management services, which by itself does not show use of the Trade Mark in relation to the Removed Services.  While the OnCourse product may have the potential to be used for customer relationship management or document management beyond the education industry, there is no documentary evidence before me that the Trade Mark has, in the relevant period, been used for the Removed Services (or any services outside the education industry).

7. Finally the Maniatis declaration attaches a series of brochures promoting the OnCourse product.  Thirteen of the 14 brochures predate the relevant period and thus do not assist the Opponent in demonstrating use of the Trade Mark during the relevant period.  The final brochure is undated but said to be from 2019 and advertises the OnCourse software product as being a product used by educational institutions.  There is no evidence before me that this brochure was ever distributed or used in any way.  

8. In response the Tran declaration contains evidence from the Owner’s website during the relevant period stating that the OnCourse product is aimed at providing student management software solutions.  There is no evidence from the portions of the Owner’s website annexed to the Tran declaration suggesting any use of the Trade Mark independent of the education industry.  While the Owner may have offered coding services independent of the education industry, I am not satisfied that such services were offered by reference to the Trade Mark (the use of which appears to be limited to the OnCourse product), as opposed to by reference to the Owner’s business or company name – the Owner’s website prominently featured the Ish Group name.

9. Taking the Opponent’s evidence at its highest, being the 2019 brochure, the Opponent may have shown use of the Trade Mark for a software product used for educational institutions to manage students.  Given that, I am unsatisfied that the Maniatis declaration shows evidence of use of the Trade Mark for the Removed Services in the relevant period.

   Obstacles to use

   22. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Removed Services in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Removed Services.

   Registrar’s Discretion

   23.   As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[8] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   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 [or Registrar] 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.[9]

   [9] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[10]

   [10] Ibid [171]-[172].

10. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[11] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[12] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[13]

    [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

    25.   Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[14]

    [14] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

    26.   In the present case, there is no documentary evidence (as opposed to assertions unsupported by any documentary evidence) that the Owner has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia outside the education industry.  Given that, I am unpersuaded that the proposed limitation of the Registered Services to the Amended Services would result in consumer confusion or practically impact on the interests of the Owner in any way.  Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion.

    Decision

    27.     The Opponent has not established its opposition to the partial removal. Accordingly, I direct that registration 1108544 be amended one month from the date of this decision as set out below to remove the Removed Services.  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.

    Class 42: Creating and designing web pages for others; creating and maintaining web sites for others; hosting computer sites (web sites); maintaining (creating and -) web sites for others; on-line provision of web-based applications; on-line provision of web-based software; web portal services (designing or hosting); computer software (consultancy in the field of -); computer software design; computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); design and development of computer software (for others); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); installation of computer software; maintenance of computer software; on-line provision of web-based software; providing information, including on-line, about design and development of computer hardware and software; rental of computer software;  all the aforesaid services provided to educational institutions for the purpose of student management, online enrolments and marketing systems for education providers

    Costs

    28.     The Applicant has been successful in relation to the application for partial removal of the Trade Mark and has requested its costs.  I award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    19 April 2022