Australian Council for Education Research Limited v Acer Incorporated

[2023] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by The Australian Council for Educational Research Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Acer Incorporated to remove trade mark numbers 560640 (9, 16, 41, 42) - ACER; 583491 (9) - ACER;  753235 (9) - ACER CONQUEST; 753236 (9) - ACER QUEST; and 948509 (9, 16, 35, 41, 42, 44) - ACER in the name of The Australian Council for Educational Research Limited

Delegate:

Louise Tuohy

Representation:

Opponent: Stephen Rebikoff of counsel instructed by Davies Collison Cave

Applicant: David Larish of counsel instructed by King & Wood Mallesons

Decision:

2023 ATMO 14

Trade Marks Act 1995 (Cth) – application under section 92 – sections 92(4)(a) and 92(4)(b) application for removal – partial removal of 560640, 753235, 753236, 948509 and full removal of 583491 established

Background

1. The Australian Council for Educational Research Limited (‘Removal Opponent’) is the registered owner of the following trade marks (collectively the ‘Trade Marks’):

Trade Mark Number	Trade Mark	Filing Date	Registered Goods and Services
560640 (‘Trade Mark 640’)	30 July 1991	Class 9: Computer software relating to education and educational research Class 16: Printed matter relating to psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets Class 41: Educational and training services; publication of books and psychological tests Class 42:Psychological testing services including provision of test scoring services and reporting thereon; book retailing services; development of computer software relating to education and educational research; educational research services
583491 (‘Trade Mark 491’)	30 July 1992	Class 9: Audio tapes and video tapes relating to the provision of educational training and psychological testing services
753235 (‘Trade Mark 235’)	21 January 1998	Class 9: Computer software relating to education and analysis of educational, medical and social research data including computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); printed instruction manuals sold together with the aforesaid computer software
753236 (‘Trade Mark 236’)	21 January 1998	Class 9:  Computer software relating to education and research including educational research; all of the foregoing including computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web-sites); printed instruction manuals sold together with the aforesaid computer software
948509 (‘Trade Mark 509’)	27 March 2003	Class 9: Computer software relating to education, educational training, educational research and psychological testing; CD-ROMs, magnetic data carriers, recording discs, audio tapes and video tapes; all relating to education, educational training, educational research and psychological testing Class 16: Printed matter relating to education, psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets Class 35: Psychological testing for the selection of personnel; retailing of books and other publications Class 41: Educational and training services; publication of books and other publications including psychological tests Class 42: Development of computer software relating to education and educational research; educational research Class 44: Psychological testing services including test scoring services and reporting thereon

1. Acer Incorporated (‘Removal Applicant’) applied on 1 October 2020 under the provisions of ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Marks from the Register. The removal applications were made in respect of all the Registered Goods and Services; that is for complete removal of the Trade Marks from the Register.

2. The Removal Opponent filed Notices of Intention to Oppose the removal applications on 2 December 2020, followed by its Statements of Grounds and Particulars (‘SGPs’) on 17 December 2020. On 20 January 2021 the Removal Applicant filed its Notices of Intention to Defend the removal applications.

3. The Removal Opponent filed the following declarations as evidence in support and evidence in reply:

• Declaration of David Francis Noga, Commercial Lawyer of the Removal Opponent, made on 26 April 2021, with Exhibits DFN-1 to DFN-76 (‘Noga 1’).

• Declaration of David Francis Noga, made on 21 December 2021, with Exhibits DFN-77 to DFN-87 (‘Noga 2’).

1. The Removal Applicant filed the following declarations as evidence in answer:

• Declaration of Darren John Simmons, Oceanic Managing Director of Acer Computer Australia Pty Limited, made on 26 July 2021, with Exhibits DHS-1 to DJS-24 (‘Simmons’).

• Declaration of Suzannah Wood of King & Wood Mallesons for the Removal Applicant, made on 27 September 2021.[1]

  [1] Ms Wood’s declaration corrects an error in Simmons which does not contain a date indicating when the declaration was made. Ms Wood declares that Simmons was made on 26 July 2021.

1. Once time for filing evidence had ended both parties requested to be heard. The matter was heard on 15 November 2021. Stephen Rebikoff of counsel appeared via video link on behalf of the Removal Opponent instructed by Davies Collison Cave. David Larish of counsel appeared via video link on behalf of the Removal Applicant instructed by King & Wood Mallesons. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

2. The matter wallocateas later allocated to me to decide in my capacity as a delegate of the Register of Trade Marks. What follows is my decision, with reasons, based upon the video recording of the hearing, the SGPs, the evidence and the written and oral submissions of the parties.

Legal Framework

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated both s 92(4)(a) and s 92(4)(b) of the Act as the grounds for removal. However, despite the Removal Applicant initially seeking removal for all the Registered Goods and Services it now only seeks partial removal of the Registered Goods and Services in respect of Trade Marks 640, 235, 236 and 509. I have outlined which goods and services are sought to be removed when considering the use of each trade mark individually below.

3. Sections 92(4)(a) and 92(4)(b) of the Act provides:

   (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;

   (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.

4. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[2] 

   [2] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510]. See also Per s 93(2) of the Act 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) of the Act applies to trade marks filed from 24 February 2019 onwards.

5. As 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 applications, I can confirm that five years since filing the applications have in fact passed.

6. Under s 92(4)(b) the relevant period during which the Removal Opponent must establish use of the Trade Marks is the three year period ending on 1 September 2020 (‘Relevant Period’).

7. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

8. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. [3] 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.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[6]

   [3] [2001] FCA 261, [16].

   [4] Ibid [17].

   [5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [6] (1962) RPC 1, 7.

9. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[7]

   [7] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

10. In accordance with s 101 of the Act, if the grounds for removal are established, I may decide to remove or partially remove the Trade Marks from the Register in respect of any or all of the goods and services identified in the applications, or if satisfied it is reasonable to do so, decide not to remove or partially remove the Trade Marks from the Register.

Discussion

1. The Removal Opponent is a not-for-profit education, research and development agency that has been operating in Australia since 1930. The Removal Opponent has offices across Australia and overseas.

2. The Removal Opponent’s name Australian Council for Research and Education was selected in 1930 and its ACER trade mark, and variants thereof have been used by it since then.  

Use of the Trade Marks during the Relevant Period

Trade Mark 235

1. The Removal Applicant seeks the following amendments to Trade Mark 235:

   Class 9: Computer software relating to education and analysis of educational, medical and social research data including such computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); printed instruction manuals sold together with the aforesaid computer software

2. In Noga 1, Mr Noga declares that the Removal Opponent developed a statistical software program called ACER CONQUEST which features Trade Mark 235.  Mr Noga declares that the Removal Opponent has released five versions of its ACER CONQUEST software, with the most recent version released in May 2020. Mr Noga declares that consumers can download and use the ACER CONQUEST software by acquiring a licence for a fee through the Removal Applicant’s website Exhibit DFN-13 to Noga 1 comprises an extract from the Internet Archive Wayback Machine (‘IAWM’) of the Removal Opponent’s website page at dated 13 August 2020. The page features Trade Mark 235 on or in relation to the ACER CONQUEST Version 5 software and an offering for sale of licence keys with a link to the Removal Opponent’s online shop.

3. Confidential Exhibit DFN-25 to Noga 1 comprises copies of invoices issued by the Removal Opponent to customers in Australia for ACER CONQUEST software licenses during the Relevant Period. 

4. Exhibit DFN-15 to Noga 1 comprises an extract from the IAWM of the Removal Opponent’s website page conquestmanual.acer.org, dated 12 August 2020. The page allows users to view or download the user manual for the ACER CONQUEST software.

5. In assessing the evidence, I am satisfied that the Removal Opponent has used Trade Mark 235 in good faith in Australia on or in relation to ‘computer software relating to the analysis of educational, medical and social data’. However, the evidence does not show use of Trade Mark 235 on software that relates to the broad item ‘education’ other than the analysis of educational data.

6. I am not satisfied the evidence shows use of Trade Mark 235 on or in relation to ‘educational publications in electronic form’. While the Removal Opponent’s ACER CONQUEST software user manual is available in electronic form, the purpose of the manual is to provide information on how to use the software rather than as a piece having an educational subject matter.

7. Therefore, the goods offered by the Removal Opponent under Trade Mark 235 in the Relevant Period are best characterised as:

Class 9: Computer software relating to education and analysis of educational, medical and social research data including such computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); printed instruction manuals sold together with the aforesaid computer software (‘Used Goods’)

Trade Mark 236

1. The Removal Applicant seeks the following amendments to Trade Mark 236:

   Class 9:  Computer software relating to test analysis for education and research including educational research; all of the foregoing including such computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web-sites); printed instruction manuals sold together with the aforesaid computer software

2. In Noga 1, Mr Noga declares that the Removal Opponent developed a test and questionnaire analysis software program called ACER QUEST which features Trade Mark 236 in 1993. Exhibit DFN-10 to Noga 1 comprises IAWM extracts of the Removal Opponent’s website page dated 1 October 2020. The page features Trade Mark 236 on or in relation to the ACER QUEST software and allows users to download the ACER QUEST software and instruction manual.

1. Confidential Exhibit DFN-11 to Noga 1 is a screenshot from the Removal Opponent’s dashboard showing the number of downloads of the ACER QUEST software from 1 September 2017 to 31 August 2020.

2. In my assessment of the evidence, I am satisfied that the Removal Opponent has used Trade Mark 236 in good faith on or in relation to ‘computer software relating to test and questionnaire analysis for education and research including educational research’. However, the evidence does not show use of Trade Mark 236 on software that relates to the broad items ‘education and research including educational research’ other than in relation to test and questionnaire analysis.

3. I am not satisfied the evidence shows use of Trade Mark 236 on or in relation to ‘educational publications in electronic form’. While the Removal Opponent’s ACER QUEST software user manual is available in electronic form, the purpose of the manual is to provide information on how to use the software rather than as a piece having educational subject matter.

4. Therefore, the goods offered by the Removal Opponent under Trade Mark 236 in the Relevant Period are best characterised as:

Class 9:  Computer software relating to test and questionnaire analysis for education and research including educational research; all of the foregoing including such computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web-sites); printed instruction manuals sold together with the aforesaid computer software (‘Used Goods’)

Trade Mark 491

1. The Removal Applicant seeks complete removal of Trade Mark 491.

Class 9: Audio tapes and video tapes relating to the provision of educational training and psychological testing services

1. In Noga 1, Mr Noga declares that the Removal Opponent has adapted to modern technology and offers audio and visual material online. Exhibits DFN-70 in Noga 1 and DFN-77 in Noga 2 comprises extracts from the Removal Opponent’s online shop dated 22 February 2021. The extracts show use of Trade Mark 491 in relation to digital downloadable audio MP3 and video files.    

2. In my assessment of the evidence, I find that the Removal Opponent has not used Trade Mark 491 in relation to the goods in the Relevant Period. The evidence of use is dated outside of the Relevant Period and only shows use in relation to digital downloadable audio MP3 and video files and not in relation to physical audio tapes and video tapes.

3. Therefore, I am not satisfied that the Removal Opponent has established use of Trade Mark 491 on or in relation to the goods during the Relevant Period.

Trade Mark 509

1. The Removal Applicant seeks the following amendments to Trade Mark 509:

Class 9: Computer software relating to education applications for children with speech and language disabilities, educational training, educational research and psychological testing; CD-ROMs, magnetic data carriers, recording discs, audio tapes and video tapes; all relating to education, educational training, educational research and psychological testing

Class 16: Printed matter relating to education, psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets

Class 35: Psychological testing for the selection of personnel; retailing of books and other publications

Class 41: Educational and training services; publication of books and other publications including psychological tests

Class 42: Development of computer software relating to education and educational research; educational research

Class 44: Psychological testing services including test scoring services and reporting thereon

1. In Noga 2, Mr Noga declares that the Removal Opponent has used Trade Mark 509 on or in relation to its Cued Articulation (‘CA’) product. The CA product includes a set which contains a DVD, cards and posters, and a software application which can be purchased from Apple Appstore and Google Play. The CA software application is described as a set of hand cues for teaching the individual sounds in a word, and is useful for speech pathologists, speech and language therapists, remedial and recovery teachers and primary teachers in the classroom. Exhibit DFN-77 to Noga 2 comprises extracts from Apple Appstore and Google Play featuring the CA software application for sale and features Trade Mark 509. While the extract is dated 19 October 2021 it provides consumer reviews of the CA software application from both stores dated between August 2019 to March 2020.

2. The Removal Opponent submits that it has also used Trade Mark 509 in relation to its ‘computer software relating to analysis of educational, medical and social research data’ and ‘computer software relating to test and questionnaire analysis for education and research including educational research’. Exhibit DFN-13 to Noga 1 comprises an extract from IAWM for website page shop.acer.edu.au/acer-conquest-5, which is the Removal Opponent’s online shop front, dated 25 October 2020. The page shows use of Trade Mark 509 displayed prominently at the top of website page and provides an option to buy ‘computer software relating to analysis of educational, medical and social research data’. Exhibit DFN-13 to Noga 1 also comprises an extract from IAWM of the Removal Opponent’s website page at dated 13 August 2020. This page features Trade Mark 509 displayed prominently at the top of the website page in relation to an offering for sale of licence keys for ‘computer software relating to analysis of educational, medical and social research data’ with a link to the Removal Opponent’s online shop.

1. Exhibit DFN-10 to Noga 1 comprises an extract from IAWM of the Removal Opponent’s website page dated 1 October 2020. The page features Trade Mark 509 displayed prominently in the page heading in relation to the Removal Opponent’s ‘computer software relating to test and questionnaire analysis for education and research including educational research’ and allows users to download the software. Confidential Exhibit DFN-11 to Noga 1 is a screenshot from the Removal Opponent’s dashboard showing the number of downloads of the ‘computer software relating to test and questionnaire analysis for education and research including educational research’ from its website page for the period 31 September 2017 to 31 August 2020.

2. In Noga 1, Mr Noga declares the Removal Opponent has developed tests that can be provided to schools electronically in a CD-ROM. Exhibit DFN-27 to Noga 1 comprises extracts from IAWM of the Removal Opponent’s online shop as at March 2019 and February 2020. The extracts show use of Trade Mark 509 on or in relation to the Removal Opponent’s Progressive Achievement Test CD ROM, for sale in conjunction with instruction manual.  

3. Exhibit DFN-6 to Noga 1 comprises an extract from the IAWM of the Removal Opponent’s website page dated October 2017 and September 2018. The pages feature Trade Mark 509 and lists and offers registration to the Removal Opponent’s postgraduate, accreditation and product training courses and workshops. Exhibit DFN-46 to Noga 1 provides a screenshot of the Removal Opponent’s accredited online Westmead Feelings Program (‘WFP’), Facilitator Certification Courses with registration access and course costs. Confidential Exhibit DFN-47 to Noga 1 is a copy of an invoice issued under Trade Mark 509 showing provision of the WFP to an Australian customer during the Relevant Period.

4. Exhibit DFN-6 to Noga 1 also provides extracts from the Removal Opponent’s website page dated 21 September 2018. The page features Trade Mark 509 in relation to the Removal Opponent customised professional learning to meet the needs of educators, school and system leaders, policy makers and other professionals, and allows consumers to request a tailored program. 

5. In Noga 1, Mr Noga declares that in 2017, 2018 and 2019 the Removal Opponent held the ACER Research Conference.  Exhibit DFN-55 to Noga 1 includes a copy of the proceedings and program for the Removal Opponent’s Research Conference 2019, featuring Trade Mark 509. Confidential Exhibit DFN-56 to Noga 1 provides the number of attendees at the 2019 Research Conference.

6. Mr Noga also states that the Removal Opponent develops and conducts a wide range of assessments for universities and other institutions in Australia. Exhibit DFN-6 to Noga includes extracts from the IAWM of the Removal Opponent’s higher education and assessment page dated 21 September 2018. The page features Trade Mark 509 on or in relation to the assessments conducted by the Removal Applicant which includes the Undergraduate Medicine and Health Sciences Admission Test.  

7. The Removal Opponent has not provided evidence showing use of Trade Mark 509 in the Relevant Period on or in relation to the disputed services in class 42.

8. In assessing the evidence, I am satisfied that the Removal Opponent has shown use of  Trade Mark 509 in good faith on or in relation to ‘computer software to support the teaching of speech and language, computer software relating to the analysis of educational, medical and social research data and computer software relating to test and questionnaire analysis for education and research including educational research’.[8] I am also satisfied the Removal Opponent has used Trade Mark 509 on or in relation to ‘CD-ROMs’ covering a range of topics within the education field and psychological testing and ‘education and training services’ covering a wide range of topics including postgraduate, accreditation and product training courses and workshops, as well as customised professional learning to meet the needs of educators, school and system leaders, policy makers and other professionals. However, I have not found any use of Trade Mark 640 in relation to ‘development of computer software relating to education and educational research’ as a service offered to potential customers. Rather it has simply performed these services in order to offer software under Trade Mark 640.

   [8] Note: the scope of the original specification does not cover computer software in relating to the analysis of medical and social research data, as such these items have been removed.  The scope of the original specification does not cover computer software relating to test and questionnaire analysis for research, as such this item has been removed.

9. Therefore, the goods offered by the Removal Opponent under Trade Mark 509 in the Relevant Period are best characterised as:

Class 9: Computer software relating to education applications to support the teaching of speech and language, computer software relating to the analysis of educational research data, computer software relating to test and questionnaire analysis for education including educational research, educational training, educational research and psychological testing; CD-ROMs relating to education, educational training, educational research and psychological testing, magnetic data carriers, recording discs, audio tapes and video tapes; all relating to education, educational training, educational research and psychological testing

Class 16: Printed matter relating to education, psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets

Class 35: Psychological testing for the selection of personnel; retailing of books and other publications

Class 41: Educational and training services; publication of books and other publications including psychological tests

Class 42: Development of computer software relating to education and educational research; educational research

Class 44: Psychological testing services including test scoring services and reporting thereon (‘Used Goods and Services’)

Trade Mark 640

1. The Removal Applicant seeks the following amendments to Trade Mark 640:

Class 9: Computer software relating to education applications for children with speech and language disabilities and educational research

Class 16: Printed matter relating to psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets

Class 41: Educational and training services; publication of books and psychological tests

Class 42: Psychological testing services including provision of test scoring services and reporting thereon; book retailing services; development of computer software relating to education and educational research; educational research services

1. Exhibit DFN-78 to Noga 2 includes an extract from IAWM of the Removal Opponent’s website page shop.acer.edu.au dated 19 September 2020. The page shows use of Trade Mark 640 in its plain word form displayed at various positions on the page in relation to an offering for sale of licence keys for the Removal Opponent’s ‘computer software application to support the teaching of speech and language’, with a link to the App Store and Google Play.

2. Exhibit DFN-13 to Noga 1 includes an extract from the IAWM of the Removal Opponent’s website page dated 13 August 2020. The page shows use of Trade Mark 640 in its plan word form displayed at various positions on the page in relation to an offering for sale of licence keys for its ‘computer software relating to analysis of educational, medical and social research data’, with a link to the ACER online shop.

3. Exhibit DFN-10 to Noga 1 includes an extract from IAWM of the Removal Opponent’s website page dated 1 October 2020. The page shows use of Trade Mark 640 in its plan word form displayed at various positions on the page in relation to the Removal Opponent’s ‘computer software relating to test and questionnaire analysis for education and research including educational research’ and allows user to download the software. Confidential Exhibit DFN-11 to Noga 1 is a screenshot from the Removal Opponent’s dashboard showing the number of downloads of its software from its website page for the period 31 September 2017 to 31 August 2020.

4. Exhibit DFN-6 to Noga 1 comprises extracts from the IAWM of the Removal Opponent’s website pages dated October 2017 and September 2018. The pages show use of Trade Mark 640 in its plain word form in relation to the Removal Opponent’s postgraduate, accreditation and product training courses and workshops and allows users to register.

5. Exhibit DFN-46 to Noga 1 provides a screenshots of the Removal Opponent’s accredited online Westmead Feelings Program (‘WFP’), Facilitator Certification Courses. The page shows use of Trade Mark 640 in its plan word form in relation to WFP and provides registration access and course costs. Confidential Exhibit DFN-47 to Noga 1 is a copy of an invoice issued for the provision of the WFP to an Australian customer during the Relevant Period.

6. Exhibit DFN-6 to Noga 1 also provides extracts from the Removal Opponent’s website page dated 21 September 2018. The page shows use of Trade Mark 640 in its plan word form and offers the Removal Opponent’s customised professional learning to meet the needs of educators, school and system leaders, policy makers and other professionals. 

7. Exhibit DFN-55 to Noga 1 includes a copy of the proceedings and program for the Removal Opponent’s Research Conference 2019. The program shows use of Trade Mark 640 in its plain word form throughout the text promoting the Removal Opponent’s ‘education and training services’. Confidential Exhibit DFN-56 to Noga 1 provides the number of attendees at the 2019 Research Conference.

8. Exhibit DFN-6 to Noga includes extracts IAWM of the Removal Opponent’s higher education and assessment page dated 21 September 2018. The page shows use of Trade Mark 640 in its plan word form in relation to the assessments conducted by the Removal Applicant which includes the Undergraduate Medicine and Health Sciences Admission Test. 

9. The Removal Opponent has not provided evidence showing use of Trade Mark 640 in the Relevant Period on or in relation to the disputed services in class 42

10. I am satisfied that the evidence before me shows use of Trade Mark 640 in good faith by the Removal Opponent on or in relation to ‘computer software application to support the teaching of speech and language, computer software relating to the analysis of educational, medical and social research data, and computer software relating to test and questionnaire analysis for education including educational research’.[9] I am also satisfied the Removal Opponent has used Trade Mark 640 in relation to ‘education and training services’ covering a wide range of topics including postgraduate, accreditation and product training courses and workshops, as well as customised professional learning to meet the needs of educators, school and system leaders, policy makers and other professionals. However, I have not found any use of Trade Mark 640 in relation to ‘development of computer software relating to education and educational research’ as a service offered to potential customers. Rather it has simply performed these services in order to offer software under Trade Mark 640.

    [9] Note: the scope of the original specification does not cover computer software in relating to the analysis of medical and social research data, as such these items have been removed.  The scope of the original specification does not cover computer software relating to test and questionnaire analysis for research, as such this item has been removed.

11. Therefore, the goods offered by the Removal Opponent under Trade Mark 640 in the Relevant Period are best characterised as:

Class 9: Computer software relating to education applications to support the teaching of speech and language, computer software relating to the analysis of educational research data, computer software relating to test and questionnaire analysis for education including educational research and educational research

Class 16: Printed matter relating to psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets

Class 41: Educational and training services; publication of books and psychological tests

Class 42: Psychological testing services including provision of test scoring services and reporting thereon; book retailing services; development of computer software relating to education and educational research; educational research services (‘Used Goods and Services’)

1. I am not satisfied that the Removal Opponent has used the Trade Marks for the Registered Goods and Services other than the Used Goods and Services during the Relevant Period.

Obstacles to use

1. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Marks for the remaining Goods and Services (‘Remaining Goods and 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 Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Marks to remain on the Register for any of the Remaining Goods and Services.

Registrar’s Discretion

1. Section 101(3) of the Act provides:

   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.

2. Section 101(4) of the Act provides:

   Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

   (a) similar goods or closely related services; or
   (b) similar services or closely related goods;
   to those to which the application relates.

3. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[10]  

   [10] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

4. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3) of the Act:

   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.[11]

   [11] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

5. The Removal Opponent submits that it has demonstrated use of its Trade Marks in relation to the majority of the relevant goods and services. However, it contends that the Registrar ought to exercise her discretion not to remove the Trade Marks in respect of the Remaining Goods and Services under s 101(3) of the Act on the basis that:

• the Removal Opponent has used, and continues to use, the Trade Marks in relation to goods and services which are similar or closely related to the Remaining Goods and Services;

• the Removal Opponent has developed a substantial reputation in its Trade Marks in Australia in respect of the Used Goods and Services, such that the use of those Trade Marks or any substantially identical or deceptively similar trade mark by a third party in relation to any of the Remaining Goods or Services would give rise to deception or confusion; and

• the Removal Opponent has a long history of use of its Trade Marks, has not abandoned any of those Trade Marks, and has a legitimate interest in preserving the full extent of its registrations. By contrast the Removal Applicant has no legitimate interest in the use of the trade mark ACER in respect of the Remaining Goods and Services and could not use the its ACER trade mark in respect of the Remaining Goods and Services without causing confusion.

1. In relation to the Removal Opponent’s ‘computer software’ goods under Trade Marks 235, 236, 509 and 640, the Removal Opponent argues that it is inappropriate to permit fine distinctions to be drawn between the goods which ought to be removed and those which ought to remain specified in a registered trade mark, because of the potential for fragmented ownership of the same or a very similar mark in respect of very similar goods.[12] In response the Removal Applicant argues that a failure to remove or narrow the Remaining Goods would enable the Removal Opponent to use the Trade Marks again to block future applications by the Removal Applicant or for other traders.  

   [12] See McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537 [537 to 544] (Drummond J); Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [498] (Dodds-Streeton J).

2. In relation to ‘computer software’ products I agree with the Removal Applicant. The original specification is a very broad specification and were I to limit the specification as proposed in the paragraphs above the scope of protection that remains would incorporate those and similar goods and any closely related services, which would be broad enough to prevent consumer confusion.

1. In relation to the goods ‘educational publication in electronic form’ I have found no evidence that the Removal Opponent has a reputation in Trade Marks 235 or 236 in relation to these goods. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not the remove this item.

2. In relation to the goods ‘magnetic data carriers, recording discs, audio tapes and video tapes’ the Removal Opponent argues that goods such as audio and video tapes have been replaced by equivalent technology where it has shown use. In support of its submission the Removal Opponent refers to Pioneer Computers Australia Pty limited v Pioneer KK (‘Pioneer’) where Bennet J accepted that the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the trade mark was registered.[13] However, I am not persuaded by the Removal Opponent’s submissions. In Pioneer the goods specified were broad in scope, in comparison the Remaining Goods are specific items and no use has been shown nor does the scope of these items encompass new technology such as USBs which are not made from magnetic materials or downloadable video and audio MP3 files which are digital files that can be downloaded without a physical copy.[14] Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the items ‘magnetic data carriers, recording discs, audio tapes and video tapes’ from Trade Mark 509 and ‘Audio tapes and video tapes relating to the provision of educational training and psychological testing services’ from Trade Mark 491.

   [13] [2009] FCA 135, [221].

   [14] Noga 2, [16], [Exhibit DFN-77].

3. The Removal Opponent submits that services such as ‘development of computer software relating to education and educational research’ are performed upon or in relation to goods where use has been established and are intimately connected with the use of such goods.[15] In this case the Removal Opponent has shown use on software goods, however simply because software goods in class 9 are closely related to the ‘development of computer software relating to education and educational research’ is not sufficient on its own to warrant leaving Trade Marks 509 and 640 on the Register for the Unused Goods. I note that, if I were to grant the application for partial removal based on my assessment of the actual use of the Trade Marks, the scope of protection that remains would be the class 9 goods and any closely related services, which would be broad enough to prevent consumer confusion.

   [15] See Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [41], (French, Branson and Tamberlin JJ)

Decision

1. The Removal Opponent has partly established its opposition to the removal applications 560640, 753235, 753236 and 948509. The Removal Opponent has not established its opposition to removal application 583491. Accordingly, I direct that, one month from the date of the Decision, the following registrations be removed from the Register or amended as set out below to partially remove certain Registered Goods and Services:

Trade Mark 235: partial removal

Class 9: Computer software relating to education and analysis of educational, medical and social research data including such computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); printed instruction manuals sold together with the aforesaid computer software

Trade Mark 236: partial removal

Class 9:  Computer software relating to test and questionnaire analysis for education and research including educational research; all of the foregoing including such computer software and educational publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web-sites); printed instruction manuals sold together with the aforesaid computer software

Trade Mark 491: complete removal

Class 9: Audio tapes and video tapes relating to the provision of educational training and psychological testing services

Trade Mark 509: partial removal

Class 9: Computer software relating to education applications to support the teaching of speech and language, computer software relating to the analysis of educational data, computer software relating to test and questionnaire analysis for education and educational research; educational training, educational research and psychological testing; CD-ROMs relating to education, educational training, educational research and psychological testing, magnetic data carriers, recording discs, audio tapes and video tapes; all relating to education, educational training, educational research and psychological testing

Class 16: Printed matter relating to education, psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets

Class 35: Psychological testing for the selection of personnel; retailing of books and other publications

Class 41: Educational and training services; publication of books and other publications including psychological tests

Class 42: Development of computer software relating to education and educational research; educational research

Class 44: Psychological testing services including test scoring services and reporting thereon

Trade Mark 640: partial removal

Class 9: Computer software relating to education applications to support the teaching of speech and language, computer software relating to the analysis of educational data, computer software relating to test and questionnaire analysis for education and educational research and educational research

Class 16: Printed matter relating to psychological testing and scoring; educational material in this class in the form of books, magazines, newsletters and pamphlets

Class 41: Educational and training services; publication of books and psychological tests

Class 42: Psychological testing services including provision of test scoring services and reporting thereon; book retailing services; development of computer software relating to education and educational research; educational research services

1. If the Registrar is served with a notice of appeal, 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 registrations be dealt with as the Court sees fit.

Costs

1. Each Party has had a measure of success in this matter and as such each party shall pay their own costs in the matter.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

9 February 2023