Australian Seniors Finance Pty Ltd v Australian Seniors Insurance Agency Pty Ltd

[2024] ATMO 120

TRADE MARKS ACT 1995

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

ReOpposition by Australian Seniors Finance Pty Ltd to application by Australian Seniors Insurance Agency Pty Ltd for removal of trade marks 1106437 (36) – ASF AUSTRALIAN SENIORS FINANCE THE HOME EQUITY RELEASE SPECIALIST (figurative) and 1013218 (36) – ASF AUSTRALIAN SENIORS FINANCE LIMITED (figurative) – in the name of  Australian Seniors Finance Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Hudson Gavin Martin

Applicant: Andrew Fox SC, instructed by Omoi IP Pty Ltd

Decision:                   2024 ATMO 120

Trade Marks Act 1995 (Cth) - Section 96 oppositions: oppositions to application for removal pursuant to ss 92(4)(a) and (b) –neither opposition established -- no use of trade marks during relevant period – discretion not exercised in favour of opponent – trade marks to be removed from Register

Background

1. Australian Seniors Finance Pty Ltd (‘Opponent’) is the registered owner of the trade marks detailed below.

Trade Mark Number:

1106437

Filing Date:

31 March 2006

Specification:

Class 36: Financial services; monetary affairs; banking services; mortgage and other lending; credit and credit card services, debit card services; brokerage; financial planning and analysis; financial packages and plans directed to retirement; insurance services; consultancy in relation to the foregoing; provision of information in relation to the foregoing; all the aforesaid services being provided by any means including electronically; all of the aforementioned services offered in relation to reverse mortgages and loans which convert to reverse mortgages; all of the aforementioned only offered to seniors being persons aged 50 and over

(‘Opponent’s Services’)

Trade Mark:

(‘437 Trade Mark’)

Trade Mark Number:	1013218
Filing Date:	28 July 2004
Specification:	Opponent’s Services
Trade Mark:

1. Hereafter, I will, for convenience, refer to the two trade marks collectively as ‘the Challenged Trade Marks’.

2. Unless otherwise indicated, any references below to parts, sections or regulations are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. On 31 May 2022, Australian Seniors Insurance Agency Pty Ltd (‘Applicant’) filed an application for removal of the Challenged Trade Marks from the Register of Trade Marks (‘Application’). The Application was made under both ss 92(4)(a) and 92(4)(b). The Applicant alleged that on the respective filing dates of the applications to register the Challenged Trade Marks, the Opponent had no intention in good faith to use the trade marks in Australia in relation to any of the Opponents Services: s 92(4)(a).  The Applicant also alleged that the Challenged Trade Marks were not used by the Opponent in good faith in relation to the Opponent’s Services at any time during the three year period ending on 30 April 2022 (‘Relevant Period’): s 92(4)(b). In response, the Opponent filed a Notice of Opposition, consisting of a Notice of Intention to Oppose and a Statement of Grounds and Particulars in respect of each of the Challenged Trade Marks. The Applicant subsequently filed a Notice of Intention to Defend the Application.

   Evidence

4. The Opponent filed the same evidence in respect of each its oppositions. The Opponent filed the following Evidence in Support:

   ·Declaration made on 2 January 2023 by Sharon Susan Yardley, the Head of Operations, Risk and Compliance of the Opponent, with Exhibits SY-1 to SY-31 (‘Yardley 1’).

5. The Applicant filed the following Evidence in Answer in respect of both oppositions:

   ·Declaration made on 3 April 2023 by Karen Anne Hayne, a partner of the law firm Addisons, the lawyers at the time of the Application, with Exhibits KAH-1 to KAH-5.

6. The Opponent filed the following Evidence in Reply in respect of both oppositions:

   ·Declaration made on 2 June 2023 by Sharon Susan Yardley with Exhibits SY2‑1 to SY2-5.

7. Once the time allowed for filing evidence had ended both parties requested to be heard. A Hearing Notice was issued on 30 April 2024 which indicated that a hearing had been scheduled for 3 July 2024. The notice included a schedule for summaries of written submissions to be filed prior to the hearing. Subsequently, the Opponent indicated that it did not intend to file written submission nor appear at the hearing. The Applicant filed written submissions, prepared by Andrew Fox SC, in accordance with the schedule provided in the Hearing Notice. Mr Fox was instructed by Omoi IP Pty Ltd. In the end the Applicant decided not to appear and relied on Mr Fox’s submissions.

8. It has fallen to me, as a delegate of the Registrar of Trade Marks, to decide the matters, and I have done so based on the material discussed above.

   The Opponent

9. According to Yardley 1:

   [The Opponent] was registered with the Australian Securities & Investments Commission on 28 April 2004 (as Australian Seniors Finance Limited) … and since that time has helped many thousands of people in Australia … over the age of 60 … release home equity to fund a better lifestyle in retirement …

   In 2014 [the Opponent] was purchased by Heartland New Zealand Limited, which is now Heartland Bank Limited (Heartland). …

   In June 2015, [the Opponent] was rebranded as Heartland Seniors Finance.

   The Applicant

10. There is nothing before me from which I might provide a background of the Applicant; however, the Applicant is the owner of Australian trade mark application 2103761, for the plain word sign AUSTRALIAN SENIORS. The Applicant is also the owner of two Australian registered trade marks, being numbers 887127 and 2103764. The registered trade marks are composite signs which include the words AUSTRALIAN SENIORS INSURANCE AGENCY and AUSTRALIAN SENIORS, respectively.

    Legal Framework

11. Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

12. The Applications specified that they were made according to the provisions of both ss 92(4)(a) and 92(4)(b). Section 92 relevantly provides:

    Section 92.  Application for removal of trade mark from Register etc

    (1)  … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.

    (2)  The application: 

    (a) must be in accordance with the regulations; and

    (b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

    …

    (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. 

13. An application under s 92(4)(a) may be made at any time after the filing date in respect of the application for registration of a trade mark. 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 to register a trade mark.[1] I confirm that five year period has passed in respect of the Challenged Trade Marks.

    [1] Per s 93(2) prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

    Merger of sections 92(4)(a) and (b)

14. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) merges with paragraph (b) once a trade mark has been registered for five years.[2] As the Challenged Trade Marks have been registered for a period longer than five years as at the date of the Applications, it is necessary only for me to consider the Applications under s 92(4)(b). Section 92(4)(a) will not be considered further in this decision.

    [2] Mark Davison, Tracey Berger and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4^th ed, 2008) [70.510].

    Onus

15. Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegations made under s 92(4)(b), either by establishing that the Challenged Trade Marks (or the Challenged Trade Marks with additions or alterations which do not substantially affect their identity) were used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. As the Opponent has not asserted that there was a relevant obstacle to use, that question will not be considered further. I proceed on the basis that the standard of proof required is on the balance of probabilities.[3]

    [3] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelmann JJ) affirming Gyles J’s approach.

    Discretion

16. Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Marks from the Register ‘in respect of any or all of the goods and/or services to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the Challenged Trade Marks (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the Applications were made have been established.

    Discussion

17. To successfully oppose the Application the Opponent must establish that it, as the owner of the Challenged Trade Marks, used the trade marks in the course of trade in respect of all the Opponent’s Services, in good faith, during the Relevant Period. It is necessary that the Opponent provide evidence of use which is clearly dated and shows use during the Relevant Period. Evidence of use which falls outside of the Relevant Period is generally of little or no assistance to the Opponent in establishing use during the Relevant Period.

18. The SGP stated, inter alia, that, ‘Since approximately August 2004, [the Opponent] has continuously and extensively used “Australian Seniors Finance” (including [during the Relevant Period]) in Australia in relation to the Registered Services’.

    Assessment of the evidence

19. The Applicant submitted that there is no use of the Challenged Trade Marks during the Relevant Period. The Applicant further submitted that the Opponent rebranded to Heartland Seniors Finance in 2015 and abandoned the Challenged Trade Marks at this time.

20. There are two examples in evidence of alleged use of the Challenged Trade Marks both of which predate the Relevant Period. The first appears in Exhibit SY-10 to Yardley 1. The exhibit consists of a single page and shows a copy of a webpage which has been retrieved from an internet archive service. The 437 Trade Mark appears on the page. The date the page was archived is shown as 23 December 2008—more than ten years before the start of the Relevant Period. The second example appears in Exhibit SY-11. The exhibit is declared to be a copy of submissions to the Senate Community Affairs Committee in relation to the inquiry into the costs of living pressures on older Australians. The submissions include the 437 Trade Mark. It is declared that the submissions were filed with the committee on 18 March 2008—more than 10 years before the Relevant Period.

21. The Opponent’s evidence includes examples of use of the signs shown below (‘Alternative Signs’).

The Applicant submitted that, adopting the standard test,[4] due to the significant differences between the respective trade marks the Alternative Signs are not substantially identical to either of the Challenged Trade Marks—and, therefore, do not constitute use of the Challenged Trade Marks.[5] I concur. Significant in the consideration of substantial identity is that the words ‘Australian seniors finance’ are without inherent adaption to distinguish services such as the Opponent’s Services. In these circumstances it is the overall construction of the Challenged Trade Marks which enables them to distinguish the Challenged Services. The overall construction of the Alternative Signs—in particular the absence of the ASF device—is significantly different which means that they are not substantially identical to the Challenged Trade Marks.

[4] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

[5] As provided for by s 7(1).

1. The Applicant noted that the Opponent’s evidence includes references to:

   (a)   the domain name ‘seniorsfinance.com.au’; and

   (b)   the Opponent’s corporate name ‘Australian Seniors Finance Pty Ltd’ as the holder of its Australian Credit Licence Number.

   Neither of the signs referred to in (a) and (b) above are substantially identical to either of the Challenged Trade Marks. Here too, the words ‘seniors finance’ and ‘Australian Seniors Finance’ are bereft of inherent adaptation to distinguish the Opponent’s Services. For the same rationale as discussed in respect of the Alternative Signs, above, the signs here fail the test of substantial identity.

2. Having considered the Applicant’s submissions, the absence of submissions from the Opponent to the contrary, and following perusal of the evidence, I am not satisfied that the Opponent used the Challenged Trade Marks during the Relevant Period.

   Determination of the opposed application

3. Section 101 deals with the determination of the opposition to the Applications. Section 101(1) states, essentially:

   If the Registrar is satisfied that the grounds on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

4. The inclusion of ‘may decide to remove’ in s 101(1) indicates that the decision of the Registrar to remove a trade mark from the Register is discretionary. Section 101(3) explicitly states, seemingly redundantly, that there is a discretion available to the Registrar; although the discretion under s 101(1) is expressed as a discretion to remove, whereas the discretion under s 101(3) is expressed as a discretion not to remove. As indicated above, there are no submissions from the Opponent; however, the SGP stated that the Opponent ‘seeks that the Delegate exercise their discretion, including with regard to not removing the [Challenged Trade Marks] from the Register’.

   Consideration of the Registrar’s Discretion 

5. The discretion available to the Registrar is ‘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 Act’.[6] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[7] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[8]

   [6] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

   [7] Ibid [69].

   [8] [2002] FSR 51 (Ch) 790, [19].

6. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[9] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[10] 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.[11] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.[12]

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

   [10] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

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

   [12] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point).

7. Justice Flick also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

   ·whether there has been abandonment of the trade mark;

   ·whether the registered proprietors of the mark still had a residual reputation in the mark;

   ·whether there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

   ·whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[13]

   [13] Ibid, [202]–[203].

8. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[14]

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

9. As noted above, there are no submissions from the Opponent. The Applicant submitted:

   [The Opponent] has no put forward any basis upon which the Delegate might exercise the discretion … On that basis alone, the discretion ought not be exercised in [the Opponent’s] favour.

   In any event … :

   (a)The evidence establishes that [the Opponent] abandoned [the Challenged Trade Marks] in June 2015. …

   (b)There is no evidence that [the Opponent] has any residual reputation in [the Challenged Trade Marks].

   (c)There is no evidence of any confusion in the marketplace …

   (d)There have been no sales of any services under [the Challenged Trade Mark] since the end of the Relevant Period.

   (e)There is no evidence that [Applicant] had knowledge of [the Challenged Trade Mark] when it entered the market. Notably, [the Applicant’s] earliest registered trade mark containing the words ‘Australian Seniors’ predates [the Challenged Trade Marks].

   The Applicant further submitted that there is no prejudice to the Opponent if the Challenged Trade Marks are removed because it has rebranded to Heartland Seniors Finance.

1. The Applicant’s submissions are persuasive. In the absence of submissions from the Opponent and following perusal of the evidence, I am not satisfied that the discretion available to the Registrar ought to be exercised in the Opponent’s favour.

   Decision

2. As the Opponent has not rebutted the allegations of non-use, the grounds for removal have been established. I decide therefore that the Challenged Trade Marks be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the trade marks will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registrations will be subject to that decision.

   Costs

3. The Applicant has sought an award of costs in its favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Regulations, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[15]

   [15] (2001) 53 IPR 591.

   Robert Wilson
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   1 July 2024