BBX Financial Solutions Limited v BB&R Limited

[2017] ATMO 83

TRADE MARKS ACT 1995

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

ReOppositions by BBX Financial Solutions Limited to applications by BB&R Limited for removal of trade marks 1026599 (35, 36) BBX and 1026601 (35, 36) BBX logo in the name of BBX International Ltd

Delegate:  Robert Wilson

Representation:                  Opponent: Sarah Poole, Marquette Intellectual Property

Applicant: AJ Park Intellectual Property

Decision:  2017 ATMO 83

Trade Marks Act 1995 (Cth) - Section 96 opposition: oppositions to applications for partial removal pursuant to s 92(4)(b) successful – use during relevant period established for most of challenged services – Registrar’s discretion exercised in favour of Opponent for remaining services – trade marks to remain on Register

Background

1.     BBX International Ltd is the registered owner of the trade mark registrations detailed below (together ‘the Challenged Trade Marks’):

Trade Mark Number:	1026599
Filing Date:	25 October 2004
Services:	See Annexure 1
Trade Mark:	BBX	(‘the Word Trade Mark’)

Trade Mark Number:	1026601
Filing Date:	25 October 2004
Services:	See Annexure 2
Trade Mark:	(‘the Logo Trade Mark’)

2.     On 23 January 2014, BB&R Limited (‘the Applicant’) filed applications based on s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Challenged Trade Marks from the Register. The Applicant alleged that the trade marks were not used in good faith in relation to the services for which they were registered in Class 35 (‘the Challenged Services’) during the three year period ending on 23 December 2013 (‘the Relevant Period’). I note that the specification of services in Class 35 of the two trade marks are identical. BBX Financial Solutions Ltd (‘the Opponent’) filed Notices of Opposition consisting of a Notice of Intention to Oppose filed on 28 March 2014 and a Statement of Grounds and Particulars filed on 28 April 2014. The Applicant filed a Notice of Intention to Defend on 5 June 2014.

3.     The Opponent filed the same Evidence in Support of its opposition (‘EIS’) in both matters on 26 September 2014. This evidence consists of:

·Declaration made on 26 September 2014 by Michael Touma, the Chief Executive Officer of the Opponent, with Exhibits MT-1 to MT-24 (‘the Touma declaration’); and

·Declaration made on 26 September 2014 by Rohan James Wallace, the Principal of Rohan Wallace Patent and Trade Mark Services, the legal representative of the Opponent at the time, with Exhibits RW-1 to RW-15 (‘the Wallace declaration’). Mr Wallace is also a BBX member of the Opponent[1] and much of his declaration was made in that capacity.

[1] What constitutes a BBX member of the Opponent for the purposes of these decisions is discussed below.

4.     The Applicant did not file any evidence.

5.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Applicant requested an oral hearing on 18 February 2015. Before the matter was set down for a hearing both parties requested a cooling-off which, once extended, totaled 12 months: as allowed for under reg 5.16 of  the Trade Mark Regulations 1995. The cooling-off period ended on 26 August 2016.

6.     I heard the matters together in Canberra on 4 July 2017 as a delegate of the Registrar of Trade Marks. Sarah Poole of Marquette Intellectual Property appeared by telephone for the Opponent. Ms Poole’s oral submissions were supplemented by written submissions which were filed with IP Australia on 20 June 2017. The Applicant did not appear at the hearing nor did it file written submissions.

History of Ownership of the Challenged Trade Marks

7.     The applications to register the Challenged Trade Marks were made in the name of BBX Limited. On 12 April 2007 the name of the owner of both trade marks was changed to the Opponent. On 5 June 2015 ownership was assigned to BBX International Ltd. That assignment was subsequently recorded on the Register.

The Applicant

8.     There is no information before me from which to provide a background of the Applicant.

The Opponent

9.     At the time the applications for removal were filed the Opponent was the registered owner of the Challenged Trade Marks. According to the Touma declaration (which was made before the assignment to BBX International Ltd):

[The Opponent] uses [the Logo Trade Mark] (the BBX brand) in respect of the trade exchange and its ancillary services associated therewith.

[The Opponent] has been trading under the BBX brand for about 20 years and offers services of a market place for members who can trade various goods and services under the BBX brand. [The Opponent] is primarily a barter trading exchange, that is, a company that facilitates exchange of goods and services through using a barter currency. In performing this facility through and as a brand of the exchange, [sic] [the Opponent] also promotes the goods and services of participants on the exchange to other participants under the BBX brand. …

[The Opponent provides its services] to its clients under [the Challenged Trade Marks] … [The Opponent] has about 15,000 clients (also referred to as BBX members) who buy and sell goods and services to each other as facilitated by [the Opponent’s services], and invest through [the Opponent], all under the BBX brand.

[The Opponent] utilises the BBX brand in many ways, including applying it to our letterheads, envelopes, ‘with compliments’ stationery, business cards, franchise agreements, training manuals, policy documents, software, and door signage and through [the Opponent’s] website.

Legal Framework

10. Part 9 of the Act 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.

11. The removal application specified that it was made according to the provisions of s 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: 

…

(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.

12.   Section 96 makes provision for a person to oppose an application made under s 92 by filing a Notice of Opposition with the Registrar. Section 100 specifies that the burden is on the person opposing the application to rebut any allegation of non-use. Accordingly, the Opponent needs to establish the Challenged Trade Marks (or those trade marks with additions or alterations not substantially affecting its identity) were used in good faith in respect of the Challenged Services during the Relevant Period. Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[2] The demonstrated use must be ‘use in the course of trade’.[3] Alternatively, if the Challenged Trade Marks were not used during the Relevant Period that there was a relevant obstacle to their use.[4] The standard of proof required is that of the civil standard of on the balance of probabilities.[5]

[2] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 86 IPR 224, 239.

[3] Trade Marks Act 1995 (Cth) s 17.

[4] Trade Marks Act 1995 (Cth) s 100(3)(c).

[5] 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] affirming Gyles J’s approach.

13.   Subject to ss 101(3) and 102, section 101(1) provides the Registrar with the discretion to remove a trade mark from the Register ‘in respect of any or all of the goods and/or services to which the application relates’. Section 101(3) explicitly provides that the discretion may be exercised in the trade mark owner’s favour (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established. Without limiting them, s 101(4) indicates matters which may be taken into account by the Registrar when exercising the discretion. These include whether the trade mark was used by its registered owner in respect of similar, or closely related, goods or services.

Discussion

Use during the relevant period?

14.   The date range forming the Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Challenged Trade Marks in physical or other relation to, the Challenged Services within that period in order to rebut the allegation of non-use. Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.

15.   It is apparent from the EIS that the Opponent was, at least during the Relevant Period, a going concern which made regular use of both of the Challenged Trade Marks. There are a number of exhibits to the Touma declaration which show use of the trade marks during the Relevant Period in respect of the services described by Mr Touma at paragraph 9, above. For example, Exhibit MT-3 is declared to be, ‘An image of [the Opponent’s] website captured by The Wayback Machine on 21 February 2012’. Additional archived web pages are provided in other exhibits including for 21 February 2012, 18 November 2013 and 2 December 2013. Other exhibits include sales receipts and images of building signage. The Wallace declaration includes examples of use of the Challenged Trade Marks during the Relevant Period in BBX member advertisements for auctions, insurance, apartments, and holiday packages.

The Registrar’s Discretion  

16.   The EIS establishes that the Opponent used the Challenged Trade Marks in respect of a number of services during the Relevant Period, including: advertising services, facilitating barter services and barter transactions, retailing, services to assist people in the selection of gifts and dissemination of information in relation to advertising. While the demonstrated use is, therefore, in connection with most of the Challenged Services, I am not satisfied that the use extends to all of the Challenged Services. Non-use is therefore established for some of the Challenged Services. The Opponent has addressed this eventuality in its submissions:

[T]he evidence, which is uncontested, establishes genuine and substantial commercial use of [the Challenged Trade Marks] in respect of the Registered Services during the relevant period.

Further, that evidence establishes that [BBX] is the ‘house brand’ of the Opponent in which it has made a significant investment, and has established considerable goodwill, over a period of about two decades. The use of the mark has been shown to be in respect of some if not all of the Registered Services, and/or similar services.

In these circumstances, whether or not the Registrar is satisfied that the Opponent’s use has been of [the Challenged Trade Marks], or that the use extends to the full range of [the Challenged Services], it is submitted that it would be reasonable for the Registrar not to remove [the Challenged Trade Marks] for all or any of the [Challenged Services], and that the Registrar should in [the] circumstances exercise [her] discretion not to do so.

17.   Section 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

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.[6]

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.[7]

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

[7] Ibid [171]-[172].

18.     While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[8] Flick J stated:

Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[9] 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.[10] 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.[11]

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

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

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

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

19.   The Opponent has demonstrated that it is a going concern which has used the Challenged Trade Marks in connection with most of the Challenged Services and appears to have every intention of continuing to do so. The services for which it has used the Challenged Trade Marks are similar to the services which make up the balance of the Challenged Services. As there is no evidence or submissions before me from the Applicant, what its motivation for applying to remove the trade marks might be is unknown. Additionally, whether or not the Applicant would suffer any inconvenience should the Challenged Services remain unchanged is unknown. Taking these factors into account I am satisfied that it is appropriate that the discretion available to the Registrar be exercised in favour of the Opponent and that the Challenged Trade Marks remain on the Register for all of the services for which they are currently registered.

Decision

20.   The Opponent has successfully rebutted the allegation of non-use in respect of its trade marks. I decide therefore that the Challenged Trade Marks not be removed from the Register.

Costs

21. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995, 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.[12]

[12] (2001) 53 IPR 591.

Robert Wilson

Hearing Officer

Hearings and Oppositions

7 August 2017

Annexure 1

Class 35: Advertising services; publicity services; barter services; facilitating barter services and barter transactions; arranging the provision by third parties of discounts, complimentary goods and complimentary services; product and service promotion; operation and administration of loyalty marketing and other sales promotional incentive and customer loyalty programs; sales promotion including through frequent buyer incentive programs and customer loyalty programs; the supply of benefits in connection with loyalty and incentive programs and schemes; dissemination of advertising material; rental of advertising space (including online advertising space); retailing, wholesaling, advertising, promotion, marketing and trading services (including the foregoing provided on-line and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); facilitating retailing, wholesaling, advertising promotion, marketing and trading services (including the foregoing provided on-line and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); interactive advertising, promotion, wholesaling, retailing and marketing of goods and services including via interactive digital television, datacasting and global computer networks; publicity services; organisation of business promotional campaigns; electronic commerce services including transaction services; information services (including online, interactive, digital and datacasting information services) relating to business, the economy and government business; market surveying services being the sampling, testing and appraisal of restaurants, clothing, cosmetics, hotels and other accommodation, holidays, motor cars and consumer goods and services; auctioneering services; valuation services in this class; home shopping services; business services of a magazine club; services to assist people in the selection of gifts; arranging and managing subscriptions to magazines, other publications and to on-line services; organisation of exhibitions and trade fairs for commercial or advertising purposes; business management, consultancy, information and advisory services in this class; dissemination of information in relation to advertising, publicity, business and commerce; arranging, organising and conducting competitions, contests and tournaments for advertising, business, trade and promotional purposes; advisory, support, information and consultancy services relating to the foregoing; economic forecasting

Class 36: Financial services including financial planning and management services, financial analysis, assessment, valuations, financial information and financial consultancy; billing services; financial management and advisory services; factoring; financial clearing; financing; investment planning; funds transfer; banking; brokerage; debit and credit card services; capital raising; guarantees; financial advisory services; funds management; financing; fund raising; financial sponsorship; information services (including online interactive digital and datacasting information services) in relation to financial services, insurance services, investment, real estate and property development finance; insurance services including reinsurance; insurance services; investment services; investment management services in this class; leasing and renting of houses, apartments and buildings; loans; lease finance; managing real estate for investors; managed funds; provision of cheque and savings accounts; real estate agencies; real estate appraisals; real estate brokerage; real estate management; real estate sales other than by auction; real estate services; stock and station agency services; superannuation services; valuation services in this class; advisory, support, information and consultancy services relating to the foregoing

Annexure 2

Class 35: Advertising services; publicity services; barter services; facilitating barter services and barter transactions; arranging the provision by third parties of discounts, complimentary goods and complimentary services; product and service promotion; operation and administration of loyalty marketing and other sales promotional incentive and customer loyalty programs; sales promotion including through frequent buyer incentive programs and customer loyalty programs; the supply of benefits in connection with loyalty and incentive programs and schemes; dissemination of advertising material; rental of advertising space (including online advertising space); retailing, wholesaling, advertising, promotion, marketing and trading services (including the foregoing provided on-line and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); facilitating retailing, wholesaling, advertising promotion, marketing and trading services (including the foregoing provided on-line and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); interactive advertising, promotion, wholesaling, retailing and marketing of goods and services including via interactive digital television, datacasting and global computer networks; publicity services; organisation of business promotional campaigns; electronic commerce services including transaction services; information services (including online, interactive, digital and datacasting information services) relating to business, the economy and government business; market surveying services being the sampling, testing and appraisal of restaurants, clothing, cosmetics, hotels and other accommodation, holidays, motor cars and consumer goods and services; auctioneering services; valuation services in this class; home shopping services; business services of a magazine club; services to assist people in the selection of gifts; arranging and managing subscriptions to magazines, other publications and to on-line services; organisation of exhibitions and trade fairs for commercial or advertising purposes; business management, consultancy, information and advisory services in this class; dissemination of information in relation to advertising, publicity, business and commerce; arranging, organising and conducting competitions, contests and tournaments for advertising, business, trade and promotional purposes; advisory, support, information and consultancy services relating to the foregoing; economic forecasting

Class 36: Financial services including financial planning and management services, financial analysis, assessment, valuations, financial information and financial consultancy; billing services; financial management and advisory services; factoring; financial clearing; financing; investment planning; funds transfer; banking; brokerage; debit and credit card services; capital raising; guarantees; financial advisory services; funds management; financing; fund raising; financial sponsorship; information services (including online interactive digital and datacasting information services) in relation to financial services, insurance services, investment, real estate and property development finance; insurance services including reinsurance; insurance services; investment services; investment management services in this class; leasing and renting of houses, apartments and buildings; loans; lease finance; managing real estate for investors; managed funds; provision of cheque and savings accounts; real estate agencies; real estate appraisals; real estate brokerage; real estate management; real estate sales other than by auction; real estate services; stock and station agency services; superannuation services; valuation services in this class; advisory, support, information and consultancy services relating to the foregoing