Blackbook Traveler Pty Ltd. v Black Book No 1 (AU) Pty Ltd

[2022] ATMO 218

TRADE MARKS ACT 1995

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

Re:Opposition by Blackbook Traveler Pty Ltd to an application under section 92 of the Trade Marks Act 1995 by Black Book No 1 (AU) Pty Ltd for removal of trade mark number 1604634 (39) – BLACKBOOK TRAVELER – in the name of Blackbook Traveler Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: protectmyidea.com.au

Applicant: Phillips Ormonde Fitzpatrick

Decision:

2022 ATMO 218

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal – Opponent’s evidence shows use of the trade mark for some of the services during the relevant period. Registrar’s discretion under s 101(3) exercised in favour of the Opponent – trade mark to remain on Register.

Background

1. This decision is pursuant to an application made on 8 December 2020 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Black Book No 1 (AU) Pty Ltd (‘Applicant’) to remove the BLACKBOOK TRAVELER trade mark[RW1]  (‘Trade Mark’) from the Register of Trade Marks.  The application is made in respect of all the class 39 services for which the Trade Mark is registered (‘Registered Services’), namely:

   Class 36: Agency services for arranging travel; Booking agency services relating to travel; Holiday travel reservation services; Itinerary travel advice services; Provision of travel services from customer loyalty and frequent buyer schemes; Travel advisory services; Travel arrangement; Travel consultancy; Travel guide services; Travel information services; Travel reservation; Travel tours and cruises

2. Blackbook Traveler Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’).  The Applicant filed a Notice of Intention to Defend.

3. The Opponent subsequently filed evidence in support of its opposition to removal.  The Applicant did not file evidence in answer.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  A Decision without an oral Hearing was requested by the Opponent.  I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP; and

   ·The evidence in support, being the Declaration of Veronica Hey, director of the Opponent, made on 16 February 2022 with exhibits (‘Hey declaration’).

   The Relevant Provisions

5. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

6. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 8 November 2020 (‘relevant period’).

7. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application for registration have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 29 February 2019 onwards.

8. The onus of rebutting an allegation of non-use lies with the Opponent and s 100 of the Act provides, relevantly:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

9. I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

10. In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the Registered Services, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

11. I further note that a single bona fide example of use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4]

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

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

    Discussion

12. Pursuant to s 100, to successfully oppose the application the Opponent must either establish that it has used the Trade Mark (or a substantially identical trade mark[5]) during the relevant period, or establish that the Trade Mark was not used because of circumstances that were an obstacle to the use of the Trade Mark during the relevant period. Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[6]

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

    [6] Act s 7(3).

    Use of the Trade Mark in the relevant period

13. The SGP states that that Opponent has used the Trade Mark in good faith in Australia “at the least, in the relevant 3 year period between 6 June 2017 and 6 June 2020” and refers in particular to use at and and at various social media locations, at conference stands and on printed material.

14. The Hey declaration largely supports the SGP.  Exhibited to the declaration are examples of use in the relevant period.  Albeit that there are no submissions from the Applicant in respect of this use, two issues arise for my consideration.  First, the evidence shows use of the words, “blackbook traveler” in various forms, for example, with a device mark; as part of “blackbook traveler.com”; and with or sometimes without the tagline, “Adventurous. Informed. Empowered.”  In other circumstances a question may arise as to whether those additions or alterations substantially affect the identity of the Trade Mark but here, and on the evidence, I do not need to reach a conclusion since I am satisfied that there is genuine, albeit limited, use of the Trade Mark solus.

15. Secondly, is the repeated assertion in the Hey declaration of use in respect of “travel advisory services; travel consultancy; travel guide services; travel information services”.   I am satisfied of use in respect of those services but they are a subset of the Registered Services.  In the case of Trident Seafoods Corporation v Trident Foods Pty Limited, Gleeson J stated, “if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] – [306]”[7].   This is a separate exercise to the one of the Registrar’s discretion under s 101. 

    [7] [2018] FCA 1490, [116].

16. Here, there is no evidence use of the Trade Mark in respect of “travel cruises” or the “provision of travel services from customer loyalty and frequent buyer schemes” (‘Unused Services’) but, allowing for slight variation of language, I am satisfied that the Opponent has used the Trade Mark for remainder of the Registered Services.

    Registrar’s Discretion

17. The policy behind Part 9 of the Act is to serve the public interest of the integrity of the Register and, generally, demand the removal of an unused trade mark.[8] Nevertheless, s 101(3) provides the Registrar with a discretion in this respect, described by Bennett J as:

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[9]

    …

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

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

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

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

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

18. In E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

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

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

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

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

19. There is no indication that the Opponent has abandoned the Trade Mark and I would characterise the Unused Services as incidental, if not closely related, to the core travel services in respect of which use has been shown.  Even in the absence of submissions I would find that the Opponent has a self-evident commercial interest in maintaining the Trade Mark for the Unused Services.  I do not perceive a significant risk of consumer confusion should those services remain on the Register and find that this is a case which justifies the exercise of my discretion to retain those services.

    Decision and Costs

20. I decide that the Opponent has established its opposition to removal and the Trade Mark.  Accordingly, I order that trade mark registration 1604634 remain on the Register in respect of all services.  If the Registrar is served with a notice of appeal, then the registration will be dealt with as the Court sees fit.

21. The Opponent has been successful and I order that the Applicant meet its costs in the usual manner.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    13 December 2022

    
    

[RW1]This addition, or maybe remove 'the' before BLACKBOOK TRAVELER.