Business Strategies International Pty Limited v British Standards Institution
[2016] ATMO 9
•1 February 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Business Strategies International Pty Limited to application under section 92 of the Act by British Standards Institution to remove trade mark number 890717 (35, 36 and 41) – BSI - in the name of Business Strategies International Pty Limited
| Delegate: | Bianca Irgang |
| Representation: | Opponent: Mr Chris Round of K&L Gates Non-use applicant: Mr Ben Gardiner of counsel instructed by Klinger Partners Lawyers |
| Decision: | 2016 ATMO 9 S 96 opposition–use shown by opponent for limited services in classes 35 and 36– s101(3) - Registrar’s discretion inappropriate for remaining services – non-use application partially successful – trade mark 890717 to remain on the Register for limited services in classes 35 and 36. |
Background
This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(b) filed on 22 July 2014, British Standards Institution (‘the non-use applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of the services in classes 35, 36 and 41 for which it is registered:
Trade mark: BSI
Trade mark number: 890717
Date of registration: 1 October 2001
Goods:Class 35: Business management and business administration including; business appraisals, business management assistance, business consultancy, business management and organisation consultancy, business research, implementing business monitoring systems and recruitment
Class 36: Financial and investment information services including in relation to businesses, matching investors and businesses, arranging meetings between investors and businesses, assisting businesses obtain government grants and taxation concessions and assisting businesses obtain capital
Class 41:Education; providing of training and entertainment
Business Strategies International Pty Limited (‘the opponent’) filed a notice of intention to oppose removal on 23 September 2014. The statement of grounds and particulars filed on 20 October 2014 asserted that the ground on which the removal applicant relied was not relevant because the owner and a number of co-founded subsidiaries and affiliated companies had used the trade mark in good faith for all of the relevant services since 2000 and during the relevant three year period.
On 5 November 2014 the non-use applicant filed their Notice of Intention to Defend. The parties then commenced filing evidence in accordance with the Trade Mark Regulations 1995 (‘the regulations’).
The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Melbourne on 18 November 2015. Mr Ben Gardiner of counsel instructed by Klinger Partners Lawyers appeared on behalf of the non-use applicant. The opponent was represented by Mr Chris Round of K&L Gates.
Legal Framework
Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.
Section 92 provides that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years and/or the original trade mark applicant did not intend to use it in good faith for relevant goods as at the date the application for registration was filed. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and/or services in respect of which the Trade Mark is or may be registered. Subsection 92(4)(b) as it is relevant to this case provides the following:
(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:
[1] Regulations 9.1 to 9.4 of the Trade Marks Regulations 1995.
…
(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.
As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:
Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, 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.”
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.
[2] [2015] ATMO 10
In the present matter the relevant period for the purposes of subsection 92(4)(b) is the three year period ending on 22 June 2014.
Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:
Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) 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.(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar 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.
(3) 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.
(4) 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.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
In Pioneer Computers Australia Pty Ltd v Pioneer KK[3] Bennett J made the following observations concerning the Registrar’s discretion:
[3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354
[167] The discretion under s 101(3) 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 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.
[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
[171] 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. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.
Evidence
Evidence in Support
The declaration of Ivan Kaye (‘the Kaye 1 declaration’) made on 2 March 2015 accompanied by exhibits IK-1 to IK-12
Evidence in Answer
The declaration of Jeremy Goldman made on 31 March 2015
Evidence in Reply
The declaration of Ivan Kaye (‘the Kaye 2 declaration’) made on 27 July 2015 accompanied by exhibits IK-13 to IK-20
The declaration of Rodney James Campbell made on 27 July 2015
The declaration of Neil Bener made on 27 July 2015
The declaration of Kerry Patricia Mann made on 27 July 2015 accompanied by Annexure 1
Discussion
To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the services to which registration applies within the three year period ending 22 June 2014. This arises by virtue of section 100(1)(c) of the Act. As mentioned earlier, the evidentiary standard is ‘balance of probabilities’ which means that I must be satisfied it is more likely than not that the Trade Mark was used in the appropriate period.
In saying this it is far easier for the opponent to conclusively prove use than it is for a removal applicant to prove non-use, and is both preferable and sensible for the opponent to provide conclusive proof of use. The main arguments advanced by the removal applicant in this case are that:
The opponent has not demonstrated use of the Trade Mark as registered for the relevant services; and
If the use demonstrated it considered use of the Trade Mark, then the associated entities apparently licensed to use the Trade Mark do not fulfill the requirements relating to authorized use.
Here the opponent has supplied a number of exhibits and declarations which it claims demonstrate continual use of the Trade Mark through the relevant period by the opponent and its ‘associated entities’. However, many of the exhibits are not persuasive in, and of, themselves to prove use of the Trade Mark through the relevant period.
The Kaye 1 declaration states that the opponent has been the registered owner of the Trade Mark since 1 October 2001 and that the Trade Mark is an acronym for “Business Strategies International” and has been used by the opponent and all of its associated entities in relation to classes 35, 36 and 41. The following are claimed to be the associated entities of the opponent which the founders of the opponent have co-founded:
BSI Learning Pty Limited – Opponent holds shares representing 37% of the total shareholding.
BSI Learning Institute Pty Limited – BSI Learning Pty Limited holds all the shares – Opponent holds no shares.
BSI Innovation Pty Limited – Opponent holds shares representing 65% of the total shareholding.
BSI Services Pty Limited – Opponent holds no shares.
BSI Training and Development Pty Limited – Opponent holds no shares.
BSI People Pty Limited – Opponent holds shares representing 26% of the total shareholding.
BSI Wealth Holdings Pty Limited – Opponent holds shares representing 21% of the total shareholding.
The Kaye 2 declaration states that he authorized the use of the Trade Mark to each of the above associated entities and annexure IK-13 contains a diagram explaining the shareholding arrangement and asserted relationships between the entities. However, this diagram mentions a number of companies which are not in the evidence as having used the Trade Mark and the share holding percentages are not consistent across the earlier ASIC printouts provided in annexures IK-1 and IK-2 or the details provided by the opponent in its statement of grounds and particulars. Mr Kaye also states that there are no formal licensing agreements between the opponent and its asserted associated entities regarding the use of the Trade Mark. Before I consider section 8 of the Act and the principals of authorized use as articulated in Skyy Spirits LLC v Lodestar Anstalt[4] in relation to the situation before me, I believe it is more appropriate to first turn to section 7 of the Act which states:
[4] (2015) 12 IPR 328
7 Use of trade mark
(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed courtsee section 190.
The opponent’s Trade Mark consists of the three capital letters “BSI” in plain text. The opponent has provided a number of exhibits which it purports demonstrate use of the Trade Mark on the registered services. A close consideration of the opponent’s evidence demonstrates a variety of trade marks used by the opponent and its associated entities. The opponent has asserted that the following examples taken from the evidence amount to use of the Trade Mark:
| Annexure IK-14 | Annexure IK-16 | Annexure IK-14 |
| Annexure IK-14 | Annexure IK-4 | Annexures IK-4, IK-5, IK-11, IK-14, IK-15 |
| Annexures IK-3, IK-8, IK-9, IK-19 | Annexures IK-4, IK-11 | Annexure IK-8, IK-16 |
| Annexures IK-9, IK-10, IK-11 | Annexure IK-7 | Annexure IK-6 |
Considering the above in comparison to the opponent’s registered plain text trade mark for BSI solus, I am not persuaded that any of the above usage amounts to use of the Trade Mark as registered. When considered in their totality, each of the above examples contains alterations and/or additions to the letters BSI which substantially affect the identity of the Trade Mark[5].
[5] Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381
There is only one example in the opponent’s evidence which may be use of the Trade Mark. This example is:
The above BSI trade mark is found in annexure IK-10 on the second page of the client letter and in annexure IK-20 as a photograph in the opponent and BSI Connect’s album on facebook®. The context in which a trade mark appears is all important in determining whether certain use constitutes use as a trade mark[6]. In Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors[7]:
The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: The Shell Co, supra at 425; Wrigley’s (Australasia) Ltd v Life Savers (Australasia) Ltd (1936) 37 SR (NSW) 9, 16; Aldi Stores, supra at [22] to [24] and [76].
[6] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.
[7] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390 at [186].
The acronym (or initialism) ‘BSI’ is used in prominent place with a slight embellishment being the common square borders around the letters. I do not consider that the slight embellishment of the borders around the letters BSI affect the Trade Mark’s identity in this case[8]. I find that the above example constitutes use of the Trade Mark as registered.
[8] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241
I now need to consider whether the above use is within the relevant time period and if the use is in relation to the services for which the Trade Mark is registered. In terms of the quantum of use necessary to rebut an allegation of non-use under the Act, it has been established that the opponent need not demonstrate a reputation in Australia, but rather a genuine bona fide use of the Trade Nark occurring in the relevant period on the designated services. In certain circumstances, it is possible for the allegation to be rebutted by a single instance of use provided it is conclusive.[9] It was observed by the Hearing Officer in Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc.[10] that:
…there seems to be no reason why the opposition could not succeed in the present case if the opponent satisfies me that the sole invoice to the Overseas Distributors was "overwhelmingly convincing proof" contemplated by Wilberforce J in "Nodoz" case, supra.
[9] Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J and qualified in E & J Gallo Winery v Lion Nathan Australia Pty Ltd at [64].
[10] Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc [1999] ATMO 101
Annexure IK-10 contains a copy of a letter from the opponent to a potential client regarding business and financial advice on maximizing any export market development grants scheme. The second page of the letter has the above Trade Mark at the top left corner of the page. The letter of offer is dated within the relevant time period. Importantly, it appears that these services have been offered and rendered directly by the opponent rather than one of its associated entities.
Annexure 20 contains two photos from the respective facebook photo albums of both the opponent and an entity called BSI Connect. I note that the facebook photo on the opponent’s facebook page is dated outside of the relevant time and that regardless of this, neither photo clearly demonstrates what services the Trade Mark is being used in relation to. These two instances of use in annexure IK-20 are not sufficient to resist removal of the Trade Mark.
However, the letter of offer to a client in annexure IK-10 does satisfy me, on the balance of probabilities, that the opponent has established use of the Trade Mark occurring within the relevant period. However, that use of the Trade Mark is limited to:
Class 35: Business consultancy in relation to obtaining government grants and capital.
Class 36: Financial and investment information services provided to assist businesses obtain government grants and capital.
On the evidence before me, the opponent has not demonstrated any use of the Trade Mark in regards to any other services.
Registrar’s Discretion
There is a discretion embodied in subsection 101(3) of the Act. That particular part of the legislation reads as follows:
(3) 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.
The application for removal is for all services within classes 35, 36 and 41. The opponent has requested the Registrar’s discretion to allow the trade mark to remain registered for all those services. While both of the Kaye declarations make statements regarding the opponent’s use of the Trade Mark on all its registered services, these statements are not supported in the evidence before me. Rather, the opponent’s evidence demonstrates that a number of different trade marks are used by other entities for those services. This is not sufficient to show why I should exercise my discretion in terms of s101(3) in relation to such a broad range of services across classes 35, 36 and 41 and I decline to do so.
Decision
I am satisfied that the trade mark has been used in the relevant period. However, this use has only been with respect to:
Class 35: Business consultancy in relation to obtaining government grants and capital.
Class 36: Financial and investment information services provided to assist businesses obtain government grants and capital.
Therefore, I refuse to remove trade mark registration No. 890717 in its entirety but direct that unless this decision is appealed, after one month from the date of this decision the class 35 and class 36 specification of services be amended to the above and the trade mark will be removed for the remaining services including all services in class 41.
Costs
The non-use applicant has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
1 February 2016
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