CFX Funds Management Pty Ltd v Paul McMahon

[2016] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by CFX Funds Management Pty Ltd to registration of trade mark application 1604163 (39) DFO in the name of Paul McMahon

Delegate:	Michael Kirov
Representation:	Opponent: Tony Loris and Adam Sears of Davies Collison Cave, Patent & Trade Mark Attorneys Applicant: Did not appear or file written submissions
Decision:	2016 ATMO 52 Opposition under section 52 of the Trade Marks Act 1995: s 59 considered - prima facie presumption of Applicant’s intention to use displaced and no actual use shown – opposition established.

Background

1. This is an opposition brought by CFX Funds Management Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Paul McMahon (“the Applicant”):

   Application Number:        1604163

   Filing Date:  5 February 2014

   Services:Class 39: Advisory services relating to road transportation; Advisory services relating to the transport industry; Advisory services relating to transport; Agency services for arranging the transportation of goods; Agency services for arranging the transportation of persons; Agency services for arranging transportation; Air cargo transport; Air passenger transport services; Air transport; Air transport of goods; Air transport of passengers; Air transportation services; Airline transport; Airline transportation services; Ambulance transport; Animal transport services; Armored-car transport; Arrangement for the transportation of goods; Arrangement of passenger transport; Arranging of transportation; Boat transport; Boat transportation services; Bus transport; Car transport; Cargo transportation; Clearance (removal and transportation) of waste; Coach transport services; Collection (transport) of waste and trash; Computerised distribution advisory services relating to transport; Computerised distribution planning relating to transportation; Computerised transport information services; Consultancy services relating to transportation; Container transport services; Disposal (transport) of waste; Distribution (transport) of goods; Distribution of goods (transportation); Estimation of transportation of goods; Ferry transport services; Ferry-boat transport; Food transportation services; Freight transportation services; Hire of rail transport; Hire of road transport; Hire of transport vehicles; Industrial removal services (transportation); Information services relating to methods of transport; Information services relating to the transportation; Information services relating to transport timetables; Information services relating to transportation; Livestock transport services; Logistics services (transport, packaging, and storage of goods); Marine transport; Medical tourism services being the arranging of transportation, travel reservations and travel bookings in order to obtain health care; Minibus transport services; Motor car transport services; Organising the transportation of people; Packaging articles for transportation; Packing of goods for transportation; Passenger transportation services; Pleasure boat transport; Providing information, including online, about transport,; Provision of information in relation to transport; Provision of information relating to the transport of freight; Provision of information relating to the transportation of goods; Provision of transport information via an online calculator; Rail transport services; Railway transport; Refrigerated transport of cold goods; Rescue operations (transport); Road transport services; Sea transport services; Services for chartering railway transport; Sewage transportation; Ship transport services; Shipping port services (berthing, mooring, cargo and container handling, storage and transportation); Storage of goods for transportation; Taxi transport; Transport brokerage; Transport by land; Transport by rail; Transport by road; Transport consultancy services; Transport information services; Transport of money; Transportation by land; Transportation by rail; Transportation by road; Transportation by sea; Transportation information; Transportation logistics; Transportation of cargo; Transportation of containers; Transportation of food; Transportation of freight; Transportation of goods; Transportation services provided in relation to a customer loyalty or frequent buyer scheme; Vehicle transport services; Waste transport; Water transport services

   Trade Mark:  DFO  (“the Opposed Mark”)

2. Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 26 June 2014.  The Opponent filed a Notice of Intention to Oppose on 21 August 2014, followed by an (amended) Statement of Grounds and Particulars (“SGP”) on 28 August 2014 raising opposition grounds corresponding to ss 42(b), 43, 44, 59, 60 and 62A of the Act.

3. The Applicant filed a Notice of Intention to Defend (“NID”) on 16 September 2014.  However the NID nominated two parties, being the Applicant and a company named “D.F.O. Pty Ltd” (with essentially identical postal addresses, but different email addresses), in the two “Personal Details of Customer” fields indicated on IP Australia’s standard NID form provided on IP Australia’s website.  In this context, nevertheless, the word “customer” is apparently used on the form as a synonym for “applicant”.  IP Australia accordingly wrote to the Applicant (via both email and regular mail) on 16 September 2014 stating:

   ** URGENT ACTION REQUIRED **

   Dear Mr McMahon

   I refer to the notice of intention to defend (NID) filed on 16 September 2014.

   The NID has been filed in the joint names of “Paul McMahon” and “D.F.O. Pty Ltd”.  As this trade mark application is only in the name of Paul McMahon, the NID should be in that name only.

   To rectify this, you need to do one of the following:

   File another NID form which only lists “Paul McMahon” no later than the due date of Wednesday 1 October 2014; or

   File a written request to delete the name “D.F.O. Pty Ltd” from the NID filed on 16 September 2014.  A request for deletion should be filed by Friday 3 October 2014.

   Please provide your response via post or the eServices portal on the IP Australia website.

   Yours sincerely [etc]

4. This letter notwithstanding, IP Australia’s file indicates that the Applicant has only contacted IP Australia in relation to the opposed application[1] on one occasion since, when on 13 May 2015, for some reason, the Applicant purported to file an identical NID to that filed on 16 September 2014.  I mention also that the Applicant did not respond to IP Australia’s emailed letter of 30 June 2015 enquiring as to his intentions in relation to the hearing of the opposition requested by the Opponent, or to emails I sent to him on 4 February and 9 March 2016.

   [1] As discussed later in this decision IP Australia has heard from the Applicant in connection with other applications he has filed subsequently, the latest being application 1770359 machiavelli filed on 12 May 2016 covering a very wide range of restaurant, bar and accommodation services in Class 43.

5. Nevertheless, given the terminology used on IP Australia’s NID form is arguably unclear and the Applicant does not have a legal representative acting, I will overlook the technical error on the face of the original NID and will proceed as if it had been filed in the name of the Applicant (only) on 16 September 2014.  Indeed, in the particular circumstances of this matter, as discussed below, I believe doing so is in the interests of both parties in allowing for an unambiguous resolution of the matter.

6. The sole evidence filed in the proceedings is contained in the following two declarations,[2] which were filed by the Opponent as evidence in support:

   ▪ George Karabatsos made 9 January 2015, with Exhibits GK-1 to GK-16  (“Karabatsos”)

   ▪ Tony Victor Lolis made 13 January 2015, with Exhibits TVL-1 to TVL-5 (“Lolis”)

   [2] Whereas both Karabatsos and Lolis purport to be Statutory Declarations, neither declaration was witnessed as required by s 8(b) of the Statutory Declarations Act 1959.  I confirm nevertheless that I am treating them as declarations made pursuant to reg. 21.6 of the Trade Marks Regulations 1995.

7. Exhibit TVL-4 to Lolis consists of copies of two Statutory Declarations made on 17 December 2009 by Geoffrey Gordon Porz, with Exhibits GGP-1 to GGP-11.  Mr Porz was then CEO of Austexx Pty Ltd, a company related to the Opponent.  His original declarations were filed as evidence in support in successful oppositions by that company to applications 1287184 and 1296184, also for the trade mark DFO, which were filed by “DFO Pty Ltd” on 27 February 2009 and 27 April 2009 respectively (“the Austexx oppositions”).[3]

   [3] Austexx Pty Ltd v DFO Pty Ltd [2011] ATMO 93.

8. I note that according to the records of the Australian Securities & Investments Commission obtained on 27 October 2014 and exhibited with Lolis, D.F.O. Pty Ltd (also apparently known as “DFO Pty Ltd” and referred to hereafter as “the Company”) was incorporated on 26 February 2009 and the Applicant was a Director and its Company Secretary from this date until 30 April 2009.  The Company itself was deregistered on 22 July 2012, (albeit being nominated as a party in the two NIDs mentioned above received by IP Australia on 16 September 2014 and 13 May 2015).

9. At the time of the successful Austexx oppositions applications 1287184 and 1296184 for the DFO mark covered the services listed below:[4]

   Application No. 1287184 (36) filed on 27 February 2009: Administration of insurance business; arranging of insurance; financial services; providing information, including online, about insurance, financial and monetary affairs

   Application No. 1296184 (40) filed on 27 April 2009: Butchery (meat preparation); food and drink preservation; food and drink processing (for others); food grinding; food processing (other than cooking); freezing of foods; preservation of food; processing of cooked foods; smoking of meat; treatment of cooked foods

   [4] When originally filed application 1287184 also claimed “real estate affairs” and application 1296184 also claimed a range of food items in Class 29.  However these services and goods were deleted during prosecution of the applications in order to overcome citations.

10. The applications were accepted for registration for these services but the Austexx oppositions succeeded based on s 44 of the Act. As with the current opposition, the applicant in that case did not file any evidence or submissions; nor did it otherwise take part in the opposition process.

11. For the sake of completeness I mention that the Trade Marks Register indicates the Company also applied to register the mark sharequity for the Class 36 services set out below on 27 February 2009.  The application (1287186) was accepted for registration when initially examined, but lapsed some six months later because the Company did not pay the registration fee:

    Card operated financial services; clearing house financial services; commodity trading (financial services); computerised financial services; discount card services (financial services); emergency financial services; financial services; provision of information relating to financial services

12. As for the Opponent, which is part of a somewhat complicated larger corporate group (and has changed its name to Vicinity Funds Management Pty Ltd since its opposition was filed), I accept the following summary from Mr Lolis’ written submissions based on the information contained in Lolis, Karabatsos[5] and the Porz declarations:

    [5] Mr Karabatsos is “the Head of Retail Operations” with Novion Property Management Pty Ltd (formerly Colonial First State Property Management Pty Ltd), another company in the same corporate group as the Opponent.

    1. The Opponent was formerly known as Novion Funds Management Pty Ltd and prior to that, and at the time of filing the Notice of Opposition, CFX Funds Management Pty Ltd. Recently, the Opponent has undergone a further name change, and is now known as Vicinity Funds Management Pty Ltd.

    2. The Vicinity Trust (formerly known as Novion Trust and prior to that, CFS Retail Property Trust) (a real estate investment trust listed on the Australian Stock Exchange) (“Trust”) owns 100% of three DFO centres (located in Essendon (Vic), Moorabbin (Vic) and Homebush (NSW)) and 75% in DFO South Wharf (Vic).  Through Vicinity RE Limited (formerly known as Novion RE Limited and prior to that Commonwealth Managed Investments Limited) (as responsible entity) (“VRE”), the Trust appointed:

    a. A related company Vicinity Property Management Pty Limited ACN 101 504 0445 (formerly known as Novion Property Management Pty Limited and prior to that Colonial First State Property Management Pty Limited) (“VICINITY”) as its agent to manage the DFO centres; and

    b. Vicinity Funds Management Pty Ltd (ACN 167 606 939) (“VFM”) (formerly known as Novion Funds Management Pty Ltd and prior to that, CFS Funds Management Pty Ltd) as its agent to hold the intellectual property in the DFO Brand and associated DFO trade marks.

    VICINITY, VRE and VFM are all owned by Vicinity Limited ACN 167 087 363 (collectively “the Group”).

    3. The DFO Brand comprises of a number of different marks including the DFO word mark and the DFO Logo as set out in the table below.

DFO

4. [VICINITY] first became involved with the management of four of the seven DFO Centres located in Australia being DFO Essendon, DFO Moorabbin and DFO South Wharf located in Melbourne and the DFO Homebush in Sydney, when the Group purchased these centres from Austexx Pty Ltd (“Austexx”) in the last quarter of 2010.  As part of this transaction, Colonial First State Property Limited (ACN 085 313 926) which was associated with VRE (formerly known as Novion Trust) at the time, took an assignment from Austexx of the DFO Brand and associated DFO trade marks as well as the extensive goodwill associated with the DFO Brand.  The DFO Brand and associated DFO trade marks as well as the extensive goodwill associated with the DFO Brand, has since been transferred to VFM, within the Group.

5. VICINITY does not manage the remaining three DFO Centres located in Brisbane, Cairns and Jindalee. The operators of these three DFO Centres use the DFO Brand and the associated DFO trade marks under license from VFM.

6. The well known chain of shopping precincts known as DFO and the DFO Brand have been used on a range goods and services since the 1990s and have been ever present to Australian consumers. The DFO Brand includes the registered  Logo and DFO word mark and these are well known registered trade marks of the Opponent.

7. The DFO Centres are typically medium to large shopping precincts which are comprised of separately leased retail outlets that are, in turn, centrally managed by, or on behalf of the Opponent. There are generally in excess of 100 outlets within each DFO Centre…

1. I heard the matter as a delegate of the Registrar of Trade Marks on 18 March 2016 in Canberra.  Tony Lolis and Adam Sears of Davies Collison Cave, Patent & Trade Mark Attorneys, appeared for the Opponent via video link from Melbourne.  Their oral submissions were supplemented by Mr Loris’ written submissions filed on 4 March, as directed in an email that I sent to the parties on 4 February.

2. As mentioned, the Applicant did not respond to that directions email, nor to a subsequent reminder email I sent on 9 March.  I note too that the Applicant did not seek to be heard or pay the relevant hearing fee.  Indeed, as mentioned, it seems from IP Australia’s file that the last communication of any kind received from him in relation to the currently opposed application was when he filed the defective NID discussed earlier on 16 September 2014 and then purported to refile the identical document on 13 May 2015.  This is despite the Applicant’s having filed, inter alia, the following further applications with IP Australia since September 2014:

   1689829 Seawall in Class 43 filed 27 April 2015 (Registered);

   1694137 Byron Burger in Class 43 filed 17 May 2015 (Pending);

   1697069 9Noodle in Class 43 filed 29 May 2015 (Lapsed-Accepted);

   1702325 brew’n’beef in Class 43 filed 23 June 2015 (Registered);

   1721817 WIGZ in Classes 22 & 26 filed 16 September 2015 (Pending);

   1752354 Rustic Plate in Class 43 filed 13 February 2016 (Accepted);

   1762748 X2X in Class 36 filed 4 April 2016 (Accepted); and

   1770359 machiavelli in Class 43 filed 12 May 2016 (Accepted).

3. Since the Applicant used and uses the same physical and email addresses for these subsequent applications as he did and does for the opposed application, and since none of IP Australia’s mailed or emailed correspondence to him has failed to be delivered, I must infer that Mr McMahon has chosen not to participate in defending the opposed application beyond filing a NID, whilst remaining very active in other dealings with the Office.

   Grounds of Opposition, Onus and Standard of Proof

4. As mentioned, the SGP lists grounds corresponding to ss 42(b), 43, 44, 59, 60 and 62A of the Act and at the hearing Mr Lolis and Mr Sears pressed all grounds except for the ground based on s 43. To succeed, the Opponent bears the onus of establishing at least one of the five remaining grounds, with the relevant date for assessing those grounds being the 5 February 2014 filing date of the application (“the Filing Date”).[6]  I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[7]

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595. With respect to s 59 in particular, see also Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 at [74] (per Keane CJ, Stone and Jagot JJ) and Suyen Corporation v Americana International Limited (2010) 87 IPR 262 at [147] and [166] (per Dodds-Streeton J).

   [7] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.

5. That said, I have only found it necessary to address the Opponent’s s 59 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

   Discussion

   Section59

6. Section 59 of the Act, (which reflects the requirements of s 27(1)(b)), is set out below:

   Applicant not intending to use trade mark

   59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a) to use, or authorise the use of, the trade mark in Australia; or
   (b) 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 specified in the application.

   Note:  For applicant see section 6.

7. Section 27(1) of the Act is as follows:

   Application—how made

   27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

   (a) the person claims to be the owner of the trade mark; and
   (b) one of the following applies:

   (i) the person is using or intends to use the trade mark in relation to the goods and/or services;
   (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
   (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

   Note:  For use see section 7.

8. The ground based on s 59 is indicated in the SGP as follows:

   The [Applicant] does not intend to use, or authorise the use of, the trade mark in Australia; or to assign the trade mark to a body corporate for use by the body corporate in Australia in relation to the services specified in the application and registration should be refused in accordance with section 59 of the Act.

1. The s 59 ground is further particularised in the SGP as follows:

   The Applicant as director of the company DFO Pty Ltd/D.F.O. Pty Ltd has previously attempted to register the identical DFO trade mark on two separate occasions for completely unrelated services to those claimed by the Application and by inference the Applicant cannot have the requisite intention to use the DFO trade mark in good faith for the broad spectrum of regulated services claimed by the Application and the services claimed by refused Trade Mark Nos 1287184 and 1296184.

2. Relevant aspects of the s 59 ground of opposition generally were addressed in some detail in two decisions issued by the Federal Court in 2010, firstly by the Full Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP[8] (“Food Channel”), followed by Dodds-Streeton J in Suyen Corporation v Americana International Limited[9] (“Suyen”).  I draw on these two decisions in particular in the analysis which follows.

   [8] (2010) 86 IPR 437.

   [9] (2010) 87 IPR 262.

3. It has long been accepted, as acknowledged by Mr Lolis and Mr Sears, that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application.  As Dodds-Streeton J put it in Suyen at [193], “an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists”.  Noting that “a number of recent authorities have…endorsed its continuing application”, (“most significantly” Food Channel), her Honour continued at [197]:

   The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability.  Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation.  To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.

4. However, as Mr Lolis noted in his written submissions (original footnote retained):

   The presumption of an intention to use deriving solely from the act of filing the application is a prima facie presumption, which can be rebutted by slight evidence.  Inferences can be drawn to indicate a lack of intention to use.  Once rebutted, the onus of proof shifts to the Applicant…

   …

   Where an Applicant for registration has been put on notice that its intention to use the mark is in issue, and it has not responded to the Opponent’s evidence, a finding of lack of intention may be made.[10]

   [10] Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Health World Ltd [v Shin-Sun Australia Pty Ltd][2008] FCA 100 at [162]; Shanahan 4th edition at [50.2320].

5. Moreover, although Food Channel and Suyen confirmed that the relevant date for assessing an applicant’s intention to use is, as with all opposition grounds, the filing date, they also affirm that an applicant’s actions after the filing date may be relevant in drawing an adverse inference about the intention to use as at the filing date.  As Dodds-Streeton J put it in Suyen at [147]:

   There has been conflicting, albeit relatively sparse, authority and commentary on whether the requisite intention under s 59 is to be assessed at the date of filing the application to register the trade mark or at the time of the opposition proceeding (whether it be on the date of filing the notice of opposition, the hearing of the notice of opposition or the last filing of evidence in relation to it). Very recently, after the hearing of this appeal but before the publication of these reasons, the Full Federal Court in [Food Channel] held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”: at [74].

6. I agree with Mr Lolis’ submission that in the present matter:

   The Applicant has clearly been put on notice that a lack of intention to use was an issue in these proceedings. The [SGP] specified s 59 as a ground of opposition.

7. The SGP, as indicated above, questions the Applicant’s intention to use in terms of his past history in connection with the Austexx oppositions, themselves applications for “completely unrelated services” in Classes 36 and 40 ranging from “arranging of insurance” to “Butchery (meat preparation)”, and “the broad spectrum of regulated services” covered by the opposed application.  Amongst the vast number of Class 39 services claimed in the currently opposed application I accept the following, at the very least, would on the face of it be services that the Applicant could not provide, (even assuming he possessed the diverse range of resources and equipment necessary for their delivery), without firstly meeting significant regulatory hurdles and obtaining relevant licences:

   “Air cargo transport”; “Air passenger transport services”; “Ambulance transport”; “Armored-car transport”; “Ferry transport services”; “Food transportation services”; “Livestock transport services”; “Medical tourism services being the arranging of transportation, travel reservations and travel bookings in order to obtain health care”; “Passenger transportation services”; “Railway transport”; “Rescue operations (transport)”; “Sewage transportation”; “Shipping port services (berthing, mooring, cargo and container handling, storage and transportation)” and “Taxi transport”.

8. As already discussed it is apparent that the Applicant has seen the SGP, because he filed a formal Notice of Intention to Defend document in response.  He has however filed neither evidence nor submissions subsequently that might shed some light on his intention to use the Opposed Mark as challenged in the SGP.  Indeed, he has otherwise taken no part in the opposition process.  As mentioned, he has not responded to letters or emails sent to him in relation to the Opposed Mark by IP Australia for more than 12 months, while over that same period and using the same mail and email contact details, he has filed some eight further applications covering goods and services as diverse as:

   Class 22: “fibre for hairpieces”

   Class 26: “hairpieces”

   Class 36: “Card operated financial services; Charitable services, namely financial services; Clearing house financial services; Commodity trading (financial services); Computerised financial services; Discount card services (financial services); Emergency financial services; Financial services; Provision of information relating to financial services”

   Class 43: “bar, restaurant and accommodation” services; “Rental of cooking equipment for restaurants”; “theatre restaurants”; “Hotel accommodation services”; “Hotel catering services” and “Resort hotel services.”

9. In these circumstances I agree with Mr Lolis’ submission that the prima facie presumption in favour of the Applicant’s intention to use has been rebutted.  Particularly given the vast and diverse range of services covered by not only the DFO trade mark applications subject of the Austexx applications, but also by the presently opposed application, I agree with Mr Lolis and Mr Sears that it was incumbent on the Applicant to provide some affirmation of his intention and, indeed, some evidence that he had, or was taking reasonable steps to obtain, the means and necessary permissions to provide the huge array of services apparently contemplated.

10. In the absence of any evidence from the Applicant I accordingly find the opposition ground based on s 59 of the Act established.

    Decision

11. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

    …the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in

    respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the

    application was opposed has been established.

    Note: For limitations see section 6.

12. I have found the opposition to be successful on the ground raised pursuant to s 59 of the Act. I accordingly refuse application 1604163

    Costs

13. In the event of success Mr Lolis and Mr Sears requested an award of costs in the Opponent’s favour.  As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    19 July 2016