Chitty Chiu (Health 24 Pty Ltd) v Media24 Intelprop Holdings Ltd
[2015] ATMO 101
•20 October 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Chitty Chiu (Health 24 Pty Ltd) to application under section 92 of the Act by Media24 Intelprop Holdings Ltd to remove trade mark number 493448(42) - HEALTH 24 - in the name of Health 24 Pty Ltd
Delegate: | Adrian Richards |
Representation: | Decision on the written record |
Decision: | 2015 ATMO 101 Application for removal under subsection 92(4)(b) – registered owner did not exist during relevant period – no evidence of another person authorised by the registered owner to use the trade mark – use or authorised use cannot be established – opposition to application for removal unsuccessful – trade mark removed – costs awarded against opponent |
Background
These proceedings are pursuant to an application made under s 92 (‘the application’) of the Trade Marks Act 1995 (Cth) (‘the Act’), by Media24 Intelprop Holdings Ltd (‘the applicant’) for removal of the trade mark set out below:
Trade mark: HEALTH 24 (‘the trade mark’)
Number: 493448
Filing Date: 17 August 1988
Specification: Class 42: Medical services provided by medical clinics, including ancillary healthcare services, radiography and dietetic advice (‘the services’)
Registered owner: Health 24 Pty Ltd
Endorsements: Registration of this trade mark gives no right to the separate exclusive use of the word HEALTH and the numeral 24* Registration of this trade mark is limited to Southport, Queensland, and to the State of New South Wales* Accepted on provision of evidence of use* The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.*
The application nominates para 92(4)(b) of the Act as the sole ground, and seeks the removal of the trade mark in respect of all of the services. Section 92 of the Act relevantly provides:
92 Application for removal of trade mark from Register etc.
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be 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.
(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note: For prescribed court see section 190.
(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.
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.
(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first‑mentioned person as the applicant.
Given the application was filed on 20 May 2013, it effectively asserts that the trade mark has not been used for a three year period ending on 20 April 2013 (‘the relevant period’).
The application was advertised for opposition purposes in the Official Journal of Trade Marks on 6 June 2013. Subsequently, the application was opposed on 15 July 2013, upon the filing of both a notice of intention to oppose and a statement of grounds and particulars. Both documents were filed in the name of ‘Chitty Chiu (Health 24 Pty Ltd)’ (for brevity, ‘the opponent’). I have written out the name of the opponent verbatim here to draw attention to the fact that the opponent is unlikely to be the same person as the registered owner. Therefore, for clarity, I will refer throughout these reasons to either ‘the opponent’ or ‘the registered owner’ as the case requires.
In accordance with reg 9.10 Trade Marks Regulations 1995 (Cth) (‘the Regulations’), the Registrar of Trade Marks (‘the Registrar’) gave the opponent’s statement of grounds and particulars to the applicant on 19 July 2013. In response, on 16 August 2013, the applicant filed a notice of intention to defend. The Registrar then gave a copy of the notice of intention to defend to the opponent on 23 August 2013, as required by reg 9.15 of the Regulations.
The parties filed then evidence in support of the opposition, evidence in answer to the evidence in support, and evidence in reply to the evidence in answer, all within the periods prescribed by reg 9.16 of the Regulations. Upon conclusion of those statutory evidence periods, the Registrar gave the parties an opportunity to request to be heard. Neither party took up this opportunity within the period set out in the Registrar’s letter. In response to a subsequent letter from a delegate of the Registrar indicating that this matter was to be decided on the papers, the applicant filed written submissions. The opponent did not respond.
I am a delegate of the Registrar and I am to decide whether to remove the trade mark as required by s 101 of the Act.
Evidence
The declarations filed in evidence are set out in the table below:
| Declarant and position | Date made | Exhibits |
| Evidence in support | ||
| Dr Thomas R Wenkart, owner of Health 24 Pty Ltd and Macquarie Health Corporation (‘Wenkart 1’) | 19 November 2013 | A to E |
| Evidence in answer | ||
| James Vernon Maxwell, attorney at Peter Maxwell and Associates (‘Maxwell’) | 13 February 2014 | JVM-1 to JVM-8 |
| Russell John Norton, attorney at Spoor & Fisher (‘Norton’) | 13 February 2014 | RJN-1 |
| Julian Charles Clulow, paralegal at Peter Maxwell and Associates (‘Clulow’) | 20 February 2014 | JCC-1 |
| Evidence in reply | ||
| Dr Thomas R Wenkart, owner of Health 24 Pty Ltd and Macquarie Health Corporation (‘Wenkart 2’) | 28 March 2014 | A-1 to A-3 |
The evidence tells two stories. The first is a familiar issue in removal proceedings – that of the alleged use of the trade mark within the relevant period. The second is less common, since it relates to the non-existence of the registered owner before, during, and after the relevant period.
On the second issue, the applicant has provided evidence that the registered owner, an Australian proprietary company, was deregistered under s601AA of the Corporations Act 2001 (Cth) in 2008 and has never been revived. The opponent has not directly responded to this, but has instead contended that the registered owner ‘is a subsidiary of MACQUARIE HEALTH CORPORATION’ [emphasis in original], and that ‘in the last three years, [the registered owner] has authorized use of the trade mark’, presumably to other entities falling within the Macquarie Health group of companies. The assertions in Wenkart 1 and Wenkart 2 describing the structure of the Macquarie Health group of companies and the holdings of Macquarie Health Corporation Pty Ltd are uncorroborated.
Onus
The onus is on the opponent to rebut the allegation of non-use by proving that the trade mark was used in good faith during the relevant period by the registered owner, or by a person authorised by the registered owner, in relation to the services. The standard of proof is the ordinary civil standard of ‘on the balance of probabilities’.
Reasons
As foreshadowed, there are two paths to deciding this opposition. One relates to evidence before me that the registered owner was no longer in existence some time before, and extending through, the relevant period. The relevance of this point to the question of use is summarised in the applicant’s submissions:
The very fact that the registered owner is deregistered and was deregistered for the entire Non-Use-Period must lead the Hearing Officer to conclude that there has been no use of the Trade Mark … as the registered [owner] did not exist.
Another approach requires examination of the evidence that the opponent has filed which it contends demonstrates the requisite use of the trade mark. However, that assumes the issue set out immediately above is resolved in the opponent’s favour. I will therefore first consider the question of the registered owner’s deregistration.
Deregistration of the registered owner
According to the correspondence on the Trade Marks Office file, legal title in the trade mark vested in the registered owner when it assumed the role of trustee of the Cenrin Unit Trust around the year 1993. The same documents indicate, unsurprisingly, that at that time the beneficiaries of the Cenrin Unit Trust owned the trade mark in equity. The change in legal title was recorded on the Register on 29 November 1993 and subsequently advertised in the Official Journal of Trade Marks on 16 December 1993. There is no information before me that could indicate that the registered owner subsequently alienated its legal title in the trade mark. It therefore appears that the registered owner retained legal title in the trade mark until 7 May 2008, the day it was deregistered.
The applicant annexed to its evidence in answer a number of documents sourced from the database of the Australian Securities and Investments Commission (‘ASIC’). Of particular relevance is a document titled ‘Current & Historical Company Extract’ (‘the extract’) for a company named A.C.N. 054 693 079 Pty Ltd. As its name suggests, the document contains ASIC’s record of the history of that company as at 7 May 2013. It shows that A.C.N. 054 693 079 Pty Ltd is a subsequent name of the registered owner. According to the document, the registered owner changed its name from Health 24 Pty Ltd to Macquarie Health Centres Pty Ltd on 10 March 1999, and once more to A.C.N. 054 693 079 Pty Ltd on 4 October 2001.
The same document shows that ASIC deregistered the registered owner on 7 May 2008. On that date, s 601AD of the Corporations Act 2001 (Cth) provided (relevantly):
601AD Effect of deregistration
Company ceases to exist
(1) A company ceases to exist on deregistration.
Note:Despite the deregistration, officers of the company may still be liable for things done before the company was deregistered.
Trust property vests in the Commonwealth
(1A)On deregistration, all property that the company held on trust immediately before deregistration vests in the Commonwealth. If property is vested in a liquidator on trust immediately before deregistration, that property vests in the Commonwealth. This subsection extends to property situated outside this jurisdiction.
Other company property vests in ASIC
(2)On deregistration, all the company’s property (other than any property held by the company on trust) vests in ASIC. If company property is vested in a liquidator (other than any company property vested in a liquidator on trust) immediately before deregistration, that property vests in ASIC. This subsection extends to property situated outside this jurisdiction.
Rights and powers in respect of property
(3)Under subsection (1A) or (2), the Commonwealth or ASIC takes only the same property rights that the company itself held. If the company held particular property subject to a security or other interest or claim, the Commonwealth or ASIC takes the property subject to that interest or claim.
Note:See also subsection 601AE(3)—which deals with liabilities that a law imposes on the property (particularly liabilities such as rates, taxes and other charges).
(3A)The Commonwealth has, subject to its obligations as trustee of the trust, all the powers of an owner over property vested in it under subsection (1A).
Note:Section 601AF confers additional powers on the Commonwealth to fulfil outstanding obligations of the deregistered company.
(4)ASIC has all the powers of an owner over property vested in it under subsection (2).
Note:Section 601AF confers additional powers on ASIC to fulfil outstanding obligations of the deregistered company.
…
There are no details of the Cenrin Unit Trust in evidence, so I do not have enough information to decide on which of s 601AD(1A) or s 601AD(2) of the Corporations Act 2001 (Cth) applied at the time, but it is not necessary to make such a finding. In both cases, from the date of deregistration the registered owner no longer held legal title in the trade mark. There are two reasons for this. First, upon deregistration the registered owner ceased to exist. A former entity cannot reasonably be said to hold property rights. Second, at the time it was deregistered, all of the registered owner’s former property (which, given my finding at para 19 above, would have included the trade mark) was transmitted either to the Commonwealth or ASIC.
I have reproduced below those parts of the opponent’s evidence that are potentially relevant to this issue. Dr Wenkart has declared:
(a) I am owner of the business HEALTH 24 PTY LTD.
(b) HEALTH 24 Pty Ltd is a subsidiary of MACQUARIE HEALTH CORPORATION (ABN. 32 003 531 860).
(c) …The business entity (ABN 98 054 693 079) registered using HEALTH 24 trademark name was still active between 20 April 2010 to 25 June 2010, this can be confirmed from the following ABR (Australia Business Register) search link: In the last 3 years, Health 24 has authorised the use of the trade mark…
Leaving to one side for the moment my findings above as to the existence of the registered owner, there appears to be a problem with statements (a) and (b) on their face. Dr Wenkart’s claim to own the registered owner strongly implies that he holds a controlling interest in that company. This position is mutually exclusive with the notion that the registered owner is a subsidiary of Macquarie Health Corporation Pty Ltd. If the latter were true, Macquarie Health Corporation Pty Ltd would hold the controlling interest in the registered owner, not Dr Wenkart. Rather than discount them entirely, I will read these two statements as broadly as possible, such that Dr Wenkart claims to hold a controlling interest of both of these companies, either directly or indirectly.
Turning back to the extract, it shows that prior to the registered owner’s deregistration there were two shares on issue. The shares were held in law by two individuals. The same document reveals that the shares were not beneficially held, so it is at least possible that Dr Wenkart owned those shares in equity. There is no other detail of this trust before me, so it is equally possible that Macquarie Health Group Pty Ltd (or indeed any person) owned one or both of those shares in equity. Dr Wenkart is not listed as a shareholder. He is recorded as a former director, his time on the board having ceased on 14 October 2002. This casts significant doubt on Dr Wenkert’s claim that he controls the registered owner. It is, however, not necessary to delve further into this point. All claims as to ownership of the registered owner by Dr Wenkart, Macquarie Health Corporation Pty Ltd, or anyone else are in my view without merit. The record shows that the registered owner is a company that has been deregistered, and the law states that a company ceases to exist on deregistration.[1] Evidence of a shareholding in a company that no longer exists is at very best evidence of former ownership of that company. I have found that statements (a) and (b), insofar as they relate to current ownership of the registered owner, are incorrect. No person has held any interest in the registered owner since it ceased to exist.
[1] Corporations Act 2001 (Cth) sub-s 601AD(1).
Statement (c) relates to the fact that an entry relating to an entity called A.C.N. 054 693 079 Pty Ltd (which, as explained at para 20 above, is a subsequent name of the registered owner) remained on the Australian Business Register for some time after it ceased to exist, extending into the relevant period.
A corporation is entitled to entry on the Australian Business Register if it is a ‘Corporations Act company’.[2] The registered owner ceased to be a ‘Corporations Act company’ on the day it was deregistered by ASIC. The legislative regime within which the Australian Business Register resides has placed the onus on the registrant to update the relevant authority as to any change in its entry.[3] Therefore, the only conclusion I can draw from the fact that the registered owner remained on the Australian Business Register under a different guise until 25 June 2010 – over two years after it had ceased to exist – is that there was a either a failure to notify the relevant authority in a timely manner, or a failure by the relevant authority to act on a notification that the registered owner had been deregistered. Unlike the company register maintained by ASIC, entry onto or removal from the Australian Business Register does not itself alter the status of a corporate entity behind the business name. I therefore find that the reference to the registered owner remaining on the Australian Business Register neither supports nor discounts the notion that the registered owner did not exist during the relevant period.
[2] A New Tax System (Australian Business Number) Act 1999 (Cth) sub-s 8(2).
[3] A New Tax System (Australian Business Number) Act 1999 (Cth) s 14.
Statement (d) asserts that the registered owner authorised the use of the trade mark during the relevant period. As I have established, the registered owner did not exist during the entire relevant period, so was not able to perform any act, let alone authorise use of the trade mark. If there is a flaw to that logic, and even if the registered owner somehow managed to purport to authorise use of the trade mark during the relevant period, such purported authorisation could have not been effective because the legal title in the trade mark had already been transmitted to the Commonwealth or ASIC on 7 May 2008.
An alternate reading of statement (d) is that the registered owner authorised use of the trade mark at some point prior to deregistration, and that the Commonwealth or ASIC took title in the trade mark subject to any licensing arrangement already in place. For present purposes, authorised use is taken to be use by the registered owner.[4] Authorised user and authorised use are defined in s 8 of the Act, reproduced below:
[4] Trade Marks Act 1995 (Cth) ss 7(3), 100.
8 Definitions of authorised user and authorised use
(1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3)If the owner of a trade mark exercises quality control over goods or services:
(a)dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
Subsections 8(3) and 8(4) deem particular instances of use of a trade mark in the context of the owner exercising quality control over goods and services or financial control over the trading activities of the licensee, to constitute use under the control of the owner. In order to constitute an authorised use, at least one of the examples before me that attempt to demonstrate trade mark use must have been ‘under the control of’ the owner. It is not enough that the registered owner may have once exercised some form of control over the licensee (though there is insufficient evidence to support even this proposition); the control must have been contemporaneous with the use of the trade mark. The opponent has not provided any detail or supporting documentation of its claim that the registered owner authorised use of the trade mark. At any rate, given its deregistration almost two years before the relevant period, any supposed authorisation given by the registered owner must have been ineffective. This is because, during the entire relevant period, legal ownership of the trade mark had vested either in the Commonwealth or in ASIC, and the registered owner did not exist. There also is nothing before me to indicate that Macquarie Health Corporation Pty Ltd or any other entity mentioned by either of the parties has used the trade mark during the relevant period under the quality, financial, or indeed any control of the Commonwealth or by ASIC (as the case may be). The requirement that an authorised use of the trade mark be under the control of the owner of that trade mark has not been satisfied. As a result, authorised use has not been established.
Thus, notwithstanding the opponent’s claim that the trade mark was used during the relevant period, such use could not have fallen within the meaning of the Act and the opponent cannot rely on it to rebut the allegation of non-use. I find that the ground for removal has been made out.
Discretion
Subsection 101(3) of the Act provides a broad discretion to not remove a trade mark from the Register even if a ground for removal is made out. Since I have found that the registered owner does not exist, exercising the discretion would serve no purpose.[5]
[5] Michael John Stafford v Automotive Distributors Limited [2015] ATMO 40, [40]-[41].
Decision and costs
I direct that trade mark 493448 be removed from the Register no earlier than one month from the date of this decision. If the Registrar is served with a notice of appeal of this decision before that time, I direct that removal shall not occur until the appeal has been decided or discontinued.
The applicant has requested its costs. The ordinary rule is that costs follow the event.[6] I have not been presented with a reason, nor do I see a reason, to depart from the normal course. Accordingly, I award costs against the opponent in accordance with the official scale.[7]
[6] Milne v Attorney-General (Tas) (1956) 95 CLR 460.
[7] Trade Marks Regulations 1995 (Cth), sch 8.
Adrian Richards
Hearing Officer
Trade Marks and Designs Group
20 October 2015
1
2
0