Clifftop Retreats Pty Ltd v Clifftop At Hepburn Pty Ltd
[2025] ATMO 64
•25 March 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CLIFFTOP RETREATS PTY LTD to registration of trade mark application number 2304637 (class 43) – Clifftop- in the name of CLIFFTOP AT HEPBURN PTY LTD
Delegate:
Anne Makrigiorgos
Representation:
Opponent: Kerry Awerbuch of Thomson Geer
Applicant: Andrew Sykes of counsel instructed by Thomas Howell and Samuel Zhang of Harwood Andrews
Decision:
2025 ATMO 64
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed ss. 42(b), 58 and 62A – s 58 ground successful – registration refused.
Background
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by CLIFFTOP RETREATS PTY LTD (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2304637 (‘Application’)
Trade mark: Clifftop (‘Trade Mark’)
Applicant: CLIFFTOP AT HEPBURN PTY LTD (‘Applicant’)
Filing Date: 1 October 2022 (‘Relevant Date’)
Specification: Class 43: Rental of holiday accommodation (‘Applicant’s Services’)
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined and advertised as accepted for possible registration on 2 March 2023.
On 2 May 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 1 June 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 7 August 2023.
The Opponent filed Evidence in Support (‘EIS’) on 13 November 2023. The Applicant filed Evidence in Answer (‘EIA’) on 15 February 2024. The Opponent filed Evidence in Reply (‘EIR’) on 22 April 2024.
The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. As a delegate of the Registrar of Trade Marks (‘Delegate’), I heard this matter via video conference on 21 February 2025. Prior to the hearing, both parties filed a written summary of their submissions. At the hearing, Kerry Awerbuch of Thomson Geer (observed by Madeleine McMaster of Thomson Geer) appeared on behalf of the Opponent and Andrew Sykes of counsel instructed by Thomas Howell and Samuel Zhang of Harwood Andrews (observed by Michelle Dowdle, Zac Griffiths, and Shayla Gili of Harwood Andrews and David Penman, director of the Applicant) appeared on the Applicant’s behalf. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.
Grounds and onus
The SGP nominates grounds of opposition under ss 42(b), 58, 59, 60 and 62A. In the Opponent’s written submissions, the Opponent indicated it was not pursuing the ss 59 and 60 grounds of opposition. I therefore treat these grounds as abandoned.
The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
Evidence
The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
EIS
Kerry Lyn Awerbuch, partner (previously of Gadens and now of Thomson Geer), legal representatives of the Opponent (‘Awerbuch’)
13 November 2023
KA-1 to KA-5
Andrew John Cantlay Donaldson (‘AD’), director of the Opponent (‘Donaldson 1’)
11 November 2023
AD-1 to AD-63 including Confidential AD-6 to AD-7, AD-11 to AD-18, AD-22 to AD-53
EIA
David Penman (‘DP’), director of the Applicant (‘Penman 1’)
15 February 2024
DP-1 to DP-49 including Confidential DP-03, DP-07, DP-09, DP-10, DP-12 to DP-13, DP-16 to DP-18, DP-20 to DP-21, DP-33 to DP-37, DP-39
Manuela Penman (‘MP’), director of the Applicant (‘M Penman’)
15 February 2024
Julian Smith, solicitor at Maddocks, previous legal representatives of the Opponent (‘Smith’)
15 February 2024
EIR
Andrew John Cantlay Donaldson (‘Donaldson 2’)
22 April 2024
AD-64 to AD-68 including Confidential AD-66 to AD-68
Madeleine Rose McMaster, special counsel at Thomson Geer (‘McMaster’)
19 April 2024
MM-1 to MM-13
Helen Daftner (‘HD’), director of Zeremm Pty Ltd (‘Daftner’)
18 April 2024
HD-1 to HD-17 including Confidential HD-8, HD-14 and HD-15
Wade Kilborn Keenan (‘WK’), director of the Opponent
22 April 2024
WK-1 to WK-15 including Confidential WK-3 to WK-15
The Parties
Opponent
The Opponent is Clifftop Retreats Pty Ltd of which AD, WK and DP were the founding directors at its incorporation on 25 March 2021. AD and WK remain directors of the Opponent. DP resigned as a director on 18 March 2024.
Applicant
The Applicant is Clifftop at Hepburn Pty Ltd of which DP and MP, who are husband and wife, are the founding directors at its date of incorporation on 14 May 2015. DP is also company secretary. The Applicant provides a luxury accommodation business in Hepburn, Victoria and has done so since 2016 under the name Clifftop at Hepburn (‘Applicant’s Business’).
Overview of the evidence
Much of the evidence contained in Donaldson 1, Penman 1, Keenan and Donaldson 2, refers to confidential emails and discussions held between one or more of AD, WK and DP which began in late 2020 concerning the formation of a joint venture (‘JV’) to establish a luxury accommodation business (‘Clifftop Retreats Business’), providing luxury accommodation, holiday rentals, and booking services (‘Opponent’s Services’).
Where relevant, I will refer to the contents of these declarations throughout this decision bearing in mind the confidentiality of some of their contents.
In essence, the contents of Penman 1 and M Penman do not agree with many of the claims made in Donaldson 1, Keenan and Donaldson 2, in particular, in respect of:
·the first user of the Trade Mark;
·the ownership of the trade marks to be used by the Clifftop Retreats Business including the Trade Mark, and the trade mark ‘Clifftop Retreats’ (‘Clifftop Trade Marks’);
·whether the conduct of DP demonstrated that the Clifftop Trade Marks were for the benefit of the Clifftop Retreats Business;
·whether the Clifftop Trade Marks used by the Clifftop Retreats Business were assigned by DP or the Applicant to the Opponent; and
·whether DP was CEO of the Opponent in addition to a shareholder and advisor.
Brief summary of evidence
EIS
Donaldson 1
Donaldson 1 also exhibits a number of confidential emails between WK and Daniel Callan (‘DC’), a branding advisor, concerning the development of the brand identity and brand positioning and confidential capabilities statements (also referred to as an ‘Information Memorandum’) for the Clifftop Retreats Business.
Awerbuch
Ms Awerbuch conducted searches of various websites which revealed that The Penman Family Investments Pty Ltd (‘Penman Family’) owns the land upon which the Applicant’s Business operates.
EIA
Penman 1
Penman 1 provides evidence regarding the use of the Trade Mark including sales and revenue figures and advertising, marketing and promotional activities since 2015 such as registration of the domain names clifftopathepburn.com.au and clifftopathepburn.com and Wayback Machine printouts of the Applicant’s website at from 2017 to 2021.
EIR
McMaster
McMaster exhibits extracts of internet searches which reference Cliff Top accommodation in Phillip Island between 2003 to 2020.
Daftner
Daftner makes reference to the company Zeremm Pty Ltd (‘Zeremm’) of which HD and Rachel Daftner were directors from 14 February 2012. Rachel Daftner ceased to be a director on 21 November 2022. Daftner exhibits details of Zeremm from the Australian Securities & Investments Commission Register (‘ASIC’).
Daftner claims that in May 2012, HD commenced managing an accommodation, hospitality and events business (‘CBA Accommodation’) owned by Zeremm called Clifftop Boutique Accommodation.
Daftner details the purchase of the Clifftop Boutique Accommodation business (‘CBA Business’) from Bratin Enterprises Pty Ltd under a Sale of Business Contract dated 14 May 2012 (‘Contract’), exhibiting a copy of the Contract.[5] All plant, equipment and chattels were included in the sale assets as well as the registered business name Clifftop Boutique Accommodation (‘CBA Business Name’) and the domain name (‘CBA Domain’). Daftner claims that Zeremm operated the CBA Business from 14 May 2012 until May 2022 under the Trade Mark and the mark Clifftop Boutique Accommodation (‘CBA Trade Marks’).
[5] As outlined in Daftner [14] to [17], prior to Bratin Enterprises Pty Ltd, there were two owners of the CBA Business operating by reference to the Trade Mark or a very similar name namely Annie and Geoff Crawford from approximately 2003 to 2006 and Clifftop Boutique Accommodation Pty Ltd from approximately October 2006 to March 2010. I note the Contract was signed by HD and Rachel Daftner as directors.
Daftner states that Zeremm assumed the obligations of the tenant under a lease (‘Lease’) for the premises from which the CBA Business operated in Marlin Street, Smiths Beach (‘Premises’) from the landlords Bryan Joseph and Mary Therese Cain (the ‘Cains’). The Lease was extended to November 2021, but the Cains did not agree to extend the Lease any further. In light of this, together with the effects of the COVID-19 pandemic on the CBA Business, Zeremm formed the view that it did not make commercial sense to continue to operate the CBA Business from the Premises and decided to cease trading at the Premises in May 2022.[6] Zeremm states that when the lease ended, Zeremm retained the CBA Business and remained open to new opportunities to operate the CBA Business at a new location.
[6] Clauses 10.1 and 10.1.1 of the Contract state ‘If the tenant remains in possession of the premises without objection by the landlord after the end of the term, the tenant without the need for written notice at any time, is a monthly tenant on the conditions in this lease, modified so as to apply to a monthly tenancy.’
Daftner declares that Zeremm has continued to use the CBA Domain for emails and continues to be the owner of the CBA Business Name.
Daftner provides examples of use of the Trade Mark for the CBA Business dated between 2012 and 2023 such as business cards, the web site at the CBA Domain (‘CBA Website’), architectural plans, payment plans, social media accounts on Instagram and Facebook at the handles‘@clifftopphillipisland’, third party publications, event packages, menus and wine lists, packages, promotional documents and gross rate documents for 2022/2023. Daftner attests that the social media accounts are no longer in operation.
Daftner claims that one of the primary methods of promotion of the CBA Business is through third party booking websites such as Booking.com, Hotels Combined, Trip.com, Kayak, TripAdvisor, Google Hotels, Wotif and Agoda amongst others and exhibits printouts from these booking websites. I note that many printouts contain customer reviews for example:
Hotels Combined:
TripAdvisor:
.
Daftner claims that another primary method of promotion of the CBA Business for wedding related events is through third party websites such as Easy Weddings and Wedding Hero and exhibits printouts these websites dated in April 2024. I note the Easy Weddings printout contains a customer review in February 2022 which refers to ‘Clifftop Philip Island’, the review stating:
.[7]
[7] Helen, Rachel and Sam are mentioned in many other reviews of the CBA Business over the years on third party booking and wedding websites as hosts, staff or owners. Penman 2 [6.1] also makes reference to calling the CBA Business and speaking to Sam.
Daftner provides a confidential table of the revenue from the CBA Business from financial year (‘FY’) 2012 - 2013 to FY2021 - 2022 and a confidential table of marketing expenditure for the CBA Business from FY2012-13 to FY2021 - 2022.
Preliminary Matter
On 2 May 2024, the Applicant objected to Daftner being outside the scope of the particulars of the s 58 ground in the SGP as the particulars only stated that the Opponent first used the Trade Mark in Australia in relation to accommodation, health spa services and rental of holiday accommodation and Daftner claims that an entity other than the Opponent namely, Zeremm was the first user of the Trade Mark in Australia. The Applicant claimed it was procedurally unfair, unjust and prejudicial for the Opponent to submit evidence that was not outlined in the SGP and to introduce new particulars at such a late stage of proceedings as this did not allow the Applicant an opportunity to counter such evidence.
The Applicant then requested a direction from the Registrar that it will:
·remove the Declaration from the Opponent’s Evidence in Reply and not consider Daftner in the Opposition;
OR in the alternative
·the Opponent amends its SGP; and after amendment, the Applicant can file further evidence in answer.
In reply, another delegate of the Registrar stated that she had no intention of making any directions and allowed the Opponent the opportunity to provide written comment in relation to the Applicant’s 2 May 2024 letter. In this regard the Opponent had no comments other than that if the Registrar’s position changed in relation to the directions request, the Opponent seeks the opportunity to provide a substantive response before a decision is finalised.
On 29 August 2024, the Applicant again objected that Daftner was outside the scope of the particulars of the s 58 ground in the SGP and therefore procedurally unfair and if Daftner was to be considered in the opposition hearing, it was only reasonable that the Applicant be given an opportunity to respond to Daftner and submitted the following declarations, seeking their consideration under reg 21.15(4):
·Declaration of David Penman dated 29 August 2024 together with Exhibits DP-01 to DP-06 (‘Penman 2’); and
·Declaration of Thomas Edward Howell, solicitor of the Applicant, dated 29 August 2024 together with Exhibits TH-01 to TH-08A, TH-09, TH-09A, TH-10, TH-10A, TH-11 to TH-15, TH-15A, TH-016, TH-17, TH-17A, TH-17B, TH-18 to TH-26, TH-26A, TH-27 to TH-30 (‘Howell’).
On 23 January 2025, the Opponent requested that the particulars in the SGP under section 58 be amended under reg 5.12(1)(d) as follows:
The Opponent and/or Clifftop Holdings Pty Ltd ACN 006 881 214 (formerly Zeremm Pty Ltd) (including its predecessors in title) first used the CLIFFTOP trade mark (and versions of the CLIFFTOP trade mark which are substantially identical) (Clifftop Trade Marks) in Australia before the priority date of the opposed application and that each of the aforementioned users has continued its use of the Clifftop Trade Marks since that time in relation to at least the following services:
Accommodation services; health spa services; rental of holiday accommodation.
I provided a copy of the amendment request to the Applicant and advised that I intended to grant the amendment. I also advised both parties that I intended to make the following direction for which I also sought both parties’ comments:
·I admit both Penman 2 and Howell under reg 21.15(4) only in so far as their contents are in response to the claims made in Daftner and therefore only in so far as they relate to the alleged ownership by Clifftop Holdings Pty Ltd (formerly Zeremm Pty Ltd) including its predecessors in title; and
·To avoid any uncertainly, I confirmed to the parties that all and any contents of Howell and Penman 2 which are in response to McMaster, Donaldson 2 or Keenan would not be considered.
On 31 January 2025, the Applicant advised that:
·it objected to the Opponent’s amendment request to the SGP, claiming it was not an amendment under reg 5.12(1)(d) but rather an amendment under reg 5.12(1)(b); and
·if the amendment to the SGP is allowed, then the Applicant does not object to the Registrar only considering the Howell and Penman 2 declarations so far as they relate only to responding to the claims made in Dafner.
On 3 February 2025 I advised both the Opponent and the Applicant that I was:
·granting the amendment to the SGP. I also provided the Applicant with my reasons for granting the amendment.
·directing that the Applicant’s late filed evidence comprising the Penman 2 and Howell declarations be admitted under reg 21.15(4) only in so far as their contents are in response to the claims made in Dafner and therefore only in so far as they relate to the alleged ownership by Clifftop Holdings Pty Ltd (formerly Zeremm Pty Ltd) including its predecessors in title. To avoid any uncertainly, all and any contents of Howell and Penman 2 which are in response to the of McMaster, Donaldson 2 and Keenan declarations, filed as evidence in reply, would not be considered.
Brief summary of late evidence
Penman 2
Penman 2 claims that DP telephoned the CBA Business on 31 December 2020 and spoke to a person called ‘Sam’. In that call DP mentioned his interest in purchasing the CBA Business. This was followed up by emails on 31 December 2020 and 1 January 2021. Penman 2 claims that on 2 January 2021, HD replied to these emails by stating that they (the shareholders) were open to selling the CBA Business.
Penman 2 claims that around January 2021 he recalls conducting a search on Google for ‘clifftop.com.au’ which returned the error ‘403 Forbidden’ and a search for ‘Clifftop Boutique Accommodation’ showed that the CBA Business was ‘Permanently Closed’. Penman 2 also claims that the same search in July 2023 and June 2024 shows that it remained ‘Permanently Closed’.
Howell
Howell provides the results of a number of searches and enquiries made of the CBA Business exhibiting the results of the same including:
·Wayback Machine searches for the CBA Website exhibiting screenshots of captures for each of the different dates between 2002 to 2024. Howell claims that results from 14 March 2021 to April 2024 state ‘403 Forbidden’, however, there is only documentary evidence from the Wayback Machine that the CBA Website had the ‘403 Forbidden’ message in March 2021.
·Facebook searches for:
Ø‘Clifftop Boutique Accommodation’. The result did not show the CBA Business.
Ø‘clifftop phillip island’ showed pages for ‘Clifftop, Phillip Island’ and ‘Clifftop Accommodations, Smith Beach. Phillip Island’. The links showed no visible posts or usage.
·Google searches for the term ‘Facebook @clifftop phillip island’ and Instagram searches for ‘#clifftopphillipisland’, exhibiting screenshots of the results showing there is no content or pages available. There is no indication in this evidence as to when Zeremm’s Facebook and Instagram pages ceased to operate.
Howell also exhibits the results of internet searches regarding the address of the Premises, one of which refers to ‘Marlin Beach Front Accommodation’ (‘MBFA’). Howell also conducted internet searches for MBFA which show website and social media screenshots dated between 23 August 2022 and 11 December 2022.
Discussion
Section 58
Section 58 provides as follows:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
The Act provides for registration of ownership and not ownership by registration.[8] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[9] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[10]
[8]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[9] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
[10] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[11] which in this case is 1 October 2022.
[11] Ibid [14].
The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[12]
[12] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
Once ownership in a trade mark is established it can be transferred to a subsequent owner, or lost, by operation of the general law.
It is the Opponent who bears the evidential onus of establishing that the Applicant was not the owner of the Trade Mark at the Relevant Date. To achieve this, the following requirements must be satisfied:
·the trade mark(s) relied upon by the Opponent are at least substantially identical to the Trade Mark [13] (‘First Requirement’);
·the services claimed by the Trade Mark are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent have been used[14] (‘Second Requirement’); and
·a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any actual use of the Trade Mark[15] (‘Third Requirement’).
[13] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[14] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).
[15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The amended SGP provides:
The Opponent and/or Clifftop Holdings Pty Ltd ACN 006 881 214 (formerly Zeremm Pty Ltd) (including its predecessors in title) first used the CLIFFTOP trade mark (and versions of the CLIFFTOP trade mark which are substantially identical) (Clifftop Trade Marks) in Australia before the priority date of the opposed application and that each of the aforementioned users has continued its use of the Clifftop Trade Marks since that time in relation to at least the following services:
Accommodation services; health spa services; rental of holiday accommodation.
The Opponent submits that the first user of the Trade Mark was Zeremm[16] and Zeremm’s use predates any use by the Applicant.
[16] Noting that Zeremm’s title to first user is through predecessors in title, I propose to only refer to Zeremm for the remainder of this decision.
The Applicant accepts in its submissions that Zeremm used the Trade Mark prior to the Applicant’s first use for the Applicant’s Services and on the evidence, I agree with the Applicant. I am satisfied that the trade marks in comparison are substantially identical, and the services offered under each form of short term accommodation are the ‘same kind of thing’. However, the Applicant goes on to submit that while Zeremm first used the Trade Mark, Zeremm went out of business and abandoned its pre-existing rights in the Trade Mark well before the Relevant Date, thereby rendering this past use irrelevant under s 58. Further, the Applicant submits that when Zeremm gave up the Lease to the Premises, it lost any associated goodwill in the Trade Mark, relying on the Full Court decision in Kraft Foods Group Brands LLC v. Bega Cheese Ltd.[17]
[17] [2020] FCAFC 65, [128] (Foster, Moshinsky and O'Bryan JJ).
I am required to decide whether I am satisfied that Zeremm abandoned its pre-existing rights in the Trade Mark before the Relevant Date. If the answer is no, then Zeremm remains the owner of the Trade Mark. If the answer is yes, then I am required to then consider whether the Applicant or any other party is the owner of the Trade Mark.
As this has been asserted by the Applicant, the Applicant bears the evidentiary onus to satisfy me on the balance of probabilities that Zeremm abandoned the Trade Mark.
Abandonment of property is effective it if can be objectively shown the former owner of that property has executed some act of abandonment, while having an intention to abandon. These are questions of fact and should not be inferred from mere non-use (or slightness of use) of a trade mark.[18] The former owner must have held a positive intention to abandon and a mere intention not to abandon is not enough to give rise to abandonment.[19] Further, inferences as to fact (concerning an intention to abandon) might be capable of being drawn from primary facts of the particular case, in relation to which the length of the period of non-use is a relevant matter.[20]
[18] Mouson & Co v Boehm (1884) 26 Ch D 398 (Chitty J); King Par, LLC v Brosnan Golf Pty Ltd [2014] FCA 795,[188] (Greenwood J).
[19] Ibid.
[20] Settef SpA v RivOland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (McGarvie J); see also Hemmes Trading Pty Ltd v Establishment 203 Pty Ltd [2024] FCA 1100 (Jackman J).
In Riv-Oland Marble Company (Vic) Pty Ltd v Settef SpA, Bowen CJ stated:
Counsel for the Marble Co did argue that Settef had abandoned its trade mark through dis-use ...However, in my opinion, to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost.[21]
[21] [1988] FCA 344, [8]-[9].
Justice Burchett observed in Marcus v Sabra International Pty Ltd:[22]
The question of abandonment requires separate consideration. It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use.
[22] (1995) 30 IPR 261, 267; [1995] FCA 35.
The Applicant submits that Zeremm did abandon the Trade Mark prior to the Relevant Date referring to the following evidence to support this submission:
·The lease for the CBA Business expired on 11 November 2021;
·A recollection by DP that a search on Google in January 2021 for ‘Clifftop Boutique Accommodation’ indicated that the CBA Business was ‘Permanently Closed’ and a repeat of the search in July 2023 and June 2024 showed the same result,[23] indicating that some time prior to early 2021 a person, seemingly acting on Zeremm’s behalf, notified Google that the CBA Business was permanently closed;
·At some time prior to 14 March 2021, Zeremm took the positive step to cease publishing the CBA Website as the website showed as ‘403 Forbidden’;[24]
·Social media accounts for the CBA Business indicate that all online activity had ceased by early 2021;[25]
·Dafner provides no documentary support such as customer invoices, booking receipts or the like demonstrating the CBA Business was operating until May 2022; and
·DP’s email to HD stating ‘I noticed you have ceased trading your lovely accommodation on Phillip Island and wanted to let you know that I would be interested in buying the clifftop.com.au domain for …’ and HD not refuting DP’s assumption in relation to the CBA Business having ceased trading.
[23] Penman 2 [6.8] Exhibit DP-05.
[24] Howell [6.1] Exhibit TH-02 and Penman 2 [6.7] Exhibit DP-04.
[25] Howell [7.1] to [7.3]
The Opponent claims that Zeremm did not abandon the Trade Mark and had no intention to do so. The Opponent also claims that you cannot infer an intention to abandon from mere inaction.
The Opponent refers to the following evidence in Daftner to support the Opponent’s claims:
·Zeremm was open to new opportunities for the CBA Business;[26]
·Zeremm maintains the CBA Business Name and CBA Domain;[27]
·Zeremm has continued to use the CBA Domain for emails;[28]
·Reference to Clifftop in a 2023 article on the Australian Traveller website;[29]
·Third party booking websites still displaying the CBA Business in 2024;[30]
·Guest reviews dated in 2022 on third party and wedding booking websites;[31] and
·Sales revenue and advertising expenditure for many financial years including 2021/2022.[32]
[26] Daftner [13].
[27] Ibid.
[28] Ibid.
[29] Ibid [22] Exhibit HD-9.
[30] Ibid [23] Exhibit HD-10.
[31] Ibid.
[32] Ibid [28] Confidential Exhibit HD-4.
In respect of the Applicant’s submission that when Zeremm gave up the Lease to the Premises, it lost any associated goodwill in the Trade Mark, I disagree. The Lease was for the Premises where the CBA Business operated. The lessor owned the Premises and not the business which operated at the Premises. The goodwill in the Trade Mark was attached to the CBA Business and not the Lease. The CBA Business could certainly operate from any other premises. The goodwill in the Trade Mark was owned by the CBA Business which at the Relevant Date, was owned by Zeremm.
The Applicant relies on the expiration of the Lease for the CBA Business on 11 November 2021 as evidence to support abandonment. Firstly, the expiration of the Lease alone gives no indication as to Zeremm’s intentions with the Trade Mark. Secondly, it appears that while the Lease expired, the CBA Business still operated until at least April 2022, when the last review was posted on Hotels Combined or until May 2022 when Daftner claimed the CBA Business ceased trading at the Premises. The CBA Business operating after the Lease expired is unsurprising as the CBA Business would have received bookings before the Lease expired for dates occurring after the Lease expired and even though the Lease expired, would honour such bookings. This continued operation of the CBA Business after the Lease expired is also consistent with Zeremm remaining in possession of the Premises on a month-to-month basis without objection by the landlord after the end of the term of the Lease.[33]
[33] Clauses 10.1 and 10.1.1. See Footnote 6.
The Applicant also submits that Dafner provides no documentary support such as customer invoices, booking receipts or the like demonstrating the CBA Business was operating until May 2022. I find sufficient support that the CBA Business was operating until May 2022 in HD’s claim that the CBA Business continued until May 2022, the guest reviews in 2022 together with the sales revenue and advertising expenditure in Daftner for the financial year 2021/2022.
The Applicant submits that Zeremm’s social media accounts indicate that all online activity of these accounts ceased by early 2021 but I do not find the Applicant’s supporting evidence convincing. There is no indication in the Applicant’s evidence as to when Zeremm’s Facebook and Instagram pages ceased to operate. Daftner claims the Facebook and Instagram accounts were no longer operational but no date was provided by Daftner. The Applicant’s evidence regarding Zeremm’s social media presence does not support an inference that Zeremm had abandoned the Trade Mark.
The Applicant also submits that at some time prior to 14 March 2021, Zeremm took the positive step to cease publishing the CBA Website as the website showed ‘403 Forbidden’. I understand that ‘403 Forbidden’ indicates that the website’s server is denying access to a requested page, as the website owner has set restrictions preventing access to the content on that page. It does not however mean the website does not exist or is not active. While the Applicant claims that the ‘403 Forbidden’ message existed up to June 2024, there is only documentary evidence from the Wayback Machine[34] that the CBA Website had the ‘403 Forbidden’ message on 14 March 2021. There is no documentary evidence that the server continued to deny access before or after 14 March 2021. Further, given that the CBA Business was still continuing at the Premises until May 2022, even if Zeremm took the positive step to permanently cease access to the CBA Website, the CBA Business could still be booked online though a number of third party online booking sites.
[34] Howell [6.1] Exhibit TH-02 and Penman 2 [6.7] Exhibit DP-04.
There is also no documentary evidence that DP conducted a search on Google in early 2021 which indicated that the CBA Business was ‘Permanently Closed’. The one documentary example of a Google search which showed that the CBA Business was ‘Permanently Closed’ was on 18 June 2024, well after the Relevant Date. Further, I do not consider that this one example supports the Applicant’s claim that a person, seemingly acting on Zeremm’s behalf, notified Google that the CBA Business was ‘Permanently Closed’. It is my understanding that a business can update its Google Business Profile to display a business as ‘Permanently Closed’ on Google Maps and Search. I also understand that this can also occur if someone else reports a location as closed through Google’s ‘Suggest an Edit’ feature. In my view, there is insufficient evidence to conclude that Zeremm, or a person acting on behalf of Zeremm, notified Google that the CBA Business was ‘Permanently Closed’ nor to conclude that the CBA Business was ‘Permanently Closed’ on Google before the Relevant Date.
I give no weight to the submission regarding DP’s email to HD stating ‘I noticed you have ceased trading your lovely accommodation on Phillip Island and wanted to let you know that I would be interested in buying the clifftop.com.au domain for …’ and HD not refuting DP’s assumption in relation to the CBA Business having ceased trading. Silence does not turn DP’s words into fact. The Applicant’s evidence does not include evidence that HD ever uttered or wrote the words ‘the CBA Business has ceased trading’ or words to that effect to any person.
Daftner provides confidential documents showing gross rates for the CBA Business for the years 1 March 2020 to 30 April 2022 and 1 March 2022 to 30 April 2023 together with evidence of their creation dates in November 2020 and 13 October 2021 respectively. In my view, these documents support an inference that at the dates of their creation, Zeremm intended the CBA Business to continue into 2022 and 2023 and therefore for use of the Trade Mark to continue.
As to the guest reviews dated in 2022 on third party and wedding booking websites, the Applicant submits that these reviews cannot be tested. While doing so would likely have presented certain difficulties, it was for the Applicant to test these reviews. In my view, there is no reason to suggest that a guest would post a review well after their stay at the CBA Accommodation. I also note that the latest of these guest reviews in 2022 was a review in April 2022, which stated:
. The reference to may be closing down soon in this review is consistent with the claim in Daftner that Zeremm ceased trading at the Premises in May 2022.[35]
[35] Daftner [11].
Daftner claims that Zeremm was open to new opportunities for the CBA Business after it ceased trading at the Premises in May 2022. The period between ceasing use in May 2022 (assuming the date was 1 May) and the Relevant Date is no more than 6 months. Even if there was a gap in the use of the Trade Mark of 6 months by Zeremm, abandonment is not inferred from mere non-use or slightness of use. The Applicant has not provided any evidence to counter Zeremm’s claim that Zeremm was open to new opportunities for the CBA Business after it ceased trading and, in light of the evidence in Daftner and the short period of 6 months, I accept Ms Daftner’s statement and its implication that Zeremm did not abandon the Trade Mark.
The Applicant has claimed a number of supposed acts of Zeremm’s intention to abandon the Trade Mark, however I am not satisfied that any inferences can be drawn from these acts sufficient to indicate an intention to abandon so as to result in the right to proprietorship of the Trade Mark being lost. I find there is an insufficient basis on which it could be inferred that by any of those acts, individually or in any combination, Zeremm effectively abandoned the Trade Mark before the Relevant Date. Therefore, on the balance of probabilities, I am satisfied that at the Relevant Date the Applicant was not the owner of the Trade Mark and that the Opponent has established the ground of opposition under s 58.
Having found the s 58 ground of opposition established, it is unnecessary that the remaining grounds be considered
Decision
Section 55 relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has established on the balance of probabilities the ground of opposition under s 58. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 March 2025
0
14
0