Compass Group Holdings plc v ESS Property Holdings Pty Ltd

[2023] ATMO 109

TRADE MARKS ACT 1995

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

Re:Opposition by Compass Group Holdings plc to application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) by ESS Property Holdings Pty Ltd for cessation of protection of Protected International Trade Mark number 975065 (International Registration number 810420) ESS Support Services Worldwide (figurative) – in classes 37, 43 and 45 in the name of Compass Group Holdings plc

Delegate:	Tracey Berger
Representation:	Opponent: S L Stewart of counsel instructed by Diane Beer of Thomson Geer Applicant: A L Sykes of counsel instructed by Marshalls & Dent Lawyers
Decision:	2023 ATMO 109 Trade Marks Act 1995 (Cth) – application under regulation 17A.48C of the Trade Marks Regulations 1995 (Cth) for the cessation of protection – authorised use of the trade mark established for a subset of services – discretion exercised for similar services - trade mark to remain protected

Background

1.     Compass Group Holdings plc (‘Opponent’) is the registered holder in Australia of the following trade mark (‘Trade Mark’):

Number:            975065 (IR 810420)

Trade Mark:     

Filing Date:       7 April 2003

Priority Date:     23 October 2002

Endorsement:    Colour Claimed: Pantone BLUE 295C, Pantone LIGHT GREY 6C; Parts Colour Claimed: Pantone BLUE 295C for the text, Pantone LIGHT GREY 6C for the orbit.

Specification:     Class 37:  Laundry services; linen cleaning, laundering and ironing services; cleaning of clothing; dry cleaning; cleaning of nappies and bedding; steam ironing and renovation of clothing; construction, repair, cleaning, maintenance and decoration of buildings; upkeep or cleaning of buildings, glass windows, windows, rooms, kitchens, premises and floors; rat exterminating; disinfecting; vehicle wash; rental of cleaning machines; cleaning, installing, maintenance and repair of vending machines

Class 43:Providing of food and drink in restaurants and fast food restaurant services; bars; cafeterias; coffee shops; canteens; snack-bar services; catering services; providing food and drinks; hotel services; rental of chairs, tables, table linen and glassware, kitchen apparatus, kitchens, kitchen installations, transportable constructions, temporary accommodation, meeting rooms, tents, bedding; services for providing solid and liquid foodstuffs by means of vending machines

Class 45:Nocturnal security services; civil protection; security consultancy; dress rental; anti-intrusion alarm surveillance

2. On 10 March 2021, ESS Property Holdings Pty Ltd (‘Applicant’) filed an application under reg 17A.48C of the Trade Marks Regulations 1995 (Cth)[1] seeking partial cessation of protection of the Trade Mark, pursuant to reg 17A.48D, with respect to the ground under s 92(4)(b) (‘Removal Application’) in relation to the class 45 services “nocturnal security services; civil protection; security consultancy; anti-intrusion alarm surveillance” (‘Relevant Services’).

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

3.     On 8 June 2021, the Opponent filed a Notice of Intention to Oppose the Removal Application followed by a Statement of Grounds and Particulars (‘SGPs’) on 7 July 2021.  The Applicant filed Notices of Intention to Defend the Removal Application on 30 July 2021.

4.     The Opponent filed evidence in support (‘EIS’) of its opposition to the Removal Application on 3 November 2021 .  The Applicant then filed evidence in answer (‘EIA’) on 8 February 2022 which was followed by the filing of the Opponent’s evidence in reply (‘EIR’) on 8 April 2022.

5.     Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing or file written submissions.  Both parties requested a hearing by written submissions and duly filed those submissions.  This matter has been allocated to me as a delegate of the Registrar of Trade Marks for decision based on the aforementioned materials.   

Relevant Provisions

6. Regulation 17A.48D provides that Part 9 of the Act applies to the cessation of protection of international trade marks with all references to the removal of a trade mark being taken as a reference to the cessation of protection of that trade mark. As such, in summarising the relevant provisions, all references below to the removal of a trade mark should be read as ‘cessation of protection of an international trade mark’.

7.     Section 92(4)(b) relevantly provides:

(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.

8.     An application under s 92(4)(b) with respect to the Trade Mark may not be made before a period of five years has passed from the filing date of the Trade Mark and I confirm that this period has elapsed.  

9.     Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 10 February 2021 (‘Relevant Period’). 

10.     Pursuant to s 100(1), the Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing, on the balance of probabilities,[2] that it has used the Trade Mark for the Relevant Services during the Relevant Period.

[2] Pfizer Products Inc. v Karam [2006] FCA 1663; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

11.     In Woolly Bull Enterprises Pty Ltd v Reynolds,[3]  Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.  Little weight is to be given to assertions of use which are not supported by documentary evidence.[4]  Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[5] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[6] 

[3] [2001] FCA 261, [16].

[4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate I. Forno).

[5] Ibid [17].

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

12.     Pursuant to s 7(5), ‘use of a trade mark in relation to services’ means use of the trade mark upon, or in physical or other relation to, the services.  Moreover, s9(1)(c) provides that:

(c)  a trade mark is taken also to be applied in relation to goods or services if it is used:

(i)  on a signboard or in an advertisement (including a televised advertisement); or

(ii)  in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used

As such, use of a trade mark in advertisements, invoices or other documents relating to services can be trade mark use for the purposes of s 7(5).[7] 

[7] Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 (Jacobs J); Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 (Aickin J).

13.     Section 7(3) provides that an authorised use of a trade mark by a person is use of the trade mark by the owner.  Section 8 states:

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).

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

15.     Furthermore, s 101(4) provides:

(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.

Evidence

16.     The following evidence was filed:

EIS

·Declaration of Alison Rebecca Yapp, Group General Counsel of Compass Group Plc and director  of the Opponent, made on 1 November 2021 with Exhibit ARY-1 (‘Yapp Declaration’); and

·Declaration of Brett Craig, Executive Director Business Development of Compass Group (Australia) Pty Ltd made on 1 November 2021 with Exhibit BC-1 (‘Craig 1’).

EIA

·Declaration of David Robbins, solicitor at KHQ Lawyers, made on 8 February 2022 with Annexures 1 and 2.

EIR

·Declaration of Brett Craig made on 8 April 2022 with Exhibit BC-2 (‘Craig 2’).

17.     The Opponent has claimed the entirety of its evidence as confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[8] 

[8] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer I. Thompson).

18.     If a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

Opponent’s evidence

19.     The Opponent is an international holding company that is part of a multi-national group of entities known as Compass Group (‘Compass Group’).  The Opponent holds the trade mark rights of a number of international brands of Compass Group, provides corporate support services to the Compass Group and enters into key global client and supplier contracts for the benefit of the group.   

20.     The Compass Group operates in about 45 countries providing food and support services across approximately 55, 000 locations in the following market sectors:

·Business & industry;

·Healthcare and seniors

·Education;

·Sports & leisure; and

·Defence, offshore and remote operations.

21.     The Opponent’s services are delivered under various brands, including ESS Support Services Worldwide (‘ESS Brand’) which are licensed for use by entities in the Compass Group and related businesses.  Ms Yapp declares that the Opponent exercises control over use of the Trade Mark through its franchise and licensing arrangements. 

22.     The ESS Brand, including the Trade Mark, is used for the Opponent’s food and support services provided to the defence, offshore and remote operations sector (‘Opponent’s Services’).  In Australia, the Opponent’s Services are delivered by Compass Group Australia Pty Ltd (‘CGAUS’) and its wholly owned subsidiaries, Compass Group Remote Hospitality Services Pty Ltd (‘CGRHS’) and Compass Group Defence Hospitality Services Pty Ltd (collectively these three companies are referred to as ‘Compass Australia’). 

23.     The corporate structure of the Compass Group is somewhat complicated but Compass Group Plc is the ultimate parent company of the Opponent which in turn is the ultimate parent company of Compass Group (Australia) Pty Ltd.

24.     From July 2017 until October 2020, Compass Australia provided the Opponent’s Services pursuant to a Franchise Agreement between CGAUS and the Opponent (‘Franchise Agreement’).  The Franchise Agreement provides that CGAUS’ Affiliates “shall be permitted and have the right to use and operate under the Proprietary Marks in the Territory during the term of this Agreement subject to compliance with the terms of the Agreement”.  The Trade Mark is a Proprietary Mark, the Territory is Australia and ‘Affiliates’ is defined as including any person, company or entity under the ‘control’ of CGAUS where ‘control’ means CGAUS, directly or indirectly, can “direct or cause the direction of the management and/or policies of such person, company or entity whether through the ownership of securities or other ownership interests, by control or otherwise”.  Pursuant to the Franchise Agreement, CGAUS’ obligations included:

·     to only use such letter headings and signs on display materials, promotional literature, equipment and other items in connection with carrying out the services under the Franchise Agreement as approved in writing by the Opponent; 

·     from time to time, allow representatives of the Opponent to enter premises operated by CGAUS to ensure compliance with the terms of the Franchise Agreement;

·     obey all of the Opponent’s instructions in connection with the Franchise Agreement or those set out in the Opponent’s Visual Identity Manual governing use of its brands;

·     from time to time, attend business review meetings with representatives of the Opponent; and

·     adhere to certain restrictions regarding the use of the ESS Brand and the Trade Mark, including not to render any services which do not conform to the standards set by the Opponent or are not approved by the Opponent.

25.     The Franchise Agreement was terminated on about 1 October 2020.  The Opponent and CGAUS then entered into a Brand Licence and Business Systems Agreement (‘Licence Agreement’) on 1 October 2020.  The Licence Agreement entitles CGAUS and its ‘Affiliates’[9] to use the Trade Mark governs CGAUS’ use of the ESS Brand and by extension the Trade Mark.

[9] ‘Affiliates’ has the same definition as under the Franchise Agreement, see [24] above.

26.     Pursuant to the Licence Agreement, CGAUS is required to use the Trade Mark in accordance with the Opponent’s Visual Identity Manual and:

a)Provide monthly reports to the Opponent in accordance with the Opponent’s management and performance framework;

b)Attend business review meetings with the Opponent;

c)Take such action in relation to the Trade Mark as directed by the Opponent; and

d)Adhere to the Opponent’s notification requirements regarding use and non-use of the Opponent’s brands.

27.     Under the Licence Agreement, the Opponent provides CGAUS with various strategic services such as legal advice, financial planning and analysis, internal audit services and tax support.

28.     Compass Australia has been offering the Opponent’s Services in Australia for over 20 years, employs over 10,000 people and currently delivers services under the Trade Mark in about 116 locations.  Confidential annual revenue figures for services provided under the ESS Brand from 2018 to 2021 are provided (‘ESS Revenue’).

29.     The Opponent’s Services are promoted on Compass Australia’s website at (‘Website’) and the evidence includes extracts of this Website which references the Opponent’s security services (‘Website extracts’).  The Trade Mark is also used on Compass Australia’s stationery, invoices, contract documents and capability statements (‘Corporate Use’).   Examples of use of the Trade Mark on invoices dated during the Relevant Period for ‘security services’ and ‘gatehouse services’ are provided in a redacted form in the EIS and with less redaction in the EIR to address the Applicant’s criticisms of these invoices (‘Security Invoices’).

30.     The EIR annexes a copy of a project proposal submitted by Compass Australia dated August 2018 (‘Proposal Example’) which Mr Craig declares is a typical example of how Compass Australia submits a tender to provide its package of services to operate and manage a remote location facility under the Trade Mark.  Mr Craig also explains how successful proposals are contracted by Compass Australia.

31.     In addition, Mr Craig notes the Applicant’s trade mark application numbers 2115929 ESS and

2115930  both for services in classes 37 and 45.  Mr Craig attests that if the Removal Application succeeds and the Applicant’s marks are registered, the Opponent will no longer be able to continue to offer its Relevant Services without infringing the Applicant’s marks. 

Applicant’s Evidence

1. The Applicant’s evidence acknowledges that the Opponent has used the Trade Mark for a range of services but disputes that the Trade Mark has been used in relation to the Relevant Services.  The Applicant contends that the Relevant Services are offered under the mark Omega Security and the logo (‘Omega Logo’).

2. The remainder of the Applicant’s evidence criticises the Opponent’s evidence.  In particular, the Opponent disputes that the Website extracts and Security Invoices demonstrate use of the Trade Mark for the Relevant Services.  The Applicant notes that the Website extracts referring to ‘security services’ do not feature the Trade Mark and the Security Invoices redact the customer details, amounts and description of the services and hence do not establish use of the Trade Mark for the Relevant Services.

1. In support of its contention that the Opponent has not used the Trade Mark for the Relevant Services, the Applicant refers to the below extract from the Website about the Opponent’s security services where the employees depicted as providing the services wear Omega uniforms.  The Applicant claims that the Trade Mark was only added to this page of the Website after the Applicant first contacted the Opponent.

Preliminary Comments on the evidence

1. The Applicant argues that the Proposal Example does not constitute evidence in reply but rather fresh evidence.  Accordingly, the Applicant submits that this evidence should not be considered because to do so “is a gross breach of procedural fairness” to the Applicant who has been denied natural justice in not having an opportunity to answer this part of the Opponent’s evidence.

2. The Applicant’s objection to the Proposal Example stems from the reference in the Proposal Example to the supply of security services by Omega Security Services Pty Ltd (‘Omega’), a wholly owned subsidiary of CGAUS.  The Applicant notes that Omega is not mentioned in the Opponent’s EIS.  However, it was the Applicant who raised the existence of Omega in its evidence in answer seeking to demonstrate that it is Omega not the Opponent who offers security services and that these services are not offered under the Trade Mark but rather under the marks Omega Security and Omega Logo.  In my view, the Opponent has sought to respond to this claim by providing an explanation in its evidence in reply as to how Compass Australia offers a package of support services from different companies within the Compass Group and the contractual arrangements that are put in place when a tender is successful.  The Proposal Example is provided by way of example of these arrangements. 

3. Given that the Proposal Example and the explanations of Mr Craig in Craig 2 respond to the Applicant’s allegations in its evidence in answer, I consider that the Proposal Example and explanations of Mr Craig properly constitute evidence in reply. 

4. The Applicant further argues that even if the Proposal Example is considered as evidence, it does not demonstrate use of the Trade Mark in relation to the Relevant Services and I will consider those arguments in the Discussion below.

   Discussion

5. The Opponent submits that it has rebutted the allegation of non-use because its evidence establishes use in good faith of the Trade Mark by an authorised user for the Relevant Services before, during and after the Relevant Period. 

6. The Opponent points to the following evidence as proving use of the Trade Mark in the Relevant Period for the Relevant Services:

   i)Website extracts evidencing the Opponent and Compass Australia’s efforts in developing a reputation in the Trade Mark including on the Website;

   ii)ESS Revenue;

   iii)Corporate Use including the Proposal Example; and

   iv)Security Invoices.

   40.     The Website extracts demonstrate that Compass Australia offers security services but these extracts do not feature the Trade Mark.  Hence the Website extracts do not establish use of the Trade Mark in relation to the Relevant Services.

   41.     In relation to the ESS Revenue, there is no breakdown or indication of the revenue that can be attributed to the provision of the Relevant Services.  Accordingly, I do not regard the ESS Revenue as establishing use for the Relevant Services. 

   42.     Other than the Proposal Example, there are no other examples of the Corporate Use in evidence.   The Proposal Example was prepared in response to an RFP request sent to Compass Australia.  CGRHS responded to that request with the Proposal Example branded on each page with the Trade Mark and outlining ESS’ plan to provide onsite personnel 24 hours a day, 7 days a week to administer a range of services to manage and operate the particular large-scale workers accommodation centres across three locations.  Each accommodation centre is referred to as a ‘Village’.  The services offered are wide ranging and include Village security; accommodation management; catering services; cleaning services including coordinating laundry, waste and recycling services; operation of tavern and retail facility; Village maintenance services including electrical, plumbing, painting etc; first aid services and transport services between the worksite and Village.  The security services offered in the Proposal Example include:

   ·     Taking all reasonable and preventive measures to avoid, trespass, fire, wilful damage and theft;

   ·     Attend all security related incidents in the Village and support in the completion of an investigation into such incidents;

   ·     Provide escorts to all female guests upon request;

   ·     Ensure compliance with requirements for fire prevention, emergency response, evacuation and occupational health and safety including the development of related procedures, plans and training programs;

   ·     Provision of a project specific security management plan to ensure the security of the Villages’ assets and people through access control, perimeter security, crowd control, incident and emergency response and bag screening.

   43.     The Proposal Example explains that the security services will be provided by Omega, “the wholly owned specialist Security Services provider of Compass Group (Australia) Pty Ltd…”. 

   44.     In Craig 2, Mr Craig explains that the Proposal Example is typical of how Compass Australia tenders for jobs under the Trade Mark by submitting a proposal to offer a package of services required to manage and operate a full-service remote location facility including various security services such that the customer associates the provision of all of the packaged services with the Trade Mark.  If successful, the customer then contracts with one of the Compass Australia entities for the provision of the package of services.  That Compass Australia entity is then contractually obligated to provide the chosen package of services including the Relevant Services and invoice the customer for those services which is done under the Trade Mark in the manner illustrated in the Security Invoices.  If the Relevant Services are part of the contracted package of services, the contracted Compass Australia entity subcontracts the supply of the security services to Omega.  Mr Craig declares that the Compass Australia entity could engage a third party provider of the Relevant Services but chooses to engage Omega for quality control reasons  The contracted Compass Australia entity remains responsible for overall security at the relevant facility.

   45.     The Applicant argues that the offer in the Proposal Example to have Omega provide security services is fatal to the Opponent’s case because it makes it clear that Omega trades as Omega not under the Trade Mark and that Omega is not an authorised user of the Trade Mark because it is not controlled by the Opponent or its licensee (CGAUS) and is not licenced to use the Trade Mark nor is there any evidence of common directorships.  Further, the mere display of a trade mark does not constitute use as a trade mark but rather there must be a subsequent trade of the services or intention to trade under the trade mark.[10]  I do not agree with these contentions.  I expect that when Omega is directly contracted by a client to provide security services that it does so under the marks Omega Security and Omega Logo.  However, when it is subcontracted to provide security services by a Compass Australia entity, I accept the Opponent’s explanation that the services are provided by Compass Australia under the Trade Mark.  Although Compass Australia makes it clear to customers that Omega is the entity which holds the necessary licence and will provide the Relevant Services, it is the Compass Australia entity who is liable to the customer (not the sub-contractor Omega) for the provision of the security services and any other services, which package of services is provided under the Trade Mark.  This is also evident from the fact that the customer is invoiced under the Trade Mark for all of the services provided including any security services as illustrated in the Security Invoices.  For completeness, I note that I regard Omega as a wholly owned subsidiary of CGAUS to be under the financial control of CGAUS and an ‘Affiliate’ as defined in both the Franchise Agreement and Licence Agreement who could use the Trade Mark in accordance with those Agreements in the provision of its security services.

   [10] Moorgate Tobacco Co Ltd v. Phillip Morris Ltd (1984) HCA 73; 156 CLR 414, 433–434 (Deane J).

   46.     Moreover, I regard CGRHS as an authorised user of the Trade Mark.  Whilst the Applicant has not argued this matter in relation to the Proposal Example, they have argued in relation to the Security Invoices that CGRHS is not an authorised user of the Trade Mark.  Given that the Proposal was submitted by CGRHS, it is appropriate to consider this issue now.

   47.     The Applicant argues that any use of the Trade Mark by CRHS is not authorised use of the Trade Mark as CRHS is not licenced to use the Trade Mark and is not under the control of CGAUS.  As evidenced by the ASIC extract for CRHS,[11] CRHS is a wholly owned subsidiary of CGAUS and hence CRHS is under the financial control of CGAUS.  Moreover, Mr Craig declares that CRHS, as a wholly owned subsidiary, reports to him.  The Applicant suggests that Mr Craig vaguely indicates that CRHS reports to him.  I do not find anything vague about Mr Craig’s assertion.  It is entirely normal for a wholly owned subsidiary to report to its parent company.  CRHS is clearly an ‘Affiliate’ of CGAUS within the defined term of the Franchise Agreement and Licence Agreement and is authorised to use the Trade Mark by virtue of those Agreements, without any separate licence, to use the Trade Mark.  Hence, I consider that any use of the Trade Mark by CRHS is use by the Opponent. 

   [11] Yapp Declaration, Exhibit ARY-1, p 48.

   48.      In my opinion, the Proposal Example constitutes an offer to provide services under the Trade Mark during the Relevant Period by an authorised user of the Trade Mark.  As the Applicant notes, an offer to supply goods or services is sufficient to constitute use of a mark.  In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd, the Full Court said:

   Whether the respondents used the US ANCHORAGE names as a trade mark in relation to the registered services does not depend on what services they may have previously provided in Australia. There will be trade mark use if the mark is used in or about the soliciting a supply of services. The presentation is a marketing document aimed at creating opportunities in which the second respondent might work with distressed companies in which it makes investments in the expectation that they may be ‘turned around’. This is clearly a use in relation to the registered services.[12]

   [12] [2018] FCAFC 6, [201] (Nicholas, Yates and Beach JJ).

   49.     In terms of the services being offered, I am satisfied that the Proposal Example constitutes an offer to supply “nocturnal security services” in that the security and other services offered are to be supplied 24 hours a day 7 days a week.  I am of the view that “civil protection” would be commonly understood as meaning services aimed at protecting people and property from human-made and natural disasters.[13]   Accordingly, I regard ‘civil protection’ as including the various emergency services detailed in the Proposal such as fire, evacuation, crowd control and bag screening. In my view, the Proposal also offers “security consulting” which involves advice on security requirements and recommends and designs security specifications.   The various services referred to in the proposal such as the provision of a project specific security management plan fall within this term. 

   [13] Wikipedia, def ‘civil defense’, online at 3 August 2023.

   50.     The Security Invoices are issued by CGAUS or CRHS.  Each of the invoices features the Trade Mark and the name of the relevant Compass Australia entity contracted to provide the services as shown below:

51.     The Applicant disputes that the Security Invoices establish use of the Trade Mark in Australia by the Opponent for the Relevant Services.  The Security Invoices list a variety of services including management, gatehouse, catering, bar, cleaning, accommodation, meals, labour and security services.  The Applicant argues that because the invoices use different terminology to the Class 45 specification that there is no use for the Relevant Services and suggests that the Security Invoices cannot be relied upon as they are marked ‘reprint’ which indicates that they are internal records and have customer details redacted so the Applicant cannot verify that the services were provided. 

52.     It is common for parties to a proceeding before this office to redact customer details.  I see no reason to doubt the veracity of the Security Invoices simply because the customer details are redacted in accordance with common practice and that the invoices have been reprinted from Compass Australia’s records.  Each has a different customer number and indicates a different suburb for the customer address.  Moreover, the third invoice dated 26 February 2018 refers to a specific project in the ‘Invoice Description’. 

53.     Further, it is not unusual for the description of services in an invoice not to use the specific wording of a specification.  The relevant question is whether the services described in the invoice fall within the wording of the Relevant Services.  The relevant invoiced services are ‘Labour-Gatehouse’, ‘Security Rate Adj” and “Security Services”.  Mr Craig declares in Craig 1 that these items cover all of the Relevant Services.  He further explains in Craig 2 the precise nature of the services provided.  For example, Mr Craig attests that ‘Gatehouse Services” cover the provision of personnel to manage perimeter security and control who is allowed in and out of the site.  It is difficult to imagine what the invoiced item “Labour-Gatehouse” could cover other than the provision of a gatehouse security service whereby personnel are situated at the gate of a facility or premises, such as the Village referred to in the Proposal Example, who is responsible for managing the entry and exit of persons through the gate or entry.  This clearly falls within the definition of “civil protection” services that ensure the safety of civilian life and property.  The items “Security Rate Adj” and “Security Services” are less obvious but clearly related to the provision of security.  Mr Craig attests that these items both relate to the provision of security guards and/or services on site.  In my view, security services are services provided to ensure the protection of people or property and hence would be ‘civil protection’ services.   

54.     On my assessment of the evidence, the Opponent has demonstrated use of the Trade Mark in the Relevant Period by an authorised user for “nocturnal security services; civil protection; security consultancy” (‘Used Services’).  I am not satisfied that the Opponent has demonstrated use in relation to “anti-intrusion alarm surveillance” (‘Unused Services’).

Discretion

55.     As noted above, under s 101(3), the Registrar has a discretion not to remove the trade mark even if the grounds on which the removal application were made have been established.  To exercise this discretion, I must be positively satisfied that it is reasonable to not remove the Trade Mark in respect of the Unused Services.[14]  The burden of persuasion in this regard falls on the Opponent.[15]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3): 

[14] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

[15] Ibid.

The following propositions are relevant to the exercise of this discretion: 

(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act. 

(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. … 

(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. … 

(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark. 

(5) The range of factors considered in the exercise of the discretion has included whether or not: 

(a) there has been abandonment of the mark; 

(b) the registered proprietor of the mark still has a residual reputation in the mark; 
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended; 
(d) the applicant for removal had entered the market in knowledge of the registered mark; 
(e) the registered proprietors were aware of the applicant’s sales under the mark; 

[16] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).

(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[16]

56.     In considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated: 

Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register”,[17] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme -- or, at least -- a predominant interest is the maintenance of the integrity of the Register.[18] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[19]

[17] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

[18] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40] (Gleeson CJ, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[19] [2008] FCA 934, [210] (emphasis in original).

57.     The Opponent attests that it has used the Trade Mark for a range of services for around 20 years.  The services offered include various security services such as access control and perimeter security and the provision of security guards.  It is not apparent whether Omega (and by extension the Opponent) provides alarm surveillance as part of its service offering, whether as a subcontractor or under its own brands, nor that they have an interest in doing so.  Whilst companies that provide alarms do not necessarily provide security guards, in my experience, companies that provide security guards often provide alarm surveillance services.  The Opponent points to the need for an entire remote facility to be secure and the statement in the Proposal that “Our strategy for the security of assets and people at the Village comprises of both the built environment and the provision of licenced security personnel”.  It is not apparent to me what this statement means and whether an alarm system would be part of the ‘built environment’ although it would seem highly likely that a camera or alarm system would be necessary to reduce the number of personnel needed to secure the perimeter of a Village or similar facility.  In any event, I am satisfied that the services for which the Opponent has demonstrated use of the Trade mark are similar to alarm monitoring and surveillance services.  As a result, the use of a similar mark for the Unused Services creates a distinct likelihood of confusion.  Therefore, I consider it inappropriate to remove the Trade Mark for the Unused Services. 

Decision

58.     The Opponent has rebutted the allegation of non-use in respect of trade mark registration 975065 by demonstrating authorised use of the Trade Mark for “Nocturnal security services; civil protection; security consultancy”.  In relation to “anti-intrusion alarm surveillance”, I exercise my discretion to retain the registration for those services.  Accordingly, the Trade Mark is to remain protected on the Register for all of the registered class 45 services.

59.     The Applicant has the right to appeal this decision. If the Registrar is served with a notice of appeal, the disposition of the Removal Applications shall be dealt with as the Court sees fit.

60.     Costs generally follow the event and as the Opponent has sought its costs, I award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
9 August 2023