Cordiant Communications Group Plc v Chordiant Software, Inc

[2002] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Cordiant Communications Group Plc to applications for removal by Chordiant Software, Inc of trade mark registrations 661447 (35) and 661448 (42) – CORDIANT – registered in the name of Cordiant Communications Group Plc.

Background

On 10 April 2001, Chordiant Software, Inc (‘Software’) of California in the United States of America, filed applications to remove trade mark registrations 661447 and 661448 of the word CORDIANT from the Register of Trade Marks.  The registrations are in Classes 35 and 42, respectively, of the International (Nice) Classification of Goods and Services and the services specified by the registrations are:

Advertising, market research, marketing studies, public relations, personnel recruitment, placement and management and business organisation, planning, information and management consultancy services; promotional services for the sale of goods and services

Commercial and packaging design, printing; photography; typesetting; computer programming; data base accessing

On 3 August 2001, the owner of the trade marks, Cordiant Communications Group Plc, (‘Communications’) of London, England, filed Notices of Opposition (‘the Notices’) to the removal of the registrations.

The grounds stated in the Notices, and argued at the subsequent hearing, are twofold:

The applicant [who I designate ‘Software’] is not a person aggrieved within the meaning of subsection 92(1) of the Trade Marks Act 1995; and

The trade mark has in fact been used by the registered owner in respect of the services covered by the registrations.

The parties have served and filed their evidence in support and evidence in answer.  The matters were heard by me, as a delegate of the Registrar of Trade Marks in Sydney on Friday 25 October 2002. David Kell of Counsel represented Communications; Trevor Stephens of Davies Collison Cave represented Software. 

The Evidence

The evidence served and filed by the parties concerning these matters comprises:

Declarant	Referred to as	Date Made	Exhibits
Evidence in Support
Ian John Elliot	Elliot	1 November 2001	IJE-1 to IJE-30
Evidence in Answer
Tyler Wall	Wall	30 January 2002	TW-1 to TW-2
Craig Raymond Douglas	Douglas	28 February 2002	CRD-1 to CRD-3
Evidence in Reply
Jennifer Bridge	Bridge	31 May 2002	JB1
Sarah Margaret Elliot	Elliot	30 May 2002	SME1 to SME7

The Owner

The evidence shows that Communications is the world’s ninth largest marketing communications group – the group has over 10,000 employees in more than 216 offices operating in 80 countries, including Australia.

There are a number of companies within Communications in Australia – these including George Patterson Pty Ltd, Zenith Media Pty Ltd, Bates Healthworld Pty Ltd CCG.XM, The Campaign Palace, The Media Palace, 141 Worldwide, Big Island International Pty Ltd, Blood Sweat & Tears Creative Communications Pty Ltd, Consensus Research Pty Ltd, Pathfinder Strategies Pty Ltd, Professional Public Relations Pty Ltd, Underline Design Group Pty Ltd, HMA George Patterson Pty Ltd, Ideaworks Pty Ltd and Marketforce Limited.  I will, if necessary, refer to all of these entities within Communications as ‘the Communications Group’ except where may be necessary to distinguish between them.

The Communications Group is primarily involved in most aspects of public relations, marketing and advertising in Australia.  The companies that comprise the Communications Group are all ultimately owned by Cordiant Communications Group Australia Pty Ltd,  (‘Communications Australia’) which in turn is owned by Communications.

Communications was formed in December 1997 on the demerger of Saatchi & Saatchi and Cordiant PLC.  Any use of the trade mark CORDIANT by either Saatchi & Saatchi or Cordiant PLC is not apparent in the evidence.  The question of use of the trade mark in Australia by Communications is one which logically comes after Software, the non-use applicant, establishes that it is a person aggrieved and I will therefore look at this question, if necessary, after considering the question of aggrievement.

The Applicant

Software is the applicant in Australia for a trade mark registration relevant to these proceedings.  Details of this application as it currently stands are:

Number:  743080
Convention Date: 11/03/1997 US 75/255,603
Goods:  Customer - to business telecommunications software for use

by call centres, computer network access, e-mail and fax for

customer support (in Class 9).

Trade Mark:                CHORDIANT

Registration 661448 in the name of Communications is currently cited as a prima facie bar to the registration of the above application.

In his evidence, Mr Wall, of Software, does not give any more details of the operations of his company, the nature of its operations, actual or planned, the precise nature of the goods or any brochures of such.  Nor does he state whether his company intends to use, or has used, its trade mark in Australia.  He does, however, say that his company is precluded from the benefits of registration and that there are risks attached to his company’s use of its trade mark in Australia because of the Communications registrations in respect of which removal is sought.  Mr Wall states that his company has obtained trade mark registrations in the USA, Canada and the European Union.

Reasons

Section 92 of the Act provides:

92  Application for removal of trade mark from Register etc.

(1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be 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 aggrieved 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:

(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)        to use the trade mark in Australia; or

(ii)       to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)      has not used the trade mark in Australia; or

(v)       has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(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:   For file see section 6.

(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.

It is a threshold requirement under section 92(1) that the person seeking removal of a trade mark from the register be a person aggrieved.  It is appropriate to discuss this issue before going on to consider whether Communications has used the trade marks.

Person Aggrieved

It is a reason for opposition to the application for the removal of the trade marks that Software is not a person aggrieved.  This topic was argued by David Kell at the hearing.  He submitted:

The claim by the Applicant to be a person aggrieved is based solely upon the Applicant not being able to obtain the benefits of the registration of its trade mark (being application no. 743080 (9) for “Chordiant”) and the risks attached to the Applicant’s use of that trade mark in Australia

In The Ritz Hotel Ltd v Charles of the Ritz (1988) 12 IPR 417 at 454 McLelland J referred to the expression “person aggrieved” as embracing “any person in respect of whom there is a reasonable possibility of his being appreciably disadvantaged in a legal or practical sense by … the trade mark remaining unremoved in respect of any goods [or services]…”.

However, the fact that a person has filed a trade mark application is, without more, insufficient to make them a person aggrieved: Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198 at 209 (Sackville J). Rather, there must be evidence from the Applicant that it has in fact or intends to use the trade mark.

Mr Stevens for Software, the removal applicant, also referred to the above words of McLelland J in Ritz, above, and submitted that:

Drummond, J. in Woolly Bull v Reynolds 51 IPR 149 referred to that same statement and added the following, at 151:

It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods.  Such a person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark he wishes to attack remaining on the register, though he might wish to traffick in marks as distinct from to trade in marked goods.

I am not satisfied that the evidence shows that Software, the removal applicant, is a person aggrieved.  The cases that follow on from Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198 show that the filing of an application, on its own, is not enough to demonstrate that a removal applicant is a person aggrieved. In Unilever Australia Limited v Karounos [2001] FCA 1132 at paragraph 34, Hill J summarised the principles in the following way:

The principles upon which the Court has determined whether a person is a "person aggrieved" within the meaning of the Act were stated by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-196 ("Ritz Hotel") and have been approved by Full Courts of this Court in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 113 and Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363. Relevantly, they may be expressed as follows:

(a) The expression "person aggrieved" has no special or technical meaning and is to be liberally construed.

(b) The expression includes any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the mark remaining on the Register.

(c) The question whether an applicant for relief is a "person aggrieved" cannot be divorced from the nature and extent of the relief claimed. A person must be aggrieved in relation to the category of goods and services in respect of which they are seeking to have the trade mark cancelled.

(d) The material time at which a person must be aggrieved is the date of application. That is, the date of the commencement of the proceedings in which the claim for that relief is made. 

Software seeks registration of its trade mark for “Customer - to business telecommunications software for use by call centres, computer network access, e-mail and fax for customer support”.  However, there is no statement in the evidence that Software actually makes or markets these goods, whether the trade mark is used on these goods, whether it is intended to be used on these goods, whether the goods bearing the trade mark have been or will be sold in Australia or whether legal action has been commenced or foreshadowed by the owner of the trade marks in respect of which removal is sought.

Mr Stevens referred me to the reasons of Hearing Officer Murray in her decision I Can't Believe It's Yogurt Ltd v Unilever PLC [2001] ATMO 127 (28 December 2001) as authority for the proposition that there is an onus on the owner of a trade mark to show that the removal applicant is not aggrieved; however, the Hearing Officer there made it clear that, until the hearing, the opponent had not challenged the removal applicant’s status in its evidence or notices of opposition.  Here Communications has challenged Software’s standing in its Notices (prior to Software serving and filing its evidence) and these are sufficient warnings that locus will be an issue that should be addressed by the applicant.

The removal applicant is, I consider, on the basis of the evidence before me, in the same situation as was the applicant in Gaines, above: it seeks to rely only on that fact that it has filed a trade mark application as establishing its status as a person aggrieved.  However, as Gaines and the subsequent cases demonstrate, this is not enough.

I am, therefore, not satisfied that Software is a person aggrieved and the application for removal of the trade mark must therefore fail.

Costs

Both parties have requested their costs, if successful.  Communications has been successful and I order that Software pay Communications costs at the official scale in the regulations.

Ian Thompson
Hearing Officer
Trade Mark Hearings

30 November 2002