David Strybosch v Mylife.com, Inc

[2015] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by David Strybosch to application under section 92 of the Act by Mylife.com, Inc for partial removal of trade mark number 1064442 (36 and 42) – MY LIFE - in the name of David Strybosch.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr David Strybosch

Non-use applicant: Ms Tracey Berger of Spruson & Ferguson

Decision:

2015 ATMO 89

S 96 opposition–use shown for only limited services in class 42– s101(3) - Registrar’s discretion not appropriate – non-use application partially successful – trade mark 1064442 to be removed from the Register for remaining services listed in class 42.

Background

1. This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(b) filed on 17 April 2013, Mylife.com, Inc (‘the non-use applicant’) has sought the partial removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of the services in class 42 for which it is registered:

Trade mark:  MY LIFE

Trade mark number:     1064442

Date of registration:  8 July 2005

Goods:Class 36: Financial and financially related services, including and or providing purchase payment and bill payment services, electronic purchase payment and electronic bill payment services; electronic banking services; electronic accounts payable services; funds, money and currency transfer services; financial advisory; financial risk management services; financial loan services and re-financing services (including business loan services, equity loan services, investor home loan services and residential occupier home loan services) for the purposes of land purchase and for the purpose of home purchase, building, construction and renovation and any other worthwhile purposes; mortgage and finance broking services, mortgage and home loan origination services and mortgage and home loan services; financial consultancy, advisory, management and information services financial planning and financial management services; lifestyle planning; life insurance brokerage services; estate planning; financial analysis and consultation; investment banking services; mutual fund investment services; financial portfolio management; financial research; investment brokerage services; investment consultation; life, health, accident, travel and purchase protection insurance underwriting services; providing charge card, credit card, debit card, stored-value card and smart card services; electronic funds and currency transfer services; electronic payments services, namely, electronic processing and transmission of bill payment; financial services associated with promotional incentive schemes and loyalty schemes; cash disbursement services; transaction authorization and settlement services; travelers check services; money order services; international banking services; military banking services; foreign remittance services; electronic funds transfer services; computerized credit card verification; electronic cash transactions; electronic payment services in the nature of electronic processing and transmission of payment data; computerized credit authorization; providing information, including on-line, about insurance, financial and monetary affairs and real estate affairs; financial services, consultancy and provision of financial information relating to the aforesaid services; the aforesaid services being provided electronically or by other means

Class 42:Computer services relating to the provision of access to computer databases, the Internet and other facilities including providing a portal site on the internet providing links to other sites; providing access to databases and Internet sites for the retrieval and downloading of information relating to financial affairs; computer research, advisory, consultancy and information services relating to the aforesaid services

1. David Strybosch (‘the opponent’) requested, and was granted an extension of time in which to file a notice of intention to oppose removal. The notice of intention to oppose removal itself was filed on 11 September 2013.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Sydney on 12 August 2015. The non-use applicant was represented by Ms Tracey Berger of Spruson & Ferguson. Mr Strybosch appeared at the hearing as an observer only but had previously provided written submissions for consideration.  

Legal Framework

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.

2. Subsection 92(4)(b) provides, inter alia, that a person may apply to the Registrar to have a trade mark removed or partially removed from the Register because it has not been used, or has not been used in good faith, for the relevant goods or services for which it is registered in the three year period ending one month before the application for removal (or partial removal) is filed. Subsection 92(4)(b) 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.

3. In the present matter the relevant period for the purposes of subsection 92(4)(b) is the three year period ending on 17 March 2013 (‘the relevant period’).

4. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[1]:

   Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

   The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

   [1] [2015] ATMO 10

5. Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:

   Determination of opposed application—general

   (1) Subject to subsection (3) and to section 102, if:

   (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b) the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   (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.

   Note 1:       If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

   Note 2:       For registered owner see section 6.

6. In Pioneer Computers Australia Pty Ltd v Pioneer KK[2]  Bennett J made the following observations concerning the Registrar’s discretion:

   [167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   [168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   […]

   [171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.

   [2] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354

Evidence

1. The evidence on which the opponent relies in these proceedings is contained in the following declarations:

• James Adam Jongebreur, Database Architect of Platformplus Pty Ltd made 19 February 2014 (the ‘Jongebreur declaration’);

• David Gerard Strybosch, Director of MY LIFE made 19 February 2014 (the ‘Strybosch declaration’);

• Neil Donald McArthur, Technical Manager, Chemical Engineer made 19 February 2014 (the ‘McArthur declaration’);

• Peter Julian Dybing, Project Manager made 20 February 2014 (the ‘Dybing declaration’).

1. These declarations were filed along with nine exhibits. It is unclear to which declaration or declarations these exhibits relate, although I have assumed that they relate to the Strybosch declaration.

2. The non-use applicant is relying on a single declaration in these proceedings, by:

   ·    Tania Paula Cresswell Weir, secretary at AJ Park made 9 June 2014 accompanied by exhibit TPCW-1.

3. The Strybosch declaration states that since 2007 the opponent’s website has been available to the public. Mr Strybosch states that he has had in place via this website access to other facilities such as client forms, fact sheets, media, services and a portal site providing access to an online database and links to other sites.

4. Mr Strybosch states that through this website the public may download and retrieve information such as a financial service guide, privacy policy, market updates and newsletters that relate to financial affairs, research, advisory, consultancy and information relating to financial services. He goes on to declare that the website allows his clients to access a database via the portal site to retrieve and/or download information relating to their financial affairs. These statements are similarly confirmed in the Dybing declaration and the McArthur declaration, Mr Dybing and Mr McArthur being two of the opponent’s clients.

5. The exhibits I assume to accompany the Strybosch declaration are copies of flyers, banners, business cards and some undated advertisements which all clearly demonstrate use of the Trade Mark. Taken together with the Strybosch, Dybing and McArthur declarations I am satisfied from this material that the opponent has used his Trade Mark within the relevant period. It now remains to be seen whether that use has been in regard to any those services in class 42 covered by registration 1064442.

6. The Jongebreur declaration, a database architect at a business named Platformplus Pty Ltd, provides further information about the opponent’s website. He declares that the opponent’s office information was entered into Platformplus on 30 May 2007 but I am unclear of what ‘Platformplus’ is as it is not explained in the evidence. Mr Jongebreur states he opponent has been a corporate authorized representative with Infocus[3] since 1 June 2007. He asserts that since that time the opponent had a client portal login into Platformplus which was linked through the opponent’s website. This portal provides the opponent’s clients with their financial information allowing them to review the financial portfolio, download research on their funds/shares and print reports. According to Mr Jongebreur the opponent’s clients also have the ability to update their details and the opponent is able to share file notes and documents with their clients directly. The Jongebreur declaration contains a number of screen shots that demonstrate the opponent currently has 77 clients registered for the client portal access and since 2007 there have been 329 unique logins made by those clients.

   [3] Which I assume to be Infocus Securities Australia Pty Ltd from the small print in the evidence

7. Ms Tracey Berger, the non-use applicant’s representative, argued that the nature of the services outlined in the opponent’s evidence amounts to the provision of financial services as covered by the class 36 specification of registration 1064442. She submitted the provision of such services by means of a website or other electronic means still constitutes the provision of financial services, not “computer services” such as those covered by the class 42 specification of the registration.

8. Ms Berger then referred me to the cases of Shine Beauty Pty Ltd v Shine Ltd[4] and Siltech Pty Ltd v Quantum Corporation[5] to support her submission that the opponent had not used the Trade Mark in relation to the relevant services in class 42. However, in coming to a decision on whether or not the opponent has used its MY LIFE trade mark on the class 42 services I turn once more to the opponent’s evidence.

   [4] [2015] ATMO 21

   [5] [2013] ATMO 93

9. The exhibits provided in the evidence in support provide insight into the opponent’s primary business and emphasise the nature of the opponent’s services with statements such as “Manage Your Lifestyle, Income & Future Expenses”, “Specialists in cashflow modelling, retirement planning and wealth creation” and “Get a second job. Or…call MyLife financial Planning”. I also note that the business cards refer to the services offered by the opponent as “Financial Planning, Tax, Loans, Budgeting”. From these exhibits and along with the information provided in the Strybosch, Dybing and McArthur declarations it is clear that the opponent’s primary business activities are in relation to financial services and in particular, financial planning. These are services in class 36. I am satisfied that there is sufficient evidence to demonstrate genuine commercial use of the Trade Mark in relation to the class 36 services of registration 1064442 but not in relation to all the class 42 services.

10. The Jongebreur declaration shows that the opponent is not in the business of computer research, computer advisory, computer consultancy or information services in the computer field but rather that the opponent uses Platformplus (another trader or computer system provided by another trader) for its IT services. However, the screen shots of the opponent’s website contained in the Strybosch declaration taken together with the Dybing and McArthur declarations show that the opponent has a website through which its clients may access the MY LIFE branded database which contains their confidential financial information, other websites and links to various financial information. It is apparent from the Dybing and McArthur declarations that this database is intimately linked with the financial services provided by the opponent.

11. These declarations and the screen shots from the opponent’s website in the Strybosch declaration provide sufficient information to demonstrate genuine commercial use of the Trade Mark within the relevant period in relation to those services in class 42 for providing access to databases and Internet sites for the retrieval and downloading of information relating to financial affairs, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd[6]. As mentioned, even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds[7]. I am satisfied the opponent has established use for these particular class 42 services within the relevant period. Consequently the ground of removal under section 92(4)(b) is rebutted with respect of these services only in class 42. With respect to all other services in class 42 the opponent’s evidence simply does not establish any use.

    [6] [1982] FSR 72

    [7] (2001) 51 IPR 149

Registrar’s Discretion

1. As indicated in paragraphs 8 and 9 above, under subsection 101(3) of the Act the Registrar may decide that a trade mark should not be removed from the Register even if the grounds on which the removal application was made have been established.

2. Here the application for removal is for all the class 42 services covered by the registration. The opponent has only established use for some of those services and has requested the Registrar’s discretion be exercised to allow the registration to remain as it currently stands. However, the opponent has not provided any evidence or submissions relevant to my exercising the Registrar’s discretion and I decline to do so.

Decision

1. I am satisfied that the Trade Mark has been used in the relevant period. However, this use has only been with respect to “providing access to databases and Internet sites for the retrieval and downloading of information relating to financial affairs”. Therefore, I refuse to remove trade mark registration No. 1064442 in its entirety but direct that the class 42 specification be amended to “providing access to databases and Internet sites for the retrieval and downloading of information relating to financial affairs”.

1. Unless this decision is appealed, the Trade Mark will be removed for the remaining services after one month from the date of this decision.

Costs

1. The non-use applicant has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

23 September 2015