Della Jones and Steve Jones v La Pinder Pty Ltd

[2024] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by Della Jones and Steve Jones to application under section 92 of the Trade Marks Act 1995 (Cth) by LA PINDER PTY LTD to remove trade mark number 2172105 (class 35) – ultralight hiker - in the name of Della Jones and Steve Jones

Delegate:

Tracey Berger

Representation:

Removal Opponent: Mark My Words Trademark Services Pty Ltd

Removal Applicant: Cooper IP Pty Ltd

Decision:

2024 ATMO 90

Trade Marks Act 1995 (Cth) – s 96 opposition to application under section 92(4)(a) – intention in good faith to use found – trade mark to

             remain on the Register  

Background

1. This decision is pursuant to an application made on 22 July 2022 by LA PINDER PTY LTD (‘Removal Applicant’) under s 92(4)(a) of the Trade Marks Act 1995 (Cth)1 to remove the trade mark detailed below from the Register of Trade Marks (‘Removal Application’). The application is made in respect of all the services for which the trade mark is registered.

Registration number	2172105 (‘Registration’)
Filing date	19 April 2021 (‘Relevant Date’)
Owner	Mr Steve Jones and Della Jones (‘Removal Opponents’)
Trade mark	ultralight hiker (‘Trade Mark’)

¹ Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Services Class 35: Online retail services; Retail services; Providing business information via a website (‘Registered Services’)

1. The Removal Opponents opposed the Removal Application, filing a Notice of Intention to Oppose on 29 August 2022 and a Statement of Grounds and Particulars (‘SGP’) on 27 September 2022. The Removal Applicant filed a Notice of Intention to Defend the Removal Application on 28 October 2022.

2. The parties proceeded to file the following evidence in accordance with the Regulations:

Evidence in Support (‘EIS’)

·     Declaration of Steve Jones, joint owner of the Trade Mark, made on 20 February 2023 with Annexures SJ1 to SJ6 (‘Jones 1’)

Evidence in Answer (‘EIA’)

·     Declaration of Lisa Pinder, director of the Removal Applicant, made on 17 May 2023 with Annexures LP1 to LP12 (‘Pinder’)

Evidence in Reply (‘EIR’)

·     Declaration of Steve Jones made on 18 July 2023 with Annexures SJ7 and SJ8 (‘Jones 2’)

·     Declaration of Jacqueline Louise Pryor, registered trade mark attorney and director of Mark My Words Trademark Services Pty Ltd, made on 18 July 2023 with Annexures JLP1 to JLP 4 (‘Pryor’)

1. Once the evidence stage concluded, both parties requested a hearing by written submissions. The Removal Opponents filed written submissions prepared by Jacqueline Pryor and Yike Ma on 20 February 2024 and the Removal Applicant filed its written submissions prepared by Michelle Cooper on 27 February 2024. As a delegate of the Registrar of Trade Marks, this matter has been allocated to me to determine based on the aforementioned documents.

Legislative framework

1. Section 92(4)(a) 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:

(a)that, on the day on which the application for the registration of the trade mark was filed, the Removal 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;

1. Pursuant to s 100, set out below, the Removal Opponents bear the onus of rebutting the allegation under s 92(4)(a) on the balance of probabilities.2

100 Burden on Removal Opponent to establish use of trade mark etc.

(1)    In any proceedings relating to an opposed application, it is for the Removal Opponent to rebut:

(a)any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the Removal 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 opposed application relates (relevant goods and/or services); or

(b)any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

[…]

(2)    For the purposes of paragraph 1(b), the Removal Opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

² Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).

(a)the Removal Opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

(b)in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

(i)the Removal Opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

(ii)the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

1. In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the services identified in the Removal Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the Removal Application was made are established.

Evidence

1. A summary of the evidence filed in this matter is set out below.

EIS

1. Jones 1 declares that the Removal Opponents adopted the Trade Mark in 2015 for use in relation to its website and blog at (‘UH Website’) which details the Removal Opponents’ hikes and travels, provides information to other hikers including information and reviews on outdoor tourism, hiking circuits, hiking and camping equipment, hiking food, hunting and Mr Jones’ product designs (‘UH Services’). Historical and current screen captures of the UH Website are provided. Jones 1 also annexes posts from the UH Website reviewing third party products and discussing Mr Jones own product designs.

2. According to Jones 1, the Removal Opponents were able to monetise the UH Website by running third party advertisements including via the Google Ads platform. Jones 1 declares that prior to the filing of the Trade Mark, the Removal Opponents were considering how to further commercialise the UH Website given the level of web traffic, number of enquiries received from readers including on where to purchase products mentioned on the site and

because the Removal Opponents wanted the UH Website to remain a valuable resource to hikers even if the Removal Opponents no longer operated the site. A selection of enquiries and messages that the Removal Opponents received from readers over the years is annexed to Jones 1 as well as details of the website traffic to the UH Website during 2021.

1. Taking into consideration the factors outlined above, Jones 1 declares that by the Relevant Date, the Removal Opponents had decided to ‘work towards creating an online retail store’ to operate at the UH Website which would sell Mr Jones’ original designs for hiking and camping gear, the Removal Opponents’ products and third party hiking and camping related products (‘UH Store’). Mr Jones states that at the Relevant Date, the Removal Opponents had an intention in good faith to provide retailing services under the Trade Mark.

2. Around 16 October 2022, the UH Store was made accessible on the UH Website with a message that the store was still under construction and not yet fully functional. Jones 1 declares that at the time of the EIS, the UH Store had several thousand unique web visitors and over 2000 attempts to purchase items.

   EIA

1. Ms Pinder claims that she registered the business name Ultralight Hiker (‘Business Name’) on 7 February 2019 and commenced selling goods at that time via a website at (‘Removal Applicant’s Store’). Pinder annexes a copy of a post from the Removal Applicant’s Instagram account ultra_light-hiker from 3 March 2019 promoting the Removal Applicant’s Store, a current extract of that account and an extract from the Removal Opponents’ website from 28 November 2019

2. The remainder of Pinder claims that the Removal Opponents had no intention to use the Trade Mark for the Registered Services and applied for the Trade Mark for the Registered Services in error believing that the Registered Services covered the information and blog services the Removal Opponents had provided under the Trade Mark since 2015. In support of this contention, the Removal Applicant annexes copies of correspondence received from or on behalf of the Removal Opponents in mid-2022 and details of other applications filed by the Removal Opponents for the Trade Mark after the Registration. Pinder also notes that there were no updates to the UH Store between October 2022 and the filing of the EIA.

EIR

1. Jones 2 criticises Pinder on the basis that Ms Pinder claims to have registered the Business Name and to have used the Trade Mark. Annexure SJ7 to Jones 2 shows that the Business Name was registered by Yarra Vue Developments Pty Ltd.

2. Jones 2 reiterates the Removal Opponents’ intention to use the Trade Mark in good faith for the Registered Services at the Relevant Date and maintains that the Removal Opponents registered the Trade Mark because of the Removal Opponents’ ability to generate income from the Registered Services. Mr Jones attests that the Removal Opponents did not apply to register the Trade Mark for the UH Services because he did not think it was appropriate to do so given that the Removal Opponents were not deriving income from those services.

3. Pryor objects to Confidential Annexure LP4 of Pinder being a redacted copy of a without prejudice letter from the Removal Opponents attorneys to the Removal Applicant’s Attorneys on the basis that without prejudice correspondence is confidential and should not have been filed in the proceedings. Pryor attaches a copy of the open reply from the Removal Applicant which claims the Removal Applicant is not offering services the same as the Registered Services which Pryor claims contradicts Pinder.

4. In addition, Pryor claims that the Removal Opponents have continued to develop the UH Shop and annexes documents demonstrating that she purchased tent pegs from the store in July 2023.

Discussion

1. Under s 92(4)(a) the Removal Opponents must establish that at the Relevant Date, the Removal Opponents had an intention in good faith to use the Trade Mark in Australia or authorise the use of the Trade Mark in Australia or to assign the Trade Mark to a body corporate for use by the body corporate in Australia, or that it had in fact used the Trade Mark in good faith earlier than one month before the Removal Application was filed.

2. In the SGP, the Removal Opponents particularised its ground of opposition to the Removal Application as follows:

The ULTRALIGHT HIKER trade mark (the “Trade Mark”) has been used by the registered owners (Steve and Della Jones) for many years, both before and after the filing of the removal application in July 2022. Such use of the Trade Mark has been in connection with a range of services, including but not limited to the provision of information via a website, the provision of product reviews and the provision of links enabling consumers to purchase products.

1. Whilst the Removal Opponents bear the onus of establishing that it had the requisite intention to use the Trade Mark at the Relevant Date, that burden is not arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed that:

   … the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.3

2. However, in Structureco Inc v Starite Distributors Pty Ltd, the Registrar’s delegate clarified the onus noting:

   …in the case of applications for removal under s 92 (4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.4

3. The Removal Opponents have used the Trade Mark since 2015 in relation to the UH Website and had taken steps to generate an income from the site through paid advertisements. It is natural that the Removal Opponents would want to further commercialise the UH Website and given the queries from customers about products promoted on the site, a retail store is an obvious extension. Mr Jones has attested that at the Relevant Date, the Removal Opponents had the requisite intention to use the Trade Mark for the Registered Services. The Removal Opponents’ evidence goes beyond a mere assertion and is, in my view, sufficient to shift the onus to the Removal Applicant to present evidence that the Removal Opponents lacked the requisite intention.

4. The Removal Applicant claims that the Registration was filed by the Removal Opponents based on a misunderstanding that the Registered Services covered the UH Services and after

³ [1960] HCA 47, [21].

⁴ [2000] ATMO 31; 49 IPR 209, 215 (Hearing Officer Forno).

the filing of the Removal Application, the Removal Opponents created the UH Store shortly after the filing of the Removal Application ‘in an attempt to manufacture the [Removal Opponents] good faith intention.’

1. The Removal Applicant further contends that even if the Removal Opponents intended to sell their products through the UH Store, this does not constitute provision of the Registered Services. The Removal Applicant’s EIA and submissions suggest that class 35 services in general are only those provided to other businesses to assist in the operation and management of their commercial enterprises. This is a misunderstanding of the information provided by this office which is intended to convey that, for example, a business is not providing advertising or marketing services simply because it advertises and promotes its own products. In the case of retail services, whether a trade mark is being used in relation to retail services and/or goods depends on the manner of use of the mark. It is possible for a trade mark to be used in relation to both retail services and the products being sold such as when the trade mark is used in relation to a physical or online store as well as on the goods being sold, even if those goods are those of the retailer.

2. In support of the Removal Applicant’s contention that the Removal Opponents filed the Trade Mark for the wrong services, the Removal Applicant points to a Facebook message from the Removal Opponents to the Removal Applicant on 24 June 2022 requiring the Removal Applicant to cease using the Trade Mark and noting that the Removal Applicant had done so for 3 years. The Removal Applicant argues that this message shows that the Removal Opponents mistakenly believed that they could take action for conduct which occurred before the Relevant Date, could prevent others from using the Trade Mark in ‘any material’ and that the Removal Applicant’s use of the Trade Mark constituted a crime. The Removal Applicant contends that this message shows the Removal Opponents’ lack of understanding about the protection afforded by the Registration.

3. Moreover, the Removal Applicant argues that the Removal Opponents have not provided any correspondence or documentation evidencing its intention to provide the Registered Services such as correspondence with third parties whose products they intended to sell nor evidence of any of the visitors to the UH Store or attempted purchases by such visitors. It is apparent from the UH Store that the Removal Opponents intended to sell both patterns for its own

designs for hiking gear as well as third party products. Prior to the Relevant Date, the Removal Opponents often posted on the UH Website showing tents and other camping or hiking gear it had made and used on its travels. With the exception of the tent pegs, all of the products featured on the UH Store in Annexure SJ6 of Jones 1 are patterns and instructions for making products. However, the Removal Opponents was regularly asked by its readers about whether they could purchase from the Removal Opponent or where to source the goods promoted, reviewed or referred to on the UH Website.

1. I agree with the Removal Applicant that the Removal Opponents clearly misunderstood the rights afforded by the Registration. However, in my opinion this is not evidence that the Removal Opponents lacked the necessary intention to use the Trade Mark for the Registered Services but rather may well have been upset given its own plans to expand its use of the Trade Mark. I consider it improbable that the Removal Opponents would believe that the services ‘Online retail services; Retail Services’ would include the UH Services. It may be the case that the Removal Opponents thought ‘Providing business information via a website’ covered the UH Services but the only explanation for claiming retail services is that the Removal Opponents intended to set up the UH Store as claimed. I accept the Removal Opponents evidence that it intended to establish an online store at the UH Website selling patterns for its own designs of camping gear as well as third party products and that the Removal Opponents did not initially appreciate it was appropriate to seek trade mark registration in relation to the UH Services. Given that the Removal Opponents were already generating income from the UH Website, on the balance of probabilities, Steve and Della Jones more than likely discussed how to increase that income and selling products on the UH Website would be the obvious means.

1. Further, the fact that the Removal Opponents subsequently applied to register the Trade Mark under applications 2289351 in classes 22 and 41 and 2296601 in class 41, without designating class 25 does not demonstrate a lack of intention to use the Trade Mark for the Registered Services. The Removal Opponent may have any number of reasons for not covering the Registered Services in the subsequent applications including a limited budget, confidence in defending the Removal Application and/or an intention to use the Trade Mark without the benefit of a registration.

1. The Removal Applicant’s claim that the UH Store was created shortly after the filing of the Removal Application to support the Removal Opponent’s claim they had the necessary intention to use the Trade Mark for the Registered Services, is mere speculation. I acknowledge that it is likely that the Removal Opponents expedited its plans to establish an online store because of the Removal Application but I do not think that the Removal Opponents lacked the necessary intention to use the Trade Mark for retail services at the Relevant Date. Moreover, it is not surprising that the Removal Opponents did not promote the UH Store given it was not initially operational. There was a relatively short period of time between the Relevant Date and the filing of the Removal Application, so it is not unreasonable that the Removal Opponents had not yet established the UH Store particularly given that it is apparent that Mr Jones’ time was also occupied by other endeavours such as farming.

2. The Removal Applicant has not presented any evidence that the Removal Opponents lacked the requisite intention to use the Trade Mark in relation to the services ‘Providing business information via a website’ other than its claim that the Removal Opponents applied for such services in error. I do not consider there is any evidence to support that claim.

3. Noting the low burden placed on the Removal Opponents in an application under s 92(4)(a), I am satisfied that the Removal Opponents had an intention at the Relevant Date to use the Trade Mark for the Registered Services in good faith and do not consider the Removal Applicant has established on the balance of probabilities that the Removal Opponents did not have such intention.

Decision

1. The Removal Opponents have rebutted the allegation of non-use and I direct that trade mark registration 2172105 is to remain on the Register for all of the Registered Services. If the Registrar is served with a notice of appeal within the relevant timeframe, I direct that the disposition of the Removal Application should be in accordance with the Court’s order or direction.

2. The Removal Opponents have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Applicant under s 221 in line with Schedule 8 of the Regulations.

Tracey Berger Hearing Officer

Oppositions and Hearings Trade Marks and Designs 13 May 2024