Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd
[2018] ATMO 153
•25 September 2018
TRADEMARKSACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Digitus Information Systems Pty Ltd to application by Leap Software Developments Pty Ltd for removal of trade mark 1007538 (9, 38, 41, 42) – LawConnect – in the name of Digitus Information Systems Pty Ltd
DELEGATE: Robert Wilson
REPRESENTATION: Opponent: Sean Griffin of Fraser Old & Sohn
Applicant: Edwina Whitby of Counsel, instructed by Halfords IP
DECISION: 2018 ATMO 153
TradeMarks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) – no use of trade mark during relevant period – exercise of Registrar’s discretion – trade mark to be removed from Register
Background
1.Digitus Information Systems Pty Ltd (‘the Opponent’) is the registered owner of trade mark registration 1007538, relevant details of which are as follows:
TradeMarkNumber: 1007538 FilingDate:
23 June 2004
Goods andServices:
See Annexure 1 (‘the Challenged Goods and Services’)
TradeMark:
(‘the Challenged Trade Mark’)
On 14 December 2016, Leap Software Developments Pty Ltd (‘the Removal Applicant’) filed an application (‘the Application’) based on s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Challenged Trade Mark from the Register for all of the Challenged Goods and Services. The Removal Applicant alleged that the Challenged Trade Mark was not used in good faith in relation to any of the Challenged Goods and Services during the three year period ending on 14 November 2016 (‘the Relevant Period’).
3.The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Opposed which was filed on 2 March 2017 and a Statement of Grounds and Particulars which was filed on 12 April 2017. The Removal Applicant filed a Notice of Intention to Defend on 14 June 2017.
Evidence
4.The Opponent filed Evidence in Support of its opposition (‘EIS’) on 11 September 2017. This evidence consists of:
· Statutory Declaration made on 31 August 2017 by Florin Boiangiu, the Managing Director of the Opponent, with Annexures FB-1 to FB-10 (‘Boiangiu 1’).
5.The Removal Applicant filed Evidence in Answer (‘EIA’) on 13 December 2017. This evidence consists of:
· Declaration made on 12 December 2017 by Michael Anthony Rumore, a Director of Rumore & Associates, a professional investigation firm, with Annexure MR-1.
6.The Opponent filed Evidence in Reply (‘EIR’) on 7 February 2018. This evidence consists of:
· Statutory Declaration made on 2 February 2018 by Florin Boiangiu with Annexures FB-11 to FB-13 (‘Boiangiu 2’).
7.As is their right, once the time allowed for filing evidence had ended both parties requested to be heard.
8.I heard the matter on 23 August 2018 as a delegate of the Registrar of Trade Marks. Sean Griffin of Fraser Old & Sohn appeared for the Opponent. Edwina Whitby of Counsel, instructed by Halfords IP, appeared for the Removal Applicant. Both representatives’ oral submissions were supported by written submissions which were filed in accordance with my earlier directions.
The Removal Applicant
9.The evidence contains no information from which I might provide a background of the Removal Applicant, however the Removal Applicant is the owner of the trade mark application detailed below:
TradeMarkNumber: 1816120 PriorityDate:
15 December 2016
Goods andservices:
Class 9: (including) computer software
Class 39: (including) storage of electronic media
Class 42: (including) web-based law firm practice management services
TradeMark:
- The Challenged Trade Mark was cited as an impediment to the acceptance of the Removal Applicant’s application.
The Opponent
The Opponent’s submissions indicate that the Opponent has been trading continuously since the company was registered on 28 June 1999 and it is apparent from the evidence that the Opponent is the developer of inMailX which is a productivity tool for Microsoft Outlook.
Legal Framework
Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.
The removal application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:
Section 92. Application for removal of trade mark from Register etc
(1) … a person may apply to the Registrar to have a trade mark that is … registered 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.
…
(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.
Note 1: For file and month see section 6.
Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Challenged Trade Mark was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is on the balance of probabilities.1
Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Mark from the Register ‘in respect of any or all of the goods … to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the impugned trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.
Whether use during Relevant Period
The Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Challenged Trade Mark upon, or in physical or other relation to, the Challenged Goods and Services2 within that period in order to rebut the allegation of non-use. Undated examples of use carry little, if any, weight in support of a claim for use of the
1 Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.
2 See s 7 of the Act.
trade mark within the Relevant Period. Similarly, bald assertions of use during the Relevant Period which are not supported by clearly dated evidence will be afforded little weight.
It is declared in Boiangiu 1 that the Opponent has used the Challenged Trade Mark continuously since 2006. Annexure FB-1 is declared to be:
a list of recent conferences and events where [the Opponent has] used [the Challenged Trade Mark] as part of exhibition stand demonstrations, live online demonstrations, as well as PowerPoint or video presentations.
Annexure FB-1 consists of a single page which lists some 26 events, 16 of which were held at locations in Australia. The list indicates that the events were held on dates which span the Relevant Period.
Annexure FB-2 of Boiangiu is declared to be ‘a copy of images from the presentations at the conferences and events in “FB-1” and entitled “inMailX signatures”’. The annexure consists of some 12 pages which appear to have been taken from a slide show presentation which was used to demonstrate software called ‘inMailX’. The annexure appears to show examples of how inMailX can import information into emails: information such as email addresses, telephone numbers and company logos. The Challenged Trade Mark appears a number of times in the annexure.
Annexure FB-3 of Boiangiu is declared to be ‘a copy of images from video demonstrations at the conferences and events in “FB-1” and is entitled “inMailX convert to PDF’. The annexure consists of some 21 pages which, again, appear to have been taken from a slide show presentation which was used to demonstrate inMailX. The Challenged Trade Mark, again, appears a number of times in the annexure.
Two examples which are typical of how the Challenged Trade Mark appears in Annexures FB-2 and FB-3 are provided below:
In respect of the use of the Challenged Trade Mark in Annexures FB-2 and FB-3 the Applicant has submitted that the annexures:
Do not show use of [the Challenged Trade Mark] for any particular goods or services, but simply refer to the mark in test emails, apparently for a demonstration for the Opponent’s inMailX product; …
To the extent that any trade mark is used, the mark is ‘inMailX’.
I agree with the Applicant’s assessment of Annexures FB-2 and FB-3 and am not satisfied that the use of the Challenged Trade Mark shown is use in the course of trade.
Annexure FB-4 is declared to be ‘a document entitled “Digitus inMailX V2 signatures guide” showing use of [the Challenged Trade Mark]’. The annexure is apparently a user guide for inMailX. ‘Digitus Information Systems Pty Ltd, inMailX Signatures Guide’ appears prominently at the top of each page. The document suffers from the same issues as those in Annexures FB-2 and FB-3 in that the use of the Challenged Trade Mark appears as though it is merely example text used for the purposes of the manual. Annexure FB-5 is declared to be ‘a list of [the Opponent’s] clients that had access to annexure “FB-4” by remote computer access from December 2013 to November 2016’. Neither of these annexures assists the Opponent.
Annexure FB-6 is entitled ‘Demo Systems Screenshots Showing the LawConnect Signature Branding’. This annexure, too, appears to show the Challenged Trade Mark simply as example text. FB-7 is declared to be ‘a list of organisations that the demonstration of annexure “FB-6” was presented during (sic) the period November 2013 to November 2016’. Again, these annexures do not satisfy me that the Opponent used the Challenged Trade Mark in the course of trade during the Relevant Period.
Annexure FB-8 is declared to be ‘screenshots of software used under licence having [the Challenged Trade Mark] by existing legal clients’. It is declared in Boiangiu 2 that ‘the screenshot (sic) shown in annexure “FB-8” in my earlier Statutory Declaration was for screenshots at that time rather than those during the relevant period’. Consequently, this annexure does not assist the Opponent.
It is declared in Boiangiu 1 that:
[The Opponent has] also used [the Challenged Trade Mark] in various literature in [the Relevant Period]. A copy of print-only brochures that were distributed during this period in Australia to clients or potential clients are annexed hereto and labelled ‘FB-9’ and ‘FB-10’ respectively. I note that the copies of the brochure do not reproduce [the Challenged Trade Mark] very clearly, however, this can be discerned.
Annexure FB-9 consists of two pages and appears to be a promotional flyer. The Challenged Trade Mark appears prominently at the top of the first page. The document is undated. Annexure FB-10 is also two pages and appears to be a promotional flyer. In this case it shows the Challenged Trade Mark as part of the heading ‘The Benefits of LawConnect’ on the first page and as a prominent heading on its own on the second page. The document is undated. The, essentially bald, assertion by Mr Boiangiu that the document was distributed during the Relevant Period is not supported by any other evidence. As a result, the evidence is insufficient to satisfy me that these documents were sent to or read by anyone during the Relevant Period. Annexures FB-9 and FB-10 do not assist the Opponent.
In respect of Annexure FB-11 of Boiangiu 2 (in the EIR) it is declared:
Annexed hereto and labelled ‘FB-11’ are various screenshots of TressCox Lawyers intranet website operating under [the Challenged Trade Mark]. The annexure shows four screenshots similar to those provided in Annexure FB-8.
The LawConnect software of the screenshot in annexure ‘FB-11’ is used by TressCox Lawyers and other of our clients for a variety of purposes including internal company documentation, precedents, compliance management, amongst many others.
The screenshots shown in annexure ‘FB-11’ are submitted in response to the removal applicant’s Evidence-in Answer (sic) and provides screenshots from the relevant period as the screenshot shown in annexure ‘FB-8’ in my earlier Statutory Declaration was for screenshots at that time rather than those during the relevant period.
The annexure contains four screenshots. The Challenged Trade Mark appears at the bottom left hand corner of each page in a moderate sized font and coloured a shade of orange. The pages show lists of documents which have apparently been searched for by the use of a drop down menu. Each page shows a list of 20 similarly titled documents which differ from each other only by the appended date. Each page lists a differently named document. Some example document
titles are: Information Technology – August 2014, Information Technology – October 2015, Knowledge Centre – February 2015 and Precedents – February 2016. There is also a column which indicates the dates on which the documents were last viewed. The dates which appear in the document names and the ‘Last Viewed’ dates are the only dates which appear on the pages.
While it is declared that the screenshots are ‘from the relevant period’ I am not satisfied that this is the case. The first screenshot contains a list of 20 Information Technology – [date] documents. The first in the list is dated February 2016. The last of the 20 shown is dated July 2014. The documents in between are dated sequentially, one for each intervening month: January 2016, December 2015, November 2015, etc. The list of documents is indicated to be ‘Page 2 of 5’. It seems reasonable to assume that at the time the screenshot was taken ‘Page 1 of 5’ would also have contained 20 similarly named and dated documents. This being the case the last entry in the list on page 1 would be dated March 2016 and the most recent entry would be dated October 2017 (which is some 11 months after the end of the Relevant Period). Further, the appearance of documents in the list which are dated during the Relevant Period is not strong evidence that they appeared on the TressCox intranet page during the Relevant Period. The list of documents could have been compiled at any time after the Relevant Period. Nor is a screenshot of an intranet page taken after the Relevant Period strong evidence of how that intranet page might have looked during the Relevant Period. I am not satisfied that this annexure demonstrates use of the Challenged Trade Mark during the Relevant Period.
Annexures FB-12 and FB-13, which contain screenshots from a different law firm’s intranet site, suffer from similar shortcomings to those found with Annexure FB-11. These annexures does not assist the Opponent.
In respect of Annexure FB-8 it is stated in Boiangiu 1 that the software shown in the screenshots was used under licence. I note that there are no copies of licence agreements in evidence nor are there any copies of invoices.
I am not satisfied by the evidence before me that the Opponent used the Challenged Trade Mark in the course of trade during the Relevant Period. The Opponent has therefore failed to rebut the allegation of non-use and the grounds on which the application for removal of the trade mark was made have been established. It remains to be considered whether the discretion available to the Registrar should be exercised in the Opponent’s favour.
The Registrar’s Discretion
Section 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, 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 [or Registrar] 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.3
Her Honour also noted:
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. …
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.4
While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,5 Flick J stated:
Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,6 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.7 Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between
3 Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].
4 Ibid [171]-[172].
5 E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.
6 Kowa Co Ltd v Organon [2005] FCA 1282, [92].
7 Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].
various interests. Both the interests of the consuming public and the interests of traders have to be recognised.8
The onus is on the Opponent to positively satisfy the Registrar that the Challenged Trade Mark should not be removed from the Register notwithstanding the grounds for removal have been established.9
In oral submissions on this question the Opponent relied on an assumption that there was use of the Challenged Trade Mark during the Relevant Period in respect of at least some goods and services, and in the light of this use the discretion should be exercised in respect of the remainder of the goods and services. Having found there was no use of the Unchallenged Trade Mark during Relevant Period in respect of any goods or services I am not satisfied by the evidence before me nor am I persuaded by the Opponents’ submissions that the Registrar’s discretion ought to be exercised in favour of the Opponent.
Decision
As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that the Challenged Trade Mark be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.
Costs
The Removal Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
8 E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].
9 Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [273].
Robert Wilson Hearing Officer
Oppositions and Hearings 25 September 2018
Annexure 1
The Challenged Goods and Services
Class 9: Data processing equipment and computers; computer hardware and software including customised software; software to enable connections to networks, databases and the Internet and global computer network; software to enable the searching, collection and distribution of data; computer software packages including user and associated manuals, all recorded magnetically, optically or electronically; publications in electronic form supplied on-line from computer databases or from facilities provided on the Internet and global computer network (including web sites); computer operating systems; computer printing networks, printers and print interface cards; data processors and data storage devices; integrated circuits and microprocessors, disks, modems, cabling, connectors, computer keyboards, computer peripheral devices, mice, computer terminals and screens; switching devices for use with local and/or wide area networks; network computers and computer network analysers; magnetic and optical data media; apparatus and instruments, all for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging or enhancing of data
Class 38: Telecommunications; online Internet and global computer network customer service and distribution system being communication services, interactive telecommunications using the world wide web, Internet and email, data transfer electronic communication services, electronic transmission of messages via cable and telephone, and broadband networks and mobile data communications, and telecommunications consultancy services relating to all the foregoing services; interactive telecommunications using the world wide web, data transfer electronic communication services, electronic transmission of messages via cable and telephone, and broadband networks and mobile data communications; communication by telephone, by facsimile and by teleconference; providing access to the Internet and global computer network; providing access to electronic communications networks and electronic databases; provision of multiple user access to computer networks for the transfer and dissemination of information; transmission of data, images, documents and information via computer terminals; wire services; provision of telecommunications access and links to computer databases and the Internet and global computer network, computer programs and any other data; telecommunication of information (including web pages), electronic hosting services to provide telecommunications connections for transactions on global computer networks
Class 41: Education, providing of training; training in relation to computer software; training in relation to all aspects of the Internet and global computer network including electronic commerce; seminars relating to planning, installation, management, operation and maintenance of computer systems; arranging and conducting classes, conferences, workshops and seminars in relation to the use of information technology; publication and distribution of bulletins, brochures, directories and information in any form via any media, including electronic communications and via computers
Class 42: Computer programming; computer consultancy, design, testing, support, helpline, engineering, analysis, research and advisory services, all relating to computers, computer networks, local and wide area networks, computer software, computer programming and to the Internet services and global computer network; maintenance and upgrading of computer software; website design and development, website hosting services; computer programming and technical services in relation to compilation, storage, analysis and retrieval of data and information; computer programming and technical services relating to on-line services for the search, retrieval, indexing and organisation of data on electronic communication networks and for enhancing the performance and function of such networks; production and development of material for use by interactive electronic information technology equipment, including production of material for interactive compact disk and CD- ROMs for use on any computer network, including the Internet and global computer network; computer information, consultancy and advisory services related to all the aforesaid services in class 42 including such services provided on-line or via the Internet, and global computer network or extranets
5
0
0