Discovery Holiday Parks Pty Ltd v Beston Technologies Pty Ltd

[2019] ATMO 134

TRADE MARKS ACT 1995

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

ReOpposition by Discovery Holiday Parks Pty Ltd to application by Beston Technologies Pty Ltd for removal of trade mark 1164878 (35, 41, 43) – BESTON PARKS GROUP (logo) - in the name of Discovery Holiday Parks Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Josh Simons of Thomson Geer

Applicant: Donald Angus of Collison & Co

Decision:                   2019 ATMO 134

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) unsuccessful – no genuine commercial use of trade mark during relevant period – trade mark to be removed from Register

Background

1. Discovery Holiday Parks Pty Ltd (‘the Opponent’) is the registered owner of trade mark registration 1164878, relevant details of which are as follows:

Trade Mark Number:

1164878

Filing Date:

7 March 2007

Services:

Class 35: Advertising, business management assistance, business appraisal and consultancy, business management of hotels and other forms of accommodation, compilation of information on computer data bases, direct mail advertising, modelling of advertising and sales promotions, organisation of trade fairs for commercial or advertising purposes, publication of publicity texts, retailing and wholesaling of food, clothing and campers requisites

Class 41: Provision of training and education for owners/managers/operators of hotels, holiday parks, caravan parks and other forms of accommodation including: arranging and conducting of conferences, seminars and workshops; holiday camp and park services; education information; vocational guidance (training or education advice); recreation information; instruction services; practical training (demonstration); providing on-line electronic publications; publication of texts; assessment, training, selection and monitoring performance of candidates/appointees to own/manage/operate hotels, holiday parks, caravan parks and other forms of accommodation

Class 43: Holiday park services; holiday camp services; provision of campground facilities and accommodation, including tourist accommodation; accommodation reservations; provision of food and beverages, including restaurant, bar, cafe, canteen and catering services

(‘the Challenged Services’) [1]

Trade Mark:

(‘the Challenged Trade Mark’)

[1] The Challenged Services are all of the services for which the trade mark is registered.

2. On 12 December 2017, Beston Technologies Pty Ltd (‘the Applicant’) filed an application (‘the Application’) based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘the Act’) seeking removal of the Challenged Trade Mark from the Register, alleging that the Challenged Trade Mark was not used in good faith in relation to any of the Challenged Services during the three year period ending on 12 November 2017 (‘the Relevant Period’). The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose which was filed on 9 February 2018 and a Statement of Grounds and Particulars (‘the SGP’) which was filed on 9 March 2018. The Removal Applicant filed a Notice of Intention to Defend on 20 April 2018.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) consisting of:

• Statutory Declaration made on 2 May 2018 by Irene Wagstaff, the Director of Signature Publishing Pty Ltd, with Exhibit CW-1 (‘the Wagstaff declaration’). Exhibit CW-1 is divided into two tabs labelled Tab 1 and  Tab 2; and

• Statutory Declaration made on 25 July 2018 by Jacob Waye-Harris, a partner of Waye-Harris Lawyers, with Exhibit JWH-1 (‘Waye-Harris 1’). The declaration states that Mr Waye-Harris is retained to act as legal counsel for the Opponent.

4. The Removal Applicant filed Evidence in Answer (‘EIA’) being:

• Declaration made on 27 September 2018 by Jasmin Whittaker, a trade mark attorney at Collison & Co, the legal representative of the Applicant, with Exhibits JW1 to JW18 (‘the Whittaker declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) being:

• Statutory Declaration made on 29 November 2018 by Jacob Waye-Harris with JWH-1 (‘Waye-Harris 2’). JWH-1 of this declaration is divided into two tabs: Tab 1 and Tab 2.

6. Once the time allowed for filing evidence had ended the parties requested to be heard.  I heard the matter in Adelaide on 8 August 2019 as a delegate of the Registrar of Trade Marks. Josh Simons of Thompson Geer, assisted by Nicholas Wockel, appeared for the Opponent. Donald Angus of Collison & Co, assisted by Jasmin Walker, appeared for the Applicant. In accordance with reg 5.17(6) of the Trade Mark Regulations 1995 (Cth) both representatives filed written summaries of submissions prior to the hearing.

7. During the hearing the Opponent handed up evidence consisting of four pages being copies of the state of two webpages at a certain point in time which were produced by an internet archive website. The webpages are discussed later in this decision. Regulation 21.15(4) of the Trade Marks Regulations 1995 (Cth) allows the Registrar to take late filed information into account in certain very restricted circumstances.[2] In this case, as the evidence is, amongst other things, not crucial to the outcome of the decision, I decline consider it.

[2] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [55].

The Opponent

8. It is apparent from the evidence that the Opponent runs a large number of holiday parks throughout Australia. According to the Opponent’s web site the inception of the holiday park group was in December 2004.

The Applicant

9. There is no information before me from which I might provide a background of the Applicant. However, the Applicant has applied to register two trade marks being BESTON MARKET PLACE and BESTON TECHNOLOGIES. Both applications are for services in Class 35 and have s 44 grounds for rejection raised by the examiner which cited trade marks including the Challenged Trade Mark.

Legal Framework

1. 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.

2. 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.

3. An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application to register the Challenged Trade Mark,[3] and I confirm that that period has passed.

   [3] Per s 93(2) of the Act prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

4. 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. Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[4] I proceed on the basis that the standard of proof required is the usual civil standard of on the balance of probabilities.[5]

   [4] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645, 660.

   [5] 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.

5. 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.

Discussion

1. To successfully oppose the Application the Opponent must establish that it, as the owner of the Challenged Trade Mark has used the trade mark in the course of trade in respect of all the Challenged Services, in good faith, in the relevant period. The SGP contained the following particulars:

• [The Challenged Trade Mark] is currently in use by way of web pages on a website which markets holidays.

• [The Opponent] engaged the website operators to promote its holiday destinations.

• The website clearly displays use of the Trade Mark on a number of web pages.

• The web pages have been available since at least 2009 and have remained active web pages during [the Relevant Period].

1. The Opponent has not suggested that there was a relevant obstacle to the use of the Challenged Trade Mark so that aspect need not be considered further.

Use during the relevant period?

1. 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 Services[6] within that period in order to rebut the allegation of non-use. Undated examples of use carry little, if any weight.

   [6] See s 7 of the Act.

2. To support its opposition, the Opponent is relying only on the use of the Challenged Trade Mark on two webpages during the Relevant Period. The domain name from which the website (‘the Holidayswithkids website’) resolves is <holidayswithkids.com.au>. The domain name is not owned by the Opponent, but by a third party, Signature Media Pty Ltd (‘Signature Media’) which also add the content to the Holidayswithkids website. Before proceeding with further examination of this use it is useful to briefly discuss the history of the Opponent.

3. As indicated above, the inception of the Opponent’s holiday park group occurred in December 2004. At that time the Opponent was called Beston Parks Management Pty Ltd. In March 2008 the Opponent changed its name to Discovery Holiday Parks Pty Limited. In 2007 and 2006, respectively, the Opponent registered two trade marks being the Challenged Trade Mark and trade mark number 1147412 which was for the plain words BESTON PARKS. The latter trade mark was not renewed in 2016 and was removed from the register. From 2007 the Opponent registered some 21 trade marks including DISCOVERY HOLIDAY PARKS and DISCOVERY HOLIDAY PARKS with a logo. The Challenged Trade Mark is the only trade mark owned by the Opponent which includes the word BESTON. Exhibit JW3 to the Whittaker declaration provides a copy of a webpage from the Opponent’s website at The webpage is entitled THE EVOLUTION OF DISCOVERY and includes the statement:

   Discovery Parks group expanded aggressively throughout Australia over the next 3 years [after December 2004] under the ‘Beston’ name and in March, 2008 all parks nationwide transitioned to the Discovery Brand.

4. Tab 1 of Waye-Harris 1 is declared to be copies of documents relating to the placing of an order with Signature Media in 2007 to

   advertise certain holiday parks of the Opponent on the [Holidayswithkids website] including Koombana Bay Holiday Resort and the Ocean Beach Holiday Village.

5. Documents in Tab 1 include an ‘Advertising Order Confirmation’ which bears two signs at the top, one being slightly stylised words ‘Holidays with kids’ the other being ‘Signature Media’. The ‘Client’ on the document is indicated as ‘Beston Parks’. The document is dated 21 May 2007. The document is signed on behalf of Signature Publishing by Cathy Wagstaff. The Wagstaff declaration states that the declarant, Irene Wagstaff, in her professional capacity is known as Cathy Wagstaff. Ms Wagstaff also declared that:

   In May 2007, I was contacted by Caddie Marshall of Beston Parks Management Pty Ltd … in relation to advertising certain holiday parks of the Opponent on the [Holidayswithkids website], including:

   (a)    Koombana Bay Holiday Resort … ; and

   (b)    Ocean Beach Holiday Village.

6. Ms Wagstaff further declared that:

   The Opponent provided Signature Publishing with the approved text and images to be used on the Webpages, including [the Challenged Trade Mark].

   In May 2007, Signature Publishing applied [the Challenged Trade Mark] to the Webpages in accordance with the Opponent’s instructions.

   To date, the Opponent has not instructed Signature Publishing to remove [the Challenged Trade Mark] from the Webpages.

   [The Challenged Trade Mark] has remained on the Webpages since it was first applied in 2007. The Webpages have been publicly accessible since May 2007 to date.

7. Copies of the two web pages appeared in Tab 2 of the Wagstaff declaration. The copies are annotated, ‘Accessed and printed 3 May 2018’. The copies clearly show the Challenged Trade Mark along with a spiel about the services offered at the two parks. The services described are typical of what is found in a modern holiday park. Also appearing at the bottom of the pages is a hyperlink labelled ‘

8. The Applicant was critical of the evidence discussed above, submitting, amongst other things:

   ·there is no relevant information to reasonably support any finding that any information that may or may not have been present on [the Holidayswithkids website] was in fact available during the Relevant Period;

   ·the webpages are hand dated as being ‘Accessed and printed 3 May 2018’, which is outside of the Relevant Period;

   ·the date the webpages were ‘accessed and printed’ … is after the date the statutory declaration was signed (2 May 2018);

   ·apart from Ms Wagstaff’s assertions that [the Challenged Trade Mark] remained on the website during the Relevant Period, there is no conclusive evidence provided by the Opponent as to what the web pages looked like during the Relevant Period and even that [the Challenged Trade Mark] featured on the web pages during that time.

9. In the light of the corroborating evidence provided by Ms Wagstaff and Mr Waye-Harris I am prepared to accept that in 2007 the Opponent paid Signature Publishing to advertise its services on the Holidayswithkids website in connection with the Challenged Trade Mark. I am also prepared to accept that the webpages as exhibited were set up at that time and that they have been ‘publicly accessible since May 2007 to date’: which includes the Relevant Period. I note that Signature Publishing has apparently not billed the Opponent since the initial transaction. Additionally, there is no evidence provided that the webpages were accessed by anyone during the Relevant Period. From past experience, it seems to be relatively straightforward to access such information and to adduce it as evidence. The webpages include hyperlinks which, it is said, redirect anyone who has clicked on them to the Opponent’s current website. There is no evidence provided as to how many times this has occurred, if at all.

10. The evidence gives rise to the distinct impression that the webpages discussed above appear to have been lost in some virtual dusty corner: forgotten by Signature publishing and perhaps never having been viewed by anyone. The question arises whether the use discussed above constitutes ‘genuine commercial use as opposed to token use’ of the Challenged Trade Mark.

11. The evidence strongly suggests that the Opponent has rebranded its business and possibly gone so far as to abandon the BESTON PARKS branding: and I note in this regard the failure of the Opponent to renew its BESTON PARKS word trade mark. The webpages seem to be an artefact analogous to a rusting billboard on an abandoned side road that no one ever drives down. A billboard that was erected some seven years before the start of the Relevant Period then forgotten. A billboard which advertises a business that, to a consumer seeking the Challenged Services, ostensibly no longer exists. There is no suggestion that during the Relevant Period a consumer might have found anywhere a holiday park which bears the Challenged Trade Mark or, indeed, any other service offered by the Opponent in connection with the Challenged Trade Mark. For these reasons I am not satisfied that the use of the Challenged Trade Mark on the webpages constitutes genuine commercial use. Consequently, the Opponent has failed to rebut the allegation on non-use.

The Registrar’s Discretion  

1. The Opponent made no submissions in respect of the discretion available to the Registrar not to remove the Challenged Trade Mark from the Register should the grounds on which the Application were made be established. There is nothing before me which satisfies me that the discretion ought to be exercised in the Opponent’s favour.

Decision

1. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that trade mark 1164878 be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the 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 decision.

Costs

1. The 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 rebut the allegation of non-use, 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.

Robert Wilson
Hearing Officer
Oppositions and Hearings
9 September 2019