doTERRA Holdings LLC v Australasian Conference Association Limited

[2024] ATMO 228

TRADE MARKS ACT 1995

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

Re:Opposition by doTERRA Holdings LLC to application under section 92 of the Trade Marks Act 1995 (Cth) by Australasian Conference Association Limited to remove trade mark number 1490184 (class 5) - PB Assist - in the name of doTERRA Holdings LLC

Delegate:

Debrett Lyons

Representation:

Opponent:     Source IP

Applicant:    K&L Gates

Decision:

2024 ATMO 228

Trade Marks Act 1995 (Cth) – opposition under s 96 to an application under section 92(4)(b) – use established – trade mark to remain on the Register.

Background

1. On 12 July 2022, Australasian Conference Association Limited (‘ACAL’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade mark in the name of doTERRA Holdings LLC (‘Opponent’):

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

Number	Mark	Filing Date	Goods
1490184 (‘Registration’)	PB Assist (‘Trade Mark’)	10 May 2012	Class 5: Prebiotic and probiotic pharmaceutical products; prebiotic and probiotic dietetic substances; prebiotic and probiotic nutritional supplements (‘Registered Goods’)

1. The Opponent filed a Notice of Intention to Oppose the removal of the Registration on 7 September 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 3 October 2022.   The Applicant filed a Notice of Intention to Defend on 21 November 2022.

2. The parties proceeded to file evidence in accordance with the Regulations as outlined below. The Opponent’s evidence in support was filed on 18 October 2023 and the Applicant filed its evidence in answer on 24 January 2024. No evidence in reply was filed.

Declarant and Position	Date	Exhibits or Annexures
Evidence in support
David Doxey (‘Doxey’), authorised representative of the Opponent and of doTerra Manufacturing LLC and of doTerra Global Limited, General Counsel of doTERRA International LLC and Director of doTERRA Australia Pty Ltd	17 October 2023		DD1 – DD19[2]
Evidence in answer
Jonathan Ariel Feder (‘Feder’), partner of K&L Gates	24 January 2024		JAF-1

[2] The numbering of the exhibits leaves much to be desired – there are duplicate references to the same exhibit which in fact show different documents and other numbered exhibits which are empty.

1. Once the evidence stage had concluded, the parties had the opportunity to request a hearing.   Both parties requested a hearing by written submissions.   ACAL filed written submissions on October 22, 2024.    The Opponent was required to file any written submissions by 16 October 2024 but did not file submissions.  The matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks.  I make my decision based on the materials outlined in the preceding paragraphs.

   Legal Framework

2. Part 9 of the Act deals with the removal of trade marks from the Register due to non-use. In this matter, the Applicant nominated s 92(4)(b) as the ground for removal of the Registration which provides:

   92  Application for removal of trade mark from Register etc.

   (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) …

   (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. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 12 June 2022 (‘Relevant Period’), being a period of 3 years ending one month before the day on which the Removal Application was filed.

4. 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 for registration of the Trade Mark.[3]   That date was 10 May 2012 and so five years have passed.

   [3] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

5. ACAL submits that the Opponent has failed to establish that during the Relevant Period, the Trade Mark has been used in Australia, or has been used in good faith in Australia, and that there was no obstacle to use.

6. Pursuant to s 100(1), the Opponent bears the onus of rebutting those allegations.  It must show on the balance of probabilities[4] that it has used the Trade Mark, or a mark with additions or alterations not substantially affecting the identity of the mark, in good faith for the Registered Goods within the Relevant Period.[5]

   [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

   [5] s100(3)(a).

7. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense. ^[6]  Provided the use is in good faith, a ‘single bona fide use of the mark’ may be enough to rebut an allegation of non-use[7] but if a single act is relied upon then it ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[8]  Little weight is to be given to assertions of use which are not supported by documentary evidence.[9]

   [6] [2001] FCA 261, [16].

   [7] Ibid, [17].

   [8] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [9] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

8. In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the Registered Goods, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the applications for removal were made are established.

   Evidence and findings

9. The Doxey declaration and all of its 19 exhibits are said to be strictly confidential.   This makes it difficult for me to say much of the evidence but for those matters which, despite the claim to confidentiality, are in the public domain.  In these circumstances I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated: 

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself).[10]

   [10] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

10. The Opponent is a US company incorporated in 2008.  In 2009 product bearing the Trade Mark was put on the US market.  The Opponent has maintained a website from which international orders for the product could be made.   Australian customers and so-called “Distribution Partners” are said to have ordered the product from August 2013 to the time of the Doxey declaration in 2023.  Purchase invoices are exhibited. 

11. In 2010 doTERRA Australia Pty Ltd was incorporated.  In 2018 the product was ‘officially launched in Australia’.   However, Doxey declares that once trade mark application 1490184 was filed, activities in preparation for launch of product using the Trade Mark began but that “there were several delays during the launch of user of the Mark including during the Relevant Period.”   Further, “[d]uring the Relevant Period, the doTerra Entities continually prepared to launch in Australia and has now launched the Product as of 1 March 2023.”   The delay in bringing product bearing the Trade Mark to market in Australia is said to be the result of several factors, including the complexity of the Product's formula and manufacturing requirements, the difficulty of registering and manufacturing the Product in Australia, and the COVID-19 pandemic.

12. There are incidental claims of use outside Australia and it is convenient to deal with these first. These relate to claims of sale and promotion in New Zealand and to use of the Trade Mark at conventions in the United States which Australians are said to have attended. The principle is that only use of the Trade Mark in Australia is relevant within the meaning of s 92(4)(b) and so I have disregarded this material.

13. I can next consider what amounts to the Opponent’s reliance on s 100(3)(c) which provides that the Opponent is taken to have rebutted the allegation of non-use because of circumstances (whether affecting traders generally or the Opponent specifically) that were an obstacle to the use of the Trade Mark during the Relevant Period.  In addition to what is set out in [14], the asserted obstacles took the form of time (in 2015) to develop a new product formula and time to test shipping methods to Australia.

14. To remind the reader, the Relevant Period is the three year period ending 12 June 2022.  There is no clear explanation why reformulation of the product was undertaken in 2015 when the Opponent had already allegedly shipped product to Australia via website orders.  It is said that changes were required to comply with Australian standards but that  assertion is largely unsupported.

15. The Feder declaration serves only one purpose which is to put into evidence the result of a search of "PB Assist" on the Australian Register of Therapeutic Goods.  That search disclosed an entry on the Register dated 23 December 2020 naming doTerra Australia Pty Ltd as the sponsor of a medicine under the product name “PB Assist +”.  Even if the orders and imports from the US were exempt from regulatory approval by way of operation of the Personal Importation Scheme, it still took the Opponent two years after its product was listed on the Register of Therapeutic Goods to launch the product in Australia.  There is some effort to explain delay due to a change of ingredients as well as delayed delivery in 2022 due to Covid supply chain issues, but I would characterise the narrative as watery.

16. The evidence as presented does not compel me to apply s 100(3)(c). The further implication of this evidence is that the sale of locally approved product did not, by the Opponent’s admission, occur until after the Relevant Period. I come then to the Opponent’s primary evidence being invoices which purportedly demonstrate the purchase of goods bearing the Trade Mark by individuals and distribution partners in Australia from the US website. Some of those invoices predate the Relevant Period which can be treated as commencing in June 2019. For those invoices within the range of the Relevant Period, ACAL argues that the Opponent has not provided evidence showing how the Trade Mark appeared on the Product sold pursuant to the invoices. It states that “[t]here is no evidence that the Trade Mark was affixed to the Product which it alleges were sold as shown in the invoices. As for the invoices themselves, ACAL submits that the use of the Trade Mark on the invoices was not use of the Trade Mark in the course of trade as required by section 17 of the Act.”

17. This submission appears to overlook s 7(4) which provides that “use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods)”.  Moreover, s 9(1)(c) provides that:

    (c)  a trade mark is taken also to be applied in relation to goods or services if it is used:

    (i)  on a signboard or in an advertisement (including a televised advertisement); or

    (ii)  in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

    and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

    (added emphasis)

18. ACAL goes on to argue that even if the invoices demonstrate use of the Trade Mark in Australia, the Opponent has not established that it was the entity that used the Trade Mark in connection with these invoices, or that it had authorised the application of the Trade Mark to the relevant products, as required under s 7 and 8.

19. Section 7(3) states that “[a]n authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.”   Section 8 goes on to elaborate who is an authorized user.

20. Doxey states that he is the representative of the Opponent,  doTerra Manufacturing LLC and doTerra Global Limited, General Counsel of doTERRA International LLC and Director of doTERRA Australia Pty Ltd, which he collectively defines as “the doTerra Entities”.  He goes on to state that the Opponent licences use of the Trade Mark to doTERRA Global Limited, which supplies products to doTERRA Australia, for use in Australia.

21. We know that doTERRA Australia Pty Ltd was formed in 2010, long before that start of the Relevant Period in June 2019, but equally we know that doTERRA Australia Pty Ltd was not permitted to market product bearing the Trade Mark until December 2020 and did not in fact sell product until March 2023, after the Relevant Period.  It follows that use of the Trade Mark by doTERRA Australia Pty Ltd is not qualifying use, regardless of whether or not it is authorised use.

22. I turn to the claimed use of the Trade Mark by way of US sales to Australian customers and so-called “distribution partners” from August 2013 onwards.   My first observation is that the evidence presented of the Personal Importation Scheme shows it to provide an import exemption for unregulated pharmaceutical products intended for personal use by the importer.   As such, I will ignore evidence which appears to relate to sales to distribution partners. 

23. The exhibits show use of the Trade Mark in relation to a product most commonly described as a “probiotic defense formula”.    Images of the actual goods are shown and I read these together with the exhibited invoices which show sales to Australian addressees since August 12, 2013.  Sales continue into the Relevant Period.  In each case the invoice includes which seems to be a unique “Distributer ID” but when I take account of the fact that almost all of the orders were for single quantities of the product, it seems that in all probability the purchasers are individuals (not distribution partners) and that the pro-forma invoices should be read as showing the customer ID.  

24. On these invoices there is universal use of the letters “US” before the Trade Mark (as there is for all products when different goods are invoiced together). There is frequent use of “PB Assist +” and occasional use of “PB Assist Jr” and to the extent that there is any question whether or not the Trade Mark, as registered, is used, I find that use of both “PB Assist +” and “PB Assist Jr” is use of the Trade Mark within the meaning of s100(2)(a) of the Act.

25. ACAL’s objection is that the Opponent has not provided evidence of the entity which purportedly used the Trade Mark in connection with the invoices, nor is there evidence of the entity that applied the Trade Mark to the relevant goods.  It submits that the invoices do not identify any legal entity and simply use the term "doTERRA" at the top of each invoice.   That is true.  However, for the whole of the Relevant Period the invoices carry the same “ARN” indicating purchases through a payment gateway such as a credit card and I can safely assume these to be online sales using the US website.  Further, there is nothing to contradict Doxey’s evidence that the Opponent licences use of the Trade Mark to doTERRA Global Limited and it is consistent with my experience of these matters that the intellectual property is frequently owned by a “holding” company (as is the Opponent) and licensed and used by the “group” company(ies).  Given his involvement across the group, I find that Doxey is the controlling mind and that use is either by the owner (Opponent) or by a group company which qualifies as an authorised user.

26. Finally, I decide that the use of the product which bear the Trade Mark, the so-called probiotic defense formula, satisfies use of the Trade Mark in respect of all of the Registered Goods.

    Decision and Costs

27. The Opponent has rebutted the allegation of non-use with respect to all of the Registered Goods.  Accordingly, registration 1490184 is to remain on the Register for all of the Registered Goods.  

28. The Opponent has requested an award of costs and it is usual for costs to follow the event.  The Opponent has been successful.  I am mindful that the Opponent requested an amendment to the Registration on 12 October 2023, after the commencement of proceedings, to narrow the goods claimed.  The Registered Goods shown at [1] is the amended specification.  Prior to that and from the time of first registration, the specification was:

    Pharmaceutical products; nutriments; nutritional supplements; vitamins; minerals; vitamin and mineral drinks; health food supplements made principally pharmaceutical preparations; tablets (pharmaceuticals); preparations for use as dietetic additives for food; dietetic substances in this class

29. A question arises as to whether the award should be adjusted. However, I do not find that the reduction in the specification had any significant impact on ACAL or on what would have been its decision to proceed with the action. Accordingly, I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations.

    Debrett Lyons

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    25 November 2024