E.G. Tiger Outsourcing Ltd

[2019] ATMO 165

TRADE MARKS ACT 1995

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

Re:Opposition by E.G. Tiger Outsourcing Ltd to application under section 92 of the Act by Thumbtack, Inc to remove trade mark number 1748866 (35) –THUMBTACK- in the name of E.G. Tiger Outsourcing Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Not present at the hearing Non-use applicant: Jessie Buchan of DLA Piper Australia
Decision:	2019 ATMO 165 Trade Marks Act 1995 (Cth) –Application under s 92(4)(a) - no intention to use or use shown of the Trade Mark during the relevant period on class 35 services. Registrar’s discretion not exercised. Trade Mark to be removed.

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)(a) filed on 15 September 2017, Thumbtack, Inc (‘the non-use applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of the services in class 35 for which it is registered:

Trade mark:  THUMBTACK

Trade mark number:  1748866

Date of registration:             28 January 2016

Conventions Details:             29 July 2015, Republic of Ireland, No. 2015/01644 in respect of ADVERTISING; DIRECT MAIL ADVERTISING; PROMOTION OF GOODS AND SERVICES FOR OTHERS; CONSUMER INFORMATION SERVICES; BUSINESS ADVICE AND INFORMATION FOR CONSUMERS; PROVIDING ONLINE MARKETPLACES FOR THE EXCHANGE OF INFORMATION, GOODS AND SERVICES; MESSAGING SERVICES; ONLINE COMMUNICATION SERVICES; SOCIAL NETWORKING SERVICES; TRAVEL AND TOURISM SERVICES; TRAVEL ADVICE; RETAIL SERVICES; E-COMMERCE SERVICES; AUCTION SERVICES; PROVIDING CUSTOMER REVIEWS AND RATINGS; RESERVATION SERVICES; DATING SERVICES; BULLETIN BOARD SERVICES; REAL ESTATE AFFAIRS; REAL ESTATE ADVERTISING AND PROMOTION SERVICES; COMPUTER SOFTWARE; DOWNLOADABLE AND NON-DOWNLOADABLE SOFTWARE FOR SENDING AND RECEIVING TEXT, IMAGES, VIDEO AND SOUND VIA A GLOBAL COMPUTER NETWORK OR OTHER COMMUNICATION NETWORKS; ELECTRONIC DEVICES; SOFTWARE FOR MOBILE PHONES AND/OR MOBILE DEVICES; MATCHMAKING SERVICES; INTRODUCTION SERVICES; CLASSIFIED ADVERTISING SERVICES in class 35.

Goods:Class 35: Advertising; direct mail advertising; promotion of goods and services for others; consumer information services; business advice and information for consumers; providing online marketplaces for the exchange of information, goods and services; retail services; auction services; allowing the provision of reviews and ratings by customers as a feature on a retail and product auctions website; real estate advertising and promotion services; business introduction services; classified advertising services  

1. E.G. Tiger Outsourcing Ltd (‘the opponent’) filed a Notice of Intention to Oppose Removal on 30 January 2018 followed by a Statement of Grounds and Particulars on 27 February 2018.

2. The Statement of Grounds and Particulars filed on 27 February 2018 asserted that the grounds on which the non-use applicant relied should be dismissed as the opponent states that they have three years to use the trade mark in Australia. The opponent states they have obtained a domain name and created graphics and software for the product and that their product would be ready to launch later in 2018.

3. On 26 April 2018 the non-use applicant filed their Notice of Intention to Defend. The parties then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

4. The matter came before me, as a delegate of the Registrar of Trade Marks on 24 July 2019. Written submissions were prepared by the opponent. Ms Jessie Buchan provided submissions on behalf of the non-use applicant.  

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)(a) as it is relevant to this case provides the following:

   (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 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 related 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 service at any time before the period of one month ending on the day in which the non-use application is filed;

3. 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

4. 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.

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

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

   [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.

Evidence

Evidence in Support

• The declaration of Eliezer Gorodetzer (‘Gorodetzer 1’) dated 2 August 2018.

Evidence in Answer

• The declaration of Kate Makhzoumi (‘Makhzoumi’) dated 26 November 2018.

Evidence in Reply

• The declaration of Eliezer Gorodetzer (‘Gorodetzer 2’) dated 5 February 2019.

Discussion

1. To defeat the non-use application, the opponent must demonstrate that when it filed the trade mark application that it did have an intention in good faith to use, authorise use or assign the trade mark to a body corporate in Australian for use. And that the opponent has not used the trade mark in Australia or authorized use of the trade mark in Australia in relation to the services for which it is registered before the period of one month ending on the day in which the non-use application was filed.

2. The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponent more likely than not applied for the Trade Mark in good faith and intended to use or did use the Trade Mark during the relevant period. This arises by virtue of section 100(1)(a) and (b) of the Act.

3. The main arguments advanced by the non-use applicant in this case are that:

• The opponent has not demonstrated use of the Trade Mark as registered for the relevant services during the relevant period; and

• The opponent has made unsupported claims that its product would be available by the end of 2018 with no product being available by the hearing being mid-2019; and

• Assertions by the opponent that it has ‘obtained a domain name, created graphics and software and invested significant amounts of money developing their product and applying for trade marks and obtaining professional services’ has not resulted in any documented evidence that the opponent used its Trade Mark through an actual dealing in the services claimed, use through an offering for sale of the services or use through an intention to offer the services for sale as manifested through provision of proof of preparatory steps showing an objective commitment to using the Trade Mark in respect of the registered services.  

• Makhzoumi avers that the non-use applicant has discovered from searches of the on-line records of the Australia Securities and Investments Commission (ASIC) that E.G. Tiger Outsourcing Ltd is not a registered entity in Australia and that there are no registered business or company names consisting of, or incorporating “E.G. Tiger” in Australia.

1. Gorodetzer 1 states that the opponent has intended to use the Trade Mark in good faith within Australia since it applied for the registration and that they have obtained a domain name and created graphics and software for the product (an online bulletin board and marketplace) which would be available at the end of 2018.

2. According to Mr Gorodetzer the opponent applied for the Trade Mark ahead of launching the product as is recommended and that as per the IP Australia guidelines they have three years to use the Trade Mark in Australia. Mr Gorodetzer advises that the opponent has plans to launch the product within this time.

3. Mr Gorodetzer further explains that the non-use applicant is the same party who opposed the registration of the Trade Mark but subsequently withdrew their opposition on 18 August 2017 which allowed the Trade Mark to proceed to registration. He further states that the non-use applicant has not contacted them at any time prior to filing the non-use application.

4. Gorodetzer 2 reiterates that the non-use applicant’s claims have no basis and that the opponent’s actions have always been made in good faith. Additional references to the opponent’s investment of time, money and trade mark applications and professional services are reiterated. However, there is no documentary evidence before me which supports any of these statements made by Mr Gorodetzer.

5. I note in Structureco Inc v Starite Distributors Pty Ltd[3] the Registrar’s delegate Mr Forno said:

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, 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.

-Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst[4]:

-I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.

[3] [2000] ATMO 31; 49 IPR 209

[4] [2003] FCA 816 [59]

1. However, I can differentiate the case before me from those considered above since while a general assertion may be sufficient in some cases the opponent has made a number of assertions as to use and intended use but chose (despite having it pointed out to the opponent and the validity of those assertions challenged in Makhzoumi) not to provide any documentary evidence supporting those assertions. Given that the onus is on the opponent to demonstrate that they intended to use or have used the Trade Mark within the relevant period it appears that it would have been a simple matter for Mr Gorodetzer to provide evidentiary proof that supported the statements in his declaration.

2. Instead I have in evidence before me unsupported assertions and claims that the product would be launched at the end of 2018 and then more assertions that the product would be launched at the end of 2019. The non-use applicant has pointed out that ASIC searches reveal no trace of the opponent and that there is no active website belonging to the opponent. The non-use applicant further pointed out that the broad number of services claimed in class 35 go beyond what the opponent has stated their service product is: an online bulletin board and marketplace. The non-use applicant rightly questions the opponent’s intention to use the Trade Mark on such a broad range of services in class 35 when even Mr Gorodetzer’s declaration does not suggest an intention to use the Trade Mark in respect of the vast majority of the class 35 services.

3. Despite these challenges and arguments put forward by the non-use applicant, the opponent still chose to not file any documents to support the steps that the opponent has taken to launch its product or even to develop its product when it appears that this would have been relatively easy to do given Mr Gorodetzer’s claims regarding the money, time and effort put into developing the opponent’s product.

4. While Mr Gorodetzer has provided a copy of a certificate of registration for a domain name (which was filed just before the hearing and out of time with no accompanying regulation 21.19 application under the Trade Mark Regulations 1994 put forward by the opponent), I am faced with a lot of statements by Mr Gorodetzer which are not supported in the exhibits provided. While this evidence may well exist, I can only make a decision on evidence that is in proceedings before me. Therefore, I can give very limited, if any, weight to Mr Gorodetzer’s statements regarding the intention and preparation of the opponent during the relevant period to launch its online bulletin board and marketplace product bearing the Trade Mark without material in evidence to substantiate his claims.

Registrar’s Discretion

1. There is a discretion embodied in subsection 101(3) of the Act. That particular part of the legislation reads as follows:

   (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.

1. The application for removal is for all services within class 35. The opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all those services because “The opponent has invested significantly in the launch of the THUMBTACK servives and has encountered unforeseen delays in the launch”.

2. I am not persuaded by this reasoning.

3. The evidence before me to support the opponent’s claims is de minimus and the plans Mr Gorodetzer assert occurred to launch the product bearing the Trade Mark are not substantiated in the evidence when it appears this could have easily been done. Given all of the above, I am not satisfied that it is reasonable to exercise the Registrar’s discretion.

Decision

1. I find that the opponent has not rebutted the allegation that it did not intend to use the Trade Mark at the date of filing and has since failed to use the Trade Mark. I direct Trade Mark registration 1748866 be removed from the Register in respect of all the services to which the registration applies, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.

Costs

1. 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 opponent as allowed by Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
20 November 2019