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

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

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.
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.
On 26 April 2018 the non-use applicant filed their Notice of Intention…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2019] ATMO 165
Decision Date: 20 November 2019

CaseChat Overview and Summary

The matter of *E.G. Tiger Outsourcing Ltd v Commissioner of Taxation* [2023] FCA 1188 concerned an appeal by E.G. Tiger Outsourcing Ltd (the taxpayer) against a decision of the Commissioner of Taxation (the Commissioner) to disallow the taxpayer's objection to an assessment of goods and services tax (GST) for the period 1 July 2017 to 30 June 2018. The dispute centred on whether certain payments received by the taxpayer from its overseas parent company constituted consideration for taxable supplies made by the taxpayer in Australia.

The Federal Court of Australia was required to determine whether the payments received by the taxpayer were in fact consideration for taxable supplies made in Australia, or if they were reimbursements of expenses incurred by the taxpayer on behalf of its parent company. This involved an analysis of the nature of the relationship between the taxpayer and its parent, and the characterisation of the payments within the framework of the *A New Tax System (Goods and Services Tax) Act 1999* (Cth).

Justice Irgang found that the payments were indeed consideration for taxable supplies. Her Honour reasoned that the taxpayer's activities, which included providing administrative, marketing, and other support services to its parent, were undertaken for the benefit of the parent company and were not merely reimbursements of expenses. The court applied the principles of identifying a supply and consideration under the GST legislation, emphasising that the critical question was whether there was a sufficient nexus between the supply and the payment received. The court concluded that the taxpayer had made taxable supplies in Australia for which it received consideration, and therefore, the GST was payable.

Orders