Ebixexchange Australia Pty Ltd v Sunrise Brokers LLP - [2024] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by Ebixexchange Australia Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by Sunrise Brokers LLP to remove trade mark numbers 871132 (classes 35, 36, 38, 41 and 42), 944162 (class 36) both for SUNRISE and trade mark number 974048 (classes 35, 36, 38, 41 and 42) for Sunrise Exchange with device – all in the name of Ebixexchange Australia Pty Ltd

Delegate:	Anne Makrigiorgos
Representation:	Opponent: Shauna Ross of counsel instructed by Makinson d’Apice Lawyers Applicant: Melissa Marcus of Counsel instructed by Gilbert + Tobin
Decision:	6 ATMO 2024 Trade Marks Act 1995 (Cth) – section 96 oppositions – s 92(4)(b) applications for partial or full removal - partial removal established - Registrar’s discretion not exercised – services of each trade mark restricted.

Background

On 11 October 2021, Sunrise Brokers LLP (‘Applicant’) filed applications under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Applications’) for the removal of the following registered trade marks (‘Registrations’) in the name of Ebixexchange Australia Pty Ltd (‘Opponent’):
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Registration Number	Trade Mark	Filing Date	Removal
871132	SUNRISE	30 March 2001	Partial
944162	SUNRISE	18 February 2003	Partial
974048	(‘Sunrise Exchange Device’)	13 October 2003	Full

The services of these Registrations are detailed at Annexure A (‘Registered Services’).
The services identified in the partial removal applications and therefore those that are sought to be removed from the specifications of trade mark numbers 871132 and 944162 are detailed at Annexure B.
The Opponent filed Notices of Intention to Oppose the Removal Applications (‘NIO’) and Statements of Grounds and Particulars (‘SGP’) as follows:

Registration Number	NIO Filing Date	SGP Filing Date
871132	21 January 2022	18 February 2022
944162	7 January 2022	4 February 2022
974048	17 December 2021	14 January 2022

The Applicant filed Notices of Intention to Defend the Removal Applications on 31 March 2022.
The Opponent filed identical Evidence in Support (‘EIS’) in respect of each of the Removal Applications and the Applicant filed identical Evidence in Answer (‘EIA’). The Opponent indicated that it would not file Evidence in Reply (‘EIR’) in respect of registration numbers 871132 and 974048. On registration number 944162, EIR was filed on 13 March 2023.
The parties were given the opportunity to be heard. An oral hearing was requested and heard by me as a delegate of the Registrar of Trade Marks on 20 October 2023 by video conference. Shauna Ross of Counsel instructed by Ellysia Joannidis of Makinson d’Apice Lawyers appeared for the Opponent. Melissa Marcus of Counsel instructed by Fiona Brittain of Gilbert + Tobin appeared for the Applicant. Both representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written and oral submissions of the parties.

Evidence

The following evidence was filed:

Registration numbers 871132, 944162 and 974048

EIS

Declaration of Suzanne Ray Connors, General Manager Systems and Solutions of the Opponent, dated 4 July 2022 with Annexures A to M (‘Connors Declaration’).

EIA

Declaration of JP Aubin, Board Member of the Applicant made on 3 October 2022 (‘Aubin Declaration’).

Registration number 944162

EIR

Declaration of Leon d’Apice, Managing Director of the Opponent, dated 13 March 2023 (‘d’Apice Declaration’).

Legal Framework

Part 9 of the Act deals with removal of trade marks from the Register for non-use.
In respect of this matter, s 92 relevantly provides (notes omitted):

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.

I note that 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,[2] and I confirm that five years since filing the Trade Marks has in fact passed.
[2] 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.
Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 11 September 2021 (‘Relevant Period’).
The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Marks in respect of any or all of the services identified in the Removal Applications during the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]
[3] Act s 100(1)(c).
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52.
[5] Act s 100(3)(c).
In Woolly Bull Enterprises Pty Ltd v Reynolds,[6] 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’. 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 of use is relied upon then it should 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 (Hearing Officer Forno).
The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of the sign as a badge of origin.[10]
[10] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[11] Similarly, bald assertions of use during the Relevant Period which are not supported by clearly dated evidence should be afforded little weight.[12]
[11] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).
[12] Aristedes Maniatis v Roche Diagnostics GmbH [2022] ATMO 59, [26] (Hearing Officer Smith).
Section 101 provides the Registrar with the discretion to remove the Trade Marks from the Register in respect of any, or all, of the services for which they are registered. Relevantly, the section also provides:
(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.

Discussion and Reasons

Use During the Relevant Period

Registration numbers 871132 and 944162

The SGPs are substantially similar differing only in respect of what industry the SUNRISE mark has a reputation. In summary, the SGPs claim continuous use in good faith of the SUNRISE and SUNRISE EXCHANGE marks together with associated composite marks that include as an essential element the word SUNRISE in respect of all the Registered Services provided to the finance industry in Australia before, during and after the Relevant Period. On registration number 871132, the Opponent also claims recognition of and a reputation in the SUNRISE mark and associated composite marks by its customers and the financial industry as being the name, brand and trade mark of the Opponent and on registration number 944162, this reputation refers to customers, insurers, insurance intermediaries and the insurance industry.

Registration number 974048

The SGP is also substantially similar to the other SGPs differing only in the claim to use of associated composite marks also including 2 curved arrows. The claimed reputation refers to customers and the financial industry.

Summary of EIS

Connors states that the Opponent operates in the financial services sector in Australia, supporting this claim with a copy of the Australian Trade and Investment Commission’s webpage relating to the “Financial Services” industry in Australia.
Connors describes the Opponent as a service provider to participants in the financial industry such as insurance brokers and insurers. Connors states that the Opponent’s service provided under the SUNRISE EXCHANGE and SUNRISE trade marks is an eCommerce business solution comprising a computer program/software that in turn comprises databases and directories containing business and commercial information that operate online in conjunction with insurance industry platforms that connect intermediaries’ systems with insurance underwriting applications (‘eCommerce Solution’). The eCommerce Solution allows insurance companies and insurance intermediaries[13] to process quotes, submit and respond to new business, make enquiries, endorse, and renew policies and complete cancellations and lapses in real time across a range of commercial and personal lines of insurance.
[13] Intermediaries are described in the Connors Declaration at [35] as “Brokers, Agents, Authorised Reps and Underwriting Agencies’.
Connors states that the eCommerce Solution has been designed to streamline business to business processes between insurance intermediaries and insurance companies.
Connors states that insurance intermediaries are required to register to use the eCommerce Solution. Connors provides a copy of such a registration form and claims it was available for use, and in fact used, by prospective customers in Australia within the Relevant Period. I note firstly that the form is undated and secondly that the trade marks which appear on the form are (‘Sunrise Device’) and SUNRISE EXCHANGE. Connors also provides a screenshot of the System Administration Login page claimed to be how the login page was presented during the Relevant Period, which I note is also undated and the trade mark which appears is the Sunrise Device.
Connors states that the customers of its eCommerce Solution in Australia are major general insurance companies including AIG, Allianz, Chubb, IAG, QBE, Suncorp and Zurich and insurance brokers, agents, authorised representatives and underwriting agencies.
Connors provides the revenue for the financial years 2019 - 2021 derived from insurers and intermediaries. The revenue streams are claimed to relate to the access fees, consultancy income, programming income, transaction fees and online quoting and template income that is generated by the business, financial, telecommunication and research services offered by the Opponent through the eCommerce Solution. The revenue is significant.
Connors also provides the transaction volumes processed through its eCommerce Solution from 2004 to 2020 and they too are significant with increases year on year.
Connors provides 6 sample invoices headed ‘Sunrise Exchange Invoice Description’ dated during the Relevant Period issued to users of its eCommerce Solution which relate to licence fees, transaction fees, access fees and Easysure B2B and Easysure B2C transaction fees, which are claimed to be charged to specific insurers that provide white labelled products to some banks as part of their overall provision of services.
Connors provides undated screenshots from the products/sunrise pages of its web site. I note that the home page is headed ‘Sunrise Product Selector’ and displays 4 click options for ‘Sunrise Exchange’ (the eCommerce Solution), ‘Ebix eBusiness Portal’ (enables intermediaries who do not have a compliant broking system to access products through the eCommerce Solution), ‘Sunrise Online Quoting’ (a tool which allows intermediaries to obtain feature and rate comparisons from insurers) and ‘Templates for Sunrise Exchange’ (provides an intermediary with a formatted modern policy schedule). Connors also provides screenshots of each click option. I note there is no use of the Sunrise Exchange Device. I also note that the trade mark SUNRISE appears prominently with the description “a suite of e-Commerce and Transaction solutions for the insurance industry” on the home page and that there is use of SUNRISE under the heading eCommerce and in relation to online quoting for home and motor insurance and for production of invoices (templates). These services are claimed to have been available since 2009. In support, Connors annexes Wayback Machine[14] extracts of the products/sunrise pages of its web site from 2018 to 2021. The pages clearly show similar use of the trade marks SUNRISE and SUNRISE EXCHANGE but also use of (‘Sunrise Exchange Button device’) in the Relevant Period but not use of the Sunrise Exchange Device.
[14] >
Connors states that the Opponent provides information sheets and guides to assist its customers to connect to the eCommerce Solution. Although the last ‘updated date’ was in March 2018, before the Relevant Date, Connors declares that these versions were available during the Relevant Period. I note the use of the trade marks SUNRISE, SUNRISE EXCHANGE and the Sunrise Device but not use of the Sunrise Exchange Device.
Connors states that technical material, operational manuals and reference guides were all distributed by the Opponent to customers and third-party suppliers in Australia. I note that these documents are dated between 2010 and 2019 with at least 2 manuals dated in the Relevant Period. I note the use of the trade marks SUNRISE, SUNRISE EXCHANGE and the Sunrise Device but not use of the Sunrise Exchange Device.
Connors claims that the eCommerce Solution is used by most participants in the insurance industry and the Opponent refers to the solution in their technical and marketing materials. Examples are provided by Connors. I note that the majority of these examples are in the Relevant Period and refer to the trade mark SUNRISE EXCHANGE and that that there is no use of the Sunrise Exchange Device.
Connors states that the eCommerce services have been advertised, promoted, offered and provided in Australia since in or about 2004 via its web site, quarterly newsletters and participation in trade shows and conferences. Examples of the web site and quarterly newsletters are provided which I note are dated in the Relevant Period. There is no supporting evidence of any participation in trade shows and conferences. I also note use of the trade marks SUNRISE and SUNRISE EXCHANGE but not use of the Sunrise Exchange Device.
Connors provides information on the Applicant and claims that it is in the financial services industry and has sought to extend protection to Australia of its international registration for SUNRISE BROKERS for a wide range of services in Classes 35 and 36.[15]
[15] See international registration number 1444754 and International Registration Designating Australia number 2017362.

Summary of EIA

The Aubin Declaration explains the establishment of the Applicant in 2001 and that it is part of the Sunrise Group, which in turn is part of the BGC Partners Group which currently operates offices in the UK, US and Asia. The Sunrise Group offers broking services.
The Aubin Declaration seeks to highlight the differences between the broking services it provides and those of the Opponent such as:

The Applicant’s services are in the rate, credit, foreign exchange, equity and commodity asset classes but do not include insurance related services.
The Applicant’s services are offered to non-retail, non-individual, corporate, professional firms (such as global banks, primary dealers, institutional investors, hedge funds and high frequency trading firms) on a global basis, whilst the Opponent services insurance brokers and insurance companies.
The Applicant is in a highly regulated industry – the trading entities related to the Applicant are regulated in the UK, US and Hong Kong

Summary of EIR

The d’Apice Declaration sets out the history of the SUNRISE and SUNRISE EXCHANGE marks including Telstra’s creation of the eCommerce Solution in 2004, the early marketing of the eCommerce Solution by Telstra’s eBusiness Services and the purchase by the Opponent of Telstra’s eBusiness Services in 2008.
d’Apice declares that the Opponent also operates in a heavily regulated industry with oversight by the Australian Securities & Investments Commission.

Preliminary Matter

Prior to considering any substantive issues, a preliminary matter needs to be addressed. In respect of the EIR, the Applicant has submitted that the contents of the d’Apice Declaration are not in reply.
EIR is an opponent’s opportunity to reply to an applicant’s EIA. By its very definition, EIR should be limited to replying to issues canvassed in the EIA.
However, the Registrar is not, as a matter of law, compelled to exclude evidence which does not properly constitute EIR. Hence, where evidence is filed in time it is generally objected to on the basis of its probative value rather than its admissibility.[16]
[16] Malibu Boats West Inc v Catanese [2000] FCA 1141 (Finkelstein J).
While I find that 2 paragraphs of the d’Apice Declaration are arguably in response to 2 paragraphs concerning the manner of acquiring revenue and industry regulation in the Aubin Declaration, the vast majority of the declaration refers to the history of the eCommerce Solution. While the evidence relating to the history of the eCommerce Solution could have been put in EIS, this evidence has little probative value on use of the Sunrise Exchange Device in the Relevant Period or the exercise of the Registrar’s discretion.
In light of the conclusions which follow on the substantive issues on registration number 944162, I do not consider that the d’Apice Declaration changes my conclusions. Therefore, I need not decide whether the entire d’Apice Declaration is EIR and therefore its probative value in my decision.

Discussion and Reasons

For the sake of brevity, I will discuss registration numbers 871132 and 944162 together given they are for the same mark SUNRISE (‘Trade Mark Sunrise’), noting however that the EIR is only applicable to registration number 944162.

Registration numbers 871132 and 944162

The Applicant’s written submissions concede that the Opponent uses the Trade Mark Sunrise in relation to the provision of insurance services to insurance brokers, insurers and third parties supplying insurance services to the insurance market during the Relevant Period. The Applicant seeks to limit the scope of the Trade Mark Sunrise to insurance related services.

The Opponent submits that the evidence demonstrates that the Trade Mark Sunrise has been used in respect of all the Registered Services but concedes there has been no use for:
‘banking services, issuing debit, credit, payment and smart cards, monetary affairs, real estate affairs, sporting and cultural services provided online from a computer database or the internet, arranging and conducting colloquiums, conferences, congress, seminars and symposiums, sponsorship of sporting competitions and entertainment’ (‘Unused Services’).

In relation to the Unused Services, the Opponent submits that my discretion be exercised not to remove these services.

There are 3 matters on which I must decide:

whether the Opponent has only used the Trade Mark Sunrise in respect of insurance services in the Relevant Period and therefore whether the Registered Services of registration 871132 sought to be limited by the Applicant to insurance services should be so limited and, if so, whether I should exercise my discretion under s 100(3) not to limit the scope of these services;
whether some or all of the broad claims (other than those in respect of insurance services) in the Registered Services sought to be removed have been used by the Opponent in the Relevant Period and if not, whether I should exercise my discretion under s 100(3) to retain any broad claims; and
whether I should exercise my discretion under s 100(3) to retain the Unused Services.

The Opponent’s written submissions provide a number of tables listing the Registered Services provided under the Trade Mark Sunrise together with references to the supporting evidence claimed to demonstrate use of these services, which include non insurance services, in the Relevant Period.
The Applicant submits that from an examination of the Opponent’s evidence, it is evident that the Opponent only supplies insurance related services to participants in the insurance sector.
I propose to firstly deal with whether the Opponent has only used the Trade Mark Sunrise in respect of insurance services in the Relevant Period and therefore whether the scope of the Registered Services of registration number 871132 should be limited by the words ‘insurance services’ as per the partial removal application. If I decide to limit the Registered Services of registration number 871132, I will consider whether to exercise my discretion further below.
In my opinion, while the Opponent makes claims that it is a service provider to participants in the financial industry such as insurance brokers and insurers (emphasis added), I find the entirety of the Opponent’s evidence makes it crystal clear that the Opponent is only a service provider to the insurance industry and not to the entire financial industry or any other industry. In fact, on the evidence, it is clear to me that the eCommerce Solution is only useful in the insurance industry. Rather than provide a list of all the passages/comments in the Opponent’s evidence to support my conclusion, I provide some notable examples:
·     ‘The insurance industry's benchmark electronic transaction solution, streamlining communications and transactions be insurers and intermediaries’.[17]
[17] Connors Declaration, Annexure I.
·     ‘the insurance industry's revolutionary electronic service enabling insurers and intermediaries to transact in real time over a broad and expanding range of insurance products and services’.[18]
·     ‘streamline all of the transactions across underwriters’.[19]
·     ‘from insurer to intermediary’.[20]
·     ‘the industry platform that connects intermediaries systems with insurance underwriting applications’.[21]
·     ‘allows insurance professionals to process quotes, submit and respond to new business, make enquiries, endorse and renew policies, complete cancellations and lapses across home, motor, commercial, trade and most other general insurance products’.[22]
·     ‘general and life insurance solutions for intermediaries and insurers’.[23]
·     ‘designed to streamline business to business (B2B) processes between insurance intermediaries and insurance companies’.[24]
·     ‘The customers of Sunrise/Sunrise Exchange are the major General Insurance companies’.[25]
·     ‘customers of Sunrise/Sunrise Exchange are the major General Insurance companies operating and virtually every Insurance Broker in Australia’.[26]
·     ‘the insurance industry's leading electronic eCommerce service’.[27]
[18] Ibid.
[19] Ibid.
[20] Ibid.
[21] Ibid.
[22] Ibid.
[23] Ibid.
[24] Connors Declaration [16].
[25] Ibid [34].
[26] Ibid [34].
[27] Ibid [15].
The Opponent’s claims regarding the white labelling of products to some banks are not supported by evidence of the actual provision of white labelled products to any banks nor evidence that white labelled products are provided by insurers under the Trade Mark Sunrise.
While the Opponent submits that its web site is publicly facing and available to all Australian consumers to view, it is highly unlikely that an Australian consumer outside the insurance industry would firstly, stumble across the web site and secondly if they did, would proceed to scroll past the home page which states ‘Market Leading Solutions For The Insurance Industry’.
In my opinion, the evidence shows that all use by registered customers and third parties of the eCommerce Solution is only in relation to insurance services.
The Opponent also submits that some of its customers are financial institutions and not just insurers, notably Allianz and Suncorp.[28] There is no evidence to show that Suncorp is a financial institution and not just an insurer. As to Allianz, the Australian Trade and Investment Commission’s webpage[29] identifies Allianz as a provider of funds management/superannuation and insurance, but I note that this webpage is dated almost 10 months after the Relevant Date. There is no evidence to show that this was the case in the Relevant Period. Further even if Allianz and Suncorp are financial institutions and not just insurers, the services provided to them by the Opponent are only insurance related services.
[28] Ibid [41].
[29] Connor’s Declaration [4], Annexure A2.
In conclusion, I agree with the Applicant. The Opponent is simply not engaged in the general activity of providing any of the Registered Services of registration number 871132 outside the insurance industry. I am therefore satisfied that the Opponent has only used the Trade Mark Sunrise in respect of insurance services in the Relevant Period and therefore, subject to the discretion (which I discuss further below), I am satisfied that the scope of the Registered Services of registration number 871132 should be limited by the words ‘insurance services’.
I now propose to deal with the services which the Applicant claims have not been used at all by the Opponent, whether or not relating to insurance (excluding the Unused Services) and which are sought to be removed in the partial removal applications of the Trade Mark Sunrise, namely:

advertising and promotion and compilation of advertisements for use as web pages on the Internet
financial services and financial affairs
accepting and authorising financial transactions and payment services using electronic and non-electronic means, credit, debit and smart card services and electronic funds transfer services and on-line payment services
telecommunication and communication services, telecommunication of information (including web pages), computer programs and any other data, telecommunication services for the collection, transmission, processing and storage of messages and data and provision of telecommunication, access and links to computer databases and the Internet
computer services relating to providing access to and leasing access time to computer databases and the Internet
storage and retrieval of business and commercial information

The Opponent submits that the fundamental nature of these services do not change, even if only offered and provided to the insurance industry.
The Applicant submits that the evidence does not support such a broad characterisation of these services as the services are insurance related and are only provided and used by those in the insurance industry. The Applicant further submits that each of the subset of services covered by the Trade Mark Sunrise take their character from the overall business conducted by the Opponent, namely insurance services.
Taking each of the services in turn:

a)advertising and promotion and compilation of advertisements for use as web pages on the Internet
The Opponent claims these services are evidenced by the ‘Sunrise Online Quoting’ tool which allows the Opponent’s registered customers to acquire and compare home, contents or motor quotations from leading Australian insurers. The Opponent claims that the product acts as an advertising medium for insurers as they are able to highlight the benefits of their products to intermediaries. I disagree. I do not believe advertising and promotion is the intended purpose of the ‘Sunrise Online Quoting’ tool. Nowhere in the Opponent’s evidence does the Opponent refer to its provision of advertising or promotional services for others or its intention to do so. I am therefore not satisfied there has been use in respect of these services.
b)financial services and financial affairs
I consider that the claims to financial services and financial affairs are, for all intents and purposes, identical in scope. I shall therefore only now reference financial services which can be taken to include financial affairs. I note that the definition of finance includes ‘the conduct or transaction of money matters generally, especially such as affect the public, as in the fields of banking and investment; to supply with means of payment; provide capital for; obtain or furnish credit for; to manage financially; to conduct financial operations and manage finances’ and the definition of financial includes ‘relating to money matters’.[30]
[30] Macquarie Dictionary online.
The Opponent claims it is a service provider in the financial services industry. I agree to the extent that insurance falls under the financial services umbrella. However, the breadth of financial services is extensive, and falls into different sectors, as is shown by the Australian Trade and Investment Commission’s webpage.[31] Further there is no convincing evidence from the Opponent to show that in general, in the Australian financial services industry, a provider of one sector e.g. banking is also a provider of insurance services.
[31] Connor’s Declaration [4], Annexure A2.
I accept that the use of a trade mark for a subset of a particular category of services can in some circumstances be sufficient to maintain a registration of a trade mark for the entire category. Logically, the more extensive the category in question, the less likely it is to be appropriate to allow a broad claim to remain unrestricted based on use only for some services within that category.
Ultimately, financial services are of such broad nature that it is not appropriate to allow a broad claim to remain unrestricted based on the narrow use demonstrated by the Opponent.
There is no evidence that the Opponent provides financial services which are other than insurance related. Therefore, I am not satisfied that the provision of insurance services can support the claim that the Opponent provides all the different types of financial services.
c)accepting and authorising financial transactions and payment services using electronic and non-electronic means, credit, debit and smart card services, electronic funds transfer services and on-line payment services
The Opponent claims that its eCommerce Solution enables the insurer to take online payment from the insured through the collection of banking details or credit card details and upon receiving payment, the eCommerce Solution will then electronically both distribute the insurance intermediaries’ income directly to a policy management system and deliver the remittance advice to the broker. The Opponent points to the webpages displayed under the 4 click options of the website in support of this claim.[32] The eCommerce Solution clearly accepts and allows financial transactions to occur electronically by a variety of means, for example, payment of licence fees and distribution of payment to registered customers. However, the Opponent’s evidence only supports use of these services by insurance industry participants.
[32] Ibid Annexure I and C2.
I am satisfied that the Opponent is in the business of accepting and authorising financial transactions, payment services using electronic and non-electronic means and on-line payment services but not outside the insurance industry.
I am also not satisfied that the Opponent’s evidence supports use of the Trade Mark Sunrise for credit, debit and smart card services and electronic funds transfer services.
The Opponent is not providing the breadth of services expected from a provider of credit, debit or smart cards such as issuing cards, issuing invoices for purchases etc or the breadth of services expected from a provider of electronic funds transfer. It is my understanding that electronic funds transfer services include, for example, direct deposits, credit card transactions, ATM transactions, and phone payments. The Opponent’s eCommerce Solution is only allowing Registered Customers who are in the insurance industry to take online payment from the insured through the collection of banking details or credit card details.
Electronic payments, be they by credit, debit, smart cards, electronic funds transfer or online payments, are a highly accepted method of payment for goods and services. Therefore, to decide that the Opponent is in the actual business of providing or facilitating the services of credit, debit and smart card services and electronic funds transfer services, rather than in the insurance business, would mean that anyone who provides these varied means for payment for goods and services, for example, retailers, wholesalers, doctors, plumbers etc. are in the payment services business. This is clearly not the case.
In conclusion, I am only satisfied that the Opponent has provided the following services in the Relevant Period - ‘accepting and authorising financial transactions, payment services using electronic and non-electronic means and on-line payment services in the insurance industry’.
d)telecommunication and communication services, telecommunication of information (including web pages), computer programs and any other data, telecommunication services for the collection, transmission, processing and storage of messages and data and provision of telecommunication, access and links to computer databases and the Internet
The Opponent supports the claim that it provides these services on the basis of the same webpages displayed under the 4 click options of the website referred to above, the provision of a business intelligence reporting tool to customers[33] and the Opponent’s VPNs (virtual private networks) which are required to allow the intermediary to connect securely to eCommerce Solution.[34]
[33] Ibid [31].
[34] Ibid [36] and Annexure F.
While it is likely that all businesses today use telecommunication and communication services, these services are typically provided by third parties. Further, while most businesses communicate with their customers through a variety of means, including phone, email, etc and provide information to customers via a variety of means including web sites, social media etc, it does not follow that these businesses are therefore providers of telecommunication or communication services. The companies who provide telecommunication and communication services facilitate and enable others, including the Opponent, to communicate with their customers.
The same applies to VPNs. My understanding is that a VPN protects online privacy and security to an internet connection and is used by many companies. Thus, while the Opponent allows its users access to VPNs to facilitate transactions in its systems, they are not in the business of creating or offering VPNs to customers for any purpose beyond interaction with its eCommerce Solution. The Opponent is not in the business of providing telecommunication, access and links to computer databases and the Internet.
Further, while the Opponents provides a business intelligence reporting tool, this tool is provided as part of its eCommerce Solution to registered customers, that is, it is an ancillary feature of its software.
Therefore, on the evidence, telecommunications and communications is not the Opponent’s business and I am not satisfied that there has been use in respect of these services.
e)computer services relating to providing access to and leasing access time to computer databases and the Internet
The Opponent supports the claim that it provides these services on the basis of the webpages at including those displayed under the 4 click options referred to above, a button labelled “Ebix eBusiness Portal” which takes the user to the information page containing an overview and frequently asked questions of the Ebix eBusiness Portal,[35] information sheets and guides on connecting to a VPN available for download from the Opponent’s website[36] and technical material, operational manuals and reference guides regarding the eCommerce Solution.[37]
It is my understanding that an internet service provider (‘ISP’) provides individuals and organisations access to the internet and other related services. The Opponent is not an ISP and is not in the business of providing computer services beyond those ancillary to its eCommerce Solution. I am not satisfied on the Opponent’s evidence that there has been use in respect of these services.
f)storage and retrieval of business and commercial information
The Opponent supports the claim that it provides these services on the basis of the same webpages displayed under the 4 click options of the website, the button labelled “Ebix eBusiness Portal” referred to above and the technical material, operational manuals and reference guides regarding the eCommerce Solution, which are all referred to above.
The Opponent is not in the business of storage and retrieval of business and commercial information for others. As part of the services provided by its eCommerce Solution, the Opponent stores its own business and commercial information, which is insurance related, and which is provided to its registered customers. The service is merely an internal process which enables the eCommerce Solution to operate and is not a service which the Opponent offers at large to others.
In conclusion, I am not satisfied that the Opponent has provided the services in the Relevant Period of ‘storage and retrieval of business and commercial information’.
[35] Ibid [23].
[36] Ibid [39] and Annexure F.
[37] Ibid [45].

As the Opponent has not rebutted the allegation of non-use other than in respect of ‘accepting and authorising financial transactions, payment services using electronic and non-electronic means and on-line payment services in the insurance industry’, the non-use grounds have been partially established on registration number 871132 and established on registration number 944162. The Opponent has admitted that there has been no use of the Unused Services.
Presently, the Registered Services of both registration numbers 871132 and 944162 would be amended to read as detialed in Annexure C to this decision.
I must now consider whether to exercise my discretion to allow all or any of the Registered Services proposed to be removed from both registration numbers 871132 and 944162 and also whether not to limit the Registered Services of registration number 871132 by the words ‘all of the foregoing limited to insurance services’.

Discretion

The question to be asked is whether it is reasonable not to partially remove or restrict the Registered Services of registration numbers 871132 and/or 944162 proposed in Annexure C, even though the Opponent has not established use of the Trade Mark Sunrise for the services sought to be removed and restricted during the Relevant Period and has conceded no use of the Unused Services.

The discretion provided by this section is very broad. In PDP Capital Pty Ltd vGrasshopper Ventures Pty Ltd,[38] the Court made the following observations regarding the discretion under s 101(3):
[38] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[39]
[39] Ibid [153] (emphasis altered) (citations omitted).
The discretion factors broadly fall under 3 headings:

the interests of the owner of the trade mark;
the interests of the applicant for removal; and
the public interest.[40]
[40] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33] (Hearing Officer Thompson).

The Opponent argues in favour of the exercise of the discretion on the basis that:

the potential for consumer confusion based on the reputation and goodwill in the Trade Mark Sunrise
to remove the Trade Mark Sunrise would pave the way for acceptance of the Applicant’s SUNRISE BROKERS application resulting in fragmented ownership, the possibility of prevention of the Opponent offering its services and the Applicant using its SUNRISE BROKERS mark in the field of financial services and insurance. Therefore, removal would be potentially conducive to public confusion
the similarity between the Trade Mark Sunrise and the SUNRISE BROKERS mark
the services upon which the Trade Mark Sunrise has been used are similar to the remaining services
if the Registered Services are restricted to insurance services, these services will conflict with the removed or restricted services which is likely to be productive of confusion

The Applicant argues against the exercise of the discretion on the basis that:

the Opponent only has a reputation in the Trade Mark Sunrise for insurance related services which are provided to specific clients in the insurance industry and does not have a reputation that resides with the general public
removing or limiting any of the Registered Services will have no impact on the Opponent’s ability to continue its trading activities
if the Applicant obtains registration of the SUNRISE BROKERS mark, its services will be provided to a different segment of the financial industry and are not insurance services
removal would not be potentially conducive to public confusion as the public in question are sophisticated and not the general public
the Applicant’s ability to obtain registration of its SUNRISE BROKERS mark is constrained by the Opponent’s broad registrations

I must be positively satisfied that it is reasonable that the Registered Services of registration numbers 871132 and/or 944162 should not be restricted or partially removed. I am not so positively satisfied for the following reasons.

The private interests of the parties

While I do not disagree that the Opponent has a reputation in the Trade Mark Sunrise, I believe this reputation is not in respect of all and every type of financial service in each and every financial sector but is limited to insurance services. The Opponent’s evidence is light on whether it is likely that consumers will be confused if a third party, such as the Applicant, were to operate under the same or a similar trade mark to SUNRISE in a different financial sector. The Opponent’s evidence also does not allow me to decide whether it is expected that an entity which provides insurance related services would also provide other financial services and vice versa. I am unpersuaded that this provides a justification to allow the retention of the Trade Mark Sunrise on the Register for all of the Registered Services.
I am not satisfied that this is a case where fine distinctions need to be drawn. Instead, it would appear counterproductive to the purpose of the trade mark system for traders in a different financial services sector to insurance, for example, banking, who wish to obtain registration of a similar mark for banking services, to be hindered in their efforts because of a mark used only in respect of insurance services. In this case, the concern is not fragmentation; rather the restriction sought by the Applicant solely to insurance services is suitable within the context of the specific market in which the Opponent has and continues to operate.
I am satisfied that the Opponent’s clients are sophisticated and not the average person in the street, which also tends to diminish any possibility of confusion or deception.
The Opponent has made submissions that I should exercise the discretion on the basis that the services upon which the Trade Mark Sunrise has been used are similar to the remaining services. For the reasons detailed earlier, the evidence provided on this issue is so scant that I am not satisfied that insurance services can be considered similar to all the Registered Services which do not relate to insurance. I note that the question of whether insurance services are similar to various other types of financial services is likely to arise again in relation to the prosecution before this office of the Applicant’s SUNRISE BROKERS trade mark. Given mine is a finding of fact based largely on an absence of evidence on this issue, it is unlikely that my finding here could do much to inform that prosecution. Further, I note that were I to restrict or partially remove the Registered Services as proposed, the Opponent would still retain the protection of the Trade Mark Sunrise for the services it has used and (both in respect of any opposition or infringement matters) any similar services or closely related goods, which would be expected to prevent any instance of consumer confusion. I am therefore satisfied that partially removing or restricting the Trade Mark Sunrise will not affect the Opponent’s insurance business or have an impact on the Opponent’s ability to continue to use the Trade Mark Sunrise.
Further, there is no evidence that the Opponent has ever used the Trade Mark Sunrise or intends to use the Trade Mark Sunrise in the future in respect of financial services outside the insurance industry.
The Applicant’s private interests in this matter are clear. It has applied to register the trade mark SUNRISE BROKERS and the Trade Mark Sunrise stands in the way of this application.

The public interest

On the question of the public interest, there are a number of aspects to be considered.
There is a public interest in maintaining the integrity (or ‘purity’) of the Register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the Register, the Court said:
[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[41]
[41] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).
The question of the public interest arises in the determination whether confusion would be caused by removing or restricting the Registered Services of the Trade Mark Sunrise. Thus, while the ‘purity’ of the Register is a major aspect of the public interest, another major aspect is the minimisation of the likelihood for the public to be deceived or confused as to the trade source of the services bearing a trade mark.
I have already indicated above that I am not satisfied that the removal or restriction of the Registered Services of the Trade Mark Sunrise would result in consumer confusion or practically impact on the interests of the Opponent in any way. Accordingly, given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove or restrict the Registered Services of the Trade Mark Sunrise.

Registration number 974048

The Applicant claims that the Opponent has not used the Sunrise Exchange Device in good faith during the Relevant Period in relation to any of the Registered Services identified in the removal application.
The Opponent concedes there has been no use for:
‘banking services, issuing debit, credit, payment and smart cards, sporting and cultural services provided online from a computer database or the internet, arranging and conducting colloquiums, conferences, congress, seminars and symposiums’ (‘SE Unused Services’).

In relation to the SE Unused Services, the Opponent submits that my discretion be exercised not to remove these services.

I am satisfied that the Opponent’s evidence does not show any use of the Sunrise Exchange Device as registered in respect of any of the Registered Services.
The Opponent submits that each of the trade marks SUNRISE, SUNRISE EXCHANGE, the SUNRISE Device and the Sunrise Exchange Button device are substantially identical to the Sunrise Exchange Device and were used in the Relevant Period. The Opponent relies on s 100(3)(a) that for the purposes of paragraph 100(1)(c), the Opponent is taken to have rebutted the allegation that the Sunrise Exchange Device has not been used in the Relevant Period, or been used in good faith, by the Opponent in relation to the Registered Services if the Opponent establishes that the Sunrise Exchange Device with additions or alterations not substantially affecting its identity, within the meaning of s 7(1), was used in good faith by the Opponent in relation to those Registered Services during the Relevant Period.
The Opponent submits that the 4 marks do not substantially affect the identity of the Sunrise Exchange Device on the basis that SUNRISE is an essential element of the Sunrise Exchange Device and the word EXCHANGE has a degree of descriptiveness. The Applicant disagrees.
Below is a table of the 4 marks to be compared:

Marks Used	Registered Mark
SUNRISE
SUNRISE EXCHANGE

A trade mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’ has been interpreted to mean that the trade marks being compared must be substantially identical.[42]
[42] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ); Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [256] (Yates J); Symphony Holdings Limited v Skins IP Limited [2022] FCA 1238, [20] (Raper J).
With respect to the assessment of whether two trade marks are substantially identical there is long standing authority that on a visual comparison, the trade marks in question are to be ‘compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison’.[43]
[43] Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66, [12] (Windeyer J).
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[44] the Full Court clarified the way in which a “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained as:
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[45]
[44] [2017] 141 IPR 1 (Greenwood, Jagot and Beach JJ).
[45] Ibid [52].
In my opinion the essential elements of the Sunrise Exchange Device are the words SUNRISE and EXCHANGE where each word is as essential as the other. I do not agree with the Opponent that the word EXCHANGE has some degree of descriptiveness for insurance related services.
On a side by side comparison, I am not satisfied that the trade marks SUNRISE or the Sunrise Device are substantially identical to the Sunrise Exchange Device. The lack of the word EXCHANGE in combination with the lack of a black background in these 2 marks, and additionally the lack of the arrow device in the SUNRISE mark, are alterations of the Sunrise Exchange Device which taken together substantially affect its identity. I am however satisfied that SUNRISE EXCHANGE and Sunrise Exchange Button device are substantially identical to the Sunrise Exchange Device. The essential elements of the Sunrise Exchange Device exist in both the SUNRISE EXCHANGE mark and the Sunrise Exchange Button device. The arrow device appears here to be illustrative of the word ‘exchange’ and as such its absence has little impact in this context. The lack of a black background in these 2 marks, and additionally the lack of the arrow device in the SUNRISE EXCHANGE mark, are alterations to the Sunrise Exchange Device which do not substantially affect its identity.
Given I have decided that use of the SUNRISE EXCHANGE mark and the Sunrise Exchange Button device may be accepted as use of the Sunrise Exchange Device, I am now required to decide whether there has been use of the Sunrise Exchange Device in good faith during the Relevant Period in relation to any of the Registered Services and if not, whether to exercise my discretion to allow all or any of these Registered Services to remain.
The Applicant submits that if I find there is use of the Sunrise Exchange Device with alterations that do not substantially affect the identity of the mark, registration number 974048 should be limited in the same manner as registration number 871132.
In my opinion, as with the Trade Mark Sunrise, the evidence shows that the Opponent has used the Sunrise Exchange Device in respect of insurance services in the Relevant Period. I refer to paragraphs 49 to 54 of my decision above which apply equally here. In fact, the use of the Sunrise Exchange Device by the Opponent is as prevalent as the use of the Trade Mark Sunrise in the Relevant Period. The Opponent is however not engaged in the general activity of providing any of the Registered Services of Registration 974048 outside the insurance industry.
I am satisfied that the Opponent has only used the Sunrise Exchange Device in respect of insurance services in the Relevant Period and therefore, I am satisfied that the scope of the Registered Services of Registration 974048 should be limited by the words ‘insurance services’ and, subject to my comments below at paragraph 94, I agree with the Applicant, subject to the discretion (discussed below), that it is appropriate to limit the services in the same manner as registration number 871132.[46]
[46] Noting however that identical services in registration numbers 871132 and 974048 have been placed in different classes namely “storage and retrieval of business and commercial information, sponsorship of sporting competitions and entertainment and computer services relating to providing access to and leasing access time to computer databases and the Internet”.
In relation to the SE Unused Services, the Opponent submits that my discretion be exercised not to remove these services.
For the same reasons stated in paragraph 58 of this decision regarding the Trade Mark Sunrise, I am satisfied that the Opponent has provided the following services under or by reference to the Sunrise Exchange Device in the Relevant Period - ‘accepting and authorising financial transactions, payment services using electronic and non-electronic means and on-line payment services in the insurance industry’.
Finally, I note that in respect of registration number 871132, the Applicant’s concession that it had not used the Trade Mark Sunrise for the Unused Services included the services of “sponsorship of sporting competitions and entertainment”. This is not the case for registration number 974048. Further, registration number 974048 also covers “sporting and cultural services” per se. In respect of the services “sponsorship of sporting competitions and entertainment and sporting and cultural services”, the Opponent’s evidence shows no use of the Sunrise Exchange Device in the Relevant Period. Therefore, I am satisfied that “sponsorship of sporting competitions and entertainment and sporting and cultural services” can be removed from this registration.
Presently, the Registered Services of registration number 974048 would be amended to read as detailed in Annexure C to this decision.
I must now consider whether to exercise my discretion to allow all or any of the Registered Services proposed to be removed and also whether not to limit the Registered Services by the words ‘all of the foregoing limited to insurance services’.

Discretion

The question here is whether it is reasonable not to partially remove or restrict the Registered Services of registration number 974048 proposed in Annexure C, even though the Opponent has not established use of the Sunrise Exchange Device for the services sought to be removed and restricted during the Relevant Period and has conceded no use of the SE Unused Services.
For the same reasons stated in paragraphs 63 to 77 of this decision regarding the Trade Mark Sunrise, I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove or restrict the Registered Services of the Sunrise Exchange Device.

Decision

100. As found above, the Opponent has not been successful in its oppositions and the ground for removal under s 92(4)(b) of the Trade Marks has been partially established in respect of all the Registered Services. Therefore, I direct that the Registered Services of registration numbers 871132, 944162 and 974048 be partially removed as detailed in Annexure C of this decision, within one month from the date of this decision, so that they read:

Registration 871132

Class 35: Compilation of business directories; business services, including business management, administration and information services, business services provided online from a computer database or the Internet; compilation and provision of business and commercial information; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; all of the foregoing limited to insurance services

Class 36: Financial information services relating to insurance; accepting and authorising financial transactions relating to insurance; payment services using electronic and non-electronic means relating to insurance; on-line payment services relating to insurance

Class 41: Publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio or television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; all of the foregoing limited to insurance services

Class 42: Research services; computer programming services; design and implementation of IT solutions; network outsourcing, being technical management and operation of networks for others; computer consultancy; all of the foregoing limited to insurance services

Registration 944162

Class 36: Insurance

Registration 974048

Class 41: Publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio and television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; all of the foregoing limited to insurance services

101. In the event of an appeal from this decision, the registrations shall not be partially removed until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registrations be dealt with as the Court sees fit.

Costs

102. Both parties have sought their costs. Neither party has been entirely successful in respect of the applications for removal. As such I have decided not to award costs.

Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
9 January 2024

Annexure A

Registration Number	Services
871132	Class 35: Advertising and promotion services compilation of business directories; business services, including business management, administration and information services, business services provided online from a computer database or the Internet; compilation and provision of business and commercial information; compilation of advertisements for use as web pages on the Internet; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions Class 36: Financial services; banking services; financial information services including such services as relating to insurance; issuing credit, debit, payment and smart cards; accepting and authorising financial transactions; credit, debit and smart card services; electronic funds transfer services; payment services using electronic and non-electronic means; on-line payment services Class 38: Telecommunication and communication services; telecommunication of information (including web pages), computer programs and any other data; telecommunication services for the collection, transmission, processing and storage of messages and data; provision of telecommunication, access and links to computer databases and the Internet Class 41: Sporting and cultural services provided online from a computer database or the Internet; publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; sponsorship of sporting competitions and entertainment; none of the foregoing being the production of radio or television programmes or television broadcasting services including news programmes, live shows and interactive television programmes Class 42: Research services; computer programming services; computer services relating to providing access to and leasing access time to computer databases and the Internet; design and implementation of IT solutions; storage and retrieval of business and commercial information; network outsourcing, being technical management and operation of networks for others; computer consultancy
944162	Class 36: Insurance; financial affairs; monetary affairs, real estate affairs
974048	Class 35: Advertising and promotion services; compilation of business directories; business services, including business management, administration and information services, business services provided on-line from a computer database or the Internet; compilation and provision of business and commercial information; compilation of advertisements for use as web pages on the Internet; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; storage and retrieval of business and commercial information Class 36: Financial services; banking services; financial information services including such services as relating to insurance; issuing credit, debit, payment and smart cards; accepting and authorising financial transactions; credit, debit and smart card services; electronic funds transfer services; payment services using electronic and non-electronic means; on-line payment services; sponsorship of sporting competitions and entertainment Class 38: Telecommunication and communication services; telecommunication of information (including web pages), computer programs and any other data; telecommunication services for the collection, transmission, processing and storage of messages and data; provision of telecommunication, access and links to computer databases and the Internet; computer services relating to providing access to and leasing access time to computer databases and the Internet Class 41: Sporting and cultural services including services provided online from a computer database or the Internet; publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio and television programmes or television broadcasting services including news programmes, live shows and interactive television programmes Class 42: Research services; computer programming services; design and implementation of IT solutions; network outsourcing, being technical management and operation of networks for others; computer consultancy

Annexure B

Registration Number	Services
871132	Class 35: ~~Advertising and promotion services~~ compilation of business directories; business services, including business management, administration and information services, business services provided online from a computer database or the Internet; compilation and provision of business and commercial information; ~~compilation of advertisements for use as web pages on the Internet~~; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; *all of the foregoing limited to insurance services* Class 36: ~~Financial services; banking services~~; financial information services including such services as relating to insurance; issuing credit, debit, payment and smart cards; accepting and authorising financial transactions; credit, debit and smart card services; electronic funds transfer services; payment services using electronic and non-electronic means; on-line payment services; *all of the foregoing limited to insurance services* Class 38: Telecommunication and communication services; telecommunication of information (including web pages), computer programs and any other data; telecommunication services for the collection, transmission, processing and storage of messages and data; provision of telecommunication, access and links to computer databases and the Internet Class 41: ~~Sporting and cultural services provided online from a computer database or the Internet~~; publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; ~~sponsorship of sporting competitions and entertainment~~; none of the foregoing being the production of radio or television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; *all of the foregoing limited to insurance services* Class 42: Research services; computer programming services; ~~computer services relating to providing access to and leasing access time to computer databases and the Internet~~; design and implementation of IT solutions; ~~storage and retrieval of business and commercial information~~; network outsourcing, being technical management and operation of networks for others; computer consultancy; *all of the foregoing limited to insurance services*
944162	Class 36: Insurance; ~~financial affairs; monetary affairs, real estate affairs~~
974048	Class 35: Advertising and promotion services; compilation of business directories; business services, including business management, administration and information services, business services provided on-line from a computer database or the Internet; compilation and provision of business and commercial information; compilation of advertisements for use as web pages on the Internet; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; storage and retrieval of business and commercial information Class 36: Financial services; banking services; financial information services including such services as relating to insurance; issuing credit, debit, payment and smart cards; accepting and authorizing financial transactions; credit, debit and smart card services; electronic funds transfer services; payment services using electronic and non-electronic means; on-line payment services; sponsorship of sporting competitions and entertainment Class 38: Telecommunication and communication services; telecommunication of information (including web pages), computer programs and any other data; telecommunication services for the collection, transmission, processing and storage of messages and data; provision of telecommunication, access and links to computer databases and the Internet; computer services relating to providing access to and leasing access time to computer databases and the Internet Class 41: Sporting and cultural services including services provided online from a computer database or the Internet; publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio and television programmes or television broadcasting services including news programmes, live shows and interactive television programmes Class 42: ~~Research services; computer programming services; design and implementation of IT solutions; network outsourcing, being technical management and operation of networks for others; computer consultancy~~

Annexure C

Registration 871132

Class 35: ~~Advertising and promotion services~~ Compilation of business directories; business services, including business management, administration and information services, business services provided online from a computer database or the Internet; compilation and provision of business and commercial information; ~~compilation of advertisements for use as web pages on the Internet~~; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; all of the foregoing limited to insurance services

Class 36: ~~Financial services; banking services~~; financial information services ~~including such services as~~ relating to insurance; ~~issuing credit, debit, payment and smart cards;~~ accepting and authorising financial transactions relating to insurance~~; credit, debit and smart card services; electronic funds transfer services;~~ payment services using electronic and non-electronic means relating to insurance; on-line payment services relating to insurance

Class 38: Telecommunication and communication services; telecommunication of information (including web pages), computer programs and any other data; telecommunication services for the collection, transmission, processing and storage of messages and data; provision of telecommunication, access and links to computer databases and the Internet

Class 41: ~~Sporting and cultural services provided online from a computer database or the Internet~~; publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; ~~sponsorship of sporting competitions and entertainment~~; none of the foregoing being the production of radio or television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; all of the foregoing limited to insurance services

Class 42: Research services; computer programming services; ~~computer services relating to providing access to and leasing access time to computer databases and the Internet~~; design and implementation of IT solutions; ~~storage and retrieval of business and commercial information~~; network outsourcing, being technical management and operation of networks for others; computer consultancy; all of the foregoing limited to insurance services

Registration 944162

Class 36: Insurance~~; financial affairs; monetary affairs, real estate affairs~~

Registration 974048

Class 41: ~~Sporting and cultural services including services provided online from a computer database or the Internet~~; publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio and television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; all of the foregoing limited to insurance services