Finsure Domain Names Pty Ltd v RESN Holdings Pty Ltd

[2018] ATMO 139

TRADE MARKS ACT 1995

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

Re:Opposition by Finsure Domain Names Pty Ltd to application under section 92 of the Act by RESN Holdings Pty Ltd to remove trade mark number 1378036 (36) - MYloan - in the name of Finsure Domain Names Pty Ltd

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Lawyal Solicitors

Applicant: Self represented

Decision:

2018 ATMO 139

Trade Marks Act 1995

Opposition under section 96 to application under section 92(4)(b): use of a 1800- phone name as a trade mark – alteration or addition not affecting identity – opposition to removal established.

Trade Mark to remain registered for all of the services for which it is registered

Background

1. In these proceedings RESN Holdings Pty Ltd (‘the Applicant’) has applied under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade mark which appears below for all of the services for which it is registered from the register of trade marks:

   Registration No:              1378036

   Priority Date:  25 August 2010

   Services:Class 36: Advice on finance for retirement; advisory services relating to finance; advisory services relating to investment finance; consultancy services relating to finance; consultancy services relating to personal finance; corporate finance consultancy; corporate finance services; export finance services; finance leasing; lease purchase finance; management of finances; personal finance services; project finance; providing finance for credit sales; provision of commercial finance; provision of equipment finance; provision of finance; provision of lease-purchase finance facilities; provision of trade finance; raising of finance; research services relating to finance; trade finance services

   Trade Mark:  MYloan

   (‘the Trade Mark’)

2. As allowed by section 96 of the Act the owner of the Trade Mark, Finsure Domain Names Pty. Ltd, (‘the Opponent’) has opposed the application for removal.

3. The history of the matter appears below:

   4 January 2017 – Application for removal filed by the Applicant;

   24 January 2017 – Notice of Intention to Oppose filed by the Opponent;

   30 January 2017 – Statement of Grounds and Particulars filed by the Opponent;

   14 March 2017 – Notice of Intention to Defend filed by the Applicant;

   16 June 2017 – Evidence in Support filed by the Opponent –

   Declaration of Allan Savins, General Manager - Wholesale Partnerships, the Finsure Group, made on 15 June 2017, with Annexures A to G;

   23 June 2017 – Evidence in Answer filed by the Applicant –

   Declaration of Stewart Brian Noble, General Manager of the Applicant, made on 21 June 2017, with Exhibits 1 to 48;

   24 August 2017 – Evidence in Reply filed by the Opponent –

   Declaration of Allan Savins, (‘Savins 2’) made on 24 August 2017, with Annexure A; and

   24 November 2017 – written submissions filed by the Opponent.

   4.     Both parties have been informed of their right to be heard or to make written submissions.  Neither party requested to be heard and, as noted, the Opponent made written submissions.  The matter has now been passed to me, a delegate of the Registrar of Trade Marks, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

   Principles

   5.     As the application for removal was filed by the Applicant on 4 January 2017, the relevant period during which (in order to establish its opposition) the Opponent must show use of the Trade Mark is the three year period ending on 4 December 2016 (‘the Relevant Period’).  Evidence of use which is from either before or after[1] the Relevant Period will not establish the Opponent’s opposition to the removal of the Trade Mark.

   [1] I note that in some circumstances in which the opposition to removal has not been established by reason of use in the relevant period, the use of a trade mark after the relevant period can be a relevant factor considered by the Registrar when exercising her discretion under section 101 of the Act to leave a trade mark registered for some or all of the goods in respect of which removal had been sought.

   6. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

   100Burden on opponent to establish use of trade mark etc.

   (1)In any proceedings relating to an opposed application, it is for the opponent to rebut:

   […]

   (c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   7.     A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[2]

   [2] [2001] FCA 261; 107 FCR 166 at 172.

   8.     However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’: Nodoz Trade Mark (‘Nodoz’).[3]

   [3] [1962] RPC 1 at 7 per Wilberforce J.

   9.     The decision maker may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark.[4]

   [4] [1977] RPC 131.

   10.   The relevant standard of proof that the Opponent bears is on the balance of probabilities.[5] In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [Stress added]

   [5] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

   11.   In Blount Inc v Registrar of Trade Marks[6] Branson J observed:

   [6] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   12.   It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Mark, without alterations or additions which substantially affect its identity,[7] during the Relevant Period, in relation to the services in respect of which it is registered to the satisfaction of the Registrar, the opposition to removal will not be established.

   13.   Even if the Trade Mark has not been used and the ground for removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the impugned services if satisfied it is reasonable to do so.  The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.

   Evidence

4. Relevant to my reasons, the evidence shows that the Opponent is successor in title to Tree Financial Group Pty Ltd (‘TF’).  That company’s directors were also the directors of Future Financial Pty Ltd (‘FF’), a mortgage management business which commenced operations in October 2000.

   15.   Before being acquired by the Opponent, MyLoan was a ‘white label’ product suite offered within FF’s ‘white label’ product range.  Wikipedia explains that:[8]

   The name [White Label] derives from the image of a white label on the packaging that can be filled in with the marketer's trade dress. Its origins can be traced to vinyl records. Before records were to be released to the public, often before official artwork was designed and printed, promotional copies were sent out in a white sleeve to DJs to solicit radio and nightclub play, in an effort to build hype and gauge public interest by the record labels, ultimately to better estimate manufacturing quantities. This created a situation where certain respected or well-connected DJs would have exclusive copies of material, immediately increasing demand on certain big records. Occasionally this term refers to records whose labels had been torn off or covered with a white label by competing DJs to conceal which records they were using.

   White label production is often used for mass-produced generic products including electronics, consumer products and software packages such as DVD players, televisions, and web applications. Some companies maintain a sub-brand for their goods, for example the same model of DVD player may be sold by Dixons as a Saisho and by Currys as a Matsui, which are brands exclusively used by those companies.

   [7] Subsections 7(1) and 100(3)(b)(i) of the Act apply.

   [8] >

   Certain operations acquired by the Opponent from TF and/or FF include the management of preexisting mortgages.  Customers may phone concerning their mortgages via a phone word: 1300 MYLOAN (‘the Phone Word’).  Two bills from Telstra for use of the phone number associated with that phone word within the Relevant Period are annexed to Savins 2 and each bill details a particular number of incoming phone calls via the number that corresponds to the Phone Word.

   Discussion

5. The evidence of the parties in this matter can (apart from the issue of the Phone Word) be viewed as being quite complex – the Applicant has, for instance, put in many pages of computer code in evidence that are said to gainsay the Opponent’s evidence concerning use of the Trade Mark on the Internet.  It is therefore most straightforward, in my view, to decide the matter solely on the question of the Phone Word which was used by the Opponent during the Relevant Period in relation to the services for which the Trade Mark is registered and leave the other issues in abeyance.

6. The issue is whether the Opponent’s use of the Phone Word during the Relevant Period was use of the Trade Mark.

7. Section 17 of the Act provides:

   17What is a trade mark?

   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.

   Note:For sign see section 6.

8. Section 7 of the Act provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)In this Act:

   use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

   (5)In this Act:

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

9. Accordingly, 13-, 1300- or 1800- phone words, if they incorporate a word (or words) with sufficient inherent adaptation to distinguish, may function as trade marks – see, for example, 1800 Blinds Pty Ltd v 1300 Australia Pty Ltd.[9]  Such signs function so as to distinguish the goods or services of one person from the similar goods or services dealt with or provided by another person and thus meet the definition of ‘trade mark’.

   [9] [2008] ATMO 57; (2008) 78 IPR 388.

10. The Trade Marks Examiners’ Manual states as regards section 41 grounds for rejection:

    1. Treat the presence of 13/1300/1800 in a trade mark as not enhancing the distinctiveness of the remaining word or letter combination material within the mark (irrespective of whether the combination is a “true” phoneword or not). 

    2. Continue current practice of raising objections against marks that are simply 13/1300/1800 coupled with descriptive, non distinctive elements in the same way that those elements on their own would attract objections. e.g. 1800 RABBIT will not be considered prima facie capable of distinguishing “the sale of pet rabbits” and a s41 objection would be appropriate. See 1300 Australia Pty Ltd v 1800 Blinds Pty Ltd [2008] ATMO 57 decision.

11. And as regards section 44 grounds for rejection:

    Treat the presence of 13/1300/1800 in a trade mark as not aiding in differentiation between otherwise identical or deceptively similar marks.

12. Thus, in answering the question as to whether the use of a phone is a use of a trade mark, it has been the practice of the Registrar to view the numeric portion of such trade marks as not substantially affecting the identity of the trade marks which are under consideration.

13. By analogy, this accords with decisions of the Court in relation to domain names: in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd Rangiah J observed:[10]

    When deciding whether domain names are substantially identical to the  trade marks , the prefix “www” and the suffix “.com” or “.com.au” do not substantially affect the identity of the  trade mark : The Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139 at [21] per Chesterman J, Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at [155] per Kenny J.

    [10] [2015] FCA 554; (2015) 112 IPR 494 at [84].

14. Accordingly, in the circumstances before me as the Opponent has demonstrated use of the Phone Word within the Relevant Period it has also established use of the Trade Mark at those times.

    Decision

    27. Section 101 of the Act relevantly provides:

    101Determination 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.

    28.   The Opponent has established that the Trade Mark was used during the Relevant Period in Australia; I am not, therefore, satisfied that the ground on which the application was made has been established.

    29.   It is therefore appropriate that the Trade Mark remains registered.

    Costs

    30. The Opponent has requested its costs and as it has been the successful party it is appropriate, in terms of section 221 of the Act, that I award costs against the Applicant at the official scale set out at Schedule 8 to the Trade Marks Regulations 1995.

    Iain Campbell Thompson

    Hearing Officer

    Trade Marks and Designs Oppositions and Hearings

    10 September 2018