Foxtel Management Pty Ltd v 111Pix.com Limited

[2012] ATMO 29

TRADE MARKS ACT 1995

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

Re:Oppositions by Foxtel Management Pty Ltd to extension of protection of International Registrations Designating Australia 1227986 –  - and 1227987 – 111PIX - (both in Classes 9, 35, 38 and 41) filed in the name of 111Pix.com Limited

Delegate:	Michael Kirov
Representation:	Opponent: Nicky Shanks and Miriam Stiel of Allens Arthur Robinson, Patent & Trade Mark Attorneys Holder: Did not appear
Decision:	2012 ATMO 29 Regulation 17A.29 opposition: Sole ground pressed under s 59 (pursuant to reg. 17A.28)– prima facie presumption of Holder’s intention to use not displaced –s 59 ground not established - extension of protection to Australia allowed.

Background

1. Applications 1227986  and 1227987 111PIX are both international registrations designating Australia (“IRDAs”).  They were filed in the name of 111Pix.com Limited (“the Holder”) under the Madrid Protocol on 23 October 2007 based upon (European) Community Trade Mark registrations filed on 4 April 2007.  Following their examination, IP Australia advertised its intention to extend protection to Australia on 4 December 2008.

2. Details of the IRDAs are as follows:

   Application Number:             1227986
   International Number:            952707
   Priority Date:    23 October 2007

   Goods and Services:               Class 9:          Cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; sound and/or video recordings; sound and/or video recording media; magnetic data carriers; recording discs; vinyl records; audio and video tapes; audio cassettes; video cassettes; compact discs; mini discs; digital video discs; CD-ROMs; digital music, films and videos downloadable, provided from the Internet; digital music, films and videos downloadable, provided from MP3 Internet sites; computer software for content management relating to the sale and distribution of film, television, video and music and the customization of DVDs and other recordable media; computer software for accountancy purposes

   Class 35:        Advertising, promotion and marketing services; business consultancy services relating to marketing; marketing strategy services; production of television, radio and Internet commercials; television, radio and Internet advertising; providing corporate branding advice, strategies and solutions to businesses; brand creation and development services; preparation, dissemination and updating of advertising material for use as web pages on the Internet or otherwise; advertising services by means of television screen based text; provision and rental of advertising space; retail services connected with the sale and provision of pre-recorded CDs, video tapes, laser discs and DVDs containing film, video and music to consumers for access and use upon computers, MP3 players, television, mobile phones, the Internet and other interactive online databases, all provided via an Internet website; information, advisory and consultancy services relating to the aforesaid
   Class 38:        Broadcasting services including online services; relaying sound recordings, messages and images over telecommunication services, and computer aided transmission of sound, messages and images; television, cable television, satellite television and subscription television broadcasting services; live broadcast streaming services; video text and teletext services; operation of chat rooms; consultancy, information and advisory services relating to the aforesaid
   Class 41:        Entertainment services; music, film, television, video and radio entertainment services, including reality television programmes and films; editing of audio and video tapes; provision of DVD content, including content selected by members for inclusion upon a personalised DVD, in the field of entertainment via subscription Internet websites; film production and distribution services; videotape film production and distribution services; production of radio and television programmes; production of shows; recording studio services; information relating to entertainment, including film, video, radio, television and musical entertainment, provided on-line from a computer database or the Internet; presentation, syndication, networking and rental of material with a visual and/or audio element, including television and radio programmes, films, sound and video recordings, interactive entertainment and CD-ROMs; providing digital music from the Internet; providing digital music from MP3 Internet web sites; film, television, video and music downloading services for viewing/listening on all platforms, including computers, MP3 players, television, mobile phones, the Internet and other interactive online databases; provision of film, video and music content to consumers on to all platforms, including computers, MP3 players, television, mobile phones, the Internet and other interactive online databases, over an Internet website; consultancy, information and advisory services relating to the aforesaid
   (hereafter “the Goods and Services”)

   Trade Mark:  

   Application Number:             1227987
   International Number:            952708
   Priority Date:    Same as application 1227986

   Goods and Services:               Same as application 1227986

   Trade Mark:  111PIX

3. The differences between the two trade marks are not relevant to this decision and I will for convenience refer hereafter to both trade marks collectively as “the Trade Marks”.

4. Foxtel Management Pty Ltd (“the Opponent”) filed Notices of Opposition (“the Notices”) to extension of protection of the IRDAs to Australia on 4 June 2009 pursuant to reg. 17A.29 of the Regulations under the Trade Marks Act 1995 (“the Act”).

5. The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply as follows:

   Evidence in Support

   ▪ Statutory Declaration by Nichola Joan Shanks made 30 June 2010, with Exhibits NS-1 to NS-24 (“Shanks 1”)
   ▪ Statutory Declaration by Nichola Joan Shanks made 2 July 2010, with Exhibits NS-1 and NS-2 (“Shanks 2”)
   Evidence in Answer
   ▪ Statutory Declaration by Sneha Balakrishnan made 21 March 2011, with Exhibits A to D (“Balakrishnan”)
   Evidence in Reply
   ▪ Statutory Declaration by Nichola Joan Shanks made 9 May 2011, with Exhibits NS-1 and NS-2 (“Shanks 3”)

6. I heard the matter as delegate of the Registrar of Trade Marks on 19 October 2011 in Sydney.  Nichola Shanks, assisted by Miriam Stiel, both of Allens Arthur Robinson, Patent & Trade Mark Attorneys, appeared for the Opponent.  The Opponent’s oral submissions before me were supplemented by written submissions emailed to IP Australia (and copied via email to the Holder’s attorneys) the day before the hearing.

7. The Holder’s attorneys, Banki Haddock Fiora, advised via email on 19 August 2011 (with copy to the Opponent’s attorneys) that the Holder would not attend, or be represented at, the hearing.  Nor did the Holder file any written submissions.  In their 19 August 2011 email the attorneys did however say the following:

   We represent the [Holder] in this matter.  You have advised that a hearing date will be set in October 2011 for the Sydney sessions.

   We write to advise that our client does not propose to appear at the hearing and asks that the matter be determined based on the materials before the hearing officer including evidence of use of the marks in Australia.

   If the hearing officer considers that an amendment to the goods or services of the application[s] would resolve any concerns and allow acceptance of the mark[s], the [Holder] asks for the opportunity to consider and make such amendments.

   The [Holder] seeks costs in the matters if it is successful.

   We look forward to receiving the hearing officer’s decision.

   Grounds of Opposition

8. While the Notices specified nine grounds corresponding to ss 42(b), 43, 44, 58, 59, 60, 62(a), 62(b) and 62A of the Act, Ms Shanks confirmed on the eve of the hearing that the Opponent would only be pressing the ground in the Notices based on s 59 of the Act. This ground is discussed below. I treat the remaining grounds listed in the Notices as abandoned.

   The Parties

   The Holder

9. Somewhat unusually, almost all of the evidence before me concerning the Holder and the Trade Marks is contained in the Opponent’s evidence in support and in particular in the various Exhibits to Shanks 1 and Shanks 2. That said, most of the material making up those Exhibits was in fact provided by the Holder in response to a Notice to Produce issued by the Registrar of Trade Marks at the Opponent’s request pursuant to s 202(c) of the Act. I will refer as necessary to this evidence in the course of my decision but mention at this point that I have found two of the documents produced by the Holder (and forming part of Exhibit NS-1 to Shanks 2) to be particularly relevant to the matter. The first, consisting of some 46 pages, is a copy of the Holder’s draft “Business Plan” dated 16 July 2007 (with confidential monetary amounts removed), referred to hereafter as “the Business Plan”. It sets out in considerable detail the Holder’s intentions with respect to its proposed business as at that time, being some three months before the opposed IRDAs were filed.

10. The other is a 61 page document (also with confidential figures removed) prepared in January 2009 by the UK law firm Dawsons LLP in anticipation of a public offering of shares in a company named FilmOn.com plc.  I will refer hereafter to this as “the Admission Document”.  By the time of this proposed public offering the Holder, which is described in the document as “[conducting] the business of online film and content downloading”, had become a wholly owned subsidiary of FilmOn.com plc and the particular relevance of the Admission Document is that it contains, inter alia, some 26 pages of “Audited Financial Statements” of the Holder for the period 10 January 2007 to 31 December 2007 which were prepared by the Holder’s auditors, Clarkson Hyde LLP of London.  The Admission Document, created as it was just four months after the commencement of what has become known in Australia as the “global financial crisis”, is also significant in that it indicates the Holder’s expectations and intentions with respect to its proposed business (and the role that the Trade Marks might play in the business) may have changed to some extent since 16 July 2007 when the Business Plan was made.

11. It is apparent from these two documents that the Holder was incorporated as a private company in England and Wales on 10 January 2007.  The overall nature of the Holder’s proposed business is described in the Business Plan as follows:

    111Pix is the very first and only online and offline service presenting studios, film and television sales organizations, distributors, producers and content owners with a universal platform that allows them to easily supply and manage their content online for download to any customer platform worldwide (i.e. PC, iPod, Television set-top boxes).  The market is similar to the sell through rental market and will appeal to distributors in much the same way.  In addition, the revenue recognition and payment systems already designed allow for swift collection of income back to the distributor and studio.

    The goal of 111Pix is to make available a cutting edge multimedia facility, world-class on line distribution, management & download services to content owners & viewers worldwide.  111Pix aims to create and launch a virtual equivalent of the home rental business Blockbuster online, trying to get access to disposable income and discretionary spend, competing to obtain a priority choice within consumers[’] leisure time.  111Pix is a compelling opportunity to advertising agencies, film producers, film makers, distributors, music producers, bands, multimedia professionals and consumers of media products.

12. The Business Plan then describes in more specific terms the services the Holder proposes to offer, noting that these services “are targeted to two different audiences, the business to business sector (i.e. content owners, distributors, producers) and the business to customers sector (i.e. the end user)”.  I note in passing that this distinction between the two “audiences” may have some significance as far as the Holder’s intention to use, and its eventual actual use of, the Trade Marks is concerned[1].

    [1] It may be that the Trade Marks were to be aimed primarily at “businesses” (such as content owners or distributors or any businesses generally which might want to advertise via the Holder’s websites), while another trade mark protected by the Holder in its countries of apparent interest (including Australia), namely the trade mark FILMON (or FilmOn), was to be aimed primarily at end users.  See also footnote 4 below.

13. That said, the Business Plan itself is obviously aimed at potential investors and in this regard the document states very clearly that:

    The primary goal is to build 111Pix[2] into a profitable company and a globally recognised brand, and then to list the company on the AIM market[3].

    [2] Although nowhere defined in the Business Plan as such, my understanding from the document as a whole is that “111Pix” is being used here (and in the Business Plan generally) as shorthand to refer, depending on the context, to either the company 111Pix.com Limited (that is, to the Holder) or to the Trade Marks per se.

    [3] The “AIM”, or “Alternative Investment Market”, is described by UK solicitors Charles Russell LLP on their website as “a UK stock market for smaller, growing companies looking to raise equity finance and to enhance their profile”.

14. As regards the Trade Marks in particular, it is further stated in the Business Plan under the heading “Marketing strategy” that:

    It’s reasonable to envisage it will take 1-2 years to make 111Pix a globally known brand name, but less time to get the general word out to key people.  The marketing and promotion of 111Pix will be very important to its success.  Future clients will all want to see and try the finished product.  111Pix has been developing the programmes, applications and website for the last 10 months.

15. As mentioned above I will return, as necessary, to the Business Plan and to the other evidence before me.  In summary, however, the Business Plan:

    ·     describes in considerable detail the nature of the Holder’s proposed business, which essentially revolves around access to an internet portal to be marketed to end users as “Filmon.com”[4], which would allow the end user to stream, rent or buy video and audio content and to access an amalgam of internet services of the kind currently provided by well known “social media” sites such as YouTube®, Facebook®, Twitter® and the like, and which is said to allow “content owners” (such as music, film or television studios, producers and distributors) “to market, distribute, promote and control their content through 111Pix technology”;

    ·     discusses the proposed market, the then main competitors (competitors discussed include CinemaNow®, Netflix®, Joost®, MySpace®, Microsoft® and Apple®), the Holder’s expected “major customers” and the anticipated revenue stream from the sale of “advertising space” and “video banners” targeted at specific consumers based on information garnered about end users from their download selections;

    ·     sets out the Holder’s claimed competitive resources and advantages over its competition, including having developed in partnership with another UK company a proprietary “set top box” which allows consumers to view downloaded content on a television, having access to a “video library ‘Supermall’” (with over 12,000 titles then apparently available and “plans to add thousands of films and thousands of hours of TV programming”), having “clusters of servers located at major Internet Super-Computer Networks in London, Amsterdam, New Jersey and Los Angeles” and having the benefit of pending patent applications in the UK and the US to protect its “business model” and to protect the software it had developed necessary for the delivery of its proposed services;

    ·     sets out the Holder’s proposed marketing and pricing strategies;

    ·     identifies the Holder’s four Directors making up its management team and highlights their backgrounds, qualifications and experience in relevant industries;

    ·     notes several other major organizations with which the Holder has already entered contracts, including “signed content agreements with Playboy TV, Screen Media and Agregator”, an “advertising contract with Coca Cola” and “standing deals with Flux DVD and Macrovision Inc, both leaders of copy protection software in this space”; and

    ·     foreshadows listing on the UK stock market, albeit indicating to potential investors that this is not a given, noting “The management’s primary objective is to list on the AIM market in the next 12-18 months.  However, alternatives such as a management buy out and selling 111Pix to a major sales and distribution company may be considered if necessary”.

    [4] See footnote 1 above.  I mention that the Holder is also the owner of Australian registrations 1214973 FILMON and 1214974 FILMON Logo, both originally IRDAs and with the same priority date and covering the identical goods and services in Classes 9, 35, 38 and 41 as opposed IRDAs 1227987 111PIX and 1227986 111pix Logo.

    The Opponent

16. For its part the Opponent belongs to the Foxtel group of companies, a group which provides cable television services in Australia, and is the owner of some 70 current Australian registrations covering, inter alia, entertainment and related services in this field as well as a very wide range of goods in Classes 9 and 16.  While of no relevance to my decision in these oppositions, the Opponent’s evidence notes that it is also the owner of pending application 1258257 for a trade mark which, like the two IRDAs, features the number combination “111” and which covers a wide range of goods and services in Classes 9, 16, 35, 38, 41 and 42 broadly similar to the goods and services covered by the two IRDAs.  The two IRDAs were however filed some ten months before the Opponent’s application and were cited against it.  The current status of application 1258257 is accordingly “deferred” pending the outcome of the present oppositions.  The trade mark subject of the Opponent’s application, which Shanks 1 indicates has been used continuously in Australia since 1 November 2008 “in relation to a television channel which is available in Australia to subscribers of the FOXTEL and AUSTAR subscription television service”, is shown below:

17. The Opponent is not on the face of it in a position to claim prior rights either under the Act or at common law in trade marks featuring the element “111” for relevant goods or services. Rather, at the heart of the current oppositions is the Opponent’s claim that when the Holder applied to extend protection of the IRDAs to Australia on 23 October 2007 it had no intention to use the Trade Marks in good faith in Australia for any of the Goods and Services.

    The Law

18. Section 59 of the Act, (which reflects the requirements of s 27(1)(b) of the Act), is set out below:

    Applicant not intending to use trade mark

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

19. Section 27(1) of the Act is as follows:

    Application—how made

    27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

    (a) the person claims to be the owner of the trade mark; and
    (b) one of the following applies:

    (i) the person is using or intends to use the trade mark in relation to the goods and/or services;
    (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
    (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

    Note:  For use see section 7.

1. The actual ground based on s 59 of the Act is indicated in the Notices as follows:

   The [Holder] does not and, at the date of application for the Trade Mark, did not:

   (i)use or authorise the use of the Trade Mark in relation to any of the Goods and Services in Australia;

   (ii)have any intention to use or authorise the use of the Trade Mark in relation to any of the Goods and Services in Australia; or

   (iii)have any intention to assign the Trade Mark to a body corporate for use by the body corporate in relation to any of the Goods and Services in Australia.

2. Notwithstanding the manner in which the s 59 ground is couched in the Notices, neither the Opponent nor the Holder addressed the issues of the Holder’s possible intention to authorise use of the Trade Marks, or possible intention to assign them to a body corporate.  I accordingly only consider the Holder’s actual intention to use the Trade Marks (or lack thereof) in this decision.

3. It is relevant also to note that at the time the Notices were filed in 2009 there was some uncertainty regarding various aspects of the s 59 ground of opposition based on then current judicial and administrative precedent and commentary. Most importantly, it was unclear whether the relevant date at which an applicant’s intention should be assessed was the date the opposed application was filed[5] (long accepted as being the relevant date for the other opposition grounds specified under the Act), or whether the intention had to be an ongoing one, persisting up to, and possibly even beyond, the commencement of opposition proceedings. This uncertainty is obviously reflected in the words quoted in paragraph 20 above from the Notices, namely that “The [Holder] does not and, at the date of application for the Trade Mark[s], did not…have any intention to use…the Trade Mark[s]” (my emphasis).

   [5] Or, in the case of an IRDA as here, the date a holder applied to extend protection of the opposed trade mark to Australia.

4. The issue of the relevant date and several other aspects of the s 59 ground of opposition were however addressed in some detail in two decisions issued by the Federal Court in June 2010, firstly by the Full Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 (“Food Channel”), followed by Dodds-Streeton J in Suyen Corporation v Americana International Limited (2010) 87 IPR 262 (“Suyen”).  I draw on these two decisions in particular in the analysis which follows.

   The presumption of an intention to use

5. It has long been accepted, as acknowledged by Ms Shanks, that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application.  As Dodds-Streeton J put it in Suyen at [193], “an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists”. Noting that “a number of recent authorities have…endorsed its continuing application”, (“most significantly” Food Channel), her Honour continued at [197]:

   The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.

6. In Food Channel itself, the Full Court had said at [67] and [68]:

   [67] Section 27(1)(b) of the Act requires that the applicant use or intend to use, or authorise use or intend to authorise use of, the trade mark. The time at which this intention must exist is the date of application… . Only a very low threshold has been set with regard to intention to use in that the very act of making the application is, without more, sufficient to establish the requisite intention. In Aston v Harlee Manufacturing Co (1960) 103 CLR 391; [1960] ALR 605 (“Aston”) Fullagar J said (at CLR 401; ALR 611, footnote omitted):

   There is another element mentioned by Dixon J in the Shell Co’s Case, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent or the person aggrieved, of proving the absence of intention.

   [68] Fullagar J went on to say (also at CLR 401; ALR 611):

   [Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.][6]  A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use … On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars …

   [6] I have included this sentence from Fullagar J’s judgment for the sake of completeness, notwithstanding it was omitted from the Full Court’s judgment in Food Court.

   The nature of the intention

7. As indicated by Fullagar J in the above quote from Aston, an applicant’s intention need not be “to use immediately or within any limited time”.[7]  Moreover, in his Honour’s consideration an applicant for three marks might be entitled to register them even where “[he] had not made up his mind as to which two he would use”.  What, then, must the actual nature of the presumed intention be?

   [7] Of course a trade mark registration may in principle become vulnerable to removal from the Register under s 92(4)(b) of the Act if the registered mark is unused “for a continuous period of 3 years”, provided (per s 93(2)) the removal application is not made “before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark”.

8. Ms Shanks noted in her submissions that Fullagar J relied in part in Aston on the UK case of In re Registered Trade Marks of John Batt & Co. [1898] 2 Ch 432; [1899] AC 428 (“John Batt”), concluding his remarks (at 401) by noting that “the effect of [John Batt], is, I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J and the Court of Appeal”.  Ms Shanks also referred to the UK case of Re Ducker’s Trade Mark [1929] 1 Ch 113 (“Ducker’s”) and to the judgment of McClelland J in Ritz Hotel Ltd v Charles of the Ritz and Another (1988) 15 NSWLR 158 (“Ritz”).  All four of these cases were considered by Dodds-Streeton J in Suyen, who quoted (at [198]) McClelland J’s conclusion that:

   [i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any given time.

9. Her Honour then discussed the Ritz case in some detail (at [199] – [206]) and, as her discussion bears on my conclusions in the present oppositions, it is reproduced below:

   [199] In [Ritz], the plaintiff, as a person aggrieved, sought rectification of the register and removal for non-use of five registered trade marks, including charles of the ritz, ritz and ritz liqui crème, in relation to various goods, including toiletries, perfumes and soaps. The plaintiff alleged that the first defendant lacked “a bona fide intention to use the mark” and was therefore not the proprietor of an unused mark under the 1955 Act. McLelland J regarded “intention to use” in that context as a paraphrase of the statutory phrase “proposed to be used … in relation to goods”.

   [200] His Honour referred to Aston and John Batt… . In John Batt, the applicant had registered a large number of trade marks, had offered many of them for sale, had never traded in the relevant goods and declined to submit to cross-examination. Lord Lindley MR for the English Court of Appeal stated (at 439–40):

   Can a man properly register a trade-mark for goods in which he does not deal or intend to deal? — meaning by intending to deal having at the time of registration some definite and present intention to deal in certain goods … and not a mere general intention of extending his business at some future time to anything which he may think desirable.

   [201] McLelland J also referred to Ducker’s at 121 where Lord Hanworth MR stated that “I think that the words ‘proposed to be used’ mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered”.

   [202] McLelland J held that the original registration of one of the trade marks (ritz liqui crème) was obtained by fraud, because correspondence in evidence revealed that the application was actuated only by fears that an application to register a different trade mark might be unsuccessful.

   [203] On the basis of that evidence and the managing director’s concession that the applicant had no intention to sell products or license use of the name in Australia until many years later, McLelland J found that there was no bona fide intention to use the mark at the date of the application.

   [204] His Honour did not, however, find that there was no intention to use two other opposed marks, in the absence of such a direct concession or evidence to the contrary. His Honour stated at NSWLR 205; ALR 266; IPR 466:

   … there is no evidence from which I would be prepared to conclude that the first defendant did not as at the date of the respective applications … propose to use those marks. The fact that the mark charles of the ritz was never used in Australia in relation to any of the goods in respect of which [one mark] is registered … does not to my mind establish the absence of any proposed use of that mark at the relevant date. In the case of [the other mark] there was some actual use by the first defendant in Australia in relation to at least some of the goods in respect of which it is registered …

   [205] In Aston, Fullagar J also discussed the nature of the intention. His Honour stated at CLR 401; ALR 611 that:

   A manufacturer of (say) confectionary would, I should suppose, be entitled to register three trade marks in relation to confectionary, though he intended only to use two of them and had not made up the mind as to which two he would use.

   [206] Fullagar J’s frequently reiterated observation qualifies the absolute requirement for a real and definite intention to use each particular mark, at least in the context of multiple related applications in respect of the same goods.

10. With respect to this last point made by Dodds-Streeton J (at [206]) I again note in passing what was said in Footnote 4 above, namely that the Holder is the owner of Australian registrations 1214973 FILMON and 1214974 FILMON Logo, both originally IRDAs and with the same priority date and covering the identical goods and services in Classes 9, 35, 38 and 41 as opposed IRDAs 1227986 and 1227987.

    The relevant date

11. As acknowledged by Ms Shanks at the hearing the issue of the relevant date under s 59 was addressed by the Full Court in Food Channel and by Dodds-Streeton J in Suyen.  While Dodds-Streeton J in Suyen could see some merit in the view that the requisite intention be an ongoing one extending beyond the filing date[8], she nevertheless followed the Full Court’s view to the contrary in Food Channel, noting at [147] that:

    There has been conflicting, albeit relatively sparse, authority and commentary on whether the requisite intention under s 59 is to be assessed at the date of filing the application to register the trade mark or at the time of the opposition proceeding (whether it be on the date of filing the notice of opposition, the hearing of the notice of opposition or the last filing of evidence in relation to it). Very recently, after the hearing of this appeal but before the publication of these reasons, the Full Federal Court in [Food Channel] held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”: at [74].

    [8] Particularly insofar as, as her Honour put it at [166], “A construction of s 59 which gives effect to its present tense may also avoid a potentially anomalous interaction with s 108 of the Act.”

12. In the present oppositions, accordingly, I confirm I am proceeding on the basis that the relevant date for assessing the Holder’s intention to use the Trade Marks is the date the applications to extend protection to Australia were made, namely 23 October 2007 (hereafter “the Relevant Date”).  I likewise acknowledge that the Holder’s actual use or non-use of the Trade Marks after that date, while certainly not determinative, “may be relevant” in inferring the Holder’s intention as at the Relevant Date.

    The nature of the Opponent’s onus

13. Given that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application it is clear that, in the absence of admissions by the applicant, an opponent bears the onus of displacing this presumed intention.  In Suyen Dodds-Streeton J nevertheless observed that there was “conflicting authority” as to the nature of an opponent’s onus in an appeal[9], explaining at [179]:

    One line of authority indicates that an opponent bears a special onus, according to which it cannot succeed unless it is clear that the trade mark should not be registered. Another line of authority, advocated by [the opponent before her], applies the ordinary standard of the balance of probabilities.

    [9] Referring here to an appeal to the Federal Court under s 56 of the Act from a decision of the Registrar.

14. Her Honour considered that neither the Full Court in Food Channel nor herself in Suyen needed to resolve this issue on the facts before them. In the present oppositions, brought pursuant to s 52 of the Act, I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities [10].

    [10] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32] and, most recently, Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12].

    Shift of onus

15. That said, as Dodds-Streeton J noted in Suyen at [190]:

    Irrespective of the standard of an opponent’s onus, where it makes a prima facie case for lack of intention in proceedings under s 59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.

16. Her Honour’s words reflect those of Jacobson J in Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 (“Health World”) in relation to s 59, which were also quoted with approval by the Full Court in Food Channel (at [38]). In the relevant passages, at [161] to [163], Jacobson J said:

    [161] The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; A Dufty and J Lahore, Lahore, Patents Trade Marks and Related Rights, LexisNexis Butterworths, Sydney, 2006 at [55,580].

    [162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

    [163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

17. I note that Jacobson J in the above quoted passage, Dodds-Streeton J in Suyen, and the Full Court in Food Channel all appear to agree that lack of intention might be inferred “where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence”.  It is nevertheless clear from all three judgments that such an inference will not be drawn lightly.  Jacobson J, for example, cited two such cases, being Philip Morris Products SA v Sean Ngu (“Philip Morris”) and Tommy Hilfiger Licensing Inc v Tan (“Tommy Hilfiger”), both involving somewhat particular circumstances.  In Philip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce (unlike the Holder in the present oppositions), nor did it file any written submissions or appear at the hearing.  Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting there had been no actual use in the 20 or so months since the opposed application was filed required some formal “rebuttal, denial or answer” from the applicant.  As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application.  Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

    There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se[11], particularly as there may be good reason to defer use until the protection of registration is secured.

    [11] Notwithstanding, as indicated in paragraph 31 above, actual use or non-use may be a factor in drawing such an inference.

18. In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non-use:

    [212] Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439–40.

    [213] In Food Channel, the Full Court observed that “only a low threshold has been set with regard to intention to use”: at [67][12]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of “cybersquatting” and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

    [214] Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

    [215] In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute “the controlling mind” of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that “we wanted to widen our business” to use the mark on any goods or products the company might make. [Jacobson J’s decision was upheld by the Full Court, which did not consider the intention issue (although it was a ground of appeal). The High Court allowed an appeal from the decision of the Full Court and has remitted the proceeding to the Full Court for determination of the remaining issues.]

    [216] In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and “controlling mind”) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was “some evidence not found to be unreliable” that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that “in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue”: at [83].

    [12] As mentioned in paragraph 25 above, the Full Court’s observation at [67] was that “Only a very low threshold has been set with regard to intention to use in that the very act of making the application is, without more, sufficient to establish the requisite intention”.

1. Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the “website did not evidence any intention to use [the trade mark] in Australia” and, inter alia, did not appear to “target, and was not accessed by, Australian-based purchasers”.  Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus, stating at [236]:

   …neither the 2006 USA notice of opposition nor the content of [the applicant’s] website and online store constituted compelling evidence of the absence of the requisite intention[13].  To the extent that either or both matters required an explanation, it was provided by the positive evidence advanced by [the applicant] of its intention to use [the trade mark] in future expansion of its commercial operations to Australia.

   [13] It is relevant to the present oppositions to note that her Honour explicitly cautioned (at [234]) that the content of the applicant’s website was “not necessarily as limited as the investigations of [the opponent’s attorneys] suggested as the dates of their examinations were limited, and the range of sizes and colours may not have been comprehensively checked”.

2. More generally, her Honour was somewhat sceptical as to the “utility” of the shift of onus principle at all in cases where an applicant has filed evidence, stating at [228] and [229]:

   [228] As in the hearing before the delegate, in which [the applicant] filed no evidence, [the opponent] on appeal sought to rely on particular evidence to shift to [the applicant] the evidentiary burden which, it contended, was not discharged.

   [229] The utility of that approach in the context of an appeal by rehearing in which both parties file evidence is questionable, as whether the applicant lacked the requisite intention must be determined on the evidence as a whole. The significance of discrete elements of evidence led by the opponent and unanswered by the applicant below must be viewed in the context of any different and additional evidence filed in the appeal by rehearing.

3. I will concentrate on this issue in the discussion below, since whether or not the Opponent has made out a prima facie case of lack of intention to use the Trade Marks as at the Relevant Date, and thus whether the Holder even has a case to answer in this regard, is effectively at the heart of the present oppositions.

   Discussion

4. I mention that Ms Shanks sought to distinguish Suyen from the present oppositions on the basis that, “unlike the position in Suyen”, there was before me “no clear statement of intention to use in [the Holder’s] evidence in answer”.  As Dodds-Streeton J indicated, however, “whether the applicant lacked the requisite intention must be determined on the evidence as a whole” and in the present oppositions it seems to me irrelevant, therefore, if information before me as to the Holder’s intention around the Relevant Date be contained in the Opponent’s evidence in support rather than in the Holder’s evidence in answer.  Moreover, given the nature and content of the evidence in support in this case, I am not satisfied it shifted the onus on to the Applicant to confirm its presumed intention to use in any event.

5. I have already described the Business Plan, one of the principal documents produced by the Holder at the Opponent’s request and reproduced in the Opponent’s evidence in support.  Dated just three months prior to the Relevant Date, it is, as already indicated, replete with detail about the Holder’s expectations for its business and, albeit in more general terms, for the Trade Marks.  For the sake of completeness I believe it is useful to highlight some of this detail here.  It has this to say on page 21, for example, with respect to “building the 111Pix brand globally” (with confidential figures excised):

   111Pix has budgeted £xx in high impact marketing to promote 111Pix revolutionary proprietary technology.  Purchasing advertising space in key industry magazines, radios and television media will be essential.  111Pix intends to capture and retain a million users per year, generating an estimated revenue of £xx over a four year period.  During the first year, 111Pix anticipates to attract 171 million visitors to the web site of which 2.5 million will become loyal customers generating 3 million downloads.  By the end of the fourth year, 111Pix forecasts to have attracted over 258 million visitors, a clientele of 4 million customers and 31 million downloads in total.

   111Pix will also utilize the services of Rogers & Cowan[14].  They will target a variety of media including: Film Festivals, television, advertising and media magazines such as FILM MAKER, VIDEO PRO, BILLBOARD, ROLLING STONE, ADVERTISING AGE, etc.  111Pix will invite and bring editors, TV and film producers/directors to 111Pix and arrange advertising deals to get feature articles written.

   111Pix is already attending high level industry events, promoting 111Pix with direct meetings with prospective clients and their representatives, renting stands, utilizing brochures, DVD presentations, CD ROMs and its unique website.  111Pix has budgeted and projected to have a strong presence in the most respected film festivals: Cannes, American Film Festival, N.A.T.P.E. (National Associates of Television Program Executives), M.I.P.C.O.M. & M.I.P. TV (Marché International des Programmes de Télévision).

   111Pix also currently produces content to promote the Filmon brand.  This content is played on the website in order to build the social network.  The content is also bartered to terrestrial and cable television channels for free in order for the brand to get maximum commercial exposure outside its own advertising space.

   Building the 111Pix brand globally will be a priority.  Utilizing the uniqueness of the technology and services provided, 111Pix will make all efforts to build a brand that is respected and revered.  Building the brand will add significant value to the company, increase its affiliates, consumers and clients, and help make 111Pix a more appealing acquisition for its investors and listing on the AIM market.  The ultimate goal of 111Pix is [to] build a profitable company and globally recognised brand name.

   111Pix will also consider opportunities such as co-promotions and contests with the leading industry magazines and manufacturers which will help promote 111Pix globally.

   [14] I note in passing that Exhibit NS-21 to Shanks 1 is a copy of an actual 2007 press release on Rogers & Cowan letterhead (being one of the documents originally produced by the Holder pursuant to s 202(c)) announcing the signing of a copy protection agreement between the Holder and Macrovision Corporation of the United States. The press release, which prominently features the Trade Marks, otherwise indicates that Macrovision “provides distribution, commerce and consumption solutions for software, entertainment and information content” and, inter alia, that it “holds approximately 240 issued or pending United States patents and more than 1,200 issued or pending international patents”.

6. By way of further example, under the heading “Intellectual Property” on page 38 of the Business Plan is the following:

   It is in the nature of the media business that one should “build the brand”, providing added value.  The value is based on perception and brand marketing.  The more unique the project is the easier it is to build the brand.

   111Pix has unique features and proprietary patent pending technology.  Patent applications for “Network Download Systems” & “Network Download” were filed in the U.K. and U.S.A. under the reference numbers 0700358.5 & 60/884.076 respectively.

   Building 111Pix’s brand globally will be a priority and will add significant value to 111Pix’s vision.  Creating awareness and respect of the brand will capture a considerable traffic of visitors.  Due to 111Pix’s high impact marketing campaign, over 171 million visitors are expected to visit the web site during the first year and it is assumed that one visitor in seventy will become loyal customers.

   111Pix has appointed a team of professionals from the most prestigious companies to protect the intellectual property rights and build a brand that is respected and globally recognised.

7. It is perhaps relevant also to highlight that it was some three months after producing the Business Plan (and, on the face of it, consistent with the stated goal of “building the brand”) that the Holder sought to extend protection of the Trade Marks to Australia and other countries.  It is apparent from the available online details of the opposed IRDAs, moreover, that when initial adverse reports were raised against the Australian applications by IP Australia on 26 March 2008 the Holder had Australian attorneys instructed to act on its behalf and respond.  Indeed, the Holder on the face of it retained its desire to have protection of the Trade Marks extended to Australia in November 2008 when the attorneys filed further responses with IP Australia which finally overcame any remaining objection(s) maintained in second adverse reports on the two IRDAs.  The Holder then instructed Australian attorneys to respond on its behalf to the Registrar’s Notice to Produce in June and July 2010 and to prepare and serve evidence in answer in the current oppositions in March 2011.  One is accordingly caused to wonder why the Holder would go to this expense if it had no intention to use the Trade Marks in this country.

8. As indicated in Shanks 1 (at paragraphs 26 to 30 and related Exhibits) the Holder also apparently sought at about the same time to protect the Trade Marks in several other countries beyond its home jurisdiction of the European Community, being Canada, China, India, Japan, New Zealand, Norway, South Africa, Switzerland and the U.S.A.  Ms Shanks refers to enquiries she made via the Internet indicating or suggesting the applications in Canada and the U.S.A. may have subsequently been “abandoned”.  My own enquiries of the online databases of the Canadian and American Trade Marks Offices indicate, however, that significant citation objections were raised in both jurisdictions and there thus seems no reason necessarily to infer lack of intention to use the Trade Marks as at the Relevant Date as being behind allowing the applications to lapse.  Ms Shanks otherwise says she was “unable to search publicly available databases” in the further countries mentioned, other than for New Zealand and the European Community where she confirms the Trade Marks are registered, and Japan where she says the Holder “appears to own applications”[15].

   [15] I mention that my own check of the ROMARIN online database of the Madrid International Trade Mark System indicates the Trade Marks have been accepted for registration in Japan, likewise in China subject to amendment to the Class 9 and 35 specifications, and are currently registered in Norway and Switzerland.

9. Much of Shanks 1 relates to other internet searches conducted by Ms Shanks, including searches of the online Australian Yellow Pages and Australian White Pages telephone directories and of the Australian Securities & Investments Commission’s databases of Australian company and business names, which apparently did not locate any references to either the Holder or the Trade Marks.  Ms Shanks also undertook, as she put it in her written submissions, “comprehensive reviews of the website at < on 23 February, 1 March and [22] June 2010” which, she said, “revealed that:

   ·     “the ‘111Pix’ trade mark is only used in relation to a ‘content management system’ and a ‘rights management system’;

   ·     “the URL diverted to the website or could not be located at all; and

   ·     “the most prominently and extensively used trade mark on the website was ‘FilmOn’.”

10. Based on inquiries referred to in Shanks 3, Ms Shanks further said in her submissions that “the use of the Trade Marks on the website was still minimal as at 28 March 2011”.  She argued that any use of the Trade Marks she located was via the Internet in any event and was not specifically directed at Australian consumers.  Citing the cases of Ward Group Pty Ltd v Brodie & Stone plc (2005) 64 IPR 1 and International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 (8 April 2011), she submitted such use of the Trade Marks as there was on the “foreign website” did not therefore amount to use in Australia. (I note in passing this conclusion may be contradicted, on the face of it, by Exhibit C to Balakrishnan, which is a printout of statistics provided by the Holder showing there were 322 downloads from the web address < by 55 “unique active users” in Australia in the two months ending on 16 June 2010. The accompanying email from the personal assistant to the CEO of the Holder also reproduced in Exhibit C states that “FilmOn is the VoD [Video on Demand] portal of 111pix, in addition any customer transactions would be charged as 111pix”.)

11. Shanks 1 also attests to searches conducted in 2010 of the Whois® database at the website < which “revealed that <111pix> has not been registered as an Australian domain”.  Extracts of the results for the unregistered domain names <111pix.com.au>, <111pix.net.au>, <111pix.org.au>, <111pix.asn.au> and <111pix.id.au> are exhibited in apparent support for this claim, although I am unclear as to what bearing this would have on the Holder’s intention to use the Trade Marks in Australia as at the Relevant Date, particularly given that ownership of “an Australian domain” is not required in order for a foreign business to deal directly with Australian consumers via the Internet in any event.

12. I mention that Shanks 1 attests in addition to corresponding searches undertaken “to determine whether <filmon> has been registered as an Australian domain name”.  These located a registration for < owned by an Australian company called Matilda Media Pty Limited (“Matilda”) with the company’s “contact name” indicated by the Whois® website being Alex Hartman.  Ms Shanks continues:

    Further internet investigations did not reveal a website operating at or that there is any relationship between [the Holder], or its related company Filmon plc[16], and the registrant for the domain < Annexed hereto and marked Exhibit NS-10 is an extract from the online encyclopedia, Wikipedia, at about Alex Hartman of [Matilda], and a printout from the website neither of which suggest[s] that there is any connection between [the Holder], or the related company Filmon Inc (sic), and [Matilda], the registrant for the domain <filmon.com.au>.

    [16] According to the Admission Document “Filmon plc” was the original name of “Filmon.com plc” prior to a name change on 17 October 2008.

13. I noted in footnote 13 to paragraph 38 above that Dodds-Streeton J in Suyen indicated caution was in order in accepting at face value the investigations of the opponent’s attorneys in relation to the applicant’s website in that case.  I have quoted the above words from Shanks 1 as an illustration of why I too am cautious in the present oppositions, since my own brief check of the website < (specifically, at quickly located the following information about Alex Hartman, who is said to be “Executive Vice President of FilmOn.com Inc”:

    Alexander Hartman has been a part of the FilmOn Network since 2007.  He was appointed a Member of the IT&T Committee of the Australian Industry Research & Development Board in 2005.  In 2001, he was appointed Chairman of the Information Technology Youth Skills Hub.  In 2001, Alex received the Young Australian of the Year Award for Career Achievement.

14. Even if I were to take at face value Ms Shanks’ “revelations” concerning use of the Trade Marks on websites associated with the Holder, however, they fall far short, in my estimation, of establishing a prima facie case that the Holder did not have the requisite intention to use the Trade Marks in Australia for the Goods and Services as at the Relevant Date.  As was noted by Dodds-Streeton J in Suyen and by the Full Court in Food Channel, lack of the requisite intention to use cannot be inferred from lack of use per se.  The decisions referred to earlier where the onus has been held to shift to the applicant involve something more than mere non-use, such as direct admissions by the applicant, evidence of lack of bona fides on the applicant’s part or fraud of some sort, failure to respond to a Notice to Produce as in Sean Ngu or, as indicated in Shanahan’s Australian Law of Trade Marks and Passing Off (4^th ed.) at [50,2305], cases where “the application was filed merely for defensive or speculative reasons, to gain some advantage over competitors, or for the purpose of selling the trade mark”.  There is no evidence before me in the present oppositions of any conduct by the Holder of this nature.

15. Nor has the Opponent satisfied me that the Holder’s intention to use the Trade Marks in Australia for all of the Goods and Services was not sufficiently definite or immediate as at the Relevant Date.  I note in this regard that some actual use of the Trade Marks, albeit said to be “minimal” and via, inter alia, the “foreign” website < is in fact documented in Shanks 1 and 2.  Ms Shanks argued that lack of the requisite intention should nevertheless be inferred because the Holder had apparently done such things as apply for patent protection for its technology in the USA and UK but had not done so in Australia or had set up “clusters of servers” in the USA and Europe but not in Australia.  I do not however agree with Ms Shanks’ submission that disclosure of this apparently limited actual use should, without more, shift the onus to the Holder to confirm its wider intentions.

16. A somewhat similar submission was considered by Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd (2004) 59 IPR 343. There an applicant who had applied to register the trade mark HARRY POTTER for “clothing and accessories” in Class 25 was opposed under s 59 based on the fact that it had only hitherto used or authorised use of the mark in relation to “women’s clothing”. Citing cases including John Batt and Ritz, the opponent argued that the applicant needed to have a “definite and present intention to deal in certain goods or descriptions of goods, and not a mere general intention of extending his business at some future time, to anything he might think desireable”[17].  Wilcox J acknowledged (at [53]) that:

    That formulation has been repeatedly endorsed, both in the United Kingdom and Australia. However, it is relevant to note a rider attached to it by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 ; 88 ALR 217 ; 12 IPR 417. His Honour said at NSWLR 464:

    In my opinion, the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time. [Emphasis added by Wilcox J]

    [17] Being the words of Lindley LJ in John Batt (op. cit.) at 439-40.

1. As previously mentioned, the Act otherwise provides (in Part 9) for removal or partial removal of trade marks from the Register after five years, in appropriate circumstances, if they are in fact unused for a continuous period of three years for all or some of the goods or services they cover. I find myself in agreement with the Hearing Officer in Intel Corporation v Magnatex International Pty Ltd (1998) 41 IPR 406 who, when faced with similar submissions in relation to s 59 as the Opponent puts in the present oppositions, considered the interplay between s 59 and Part 9 of the Act. After reviewing the relevant cases the Hearing Officer concluded at 412 and 413:

   In all of these cases, there was clear evidence that the proprietor of a registered mark or the applicant for registration could not have had a bona fide intention to use the mark either because they had trafficked in the marks or because they did not have the capacity in a business sense to carry out such an intention or because the application for registration was merely speculative. In each case the application was refused or the mark expunged in respect of all of the goods or services. It is not appropriate in opposition proceedings for the registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgement of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.

   The evidence before me as to the nature of the applicant's business activities and its registered office I consider insufficient to discharge the onus on the opponent to prove absence of intention to use the trade mark applied for. No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.

   …

   If it can be shown that the mark has not been used on certain goods within the specified period the proper course is to take proceedings for the removal of the mark from the register under the non-use provisions of the Act.

2. Finally, I do not accept Ms Shanks’ submission that the s 59 onus should shift to the Holder in the present oppositions because, as she put it, the documents produced by the Holder (and included as Exhibits to Shanks 1 and 2[18]) “did not contain any information about the [Holder’s] adoption of the Trade Marks or the forming of any intention to use the Trade Marks in Australia or the exact nature of any goods or services in relation to which there is an intention to use the Trade Marks in Australia”. Indeed, in my view the documents in evidence before me produced by the Holder disclose ample information for me to be satisfied that the Holder had the requisite intention contemplated by s 59 as at the Relevant Date. If it be the case that changes in the Holder’s circumstances, or in global economic conditions, since the Relevant Date subsequently affected the Holder’s plans and activities involving the Trade Marks [19] this in my opinion is not something that s 59 is designed to address, but rather something that might be tested in due course pursuant to the provisions of Part 9 of the Act.

   [18] Comprising the comprehensive Business Plan described earlier, the Admission Document and some 20 other documents amounting to several hundred pages in total.

   [19] As the contents of the Admission Document of January 2009 appear to confirm.

3. The Opponent has accordingly not established its opposition based on s 59 of the Act.

   Decision

4. Regulation 17A.34 provides:

   17A.34   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)       The Registrar must tell the International Bureau of his or her decision.

5. I have found that the s 59 ground relied on by the Opponent has not been established and, as the Registrar’s delegate in this matter, I thus direct that protection of the Trade Marks be extended to Australia one month from the date of this decision in respect of all of the goods and services listed in the IRDAs. If the Registrar has been served with a notice/notices of appeal before that time, I direct that extension of protection shall not occur until the appeal(s) has/have been decided or discontinued or, if this decision be successfully appealed, that the IRDAs be dealt with as the Court sees fit. If the Registrar has not been served with a notice/notices of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

   Costs

6. Both parties requested an award of costs in their favour.  As the successful party, the Holder is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

   Michael Kirov
   Hearing Officer
   Trade Marks Hearings
   19 March 2012