Frank James Matzka v the Mind Gym Ltd

[2006] ATMO 14

TRADE MARKS ACT 1995

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

Re:Oppositions by Frank James Matzka to applications under section 92 of the Act by The Mind Gym Ltd to remove trade mark numbers 533360(9), 533361(41) – MINDGYM and device - in the name of Frank James Matzka

Delegate:

Jock McDonagh

Representation:

Opponent: Craig Vinall of Madderns, Attorneys

Applicant: Sean McManus of Shelston IP, attorneys

Decision:

Section 92 opposition – opponent established use – trade marks to remain on register – costs awarded against applicant

Background

1. Trade mark registrations 533360 and 533361 are registered in the name of Frank James Matzka ("the opponent").  The registrations have effect from 30 April 1990.  It is for the device trade mark mindgym, as shown:

1. The trade marks are registered for the following goods and services:

   533360: Computer controlled biofeedback equipment in class 9

   533361: General instructional/educational courses in class 41

2. On 5 February 2004, The Mind Gym Ltd, ("the applicant"), filed applications for removal of the trade marks from the Register, on the basis of non-use in the period commencing three years and one month before the date of filing. This period, ("the relevant period"), is 5 January 2001 to 5 January 2004. The opponent filed Notice of Opposition to the application on 25 May 2004.

3. The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade marks or not used the trade marks in good faith during the relevant period.

4. In turn, the opponent alleged in the Notice of Opposition that the trade marks had been used by the opponent in Australia and used in good faith in Australia during the relevant period.

5. The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 27 October 2005. The opponent was represented by Mr Craig Vinall of Madderns, Patent and Trade Mark Attorneys.  The applicant was represented by Mr Sean McManus of Shelston IP, Patent and Trade Mark Attorneys.

Legislation

1. Section 92 of the Act relevantly provides as follows:

92  Application for removal of trade mark from Register etc.

(1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2)The application:

(a)must be in accordance with the regulations; and

(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:For prescribed court see section 190.

(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.

1. There are a number of elements of s.92 that must be satisfied before the Registrar will exercise her powers under the section, namely:

(a)the applicant must be a "person aggrieved";

(b)the application must be in the correct form and must relate to at least some of the goods for which the trade mark is registered;

(c)there must be no court proceedings pending which relate to the trade mark; and

(d)at least one of the grounds referred to must be made out.

1. The application alleges that the applicant is aggrieved by the registration of 533360 and 533361 mindgym & device. The standing of the applicant has not been disputed by the opponent.

2. The application for removal is in the correct form and covers all the goods for which the trade mark is registered. The application also states that it is the applicant's understanding that there are no pending court proceedings.

3. In the present case, the only contentious issue is (d), namely, whether the applicant is correct in its assertion that section 92(4)(b) has been satisfied.

Use During Relevant Period

1. The relevant legislation is contained in section 100 of the Act. The relevant parts state:

   100(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.

   ...

   (3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   `(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period

1. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark in the relevant period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

2. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

3. It should be noted that mere assertions of use without documentary support are generally given little weight: Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83.

The Evidence

1. Details of the evidence are shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Frank James Matzka	24.08.04	FJM-1 to FJM-8	First Matzka
Evidence in Answer
Sean Francis McManus	24.11.04	SFM-1 to SFM-3	McManus
Sean Anthony Clemmit	16.12.04	SAC-1	Clemmit
Octavio Orlando Irvine Black	17.12.04	OOICB-1 & OOICB-2	Black
Evidence in Reply
Frank James Matzka	22.03.05	FJM-9 to FJM-14	Second Matzka
Sandra Trezise	03.02.05	Trezise
Reginald Thomas Goodhew	22.03.05	Goodhew

1. The opponent provided evidence of a company name registration for ‘Mindgym’, an internet domain name and White Pages entries for ‘Mindgym’. I am not satisfied that any of these constitute trade mark use for the purposes of the Act, although it would tend to indicate that the opponent has both the intention and the means to use the mark.

2. The opponent also provided a copy of a web page that he states was current as of 30 November 2003, but dated 28 April 2004, which is headed with the word element of the trade marks and includes the complete trade mark in its body.  The text of the page advertises the relevant goods and services.

3. The opponent also provided a copy of a simple notice , headed “Beat Exam Stress!!” and further stating “Learn relaxation the Hi Tech way using the same computer controlled light and sound machine and biofeedback monitor used by MINDGYM.”  The notice gives session and contact details, along with ‘tear-off strips’ with the opponent’s telephone number.

4. The opponent further provides copies of two invoices.  One includes the fancy word component of the trade mark, and relates to services provided to a Reginald Goodhew, while the other appears to be the carbon copy of an invoice book that does not display the trade mark although it refers to ‘Mindgym GSR’ in its text.

5. The applicant’s evidence in answer predominantly supports is aggrieved status; however, it does provide a copy of a private investigator’s report that suggests that the opponent’s business premises are a private home, the telephone was not answered, and the web-site showed only the word element of the trade mark on an ‘under construction’ notice on a number of occasions that the domain was accessed in 2003 and 2004.

6. In reply, the opponent explained the nature of his business, which is at the small end of small business, and which he conducts part-time.  The opponent also provided the Goodhew declaration, which confirms that Mr Goodhew provided the opponent with a copy of the invoice the opponent had rendered to him, and explains the nature of services provided by the opponent.

Discussion

1. It is clear from the evidence and from the submissions on behalf of the opponent that the opponent is an extremely small business.  However, as long as the opponent can show genuine use of the trade mark in respect of the relevant goods and services, the size of the business is not relevant.

2. I do not consider that the “Beat Exam Stress” notice is sufficient to show relevant use.  It is undated and, in any event, I consider that use of the word “Mindgym” is neither use of the registered trade marks, nor use with additions or alterations not substantially affecting its identity.

3. The carbon copy invoice is likewise insufficient to establish use of the trade marks during the relevant period.

4. The copy of the web page is problematic.  If it were the case that the page was in use during the relevant period, it could well be sufficient to support the opposition. The page itself is dated outside the opposition period, although the opponent declares that it was the same as that used during the period.  However, the applicant has evidence of copies of the web page – dating both before and after 30 November 2003 - during the relevant period, which are quite different in that they merely show the word element of the mark above a notice that the page in under construction.

5. Given the onus is on the opponent to establish its use, on balance I cannot accept the web page as satisfactory evidence of use.

6. The one remaining potential evidence is the invoice that was issued to Mr Goodhew. It does display the fancy word element of the trade marks and is in respect of the relevant goods and services. 

7. I accept the opponent’s explanation for the typographical error producing 29 February 2003, a non-leap year.  28 February 2003, or any day in February 2003 and 1 March, falls within the relevant period.

8. I do not share the applicant’s concern that the opponent has used a reverse date sequence (YYYYMMDD) as an invoice number.  For a small business, it is as good a system as any to use, so long as there is only one transaction per day.  I understand that for sorting items on most computer applications, it is an efficacious method of chronological sorting.

9. Nor do I share the applicant’s concern that the invoice was not available from the opponent’s files, but had to be obtained from the recipient, Mr Goodhew.  To the contrary, I find it safer that the invoice has come from a customer who has decared its veracity.  There is no need for a business to engross its file copies with its own trade mark.

10. As the opponent has not used the entire registered trade mark on the invoice, I must consider whether or not it constitutes use of the mark. Section 7(1) of the Act provides:

    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.

11. The applicant contends that the design feature of the trade mark is the dominant feature of it, and that any use without such ‘striking and distinctive design element’ cannot be use that does not substantially affect the identity of the trade mark.  A number of Authorities including Re Lawson (2001) AIPC ¶91-693 and Swanfu Trading Pty Ltd v Bayer Electrical Enterprises Pty Ltd 25 IPR 215.

12. I note that Re Lawson was in respect of amendment under section 83(1)(a) of the Act, and expressly excluded consideration of “substantially affecting the identity” in relation to section 100(2) of the Act.

13. I also note that in the Swanfu case, at 228, it was stated inter alia:

    [T]he word or feature “Swanfu” is not just an immaterial embellishment … It is an invented word and therefore clearly registrable under the Act. It is an essential part of the registered mark.

14. In this case, I consider that the word mindgym, is rendered in a striking and distinctive way and is the essential part of the mark.  It is also an invented word and registrable in itself.  In my opinion it is the the fancy word mindgym design element that substantially affects the identity of the opponent’s mark.

Conclusion

1. I find that the opponent has demonstrated use of its trade marks in respect of the relevant goods and services within the relevant period. Therefore, I refuse the application to remove the trade marks from the register.

Costs

1. Both parties sought to have their costs. I see no reason why costs should not follow the event. In accordance with section 221 of the Act, I direct that the applicant pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

27 January 2006