Futurity Pty Ltd v Futurity Investment Group Pty Ltd

[2022] ATMO 129

TRADE MARKS ACT 1995

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

Re:Opposition by Futurity Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Futurity Investment Group Pty Ltd for removal of trade mark number 1030987 (36) – FUTURITY (Fancy) – in the name of Futurity Pty Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Jesse McKenzie of Counsel instructed by Griffith Hack. Applicant: Andrew Sykes of Counsel instructed by Turks Legal.
Decision:	2022 ATMO 129 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal – Opponent’s evidence shows use of the Trade Mark for some of the goods during the relevant period. Registrar’s discretion under s 101(3) not exercised in favour of the Opponent for the remaining goods – trade mark to remain on Register for some of the goods.

Background

1. This decision is pursuant to an application made on 30 March 2020 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Futurity Investment Group Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1030987
Lodgement date	23 November 2004
Services	Class 36: Insurance, financial affairs, monetary affairs, real estate affairs (‘Registered Services’)
Owner	Futurity Pty Ltd
Trade Mark	(‘Trade Mark’)

1. Futurity Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) on 4 May 2020.  The Applicant filed a Notice of Intention to Defend on 3 July 2020.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 26 July 2021 the Applicant requested an oral hearing.  Following certain delays, the matter was set down for a hearing in Canberra on 28 June 2022 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 28 February 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 14 June 2022 (‘Opponent’s Submissions’) and indicated that they would not be present at the oral hearing.  The Applicant filed written submissions on 21 June 2022 (‘Applicant’s Submissions’).  At the hearing Andrew Sykes of Counsel instructed by Turks Legal represented the Applicant and Jesse McKenzie of Counsel instructed by Griffith Hack represented the Opponent.

4. On 14 June 2022 the Opponent filed additional evidence being a declaration of Emma Kate Mitchell, the Principal of Griffith Hack, the Opponent’s representatives, which it sought to rely upon in the hearing.  This evidence consisted of a number of extracts of the Trade Marks Register that it was not necessary to allow into evidence (as the delegate may always consider the state of the Register in making a decision) and an extract from the website of the Applicant.  In the absence of any acceptable explanation as to why this material had not been filed any earlier than two weeks before the hearing I decline to exercise my discretion under either 21.15(4) or 21.19 of the Regulations to consider the late filed material.  I note the comments of the Delegate in Ion Asset Management Ltd v Ion Trading UK Limited set out below which I consider to be relevant to this matter and indeed other matters where a party seeks to file new evidence (that could have been filed in accordance with the Regulations) solely because it is of potential relevance to the decision:

   For whatever reasons, the Opponent in this case chose to provide evidence in support of its opposition which is of a standard which falls well short of that required to establish use. It is of no surprise that the Applicant was highly critical of that evidence in its written and oral submissions. Further, there is no obligation on the Applicant that it draw the Opponent’s attention to shortcomings it considers exist in the Opponent’s evidence at any stage earlier than it did. It was incumbent upon the Opponent, in conjunction with its representatives, to provide, if possible, evidence to show that it has used its trade mark during the Relevant Period. That evidence should be appropriately prepared at the appropriate time. To attempt to rectify the shortcomings in their evidence on the day before the hearing is far from appropriate.

   It would constitute an unfair and unwarranted imposition upon the Applicant for me to consider the Opponent’s Reg 21.19 Evidence in arriving at my decision in this matter. The Applicant prepared for the hearing on the basis of evidence which was filed in accordance with the Regulations. Procedural fairness—reflected in reg 21.19(1)(e)—demands that the Applicant be given a reasonable opportunity to make representations about the Opponent’s Reg 21.19 Evidence were I to take it into account. This would cause an unwarranted delay in the proceeding of, potentially, many months.

   I therefore do not intend to take the Opponent’s Reg 21.19 Evidence into account in making my decision in these proceedings. Neither am I satisfied, for similar reasons, that it is appropriate that I consider it under the power available to me pursuant to reg 21.15(4).[1]

   [1] [2015] ATMO 124, [62]-[64].

5. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the properly-filed evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions; and

   ·The Opponent’s Submissions

   Evidence in Support
   Evidence in Answer
   Evidence in Reply

   • Declaration by Richard Wellsmore, Director of the Opponent, dated 23 December 2020 (‘Wellsmore 1’) together with Annexures RW-1 to RW-15.
   • Declaration by Ross James Higgins, Chief Executive Officer of the Applicant, dated 1 April 2021 (‘Higgins declaration’).
   • Declaration by Richard Wellsmore, dated 18 June 2021 (‘Wellsmore 2’) together with Attachments RW-16 to RW-20.

   The Relevant Provisions

6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 29 February 2020 (‘relevant period’).

8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden 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:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) 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 to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or
   (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; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

10. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

    [3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

11. In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5]

    [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [5] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    Discussion

13. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[6]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Mark by the Opponent.[7] 

    [6] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [7] Act s 7(3).

14. If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

15. The Opponent’s evidence in this matter consists of two declarations by its Director, Richard Wellsmore.  Wellsmore 1 states that the Opponent’s business trades under the Trade Mark and in the relevant period provided the Registered Services under the Trade Mark.  To support that, at Confidential Annex RW-1 the Opponent provides a dated Financial Services guide that indicates that during the relevant period the Opponent was an authorised representative of an insurance broker.  At Confidential Annexes RW-2 and RW-3 the Opponent provides documents indicating that it advised and assisted clients in relation to various loans and investment opportunities, including loan broking services.  The Declarant states that this amounts to use of the Trade Mark in connection with financial and monetary affairs.   Wellsmore 1 also states that the Opponent, in the relevant period, provided advisory services in connection with property purchases and related services, and in support of this annexes credit proposal documents provided in relation to loans brokered by the Opponent and loan product comparison documents.  The Declarant states that this amounts to use of the Trade Mark in connection with real estate affairs.   The Opponent is a holder of an Australian Credit License and a member of the Australian Financial Complaints Authority Limited.

16. Wellsmore 1 also contains evidence purportedly of use of the Trade Mark in the form of extracts from the Opponent’s website at taken during the relevant period, marketing e-mails sent during the relevant period, and a copy of the Declarant’s business card.  These annexes prominently display the word ‘futurity’ in logo form (with the letter ‘f’ in a prominent and different font to the rest of the word) (‘Futurity Logo’), but also display the same word in plain text at various points.

17. The Higgins Declaration, filed by the Applicant, contains submissions as to why, in the declarant’s view, the evidence in Wellsmore 1 should not be treated as showing use of the Trade Mark.  The Declarant submits that much of the evidence in Wellsmore 1 shows use of the word ‘futurity’ as either a company name, or as part of a trade mark (the Futurity Logo) that is not substantially identical to the Trade Mark that is the subject of the proceeding.  I have treated the material in the Higgins Declaration as submissions.

18. On the basis of the evidence before me, I am satisfied that the Opponent, during the relevant period, has conducted business as a financial advisor.  More specifically this included advising on and providing broking services in connection with insurance products, investment opportunities (such as deposits and superannuation) and loans (including home loans).   While the Applicant made submissions about the veracity of individual aspects of the Opponent’s evidence, including questions as to the exact nature of the services provided by the Opponent’s business and the exact date of the documentary evidence, when considering the Opponent’s evidence as a whole, I am satisfied that during the relevant period the Opponent operated an active business providing financial advice.

19. The Applicant submits that the use of the Futurity Logo by the Opponent is not use of the trade mark as the Futurity Logo is not substantially identical to the Trade Mark.  I do not need to reach a conclusion on this issue as I am satisfied, from the evidence before me of the Opponent’s website, domain name and e-mails sent by the Opponent[8] that the Opponent has conducted its business using both the Futurity Logo and the word ‘futurity’ (in plain text) as a trade mark.  I find that the use of the trade mark ‘futurity’ in plain text is use of the Trade Mark with additions or alterations not substantially affecting its identity.

    [8] The Applicant submitted that the e-mails were internal e-mails on the basis that the only obvious recipient was Mr Wellsmore.  It is common practice for marketing e-mails

20. The key question for me to decide is whether the use of the Trade Mark for the Opponent’s business as a financial advisor is use of the Trade Mark for the Registered Services.  The Applicant submits that I should make a distinction between offering ‘insurance’ and operating a business as a broker offering insurance services and the latter does not amount to use of the Trade Mark for the former.  I accept the Applicant’s submissions that there is a clear distinction between offering a broking service in connection with the supply of insurance and offering insurance itself.   The provision of insurance would be expected to be carried out by an insurer, who would perform the services of assessing and pricing the risk before entering into a contract with the policyholder promising to compensate the policyholder in the event that a particular loss takes place.  The Opponent, while it may advise on and act as an agent for insurance providers, does not use the Trade Mark in connection with the provision of insurance as it does not offer the services of an insurer.

21. The Applicant also submits that the provision of brokerage services for loans (and any other services I may find that the Opponent has provided under the Trade Mark in the non-use period) does not amount to ‘financial affairs’ or ‘monetary affairs’ and certainly not ‘real estate affairs’.

22. The terms ‘financial affairs’, ‘monetary affairs’ and ‘real estate affairs’ have a degree of ambiguity and are exceedingly broad.  I note the Applicant’s reference to one of the definitions of ‘affairs’ in the Macquarie Dictionary as being ‘matters of interest or concern’.   I am not satisfied that the Opponent has used the Trade Mark in connection with ‘real estate affairs’.  While the term ‘real estate affairs’ is a broad term, any services provided under this term must be directly related to the purchase, sale or rental (or similar) of physical real estate.  While the Opponent may advise on and broker loans which may be used on real estate, it is not engaged in offering services relating to real estate matters of interest or concern, rather the Opponent is offering financial services.  To put it another way, the fact that the Opponent assists customers in finding loans, and that the recipients of loans may purchase real estate, does not mean the Opponent is offering ‘real estate affairs’, any more than the Opponent assisting a customer with finance for a yacht means that the Opponent is offering ‘maritime affairs’ under the Trade Mark. 

23. With respect to ‘financial affairs’ and ‘monetary affairs’, I consider that the breadth of these specifications is far broader than the proven use by the Opponent in this case, which is limited to financial advice and insurance broking services.  In Trident Seafoods Corporation v Trident Foods Pty Limited Gleeson J stated, ‘if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] – [306]’[9].  The services offered by the Opponent under the Trade Mark in the relevant period are best characterised as ‘Financial and insurance broking and advisory services’. 

    [9] [2018] FCA 1490, [116].

1. In summary I am satisfied that the Opponent has used the Trade Mark for financial and insurance broking and advisory services (‘Used Services’) during the relevant period.  I am not satisfied that the Opponent has used the Trade Mark for insurance or real estate affairs or for financial and monetary affairs other than financial and insurance broking and advisory services (‘Unused Services’) during the relevant period.

   Obstacles to use

2. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Unused Services in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Unused Services.

   Registrar’s Discretion

3. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off, the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[10] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[11]

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[12]

   [10] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   [11] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   [12] Ibid [171]-[172].

4. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[14] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

5. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[16]

   [16] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

6. In the present case, there is no evidence that the Opponent has ever used the Trade Mark for any of the Unused Services. As such I am unpersuaded that the Opponent has a compelling private commercial interest in maintaining the Trade Mark for the Unused Services. While there are undoubted connections between the Opponent’s broking and financial advice services and the Unused Services this is not by itself determinative of whether or not I should exercise the discretion. Section 101(4) of the Act only identifies the use of the Trade Mark on similar services as a factor that I may take into account in the exercise of the discretion.

7. The Opponent has evidenced no intention to use the Trade Mark for the Unused Services, nor does the Trade Mark have any reputation in the Unused Services.  There is a public interest in the integrity of the Register, and I do not consider the public interest in this case is served by allowing a mark to remain registered for a wider variety of services then used or intended to be used by the Opponent.  If I were to remove the Unused Services, the Opponent would still retain the protection of the Trade Mark for the Used Services and (both in respect of any opposition or infringement matters) any similar goods or closely related services.  As such I do not consider that the private commercial interest of the Opponent would be significantly impacted by the removal of the Trade Mark for the Unused Services.  Nor would there be a significant risk of consumer confusion; the scope of the protection granted to the Opponent under the revised reputation would (absent any defenses) prevent the use of deceptively similar marks for the Used Services and any similar goods or closely related services; it is not necessary for the protection of the public to retain the registration of the Trade Mark for a wider range of goods than those for which it has actually been used.   Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Unused Services.

   Decision

8. I decide that the Opponent has partly established its opposition to removal and the Trade Mark should only be removed from the Register in respect of the Unused Services.

9. Accordingly, I refuse to remove trade mark registration 1030987 in its entirety but direct that one month from the date of this decision the specification of services be amended to the services  listed below and the Trade Mark will be removed from the Register in respect of all remaining services. If the Registrar is served with a notice of appeal before then, I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Class 36:  Financial and insurance broking and advisory services

   Costs

10. Both parties have requested their costs. However as both parties have had a degree of success in respect of the application for removal of the Trade Mark, I determine that each party should bear their own costs.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    2 August 2022