Golden Keys Australia Les Clefs D'Or Australia Inc v Angie Cleone

[2022] ATMO 145

TRADE MARKS ACT 1995

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

Re:Opposition by Angie Cleone to application under section 92 of the Trade Marks Act 1995 (Cth) by Society of the Golden Keys Australia Les Clefs D'Or Australia Inc for removal of trade mark number 1701359 (Class 39) – Les Clefs D'or Limousines – in the name of Angie Cleone.

Delegate:	Blake Knowles
Representation:	Opponent: One IP International Pty Ltd. Applicant: Jessie Buchan of DLA Piper Australia.
Decision:	2022 ATMO 145 Trade Marks Act 1995 (Cth) – application for removal under s 92(4)(a) & (b) – evidence does not establish use by registered owner during relevant period – discretion not exercised – trade mark to be removed.

Background

1. Society of the Golden Keys Australia Les Clefs D'Or Australia Inc (‘Removal Applicant’) on 19 January 2021 filed an application under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth)0F0F[1] (‘Removal Application’) for the complete removal of the following registered trade mark (‘Registration’):

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995(the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’), respectively.

   Trade Mark Number:             1701359

   Trade Mark:  Les Clefs D'or Limousines

   (‘Trade Mark’)

   Class 39: Chauffeur driven car hire services; Chauffeur services; Rental of chauffeur driven cars

   (‘Registered Services’)

2. Angie Cleone (‘Removal Opponent’) is the owner of the Registration. The Removal Opponent filed a notice of intention to oppose the Removal Application on 12 February 2021, followed by a statement of grounds and particulars (‘SGP’) on 1 March 2021. The Removal Applicant filed a notice of intention to defend the opposition to the Removal Application on 10 May 2021.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 9 July 2021. The Removal Applicant did not file Evidence in Answer.

4. The parties were given the opportunity to be heard by video conference or written submissions. The Removal Opponent did not request to be heard. The Removal Applicant requested a hearing by written submissions. The Removal Applicant’s submissions were subsequently filed on its behalf by Jessie Buchan of DLA Piper Australia. I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars set out in SGP, the EIS, and the submissions of the Removal Applicant.   

   Evidence

5. The EIS consists of a declaration made by the Removal Opponent on 9 July 2021 with Annexures A to O.

6. The Removal Opponent declares that she is the business owner of Les Clefs D’or Limousines, a position she has held since 19 June 2015. Annexed to the declaration is a copy of an Australian Securities & Investments Commission Record of Registration for Business Name for Les Clefs D’or Limousines (‘Business Name Registration’) dated 19 June 2015. I note the Business Name Registration does not indicate to whom the business name is registered.

7. The Removal Opponent declares that she is the founder and creator of Event Buddies Group which provides services related to events, hospitality, entertainment, limousine transport and travel. The Removal Opponent states that she has operated multiple businesses that offer a range of services under the name ‘Event Buddies’ since 2007. Annexed to the declaration are printouts dated 27 May 2021 from the website (‘Event Buddies Website’) which the Removal Opponent states contains a list of services that she provides. The only reference to services that I can discern from the first printout is a paragraph which states ‘Event Buddies Group is a boutique lifestyle events and entertainment agency providing services for special events and corporate entertainment’ which is followed by reference to ‘The Bold and Beautiful Event’, a celebrity event supporting stem cell research. The second printout also refers to event management services but also contains the sentence ‘Ask about our Les Clefs d’Or pre-booked Limousine service available for corporate hire and private transportation for VIP Clients’.

8. The Removal Opponent refers to licences entered into on 19 November 2015 (‘First Licence’) and 19 November 2019 (‘Second Licence’) between herself as licensor and Cyanotech Pty Ltd (‘Cyanotech’) as licensee. I note that the licences are stated to be executed by a Director of Cyanotech but the director is not named in either document. However, I do note that the address for licensor and licensee are the same. I also note that the signatures and handwriting of the Removal Opponent and the unnamed director of Cyanotech appearing in the execution provision on both the First License and Second Licence are very similar, and I accept based on this similarity that the First Licence and Second License were both executed by the Removal Opponent in her personal capacity and as a director of Cyanotech.  

9. The Second Licence is for unrelated trade marks and as such is not directly relevant to these proceedings. Therefore, I will not discuss the contents of the Second Licence any further other than to note they are very similar to those of the First Licence.

10. Under the First Licence, Cyanotech is authorised to use the Trade Mark, in addition to various other marks owned by the Removal Opponent. The First Licence also contains ‘Quality Control’ provisions which require that Cyanotech (a) comply with ‘marking provisions of the patent, Trade Mark and copyright laws of Australia and other countries in the Territory’, (b) comply ‘with all relevant Standard Codes’, (c) ‘…has in place quality assurance procedures and protocols in relation to the Products as approved by the Licensor unless otherwise agreed’, and (d) comply ‘with all other reasonable directions given by the Licensor’. The First Licence also includes a provision whereby the parties agree that all use of the Trade Mark inures to the benefit of the Licensor, and all goodwill belongs to the Licensor.  

11. The Removal Opponent annexes a letter dated 25 January 2021 from Cyanotech’s accountant containing marketing costs and revenues between FYE 2015-2020. No breakdown of revenues or promotional expenditure associated with the use of particular trade marks is provided. Also annexed are invoices issued by Cyanotech between 2016 and 2021. At the top of each invoice beneath the Cyanotech letterhead is a list of ‘affiliated services’ which includes the Trade Mark among other marks. The first invoice is stated to be for ‘Hospitality Services; Event Hosting’. The remaining invoices are for ‘Contract Services – small business support administration, marketing, events, travel services’.   

12. The Removal Opponent also annexes:

    (i)a printout from her personal LinkedIn page regarding a promotion for Les Clefs d’Or VIP Corporate Cars (below). The date mentioned is ‘3yr’. I understand this date is very approximate and ‘3yr’ indicates that the post occurred at least 3 years but less than 4 years before the screen shot was taken, which would have been sometime between July 2017 and July 2018 (given that the EIS declaration was made on 9 July 2021).

    (ii)another printout from her personal LinkedIn page which indicates she has been a Director of Les Clefs d’Or Limousines since March 2015

    (iii)a printout from the website (‘B&B Website’) dated 27 May 2021 which refers to an upcoming business event featuring business to business communication, art shows, entertainment, spotlight exposure and ‘Luxury and more at Les Clefs d’Or’.

    (iv)a printout dated 27 May 2021 from the website (‘FAC Website’) which refers to the Trade Mark under the heading ‘Our Friends’.

    (v)Whois domain name extracts which indicate that the domain names lesclefdorlimousines.com.au, lesclefdor.com.au, lesclefdor.org.au, and lesclefdorlimousines.org are registered to her.  

    (vi)a photograph of a business card bearing the Trade Mark with the phrase ‘prebook limousines near you’ appearing on the back of the card, together with the web address for the Event Buddies Website. 

    (vii)a copy of an ‘Authorisation Fee Notice for a Booking Service Provider’ dated 7 April 2021 issued to Cyanotech by NSW Government Point to Point Transport Commissioner. A screenshot from the online portal for NSW Government Point to Point Transport Commissioner is also provided which indicates the start date of Cyanotech’s ‘authorisation’ is 26 March 2018.

    Grounds, onus and standard

13. The Removal Application nominates grounds for removal under s 92(4)(a) and (b) in relation to all of the Registered Services. Section 92(4)(a) and (b) state:

    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)  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 non-use application relates and that the registered owner:

    (iv)has not used the trade mark in Australia; or

    (v)has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed.

    (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.

14. The grounds alleged under s 92(4)(a) and (b) are for the Removal Opponent to rebut.1F1F[2] Findings of fact in this decision are based on the civil standard of the balance of probabilities.

    Discussion

    [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

    Section 92(4)(b)

15. As a preliminary, I note:

    (i)as the Removal Application was filed on 19 January 2021, for the purposes of deciding the opposition under s 92(4)(b), the relevant three-year is the period ending on 19 December 2020 (‘Relevant Period’).

    (ii)since the Trade Mark was filed prior to 24 February 2019, a ground for removal under s 92(4)(b) may only be relied on by the Removal Applicant once a period of five years has passed since the filing date of the Trade Mark.2F[3] As the Trade Mark was filed on 18 June 2015, which is more than five years prior to the filing date of the Removal Application, this requirement is met.

    [3] Ibid, s 93 (pre amendments commencing 24 February 2019); Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) s 46.

16. I must first decide whether there has been use of the Trade Mark by the Removal Opponent, or an authorised user, in good faith, on or in relation to the Registered Services during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Registered Services, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Registered Services for which use during the Relevant Period has not been established.

17. The ‘use’ required to be demonstrated by the trade mark owner or an authorised user is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the services and the person who applies the sign to or in relation to the services.3F[4] Use in the course of trade means an actual dealing in the services, an offer for sale of the services, or an intention to offer services for sale manifested through preparatory steps showing an objective commitment to use the trade mark.5F4F[5] Use of a trade mark in relation to services includes use in physical or other relation to the services.5F[6]

    [4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

    [5] Angela Christou v Tonch Pty Ltd [2008] ATMO 24; see also Dick Smith Investments Pty Ltd v Ramsey [2001] FCA 261 (Katzmann J).

    [6] Trade Marks Act 1995 (Cth) s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

18. Under s 8(1), a person is an authorised user of a trade mark if the person uses the trade mark in relation to goods and services under the control of the owner of the trade mark. Under s 8(2) the use of a trade mark by an authorised user is an authorised use to the extent only that the use is under the control of the owner of the trade mark. Subsections 8(3) and 8(4) state that the exercise of quality control over goods and services dealt with or provided by another person under a trade mark, or the exercise of financial control over another person’s relevant trading activities, are relevant forms of control by a trade mark owner.    

19. In Lodestar Anstalt v Campari America LLC (‘Lodestar’),6F[7] Besanko J (with whom Allsop CJ and Nicholas J agreed) held:

    I think control in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time. I think (as the primary judge did) that that is the primary meaning of the word, and the English cases, so far as they go, support that conclusion. Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8. That would be inconsistent with the approach taken under the 1955 Act and the Trade Marks Act 1938 (UK). Had it been Parliament’s intention it could be effected by a much simpler provision than s 8.

    As I have said, actual control will be a question of fact and degree.  A licence agreement may contain a term that sets in detail a quality standard to be achieved.  The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time.  The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor.  The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.7F[8]

    [7] [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas, and Katzmann JJ).

    [8] Ibid Lodestar, [97]-[98].

20. In Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’), the Full Federal Court held that control was demonstrated over the use of a trade mark where two parties operated with a unity of purpose (in that case, the trade mark owner was a wholly owned subsidiary of the trade mark user, and both entities had common directors). 8F[9] The court said:

    …  it is not surprising given the corporate relationship, the commonality of directors and the shared processes between the owner and the user of the marks that there is no particular illustration of actual control by Trident Foods of Manassen in respect of the marks. The natural and ordinary inference given the relationship between the companies would be of unity of purpose, rendering redundant any particular illustration of the actual control Trident Foods must have had as the owner of the marks. Unity of purpose is indicative of the existence of actual control vested in Trident Foods as the entity owning the marks over Manassen as the entity using the marks.9F[10]

    [9] [2019] FCAFC 100, [45] (Reeves, Jagot, Rangiah JJ).

    [10] Ibid, Trident [46].

21. The Removal Opponent’s evidence indicates that any use of the Trade Mark in relation to provision of the Registered Services was more likely than not by Cyanotech. Therefore, in order for such use to be attributable to the Removal Opponent, it must be established that Cyanotech was an authorised user within the meaning of s 8. This can only be established by demonstrating that the Removal Opponent exercised a relevant form of control over the use of the Trade Mark or the trading activities of Cyanotech.

22. While I accept that there is a licence between the Removal Opponent and Cyanotech (including during the Relevant Period), the evidence is deficient in that it does not show that actual control was exercised by the Removal Opponent from time to time over the provision of the Registered Services by Cyanotech under the Trade Mark during the Relevant Period.  The quality control provisions contained in the First Licence are very broad and do not contain a ‘term that sets in detail a quality standard to be achieved’ of the kind referred to by Besanko J in Lodestar. In addition, the evidence does not establish that the Removal Opponent exercised financial control over Cyanotech.

23. The evidence also does not give a sufficient explanation of the relationship between the Removal Opponent and Cyanotech, other than that they are Licensor and Licensee, and that the Removal Opponent has been a director of Cyanotech. The mere fact that the Removal Director may have been a director of the Cyanotech in itself does not allow me to conclude that Cyanotech was under the control of the Removal Opponent to the extent necessary to establish that the two acted with unity of purpose, or that the Removal Opponent exercised financial control over the relevant trading activities of Cyanotech. It is possible there were multiple directors of Cyanotech, or that directorships changed over time. I also note that in Trident, there was no ambiguity regarding the common directorships and common purpose of the entities in question.

24. The gap in the evidence could have easily been remedied if the Removal Opponent had provided a report disclosing the current and historical directorship and shareholding of Cyanotech. This document is readily obtainable for a small fee from the Australian Securities & Investments Commission website. Given no such document was filed, I am entitled to infer that the evidence regarding the directorship and shareholding of Cyanotech would not have been favourable to the Removal Opponent.10F[11]   

    [11] Jones v Dunkel (1959) 101 CLR 298.

25. The other evidence of use of the Trade Mark relied on by the Removal Opponent is also deficient, for the following reasons:

    (i)the Cyanotech invoices, while all mentioning numerous marks (including the Trade Mark) in the header, mostly contain the same broad description of services, namely: ‘Small business support, administration, marketing, events, travel services’. However, the services are not itemized and it is not possible to conclude to what extent they actually relate to the provision of the Registered Services.   

    (ii)the references to the Trade Mark (or similar marks) on the Event Buddies Website, B&B Website, and FAC Website are contained in printouts from 27 May 2021, which is after the Relevant Date. No Internet Archive extracts are provided which substantiate the Trade Mark appearing on these websites during the Relevant Period.

    (iii)the use of the Trade Mark in the Opponent’s LinkedIn profile does not constitute evidence of a sale or offer for sale of the Registered Services in the course of trade.

    (iv)the LinkedIn post from sometime in 2017 or 2018 referring to ‘Les Clefs d’Or VIP Corporate Cars’ more likely than not refers to services provided by Cyanotech, given the existence of the First Licence and the fact that revenue information and invoices filed in support of the Removal Opponent’s case were issued by Cyanotech. However, even if this is an example of use directly by the Removal Opponent, the evidence does not establish that the use was in the Relevant Period given the ambiguity regarding the date reference on LinkedIn.

    (v)while the Removal Opponent owns various domain names that are very similar to the Trade Mark, none of these host an active website. The Removal Opponent indicates that these domains redirect to the Event Buddies Website. However, as discussed above, the evidence does not demonstrate use of the Trade Mark on the Event Buddies Website during the Relevant Period.  

    (vi)even accepting that the Business Name Registration is owned by the Removal Opponent (although this is not stated on the Record of Registration), the mere registration of a business name does not constitute use of that business name as a Trade Mark.

    (vii)no information is provided regarding when the business cards featuring the Trade Mark were printed and how or by whom they were distributed to potential clients during the Relevant Period.

    (viii)the fact that Cyanotech may have obtained Government authorization to provide the Registered Services is not evidence that the Registered Services were actually provided during the Relevant Period.   

    Discretion

1. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.11F[12] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.12F[13] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.13F[14]

   [12] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

   [13] Ibid [69].

   [14] [2002] FSR 51 (Ch) 790, [19].

2. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, 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. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.14F[15]

   [15] [2008] FCA 934, [210] (citations omitted).

3. The Removal Opponent bears the onus of establishing that the discretion should be exercised in her favour: it is not for the Removal Applicant to establish that it should not.15F[16]

   [16] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

4. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

   ·     whether there has been abandonment of the trade mark;

   ·     whether the registered proprietors of the mark still had a residual reputation in the mark;

   ·     whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

   ·     whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.16F[17]

   [17] ‘Gallo’ [2008] FCA 934, [202]–[203].

5. The evidence provides little information on what to consider in relation to the above factors, and the Removal Opponent has made no submissions on the exercise of discretion. At most, it appears that the Trade Mark is presently mentioned on websites associated with the Removal Opponent, and may have been used by Cyanotech during the Relevant Period.

6. The evidence does not satisfy me there is any appreciable reputation in the Trade Mark, nor that there have been sales of the Registered Services under the Trade Mark after the Relevant Period. The evidence does state that the Removal Opponent has spent a very substantial sum on advertising and promoting the Trade Mark since 2015. However, the Removal Opponent does not explain how this money was spent, nor is it clear that this expenditure related only to the Trade Mark, or if it is an aggregated figure relating to all of the businesses associated with the Removal Opponent. Further, the annexures do not allow me to draw reasonable inferences on this point that advance the Removal Opponent’s case. As such, I give the evidence of promotional expenditure little weight.

7. On balance, I do not consider that the Removal Opponent has provided sufficiently compelling reasons why I should exercise discretion in her favour. As such, I decline to exercise discretion.

8. As the Removal Applicant has succeeded in its application for removal under s 92(4)(b), there is no need to consider the ground for removal under s 92(4)(a).

   Decision and costs

9. The Removal Opponent has not established use of the Trade Mark for the Registered Services during the Relevant Period, or that it is appropriate to exercise discretion to allow the Trade Mark to remain registered. As such, the Trade Mark should be removed from the Register.

10. Given it is the right of both parties to appeal this decision to the courts, the removal shall not take place until at least one month from today. If the Registrar is served with a notice of appeal before then the Trade Mark shall not be removed until the appeal has either been discontinued or, the Removal Application has been dealt with as the Court sees fit.

11. The Removal Applicant requested an award of costs. Costs generally follow the event. As such, I award costs against the Removal Opponent in accordance with Schedule 8 of the Regulations.

    Blake Knowles
    Delegate of the Registrar of Trade Marks
    30 August 2022