Hannu Eric Mannering v Motive Inc

[2010] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Hannu Eric Mannering to application under section 92 of the Act by Motive Inc to remove trade mark number 812839(42) -  - in the name of Hannu Eric Mannering

Delegate:

Alison Windsor

Representation:

Opponent:  Martin Pollock of Spruson & Ferguson, patent and trade mark attorneys

Applicant:  Siobhan Ryan of counsel, instructed by Griffith Hack, patent and trade mark attorneys

Decision:

2010 ATMO 60

S92(4)(b) opposition: Use demonstrated on limited range of services – Registrar’s discretion under s101(4) applied in relation to similar services – trade mark to remain on the Register for reduced service claim.

Background

1. Hannu Eric Mannering (“the opponent”) has registered a trade mark, current details of which appear below:

Registration date:  5 November 1999

Service specification:     Class 42:  Legal services; legal research; research and   development of electronic commerce applications;   research and development of healthcare products;   research and development of pharmaceuticals; computer   software design in relation to electronic commerce   applications

Trade Mark:  

1. On 30 June 2008, Motive Inc (“the non-use applicant”) filed an application for removal of this trade mark from the Register for all the services for which it is registered pursuant to the grounds stated in paragraph 92(4)(b) of the Trade Marks Act 1995 (“the Act”).

2. The opponent filed a notice of opposition to the removal application on 22 October 2008, and followed this notice on 19 February 2009 by filing evidence in support of the opposition.  The non-use applicant filed and served its evidence in answer within the required three month period, and the evidence process was completed when the opponent filed and served its evidence in reply on 31 July 2009.  Both parties then asked to be heard.   

3. The matter came before me as a delegate of the Registrar of Trade Marks in Canberra on 18 May 2010.  Martin Pollock of Spruson & Ferguson represented the non-use opponent and Siobhan Ryan of counsel represented the non-use applicant.  Both representatives attended by telephone.

The law

1. The non-use application specifies that it is made pursuant to the grounds stated in paragraph 92(4)(b) of the Act. Section 92 relevantly provides:

   Section 92. Application for removal of trade mark from Register etc.

   (1)  Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered 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 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. 

   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.

   (5)  If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

2. Under section 100 of the Act, the onus of establishing use of a Trade Mark lies with the removal opponent. To discharge the onus for paragraph 92(4)(b), the opponent must provide evidence of a bona fide use of the trade mark during the non-use period. The relevant period in this instance is the three year period ending 30 May 2008.

3. 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 during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 ("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.”

Evidence and submissions

1. The evidence consists of the following declarations:

Declarant	Status	Date made	Exhibits
Evidence in support
Hannu Eric Mannering	Non-use opponent	17 February 2009	A to O
Anthony Eric Mannering	Opponent’s son	16 February 2009	A to E
Evidence in Answer
Dr Andrew Morton	Principal of Griffith Hack, patent and trade mark attorneys	18 May 2009	None
Evidence in reply
Hannu Eric Mannering	Non-use opponent	23 July 2009	HEM-1

1. The opponent is a barrister and solicitor who operates a legal practice in the Australian Capital Territory.  His evidence in support and in reply gives a history of the development and use of the M device trade mark in connection with his legal practice from as early as 1999.  As far as use during the relevant period is concerned, he has provided examples of materials which go to demonstrating use of the trade mark within the period and in respect of various legal services. 

2. The opponent submitted that, during the relevant period, there had been no use of the trade mark in respect of the following registered services:

   §  research and development of healthcare products

   §  research and development of pharmaceuticals

   §  computer software design in relation to electronic commerce applications.

3. He specified, however, that there has been use of the trade mark in the relevant trade mark sense during the relevant period in connection with the following services:

   • legal services
   • legal research
   • research and development of electronic commerce applications.

4. The non-use applicant’s declaration and submissions given at the hearing dispute the opponent’s claim to be providing the service of “research and development of electronic commerce applications”.  They suggest that the opponent may well be using electronic commerce within his practice, but that he was not offering the service to other persons.  It is not in dispute that the opponent provides legal services.  However, the non-use applicant did question the provision of “legal research”.  I will refer to this item specifically in a later paragraph.

Discussion

1. I am satisfied that the evidence the opponent has provided shows use of his trade mark within the relevant period for the services described as “legal services”.  It is clear that a great proportion of these services are conducted electronically – via e-mail or fax, and that the legal services offered include the provision of legal documents which are transcribed onto compact discs for clients rather than provided in hard copy on paper.  It is this use of electronic means of contact, as well as the research into and development of his personal electronic software systems, which the opponent submits amounts to a valid claim for “research and development of electronic commerce applications”.

2. I do not agree with the opponent in this matter. The term “trade mark” is defined at section 17 of the Act as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” “Services of a person” is defined at section 6 as meaning “services dealt with or provided in the course of trade by the person”

3. The operative words within the two definitions are “dealt with or provided in the course of trade”.  In other words, the provision of a service involves the trade, usually for monetary payment, in some kind of skill or activity which meets the requirements of another person.  It does not involve use of the activity as an adjunct to one’s own business.

4. If the opponent was offering the service of “research and development of electronic commerce applications”, I would have expected evidence showing that people who wished to have an electronic commerce application of some kind developed for their own specific purpose would be able to come to the opponent.  The opponent would perhaps assess the customer’s requirements and then either source material from third parties and adjust it to the customer’s needs, or indeed invent the appropriate applications to fill the customer’s requirements.  This is not what the opponent does, or at any rate there is no evidence showing use of the trade mark on those kinds of services.  He offers legal services and in the offering of these services has come up with the idea of providing the voluminous documentation required for real estate transactions (in particular) in an electronic form, rather than in traditional paper form.  He is using the technology – he is neither sourcing and adjusting nor inventing applications specifically for customers.

5. The opponent also submitted that he operated a “virtual office” via the internet, and that his services were provided in conjunction with his website.  These submissions appear to be designed to support his contention that he does provide the research and development services previously mentioned.  He says that despite his lack of use of the website (because of a concern about the non-use applicant’s possible objection to such use) its very existence is a clear indication of an intention to use his trade mark in the electronic environment.

6. These submissions likewise do not support the claim for provision of the services concerned, and for the reasons I have previously given.  I am satisfied that the opponent uses his trade mark in respect of a specific item in his service claim, namely “legal services”.  He has not established any use within the relevant period for any other items in his list of services and therefore has not succeeded in establishing his opposition to the extent he wished.  I now need to consider how to exercise the Registrar’s discretion in determining to what extent the registration should be retained or removed.

Registrar’s discretion – section 101

1. Section 101 refers to the registrar’s determination of an opposed non-use application.  At the end of proceedings, if the Registrar is satisfied that the ground on which the non-use application was made has been established, the Registrar may decide to remove the trade mark from the Register for any or all of the services for which the trade mark is registered.  In general, the discretion to leave an unused trade mark on the register may be exercised “when it is reasonable to do so”, see Kowa co Ltd v Nv Organon (2005) 66 IPR 131.

2. Subsection 101(4) specifies that the Registrar may take into account, amongst other things, whether the trade mark has been used by its registered owner in respect of similar services to those for which it is registered when deciding not to remove a trade mark from the Register.

3. I have raised this matter specifically in respect of the item “legal research” which the non-use applicant submitted should be removed from the specification for the following reasons, (and I quote):

   There are no tangible examples of the “M” logo having been used in relation to the supply of legal research services.  Undertaking legal research is an integral part of the provision of legal services and this aspect of Mannering’s legal services would be covered by that descriptor.  A separate claim to legal research services is unnecessary, especially since there is no suggestion in the evidence that Mannering offers discrete legal research services to third parties, separate from his legal services, such as might be offered by a company such as LexisNexis.  This item should be removed.

4. The term “legal research” covers a very wide variety of possible activities, is certainly something that a legal practitioner would be doing every day in some way or another for his clients, and would also be something I would expect a legal practitioner to be prepared to provide for a client if requested to do so.  It appears to me to be a service similar to, if not inseparable from, general legal services.  I consider that the non-use applicant has taken an unnecessarily narrow view of the term, for reasons I am unable to discern.  I consider it appropriate to apply the Registrar’s discretion in the opponent’s favour in respect of this item.  The registration should thus remain on the Register for two items – “legal services” and “legal research”.

Decision

1. The opponent has demonstrated use in respect of only part of the services for which he has registered his trade mark.  I direct that, after one month from the date of this decision, the registration be amended to delete all services in the service claim except for the following:  “legal services; legal research”.  If the Registrar has been served with a notice of appeal before then I direct that any amendment or removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

1. Both parties requested their costs in the event of success.  As both have had a measure of success, I decline to make any award. 

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

15 July 2010