HealthCert International Pte. Ltd. v Skin Cancer College Australasia Limited

[2023] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by HealthCert International Pte. Ltd. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Skin Cancer College Australasia Limited for removal of trade mark number 1621952 (41, 44) – ACCREDITED SKIN CANCER CLINC (Figurative) – in the name of HealthCert International Pte. Ltd.

Delegate:

Nicholas Smith

Representation:

Opponent: The Consultants Pty Ltd

Applicant: John Swinson Legal

Decision:

2023 ATMO 76

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal – Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 25 October 2021 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) by Skin Cancer College Australasia Limited (‘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.

1621952

Lodgement date

14 May 2014

Services

Class 41: Medical education services

Class 44: General practice (GP) medical services

(‘Registered Services’)

Owner

HealthCert International Pte. Ltd

Trade Mark

(‘Trade Mark’)

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  HealthCert International Pte. Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 20 December 2021 and a Statement of Grounds and Particulars (‘SGP’) on 20 January 2022.  The Applicant filed a Notice of Intention to Defend on 9 March 2022.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  This material will be discussed in more detail below. The Applicant did not file any evidence in answer. 

   5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

   6.  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 evidence listed below:

   ·The application for removal;

   ·The Notice of Intention to Oppose and SGP;

   EIS

   • Declaration by Nicholas Edwards, Lawyer acting for the Opponent, dated 29 September 2022;
   • Declaration by Nicholas Edwards, Lawyer acting for the Opponent, dated 29 September 2022; and
   • Assorted additional documents.

   7.  The EIS is filed in a confusing manner.  The Opponent uploaded two similar declarations sworn on the same day, each of which makes a general reference to further evidence of use being uploaded in support.  The Opponent then uploaded a series of additional photos, an invoice and brochures but it is unclear which, if either, declaration they support.  All of the documents (bar one, addressed below at [20]) are either undated or date from after the date the removal application commenced.  For the purposes of the decision, I will simply refer to both declarations and supporting material as the EIS.

   The Relevant Provisions

   8. Part 9 deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 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.

   9. 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 25 September 2021 (‘relevant period’).

   10. 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,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

   11.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 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)…
   (b)  …
   (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.

   12.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] 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) in respect of oppositions under s 52.

   13.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services 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.

   14. 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),[3] 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’.[4] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[5] 

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

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

   [5] Act s 7(3).

   15.     The principles when a trade mark has been used were recently summarised in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

   [6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

   Discussion

2. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[7]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)).  

   [7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

3. If the Opponent fails to establish such use or an obstacle to 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

4. The material in the EIS supporting the Opponent’s claim for use consists of an assertion of use of the Trade Mark in the relevant period by Nicholas Edwards, who is described as ‘Lawyer Acting for Heathcert International Pte Ltd’.  It is unclear what basis Mr Edwards has to make the assertion, and in particular whether this assertion is based on any personal knowledge Mr Edwards may have of use or based on documents attached to the EIS.   In the absence of any explanation underlying the assertion, and on the assumption that Mr Edwards is an external lawyer acting for the Opponent and not someone likely to have direct knowledge, I have only had regard to the assertion to the extent it is supported by the additional material in the EIS. 

5. The additional material attached to the EIS consists of a series of photos and brochures which are undated and thus by themselves do not show use of the Trade Mark in the relevant period. 

6. Mr Edwards asserts that the Trade Mark was used to accredit a skin cancer clinic known as North East Skin Cancer Clinic and in support of this attaches an invoice for brochures and posters dated 31 August 2020.  This invoice does not display or indicate the use of the Trade Mark in any way and thus is of no probative value.

7. Finally, the EIS contains assertions, unsupported by documentary evidence, that the Opponent intends to accredit 22 Australian skin cancer centres in the near future and that the use of the Trade Mark has been impacted by the Covid-19 pandemic due to travel restrictions making it more difficult to accredit Australian skin cancer clinics.

8. Given the complete absence of any clear dated documentary evidence showing use I am not satisfied that the EIS shows evidence of use of the Trade Mark for the Registered Services in the relevant period.

   Obstacles to use

   23.     An opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the relevant three-year period was ‘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’. The circumstances must be ‘an obstacle to the use of the trade mark by the registered owner’.[8]

   [8] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) [2001] FCA 261, [47] (Drummond J)

   24.     The Opponent gives evidence that the use of the Trade Mark was impacted by the Covid-19 pandemic because the process of accrediting the various Australian skin cancer clinics was delayed due to travel restrictions.  However, the Opponent provides no documentary material to support this bare statement or in support of any claimed causal link between the Covid 19 pandemic and the Opponent’s failure to use the Trade Mark.  Such material could have included evidence of the Opponent’s accrediting process, including whether the process required a specific visit to a clinic and whether the Opponent had employees that would have participated in the process that were unable to participate due to a travel restrictions.  Furthermore, if the Opponent’s accreditation process did require inspections, the Opponent does not explain why it did not engage people in those jurisdictions or conduct such inspections virtually.

   25.     I am not satisfied by the bare statement in the Opponent’s evidence that the existence of the Covid-19 pandemic amounted to a matter that was an obstacle to the use of the Trade Mark for the Registered Services in the relevant period, pursuant to s 100(3)(c).  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 Registered Services.

   Registrar’s Discretion

   26.     To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.[9] The burden of persuasion in this regard falls on the Opponent.[10] 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 in the integrity of the Register will generally demand the removal of an unused trade mark.[11]  In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

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

   [10] Ibid.

   [11] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   The following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as 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 Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[12]

   [12] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

   27.     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, 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.[15]

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

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

   [15] [2008] FCA 934, [210] (emphasis in original).

   28.     In the present case, the evidence that the Opponent has used the Trade Mark in Australia is minimal and the evidence that the Opponent intends to use the Trade Mark in Australia in the future consists of a bare statement unsupported by documentary evidence.  Given the absence of material, I am unpersuaded that the removal of the Trade Mark for the Registered Services would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.

   Decision

   29.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1621952 be removed from the Register one month from the date of this decision.  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.

   Costs

   30. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   14 June 2023