Hungry Spirit Pty Ltd as Trustee for the Hungry Spirit Trust v Fit n Fast Australia Pty Limited
[2020] ATMO 24
•18 February 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hungry Spirit Pty Ltd as Trustee for The Hungry Spirit Trust to application under section 92 of the Act by Fit n Fast Australia Pty Limited to remove trade mark number 1242423 (9, 16, 41) – MOVE - in the name of Hungry Spirit Pty Ltd as Trustee for The Hungry Spirit Trust.
| Delegate: | Bianca Irgang |
| Representation: | Opponent: David Larish of counsel instructed by Norton Rose Fulbright Non-Use Applicant: Angela McDonald of counsel instructed by Halfords IP |
| Decision: | 2020 ATMO 24 Trade Marks Act 1995 (Cth) –Application under section 92(4)(b) - Use established during the relevant period on some of the specified goods services– removal application partially successful. |
Background
This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(b) filed on 28 May 2018, Fit n Fast Australia Pty Limited (‘the non-use applicant’) has sought the removal from the Register of the trade mark (‘Trade Mark’) appearing below in respect of all the goods and services in class 9, 16 and 41 for which it is registered:
Trade mark: MOVE
Trade mark number: 1242423
Date of registration: 30 May 2008
Goods:Class 9: Training manuals in electronic format; computer programs relating to the training of personnel; training guides in electronic format; training manuals in electronic format
Class 16: Booklets for use in conducting training workshops; booklets for use in conducting training workshops; manuals for business training courses; printed training guides; training booklets; training guides in the form of printed matter; training manuals in the form of printed matte
Class 41:Adult training; conducting training seminars; conducting workshops (training); practical training (demonstration); providing courses of training; staff training services; training; adult training; arranging and conducting of workshops (training); provision of training; provision of training courses; technical training
Hungry Spirit Pty Ltd as Trustee for The Hungry Spirit Trust (‘the opponent’) filed a Notice of Intention to Oppose Removal 6 August 2018 followed by a Statement of Grounds and Particulars.
The Statement of Grounds and Particulars asserted that the grounds on which the non-use applicant relied was not relevant because the opponent and its authorized users have been using the Trade Mark in relation to the registered goods and services in Australia since at least as early as 2008, and have used the Trade Mark in relation to the registered goods and services during the relevant three-year period.
On 11 October 2018 the non-use applicant filed their Notice of Intention to Defend. The opponent and the non-use applicant then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).
The matter came before me, as a delegate of the Registrar of Trade Marks on 6 December 2019. David Larish of counsel instructed by Norton Rose Fulbright appeared on behalf of the opponent. Angela McDonald of counsel instructed by Halfords IP appeared on behalf of the non-use applicant.
Legal Framework
Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.
Section 92 provides, inter alia, that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and services in respect of which the Trade Mark is registered. Subsection 92(4)(b) as it is relevant to this case provides the following:
[1] Regulations 9.1 to 9.4 are relevant here.
(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 authorize 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 to non-use application related 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 service at any time before the period of one month ending on the day in 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.
As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:
Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
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 trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.
[2] [2015] ATMO 10
Further, section 101 of the Act deals, inter alia, with the Registrar’s discretion:
Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
In Pioneer Computers Australia Pty Ltd v Pioneer KK[3] Bennett J made the following observations concerning the Registrar’s discretion:
[3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354
[167] The discretion under s 101(3) 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 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.
[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
[171] 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. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.
Evidence
Evidence in Support
The declaration of Stephen Robert Walz (‘Walz 1’) dated 14 January 2019 accompanied by Annexure A to E
Evidence in Answer
The declaration of Anthony Gregory de Leede (‘Leede’) dated 15 April 2019.
Evidence in Reply
The declaration of Stephen Robert Walz (‘Walz 2’) dated 1 July 2019 including annexures SRW-1 to SRW-8
Discussion
To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the goods and services covered by the registration within the period of three years ending one month before the day on which the non-use application was filed (‘the relevant period’). The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponent more likely than not used the Trade Mark during the relevant period. This arises by virtue of section 100(1)(c) of the Act.
The main arguments advanced by the non-use applicant in this case are that:
The opponent has not provided any evidence to support its assertions that Mr Walz is the sole director of both the opponent and “Move 4 Life Pty Ltd” (‘Move 4 Life’). There is no evidence that Move 4 Life is an authorized user of the Trade Mark and so use of the Trade Mark by an unrelated and unauthorized third party is no barrier to removal of the Trade Mark.
There is no demonstrated relationship between the opponent and Move 4 Life and that the Intellectual Property License Agreement between the opponent and Move 4 Life dated 27 December 2007 does not include any reference to the Trade Mark so is not relevant[4].
Even if the Registrar’s delegate determines that Move 4 Life is an authorized user of the Trade Mark then the opponent has still failed to establish use across the breadth of goods and services for which the Trade Mark is registered and that a limitation to the goods and services be imposed.
[4] Annexure SRW-1 accompanying Walz 2
Walz 1 avers that Mr Walz is the sole director of the opponent and the founder, sole director and chief executive officer of Move 4 Life. Mr Walz states that Move 4 Life is an authorized user of the Trade Mark in Australia and New Zealand pursuant to a license granted by the opponent to Move 4 Life by which royalties are paid by Move 4 Life to the opponent[5]. The License was entered into in around December 2007 and requires Move 4 Life to maintain certain standards of quality in connection with the goods and services provided by reference to the Trade Mark. Pursuant to the license, the opponent has the ability to monitor the quality of the goods and services provided by Move 4 Life[6].
[5] Annexure SRW-2 accompanying Walz 2
[6] Annexure SRW-1 accompanying Walz 2
Mr Walz states that the Trade Mark has been used in Australia in relation to all of the registered goods and services which includes:
Instructional manuals (paper based and electronic)[7];
Seminars and workshops relating to injury prevention organized and conducted by the opponent and Move 4 Life[8]; and
Training and consulting services delivered by representatives from the opponent and Move 4 Life or trainers that have been certified by the opponent and Move 4 Life.
[7] Annexures B (1,2,3), C, and D accompanying Walz 1 and annexure SRW-3 accompanying Walz 2
[8] Annexures C and D accompanying Walz 1 and annexure SRW-8 accompanying Walz 2
Walz 1 states that the opponent has used the Trade Mark in relation to the goods and services since at least 2005 and has continuously been using the Trade Mark since that time. According to Mr Walz, the goods and services offered under the Trade Mark help to reduce the incidence and impact of injuries in the workplace and to increase employee engagement in safety programs.[9] These programs have been provided to over 130 companies throughout Australia including CSIRO, OPTUS, K-mart, Lion, Australia Post, Goodman Fielder and Castrol[10].
[9] Annexures SRW-5 and SRW-6 accompanying Walz 2
[10] Annexure SRW-7 accompanying Walz 2
Some examples of Move 4 Life’s use of the Trade Mark on the offered goods and services is as follows:
MOVE ®
MOVE® Training
In considering all of the above, the non-use applicant faces a considerable challenge in asserting that Move 4 Life’s use of the Trade Mark is not authorized use of the opponent’s Trade Mark on the relevant goods and services during the relevant period. This is because there is a valid license agreement between the opponent and Move 4 Life and that royalties were paid by Move 4 Life to the opponent during the relevant period.
The examples within the opponent’s evidence provide sufficient information to demonstrate genuine commercial use of the Trade Mark in relation to some of the registered and services within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & Co Ltd[11]. Even a single bona fide use of the mark in the relevant period is sufficient to resist an application for removal - Woolly Bull Enterprises Pty Ltd v Reynolds[12]. I am satisfied the opponent has established use of the Trade Mark on some of the registered goods and services. However, given the very broad nature of the goods and services for which the Trade Mark is registered it is clear that the opponent has only used the Trade Mark on a limited range of those goods and services.
[11] [1982] FSR 72
[12] (2001) 51 IPR 149
Careful consideration of the Walz decalrations and exhibits reveals that the opponent has demonstrated use of its Trade Mark on a considerable range of training materials and services being:
· Manual handling training;
· Injury prevention in the workplace;
· Reducing severity of injuries in the workplace;
· Ageing workplace strategies;
· Risk management and behavioral change in the workplace;
· Health, wellbeing and biomechanical fitness training;
· Training of trainers for leadership and embedded change within the workplace;
· Electronic and material manuals for all these services.
Goods and services the opponent has used the Trade Mark on
The non-use applicant has argued that the use demonstrated by the opponent of its Trade Mark is limited and that the goods and services of the registration be amended to:
(a)Remove from the Class 16 goods ‘computer programs relating to the training of personnel’; and
(b)Insert the limitation ‘all the foregoing being limited to manual handling and injury prevention training in the workplace’ to each of the class 9, 16 and 41 goods and services.
The opponent has counter argued that if the Registrar finds that the Trade Mark has not been used in respect of any or all of the Registered goods and services that section 101(3) permits the Registrar to decide not to remove a trade mark even if the grounds for removal have been established. Thus, the opponent has chosen to argue that the Registrar’s discretion should be used in this situation.
Registrar’s Discretion
There is a discretion embodied in subsection 101(3) of the Act. That particular part of the legislation reads as follows:
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
The application for removal is for all of the registered goods and services. The opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all those goods and services because:
(a)The Trade Mark has been continuously used since 2005;
(b)Goods and services under and by reference to the Trade Mark have been provided to employees in over 13O companies throughout Australia and more than 10,000 individual employees have participated in training programs provided under the Trade Mark;
(c)The Trade Mark has been promoted at various conferences, summits and trade shows in Australia; and
(d)That by virtue of the above, the opponent has established a reputation in its Trade Mark such that were another entity to provide any of the relevant goods and services under the Trade Mark there would be a likelihood of confusion among consumers.
In considering the use demonstrated by the opponent of its Trade Mark, I am satisfied that the limitation requested by the non-use applicant is not appropriate given that the demonstrated use of the Trade Mark is much broader than the limitation put forward by the non-use applicant. However, in a similar vein, exercising the Registrar’s discretion to maintain the Trade Mark on the Register for all the broad and unqualified range of training materials and training services in classes 9, 16 and 41 is also not appropriate.
Drummond J commented on the issue of fine distinctions in respect of goods claims when he considered trade marks involving the word “Taipan” in McHattan v Australian Specialised Vehicle Systems Pty Ltd[13]. He said:
The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. Just as it was well established by authority that s 23 of the 1955 Act conferred a discretion not to remove or limit a registered mark even though relevant non-use was shown – see Carl Zeiss Pty Ltd’s Application (1969)122 CLR 1 – so does s 101 of the 1995 Act confer a discretion not to remove a mark from the Register or limit a registered mark to exclude from its scope specific goods in relation to which the registered proprietor of the mark has been unable to prove relevant use of his mark. In these respects, the liability of a registered mark to removal or limitation is much the same under both the 1955 and 1995 Acts.
But in contrast to the position under s 23 of the 1955 Act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.
But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression “any or all of the goods … in respect of which the trade mark … is registered” in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. If s92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods. The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.
[13] (1996) 34 IPR 537
Taking these judicial comments into account, I am satisfied that making too fastidious a distinction between goods and services would be detrimental to the opponent and to consumers who may in the future then face the potential of confusion when faced with the same or similar trade marks on similar or related goods and services. If I am to exercise the Registrar’s discretion, it is in selecting a general word to describe the goods and services the opponent has demonstrated use on through its evidence, rather than maintaining the registration for its incredibly broad claim for all adult training services.
Therefore, the above broad categories that the opponent has demonstrated use of its Trade Mark on may be more appropriately summed up by the addition of the following limitation to each of the class 9, 16 and 41 goods and services:
all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace.
Decision
I am satisfied that the Trade Mark has been used in the relevant period. However, this use has only been with respect to:
Class 9: Training manuals in electronic format; computer programs relating to the training of personnel; training guides in electronic format; training manuals in electronic format; all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace.
Class 16: Booklets for use in conducting training workshops; booklets for use in conducting training workshops; manuals for business training courses; printed training guides; training booklets; training guides in the form of printed matter; training manuals in the form of printed matte; all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace.
Class 41: Adult training; conducting training seminars; conducting workshops (training); practical training (demonstration); providing courses of training; staff training services; training; adult training; arranging and conducting of workshops (training); provision of training; provision of training courses; technical training; all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace.
Therefore, I refuse to remove Trade Mark registration no. 1242423 in its entirety but direct that unless this decision is appealed, after one month from the date of this decision the class 9, 16 and 41 specification of goods and services be amended to the above.
Costs
The non-use applicant has requested its costs. However, as each party has been successful in their claims to some degree, I determine that each party should bear their own costs.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
18 February 2020
1
5
0