IHemp Victoria Inc v Leasec Pty Ltd

[2022] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by iHemp Victoria Inc to registration of trade mark application number 2149522 (Class 35) – iHAV Industrial Hemp Association of Victoria – in the name of Leasec Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Self-represented.

Applicant: Self-represented.

Decision:

2022 ATMO 122

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under s 62A – s 62A considered and established – registration refused.

Background

1.     This is a decision on the opposition by iHemp Victoria Inc (‘Opponent’) to registration of trade mark number 2149522 (‘Application’) filed by Leasec Pty Ltd (‘Applicant’).

2.     The Application was filed on 17 January 2021 (‘Relevant Date’) for the following trade mark and services:

(‘Trade Mark’)

Class 35: Lobbying (promoting, publicising or otherwise representing the interests or concerns of others); Advocacy (promoting, publicising or otherwise representing the interests or concerns of others); Arranging exhibitions for commercial purposes

(‘Services’)

3.     The Trade Mark was examined, accepted for registration, and subsequently advertised for opposition purposes on 18 June 2021. The Opponent filed notice of its intention to oppose registration and a statement of grounds and particulars (‘SGP’) on 1 July 2021. The Applicant filed a notice of intention to defend the opposition on 30 August 2021.

4.     The parties had the opportunity to file evidence under the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 14 September 2021. The Applicant filed Evidence in Answer (‘EIA’) on 20 January 2022.  The Opponent filed Evidence in Reply (‘EIR’) on 17 March 2022.

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

5.     The parties were given an opportunity to be heard by videoconference or by written submissions only. Neither party requested to be heard. The Applicant requested that a decision issue based on the materials filed and paid the relevant fee. I have decided this matter, as a delegate of the Registrar, based on the particulars set out in the SGP and the evidence.   

Grounds and onus

6.     The Opponent carries the burden of establishing a ground of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

[2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

7.     The SGP nominates a single ground of opposition under s 62A. The SGP alleges that:

·the Opponent was registered as an incorporated association on 3 February 2017 by Lynette Stephenson (director of the Applicant) under the name ‘Industrial Hemp Association of Victoria’, and used the logo associated with the trademark application to brand and promote the association.

·Ms Stephenson resigned as a Committee Member and ceased to be President of the Opponent in 2018. She has subsequently refused to return the Opponent’s assets and cease use of the brand and logos contained within the Trade Mark. Due to Ms Stephenson’s obstruction, the Opponent has sought to rebrand while retaining the historic legal rights to the name, abbreviation, and logo associated with the Trade Mark.

Evidence

8.     The following evidence was filed:

EIS

Declaration of Andrew Little, Secretary and Public Officer of the Opponent, made on 14 September 2021, with six annexures.

EIA

Declaration of Lyn Stephenson, director of the Applicant, made on 20 January 2022 with Attachments A and B.

EIR

Second declaration of Andrew Little, made on 17 March 2022.

EIS

9.     Mr Little’s first declaration refers to the SGP and contains various annexures, namely:

(i)A screenshot of the website which displays the Trade Mark and various posts from 2012.

(ii)A LinkedIn extract for Ms Stephenson, which indicates that she was President of the Industrial Hemp Association of Victoria from 2007-2018.

(iii)A Consumer Affairs Victoria extract which confirms the Opponent is an incorporated association registered on 3 February 2017, and that it was previously known as Hemp Victoria Incorporated between 20 February 2019 and 14 September 2020, and Industrial Hemp Association of Victoria Inc between 5 February 2017 and 22 January 2019. The extract also confirms that Ms Stephenson was Secretary of the Opponent between 7 February 2017 and 15 June 2018.

(iv)A letter dated 5 January 2021 to Ms Stephenson from Mr Little, on the Opponent’s letterhead, requesting the return of the website ‘hempvictoria.org’ and a Facebook page titled ‘Industrial Hemp Association of Victoria’. I note that while the letterhead contains the Opponent’s current name, it also refers in small text to it previously being known as the Industrial Hemp Association of Victoria.

(v)An Australian Securities & Investments Commission extract for the business name ‘Industrial Hemp Association of Victoria’ indicating it was registered to the Opponent on 8 January 2021.

(vi)Various screenshots from the Facebook page ‘iHemp Victoria’. I note that one post dated 9 October 2015 features a stall at the Horticultural Garden Festival at the Melbourne Showgrounds which features a banner bearing the Trade Mark:

EIA

10.   Ms Stephenson declares that the name ‘Industrial Hemp Association of Victoria’ was devised by herself (the sole director of the Applicant) in early 2009. The name was used for a group of approximately 14 people that came together on 4 September 2010 in support of her vision to bring cohesion and a professional and organised approach to representing the interests of the hemp industry. The association was unincorporated and did not have any funds, and Ms Stephenson was the President and driving force.      

11.   Ms Stephenson declares that an early logo for the association was replaced in February 2011 by a design commissioned and paid for by the Applicant. The association’s website was also developed around the same time.

12.   Ms Stephenson declares that the Industrial Hemp Association of Victoria was incorporated in February 2017 and the ‘name and logo’ developed by her were initially used by it. However, at the first Committee meeting on 27 May 2018, it was decided that the name, logo and website needed to be ‘updated’. The name Industrial Hemp Association of Victoria was ‘abandoned’ by the Opponent in 2019, first being changed to Hemp Victoria Incorporated and later to iHemp Victoria Incorporated (the Opponent’s current name) in September 2020.

13.   Ms Stephenson declares that the ‘subject logo’ was not used by the Opponent after February 2019, except for a statement on the Opponent’s website that its former name was Industrial Hemp Association of Victoria. Annexed to the declaration is an email dated 20 April 2019 which bears the Hemp Victoria Inc logo. Ms Stephenson states that until the name change, she did not use the name or logo for Industrial Hemp Association of Victoria.

14.   Ms Stephenson declares that in the period between December 2020 to January 2021, she had expressed concerns to the President of the Australian Hemp Council regarding the lack of coordinated engagement by anyone in Victoria, and she decided she could not let her past work for the hemp industry in Victoria disappear. She decided that she should establish a new functioning representative body to continue her past work.

15.   Ms Stephenson declares that in January 2021, the Opponent convinced Facebook that the page known as ‘Industrial Hemp Association of Victoria’ should be taken from her personal account and attached to the personal page of Mr Little.

16.   Ms Stephenson declares that photos on the Opponent’s Facebook page do not show the ‘iHAV logo’, nor is it used on correspondence or in promotional material. She states this is because the Opponent decided in May 2018 that it needed to be replaced. Further, the Opponent’s Financial Report of November 2018 (annexed) does not list the Trade Mark as an asset.  

17.   Ms Stephenson declares that the reputation of ‘iHav’ was established and built upon by her personally for more than eleven years, and that she still regularly receives calls from people wanting to know more about hemp. She later goes on to say:

My concern is for the further development of the hemp industry in Victoria which has been languishing behind other States. As the logo and name were not being used and had not been registered, I decided to apply for trademark registration. My intention at the time was to incorporate a new Association and transfer the trademark to that Association. I could then resume building the goodwill I had already established. A new Association was incorporated on 7 June 2021 – Regenerative Hemp Victoria Inc. (RHVI).

EIR

18.   Mr Little in his second declaration confirms that members of the Opponent recognise Ms Stephenson as one of the hemp industry’s early adopters and a key contributor to the Opponent’s establishment. However, the Opponent objects to attempts by the Applicant / Ms Stephenson to trade mark a business name of the Opponent as Ms Stephenson’s ‘personal property’, and requests ‘confirmation that the business name Industrial Hemp Association of Victoria, its abbreviations and logo remain rightfully within the ownership of the association by refusing Ms Stephenson’s request to register its name as a trademark’.  

Discussion

Section 62A

19.   Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[4]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

[4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J).

20.   This opposition forms part of a broader dispute between the parties. However, I am only concerned with the circumstances surrounding the filing of the Application. I must assess the allegation of ‘bad faith’ in the context of the history of use of the Trade Mark and the Applicant’s knowledge of that use. I must then determine whether the Applicant’s decision to file the Application fell short of standards of acceptable commercial behaviour.

21.   I accept Ms Stephenson’s claims (which are also acknowledged by the Opponent) that she had contributed significantly to both the Opponent and the Opponent’s unincorporated predecessor. There is also nothing to suggest that Ms Stephenson had anything other than altruistic motivations for starting a new association to serve the interests of Victorian hemp industry.        

22.   However, it is apparent from the evidence of both parties that the Trade Mark had previously been used by both the Opponent and its unincorporated predecessor to promote their activities, including at the time when Ms Stephenson was involved in the leadership of these entities. The evidence does not demonstrate that Ms Stephenson ever used the Trade Mark in her personal capacity, nor was the Trade Mark ever used by the Applicant prior to the Relevant Date.

23.   The evidence indicates that prior to the Relevant Date, the Trade Mark was used in the course of trade only by the Opponent and its unincorporated predecessor. The fact that the Applicant may have paid for the design of the Trade Mark, or that Ms Stephenson may have been a driving force behind the activities of the Opponent and its unincorporated predecessor, does not give either Ms Stephenson or the Applicant any claim to proprietorship over the Trade Mark.  

24.   Further, the fact that the Opponent may have ceased use of the Trade Mark does not mean that it is then open for another person to adopt and use the mark for the same services. The period between the Opponent rebranding and the Relevant Date was less than two years. This is clearly an insufficient period for a trade mark to be considered abandoned, or for any residual reputation to dissipate (particularly given the very niche market for the Services).  In this context, use of the Trade Mark by an entity other than the Opponent carries with it an inherent and obvious risk of confusion among those who have previously dealt with the Opponent and/or its unincorporated predecessor at a time when they used the Trade Mark. Further, the evidence indicates that prior to the Relevant Date, the Opponent was still at times referring to ‘Industrial Hemp Association of Victoria’ as being its former name.   

25.   Ms Stephenson, given her previous leadership position with the Opponent, had full knowledge of the history of use of the Trade Mark by the Opponent and its unincorporated predecessor. Having such knowledge, I consider that a person adopting proper standards would consider that the Opponent was the owner of the Trade Mark, and that the filing of the Application by someone other than the Opponent would be in bad faith.

26.   I am satisfied that a ground of opposition under s 62A has been established.

Decision

1. The Opponent has established a ground of opposition. As such, I have decided to refuse the Application. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   26 July 2022