Insfin Insurance & Finance Group Pty Ltd v Razor USA LLC [Sec=Unclassified]

[2009] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Insfin Insurance & Finance Group Pty Ltd to application under section 92 of the Act by Razor USA LLC to remove trade mark number 481851(9) - RAZAR - in the name of Insfin Insurance & Finance Group Pty Ltd

Delegate:

Alison Windsor

Representation:

Opponent:  Not represented but provided written submissions

Removal Applicant:  Siobhan Ryan of counsel

Decision:

2009 ATMO 81

S92 opposition: s92(4)(b) – opponent established use on restricted goods – trade mark to remain on register for those goods only – each party to bear its own costs.

Background

1. Insfin Insurance & Finance Group Pty Ltd (“Insfin”) is the owner of registered trade mark number 481851, current details of which are:

Registered from:  19 February 1988

Goods specification:  Class 9:  Computer equipment and accessories, computer software, and electronic equipment, all the foregoing being included in Class 9

Trade mark:  

1. On 16 May 2007 Razor USA LLC (“Razor”) filed an application to remove the trade mark from the Register for all the goods for which it is registered. The application is made under the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (“the Act”).  

2. The application was not opposed and the trade mark was removed from the Register with effect from 4 October 2007.  On 9 October 2007 Insfin filed a notice of opposition to the removal, accompanied by a request for a late extension of time for the purpose of filing the notice.  The notice of opposition is quite specific in its reason for opposing the removal for non-use, specifying that “over the last 15 years the RAZAR brand name and image has been used on life insurance comparator software sold by the business”.

3. Razor objected to allowance of the extension of time, and Insfin was given the opportunity to request a hearing on the matter.  The extension of time was finally allowed.[1]  Evidence in support of the opposition was duly filed and served within the time frame as directed by the decision. 

   [1] See 2008 ATMO 80

4. Razor elected not to serve evidence in answer and requested the non-use matter proceed to a hearing.

5. Under delegation from the Registrar of Trade Marks, I heard the matter in Melbourne on 24 July 2009.  Insfin was not represented at the hearing, but provided written submissions.  Razor was represented by Siobhan Ryan of counsel, on instruction from Griffith Hack patent and trade marks attorneys.

The Law and Onus

1. The relevant portion of the Act applying to this matter is paragraph 92(4)(b) which provides:

   (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.

2. Paragraph 100(1)(c) of the Acts provides that the opponent in a non-use matter bears the onus of rebutting any allegation in respect of lack of use made against it under paragraph 92(4)(b). The onus thus lies with Insfin to establish use of the trade mark in respect of the claimed goods within the three year period ending one month prior to the date the application for non-use was filed. The relevant standard of proof is on the balance of probabilities.

3. Also relevant to the matter is section 101 of the Act which provides the Registrar with discretion in the determination of an opposed application. I will revert to that matter later on in this decision.

Evidence and submissions

1. The evidence in support consists of a number of declarations made by Walter Ripper, managing director of Insfin.  Included in the evidence are the declarations and exhibits relied upon as evidence during the earlier action referred to previously. 

2. The evidence includes exhibits dated during the relevant period which relate to a software package on CD-ROM labelled as “RAZAR COMPARE”, further described on the CD label as “compare risk insurance, comparison service”.  Accompanying letters and tax invoices refer to the goods as “RAZAR compare software update” and “RAZAR comparator software program”.  Other evidence provided goes to showing continued use of a business name and a website, both of which include the word RAZAR.  Some of this use is demonstrated via extracts from entries on the Wayback Machine aimed at demonstrating use of the website over the years since 1988.

3. The Ripper declaration made on 17 December 2008 makes reference to development of a prototype of a new product to be used under the RAZAR trade mark.  Included with this declaration are declarations made by Gary Douglas and Neil McKay, both described as external marketing consultants, and head of third Party Broking Services with AIG Financial Solutions, Joe Mennea.  These declarations attest to the declarants’ exposure to demonstrations of prototypes of this new product during the relevant period.  No examples or relevantly dated exhibits have been provided to support this claim for an extension to the RAZAR suite of goods.

4. Insfin’s written submissions for the hearing highlighted various aspects of the evidence and reiterated that the trade mark had been in continuous use since 1988.  The submissions also made reference to the development of the new product.  In concluding his submissions Mr Ripper said the following: 

   We are a small business who purchased a trademark in 1988, paid renewals and used the trademark continuously in good faith.  Under these circumstances I don’t think it is unreasonable to expect protection of our rights from IP Australia.  I believe it is not in the public interest for our trademark to be removed or for our use of the trademark to be restricted in any way, particularly when the removal applicant has not provided any evidence to support their claim.

5. As stated by Mr Ripper, Razor had provided no evidence in answer.  Its submissions at the hearing concentrated on perceived deficiencies in Insfin’s evidence and the contention that the only hard evidence Insfin has provided is in respect of what Razor described as “insurance comparator software”.  In respect of the prototype of the new product, Razor submitted that there has been nothing provided to support actual trade in the new product.  In addition, Razor submitted, the little information provided is dated well outside the relevant period.  Therefore, Razor said, the registration should be confined to those goods in relation to which use has been proven in the relevant period, namely “insurance comparator software”.[2]

   [2] Note that this is a reduction in the ambit of the claim for removal as articulated in the non-use application.

Discussion

1. Section 27 of the Act allows for an owner to apply to register a trade mark if, at the time of filing the application, the owner is using or intends to use it in respect of the goods or services claimed. Part 9 of the Act (which incorporates sections 92 to 105 inclusive) provides a mechanism for removal of trade marks from the Register if these trade marks are not in use or have not been used.

2. The evidence submitted by Insfin in support of its opposition to the removal application clearly demonstrates that the company has provided, within the relevant period, a piece of software to customers which it describes on its own website as a “risk product comparison service”.  The software is prominently labeled with Insfin’s trade mark, and the trade mark also appears on the invoices issued by the company. 

3. I am satisfied that Insfin has demonstrated use of its trade mark within the relevant period in respect of a single item which is included within its goods specification, that is, insurance comparator software.  There is no evidence provided within the relevant period to support use of the trade mark in relation to a wider range of goods.  It is open to me to direct that the trade mark be removed from the register in respect of all the other goods claimed.

4. However, as previously mentioned, the Registrar has a discretion in the matter of removing a trade mark, in whole or in part, from the Register. Section 101 of the Act provides the following:

   (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.

5. Early decisions which considered the exercise of discretion under s.101 suggested an opponent would need to show special facts or circumstances, or an overriding question of public interest, to warrant leaving a mark on the Register in the absence of relevant use[3].  In the more recent decision in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 (23 February 2009), however, Bennett, J said:

   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.

   In Kowa Company[4] 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).

   In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

   s          there had been no abandonment of the trade mark;

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

   s          there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

   s          the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   s          the registered proprietors were not aware of the applicant’s sales under the mark.

   [3] See for example Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411 (at pp 418-9).

   [4] Kowa Co Ltd v NV Organon (2005) 66 IPR 131

6. Razor submitted that

   Software covers a range of disparate content and has application to all kinds of businesses. Refining the software claim under registration No. 481851 to insurance comparison software will reflect the Opponent’s actual use over a significant period, which is consistent with the aims of s 92. The removal of software other than insurance comparator software does not create too fine a distinction from software generally.[5]

   [5] Reference was made here to the decision in McHattanv. Australian Specialised Vehicle Systems Pty Ltd (1996) 33 IPR 537 at 543-4

7. I agree with this submission, for reasons which I will set out below.  My own knowledge of the software market suggests that there is no expectation that a company which provides software for insurance purposes will be expected to also provide software for computer games or word processing, for example.  I consider that it is possible to create relatively fine distinctions within this particular market without creating a real tangible chance of confusion within the marketplace.

8. Given that the registration has been in effect since 1988, and the evidence provided only supports use in respect of a single piece of software, any goods other than software must be removed from the claim.  It would not be reasonable, on the facts, to allow those goods to remain, especially in the lack of any evidence relevant to the other factors set out by Flick J.  The matter of the breadth of the software claim, though, needs some further consideration.

9. Insfin’s evidence made mention of a prototype of another product which it says extends the ability of the comparator software to function as a “virtual adviser”, allowing parties face to face consultation, I assume via facilities such as Skype®.  There is no hard evidence to support this prototype product.  The only information available appears as unsupported claims within the declarations made in late December 2008 by Ripper, McKay, Douglas and Mennea.[6] 

   [6] Referred to in paragraph 12

10. The discretion which the Registrar is allowed in determining the non-use matter gives me some leeway in considering whether this information should affect the goods which can be allowed to remain within the specification.  However, the information on hand is vague, and I am not able to determine whether or not this prototype results in a new product, or simply a new version of the old product, or indeed whether it results in something such as a new service, one not covered by the registration at all.  

11. Under these circumstances, I am not prepared to use the Registrar’s discretion to allow Insfin to retain a wider range of goods in this registration. 

Decision

1. I am satisfied that Insfin has used its trade mark during the relevant period on goods which may be described as “insurance comparator software”.  I direct that the specification of goods of registration 481851 be amended to read “computer software being insurance comparator software”. 

2. This amendment should not be enacted until after one month from the date of this decision, to allow for the possibility of the Registrar being notified of an appeal to the Federal Court.  If the Registrar is notified of an appeal, and the appeal is neither dismissed nor discontinued, the disposition of the registration will be subject to the directions of the Court.

Costs

1. Both parties requested their costs in the event of success. 

2. In its application to have this registration removed from the Register, Razor nominated all the goods for which the trade mark was registered.  Insfin therefore had no alternative but to oppose removal in order to save the registration in respect of even a narrow range of goods.  However, immediately before the hearing, Razor conceded that it was prepared to accept retention of the trade mark on the register for a narrow range of goods.  The timing of this concession, and the fact that Insfin has now succeeded at least in part, justify an award of costs against Razor.

3. Under these circumstances, I consider it appropriate that each party bear its own costs.

Alison Windsor

Hearing Officer

Trade Marks Hearings

20 October 2009