Ion Asset Management Ltd v Ion Trading UK Limited
[2015] ATMO 124
•24 December 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Ion Asset Management Ltd to application under section 92 of the Act by Ion Trading UK Limited to remove trade mark number 1270456 (36) - ION - in the name of Ion Asset Management Ltd
| Delegate: | Robert Wilson |
| Representation: | Opponent: Justine Beaumont of Counsel, instructed by Spruson & Ferguson Applicant: Michael Hall SC, instructed by Clayton Utz |
| Decision: | 2015 ATMO 124 Section 96 opposition to removal application: Section 92(4)(b) ground established – no reason to apply Registrar’s discretion pursuant to s 101(3) – trade mark to be removed from Register – reg 21.19 not applied. |
Background
1. This is an opposition by Ion Asset Management Ltd (‘the Opponent’) to an application for removal of a registered trade mark (‘the Application’) under s 92 of the Trade Marks Act 1995 (‘the Act’) by Ion Trading UK Limited (‘the Applicant’). The Application is for removal of the trade mark detailed below which is registered in the name of the Opponent:
Trade Mark Number:
1270456
Filing Date:
14 November 2008
Sevices:
Class 36: Agencies for brokerage of securities trading in overseas securities markets and of transactions on commission of overseas market securities futures; agencies or brokerage for trading of securities, securities index futures, securities options, and overseas market securities futures; fund investment services including fund investment services featuring the trading of an account holder's securities according to previously established criteria in order to maintain a predetermined level of payments to the account holder; commodity trading for others; financial services; providing information on trading options and on profiting from time delay options; securities trading and investing services for others via the internet; financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; hedge fund investment and management services; private placements of hedge funds, private equity funds, securities and derivatives for others; financial advisory and consultancy services; financial investment services, namely administering the issuance, underwriting and distribution of securities; financial planning and investment advisory services; financial services in the nature of an investment security; financial services, namely, investment fund transfer and transaction services; financial services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities
(‘the Opponent’s Services’)
Trade Mark:
ION
(‘the Trade Mark’)
The Trade Mark carries an endorsement in respect of a convention priority claim for 2 September 2008 in respect of all of the Opponent’s Services.
3. The Application was filed on 25 February 2014, and advertised in the Australian Official Journal of Trade Marks on 6 March 2014. The Application was made in respect of all or any of the Opponent’s Services. The Opponent filed notice of its intention to oppose the removal on 6 May 2014, and a Statement of Grounds and Particulars (‘SGP’) on 6 June 2014.
4. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 26 September 2014. This evidence consists of:
Declaration made on 26 September 2014 by Daniel James Wilson, a trade mark attorney employed by the Opponent’s representative Spruson and Ferguson, with Exhibits DJW-1 to DJW-4 (‘the Wilson Declaration’). Mr Wilson indicated that Exhibits DJW-3 and DJW-4 are confidential.
5. The Applicant chose not to file any Evidence in Answer.
6. Once the time allowed for filing and serving evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Opponent indicated by correspondence dated 27 February 2015 that it did not wish to be heard at this time. By correspondence dated 29 April 2015 the Applicant indicated its desire to be heard. The matter was scheduled to be heard in Sydney on 16 October 2015.
7. Mr Daniel Wilson of Spruson and Ferguson filed written submissions on behalf of the Opponent on 30 April 2015 (‘the Opponent’s Original Submissions’). These submissions appear to have been written without the knowledge that the Applicant had requested a hearing. Once it was aware that the Applicant had requested a hearing the Opponent indicated its intention to also attend the hearing.
As is usual practice, I issued directions on 16 September 2015 regarding the filing of written submissions and authorities to be relied upon at the hearing. I provided the Opponent with the option of simply relying on the submissions filed on 30 April 2015 or to provide further submissions. Ms Justine Beaumont of Counsel, instructed by Spruson and Ferguson, filed further submissions on behalf of the Opponent (‘the Opponent’s Supplementary Submissions’) as directed by the due date of 2 October 2015.
9. Mr Michael Hall SC, instructed by Clayton Utz, filed written submissions on behalf of the Applicant by 9 October 2015 as directed (‘the Applicant’s Submissions’). Attached to Mr Hall’s submissions were a number of documents. Mr Hall indicated at the hearing that he wished the documents be taken into account pursuant to reg 21.19 of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). In the end I did not consider these documents for reasons I will provide later.
I heard the matter as a delegate of the Registrar in Sydney on 16 October 2015. The Applicant was represented by Mr Michael Hall SC, instructed by Mr Dean Gerakiteys of Clayton Utz. The Opponent was represented by Ms Justine Beaumont of Counsel, instructed by Mr Daniel Wilson of Spruson and Ferguson.
At the hearing Ms Beaumont indicated that, on the previous day, additional declarations had been uploaded to IP Australia’s internet cloud-based filing system Objective Connect. Ms Beaumont also provided me with a hard copy of the declarations. Ms Beaumont requested that this evidence be considered pursuant to reg 21.19 of the Regulations. In the end I did not consider the declarations in arriving at my decision for reasons I will provide later.
Legal Framework
Part 9 of the Act governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.
Section 92 relevantly provides:
Section 92. Application for removal of trade mark from Register etc
(1) … a person may apply to the Registrar to have a trade mark that is … 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.
…
(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 authorise 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 the non-use application relates 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/or services at any time before the period of one month ending on the day on 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.
Note 1: For file and month see section 6.
Section 96 makes provision for a person to oppose any application made under s 92 by filing a notice of opposition with the Registrar.
Section 100 specifies that the burden is on the person opposing the Application to rebut any allegations of non-use. In the case of an allegation of non-use under s 92(4)(a) the Opponent needs to establish that, on the day on which the application for registration of the Trade Mark was filed, the Opponent had the intention to use the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) in good faith in respect of the Opponent’s Services. Alternatively the Opponent must establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was, at any time before the period of one month ending on the day on which the Application was filed, used by the Opponent, in good faith, in relation to the Opponent’s services.
In the case of an allegation of non-use under s 92(4)(b) the Opponent needs to establish that it has used the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) in good faith in respect of the Opponent’s Services, and that this use occurred within the period of three years ending one month before the day on which the Application was filed (‘the Relevant Period’). Use of a trade mark in good faith has been taken by the courts to mean genuine commercial use as opposed to token use.[1] The Relevant period in this matter is the three year period ending 25 January 2014.
[1] See for example: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [62].
Section 101(1) provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any or all of the services to which the Application relates. Section 101(3) explicitly provides that the discretion may however be exercised in the trade mark owner’s favour (if the Registrar is satisfied that it is reasonable to do so), notwithstanding that the grounds on which the application was made have been established.
Relationship between s 92(4)(a) and s 92(4)(b)
Sections 92(4)(a) and (b) provide distinct and alternative grounds for removal. However, it is the view of the authors of Shanahan’s Australian Law of Trade Marks and Passing Off that because of the specifics of the provisions, sub-paragraph (a) merges with (b) once the trade mark the subject of the removal application has been registered for five years.[2] Such a merger would make it unnecessary to consider the ground for removal pursuant to s 92(4)(a)—where s 92(4)(b) is also pressed—in the situation where an impugned trade mark has been registered for five or more years. The Trade Mark had been registered for a period exceeding five years at the date the Application was filed.
[2] Mark Davison, Tracey Berger and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4th ed, 2008) [70.510].
On the question of merger Mr Hall submitted at the hearing:
[T]he proper approach for a decision maker in a removal application after five years is to start with the (4)(b) ground and look at the question of actual use and only turn to the 4(a) ground if the proceeding for some reason cannot be decided on the (4)(b) ground. Any other approach would be, frankly, illogical. But the two do remain independent grounds of review and on both of them the opponent to removal has an onus.
I am unable to find fault with Mr Hall’s view. Nevertheless, in this case I am able to make a decision on the sub-s (4)(b) ground so it is unnecessary that I consider the sub‑s (4)(a) ground.
Discussion
To successfully oppose an application for removal of a trade mark the Opponent must establish that it used the Trade Mark in the course of trade in respect of all the services for which it is registered in the Relevant Period. The date range forming the Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Trade Mark in physical or other relation to, the Opponent’s Services[3] within that period in order to rebut the allegation of non-use. Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the Relevant Period.
[3] Trade Marks Act 1995 (Cth) s 7.
The Opponent’s submissions all rely on the Wilson Declaration to support their claims of use of the Trade Mark in Australia. It is noted by Ms Beaumont at para 17 of the Opponent’s Supplementary Submissions that:
Mr Wilson gives much of his evidence on information and belief, having been informed by Mr Anthony Reich, Chief Financial Officer of the Opponent, although the source of the information has mistakenly been omitted from the Declaration. If there is any objection to reliance on the identity of the source of the information, Mr Wilson will be available at the hearing and the Opponent will seek to lead oral evidence of this fact, if necessary.
It is my view that the information provided by Ms Beaumont as to Mr Anthony Reich being the source of much of the evidence in the Wilson Declaration goes beyond being merely a submission and is in effect evidence. This information was not made available to the Applicant until a matter of days before the hearing. Mr Wilson did not provide any oral evidence at the Hearing. In the end I have arrived at my decision without considering this further information. Refer to paras 10 and 11, above, and later in this decision where I consider the reg 21.19 evidence, below.
In respect of use for the purposes of s 92 the Opponent submitted that:
[I]t has been well established that, for the purposes of section 92(4)(b), genuine commercial use, or use in the course of trade, need not encompass a large volume of sales or turnover of goods. A single, bona fide use is sufficient to rebut an allegation of non-use.[4]
Further, there is no requirement that actual sales of goods or services have taken place as long as there has been genuine offers for sale of the goods or services. As noted in Moorgate Tobacco Co Ltd v Philip Morris:
It is not necessary that there be an actual dealing in goods bearing the trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark or that the mark has been used in an advertisement of the goods in the course of trade.
[4] The Opponent provided the following cases to support this submission: Prosimmon Golf (Australia) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425; Geo W McPherson Nominees Pty Ltd v Remington Arms Co Inc (1999) 47 IPR 636; Matzka v The Mind Gym Ltd (2006) 68 IPR 339; PD Licensing Ltd v Brunswick Corporation (2001) 54 IPR 64.
The Opponent’s EIS consists solely of the Wilson Declaration. The declaration itself is four pages, with its four exhibits comprising approximately 120 pages. Exhibit DJW-1 to the Wilson Declaration is declared to consist of seven screenshots obtained from the Wayback Machine internet archive. The screenshots are variously dated from 10 August 2011 to 5 January 2014. These screenshots are of what appears to be the ‘About Us’ page of the Opponent’s website at as it appeared on the seven dates indicated. The dates all fall within the Relevant Period. The Trade Mark appears prominently at the top of each page. Each page appears to be identical and contains, amongst other things, a statement that:
Ion Asset Management is a Cayman-domiciled fund manager that launched its first fund, Ion Israel in June 2006. The Ion Israel Fund is a long/short equity hedge fund that focuses its investments in publicly-traded Israeli and Israel-related securities.
In fine print at the very bottom of the page is a copyright declaration followed by a statement that:
Ion Israel Fund is available worldwide with the exception of the UK, where it is available as IIF. Ion has no connection to Ion Asset Architecture UK Limited.
The Opponent submitted that the website referred to in Exhibit DJW-1 constitutes a genuine offer for sale of the Opponent’s Services. In response the Applicant has submitted that the existence of the Opponent’s website is not evidence of use in Australia and that:
Use of a trade mark on an overseas website which is accessible to Australians is not use of the trade in Australia unless there is something about the website that demonstrates that it is directed or targeted at Australian residents. Merkel J said in Ward Group v Brodie & Stone (2005) 143 FLR 479, [43]:
In summary, the use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.
Here there is no such evidence. In particular, there is no evidence from a person with direct knowledge or from any named source, of any intention to direct the trade mark at Australian users.
As mentioned above, a somewhat inconspicuous statement in the fine print on the bottom of the web pages states that, ‘Ion Israel Fund is available worldwide with the exception of the UK’. In my view, a simple statement on a web page that goods and/or services are available worldwide is not, without more, sufficient to evince an intention that use of a trade mark is, or was, specifically intended to be made in, or directed or targeted at, any particular jurisdiction, including Australia. I am not satisfied that Exhibit DJW-1 demonstrates use of the Trade Mark in Australia.
Exhibit DWJ-2 is declared to be a redacted copy of an Investor Due Diligence Questionnaire. The redaction of this document is such that of the original 44 pages of the document only the first two pages—being the cover page and table of contents—are provided. The Trade Mark appears prominently on the cover page of the document. It is declared at para 14 of the Wilson Declaration that:
I am informed that upon receiving an enquiry from its website, or other means, the Opponent’s usual practice is to send some general investor information. Included within this general information is an Investor Due Diligence Questionnaire.
And at para 16 of the Wilson Declaration:
I am informed that there are currently 12 Australian investors engaging in the Services offered by the Opponent under its Trade Mark. I am also informed that of these 12 investors, six first engaged the Opponent’s Services during the Relevant Period.
It is not stated in the Wilson Declaration by whom Mr Wilson was informed of the information provided at paras 14 and 16. The absence of attribution of sources occurs throughout the Wilson Declaration and this, along with other aspects of the declaration, has been criticised by the Applicant. The Applicant has averred:
[The Wilson Declaration], which constitutes the whole of the evidence relied upon by the Opponent, is a monument to cautious and non-committal hearsay. Mr Wilson does not even risk saying as a fact that his client, the Opponent, is the owner of its registered trade marks. Instead he gives that evidence as his ‘understanding’ on an undisclosed basis. That sets the tone for the whole of his declaration. The alternative formulations of ‘I understand that’ and ‘I am informed that’ are used throughout the declaration. In particular, every time there is a reference to the use of the trade mark in relation to services in Australia, at least one and at times both of those formulas are adopted. Thus for example at paragraph 10 [Mr Wilson] is informed, we do not know by whom, that the Opponent has used and had intended to use its trade mark in Australia in relation to the services. If that is true, why does no director or employee of the Opponent deign (or dare) to say so?
The declaration is most notable for what is not included. Never does Mr Wilson say the he believes the information that he is informed of, to be true. Except for a series of identical print-outs of an overseas website, never does he say that he has concluded any matter from his own researches or his own observations. He does not put in evidence any communication from any person on behalf of the Opponent informing him for those matters. He does not identify that he was informed of those matters by the Opponent or indeed name any source. It is not simply a matter of taking Mr Wilson’s word for it. He is an Australian trade mark attorney and one would not question what he says on oath. But it is for that reason that his obvious reluctance to say that his client has ever made any use of any trade mark in Australia in relation to any service is the most striking.
While the question here is not of the admissibility of the evidence according to formal rules, but rather of its probative value, the comments of Judges dealing with evidence on ‘information and belief’ in interlocutory Court proceedings is relevant. Historically the requirement for the use of such evidence was first that the deponent identify the source of the information, and secondly that he affirm his own belief that the information was true. … The obligation to identify the source is particularly important, and is now reflected in s 75 of the [Evidence Act 1995 (Cth)]. Palmer J said in Wily v Terra Cresta Business Solutions [2006] NSWSC 949, [11]-[12]:
The requirement of the section that the source of the information be revealed goes some way to assisting the Court in assessing the reliability of that evidence. Without any indication of the source of the evidence proffered on information and belief the Court is unable to assess its weight nor can the Opponent test the evidence or make any sensible submission as to its weight. … I do not think that the requirement of s 75 is fulfilled by identifying the ‘the source’ of evidence on information and belief by the sole description of ‘our client’.
…
Mr Wilson’s failure to identify his source means we do not know whether his informant was employed by the Opponent in the relevant period, or whether he or she is in turn relying on hearsay. We do not know what access he or she has to the Opponent’s records (which we are told are confidential) or whether they have been reviewed. Each of these factors (and many others) might support a ‘sensible submission as to its weight’.
Wilberforce J in ‘Nodoz’ TM [1962] RPC 1 discussed the proper approach of a decision maker in a non-use case where only a small number of acts of use are alleged. They should be established ‘… by, if not conclusive proof, at any rate overwhelmingly convincing proof. It seems to me that the fewer the acts relied upon the more solidly ought they to be established.’ That of course was a single-use case, and here the mystery informant says there were 6 (Wilson at [16]), but the ‘overwhelmingly convincing proof’ principle still applies.
Ms Beaumont responded to the Applicant’s submissions regarding the probative value of the Wilson Declaration in oral submissions on behalf of the Opponent, saying:[5]
The Applicant expressly submits that it does not attack Mr Wilson’s credit. It had the opportunity to cross-examine him and it has not sought to do so. So for that reason, and in the absence of any evidence from the Applicant, my submission is that Mr Wilson’s evidence should be accepted. He has given some very specific factual evidence about the activities of the Opponent and there is no suggestion that that is not correct, and it has not been expressly challenged by any evidence of the Applicant. It is common in this Office for a trade mark attorney to give evidence on information and belief on behalf of his or her client. There are no rules of evidence which prohibit that course.
Connected with that is the question of onus. We accept that we bear the onus of proof to rebut the allegation of lack of intention and lack of trade mark use during the relevant period. But the observations of Wilberforce J as he then was about ‘overwhelmingly convincing proof’ … were made in the ‘Nodoz’ case and in a context where there was only a single instance of use. … It is clear from page 5 and page 8 of the reported decision that in that case there was a prima facie case made out by the non-use applicant by evidence. … At page 5 of the report at about line 13, it was stated the case was approached
as is usual in such cases, by bringing forward general evidence from the trade to establish that no use of the trade mark in this country could be found.[6]
There is a complete absence of that kind of evidence here, and all the decision maker has is the evidence on the other side of use: albeit on information and belief. But that is the evidence.
Flowing again from this ‘overwhelmingly convincing proof’ point, which is an expression much bandied about, but which we cannot let overtake the fact that the relevant standard of proof is, in my submission, ‘the balance of probabilities’. Sections 100(2) and (3) talk about the circumstances where the opponent is taken to have rebutted the allegation that the trade mark has not been used, or used in good faith. The same wording is used in sub-s (3) but I’m reading from sub-s (2), it is rebutted if:
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 services before that period.
So, there is nothing that says it has to be established to any higher level of proof than the usual balance of probabilities. Indeed there are Trade Mark Office decisions, for example recently Sport Direct Holding BV v Reece Pty Ltd,[7] which apply that balance of probabilities standard.
[5] The oral submissions of Ms Beaumont in being transcribed have been edited to make them more concise and flow more smoothly when read. For example, ‘ums’, ‘ahs’, pauses and repetition have been removed. This is also the case where Mr Hall’s oral submissions have been transcribed.
[6] Nodoz Trade Mark [1961] RPC 1, 5 (Wilberforce J).
[7] [2015] ATMO 78, [7].
Mr Hall responded on behalf of the Applicant in oral submissions at the hearing to Ms Beaumont’s submissions about the Nodoz case, by pointing out that the removal application in that case was conducted under the Trade Marks Act 1938 (UK) which is
much closer in procedure to our old s 23 than it is to current ss 92, 94. The result is that, there, to put any onus on the removal opponent at all, it was necessary to file declarations from half a dozen pharmacists saying ‘I’ve never sold a Nodoz tablet in my entire career’. And that is why that evidence was present. The absence of it in this case does not change the circumstance that the obligation is upon the Opponent to demonstrate that there has been use of the Trade Mark for relevant services during the period. It is at that starting point that the Nodoz analysis begins.
Mr Hall also responded at the hearing to Ms Beaumont’s submissions regarding the standard of proof. Mr Hall accepted that the standard of proof is the civil standard of the balance of probabilities, and continued:
[I]t is very well established that to get to the balance of probabilities, to get to the more likely than not standard, different qualities of proof may be necessary depending on the fact that is in issue. The most famous example of that in general law is the case Briginshaw v Briginshaw[8] in which the High Court says that deliberate wrongdoing is always less likely than accident, and accident is always less likely than coincidence. Therefore if you want to make the more serious allegation of deliberate wrongdoing you must prove it to a significantly higher degree in order for us to be satisfied on the balance of probabilities that it occurred.
Sexual misconduct in Briginshaw is a long way from what we are talking about here but nonetheless the principle is what is established and enshrined now in s 125 of the Evidence Act.
[8] (1938) 60 CLR 336.
Following the hearing I sought clarification from Mr Hall regarding his reference to Briginshaw v Briginshaw (‘Briginshaw’). Mr Hall indicated that while his statement of the law was correct he had erred in his recollection at the hearing and the words concerning ‘deliberate wrongdoing’ etc, were paraphrased not from Briginshaw but from Re H.[9] Re H, says Mr Hall, is one of the leading English authorities on the point he was making that to get to the balance of probabilities, to get to the more likely than not standard, different qualities of proof may be necessary depending on the fact that is in issue: a proposition which Briginshaw also supports.
[9] [1996] AC 563, [73] (Nicholls LJ).
I also sought clarification from Mr Hall regarding his reference to s 125 of the Evidence Act 1995 (Cth). Mr Hall again indicated that he had erred in recalling the provision from memory and that he had intended to refer to s 140 of the Evidence Act 1995 (Cth). I take Mr Hall’s point, but I note—and I have no doubt that Mr Hall is aware of this—that the Registrar is not bound here by the rules of evidence.[10]
[10] Trade Mark Regulations 1995 (Cth) reg 21.15(4).
I provided Ms Beaumont with an opportunity to respond to Mr Hall’s clarification. Ms Beaumont indicated that there was nothing that she needed to add to her submissions other than that
the factual question for determination is simply whether or not my client has made use of the trade mark in Australia during the relevant period. This is not a matter of any ‘gravity’ (along the lines contemplated by s 140 of the Evidence Act, even if it were to apply in this forum); nor does it involve any ‘serious’ allegation which would attract the principles in Briginshaw.
Allegations of non-use of a trade mark and the possible removal of a trade mark from the Register are unlikely to be considered by anyone to be issues as grave as the abuse or potential abuse of a child as was alleged in Re H. Nevertheless, these are serious commercial issues which require serious consideration. For the Registrar to be satisfied to the usual civil standard that the Opponent has used its trade mark in the Relevant Period robust evidence is required. I am persuaded by Mr Hall’s submissions that there are significant deficiencies in the Wilson Declaration.
Mr Wilson has made numerous statements in his declaration asserting facts of which he has been informed. These include, as examples:
[9] I am informed that the Opponent has continuously used its Trade Mark worldwide, including in Australia since it first offered its Services.
[14] I am informed that upon receiving an enquiry from its website, or other means, the Opponent’s usual practice is to send some general investor information. Included within this general information is an Investor Due Diligence Questionnaire.
[16] I am informed that there are currently 12 Australian investors engaging in the Services offered by the Opponent under its Trade Mark. I am also informed that of these 12 investors, six first engaged the Opponent’s Services during the Relevant Period.
[18] In addition to its subscribed investors, the Opponent also sends its monthly reports to non-investors who are subscribed to receive these updates. I am informed that there are 104 such subscribers from Australia who are not currently investors.
While I accept that Mr Wilson has been informed of the facts asserted, I am unable to afford such statements significant weight. It is not stated by whom Mr Wilson was informed. This makes it impossible to assess the veracity of the information. Far more probative and appropriate in a matter such as this would be for the provider of the information to state the information in the form of a declaration accompanied by supporting exhibits.
The Wilson declaration is also deficient in that it contains unsupported statements such as:
[17] The Opponent provides all of its subscribed investors with regular monthly email updates. Included within these monthly email updates are monthly reports related to the performance of the Opponent’s fund over the course of the previous weeks.
This statement is unsupported by appropriate evidence. Without supporting evidence, such as examples of emails and their attachments sent during the relevant period, a bald statement such as that made by Mr Wilson carries little weight. This is so whether the statement is made by an attorney representing a party or a by the represented party itself. Delegates of the Registrar require examples of trade marks in use before they are able to be satisfied that use has occurred. Serious commercial matters ought to be addressed in a serious and appropriate manner.
Because of the shortcomings of the Wilson Declaration I am not satisfied that, on the balance of probabilities, the Opponent used the Trade Mark in Australia during the Relevant Period.
The Regulation 21.19 evidence.
As stated above, both parties have requested that certain information be taken into account in this matter pursuant to regs 21.15 and/or 21.19.
Regulation 21.15 relevantly provides:
21.15Opportunity to be heard by Registrar
(1)This regulation applies if the Act or these Regulations provide for a person to be heard by the Registrar.
…
(4)The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.
…
Under reg 21.15(4), the Registrar is not bound by the rules of evidence in the same way that a court is. In the words of Lord Denning MR:
A tribunal (of this kind) is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law … Hearsay is clearly admissible before a tribunal. No doubt in admitting it, the tribunal must observe the rules of natural justice, but this does not mean that it must be tested by cross-examination. It only means that the tribunal must give the other side a fair opportunity of commenting on it and of contradicting it … .[11]
[11] T A Miller Ltd v The Minister for Housing and Local Government [1969] RPC 91.
Regulation 21.19 provides:
21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
The delegate of the Registrar in Federation Square Pty Ltd v Federation IP Pty Ltd (‘Federation Square’) provided a useful summary of reg 21.19:
Historically, regulation 21.19 has been utilised by delegates of the Registrar to take into account information provided at examination that was not served for opposition purposes,[12] or for material arising from notices to produce[13] and other information the delegate became aware of that was pertinent to the proceedings.[14] In essence, the applicability of regulation 21.19 is not limited in the type of material it may allow into proceedings. Neither is the regulation limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.[15]
[12] Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80.
[13] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.
[14] Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.
[15] Federation Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [36] (H. Wilson).
The delegate in Federation Square also noted that as there are no longer any ‘further evidence provisions’ for removal applications commenced after April 2013, that there is a reduced evidence in reply stage, and that there are more rigorous requirements for extensions of time, it was anticipated by the legislature that reg 21.19 may play a different role in trade mark oppositions than it had in the past.[16] The delegate referred to the following from the Explanatory Statement to the ‘Raising the Bar’ amendments:
Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.[17]
[16] Ibid [38].
[17] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) p 29 (emphasis added).
The delegate also stated:
The clear intention is that Regulation 21.19 should not [be] interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.[18]
However:
[T]he intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out [of] oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.[19]
[18] Federation Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [40] (H. Wilson).
[19] Ibid [52].
The delegate of the Registrar in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited (‘TWG’) stated her view that:
[A] serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision. This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under legislation that has the potential to exclude evidence crucial to an opposition outcome.[20]
[20] [2015] ATMO 64, [45] (Murray).
The Applicant’s reg 21.19 evidence
The Applicant has requested that some sixteen pages which were appended to Mr Hall’s written submissions be taken into account pursuant to reg 21.19 (‘the Applicant’s Reg 21.19 Evidence’). Those pages include a number of internet website search results. Mr Hall indicated at the hearing that the Applicant’s Reg 21.19 Evidence goes only to the ground for removal pursuant to s 92(4)(a). As indicated at para 20 of these reasons, above, I do not intend to consider this ground for removal. Consequently, there is no need for me to consider the Applicant’s request further.
The Opponent’s reg 21.19 evidence
The Opponent has requested that information which is not part of its evidence in support be taken into account pursuant to reg 21.19, or alternatively reg 21.15. The information is contained in two declarations (collectively ‘the Opponent’s Reg 21.19 Evidence’):
· One made on 14 October 2015 by Anthony Reich, the Chief Financial Officer of the Opponent, with Exhibits AR-1 to AR-5 (‘Reich 1’); and
· A second made on 15 October 2015 by Anthony Reich (‘Reich 2’).
Reich 1 consists of a three pages long declaration, with the accompanying five exhibits totaling some 203 pages. Reich 1 was uploaded to IP Australia’s internet cloud based file sharing system on 15 October 2015: less than 24 hours before the start of the hearing. Ms Beaumont and Mr Hall agree that Reich 1 was served on the Applicant on 15 October 2015. Reich 2 consists of a single paragraph and, according to its cover letter, notes and corrects a slight typographical error in Reich 1. Reich 2 was uploaded to IP Australia’s internet cloud based filing system on the morning of 16 October 2015: approximately an hour and a half before the start of the hearing.
Ms Beaumont provided oral submissions at the hearing as to why the Opponent’s Reg 21.19 Evidence should be considered. Ms Beaumont submitted that there are two primary reasons. Firstly, the material, in part, rebuts late material purportedly relied on by the Applicant: this material being the Applicant’s Reg 21.19 Evidence. Secondly, because the evidence is highly probative. As indicated above I have not considered the Applicant’s Reg 21.19 Evidence in this decision. Consequently, the Opponent’s first reason cannot be persuasive. This leaves the Opponent’s second reason to support its view that I should consider the Opponent’s Reg 21.19 Evidence.
Ms Beaumont submitted that the Opponent’s Reg 21.19 Evidence as well as being highly probative arises, at least in part, from the Applicant’s submissions. Ms Beaumont averred:
The evidence that was filed in the usual course by my client was a declaration of my instructing trade mark attorney on information and belief. There has been an almighty attack on that in submissions from the Applicant: which we don’t accept. But, to put the question completely out of the field of anything that anyone needs to be concerned about [Reich 1] is direct evidence from the Chief Financial Officer of the Opponent, and deals with, I accept, some additional evidence which hadn’t been previously been included in Mr Wilson’s declaration, but which bolsters my client’s case.
The evidence is of a nature that—in accordance with principles articulated under the previous Trade Marks Act and the current Trade Marks Act—that it is in the public interest in hearing the opposition on its merit to have all the relevant evidence before the Hearing Officer. Those principles are set out in the recent decision of Hearing Officer Heath Wilson in Federation Square Pty Ltd v Federation IP Pty Ltd (2015) 113 IPR 453. The delegate in that case sets out from para 48 onwards considerations relevant to allowing additional evidence in under reg 21.19. The decision refers to earlier decisions about the desirability of considering the nature and significance of the evidence put forward. If the material is of high probative value that would be a crucial factor in the determination of whether it should be admitted. It is submitted here that the material is of high probative value.
The delegate went on at paragraph 52 to say that the options for parties in oppositions such as the one for him, and this one, are limited and that ‘the intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out oppositions where there is a serious issue to be heard’. In that case, of course, the evidence was submitted at an early stage of proceedings, I accept that, than it is in this case, but, in my submission the principle is the same.
If you were to accept some of the submissions about the defects in [the Opponent’s Original Submissions]—and I don’t expect this to be the case—then I would emphasise even further the high probative value of [the Opponent’s Reg 21.19 Evidence].
Ms Beaumont continued to inform me that despite the length of the Opponent’s Reg 21.19 Evidence there was only a small amount of it that was being relied upon. Ms Beaumont indicated which parts of the evidence upon which the Opponent intended to rely, and upon which parts no reliance would be made. This reduced significantly the amount of additional material the Opponent sought to be considered under reg 21.19.
Mr Hall responded to Ms Beaumont’s submissions by noting that the timetable that applied to the preparation of evidence was complied with and that
No application has been made to extend that time to put on additional evidence. If that were done, of course, and it were allowed—I accept that this is unlikely given the stringency of the current test—then that would trigger my client’s opportunity to answer any of this evidence. Whereas, this attempt to use regulation 21.19 would deny my client that opportunity.
The major difference between this and the Federation Square case is that in the Federation Square case the application was made seven days after the deadline for filing evidence in support had passed, and before any other steps in the proceeding had been taken. Whereas here, the parties have prepared for this hearing on the basis of a set of materials which were understood by everyone to be the materials upon which my client’s application for removal would be determined. And now I have 208 pages of exhibits arriving at the end of the business day prior to the commencement of the hearing.
I have not had the opportunity to study them in anything like the detail that I would normally study evidence that was to be relied upon in a hearing of this sort. My client, as far as I am aware, has not even seen them (being in the United Kingdom), and certainly has not had the chance to provide me with instructions on what they contain. There has not been an opportunity to prepare anything in advance and if they were admitted that surely would never arise. …
One does understand that the quid pro quo for the raising the bar amendments has been the slightly expanded use of 21.19 in cases where there was some compelling reason why material should be before the Hearing Officer, but this would be an extension so great as to effectively mean that the provisions of regulation 21.19 were an entire alternative to the provisions of regulation 5 and that can’t be the intended effect of the amendments that were brought in.
Having noted that she too had not been through the Opponent’s Regulation 21.19 Evidence in great detail, Ms Beaumont submitted in reply that:
The nature of this evidence is not such that the Applicant could respond to an email sent on a particular date, and to a particular person, for example: except for a request for cross examination to test the evidence, to suggest that it wasn’t right, or not true. There is no response, in my submission to that kind of evidence.
I have some difficulty with this last submission of Ms Beaumont. That the veracity of a particular email, or other evidence, is not in question, does not necessarily mean that it warrants no response. An opponent may assert, for example, that an email shows use of a trade mark in a particular jurisdiction. The applicant may wish to dispute such an assertion for any number of reasons that go beyond the veracity of the email. For example, the applicant may wish to respond that: the trade mark used in the email is not the impugned trade mark; the trade mark has not been used in respect of relevant goods or services; or, that it does not show use within the relevant period.
There must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence. The decision of a delegate to take into account information under reg 21.19 requires consideration of a number of factors which include: the public interest and that of the parties in matters being decided in a timely and predictable manner; the public interest that a Hearing Officer have before them all material relevant to a decision; the requirement that principles of procedural fairness be adhered to; and the relative inconvenience to the parties. There can be significant tensions between these factors and the Hearing Officer must weigh up each factor in making their decision.
In this case the Opponent had the opportunity to provide evidence in support of its opposition at the appropriate stage of the proceeding. Where an opponent has used a trade mark within a relevant period it is generally a relatively simple matter to provide such evidence: the requirements of this evidence are not onerous. However, the evidence does need to go beyond bald statements regarding use. Whether the statements are made by an attorney on their knowledge and belief, or whether they are made by other appropriate persons. The statements need to be supported by relevant evidence. Such evidence is typically examples of use of the trade mark.
For whatever reasons, the Opponent in this case chose to provide evidence in support of its opposition which is of a standard which falls well short of that required to establish use. It is of no surprise that the Applicant was highly critical of that evidence in its written and oral submissions. Further, there is no obligation on the Applicant that it draw the Opponent’s attention to shortcomings it considers exist in the Opponent’s evidence at any stage earlier than it did. It was incumbent upon the Opponent, in conjunction with its representatives, to provide, if possible, evidence to show that it has used its trade mark during the Relevant Period. That evidence should be appropriately prepared at the appropriate time. To attempt to rectify the shortcomings in their evidence on the day before the hearing is far from appropriate.
It would constitute an unfair and unwarranted imposition upon the Applicant for me to consider the Opponent’s Reg 21.19 Evidence in arriving at my decision in this matter. The Applicant prepared for the hearing on the basis of evidence which was filed in accordance with the Regulations. Procedural fairness—reflected in reg 21.19(1)(e)—demands that the Applicant be given a reasonable opportunity to make representations about the Opponent’s Reg 21.19 Evidence were I to take it into account. This would cause an unwarranted delay in the proceeding of, potentially, many months.
I therefore do not intend to take the Opponent’s Reg 21.19 Evidence into account in making my decision in these proceedings. Neither am I satisfied, for similar reasons, that it is appropriate that I consider it under the power available to me pursuant to reg 21.15(4).
Discretion under s 101(3) not exercised
The Opponent has submitted that the discretion available to the Registrar under s 101(3) be exercised in the Opponent’s favour to the extent use in relation to any particular service is not found to have occurred. The Opponent’s submissions in this regard were made in anticipation that use would be found in respect of at least some services and centred around the assertion that:
[A]ll the services within the scope of the registration are plainly ‘closely related’ or ‘similar’ to the investment and financial services in relation to which evidence of use is very clear in that they are ‘the same’ or ‘of the same description’ as those services.
As I am not satisfied that the Opponent has used the Trade Mark in connection with any services I am unable to consider the discretion available to me on the grounds suggested. Nor is there anything else before me that satisfies me that it is appropriate to exercise that discretion.
Decision
As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that trade mark 1270456 be removed from the Register after the period allowed for an appeal of this decision has expired. In the event of an appeal from this decision, the Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.
Costs
Both parties have sought an award of costs in their favour. I see no reason to depart from the general rule that costs follow the event. As the Applicant has been successful, I award costs against the Opponent.
Robert Wilson
Hearing Officer
Trade Marks Hearings
24 December 2015
22
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