JB Hi-Fi Limited
[2019] ATMO 115
•31 July 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1886650 (classes 9, 16, 35, 38, 41) – STACK - in the name of JB Hi-Fi Limited.
Delegate: | Nicholas Barbey |
Representation: | Applicant: Christopher Doidge of counsel instructed by Jane Brown of ChoyBrown |
Decision: | 2019 ATMO 115 Trade Marks Act 1995 (Cth) – Hearing on intention to revoke registration under section 84A of the Trade Marks Act 1995 – Not reasonable in all the circumstances to revoke registration – Revocation of registration refused. |
Background
This matter is in relation to a proposal by the Registrar of Trade Marks to revoke the registration and acceptance of registered trade mark number 1886650. JB Hi-Fi Limited (‘the Registrant’) is the owner of the registered trade mark, relevant details of which are reproduced below:
Trade Mark: STACK (‘the Trade Mark’)
Number: 1886650
Filing Date: 12 November 2017
Goods & Services: See Annexure 1 (‘the Goods and Services’)
The application for the Trade Mark was filed on 12 November 2017 and examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’). No statutory grounds for rejection were identified during examination and the application was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks on 5 April 2018.
A notice of opposition to registration was not filed during the opposition period and the Trade Mark was entered onto the Register of Trade Marks on 13 June 2018.
On 25 October 2018,[1] a Deputy Registrar of Trade Marks issued a written Notice of Intention to Revoke Registration (‘Revocation Notice’) to the Registrant. The Revocation Notice stated the Trade Mark should not have been registered and, taking into account all of the circumstances, it was reasonable to revoke the registration. The following rationale was provided:
Your trade mark attracts a section 44 ground for rejection.
Your mark is STACK, claiming goods and services in Classes 9, 16, 35, 38 and 41. Your mark is deceptively similar to earlier mark 955451, as the dominant element in both marks is STACK.
Further, there are overlaps between the claims in both marks. Your class 35 claims for advertising and business services overlap with similar claims in class 35 and 41 of the earlier mark. Your class 41 claims for education and sporting services also overlap with class 41 claims of the earlier mark. Your class 9 claims for computers and software are closely related to the claims for education and training services in class 41, and, design and development of hardware and software claim in class 42, of the earlier mark.
Therefore, the earlier mark 955451 should have been raised as a citation against your mark at examination, on the basis that they are deceptively similar, and the claims in both marks are closely related.
[1] Which, being approximately 4.5 months after the particulars of the Trade Mark were entered onto the Registrar, is compliant with the statutory time limit of 12 months imposed by s 84A(4) of the Act.
The relevant details of registered trade mark number 955451 are listed below:
Trade Mark: Stacks/ (‘Earlier Mark’)
Number: 955451
Owner: Timauray Pty Limited
Priority Date: 27 May 2003
Services:Class 35: Advertising; business management; business administration; office functions
Class 41: Education; providing of training; entertainment; sporting and cultural activities
Class 42: Legal services; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software
The Revocation Notice outlined several response options. These included proposing amendments to the Goods and Services to overcome the conflicts identified with the Earlier Mark, informing the Registrar of any use or circumstances supporting the continued registration of the Trade Mark and/or requesting to be heard on the matter.
On 23 November 2018, the Registrant informed the Registrar that it wished to exercise its right to be heard in accordance with s 84A(5) of the Act. In the days prior to the scheduled hearing, the Registrant filed the following material for consideration:
•Declaration of Adrian Quah, Deputy General Counsel of the Registrant, dated 18 April 2019 with Exhibits AQ-1 to AQ-19 (‘Quah Declaration’); and
• Registrant’s summary of submissions.
As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 1 May 2019. Christopher Doidge of counsel and Jane Brown of ChoyBrown made oral submissions on behalf of the Registrant.
During the hearing, additional material was tendered – namely, a declaration by Jane Elizabeth Brown, Principal Solicitor of ChoyBrown, dated 1 May 2019 with Exhibits JB-1 to JB-8 (‘Brown Declaration’). Being an ex parte proceeding, no issues of procedural fairness arise from the introduction of new material at this stage. I allowed it into evidence under reg 21.15(4) of the Trade Mark Regulations 1995 (Cth).
The relevant provisions
Section 84A of the Act relevantly provides:
Registration may be revoked
Power to revoke
(1)The Registrar may revoke the registration of a trade mark if he or she is satisfied that:
(a) the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the registration, taking account of all the circumstances.
(2)The circumstances to be taken into account under paragraph (1)(a) include the following:
(a) any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;
(b) any relevant obligations of Australia under an international agreement;
(c) any special circumstances making it appropriate:
(i)not to register the trade mark; or
(ii)to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.
(3)The circumstances to be taken into account under paragraph (1)(b) include the following:
(a) any use that has been made of the trade mark;
(b) any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;
(c) other action taken in relation to the trade mark as a registered trade mark;
(d) any special circumstances making it appropriate:
(i)to revoke the registration; or
(ii)not to revoke the registration.
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(j)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(3)If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Discussion
The Registrar’s powers to revoke the registration of a trade mark were introduced into the Act by the Intellectual Property Laws Amendment Act 2006 (Cth). Their intended purpose was to provide a straightforward avenue of redress by which to keep invalidly registered trade marks off the Register.[2]
[2] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth), sch 1, [9] - [10].
At the hearing, Mr Doidge emphasised that any decision by the Registrar to exercise its power to revoke under s 84A should be made with ‘great caution’. Reference was made to Mr Lorne Bobart (‘Bobart’)[3] wherein the Deputy Registrar observed:
But an owner can quite properly assume that the Registrar will only register trade marks where there are no prior rights and, short of bad faith, can quite properly expect that their registration is valid. Thus, following revocation, the rights, which a good faith owner could justly assume were presumptively valid, are undone. This is not a step that the Registrar can take lightly.
…
Thus the structure of the section itself, its context within the Act, the nature of the rights affected, and the effect of revocation all require that great caution be used in the Registrar’s exercise of this discretion.[4]
[3] [2010] ATMO 43 (‘Bobart’).
[4] Ibid [17]-[20].
To reinforce the need for caution, Mr Doidge referred to other decisions of the Registrar where it was stated that revocation of registration is a ‘serious matter’[5] and the act of revocation may be characterised as an ‘extreme course’.[6]
[5] Aleem Pty Limited as trustee for The Mini-Tankers IP Trust. [2015] ATMO 33 (‘Aleem’), [27].
[6] Mt Shadwell Pty Ltd [2018] ATMO 25 (‘Shadwell’), [39].
Mr Doidge’s position regarding the gravity of the matter is well founded. The magnitude of revoking registration and potential repercussions stemming from it are significant. Having navigated the examination and opposition stages of the registration process, revocation divests the Registrant of their statutory rights attained and, through no fault of their own, leaves them in a compromised position. This is because revocation of registration retrospectively extinguishes the statutory rights of the Registrant.
There have been few published decisions dealing with revocation of registrations since the powers were first introduced.[7] Notably, to date, only one decision has resulted in the Registrar electing to exercise its power to revoke.[8] That specific instance, as Mr Doidge submitted, was itself due to a particularly unique set of circumstances. Suffice to say, the current circumstances are not analogous.
[7] See Method Constructions Pty Ltd [2009] ATMO 9; Bobart (n 3); Mr Bruce Larter [2010] ATMO 103; FPInnovation Pty Ltd [2012] ATMO 74 (‘FPInnovation’); Aleem (n 5); Shadwell (n 6).
[8] See Fpinnovation (n 7).
The decision to revoke registration should clearly be approached by the Registrar with not only great caution but also, in my view, a certain degree of pragmatism.
Should the Trade Mark have been registered?
The first limb of s 84A(1) requires me to be satisfied that the Trade Mark should not have been registered taking into account all the circumstances that existed when the Trade Mark became registered. The language of the provision in combination with the Explanatory Memorandum makes it clear that it is not necessary that the Registrar knew, or was in a position to know, of the existence of the circumstances for them to be considered.[9]
[9] Ibid sch 1, [29].
The Act provides that a relevant circumstance includes any error or omission that led directly or indirectly to the registration of the trade mark.[10] In this instance, the failure to identify the Earlier Mark as being deceptively similar to the Trade Mark and containing similar and closely related claims under s 44 of the Act was asserted by the Deputy Registrar as constituting such a circumstance.
[10] The Act s 84A(2)(a).
Mr Doidge stated the precise reason which led to the Revocation Notice being issued had not been fully disclosed to the Registrant. He postulated that if the Earlier Mark had in fact been identified during the examination stage but simply not cited, the current matter is akin to ‘a change of opinion as to the registrability of a mark’ and this does not constitute a basis to justify revocation.[11]
[11] See, eg, Bobart (n 3), [55]; Aleem (n 5), [26].
In the interests of transparency, my inspection of the materials on file reveals that the Earlier Mark would likely have been viewed based on the searches conducted. However, the Earlier Mark was inexplicably omitted from the search results extract list and it was not mentioned on the examiner’s worksheet. As such, it is impossible to draw any firm conclusions as to whether the Earlier Mark was duly considered by the examiner. It appears likely that the present circumstances fall directly within the first example of administrative oversight envisaged by the Explanatory Memorandum.[12] Accordingly, the current matter is distinguishable from a mere change of opinion as to the registrability of the trade mark.
[12] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth) sch 1, [6].
I must consider whether the Earlier Mark constitutes a valid ground for rejection under s 44 of the Act to determine whether the Trade Mark should not have been registered. Consideration undertaken for present purposes is not a review of the original decision made during the examination stage, rather it must be made de novo.
To establish that the Trade Mark should not have been registered, the following requirements must be satisfied:
the Earlier Mark has a priority date which is earlier than that of the Trade Mark;
the Earlier Mark is substantially identical with, or deceptively similar to, the Trade Mark;
the Earlier Mark is in respect of similar services and/or services which are closely related to the Goods and Services; and
there had been insufficient prior use or honest concurrent use of the Trade Mark and no other circumstances existed which would warrant the acceptance of the application for the registration of the Trade Mark.
(i) Earlier priority date
The priority date of the Earlier Mark is 27 May 2003, which is earlier than the Trade Mark’s priority date 12 November 2017. Therefore, requirement (i) is satisfied.
(ii) Substantially identical or deceptively similar
In relation to requirement (ii), the test for ‘substantial identity’ was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]
[13] [1963] HCA 66, [12].
The term ‘deceptively similar’ is defined in s 10 of the Act:
Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[14]
[14] Ibid [13].
In my opinion, the trade marks are at least deceptively similar. In asserting otherwise, Mr Doidge emphasised that the Earlier Mark contains an additional ‘s’ and a forward slash (e.g.: “ / ”) at the end of the mark. He submitted that these differences would be noticed by the consumer and the forward slash serves to transform the mark from an English word to ‘something else’ depending on the context. For example, a forward slash generally operates to connect non-contrasting items but, in the context of software, it denotes a web address or directory.
I do not find these arguments persuasive. The trade marks in question are required to be considered in their entirety[15] and it is the general effect of the trade marks as wholes that must be compared.[16] To this end, the trade marks retain high visual, conceptual and aural similarities such that they convey similar overall impressions notwithstanding the highlighted differences.
[15] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92].
[16] Clark v Sharp (1898) 15 RPC 141, 146.
The visual similarity between the trade marks is not significantly altered by the addition of the letter ‘s’ and forward slash at the end of the Earlier Mark. It is generally accepted that the first part of a trade mark is to be afforded most weight when comparing marks.[17] In this instance, each trade mark commences with the word STACK – it forms a memorable part of the Earlier Mark and it is the sole element in the Trade Mark. It follows that the trade marks are visually similar.
[17] London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264, 279.
Equally, the addition of the letter ‘s’ and forward slash do not meaningfully change the idea conveyed by the Earlier Mark. The word STACKS/ is likely to be perceived by the ordinary consumer as merely the pluralised form of the Trade Mark and both trade marks convey essentially the same concept. In this regard, the difference between the collective noun and its pluralised form is unlikely to be construed as a material distinction between the trade marks.[18]
[18] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936, [63].
From an aural perspective, the trade marks are largely indistinguishable. In my view, it is unlikely that the forward slash in the Earlier Mark would be verbalised. That is, a consumer would not ordinarily pronounce the Earlier Mark as “STACKS FORWARD SLASH” or, for that matter, “STACKS SLASH”. Rather, a consumer is likely to focus on the recognisable part of the mark constituting an English word – namely, “STACKS”. It follows that any potential aural dissimilarities between the marks are slight. This is particularly so given a consumer with an imperfect recollection may not even recall the additional letter ‘s’ and/or the forward slash present in the Earlier Mark.
It was further submitted that the goods and services in conflict are not ‘impulse purchases’ and that consumers would exercise care when purchasing same. While it is plausible that the goods and services in question are likely to be purchased with some consideration, the nature of the goods and services are not overly sophisticated or particularly expensive to warrant meticulous inspection by the ordinary consumer. Therefore, I am satisfied consumers would still be caused to wonder notwithstanding the nature of the goods and services.
In light of the above, I consider the trade marks are at least deceptively similar and requirement (ii) is thus satisfied.
(iii) Goods and Services similar and/or closely related?
Section 14 of the Act provides:
Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services
The guiding factors for determining if goods are similar are well-established and involve a holistic consideration of:
[T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[19]
[19] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
The factors for determining similar goods have been, subject to any necessary modification, recognised as being equally applicable to determining whether services are similar.[20]
[20] See Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616.
Meanwhile, the concept of ‘closely related’ concerns the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J stated:
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.[21]
[21] [1999] FCA 1020, [38].
From the outset, the Registrant conceded the following items contained within the Goods and Services were similar or closely related to the services for which the Earlier Mark had attained registration:
Class 9: software
Class 35: advertising
Class 41: provision of education, entertainment and cultural services
(collectively ‘the Conceded Items’)
The nature and extent of the conflicts, as set out in the Revocation Notice, was contested by the Registrant. For example, while accepting that its Class 9 claim for ‘software’ would conflict with some of the Class 42 claims of the Earlier Mark, the Registrant disputed that ‘software’ conflicts with the Earlier Mark’s Class 41 claims. For present purposes, it is not necessary to determine the precise extent of the conflict between the Conceded Items and the claims of the Earlier Mark. This is because the Registrant stands in no different position in terms of the evidence required to be adduced if it intends to rely on the provisions of prior use or honest concurrent use. Put simply, the Registrant will still be required to demonstrate evidence of use of the Trade Mark in relation to ‘software’ irrespective of whether the Earlier Mark’s Class 41 claims, in addition to its Class 42 claims, are considered to conflict.
With that said, two issues within the Revocation Notice do require clarification. Firstly, the Revocation Notice listed, inter alia, the Registrant’s Class 9 claim for ‘computers’ as conflicting with the claims of the Earlier Mark. As highlighted in the written and oral submissions, the Registrant does not claim ‘computers’ in its Goods and Services. I acknowledge no such claim exists. In relation to Class 9, I confirm that it is only the broad claims for ‘software’ together with any subsets of same which conflict with the Earlier Mark’s claims.
Secondly, the nature of the Class 35 conflict identified in the Revocation Notice was disputed. It was submitted that the Goods and Services only mention ‘business’ on two occasions – namely, ‘sale of tickets to promotional, advertising and business events of all kinds in this class’ and ‘business services of a magazine club’. It was submitted neither of these claims conflict with the Class 35 claims of the Earlier Mark which include ‘business management’ and ‘business administration’. In my view, ‘sale of tickets …’ is predominantly a retail service. Services of this nature would be provided by different traders, have a different end purpose and operate in a disparate field to traders who provide business management and administration services. It follows that the claim for ‘sale of tickets to …’ cannot reasonably be characterised as being similar to the Earlier Mark’s claims.
On the other hand, the Registrant’s claim for ‘business services of a magazine club’ is sufficiently broad to include similar services to the Earlier Mark’s claims. This is evident in the particularisation of the Registrant’s claim that would notionally include, for example, ‘business administration services of a magazine club’. Naturally, services of this nature would conflict with the claims of the Earlier Mark which has a broad claim for business administration services in Class 35. It follows that ‘business services of a magazine club’ claimed by the Trade Mark conflicts with the registered Class 35 claims of the Earlier Mark.
Consequently, I consider requirement (iii) satisfied in relation to the Conceded Items together with the item of ‘business services of a magazine club’ present in the Trade Mark’s Class 35 specification.
Bearing the above in mind, I am satisfied that the Earlier Mark constitutes a prima facie ground for rejection under s 44 of the Act.
(iv) Honest concurrent use, other circumstances or prior use?
The Registrant submitted that even if the Earlier Mark was determined to constitute a prima facie ground for rejection under s 44 of the Act, the Trade Mark should nevertheless have been registered because it would have been accepted pursuant to s 44(3) of the Act. Specifically, reliance was placed on the Quah Declaration as establishing honest concurrent use under s 44(3)(a) of the Act.
As previously mentioned, no grounds for rejection were identified during examination of the Trade Mark and the acceptance of the application was not opposed. As such, the Registrar was never privy to the Quah Declaration that is now before me. However, s 84A(1)(a) of the Act provides that I may take in account all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence). Given the Quah Declaration attests to the use of the Trade Mark leading up to and post registration, it is necessary to consider whether this evidence would have enabled the application to be accepted under the provisions of s 44(3)(a) in respect of the Conceded Items and the item of ‘business services of a magazine club’.
Subsection 44(3)(a) of the Act relevantly provides that if the Registrar is satisfied there has been honest concurrent use of two trade marks then the applied for trade mark may be accepted subject to any limitations the Registrar thinks fit to impose. The relevant date for determining honest concurrent is the ‘priority date’ of the application,[22] which in this instance is the same date as the filing date. It follows that use of the Trade Mark after 12 November 2017 is not relevant for considering the application of honest concurrent use.
[22] Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]-[164].
It was submitted that the evidence sufficiently addresses the well-known and non-exhaustive criteria for determining honest concurrent use, namely:
(a)the honesty of the concurrent use;
(b)the extent of the use in terms of time, geographic area and volume of sales;
(c)the degree of confusion likely to ensue between the marks in question;
(d)whether any instances of confusion have been proved; and
(e)the relevant inconvenience that would ensue to the parties if registration were to be permitted.[23]
[23] McCormick & Co v McCormick [2000] FCA 1335, [30].
As a preliminary, I note confidentiality has been claimed by the Registrant in respect of several paragraphs and exhibits in the Quah Declaration and this claim was reiterated by Mr Doidge during the hearing. While I appreciate the Registrant’s interest in maintaining its confidential information, this must be counterbalanced against the requirement for the Registrar to provide reasons for her findings. In discharging this duty, information claimed to be confidential may inevitably require discussion. Accordingly, where such discussion is unavoidable, I will deliberately use broad and non-specific statements in order to avoid divulging any commercially sensitive information.
(a) Honesty of the concurrent use & (d) instances of confusion
Having assessed the evidence and information within the Quah Declaration, I see no reason to question the honesty of the adoption and use of the Trade Mark. Likewise, I am satisfied the Registrant is not aware of any confusion having occurred and that the trade marks in question have been used concurrently.
(b) The extent of the use
The Quah Declaration explains that the Registrant purchased the Trade Mark, which at the time was unregistered, and related assets in October 2017. As such, reliance is placed on the Registrant’s one month of use after acquiring the Trade Mark and the significant use by the predecessor in title of the Trade Mark, namely Scribal Custom Pty Ltd (‘Scribal’).
According to the Quah Declaration, the Trade Mark was first used by Scribal in June 2004 in relation to a printed publication. Thereafter, the Trade Mark is stated to have been continuously used in relation to an evolving range of goods and services. Consequently, there has been over 13 years of use of the Trade Mark before the priority date.
To substantiate use of the Trade Mark, the following evidence was exhibited:
Description
Exhibit(s)
Warranties provided by the Predecessor in Title
Confidential Exhibit AQ-1
Wayback machine archives of the Registrant’s websites ‘ and ‘ demonstrating use of the Trade Mark on selected dates between 20 December 2008 and 29 September 2017
Exhibits AQ-2 and AQ-10
Screenshots dated 15 April 2019 of the mobile app featuring the Trade Mark available for download on various mobile platforms
Exhibit AQ-3
A STACK mobile app review from the Ausdroid website dated 18 July 2014
Exhibit AQ-4
A copy of the 2017 and 2014 media kits featuring the Trade Mark that is provided to suppliers and potential advertisers
Confidential Exhibits AQ-5 and AQ-13
Articles from the Financial Review and 9Finance regarding the Registrant’s global retail ranking (publication dates illegible)
Exhibit AQ-6
Images of the front cover of 175 back issues of the publication featuring the Trade Mark
Exhibit AQ-7
Invoices issued by Scribal on selected dates between November 2004 and February 2017 for services rendered by reference to the Trade Mark
Confidential Exhibit AQ-8
Photographs dated between December 2011 and April 2019 of instore displays containing publications featuring the Trade Mark
Exhibit AQ-9
Screenshots dated 10 April 2019 and 16 April 2019 of the Registrant’s various social medial platforms and website featuring the Trade Mark
Exhibits AQ-11, AQ-15, AQ-16 and AQ-18
An example list of suppliers advertising via the publication as at the Trade Mark’s priority date
Confidential Exhibit AQ-12
Examples of advertisements featured in past issues of the STACK publication
Confidential Exhibit AQ-14
Screenshots of the April 2019 STACK publication
Exhibit AQ-17
A copy of the marketing presentation which is currently presented to suppliers and potential advertisers
Confidential Exhibit AQ-19
Some of the material adduced has low probative value. For example, Exhibit AQ-7 comprises 175 front cover images of past issues of the publication displaying the Trade Mark. The images are not clearly dated, do not refer to any of the Conceded Items and their content is unknown. Therefore, they provide limited assistance to the Registrant’s position. Exhibit AQ-9 suffers similar deficiencies in this regard. Meanwhile, Exhibits AQ-3, AQ-11 and AQ-15 to AQ-18 all contain material which postdates the priority date of the application and therefore is not relevant for the purposes of s 44(3)(a).
Nevertheless, the remainder of the evidence demonstrates the Trade Mark has been used throughout Australia. Such use appears to be mainly in relation to a publication which is available both in printed and electronic forms. Distribution of this publication occurred via the Registrant’s retail outlets, online platforms and electronic direct marketing.
At the hearing, it was submitted the publication goes beyond being a simple catalogue because it includes editorials, promotion of competitions and information about the latest festivals and emerging technology. A hard copy of the April 2017 issue was provided to illustrate this. Having perused this issue, I confirm it contains a diverse range of articles covering subject matters concerning the influence of post-war European cinema on American film through to the latest developments in esports. It follows that the submissions on this point are not without merit.
The evidence demonstrates the Trade Mark is usually positioned centrally on the front cover of the publication or on the landing page of the Registrant’s online platforms. The Trade Mark is consistently depicted in capitals and in a substantially large font. In some cases, the Trade Mark is accompanied by words such as ‘magazine’ or ‘newsletter’ or it has been slightly embellished. However, such occurrences are infrequent. Overall, I am generally satisfied that the evidence demonstrates use of the Trade Mark.
The 2004 to 2016 annual turnover figures provided are ostensibly significant. However, they are insufficiently particularised to derive any meaningful conclusions. This is because the Goods and Services are drafted broadly and cover a wide range of items including publishing services, data broadcasting services and retail services. From the information provided, it is not clear what amount, if any, of the turnover figures disclosed were generated by the Conceded Items and the item of ‘business services of a magazine club’.
Meanwhile, the evidence does not demonstrate use of the Trade Mark in relation to the full spectrum of goods and services that constitute the Conceded Items and the item of ‘business services of a magazine club’. For example, the Conceded Items include a broad claim for ‘advertising’, but the evidence only demonstrates use of the Trade Mark in relation to a subset of services such as providing advertising space. Likewise, the evidence demonstrates the Trade Mark has been used in relation to the provision of online entertainment information. However, it does not support the broader proposition of use in relation to entertainment services such as live musical shows before the priority date of the application.
Similar deficiencies are apparent with respect to the broad claim for ‘software’ in Class 9. Use of the Trade Mark appears to be exclusively in relation to content access application software. The evidence does not demonstrate use of the Trade Mark in relation to other software before the priority date of the application.
Further, I am not satisfied the Trade Mark has been used in relation to educational services before the priority date of the application. Whilst Exhibit JB-7 of the Brown Declaration contains evidence which suggests that magazines can be an educational tool, little weight can be attributed to this material given its anecdotal nature. Moreover, at its highest, it is circumstantial evidence that the Trade Mark was used in relation to educational publications (which are goods) but not educational services. Thus, the evidence is inconclusive as to whether educational services have been provided under the Trade Mark.
Overall, the evidence does not establish use in relation to all the Conceded Items and the item of ‘business services of a magazine club’. There is potential for acceptance of a much narrower range of goods and/or services. However, a proposed subset was not proffered and, for reasons that will become apparent, it is not necessary to artificially dissect the Conceded Items and the item of ‘business services of a magazine club’ at this stage.
(c) Degree of confusion likely
There is a high risk of confusion between the Trade Mark and the Earlier Mark. The trade marks are at least deceptively similar and direct conflict exists between the Conceded Items and the Earlier Mark’s claims.
(e) Relevant inconvenience
The Registrant asserts it would suffer considerable inconvenience if registration was not retained due to the duration of use and significant financial investment in the Trade Mark.
It was further submitted that the owner of the Earlier Mark has not raised concerns about the concurrent use of the Trade Mark nor was there any evidence of inconvenience being suffered by them. Although the duration of use of the Trade Mark is lengthy, such use predominately relates to goods and services that are not the Conceded Items. Naturally, use in relation to goods and services that are dissimilar to the Earlier Mark’s claims may explain the apparent lack of objection by the owner of the Earlier Mark. In any event, accurately discerning what inconvenience the owner of the Earlier Mark may suffer is a task fraught with uncertainty given they are not privy to the present proceeding.
Conclusion
Weighing up the above criteria, I am satisfied that the evidence adduced would not have enabled the Trade Mark to be accepted under the provisions of s 44(3)(a) in respect of the Conceded Items and the item of ‘business services of a magazine club’. For completeness, the evidence before me also does not provide a sufficient basis for the application of s 44(3)(b) or s 44(4).
Accordingly, having considered all the circumstances that existed when the Trade Mark became registered, I am satisfied that the Trade Mark should not have been registered.
I now turn to the second limb of s 84A(1), namely, whether it is reasonable in all the circumstances to revoke the registration of the Trade Mark.
Reasonable in all the circumstances to revoke registration
The Registrar is required to consider all the circumstances before her when determining if it is reasonable to revoke registration.[24] Subsection 84A(3) sets out a non-exhaustive list of circumstances that may be considered. These include any use that has been made of the Trade Mark, any legal proceedings involving the registered Trade Mark and/or any special circumstances.
[24] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth) sch 1, [35].
Both prior and post filing use of the Trade Mark may be taken into account when considering the reasonableness to revoke registration.[25] As such, the mere fact that the Registrant was unable to produce sufficient evidence of use to justify the application of s 44(3)(a) does not preclude it from establishing that its subsequent use makes it unreasonable to revoke the Trade Mark’s registration.
[25] Bobart (n 3), [56].
The Registrant contended several circumstances exist that would make it unreasonable to revoke registration of the Trade Mark. Broadly, these may be distilled as follows:
a.the Registrant has been circumspect in its dealings with the Trade Mark;
b.substantial investment in the development of the Trade Mark has occurred and future plans for the Trade Mark have been put in motion;
c.reliance on the registration of the Trade Mark has affected the Registrant’s contractual rights and capacity to mitigate its losses;
d.the extensive and expanding use of the Trade Mark by the Registrant since filing and registration (including lengthy use by its predecessor in title); and
e.the owner of the Earlier Mark has never expressed any concern regarding the registration and use of the Trade Mark.
a. Registrant has been circumspect in its dealings with the Trade Mark
The evidence demonstrates the Registrant acted prudently in dealing with the Trade Mark since acquiring it in October 2017. After identifying the Trade Mark was unregistered during negotiations with Scribal, the Registrant sought registration of the Trade Mark by filing an application within a month of the purchase agreement being finalised. Cognisant of the inherent risks associated with unregistered trade marks, the Registrant also inserted a termination option in its favour in the event that the Trade Mark did not achieve registration within a stipulated timeframe. Similarly, while some financial investment in the Trade Mark understandably occurred prior to registration, the larger commitment of the Registrant’s investment only occurred after certainty of trade mark rights, by virtue of registration, was attained. Accordingly, the Registrant’s bona fide conduct in relation to the Trade Mark prior to and post registration weighs in favour of not revoking the registration.
b. Substantial investment in the development of the Trade Mark and future plans
The evidence indicates the Registrant’s financial investment after filing the application has been, by any reasonable measure, substantial. At the hearing, Mr Doidge again stressed that the larger component of this financial investment occurred after registration was achieved. This approach was commercially astute given increased investment by the Registrant only occurred after the certainty of registration was attained. Likewise, after the application for registration was filed, the Registrant underwent internal restructuring and committed resources to enlarge its capacity to promote and expand the range of goods and services offered under the Trade Mark.
The Registrant’s actions have increased promotion of the Trade Mark. This includes overhauling the website featuring the Trade Mark, digitalisation of the publication and the creation of new events marketed under the Trade Mark. Relevantly, Ms Brown submitted that when an ASX listed company such as the Registrant plans to expand its goods and services offered, such plans are not vague ambitions. Instead, definitive and detailed forecasting is required. This involves a significant amount of time, resources and investment due to the disclosure requirements that a listed company such as the Registrant is subject to. The Registrant’s actions provide a sufficient basis to infer that it has concrete plans with respect to its intermediate to long term use of the Trade Mark.
c. Reliance on the registration of the Trade Mark has affected the Registrant’s contractual rights
The Registrant’s inability to exercise certain contractual rights was also put forward as a relevant circumstance. Relevantly, the Registrant relied on the registration of the Trade Mark as being valid and therefore waived certain contractual rights in its favour against Scribal. In my view, such reliance was reasonable given the application proceeded through examination without issue, it was not opposed by any third party and the Revocation Notice was issued approximately four and a half months after the certificate of registration was supplied.
As noted above, the purchase agreement with Scribal contained contractual options which indemnified the Registrant in the event that the Trade Mark did not proceed to registration within stipulated timeframes. The Registrant asserted that since revocation of registration would now fall outside of these timeframes, it would be unreasonable to revoke registration because it no longer has recourse to these options. As such, the Registrant would likely incur significant financial detriment if revocation were to proceed now given it could no longer mitigate its losses.
d. Extensive and expanding use of the Trade Mark
The Trade Mark has been used for approximately 14 years prior to the Revocation Notice being issued. It is evident the Registrant had an intention to expand upon the goods and services offered after acquiring the Trade Mark. Indeed, the mere act of applying for a trade mark is prima facie evidence of an intention to use it in respect of the goods and services claimed.[26] The fact that the Registrant has since acted upon this intention by expanding the range of goods and services under the Trade Mark weighs against revocation. Such expanded use includes use of the Trade Mark in relation to live music performances and entertainment videos. The evidence indicates increased promotion of the Trade Mark has led to a significant increase of total user visits to the Registrant’s website as well as a sizeable audience growth on its social media platforms.
e. The owner of the Earlier Mark has never expressed any concern
[26] Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391, 401.
Another factor, albeit not as compelling as the abovementioned circumstances, weighing against revoking registration is the lack of objection by the owner of the Earlier Mark. While I am conscious that the owner of the Earlier Mark has not had an opportunity to present its objections in the present proceeding, the fact remains that there seemingly has been no objection to the use and registration of the Trade Mark. The owner of the Earlier Mark did not avail themselves of the opportunity to oppose the acceptance of the application, they have not directly contacted the Registrant or Registrar and, based on the information before me, there are no legal proceedings on foot relating to the Trade Mark. While the case for revocation should stand on its own merits[27] and revocation is not intended to be a de facto opposition process,[28] the lack of objection from the owner of the Earlier Mark is still a circumstance relevant in determining whether it is now reasonable to revoke registration.
Conclusion
[27] Shadwell (n 6), [35].
[28] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth) sch 1, [48].
Having considered all the circumstances, there are numerous factors weighing against the proposed revocation. The Registrant has invested heavily in the promotion of the Trade Mark and adapted its business based on the assumption that the Trade Mark was validly registered. Since registration, the Registrant has used the Trade Mark in relation to an expanded scope of services and has instituted steps towards future expansion. Further, the Registrant has also waived certain contractual options it had at its disposal because it assumed the Trade Mark was validly registered and would remain so.
It has been recognised that the terms of s 84A provide the Registrar with a broad scope to exercise her discretion.[29] A prevailing theme which emerges from the published decisions, the intent of the Act and Explanatory Memorandum concerning s 84A is that the Registrar must exercise great caution when considering revocation. A registered trade mark is a valuable intellectual property right and depriving a registered owner of this right must be reasonable given all the circumstances. Considering all of the circumstances, I am satisfied that it would be unreasonable to revoke the registration given the Registrant’s substantial investment in and widespread use of the Trade Mark to date.
[29] Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605, [72].
Decision
I have found that the Trade Mark should not have been registered. However, taking into account all the aforementioned considerations, I am satisfied that it would not be reasonable to revoke registration in the circumstances.
I refuse to revoke registration of trade mark number 1886650.
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 July 2019
Annexure 1
Class 9: Electronic publications; downloadable electronic publications; magazines downloaded via the internet; software; downloadable software; application software; downloadable application software for mobile phones, computers and electronic handheld devices; electronic databases; downloadable, interactive multimedia computer software for providing audio, audiovisual and video training information; parts and accessories for all of the aforementioned goods
Class 16: Printed matter; stationery; printed publications including magazines, journals, periodicals, newspapers, catalogues and books; printed reviews; posters; photographs; instructional and teaching material (except apparatus); parts and accessories for all of the aforementioned goods
Class 35: Advertising; design of advertising materials; dissemination of advertising material; provision of advertising space; rental of advertising space; organisation of membership incentive programs for commercial or advertising purposes; marketing; direct marketing; content marketing; design of marketing materials; dissemination of marketing materials; compilation and management of databases; compilation and preparation of mailing lists; retail services; retail services relating to audiovisual, interactive and multimedia content including via the internet and other electronic networks; computerised ordering services over the internet; retailing of home entertainment content including but not limited to films, cinefilms, motion pictures, computer games and sound recordings on any data storage medium including but not limited to DVDs, compact discs, CD-ROMs, VCDs and USBs; administration of an incentive award program enabling participants to obtain discounts and complimentary awards on goods and services through membership; management, organisation, operation and supervision of privileges and loyalty schemes or programs; the supply of benefits in connection with loyalty and incentive schemes; organisation and management of rewards programs; loyalty programs involving discounts or incentives; sales promotion; sales promotion through customer loyalty programmes; price and product comparison services; product promotion services; promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of services and products of third parties via computer and communication networks; sampling, testing and appraisal services in this class; services to assist people in the selection of products and gifts; retailing, wholesaling, selling, advertising, promotion, marketing and trading services (including the foregoing provided online and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); advertising, promotion and marketing in relation to tickets to performances, plays, musical events, live shows, cabarets, concerts, classes, festivals, conventions, courses, games, performances, pageants, lectures, quizzes, rodeos, talent quests, exhibitions, recreational activities, shows, stage shows, parties, discotheques, entertainment events, public forums, balls, dances, ceremonies, fetes, galas, award ceremonies, sporting events, cultural events, entertainment, film screenings, spectaculars and events of all kinds; sale of tickets to promotional, advertising and business events of all kinds in this class; organising of trade promotion competitions; database management; business services of a magazine club; arranging and managing magazine subscriptions; information, advisory and consultancy in relation to all of the aforementioned services
Class 38: Providing online forums; electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums; chat room services; operation of chat rooms; electronic bulletin board services (telecommunications services); message boards; transmission and delivery of audiovisual and multi-media content via the internet and other communication networks; video transmission services; video-on-demand transmission; transmission of digital files; transmission of information by electronic means; transmission of information including online and over a global computer network; transmission of sound by electronic means; broadcasting or transmission of recorded messages and information; data communication by electronic means; data broadcasting services; delivery of digital music by telecommunications; music broadcasting; podcasting services; point of sale communication services; providing access to online computer databases; provision of links to other websites; provision of electronic data links; streaming, webcasting, net casting and data casting; interactive text, audio and video services; providing access to on-line computer databases; information, advisory and consultancy in relation to all of the aforementioned services
Class 41: Provision of education, entertainment and cultural services; provision of education, entertainment and cultural services via an online forum; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; provision of entertainment, sporting or cultural services via a magazine club; provision of entertainment, sporting or cultural services via a website featuring content related to entertainment, infotainment, news and current affairs; ticket agency services (entertainment); booking and ticketing services for entertainment and cultural activities including on-line booking and ticketing services; booking of seats for events and shows; publishing services; publication of multi-media materials online; publication of photographs (including fan photographs); electronic publishing; magazine publishing; organisation of competitions for education and entertainment; arranging and conducting of conferences, exhibitions, congresses, seminars, symposiums and competitions; entertainment club services; information services (including interactive, digital and datacasting information services) relating to entertainment, recreation, cultural activities, motion pictures, cinema entertainment, motion picture distribution and exhibition, film, television and entertainment production, education and sport; education services; educational and entertainment services provided via all forms of electronic transmission, including broadcast, narrowcast, multi-point, point-to point, free-to- air, pay and subscription television, datacasting and electronic publications; publication of information on global computer networks including the Internet; providing online publications and non-downloadable electronic publications; blogs; editorial services; providing information relating to contests and games; providing recognition and incentives by way of awards and contests to demonstrate excellence in the field of entertainment; providing entertainment services that allow users to review screenplays, movies, television shows, music, graphic images, storyboards, books, application software for mobile phones and video games via a website; providing news and information in the field of entertainment relating to information, contests, text, video, audio, publications all related to entertainment; providing reviews for television, music, movies, application software, video games and entertainment; interviewing and profiling of musicians, artists, bands, actors, directors and authors; dissemination of entertainment material; information, advisory and consultancy in relation to all of the aforementioned services
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