Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd
[2018] ATMO 3
•11 January 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Live Entertainment Investments III Pty Ltd to application under section 92 of the Act by The Education Group Pty Ltd to remove trade mark number 1144769(41) - TEG - in the name of Live Entertainment Investments III Pty Ltd
Delegate: | Adrian Richards |
Representation: | Opponent: Scott Bouvier and Melissa Anderson of King & Wood Mallesons (written submissions) Applicant: Norton Rose Fullbright Australia |
Decision: | 2018 ATMO 3 Trade Marks Act 1995 (Cth) – opposition to application for removal under section 92 – grounds for removal under paragraph 92(4)(a) nominated but not necessary to consider – grounds for removal under paragraph 92(4)(b) nominated and established – discretion not to remove the trade mark under subsection 101(3) considered and exercised |
Background
This decision on the written record concerns an application (‘the Application’) made under s 92 of the Trade Marks Act 1995 (Cth) (‘the Act’) to remove from the Register of Trade Marks (‘the Register’) a trade mark, the relevant details of which are reproduced below:
Registration number: 1144769
Trade mark: TEG (‘the Trade Mark’)
Filing date:3 November 2006
Entered on the Register: 3 September 2007
Specification of services: Class 41: Education, providing of training, entertainment, sporting and cultural activities, including all of the aforementioned services in personal training and fitness; organising and conducting courses, seminars and training in relation to physical fitness and physical education; provision of sports facilities; production of film, digital media, radio and television programmes in relation to physical fitness and physical education
The Application was filed on 10 September 2015 by The Education Group Pty Ltd (the Applicant’). The Application was advertised in the Australian Official Journal of Trade Marks, and this office sent a copy of the Application to the registered owner, Live Entertainment Investments III Pty Ltd (‘the Opponent’). The Opponent filed a Notice of Intention to Oppose the Application on 17 November 2015, and a Statement of Grounds and Particulars (‘the SGP’) on 17 December 2015.
This office sent a copy of the SGP to the Applicant, who responded by filing a Notice of Intention to Defend on 22 January 2016.
The Opponent filed Evidence in Support on 2 May 2016 and, following a short cooling-off period, the Applicant filed Evidence in Answer on 16 December 2016. Detail of this evidence has been set out under the relevant heading below.
As required by reg 9.16(6) of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’), this office gave the Opponent two months to file Evidence in Reply, but did not do so. The time for filing evidence having passed, this office informed the parties that the Application was ready to be heard, and invited them to request a hearing or file submissions to be considered at the hearing. Neither party requested a hearing within the time allowed, so this office informed the parties that the Application was to be decided on the written record. These letters once again invited the parties to file written submissions, which the Opponent did on 26 May 2017. The Applicant elected not to file written submissions.
Evidence
The evidence filed during the prosecution of the Application is set out below:
Evidence in Support
Declaration of Tracey Elizabeth Henry (formerly Tracey Elizabeth Godber), previous registered owner of the Trade Mark, made on 1 May 2016 with annexures TEH-1 and TEH-2.
Declaration of Cameron Hoy, Managing Director of Ticketek Pty Ltd (a wholly owned subsidiary of the Opponent), made on 2 May 2016 with annexures CH-1 to CH-30 (of which annexures CH-24, CH-26 and CH-28 are marked confidential).
Evidence in Answer
Statutory declaration of Lai Lynn Choong, Senior Associate at Norton Rose Fulbright Australia, made 7 December 2016 with annexure LC-1.
Evidence in support
The evidence of Ms Henry concerns her motivation for adopting the Trade Mark (simply put, it reflected her initials at the time) and details her use of it, offering personal fitness and related services, from between 2006 and 2009. For reasons that follow, this earlier use is of very little significance in deciding the present matter. The aspects of Mr Hoy’s declaration that are relevant to my discussion below deal with why and how the Opponent came to acquire the Trade Mark from Ms Henry, the Opponent’s preparations to use the Trade Mark, and its eventual use.
While the Opponent’s name may not be familiar to many, its business ‘Ticketek’ likely would be. On 16 April 2015 the Opponent and its parent companies reached agreement with Nine Entertainment Company Holdings Ltd for the Opponent to purchase the set of businesses then known as ‘Nine Live’, which included ‘Ticketek’ and ‘Nine Rewards’, widely reported to have been for $640 million. The transaction was completed on 31 July 2015, but much work had to be done by the Opponent in preparation for the transfer.
Since the transaction would result in separation of ‘Nine Live’ from Nine Entertainment Company Holdings Ltd, it necessitated a number of name changes. By at least late April 2015, the Opponent had decided on TEG as the new moniker for the purchased businesses, subject to availability. This acronym is intended to convey two meanings: referencing the Ticketek business as in ‘Ticketek Entertainment Group’, but while remaining open to the reading ‘The Entertainment Group’, which communicates the Opponent’s ambition to lead the market in this region.
The rebranding resulted in the Opponent’s event services and consultancy business ‘Nine Live’ being named ‘TEG Live’, and the Opponent’s research and marketing business ‘Nine Rewards’ being named ‘TEG Rewards’. Other assets and going concerns acquired in the deal not called ‘Nine’, such as Ticketek, Softix, Eventopia and Qudos Bank Arena (formerly Allphones Arena), were not similarly renamed for obvious reasons. The evidence establishes that, in terms of corporate grouping, starting from the bottom of the family tree, TEG Live Pty Ltd and TEG Rewards Pty Ltd are both wholly owned subsidiaries of Ticketek Pty Ltd. Ticketek Pty Ltd is a wholly owned subsidiary of TEG Pty Ltd, and TEG Pty Ltd is a wholly owned subsidiary of the Opponent. Mr Hoy describes this group of companies as ‘an integrated live entertainment, sport and lifestyle business focusing on live content, hospitality, sponsorship, consulting and event management.’
As part of the Opponent’s preparations to rebrand these businesses from ‘Nine’ to ‘TEG’, the Opponent arranged for availability searches to be conducted in April 2015. This was followed up in mid-May 2015 with investigations into use and ownership of the results of those searches, and opening negotiations with third parties found to hold certain interests. The Trade Mark was apparently discovered quite early on in these processes. The Opponent commenced negotiating with Ms Henry about the assignment of the Trade Mark in mid-May 2015, had settled on terms in late May 2015 and secured the transfer of title by 5 June 2015.
Other interests turned up in the availability searches included a number of domain names (such as teg.com, teg.com.au and teg.co.nz) and company names (such as TEG Pty Ltd and TEG Holdings Pty Ltd). As with the Trade Mark, the Opponent set about acquiring them right away, though its efforts were not all successful.
The Opponent registered or arranged for subsidiaries to register several new domain names, between early May and late August 2015, including: teglive.com.au, tegholdings.com.au, tegholdings.com, teglive.co.nz, te-group.co.nz, tegrewards.com.au, theentertainmentgroup.com.au, t-e-g.com.au, t-e-g.co.nz.
The Opponent’s subsidiary TEG Pty Ltd filed for registration of the trade marks TEG and TEG LIVE covering a range of services that reflect its trading activities in New Zealand on 4 August 2015 and in Australia on 7 September 2015 (preserving priority from the New Zealand applications). The same entity filed for registration of the trade mark TEG REWARDS in New Zealand and Australia on 27 August 2015 and 7 September 2015 respectively.
The Opponent launched a new business under the TEG banner in September 2015. ‘TEG Analytics’ offers data analytics consulting and intelligence services to live entertainment and sport industries in the region. Trade mark applications for TEG ANALYTICS were filed by TEG Pty Ltd in both Australia and New Zealand on 9 November 2015.
As well as securing a variety of naming rights, from April 2015 up until the official rebranding on 25 and 28 September 2015, the Opponent taken up with the business of deciding on a TEG logo. It settled on a version that bears resemblance to the one used for Ticketek (as can be seen in the examples of both below). TEG Pty Ltd also filed trade mark applications for the Opponent’s recently decided upon TEG logo in Australia and New Zealand on 12 October 2015.
Beyond the Opponent’s activities discussed above, Mr Hoy’s evidence also makes plain that significant work that went into the rebranding itself. In the background new websites were built, web traffic from the former ‘Nine’ domains was redirected to their newly acquired ‘TEG’ counterparts, social media handles on sites such as ‘Facebook’, ‘Instagram’, ‘LinkedIn’ and ‘Twitter’ were changed, email addresses and signature blocks were updated, internal communications to staff planned and executed, a press release prepared and issued, and new signage was ordered and installed on the Opponent’s headquarters. The actual rebranding took place in two stages. Clients, key contacts, media and stakeholders were tipped off to the impending change on 25 September 2015, and then the rebranding was executed on 28 September 2015 with appropriate communications to the wider public made on that day.
During the rebranding effort, the Opponent expended significant resources so as to transfer the reputation that had been associated with businesses under its ‘Nine’ banner over to ‘TEG’. Given that much of the Opponent’s businesses relate to the entertainment industry it is of no surprise that the rebrand also attracted significant and widespread media attention at the time, unlike many other corporate rebrands which will often be limited to reportage by specialist industry or financial market observers. After the flurry of work specifically associated with rebranding ended, the evidence shows that the Opponent has continually, extensively and consistently used the Trade Mark as a badge of origin for the services that it and its subsidiaries provide.
Evidence in answer
Ms Choong’s declaration annexes a letter dated 9 September 2015 from the Opponent’s legal representative to the Applicant’s legal representative. Given the nature of these correspondents, that the letter appears to relate to negotiations and the fact that the letter is headed ‘private and confidential’ I am hesitant to provide much detail of it in these reasons. In very broad terms it covers two topics—assertion of the Opponent’s rights in the Trade Mark and a potential purchase from the Applicant of the domain teg.com.au. The significance of the contents of this letter to the Application is not immediately apparent, nor has the Applicant sought to explain why it has filed this letter as its sole piece of evidence. All I am able to draw from it is that it may have motivated the Applicant to file the Application one day later, as a means to undermine the Opponent’s attempt to assert its rights in the Trade Mark. While having this in evidence has provided me with an interesting background to the proceedings, it does not appear to have any meaningful effect on the determination of the Application.
Grounds for removal and onus
The Application nominates ss 92(4)(a) and 92(4)(b) of the Act, in respect of all services, as grounds for removal of the Trade Mark. Subsection 92(4) of the Act is reproduced below:
92 Application for removal of trade mark from Register etc.
(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.
Note 2:If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Paragraph 92(4)(a) consists of two elements: no intention to use in good faith, and no use in good faith. In contrast, s 92(4)(b) is established simply where no use good faith can be shown within a particular three year period. Section 93 of the Act adds a requirement to applications under s 92(4)(b)—these cannot be filed until five years after the filing date of the trade mark, but the Application meets this requirement.
If the Trade Mark were shown to have been used in good faith in the period from 10 August 2012 to 10 August 2015 (‘the Relevant Period’), neither of the grounds for removal would be established. Alternatively, should no use in good faith be shown in the Relevant Period, s 92(4)(b) would have been completely established but s 92(4)(a) would require further enquiry into whether the Opponent (or its predecessor in title) held a subjective intention on 3 November 2006 to use the Trade Mark, and whether the Opponent (or its predecessor in title) had used the Trade Mark between 3 November 2006 and 9 August 2012. But embarking on the extra enquiries required by s 92(4)(a) would be pointless here, since the object of the provision—establishing a ground for removal—would have already been done under s 92(4)(b). Given this, I have limited my consideration below to the ground for removal under s 92(4)(b) of the Act.
The Opponent bears the onus of rebutting the Application.[1] The rebuttal is effective only in one of the three situations that appear in s 100(3) of the Act:
[1] Trade Marks Act 1995 (Cth) s 100(1)(c).
100 Burden on opponent to establish use of trade mark etc.
(3) …
(a) 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 goods or services during that period; or
(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:
(i) 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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or
(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
The Opponent must either show that it has used the Trade Mark in Australia during the Relevant Period, either while it was the recorded proprietor of the Trade Mark or was an unrecorded assignee of the Trade Mark, or that the Opponent faced circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.
Discussion: ground for removal
The Opponent concedes that Ms Henry had not used the Trade Mark during the Relevant Period. It instead points to the actions it took in preparation for its rebranding during the Relevant Period. Some of those actions took place before it was an unrecorded assignee, some whilst it held legal title to the Trade Mark but had not recorded its ownership on the Register, and some in the short period between the recordal of its ownership on 4 August 2015 and the end of the Relevant Period on 10 August 2015.
The Opponent’s activities have been set out in some detail above. The nature of those preparations does not satisfy me that the Trade Mark was used in the Relevant Period. Accordingly, I find that the ground for removal under s 94(4)(b) of the Act has been established.
Discretionary considerations
The power to remove a trade mark in s 101 of the Act carries with it a discretion to decide to allow a trade mark to remain registered, even if grounds for removal have been established:
101 Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
The test for exercise of the discretion in s 101(3) of the Act can be recast in the present context in the form of a question: is it reasonable not to remove the Trade Mark from the Register, although it was not used during the Relevant Period?[2] The burden of persuasion in relation to this question falls on the Opponent.[3] While circumstances in existence at the end of the Relevant Period are relevant to the discretion, the position has to be assessed when the discretion is being exercised.[4]
[2] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 496 [28].
[3] Optical 88 Limited v Optical 88 Pty Limited (No. 2) (2010) 275 ALR 526, 580 [273].
[4] UCP Gen Pharma AG v Mesoblast Inc (2012) 95 IPR 562, 571 [33].
The boundaries of relevant considerations of the discretion are, on the face of the provision, very broad. The rules of statutory interpretation narrow the focus somewhat,[5] such that they need to be consistent with ‘the subject-matter, scope and purpose of the Act and Pt 9 in particular.’[6] The purpose of pt 9 of the Act has been expressed in the following terms:
…to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.[7]
[5] Acts Interpretation Act 1901 (Cth) s 15AA.
[6] Dick Smith Investments Pty Ltd v Ramsey (2016) 120 IPR 270, 297 [180].
[7] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 498 [38].
A non-exhaustive list of factors that have in combination been held[8] to support an exercise of the discretion are:
i.No abandonment of the Trade Mark by the Opponent
ii.The Opponent still holds a residual reputation in the Trade Mark
iii.Sales of goods/services bearing the Trade Mark have been made after the Relevant Period, which were ‘in good faith and not colourable’[9]
iv.The Applicant decided to enter the market without searching the Register
v.The Opponent was not aware of the Applicant’s sales under the Trade Mark
[8] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69, 111-2 [202], citing HERMES Trade Mark [1982] RPC 425, 433-5 (‘HERMES’).
[9] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 499 [41].
A further factor is the potential for confusion were the Trade Mark removed.[10] This consideration goes directly to a central purpose of the Act. Where this factor is shown to exist, exercise of the discretion will typically serve both the public interest and the private interests of the registered proprietor.[11]
[10] Ibid 503 [66].
[11] Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45, 65 [42].
In order to show abandonment of the Trade Mark, it would be necessary to infer from the Opponent’s conduct a positive intention to abandon the Trade Mark.[12] No such evidence is before me for either the Opponent or Ms Henry, and there is some suggestion to the contrary for each. Ms Henry’s assignment of the Trade Mark represents an attempt to make commercial use of it, while the Opponent’s efforts to rebrand its various businesses before, during and after the Relevant Period, together with use of the Trade Mark shortly after the end of the Relevant Period, show that it intended to retain its title in the Trade Mark.
[12] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569, 572.
The second question, residual reputation, is less relevant in the present circumstances than it was in HERMES. In that earlier case, the registered proprietor had allowed their trade mark to fall into disuse and was preparing to relaunch it. So far as the Opponent is concerned, it has not sought to highlight any residual reputation that might be associated with historical use of the Trade Mark by Ms Henry, her business being rather different in nature and scale to the Opponent’s. Rather, what has happened is the Opponent has infused the Trade Mark with reputation from its existing ‘Nine’ businesses.
The Opponent’s evidence establishes that its steady sales in relation to the services for which the Trade Mark is registered continued after the rebrand took place, just beyond the end of the Relevant Period on 28 September 2015 up to the date of Mr Hoy’s declaration. There does not appear to be any live question as to whether these sales were ‘token’ or otherwise not made in good faith. From my reading of the evidence, the sales were made as a continuation of the activity stemming from the sale of these businesses, which first provided impetus to rebrand, through to the decision to adopt the Trade Mark, and the preparatory work before the rebranding took place. All of these activities happened before the Application was filed with the Trade Marks Office, so cannot have been done to bolster the Opponent’s case in the present proceedings.
The Applicant is in the best position to inform on the fourth factor, but it has provided nothing specific to its interests in the Trade Mark. The Opponent submits that I should draw an adverse inference from this failure to lead evidence.[13] Accordingly, I find that if any evidence existed on this point it would not be favourable to the Applicant.
[13] Jones v Dunkel (1959) 101 CLR 298.
Turning to the fifth factor, I can infer from the contents of the letter annexed to Ms Choong’s declaration that the Opponent considers that the Applicant has used the Trade Mark in a way that could give rise to remedies under the Act, but whether it came to that view much earlier is rather unclear. It appears that the Opponent may have first become aware of the Applicant around the time it engaged in availability searches in April 2015. It would also appear that shortly after it had secured assignment of the Trade Mark from Ms Henry it began to assert its rights in correspondence with the Applicant.
The Opponent’s already well established ‘Nine’ businesses continued to turn a healthy trade after their ‘TEG’ rebranding, having expended significant efforts in doing so, including public and industry education campaigns. As a result the Trade Mark appears to now enjoy a substantial reputation in relation to the services for which it is registered. It is true that reputation does not necessarily translate directly into a likelihood of confusion if the Trade Mark were to be removed.[14] However, in the circumstances of a highly publicised acquisition of these businesses from Nine Entertainment Group and their equally well covered rebranding, it strikes me that removing the Trade Mark as a footnote to those exploits would only generate the potential for confusion, particularly were others encouraged to enter the relevant market using ‘TEG’ or something deceptively similar. Moreover, in the face of the Trade Mark’s reputation and with nothing from the Applicant to counterbalance it, it looks as though ‘no useful purpose [would] be served by removing the [Trade Mark] from the Register simply for the purpose of, in effect, compelling a fresh application to be made’.[15]
[14] ‘[R]eputation is one thing, the prospect of confusion is another’ Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 503 [66].
[15] CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63, 103 [170].
Decision
Despite a ground for removal having been established under s 92(4)(b) of the Act, the Opponent has satisfied me that it is appropriate to exercise the discretion in s 101(3) of the Act in its favour. The trade mark shall therefore remain on the Register for all of the services for which it is currently registered.
Costs
The Opponent has requested that costs be awarded. The normal course is for costs to follow the event, and I see no reason to depart from this in the present matter. I award costs against the Applicant at the official scale against the applicable amounts set out in sch 8 of the Regulations.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
11 January 2018
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