Livepay Pty Ltd v Live Group Pty Ltd

[2017] ATMO 145

TRADE MARKS ACT 1995

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

Re:Opposition by Livepay Pty Ltd to application under section 92 of the Act by Live Group Pty Ltd to remove trade mark number 1237134 (36) – LIVEPAY with device - in the name of Livepay Pty Ltd

Delegate:

Katrina Brown

Representation:

Removal Opponent: Self-represented

Removal Applicant: Anna Spies of Counsel instructed by King & Wood  Mallesons

Decision:

2017 ATMO 145
Trade Marks Act 1995 – opposed application for removal under
s 92(4)(b) - no use in the relevant period – exercise of discretion under s 101 – Trade Mark to remain on the Register.

Background

1. Livepay Pty Ltd (‘the Removal Opponent’) is the registered owner of the following trade mark (‘the Trade Mark’):

Registration No:

1237134

Registration Date:

25 April 2008

Trade Mark:

Specification:

Class 36: Internet-based financial services; financial transactions via a global computer network; including electronic payments and settlement, electronic invoicing, presentment and payment services, credit card and bank account payment services

(‘the registered services’)

1. On 23 December 2015 Live Group Pty Ltd (‘the Removal Applicant’) filed an application pursuant to s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Trade Mark from the Register. The application was made in respect of all of the registered services; that is complete removal of the Trade Mark from the Register.

2. The Removal Opponent filed a Notice of Intention to Oppose the removal application on 4 February 2016, followed by a Statement of Grounds and Particulars (‘SGP’) on 26 February 2016.

3. The Removal Applicant filed a Notice of Intention to Defend the removal application on 8 April 2016.

4. The Removal Opponent filed evidence in support of its opposition to removal. The Removal Applicant did not file evidence in answer.

5. Both parties requested a hearing by way of written submissions. Prior to the due date for its written submissions, the Removal Applicant requested to be heard in person. The Removal Opponent elected not to appear.

6. The matter came before me, a delegate of the Registrar of Trade Marks, on 21 August 2017. Anna Spies of Counsel instructed by King & Wood Mallesons made submissions on behalf of the Removal Applicant. The Removal Opponent provided written submissions prior to the hearing.

Evidence

1. To rebut the allegation of non-use, the Removal Opponent relies on the following declarations which were filed as evidence in support:

• Declaration of Robert Chanphakeo (Chief Executive Officer of Livepay Pty Ltd) made on 20 May 2016 with Annexure A (‘Chanphakeo Declaration’);

• Declaration of Tyrone Mullens (Managing Director of Content Bank Australia Pty Ltd) made on 19 May 2016 (‘Mullens Declaration’).

1. The day after the hearing Mr Chanphakeo provided additional material to me via email. He stated that he had not provided this material during the evidence in support stage due to privacy concerns and that it was for my viewing purposes only. By reply email on 23 August 2017, I informed Mr Chanphakeo that to allow, or even consider material after the hearing and without the other party being privy to it, would be a denial of natural justice. I informed Mr Chanphakeo that in these circumstances I would not consider the additional material.

2. Subsequently on 20 September 2017, I received another email from Mr Chanphakeo requesting that as part of reviewing the evidence in support, I register and make an online purchase through one of the Australian businesses listed at [5] of the Chanphakeo Declaration. By doing so, I would be able to see the Trade Mark on the checkout page. I did not do this because it would not demonstrate use within the Relevant Period (see [12] below) and it would show use by third parties who I am not satisfied are authorised users (see [26] – [30] below). 

The law

1. Part 9 of the Act deals with the removal of trade marks from the Register due to non- use. Section 92 relevantly provides:

   (4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   …

   (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.

2. The Removal Applicant alleges that the Removal Opponent has not used the Trade Mark in the course of trade in Australia at any time in the three year period ending on 23 November 2015 (‘the Relevant Period’).

3. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing that the registered owner used the Trade Mark in the course of trade in Australia during the Relevant Period in relation to the registered services. The relevant standard of proof is on the balance of probabilities. [1]

   [1] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

4. As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc:[2]

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

   [2] [2015] ATMO 10 [8].

5. In accordance with s 101 of the Act, the Registrar may decide to remove the Trade Mark for all or some of the services identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds for removal are established.

Discussion and reasons

1. In the Chanphakeo Declaration, Mr Chanphakeo declares that the Removal Opponent has used the Trade Mark ‘consistently and extensively in Australia to distinguish Livepay’s commercial operations since 2008’. Annexure A to his declaration contains 11 examples (that are referred to in Annexure A as figures) which purport to show use of the Trade Mark during the Relevant Period.

2. The main arguments advanced by the Removal Applicant are that:

• the examples of use are undated, not clearly dated or are outside the Relevant Period; and/or

• the examples of use do not show use in Australia; and/or

• the examples show use by third parties and evidence has not been put forward to establish that the third parties are authorised users.

1. In a removal action, it is crucial that a removal opponent demonstrates that the registered owner, or another party authorised by the registered owner, has used the trade mark in Australia in relation to the registered services within the relevant period. Bald statements such as those quoted in [16] are not, in this case, sufficient to establish use within the Relevant Period.

2. Undated examples, or examples dated outside of the relevant period, will also not assist a removal opponent in establishing use within the relevant period. In Ion Asset Management Ltd v Ion Trading UK Limited the Hearing Officer pointed out that:

   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. Undated examples of use carry little, if any, weight in support of a claim of use of a trade mark within the Relevant Period.[3]

   [3] [2015] ATMO 124 [21].

3. Figures 9 and 10 annexed to the Chanphakeo Declaration are undated and as such are of no assistance in establishing that the Trade Mark was used within the Relevant Period.  Nor are the following examples annexed to the declaration of assistance as they are dated outside of the Relevant Period:

• Figure 5 – a commercial invoice issued by the Removal Opponent dated 30 November 2015, 7 days after the end of the Relevant Period;

• Figure 11 – a screenshot from the Removal Opponent’s website landing page ‘ (‘Removal Opponent’s website’). The screenshot has been generated through the Internet Archive Wayback Machine ‘ and shows the landing page on 19 September 2009, approximately 4 years before the beginning of the Relevant Period. 

1. Figures 1, 2, 3, 7 and 8 annexed to the Chanphakeo Declaration are also of little assistance to the Removal Opponent. These figures are:

• a screenshot from the Removal Opponent’s website;

• a screenshot of what the Removal Opponent refers to as the ‘customer’s backend management portal’;

• a screenshot of a payment checkout page;

• a screenshot  from the Paypal website ‘ and

• a screenshot from the Stripe website ‘

1. The screenshots themselves are undated. However I note that at the top of each figure there is text that refers to a date. For example: [4]

[4] Chanphakeo Declaration, Annexure A Figure 1.

1. There is nothing in the Removal Opponent’s evidence to satisfy me that the date at the top of these figures refers to the date the screenshot was taken. Rather it seems from [3] of the Chanphakeo Declaration that it refers to the date that the Trade Mark was first used on the relevant website. Ultimately it is unclear to me on what date the screenshots in Figures 1, 2, 3, 7 and 8 were taken, let alone if it was within the Relevant Period. As such I am not satisfied that Figures 1, 2, 3, 7 and 8 demonstrate use of the Trade Mark within the Relevant Period.

2. The remaining figures annexed to the declaration are dated within the Relevant Period and show use of the Trade Mark as follows:

• Figure 4 – described as an account activation email, dated 10 November 2015;

• Figure 6 – described as an email payment receipt, dated 12 March 2015.

1. Whilst Figures 4 and 6 do show use of the Trade Mark within the Relevant Period, I am not satisfied that they demonstrate use in Australia which is specifically required by s 92(4)(b)(i) of the Act.

2. The account activation email and the payment receipt do not contain any information, such as the customer’s details, that would indicate they were issued to Australian consumers. I do note that the payment receipt is in Australian dollars. However I am not satisfied that this payment receipt, which has all of the relevant information redacted apart from the currency that the payment was made in, is sufficient as the single basis for me concluding that the Trade Mark was used in Australia.

3. In addition to the Chanphakeo Declaration, the Removal Opponent relies on the declaration of Tyrone Mullens, the Managing Director of Content Bank Australia Pty Ltd (‘Content Bank’). Paragraph 2 of this declaration states:

   Content Bank’s backend billing system uses the LIVEPAY product on its platform for payment processing and invoicing and has done so from April 2015 to the present date.

   Under a commercial arrangement with Livepay Pty Ltd, Content Bank has used the LIVEPAY logo trade mark on the business portals of the clients listed below, on Content Bank’s cloud hosting platform. Customers of these clients see the LIVEPAY logo trade mark when they purchase from the client’s website.

4. The use referred to in the Mullens Declaration is use of the Trade Mark by a third party. Section 7(3) of the Act specifies that:

   An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

5. Section 8 of the Act relevantly provides:

   (1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

   (2) The use of a trade mark by an authorised user of the trade mark is an authorised useof the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

   (3) If the owner of a trade mark exercises quality control over goods or services:

   (a)  dealt with or provided in the course of trade by another person; and

   (b)  in relation to which the trade mark is used

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (4)  If:

   (a)  a person deals with or provides, in the course of trade, goods or  services in relation to which a trade mark is used; and

   (b)  the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

6. It is evident that ‘control’ is a fundamental aspect of authorised use, with s 8(3) specifying ‘quality control’ and ‘financial control’ as non-exhaustive examples of the type of control required.

7. In the current matter, there is no evidence of control having been exercised by the Removal Opponent, who is the registered owner of the Trade Mark, over the use of the Trade Mark by Content Bank. The commercial arrangement was not provided as part of the properly filed evidence in support, nor has the nature of the commercial arrangement been explained in either the Chanphakeo Declaration or the Mullens Declaration. As such, I do not have enough information to be satisfied that Content Bank is an authorised user of the Trade Mark.

8. Considering all of the above, I am not satisfied that the evidence before me establishes that the Removal Opponent, or an authorised user, used the Trade Mark in the course of trade in Australia during the Relevant Period in relation to the registered services. As such the ground for removal under s 92(4)(b) of the Act has been made out.

Discretion

1. Even though the ground on which the removal application was made has been established, the Registrar has the discretion not to remove the Trade Mark from the Register.

2. Section 101 relevantly provides:

   (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. 

3. The Full Federal Court in Austin, Nichols & Co Inc v Lodestar Anstalt (‘Austin’), confirmed that ‘[t]he question to be asked is whether it [is] reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period’.[5]

   [5] [2012] FCAFC 8 [28].

4. The Removal Opponent bears the onus of convincing the Registrar that it is reasonable to exercise the discretion under s 101.[6] In this respect, the Removal Opponent’s submissions state:

   It would be unreasonable for the Registrar to remove Livepay’s trade mark as shown in the evidence provided to IP Australia; “Livepay” is Livepay Pty Ltd’s corporate brand and “logo” trade mark, used extensively throughout Australia via Livepay’s product line and has also been largely integrated a part [sic] of Livepay’s client products – the removal of Livepay’s trade mark would affect not only Livepay’s business operations, but would affect Livepay’s business partners, Livepay’s client business operations and the thousands of customers that continuously use Livepay to pay for goods and services.

   [6] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273].

5. Section 101 confers a broad discretion upon the Registrar which ‘is limited only by the subject matter, scope and purpose of Part 9 of the Act’.[7] In Austin, the purpose of Part 9 of the Act was expressed as follows:

   The purpose of Part 9 is 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.[8]

   [7] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [35].

   [8] [2012] FCAFC 8 [38].

6. A range of circumstances may be taken into account in exercising this discretion. The circumstances do not need to be exceptional, but they need to be sufficient to satisfy the Registrar that it is reasonable to exercise the discretion.[9]

   [9] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [198].

7. In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised some relevant considerations for the exercise of the discretion:

   In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).

In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and whether the registered proprietors were aware of the applicants’ sales under the mark.[10]

[10] [2012] FCA 252 [467].

1. As already explained in this decision, there are deficiencies in the evidence such that the Removal Opponent has not been able to meet the specific requirements of s 92(4)(b) of the Act. Despite these deficiencies, the evidence demonstrates that this is not a case of an unused or abandoned trade mark cluttering the Register. Various figures provided in Annexure A to the Chanphakeo Declaration show the Trade Mark being used in relation to the registered services, albeit that they may be undated or that pertinent information has been redacted.

2. Furthermore, Mr Chanphakeo declares that the Trade Mark has been used by Australian clients of the Removal Opponent including Content Bank. This is corroborated in the Mullens Declaration by Tyrone Mullens, the Managing Director of Content Bank. Mr Mullens declares that under a commercial arrangement with the Removal Opponent, Content Bank has used the Trade Mark on the payment platforms of the following websites: EDTV Australia ‘ Integrate | Diversified Communications Australia ‘integrate.webcastcloud.tv’, Australian Human Resource Institute ‘ Smithlink ‘smithlink.webcastcloud.tv/’ and Volleyball Australia ‘  Mr Mullens declares that customers who purchase from the aforementioned websites see the Trade Mark on the checkout page. Figure 3 of Annexure A to the Chanphakeo Declaration supports Mr Mullens Declaration. It is a screenshot which shows use of the Trade Mark on the ED-TV Australia checkout page.

1. With respect to the interests of the parties, there is no information before me as to the Removal Applicant, the nature of its business, or its use of a trade mark. The Removal Opponent’s interests are apparent from its evidence.

2. Considering the above circumstances, I am satisfied that it is reasonable not to remove the Trade Mark from the Register.

Decision

1. The application for removal under section 92(4)(b) of the Act has been successful. However, I am satisfied that it is reasonable to exercise the Registrar’s discretion in favour of retaining the Trade Mark on the Register.

2. The Trade Mark may remain on the Register for all of the services for which it is registered.

Costs

1. An award of costs in these proceedings normally follows the event. Accordingly I award costs against the Removal Applicant in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown
Hearing Officer
Trade Mark Oppositions & Hearings
22 November 2017